- Toyota Motor Corp. / Aisin Seiki Co., Ltd. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Dec 12, 2018 · IPR2017-01495 · APJ Amanda F Wieker · IPR · Final written decision
Claims 24–27 are unpatentable as obvious over Zimmerman, Stephan, and Neal, and independently over Gould and Neal.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Based upon our review of the ’348 patent and the types of problems and solutions described in the ’348 patent and applied prior art, we determine that an ordinarily skilled artisan would have a bachelor’s degree in mechanical engineering, electrical engineering, chemical engineering, or an equivalent degree, and two years of experience in the design of electric motors and electromagnetic devices, including familiarity with the design, operation, materials, and fabrication of such devices, including their thermal and fluid characteristics.4 Although Patent Owner disputes whether an electrical engineering degree is sufficient educational experience for a POSITA, the cited testimony does not present any persuasive or specific basis upon which to determine that an electrical engineering degree, coupled with the cited experience, would be insufficient, as compared to a mechanical or chemical engineering degree. See Ex. 1132 ¶¶ 30–31 (Dr. Trumper opining that a POSITA may possess an electrical engineering degree); Ex. 2009 ¶ 23 (Dr. Garris disputing only whether Dr. Trumper considered that the claims concern “electrically controlled fluid control devices,” but not discussing whether an electrical engineering degree would be sufficient); Ex. 1136 ¶¶ 26–27 (Dr. Toliyat opining that a POSITA of the ’348 patent may have “a degree in electrical engineering”); Ex. 1138, 22:12– 17, 23:14–21, 24:18–22 (opining that a POSITA could have an electrical engineering degree).” slip op. at 14
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We have considered Dr. Garris’s competing testimony that “[h]aving a flush connection to the cooling coil 80 is not superior to Zimmerman’s design, and Dr. Trumper identifies no such advantages.” Ex. 2009 ¶ 120; see also PO Resp. 45. However, Dr. Garris does not explain the basis for his opinion. For example, Dr. Garris neither explains why Zimmerman’s existing design is preferable to a flush connection, nor weighs the numerous advantages offered by Dr. Trumper: “easier assembly,” “simpler construction,” “fewer parts,” or “easier manufacturing and assembly.” As such, weighing the competing testimony of both declarants, we find Dr. Trumper to be more persuasive, given the lack of supporting basis for Dr. Garris’s opinion. We disagree with Patent Owner’s argument that the proposed modification would not have been obvious to a POSITA because it would require modifying Zimmerman’s casting mold to include a more complex shape with a conduit-shaped inlet and outlet. PO Resp. 45 (citing Ex. 2009 ¶ 119). This argument ignores the fact that, under Petitioner’s proposed modification, Zimmerman’s resin sheath would be formed of injection-molded thermoplastic—casting molds would not be used. See supra Section II.D.4.iii. As such, this argument is not responsive to the proposed ground of unpatentability. Moreover, the evidence of record suggests that injection molding is well-suited to the formation of complex shapes. Ex. 2005, 34 (explaining that “injection molding makes discrete parts that can have [a] complex and variable cross section”). Finally, we disagree with Patent Owner’s argument that this would not be a simple substitution. PO Resp. 45 (citing Ex. 2009 ¶¶ 121–122). In paragraph 121 of his declaration, Dr. Garris states that “[s]imply because an engineering design or process is known, that does not mean that the design or process is a satisfactory ‘substitute’ for another design or another process. Whether two elements may qualify as substitutes depends on their suitability to address the specific design problem being addressed.” Ex. 2009 ¶ 121. Although this statement may be true, Dr. Garris does not address the facts of Petitioner’s proposed modification. For example, Dr. Garris does not dispute that connecting Zimmerman’s coil 80 to tube fittings 78, 81 with the resin sheath, rather than through Zimmerman’s existing structure, would suitably solve the design problem. Nor does Dr. Garris explain why these would not be simple substitutes. By contrast, Dr. Trumper identifies a similarly formed line connection in the prior art (Ex. 1132 ¶ 85), and explains why such an arrangement would be a desirable and obvious substitute if employed in Zimmerman’s sheath (id.).7 As such, on the record before us, we determine Dr. Garris’s testimony in this regard is conclusory and entitled to little weight. 37 C.F.R. § 42.65(a).” slip op. at 38
