• Apple Inc. v. Ferid AllaniInstituted
  PTAB · Nov 4, 2025 · IPR2025-00857 · APJ Jeffrey S Smith · IPR · Institution

  The Board instituted review of claims 1–27 on all asserted grounds, finding a reasonable likelihood of unpatentability for claims 21 and 23–26.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Institution of an inter partes review may not be authorized by statute “unless . . . the information presented in the petition . . . and any 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(a). Upon consideration of the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1– 27 of the ’058 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A [person of ordinary skill in the art] at the time of the ’058 Patent would have had bachelor’s degree in computer engineering, electrical engineering, or a related field, with two to three years of experience with web-based information systems. Additional education or experience might substitute for the above requirements. Dec., ¶¶37-39. Pet. 3 (citing Ex. 1003 ¶¶ 37–39). Patent Owner contends that: A [person of ordinary skill in the art] at that time would be a person with a bachelor’s degree in computer science, computer engineering, or a closely related discipline and two years of relevant professional experience in software engineering or a 2 US Patent No. 6,119,155 issued Sept. 12, 2000 (Ex. 1004). 3 US Patent No. 6,037,934 issued Mar. 14, 2000 (Ex. 1005). 4 US Patent No. 6,353,839 B1 filed Apr. 30, 1998, issued Mar. 5, 2002 (Ex. 1006). 5 US Patent No. 6,493,702 B1 filed May 5, 1999, issued Dec. 10, 2002 (Ex. 1008). 6 US Patent No. 6,138,158 issued Oct. 24, 2000 (Ex. 1007). similar field. Alternatively, someone with an advanced degree and less professional experience or less education and more professional experience would also qualify as a [person of ordinary skill in the art]. Prelim. Resp. 11. Given that Patent Owner’s definition of a person of ordinary skill substantially overlaps with Petitioner’s definition, and given that Patent Owner does not challenge Petitioner’s definition, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that the plain meaning of “beforehand locally stored” requires the claimed selection pages to be present on the local device before a user conducts a preliminary search. Even if we were to agree with Petitioner that a user could download and store selection pages to the local device, such downloading and storing must occur before the user locally performs a preliminary search in order for the selection pages to be “beforehand locally stored” within the scope of claims 1 and 27. We construe the terms “said selection pages being beforehand locally stored” recited in claim 1 and “said selection pages being . . . beforehand locally stored” recited in claim 27 as requiring the selection pages to be locally stored before a user locally performs a preliminary search.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We agree with Petitioner. Rossman discloses times when accessing a web page over the network is unavoidable. Col. 8; see Pet. 21. Himmel teaches that using a bookmark to directly access a desired page is quicker than navigating through intermediate pages to get to the desired page. See Pet. 22–23, 25. Patent Owner does not address Rossman’s disclosure that a request to a network web page may be unavoidable, and does not address Himmel’s disclosure of making a direct request to the desired web page to save time and conserve network resources when accessing the desired web page. On this record, we agree with Petitioner that adding Himmel’s bookmarks to Rossmann’s cards provides the benefit of directly accessing a particular web function, thus reducing network traffic and data usage as compared to navigating multiple web pages to arrive at the particular web function.” slip op. at 9

  Claim construction§ 103 obviousness
  Patents in suitUS 10,943,058
• Kohler Co. v. Delta Faucet Co.Some claims unpatentable
  PTAB · Oct 1, 2025 · IPR2024-00700 · APJ Jane E Inglese · IPR · Final written decision

  Claims 1, 2, and 9 are unpatentable as obvious; claims 3–8 and 10–24 were not shown unpatentable because the asserted references failed to establish limitations including the claimed light pipe features.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, we adopt Petitioner’s definition of a POSITA. Petitioner’s witness (Mr. Cook) qualifies as a POSITA under this definition, and, therefore, is qualified to opine from the perspective of a POSITA on technical matters included within the areas of expertise prescribed by the definition. As indicated above, Petitioner’s definition of a POSITA does not require education in the field of optics and professional experience designing or analyzing optical apparatus, unlike Patent Owner’s definition. We are aware, however, that Patent Owner’s witness (Dr. Klopp) has more extensive experience with optical systems and methods than Petitioner’s witness (Mr. Cook). Compare Ex 1003 ¶¶ 8–14, Ex. 2005, 39:21–59:17, with Ex. 2003 ¶¶ 3–20, Ex. 2004, 1–2, Ex. 1015, 10:22–13:25. Although Mr. Cook possesses excellent credentials in the field of mechanical engineering, his experience in the design and analysis of optical systems and methods is sparse and insubstantial compared to that of Dr. Klopp. Id. Due to this difference in experience levels, in instances where the witnesses express differing views on factual issues related to optical systems and methods, we will accord more weight to Dr. Klopp’s testimony than to Mr. Cook’s.” slip op. at 8

