• Avx Corporation v. Greatbatch LtdAll claims unpatentable
  PTAB · Dec 30, 2015 · IPR2014-01361 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–43 are unpatentable under § 103; proposed substitute claims 44 and 45 are not shown patentable, and the Second Motion to Amend is denied.

  RulingsFinal written decision

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

    “In our Decision on Institution, we discussed the meaning of the transitional phrase “consisting essentially of,” but otherwise found that no claim terms required express construction. Dec. on Inst. 4. In its Second Motion to Amend, Patent Owner does not dispute our interpretation of “consisting essentially of,” or propose constructions for any additional claim terms. Upon review of Patent Owner’s evidence and arguments, we conclude that no explicit constructions are required in order to resolve the issues pending before the Board.” slip op. at 6

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “establishing that it is entitled to add proposed substitute claims 44 and 45. 37 C.F.R. § 42.20(c). As part of this showing, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. 37 C.F.R. § 42.121. Upon review of the Second Motion to Amend, we are persuaded that the requirements of 37 C.F.R. § 42.121 have been met. For example, Patent Owner seeks to add only two substitute claims, each of which serves to narrow the scope of original claim 18. Mot. 17–18. Patent Owner also identifies exemplary electrolytes disclosed in the originally-filed application that fall within the scope of proposed substitute claims 44 and 45. Id. at 9 (citing Ex. 1010, 33, 35–36 (disclosing an electrolyte containing ethylene glycol, water, isobutyric acid, and ammonium hydroxide (which results in an ammonium salt of the organic acid) with a pH of 4.9, a conductivity of 7.1 mS/cm, and an anode breakdown voltage of 395 volts)). Thus, we focus on whether Patent Owner has met its burden of proof to show that proposed substitute claims 44 and 45 are patentable over the prior art of record.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentable

    “Clark, however, discloses successfully substituting acetic acid in an electrolyte solution with “other low molecular weight paraffin acids,” including butyric, propionic, and lactic acids, as well as forming corresponding ammonium salts of these organic acids. Ex. 1003, 2:40–46, 3:46–61. Likewise, GB 466,193 broadly discloses that acetic acid may be replaced in an electrolyte solution with organic acids of the aliphatic series, including butyric acid and isobutyric acid. Ex. 1015, 3:73–79. In its Second Motion to Amend, Patent Owner does not point to any persuasive evidence to support or explain why a person of ordinary skill in the art would not have considered isobutyric acid, as implied in Clark and expressly identified in GB 466,193, to be a suitable substitute for acetic acid in the electrolyte of Shah. Indeed, similar to the disclosures of Clark and GB 466,193, the ’117 patent discloses that “other relatively weak organic acids of the general formula cnH2+nO2 (where n=2 to 7) are acceptable.”9 Thus, we are not persuaded that Shah, Clark, and GB 466,193 fail to teach or suggest every limitation of proposed substitute claim 44.” slip op. at 10

  • Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsObjective indicia no nexusNot shown unpatentable

    “1 of Shah is ten times higher than electrolyte 2 of the ’117 patent, and the resulting conductivity (47.5 mS/cm) is 6.7 times higher than that of electrolyte 2 of the ’117 patent (7.1 mS/cm). First Mot. to Amend 9 (Table 3); Ex. 1001, 2:14–16 (confirming that the ammonium salt “provides electrical conductivity” in the electrolyte). Given the disclosure of Evans that anode breakdown voltage decreases with increasing conductivity (conductivity being the inverse of resistivity), Patent Owner does not explain persuasively why the 150 volt difference in anode breakdown voltage between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is “contrary to” the teachings of Evans. First Mot. to Amend 9 (Table 3),11; Ex. 2004, 3 (Figure 4). Nor does Patent Owner explain why a person of ordinary skill in the art could not use the disclosure of Evans to modify the resistivity of the electrolyte of Shah, Clark, and GB 466,193 to obtain an anode breakdown voltage within the 370 to 400 volt range of proposed substitute claim 45. Thus, we are not persuaded that the 150 volt difference between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is nonobvious or surprising. Patent Owner also contends that if acetic acid was equivalent to isobutyric acid, such that it could be replaced interchangeably, “a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 Patent electrolyte, both of which have almost identical pH~4.9.” First Mot. to Amend 11. We note, however, that, as set forth in Table 3 above, electrolyte 1 of Shah has a conductivity that is 6.7 times higher than electrolyte 2 of the ’117 patent, as well as ten times the ammonium constituent, two and a half times the acid constituent, half the ethylene glycol, and five times the phosphoric acid as compared to electrolyte 2 of the ’117 patent. In view of the wide difference in constituents and resulting conductivity levels between the two electrolytes, and in view of the teaching of Evans that anode breakdown voltage depends on the resistivity of the electrolyte, Patent Owner provides insufficient argument or evidence to explain why one of ordinary skill in the art would expect that “[i]f acetic acid were equivalent to isobutyric acid . . . a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 patent electrolyte . . . .” First Mot. to Amend 11. Accordingly, even if arguments made in the First Motion to Amend were considered, we would still not be persuaded that proposed substitute claim 45 is patentable over the prior art. Thus, we are not persuaded that Patent Owner has carried its burden to demonstrate, by a preponderance of the evidence, that proposed substitute claim 45 is patentable over the prior art of record.” slip op. at 16

