- Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Rfcyber Corp.Institution deniedPTAB · Dec 14, 2021 · IPR2021-00979 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted Dua-based combinations rendered any claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“WCM and ICMS communicate with one another, neither the Petition nor Mr. Smith explains sufficiently why these disclosures would have caused one of ordinary skill in the art to use Dua’s ICMS to install extensions via the WCM. See Pet. 29–30; Ex. 1003 ¶ 166. At best, the cited disclosures suggest that one of ordinary skill in the art could make the proposed modification, not that they would make the modification. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“WCM and ICMS communicate with one another, neither the Petition nor Mr. Smith explains sufficiently why these disclosures would have caused one of ordinary skill in the art to use Dua’s ICMS to install extensions via the WCM. See Pet. 29–30; Ex. 1003 ¶ 166. At best, the cited disclosures suggest that one of ordinary skill in the art could make the proposed modification, not that they would make the modification. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have been knowledgeable regarding mobile payment methods and systems pertinent to the ’218 patent.” Pet. 11. Petitioner also contends that an ordinarily skilled artisan “would have had at least a bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, which would have exposed them to concepts like GlobalPlatform and SmartMX” and that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. at 11–12 (citing Ex. 1003 ¶¶ 27–28). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 8. Based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,118,218 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Rfcyber Corp.Institution deniedPTAB · Dec 14, 2021 · IPR2021-00978 · APJ Kristi L R Sawert · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the asserted combinations teach or suggest the server-initiated fund transfer limitation in claims 1 and 9.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’855 patent. Accordingly, we do not institute an inter partes review of all challenged claims of the ’855 patent on the grounds asserted in the Petition.” slip op. at 2
- BurdenDenied
“Although Petitioner contends that “it was obvious” for the WCM to initiate the fund transfer request to a financial institution, Pet. 34, Petitioner presents insufficient evidence as to why this would have been obvious to an ordinarily skilled artisan at the time of the ’855 patent based on the combined teachings of Dua and Davis. Petitioner states only in a conclusory manner that, “after the WCM receives an indication that the ‘load request’ is verified, it was obvious to send additional information identifying the credential and for the request to the ICMS, thus allowing the WCM to initiate the fund transfer request to the financial institution/bank.” Id. (citing Ex. 1003 ¶¶ 182–188). In Davis, however, the client terminal, rather than the load server,” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Although Petitioner contends that “it was obvious” for the WCM to initiate the fund transfer request to a financial institution, Pet. 34, Petitioner presents insufficient evidence as to why this would have been obvious to an ordinarily skilled artisan at the time of the ’855 patent based on the combined teachings of Dua and Davis. Petitioner states only in a conclusory manner that, “after the WCM receives an indication that the ‘load request’ is verified, it was obvious to send additional information identifying the credential and for the request to the ICMS, thus allowing the WCM to initiate the fund transfer request to the financial institution/bank.” Id. (citing Ex. 1003 ¶¶ 182–188). In Davis, however, the client terminal, rather than the load server,” slip op. at 25
- PTAB / AIA Trials › Discretionary denialNot reached
“V. DISCRETIONARY ISSUES Because we deny institution on the merits, we do not reach the discretionary issues raised by Patent Owner. See Prelim. Resp. 17–25.” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,448,855 - PTAB · Dec 14, 2021 · IPR2021-00862 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted review of claims 1–24 on all petition grounds, finding a reasonable likelihood of obviousness over the Swinger-based combinations in grounds 1–3.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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(a) (2018). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’001 patent is unpatentable. Accordingly, an inter partes review of all of the claims and all of the grounds presented in the Petition is hereby instituted.” slip op. at 2