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “through the light transmission portion and bottom output face 313 of light conductor 38, which teaches transmitting light in parallel with the longitudinal axis of the housing. Tseng does not disclose or teach that light is emitted through the side surface of annular protrusion 383 in a direction perpendicular to the longitudinal axis of the housing. Ex. 1004 ¶ 97. Petitioner’s assertions that this would be the case consist solely of conclusory statements, supported only by citations to Mr. Cook’s declaration. Mr. Cook, however, simply repeats Petitioner’s conclusory statements, without providing sound technical reasoning supported by objective evidence to explain and support his opinions. Ex. 2003 ¶¶ 101– 102, 105, 195–198, 202. We, therefore, accord little weight to Mr. Cook’s opinion on this particular matter because it “merely repeats, verbatim, the conclusory assertion for which it is offered to support,” and “does not cite to any additional supporting evidence or provide any technical reasoning [in] support.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). Furthermore, Mr. Cook’s opinion conflicts with that of Patent Owner’s witness, Dr. Klopp, who opines that a “POSITA would understand from Tseng’s third embodiment that light from the LED would bypass the annular protrusion 383 of outer cliff 381, while transmitting downwardly toward the output face 313.” Compare Ex. 1003 ¶¶ 174–175, 190–194, with Ex. 2003 ¶¶ 101–102, 105. As discussed above, Mr. Cook is qualified to opine from the perspective of a POSITA on technical matters included within the expertise of a person meeting Petitioner’s definition of a POSITA, which do not include optics and optical apparatus. We, therefore, credit Dr. Klopp’s opinion over that of Mr. Cook on this particular factual issue of how it is directly related to optical systems and methods about which Mr. Cook possesses limited relevant experience. See Ex. 1003 ¶¶ 6–15 (experience in communication systems and electronics); Ex. 2005, 55:16–58:19 (design experience with electronics that use indicator lights or fiber-optic communications; no professional experience with light pipes, diffusers, or plumbing fixtures). Dr. Klopp possesses substantial research and professional experience with optical methods, fiber optic light pipes, light guides, diffusers, prisms, and analysis of faucets, spray heads, and plumbing fixtures. See Ex. 2003 ¶¶ 6–10 Supra 8 (discussing weight accorded to conflicting witness testimony); see also Resp. 2–3 (arguing that “Petitioner’s expert, Mr. Cook, is a mechanical engineer with substantial professional experience in electronics for high-voltage power systems and communications, but he has limited experience with the claimed subject matter.”).” slip op. at 34

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “would be used to construe the claim[s] in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe terms in controversy 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 the claim terms do not require construction and should be afforded their plain and ordinary meaning. Pet. 13. Patent Owner contends that it applies the plain and ordinary meaning of the claim terms. Resp. 7. Taking into consideration the information presented, we determine that none of the claim terms requires express construction for purposes of resolving the dispute before us.” slip op. at 9

  • BurdenMixed

    “perpendicular to the longitudinal axis of Tseng’s housing (internal 33 and external 34 sleeves). “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc (quoting Magnum Oil)).” slip op. at 40

  Patent outcomesUS 10,393,363 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,393,363
• Ceva Santé Animale S.A. / Egg-Chick Automated Technologies S.A.S et al. v. Targan, Inc.Some claims unpatentable
  PTAB · Jul 24, 2025 · IPR2024-00595 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–15 are unpatentable as obvious over the asserted §103 grounds; Petitioner did not show claims 16–18 unpatentable because the angled-conveyor combination lacked a supported rationale.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us, including the ’124 patent, the Gershman, Pierre, Yavnai, Tao, and Goodwin references, and the background and qualifications of both sides expert witnesses that reflect the knowledge and experience of a POSITA, including knowledge of systems for assessing and transporting poultry in an industrial setting. Patent Owner’s proposed skill level overlaps with Petitioner’s proposed skill level, and any differences would not alter the outcome of this proceeding. Therefore, we adopt Patent Owner’s proposed skill level with two modifications. A POSITA also could have a Bachelor of Science degree in Animal Science or similar discipline, and a POSITA would be familiar with techniques for assessing and transporting poultry in an industrial setting, such as visual and/or anatomical characteristics of a chick.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “Therefore, we find that Applicant distinguished Tao from “an unrestrained chick” because in Tao’s automated system a chick is restrained—the chick is held in place—by a retainer unit on a moving platform, whereas in Applicant’s claimed system a chick is not held in place on a moving platform. We further conclude that Applicant’s reason for distinguishing the claimed invention over Tao informs the claim construction even if the “prosecution history statements do not rise to the level of unmistakable disavowal . . . .” Personalized Media, 952 F.3d at 1345 (Fed. Cir. 2020). In view of the ’124 patent claims, specification, and prosecution history, we determine “an unrestrained chick” is a chick not held in place on the moving platform and free to open its wings.” slip op. at 19

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “For the reasons given below, we find the Petition has established that Gershman discloses and teaches “a moving platform to support an unrestrained chick of a particular breed” by a preponderance of the evidence.” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “to determine a characteristic [of the chick] . . . [that] manifests in one of two or more possible states, e.g., sex (male vs. female), health (healthy vs. unhealthy), genetic mutation (present vs. not present).” Reply 13 (citing Ex. 1004, 3). The recitation of a generic “database of images” does not distinguish limitation [1.4] from the asserted combination of Gershman-Pierre, particularly in view of Pierre’s disclosure of “a computerized processing process is implemented in order to compare the captured images to reference images,” as asserted in the Petition. Ex. 1004, 3 (emphasis added); see Pet. 23–24 (citing Ex. 1003, 2–5; Ex. 1004, 3, 5). Thus, we find that storage of Pierre’s reference images of male and female wing feathers in a database used for comparison in Gershman’s computerized digital chick image processing system would have been obvious to a POSITA and satisfies limitation [1.4].19 We agree with Petitioner that it would have been obvious and well within the skill level of a POSITA—someone with a Bachelor of Science degree in agricultural, industrial, or electrical engineering and two years of experience in industrial poultry sexing and/or image processing (Resp. 20)—to store reference images as taught by Pierre in a “computerized processing” database. The rationale argued by Petitioner, to organize the collection of reference images for comparison to determine whether the characteristic of interest was present, finds direct support in Gershman and Pierre. Both references disclose comparing digital images of a chick’s wing feathers to reference data (Gershman) or reference images (Pierre) of male and female chick wing patterns. Pet. 23–24; Reply 12–13. Storing digital reference images in a database for comparison to captured digital images is, moreover, a basic and straightforward task in any computerized image processing” slip op. at 44