  Patent outcomesUS 6,687,117 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,687,117
• Geox S.P.A. v. Outdry Technologies CorporationAll claims unpatentable
  PTAB · Dec 18, 2015 · IPR2014-01244 · APJ Donna M Praiss · IPR · Final written decision

  Claims 1–15 are unpatentable as obvious under § 103(a); the motion to amend claims 16 and 17 is denied for failure to establish written-description support and patentability.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “difference between Petitioner’s and Patent Owner’s proposed levels of ordinary skill in the art that would impact our ultimate conclusions. Petitioner contends that a person of ordinary skill in the art is evidenced by the references. Pet. 11. Patent Owner asserts that “[w]aterproofing leather is not a sophisticated technology, and the education level of a PHOSITA working in the industry is likely a four year degree.” PO Resp. 30. According to Patent Owner, a PHOSITA likely would have knowledge related to making apparel from leather, waterproofing leather using sprays and liners, as well as knowledge of adhesives and bonding leather apparel, and also knowledge of waterproof breathable membranes of various types. Id. We consider the cited prior art as representative of the level of ordinary skill in the art, which Patent Owner essentially summarizes as the knowledge of a PHOSITA. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “interpreted to include either a temporary support that is removed, such as a release sheet, or one that becomes part of the final product, such as a liner. Pet. 11. Patent Owner contends that the term should be construed to be limited to “sheets” because “[n]o other material forms are disclosed other than ‘sheets,’ which include paper and fabric support sheets.” PO Resp. 7 (citing Ex. 1001, 2:58–67). According to Patent Owner, the broadest reasonable construction, therefore, “includes any sheet of flexible fabric or fibrous material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” Id. at 7–8. In the Decision on Institution, we construed “support sheet” as “includ[ing] any material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” Dec. on Inst. 6. This construction is based on the Specification, which describes multiple embodiments of the support sheet, including a detachable sheet and an internal liner. Ex. 1001, 2:58–67. The Specification also describes the use of “different materials” to make the support sheet. Id. at 2:63–64. Accordingly, we conclude that the broadest reasonable construction of “support sheet” is not limited to a sheet of fabric or fibrous material as Patent Owner contends, but, rather, explicitly includes “different materials” that can be fastened generally to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane. Therefore, consistent with the Specification, we construe “support sheet” to mean a sheet of any material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “required degree of contact between the membrane and the leather in the regions that are between the dots of adhesive. The ’171 patent summarizes the invention as enabling a membrane to be applied directly to leather by providing a surface of the membrane with a glue pattern. Ex. 1001, 1:56–61. The invention is said to “avoid the use of a semipermeable lining and the water penetration between leather and lining.” Id. at 1:60–61. The title of the invention states “Process for Waterproofing Leather” and describes the leather used in the process as “leather waterproofed by said process.” Id. at 2:27–28. These disclosures do not define either the word “waterproof” as used in the Specification or the word “directly” as recited in independent claims 1 and 9 to mean that there is constant contact between the membrane and leather such that no water permeates the