- Stryker Corporation v. Karl Storz Endoscopy-America, Inc.Institution deniedPTAB · Aug 3, 2015 · IPR2015-00675 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–6, 8, and 9 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“requesting an inter partes review of claims 1–6, 8, and 9 of U.S. Patent No. 7,821,530 B2 (Ex. 1101, “the ’530 patent”). Karl Storz Endoscopy- America, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, and for the reasons explained below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the challenged claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, a preamble limits the invention if it recites essential structure or steps, or if it is “‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble, however, is not limiting where the claim body defines a structurally complete invention and the preamble only states a purpose or intended use for the invention. Id. The body of claim 1 recites a system that includes a camera head, a cable, and camera control unit. The recited camera head includes an imager, a digital driver, a processor, and a memory device. The recited system corresponds at least to the embodiment shown in Figure 1 of the ’530 patent, which illustrates a “camera head, universal cable and camera control unit.” Ex. 1101, 4:53–55. Figure 1 shows that the camera head includes an imager, a driver, a processor, and a memory. See id., Fig. 1. Thus, the body of claim 1 recites a structurally complete invention.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Petitioner also contends that the recited camera head “is not limited to an endoscopic video camera” because “that would be a much narrower construction limiting the claim to a specific type of camera head.” Id. As Patent Owner points out, however, the Specification defines “camera head” as an endoscopic video camera. Prelim. Resp. 9 (citing Ex. 1101, 1:26–27). Accordingly, we are unpersuaded by Petitioner’s contention.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“It is not sufficient, however, for Petitioner to demonstrate that each of the components is known. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner must also provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In that regard, Petitioner does not provide any rationale for combining Eto and Okada to obtain the recited camera head (i.e., an endoscopic video camera). Petitioner’s citation to Okada as teaching this feature appears in a claim chart without further explanation. See Pet. 20–21; see also id. at 9 (“Second, Eto discloses a ‘camera head.’”). Accordingly, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. See Kahn, 441 F.3d at 988. In view of the foregoing, we determine that Petitioner has not established a reasonable likelihood of prevailing in showing that independent claim 1 would have been obvious over Eto and Okada. Claims 2–6 depend from claim 1. We therefore also determine that Petitioner has not established a reasonable likelihood of prevailing in showing that these depending claims would have been obvious over Eto and Okada.” slip op. at 10
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,821,530 - Stryker Corporation v. Karl Storz Endoscopy-America, Inc.Institution deniedPTAB · Aug 3, 2015 · IPR2015-00673 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“demonstrated a reasonable likelihood that it would prevail on any of the challenges to patentability of the ’310 patent set forth in the Petition. IV. ORDER For the reasons given, it is ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, a preamble limits the invention if it recites essential structure or steps, or if it is “‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble, however, is not limiting where the claim body defines a structurally complete invention and the preamble only states a purpose or intended use for the invention. Id. Each of the bodies of independent claims 1, 9, 15, and 21 recites a system that includes a camera control unit, a cable, and a camera head. Each recited camera head includes some combination of the following components: an imager, a timing generator, a converter, a serializer, a digital serial driver, a processor, and a memory device. The recited systems correspond at least to the embodiment shown in Figure 1 of the ’310 patent, which illustrates a “camera head, universal cable and camera control unit.” Ex. 1101, 4:45–47. Figure 1 shows that the camera head includes an imager, a converter, a timing generator, a multiplexer, a processor, a memory, a serializer, and a driver. See id., Fig. 1. Thus, each of the bodies of claims 1, 9, 15, and 21 recites a structurally complete invention.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“never argued that [the Examiner’s] . . . rejections were improper because the [applied] references lacked disclosure of an endoscopic video camera.” Id. We also are unpersuaded by Petitioner’s contention in this regard. As discussed above, we construe claims in light of the specification. See Cuozzo, 2015 WL 4097949, at *7–8. As Patent Owner points out, the Specification defines “camera head” as an endoscopic video camera. Prelim. Resp. 9 (citing Ex. 1101, 1:18–19). We note Patent Owner’s contention that an endoscopic video camera is “a video camera that includes or is adapted to be connected to an endoscope.” Id. at 9 (emphasis omitted). On this record, we agree with Patent Owner. See Ex. 1101, 1:15–17 (“[c]oupling of video imaging cameras (incorporating solid-state imagers) to endoscopes”), 11:1 (“a camera head, connected to said cable and an endoscope”). Based on the record before us, we determine that, under a broadest reasonable construction in light of the Specification, the recited term “camera head” means an endoscopic video camera, which is a video camera that includes or is adapted to be connected to an endoscope. slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“It is not sufficient, however, for Petitioner to demonstrate that each of the components is known. