• Interactive Communications International, Inc. v. Blackhawk Network Inc.All claims unpatentable
  PTAB · Jul 14, 2025 · IPR2024-00465 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1–10 and 12–24 as obvious over Szrek and Llach, and claim 11 as obvious over Szrek, Llach, and Gilmore.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶¶ 13–14).9 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19 (citing Pet. 2–3). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’451 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. 9 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084 (Pet. 2–3 (citing Ex. 1008, 11)), and IPR2023- 01235 (see IPR2023-01235, Paper 34 at 12–13). Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 13

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

    “We need not construe “transaction processor” expressly because its meaning is not in dispute and its construction is not necessary to resolve the controversy before us.” slip op. at 16

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

    “On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37

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

    “On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37

  Patent outcomesUS 11,488,451 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,488,451
• Google LLC v. Ipa Technologies Inc.All claims unpatentable
  PTAB · Jun 1, 2023 · IPR2019-00731 · APJ Trevor M Jefferson · IPR · Remand

  Claim 28 is unpatentable under § 103(a) over Martin and Farley; Martin qualifies as prior art because Dr. Moran’s contribution made him a joint inventor of the relied-on disclosure.

  RulingsRemand decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’560 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 19:14–19:62. In addition, Patent Owner admits that “large portions of the ’560 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id.” slip op. at 21

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “With respect to Dr. Moran’s contribution to the Martin reference, we find Dr. Moran’s testimony credible over that of Mr. Cheyer and Mr. Martin, because, as the Federal Circuit noted, because the latter testimony conflicts with other evidence of record. Google, 34 F.4th at 1088. Cheyer’s and Martin’s testimony that Dr. Moran’s role was administrative and non-technical with respect to the core infrastructure of OAA is belied by a separate article describing OAA that includes the facilitator and lists Dr. Moran as the lead author. Ex. 1174, 1–2, 4. Indeed, the OAA article lists Dr. Moran and Mr. Cheyer as authors but excludes Mr. Martin. Id. Although Mr. Cheyer disagrees with the article’s description of the origins of OAA and the facilitator (Ex. 2037, 78:23–79:12 (Mr. Cheyer asserting that he “would not agree in the characterization of Open Agent Architecture grew out of [earlier] works” as described in the article)), Mr. Cheyer admits patent]” (id. at 1088), “which is a continuation-in-part of the application that resulted in the ’115 patent” (id. at 1086). in his deposition that Dr. Moran was extremely technical, and probably made technical contributions to OAA (id. at 34:1–20, 64:16–20, 102:2–4). Similarly, Mr. Martin’s testimony also supports that Dr. Moran “may have made contributions to the technological development of either interfaces for use with OAA, agents used with OAA, or systems based on OAA.” Ex. 2038, 116:2–8, 117:7–119:10. When viewed in light of Dr. Moran’s status as a joint inventor on the closely related ’931 patent (Ex. 2002, code (75)) and as a lead author of the substantive paper that discusses OAA’s early development, we find Mr. Martin’s and Mr. Cheyer’s admissions—that Dr. Moran made technical contributions to OAA—undermine their testimony that Dr. Moran’s inclusion as an author on the Martin reference was a matter of administrative respect and not a result of a technical contribution. See PO Remand 11; PO Resp. 50–51. Indeed, we find Cheyer and Martin’s general description of Dr. Moran—as an administrator without technical contributions to the Martin reference—is not supported by the full record, which instead supports Dr. Moran’s contributions to technical work that involves the Martin reference, such as contemporary papers and the ’931 patent. See, e.g., Ex. 1174, 2002. In sum, the testimony and contemporary evidence supports Dr. Moran’s testimony that his conception and contribution to the Martin reference, the facilitator, was technical and not merely administrative. Ex. 1007 ¶ 39.” slip op. at 23

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

    “We disagree with Patent Owner’s contention. Rather, we find that the Petition persuasively explains how Martin discloses a facilitator agent arranged to coordinate cooperative task completion within a distributed computing environment having autonomous service-providing electronic agents. Pet. 39; Ex. 1002 ¶ 100. Further, Petitioner persuasively demonstrates that Farley discloses how agent functionality can be distributed across multiple processes. Pet. 39–40; Ex. 1002 ¶¶ 101–102. Finally, Petitioner also provides persuasive reasons as to why one of ordinary skill in the art would have been motivated to combine Martin and Farley, including reasons expressly provided by Farley. Pet. 40; Ex. 1002 ¶¶ 103–104.” slip op. at 28

  • ExcludeMotion to exclude, deniedMixed

    “III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 26–30. We maintain these determinations on remand.” slip op. at 29

  Patent outcomesUS 7,069,560 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,069,560
• Google LLC v. Ipa Technologies Inc.All claims unpatentable
  PTAB · Jun 1, 2023 · IPR2019-00728 · APJ Trevor M Jefferson · IPR · Remand

  On remand, the Board held claim 63 unpatentable under § 103(a) over Martin and Kohn, finding Martin was prior art because Moran was a joint inventor.

