• Walt Disney Parks And Resorts U.S., Inc. v. Agile Journeys LLCSome claims unpatentable
  PTAB · Apr 14, 2025 · IPR2024-00029 · APJ Amee A Shah · IPR · Final written decision

  Claims 1, 3–5, 7, 9, 10, 12–14, 16–21, 24, and 25 are unpatentable; the challenges to claims 11, 22, and 23 were not proven by a preponderance of the evidence.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. LEVEL OF ORDINARY SKILL IN THE ART In determining the level of ordinary skill in the art, various non- exhaustive factors may be considered, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, F.2d 693, 696 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA,” “PHOSITA,” or “skilled artisan”) “would have the equivalent of an undergraduate degree in computer science, engineering, operations research, or similar discipline, along with one year of experience in computer programming” and that “[t]he more education one has, the less experience needed to attain an ordinary level of skill[, and] . . ., more experience in the field may serve as a substitute for formal education.” Pet. 9 (citing Ex. 1003 ¶ 32). Patent Owner does not remark on Petitioner’s definition of a POSITA nor does it provide a definition. See generally PO Resp. For purposes of this Decision, we find that the ’983 patent and the” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “3. Conclusion of Ground 1 Having considered the parties’ arguments and evidence, we find,” slip op. at 70

  • BurdenMixed

    “Decision under 35 U.S.C. § 318(a) as to the patentability of the Challenged Claims of the ’983 patent. For the reasons discussed below, we determine that Petitioner has established by a preponderance of the evidence that Challenged Claims 1, 3–5, 7, 8–10, 12–14, 16–19, 20, 21, 24, and 25, but has not established by a preponderance of the evidence that Challenged Claims 11, 22, and 23 unpatentable.” slip op. at 2

  Patent outcomesUS 7,212,983 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,212,983
• Weber, Inc. v. Provisur Technologies, Inc.Some claims unpatentable
  PTAB · Oct 21, 2024 · IPR2020-01557 · APJ Jon M Jurgovan · IPR · Remand

  On remand, claims 1–4 and 8–11 were held obvious; claims 5–7 were not shown unpatentable because the asserted combinations did not establish claim 5’s drive-roller limitation.

  RulingsRemand decision

  • RemandFwd mixedMixed

    “Specifically, the Federal Circuit “reverse[d] the Board’s finding that Weber’s operating manuals do not qualify as printed publications.” Weber, 1 Patent Owner also submitted redacted versions of its Preliminary Response, Response, and Sur-Reply. Papers 8, 24, 48. The redactions relate to information subject to our Protective Orders. Papers 13, 57. 92 F.4th at 1069. The Federal Circuit further held that the prior art disclosed the “disposed over” limitation of claim 1 as properly construed, as well as the “stop gate” limitation of claim 1. Weber, 92 F.4th at 1069–1072. In addition, the Federal Circuit indicated it had considered Petitioner’s remaining arguments and found them unpersuasive. Weber, 92 F.4th at 1072. Accordingly, the Federal Circuit vacated our determinations that Petitioner failed to establish unpatentability of claims 1–11 of the ’812 patent, and remanded the case to the Board for further proceedings consistent with its opinion. Weber, 92 F.4th at 1072.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art would have had “(1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on food processing and/or packaging systems (or in a similar field)” or “(2) at least seven years of experience working on food processing and/or packaging systems (or in a similar field).” Pet. 20 (citing Ex. 1003 ¶¶ 26–27). Patent Owner does not contest Petitioner’s definition or provide its own proposal. For purposes of this Decision, we adopt Petitioner’s proposal because Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “disposed over the food article loading apparatus.” The Federal Circuit reversed the construction set forth in the prior FWD and held that the “disposed over” limitation “requires only that the feed apparatus be generally positioned above the loading apparatus.” Weber, 92 F.4th at 1070. We follow the Federal Circuit’s construction of “disposed over” in this decision. We need not provide an express construction for any other claim terms to resolve the dispute before us. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy). We note, though, that in reaching our conclusion, we apply the ordinary and customary meaning to all claim terms. 37 C.F.R. § 42.100(b) (2019).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “We agree with Petitioner that the preamble of claim 1 is disclosed by each of the slicing machines disclosed in 2006 904 Operating Manual, Lindee, and Sandberg. Thus, we need not and do not decide whether the preamble is limiting.” slip op. at 19

  Patent outcomesUS 10,639,812 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,639,812
• Weber, Inc. v. Provisur Technologies, Inc.Some claims unpatentable
  PTAB · Oct 3, 2024 · IPR2020-01557 · APJ Jon M Jurgovan · IPR · Remand

  Claims 1–4 and 8–11 are unpatentable as obvious; claims 5–7 were not shown unpatentable because the asserted combinations did not establish claim 5’s recessed-diameter limitation.