- Skill levelSkill level board ownOther
“For purposes of this Decision, at this stage of the proceeding we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’001 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as also including a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers, and that these people may collaborate. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which includes a significant number of prior art references authored by PhDs, MDs, and BSs and combinations thereof. See, e.g., Ex. 1015 (we understand includes inventors that are PhDs and MDs); Ex. 1039 (we understand includes PhDs and MDs as inventors); Ex. 1040 (we understand inventor is a JD with a BS); Ex. 1041 (we understand authors are MDs); Ex. 1042 (we understand authors are PhDs, MD, and BS); Ex. 1043 (we understand authors are MDs); Ex. 1045 (we understand inventor is MD); see also Ex. 1053; Ex. 1054; 1; Ex. 2010; Ex. 2019. However, our decision to institute trial in this proceeding is not dependent upon the specific definition of ordinarily skilled artisan and would not change were we to adopt Patent Owner’s proposed definition.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not assert that any claim term requires express construction. See Pet. 6 (stating that it “reserves the right to respond to any constructions that PO submits”). Patent Owner does not present any remarks regarding claim construction. See generally Prelim. Resp. On this record and for purposes of this Decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). To the extent further discussion of the meaning of any claim term is” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“After considering both the Petition and the Preliminary Response, we determine that Petitioner’s arguments and evidence on the issues of motivation to combine and reasonable expectation of success provide a sufficient basis on which to institute trial. We recognize the merit of Patent Owner’s counterarguments, which are supported by the expert testimony of Dr. Kang. Prelim. Resp. 21–22, 27–29 (citing generally Ex. 2002). The issues identified by Patent Owner implicate genuine issues of fact more appropriately resolved at trial. 37 C.F.R. § 42.108(c). We decline to engage in weighing of the information presented at this stage of the proceeding. We will evaluate both parties’ arguments and evidence once the record is fully developed during trial.” slip op. at 29
Claim construction§ 103 obviousnessPatents in suitUS 8,709,001 - Tomofun, LLC v. Doggyphone LLCRehearing deniedPTAB · Dec 10, 2021 · IPR2021-00260 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show the Board overlooked or misapprehended its arguments or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “Substantial evidence is ‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” OSI Pharm., LLC v. Apotex” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Claim(s) Ground 35 U.S.C. § Reference(s)/Basis Challenged 1 7 102(b) Alasaarela1 2 8 103(a) Alasaarela 3 7–9 102(b) Beccaria2 4 7–9 103(a) Carelli,3 Beccaria 5 7–9 103(a) Bloksberg,4 Beccaria Pet. 4. Petitioner asserts that Alasaarela discloses the audio signal limitation for Grounds 1 and 2. Id. at 23–24, 31. Petitioner asserts that Beccaria discloses the audio signal limitation for Ground 3, and Carelli discloses the audio signal limitation for Ground 4. Id. at 36–37, 48. For Ground 5, Petitioner asserts that Bloksberg discloses the audio signal limitation. Id. at 60.” slip op. at 3
- BurdenDecided for patent owner
“As such, the Petition does not indicate with sufficient particularity that Petitioner relies on the Examiner’s finding as a basis for asserting that Bloksberg discloses the audio signal limitation and, thus, does not satisfy Petitioner’s burden on this point. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Because the Petition did not indicate clearly that it was relying on the Examiner’s finding, we could not have misapprehended or overlooked such a position. In addition, Patent Owner was not afforded a fair opportunity to dispute any reliance on the Examiner’s finding or the reasoning underlying the finding.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We disagree with Petitioner’s characterization of Ground 3 as being based on obviousness. Rather, the Petition clearly asserts for Ground 3 that “Claims 7-9 are anticipated under 35 U.S.C. § 102 by Beccaria[].” Pet. 4; see also id. at 32 (“Ground 3 – Claims 7–9 Are Unpatentable As Anticipated By Beccaria[]”). Petitioner’s Ground 3 analysis of claim 7 relies on Beccaria disclosing each limitation, including the audio signal limitation. Id. at 32–40. Petitioner’s Rehearing Request does not direct us to any portion of the Petition for Ground 3 that asserts any claim limitation would have been obvious over Beccaria, alone or in combination with another reference. Accordingly, we are not persuaded that we misapprehended Petitioner’s argument with respect to Beccaria.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,723,813 - PTAB · Dec 6, 2021 · IPR2021-00846 · APJ Jon B Tornquist · IPR · Institution
