- Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution deniedPTAB · Oct 1, 2018 · IPR2018-00880 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution for all challenged claims under § 314(a), applying the General Plastic factors to find that the later-filed petition presented a tactical filing concern.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Petitioner had access to Patent Owner’s Preliminary Response in the –00005 IPR (filed January 12, 2018), and to the Board’s Decision denying institution of that petition (filed March 20, 2018). Thus, the timing of Petitioner’s filing in this case raises the potential for abuse, because Petitioner had ample opportunity to study the arguments raised by Patent Owner, and the Board’s findings and conclusions of law, regarding the commonly challenged claims of the ’090 patent. See Prelim. Resp. 13–15. Thus, we determine that Factor 3 weighs strongly against institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’090 patent.” slip op. at 2
Discretionary denialPatents in suitUS 8,474,090 - Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution deniedPTAB · Oct 1, 2018 · IPR2018-00882 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding the General Plastic factors, including tactical follow-on filing and substantially similar prior art and arguments, favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Petitioner had access to Patent Owner’s Preliminary Response in the –2050 IPR (filed December 14, 2017), and to the Board’s Decision denying institution of that petition (filed March 12, 2018). Thus, the timing of Petitioner’s filing in this case raises the potential for abuse, because Petitioner had ample opportunity to study the arguments raised by Patent Owner, and the Board’s findings and conclusions of law, regarding the commonly challenged claims of the ’233 patent. See Prelim. Resp. 16. Thus, we determine that Factor 3 weighs strongly against institution.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’233 patent.” slip op. at 2
Discretionary denialPatents in suitUS 9,038,233 - Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution deniedPTAB · Oct 1, 2018 · IPR2018-00898 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding the General Plastic factors, considered as a whole, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Petitioner had access to Patent Owner’s Preliminary Response in the –2133 IPR (filed January 5, 2018), and to the Board’s Decision denying institution of that petition (filed March 28, 2018). Thus, the timing of Petitioner’s filing in this case raises the potential for abuse, because Petitioner had ample opportunity to study the arguments raised by Patent Owner, and the Board’s findings and conclusions of law, regarding the commonly challenged claims of the ’553 patent. See Prelim. Resp. 16–23. Indeed, it appears that Petitioner took advantage of “the opportunity to strategically stage their prior art and arguments,” to account for the Board’s decision in the –2133 IPR. Gen. Plastic, slip op. at 17–18. For example, in the –2133 IPR, the Board determined that Petitioner had not established sufficiently the prior art status of “Suckmaster II Vacuum Robot” (–2133 IPR, Ex. 1004) and “Suckmaster II vacuum robot control program” (–2133 IPR, Ex. 1005). –2133 IPR, Paper 8, 6. In this proceeding, Petitioner appears to attempt to avoid a similar outcome by submitting a different version of the Suckmaster Article and a different declaration from the author of the Suckmaster Article, Mr. Dale Heatherington. Prelim. Resp. 20; compare –2133 IPR, Exs. 1004, 1006, with Exs. 1008, 1010. This approach suggest that Petitioner was aware of, and relied upon, the papers filed in the –2133 IPR when preparing this Petition. Thus, we determine that Factor 3 weighs strongly against institution.” slip op. at 11
Discretionary denialPatents in suitUS 8,600,553 - Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution deniedPTAB · Oct 1, 2018 · IPR2018-00897 · APJ William V Saindon · IPR · Institution