  RulingsRemand decision

  • RemandOther

    “Specifically, the Federal Circuit “reverse[d] the Board’s finding that Weber’s operating manuals do not qualify as printed publications.” Weber, 1 Patent Owner also submitted redacted versions of its Preliminary Response, Response, and Sur-Reply. Papers 8, 24, 48. The redactions relate to information subject to our Protective Orders. Papers 13, 57. 92 F.4th at 1069. The Federal Circuit further held that the prior art disclosed the “disposed over” limitation of claim 1 as properly construed, as well as the “stop gate” limitation of claim 1. Weber, 92 F.4th at 1069–1072. In addition, the Federal Circuit indicated it had considered Petitioner’s remaining arguments and found them unpersuasive. Weber, 92 F.4th at 1072. Accordingly, the Federal Circuit vacated our determinations that Petitioner failed to establish unpatentability of claims 1–11 of the ’812 patent, and remanded the case to the Board for further proceedings consistent with its opinion. Weber, 92 F.4th at 1072.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art would have had “(1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on food processing and/or packaging systems (or in a similar field)” or “(2) at least seven years of experience working on food processing and/or packaging systems (or in a similar field).” Pet. 20 (citing Ex. 1003 ¶¶ 26–27). Patent Owner does not contest Petitioner’s definition or provide its own proposal. For purposes of this Decision, we adopt Petitioner’s proposal because Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “disposed over the food article loading apparatus.” The Federal Circuit reversed the construction set forth in the prior FWD and held that the “disposed over” limitation “requires only that the feed apparatus be generally positioned above the loading apparatus.” Weber, 92 F.4th at 1070. We follow the Federal Circuit’s construction of “disposed over” in this decision. We need not provide an express construction for any other claim terms to resolve the dispute before us. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy). We note, though, that in reaching our conclusion, we apply the ordinary and customary meaning to all claim terms. 37 C.F.R. § 42.100(b) (2019).” slip op. at 10

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

    “the structure and function of the 2006 904 Operating Manual’s product holder and Lindee’s grippers are similar in that they serve to grip food product and guide it to the slicing station. See, e.g., Ex. 1005, 23; Ex. 1006, 18:20–35, Fig. 7A. The two devices differ in their actuation—the 2006 904 Operating Manual uses a ball screw spindle actuator to drive the product holder along the feed path, whereas Lindee uses a timing belt 334 to drive its grippers 151 along the feed path. Ex. 1005, 273–274; Ex. 1006, 18:33–34, Fig. 7A. However, Petitioner presented evidence that “unlike ball screws, belt drives do not require periodic lubrication with grease or exhibit backlash when they change direction.” Ex. 1003 ¶ 160. In addition, Petitioner demonstrates that a POSA at the time would have understood that conveyor belts like Lindee’s can be easily cleaned. Ex. 1051 ¶¶ 50–54. Petitioner further asserted that conveyor belts are easy to maintain at low cost. Id. citing ¶¶ 55–58. We agree with Petitioner that, at least for some scenarios, including those that Petitioner specifies, a POSA would have seen that there were advantages to using Lindee’s timing belt rather than the 2006 904 Operating Manual’s ball-screw to drive food article grippers. Petitioner has demonstrated a POSA would have been motivated to combine Lindee’s belt-driven grippers in the 2006 904 Operating Manual’s food slicer notwithstanding Patent Owner’s arguments to the contrary.” slip op. at 50

  Patent outcomesUS 10,639,812 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,639,812
• Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.Some claims unpatentable
  PTAB · Aug 7, 2024 · IPR2023-00538 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 5–10, 13–18, 20–22, 24, 31, and 32 are unpatentable; claims 2–4, 23, and 25–30 were not shown unpatentable. The revised motion to amend was granted in part and denied in part.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “d. Summary For the above reasons, we determine that Patent Owner has not shown” slip op. at 100

  • ExcludeMotion to exclude, deniedOther

    “IV. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner seeks to exclude Exhibit 1034 and page 10 of the Reply” slip op. at 86

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “A. “housing” Patent Owner proposes that we construe the term “housing” to mean” slip op. at 15