The Board instituted inter partes review of claims 1–12 on all asserted grounds after finding a reasonable likelihood that Petitioner would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’356 patent. Accordingly, we institute an inter partes review of” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“A petition must “identify with particularity the grounds for institution and evidence supporting such grounds,” including “the prior art relied upon and evidence that it qualifies as such.” Hulu, Paper 29 at 13 (citing 35 U.S.C. § 312(a)). The Petition identifies the grounds for institution and the evidence supporting such grounds, and presents evidence that Weikert qualifies as prior art under 35 U.S.C. § 102(b). Pet. 5–6, 27. For example, Petitioner and Dr. Lubatschowski assert that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists,” and that Weikert was included in the 2005 edition of” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We are not persuaded, on this record, that this disclosure rises to the level of a teaching away. First, Weikert does not address the specific laser system disclosed in Blumenkranz, which is already designed to successfully treat eyes with cataracts, and Patent Owner and Dr. Kang do not persuasively explain why Weikert’s concerns would apply to a non-excimer laser surgery system that is already designed to treat “eyes with cataracts.” See Ex. 1017 ¶ 8; Ex. 2002 ¶ 62; see also Ex. 2002 ¶ 57 (Dr. Kang asserting that the PRK and LASIK excimer laser systems disclosed in Weikert are unrelated to the claimed relaxation incision made during cataract surgery). Second, Weikert suggests that eyes with cataracts “could reduce the efficacy and safety of laser treatment” and that refractive keratotomy “can be an effective” option, but does not indicate that laser surgery is never, or is generally not, suitable for treating astigmatism in eyes with cataracts. Ex. 1019, 227 (emphasis added). As such, we are left with a disputed issue of material fact that is best resolved on a complete trial record.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“The evidence set forth by Patent Owner presents significant issues of fact to be addressed at trial. On the one hand, it is evident that modifying cataract surgical systems for use on the cornea, or providing a system that is capable of performing both corneal and lens surgery, was extremely difficult. Ex. 2006, 5:33–36, 25:27–31; Ex. 2007, 8:32–39, 15:53–58; Ex. 2009, 1209–11. On the other hand, Blumenkranz specifically asserts that its system is useful for not only cataract surgery, but also surgery on other areas of the eye, including the sclera, and Dr. Lubatschowski testifies that the system of Blumenkranz is “well-suited to perform . . . anterior incisions to permit access to the inner eye chamber.” Ex. 1017 ¶ 71; Ex. 1001 ¶¶ 107–108. Such evidence facially supports Petitioner’s case for obviousness. Thus, considering this evidence as a whole, we are left with a material issue of fact as to the capabilities of the Blumenkranz system that is best resolved on a complete trial record, and after reviewing the cross-examination testimony of the parties’ declarants.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,376,356 - PTAB · Dec 6, 2021 · IPR2021-00923 · APJ Brent M Dougal · IPR · Institution
The Board instituted inter partes review of claims 1–14 on all petitioned grounds, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable. See 35 U.S.C. § 314(a). A claim is unpatentable as obvious under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence, objective indicia of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“(a) Success in Modifying Petitioner argues that “a [person of ordinary skill in the art] would have anticipated success in modifying Mann’s wristwatch based on similarities in functionality and structure of the computer, cameras, and control functionality taught by Mann and Numazaki.” Pet. 20–21. In support of this argument, Petitioner cites to the Bederson Declaration testimony modification would have been well within the skill set of a [person of ordinary skill in the art].” Id. at 21 (citing Ex. 1003 ¶ 46). Petitioner also cites to legal precedent for the proposition that it is “obvious to use known