- Donghee America, Inc. / Donghee Alabama, LLC v. Plastic Omnium Advanced Innovation And ResearchAll claims unpatentablePTAB · Dec 11, 2018 · IPR2017-01605 · APJ Christopher M Kaiser · IPR · Final written decision
Claims 1–3, 7, 11, 12, and 14 are unpatentable: claims 1–3, 12, and 14 are anticipated by Linden, and claims 7 and 11 are obvious over Linden and Hata.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“article whose surface has at least one empty or concave part.” Id. at 11 (citing Ex. 1001, 1:66–67; Ex. 1007 ¶ 15). Patent Owner agrees. PO Resp. 15. The ’253 patent states that “[t]he term ‘hollow body’ is understood to mean any article whose surface has at least one empty or concave part.” Ex. 1001, 1:66–67. Where an inventor defines specific terms used to describe an invention, we will give effect to those definitions, as long as they are set out “with reasonable clarity, deliberateness, and precision,” “so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Here, the phrase “is understood to mean,” as used in the ’253 patent, signals that the inventor presents a clear, deliberate, and precise definition. Accordingly, we interpret “hollow body” as having the definition given it in the ’253 patent, “any article whose surface has at least one empty or concave part.”” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“supporting its proposed construction of “incorporate” as “insert.” First, Petitioner argues that the language of the ’253 patent requires a construction of “incorporating” as encompassing “inserting” rather than as limited to “attaching.” Reply 2–4. Both parties argue that the “incorporating” recited in the challenged claims must occur before the mold closes to form the hollow body. PO Resp. 16; Reply 2–3. We agree. Ex. 1001, 6:2–14 (“. . . after said step of incorporating, closing said mould . . .”). Thus, it is important to note the processes that the ’253 patent describes as occurring before, during, and after mold closure. Because “incorporating” must occur before mold closure, the process of “incorporating” may not be limited to any process that the patent describes as occurring during or after mold closure. Petitioner is correct that the ’253 patent describes a process in which a preassembled structure for supporting an accessory “may . . . be fastened by welding to the wall of the hollow body, upon closing the mould,” i.e., during, not before, mold closure. Ex. 1001, 4:23–30. Thus, the language of the ’253 patent does not support construing the term “incorporating” as limited to “attaching.” Petitioner also argues that both parties agreed in the related infringement suit in District Court that the proper construction of “incorporating” under the Phillips standard, used in that forum, was “inserting.” Reply 7–8 (citing Ex. 1010, at Ex. A, 4). Specifically, in that litigation, Patent Owner agreed that the correct construction of “incorporating at least one of an accessory or a duct within the hollow body” was “inserting an accessory or duct into the hollow body.” Ex. 1010, at Ex. A, 4. Here, we apply the broadest-reasonable-interpretation standard. 37 C.F.R. § 42.100(b) (2016). “The broadest reasonable interpretation of a claim term may be the same as or broader than the construction of a term under the Phillips standard. But it cannot be narrower.” Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x 864, 869 (Fed. Cir. 2014) (non-precedential). Here, for the term “incorporating,” Patent Owner’s proposed broadest reasonable interpretation (“attaching”) is narrower than the Phillips construction Patent Owner has advanced (“inserting”). Thus, “attaching” cannot be the broadest reasonable interpretation of “incorporating.” Other than Patent Owner’s proposed “attaching” construction, the only construction the parties have proposed either in this case or in the related District Court case is Petitioner’s proposed “inserting” construction. PO Resp. 15–20 (discussing only “inserting” and “attaching” constructions); Reply 2–9 (Petitioner arguing in favor of “inserting”); Ex. 1010, at Ex. A, 4 (both parties proposing “inserting”). The ’253 patent supports such a construction, because it describes at least some of its embodiments as involving only insertion of an object between the sheets that will form the hollow body before mold closure. Ex. 1001, 4:23–30. Accordingly, for the foregoing reasons, we adopt Petitioner’s proposed construction of “incorporating” as “inserting.”” slip op. at 10
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Finally, Patent Owner directs us to the testimony of Professor Tim Osswald as support for its view that “incorporate” should mean “attach.” PO Resp. 16 (citing Ex. 2001 ¶¶ 40–42). In relevant part, this testimony states that, “[a]fter reading the specification of the ’253 patent, one of ordinary skill in the art would understand and interpret the word ‘incorporating’ to mean ‘fastening’ or ‘attaching’ so that the accessory or duct becomes part of the hollow body.” Ex. 2001 ¶ 42. Professor Osswald does not cite any evidence in support of his testimony. “[C]onclusory, unsupported assertions by experts as to the definition of a claim term are not useful.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc). Accordingly, we give little weight to Professor Osswald’s statement regarding the proper construction of “incorporate.” See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he [PTAB] is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations . . . .” (citations omitted)).