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

    “suggested to one skilled in the art, objective evidence of non-obviousness (“secondary considerations”) may lead to a conclusion that the challenged claims would not have been obvious. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Objective evidence of non-obviousness “may often be the most probative and cogent evidence in the record” and “may often establish that an invention appearing to have been obvious in light of the prior art was not.” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (citation omitted). For us to give substantial weight to objective evidence of nonobviousness, a proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc., v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). Nexus is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining non-” slip op. at 21

  Patent outcomesUS 9,365,223 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,365,223
• Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.Some claims unpatentable
  PTAB · May 13, 2024 · IPR2023-00189 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–4, 7, 8, and 11–16 are unpatentable over Arrasvuori; claims 5, 6, 9, 10, and 17–20 are not unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’256 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Lynch (Ex. 1003 ¶¶ 43, 44).” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “simultaneously communicate in real-time to the first user at the first location and the second user at the second location, an interface indicating whether the challenge has been met.” Ex. 1001, 40:64–67 (emphasis added). The claim language itself suggests that “continuously generat[ing]” an interface in “real-time” allows the interface to indicate whether a challenge “has been met,” and doing so “in real-time” suggests that updates to the interface are generated as developments occur that may affect whether the challenge “has been met.” Notably, the subject claim limitation explicitly recites “continuously” generating the interface “in real-time”; it does not recite— but easily could have if intended—“periodically” generating the interface (i.e., at predetermined time intervals independent of the occurrence of developments that may affect whether the challenge has been met).3” slip op. at 29

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner

    “Petitioner contends Arrasvuori qualifies as prior art under 35 U.S.C. §§ 102(a) and 102(e) based on its filing and publication dates. Pet. 24. Patent Owner does not contest the prior art status of Arrasvuori. Also, on this record, we have no evidence of an invention date other than the earliest possible effective filing date of the challenged claims. Thus, for purposes of this Decision, we determine that Arrasvuori qualifies as prior art under 35 U.S.C. § 102(a) because Arrasvuori’s publication date of October 11, 2007, is before the earliest possible effective filing date of the challenged claims, which is March 3, 2008, and under § 102(e) because Arrasvuori’s filing date of March 29, 2006, is before the earliest possible effective filing date of the challenged claims (March 3, 2008). Ex. 1001, codes (22), (60), (63); Ex. 1005, code (22), (43).” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Arrasvuori discloses (a) “[m]onitoring” of “users performing real- world fitness tasks” (Ex. 1005 ¶ 38), using (b) “monitoring equipment . . . integrated into . . . wireless nodes and/or other computers of users, and/or [] attached to bodies of users” (id. at ¶ 39 (emphasis added)), where (c) “[u]sers might . . . wear their wireless nodes and/or other computers” (id. (emphasis added)), and where (d) “[t]he phrase[] ‘computer’ . . . refer[s] but [is] not limited to . . . a computerized watch” (id. at ¶ 90 (emphasis added); see id. at ¶ 40 (disclosing that “employed monitoring equipment might include one or more sensors”)). We find that these descriptions in Arrasvuori provide an anticipatory disclosure, particularly to the skilled artisan, of the limitation “wirelessly-connected sensor worn on an appendage of a first user.” See Ex. 1017 ¶ 45; Ex. 2006, 84:10-85:22. Although Arrasvuori does not recite in a single sentence the substance of disclosures (a) through (d) above, such as explicitly stating that its “wireless node is a computerized watch,” this is not necessary for the skilled artisan to understand that Arrasvuori discloses such a feature. See In re Bond, 910 F.2d at 832–33 (anticipation “is not an ‘ipsissimis verbis’ test”). Moreover, as argued by Petitioner, Arrasvuori’s disclosure of sensors “attached to bodies of users” and of users “wear[ing]” sensors itself discloses the subject limitation as broadly recited, even without considering the additional disclosure of a computerized watch. See Pet. Reply 17 (“Arrasvuori teaches wrist-worn sensors by stating that its users can ‘wear their wireless nodes and/or other computers.’” (citing Ex. 1005 ¶39)).” slip op. at 21

  Patent outcomesUS 9,278,256 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,278,256
• Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. SWM International, LLCSome claims unpatentable
  PTAB · Feb 5, 2024 · IPR2022-01372 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 3, 7, 24–26, 29, 30, and 34–36 are unpatentable as anticipated by Yonghong and Hardesty; claims 4 and 16 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science in mechanical or electrical engineering and 2–5 years of experience designing perforating gun systems.” Pet. 25. According to Petitioner, “[t]he individual should be familiar with prior art methods of using gravity to orient the shaped charges in a rotatable charge tube.” Id. Petitioner further contends that “[p]ersons with different degrees may also have ordinary skill in the art, and increased education or experience could compensate for shortcomings in other areas.” Id. (citing Ex. 1003 ¶ 51). Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 7–8. We apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the Specification of the ’762 Patent and the asserted prior art.” slip op. at 8