  RulingsRemand decision

  • RemandDecided for petitioner

    “Petitioner relies upon is sufficient to establish the degree to which the reliedon portions of the Martin reference were conceived by Dr. Moran, and the significance of those contributions to the overall anticipating disclosure of the Martin reference. See Google, 34 F.4th at 1086–88; Duncan Parking, 914 F.3d at 1358. Contrary to Patent Owner’s contentions, Petitioner is not merely relying on Dr. Moran’s authorship to establish inventorship. PO Remand 8 (citing In re Katz, 687 F.2d 450, 455 (C.C.P.A. 1982)). Instead, Dr. Moran’s testimony establishes how his background led to his contributions to the multiple facilitator architectures disclosed in Martin and in the ’115 patent specification. Google, 34 F.4th at 1087; Ex. 1007 ¶¶ 23– 34 (OAA project), 35–39 (OAA paper). In view of Dr. Moran’s testimony, we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’115 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 18:56–19:36. In addition, Patent Owner admits that “large portions of the ’115 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id. Based on the record, the Federal Circuit’s remand squarely asks whether Dr. Moran’s stated contributions to the conception of the facilitator should be credited over Cheyer and Martin’s conflicting testimony regarding his lack of technical contribution. Google, 34 F.4th at 1088 (stating that “[t]he testimony of Dr. Moran, if credited, might well establish that he was a co-inventor of the particular portions of the Martin reference relied on by Google in, and relevant to, the challenge to particular claims”). When Dr. Moran’s testimony is viewed in combination with the supporting evidence,7 we find that incorporation of the facilitator in general, which is also found in the specification and claims, persuasively supports Dr. Moran’s testimony regarding his inventive contribution to the Martin reference. Specifically, we find Dr. Moran’s testimony persuasively supported and credible over the conflicting testimony and evidence offered by Mr. Cheyer and Mr. Martin. See Pet. Reply 12–13; Ex. 2038, 116:2–8, 117:7–119:10 (Cheyer admission that Dr. Moran made technical contributions to OAA); Ex. 2037, 34:1–20, 64:16–20, 102:2–4.” slip op. at 21

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Upon weighing the parties’ testimony and evidence, we agree with Petitioner that sufficient evidence supports the technical contributions of Dr. Moran to OAA, including admissions by Mr. Martin that Dr. Moran made such contributions (see Ex. 2038, 116:2–116:8, 117:7–119:10; see also id. at 73:3–73:15); contemporaneous papers showing Dr. Moran’s contribution to the OAA including a facilitator (see Ex. 1170; Ex. 1174, 1– 2), and the ’931 patent (Ex. 2002). See Pet. Reply 5–7, 8, 12–13; Pet. Remand 11. In particular, Dr. Moran’s testimony establishes that he contributed to Section 4.5, the facilitator that plays an essential role in the OAA, that differs from prior art agents, and that is found in the ’115 specification. We find Dr. Moran’s contributions to be significant when measured against the full anticipating Martin reference, and to render him a joint inventor of the Martin reference. Google, 34 F.4th at 1085 (quoting Duncan Parking, 914 F.3d at 1358). 5. Conclusion Based on the full record, we find that Petitioner has provided persuasive evidence by a preponderance of the evidence that Dr. Moran is an inventive entity to the Martin reference. Accordingly, we find that Petitioner has established that Martin is “by another” and is prior art under § 102(a) to the ’115 patent. We next turn to the sole remaining ground based on the Martin reference to determine the patentability of the remaining challenged claim.” slip op. at 26

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

    “combination of Martin and Kohn. Petitioner’s expert, Dr. Olsen, provides persuasive testimony and evidence that Martin teaches compound goals and a skilled artisan would have been motivated in view of Kohn to modify Martin’s facilitator agent to interpret a compound goal that includes both local and global constraints. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. Dr. Olsen’s testimony does not evince hindsight, but instead supports the finding that an ordinarily skilled artisan could use compound goals required in Martin and apply the type of constraints (global and local) disclosed in Kohn. Ex. 2024, 159:4–160:16. In addition, Dr. Olsen testified, the proposed implementation “would have been a mere combination of known components and technologies . . . , according to known methods, to produce predictable results.” Ex. 1002 ¶ 87. We do not agree that this case presents the same technical issues raised in G.B.T. Inc. v. Walletex Microelectronics Ltd., IPR2018-00326, Paper 60 at 16–17 (PTAB June 25, 2019), where the petitioner’s declarant failed to show how the combination would have achieved desired results and features from the combination of the circuits. Here, Dr. Olsen identified known compound goals in Martin to which Kohn’s local and global constraints are applicable. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. In view of the level of skill in the art and the testimony of Dr. Olsen (Ex. 1002 ¶¶ 49, 77–88; Ex. 2024, 159:4–160:16), we find that Petitioner establishes persuasive motivation to combine the software teachings of Kohn’s constraints into the goals of Martin and how the references would have been combined by a preponderance of the evidence.” slip op. at 29

  • ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed

    “III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 25–28. We maintain these determinations on remand.” slip op. at 30

  Patent outcomesUS 6,851,115 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,851,115
• Home Depot U.S.A., Inc. v. Lynk Labs, Inc.All claims unpatentable
  PTAB · May 22, 2023 · PGR2022-00009 · APJ Monica S Ullagaddi · PGR · Final written decision