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“preform which has at least one opening for that purpose, to be applied to the inside surface of the wall of the expanded hollow body.” Id. at 3:62–4:3. Patent Owner argues that this teaching is insufficient to disclose attaching the surge cup to the wall of the hollow body before the mold closes. PO Resp. 23–24. We agree that Linden does not teach attaching its accessory to the inside wall of the fuel tank before the mold closes around the preform. Instead, in Linden, the mold halves are closed around the preform and the mandrel, and “a suitable blowing agent . . . is introduced under pressure” through the mandrel, causing the preform to expand to press “against the inside wall defining the mold cavity,” and only then is the holding means for the accessory displaced to be brought into contact with the inner wall of the expanded preform, welding the holding means to the wall. Ex. 1003, 7:27–55, 8:11–29, Figs. 1–3. But, as discussed above, we disagree with Patent Owner about the proper construction of “incorporating” in the challenged claims. Claim 1 requires only that an accessory or a duct be “incorporat[ed] . . . within the hollow body” before mold closure occurs, and we construe “incorporating” to mean “inserting,” without requiring “attaching.” Thus, it is unimportant that Linden fails to teach attaching the surge cup to the wall before mold closure. All that is required is that Linden disclose inserting the surge cup into the preform before mold closure, and Linden does disclose this. Id. at 3:62–4:3, 7:27–49, Figs. 1–3. The next question is whether Linden discloses “after said step of incorporating, closing [the mold] in a way which eliminates any interface between said at least one of said accessory or said duct and an external atmosphere outside of the hollow body.” As discussed above, Linden discloses closing the mold halves after placing the additional body within the preform. But Linden discloses that “[a]t its lower end the preform 28 is pressed around the mandrel 14 by virtue of closure of the mold halves 10a and 10b.” Id. at 7:40–42, Fig. 2. Because mandrel 14 is hollow, id. at 6:35–39; 6:46–54, it is not completely clear that closure of Linden’s hollow body around mandrel 14 necessarily eliminates any interface between the additional body inside Linden’s hollow body and the atmosphere outside the hollow body. On the other hand, the closure of the mold described in the ’253 patent occurs with blowing nozzle 6 “positioned between the two parts of the [mold],” and “blowing air is injected under pressure via the nozzle,” which is quite similar to the use of hollow mandrel 14 in Linden. Ex. 1001, 5:50–57. Given the similarity between Linden’s method and the method described in the ’253 patent, we determine that Petitioner has shown by a preponderance of the evidence that Linden discloses the limitation of claim 1 requiring the step of, “after said step of incorporating, closing [the mold] in a way which eliminates any interface between said at least one of said accessory or said duct and an external atmosphere outside of the hollow body.” The final question with respect to claim 1 is whether Linden discloses that the additional body incorporated within the hollow body “is supported by a preassembled structure which comprises at least one device configured to anchor said preassembled structure to an internal wall of the hollow body.” Petitioner argues that Linden’s “[h]olding means 24 is a preassembled structure” in which “leg members 44, 45” have “enlarged foot portion[s] 36.” Pet. 18 (citing Ex. 1003, 9:23–34). We agree. “[H]olding means 24 . . . substantially comprises first and second support or leg members 44, 45,” and “support or leg members 44, 45 are each provided with an enlarged foot portion 36 of substantially plate-like configuration.” Ex. 1003, 9:23–34. Even if Linden’s holding means 24 were not in the aggregate the recited “preassembled structure,” each leg member 44, 45, taken together with its respective foot portion 36 is. Ex. 1001, 4:26–28 (describing a “preassembled structure” as “for example, an arm provided with a tab for fastening to the wall of the hollow body”). Linden’s “foot portions 36 are pressed against the inside surface, which is still hot and thus plastic, . . . of the hollow body . . . thereby to produce a welded joint between the foot portions 36 and the inside surface.” Id. at 9:34–42. Petitioner has shown by a preponderance of the evidence that Linden discloses the limitation of claim 1 requiring that the accessory or duct be “supported by a preassembled structure which comprises at least one device configured to anchor said preassembled structure to an internal wall of the hollow body.”” slip op. at 19
Patent outcomesUS 7,166,253 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,166,253 - Shenzhen Kean Silicone Product Co., Ltd. v. Pkoh Nyc, LLCSome claims unpatentablePTAB · Dec 3, 2018 · IPR2017-01327 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–7, 10–13, 20–22, 24, 26, 28–32, and 35–38 are unpatentable as obvious; claim 14 was not shown unpatentable over Cho.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Person of Ordinary Skill in the Art Petitioner’s expert, Mr. Goldman, proposes that a person of ordinary skill in the bottle/container field as of the time of the filing of the application that became the ’036 patent “would have a bachelor’s degree (or equivalent) in mechanical engineering and at least one or two years’ experience developing container technology.” Ex. 1014 ¶ 4. Patent Owner does not dispute Petitioner’s proposal, and based on the final record, we adopt it for purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner
“The Specification of the ’036 patent describes “[t]he elastomeric material is . . . of an appropriate durometer, such as 40 Shore A, to make the squeeze bulb 200 substantially deformable yet resilient,” and the elastomeric material is preferably silicone. Ex. 1001, 2:54–63. Only the claimed wall portion of the receptacle is claimed to be “resiliently deformable.” Id. at 5:9–10. Nothing in the claim, however, precludes or requires any other portion of the receptacle (comprised of elastomeric material) from also being resiliently deformable. Id. at 4:47–48. Notably, the receptacle is claimed to be “flexible and resilient.” Id. Although the “flexible and resilient” receptacle and its wall being “resiliently deformable” are not necessarily identical, this distinction appears to be minor considering the written description of the ’036 patent. Based on the foregoing, we give each of these claim terms their plain and ordinary meaning as understood by a person or ordinary skill in the art. The surrounding claim language for each claim limitation focuses the scope of these terms such that any interpretation we could provide would not be as