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

    “In the Institution Decision, we agreed with Patent Owner’s proposed construction for the term “collar.” Inst. Dec. 10. Because Patent Owner’s proposed construction is undisputed and supported by the ’762 Patent’s description of “outer collar 24” as having “annular side wall 62” (Ex. 1001, 7:59–63, Fig. 3), we construe a “collar” as “an annular or ring-shaped structure.”” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We are persuaded by Petitioner’s contention that Yonghong discloses a “collar,” as recited in the claims. Petitioner identifies Yonghong’s bushing 4 as the recited “collar.” Pet. 30–31. As discussed below, the evidence shows that bushing 4 is annular or ring-shaped, as set forth in our claim construction.” slip op. at 14

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “expert, Dr. Rodgers, who provided a 3-D CAD (three-dimensional computer aided design) model based on Yonghong’s disclosure. Ex. 1003 ¶ 38. Dr. Rodgers’ 3-D CAD model shows an annular or ring-shaped structure corresponding to Yonghong’s bushing 4. Id. At his deposition, Dr. Rodgers explained that Yonghong Figure 1 shows some parts as “half model cuts,” other parts as “a quarter cut-away,” and still other parts in “full circumference,” i.e., “[t]hey’re not cut at all.” Ex. 2008, 37:11–20. The gun carrier is shown as a half cut, and the bushing 4 is shown as a quarter-cut. Id. at 57:24–58:11, 65:3–12. Referring to bushing 4 in Yonghong Figure 1, Dr. Rodgers explained that “[a] person of ordinary skill looks at that and understands it’s a quarter-cut model, and that’s one continuous part, a ring that wraps around the bearing.” Id. at 65:13–22; see also 60:17–24 (“A bushing or a collar slides around the outside of the bearing, or another way to say it is the bearing fits within that bushing or collar to mount it in the carrier.”). According to Dr. Rodgers, there is no need for the text of Yonghong to include this description “because a person of ordinary skill looks at this v[e]ry standard drawing and understands what it is.” Id. at 60:25–61:2.” slip op. at 15

  Patent outcomesUS 11,078,762 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,078,762
• Pioneer Pet Products, LLC v. Oil-Dri Corporation Of AmericaSome claims unpatentable
  PTAB · Dec 19, 2023 · IPR2022-01138 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1, 3–8, 10–16, and 18 are unpatentable over Goss; claims 2, 9, 17, and 19 were not shown unpatentable. The revised motion to amend is denied for lack of written-description support.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “To prevail in its challenges, Petitioner must prove unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burdens of proof in an inter partes review).” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“PHOSITA”) “would have at least a bachelor of science degree in chemistry, mineralogy, geological science, material science, chemical engineering, or mining engineering with at least two to five years of work experience relating to designing specific chemical mixtures including clay or other minerals, particularly absorbents.” Pet. 34 (citing Ex. 1004 ¶ 38). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See PO Resp. 23. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner because it appears consistent with the record, including the prior art. See GPAC, 57 F.3d at 1579.” slip op. at 9