The Board denied institution of review on all challenged claims under § 314(a), finding that the General Plastic factors favored Patent Owner and Petitioner offered no mitigating explanation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it.” Gen. Plastic, slip op. at 16. Factor 2 favors Patent Owner because at the time iLife filed its petition, Petitioner knew or should have known of the prior art asserted in its Petition. In particular, Petitioner and iLife both submitted invalidity contentions in the ITC proceeding effectively identifying all of the prior art asserted in this proceeding on September 29, 2017, over 6 months prior to Petitioner filing the Petition on April 16, 2018. See Ex. 2009, 4, 8, 13, 15, 17–19, 23, 25. Petitioner knew about the prior art asserted in this proceeding at the time the iLife petition was submitted and thus had apparent opportunity to file this Petition at a time on par with the iLife petition. Petitioner offers no explanation for why it waited until after Patent Owner filed its Preliminary Response and we issued our Decision on Institution in that proceeding. Accordingly, Factor 2 favors Patent Owner.” slip op. at 9
Discretionary denialPatents in suitUS 6,809,490 - Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution deniedPTAB · Sep 5, 2018 · IPR2018-00761 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution of inter partes review for all challenged claims under its General Plastic discretionary analysis.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“[F]actor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. . . . Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap . . . . All other factors aside, this is unfair to patent owners and is an inefficient use of the inter partes review process and other post-grant review processes. Id. at 17–18 (internal citation and footnote omitted).” slip op. at 11
Discretionary denialPatents in suitUS 7,155,308 - Minerva Surgical, Inc. v. Hologic, Inc.All claims unpatentablePTAB · May 8, 2018 · PGR2017-00002 · APJ Meredith C Petravick · PGR · Final written decision
Claims 1–19 are unpatentable under § 112(a) for lack of written description; Petitioner did not prove lack of enablement.
RulingsFinal written decision- BurdenUnpatentable
“Written Description and the ’506 Application The test for written description is an objective inquiry into the four corners of the specification from the perspective of a POSA. Using this test, the invention must be described in a manner sufficient to demonstrate that the inventor actually invented the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Written description is a question of fact judged as of the relevant filing date. Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). An ipsis verbis disclosure, however, is not necessary to satisfy the written description requirement. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The disclosure need only reasonably convey to a POSA that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. Id.; see Ariad, 598 F.3d at 1351.” slip op. at 23
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“Written Description and the ’506 Application The test for written description is an objective inquiry into the four corners of the specification from the perspective of a POSA. Using this test, the invention must be described in a manner sufficient to demonstrate that the inventor actually invented the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Written description is a question of fact judged as of the relevant filing date. Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). An ipsis verbis disclosure, however, is not necessary to satisfy the written description requirement. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The disclosure need only reasonably convey to a POSA that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. Id.; see Ariad, 598 F.3d at 1351.” slip op. at 23
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledNot shown unpatentable
“Under 35 U.S.C. § 112(a), enablement is separate and distinct from the written-description requirement. Ariad, 598 F.3d at 1344. “The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.” United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). “[A] patent specification complies with the statute even if a ‘reasonable’ amount of routine experimentation is required in order to practice a claimed invention.” Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999). Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). These factors, referred to as the Wands factors, include: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breath of the claims. Wands, 858 F.2d at 737. It is Petitioner’s burden to show by a preponderance of the evidence that the claims of the ’989 patent lack enablement. 