  Patent outcomesUS 10,806,124 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,806,124
• Coxcom, LLC v. Joao Control & Monitoring Systems, LLCSome claims unpatentable
  PTAB · Feb 15, 2017 · IPR2015-01762 · APJ Beth Z Shaw · IPR · Final written decision

  Claims 1, 3–5, 8, 13–17, 20, and 84–86 are unpatentable as obvious over Koether and Crater; claim 44 was not shown unpatentable on that ground.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “owner must provide sufficient rebuttal evidence to bring reasonably into question the accuracy of Petitioner’s identification of RPIs.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012). Whether a non-party is a real party in interest is a “highly fact-dependent question” that is addressed on a “case-by-case” basis. See 77 Fed. Reg. 48,759. “A common focus of the inquiry is . . . whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. The concept of control means that “the non-party ‘had the opportunity to present proofs and argument’ . . . or ‘to direct or control the content’ of the filing.” JP Morgan Chase & Co., et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00179, slip op. at 10 (PTAB Feb. 20, 2015) (Paper 11) (“JP Morgan”). “‘The evidence as a whole must show that the non-party possessed effective control over a party’s conduct of the [proceeding] as measured from a practical, as opposed to a purely theoretical standpoint.’” Id. (quoting Gonzalez v. Banco Cent Corp., 27 F.3d 751, 759 (1st Cir. 1994)).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Ex. 1001, Abst. It describes the relevant problems encountered in the art as those involved in the control, monitoring, or security of vehicles or premises, in a network environment. Id. at 1:20–52; 3:12–21. The ’363 patent is not directed to specific issues associated with electrical circuits or electrical connections between devices. The Specification identifies no specific problem that stems from the apparatus being a particular type of electrical device. From this evidence, we conclude that a person of ordinary skill in the art with respect to the ’363 patent would be skilled in the field of networked systems. For the foregoing reasons, we are not persuaded that the level of ordinary skill in the art requires specific coursework or education in the form of a degree in electrical engineering. Instead, we are persuaded by Petitioner’s statement of the level of ordinary skill in the art, and our finding of the level of ordinary skill is similar to that proposed by Petitioner, but with a slight modification, i.e., that a basic level of experience is required, at the level of at least two years of experience in networked systems. We find that the level of ordinary skill in the art is that of one having at least two years of working experience with networked systems. A more advanced degree would be paired with a shorter period of working experience.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner has not articulated a persuasive reason for giving Mr. Bennett’s testimony little or no weight. Moreover, as discussed above, we are not persuaded that a person of ordinary skill in the art of the ’363 patent would be required to have a specific degree or coursework in electrical engineering. We are, thus, not persuaded that Mr. Bennett’s answers, during deposition, to questions about his background are wrong or that the entirety of his testimony should be given little or no weight based on this testimony.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “For purposes of the Decision to Institute, we construed the terms “remote,” “premises,” and “located at.” Dec. 8–9. We reviewed and adopted Patent Owner’s explicit definitions for these terms, which Patent Owner provided in the prosecution of the application that issued as the ’363 patent. Dec. 8 (citing Ex. 2002). Based on our review of the full record, we discern no reason to modify or further discuss in this Final Written Decision our constructions for these claim terms. For convenience, these claim constructions are reproduced in the table below. Term Citations Construction Remote Ex. 2002, “‘Remote’ means ‘separate and apart from, or 10–11 external from, or at a distance from or distant from, or not located in.’” Premises Ex. 2002, 8– “‘Premises’ means ‘a building or a structure 9 and the grounds or parcel of land associated with the building or the structure, or a building or structure or a portion, room, or office, of or in the building or structure, or a home, mobile home, mobile building, mobile structure, residence, residential building, office, commercial building, commercial office, structure, equipment, facility, machine, rig, assembly line, or edifice.’” Located at Ex. 2002, 8 “‘Located at’ means ‘situated at, or situated in, or situated on.’”” slip op. at 12

