- PTAB · Dec 3, 2014 · IPR2014-00541 · APJ Josiah C Cocks · IPR · Order
The Board granted the joint motion to terminate the review as to both parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Wintek is met. Furthermore, under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Wintek is the sole petitioner in this review. The Board has discretion to terminate this review with respect to TPK. Upon consideration of the circumstances of this case, the panel has determined to terminate this inter partes review as to both Wintek and TPK without rendering a final written decision. The oral argument scheduled for December 12, 2014 is cancelled.” slip op. at 3
- ExcludeOther
“TPK’s Motion to Seal (Paper 28) is pending. Because this proceeding is terminated without rendering a final written decision, the Motion to Seal is dismissed as moot. The subject paper (Ex. 2019) of the Motion to Seal is hereby expunged.” slip op. at 3
NonePatents in suitUS 8,217,902 - Trivascular, Inc. v. Shaun L.W. SamuelsNo claims unpatentablePTAB · Dec 3, 2014 · IPR2013-00493 · APJ Richard E Rice · IPR · Final written decision
Claims 1, 2, and 4–24 were not shown unpatentable over either instituted §103 combination because the references did not establish the required inflatable protrusions.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“not proved that claims 1, 2, 6–15, and 18–24 would have been obvious over Samuels ’851 and Todd, or that claims 1, 4–6, 9–11, 13, 14, 16, 17, and 19– 21 would have been obvious over Lazarus and Todd. Accordingly, Dr. Samuels’s Motion to Amend, which is contingent on claims 1, 14, and 23 being found unpatentable, is moot. IV. ORDER For the reasons given, it is ORDERED that claims 1, 2, and 4–24 of U.S. Patent No. 6,007,575 are not determined to be unpatentable; and FURTHER ORDERED that Dr. Samuels’s Motion to Amend is dismissed as moot.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“TriVascular argues that “inflatable protrusions can be ‘solid’ structures such as barbs or[,] in the case of [] some of the prior art examples, solid circumferential ridges.” Reply 10 (citing Clark. Dep., Ex. 1021, 135:6–16 (discussing Samuels ’851 (Ex. 1002))). TriVascular’s proposed claim construction, however, does not accord with the plain meaning of “inflatable” as used in the Specification, i.e., expandable by being filled with fluid. See, e.g., Ex. 1001, Abstr. 3–4, 3:55 (“inflatable chamber”), 1:30 (“inflatable balloon”), 2:33, 38, 3:30 (“inflatable cuff”), 3:33–34 (“inflatable ridges”). Under the plain meaning of “inflatable” as used in the Specification, solid ridges are not “inflatable,” because they are not capable of being filled with fluid. See Resp. 5–8; In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (holding that the words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification). Further, under TriVascular’s proposed claim construction, there is no meaningful difference between “protrusions” disposed on an inflatable cuff and “inflatable protrusions” disposed on an inflatable cuff. See Tr. 10:7–14. Trivascular’s proposed claim construction, therefore, fails to give any meaning to “inflatable” in “inflatable protrusions,” and by not giving effect to all words of the claim, runs afoul of a cardinal rule of claim construction. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim,” so that physical structures and characteristics described specifically in a claim are not rendered “merely superfluous.”).” slip op. at 7
- Expert testimonyPetitioner expert discountedOther