leather, as Patent Owner contends. In an embodiment of the invention, heating of the membrane during pressing is said to result in “a perfect adhesion” that does not plug the pores with glue. Id. at 2:31–42–45. Heating of the membrane during pressing is carried out also in the single example disclosed in the ’171 patent. Id. at 3:12. The leather samples in the example are said to have been “waterproofed by the process according to the present invention” and “hot-pressed with a hydrophilic non-porous semi-permeable membrane of polyurethane material having a thickness of 10 µm.” Id. at 3:9–14. These disclosures of an embodiment and an example do not define “directly pressing” or “waterproofing” or even “perfect adhesion” to mean constant contact between the leather and the membrane or that no water permeates the leather. Therefore, we decline to import such limitations into the term “directly pressing” based on Patent Owner’s argument that these properties are present inherently in the embodiment of the example in the ’171 patent. Accordingly, we construe “directly pressing” to mean applying pressure without any intervening materials or layers other than the recited adhesive.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “combination of Thornton, Scott, and Hayton. Petitioner has established that Thornton’s process for waterproofing leather by using spaced dots of adhesive in a discontinuous configuration on a semi-permeable membrane that is pressed against the leather meets the requirements of claims 1 and 9 but for the dot density and dot size ranges specified by the claims, respectively. Petitioner also provided a rational underpinning for combining the disclosures of Scott and Hayton, which provide guidance for the density and size of adhesive dots to adhere a semi-permeable membrane to a porous layer. We are not persuaded by Patent Owner’s argument that the teachings of Scott and Hayton are unrelated to the problem of adhering a membrane to a leather layer in view of Thornton’s disclosure that both leather and fabric material are amenable to its process for waterproofing breathable articles of clothing. Ex. 1003, 7:58–62. We also are not persuaded by Patent Owner that the combination of Thornton, Scott, and Hayton does not disclose all of the limitations of claims 1 and 9. The ranges explicitly disclosed in Hayton overlap with the ranges recited in claims 1 and 9. Patent Owner does not argue, and the Specification does not indicate, any criticality associated with the portion of the ranges that are not encompassed by Hayton’s ranges. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Rather, the claimed ranges appear once in the Specification as a preferred embodiment when the pattern of thermoadhesive glue is dots of polyurethane glue. Ex. 1001, 2:37–42. Patent Owner’s arguments distinguishing Thornton on the basis that it does not teach constant contact between the membrane and the leather in the regions between the spaced dots of adhesive is not persuasive for the reasons discussed above in connection with Patent Owner’s claim construction argument that this is required by the claim term “directly pressing.” In addition, we find that Thornton’s semi-permeable membrane completely covers the leather layer in the sense that the leather layer surface faces the membrane surface to form a composite. Thornton explicitly describes drawing the membrane barrier component over a former, applying adhesive to the outer surface of the film, drawing the outer glove layer onto the former, and bonding the layers by pressing. Ex. 1003, 21:64–22:8; Reply 9. Thornton also discloses layers on the former are placed in register (Ex. 1003, 21:33–35) and that the composite can be formed face to face in sheets (id. at 6:62–66, 7:13–31; Reply 8).” slip op. at 15

