• Permobil, Inc. v. Pride Mobility Products CorporationAll claims unpatentable
  PTAB · Dec 31, 2014 · IPR2013-00411 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Goertzen and Hosino; claims 1 and 4–10 are also unpatentable as obvious over Goertzen and Mulhern ’420.

  RulingsFinal written decision

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

    “plate”(claim 1) In the Decision to Institute, we concluded that no express construction of “a forward-extending front arm rigidly extending from the mounting plate” was necessary. Dec. to Inst. 7–8. Neither party contests that conclusion, and nothing since our Decision to Institute indicates it should be changed. We maintain our conclusion that no express construction of “a forward-extending front arm rigidly extending from the mounting plate” is necessary.” slip op. at 6

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

    “Figures 3B depicts mounting plate 56 relative to drive wheel axis A-DW. However, the ’343 patent also discloses that: for conventional configurations having a motor that is perpendicular to the drive wheel axis (and requiring a right angle gearbox, which is not shown in the figures), the motor swings about the gearbox output shaft to impart motion to the front caster arm, as for example shown in U.S. Pat. No. 6,129,165. Ex. 1001, col. 9, ll. 20–25 (emphasis added). Figure 9 of the ’165 patent is reproduced below: Figure 9 depicts a side view of a power wheelchair according to the ’165 patent. The ’343 Patent describes motor 80 of Figure 9 as “perpendicular to the drive wheel axis” 24. As can be seen by a comparison of the figures, motor 80 of Figure 9 of the ’165 patent is oriented differently from mounting plate 56 of Figure 3B of the ’343 patent. Thus, the ’343 patent uses “perpendicular to the drive wheel axis” to refer to orientations other than the orientation of mounting plate 56 in Figure 3B.” slip op. at 7

  • Skill levelSkill level board ownDecided for patent owner

    “We are not persuaded that the level of ordinary skill in the art required at least three years of experience specific to obstacle-traversing and curb-climbing systems and suspensions, as Patent Owner contends. The problems identified by Patent Owner and the skills required—e.g., “analysis of the various forces and moments,” “understanding of moment arms,” “understand[ing] the effects on moments and forces,” (PO Resp. 28–29)— are within the ordinary skill of a person with an undergraduate degree in mechanical engineering. Moreover, we note that the named inventor of the ’343 patent—James Mulhern—testified, in a related reexamination, that a person of ordinary skill in the art would have had only “a B.S. in mechanical engineering or equivalent, or at least 3 years of experience in the field of designing powered wheelchairs for personal mobility.” Ex. 1026 ¶ 10 (emphasis added). Based on our review of the technology claimed in the ’343 patent and the description of the powered wheelchair set forth in the specification, we determine that a person of ordinary skill in the art would have had either (1) an undergraduate degree in mechanical engineering or an equivalent degree; or (2) at least three years of experience designing powered wheelchairs for personal mobility.” slip op. at 10

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

    “deceleration, or doing any of the engineering that, according to him, would be necessary to compensate for the reduced stability caused by a lower pivot. PO Resp. 19–23. The question before us, however, is not whether Dr. Richter did the engineering necessary to combine the prior art into a functional prototype, but whether doing so would have been within the ability of a person of ordinary skill in the art at the time of the claimed invention. In that regard, we credit Dr. Richter’s testimony that a person of ordinary skill in the art would have known how to change various other parameters in order to achieve a stable version of the claimed invention. Ex. 2004, 185:23–186:14. Patent Owner asserts that the proposed modification is anything but routine (PO Resp. 23–25), but does not explain why such calculations would not have been within the ability of a person of ordinary skill in the art. For the foregoing reasons, we find that Petitioner has articulated sufficiently a reason with rational underpinnings for for combining the teachings of Goertzen and Hosino to achieve the wheelchair recited in the challenged claims.” slip op. at 19

  Patent outcomesUS 8,408,343 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,408,343
• Permobil, Inc. v. Pride Mobility Products CorporationAll claims unpatentable
  PTAB · Dec 31, 2014 · IPR2013-00407 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–13 are unpatentable under § 103: claims 1, 4–8, and 11–13 over Goertzen and Hosino; claims 2, 3, 9, and 10 over those references and Schaffner.

  RulingsFinal written decision

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

    “mounted to the frame such that the arm is capable of rotating about a pivot axis.” Pet. 6–7 (citing Ex. 1001, col. 7, ll. 47–48 (“A suspension arm 224 is pivotally mounted to the frame 3 at pivot 224A.”)). Patent Owner contends that Petitioner’s proposed construction “is vague because, when read in context of the rest of the claim language, it is unclear whether ‘a pivot axis’ in the construction is the recited ‘arm pivot axis’ or some different axis.” Prelim. Resp. 18. We are not persuaded by Patent Owner’s argument because each of claims 1 and 7 specifies that the arm is pivotably mounted to the frame “at an arm pivot axis.” However, we also are not persuaded by Petitioner’s argument that the patentee intended to give “pivotably mounted to the frame” a meaning other than its plain and ordinary meaning. Apart from the claims, the ’598 patent does not use the term “pivotably mounted,” and the portion of the ’598 patent cited by Petitioner describes a suspension arm as “pivotally mounted,” not “pivotably mounted.” Ex. 1001, col. 7, ll. 47–48. Thus, we conclude that “pivotably mounted to the frame” does not require express construction. slip op. at 7

  • Skill levelSkill level board ownDecided for petitioner

    “We are not persuaded that the level of ordinary skill in the art required at least three years of experience specific to curb-climbing systems, as Patent Owner contends. The problems identified by Patent Owner and the skills required—e.g., “analysis of the various forces and moments,” “understanding of moment arms,” “understand[ing] the effects on moments and forces,” (PO Resp. 29–30)—are within the ordinary skill of a person with an undergraduate degree in mechanical engineering. Moreover, we note that the named inventor of the ’598 patent—James Mulhern—testified, in a related reexamination, that a person of ordinary skill in the art would have had only “a B.S. in mechanical engineering or equivalent, or at least 3 years of experience in the field of designing powered wheelchairs for personal mobility.” Ex. 1028 ¶ 10 (emphasis added). Based on our review of the technology claimed in the ’598 patent and the description of the anti-tip systems for powered vehicles set forth in the specification, we determine that a person of ordinary skill in the art would have had either (1) an undergraduate degree in mechanical engineering or an equivalent degree; or (2) at least three years of experience designing powered wheelchairs for personal mobility.” slip op. at 9