“inflatable balloon protuberances, including “inflatable ridges.” Pet. 22 (citing Ex. 1008, Figs. 5–9), 41 & 51 (claim chart) (quoting Ex. 1008, 7:35– 39, citing Ex. 1008, Fig. 7). At oral argument, TriVascular clarified its analysis of Todd’s disclosure, and asserted that the protuberances disclosed in Todd are hollow, and themselves inflatable. Tr. 6:5–12:20. TriVascular cited in support of its position the statement in column 7 of Todd that: “When inflated, the spiral ridge 48 contacts and tightly grips the walls of a body passageway in which it is inserted.” Id. at 6–7; Ex. 1008, 7:37–39 (emphasis added); see Pet. 40–41 (Claim Chart II, element 1a-3, quoting Ex. 1008, 7:35–39). TriVascular, however, has not provided a declaration, or any other evidence, to establish that a person of ordinary skill in the art would understand Todd to disclose protuberances that are hollow, and themselves inflatable. Dr. Samuels does not agree that Todd discloses “inflatable protrusions.” Resp. 12. Dr. Samuels asserts that “the region between the inner and outer surfaces of balloon 26 of Todd is solid . . . and any provided roughened surfaces or protuberances are also solid.” Id. (citing Ex. 1008, Figs. 4 & 8; Ex. 2004). On the record before us, TriVascular has failed to show that Todd discloses “inflatable protrusions,” i.e., protrusions that are expandable by being filled with fluid. See section II.A.5 supra. The protuberances disclosed in Todd project outwardly “from the outer surface” of inflatable balloon 26. See Ex. 1008, 6:58–59, 62–63. As such, the protuberances are disposed on the exterior surface of the inflatable balloon, and are not in fluid communication with the balloon’s inner chamber 32. See Resp. 12; Ex. 1008, 7:15–16, Figs. 2, 4 & 5 (describing knobs 40 as solid structures on the outer surface of the balloon), 7:32–34, Fig. 6 (describing “cross-hatched pattern 44 projecting outwardly from the exterior surface of balloon 26”), 7:35–39, Fig. 7 (describing “outwardly projecting spiral ridge 48 wound about the exterior surface of balloon 26”), 7:40–46, Fig. 8 (describing “outwardly projecting annular rings 52 wound about the exterior surface of balloon 26”). Todd discloses expansion means in fluid communication with inner chamber 32 for inflating balloon 26 (id. at 7:53–60), but does not disclose expansion means for inflating the protuberances, either separately or in conjunction with inflation of the balloon. Todd discloses, simply, that “when balloon 26 is inflated, the gripping means [i.e., the protuberances] on the exterior of the balloon contact and grip the walls of the body passageway.” Id. at 8:14–16. Trivascular has not persuaded us, moreover, that a person of ordinary skill in the art would have understood Todd’s statement “[w]hen inflated, the spiral ridge 48 contacts and tightly grips the walls of a body passageway in which it is inserted” (id at 7:37–39 (emphasis added)), to teach or suggest that spiral ridge 48 is expandable by being filled with fluid. See Tr. 6–7. Other than that isolated statement, there is no suggestion, indication, or hint in Todd that any of the disclosed protuberances is hollow such that it can be filled with fluid and inflated. To the contrary, as discussed above, Todd” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“We determine that Trivascular has not provided a sufficient rationale to support substituting the ridges of Todd for just the barbs of Samuels ’851. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). TriVascular also contends that it would have been obvious to eliminate both the recesses and barbs of Samuels ’851, and to substitute “a circumferential ridge, similar to the one that is in Todd.” See Tr. 15:24– 17:15. TriVascular asserts three reasons why combining the references in that fashion would satisfy the requirement for “inflatable protrusion(s) including at least one circumferential ridge disposed about the inflatable cuff”: (1) the ridges are “inflatable” in the combination simply because they are riding on an inflatable cuff; (2) the ridges in Todd are themselves inflatable; and (3) use of ridges that are themselves inflatable would have been obvious, as they would take up less volume and be easier to insert in blood