  Claims 1–5, 7–12, and 14–19 are unpatentable based on lack of written description, anticipation by Bruning, or obviousness over Bruning and Kabel.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “lighting device.” Accordingly, we determine that the level of ordinary skill in the art is “a bachelor’s degree in electrical engineering, or similar technical field, with two years of relevant experience in the field of design and/or development of LEDs and circuits,” as Petitioner proposes and that “the field of design and/or development” would be “in the context of lighting devices” as Patent Owner proposes, in which “[a]n increase in experience could compensate for less education.” Id.; Pet. 24 (citing Ex. 1002 ¶ 46).” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “theoretically fall under the “or greater” portion of the amended claim limitation “forward voltage of 6V or greater,” Applicant distinguished Colby on the basis that the 120V AC voltage from a wall outlet is not “the minimum voltage difference required between the anode and cathode of the LEDs in the claimed circuit to allow current to flow through the LEDs.” See Ex. 1023, 9 (emphasis added). Applicant’s argument specifically identifies the claim language at issue––“forward voltage of 6V or greater”––and specifically states that it is not disclosed because Colby does not disclose the minimum voltage and instead, discloses something else, something larger–– 120V AC voltage. Accordingly, we conclude that Applicant disclaimed any voltage that is more than “the minimum voltage difference required between the anode and cathode of the LEDs in the claimed circuit to allow current to flow through the LEDs” from the scope of “forward voltage.”” slip op. at 25

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “4. 35 U.S.C. § 112(a) With respect to the written description requirement, we are persuaded” slip op. at 32

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledUnpatentable

    “Basis § Unpatentable Unpatentable Lack of written description, 3, 10, 17 112(a) 3, 10, 17 Lack of enablement 3, 10, 17 112(b) Indefiniteness 3, 10, 17 Lack of written description, 4, 11, 18 112(a) 4, 11, 18 Lack of enablement 4, 11, 18 112(b) indefiniteness 4, 11, 18” slip op. at 77

  Patent outcomesUS 10,932,341 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,932,341
• Netflix, Inc. / Hulu, LLC v. Divx, LLCAll claims unpatentable
  PTAB · Jan 26, 2022 · IPR2020-00614 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1–6, 9, 10, and 13–19 are unpatentable as obvious over Ueno, Fetkovich, and Demos.

  RulingsFinal written decision

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

    “function” as recited in claim 1 to teach or suggest the “frame decryption function” recited in claim 14. See, e.g., Pet. 76. This reliance is due, in part, to the fact that the cited “references teach using symmetric algorithms,” which use the same key for encrypting and “decrypting the selected portions of encrypted frames in accordance with the frame decryption information.” Id. at 78 (citing Ex. 1004, 1:16–20; Ex. 1005, 6:52–56; Ex. 1006, 27:65– 28:1; Pet. §§ VI.A.1, VI.A.5 (claim 4); Ex. 1003 ¶ 257). Accordingly and as we determined in our Institution Decision, “the encryption parameters are the same for encryption and decryption” in Petitioner’s challenge. Inst. Dec. 8.” slip op. at 11

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “that Patent Owner “is not entitled to a presumption of nexus when the claimed features constitute a small part of the claimed product and are far from coextensive.” Id. Patent Owner asserts and Dr. Nielsen testifies that “DivX implemented its inventive partial encryption [method or approach] into DivX’s Digital Right Management Systems” and each cite to Exhibit 2020, a claim chart comparing challenged claims 1, 2, 4, 5, 10, 14, and 17–19 of the ’673 patent to features of DivX’s Decoder Software Development Kit (SDK). PO Resp. 11; Ex. 2008 ¶ 61. Patent Owner does not assert or explain that it is arguing secondary considerations of non-obviousness, does not attempt to establish a nexus between the claimed features and Patent Owner’s commercial product, and does not discuss or explain Exhibit 2020 in any level of detail. See generally PO Resp.; see also Pet. Reply 26 n.15 (citing Ex. 1029, 131:25–132:20) (Petitioner arguing that “Exhibit 2020 was not prepared by an expert witness or discussed in briefing”). For these reasons, we determine that a presumption of nexus is inappropriate here––Patent Owner does not provide an analysis demonstrating that its product(s) are coextensive (or nearly coextensive) with the challenged claim. See Lectrosonics, Paper 33 at 33. As such, we proceed to the second step of the analysis under Fox Factory.” slip op. at 52

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “Exhibits 2004, 2005, 2006, 2010, and 2020 for not being authenticated (Fed. R. Evid. 901(a)), containing inadmissible hearsay (Fed. R. Evid. 801(c), 802; 37 C.F.R. § 42.53), improper opinions (Fed. R. Evid. 701, 602), and lacking relevance (Fed. R. Evid. 402). Mot. Ex. 6–10. Petitioner’s Motion to Exclude is dismissed as moot with respect to Exhibit 2020 because our decision would not be affected by the admission or exclusion of that exhibit—we do not rely on it in reaching our conclusion as to the patentability of the challenged claims.” slip op. at 77

