- PTAB · Nov 24, 2014 · PGR2014-00010 · APJ Jon B Tornquist · PGR · Order
The Board granted the parties’ joint motion and terminated PGR2014-00010 without a final decision; it also granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Patent Owner’s preliminary response is not yet due. On November 20, 2014, the parties filed a joint motion to terminate the proceeding (Paper 7) and a copy of their written settlement agreement (Ex. 2001). Along with the motion to terminate, the parties also filed a joint motion to treat the settlement agreement as business confidential information and keep it separate from the file of U.S. Patent No. 8,598,219 (“the ’219 patent”) pursuant to 35 U.S.C. § 327(b) and 37 C.F.R § 42.74(c). Paper 8, 1.” slip op. at 2
NonePatents in suitUS 8,598,219 - Respironics, Inc. v. Zoll Medical CorporationSome claims unpatentablePTAB · Sep 17, 2014 · IPR2013-00322 · APJ Scott E Kamholz · IPR · Final written decision
Claim 1 is unpatentable as anticipated by Owen; claims 2, 4, 5, 8, 9, 16, 19, and 20 were not shown unpatentable. The contingent motion to amend was denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“A limitation using the term “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.1 Personalized Media Commc’ns. LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, we first must identify the claimed function, and then we look to the specification to identify the corresponding structure that performs the claimed function. Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). With respect to the second step, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004) (citations and quotation marks omitted).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“cite numerous passages in the ’003 patent, none of these passages serves to define “patient compliance [and use] data” in a manner that justifies disregarding that term. Although the ’003 patent does describe patient compliance data as relating to whether the patient is using the device improperly, or at all (Ex. 1001, 5:49-52), it is used within the context of assessing whether the patient is following (i.e., complying with) instructions. To construe the terms as encompassing any data related to patient use is, therefore, unreasonably broad.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“A limitation using the term “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.1 Personalized Media Commc’ns. LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, we first must identify the claimed function, and then we look to the specification to identify the corresponding structure that performs the claimed function. Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). With respect to the second step, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004) (citations and quotation marks omitted).” slip op. at 6
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“We focus our analysis on the “means for monitoring and storing” limitation in claims 4 and 19. Claim 4 recites: “means for monitoring and storing operations information of the medical device and patient compliance and use data.” Claim 19 recites: “means for monitoring and storing patient medical parameters, device performance data and patient compliance data.” Respironics argues that the structures disclosed in the ’003 patent as performing the “monitoring” and “storing” functions are a medical device and a memory. Pet. 8. Zoll does not contest this structural correspondence. We maintain our determination that these limitations invoke 35 U.S.C. § 112 ¶ 6, and that the structures corresponding to each of these limitations are a medical device and a memory. We have considered the parties’ arguments and evidence concerning” slip op. at 8
Patent outcomesUS 6,681,003 mixedClaim construction§ 102 anticipationPatents in suitUS 6,681,003 - PTAB · Sep 12, 2014 · IPR2013-00555 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five inter partes reviews without issuing final written decisions.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Based on the present record, we determine that it is appropriate to terminate these inter partes reviews both as to Sealed Air and Pregis without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 3
None - PTAB · Sep 12, 2014 · IPR2013-00557 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five related inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met.” slip op. at 2
NonePatents in suitUS 7,047,705 - PTAB · Sep 12, 2014 · IPR2013-00554 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met. Also under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Sealed Air is the sole Petitioner. The Board, therefore, has discretion to terminate these reviews with respect to Pregis. In their joint motions, the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v. Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the patents and parties before us here. Id.” slip op. at 2
None - PTAB · Sep 12, 2014 · IPR2013-00556 · APJ Christopher L Crumbley · IPR · Order
