- PTAB · Nov 29, 2024 · IPR2024-00133 · APJ Scott B Howard · IPR · Remand
On remand, the Board instituted IPR on claims 1–10 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Sturman and Ho.
RulingsRemand decision- RemandOther
“(“Decision Denying Institution” or “DDI”). Petitioner filed a request for Director Review and the Director vacated and remanded our Decision Denying Institution. Paper 11 (Petitioner’s Request for Director Review); Paper 12 (“Remand Dec.” or “Remand Decision”). Specifically, the Director directed that we: shall issue a new decision on institution resolving the claim construction of “a non-promotional background object.” Consistent with Phillips v. AWH Corp., 415 F.3d 1303, 1313–14 (Fed. Cir. 2005), the Board should resolve the proper meaning of that term by first assessing the intrinsic evidence, and then consulting extrinsic evidence if necessary. See, e.g., Samsung Elecs. Co., Ltd. v. Slyde Analytics, LLC, IPR2024-00040, Paper 14 at 7–8 (Vidal Aug. 2, 2024) (discussing the Phillips framework). The Board shall consider all remaining necessary issues, and determine whether to institute trial consistent with this decision. Id. at 7–8 (footnote omitted).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Conclusion Regarding Claim 1 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Sturman and Ho. 4. Analysis of Claims 2–10 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’089 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. See Prelim. Resp. 26–36. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 42
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“draws a distinction between foreground and background objects. Specifically, the prosecution history makes it clear that foreground objects are “in the forefront of the game play as primary objects to be manipulated or used during game play” and that background objects are “outside the primary focus of game play and as unexpectedly interactive components.” Ex. 1002, 85. However, whether an object is “outside the primary focus of game play and as unexpectedly interactive components” is based solely on the subjective perspective of the user. That is, what one user may consider a primary focus or expected object, another might consider outside the primary focus and unexpected. As the Director made clear in the Remand Decision, it is “improper[]” to have a claim construction “based on the subjective perspective of a user.” Remand Dec. 7; see also Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1353 (Fed. Cir. 2001) (“We are not prepared to assign a meaning to a patent claim that depends on the state of mind of the accused infringer.”). Accordingly, we cannot and do not adopt that as our construction of the term background. Not finding a construction of “background” based on the intrinsic evidence, we turn to the extrinsic evidence. See Remand Dec. 7 (“[T]he Board should resolve the proper meaning of that term by first assessing the intrinsic evidence, and then consulting extrinsic evidence if necessary.” (emphasis added)). Specifically, as part of the Decision Denying Institution, we considered various dictionary definitions of the word “background.” According to those definitions, “background” refers to “[t]he part of a pictorial representation that appears to be in the distance and that provides relief for the principal objects in the foreground.” Ex. 3002 (AMERICAN HERITAGE DICTIONARY); see also Ex. 3003 (“the scenery or ground behind something,” “the part of a painting representing what lies behind objects in the foreground”) (MERRIAM-WEBSTER DICTIONARY). Consistent with those dictionary definitions, we construe the term “background” to mean the part of a pictorial representation that is not in the foreground. The prosecution history provides more useful guidance as to what a “non-promotional” object is. As the applicant argued in the Amendment discussed above, a non-promotional object is one “which does not have an ‘area’ in which advertisements directly appear, but instead represents a ‘hot spot’ that, upon activation, causes ‘hidden promotional content’ to then appear.” Ex. 1002, 85–86. In other words, a non-promotional object does not display a promotional message unless the hotspot is activated. This understanding of the meaning of non-promotional is consistent with an earlier argument (Ex. 1002, 113–25) the applicant made during the prosecution of the ’089 patent.12 At that time, the applicant argued: In an exemplary embodiment, the location in-game may be represented by a non-promotional object, such as a blank chalk board depicted in the background of the gaming environment. See Applicant’s Specification at ¶ [0045]. Upon activating the hot spot (e.g., by throwing a dart at the chalk board), a promotional message may be drawn on the chalk board and displayed to the user. See id. In other words, Applicant’s amended claims 15 and 22, inter alia, may present promotional content once the game user activates, unknowingly, a “hot spot” associated with a non-promotional object—the non-promotional object is not an ordinary or visible place for advertisement, the 12 This argument was made on December 2, 2011, which is prior to the amendment adding the term background on July 15, 2013. Compare Ex. 1002, 117 (then pending claim 15 without the word “background”) with id. at 80 (amendment adding “background” to claim 15). user does not know that the object has a hidden hot spot, and the user does not know that activating the hidden “hot spot” will display promotional content. Ex. 1002, 122 (emphasis added).” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Moreover, even if we did consider only the specific references addressed in the Preliminary Response, we would not reach a different outcome. Patent Owner focuses on a high-level comparison of the references. See Prelim. Resp. 13–19. Such high-levels of similarity are to be expected as all of the references involve advertising in computer game programs. But such high-level similarity is not sufficient. See Juniper Networks, Inc. v. Swarm Tech. LLC, IPR2021-01445, Paper 15 at 16 (PTAB March 2, 2022) (Institution Decision) (“The issue is not just whether the same elements can be found in each of the references, but whether the elements function the same way. That is, even though Leong and Bates have the same elements, that does not mean that the elements interact with each other the same way or perform the same functions as recited in the claims.”); see also Advanced Bionics, IPR2019-01469, Paper 6 at 15 (holding that prior art is substantially the same if “Petitioner relies on [the new art] in substantially the same manner as the Examiner cited [the previous art] during prosecution such that [the new art] discloses substantially the same information as [the previous art] in relevant part.”); Nokia of Am. Corp. v. Alexander Soto, IPR2023-00680, Paper 18 at 7 (PTAB Mar. 28, 2024) (Vidal) (determining the Board erred when “rather than identify material, substantive overlap between the arguments presented in the Petitions and those previously presented to the Office, the Board’s analysis relied on its discussion of high-level similarities but lacked detailed reasoning”); Wolfspeed, Inc. v . The Trustees of Purdue University, IPR2022-00761, Paper 13 at 7 (PTAB Mar. 30, 2023) (Vidal) (vacating the Board’s decision when the “analysis of the first part of the Advanced Bionics framework did not consider sufficiently the material differences between” the art the Office previously considered and the art the Petition cited). Nor were any of Petitioner’s Reply arguments improper. We expressly authorized Petitioner to respond to Patent Owner’s arguments that the prior art relied on in the Petition was substantially the same as prior art that was considered. Ex. 3005 (Email from the Board to the parties) (“Petitioner is authorized to file a preliminary reply brief addressing 1) Patent Owner’s arguments under 35 U.S.C. 325(d). . . .”). Moreover, given the facts of this proceeding, it is not reasonable to require Petitioner to anticipate “substantially the same prior art” arguments and address them in the Petition. Accordingly, Petitioner’s argument is a proper reply argument. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,688,089 - Weber, Inc. v. Provisur Technologies, Inc.Some claims unpatentablePTAB · Oct 21, 2024 · IPR2020-01557 · APJ Jon M Jurgovan · IPR · Remand
On remand, claims 1–4 and 8–11 were held obvious; claims 5–7 were not shown unpatentable because the asserted combinations did not establish claim 5’s drive-roller limitation.
RulingsRemand decision- RemandFwd mixedMixed
“Specifically, the Federal Circuit “reverse[d] the Board’s finding that Weber’s operating manuals do not qualify as printed publications.” Weber, 1 Patent Owner also submitted redacted versions of its Preliminary Response, Response, and Sur-Reply. Papers 8, 24, 48. The redactions relate to information subject to our Protective Orders. Papers 13, 57. 92 F.4th at 1069. The Federal Circuit further held that the prior art disclosed the “disposed over” limitation of claim 1 as properly construed, as well as the “stop gate” limitation of claim 1. Weber, 92 F.4th at 1069–1072. In addition, the Federal Circuit indicated it had considered Petitioner’s remaining arguments and found them unpersuasive. Weber, 92 F.4th at 1072. Accordingly, the Federal Circuit vacated our determinations that Petitioner failed to establish unpatentability of claims 1–11 of the ’812 patent, and remanded the case to the Board for further proceedings consistent with its opinion. Weber, 92 F.4th at 1072.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art would have had “(1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on food processing and/or packaging systems (or in a similar field)” or “(2) at least seven years of experience working on food processing and/or packaging systems (or in a similar field).” Pet. 20 (citing Ex. 1003 ¶¶ 26–27). Patent Owner does not contest Petitioner’s definition or provide its own proposal. For purposes of this Decision, we adopt Petitioner’s proposal because Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“disposed over the food article loading apparatus.” The Federal Circuit reversed the construction set forth in the prior FWD and held that the “disposed over” limitation “requires only that the feed apparatus be generally positioned above the loading apparatus.” Weber, 92 F.4th at 1070. We follow the Federal Circuit’s construction of “disposed over” in this decision. We need not provide an express construction for any other claim terms to resolve the dispute before us. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy). We note, though, that in reaching our conclusion, we apply the ordinary and customary meaning to all claim terms. 37 C.F.R. § 42.100(b) (2019).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We agree with Petitioner that the preamble of claim 1 is disclosed by each of the slicing machines disclosed in 2006 904 Operating Manual, Lindee, and Sandberg. Thus, we need not and do not decide whether the preamble is limiting.” slip op. at 19
Patent outcomesUS 10,639,812 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,639,812 - Weber, Inc. v. Provisur Technologies, Inc.All claims unpatentablePTAB · Oct 21, 2024 · IPR2020-01556 · APJ Jon M Jurgovan · IPR · Remand
On remand, claims 1–16 are unpatentable as obvious over both the 2006 904 Operating Manual and Lindee, and the 2010 904 Operating Manual and Lindee.