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner must also provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In that regard, Petitioner does not provide any rationale for combining Eto and Okada to obtain the recited camera head (i.e., an endoscopic video camera). Petitioner’s citation to Okada as teaching this feature appears in a claim chart without further explanation. See Pet. 25; see also id. at 11–12 (“Fourth, Eto discloses a ‘camera head, connected to said cable, for providing the stream of digital video data,’ as recited by claims 1, 9, and 15”). Accordingly, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. See Kahn, 441 F.3d at 988. In view of the foregoing, we determine that Petitioner has not” slip op. at 10
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,471,310 - LG Electronics, Inc. v. Delaware Display Group LLCInstitution deniedPTAB · Jul 13, 2015 · IPR2015-00492 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on all challenges to claims 1–25 because the identical challenges had already failed to show a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the Petition as to all challenges. ʼ1359 IPR, Paper 12 (“Institution Decision”). We determined that applying the standard set forth in 35 U.S.C. § 314(a), the petitioner in that proceeding, LG Display Co, Ltd., had failed to demonstrate a reasonable likelihood that it would prevail with respect to at least one challenged claim of the ʼ196 patent. Id. at 16.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Because the petition in IPR2014-01359 was denied and inter partes review was not instituted, and because the Petition in this proceeding is being denied, Petitioner’s Joinder Motion is dismissed as moot. 35 U.S.C. § 315(c) (permitting joinder if Director institutes inter partes review).” slip op. at 4
NonePatents in suitUS 7,914,196 - Toshiba Samsung Storage Technology Korea Corporation v. LG Electronics, IncorporatedSome claims unpatentablePTAB · Apr 1, 2015 · IPR2014-00205 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1, 3–5, 7–10, 13, 17, and 18 are unpatentable; claims 2, 6, 14, 15, and 19–22 were not shown unpatentable.
RulingsFinal written decision- BurdenMixed
“We agree with Patent Owner that Kulakowski does not disclose determining whether the target area has been initialized. See PO Resp. 50– 51. As discussed above, Kulakowski discloses erasing the target area whenever an update write operation is received. See Ex. 13:10–13. Petitioner does not point us to disclosure in Kulakowski or other evidence that describes consulting the VTOC whenever an update write command is received. See Tr. 40:18 (“It’s not explicitly stated [in Kulakowski], no.”), 40:21–22 (“I don’t believe our expert testimony went into this detail on the VTOC.”). Rather, Petitioner merely asserts, “That’s just well known in the art.” Tr. 38:17–24; accord Tr. 39:23–40:23. As Petitioner does not provide any evidence supporting its position, we are not persuaded that Kulakowski discloses “determining whether the recording area has been initialized,” as recited in claim 19. For the foregoing reasons, we conclude that Petitioner has not demonstrated by a preponderance of the evidence that Kulakowski anticipates claim 19.” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“reasonable interpretation in light of the specification. See 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 448667, at *5–8 (Fed. Cir. Feb. 4, 2015). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). On the other hand, a “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer” and clearly set forth a definition of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“We disagree with Petitioner. “If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is ‘inherent’ in its disclosure.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.’” Id. (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). Petitioner acknowledges that there is no evidence in the record regarding whether keeping the table on a full-track basis is always (or necessarily) convenient. See Tr. 30:13–15. In fact, Petitioner asserts, “It can be a convenient basis.” Tr. 30:16–17 (emphasis added). Accordingly, based on the record before us, we are not persuaded that the “other basis” in Seamons necessarily corresponds to a “predetermined physical unit” that “is one rotation unit region,” as recited in claims 2, 6, and 14. For the foregoing reasons, we conclude that Petitioner has not demonstrated by a preponderance of the evidence that Seamons anticipates claims 2, 6, and 14.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“We disagree with Petitioner. “If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is ‘inherent’ in its disclosure.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.’” Id. (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). Petitioner acknowledges that there is no evidence in the record regarding whether keeping the table on a full-track basis is always (or necessarily) convenient. See Tr. 30:13–15. In fact, Petitioner asserts, “It can be a convenient basis.” Tr. 30:16–17 (emphasis added). Accordingly, based on the record before us, we are not persuaded that the “other basis” in Seamons necessarily corresponds to a “predetermined physical unit” that “is one rotation unit region,” as recited in claims 2, 6, and 14.” slip op. at 17
Patent outcomesUS 6,101,162 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,101,162
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.