- General Electric Company v. United Technologies CorporationAdverse judgmentPTAB · Dec 19, 2017 · IPR2017-00431 · APJ George R Hoskins · IPR · Adverse judgment
The Board denied termination and entered adverse judgment against Patent Owner after it disclaimed the only claim remaining in the trial, claim 9.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentDecided for petitioner
“A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Actions construed to be a request for adverse judgment include . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. § 42.73(b)(2). That is the case here, where Patent Owner has disclaimed claim 9, the only claim remaining in the present trial. Under these circumstances, entry of judgment adverse to the Patent Owner is appropriate.” slip op. at 2
NonePatents in suitUS 8,695,920 - Valve Corporation v. Ironburg Inventions Ltd.Rehearing deniedPTAB · Nov 15, 2017 · IPR2016-00949 · APJ Phillip J Kauffman · IPR · Rehearing
The Board dismissed Valve Corporation’s request for rehearing of the final written decision as moot after correcting the requested typographical errors in an errata.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision,” or “Dec.”) in this case. Paper 46 (“Reh’g Req.”). In the request for rehearing, Petitioner seeks correction of certain typographical errors. Reh’g Req. 1–2. Those errors have been corrected in an errata (Paper 47). It is: ORDERED that Petitioner’s Request for Rehearing is dismissed as moot. slip op. at 2
NonePatents in suitUS 9,089,770 - Colas Solutions Inc. v. Blacklidge Emulsions, Inc.No claims unpatentablePTAB · Nov 2, 2017 · IPR2016-01031 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1–12, 15–20, 23–28, and 31–33 were not shown unpatentable under § 103 because the cited combination did not establish the claimed softening point.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The Parties’ definitions differ in that under Patent Owner’s proposal, additional work experience can substitute for a science or engineering degree. Patent Owner supports that position by pointing to the backgrounds of Mr. O’Leary and the inventor, Mr. Blacklidge, neither of whom has a bachelor’s degree in engineering or science. PO Resp. 15–16; Ex. 1034, 12:15–13:3; Ex. 2027, App’x A; see also Ex. 2026 ¶¶ 22–23 (discussing the educational background of active workers in the field). Patent Owner also cites Dr. King’s deposition testimony agreeing that Mr. O’Leary was an example of someone who had attained the level of ordinary skill in the art through sufficient work experience without academic credentials beyond high school. Ex. 2025, 376:4–377:14. This evidence supports Patent Owner’s position that relevant work experience can substitute for a bachelor’s degree in science or engineering in this case. Accordingly, we find that a person of ordinary skill in the art at the time of the invention of the ’724 patent would have had a bachelor’s degree in chemistry, civil engineering, chemical engineering, material science, or a related field of science or engineering, plus five years of experience in the field of asphalt paving and/or asphalt emulsion technology. Alternatively, an ordinarily skilled artisan would have had ten years of experience in the field of asphalt paving and/or asphalt emulsion technology.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Applying that standard for inherency, the evidence does not sufficiently support a finding that a cured tack coat formed from a base asphalt as described in Bardesi would necessarily have “a softening point greater than about 140 ° F. (60 ° C.),” as recited in claim 1. The parties agree that Dr. King’s calculations using the Pfeiffer equation were erroneous and that Dr. Little’s calculations correctly apply the Pfeiffer equation. See PO Resp. 29; Reply 17; Tr. 27:7–28:10, 80:9–10. Even assuming the correctness of the assumptions undergirding Dr. King’s analysis of the softening point limitation — which include the reliability of the Pfeiffer equation to calculate softening point, the range of PI values between -1 and +1 for the asphalts described in Bardesi, and the use of a base asphalt’s softening point as a measure of the softening point for a cured tack coat made from that asphalt — the now agreed-upon data that result from the Pfeiffer equation show that not all 10-pen and 20-pen asphalts have a softening point greater than 60°C. Ex. 2026 ¶¶ 91–93. Indeed, Petitioner and Dr. King seem to concede this point. Reply 18; Tr. 80:8–14; see also Ex. 1030 ¶ 29 (rebuttal declaration of Dr. King stating that “most 10-20 pen paving grade asphalts” would have a softening point in the claimed range).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“To the extent Petitioner’s arguments in the Reply and at the hearing that the claimed range of softening points is typical or expected are offered as an alternative theory of obviousness in lieu of inherency, those arguments were not adequately developed and presented in the Petition. “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). “Unlike district court litigation— where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Id. The Federal Circuit has applied this rule to bar a petitioner from shifting its theory of obviousness after the patent owner pointed out the flaws of the obviousness case presented in the petition. See Wasica Finance GmbH v. Continental Automotive Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017) (“Rather than explaining how its original petition was correct, Continental’s subsequent arguments amount to an entirely new theory of prima facie obviousness absent from the petition. Shifting arguments in this fashion is foreclosed by statute, our precedent, and Board guidelines.”). Likewise, the Petition in this case relied on inherency for the softening point limitation, and Patent Owner successfully rebutted that theory in its Patent Owner Response. Following that rebuttal, Petitioner is not permitted to abandon inherency to pursue a different theory that it did not present in its Petition. Accordingly, we do not reach the issue of whether the claim is obvious under a different theory than Petitioner advanced in its Petition.