helpful in understanding the terms as the surrounding claim language. We determine that no terms require express construction for the purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“6 In our decision, we give little weight to Petitioner’s evidence of “scores of popular baby bottles currently on the market,” because the design of these new bottles does not indicate the state of the art at the time the ’036 patent was filed. Further, Petitioner has failed to provide any corroborating testimony related to these new bottles—recent advertisements do not convince us of what a person of skill in the art would have considered at the time of filing. See Pet. Reply 11 (emphasis added) (citing Exs. 1022, 1023, 1024). We likewise give little weight to Petitioner’s uncorroborated article (Ex. 1026) from Wikipedia concerning “Baby bottle.” The record before us does not establish the origin and scientific basis for this evidence, and thus, we weigh Mr. Goldman’s testimony (Ex. 1021 ¶ 13) based on this evidence in a similar manner. See 37 C.F.R. § 42.65(a); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,763 (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data.”). This sentence, standing alone, supports Mr. Fletcher’s conclusion that “an elastomeric, flexible silicone” could be used in the body of Cho’s bottle. See Ex. 1014 ¶ 30. Further, we find persuasive Petitioner’s arguments, supported by the testimony of Mr. Fletcher, that “silicone is primarily known for its elastic properties, and has been widely used in medical applications, including implants and storage containers, due to its chemical inertness, high heat resistance, flexibility and resistance for at least 60 years.” Pet. 30 (citing Ex. 1014 ¶ 34). Petitioner also supports its argument as to the suitability of silicone in consumer products, including in baby bottles, with a 1991 New York Times article that explains the elastomeric properties of silicone. Pet. 12; Ex. 1018, 2 (describing “rubbery silicone”), id. at 3 (“When baby gets a bottle these days, the nipple is a rubbery version of silicone.”). The fact that silicone could also possess other properties, or hardness, does not dissuade us from the determination that Cho, as a whole, teaches using a soft, resilient silicone in the body of the bottle.” slip op. at 20
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“At the outset, Mueller is analogous art and Patent Owner’s arguments to the contrary flip the analysis from focusing on the problem faced by the inventor of the ’036 patent to the “specific problem(s) found in Cho’s baby bottle.” First, Cho and Mueller are in the same field of endeavor as the claimed invention—dispensing containers—as admitted by Patent Owner. See PO Resp. 36. We need not address the second portion of the analogous art test, which focuses on whether the prior art “is reasonably pertinent to the problem with which the inventor was concerned.” In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006). We do note, however, that the parties have both misapplied this second portion of the analysis. This analysis is focused on the problem faced by the inventor of the ’036 patent, not necessarily the problems addressed in the prior art references. Because neither party sufficiently addresses the problems faced by the inventor of the ’036 patent, and because Mueller and Cho are in the same field of endeavor as the claimed invention, we need not address the second portion of the analogous art test.” slip op. at 39
Patent outcomesUS 7,959,036 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,959,036 - BMW Of North America, LLC / Bayerische Motoren Werke Aktiengesellschaft v. Theodore & Associates, LLCSome claims unpatentablePTAB · Nov 20, 2018 · IPR2017-01380 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 2, 4, 19, 23, 24, 27–31, 35, 44–46, 48, and 49 are unpatentable under § 103; claims 3, 6, 8–10, 32–34, 36, 37, and 43 were not proven unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Mr. Kunselman, neither of whom supports his opinion with objective evidence. Pet. 35 (citing Ex. 1003 ¶ 20); PO Resp. 11–12 (referring to Mr. Kunselman’s opinion appearing at Ex. 2012 ¶¶ 15–21); Reply 20–21 (citing Ex. 1003 ¶ 20; Ex. 1061 ¶¶ 11–13). The level of skill is determined “in the art to which the claimed invention pertains,” 35 U.S.C. § 103, and neither party identifies that art explicitly. The Specification describes the field of invention as follows: “This invention is related to the field of automotive chassis design and more specifically to the area of interchangeable chassis for use with many models of vehicles.” Ex. 1001, 1:17–19. The Specification repeatedly refers to the chassis as having “universal” characteristics. Id. at Title, passim. The Specification also describes an advantage of its chassis as having “an ability to adapt to different bodies and body styles,” id. at 2:17–21, and criticizes prior art chassis designs that “are not readily adaptable to a wide variety of vehicles without forcing major and expensive redesign work for each vehicle,” id. at 1:29–33. Claims 43 and 44 expressly require that the claimed chassis be “universally adapted” for more than one type of vehicular configuration. Id. at 16:40–17:19. Based on these descriptions of the chassis and the express requirements in at least some of the claims at issue, we determine that the art to which the claimed invention pertains is the design of interchangeable chassis for use with many models of vehicles. We consider Mr. Kunselman’s testimony on the level of ordinary skill to be tied more closely to this relevant art of designing a chassis for use with many models of vehicles. Accordingly, we adopt Patent Owner’s definition of the level of ordinary skill for purposes of this Decision and evaluate priority of invention and obviousness from that perspective. We note that both Mr. Parker and Mr. Kunselman possess such a skill level. Ex. 1003 ¶¶ 6–13; Ex. 2012 ¶¶ 4–9.” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateNot entitled to earlier dateMixed