  Patent outcomesUS 7,397,363 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR
  Patents in suitUS 7,397,363
• Institut Straumann AG / Dental Wings Inc. v. Sirona Dental Systems GmbHSome claims unpatentable
  PTAB · Nov 15, 2016 · IPR2015-01190 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–8 were held unpatentable as obvious over Bannuscher and Truppe; claims 9–10 were not shown unpatentable; the motion to amend was denied.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “interpretation of the language used in claim 1 and the additional limitations of dependent claims 9 and 10. Patent Owner’s proposed construction also impermissibly reads limitations from the preferred embodiment of Figure 5 into claim 1. Patent Owner would limit the pilot hole location exclusively to a position directly over the implant position and require the drill bit to pass through the pilot hole while drilling a bore hole into the patient’s jaw. The language recited in claim 1, in the context of the ’006 specification, does not so-limit the “determinating a pilot hole” step. First, Patent Owner fails to consider the present participle form “determinating”5 at the beginning of the recited method step at issue. As a result, Patent Owner conflates the recited device production step with a specific process for drilling a bore hole into a patient’s jaw during tooth implant surgery. PO Resp. 14–15. For example, Patent Owner relies on Dr. Erickson’s Declaration testimony (and Dr. Benjamin’s deposition testimony) for the proposition that “pilot hole” is a term of art referring to “an initial hole through which a pilot drill passes during an operation.” Ex. 2002 ¶ 37 (cited at PO Resp. 16–17); see also PO Resp. 16–17 (citing Ex. 2023, 24:3– 22, 25:18–27:2, 52:2–9). The ’006 patent does not describe or reference any such “pilot drill” or “initial hole” being made during a tooth implant operation. Regardless, the claim limitation at issue is a step in a method of producing a drill template. It recites defining a pilot hole in a drill template with reference to the surfaces of neighboring teeth, nothing more. The function of actually passing a drill through a pilot hole in a drill template” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “Petitioner argues that the term “pseudo-x-ray picture” is not a term that has a commonly understood meaning to a POSA. Pet. 19 (citing Ex. 1002 ¶ 45 [47]). Patent Owner does not comment on the construction of “pseudo-x-ray picture.” PO Resp. 15–19. Having reviewed the complete record, we adopt Petitioner’s argument and evidence in support of Petitioner’s proposed broadest reasonable interpretation of “pseudo-x-ray picture.” Therefore, we adopt Petitioner’s proposed broadest reasonable interpretation of “pseudo-x-ray picture” as “any representation of measured data records of the three-dimensional optical measuring that can be superimposed on an x-ray image.” Pet. 19 (citing Ex. 1002 ¶ 49).” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableInherency not foundNot shown unpatentable

    “stylus is used to penetrate the surface of the gum repeatedly to measure the structure of the jaw bone displayed in Figure 25. PO Resp. 30–31 (citing Ex. 1007, 24:53–65 (“[S]tylus member 52 is provided with a sharp stylus 574 (FIG. 1) having a length sufficient[ly] long to penetrate gum tissue and contact the bone surface. . . . [P]ractitioner repeats the procedure of piercing the gum tissue in a region about the desired implantation site and taking point data until enough data has been collected . . . to map . . . the entire surface of bone 558 [Fig. 25] about the implantation site.”)). We agree with Patent Owner and find that the use of a sharp stylus to pierce the gum and take multiple data points via contact digitization of the jaw bone beneath the skin surface is not a 3-D optical measuring of the visible surfaces of a patient’s jaw.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “would have been motivated to combine their teachings with respect to correlating X-ray imaging data of the jaw and 3-D surface data of the jaw and teeth. Reply 22–23 (citing Ex. 1002 ¶¶ 89, 92; Ex. 1008, 1:10–11 (“precise planning of the surgical operation is necessary”); Ex. 1010, 5:19– 25 (“it is possible to carry out the entire implantological, treatment and operation planning on a scientific basis . . . to implement holistic planning results in a precisely clinical manner”)). More particularly, Bannuscher discloses the desire to obtain “all the necessary [clinical] parameters” relevant to pre-surgical implant planning, which can be “combined together” (“correlated” in the language of claim 1) using planning simulation software, for transfer to a drill template. Ex. 1010, 5:44–6:13, 6:24–40, 7:38–8:4. As Dr. Erickson testified, it would have been desirable for a POSA to have as much diagnostic information as possible when planning for dental implant surgery. Ex. 1029, 31:12–21. Truppe discloses the advantage of correlating three-dimensional X-ray imaging data of the jaw and optical imaging data of the jaw and teeth, using simulation software, to obtain a “vivid” representation. Ex. 1008, 2:7–16, 3:19–28, 3:56–58; 4:1–5. Truppe, therefore, discloses a similar process to that disclosed in Bannuscher with respect to correlating 3-D X-ray imaging data and 3-D optical data representing the surfaces of the jaw and teeth, to generate the best possible representation of the patient’s jaw and teeth. Ex. 1002 ¶¶ 89–92. A POSA would have been motivated to use Truppe’s optical measurement system to generate 3-D surface data of the jaw and teeth for use in Bannuscher’s planning simulation software, in order to produce an enhanced image for determining the optimal bore hole and pilot hole in the drill template. Id.; Ex. 2023, 186:8–187:13 (“the optical imaging [of Truppe] would basically just enhance the diagnostic data [of Bannuscher]”). For example, a POSA would have optically measured the plaster model of the jaw and teeth referenced in Bannuscher and the patient’s actual jaw and teeth, as in Truppe, to produce a “vivid” image for correlation with the X-ray imaging data. Ex. 1002 ¶¶ 89, 92.20 Bannuscher’s determination of the optimized bore hole and corresponding pilot hole in the drill template would be based on the enhanced imagery generated from the correlated 3-D data sets. In short, we are persuaded that a POSA would have had reason to incorporate the teaching of Truppe’s enhanced 3-D optical measurement technique into Bannuscher’s method for correlating 3–D X-ray image and model geometry data sets, to determine an optimal bore hole and corresponding pilot hole in the drill template. For the reasons given above, we are persuaded that Petitioner has established a sufficient motivation for a POSA to combine the relevant teachings of Bannuscher and Truppe, with a reasonable expectation of success, by a preponderance of the evidence.” slip op. at 40