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Applying that standard for inherency, the evidence does not sufficiently support a finding that a cured tack coat formed from a base asphalt as described in Bardesi would necessarily have “a softening point greater than about 140 ° F. (60 ° C.),” as recited in claim 1. The parties agree that Dr. King’s calculations using the Pfeiffer equation were erroneous and that Dr. Little’s calculations correctly apply the Pfeiffer equation. See PO Resp. 29; Reply 17; Tr. 27:7–28:10, 80:9–10. Even assuming the correctness of the assumptions undergirding Dr. King’s analysis of the softening point limitation — which include the reliability of the Pfeiffer equation to calculate softening point, the range of PI values between -1 and +1 for the asphalts described in Bardesi, and the use of a base asphalt’s softening point as a measure of the softening point for a cured tack coat made from that asphalt — the now agreed-upon data that result from the Pfeiffer equation show that not all 10-pen and 20-pen asphalts have a softening point greater than 60°C. Ex. 2026 ¶¶ 91–93. Indeed, Petitioner and Dr. King seem to concede this point. Reply 18; Tr. 80:8–14; see also Ex. 1030 ¶ 29 (rebuttal declaration of Dr. King stating that “most 10-20 pen paving grade asphalts” would have a softening point in the claimed range).” slip op. at 21
Patent outcomesUS 7,503,724 not shown unpatentable§ 103 obviousnesscites GrahamPatents in suitUS 7,503,724 - Colas Solutions, Inc. v. Blacklidge Emulsions, Inc.No claims unpatentablePTAB · Nov 2, 2017 · IPR2016-01032 · APJ Timothy J Goodson · IPR · Final written decision
Claims 1–12, 14–23, and 25 were not shown unpatentable because the cited combination did not establish the claimed softening point limitation.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ definitions differ in that under Patent Owner’s proposal, additional work experience can substitute for a science or engineering degree. Patent Owner supports that position by pointing to the backgrounds of Mr. O’Leary and the inventor, Mr. Blacklidge, neither of whom has a bachelor’s degree in engineering or science. PO Resp. 15–16; Ex. 1034, 12:15–13:3; Ex. 2027, App’x A; see also Ex. 2026 ¶¶ 22–23 (discussing the educational background of active workers in the field). Patent Owner also cites Dr. King’s deposition testimony agreeing that Mr. O’Leary was an example of someone who had attained the level of ordinary skill in the art through sufficient work experience without academic credentials beyond high school. Ex. 2025, 376:4–377:14. This evidence supports Patent Owner’s position that relevant work experience can substitute for a bachelor’s degree in science or engineering in this case. Accordingly, we find that a person of ordinary skill in the art at the time of the invention of the ’624 patent would have had a bachelor’s degree in chemistry, civil engineering, chemical engineering, material science, or a related field of science or engineering, plus five years of experience in the field of asphalt paving and/or asphalt emulsion technology. Alternatively, an ordinarily skilled artisan would have had ten years of experience in the field of asphalt paving and/or asphalt emulsion technology.” slip op. at 9
- Expert testimonyPetitioner expert discountedMixed
“Applying that standard for inherency, the evidence does not sufficiently support a finding that a cured tack coat formed from a base asphalt as described in Bardesi would necessarily have “a softening point greater than about 140 ° F. (60 ° C.),” as recited in claim 1. The parties are in agreement that Dr. King’s calculations using the Pfeiffer equation were in error and that Dr. Little’s calculations correctly apply the Pfeiffer equation. See PO Resp. 29; Reply 17; Tr. 27:7–28:10, 80:9–10. Even assuming the correctness of the assumptions undergirding Dr. King’s analysis of the softening point limitation — which include the reliability of the Pfeiffer equation to calculate softening point, the range of PI values between -1 and +1 for the asphalts described in Bardesi, and the use of a base asphalt’s softening point as a measure of the softening point for a cured tack coat made from that asphalt — the now agreed-upon data that result from the Pfeiffer equation show that not all 10-pen and 20-pen asphalts have a softening point greater than 60°C. Ex. 2026 ¶¶ 91–93. Indeed, Petitioner and Dr. King seem to concede this point. Reply 18; Tr. 80:8–14; see also Ex. 1030 ¶ 29 (rebuttal declaration of Dr. King stating that “most 10-20 pen paving grade asphalts” would have a softening point in the claimed range).