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

    “We generally agree with Petitioner that the assumptions and approximations made in the calculations described in the ’397 patent to determine the external surface area of the components of the litter render the computations only a general approximation of the respective surface areas. See Pet. Reply 9–12. We need not, however, reach the issue of whether the 47% surface area limitation requires the use of the multi-step method disclosed in the ’397 patent because Petitioner followed that methodology in its arguments and evidence in its Reply. See Pet. Reply 13. Importantly, Patent Owner agrees that Petitioner followed the approach set forth in the ’397 patent, and argues that we need not construe “external surface area” to resolve any dispute between the parties. See PO Sur-reply 23–24 (arguing that we need not “determine whether ‘total external surface area’ must be determined using the same multi-step approach” in the ’397 patent to resolve the controversy because “the only calculation of external surface area relied on by Petitioner was presented in the Reply and it followed the methodology of the [’]397 Patent”); PO Supp. Sur-reply 2 (same). Based on our review of the current record, we need not and do not formally construe any claim terms to resolve the patentability issues in this inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent some implicit claim construction disputes remain, we address those issues in the context of the challenges below.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “review of the record, we find that Petitioner fails to articulate an adequate rationale for the combination of Goss and House. The Petition contains only a single sentence addressing the issue, without any citation to record evidence or declaration support. See Pet. 46. In addition, the assertion merely states the conclusion that a “PHOSITA would understand that there is a rational underpinning to combine the teachings of Goss and House as required under patent law because both are related to cat litter having similar characteristics.” Id. This assertion, at most, addresses the fact that Goss and House are in the same field or that they are analogous art, but does not explain why a PHOSITA would have been motivated to combine Goss and House. See id. In addition, the Petition lacks sufficient explanation of how Petitioner proposes to combine Goss and House. See Pet. 46–53. Instead, when Petitioner relies on House in this challenge, it appears to be a back-up argument in the event that we find Goss fails to disclose the limitation. Merely stating that Goss and House both disclose a limitation does not explain which aspects of House Petitioner proposes adding to Goss or what the resulting litter composition would look like. See id. The details of the resulting litter based on the combination of Goss and House matter here because it could impact whether all limitations of a given claim are satisfied by the combination. For example, Petitioner relies exclusively on specific examples from Goss for the 47% surface area limitation, but adding some aspects of House’s litter components to meet other limitations could undermine Petitioner’s reliance on Goss’s specific examples. The failure of the Petition to set forth a specific combination elides these issues. See Pet. 46–51. Petitioner’s Reply arguably addresses some of these concerns by providing a more fulsome motivation section, backed by new expert testimony, and specific litter examples based on Goss and various cellulose filler materials allegedly disclosed by House. See Pet. Reply 24–25 (citing Ex. 1013 ¶ 7); see also PO Sur-reply 18–22 (arguing that Petitioner’s Reply still fails to articulate an adequate motivation to combine). This analysis goes far beyond the limited analysis in the Petition, and Petitioner provides no reason why it could not have been included in the Petition. See Pet. Reply 24–25. As noted below, in some situations petitioners should be afforded the opportunity to go beyond the arguments in a petition when addressing a new claim construction or other new argument raised by a patent owner or an” slip op. at 17

  Patent outcomesUS 11,026,397 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,026,397
• Amcol International Corp. v. Oil-Dri Corporation Of AmericaSome claims unpatentable
  PTAB · Nov 29, 2023 · IPR2022-01107 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1, 3–8, 10–16, 18, and 19 are unpatentable over Goss; claims 2, 9, and 17 were not shown unpatentable, and the revised motion to amend was denied for lack of written description.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art “would have a bachelor’s degree in chemistry or chemical engineering or an equivalent degree and sufficient work experience in animal litter process development. A bachelor’s degree is not explicitly necessary.” Pet. 4. Petitioner further contends that “[h]ands-on experience in the field of animal litter process development could substitute for possessing a degree if that individual’s experience is in contributing to and/or leading the process development effort rather than following a set of instructions given to them.” Id. at 4–5. Petitioner asserts that such a person “should have familiarity with the process of validating relevant test methods and qualifying analysts as well as familiarity with the composition and chemistry of various clays used in animal litter (including sodium bentonite)” and that such a person “would have gained this familiarity through education, training and/or experience.” Id. Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. PO Resp. 14. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner because it appears consistent with the record, including the prior art. See GPAC, 57 F.3d at 1579.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Patent Owner makes a number of arguments, but we do not find them persuasive enough to undermine Petitioner’s showing based on Ms. Borgese’s analysis. Patent Owner’s primary argument stems from its assertion that the bulk densities vary depending on a number of variables and that Ms. Borgese bases her ranges on documents, the technical data sheets for FS-40 and the ’397 patent for BL(2), that have bulk densities that are not the “same” as the bulk densities for FS-40 and BL(2) in Goss due to the passage of time, differences in where the clay was mined, how the clay was processed, and how the bulk density was measured. See PO Resp. 18– 19, 21–33; PO Sur-reply 2, 5–9. We do not view Petitioner’s challenge as based on the premise that the FS-40 clay referenced in the technical data sheets and Blue Mountain clay in the ’397 patent are the exact same as the FS-40 and BL(2) clays in Goss, but instead the clays and their bulk densities are similar enough that they will fall within the bulk density ranges Petitioner uses in its calculations. See Pet. 21–23, 68; Pet. Reply 6–7, 10. As a result, Patent Owner’s repeated assertions that the clays or their properties are not the “same” or processed “exactly the same” fail to engage 5 Patent Owner suggests that Petitioner fails to meet the inherency standard because Ms. Borgese uses the term “potential” when describing the bulk density range of BL(2). See PO Resp. 32 (citing Ex. 1003 ¶ 117). We do not read Ms. Borgese’s opinion in the same manner. Instead, we read the reference to “the potential bulk density range of BL(2), 35–47 lbs/ft3” as referring to any bulk density within that range, not that there is only the mere potential that the bulk density may fall within that range. See Ex. 1003 ¶ 117. Petitioner’s argument that the bulk densities were at least similar, such that that they fall within the ranges Petitioner uses. See, e.g., PO Resp. 4, 21–24, 30–31; Ex. 2009 ¶¶ 97–98 (Dr. Johnston limiting opinion to whether the clays are the “same”). As an example, when asked about the potential differences in bulk density between Goss’s filing date in 1997 and the 1999 technical data sheet, Ms. Borgese states that “[b]entonite clays have not changed significantly in a period of two years.” Ex. 2008, 24:7–15; see also Ex. 1003 ¶¶ 202–203 (opining that “modest difference in particle-size distribution between FS-40 disclosed in Goss [and] . . . the FS-40 Information Sheet ’99 only minimally impacts the bulk density”). Given Ms. Borgese’s personal experience making animal litters and using bentonites, we view her testimony as credible absent some evidence that any differences in bulk density would fall outside the ranges she uses. Patent Owner provides no such evidence. Nearly all of Patent Owner’s evidence goes to whether the clays and bulk densities would be the exactly the “same” in Goss as in the sources that Ms. Borgese relies on, and do not address how similar the bulk densities would be and do not attempt to establish that there are bulk densities for Goss’s FS- 40 and BL(2) clays that would fall outside the ranges Ms. Borgese uses. In the rare instances where Patent Owner does argue that the bulk densities would not be similar, or would not fall within Dr. Borgese’s ranges, Patent Owner fails to cite any evidence to support the assertion. See PO Resp. 23, 32–33. Even if we found Dr. Johnston’s testimony generally credible on the point that bulk densities may differ across time even when mined and” slip op. at 28