The Board granted the joint motions and terminated the five inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met. Also under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Sealed Air is the sole Petitioner. The Board, therefore, has discretion to terminate these reviews with respect to Pregis. In their joint motions, the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v. Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the patents and parties before us here. Id. 1 Unless otherwise noted, citations are to the record of IPR2013-00554; similar papers may be found in the records of the other related proceedings. Based on the present record, we determine that it is appropriate to terminate these inter partes reviews both as to Sealed Air and Pregis without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 6,607,803 - PTAB · Sep 12, 2014 · IPR2013-00558 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met. Also under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Sealed Air is the sole Petitioner. The Board, therefore, has discretion to terminate these reviews with respect to Pregis. In their joint motions, the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v. Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the patents and parties before us here. Id.” slip op. at 2
NonePatents in suitUS 7,047,705 - Google, Inc v. Inventor Holdings, LLCAdverse judgmentPTAB · Sep 12, 2014 · CBM2014-00003 · APJ Miriam L Quinn · CBM · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment of unpatentability against claims 1-4, 9-11, 19, 24, 27, 28, 31, 32, and 65 based on Patent Owner’s concession.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“in this proceeding under 37 C.F.R. § 42.73(b). Paper 33, “Req.”. Under section 42.73(b)(3), concession of unpatentability of the contested subject matter is construed as an adverse judgment. In its Request, Patent Owner concedes the unpatentability of and requests adverse judgment regarding claims 14, 911, 19, 24, 27, 28, 31, 32, and 65 of U.S. Patent No. 5,844,272. Req. 2. The conceded unpatentability addresses all the claims subject to this proceeding. Therefore, no other patent claims remain for trial in this covered business method review. Accordingly, it is hereby ORDERED that Patent Owner’s Request for Adverse Judgment under 37 C.F.R. § 42.73(b)(3) is hereby granted; and FURTHER ORDERED that a judgment of unpatentability is entered against claims 14, 911, 19, 24, 27, 28, 31, 32, and 65 of the U.S. Patent No. 5,884,272.” slip op. at 2
NonePatents in suitUS 5,884,272 - Google, Inc v. Inventor Holdings, LLCAdverse judgmentPTAB · Sep 12, 2014 · CBM2014-00002 · APJ Miriam L Quinn · CBM · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment of unpatentability against claims 1, 2, 5, 10, 11, 23, 24, 32, and 33.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“in this proceeding under 37 C.F.R. § 42.73(b). Paper 37, “Req.”. Under section 42.73(b)(3), concession of unpatentability of the contested subject matter is construed as an adverse judgment. In its Request, Patent Owner concedes the unpatentability of and requests adverse judgment regarding claims 1, 2, 5, 10, 11, 23, 24, 32, and 33 of U.S. Patent No. 5,844,270. Req. 2. The conceded unpatentability addresses all the claims subject to this proceeding. Therefore, no other patent claims remain for trial in this covered business method review. Accordingly, it is hereby ORDERED that Patent Owner’s Request for Adverse Judgment under 37 C.F.R. § 42.73(b)(3) is hereby granted; and FURTHER ORDERED that a judgment of unpatentability is entered against claims 1, 2, 5, 10, 11, 23, 24, 32, and 33 of the U.S. Patent No. 5,884,270.” slip op. at 2
NonePatents in suitUS 5,884,270 - PTAB · Aug 29, 2014 · IPR2013-00178 · APJ Jon B Tornquist · IPR · Final written decision
The Board canceled claims 1–20 and denied substitution of claims 21–30 because the proposed claims lacked written-description support and were not shown patentable over prior art.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“2. Written Description Support Patent Owner bears the burden to show written description support in the original disclosure for each proposed substitute claim. 37 C.F.R. § 42.121(b)(1); 37 C.F.R. § 42.20(c). The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 8
- Skill levelSkill level board ownDecided for petitioner
“Dr. Sughrue testifies that one of ordinary skill in the art would have understood that the “different reactor configurations and catalysts” used in Jakkula “could and would lead to differing optimal temperatures from those reported in Craig.” Ex. 1040 ¶ 36 (emphasis added). For example, Dr. Sughrue testifies that one of ordinary skill in the art would have understood that reduced temperatures, as well as dilution—which was used in Jakkula but was not studied as an operating variable in Craig—could “greatly reduce the rate of dimerization and oligomerization of free fatty acids” and would lead to lower levels of high molecular weight hydrocarbons. Ex. 1040 ¶¶ 42, 60, 90; Ex. 1013, 4:11–13. Dr. Sughrue also provides evidence that in the years after the publication of Craig “the activity