vessels than ridges that are not themselves inflatable. See id. at 17:16–18:14. None of those reasons is persuasive. The first reason is not persuasive because it does not satisfy the requirement for “inflatable protrusions,” i.e., protrusions that are expandable by being filled with fluid. See section II.A.5 supra. The second reason is not persuasive because we do not agree that Todd discloses ridges that are themselves inflatable. See section II.B.1.b supra. Lastly, the third reason is not persuasive because TriVascular has not established that a person of ordinary skill in the art would have known to use, on an inflatable cuff, circumferential ridges that are themselves inflatable. The evidence is to the contrary. See, e.g., Ex. 2002 (Samuels Decl.) ¶ 4.c (“No one else in the medical field, to the best of my knowledge, ever proposed or suggested an inflatable ridge-based sealing arrangement prior to my invention, ever.”); Ex. 1020 (Samuels Dep.), 138:20–140:7 (affirming testimony in ¶ 4.c of Samuels Decl.), 187:11–14 (testifying that inflatable ridges were not known in the medical field); Ex. 2003 (Clark Decl.) ¶ 8 (“[B]eing able to reduce the overall diameter by just deflating the fluid chamber and, correspondingly, the ridges is an intriguing concept, one which was not known, to the best of my knowledge, in the medical field prior to Samuels ’575.”); Ex. 1021 (Clark Dep.), 82:19–21 (“I’m not aware of any inflatable protrusions to support an endograft prior to Samuels [’575].”).” slip op. at 19
Patent outcomesUS 6,007,575 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,007,575 - PTAB · Jul 15, 2014 · IPR2014-00120 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motion and terminated the inter partes review as to WMS and MGT without a final written decision.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In this proceeding, the Board instituted trial on April 30, 2014 (Paper 10), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating review with respect to WMS, as petitioner, is met.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Based on the record before us, we determine that it is appropriate to terminate this inter partes review both as to petitioner WMS and patent owner MGT without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 7,892,088 - PTAB · Jul 8, 2014 · IPR2014-00112 · APJ Grace Karaffa Obermann · IPR · Order
The Board granted the parties’ joint motion to terminate the instituted proceeding based on their settlement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On June 27, 2014, the parties filed a joint motion to terminate the proceeding. Paper 19. Accompanying the motion, the parties filed a true copy of (1) a Settlement Agreement resolving the dispute that is the subject of this proceeding (Ex. 1017); and (2) a License Agreement between Patent Owner and its licensee, AngleFix (Ex. 1018). The parties request that both documents be treated as business confidential information, to be kept separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74. Paper 20. We authorized the filing of those papers in a telephonic conference conducted June 24, 2014. Paper 18. A Decision to Institute an inter partes review in this case was entered by the Board on April 8, 2014. Paper 15. An initial conference call was conducted on May 12, 2014. Paper 17. This case is in a preliminary stage; no significant activity has occurred since entry of our Decision to Institute. Based on the facts of the case, it is appropriate to terminate the proceeding. Therefore, the joint motion to terminate the proceeding is granted.” slip op. at 2
NonePatents in suitUS 6,955,677 - PTAB · Jun 30, 2014 · IPR2014-00354 · APJ William V Saindon · IPR · Order
The Board granted the joint motion to join IPR2014-00354 to IPR2013-00629, terminated IPR2014-00354, and set consolidated filing, schedule, reply, and deposition procedures.