  Patent outcomesUS 6,855,171 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,855,171
• Ethicon Endo-Surgery, Inc. v. Covidien AGInstitution denied
  PTAB · Dec 17, 2015 · IPR2015-01275 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any of claims 1–18 were unpatentable, chiefly because the cited art did not teach the uniform-distance limitation.

  RulingsInstitution decision

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

    “distance between the jaw members along the length thereof,” a limitation required by all challenged claims. Both the Specification and the challenged claims of the ’284 patent require this distance when tissue is held between the jaw members. Indeed, the Specification discloses that the stop members are “positioned to control the gap distance between the opposing jaw members when the tissue is held therebetween.” Ex. 1001, 3:50–54; see also id. at Abstract (stating the same), 5:3–6 (stating the same). In addition, claim 15 recites “[a]n endoscopic bipolar forceps according to claim 12 wherein the jaw members and the non-conductive stop members are configured such that the distance between the jaw members when tissue is held therebetween is between about 0.002 inches and about 0.003 inches.” Id. at 15:21–16:3. Thus, we conclude that the challenged claims require “a 5 uniform distance between the jaw members” when tissue is held between the opposing jaw members.” slip op. at 5

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “35 U.S.C. § 325(d) Patent Owner asks us to deny the Petition under 35 U.S.C. § 325(d), arguing that all but one references relied on in the Petition were considered during prosecution. Prelim. Resp. 9–12. The statute allows, but does not require, the Director to deny a petition if “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). We decline to exercise our discretion to deny the Petition under § 325(d).” slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under the statute, an inter partes review may be instituted only if “the information presented in the petition . . . and any response filed [thereto] shows that there is a reasonable likelihood that the petitioner would prevail” in the unpatentability challenge. 35 U.S.C. § 314(a) (emphasis added). In the Petition, Petitioner does not rely on claim 2 of the ’284 patent to support, as the dissent insists, a uniform distance between the jaw members. To the contrary, when discussing claim 2, Petitioner submits that this claim limitation is (a) not supported by the disclosure of the ‘284 Patent and (b) at odds with the requirement of claim 1 (and PO’s arguments during prosecution) that “the non-conductive stop members [are] configured to maintain a uniform distance between the jaw members along the length thereof.” Providing stop members of different heights as required by this claim necessarily results in a non-uniform distance between jaw members. Pet. 26 (emphasis added). As a result, the information presented in the Petition does not show a reasonable likelihood that Petitioner would prevail, based on claim 2 of the ’284 patent, that an “island of insulation” of unknown size and location, is sufficient to maintain a uniform distance between the jaw members. We decline to join the dissent in reforming the Petition and rely on an argument Petitioner specifically disclaimed.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Petitioner asserts that one of ordinary skill in the art would have been motivated to combine the teachings of Fox and Eggers ’142. Id. at 14–18. Petitioner also refers to the prior art for teaching each and every limitation of claims 1–11. Id. at 18–32. Assuming, without deciding, that Petitioner has provided sufficient rationale for combining the prior art, we nevertheless agree with Patent Owner that the combination does not teach “non-conductive stop members configured to maintain a uniform distance between the jaw members along the length thereof,” as all challenged claims require. See Prelim. Resp. 14–26.” slip op. at 9

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 8,241,284
• Maxmind, Inc. v. Fraud Control Systems.Com CorporationAdverse judgment
  PTAB · Dec 17, 2015 · CBM2015-00094 · APJ James A Worth · CBM · Adverse judgment

  The Board entered adverse judgment against the Patent Owner and cancelled claims 1–30 after the Patent Owner requested cancellation.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Here, Patent Owner requests adverse judgment with cancellation of claims 1–30 of the ’942 patent. Under these circumstances, entry of judgment adverse to the Patent Owner and cancellation of claims 1–30 of the ʼ942 patent are appropriate. CONCLUSION AND ORDER Patent Owner’s Request to Abandon Contest is granted. It is, therefore, ORDERED that adverse judgment against the Patent Owner is entered under 37 C.F.R. § 42.73(b); FURTHER ORDERED that this constitutes a final written decision under 35 U.S.C. § 318(a); and FURTHER ORDERED that claims 1–30 of U.S. Patent No. 8,630,942 B2 be CANCELLED.” slip op. at 2

  None
  Patents in suitUS 8,630,942
• Boston Scientific Neuromodulation Corporation v. Nevro CorporationInstitution denied
  PTAB · Nov 30, 2015 · IPR2015-01203 · APJ James A Worth · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 11–15, 17–23, 25, and 26 were unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. For the reasons set forth below, we conclude that the information presented in the Petition does not establish a reasonable likelihood that BSNC would prevail in showing that claims 1, 2, 11–15, 17–23, 25 and 26 of the ’102 patent are unpatentable. Accordingly, we do not institute an inter partes review for any of these challenged claims.” slip op. at 2

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

    “All of the evidence presented supports an understanding that paresthesia includes various manifestations of a “pins and needles” feeling, often described as “tingling.” Patent Owner’s dictionaries also refer to “pricking,” “formication,” and “creeping on the skin,” which is consistent with Petitioner’s Declarant’s observation the same sensation may manifest itself as “prickling.” See Ex. 1105 ¶ 14. Although we recognize that Patent Owner has not had the opportunity to submit any “new testimonial evidence” at this stage of the proceeding, see 37 C.F.R. § 42.107(c), Patent Owner does not here provide support for “pressure” as it might be understood apart from “pricking,” “formication,” and “creeping on the skin.” For purposes of this Decision on Institution, we determine that the broadest reasonable construction consistent with the Specification of “does not create paresthesia” is “does not create tingling.” We are guided by the submitted dictionaries as well as the Specification which criticizes prior art techniques for causing “tingling or paresthesia.” Ex. 1001, 1:50–52. We credit the statement of Petitioner’s Declarant that the same sensation may be 5 Formication is a hallucination in which a patient feels as if insects are crawling on his or her skin. variously perceived. However, we do not include “pressure” itself within that construction.” slip op. at 7