  Patent outcomesUS 7,295,673 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,295,673
• Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentable
  PTAB · Jan 5, 2022 · IPR2020-01212 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious over Kobayashi and Kaun; the contingent motion to amend is granted for substitute claims 14–25.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “that “Kaun discloses that the cell is sealed ‘by a ‘U’ shaped insulator/gasket 32 . . . to seal the cell without pressure-loading,’” and therefore, venting via a pressure release seal is not required. Pet. 64 (citing Ex. 1005 ¶ 120). In an alternate embodiment, Kaun provides a means to relieve gas pressure “via the peripheral gasket which can reseal after an event.” Ex. 1005 ¶ 91. As Petitioner explains, “Kaun discloses that it is sealed, but upon the application of certain conditions, the internal pressure of gases within the cell can cause gases to vent. During such events, Kaun discloses ‘[t]he specified limit for internal pressure is handled by release via the peripheral gasket which can reseal after an event.’” Pet. Reply 13 (citing Ex. 1041 ¶¶ 37–39; Ex. 1005 ¶¶ 91, 101). Thus, while Kaun discloses venting to prevent pressure build up, Kaun “is otherwise sealed at all times during functioning.” Id. (citing Ex. 1041 ¶¶ 38–39; Ex. 1005 ¶ 101). Neither the ’835 patent nor Patent Owner’s own proposed construction of “closed without being beaded over” requires closure at all times. Furthermore, Mr. Gardner testifies that “[i]f a battery which, upon application of significant internal pressure, would be considered not ‘closed’ at other times, th[e]n almost no battery could be considered closed. [Because] [a]ny battery, when subjected to certain pressures, would leak or burst.” Ex. 1041 ¶ 39. We credit Mr. Gardner’s undisputed testimony in this regard. Mr. Gardner reasons that a person of ordinary skill in the art would understand that Kaun is closed.” Id. Dr. Peckerar similarly testifies that Kaun shows a housing that is closed without being beaded over. Ex. 1034, 131:4–11; 237:19–238:22 (describing Kaun as “closed during normal operation”). Accordingly, the record evidence supports Petitioner’s assertion that the combination of Kobayashi and Kaun suggests a button cell that is closed without being beaded over.” slip op. at 28

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

    “We discern no material difference between the parties’ respective constructions. Additionally, Patent Owner, during the hearing, expressed a general view that claim construction was unlikely to affect the parties’ positions.8 In particular, Patent Owner states that “[o]ur position is that really nothing turns on claim construction. You don’t have to engage in 8 The parties disagree as to what the newly added phrase “the cup casing include[ing] a first part proximal to the flat bottom area and a second part disposed in the overlapping area, the first part of the casing being disposed radially inward with respect to the second part” means. See generally MTA Opp.; MTA Reply; MTA Sur-reply. Neither party proposes an express construction for this phrase. Id. We address the interpretation of this phrase below and only to the extent necessary to resolve the dispute raised by the parties’ substantive arguments. claim construction in this case.” Tr. 56:18–20, 56:20–24 (explaining that limitations were submitted for construction “to gain some benefit in the co-pending litigations.”). Only terms that are in controversy need to be construed, and then 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) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). Because the outcome of our decision does not depend on either parties’ claim construction position, we determine that none of the identified claim terms require construction to resolve the issues in dispute in this proceeding.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Thus, Patent Owner identifies three claimed features—i.e., the jelly- roll configuration, the insulating layer, and a housing closed without being beaded over—as responsible for the improved performance of the VARTA CoinPower® button cell batteries. Id. However, Patent Owner’s declarants testify further and explain that it is the combination of the three identified features, in addition to a flat foil conductor resting flat between the electrode top and housing and welding the foil conductor from outside the housing, that are responsible for improved performance. In particular, Mr. Miehlich, employed in VARTA’s marketing and sales department, testifies that the new cell design, which “provided unprecedented increases in performance, including in energy density, charge capacity, and cycling stability,” consisted of a “jelly roll electrode coil packed tightly into an uncrimped, button-like housing. The electrode coil was protected against short-circuiting by [an] insulating means, and was connected to the cell terminals by a flexible flat foil conductors resting flat between the electrode top and housing, and welded to the housing components from the outside. These features are all found in the claims of the VARTA patents here under review. Ex. 2045 ¶¶ 15–16. And, Dr. Lindner, one of the named inventors of the ’835 patent, testifies that the complex issues we faced were how to safely pack the required amount of electrode material into the very small “button”-sized housing and protect it against short circuits; how to connect the “jelly roll” electrode to the terminals in such a confined space without itself consuming much volume, and how to seal the top and bottom of the cell housing, all while accommodating the expansion and contraction of the electrode winding and the resulting mechanical forces. Ex. 2046 ¶ 33. According to Dr. Linder, the jelly-roll configuration with an insulator, flexible foil output conductors, sealing the cell without crimping, and welding the foil conductors from outside the housing each contributed to the improved battery performance. Id. ¶¶ 34–43. Thus, it is the combination of five elements—not the three claimed in the ’835 patent—that are purportedly responsible for the “vastly increased performance characteristics” of the CoinPower® products. Id. ¶ 43; see also id. ¶ 45 (noting that “various aspects of our invention are covered by 10 issued patents, including the four United States patents here under review” (emphasis added)); Tr. 84:24–85:10 (explaining that welding, for example, is “also part of the success”). Like the patent owner in Fox Factory, “[i]n light of the patentee’s own assertions about the significance of the unclaimed features, no reasonable fact finder could conclude that these features are insignificant.” Fox Factory, 944 F.3d 1375. As a result, the patent claims are not coextensive with the CoinPower® products because those products include “‘critical’ unclaimed feature[s] that [are] claimed by a different patent and materially impacts the product’s functionality.” Id.” slip op. at 40