RulingsOther- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“considers many factors, including: (1) the differences in the grounds asserted in the proceedings; (2) time and cost considerations, including the impact joinder would have on the trial schedule; and (3) how briefing and discovery may be simplified. See Order Authorizing Motion for Joinder (Paper 15) at 4, Kyocera Corp. v. SoftView, LLC., IPR2013-00004 (PTAB Apr. 24, 2013).” slip op. at 4
NonePatents in suitUS 7,806,896 - PTAB · Apr 9, 2014 · IPR2013-00400 · APJ Richard E Rice · IPR · Order
The Board granted the parties’ joint motion and terminated the instituted IPR after settlement, without deciding the merits.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Properties, Inc., The Macerich Partnership, L.P. and Westfield Concession Management, LLC (collectively, “Petitioners”),1 filed a joint motion (Paper 31) to terminate this inter partes review, as well as a joint request (Paper 32) to have their settlement agreements treated as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties also filed true copies of their written settlement agreements. Exs. 2002, 2003, and 2004. The parties stated in their joint motion that they “have settled their dispute, and have reached agreement to terminate this inter partes review.” Paper 31, 2. In addition, the parties identified eight pending district court litigations involving U.S. Patent No. 6,397,143 (“the ’143 Patent”). Id. at 4-7. The parties also identified ten other district litigations (including the settled litigations between Patent Owner and Petitioners, referenced above) involving the ’143 Patent that either have been terminated already, or are pending termination pursuant to a settlement agreement. Id.” slip op. at 2
NonePatents in suitUS 6,397,143 - Smith & Nephew, Inc. v. Bonutti Skeletal Innovations LLCAdverse judgmentPTAB · Mar 24, 2014 · IPR2013-00605 · APJ Richard E Rice · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed sole challenged claim 23.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include disclaimer of a claim such that the party has no remaining claim in the trial. See 37 C.F.R. § 42.73(b)(2). As claim 23 of the ’229 patent is the only claim challenged (Paper 3 at 2, 4), and claim 23 has been disclaimed, Patent Owner has no remaining claim in this inter partes review. Accordingly, it is hereby ORDERED that Patent Owner’s request for judgment against itself under 37 C.F.R. § 42.73(b)(2), with respect to claim 23 of U.S. Patent No. 7,749,229 B1, is GRANTED; and” slip op. at 2
NonePatents in suitUS 7,749,229 - Berk-Tek, LLC v. Belden Inc.Some claims unpatentablePTAB · Mar 18, 2014 · IPR2013-00057 · APJ Richard E Rice · IPR · Final written decision
Claims 1–4 are unpatentable: claims 1 and 4 as obvious over JP ’910, and claims 2 and 3 as obvious over JP ’910 with either the ’582 patent or JP ’694; claims 5 and 6 …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We are persuaded by Belden’s arguments, however, that Berk-Tek’s proposed claim construction is inconsistent with the context of the surrounding language of claim 1. See, e.g., ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“the context of the surrounding words of the claim also must be considered”). Claim 1 recites “passing a plurality of transmission media and a core through a first die which aligns the plurality of transmission media . . . and prevents twisting of the core,” “bunching the aligned plurality of transmission media and core using a second die . . . which maintains a spatial relationship between each of the plurality of transmission media,” “twisting the bunched plurality of transmission media and core to close the cable,” and “jacketing the closed cable.” As Belden argues (PO Resp. 13), these recited steps suggest a process of producing a complete, jacketed cable, not a part or subset of the cable, contrary to Berk-Tek’s asserted claim construction.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. “surface features” We initially determined that the term “‘surface features’ is on its face broad and does not require any particular structure, shape or configuration,” and that “[a]pplication of the broadest reasonable construction rule also results in the conclusion that any surface feature qualifies, including the plain profile of a flat or curved surface area.” Inst. Dec. 12. Neither Berk-Tek nor Belden has raised any issue with respect to our initial construction of the term “surface features.” Accordingly, we adhere to our initial construction.