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

    “Patent Owner also faults Dr. Richter for not analyzing declines or deceleration, or doing any of the engineering that, according to Dr. Richter, would be necessary to compensate for the reduced stability caused by a lower pivot. PO Resp. 19–24. The question before us, however, is not whether Dr. Richter did the engineering necessary to combine the prior art into a functional prototype, but whether doing so would have been within the ability of a person of ordinary skill in the art at the time of the claimed invention. In that regard, we credit Dr. Richter’s testimony that a person of ordinary skill in the art would have known how to change various other parameters in order to achieve a stable version of the claimed invention. Ex. 2004, 185:23–186:14. Patent Owner asserts that the proposed modification is anything but routine (PO Resp. 24–26), but does not explain why such calculations would not have been within the ability of a person of ordinary skill in the art. For the foregoing reasons, we are persuaded Petitioner has articulated sufficiently a reason with rational underpinnings for combining the teachings of Goertzen and Hosino to achieve the wheelchair recited in the challenged claims.” slip op. at 18

  Patent outcomesUS 8,408,598 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,408,598
• Fidelity National Information Services, Inc. v. Checkfree CorporationAll claims unpatentable
  PTAB · Dec 22, 2014 · CBM2013-00030 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–21 are unpatentable under § 101 because they claim an abstract payment-intermediation concept implemented with generic computer functions.

  RulingsFinal written decision

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

    “BACKGROUND On December 23, 2013, we entered a Decision to Institute a covered business method patent review, Paper 16 (“Dec. to Inst.”), of U.S. Patent No. 7,853,524 B2 (“the ’524 Patent”) on the grounds that claims 1–21 do not recite patent-eligible subject matter under 35 U.S.C. § 101.” slip op. at 2

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

    “terms “electronic bill” and “EBP” do not even appear in the specification, Petitioner argues that Patent Owner is attempting to recast abstract ideas recited in the ’524 Patent claims in a manner that requires machines or transformations. Pet. Reply 2, 6. We agree with Petitioner that Patent Owner’s construction arguments attempt to read into the claims features that are not recited in them. For example, although there is no EBP system mentioned in the claims, citing the testimony of its expert, Dr. John Kelly, Patent Owner argues that a payment request is captured through an automated interaction with a user over a telephone or is conveyed by transferring data to the EBP system over a data network from a computer. PO Resp. 21–22. As discussed below, we decline to alter any of the constructions we applied in our Decision to Institute.” slip op. at 4

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

    “Merchant credit limit associated with a payee Patent Owner contends that our construction of the “merchant credit limit associated with a payee” as the maximum amount of credit a merchant extends to a payer is contrary to the plain language of the claims because the limit is associated with the payee. PO Resp. 51. Our construction is consistent with the limit being associated with the payee, i.e., the party to whom the payment is made. Patent Owner’s proposed construction, “a value reflecting the credit limit used by the EBP system which is associated with a particular payee,” PO Resp. 52, reads into the claim an extrinsic EBP system not discussed in the specification. In addition, the value reflecting the credit limit is the amount of credit a payee, i.e., a merchant, extends to a payer. Claims 1, 11, and 21 each recite comparing a payment amount associated with the received request, i.e., the request received on behalf of the payer, to a merchant credit limit associated with the payee. The only credit limits described in the specification are limits on the amount of credit extended to a payer. Although the specification describes a merchant credit limit, it does not describe specifically such a limit associated with the payee. The specification describes comparing the payment amount to a merchant credit limit, and making the payment as an electronic payment or a service provider check, if the payment amount is under a specified amount. Ex. 1001, col. 5, l. 65–col. 6, l. 5. Any amount within the merchant’s (i.e., the payee’s) credit limit is added to the consumer’s (i.e., payer’s) monthly ACH balance, and any transaction can be compared to the consumer’s credit limit parameters stored in a database. Id. at col. 6, ll. 5–10. The specification also describes releasing the payment as a draft written on the consumer’s account, rather than the service provider’s account, if the payment amount exceeds the consumer’s, i.e., the payer’s, credit limit. Id. at col. 6, ll. 10– 16. Because the consumer’s credit limit described in the specification protects the service provider, id. at col. 5, ll. 35–37, 65–66, it is a limit associated with the service provider rather than the payee. Claims 1, 11, and 21, however, recite the merchant credit limit associated with the payee. Because each merchant may extend a different amount of credit to each customer, the merchant credit limit associated with the payee limitation appears to require the service provider computer to select a payment means based on comparing the requested payment amount to the amount of credit the merchant, i.e., the payee, extends to the payer. That is, the amount of the payment is compared to the payer’s credit limit with the payee. In any case, as discussed below, this limitation is not material to our determination of the issues under 35 U.S.C. § 101.” slip op. at 8