“in claims 9 and 32–43 when it states that: “During attachment of the central backbone between the front and rear structures, the operational components (e.g., quill shaft for conventional vehicle, battery for electric or hybrid vehicle), are suitably coupled or connected.” Ex. 1006 ¶ 43. Based on this disclosure in the ’490 App, Mr. Kunselman opines without citing any objective evidence in support that: “The only suitable connection it could be is a wire and a cable. No other option has ever been used, not a metal tab, buss bar, or printed circuit board.” Ex. 2012 ¶ 75 (citing Ex. 1006 ¶ 43). Because the testimony cited by the parties on this issue leads to stalemate, we examine other aspects of the ’490 App and other evidence. Figure 16 of the ’490 App, reproduced at right, illustrates batteries located in a central structure that connects one end of a chassis with a generator to the other end of the chassis with an electric motor. Mr. Parker testifies that components such as wires connecting batteries were “conventional components” that were “well known” and “found in almost all vehicles decades before the ’163 patent was filed.” Ex. 1003 ¶ 61. Figure 16 illustrates batteries within the central spine of the plug-in hybrid chassis, along with the generator on one end, which would charge those batteries, and an e-motor on the other end, which would be powered by those batteries. Ex. 1006, Figure 16. Both experts agree that an electrical wire is a well known type of electrical connection that would be suitable. Ex. 1003 ¶ 61, Ex. 2012 ¶ 75. On the record before us, we determine that Figure 16 in the ’490 App, along with the description of batteries being “suitably coupled and connected” constitutes a description of an electrical connection spanning the batteries within the central spine and to components connected to opposite ends of that spine. This is especially true given the high degree of skill possessed by an ordinarily skilled artisan. Such an artisan would have no trouble recognizing that the ’490 App described using wire to connect batteries located within the central structure and that those wires would span the entire central spine. Ex. 2012 ¶ 75. For this reason, we determine that the wire features of claims 9, 32–37, and 43 are supported by the description in the ’490 App.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“lexicographically define “chassis” but merely describes “another aspect of the universal chassis apparatus.” Reply 17–18. We agree. To act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002). It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must “clearly express an intent” to redefine the term. Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed.Cir.2008); see also Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed.Cir.2009). At most, we understand the passage quoted by Patent Owner to be describing aspects of the “universal chassis apparatus” rather than providing a lexicographical definition of “chassis.” Petitioner also contends that an ordinarily skilled artisan would understand that “chassis” generally refers to the supporting structure or frame upon which the vehicle’s body, drive train, and suspension components are mounted. Reply 18 (citing Ex. 1003 ¶ 31). Petitioner notes that such an understanding is consistent with the definitions of “chassis” provided in two automotive industry dictionaries, one of which is provided by Patent Owner. Id. at 18–19 (citing Ex. 2024;5 Ex. 1063, 45:4–46:2, 46:20–47:14, 52:15–24; Ex. 1061, ¶ 25); see also Ex. 1052, 3 (defining “chassis” as the “[s]tructural lower part of a vehicle to which the running 5 Exhibit 2024 is an excerpt of a 1993 publication entitled “Auto Dictionary” in which “chassis” is defined as follows: “Lower structure of a vehicle to which the running gear and body are attached. On older cars, the chassis was a separate part of the vehicle with its own frame but, today, it is usually an integral part of the body structure.” Ex. 2024, 3. gear6 and body is attached.”). Mr. Kunselman testifies that “a variety of possible definitions for a chassis” exist. Ex. 1063, 74:12–14. Petitioner also points out that Patent Owner’s proffered definition for “chassis” conflicts with the Abstract of the ’163 patent, which indicates that “other components” including the suspension are attached to—and therefore separate from—a “vehicle chassis.” Reply 19 (citing Ex. 1001, Abstract, Ex. 1061 ¶ 26). Based on our review of the entire record, we conclude that “chassis” is neither precisely defined in the Specification nor understood by an ordinarily skilled artisan to have a precise universally agreed upon definition. Rather, “chassis” refers generally to the supporting structure or frame upon which the vehicle’s body, drive train, and suspension components are mounted.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundDecided for petitioner
“Patent Owner’s argument is not persuasive for at least three reasons. First, claims 2 and 27 merely require that the backbone have two sections or segments that together define “a substantially T-shape as viewed from above.” Ex. 1001, 13:41–44 (claim 2), 15:15–24 (claim 27). Even with Brandt’s heel plate 40 positioned between the compartments holding battery units 24 and 28, we consider the combination of Brandt’s two compartments to be arranged in “a substantially T-shape as viewed from above” as recited in claims 2 and 27. Additionally, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Third, both Greil and Brandt describe locating batteries in the lower central portion of a vehicle. Ex. 1016, ¶ 38, Figure 5; Ex. 1018 ¶¶ 21– 22, Figure 1. Brandt explicitly suggests arranging batteries in a T-shape configuration. Ex. 1018 ¶¶ 21–22, Figure 1. We conclude that Petitioner has proven by a preponderance of evidence that the combination of Greil and Brandt renders claims 2, 4, and 27–31 unpatentable as obvious.” slip op. at 30