  Patent outcomesUS 6,319,006 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,319,006
• Google, Inc. v. Personal Audio LLCSome claims unpatentable
  PTAB · Sep 9, 2016 · IPR2015-00846 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1–4, 9, and 13 are unpatentable as obvious over Chase and Loeb; claims 5–8, 14–17, 28, and 29 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to Rule 42.100(b)). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification, and absent any special definition, we give claim terms their ordinary and customary meaning. See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.” (internal quotation marks omitted)). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In our Institution Decision, we preliminarily interpreted the “processor for . . .” elements of claims 1 and 4 Dec. 7–8. After our Institution Decision, neither party identified any issues relating to our preliminary interpretation of the “processor for . . .,” and we discern no other reason to modify our interpretation. Accordingly, we maintain our interpretation of the “processor for . . .” for the purposes of this Final Written Decision. Our interpretation is consistent with the findings of the District Court in the Apple Litigation, which interpreted the “processor for . . .” elements as recited in claims 1, 4, 5, 6, and 14 under 35 U.S.C. § 112, ¶ 6. Because the parties raise issues regarding the scope of terms introduced in claims 5, 6, and 14, we also adopt the District Court’s interpretation of those terms and the reasoning supporting those interpretations. The claim interpretations upon which we rely in resolving disputed issues are summarized in the table below.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In our Institution Decision, we preliminarily interpreted the “processor for . . .” elements of claims 1 and 4 Dec. 7–8. After our Institution Decision, neither party identified any issues relating to our preliminary interpretation of the “processor for . . .,” and we discern no other reason to modify our interpretation. Accordingly, we maintain our interpretation of the “processor for . . .” for the purposes of this Final Written Decision. Our interpretation is consistent with the findings of the District Court in the Apple Litigation, which interpreted the “processor for . . .” elements as recited in claims 1, 4, 5, 6, and 14 under 35 U.S.C. § 112, ¶ 6. Because the parties raise issues regarding the scope of terms introduced in claims 5, 6, and 14, we also adopt the District Court’s interpretation of those terms and the reasoning supporting those interpretations. The claim interpretations upon which we rely in resolving disputed issues are summarized in the table below.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “As stated by the Federal Circuit, “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). “Rather, the test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.” Id. Petitioner does not seek to combine the devices of Chase and Loeb physically. Rather, Petitioner argues that Loeb describes an example of a conventional interface used for controlling a device that plays music and contends that features of that interface would have been recognized as advantageous for Chase’s affiliate terminal. We are persuaded that a skilled artisan would have sought out examples of admittedly conventional interfaces to improve the functionality of Chase’s affiliate terminal. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We are not persuaded that Chase teaches away from discontinuing a currently playing song to advance to a next segment. According to Chase, “[t]he jock box is a physical representation of a DAC cart located in a studio. It provides 8 pushbuttons each with an LED and a small LCD display. Conceptually the jock box is a CD player with an automated changer.” Ex. 1007 ¶ 219. As explained above, and shown in Chase’s Figure 4, DAC 52 is a component separate from remote control terminal 54. The jock box is a “physical representation of a DAC cart.” Id. We read this to be a typographical error and view the jock box as a physical representation of a DAC card, e.g., DAC card 52. If “cart” is not a typographical error, it could refer to a “cart machine,” id. ¶ 36, which also is a component separate from remote control terminal 54 (Figure 4 shows line 56 communicating with a cart, not shown). In either case, Chase’s description of a jock box does not refer to the behavior of remote control terminal 54, which is described elsewhere as follows: The DJ may also request, through the remote control terminal, that the DAC 52 start play of the next segment queued in the DAC 52, stop play of the current segment, fast forward/rewind through the current segment or to a next/previous segment. The DJ may use up/down arrows on the remote control terminal to scroll through a play list displayed to the DJ and select, out of turn, a segment from the play list. Id. ¶ 186. This description is consistent with a device that can discontinue play of a current segment and skip to the next. Thus, Chase does not teach away from a player with that behavior.” slip op. at 24

  Patent outcomesUS 7,509,178 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,509,178
• Par Pharmaceutical, Inc. / Amneal Pharmaceuticals, LLC v. Jazz Pharmaceuticals, Inc.All claims unpatentable
  PTAB · Jul 27, 2016 · IPR2015-01818 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–11 of the ’730 patent and claims 1–15 of the ’988 patent are unpatentable as obvious over the Advisory Committee Art, with claims 2 and 10 of the ’988 patent also obvious over that …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In view of the claims at issue here, we are not persuaded that the level of ordinary skill in the art is limited to the level of skill or interest of a pharmacist that dispenses FDA-approved drugs, such as one that “sits behind the counter at Walgreens.” Id. at 31:1–5. We adopt the level of ordinary skill in the art as described by Petitioner and its witness, Dr. Valuck, because it is consistent with the subject matter before us, the ’730 patent, and with prior art of record, such as Talk About Sleep (Ex.1033), Honigfeld (Ex. 1034), Elsayed (Ex. 1035), and Lilly (Ex. 1036). See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionTerm construed board ownMixed