techniques to improve similar devices in the same way.” Id. (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). Petitioner further explains that Mann includes “the requisite structure to capture gestures (i.e., PDA and wristwatch devices with cameras facing that user), and it expressly describes receiving finger-based input to control the operation of the wristwatch,” while “Numazaki similarly describes PDA and wristwatch devices with cameras facing the user such that a user can perform gestures over the devices to exert control over the operation of the device. Id. (citing Ex. 1004, 11–13, 15; Ex. 1005, 52:5–32). Petitioner concludes that “[a] [person of ordinary skill in the art] would have recognized that [the] modif[ication] . . . would have required a straightforward replacement of Mann’s native user-facing imaging with Numazaki’s gesture-recognition hardware” and “a straightforward software update (i.e., adding Numazaki’s gesture detection routines).” Id. at 21–22 (citing Ex. 1003 ¶ 46).” slip op. at 17
- Expert testimonyPetitioner expert discountedOther
“Patent Owner correctly notes that “[t]he Petition [and the declarant] fail[] to provide any explanation or reasoning as to why Numazaki’s no-touch gestures would draw ‘much less’ attention than physically interacting with a watch interface or using a stylus on a PDA.” Prelim. Resp. 9–10. We further note that though the Bederson Declaration testimony makes statements similar to those in the Petition, no support is provided for what appear to be conclusory statements. See Ex. 1003 ¶ 47. Further, the declarant does not identify any experience or expertise in things of a “covert nature.” See id. at App. A (declarant’s resume). Thus, we give the Bederson Declaration testimony little weight on this point. Patent Owner further argues that physical contact with a wristwatch or PDA was the normal way in which one would have expected someone to interact with such a device at the time of the invention. Prelim. Resp. 9. Patent Owner further argues that “no-touch gesture recognition . . . [is] more likely to intrigue the subject and draw their attention.” Id. at 9–10. On this record, Patent Owner’s arguments appear to have merits. Nevertheless, we do not need to determine whether this additional reason to combine by Petitioner is sufficient in light of our determination regarding the first reason to combine.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We apply these principles to the Petition’s challenges. 2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’924 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 5 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 5. statement is consistent with the problems and solutions in the ’924 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 6
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,194,924 - PTAB · Dec 6, 2021 · IPR2021-00849 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on claims 1–14, finding a reasonable likelihood that the claims would be unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’548 patent. Accordingly, we institute an inter partes review of claims 1–14 of the ’548 patent. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level board ownDecided for patent owner
“For purposes of this Decision, we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosures of the ’548 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the appropriate level of ordinary skill in the art may be reflected in “the prior art itself”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which demonstrates individuals having a broad array of scientific degrees that collaborate as a team. We note, however, that our decision to institute trial in this proceeding would not change were we to adopt Patent Owner’s proposed definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Both parties provide a construction of the term “cataract incision.” Pet. 7–9; Prelim. Resp. 17–18. Upon review of the parties’ arguments and supporting evidence, we determine that no claim terms require construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“and evidence supporting such grounds,” including “the prior art relied upon and evidence that it qualifies as such.” Hulu, Paper 29 at 13 (citing 35 U.S.C. § 312(a)). The Petition identifies the grounds for institution and the evidence supporting such grounds, and presents evidence that Weikert qualifies as prior art under 35 U.S.C. § 102(b). Pet. 5–6, 28–29. For example, Petitioner and Dr. Lubatschowski assert that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists,” and that Weikert was included in the 2005 edition of CATARACT AND REFRACTIVE SURGERY as Chapter 14: Refractive Keratotomy: Does it Have a Future Role in Refractive Surgery? Ex. 1001 ¶ 73. Although minimal, given the type of document involved, and in the absence of any reason to question Petitioner’s and Dr. Lubatschowski’s assertions, Petitioner’s evidence is sufficient to present a reasonable likelihood that Weikert is prior art to the ’548 patent under 35 U.S.C. § 102(b).