Patent outcomesUS 9,045,163 mixedClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,045,163 - BMW Of North America, LLC / Bayerische Motoren Werke Aktiengesellschaft v. Theodore & Associates, LLCAll claims unpatentablePTAB · Nov 20, 2018 · IPR2017-01379 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 2–4, 6, 8–10, 19, 23, 24, 27–37, 43–46, 48, and 49 are unpatentable as obvious under § 103.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“lexicographically define “chassis” but merely describes “another aspect of the universal chassis apparatus.” Reply 3–4. We agree. To act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must “clearly express an intent” to redefine the term. Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); see also Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009). At most, we understand the passage quoted by Patent Owner to be describing aspects of the “universal chassis apparatus” rather than providing a lexicographical definition of “chassis.”” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“Claim 6 recites “the backbone structure further comprising a removable service plate, the backbone structure and plate together defining a substantially polygonal cross-sectional shape.” Ex. 1001 13:56–57. Plainly, the “service plate” is a removable component of the backbone structure. Based upon the arguments presented by the parties on whether Gastesi suggests the claimed service plate, we discern no reason to comment upon whether the “service plate” must “be on the backbone.”” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The level of skill is determined “in the art to which the claimed invention pertains,” 35 U.S.C. § 103, and neither party identifies that art explicitly. The Specification describes the field of invention as follows: “This invention is related to the field of automotive chassis design and more specifically to the area of interchangeable chassis for use with many models of vehicles.” Ex. 1001, 1:17–19. The Specification repeatedly refers to the chassis as having “universal” characteristics. Id. at Title, passim. The Specification also describes an advantage of its chassis as having “an ability to adapt to different bodies and body styles,” id. at 2:17–21, and criticizes prior art chassis designs that “are not readily adaptable to a wide variety of vehicles without forcing major and expensive redesign work for each vehicle,” id. at 1:29–33. Claims 43 and 44 expressly require that the claimed chassis be “universally adapted” for more than one type of vehicular configuration. Id. at 16:40–17:19. Based on these descriptions of the chassis and the express requirements in at least some of the claims at issue, we determine that the art to which the claimed invention pertains is the design of interchangeable chassis for use with many models of vehicles. We consider Mr. Kunselman’s testimony on the level of ordinary skill to be tied more closely to this relevant art of designing a chassis for use with many models of vehicles. Accordingly, we adopt Patent Owner’s definition of the level of ordinary skill for purposes of this Decision and evaluate obviousness from that perspective. We note that both Mr. Parker and Mr. Kunselman possess such a skill level. Ex. 1003 ¶¶ 6–13; Ex. 2025 ¶¶ 4–9.” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“Petitioner persuasively argues that we should discount Mr. Kunselman’s testimony. First, we consider Mr. Kunselman’s testimony to be weak because it is not supported by objective evidence. Second, Mr. Kunselman bases his testimony on the faulty premise that Gastesi’s fuel tank 22 is “immediately adjacent engine 2.” Reply 8; see also Ex. 2025 ¶ 65 (“Since the gas tank is immediately adjacent engine 2, a POSITA would understand that the gas tank fittings would be also located at the lateral end.” (emphasis added).) Third, on cross examination, Mr. Kunselman concedes that Gastesi is not specific about whether its fuel tank is “immediately adjacent” the engine, but instead merely indicates that fuel tank 22 is located somewhere within the centrally located section “B” shown in Gastesi’s Figure 1. Ex. 1063, 121:10–122:19; see also Ex. 1012, 3:1–14, 4:3–4 (describing fuel tank 22 inside tubular structure 3 of Figures 3 and 4). Mr. Parker agrees. Ex. 1061 ¶¶ 30–31. Fourth, Mr. Kunselman also testifies that the installation of service plates to enable access to components positioned beneath the plate were known before 2007. Ex. 1063, 119:6– 120:7. As for the alleged “leak path” introduced by using a service plate in tubular member 3, Mr. Kunselman fails to explain why Gastesi’s fuel tank 22, which is a separate structure within tubular member 3,4 would leak simply because a service plate is installed in tubular member 3. Mr. Parker opines that an ordinarily skilled artisan would understand that the leak path identified by Mr. Kunselman would be mitigated by Gastesi’s use of a separate structure for fuel tank 22. Ex. 1061 ¶ 32. We consider Mr. Parker to be more credible than Mr. Kunselman on this point because Mr. Parker testifies about the structures that Gastesi actually describes rather than simply positing risks without explanation.” slip op. at 20
Patent outcomesUS 9,045,163 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,045,163 - PTAB · Oct 18, 2018 · IPR2018-00701 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied rehearing and left institution denied for claims 1–9 and 12 because the petition did not sufficiently establish motivation to combine Barratt and Calderbank.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs 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); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R § 42.71(d); accord Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“a combination of Barratt and Calderbank. See DDI 5, 7. Petitioner argued motivation to combine on page 34 of the Petition (Paper 1, “Pet.”) which stated, “while Barratt does not disclose the specific mathematical operations that are performed on the orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode,’ a POSA would have recognized that this spatial signature should be calculated using well-known cross-correlation techniques, such as those described in Calderbank.” Pet. 34. In response to this argument, Patent Owner asserted, “the premise of Petition’s motivation to combine—that Barratt requires calculating spatial signatures from orthogonal training sequences but does not explain how to do so—is not supported by the Petition’s allegations and is instead false.” Paper 8 (Preliminary Response), 15–16. Barratt