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

    “11–14, 17–22, 25, and 26 would be understood to be disclosed by MacDonald. Pet. 13–27. The parties first dispute whether MacDonald discloses any examples of electrical stimulation that “does not create paresthesia in the patient,” as recited by claims 1 and 26. See Pet. 14–17; Prelim. Resp. 24–25. When MacDonald discloses electronic stimulation lower than the threshold for tingling, MacDonald also discloses a “feeling of warmth and painless, light pressure.” 5:51–63. Applying the above claim construction of “paresthesia,” we determine, on the current record, that Petitioner has shown sufficient evidence that MacDonald discloses a lack of paresthesia in that example. However, we agree with Patent Owner that Petitioner has not sufficiently demonstrated that MacDonald anticipates because Petitioner has not shown that MacDonald’s transcutaneous therapy is applicable for an implantable signal delivery device or that MacDonald teaches the claimed frequency ranges with sufficient specificity. Prelim. Resp. 25–29. MacDonald’s disclosure results from an experiment using “surface electrodes,” and “at a rate of 100 pulses per second.” Ex. 1002, 5:33–37. Therefore, even though Petitioner relies on a disclosure in MacDonald that electrodes may be implanted (id. at 3:49–51, 8:55–57), and that frequencies of up to 150 kHz or 250 kHz may be used (id. at 4:9–21, 8:39–43), Petitioner does not provide evidence that the patient would feel no paresthesia under such conditions, i.e., under conditions different than those described in the first set of experiments. See Pet. 14–20. Nor does Petitioner direct us to persuasive evidence from Dr. McIntyre’s testimony (Ex. 1015) that MacDonald discloses this claim element. In sum, although the various disclosures relied upon by Petitioner are in the same reference, Petitioner has not sufficiently shown that the conditions were arranged together in the same way as recited in the claim. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). We, therefore, conclude that Petitioner has not shown a reasonable likelihood of prevailing on its assertion that claims 1, 2, 11–14, 17–22, 25, and 26 are anticipated by MacDonald.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “one of ordinary skill in the art to implement MacDonald’s therapy in a way that does not cause paresthesia, and De Ridder describes tests that were performed on patients using spinal cord stimulation parameters that successfully treated pain without causing paresthesia. Pet. 46–47 (citing Ex. 1005 ¶¶ 41–44; Exhibit 1115 ¶¶ 138–141; KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.”)). Petitioner also reasons that it was known from such references as De Ridder that paresthesia was undesirable. Pet. 47 and n.3. However, we agree with Patent Owner that De Ridder teaches that high frequency stimulation causes, rather than avoids, paresthesia. Prelim. Resp. 43 (citing Ex. 1005 ¶ 4). Further, De Ridder’s data reporting suppression of paresthesia was conducted at an “inter-burst” frequency of 40 Hz and an “intra-burst” frequency of 500 Hz, rather than the recited frequencies. Ex. 1005 ¶ 41–42; Table 1. With respect to Sluitjer and Royle, we address these references individually in the sections above. Further, we agree with Patent Owner that the Petition does not articulate the obviousness ground inasmuch as the Petition does not explain which aspects of MacDonald would have been retained and which aspects of De Ridder, Sluitjer, and Royle would have been the basis for a modification, and the rationale for the choice of any such elements. See Prelim. Resp. 45; Pet. 45–50; 37 C.F.R. §§ 42.104(b)(4), (b)(5), 42.108(c); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We determine, on the current record, that Petitioner has not established a reasonable likelihood of prevailing on its assertion that claims 1, 2, 11–15, 17–23, 25, and 26 are rendered obvious by the combination of MacDonald, either alone or in view of De Ridder, Sluijter and/or Royle.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,359,102
• Boston Scientific Neuromodulation Corporation v. Nevro CorporationInstitution denied
  PTAB · Nov 30, 2015 · IPR2015-01204 · APJ James A Worth · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 11-15, 17-23, 25, and 26 were unpatentable over Knudson alone or in the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. For the reasons set forth below, we conclude that the information presented in the Petition does not establish a reasonable likelihood that BSNC would prevail in showing that claims 1, 2, 11–15, 17–23, 25, and 26 of the ’102 patent are unpatentable. Accordingly, we do not institute an inter partes review for any of these challenged claims.” slip op. at 2