35 U.S.C. § 326(e). Petitioner’s evidence and argument does not sufficiently establish that the ’989 patent fails to teach those in the art to make and use the claimed invention without undue experimentation. See PO Resp. 58–66. The Petition does not address the Wands factors sufficiently so as to show that undue experimentation is required to make or use the claimed invention. For example, neither the Petition nor Dr. Pearce sufficiently addresses the state of the prior art or the relative skill of those in the art. See Pet. 64–65; Ex. 1002 ¶¶ 145–152; PO Resp. 62. As Patent Owner argues, this is an “omission[] that [is] particularly fatal” to Petitioner’s enablement argument, because Petitioner argues that mechanical expansion and inflation expansion are incompatible and cannot be combined. PO Resp. 62; see Pet. 30–38, 64. Dr. Grundfest, however, testifies that it was well known to combine mechanical and balloon-based expansion in surgical devices. Ex. 2005 ¶¶ 132–136; PO Resp. 56. During cross-examination, Dr. Pearce testified that he “thought about the state-of-the-art in minimally invasive surgery during the 1990s.” Ex. 2003 18:1–14. Dr. Pearce’s testimony is conclusory and does not sufficiently address whether he considered whether it was well known to combine mechanical expansion and inflation expansion in surgical devices. For another example, relying upon the testimony of Dr. Pearce, the Petition asserts that a redesign of the expansion design disclosed in the ’989 patent “would take a substantial amount of time and cost to achieve.” Pet. 65 (citing Ex. 1002 ¶ 149). Likewise, Dr. Pearce testifies, “[s]uch a redesign would take a substantial amount of time and cost to achieve.” Ex. 1002 ¶ 149. Dr. Pearce, however, does not explain sufficiently why combining mechanical expansion and inflation expansion would require a substantial amount of time and cost. See id. For these reasons, we determine that Petitioner has not met its burden of showing by a preponderance of evidence that claims 1–19 are unpatentable under 35 U.S.C. § 112(a) for lack of enablement.” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Factors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (quoting Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983)). We are not persuaded that Dr. Pearce’s testimony concerning the level of skill in the art is erroneous to the extent it does not explicitly require experience related to devices used for uterine surgical procedures or surgical devices that employ expandable inflation-based and mechanical-based components. Patent Owner’s argument and Dr. Grundfest’s testimony is inconsistent with the ’989 patent, which does not disclose an ablation device or method of using an ablation device that solves problems unique to endometrial ablation or unique to surgical devices that employ expandable inflation-based and mechanical-based components. The ’989 patent does not limit the art to be “the field of minimally invasive surgical and uterine devices” (Ex. 2005 ¶ 60). The ’989 patent states: “The present invention relates generally to the field of apparatuses and methods for ablating or coagulating the interior surfaces of body organs. Specifically, it relates to an apparatus and method for ablating the interior linings of body organs such as the uterus and gallbladder.” Ex. 1001, 1:20–24; see also id. at 2:36–38 (“The present invention is an apparatus and method of ablation and/or coagulating tissue, such as that of the uterus or other organ”).” slip op. at 16
Patent outcomesUS 9,247,989 unpatentable§ 112 disclosurePatents in suitUS 9,247,989 - Willis Electric Co., Ltd. v. Polygroup Macau Ltd. (Bvi)Some claims unpatentablePTAB · May 7, 2018 · IPR2017-00309 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1 and 4 are unpatentable over Chen and McLeish; the challenges to claims 2–3 and 5–10 were not established, and the Otto and McLeish ground failed.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Claim 1 recites “a plurality of tree trunk sections” and a “power distribution subsystem comprising a female end . . . having . . . a channel void” and specifies that the “power distribution system [is] disposed within an inner void of a second [tree] trunk section.” There is no dispute that each embodiment of the ’416 patent shows the power distribution subsystem is a component separate and distinct from the tubular structure defining the body of the various “tree trunk sections.” For example, Figure 8 of the ’416 patent, reproduced above in the summary of the ’416 patent, shows the power distribution subsystem as a separate component with female end 700 of the power distribution subsystem, itself, defining channel receiving void 710. Id. at 12:38–44, Fig. 8. Although the Specification of the ’416 patent makes clear that the patent is not limited to these embodiments (see, e.g., Ex. 1001, 6:14–56), the claims specifically recite a “power distribution subsystem” separate and distinct from the “tree trunk section.” Specifically, they