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,709,548 - PTAB · Nov 18, 2021 · IPR2021-00841 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR of claims 1–15 on all six asserted obviousness grounds, finding a reasonable likelihood of success on at least one ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions, we conclude Petitioner demonstrates a reasonable likelihood it would prevail in showing that claims of the ’648 patent are unpatentable under the presented grounds. Therefore, we institute inter partes review of all challenged claims (1–15) under the grounds raised in the Petition, pursuant to 35 U.S.C. § 314. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial) (“Guidance”).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“For purposes of this Decision, at this stage of the proceeding we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’648 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as also including a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers, and that these people may collaborate. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which includes a significant number of prior art references authored by PhDs, MDs, and BSs and combinations thereof. See, e.g., Ex. 1030 (we understand includes inventors that are PhDs and MDs); Ex. 1039 (we understand includes PhDs and MDs as inventors); Ex. 1040 (we understand inventor is a JD with a BS); Ex. 1041 (we understand authors are MDs); Ex. 1042 (we understand authors are PhDs, MD, and BS); Ex. 1043 (we understand authors are MDs); Ex. 1045 (we understand inventor is MD); Ex. 1046 (we understand the inventor is an MD); see also Ex. 1053; Ex. 1054; Ex. 1055; Ex. 2010; Ex. 2019.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“CLAIM CONSTRUCTION “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that, although dependent claim 12 is indefinite, its language, “to determine one or more axial locations of the anterior capsule of the lens; and or more anterior capsule axial locations,” should be construed to mean “to determine one or more axial locations of the anterior capsule of the lens (i.e., one or more anterior capsule axial locations).” Pet. 7–8; see also Ex. 1030, 18:46–50 (claim 12). Petitioner’s position is that, as it reads in the ’648 patent, claim 12’s language is “a nonsense phrase,” rendering it indefinite, but that for the purposes of this proceeding it may be understood by the definition set forth above. Pet. 7–8. Patent Owner does not ask that any claim language be expressly construed. See generally Prelim. Resp. Claim 12 depends from independent claim 1 and is but one of fifteen challenged claims. Ex. 1030, 17:30–18:61. It is not necessary for us to consider the Petition’s specific challenges to claim 12 to render our decision” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“At this stage of the proceeding, we find Petitioner has sufficiently explained how and why the cited prior art would have been combined, why the ordinarily skilled artisan would have had a reasonable expectation of success in doing so, and that such a combination teaches or suggests the limitations or steps of claims 1–5 and 12–15. We address Patent Owner’s preliminary arguments below. Patent Owner addresses Petitioner’s Grounds 1–3 together; each is based on a combination of Swinger, Baikoff, and Li. Prelim. Resp. 10–31 (citing, inter alia, Ex. 1001 (Izatt) ¶¶ 46–49, 143, 149, 159; Ex. 1030, 2:5– 13, 11:19–26, 17:38–45; Ex. 1039 (Swinger), 17:50–54, 19:23–28, 23:28– 31, 34:30–35:3, 35:18–36:17; Ex. 1041 (Baikoff), 1843–45, 1847, 1849, Fig. 10; Ex. 1043 (Hoppeler); Ex. 1044 (Li); Ex. 1046 (L’Esperance); Ex. 2002 (Kang) ¶¶ 32–39, 46–52, 55–57, 60; Ex. 2004 (Walter) ¶¶ 16–17; Ex. 2006, 286, 296–98).15 Patent Owner addresses the claims in this way as a set, presenting the same arguments for all claims, and addresses the dependent claims as not unpatentable because the additionally cited prior art (Hoppeler and L’Esperance) do not remedy the argued shortcomings regarding Swinger, Baikoff, and Li. Id. Patent Owner argues that the ordinarily skilled artisan would not have combined these references because Swinger requires a surgeon’s direct visualization for cataract surgery, foreclosing using OCT, and because Baikoff and Li teach that OCT is limited to the eye’s anterior chamber, which