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are persuaded by Patent Owner that Knudson does not disclose a paresthesia-free therapy, either explicitly or inherently. Prelim. Resp. 10– 13. We have reviewed Kilgore and Perruchoud and do not find that they support a reading that Knudson’s nerve blocking necessarily resulted in the patient feeling no paresthesia. The Petition relies primarily on the testimony of Dr. McIntyre for the proposition that Knudson’s method of nerve blocking inherently discloses an application “without causing paresthesia in the patient.” See Pet. 16–24. However, Dr. McIntyre offers no support for the proffered testimony that “one of ordinary skill would have understood that by describing his therapy signal as applying a ‘blocking’ signal, Knudson was teaching application of a signal that would not cause the patient to perceive paresthesia.” Ex. 1115 ¶ 44. To the extent that Petitioner and Petitioner’s Declarant rely on a mechanism of nerve block as blocking a nerve action potential, Petitioner has not adduced persuasive evidence as to what a patient would necessarily have perceived or sensed in the Knudson experiment. See 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAOther

    “All of the evidence presented supports an understanding that paresthesia includes various manifestations of a “pins and needles” feeling, often described as “tingling.” Patent Owner’s dictionaries also refer to “pricking,” “formication,” and “creeping on the skin,” which is consistent with Petitioner’s Declarant’s observation the same sensation may manifest itself as “prickling.” See Ex. 1115 ¶ 14. Although we recognize that Patent Owner has not had the opportunity to submit any “new testimonial evidence” at this stage of the proceeding, see 37 C.F.R. § 42.107(c), Patent Owner does not here provide support for “pressure” as it might be understood apart from “pricking,” “formication,” and “creeping on the skin.” For purposes of this Decision on Institution, we determine that the broadest reasonable construction consistent with the Specification of “does not create paresthesia” is “does not create tingling.” We are guided by the submitted dictionaries as well as the Specification which criticizes prior art techniques for causing “tingling or paresthesia.” Ex. 1101, 1:50–52. We credit the statement of Petitioner’s Declarant that the same sensation may be variously perceived. However, we do not include “pressure” itself within that construction.” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “We are persuaded by Patent Owner that Knudson does not disclose a paresthesia-free therapy, either explicitly or inherently. Prelim. Resp. 10– 13. We have reviewed Kilgore and Perruchoud and do not find that they support a reading that Knudson’s nerve blocking necessarily resulted in the patient feeling no paresthesia. The Petition relies primarily on the testimony of Dr. McIntyre for the proposition that Knudson’s method of nerve blocking inherently discloses an application “without causing paresthesia in the patient.” See Pet. 16–24. However, Dr. McIntyre offers no support for the proffered testimony that “one of ordinary skill would have understood that by describing his therapy signal as applying a ‘blocking’ signal, Knudson was teaching application of a signal that would not cause the patient to perceive paresthesia.” Ex. 1115 ¶ 44. To the extent that Petitioner and Petitioner’s Declarant rely on a mechanism of nerve block as blocking a nerve action potential, Petitioner has not adduced persuasive evidence as to what a patient would necessarily have perceived or sensed in the Knudson experiment. See 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We conclude that Petitioner has not adequately shown that Knudson discloses application of electricity “without causing paresthesia in the patient,” as required by independent claims 1 and 26. See In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) (“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.”). We, therefore, determine that Petitioner has not established a reasonable likelihood of prevailing on its assertion with respect to claims 1, 2, 17–22, 25, and 26.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,359,102
• Avx Corporation v. Greatbatch Ltd.Adverse judgment
  PTAB · Nov 19, 2015 · IPR2015-00713 · APJ Jon B Tornquist · IPR · Adverse judgment

  The Board granted Patent Owner’s request for adverse judgment and cancelled claims 1, 2, 8, 9, 23, 24, 30, and 31.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “proceeding. 37 C.F.R. § 42.73(b). Actions construed to be a request for adverse judgment include disclaimer of the involved application or patent and cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. Id. In light of Patent Owner’s disclaimer of claims 1–44 of the ’077 patent, we determine that entry of judgment against Patent Owner with respect to claims 1, 2, 8, 9, 23, 24, 30, and 31 of the ’077 patent is appropriate.” slip op. at 2

  None
  Patents in suitUS 7,035,077
• Indoor Skydiving Germany GmbH v. Ifly Holdings LLCInstitution denied
  PTAB · Nov 18, 2015 · IPR2015-01272 · APJ Richard E Rice · IPR · Institution