of hydroprocessing catalysts increased dramatically,” permitting lower reaction temperatures in the HDO step. Id. ¶¶ 31, 33. In light of these differences, Dr. Sughrue concludes that one of ordinary skill in the art “would not have been dissuaded from considering HDO reaction temperatures at or near the low end of the preferred temperature range taught in [Jakkula], e.g., 300 °C, or even lower temperatures within the more broadly taught range of 200-500 °C.” Ex. 1040 ¶ 37. We find Dr. Sughrue’s testimony persuasive. In particular, in light of Jakkula’s disclosed successful results, we are persuaded that one of ordinary skill in the art would not have viewed Craig’s 350 °C minimum temperature for “trouble-free operation” as a line not to be crossed, but would have understood that the optimal and minimum temperatures for the HDO step would vary depending on the particular reactor configuration and operating conditions used. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“Discovery of an optimum value of a results effective variable in a known process is ordinarily within the skill in the art.”). Although Dr. Klein presents an opposing view from that of Dr. Sughrue, upon review of both expert declarations and their corresponding depositions, on balance, we find that Dr. Sughrue’s testimony more persuasively considers not only the express teachings of Craig and Jakkula, but also the timing of the two disclosures, the differences in reactor configuration and operating conditions, and the knowledge, skill, and reasoning ability of one of ordinary skill in the art. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“What a reference teaches or suggests must be examined in the context of the knowledge, skill, and reasoning ability of a skilled artisan.”)” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Sughrue testifies that one of ordinary skill in the art would have understood that the “different reactor configurations and catalysts” used in Jakkula “could and would lead to differing optimal temperatures from those reported in Craig.” Ex. 1040 ¶ 36 (emphasis added). For example, Dr. Sughrue testifies that one of ordinary skill in the art would have understood that reduced temperatures, as well as dilution—which was used in Jakkula but was not studied as an operating variable in Craig—could “greatly reduce the rate of dimerization and oligomerization of free fatty acids” and would lead to lower levels of high molecular weight hydrocarbons. Ex. 1040 ¶¶ 42, 60, 90; Ex. 1013, 4:11–13. Dr. Sughrue also provides evidence that in the years after the publication of Craig “the activity of hydroprocessing catalysts increased dramatically,” permitting lower reaction temperatures in the HDO step. Id. ¶¶ 31, 33. In light of these differences, Dr. Sughrue concludes that one of ordinary skill in the art “would not have been dissuaded from considering HDO reaction temperatures at or near the low end of the preferred temperature range taught in [Jakkula], e.g., 300 °C, or even lower temperatures within the more broadly taught range of 200-500 °C.” Ex. 1040 ¶ 37. We find Dr. Sughrue’s testimony persuasive. In particular, in light of Jakkula’s disclosed successful results, we are persuaded that one of ordinary skill in the art would not have viewed Craig’s 350 °C minimum temperature for “trouble-free operation” as a line not to be crossed, but would have understood that the optimal and minimum temperatures for the HDO step would vary depending on the particular reactor configuration and operating conditions used. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“Discovery of an optimum value of a results effective variable in a known process is ordinarily within the skill in the art.”). Although Dr. Klein presents an opposing view from that of Dr. Sughrue, upon review of both expert declarations and their corresponding depositions, on balance, we find that Dr. Sughrue’s testimony more persuasively considers not only the express teachings of Craig and Jakkula, but also the timing of the two disclosures, the differences in reactor configuration and operating conditions, and the knowledge, skill, and reasoning ability of one of ordinary skill in the art. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“What a reference teaches or suggests must be examined in the context of the knowledge, skill, and reasoning ability of a skilled artisan.”)” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference may be said to teach away when a person of ordinary skill in the art, upon reading a reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “[I]n weighing the suggestive power of each reference, [the Board] must consider the degree to which one reference might accurately discredit another.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). When two references do not use directly comparable techniques or operating conditions, the impact of an allegedly discrediting reference may be significantly reduced. See id. at 592. slip op. at 14
§ 103 obviousnessPatents in suitUS 8,212,094
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.