  Patent outcomesUS 9,153,835 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,153,835
• Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentable
  PTAB · Jan 5, 2022 · IPR2020-01213 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1–8 are unpatentable as obvious over Kobayashi and Kwon; substitute claims 10–14, 16, and 17 are allowed, while the motion to amend is denied as to claim 15.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “On this issue, we agree with Petitioner. Mr. Gardner explains that the skilled artisan “would further recognize that the output conductor can be comprised of various materials . . . . which could be metal or any various materials [and] the shape of the output conductor is not particularly limited.” Ex. 1003 ¶ 322. Mr. Gardner further testifies that a person of ordinary skill in the art “would recognize, not only that metal foil conductors could be inserted into these grooves without difficulty, but also that the depth of the grooves can be altered in order to better accommodate metal foil output conductors.” Ex. 1041 ¶¶ 53, 70. We recognize Patent Owner’s argument that numerous factors must be considered and that conventional battery design does not necessarily translate to button cell designs (PO Resp. 20– 21), but as Mr. Gardner testifies, “this may be true in some cases, [but] the lessons and advantages of using techniques from conventional battery design and applying it to button cell would be obvious to a [person of ordinary skill in the art].” Ex. 1041 ¶ 103. He continues to explain that “[n]aturally, such transposition of techniques would require some modification and adjustments. . . . [and that] each of these adjustments, . . . would be well within the skill of a [person of ordinary skill in the art].” Id. ¶ 104 (describing, for example, “reducing the thickness of the conductor plates of Kobayashi”). We credit Mr. Gardner’s testimony. Moreover, Patent Owner does not allege that any proposed modification would be beyond the skill of a person of ordinary skill in the art or explain how any of the “difficulties in manufacturing a button cell” (PO Resp. 52) are relevant to the proposed substitution of a metal foil for a metal terminal electrode plate. See generally id.; Sur-reply. Thus, based on the evidence and argument of record, we determine that the combination of Kobayashi and Kwon, and the general knowledge of those skilled in the art, would suggest the use of foil in place of Kobayashi’s terminal electrode plates, and that the foil would bear flat on one of the lateral ends of the electrode separator assembly.” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’858 patent would have had at least a bachelor’s degree in mechanical engineering, or a similar field, such as materials engineering, chemical engineering, or physics with at least five years of experience in the field of battery design and manufacturing. A person with a master’s degree in one of the above fields could have less practical experience of approximately three years. A person with a PhD could have less practical experience, about two years. A person with less education but more relevant practical experience may also meet this standard. DI 20 (adopting Petitioner’s proposed definition). For purposes of this Final Written Decision, we maintain our determination from the Decision on Institution because neither party disputes that determination and because the level of skill is consistent with the record. See PO Resp. 7 (person of ordinary skill “would possess a Bachelor’s degree in electrical, mechanical or chemical engineering or equivalent [and] would also have two to three” slip op. at 12

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

    “We discern no material difference between the parties’ respective constructions. Additionally, Patent Owner, during the hearing, expressed a general view that claim construction was unlikely to affect the parties’ positions. In particular, Patent Owner states that “[o]ur position is that really nothing turns on claim construction. You don’t have to engage in claim construction in this case.” Tr. 56:18–20, 56:20–22 (explaining that limitations were submitted for construction “to gain some benefit in the co-pending litigations.”). Only terms that are in controversy need to be construed, and then 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) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). Because the outcome of our decision does not depend on either parties’ claim construction position, we determine that none of the identified claim terms require construction to resolve the issues in dispute in this proceeding.” slip op. at 13

  • ExcludeMotion to exclude, deniedMixed

    “We are not persuaded that the identified portions of Mr. Gardner’s Supplemental Declaration are improper. In the Petition, Petitioner alleged that a person of ordinary skill in the art would have had reason to substitute known metal foils for the metal conductor plates of Kobayashi in order to reduce the size of inactive materials and improve performance. Pet. 69–70 (citing Ex. 1003 ¶ 323). In its Response, Patent Owner argued, among other things, that the metal foil lacks the requisite rigidity to support the remaining components of the winding axis core (PO Resp. 26–27, 31) and that because metal connecting plates 4a and 5b are positioned within recesses of insulating plates 8 and 9, replacing the metal connecting plates with metal foils would result in an unreliable connection because the metal foil would become embedded within the grooves of the insulating plates (id. at 28–29, 30). Mr. Gardner’s supplemental testimony specifically addresses Dr. Peckerar’s and Patent Owner’s concerns that metal foils would be unsuitable in Kobayashi due to their flexibility and thickness as compared to the insulating plates. Ex. 1041 ¶¶ 53 (“the depth of the grooves can be altered in order to better accommodate metal foil output conductors”), 70, 71 (explaining that it is the winding core that provides structure not the output conductor plates), 81, 86 (explaining that the person of ordinary skill in the art could either adjust the size of the output conductors or the depth of the cavities themselves), 87. Therefore, Mr. Gardner’s testimony that the ordinarily skilled artisan would have understood how to account for the technical challenges Patent Owner identified properly responds to arguments raised by Patent Owner in its Patent Owner response. Accordingly, we deny Patent Owner’s Motion to Exclude as to Mr. Gardner’s testimony on this issue.” slip op. at 9

  Patent outcomesUS 9,799,858 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,799,858
• Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentable
  PTAB · Jan 5, 2022 · IPR2020-01211 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious over Kobayashi; substitute claims 14–25 are allowed because the cited combinations do not teach the claimed cup casing structure.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’581 patent would have had at least a bachelor’s degree in mechanical engineering, or a similar field, such as materials engineering, chemical engineering, or physics with at least five years of experience in the field of battery design and manufacturing. A person with a master’s degree in one of the above fields could have less practical experience of approximately three years. A person with a PhD could have less practical experience, of about two years. A person with less education but more relevant practical experience may also meet this standard. DI 20 (adopting Petitioner’s proposed definition). For purposes of this Final Written Decision, we maintain our determination from the Decision on Institution because neither party disputes that determination and because the level of skill is consistent with the record. See PO Resp. 6 (stating that “[t]he claims are patentable regardless of which definition is used.”); see generally Pet. Reply.” slip op. at 14