does not use “orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode.’” See Ex. 1003, 16:31–17:67 (discussing calibration mode using “predetermined calibration signals”); see also id. at 18:50–67 (discussing use of orthogonal training sequences in another “closed loop” embodiment). Barratt does disclose the specific mathematical operations that are used to calculate a remote terminal’s spatial signature in Barratt’s “calibration mode.” See id. at 16:60–17:32. Thus, as we determined in the Decision Denying Institution, the purported gap in the teachings of Barratt that Petitioner relies on as the basis for providing the motivation to combine Calderbank with Barratt does not exist. DDI 10. Institution was denied because we determined Petitioner failed to sufficiently establish a motivation to combine the relevant teachings of the” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“a combination of Barratt and Calderbank. See DDI 5, 7. Petitioner argued motivation to combine on page 34 of the Petition (Paper 1, “Pet.”) which stated, “while Barratt does not disclose the specific mathematical operations that are performed on the orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode,’ a POSA would have recognized that this spatial signature should be calculated using well-known cross-correlation techniques, such as those described in Calderbank.” Pet. 34. In response to this argument, Patent Owner asserted, “the premise of Petition’s motivation to combine—that Barratt requires calculating spatial signatures from orthogonal training sequences but does not explain how to do so—is not supported by the Petition’s allegations and is instead false.” Paper 8 (Preliminary Response), 15–16. Barratt does not use “orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode.’” See Ex. 1003, 16:31–17:67 (discussing calibration mode using “predetermined calibration signals”); see also id. at 18:50–67 (discussing use of orthogonal training sequences in another “closed loop” embodiment). Barratt does disclose the specific mathematical operations that are used to calculate a remote terminal’s spatial signature in Barratt’s “calibration mode.” See id. at 16:60–17:32. Thus, as we determined in the Decision Denying Institution, the purported gap in the teachings of Barratt that Petitioner relies on as the basis for providing the motivation to combine Calderbank with Barratt does not exist. DDI 10. Institution was denied because we determined Petitioner failed to sufficiently establish a motivation to combine the relevant teachings of the” slip op. at 3
§ 103 obviousnessPatents in suitUS 6,611,231 - General Electric Company v. United Technologies CorporationRehearing deniedPTAB · Oct 18, 2018 · IPR2017-00428 · APJ George R Hoskins · IPR · Rehearing
The Board denied GE’s rehearing request, leaving intact its finding that claims 10–14 were not shown unpatentable, including claim 10’s failure under §103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“issue here, the party challenging the decision has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in the proceeding. Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundNot shown unpatentable
“We have reviewed the case law cited in Petitioner’s Request. At most, it establishes that prior art disclosures indicating a given design option would be inoperative or technically infeasible are sufficient to teach away from the design option. See Urbanski, 809 F.3d at 1243 (“[i]f references taken in combination would produce a ‘seemingly inoperative device,’ . . . such references teach away from the combination”) (quoting McGinley, 262 F.3d at 1354); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326–28 (Fed. Cir. 2009) (prior art taught away from a “rigid” pedicle screw in “warn[ing] that rigidity increases the likelihood that the screw will fail within the human body, rendering the device inoperative for its intended purpose”) (emphases added); Orthopedic Equip. Co., Inc. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (obviousness may be defeated if “skilled persons in the art felt that there was some technological incompatibility that prevented [the prior art’s] combination”). The cited case law does not, as Petitioner would have it, establish that such prior art disclosures are necessary to teach away from the design option. See Polaris, 882 F.3d at 1069–70 (on remand, “the Board must analyze whether Denney ‘teaches away’” based on undisputed evidence indicating that adding a fuel tank under Denney’s seats would “rais[e] the center of gravity and render[] the vehicle less stable, which would run contrary to one of Denney’s stated purposes”) (emphasis added)1; Urbanski, 809 F.3d at 1243–44 (“the cited references do not teach away,” because “[n]othing in the prior art teaches that the proposed modification would have resulted in an ‘inoperable’ process or a dietary fiber product with undesirable properties”) (emphases added). Instead, a teaching away requires the prior art merely to criticize, discredit, or discourage pursuit of the design option. See Polaris, 882 F.3d at 1068–70 (Board erred in “fail[ing] to analyze whether Denney ‘teaches away’ . . . by determining whether ‘a person of ordinary skill, upon reading [Denney], would be discouraged from following the path set out in [Denney], or would be led in a direction divergent from the path that was taken by the applicant”) (emphases added); Urbanski, 809 F.3d at 1243–44; DePuy Spine, 567 F.3d at 1327; Reply Br. 8–9; Reh’g Req. 4. For the reasons provided in the Decision, Wendus criticizes, discredits, and discourages using a two-stage high pressure turbine in the Wendus ADP engine. See Dec. 23–30.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“motivation must be found to physically combine the actual embodiments in” Wendus and Moxon. Reh’g Req. 9–10. However, as stated in the Decision and not disputed in Petitioner’s Request, Petitioner’s case for obviousness is premised upon modifying the specific ADP engine disclosed in Wendus. See Dec. 12 n.5 (citing Pet. 59–60, 65, 66–75 and Reply Br. 23–24). Further, the Decision did not require Petitioner to establish that the two-stage high pressure turbine of Moxon could be bodily incorporated into the Wendus ADP engine. See id. at 32–38. Instead, the Decision discussed Petitioner’s failure to provide a persuasive motivation or justification for why a person of ordinary skill in the art, when modifying the Wendus ADP engine to include a two-stage high pressure turbine, would maintain the other claimed parameters within the scope of claim 10. See id. This was especially true concerning the claimed parameters for the low pressure turbine, which is located downstream of the high pressure turbine. Id. at 36–38.” slip op. at 8