  Institution was denied because petitioner failed to show a reasonable likelihood of prevailing on any challenged claim under any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “B. Asserted Anticipation Anticipation requires all features of a claim to be disclosed within a single reference. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (holding that, for anticipation, “a single prior art reference must expressly or inherently disclose each claim limitation”). In an inter partes review, moreover, anticipation must be based on prior art consisting of patents or printed publications. 35 U.S.C. § 311(b). Whether a prior art reference is a printed publication depends on its public accessibility. See In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “A reference is publicly accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (internal citation and quotation marks omitted).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Claim Construction In an inter partes review, the Board gives claim terms in an unexpired patent their broadest reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278, 1279 (Fed. Cir. 2015). Under the broadest reasonable interpretation standard, and absent any special definition, 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. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the Petition, Petitioner asserts that a person of ordinary skill in the art would have “had a bachelor’s degree in mechanical or aeronautical sciences or the equivalent, and two or more years of experience in the field of aerodynamic or wind tunnel design.” Pet. 14 (citing Ex. 1029 ¶¶ 25–28). As Patent Owner does not dispute that definition, we adopt it for purposes of our Decision. See Prelim. Resp. 48.” slip op. at 7

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

    “Prelim. Resp. 21–22. Patent Owner argues, however, that “Albuschkat does not describe or illustrate any fluid communication between the stand 13 and the floating space 19,” and thus implicitly asserts that the phrase “said staging area aerodynamically communicating with said chamber” requires “fluid communication” between the staging area and the chamber. See id. at 37. The phrase “said staging area aerodynamically communicating with said chamber” is recited in each of the challenged independent claims, except claim 19. While the Specification does not use the term “aerodynamically communicating,” it does describe airflow that passes through openings from the flight chamber to the staging area and re-enters the flight chamber through perforated wall section 230. Ex. 1001, 6:53–67. According to the Specification, “perforated wall section 230 reduces the turbulence that the airflow might otherwise experience as it passes the openings to the staging area as described in FIG. 3.” Id. at 6:55–58. On this record, we determine that the broadest reasonable interpretation of “said staging area aerodynamically communicating with said chamber” requires movement of air or other gaseous fluids between the staging area and the chamber.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “single reference. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (holding that, for anticipation, “a single prior art reference must expressly or inherently disclose each claim limitation”). In an inter partes review, moreover, anticipation must be based on prior art consisting of patents or printed publications. 35 U.S.C. § 311(b). Whether a prior art reference is a printed publication depends on its public accessibility. See In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “A reference is publicly accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (internal citation and quotation marks omitted).” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
• United States Department Of Homeland Security v. Larry GoldenRehearing denied
  PTAB · Nov 17, 2015 · IPR2014-00714 · APJ Kevin W Cherry · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place denial of substitute claims 154–156 because they were broader, lacked written description support, and were not shown patentable over the prior art.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The burden of showing [the] decision should be modified lies with the party challenging the decision.” Id. The request for rehearing “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

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “three independent reasons: (1) substitute claims 154–156 are impermissibly broader than the claims they replaced; (2) Patent Owner failed to show written description support for substitute claims 154–156 as a whole; and (3) Patent Owner failed to show that claims 154–156 were patentable over the prior art of record. Final Dec. 15–21 (improper broadening), 21–22, (written description), 22–31 (prior art of record). Therefore, to succeed on this Rehearing Request, Patent Owner must show that we misapprehended or overlooked matters in reaching each of these determinations. Patent Owner has not done so. We address Patent Owner’s arguments in detail below.” slip op. at 3

  • ScopeDenied

    “In any event, this priority date argument does not contain any reason why our determination that substitute claims 154–156 are broader in scope than cancelled claims 11, 74, and 81 that they seek to replace was in error. Reh’g Req. 4–5. To the extent that Patent Owner does contest our finding that the claims are broader in scope, we do not find it persuasive because Patent Owner does not show amending a claim to replace a particular species with an entire genus would not be broadening. Thus, this argument regarding priority date does not persuade us that we erred in denying Patent Owner’s motion to amend.” slip op. at 4

  • 112 supportDenied

    “B. Lack of Written Description Support Patent Owner argues that we should also excuse Patent Owner’s failure to identify written description support for the entire claim because of the “special circumstances” discussed above. Reh’g Req. 2–3. Without determining whether such an exception exists for the requirement of providing written description support for the entire claim, Patent Owner fails to identify anywhere in the Patent Owner Response or Motion to Amend where this argument was raised. Because the argument was not raised, we could not have misapprehended or overlooked it. Thus, we determine that Patent Owner has failed to show that we erred in our determination that the Motion to Amend failed to show written description support for the claim as a whole.” slip op. at 5

  § 102 anticipation
• Pacific Market International, LLC v. Ignite USA, LLCAll claims unpatentable
  PTAB · Nov 13, 2015 · IPR2014-00750 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1, 2, 4–11, and 13–16 are unpatentable as obvious under § 103 over the instituted prior-art grounds.