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “and 21 of the ’524 Patent recites a method or apparatus in which a service provider receives a request to pay a payee, selects a form of crediting the payee based on comparing the payer’s account number to the payee’s merchant account scheme and the payment amount to a merchant credit limit associated with the payee, and directs the payment to the payee in the selected form. Thus, each of the independent claims is drawn to a computer-implemented process or apparatus in which a third party intermediary, i.e., the payment service provider, receives a request to make payment, applies certain criteria to determine what form of payment to use, and then directs the payment to the payee in that form. In Alice, the Supreme Court considered claims that, on their face, were drawn to the fundamental economic concept of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk. The Court, concluded that, like the hedging in Bilski, the claims were drawn to an “abstract idea” beyond the scope of § 101. Alice Corp., 134 S. Ct. at 2355–57.1 In the ’524 Patent, the service provider intermediates payment between the payer and the payee, acting much like the third party intermediary in Alice. The payment service provider mitigates settlement risk by crediting the payee or issuing a check to the payee drawn on the service provider’s funds, or in other circumstances, issuing a draft drawn on the payer’s funds, i.e., determining the form of payments based on the comparisons recited in the claims. Ex. 1001, col. 5, l. 25–col. 6, l. 15. The computer implementation associated with comparing the account number and 1 In Bilski v. Kappos, 561 U.S. 593 (2010) the Court found upatentable, as abstract ideas, claims drawn to hedging against the financial risk of commodity price fluctuations where the claims recited the steps of initiating a series of financial transactions between commodity providers and consumers, identifying market participants with a counterrisk for the same commodity and initiating a series of risk balancing transactions between those market participants and the commodity provider. the credit limit are incidental to the fundamental economic concept of having a third party intermediate a settlement either by crediting the payee from the third party’s funds (as in a credit transaction) or from the payer’s funds (as when the amounts exceed the payer’s credit limit with the service provider). Thus, we conclude that each of independent claims 1, 11, and 21 is directed to an abstract concept.” slip op. at 12

  Patent outcomesUS 7,853,524 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 7,853,524
• Fidelity National Information Services, Inc. v. Checkfree CorporationAll claims unpatentable
  PTAB · Dec 22, 2014 · CBM2013-00031 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101 because they claim the abstract concept of modifying account numbers to match a payee’s format using generic computer implementation.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner

    “Claims 1 and 15 of the ’311 Patent are drawn to executing instructions on a computer. In response to receiving an account number in a format not expected by a payee, the instructions act to retrieve from a database a rule that causes the received account number to be altered into the expected format before transmitting the account number to the payee. Thus, claims 1 and 15 are directed to the abstract concept of comparing a received account number to a payee’s format, applying a rule, and modifying the account number in accordance with that rule to the expected format before transmitting it to the payee. As evidence that the computer is not a meaningful limitation and that the claims are drawn to an abstract concept, Petitioner cites testimony of inventor David Garrison demonstrating that the steps of the claimed invention could be performed manually. Pet. 12–16. (citing Ex. 1008, 175:25–180:14, 185:11– 189:25; Ex. 1009; Ex. 1010. Patent Owner’s argument that the claimed automatically performed method precludes the need for human intervention, PO Resp. 68, essentially concedes that the process could be performed manually. We conclude that the recitation of a computer in the method or system claims is not a meaningful limitation and does not change the abstract nature of the claimed subject matter. The limitations recited in claims 2–14, which depend from claim 1, and claims 16–20, which depend from claim 15, relate to the abstract concept recited in claims 1 and 15 and are not meaningful limitations that provide patent-eligible subject matter. See, e.g., claims 2 and 16, which recite receiving the consumer account number in association with the payment request. Thus, the method and system claims of the ’311 Patent are drawn to the abstract concept of establishing compatibility between account numbers by applying appropriate rules to modify an account number.” slip op. at 7

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptDecided for petitioner

    “We also agree with Petitioner that, by transforming a consumer account number into a modified account number, the claims of the ’311 Patent do not cause a physical transformation of a data structure, as argued by Patent Owner. PO Resp. 48–49. As previously discussed, the claims of the ’311 Patent do not recite data structures that are physically transformed. In addition, Petitioner points out that Patent Owner’s expert, Mr. McEntee, testified that the claims of the ’311 Patent do not require any physical transformation. Pet. Reply 11 (citing Ex. 2028, 472:19– 428:2). We further note that satisfying the machine-or-transformation test, by itself, is not sufficient to render a claim patent-eligible, as not all transformations or machine implementations infuse an otherwise ineligible claim with an inventive concept. DDR Holdings, LLC, 2014 WL 6845152, at *9. We conclude that altering an account number to be compatible with the requirements of a payee’s system, as recited in the claims of the ’311 Patent, is not the type of transformation that rises to the level of patent-eligible subject matter. Patent Owner contends that in our Decision to Institute we did not evaluate the claims as a whole to determine whether they contain additional substantive limitations that narrow, confine, or otherwise tie down the claims so that, in practical terms, they do not cover the full abstract idea itself. PO Resp. 61. According to Patent Owner, the claims include several concrete and tangible limitations that limit the use of the “putative abstract idea” to a specific application within an electronic bill payment system. Id.  As discussed above, relying on intrinsic and extrinsic evidence, Patent Owner attempts to read into the claims structures that they do not recite. Independent claims 1 and 15 recite only executing instructions to receive an account number, applying a rule to alter the account number to an expected form, and transmitting the altered account number. The specification notes that the claimed steps can be implemented using a general purpose computer, or other processing device capable of executing programmed instructions. Ex. 1001, col. 3. ll. 58–65. Thus, the limitations recited in claims concerning the payment processor and the payment processor computer are generic computer limitations. Generic computer limitations do not make an otherwise ineligible claim patent-eligible. DDR Holdings, 2014 WL 6845152, at *9.” slip op. at 12

  • ExcludeMotion to exclude, deniedOther

    “of the rebuttal testimony of Petitioner’s expert Michael Shamos, Ex. 1021 (“Shamos Decl.”), as beyond the scope of the testimony of Patent Owner’s experts. Paper 40 (“Mot. to Exclude”). Petitioner identifies subject matter the challenged paragraphs of the Shamos Declaration rebut. Paper 41 (“Opp. to Mot. to Exclude”). In reaching our decisions in this proceeding, we do not cite or rely on the portions of the testimony in the Shamos Declaration that Patent Owner moves to exclude. Therefore, Patent Owner’s Motion to Exclude is dismissed.” slip op. at 16

  Patent outcomesUS 7,996,311 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 7,996,311
• Metavante Corporation / Fidelity National Information Services, Inc. v. Checkfree CorporationAll claims unpatentable
  PTAB · Dec 22, 2014 · CBM2013-00032 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–60 are unpatentable under § 101 because they claim an abstract intermediary function implemented with routine computer activity.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner’s expert Michael Shamos. Paper 41 (“Mot. to Exclude”). Petitioner opposes Patent Owner's Motion to Exclude on the basis that these statements Patent Owner moves to exclude are proper rebuttal to Patent Owner's experts. Paper 42 (“Opp. to Mot. to Exclude”). Our Final Written Decision does not cite or rely on any of the subject matter Patent Owner seeks to exclude. Therefore, we dismiss Patent Owner’s Motion to Exclude.” slip op. at 23