  • ExcludeMotion to exclude, deniedMixed

    “We are not persuaded that the identified portions of Mr. Gardner’s Supplemental Declaration are improper. In the Petition, Petitioner alleged that a person of ordinary skill in the art would have had reason to substitute known metal foils for the metal conductor plates of Kobayashi in order to reduce the size of inactive materials and improve performance. Pet. 31 (citing Ex. 1003 ¶ 323). In its Response, Patent Owner argued, among other things, that the metal foil lacks the requisite rigidity to support the remaining components of the winding axis core (PO Resp. 22–27, 31), and that because metal connecting plates 4a and 5b are positioned within recesses of insulating plates 8 and 9, replacing the metal connecting plates with metal foils would result in an unreliable connection because the metal foil would become embedded within the grooves of the insulating plates (id. at 28, 31). Mr. Gardner’s supplemental testimony specifically addresses Dr. Peckerar’s and Patent Owner’s concerns that metal foils would be unsuitable in Kobayashi due to their flexibility and thickness as compared to the insulating plates. Ex. 1041 ¶¶ 53 (“the depth of the grooves can be altered in order to better accommodate metal foil output conductors”), 70, 71 (explaining that it is the winding core that provides structure not the output conductor plates), 81, 86 (explaining that the person of ordinary skill in the art could either adjust the size of the output conductors or the depth of the cavities themselves), 87. Therefore, Mr. Gardner’s testimony that the ordinarily skilled artisan would have understood how to account for the technical challenges Patent Owner identified properly responds to arguments raised by Patent Owner in its Patent Owner Response. Accordingly, we deny Patent Owner’s Motion to Exclude Mr. Gardner’s testimony regarding Kobayashi’s modified electrode assembly.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Upon review of Petitioner’s arguments and supporting evidence, we find that Petitioner adequately shows that a person of ordinary skill in the art would have modified Kobayashi to include metal foils in place of its terminal electrode plates. Petitioner explains that one of ordinary skill in the art would have known that metal foil may be used in batteries because the use of metal foil as a conductor is common in the art. Pet. 31, 39 (citing Ex. 1003 ¶¶ 256, 323). Petitioner directs our attention to Kobayashi which details use of metal foil for conducting elements. Id. at 39; see also Ex. 1006 ¶¶ 7, 21, 26, 27 (describing metal foil electrodes). Furthermore, Mr. Gardner testifies that “reducing the thickness of the output conductors has the effect of reducing the ratio of inactive to active components within the cell, which improves energy density . . . . [and is] a well-known goal in the art.” Ex. 1003 ¶ 323. Mr. Gardner further opines that a person of ordinary skill in the art “would be motivated to reduce the thickness of the output conductors of Kobayashi in order to increase energy density within the cell” and “to use metal foils as the output conductors, as this furthers the well-known goal in the art of reducing the size of internal battery components.” Id. We acknowledge Patent Owner’s argument that Mr. Gardner relies on teachings related to conventional battery design—not button cell batteries—and that he discusses considerations “relating to thickness of the electrodes, not of output conductors.” PO Resp. 19–20. But, Mr. Gardner’s testimony similarly relies on passages directed to “basic concepts” of battery operations and, as a whole, focuses on the concept that reducing the thickness of the terminal electrode plates would “maximize the space available inside the cell for active components,” thereby increasing electrode density and improving battery performance. Ex. 1003 ¶ 323 (citing Ex. 1009, 35). According to Mr. Gardner, “these adjustments would be well within the skill of a [person of ordinary skill in the art].” Ex. 1041 ¶¶ 104. We credit Mr. Gardner’s testimony. “Moreover, if 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 that person’s skill.” KSR, 550 U.S. at 401.” slip op. at 21

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

    “Upon review of Petitioner’s arguments and supporting evidence, we find that Petitioner adequately shows that a person of ordinary skill in the art would have modified Kobayashi to include metal foils in place of its terminal electrode plates. Petitioner explains that one of ordinary skill in the art would have known that metal foil may be used in batteries because the use of metal foil as a conductor is common in the art. Pet. 31, 39 (citing Ex. 1003 ¶¶ 256, 323). Petitioner directs our attention to Kobayashi which details use of metal foil for conducting elements. Id. at 39; see also Ex. 1006 ¶¶ 7, 21, 26, 27 (describing metal foil electrodes). Furthermore, Mr. Gardner testifies that “reducing the thickness of the output conductors has the effect of reducing the ratio of inactive to active components within the cell, which improves energy density . . . . [and is] a well-known goal in the art.” Ex. 1003 ¶ 323. Mr. Gardner further opines that a person of ordinary skill in the art “would be motivated to reduce the thickness of the output conductors of Kobayashi in order to increase energy density within the cell” and “to use metal foils as the output conductors, as this furthers the well-known goal in the art of reducing the size of internal battery components.” Id. We acknowledge Patent Owner’s argument that Mr. Gardner relies on teachings related to conventional battery design—not button cell batteries—and that he discusses considerations “relating to thickness of the electrodes, not of output conductors.” PO Resp. 19–20. But, Mr. Gardner’s testimony similarly relies on passages directed to “basic concepts” of battery operations and, as a whole, focuses on the concept that reducing the thickness of the terminal electrode plates would “maximize the space available inside the cell for active components,” thereby increasing electrode density and improving battery performance. Ex. 1003 ¶ 323 (citing Ex. 1009, 35). According to Mr. Gardner, “these adjustments would be well within the skill of a [person of ordinary skill in the art].” Ex. 1041 ¶¶ 104. We credit Mr. Gardner’s testimony. “Moreover, if 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 that person’s skill.” KSR, 550 U.S. at 401.” slip op. at 21