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “persuasiveness of Petitioner’s arguments and evidence. Petitioner relies heavily on Ms. Borgese’s testimony, a chemical engineer with “firsthand experience in animal litter Process Development and Product Development creating animal litter from raw materials.” Ex. 1003 ¶¶ 3–4. Ms. Borgese has experience working with bentonite and fillers, and has validated test methods related to “particle size distribution, bulk density, moisture, [and] clump strength.” Id. ¶ 4. She also “used a variety of processing methods to produce animal litter” and is a named inventor on three animal litter patents. Id. Patent Owner does not dispute Ms. Borgese’s qualifications, does not 4 As to the whether Goss inherently discloses the 47% surface area limitation, Patent Owner does not dispute that Goss inherently discloses the limitation if Petitioner’s bulk density ranges are correct. See PO Resp. 15– 33. argue that she lacks firsthand experience that would enable her to testify as to the properties of the bentonite clays and litters at issue in this case, or otherwise dispute that she meets the parties’ agreed-upon definition of a person of ordinary skill in the art. Pet. 4–5; PO Resp. 14. That definition presumes “experience in animal litter process development” and “familiarity with the composition and chemistry of various clays used in animal litter (including sodium bentonite).” Pet. 4–5. We find Ms. Borgese’s education and first-hand experience in animal litter process development, including experience with bentonite, sufficient to testify credibly as to the known bulk densities of the bentonite clays at issue in the case. As to Goss’s FS-40 sodium bentonite clay made by Wyo-Ben, Ms. Borgese opines that the range of bulk density for the material in Goss is between 58–64 lb/ft3 based on Wyo-Ben’s own technical data sheets from 1999 and 2002, which “describe the same (or similar) FS-40 (‘sodium bentonite’) composition.” Ex. 1003 ¶¶ 82–83, 106, 117; Pet. 21–22, 35. Then, in an effort “to be conservative in [her] analysis,” Ms. Borgese uses a broader range of 55–65 lb/ft3 for Goss’s FS-40 in her calculations. Ex. 1003 ¶ 117. Even when pushing her assumptions in directions that would result in the lowest possible external surface area percent for sodium bentonite, all of the calculations across the full range of potential bulk densities still meet the 47% surface area limitation. Id. ¶¶ 117–122; Pet. 43–46. Based on our review of the arguments and evidence, we find Ms. Borgese’s testimony as to the range of Goss’s FS-40 bulk density credible and persuasive.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “Borgese relies on (Exhibits 1018 and 1024), but the effort lacks procedural and substantive merit. Patent Owner’s argument in its Patent Owner Response describes the documents as “[i]nadmissible” without seeking any specific relief, but Patent Owner’s Sur-reply makes clear that Patent Owner seeks exclusion. See PO Resp. 20; PO Sur-reply 13. While Patent Owner seeks to exclude these documents, it fails to follow our rules applicable to such efforts. Our rules require objections to evidence to be filed within specific timeframes, and a “motion to exclude evidence must be filed to preserve any objection.” 37 C.F.R. § 42.64(c). In addition, the “motion must identify the objections in the record in order and must explain the objections.” Id. Patent Owner failed to file a separate “motion” or even refer to its hearsay arguments as a “motion” despite the fact that it seeks to exclude evidence. PO Resp. 20. Nor did Patent Owner “identify the objections in the record” in support of its “motion.” Id. In addition, Patent Owner fails to cite any authority that permits what amounts to a motion to exclude within the confines of the merits briefing, which forced Petitioner to devote space in its merits brief to opposing the motion to exclude. See id.; Pet. Reply 19–23. Under these circumstances, we deny the motion as procedurally improper. In addition, even if we reached the merits, we would not exclude the documents or Ms. Borgese’s opinions based on them given that she reasonably relied on the technical data sheets as reliable sources of bulk density data provided by Wyo-Ben, the manufacturer of the clays in question. See Pet. Reply 22–23; Ex. 1003 ¶¶ 82–83.” slip op. at 32