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

    “We agree with Petitioner. Claim 1 recites the single step of executing computer implemented instructions with one or more processors. Claim 1 recites that those instructions include ones in which the clearinghouse receives a payment request (or a request to add a payee to a payer’s pick list), accesses billing information stored in a database, identifies payee bill presentment information from the accessed information, and generates and transmits to the payer a notification of the bill presentment information.1 Although the one or more processors may also execute instructions to perform routine ancillary functions for the central clearinghouse to receive the request, access the database and transmit the information, there are no such instructions or structures recited in claim 1. Claim 1 of the ’749 Patent does not recite any structure for the bill presentment and payment central clearinghouse—nor does claim 1 recite any particular software instructions, any particular processors, any particular configuration or interconnection of the recited “one or more processors,” or any other structure to execute the claimed functions called for in the instructions. Thus, the bill presentment and payment central clearinghouse in claim 1 must be construed without structural limitations, other than being programmed to carry out the recited functions.” slip op. at 5

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

    “The ’749 Patent describes the payee-pick-list as a list of payees the user may plan to pay electronically and states that each user’s individual list is stored in the form of a database in a memory associated with the central clearinghouse station. Ex. 1001, col. 16, ll. 49–54. We disagree with Patent Owner’s characterization of the payee-pick-list as a data structure merely because it is used directly by the programmed central clearinghouse computer system. PO Resp. 40. Claim 1 recites receiving a request to add a payee to a pick-list associated with the payer, but does not recite any limitations concerning the pick-list. The specification refers to a database known as a payee-pick-list that includes certain information such as payee identifiers, street addresses, cities, states, zip codes, phone numbers and consumer account numbers. Ex. 1001, col. 16, 61–65. Nothing in this list of common information associated with the payee requires any particular data structure. Thus, we do not import a data structure limitation into the construction of "payee-pick-list” or "pick-list."” slip op. at 7

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “patentable subject matter. First, we determine whether the claims at issue are directed to one or more patent-ineligible concepts, i.e., laws of nature, natural phenomenon and abstract ideas. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–96 (2012)). If so, we then consider whether the elements of each claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself. Id. Thus, the first step in our analysis is to consider whether the claims of the ’749 Patent recite a patent-ineligible concept. Patent Owner describes the central clearinghouse as a necessary intermediary between payers and payees interacting with each user station and handling EBPP interactions between thousands, if not millions, of such stations, which themselves are computers. Id. at 22. In Alice, the Supreme Court considered claims drawn to a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk and concluded that on their face, claims drawn to the concept of an intermediated settlement, like the hedging in Bilski, is an “abstract idea” beyond the scope of § 101. Id. at 2355–57.2 We conclude that the claims of the ’749 Patent, which are directed to a clearinghouse that acts as an intermediary between a payer and the payee by notifying the payer about payee bill presentment information, are not directed to patent-eligible subject matter. The steps recited in claim 1, and in each 2 In Bilski v. Kappos, 561 U.S. 593 (2010), the Supreme Court found unpatentable, as abstract ideas, claims drawn to hedging against the financial risk of commodity price fluctuations where the claims recited the steps of initiating a series of financial transactions between commodity providers and consumers, identifying market participants with a counter-risk for the same commodity and initiating a series of risk balancing transactions between those market participants and the commodity provider. of independent claims 20, 40, 59, and 60, are carried out by a clearinghouse that receives a request from a payer to provide payee information or add a payee to the payer’s pick-list. The claims recite receiving a request and are not limited to any particular number of such requests. The clearinghouse retrieves the payee information from a database and generates and transmits a responsive notification message to the payer. Thus, independent claims 1, 20, 40, 59, and 60 are drawn to the patent-ineligible concept of executing instructions in which an intermediary receives a request, retrieves information from a database, and transmits the information to the requester.” slip op. at 9

  Patent outcomesUS 7,792,749 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 7,792,749
• Nuvasive, Inc. v. Warsaw Orthopedic, Inc.All claims unpatentable
  PTAB · Dec 17, 2014 · IPR2013-00395 · APJ Lora M Green · IPR · Final written decision

  Claims 1–6 are unpatentable under § 103(a) over both Senter and Brantigan ’035, and Michelson ’037, Wagner, and Brantigan ’035.

  RulingsFinal written decision

  • Skill levelOther

    “A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 11

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

    “As demonstrated by the embodiment shown in Figure 14, reproduced above, however, there may be more than a single bearing surface. The claim language only requires that those bearing surfaces be convex. We agree, therefore, with Petitioner that the claim language does not require that the convexity be along the entire length of the implant. Moreover, independent claims 1 and 4 only require that the “upper and lower bearing surfaces . . . being convex along the entire length of said upper and lower bearing surfaces.” There is nothing in the claim language that requires that the convexity conform to the anatomic endplates of the adjacent vertebrae. The Specification does not provide a definition of convexity as conforming to the anatomic endplates of the adjacent vertebrae with reasonable clarity, deliberateness, and precision. We decline, therefore, to construe the convexity of the bearing surfaces as requiring that the convexity conform to the anatomic endplates of the adjacent vertebrae. Thus, we construe “upper and lower bearing surfaces” as requiring that the bearing surface itself must be convex along the entire length of the bearing surface, but as the implant may have more than one upper bearing surface, as well as more than one lower bearing surface, the convexity need not be along the entire length of the implant. Moreover, the convexity need not conform to the anatomic endplates of the adjacent vertebrae.” slip op. at 10