  Patent outcomesUS 9,496,581 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,496,581
• Walmart Inc. / Z-Shade Co., Ltd. et al. v. Caravan Canopy International, Inc.All claims unpatentable
  PTAB · Nov 22, 2021 · IPR2021-00449 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1–3 are unpatentable as obvious over Yang and Lynch because the combination teaches the claimed elements and increased headroom supplied a reason to combine with a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “invention of the ’040 patent would have had (1) a bachelor’s degree in the mechanical arts, including but not limited to mechanical engineering and industrial design, (2) at least two years of experience in the design or analysis of mechanical devices, fabricated frames, and/or kinematic linkages, and (3) at least a basic understanding of ergonomics. As to part (1), although the parties outline generally similar requirements as to formal schooling, Patent Owner’s proposal provides enhanced clarity as to the identity of the related disciplines, which we view as supported by the record. See, e.g., Klopp Pet. Decl. ¶ 1, Ex. A; Rake Decl. ¶¶ 4, 7–9, 19. As to part (2), the parties again outline similar requirements as to work experience, but Petitioner’s proposal provides added detail on experience in relevant design features, which we view as supported by the record. See Exs. 1004–1007. As to part (3), given the nature of the technology at issue, we view a basic understanding of ergonomics as relevant to one of ordinary skill in the art. See, e.g., Ex. 1001, 3:12–49 (discussing operation of the invention by a person); Rake Decl. ¶ 31, cited at PO Resp. 4. This is the same level of ordinary skill adopted in the Decision on Institution. See Dec. Inst. 32–34.” slip op. at 10

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

    “centrally-disposed, long, slender object.” Pet. 28–32. Patent Owner responds that the District Court rejected this proposal and held that the phrase should be given its “plain and ordinary meaning.” PO Resp. 5–6; see also Ex. 1018 at 6–10 (the District Court declining to construe “center pole”). We do not discern a need to construe explicitly this phrase because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 11

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

    “applicant acted as a lexicographer as to the term “stretching.” We determine that the Specification supports an understanding of the plain and ordinary meaning as extending or spreading out rather than as “make taut” or in “tension.” As argued by Petitioner, “[t]here is no description requiring that a roof be made taut or placed under tension” and, “[t]o the contrary, the specification consistently uses the word ‘stretch’ to describe extending or spreading out.” Pet. Reply 11. For example, in the eleven instances the Specification uses some form of the word “stretch” (aside from in claim 1), six instances relate to “stretching” the frame (or some component of the frame), rather than the roof. See, e.g., Ex. 1001, 3:4–6 (discussing how “the collapsible tent frame of this invention is easily and quickly stretchable or collapsible, thus allowing a user to easily and quickly pitch or strike a tent” (emphasis added)), 3:15–19 (“When it is necessary to pitch the tent, the four side poles 10 are pushed outwardly at the same time, thus stretching the tent frame. When the side poles 10 are pushed outwardly as described above, the sliders 70 move upward along the side poles 10 while stretching the two 14 Under the same logic, Patent Owner’s construction of “stretching” as “make taut” should be rejected because it would render superfluous the “sustaining” requirement in that any “center pole” that makes taut a tent’s roof would also sustain it. Cf. PO Sur-reply 5. types of ribs 20 and 30.” (emphasis added)), 3:23–24 (discussing how “the center pole ribs 30 are fully stretched by the support links 40” (emphasis added)), 3:29–30 (discussing “[w]hen the tent is pitched with the frame being fully stretched as described above” (emphasis added)), 4:12–14 (“When the frame is stretched so as to pitch a tent, the center pole is fully moved upwardly along with the center pole ribs.” (emphasis added)). These instances do not align with Patent Owner’s proposed construction of “stretching” as in “tension” or “make taut.” We find particularly supportive of the above-determined construction that in one of those six instances, the Specification directly contrasts—using a disjunctive “or”—“stretchable” with “collapsible.” See Ex. 1001, 3:4–6 (discussing how “the collapsible tent frame of this invention is easily and quickly stretchable or collapsible, thus allowing a user to easily and quickly pitch or strike a tent” (emphasis added)).” slip op. at 15