  Patent outcomesUS 11,026,397 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,026,397
• Abbott Diabetes Care Inc. v. Dexcom, Inc.Some claims unpatentable
  PTAB · Nov 2, 2023 · IPR2022-00914 · APJ James A Tartal · IPR · Final written decision

  Claims 105 and 106 are unpatentable as obvious over Heller and Mastrototaro; Abbott did not prove claims 49, 80, 81, 85, or 86 unpatentable on the asserted grounds.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “on the general knowledge of a person of ordinary skill in the art to disclose the predictive relationship limitation of claim 49 not taught by Heller are legally deficient. Resp. 28–38. We agree in that Petitioner’s contentions in the Petition amount to no more than a conclusory assertion that a person of ordinary skill in the art “would have known” the predictive relationship limitation. See Pet. 38–39. Petitioner’s arguments in the Petition are divorced from any analysis of Heller and fail to articulate why a person of ordinary skill in the art would have understood Heller to teach the predictive relationship in light of what was purportedly known more generally in the art. Merely asserting that a particular limitation was “known in the art” does not constitute a legally sufficient basis for establishing obviousness. See, e.g., Deere, 383 U.S. at 17–18. While Petitioner purports to identify multiple references that teach a predictive relationship, Petitioner circumvents a legally sufficient obviousness analysis by choosing not to assert any of the references in combination with Heller, but to instead argue they all collectively show that “predictive relationships” were broadly known in the art. See Pet. 28–33. Rather than establish some broad understanding by persons of ordinary skill in the art concerning the predictive relationship limitation, Petitioner’s arguments make clear that each reference uniquely addressed the relationship between a particular sensor and the in vivo performance of the sensor. For example, Petitioner asserts Gross teaches a sensor for which “the pre-insertion, factory-determined in vitro performance curve and” slip op. at 32

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “level in Gross is a “measure of sensor current, not ‘analyte concentration’ is contrary to the express disclosure of Gross. Gross expressly discloses a calibration method that requires, after insertion the in vivo measurement of a saturation level G1 “which can be measured by the sensor and which is of importance for the calibration method.” Ex. 1004, 13:3–18 (further stating that a “voltage V1 (FIG. 4C) applied at time t1 gives a current I1, (FIG. 4B) which corresponds to the saturation level G1 (FIG. 4A) of the enzyme”). Gross explains that “the predetermined stimulus is adapted to saturate the sensor such that the first signal is a maximum signal,” and “[w]hen a sensor is such that it can be saturated by a sufficiently large stimulus, it can be preferable to use this phenomenon in calibrating the sensor as it enables a reproducible first predetermined stimulus, i.e. a saturation stimulus to be provided in all cases, thereby removing uncertainty as to whether the means for providing a predetermined stimulus will in fact achieve exactly the right level of uncertainty.” Id. at 3:17–26.” slip op. at 45

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “of ordinary skill in the art; and (4) when in evidence, objective evidence of nonobviousness. 5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. However, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Pers. Web Tech., LLC, v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”) (quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)) (alteration in original).” slip op. at 15

  • ExcludeMotion to exclude, deniedDenied

    “In light of the foregoing multiple critical misrepresentations, Petitioner’s MTE is denied regarding sufficiency of Dr. Baura’s qualifications because Petitioner did not timely object to the evidence on the basis asserted in the MTE, fails to refute Patent Owner’s showing that Dr. Baura is sufficiently qualified (see MTE Opp. 3–7; Ex. 2010 ¶ 30), and abandons its argument in its Reply to the MTE.” slip op. at 57

  Patent outcomesUS 11,000,213 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,000,213
• Abbott Diabetes Care Inc. v. Dexcom, Inc.Some claims unpatentable
  PTAB · Nov 2, 2023 · IPR2022-00913 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 20, and 21 are unpatentable as anticipated by Heller; the evidence does not establish claims 4–6, 8, or 23–26 unpatentable on the asserted grounds.