require the “power distribution subsystem [is] disposed within an inner void of [the tree] trunk section.” Contrary to Petitioner’s contentions, the plain language of claim 1 requires that the “channel void” is formed in the “power distribution subsystem,” rather than some combination of an external surface of the power distribution subsystem and an internal surface defining the inner void of tree trunk section.4 Petitioner’s contentions regarding the word “having” do not persuade us otherwise. Petitioner’s proposed construction is unreasonably broad, as it is divorced from the plain language of the claims. The evidence before us, discussed above in this section, supports Patent Owner’s contentions that “the female end [of the power distribution subsystem] having . . . a channel void” requires that “channel void” is formed in the female end of the power distribution subsystem. For at least these reasons, we determine that the “channel void” in claim 1 must be formed in the female end of the power distribution subsystem (i.e., not defined only by an outer wall of the power distribution system in combination with an interior void of the tree trunk section).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Chen was published on March 29, 2012. Ex. 1007, (65). A provisional patent application, such as the one at issue in this proceeding, is available to the public upon written request and payment of a fee after, for example, the non-provisional application is published. See, e.g., 37 C.F.R. §§ 1.11(a) and 1.14(a)(1)(v). We see no basis for Patent Owner’s position that Chen’s provisional patent application was not sufficiently publicly available. Indeed, as noted above, Patent Owner’s position is premised on the mistaken understanding that provisional patent applications are not publicly available until the corresponding non-provisional filing issues as a patent. Patent Owner acknowledges it has no particular support for its contentions. See, e.g., Tr. 38:22–39:1 (“And while both sides have cited a variety of cases, surprisingly to me there is no case that precisely addresses this.”). Based on the record before us, we determine that the disclosure from the provisional application was properly incorporated by reference in Chen and publically available as of the publication date of the application resulting in the Chen patent (i.e., March 29, 2012). Therefore, the provisional application is part of the disclosure of Chen.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“As for the “spring activated contact” limitations, we are persuaded by Petitioner’s contentions that spring-activated contacts were well known in the art at the time of the invention. See Pet. 33–35 (citing, e.g., Ex. 1007, 2:5–18, 11:21–28, 12:30–37; Ex. 1011, 12:64–67; Ex. 1002 ¶¶ 101–104). Indeed, there appears to be no dispute concerning that contention. See, e.g., PO Resp. 24. Nevertheless, we find that McLeish discloses spring-activated contacts. Ex. 1011, 12:64–67. Moreover, Chen also discloses, for example, “bringing a pair of spring contacts into alignment with a pair of terminals to make an electrical connection.” See Ex. 1007, 2:5–18. Further, we credit Dr. Durfee’s testimony, which provides additional evidence that spring-activated contacts were well known at the time of the invention. See Ex. 1002 ¶¶ 101–104. We are also persuaded that one skilled in the art would have found it obvious to utilize a spring-activated contact in the provisional application at least because “such a contact in the central void of the female end [would] secure a reliable connection.” Pet. 35; see also id. at 41–42. Patent Owner does not dispute Petitioner’s rationale in connection with the disclosure of the provisional application. With respect to the non-provisional disclosure, Patent Owner contends that Petitioner’s rationale is based on impermissible hindsight, that there is no evidence Chen’s connectors suffered from problems requiring the proposed modifications, and that the proposed modifications would render Chen inoperable. PO Resp. 22–29. To the extent these contentions are relevant to Petitioner’s proposed modification to the provisional application’s disclosure, we determine that Patent Owner’s response does not identify fault in Petitioner’s persuasive contentions with respect to the proposed modifications to the teachings of the provisional application’s disclosure. The provisional application explains that the portion considered the “central void” by Petitioner is “a conductive cylinder forming a recess 452 for receiving electrical connector [43]8.” Ex. 1008, 31. Petitioner’s