    “Upon considering all of the evidence before us, we are not persuaded that the plain and ordinary meaning of “periodic” in the context of the ’730 patent limits “periodic reports” to those generated only at regular intervals, as Patent Owner contends. PO Resp. 28. Rather, the term includes reports generated at regular intervals and reports generated “now and again” or “intermittently,” without any particular regularity in time between events. Thus, we construe “periodic reports” as recited in the challenged claims to refer to reports that are generated at regular intervals or intermittently, i.e., now and again, including those not generated at regular intervals.” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “For the reasons given above, we find Petitioner’s evidence sufficient to prove by a preponderance that Exhibits 1004–1006 were publicly accessible on the FDA’s website not later than July 1, 2001.” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “of the ’730 patent (and claims 1, 4–9, and 12–15 of the ’988 patent) would have been obvious over the ACA (Exhibits 1003–1006), because the ACA is a public disclosure of the proposed risk management system for Xyrem—the same system covered by the ’730 and ’988 patents. Pet. 18–38; Reply 1. Petitioner relies on the Declaration testimony of Dr. Valuck in support of its argument that a POSA would have had “ample” reason to combine the ACA documents because the documents were prepared for the Advisory Committee Meeting and “relate to the same restricted distribution program, which the meeting was convened to discuss.” Pet. 19 (citing Ex. 1007 ¶ 51). Petitioner asserts, in particular, the Preliminary Clinical Safety Review (Ex. 1004), Briefing Booklet (Ex. 1005), and Xyrem Video and Transcript (Ex. 1006) were “all distributed together for a single meeting before the FDA seeking approval for prescription Xyrem®,” and the FDA Advisory Committee Transcript and Slides (Ex. 1003) was “a public transcript of and presentation given at the meeting itself.” Id. at 19 (citing Ex. 1007 ¶ 51) (emphasis added). In addition, according to Petitioner, all four ACA documents “clearly relate to the same restricted distribution program, which the meeting was convened to discuss,” and are “all linked from a single [web] page.” Id. Patent Owner does not address directly the cited evidence in the context of motivation to combine the ACA. Patent Owner challenges the motivation of a POSA to confirm that a patient has read the Xyrem educational material prior to shipping the drug product to the patient (step 1.4), an issue we address below. PO Resp. 37, 49–59. We agree with Petitioner’s analysis and determine that a POSA would have had ample motivation to combine the ACA documents, which were prepared at the same time, relate to the same drug product and the same restricted drug distribution system, were discussed together at the same Xyrem Advisory Committee Meeting, and were made available via file links from a single FDA web page.” slip op. at 39