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

    “Evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006). “For objective evidence to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). In order to establish a proper nexus, the patent owner must offer proof that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter. See Microsoft v. Proxyconn, Inc., IPR2012-00026, slip op. at 4 (PTAB Mar. 8, 2013) (Paper 32). Patent Owner, however, has not attempted to establish a nexus between the claims of the ’696 and the CLYDESDALE® Spinal System. Thus, Patent Owner’s arguments and evidence as to commercial success are entitled to little or no weight. slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “Moreover, as taught by Brantigan ’035, the sharp apexes of the nubs bite into the vertebrae bone, and, thus, once the implant is in the proper position, it will not shift from that position. Ex. 1005, 21:1–5. We, thus, credit Dr. Brantigan’s testimony that the ratchetings would not propel an implant forward, but would resist forward movement of the implant, as well as back-out of the implant, after implantation. Ex. 1017 ¶ 18. Thus, we agree with Petitioner that Senter does not teach away from the combination with Brantigan ’035.” slip op. at 19

  Patent outcomesUS 8,444,696 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,444,696
• Nuvasive, Inc. v. Warsaw Orthopedic, Inc.All claims unpatentable
  PTAB · Dec 17, 2014 · IPR2013-00396 · APJ Lora M Green · IPR · Final written decision

  Claims 7–12 are unpatentable under § 103(a) as obvious over the combination of Steffee, Michelson ’037, and Kim.

  RulingsFinal written decision

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

    “Patent Owner argues that ratchetings should be construed as “facets that are angled to afford forward movement of the spinal fusion implant in one direction and facets that are angled to prevent the spinal fusion implant from backing out in the opposite direction.” PO Resp. 17 (citing Ex. 2005 ¶ 38). Petitioner does not present an alternate construction. We determine that Patent Owner’s construction is consistent with the Specification and the language of the claim itself, and, thus, we adopt that construction.” slip op. at 10

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

    “a hole that extends from the upper bearing surface to the lower bearing surface that is of sufficient size to permit growth of bone therethrough. Stated differently, “opening,” as required by challenged independent claims 7 and 10, requires that the hole be vertical in the implant as placed. While Steffee does not teach a vertical opening, it does teach that the implant has a plurality of horizontal openings that extend between the side surfaces to allow for blood flow, as well as bone growth from one side of the implant to the other. Ex. 1108, 2:64–67. Michelson ’037 also teaches an implant that may contain a plurality of cells or openings of 1–3 mm, into which fusion-promoting materials may be placed, allowing a bony bond between the adjacent vertebrae to each other, as well as to the implant. Ex. 1109, 8:10–21. Thus, the openings of Steffee and the opening of Michelson ’037 serve the same purpose—that is, to allow the growth of bone to aid in bonding the implants to the adjacent vertebrae. The addition of vertical openings as taught by Michelson ’037 to the implant of Steffee would have been a predictable use of an element taught by the prior art according to its established function. KSR, 550 U.S. at 417.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “The obviousness inquiry, however, does not require an advantage or an improvement in properties. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[A] finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed by the patent applicant is the preferred, or most desirable, combination.”); see also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[a] known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.”). Moreover, the fact that Brantigan ’757, referenced by Steffee, discloses horizontal slots, but Steffee did not adopt them, does not amount to a teaching away from the use of horizontal slots. See Fulton, 391 F.3d at 1201 (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any . . . alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”).” slip op. at 22

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

    “Michelson ’037 and Kim as compared to Steffee, Petitioner engaged in improper hindsight in combining Steffee with Michelson ’037 and Kim to arrive at the implant of challenged independent claims 7 and 10. PO Resp. 46. We disagree. Although the Supreme Court has cautioned that it may be valuable to identify a particular reason to combine two references, the obviousness analysis is not limited to this inquiry. See KSR, 550 U.S. at 418–19. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Similarly, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. The combination of Steffee, Michelson ’037, and Kim is no more “than the predictable use of prior art elements according to their established functions.” Id.” slip op. at 24

  Patent outcomesUS 8,444,696 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,444,696
• Groupon, Inc. v. Blue Calypso, LLCAll claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00034 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1–5 are unpatentable as anticipated by Paul; the Board rejected the Ratsimor anticipation and obviousness grounds because Ratsimor was not proven publicly accessible.

  RulingsFinal written decision

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

    “1. “subsidy” Independent claim 1 recites “recognizing a subsidy, according to the subsidy program, for the subscriber.” The ’670 patent does not set forth a special definition for “subsidy.” Accordingly, we look to the ordinary meaning of the term “subsidy”—financial assistance given by one to another.5 The ’670 patent’s use of “subsidy” is consistent with its ordinary meaning. Specifically, the ’670 patent describes an advertiser setting up a subsidy program to subsidize communication fees, offer product discounts, generate and accumulate “reward points” for subscribers, or mitigate or defer other expenses of the subscriber. Ex. 1001, col. 3, ll. 39-45 (referring to Fig. 2). These examples are financial in nature. Product discounts reduce the monetary cost of a financial transaction, reward points are a form of currency, and mitigating or deferring expenses reduces the monetary cost of a financial transaction or postpones the monetary cost of a financial transaction, respectively. Also, the ’670 describes, as part of a subscriber setup process, an intermediary presenting, to a subscriber for selection, “subsidy programs available, including the criteria for continued subsidy and levels of subsidy.” Ex. 1001, col. 4, ll. 59-65 (referring to Fig. 3); see id. at col. 4, ll. 16-17. In an example of a bi-directional endorsement process, the ’670 patent further describes an advertiser calculating the amount to” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We agree the preamble is limiting. In general, a preamble is construed as a limitation “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) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). When the limitations in the body of the claim “rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Notably, the preamble of independent claim 1 requires “a source communication device possessed by a subscriber,” “a destination communication device possessed by a recipient,” and “an advertisement.” The body of claim 1 recites “the source communication device,” “the subscriber,” “the destination communication device,” and “the 17 advertisement,” all of which rely on and derive antecedent basis from the preamble of claim 1. Accordingly, we conclude that the preamble of independent claim 1 is entitled to patentable weight.” slip op. at 17