makes it impossible to obtain satisfactory imaging (e.g., of lens portions behind the iris’s shadow). Id. at 15–18. Patent Owner argues that Swinger’s use of direct visualization and Baikoff’s acknowledgement of an inability to OCT-image the lens where shadowed by the iris teaches away from using OCT in cataract surgery and the combination of the references. Id. at 15–19. Patent Owner argues that the prior art combination does not disclose a device that “generate[s] image data for the patient’s crystalline lens,” or “process[ing] the image data to determine an anterior capsule incision scanning pattern for scanning a focal zone of the laser beam for performing an anterior capsule incision,” as recited by claim 1. Id. at 21–30. Patent Owner also argues that Petitioner took positions before the Office contrary to those it now asserts, specifically that in 2010 OCT imaging could 15 Patent Owner cites this evidence by shorthand names, e.g., “Swinger” and “Kang.” Although Patent Owner is free to cite evidence by any manner it desires, it is more useful to the Board if citations reference exhibit numbers, which facilitates review of the record.” slip op. at 29
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,474,648 - American Well Corporation v. Teladoc Health, Inc.Institution deniedPTAB · Nov 15, 2021 · IPR2021-00871 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of proving the Wang-I and Johnson combinations rendered the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, we must determine that the information presented in the Petition shows “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(a). For the reasons set forth below, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the ’000 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Id. (citing Ex. 1003 ¶ 62) (emphasis added). It is not clear, however, whether Petitioner actually asserts that Wang-I discloses a server containing the database recited in claim 1. But, to the extent Petitioner is taking this position, Petitioner fails to explain adequately how arbitrator 250 (even assuming for the sake of argument that arbitrator 250 is a server) contains a database defining a first subset of robots as associated with a first customer ID and a second subset of robots as associated with a second customer ID. Furthermore, we agree with Patent Owner that “Wang-I is completely silent regarding the defining of subsets of the robots, or associating such subsets with a customer ID.” See Prelim. Resp. 27 (citing Ex. 1004 ¶ 23; Ex. 2001 ¶ 69).” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Rozenblit’s testimony cited by Petitioner merely repeats the Petition’s assertions and does not offer objective evidence or analysis to support the assertion. See Ex. 1003 ¶¶ 62–67. For this reason, we do not credit the testimony of Dr. Rozenblit on this point. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail).” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have had at least a Bachelor’s of Science Degree (or equivalent) in an academic area emphasizing electrical engineering, computer engineering, computer science, biomedical engineering, or a related technical field, and at least 2-3 years of experience in the field of robotics, telepresence systems, or both (e.g., familiarity with wireless communication technology, biomedical robotic systems, etc.). Pet. 8 (citing Ex. 1003 ¶¶ 24–25). Patent Owner agrees with Petitioner’s definition for the purposes of this proceeding. Prelim. Resp. 15. Based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 7
§ 103 obviousnesscites GrahamPatents in suitUS 10,059,000 - PTAB · Nov 12, 2021 · IPR2021-00845 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on claims 1–17 and 20–26 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’024 patent. Accordingly, we institute an inter partes review of claims 1–17 and 20–26 of the ’024 patent. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level board ownDecided for patent owner
“For purposes of this Decision, we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosures of the ’024 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the appropriate level of ordinary skill in the art may be reflected in “the prior art itself”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which demonstrates individuals having a broad array of scientific degrees that collaborate as a team. We note, however, that our decision to institute trial in this proceeding would not change were we to adopt Patent Owner’s proposed definition.