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As discussed above, the claim term “a plurality of transmission media” in claim 1 encompasses all of the transmission media that are enclosed in the cable under production, not merely a subset of the transmission media. Under that claim construction, the limitation “surface features of the core which maintain a spatial relationship between each of the plurality of transmission media” (emphasis added) requires surface features that maintain a spatial relationship between each of the plural transmission media that are enclosed in the cable under production. Thus, as Belden contends, merely separating two groups of the transmission media that are enclosed in the cable does not meet the claim requirement, because transmission media within either group may not be separated from one another. That is, irrespective of whether the plurality of transmission media in the ’582 patent are considered to be the plurality of individually-insulated conductors, the plurality of pairs of twisted individually-insulated conductors, or the plurality of stranded units, many of the transmission media are adjacent to one another. As such, a spatial relationship is not maintained between each of the plurality of transmission media, as claim 1 requires. For the foregoing reasons, we determine that the ’582 patent does not anticipate claim 1 of the ’503 patent. Because dependent claim 2 incorporates by reference the method of claim 1, it follows that the ’582 patent does not anticipate claim 2 for the same reasons as claim 1.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“on core 1 with the four conductors. This requires orienting each of the grooves on core 1, as it passes through the center hole in board 5, to face in the direction of one of the four holes (placed on board 5 at intervals of 90 degrees) through which a corresponding conductor passes. A person with ordinary skill in the art would have recognized that such alignment of the grooves on core 1 with the fixed positions of the conductors on board 5 cannot be maintained if core 1 twists in relation to board 5. See Ex. 1012, ¶ 121. Therefore, by teaching alignment of the grooves and the conductors at board 5, JP ’910 suggests using board 5 to prevent twisting motion of core 1. That is, a person of ordinary skill in the art would have recognized that preventing twisting motion of core 1 in relation to board 5 would maintain alignment between grooves 3a, 3b, 3c, 3d and conductors 4a, 4b, 4c, 4d, in accordance with the teaching of JP ’910. Further, as Berk-Tek argues, “since one of the most important concerns, as stated in the reference[,] is to avoid any misplacement of the conductors in relation to the core, it would [have been] prudent to prevent any twisting of the core relative to the conductors at the first possible instance during the manufacturing.” Pet. 35-36. That board 5 could have been used to prevent twisting of core 1 as it passes through board 5 need not be stated explicitly in JP ’910. See KSR, 550 U.S. at 418. We are persuaded that board 5 could have been used to prevent twisting of core 1 by one with ordinary skill in the art exercising ordinary creativity. See id. at 421; Reply to PO Resp. 11-14; Ex. 1012, ¶¶ 118-131. For example, as explained by Berk-Tek’s expert, Mr. Baxter, a person skilled in the art would have recognized that a material, such as a heat recoverable polymer that changes shape by extrusion, could have been used as a core to separate the conductors of the quad disclosed in JP ’910. Ex. 1012, ¶¶ 124-126. Such a material, according to Mr. Baxter’s testimony, “solidifies into a new form that would engage the die so as to prevent the back twisting motion of the core.” Id. at ¶ 126.” slip op. at 23
Patent outcomesUS 6,074,503 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,074,503 - PTAB · Jan 17, 2014 · IPR2013-00603 · APJ Michael R Zecher · IPR · Order
The Board granted the joint motion to terminate the proceeding before institution and ordered the duplicate filings expunged.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On January 9, 2014, the parties filed two joint motions (Papers 10 and 12) to terminate this proceeding. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. The parties also filed a copy of their written settlement agreement (Exhibit 2001), as well as two requests (Papers 11 and 13) to treat the settlement agreement as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The two joint motions to terminate this proceeding, as well as the two requests to treat the settlement agreement as business confidential information, are identical copies of each other. For purposes of providing a clear record in this proceeding, the Board will expunge the second joint motion (Paper 12) to terminate this proceeding, along with the second request (Paper 13) to treat the settlement agreement as business confidential information, because these documents are duplicates. This proceeding is still in the preliminary stages. Patent Owner has not yet filed its preliminary response and the Board has not instituted a trial. The parties further represent that the related litigation between the parties involving U.S. Patent No. 5,980,559 (“the ’559 patent”) has been dismissed without prejudice. Paper 10 at 2-3. The parties identify three related matters, two of which involve independent claim 24 of the ’559 patent, the only claim challenged in this proceeding. Id. at 3-4. With respect to the two related matters involving independent claim 24, the parties stipulate that it has been more than one year since Patent Owner has served each defendant with a complaint alleging infringement of the ’559 patent. Id. Under the circumstances, the Board determines that it is appropriate to terminate this proceeding without rendering either a decision to institute or a final written decision. See 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 5,980,559
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.