proposed modification is simply to include a spring-activated contact on recess 452 to aid the engagement between recess 452 and electrical connector 438. Pet. 35; see also Tr. 59:8–9 (“With McLeish we’re only looking in this proceeding for very limited disclosure of electrical contacts.”). That recess 452 is part of what the provisional application’s disclosure, itself, characterizes as the female end. For at least the reasons explained above, we do not agree that such a modification is based solely on the disclosure from the ’416 patent. Nor does the proposed modification render the arrangement disclosed in the provisional application inoperable. Rather, spring-activated contacts improve the connection. See Ex. 1002 ¶ 102 (“[S]pring-activated contact(s) will ensure a more reliable electrical connection between two contacts. This is especially true where the electrical connections are detachable.”).” slip op. at 22
Patent outcomesUS 8,863,416 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,863,416 - Willis Electric Co., Ltd. v. Polygroup Macau Ltd (Bvi)All claims unpatentablePTAB · May 7, 2018 · IPR2017-00332 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Chen’s non-provisional disclosure alone or with Geisthoff, and independently over Chen’s provisional disclosure.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“After consideration of Patent Owner’s contentions and Dr. Lebby’s testimony to the contrary, we are persuaded by Petitioner’s contentions and credit and give substantial weight to Dr. Durfee’s testimony (’332 Pet. 34– 35; ’332 Ex. 1002 ¶ 96; Reply 26–29; Ex. 1026 ¶¶ 41–43) because we find that Petitioner’s contentions and Dr. Durfee’s testimony are consistent with Chen’s teachings. For instance, consistent with Petitioner’s contentions and Dr. Durfee’s testimony, we find that Chen at least suggests such a vertically extending section for example, by disclosing that “contact set 302 comprises a coaxial electrical connector” in which “first electrical contact 306 comprises a portion of outside surface of contact set 302” and “[s]econd electrical contact 308 . . . may be located generally at a center, bottom portion of receptacle 310.” Ex. 1007, 12:23–29 (emphasis added), Figs. 9, 10. Dr. Lebby’s testimony indicates that he acknowledges that insulation in some form (e.g., air) is needed between first electrical contact 306 and second electrical contact 308. Ex. 2004 ¶¶ 123, 193. We find that Chen’s disclosure at least suggests that the contact is formed on only an “outside surface” of the cylindrical object depicted in Figure 9 and, further, need not comprise the entire structure, but may be only “a portion” of that object (Ex. 1007, 12:23–29, Figs. 9, 10), with the remainder being insulation as Dr. Lebby acknowledges is needed between contacts 306 and 308 (Ex. 2004 ¶¶ 123, 193). Furthermore, we find that Dr. Durfee’s testimony that one having ordinary skill in the art would have known and had reason to implement an insulator using insulating material is consistent with the evidence of record of the knowledge of the skilled artisan, including Dr. Durfee’s testimony (’332 Ex. 1002 ¶ 96; Ex. 1026 ¶¶ 41–43), as well as the teaching of such an insulator in Chen’s provisional application, incorporated by reference in Chen “[a]n inside surface of connector 448 may be insulated to avoid creating an electrical connection between connector 348 and connector 448.” Ex. 1008, 20:5–7, Fig. 13.” slip op. at 50
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 19–20 (numbering added) (citing Ex. 1002 ¶ 8). Patent Owner does not dispute Petitioner’s contentions regarding the level of skill. See, e.g., PO Resp. 45–48; see also Prelim. Resp. 39 (“Patent Owner will accept Petitioner’s proposed POSA definition for purposes of this Preliminary Response only”). We adopt Petitioner’s description of a person of ordinary skill in the art as it is consistent with the level of skill implied by the disclosures of the prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of skill in the art).