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

    “Having reviewed the parties’ arguments and supporting evidence, we do not find sufficient evidence that the Ratsimor paper was accessible publicly and, therefore, we conclude the Ratsimor paper is not a printed publication under 35 U.S.C. § 102(b). Section 102 states: “A person shall be entitled to a patent unless . . . (b) the invention was . . . described in a printed publication . . . more than one year prior to the date of the application for patent . . . .” 35 U.S.C. § 102(b) (2011). “The statutory phrase ‘printed publication’ has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination.” In re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986). As such, a printed publication under 35 U.S.C. § 102(b) may be an electronic publication, such as the Ratsimor paper is purported to be. See In re Wyer, 655 F.2d 221, 226 (CCPA 1981) (holding that an electronic publication is considered to be a “printed publication” “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 and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation”).” slip op. at 22

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

    “as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371; see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“The [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.”). Although the elements must be arranged 30 or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”).” slip op. at 30

  Patent outcomesUS 8,457,670 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 8,457,670
• Chicago Mercantile Exchange, Inc. v. 5th Market, Inc.All claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00027 · APJ Michael R Zecher · CBM · Final written decision

  Claims 1–23 and 41–49 are unpatentable: claims 1–23 are indefinite, and claims 1–4, 6–23, and 41–49 are obvious; the motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “considered, including “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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. CME’s expert witness, Dr. Pirrong, attests that a person with ordinary skill in the art would be an individual who possesses the following: (1) a bachelor’s degree in computer science, or another quantitative field such as mathematics, statistics, economics, or finance; (2) two to five years of work experience in any one of the aforementioned areas; and (3) an understanding of the operation of markets for financial instruments, including computerized and electronic markets. Ex. 1005 ¶ 44.” slip op. at 24

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

    “We are not persuaded by 5th Market’s proposed claim construction of the claim phrase “external price feed” because its construction of “outside” the network is overly narrow. 5th Market does not direct us to a disclosure in the Specification of the ’419 patent that suggests “outside” the network should be limited to a marketplace trading, but not aggregating orders for, the same securities or items as the originating CORE trading engine, or a diverse marketplace that does not trade or aggregate the same securities or items, as the originating CORE trading engine. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be 15 “extraneous,” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). We decline to adopt 5th Market’s construction of “outside” the network as the broadest reasonable interpretation, as it would import extraneous limitations into the claims, and it would be inconsistent with the Specification of the ’419 patent. 5th Market’s attempt to limit “outside” the network to the two types of marketplaces identified above is not necessary to give meaning to the claim phrase “external price feed,” and should not be read into the claims that recite this feature. We maintain that the broadest reasonable interpretation of the claim phrase “external price feed” is “price data received from outside of the conditional order transaction network.” As we explained in the Decision to Institute (Dec. 20–22), this claim construction is consistent with the ordinary and customary meaning of “external,” as would be understood by one with ordinary skill in the art, in light of the ’419 patent.” slip op. at 15

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)§112(f) appliesDecided for petitioner

    “When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, 3 the corresponding structure of a means-plus-function limitation must be more than simply a general-purpose computer or microprocessor to avoid impermissible functional claiming, unless certain narrow exceptions concerning generic computer functions apply. Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); see In re Katz Interactive Call Proc. Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011). That is, the specification must disclose “enough of an algorithm to provide the necessary structure under § 112, ¶ 6” or a disclosure that can be 3 Section 4(c) of the AIA re-designated 35 U.S.C. § 112 ¶ 6 as 35 U.S.C. § 112(f). Nonetheless, because the ’419 patent has a filing date before September 16, 2012 (the effective date of the AIA), we refer to the pre-AIA version of 35 U.S.C. § 112. 18 expressed in any understandable terms, e.g., a mathematical formula, in prose, or as a flowchart. Finisar Corp. v. The DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). Simply reciting a claimed function in the specification, and saying nothing about how the computer or processor ensures that such a function is performed, is not a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009). According to the Specification of the ’419 patent, Table 1 includes conditions that are available for input by subscribers, viewable by other subscribers, and executed by the system’s trading engine, e.g., the CORE trading engine illustrated in Figure 1. Ex. 1001, 17:20–23. Although the CORE trading engine is tantamount to a general purpose computer, there is no explicit disclosure that explains how the conditions included in Table 1 are used to compare orders. For instance, Table 1 includes, amongst other conditions, price, quantity, minimum quantity, cap, and a collar kill that may be used to compare orders. Id. at 17:25–18:20. Table 1, however, does not disclose a well-defined or otherwise recognizable sequence of steps that uses these conditions to compare orders. See Blackboard, 574 F.3d at 1384. Absent such a disclosure, we are not persuaded that the Specification of the ’419 patent discloses a specific algorithm that transforms an otherwise general purpose computer into a special purpose computer programmed to perform the recited function of “comparing.” See Finisar, 523 F.3d at 1340. 19 In summary, because Federal Circuit precedent dictates that the corresponding structure for performing a specialized function, as here, cannot just be a general purpose computer, the Specification of the ’419 patent fails to disclose sufficient structure for performing the recited function of “comparing.”” slip op. at 18

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “Table 1, that purportedly identify the corresponding structure for performing the recited function of “comparing.” PO Resp. 76–77 (citing Ex. 1001, 17:20–18:20; Ex. 2008 ¶ 86). 5th Market argues that these disclosures in the Specification collectively amount to a structure in the form of an algorithm that transforms an otherwise general purpose computer into a special-purpose computer programmed to perform the recited function of “comparing.” Id. at 77–78 (citing Ex. 2008 ¶ 87). In its Reply, CME contends that the ’419 patent does not disclose an algorithm for comparing orders, nor does it explain how a computer may be programmed to compare algorithmic orders with algorithmic or non-algorithmic orders. Pet. Reply 15. As we explained in the claim construction section above, upon reviewing the disclosures in the Specification of the ’419 patent relied upon by 5th Market in its Patent Owner Response, the Specification of the ’419 patent fails to disclose sufficient structure for performing the recited function of “comparing.” In other words, the conditions included in Table 1 of the ’419 patent, by themselves, do not set forth a well-defined or otherwise recognizable sequence of steps for comparing orders and, therefore, do not amount to a specific algorithm that transforms an otherwise general purpose computer into a special purpose computer programmed to perform the recited function of “comparing.” See Blackboard, 574 F.3d at 1384; Finisar, 523 F.3d at 1340. Consequently, we conclude that CME has demonstrated by a preponderance of evidence that claims 1–23, each of 21 which recites the claim phrase “means for comparing,” are indefinite under § 112 ¶ 2.” slip op. at 21