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“In this case, both parties agree that “substantially encapsulating” includes “entirely surrounding or surrounding almost all except for minor areas that might be exposed.” This understanding is consistent with the lexicographic definition and the cited example provided in the ’348 patent. Ex. 1001, 6:7–13, 6:53–58. However, the lexicographic definition also defines this phrase as including the concept of “rigidly fixing together, and behav[ing] as a single component with respect to harmonic oscillation vibration.” Id. at 6:7–13. The cited example similarly reflects this concept. Id. at 6:53–58. Patent Owner argues that this portion of the definition is “not relevant” to the disputed issues in this proceeding. PO Resp. 29 n.1. However, that the parties do not dispute this aspect of the phrase’s meaning does not alter the proper construction of the phrase. Additionally, Patent Owner provides no persuasive reasoning or evidence to support this bare attorney argument. Thus, we construe “substantially encapsulating” in accordance with its lexicographic definition and cited example in the ’348 patent specification as “either entirely surrounding or surrounding almost all except for minor areas that might be exposed, such that the elements are rigidly fixed together and behave as a single component with respect to harmonic oscillation vibration.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Stephan and Neal, however, explicitly teach that their housing and monolithic body, respectively, may be made from either a thermoset or an injection-molded thermoplastic material. See Ex. 1109 ¶ 41 (utilizing “any injection-molded thermoplastic,” or a “thermosetting synthetic material in a molding process”); Ex. 1104, 5:27–49 (“There are two types of phase change materials that will be most useful in practicing the invention: temperature activated and chemically activated. . . . The most preferred temperature activated phase change materials are thermoplastics. The preferred thermoplastic will become molten at a temperature at which it is injection-moldable. . . . An example of a phase change material that changes phases due to a chemical reaction, and which could be used to form the body 14, is an epoxy. Other suitable phase change materials may be classified as thermosetting materials.”). Thus, the cited prior art explicitly teaches that injection-molded thermoplastic materials are known alternatives to the chemically-activated epoxy resin disclosed by Zimmerman. Additionally, Neal explains that using injection-molded thermoplastic as an encapsulating material allows for appropriate thermal conductivity, as well as hermetic sealing. Ex. 1104, 6:26–46 (examples of thermally conductive thermoplastic resins), 9:5–20 (facilitating heat dissipation), 18:4– 10 (hermetically sealed). These are the same properties sought to be realized by Zimmerman’s epoxy resin sheath. Ex. 1103, 4:33–38 (explaining that the resin sheath “covers the non-insulated parts preventing moisture and liquid from contacting vital metal and moving parts . . . [and] is a liquid protector and heat transfer agent or heat conductive medium combined”); see also Ex. 1132 ¶ 78 (Dr. Trumper opining that a POSITA would have been motivated to use injection molded thermoplastic to form Zimmerman’s body to achieve the goals articulated by Zimmerman).” slip op. at 23
Patent outcomesUS 7,928,348 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,928,348 - Aisin Seiki Co., Ltd. / Toyota Motor Corp. et al. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Dec 12, 2018 · IPR2017-01538 · APJ Amanda F Wieker · IPR · Final written decision
Claims 24–27 are unpatentable as obvious over Konishi and over Umeda, Raible, and Neal; Petitioner did not show them unpatentable over Umeda and Stephan or Bramm and Watterson.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Based upon our review of the ’348 patent and the types of problems and solutions described in the ’348 patent and applied prior art, we determine that an ordinarily skilled artisan would have a bachelor’s degree in mechanical engineering, electrical engineering, chemical engineering, or an equivalent degree, and two years of experience in the design of electric motors and electromagnetic devices, including familiarity with the design, operation, materials, and fabrication of such devices, including their thermal and fluid characteristics.9 Although Patent Owner disputes whether an electrical engineering degree is sufficient educational experience for a POSITA, the cited testimony does not present any persuasive or specific basis upon which to determine that an electrical engineering degree, coupled with the cited experience, would be insufficient, as compared to a mechanical or chemical engineering degree. See Ex. 1002 ¶¶ 30–32 9 Although the parties present different characterizations of the areas of subject matter familiarity of a POSITA, we determine their content to be substantially the same. Compare Pet. 23, with PO Resp. 31–32. (Dr. Trumper opining that a POSITA may possess an electrical engineering degree); Ex. 2010 ¶¶ 23, 25 (Dr. Garris disputing only whether Dr. Trumper considered that the claims concern “electrically controlled fluid control devices,” but not discussing whether an electrical engineering degree would be sufficient); Ex. 1017 ¶¶ 26–27 (Dr. Toliyat opining that a POSITA of the ’348 patent may have “a degree in electrical engineering”); Ex. 1016, 22:12– 17, 23:14–21, 24:18–22 (Dr. Garris opining that a POSITA could have an electrical engineering degree).” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“In this case, both parties agree that “substantially encapsulating” includes “entirely surrounding or surrounding almost all except for minor areas that might be exposed.” This understanding is consistent with the lexicographic definition and the cited example provided in the ’348 patent. Ex. 1001, 6:7–13, 6:53–58. However, the lexicographic definition also clearly defines this phrase as including the concept of “rigidly fix[ing] together, and behav[ing] as a single component with respect to harmonic oscillation vibration.” Id. at 6:7–13. The cited example similarly reflects this concept. Id. at 6:53–58. Patent Owner argues that this portion of the definition is “not relevant” to the disputed issues in this proceeding. PO Resp. 29 n.1. However, that the parties do not dispute this aspect of the phrase’s meaning does not alter the proper construction of the phrase. Additionally, Patent Owner provides no persuasive reasoning or evidence to support this bare attorney argument. Thus, we construe “substantially encapsulating” in accordance with its lexicographic definition and cited example in the ’348 patent specification as “either entirely surrounding or surrounding almost all except for minor areas that might be exposed, such that the elements are rigidly fixed together and behave as a single component with respect to harmonic oscillation vibration.”” slip op. at 12
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We have considered Patent Owner’s argument that stator can 51 and stator molded portion 5 may only be formed from the same material “if that common material is capable of handling the high temperature environment experienced by the stator can.” PO Resp. 36–37; Ex. 2010 ¶ 106. We disagree with this argument, and give little weight to Dr. Garris’s testimony upon which the argument depends, because it conflicts with Konishi’s disclosure. As discussed above, Konishi explains that the stator molded portion 5 and stator can 51 are “formed as a single unit.” Ex. 1003 ¶¶ 16, 38. Konishi does not place any restrictions upon this disclosure, and does not suggest that these components may only be formed as a single unit, if made with a certain material. Additionally, Konishi explains that the heat experienced by stator can 51 is mitigated by the working fluid that flows through heat transfer pipes 1 and flow paths 52, not by the particular material selected for a single unit stator molded portion and stator can. Id. ¶¶ 21–22. Dr. Garris does not identify any supporting basis for his testimony and, as such, we afford it little weight.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“obvious to utilize injection-molded thermoplastic to form Konishi’s monolithic body, i.e., stator molded portion 5 and stator can 51. As discussed above, Konishi explicitly states that the stator molded portion and stator core are formed as a “single unit.” Ex. 1003 ¶¶ 16, 38. Moreover, Konishi discloses various types of thermoplastics that may be “used to seal the stator core, etc.” Id. ¶¶ 30–31. Konishi also discloses that injection molding is an exemplary method of sealing the stator core. Id. ¶ 37. Thus, we determine that a POSITA, aware of Konishi’s teachings that injection-molding and thermoplastic materials may be used to seal the stator core, would have found such use obvious. For example, we are persuaded by Dr. Trumper’s testimony that such materials were suitable, as taught by Konishi, and provided well-known benefits, e.g., high heat conductivity. Ex. 1002 ¶¶ 86–87; see also Reply 4 (discussing Dr. Garris’s deposition testimony, admitting that Konishi discloses that injection-molded thermoplastic may be used). We have considered Patent Owner’s argument, and Dr. Garris’s testimony, that “a POSITA would not use a thermoplastic for the stator can 51 because the material would soften or even melt if the temperatures in the vicinity of the windings 33 become too high.” PO Resp. 37 (citing Ex. 2010 ¶¶ 105–106). This argument, however, does not account for Konishi’s express teachings that thermoplastics may be utilized, as discussed above. Moreover, Konishi recognizes that heat is produced by windings 33, and explains that this heat is “removed to the outside by the working fluid that passes through the inside of heat transfer pipes 1.” Ex. 1003 ¶ 21; see also id. ¶ 22 (explaining that heat produced by coil 33 is removed by working fluid passing through flow paths 52). Thus, Konishi’s teachings are inconsistent with Dr. Garris’s testimony that “stator can 51 receives heat from windings 33, which are in close proximity, and it is so far away from the heat transfer pipes 1 and flow paths 52 that it receives little cooling from them compared to the stator molded portion 5.” Ex. 2010 ¶ 111. The record before us lacks sufficient evidence that problems associated with high heat are likely to occur in Konishi, given the heat reduction techniques employed to avoid this very problem. See Ex. 1003 ¶¶ 21–22; see also Ex. 1002 ¶ 87 (Dr. Trumper testifying that thermoplastics exhibit high heat conductivity). Accordingly, we disagree with Patent Owner’s arguments. Instead, for the reasons given, we agree with Petitioner that Konishi renders obvious the “injection molded thermoplastic” recitation of this limitation of claim 24.” slip op. at 27