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Consistent with Petitioner’s contentions (Reply 4, 6) and Dr. Durfee’s testimony (Ex. 1026 ¶¶ 6, 12), each of the independent claims recites that the “female end” is of a “trunk section,” not an electrical connector (Ex. 1001, 16:3–11, 16:63–17:4, 17:59–18:2, 18:44–52). Additionally, in each of the independent claims, that “female end of a second trunk section” has “the central contact device and the channel contact device [that are] configured to conduct electricity.” Id. Accordingly, the claims recite that the “end” is that of a trunk section. Furthermore, consistent with Dr. Durfee’s testimony (Ex. 1026 ¶ 7) the ’495 Patent Specification describes the female end as part of a trunk section. Ex. 1001, 4:27–34, 10:41, 11:61–66, 13:35–36, 14:24–25. The ’495 Patent Specification also indicates that Figures 1, 3a–c, 4a–c, 7, depict views of “a female end of a tree trunk section.” Ex. 1001, 4:65–66, 5:4–5, 5:8–9, 5:12–17, 5:26–27, 5:29–30, 5:47, 5:53–54. Accordingly, we determine that “female end” recited in independent claims 1, 11, 21, and 28 is “an end of a trunk section having a central void and a channel void,” as Petitioner proposes (Reply 2).10” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“As discussed supra in Section II.A.1, we agree with Petitioner that the “female end” is of a tree trunk section. 11 In view of our aforementioned determination, based on the record before us, after considering all of the evidence and argument presented by the parties, we see no real difference in the parties’ proposed constructions because the claims recite that the “female end” has a “channel void” and that the male end engages the female end. Ex. 1001, 16:3–11, 16:63–17:4, 17:59–18:15, 18:44–64. Because the claims already recite expressly the additional limitations that are part of Patent Owner’s proposed construction (PO Resp. 11), those limitations structurally define “channel void” such that it is not merely air or space, as Dr. Lebby testifies (Ex. 2004 ¶¶ 108, 110). Although the ’495 Patent Specification depicts the channel void being formed in the power distribution subsystem, the ’495 Patent Specification makes clear that the patent is not limited to these embodiments. Ex. 1001, 6:10–15, 6:22–32, 6:42–47. Accordingly, we adopt Petitioner’s proposed construction, with the caveat the meaning of 11 This stands in contrast to the claims of U.S. Patent No. 8,863,416 B2 (the ’416 patent), which shares a common specification with the ’495 patent. The ’416 patent is at issue in the related IPR2017-00309 proceeding. Claim 1 of the ’416 patent, for example, recites “the second power distribution subsystem comprising a female end, the female end having a central void and a channel void.” “channel void” pertains to just that term and should not be understood to negate the express recitations of each of the independent claims, for example, requiring that the “female end of a second trunk section” has the “channel void.” Ex. 1001, 16:3–11, 16:63–17:4, 17:59–18:15, 18:44–64.” slip op. at 11
Patent outcomesUS 9,119,495 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,119,495 - Willis Electric Co., Ltd. v. Polygroup Macau Ltd (Bvi)All claims unpatentablePTAB · May 7, 2018 · IPR2017-00331 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Chen’s non-provisional disclosure alone or with Geisthoff, and Chen’s incorporated provisional disclosure.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Based on the record before us, after considering all of the evidence and argument presented by the parties, we agree with Petitioner’s proposed construction. We credit the testimony of Dr. Durfee (Ex. 1026 ¶¶ 6, 7, 9, 11–17, 22–24; Ex. 1002 ¶ 59) over that of Dr. Lebby (Ex. 2004 ¶¶ 40–44, 94–98, 100) because, as will be explained below, Dr. Durfee’s testimony is consistent with the language of the claims and the ’495 Patent Specification.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“As discussed supra in Section II.A.1, we agree with Petitioner that the “female end” is of a tree trunk section. 11 In view of our aforementioned determination, based on the record before us, after considering all of the evidence and argument presented by the parties, we see no real difference in the parties’ proposed constructions because the claims recite that the “female end” has a “channel void” and that the male end engages the female end. Ex. 1001, 16:3–11, 16:63–17:4, 17:59–18:15, 18:44–64. Because the claims already recite expressly the additional limitations that are part of Patent Owner’s proposed construction (PO Resp. 11), those limitations structurally define “channel void” such that it is not merely air or space, as Dr. Lebby testifies (Ex. 2004 ¶¶ 108, 110). Although the ’495 Patent Specification depicts the channel void being formed in the power distribution subsystem, the ’495 Patent Specification makes clear that the patent is not limited to these embodiments. Ex. 1001, 6:10–15, 6:22–32, 6:42–47. Accordingly, we adopt Petitioner’s proposed construction, with the caveat the meaning of 11 This stands in contrast to the claims of U.S. Patent No. 8,863,416 B2 (the ’416 patent), which shares a common specification with the ’495 patent. The ’416 patent is at issue in the related IPR2017-00309 proceeding. Claim 1 of the ’416 patent, for example, recites “the second power distribution subsystem comprising a female end, the female end having a central void and a channel void.” “channel void” pertains to just that term and should not be understood to negate the express recitations of each of the independent claims, for example, requiring that the “female end of a second trunk section” has the “channel void.” Ex. 1001, 16:3–11, 16:63–17:4, 17:59–18:15, 18:44–64.