§ 103 obviousnesscites KSRPatents in suitUS 8,695,920 - Stingray Digital Group Inc. v. Music ChoiceSome claims unpatentablePTAB · Oct 11, 2018 · IPR2017-01191 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1–4 and 6–9 are unpatentable as obvious over Hudson and Dwek; claims 5 and 10–20 were not shown unpatentable because the references do not disclose the genre channel limitation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner contends a person of ordinary skill in the art pertaining to the ’045 patent, at the time of invention, “would have had at least an undergraduate degree in computer science or electrical engineering, or equivalent experience and, in addition, two years of experience in distribution of digital audio and video via networks.” Pet. 5 (citing Ex. 1003 ¶¶ 11–17). Patent Owner agrees. PO Resp. 6. In considering the issues presently before us, we have adopted and applied Petitioner’s proposed identification of the level of ordinary skill in the art, which is consistent with the ’045 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“B. CLAIM INTERPRETATION “A claim in an unexpired patent that will not expire before a final 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, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to Rule 42.100(b)). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification, and absent any special definition, we give claim terms their ordinary and customary meaning. See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.” (internal quotation marks omitted)). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In the Decision on Institution, we instructed the parties to brief the meaning of “a message comprising information indicating that the user desires to view the video identified by the video identifier” as recited in claims 1 and 6; and “in response to receiving the message” as recited in claims 1 and 6. Dec. 24. The parties agreed upon the express meaning of both phrases, PO Resp. 6–7; Reply 2, which we adopt for the purposes of this Final Written Decision. We discern no need to interpret any other phrase expressly for the purposes of this Final Written Decision.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“A reference may be said to teach away when a person of ordinary skill, upon reading the 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.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting Ricoh Co., Ltd. v. Quanta Comput. Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008)). Moreover, a reference “must [be] considered for all it taught, disclosures that diverged and taught away from the invention at hand as well as disclosures that pointed towards and taught the invention at hand.” Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 296 (Fed. Cir. 1985) (citation omitted). A reference does not teach away “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy, 567 F.3d at 1327 (quoting In re Fulton, 391 F.3d at 1201). But even if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference. See Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1051 n.15 (Fed. Cir. 2016) (en banc) (noting that, even if a reference “does not teach away, its statements regarding users preferring other forms of switches are relevant to a finding regarding whether a skilled artisan would be motivated to combine the slider toggle in” that reference with the invention of a second reference). Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018). Against this background, we determine that Hudson does not teach away from incorporating the ability to customize playlists as described by Dwek. Hudson never expressly mentions permitting a user to customize its storyboards much less disparages doing so. Dr. Shamos testifies that an ordinarily skilled artisan would have recognized that Hudson’s advantages of providing links to ancillary content along with primary content would be further enhanced if users also had Dwek’s ability to customize the primary content they were viewing. Ex. 1003 ¶¶ 43–46. Dr. Russ’s conclusions otherwise fail to consider each of Hudson and Dwek as a whole, but instead focus narrowly upon specific implementations of delivering media in each reference. Ex. 2109 ¶¶ 49–52. When Hudson and Dwek are considered as a whole, the similarities in their goals suggests their combination. For example, Hudson, by incorporating Headings by reference,3 recognizes that its system is compatible with streaming a wide variety of content including “movies, music videos, educational content, television shows, games, live events, and advertising.” Ex. 1005 ¶ 27. Similarly, Dwek recognizes that its system may deliver more than music; it may also “deliver video or other streaming multimedia content.” Ex. 1006, 4:10:12. Patent Owner argues that because Dwek describes joining a customized, shared channel “in progress,” Dwek’s system only broadcasts streams in a manner akin to live radio. PO Resp. 17. However, Dwek also contemplates starting playback of its user-defined shared channels at the beginning of the user-defined playlist. Id. at 11:27– 33. Based on our review of Hudson and Dwek, we determine that they both describe systems in which users have some degree of control over what content they consume and when they consume it. Ex. 1004 ¶¶ 37–40, Figure 4; Ex. 1006, 1:31–50. We also determine that both systems are designed to facilitate commerce related to the content. Ex. 1004 ¶ 41, 44; Ex. 1006, 3:28–57. Based upon our consideration of Hudson and Dwek as a a whole, we credit the testimony of Dr. Shamos over that of Dr. Russ and conclude that Hudson does not teach away from