Patent outcomesUS 7,928,348 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,928,348 - 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 - Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution deniedPTAB · Oct 1, 2018 · IPR2018-00897 · APJ William V Saindon · IPR · Institution
The Board denied institution of review on all challenged claims under § 314(a), finding that the General Plastic factors favored Patent Owner and Petitioner offered no mitigating explanation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it.” Gen. Plastic, slip op. at 16. Factor 2 favors Patent Owner because at the time iLife filed its petition, Petitioner knew or should have known of the prior art asserted in its Petition. In particular, Petitioner and iLife both submitted invalidity contentions in the ITC proceeding effectively identifying all of the prior art asserted in this proceeding on September 29, 2017, over 6 months prior to Petitioner filing the Petition on April 16, 2018. See Ex. 2009, 4, 8, 13, 15, 17–19, 23, 25. Petitioner knew about the prior art asserted in this proceeding at the time the iLife petition was submitted and thus had apparent opportunity to file this Petition at a time on par with the iLife petition. Petitioner offers no explanation for why it waited until after Patent Owner filed its Preliminary Response and we issued our Decision on Institution in that proceeding. Accordingly, Factor 2 favors Patent Owner.” slip op. at 9
Discretionary denialPatents in suitUS 6,809,490 - Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution deniedPTAB · Sep 5, 2018 · IPR2018-00761 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution of inter partes review for all challenged claims under its General Plastic discretionary analysis.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“[F]actor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. . . . Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap . . . . All other factors aside, this is unfair to patent owners and is an inefficient use of the inter partes review process and other post-grant review processes. Id. at 17–18 (internal citation and footnote omitted).” slip op. at 11
Discretionary denialPatents in suitUS 7,155,308 - American Honda Motor Co., Inc. v. Intellectual Ventures II LLCInstitution deniedPTAB · Jun 21, 2018 · IPR2018-00350 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution because Patent Owner statutorily disclaimed all challenged claims 3, 9, and 11.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Under 37 C.F.R. § 42.107(e), “[t]he 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. No inter partes review will be instituted based on disclaimed claims.” A disclaimer under 35 U.S.C. § 253(a) shall be recorded in the Office, and is “considered as part of the original patent.” See 35 U.S.C. § 253(a).” slip op. at 4
Discretionary denialPatents in suitUS 7,067,944 - Carefusion Corporation v. Baxter International Inc.Rehearing deniedPTAB · Jun 13, 2018 · IPR2016-01463 · APJ Timothy J Goodson · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–3, 6, 7, and 16 unpatentable as obvious over Bollish.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[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 in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Expert testimonyPetitioner expert discountedDecided for petitioner
“highlighted in Patent Owner’s Request. We weighed the cross-examination testimony from Dr. Bollish with the other evidence and ultimately found that the Bollish reference teaches the limitations in question, notwithstanding Dr. Bollish’s testimony. See Dec. 21–23, 25–26. When parties present competing interpretations of a reference, it is the Board’s function to weigh those arguments and make a finding as to which is more plausible. Idemitsu Kosan Co., Ltd. v. SFC Co. Ltd., 870 F.3d 1376, 1381 (Fed. Cir. 2017).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“[W]e generally accept Petitioner’s arguments regarding the proper construction of this phrase and conclude that the broadest reasonable interpretation of “programming the infusion pump with a medication algorithm” encompasses a clinician entering parameters into the pump for an infusion protocol to govern administration of medication to the patient. Id. at 16.” slip op. at 5
Claim constructionPatents in suitUS 6,231,560 - Smith & Nephew, Inc. v. Conformis, Inc.All claims unpatentablePTAB · Jun 12, 2018 · IPR2017-00373 · APJ Beverly M Bunting · IPR · Final written decision
Claims 29 and 30 are unpatentable as obvious over CAOS, Radermacher, and Woolson, and over Swaelens and Woolson; obviousness over Swaelens alone was not shown.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedOther