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(1) a person with at least a bachelor’s degree in mechanical engineering or electrical engineering; and at least one to two years of experience in mechanical and electrical design aspects of products having mechanical and electrical connections, or (2) a designer with at least one to two years of experience in designing lighted artificial trees. Pet. 19–20 (numbering added) (citing Ex. 1002 ¶ 8). Patent Owner does not dispute Petitioner’s contentions regarding the level of skill. See, e.g., PO Resp. 45–48; see also Prelim. Resp. 39 (“Patent Owner will accept Petitioner’s proposed POSA definition for purposes of this Preliminary Response only”). We adopt Petitioner’s description of a person of ordinary skill in the art as it is consistent with the level of skill implied by the disclosures of the prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of skill in the art).” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner does not dispute Petitioner’s contentions regarding independent claims 1 and 11, except with respect to “female end” and “channel void,” discussed above. As set forth in our Order of May 9, 2017, issued with our Decision on Institution, Patent Owner has been cautioned “that any arguments for patentability not raised in the response will be deemed waived.” Paper 12, 7. For the reasons given, upon consideration of the arguments and evidence in the entire trial record, we are persuaded by and adopt as our own Petitioner’s contentions and credit and give substantial weight to the testimony of Dr. Durfee that the limitations recited in claims 1 and 11 are taught or suggested by Chen (i.e., Chen’s Non-Provisional Disclosure) alone or in combination with Geisthoff. Additionally, we are persuaded by and adopt as our own Petitioner’s analysis, which relies upon Dr. Durfee’s supporting testimony regarding his articulated reasoning as to why one of ordinary skill in the art would have been motivated to modify the teachings of Chen in the manner recited in claims 1 and 11. Accordingly, based on the evidence in the entire trial record, we determine that Petitioner has 14 Because we adopt Petitioner’s proposed construction, we need not discuss further this alternative example, or Petitioner’s assertions regarding Geisthoff, which simply provides further teachings regarding the shape and reasons to incorporate such a shape into an artificial tree. We discuss these teachings further with respect to claim 20. We, however, note that we are persuaded that these teachings satisfy the recitations of plurality of configurations (claim 1) or locations (claim 11) even under the narrower construction that Petitioner raises, but contends is too narrow. demonstrated by a preponderance of the evidence that claims 1 and 11 are unpatentable as obvious over Chen’s Non-Provisional Disclosure alone or also in combination with Geisthoff.” slip op. at 27
Patent outcomesUS 9,119,495 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,119,495 - Polygroup Limited v. Willis Electric Co., Ltd.No claims unpatentablePTAB · May 7, 2018 · IPR2016-01781 · APJ William V Saindon · IPR · Final written decision
Claims 1–5, 7, 8, 11, 12, 15–18, and 21–27 were not shown unpatentable because Miller did not teach a claimed tree portion and the proposed combination lacked a supported rationale.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“application that is now the ’186 patent. Ex. 1001, (63). In our Final Written Decision addressing the ’186 patent, we agreed with and adopted Patent Owner’s proposed construction of “tree portion.” Polygroup Ltd. v. Willis Electric Co., Ltd., Case IPR2016-01610, Paper 187, 12–21 (Final Written Decision, Feb. 26, 2018). Because the ’072 patent contains the same specification as the ’186 patent, we determine that a person of ordinary skill in the art reading the ’072 patent claims in light of the specification would arrive at the same construction for “tree portion” as we did for the ’186 patent. Petitioner agrees the extrinsic evidence before us here is the same as presented in IPR2017-01610, addressing the ’186 patent. Tr. 10:3–6. Petitioner asserts that, relative to our Final Written Decision in IPR2017- 01610, a potential difference here is the structure of the claims. Tr. 9:13–20; see also id. at 8:1–9:6 (setting forth the discussion with Petitioner regarding whether the “tree portion” limitation should be construed the same as in IPR2016-01610). We address that argument below. Patent Owner asserts that the extrinsic evidence is the same relative to IPR2017-01610, but that this record includes additional citations to that evidence. Id. at 26:4–19, 27:1–28:2.