  RulingsFinal written decision

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

    “member 610 is merely an exemplary embodiment of a trigger, and we take care not to incorporate limitations into the claims that appear only in the specification. See In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969). We recognize that the Specification describes trigger 610 as moving “radially,” which would be in a direction transverse to the longitudinal axis of the container. Nevertheless, we do not consider this disclosure to limit “push-button trigger” so narrowly as Ignite proposes. To act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning. It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must “clearly express an intent” to redefine the term. Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (internal citations omitted). If anything, the Specification merely provides support for the express limitation in claim 15 requiring a trigger that “has a linear actuation stroke transverse to a longitudinal axis of the container body.” Accordingly, we do not conclude that “push-button trigger” alone requires a trigger to move along a linear actuation stroke in a particular direction.” slip op. at 8

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

    “Ignite’s argument is unpersuasive. Ignite mischaracterizes PMI’s mapping of Albert ’748 to the claimed shutter, trigger, and vent seal. PMI identifies valve 30 and O-ring 32 as the shutter and member 38 and plunger 76 as the trigger. Pet. 16–17. Albert ’748 describes a space between abutment shoulder 100 on movable member 38 and abutment end 98 on plunger 76. Ex. 1001, 4:63–66. Because this space between these abutments exists, when a user of Albert ’748’s cup presses knob 96, O-ring 78 unseals a vent first and then O-ring 32 unseals a drink opening.1 Pet. 17 (citing Ex. 1001, 4:67–5:6). PMI persuades us that the trigger (Albert ’748’s plunger 76 combined with member 38) is mechanically connected to both the shutter (O-ring 32 on valve 30) and the vent seal (O-ring 78). The ’933 patent describes essentially the same type of “mechanically connected” relationship between vent seal 683, which is an O-ring seated on shaft 694 of the trigger mechanism 520. Ex. 1007, 19:36–39, Figs. 15–18. As stated in part II.A above, we are persuaded that PMI has identified how Albert ’748 describes all other elements of claims 1, 2, and 4–6. Accordingly, we conclude that PMI has demonstrated by a preponderance of the evidence that Albert ’748 renders claims 1, 2, and 4–6 unpatentable as obvious under § 103.” slip op. at 13

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Regarding PMI’s first argument, Nergard indisputably describes a drinking container without the claimed pre-venting feature. Ex. 1003, 4:39– 5:2. PMI relies upon Mr. Dahlgren’s testimony and express language in Albert ’748 to establish that a skilled artisan, upon reviewing Albert ’748 and Nergard would be motivated to improve Nergard’s drinking container by adding the push-button-actuated, lost-motion mechanism of Albert ’748. Reply 8 (citing Ex. 1026 ¶¶ 6–10). Albert ’748 recognizes the problems associated with opening a drink aperture without first relieving pressure through another valve (i.e., without pre-venting) when it criticizes two prior art patents that: both disclose manually operable valves in drinking receptacle covers but do not provide any means by which steam and pressure may be relieved from the interior of the container before the drinking valve is opened. Consequently, both prior art devices, as disclosed in these patents, concurrently provide for the relief of drinking liquid and steam or pressure so that the operation of these valves is dangerous, especially when hot coffee is contained in the container and the valve is opened such as to cause the hot liquid to gush out and burn the person attempting to drink therefrom. Ex. 1001, 1:14–25. Nergard describes a drink container that suffers from this problem. Albert ’748 proposes an improvement to drinking containers like Nergard as follows: Accordingly, it is an object of the present invention to provide a novel drinking receptacle valve means which is operable initially to relieve pressure in the drinking receptacle and subsequently to open the drinking receptacle valve after the pressure has been relieved so as to provide for safety of persons drinking hot coffee from such receptacles. Id. at 2:37–43. Mr. Dahlgren testifies that a skilled artisan would have, therefore, considered it obvious to modify Nergard’s drinking container by adding Albert ’748’s pre-venting mechanism, which Albert ’748 describes in great detail. Ex. 1026 ¶ 8. He also explains that a skilled artisan would have expected the modified version of Nergard to work for the intended purpose of pre-venting the pressure inside Nergard’s container. Id. Ignite does not address persuasively Mr. Dahlgren’s testimony or Albert ’748’s express suggestion to modify drinking containers such as Nergard’s. Based on our review of the record, we are persuaded by PMI’s” slip op. at 20

  Patent outcomesUS 7,546,933 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,546,933

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.