  RulingsFinal written decision

  • Expert testimonyMotion to exclude, deniedDenied

    “In opposition, Patent Owner first argues, and we agree, that Petitioner failed to timely object to Dr. Laura’s declaration with sufficient particularity. MTE Opp. 1–3 (citing 37 C.F.R. § 42.64(b)(1)). Our Rule requires that an “objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence.” 37 C.F.R. § 42.64(b)(1)). Petitioner’s objection to Dr. Baura’s testimony identifies hundreds of paragraphs from her declaration followed by an objection stating her “testimony is based on insufficient facts or data, is not the product of reliable principles and methods, and does not reliably apply the appropriate principles and methods to the fact of the case.” Paper 25, 2. Petitioner’s boilerplate objection is woefully insufficient to show that Petitioner objected with sufficiently particularity to allow correction in the form of supplemental information, as our Rule requires. We further agree with Patent Owner that Petitioner’s arguments in the MTE are no more than a “transparent attempt to . . . circumvent the word-count limits of its merits briefing by injecting merits arguments in its evidentiary motion.” MTE Opp. 9. In short, Petitioner’s arguments go to the weight to be afforded Dr. Baura’s testimony, not to its admissibility, and are, therefore, an improper basis for seeking the exclusion of hundreds of paragraphs Dr. Baura’s declaration. Accordingly, Petitioner’s MTE is denied.” slip op. at 63

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. Resp. 9. Dr. Baura, in support of Patent Owner, states that she applied Petitioner’s “definition of the level of ordinary skill in the art, because,” in her opinion, Petitioner’s “and Dr. Smith’s conclusions are incorrect even under this definition.” Ex. 2010 ¶ 29. Thus, Dr. Baura neither adopts as proper nor refutes Petitioner’s proposed level of ordinary skill. We find that the ’213 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and the ’213 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 17

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

    “In view of the issues we address below, including how the claimed subject matter is alleged to have been taught or disclosed in the prior art, we determine that it is not otherwise necessary to address the express interpretation of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 20

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner that Petitioner’s anticipation argument is insufficiently supported by Heller or the other evidence Petitioner relies upon. Petitioner directs us to no evidence in Heller expressly addressing a predictive relationship between in vitro and in vivo sensitivity, much less any disclosure in Heller of a particular relationship. Instead, Petitioner seeks to stretch a thin disclosure in Heller that “calibration data may simply be factory-determined calibration measurements” to necessarily mean “prior sensitivity information is derived at least in part from a predictive relationship between an in vitro sensor sensitivity to glucose and an in vivo sensor sensitivity to glucose,” as required by claim 23. Pet. 36; Ex. 1005, 77:14–15. Notably, Dr. Smith does not identify any “predictive relationship” disclosed by Heller. Ex. 1002 ¶¶ 148–149. We give little weight to Dr. Smith’s conclusory assertion that a person of ordinary skill in the art would have simply “recognized” Heller’s “factory determined calibration measurements” were necessarily “derived at least in part from a predictive relationship between an in vitro and an in vivo sensor sensitivity to glucose,” particularly where Heller does not expressly preclude in vitro measurements from its “factory determined calibration measurements.” See id. Further, in reply, Petitioner argues again that “(1) Heller discloses that calibration data can ‘simply be factory determined calibration measurements’ . . . and (2) a [person of ordinary skill in the art] would have recognized that this ‘discloses that factory (in vitro) determined sensitivity adequately predicts in vivo sensitivity.’” Reply 6. From Heller’s disclosure preponderance of the evidence that Heller expressly teaches any predictive relationship, even one in which in vitro and in vivo sensitivity are the same. that calibration data can “simply be factory determined calibration measurements,” Petitioner provides no more than speculation to suggest that there necessarily must be some relationship between in vitro measurements and in vivo measurements. See Reply 6–8. Because Petitioner has not shown by a preponderance of the evidence that Heller discloses all of the limitations of clam 23, we determine Petitioner has not shown that Heller anticipates claim 23.” slip op. at 31

  Patent outcomesUS 11,000,213 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,000,213

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.