“In our Decision on Institution, we agreed with Patent Owner that a person of ordinary skill in the art would have an understanding of, or experience working with, imaging technology, e.g., in preparation for performing surgery. Dec. 7. We also noted that the applied prior art, e.g., Radermacher, reflects the appropriate level of skill at the time of the claimed invention. Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Patent Owner again argued in its Patent Owner Response that Petitioner’s position is incomplete because it does not include “experience with and an understanding of imaging technologies” or access to a person having such experience or understanding. PO Resp. 16–17. In his Reply Declaration, Dr. Mabrey agrees that “a POSITA ‘would have an understanding of, or experience working with, imaging technology, e.g., in preparation for performing surgery.”’ Ex. 1202 ¶ 15. Based on the entire record, we find that the person of ordinary skill in the art would be “an orthopedic surgeon having at least three years of experience in knee arthroplasty surgery” or “an engineer having a bachelor’s degree in biomedical engineering (or closely related discipline) who works with surgeons in designing cutting guides and who has at least three years of experience learning from these doctors about the use of such devices in joint replacement surgeries.” Additionally, this person would have experience with, or an understanding of, surgical imaging technologies, or would have access to such a person. Patent Owner challenges whether Dr. Mabrey has this additional qualification. PO Resp. 17–19. Our review of Dr. Mabrey’s experience, however, reveals that it aligns with our assessment of the appropriate skill level. See Ex. 1002 ¶¶ 4–9, 16–19, 43–57 (discussing personal and industry use of imaging); Ex. 1202 ¶¶ 17, 18, 19, 20 (“I have been formally trained on various forms of medical imaging, including x-ray, CT, MRI, and fluoroscopy in connection with both my orthopedic surgery residency and my decades-long practice as an orthopedic surgeon at four major academic medical centers.”). Thus, we find that Dr. Mabrey qualifies as one of skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the entire record, our determination regarding the obviousness of the challenged claims does not turn on the interpretation of any of the claim terms. Thus, based on the final trial record before us, we determine that express construction of these terms or limitations is not necessary. See 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 discountedDecided for patent owner
“combine MRI and X-ray image data only if the two images could be co-registered, we agree with Petitioner that “[t]he claims simply require deriving the patient-specific surface from MRI and orienting a guide ‘based on information derived from’ the second image data set (e.g., x-ray).” Reply 15. Moreover, we credit the testimony of Dr. Mabrey that “it would have been obvious to a POSITA . . . to identify the mechanical axis on a standing x-ray, calculate the angle between the transcondylar axis and the mechanical axis, and manually transfer the mechanical axis to the [first] image,” e.g., an MRI or CT image, for use in creating a tool. Id. (citing Ex. 1202 ¶¶ 7–9, 40; Ex. 1211 ¶ 21; Ex. 1210, 37:11–41:19). More specifically, Dr. Mabrey states:” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“with ordinary skill in the art would have combined the teachings of CAOS, Radermacher, and Woolson, namely, that the POSITA would modify CAOS’s patient specific instrument using Radermacher’s teaching regarding the use of MRI imaging to make a patient-specific surface, and Woolson’s disclosure concerning the use of image data (e.g., x-ray or CT) to preoperatively identify the mechanical axis and plan the cuts to align the knee replacement implant with the patient’s mechanical axis, with a predictable result. See KSR, 550 U.S. at 418 (citing Kahn, 441 F.3d at 988 (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). As the Federal Circuit has made clear, when a reason to combine or modify references is in dispute, we must make a finding of a motivation to combine and must have an adequate evidentiary basis for that finding. See In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016). “‘[C]onclusory statements’ alone are insufficient and, instead, the finding must be supported by a ‘reasoned explanation.’” Id. at 1383 (quoting In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)); accord id. at 1384 (not permitting the Board to effectively adopt the petitioner’s argument, which “amount[ed] to nothing more than conclusory statements that a PHOSITA would have been motivated to combine the prior art references to obtain additional information.”). Moreover, the Board “cannot rely solely on common knowledge or common sense to support [its] findings.” Id. at 1383.” slip op. at 20
Patent outcomesUS 8,551,169 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,551,169
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.