  Patent outcomesUS 7,668,730 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,668,730
• Stats LLC v. Hockeyline, Inc.All claims unpatentable
  PTAB · Sep 15, 2015 · IPR2014-00510 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1, 2, 8, 10–12, and 30 were held unpatentable as anticipated by Hameen-Anttila and STATS Football, and obvious over STATS Football combined with Reilly.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “1. Means-plus-function Claiming Independent claim 1 of the ’107 patent includes a series of means-plus- function limitations. 35 U.S.C. § 112 ¶ 6.5 A means-plus-function limitation “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Id. The claim limitations in the ’107 patent are drafted using the accepted “means for” construct followed by a specified function, without further recitation of structure to achieve the recited function. Triton Tech of Texas, LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014); see Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). “In exchange for using this form of claiming, the patent specification must disclose with sufficient particularity the corresponding structure for performing the claimed function and clearly link that structure to the function.” Triton Tech, 753 F.3d at 1378 (citation omitted). We construe the following claim limitations for purposes of this decision, in accordance with the principles stated above. 2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “c. Claim 1 – “customized by the user to reflect desired data” We are further persuaded that Hameen-Anttila discloses hierarchical menu- based screen displays that may be “customized by the user to reflect desired data,” in accordance with our claim construction. We agree with Petitioner, that the setup menu in Hameen-Anttila (Fig. 4a) allows a user to select desired display menus (e.g., for golf) that will cause other menus not to be displayed (e.g., for hockey, bowling, and baseball) during a user’s input of golf-specific data in real time. Pet. Reply 7–8 (citing Ex. 1002, 5:21–24; Ex. 1014 (Dahbura Dec.) ¶¶ 20–21). As Dr. Dahbura notes, Patent Owner’s expert, Dr. Locke, agrees that choosing not to display a menu screen is a form of user customization. Ex. 1014 ¶ 21 (citing Ex. 1017, 72:19–73:3). We further agree with Petitioner that Patent Owner’s proffered distinction between Hameen-Anttila’s “mere usage” of hierarchical menu-based screen displays and “customizing” such displays is illusory and not consistent with the description of user customization in the ’107 patent. Pet. Reply 8 (citing Ex. 1014 ¶ 22). The individual drop-down arrows in Figure 4b further suggest the ability of a user to change the menu-based screen displays to permit the user to input desired data for the illustrated golf game. Therefore, we determine Hameen- Anttila discloses an action by the user to configure the hierarchical menu-based screen displays to permit desired data to be gathered for one or more sports games. d. Claim 1 – “transferring statistical information based on such inputted data” Patent Owner’s argument asserting Hameen-Anttila does not disclose the transfer of “statistical information based on such inputted data” also is off the mark. As noted above, Hameen-Anttila discloses that sports game event data is input into an electronic scorekeeping device and transmitted via a communications network to a server while the sports game is ongoing. Ex. 1002, 2:40-51, 2:57– 3:13. We are not persuaded by Patent Owner’s argument that the transfer of statistical information “based on” inputted data requires some form of calculation that necessarily excludes inputted data as part of the transferred “statistical information.” PO Resp. 17–19. Patent Owner does not offer a claim construction or request construction of quoted claim phrase at issue, even though Patent Owner’s argument presumes a specific definition of the phrase without explaining why it is consistent with the broadest reasonable interpretation standard. Pet. Reply 2. The language in claim 1 of the ’107 patent recites “a processor,” but it does not recite a calculation function performed by the processor on inputted data. Pet. Reply 11. The claim language also does not exclude inputted data from “statistical information” or limit “statistical information based on such inputted data” only to statistics calculated from the inputted data. Id. The preamble of claim 1, recites “gathering, processing and distributing statistical information.” Ex. 1001, 8:11–12 (emphasis added); see also PO Resp. 19 (citing Ex. 1001, 1:56–60 (“The present invention advantageously provides an electronic scorekeeping device for gathering, calculating and distributing statistical information.”)). Gathering statistical information, when read in light of the ’107 patent specification, refers to inputting sports game event data into the scorekeeping device for transmission to a central database as part of the statistical information transfer. Pet. Reply 11 (citing Ex. 1001, Abstract (“This [inputted] data is transferred in real-time in a system according to the invention via a communications means to a central database.”); Ex. 1014 ¶¶ 25–28). The ’107 patent does not define “statistical information” or “statistical information based on such inputted data.” The ’107 patent also does not exclude inputted data from the description of statistical information. Pet. Reply 12 (citing Ex. 1014 ¶ 27). To the contrary, and consistent with the understanding in the art, the ’107 patent uses the words “data,” “statistics,” “statistical data,” and “statistical information” interchangeably and with significant areas of overlap. Id.; see also id. at 4 (citing Ex. 2002 ¶ 30 (“The terms ‘statistics,’ ‘data,’ and ‘statistical information,’ are widely used in computer systems, but they are often used in very general ways with broad meanings in which their meanings have significant areas of overlap.”)). We further credit Dr. Dahbura’s testimony, that a person of ordinary skill in” slip op. at 18

  Patent outcomesUS 6,725,107 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,725,107
• Apple Inc. v. THX Ltd.Some claims unpatentable
  PTAB · Jun 9, 2015 · IPR2014-00235 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Tomonori and Sadaie; claim 3 was not shown unpatentable over Tomonori, Virva, and Sadaie.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “In sum, the ’483 patent describes and claims a sound reflecting surface that redirects sound waves output from the speaker towards the elongate output slot, whereas sound damping material absorbs standing waves inside the sound duct. The ’483 patent goes to great lengths to distinguish a sound reflecting surface from a sound damping surface. Furthermore, given that “sound damping material” is different from a “sound reflecting surface” and both are recited as separate claim limitations, it follows that a sound reflecting surface is not made of sound damping material. For the reasons given above, we construe “sound reflecting surface,” in the context of claim 1 and in light of the ’483 patent specification, as “a surface that redirects sound waves output from a speaker, not made of sound damping material.”” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “2. Other Terms Petitioner proposes to construe additional claim terms. Pet. 11–14. We determine that no express construction of these additional terms is necessary for purposes of this decision.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “suppress standing waves inside a duct. Pet. 44 (citing Ex. 1002 ¶ 112). Dr. Vipperman identifies the reason for Sadaie’s use of side wall sound damping as enabling “the sharpness of a fundamental wave resonance of a standing wave determined by the length of the sound path . . . to be suppressed because a substantial length of the sound path cannot be primarily determined.” Ex. 1002 ¶ 112 (citing Ex. 1003, 14). We agree with Petitioner’s reasoning, therefore, that “[e]xtending the damping material of Tomonori along the sidewalls of the duct,” as taught by Sadaie, would have been one of a limited number of known solutions further minimizing the presence of spurious resonances and standing waves inside the duct. Id. at 45 (citing Ex. 1002 ¶ 113). The quoted statements of Petitioner and Dr. Vipperman with respect to Tomonori and Sadaie are consistent with the principles set forth in KSR.10 Petitioner and Dr. Vipperman provide an analysis of why one of ordinary skill in the art of speaker design would have been motivated by Sadaie’s disclosure of side wall sound damping to modify Tomonori’s narrow sound duct, such that sound damping material forms the sides of the sound duct but not the bottom (sound reflecting) surface. In particular, Dr. Vipperman’s Declaration provides a sufficient analysis to support the obvious modification of Tomonori’s narrow profile speaker, by a speaker designer of ordinary skill, such that “sound damping material form[s] sides of the sound duct” to help suppress the presence of spurious resonances and standing waves inside the duct. Ex. 1002 ¶¶ 112, 113.” slip op. at 28