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“At the hearing, Petitioner suggested that it was abandoning the inherency theory for the softening point limitation, stating that “we are not relying upon inherency with respect to all asphalts will necessarily have that claimed softening point.” See Tr. 80:8–14. The problem for Petitioner, however, is that inherency was the only theory presented in the Petition for why the cited combination teaches or renders obvious the softening point limitation. We have already reviewed above the numerous portions of the Petition in which Petitioner relied on inherency for the softening point limitation. See Pet. 22, 24, 27, 38, 40, 50.6 Petitioner argued at the hearing that inherency “wasn’t an all-or-nothing proposition”—i.e., that its Petition did not rely only on inherency for the softening point limitation. See Tr. 79:4–80:14. Petitioner pointed to its reliance on Dr. King’s experience, Dr. King’s use of the Pfeiffer equation, and the assumptions Dr. King used in applying the Pfeiffer equation. Id. Yet those are all facts that Petitioner relied on to show why the softening point limitation was inherently and necessarily present in Bardesi, not reasons why the softening point limitation would have been obvious separate or independent from inherency. To the extent Petitioner’s arguments in the Reply and at the hearing that the claimed range of softening points is typical or expected are offered as an alternative theory of obviousness in lieu of inherency, those arguments 6 Even in the Reply, Petitioner continued to refer to the softening point limitation as being inherently and necessarily present. See Reply 1 (“The [’]624 patent is invalid because Petitioner shows that this claimed softening point above 60ºC is inherent and ‘typical’ for many 10/20 pen asphalts disclosed in Bardesi.”) (emphasis added); id. at 3 (“any 10-20 pen specification paving grade bitumen purchased in Britain at the time of Bardesi’s publication would have necessarily had a softening point well above 60ºC”) (emphasis added). were not adequately developed and presented in the Petition. “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). “Unlike district court litigation— where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Id. The Federal Circuit has applied this rule to bar a petitioner from shifting its theory of obviousness after the patent owner pointed out the flaws of the obviousness case presented in the petition. See Wasica Finance GmbH v. Continental Automotive Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017) (“Rather than explaining how its original petition was correct, Continental’s subsequent arguments amount to an entirely new theory of prima facie obviousness absent from the petition. Shifting arguments in this fashion is foreclosed by statute, our precedent, and Board guidelines.”). Likewise, the Petition in this case relied on inherency for the softening point limitation, and Patent Owner successfully rebutted that theory in its Patent Owner Response. Following that rebuttal, Petitioner is not permitted to abandon inherency to pursue a different theory that it did not present in its Petition. Accordingly, we do not reach the issue of whether the claim is obvious under a different theory than Petitioner advanced in its Petition.” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“For these reasons, we determine that Petitioner did not carry its burden to demonstrate that claim 1 would have been obvious in view of the cited references. 2. Claims 2–12, 14–23, and 25 Independent claims 14 and 25 include substantially the same softening point limitation as in claim 1. See Ex. 1001, 15:8–10; 16:35–37. Petitioner’s evidence and arguments, and Patent Owner’s rebuttal, regarding the softening point limitation in those claims are the same as for claim 1. See Pet. 38, 40, 50; PO Resp. 24–47; Reply 4–6, 17–20. Thus, for the reasons discussed in Section III.D.1, Petitioner has not established by a preponderance of the evidence that claims 14 and 25 would have been obvious in view of the cited combination. By virtue of their dependency, claims 2–12 and 15–23 incorporate the softening point limitation recited in claims 1 and 14. Thus, Petitioner also has not demonstrated the unpatentability of any of those claims. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”).” slip op. at 27
Patent outcomesUS 7,918,624 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,918,624 - Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentablePTAB · Sep 22, 2017 · IPR2016-00949 · APJ Phillip J Kauffman · IPR · Final written decision
Claims 1–12 and 15–18, and 20 are unpatentable: claims 1, 3–12, 15–17, 19, and 20 as anticipated by Tosaki; claims 1–12, 15–18, and 20 as obvious over Enright and Tosaki.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“This Motion has no meaningful distinction from the Motion filed in IPR2016-00948, and we incorporate that analysis here. Consequently, we deny Patent Owner’s Motion.