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“On this record, we agree with Patent Owner that the disputed preamble phrase is limiting. “[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mkt’g Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808–09 (Fed. Cir. 2002). Here, the Examiner expressly allowed the claims in view of the Examiner’s Amendment changing “[a] method” to “[a] cataract surgery method,” thereby transforming this portion of the preamble into a limitation. Ex. 1009, 14, 16, 19; see Catalina Mkt’g, 289 F.3d. at 808. system may be able to make additional types of incisions, we understand the current method steps to require a laser surgery system that is capable of creating the type of “cataract incision” discussed repeatedly in the ’024 patent, the Petition, the Preliminary Response, and Drs. Lubatschowski’s and Hatch’s declarations, i.e., the type of incisions traditionally used in the art when performing cataract surgery to allow for the insertion of slender surgical instruments. Ex. 1007, 3:10–13 (noting that the invention enables “the formation of very small and geometrically precise opening(s) and incision(s) in precise locations in and around the cornea and limbus”), 10:19–21, 11:7–10, Figs. 5A–B; Pet. 12 (noting that cataract incisions have been applied as part of cataract surgeries since the late 1800s), 29 (referencing the small cataract incisions discussed in Weikert); Prelim. Resp. 7–8 (asserting that a “cataract incision” is “a small incision” made in the cornea, limbus, or sclera, to provide access for “slender surgical instruments . . . to be inserted through a small opening in the cornea”); Ex. 1001 ¶¶ 23, 61 (Dr. Lubatschowski describing cataract incisions and noting that he “will apply the prior art as if the incision must be specifically for cataract surgery”); Ex. 2004 ¶¶ 16, 18 (Dr. Hatch asserting that the “cataract incisions” of the ’024 patent are small and made with the goal of minimizing refractive changes). In view of the foregoing, for purposes of this Decision, we construe the preamble phrase “[a] cataract surgery method” recited in independent claims 1, 8, 12, and 22 to be limiting and to require, inter alia, a method step of creating a cataract incision of the type commonly used in cataract surgery to allow for insertion of slender surgical instruments into the eye cavity.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“A petition must “identify with particularity the grounds for institution and evidence supporting such grounds,” including “the prior art relied upon and evidence that it qualifies as such.” Hulu, Paper 29 at 13 (citing 35 U.S.C. § 312(a)). The Petition identifies the grounds for institution and the evidence supporting such grounds, and presents evidence that Weikert qualifies as prior art under 35 U.S.C. § 102(b). Pet. 5, 26–27. For example, Petitioner and Dr. Lubatschowski assert that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists,” and that Weikert was included in the 2005 edition of CATARACT AND REFRACTIVE SURGERY as Chapter 14: Refractive Keratotomy: Does it Have a Future Role in Refractive Surgery? Ex. 1001 ¶ 73. Although minimal, given the type of document involved, and in the absence of any reason to question Petitioner’s and Dr. Lubatschowski’s assertions, Petitioner’s evidence is sufficient to present a reasonable likelihood that Weikert is prior art to the ’024 patent under 35 U.S.C. § 102(b). In addition, Hulu contemplates additional evidence being admitted in a reply to a patent owner preliminary response, as long as that evidence is responsive to the prior briefing. Hulu, Paper 29 at 14. In this case, Petitioner’s evidence submitted in its Reply is responsive to arguments made in the Preliminary Response, and confirms what was asserted in the Petition CATARACT AND REFRACTIVE SURGERY and the document bears a copyright date of 2005 (or, as asserted by Dr. Lubatschowski, is a “2005 edition”). Ex. 1060, 5, 12; Pet. 5, 26–27; Ex. 1001 ¶ 73. In addition, this evidence indicates that CATARACT AND REFRACTIVE SURGERY was published by “Springer,” which is a well-known publishing company, and is the type of document that would be expected to be made publically accessible. See Ex. 1001 ¶ 73 (asserting that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists”); Ex. 1019, 220, 224, 227, 228, 230, 232 (providing a “Summary for the Clinician” at the end of several sub-chapters); Ex. 1060, 4–5. In the absence of evidence or argument suggesting that Weikert was not publically available, at this stage of the proceeding, we find the information presented in the Petition, as confirmed by the Reply evidence submitted by Petitioner, demonstrates a reasonable likelihood that Weikert is prior art to the ’024 patent.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,233,024
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.