  Patent outcomesUS 7,433,483 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,433,483
• Redline Detection, LLC v. Star Envirotech, Inc.No claims unpatentable
  PTAB · Jun 30, 2014 · IPR2013-00106 · APJ James B Arpin · IPR · Final written decision

  Claims 9 and 10 were not shown unpatentable because the evidence did not establish a reason to combine the references to create the claimed inert environment.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner, however, does not cite precedent to support its position, and, during the oral hearing, Petitioner acknowledged that it was unaware of any supporting case law. Id. at 28:14-17. Moreover, we note that Dr. Checkel has “worked on automotive research projects with all of the ‘Big Three’ North American manufacturers as well as various suppliers to the industry.” Ex. 2018 ¶ 3. We are not persuaded on this record and with respect to this art that Petitioner has shown that a relevant distinction may be drawn between persons of ordinary skill in the United States and in Canada.” slip op. at 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Based on the present record, including Dr. Checkel’s unrebutted testimony, we are not persuaded that Petitioner has provided sufficient evidence to show that a person of ordinary skill in the art would have had reason to substitute the air used in Gilliam with inert gas alone from the mixture disclosed in Stoyle to achieve the invention recited in claim 9. Specifically, Dr. Checkel opines that: 136. The Stoyle apparatus heater relies on a high pressure process to heat oil to a temperature so as to enable flash evaporation and thus generate a large output of smoke. The Stoyle apparatus heats and forces a foam of oil and inert carbon dioxide gas under pressure through narrow annular passages in a heated metal assembly. This construction allows the oil to be pressurized and superheated above its atmospheric boiling temperature without significant degradation because of the uniform heating temperature and lack of oxygen. At the end of Stoyle’s heater tube, the superheated liquid oil is released to ambient conditions to form a mist. 137. A smoke generator relying on high pressure and flash evaporation to generate large volumes of smoke would be inappropriate and dangerous to use with the closed volume of an EVAP system, which is typically restricted to pressure of 1 psi (7kPa) or less. Even if the smoke generator had some modifications, the use of high pressure in generating the smoke and the production of large volumes of smoke at a rapid rate would risk damaging EVAP and fuel system components, possibly to the point of rupture. A person of skill would not consider Stoyle to be an analogous reference to add features missing from Gilliam. Ex. 2018 ¶¶ 136-137 (emphasis added; citations omitted). Dr. Checkel’s analysis of the differences between Stoyle and claim 9 of the ’808 patent is specific, well-supported, and persuasive. Therefore, we do not find sufficient evidence to support Petitioner’s argument for relying on Stoyle’s ventilation testing apparatus, in combination with Gilliam’s vacuum system leak-testing apparatus, to make the asserted substitution. We determine that the evidence of record is not sufficient to conclude that Gilliam and Stoyle provide a reason for one skilled in the relevant art to create an inert environment within a closed smoke-producing chamber and, subsequently, within a closed EVAP system during leak testing. In view of the differences between Stoyle’s and Gilliam’s apparatus, as detailed by Dr. Checkel, we are persuaded that a person of ordinary skill in the relevant art would not have reason to choose only the inert gas from Stoyle’s air/inert gas mixture and substitute inert gas alone for Gilliam’s use of air to achieve the invention recited in claim 9.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “iii. Combination of Gilliam and Stoyle For the reasons discussed below, we agree with Patent Owner, and we are not persuaded by Petitioner’s evidence or Petitioner’s reasoning that a person of ordinary skill would have had reason to substitute Stoyle’s use of inert gas, forced into the narrow compressed space between a bore and a plug, in place of the air used in Gilliam’s temperature-regulated, spark arrestor-governed system to generate smoke in a closed smoke-producing chamber. See Pet. 41-42. It is not sufficient for prior art references to teach or suggest the recited limitations of a claim. There must be some reasoning supported by rational underpinnings to combine the references to achieve the invention recited in the challenged claims. As the U.S. Supreme Court explained, “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “guard against slipping into use of hindsight”).” slip op. at 22

  • ExcludeMotion to exclude, deniedMixed

    “Exhibits 2020, 2022, and 2024-2036: Referenced in Dr. Checkel’s Declaration, and Exhibits 2008, 2013, 2015, and 2017: Referenced in Mr. Saffie’s Declaration Petitioner seeks to exclude Exhibits 2020, 2022, and 2024-2036, referenced in Dr. Checkel’s Declaration, and Exhibits 2008, 2013, 2015, and 2017, referenced in Mr. Saffie’s Declaration, as allegedly irrelevant under FRE 403 and hearsay under FRE 801 and 802. Pet. Mot. Excl. 15. Petitioner, however, fails to identify any allegedly improper portions of any of these exhibits with any particularity. Id.; see Pet. Reply Mot. Excl. 5 (“For the reasons set forth in [Petitioner’s] motion, the remainder of [Patent Owner’s] evidence should be excluded.”). Such a general objection to these exhibits does not provide us with the information necessary to assess Petitioner’s reasons for seeking exclusion of these exhibits. Therefore, on this record, Petitioner’s motion to exclude Exhibits 2008, 2013, 2015, 2017, 2020, 2022, and 2024-2036 is denied. V. CONCLUSION Petitioner has not presented sufficient evidence to show by a preponderance” slip op. at 38

  Patent outcomesUS 6,526,808 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 6,526,808

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.