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner’s argument is that the ’770 patent expresses a clear intent to disavow controllers having a recessed portion that does not receive a user’s fingers. See PO Resp. 17–22. Stated in a positive sense, Patent Owner argues that the ’770 patent expresses a clear intent to cover only recessed portions that receive a user’s fingers. Patent Owner does not identify, nor do we discern, any explicit disclosure in the ’770 patent that the invention includes only recessed portions that receive a user’s fingers. The description that “preferably” each elongate member is mounted in a recess such that a user’s fingers may be received in the recess is an exemplary disclosure of a preferred embodiment. See Ex. 1011, 1:62–67. Likewise, the disclosures that the elongate members (e.g., paddles 11) are mounted within recesses so that a user may engage the elongate members with the tips of the fingers are exemplary. See Ex. 1011, 2:21–25, 3:39–44, Fig. 3. Consequently, the ’770 patent does not express a clear intent to limit the claimed invention to recessed portions that receive a user’s fingers. See e.g., SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed.Cir. 2001); see also Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed.Cir. 1988) (“Although the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims.”). In light of the disclosures above, the ordinary meaning that a recessed portion is an indentation is consistent with the Specification.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner (Pet. Reply 9–10) that nothing in claim 1 precludes the back of Tosaki’s steering wheel 14 from corresponding to the back of the controller as claimed. Claim 1 is an open-ended claim, so that additional components like base casing 10 with its bottom plate 11 are not precluded. Patent Owner’s assertion is not persuasive because it is not commensurate in scope with the claims. c) Conclusion Petitioner has demonstrated by a preponderance of the evidence that Tosaki anticipates independent claim 1.” slip op. at 23
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We accept Patent Owner’s uncontested assertions regarding the education level of the inventors; however, this information provides an incomplete picture because other factors are involved. See e.g. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating a non-exhaustive list of six factors that are a guide to determining the level of skill in the art). For example, one concern is the type of problems encountered in the art, and the problem solved by the ’770 patent is but one type of problem encountered. Tosaki describes that removing a hand from the controller to manipulate switches makes prompt reaction difficult and degrades usability, and describing that repositioning the user’s hands can affect comfort. Ex. 1002, 1:54–67, 2:19–23. Tosaki describes an apparatus that permits manipulation of a plurality of switches while holding the controller. Id. at 3:20–23. Tosaki’s solution also includes switches on the back of the controller (shift levers) that are accessible to a user’s fingers. Id. at 3:36–4:8. Enright describes that controller had become more complex in that the number of functions and user input devices increased to the point that user’s had difficulty moving a finger to a desired button. Ex. 1003 ¶ 2. Enright describes that movement between input devices can be difficult. Id. at ¶¶ 3–4. As a solution, Enright disclosed a device that permits selection of discrete button commands without looking at or moving fingers from buttons. Id. ¶ 5. Enright’s solution includes switches (mode switches 32, 34) added to the underside (back) of the controller to reside near a user’s fingers for easy operation. Id. at ¶ 32. Enright also discloses that these switches may be located elsewhere is ergonomically desired. Id. In light of this, the prior art of record demonstrates that switch position on the controller, usability, and comfort were known problems in the art. Further, prior solutions included placing switches to be easily accessible to a user’s finger or thumb, and placing switches so that those switches are accessible without removing a finger or thumb from another switch. In particular, these solutions placed controls on the back of the controller to be accessible to a user’s fingers. The technology involved was placement of switches in ergonomically desired locations that permit usability.” slip op. at 37
Patent outcomesUS 9,089,770 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,089,770 - Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentablePTAB · Sep 22, 2017 · IPR2016-00948 · APJ Phillip J Kauffman · IPR · Final written decision
Claims 1, 6, 13, 14, 16, 17, 19, and 20 are unpatentable: Tosaki anticipates them, and Enright with Tosaki also renders claim 20 obvious.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“In our Decision to Institute, we explained that a preliminary response cannot serve as an effective objection for two reasons.2 Dec. 4–5 (entered on September 27, 2016). First, objections must be made after institution of trial. See 37 C.F.R. § 42.64(b)(1) (objections are due ten days from institution of trial). Second, an objection and a preliminary response may not be combined into a single document. See 37 C.F.R. § 42.6(a)(3) (prohibiting combined documents).” slip op. at 5
- Strike new argumentNew argument consideredDecided for petitioner