  Patent outcomesUS 6,418,419 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 6,418,419
• Tandus Flooring, Inc. v. Interface, Inc.All claims unpatentable
  PTAB · Dec 8, 2014 · IPR2013-00333 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 6-15, 20-39, and 43-58 were shown unpatentable over Pacione and the listed Kinoshita combinations; cancellation was granted for claims 1-5, 16-19, and 40-42, while substitute claims 59 and 60 were denied.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “On the whole, we are not persuaded that the ordinary and customary meaning, under the broadest reasonable interpretation, of the “shear strength” limitation is limited to lateral movement or lateral gaps, because there is insufficient evidence that such a narrow interpretation is appropriate. See E-Pass 9 Ex. 1027 (Definition gap (n)(4), Webster’s Ninth New Collegiate Dictionary, 1986 (“a separation in space”); Definition gap (n)(1), Webster’s II New College Dictionary, 1996 (“an opening as in a wall”)). 10 See Ex. 2052, 102:3104:19. We note Patent Owner contends that Mr. Gray’s testimony is biased and contradictory. Paper 57, PO Mot. for Observations 2, 7. We also note that Petitioner responded to these contentions by showing testimony regarding the level of knowledge of Mr. Gray and that the testimony is consistent with Petitioner’s allegations that the word “gap” includes lateral separation, but does not exclude vertical separation. Paper 63, Pet. Resp. to PO Mot. for Observations 12, 910. We have taken Patent Owner’s contentions and Petitioner’s response into consideration when determining the weight accorded to Mr. Gray’s testimony. Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1368 (Fed. Cir. 2003) (Where no explicit definition for the term “electronic multi-function card” was given in the specification, this term should be given its ordinary meaning and broadest reasonable interpretation; the term should not be limited to the industry standard definition of credit card where there is no suggestion that this definition applies to the electronic multi-function card as claimed, and should not be limited to preferred embodiments in the specification.). Turning to the disputed claim language, as we stated in our Decision on Institution, we determine that the word “sufficient” introduces a relative amount to the recited “shear strength.” The phrase “shear strength” is the capacity of a material to resist shear.11 And “shear” is “a strain resulting from applied forces that cause or tend to cause contiguous parts of a body to slide relatively to each other in a direction parallel to their plane of contact.”12 Applying the plain and ordinary meaning to the claim language, therefore, the layer of adhesive must have the adequate capacity to resist shear. The layer’s capacity, however, does not narrow the claimed function of including such a layer in the connector to prevent only lateral movement of adjacent tiles and lateral gaps from forming after installation. The plain language of the claims confirms this interpretation because the result of providing the “sufficient shear strength” at the adhesive layer is to 11 Definition shear strength, WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED (1993), available at http://lionreference.chadwyck.com (Dictionaries/Webster’s Dictionary) (Exhibit 3001). 12 Definition shear, WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED (1993), available at http://lionreference.chadwyck.com (Dictionaries/Webster’s Dictionary) (Exhibit 3002). prevent adjacent tiles from moving relative to the connector or each other. This claim language indicates that abutting tile edges are prevented from moving “in a direction parallel” to the plane of contact—which would include both lateral and vertical movement. For example, lifting may be prevented when providing a resistance to shear sufficient to allow for the horizontal strain caused by suction, traffic, and any other dragging force.” slip op. at 10

  • Skill levelSkill level board ownDecided for patent owner

    “We are persuaded that the level or ordinary skill in the art combines the knowledge of carpet tile installation and adhesive tape characteristics. The prior art of record, particularly Kinoshita, describes the solution of laying carpet tiles using adhesive tape pieces to avoid laying adhesive on the floor. Ex. 1006 ¶¶ 12, 5. Pacione also describes installation of carpet modules without substantial attachment to the floor. Ex. 1004, Abstract. Therefore, we agree with Patent Owner that the level of ordinary skill in the art includes knowledge of carpet tiles and their installation methods. We disagree with Patent Owner, however, in that the level or ordinary skill in the art would not include expertise in adhesive tape characteristics. See PO Resp. 18 (arguing that Dr. Jensen is not a POSITA because his expertise relates to pressure sensitive adhesive tapes). For instance, Kinoshita discloses the use of removable, single-side or double-sided adhesive tape that is pressed to the rear of the carpet tiles. Ex. 1006 ¶¶ 7–8, 12. Kinoshita recognizes that the adhesive must be of sufficient strength to stick to the rear of the carpet tile, but also allow for repositioning. Id. ¶ 12. Details of the backing for pressure sensitive adhesive tape are part of the prior art of record, such as Robinson (Ex. 1011). For example, Robinson describes the properties and characteristics to make the adhesive tape backing suitable for pressure-sensitive adhesive tapes. Id. at col. 1, l. 46col. 2, l. 44. Therefore, it is appropriate that we consider, as part of the level of ordinary skill in the art, knowledge of adhesive tape appropriate for carpet tile installations as described in Kinoshita, as well as the knowledge of the properties and characteristics of pressure-sensitive tapes suitable for the use in carpet tile installations.” slip op. at 15