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Reviewing the parties’ proposed definitions, we find Petitioner’s to be the more appropriate, with one caveat discussed later. Petitioner’s proposed level of skill would allow that person to understand the prior art in this proceeding and make and/or use it. On the other hand, Patent Owner’s proposed level of skill is too low, and includes persons not involved in the design or creation of the product, such as a person tangentially involved with the product in the manufacturing phase; people who would not know how to make and/or use the relevant art. We agree with Petitioner, arguing in its Reply, that a person of ordinary skill in the art requires the technical skills and knowledge to be able to understand, e.g., the electrical connections involved in artificial trees. Pet. Reply 2–6. As to Patent Owner’s argument that Petitioner’s requirement that a person of ordinary skill has an engineering degree and two year’s practical experience is unduly high (PO Resp. 33–34), we note that the person of ordinary skill is a hypothetical person, and that less education can be offset by more experience—in other words, we do not interpret Petitioner’s list as having a strict requirement for an engineering degree, but rather to set forth the idea that a person of ordinary skill in the art is typified by someone with the knowledge of a person with an engineering degree.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Analysis: Tree Portion Each of the independent claims challenged includes a “tree portion” limitation. Petitioner relies on Miller to teach this limitation. Pet. 28, 37– 38, 54, 57; ’1782 Pet. 26. As we discussed in IPR2016-01610, which we adopt and incorporate herein, Miller does not teach a tree portion. IPR2016- 01610, Paper 187, 33–34. In that decision, we explained that, although Miller’s tree has a trunk, branches, and lights, for example, those structures are not “a mechanically and electrically connectable modular and unitary portion of an artificial tree.” For instance, the branches are not structured as a module along with the trunk—they are completely independent. Accordingly, none of the challenged grounds meet this limitation, and we determine that Petitioner has not shown, by a preponderance of the evidence, that the subject matter of claims 1–5, 7, 8, 11, 12, 15–18, and 21–27 would have been obvious under any of the grounds presented.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“a. Not a Known Alternative We are not persuaded by Petitioner’s argument that a tapered electrical connector inside a tube is a known alternative to the snap-fit electrical connector inside a tube of Yang—there is no credible evidence that such a connection was actually known in the art. See Pet. 22–24 (arguing that “a compression-fitted tapered connector [is] one of many known conventional connectors”, “[a] POSA would have known there were numerous but finite designs to enable a secure fit”, “compression-fit connectors were known alternatives”, and characterizing the proposed combination “a substitution of one known element for another” and “obvious to a POSA to try”); see also Pet. Reply 32–33 (making similar arguments). Petitioner’s argument relies heavily on its expert, who in turn cites ten references that, to the extent they represent the state of the art, prove that no one thought to use press-fit electrical connectors in a tube, let alone consider them alternatives to snap-fit electrical connectors. Ex. 1006 ¶¶ 90–100. Instead, these references use terms like taper, press-fit, or the like in different contexts for different reasons, not relevant to the present context of securing an electrical connector inside a tube at a certain location by providing a connector having two different diameters.11” slip op. at 23
Patent outcomesUS 8,974,072 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,974,072
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.