“The Petition fails to address a claimed characteristic of the elongate members (flexibility). See PO Resp. 39–41 (arguing that Enright does not disclose elongate members that are flexible as claimed). This cannot be corrected in Petitioner’s Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (Aug. 14, 2012) (a reply may not raise a new issue or belatedly present evidence); 35 U.S.C. § 312 (a)(3) (requiring petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”); 37 C.F.R. § 42.104(b)(4) (a petition for inter partes review must identify how the construed claim is unpatentable under the statutory grounds on which the petitioner challenges the claim and must specify where each element of the claim is found in the prior art patents or printed publications relied upon); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015); see also Paper 39, 2 (pointing out that Petitioner is making a new argument).20 Petitioner has not demonstrated by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over Enright and Tosaki. The same is true of claims 2–11, 13, 16, and 17 by virtue of their dependence from claim 1. 20 Petitioner argues that Patent Owner’s contention could not have been addressed earlier because the Board did not explicitly construe this claim limitation. Petitioner’s burden is not alleviated by the lack of a claim construction by the Board.” slip op. at 38
- Expert testimonyPetitioner expert discountedMixed
“In our Institution Decision, we observed that the Petition does not explain persuasively how observations from a UK patent examiner, which presumably are based on UK law and not United States law, are of use in our proceeding. Dec. 4. Petitioner asserts that Mr. Donohoe must be a person of ordinary skill because the level of ordinary skill is low, and because the UK Intellectual Property Office employed Mr. Donohoe to examine the video game controller art. Pet. Reply 16–17. Petitioner chose not to address our concern regarding the distinctions between United States and UK law. Because of those distinctions, Petitioner’s assertions and evidence with regard to Mr. Donohoe are entitled to little or no weight. This shortcoming is not fatal to this ground of unpatentability because, as explained below, the prior art of record is reflective of the level of skill in the art.” slip op. at 39
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner contends that the level of skill in the art is relatively low and that “less than a year of experience or other training in controller assembly or tooling is required.” PO Resp. 34; Ex. 2002 ¶ 30 (Patent Owner’s expert opining that the level of skill is “no more than a year of experience or other training in controller assembly or tooling”). Patent Owner bases this level of skill on the education level of the inventor and the type of problems encountered in the art. PO Resp. 35. Regarding the education level of the inventors, Patent Owner provides evidence that the named inventors have degrees in unrelated fields. Id. (citing Ex. 2008, 3; Ex. 2009, 4). Patent Owner asserts the problem solved was that users of conventional game controllers were at risk of hand strain or injury from having to operate many different controls on the front of the controller with only a user’s thumbs. Id. at 35–36 (citing Ex. 2012 ¶ 10; Ex. 1001, 1:33–40, 3:56–61). Petitioner does not contest the education level of the inventors or the problem solved by the ’525 patent. Pet. Reply 15–16. Rather, Petitioner asserts that Patent Owner has taken the illogical position that the qualifications of a person of ordinary skill in the art are maximum levels of experience or training rather than minimums. Id. To the extent that Patent Owner’s assertion suggests that the level of skill may not exceed a year of experience or other training in controller assembly or tooling, we disagree. Patent Owner does not cite, nor are we aware, of any legal precedent supporting the assertion that education and experience levels are maximums that must not be exceeded. Regarding the problem solved by the ’525 patent, the portions cited by” slip op. at 40
Patent outcomesUS 8,641,525 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,641,525 - Panduit Corp. v. Corning Optical Communications LLCRehearing deniedPTAB · Jul 27, 2017 · IPR2017-00528 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claims 14-40, 46-53, and 55-62 because the cited art did not show the claimed adapter number, spacing, or density.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Inter Partes Review1 (Paper 7, “Decision” or “Dec.”) of U.S. Patent No. 8,712,206 B2 (Ex. 1001, “the ’206 patent”). Paper 10 (“Req. Reh’g”), 1. When rehearing a decision by the Board on whether to institute a trial, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005). The burden of showing that our Decision should be modified lies with Petitioner, the party challenging the decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“teach or suggest a row of six side-by-side adapters which served as the basis for Petitioner’s contention that the numerical limitations of the independent claims of the ’206 patent were taught or suggested. Dec. 21 (“Petitioner does not direct us to, nor do we discern, any teaching or suggestion in Rapp (or other cited art) of using ‘a row of six side-by-side adapters using standardized LC adapters’ or ‘12 fiber optic adapters over 78.0 mm’ as argued by Petitioner.”). See also Dec. 24, 26. In the Request for Rehearing, Petitioner does not point to any related teaching or suggestion in the cited art that we misapprehended or overlooked. To the contrary, Petitioner argues: “[t]he Board overlooked or misapprehended the full scope of the teachings of Rapp, instead focusing on its exemplary embodiment showing nine adapters or blanks.” Req. Reh’g. 3. Most significantly, in the Request for Rehearing, Petitioner fails to direct our attention to any teaching or suggestion in the cited art of a row of six side-by-side adapters which the Board misapprehended or overlooked.” slip op. at 3
NonePatents in suitUS 8,712,206 - General Electric Company v. United Technologies CorporationInstitution deniedPTAB · Jul 10, 2017 · IPR2017-01001 · APJ Hyun J Jung · IPR · Institution