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

    “On the full record developed at trial, we determine that the increased total ceiling height—i.e., “headroom” as used in the Petition—provides adequate “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” based on the proposed modification. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. Here, the unmodified version of Yang is most similar to the middle example in Petitioner’s graphic above, as it has no structure underneath the tent roof (as roof support bars 7 and groove joints 6 are essentially at the height of the canopy itself). Compare Pet. Reply 20, with Ex. 1004, Fig. 4. The modified device—Yang modified with apex portion 50 of Lynch—is most similar to the rightmost example in Petitioner’s graphic, as the height of the canopy has been increased at least somewhat as compared to the middle example. See Pet. Reply 20; see also PO Resp. 24 (acknowledging that the proposed modification would “increase the height of the roof (the ceiling height)”). The record supports that this increased total ceiling height—even if only for certain locations where a person might stand—would have motivated one of ordinary skill in the art to modify Yang based on Lynch as proposed. This determination is supported by the testimony of Dr. Klopp, who states that “[i]ncreased headroom in some places under a tent is desirable for stationary users, especially for users of above average height.” Klopp Reply Decl. ¶ 113, cited at Pet. Reply 19.” slip op. at 45

  Patent outcomesUS 5,944,040 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 5,944,040
• Walmart Inc. / Z-Shade Co., Ltd. et al. v. Caravan Canopy International, Inc.All claims unpatentable
  PTAB · Nov 22, 2021 · IPR2020-01026 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1–3 are unpatentable as obvious over Yang and Lynch; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “We determine that one of ordinary skill in the art at the time of the invention of the ’040 patent would have had (1) a bachelor’s degree in the mechanical arts, including but not limited to mechanical engineering and industrial design, (2) at least two years of experience in the design or analysis of mechanical devices, fabricated frames, and/or kinematic linkages, and (3) at least a basic understanding of ergonomics. As to part (1), although the parties outline generally similar requirements as to formal schooling, Patent Owner’s proposal provides enhanced clarity as to the identity of the related disciplines, which we view as supported by the record. See, e.g., Klopp Pet. Decl. ¶ 1, Ex. A; Rake Decl. ¶¶ 4, 7–9, 19. As to part (2), the parties again outline similar requirements as to work experience, but Petitioner’s proposal provides added detail on experience in relevant design features, which we view as supported by the record. See Exs. 1004–1007. As to part (3), given the nature of the technology at issue, we view a basic understanding of ergonomics as relevant to one of ordinary skill in the art. See, e.g., Ex. 1001, 3:12–49 (discussing operation of the invention by a person); Rake Decl. ¶ 31, cited at PO Resp. 4. This is the same level of ordinary skill adopted in the Decision on Institution. See Dec. Inst. 32–34.” slip op. at 10

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

    “1. “Center Pole” Petitioner proposes to construe “center pole” in element 1A as a “centrally-disposed, long, slender object.” Pet. 28–32. Patent Owner responds that the District Court rejected this proposal and held that the phrase should be given its “plain and ordinary meaning.” PO Resp. 5–6; see also Ex. 1018 at 6–10 (the District Court declining to construe “center pole”). We do not discern a need to construe explicitly this phrase because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther

    “Under the claim construction standard applied in this proceeding, “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). For the reasons below, we view the plain and ordinary meaning of “stretching” on the complete record here as extending or spreading out, in line with portions of Petitioner’s proposed construction.” slip op. at 13

  • Strike new argumentNew argument disregardedDecided for patent owner

    “the context of its own invention, “constructed for stretching and sustaining a tent’s roof when a tent is pitched with the tent frame,” it is important to note that the Figure 3 embodiment in Lynch includes Velcro fasteners 35 that secure side panel 18 of canopy covering 12 to corner support member 22. See id. at 6:60–64 (“As is shown in phantom in FIG. 3, canopy covering 12 has a side panel 18 which is additionally secured to a top portion of corner support member 22 by means of corresponding hook and loop fasteners, such as Velcro fasteners 35.”). The issue here is whether the “center pole” in the context of the modified device (which does not include Velcro fasteners configured as in Lynch) is “constructed for stretching and sustaining a tent’s roof when a tent is pitched with the tent frame.”20 We determine that Petitioner has demonstrated that this requirement would be satisfied in the context of the modified device, even without Velcro fasteners. We first address whether the “center pole” in the modified device is “constructed for . . . sustaining a tent’s roof when a tent is pitched with the tent frame.” Petitioner states that after modifying roof bearing beam 8 in Yang to include apex portion 50 from Lynch, the “center pole” would “heighten and hold up the fabric tent roof” from Yang. Pet. 40 (citing Klopp Pet. Decl. ¶¶ 74–79). According to Petitioner, the proposed modification “would further push up the tent’s rooftop ‘to increase space for activities’ as well as creating more tension in the rooftop to reduce the risk of the rooftop ‘collapsing, bending, or leaking rainwater when raining.’” Id. (citing Ex. 1004 at 6–7; Klopp Pet. Decl. ¶¶ 77–79). We agree that the apex of the roof in Yang as modified by Lynch’s teachings would be higher than the 20 In the Reply, Petitioner seeks to rely on Lynch’s disclosure of using Velcro to attach the roof to the tent frame. See Pet. Reply 17 (bottom paragraph). As argued by Patent Owner, this is a new argument provided for the first time in reply. See PO Sur-reply 12–13; see also Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (“We see no error in the Board’s rejection of [a petitioner’s] reliance, in its Reply submissions, on previously unidentified portions of a prior-art reference to make a meaningfully distinct contention.”); Consolidated Trial Practice Guide 73 (Nov. 2019), https://www.uspto.gov/TrialPracticeGuide Consolidated (“TPG”) (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”). We do not consider Velcro fasteners as part of the modified device.” slip op. at 36

  Patent outcomesUS 5,944,040 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 5,944,040

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.