permitting a user to slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“storyboards much less disparages doing so. Dr. Shamos testifies that an ordinarily skilled artisan would have recognized that Hudson’s advantages of providing links to ancillary content along with primary content would be further enhanced if users also had Dwek’s ability to customize the primary content they were viewing. Ex. 1003 ¶¶ 43–46. Dr. Russ’s conclusions otherwise fail to consider each of Hudson and Dwek as a whole, but instead focus narrowly upon specific implementations of delivering media in each reference. Ex. 2109 ¶¶ 49–52. When Hudson and Dwek are considered as a whole, the similarities in their goals suggests their combination. For example, Hudson, by incorporating Headings by reference,3 recognizes that its system is compatible with streaming a wide variety of content including “movies, music videos, educational content, television shows, games, live events, and advertising.” Ex. 1005 ¶ 27. Similarly, Dwek recognizes that its system may deliver more than music; it may also “deliver video or other streaming multimedia content.” Ex. 1006, 4:10:12. Patent Owner argues that because Dwek describes joining a customized, shared channel “in progress,” Dwek’s system only broadcasts streams in a manner akin to live radio. PO Resp. 17. However, Dwek also contemplates starting playback of its user-defined shared channels at the beginning of the user-defined playlist. Id. at 11:27– 33. Based on our review of Hudson and Dwek, we determine that they both describe systems in which users have some degree of control over what content they consume and when they consume it. Ex. 1004 ¶¶ 37–40, Figure 4; Ex. 1006, 1:31–50. We also determine that both systems are designed to facilitate commerce related to the content. Ex. 1004 ¶ 41, 44; Ex. 1006, 3:28–57. Based upon our consideration of Hudson and Dwek as a a whole, we credit the testimony of Dr. Shamos over that of Dr. Russ and conclude that Hudson does not teach away from permitting a user to 3 Ex. 1004 ¶ 27. customize its content storyboards in a manner akin to Dwek’s customization of musical playlists.” slip op. at 18
Patent outcomesUS 9,351,045 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,351,045 - Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution deniedPTAB · Oct 1, 2018 · IPR2018-00880 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution for all challenged claims under § 314(a), applying the General Plastic factors to find that the later-filed petition presented a tactical filing concern.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Petitioner had access to Patent Owner’s Preliminary Response in the –00005 IPR (filed January 12, 2018), and to the Board’s Decision denying institution of that petition (filed March 20, 2018). Thus, the timing of Petitioner’s filing in this case raises the potential for abuse, because Petitioner had ample opportunity to study the arguments raised by Patent Owner, and the Board’s findings and conclusions of law, regarding the commonly challenged claims of the ’090 patent. See Prelim. Resp. 13–15. Thus, we determine that Factor 3 weighs strongly against institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’090 patent.” slip op. at 2
Discretionary denialPatents in suitUS 8,474,090 - Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution deniedPTAB · Oct 1, 2018 · IPR2018-00882 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding the General Plastic factors, including tactical follow-on filing and substantially similar prior art and arguments, favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Petitioner had access to Patent Owner’s Preliminary Response in the –2050 IPR (filed December 14, 2017), and to the Board’s Decision denying institution of that petition (filed March 12, 2018). Thus, the timing of Petitioner’s filing in this case raises the potential for abuse, because Petitioner had ample opportunity to study the arguments raised by Patent Owner, and the Board’s findings and conclusions of law, regarding the commonly challenged claims of the ’233 patent. See Prelim. Resp. 16. Thus, we determine that Factor 3 weighs strongly against institution.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’233 patent.” slip op. at 2
Discretionary denialPatents in suitUS 9,038,233 - Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution deniedPTAB · Oct 1, 2018 · IPR2018-00898 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding the General Plastic factors, considered as a whole, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Petitioner had access to Patent Owner’s Preliminary Response in the –2133 IPR (filed January 5, 2018), and to the Board’s Decision denying institution of that petition (filed March 28, 2018). Thus, the timing of Petitioner’s filing in this case raises the potential for abuse, because Petitioner had ample opportunity to study the arguments raised by Patent Owner, and the Board’s findings and conclusions of law, regarding the commonly challenged claims of the ’553 patent. See Prelim. Resp. 16–23. Indeed, it appears that Petitioner took advantage of “the opportunity to strategically stage their prior art and arguments,” to account for the Board’s decision in the –2133 IPR. Gen. Plastic, slip op. at 17–18. For example, in the –2133 IPR, the Board determined that Petitioner had not established sufficiently the prior art status of “Suckmaster II Vacuum Robot” (–2133 IPR, Ex. 1004) and “Suckmaster II vacuum robot control program” (–2133 IPR, Ex. 1005). –2133 IPR, Paper 8, 6. In this proceeding, Petitioner appears to attempt to avoid a similar outcome by submitting a different version of the Suckmaster Article and a different declaration from the author of the Suckmaster Article, Mr. Dale Heatherington. Prelim. Resp. 20; compare –2133 IPR, Exs. 1004, 1006, with Exs. 1008, 1010. This approach suggest that Petitioner was aware of, and relied upon, the papers filed in the –2133 IPR when preparing this Petition. Thus, we determine that Factor 3 weighs strongly against institution.” slip op. at 11
Discretionary denialPatents in suitUS 8,600,553
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.