The Board denied institution because Patent Owner had recorded a statutory disclaimer of all challenged claims 1–12.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Under 37 C.F.R. § 42.107(e), “patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent” and “[n]o inter partes review will be instituted based on disclaimed claims.” A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original patent” as of the date on which it is “recorded” in the Office. 35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the document filed by Patent Owner must:” slip op. at 2
NonePatents in suitUS 8,894,538 - General Electric Company v. United Technologies Corporation And Mtu Aero Engines AGInstitution deniedPTAB · Jul 6, 2017 · IPR2017-00491 · APJ Mitchell G Weatherly · IPR · Institution
The Board denied institution because all challenged claims 1–17 had been statutorily disclaimed.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Under 37 C.F.R. § 42.107(e), “patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent” and “[n]o inter partes review will be instituted based on disclaimed claims.” A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original patent” as of the” slip op. at 2
NonePatents in suitUS 8,517,668 - Irwin Seating Company v. Camatic Proprietary LimitedInstitution deniedPTAB · Jun 12, 2017 · IPR2017-00385 · APJ Mitchell G Weatherly · IPR · Institution
The Board denied institution because Irwin did not show a reasonable likelihood that claims 13, 18–22, 27–33, 35, and 36 were obvious over the asserted reference combinations.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“written decision is issued shall be given its broadest reasonable 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, 2144–46 (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. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their ordinary and customary meaning. See 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.’”). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Based upon our review of the Petition and Preliminary Response, we do not consider it necessary to interpret expressly any terms in the challenged claims to resolve a controversy presented by the parties.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“timely filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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); 37 C.F.R. § 42.108. Based on our review of the record, we conclude that because Irwin is not reasonably likely to prevail with respect to any of its challenges to the patentability of claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“analysis as follows: “In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.” Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017). However, “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references.” Id.at 1367 (quoting Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008)). The Metalcraft court further explained: Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against. See KSR, 550 U.S. at 421 . . . . And while we understand that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,” we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention. See KSR, 55 U.S. at 419, 421 . . . .” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“demonstrate a reasonable likelihood of establishing that an ordinarily skilled artisan would have been motivated to combine teachings from Head, Allison, and Burdick to arrive at the inventions as set forth in independent claims 13, 20, and 33. The testimony from Mr. Simons upon which Irwin relies is of little probative value because Mr. Simons merely parrots Irwin’s argument without citing objective evidence in support, even when such evidence should be readily available. For example, Mr. Simons testifies: In the context of beams, flanges/overhangs serve the dual purpose of mitigating torsional and bending movement while at the same time affording undercuts for positive attachment of other elements by either clamping or capturing. These benefits were well known to those of skill in the art before September 1999, and provide motivation for one of skill in the art to add flanges or overhangs to beam seating. Ex. 1002 ¶ 50 (parroting argument at Pet. 28). It is not sufficient simply to state a broad concept regarding “flanges/overhangs” as they relate to “mitigating torsional and bending movement” that is “well known” without also providing some objective evidence that the concept is well known as of the time of the invention. Like the testimony rejected for insufficiency in ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012), Mr. Simons’ testimony is generic and fails to explain with objective evidence in support why an ordinarily skilled artisan would have been motivated to modify Head’s beam 12 by adding the flanges of Allison or Burdick. Under ActiveVideo, an expert must: “explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims.” Mr. Simons fails to do so. Moreover, Expert testimony in these proceedings that “does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). As discussed below, Mr. Simons’ testimony regarding motivation to combine elements of Head, Allison, and Burdick is devoid of any disclosure of underlying facts or data and is therefore entitled to little or no weight.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,073,858
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.