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Lastly, we credit the testimony of Dr. Tippett and Dr. Jensen in that the Kinoshita disclosure confirms the knowledge of a person of ordinary skill in the art regarding the use of adhesive tapes for carpet tile installations. For the reasons that follow, we are not persuaded by Patent Owner’s characterizations of their testimony that engineering adhesive tape for carpet tile installations was vastly complex or would involve extensive trial and error. See PO Resp. 2325. First, we acknowledge that Petitioner does not rely solely on Kinoshita as disclosing all the attributes of the adhesive tape. Indeed, the Dr. Tippett Declaration clarifies that his opinion relies on the disclosures of Kinoshita to the degree it describes the configuration and performance of the installed carpet units, e.g., a “floating” installation, edge-to-edge configuration, unitary installation, etc. Ex. 1018 ¶¶ 13.113.2. We credit Dr. Tippett, who has expertise and knowledge of carpet tile installations, when he declares that the installation described in Kinoshita would have no “gapping” at the seams, and, therefore, the tape, being single-sided, would have to include an adhesive that would resist movement of the tiles. Id. ¶¶ 13.313.5. It makes sense that a method of carpet tile installation for commercial or household use would aim for carpet tiles that, after installation, remain abutted. See Ex. 1006 ¶ 1 (“tile that is used in offices and homes”). Dr. Tippett’s Declaration further states that Kinoshita supports his conclusions of the basic requirements for the use of adhesive tape in a carpet tile installation. Ex. 1018 ¶ 13.6. To support his conclusions, Dr. Tippett cites to Kinoshita teaching pre-connected tiles, which are installed as a block of tiles. Id. For this installation to be successful, the adhesive tape of Kinoshita, according to Dr. Tippett, “must include an adhesive with sufficient shear strength and sufficient peel strength to prevent movement of the tiles relative to one another and/or the tape pieces.” Id. The Dr. Jensen Declaration also concludes that the teachings in Kinoshita confirm that a person of ordinary skill in the art would select an adhesive tape with the recited shear strength. First, Dr. Jensen opines that suitability for the intended purpose is a core consideration when selecting or designing tape for a given application. Ex. 1020 ¶ 17.2. His Declaration then lists the criteria to consider when selecting a tape that would maintain the Kinoshita carpet units connected and abutting (in an edge-to-edge configuration). Id. ¶¶ 17.317.5 (listing adhesive compatibility with the tile backing with suitability for the environment and duration of use, as well as providing sufficient wetting and adequate peel and adhesion). Once Dr. Jensen arrives at the basic requirements of an adhesive tape selection, he looks to Kinoshita once more to confirm that Kinoshita recognizes these requirements. Id. ¶¶ 17.617.11 (establishing that, because Kinoshita discloses multiple pre-connected tiles being handled as a block, the adhesive tape would need to have sufficient shear adhesion and peel adhesion to prevent the carpet tiles from pulling or twisting apart from each other while the tiles are moved). Based on the cited testimony, we are not persuaded that Petitioner is relying on a theory of inherency with regard to whether Kinoshita discloses the “sufficient shear strength” limitation. Therefore, the arguments by Patent Owner rebutting the alleged “inherency” are unpersuasive. See PO Resp. 2224. Petitioner relies on what Kinoshita teaches to a person of ordinary skill in the art. That person is a person of ordinary creativity, not an “automaton.” KSR, 550 U.S. at 421. We “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Therefore, based on the evidence presented, we agree with Petitioner that Kinoshita teaches, to a person of ordinary skill in the art, the use of adhesive tape for carpet tile installations where the adhesive has “sufficient shear strength,” per our construction of this phrase.” slip op. at 31

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

    “teach the “sufficient shear strength” limitation. PO Resp. 2728. According to Patent Owner, the disclosure in Pacione is no more than a suggestion to try adhesive and is not an enabling disclosure. Id. We agree with Patent Owner that the “sufficient shear strength” limitation is recited as a property of the layer of adhesive. See id. at 28 (Patent Owner arguing that the rigidity and stability are characteristics of Pacione’s anchor sheets, not the adhesive). Nevertheless, the “sufficient shear strength” property results in connector that prevents adjacent tiles from moving relative to the connector or each other and thereby creating gaps between the adjacent tiles after installation. That is, an adhesive would have the requisite shear strength when the connector accomplishes the prevention of the relative movement that creates gaps. In Pacione, we find that the anchor sheets, the recited “connector,” are attached with a detachable attachment that could also be an adhesive. Ex 1004, col. 4, ll. 5155. With Pacione’s anchor sheets using the disclosed detachable attachment (including the adhesive option) the installed anchor sheets form a contiguous floor covering having sufficient rigidity and horizontal plane stability or shear force stability. Id. at col. 4, ll. 1520, col. 5, ll. 39. We find this disclosure particularly significant because it specifically attributes the shear force stability to the installed anchor sheets under the carpet pieces, i.e., the recited “connectors” with the layer of adhesive. It follows from this express disclosure of shear force stability that the installed carpet tiles are stable in the horizontal plane, such that their movement with respect to each other, and with respect to the anchor sheets, would be restricted. Patent Owner fails to point us to evidence that Pacione’s anchor sheets, under carpet tiles, exhibiting the disclosed shear force stability, do not prevent the recited relative movement that creates gaps as recited. As for the argument that Pacione is not enabled with regard to the disclosure of using adhesive in place of hook and loop, we have not been directed to facts sufficient to show that such a disclosure would not inform one of ordinary skill in the art how to make the claimed connector. See In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985) (“Such possession is effected if one of ordinary skill in the art could have combined the publication’s description of the invention with his [or her] own knowledge to make the claimed invention.”). It is undisputed that Pacione discloses replacement of the hooks with adhesive. Patent Owner makes the point, however, that Pacione does not disclose the characteristics of the adhesive. PO Resp. 27. The question for us to decide is whether Pacione’s disclosure of adhesive is sufficiently enabled to allow a person of ordinary skill in the art to make the claimed connector. The lack of details regarding adhesive properties, however, does not negate that Pacione discloses the adhesive application together with anchor sheets that achieve shear force stability when installed. Furthermore, the testimony of Mr. Benny Wood, proffered by Patent Owner to support its contention, does not persuade us that disclosure of adhesive in Pacione is not enabling. Id. (citing Ex. 2017 ¶ 131). That testimony focuses on whether Pacione teaches an adhesive that would prevent lateral movement, a narrow view of the claims that we do not adopt per our claim construction discussion above. See Ex. 2017 ¶ 131. Furthermore, in his cross-examination, Mr. Wood did not dispel the notion that Pacione’s disclosure of adhesive would be sufficient, because his reasons for opining that the adhesive is not taught sufficiently are not relevant to the scope of the claim. For example, Mr. Wood” slip op. at 23

  Patent outcomesUS 8,381,473 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,381,473

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.