RulingsRemand decision- RemandOther
“Federal Circuit (“Federal Circuit”) on March 18, 2022. Paper 68. On February 24, 2024, the Federal Circuit reversed-in-part, vacated-in-part, and remanded the prior FWD. Weber, Inc. v. Provisur Tech., Inc., 92 F.4th 1059 (Fed. Cir. 2024). Specifically, the Federal Circuit “reverse[d] the Board’s finding that Weber’s operating manuals do not qualify as printed publications.” Weber, 92 F.4th at 1069. The Federal Circuit further held that the prior art disclosed the “disposed over” limitation of claim 1 as properly construed, as well as 1 Patent Owner also submitted redacted versions of its Preliminary Response, Response, and Sur-Reply. Papers 8, 24, 49. The redactions relate to information subject to our Protective Orders. Papers 12, 58. the “stop gate” limitation of claim 1. Weber, 92 F.4th at 1069–1072. In addition, the Federal Circuit indicated it had considered Petitioner’s remaining arguments and found them unpersuasive. Weber, 92 F.4th at 1072. Accordingly, the Federal Circuit vacated our determinations that Petitioner failed to establish unpatentability of claims 1–16 of the ’436 patent, and remanded the case to the Board for further proceedings consistent with its opinion. Weber, 92 F.4th at 1072.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art (“POSA”) would have had “(1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on food processing and/or packaging systems (or in a similar field)” or “(2) at least seven years of experience working on food processing and/or packaging systems (or in a similar field).” Pet. 18 (citing Ex. 1003 ¶ 26). Patent Owner does not contest Petitioner’s definition or provide its own proposal. For purposes of this Decision, we adopt Petitioner’s proposal because Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“III. CLAIM CONSTRUCTION Claim 1’s limitation 1.2 and claim 9’s limitation 9.3 recite in part “a food article feed apparatus disposed over the food article loading apparatus.” The Federal Circuit reversed the construction set forth in the prior FWD and held that the “disposed over” limitation “requires only that the feed apparatus be generally positioned above the loading apparatus.” Weber, 92 F.4th at 1070. We follow the Federal Circuit’s construction of “disposed over” in this decision. We need not provide an express construction for any other claim terms to resolve the dispute before us. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy). We note, though, that in reaching our conclusion, we apply the ordinary and customary meaning to all claim terms. 37 C.F.R. § 42.100(b) (2019).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“In light of the Federal Circuit’s decision, we agree with Petitioner that the structure and function of the 2006 904 Operating Manual’s product holder and Lindee’s grippers are similar in that they serve to grip food product and guide it to the slicing station. See, e.g., Ex. 1005, 23; Ex. 1006, 18:20–35, Fig. 7A. The two devices differ in their actuation—the 2006 904 Operating Manual uses a ball screw spindle actuator to drive the product holder along the feed path, whereas Lindee uses a timing belt 334 to drive its grippers 151 along the feed path. Ex. 1005, 273–274; Ex. 1006, 18:33–34, Fig. 7A. However, Petitioner presented evidence that “unlike ball screws, belt drives do not require periodic lubrication with grease or exhibit backlash when they change direction.” Ex. 1003 ¶ 137. In addition, Petitioner demonstrates that a POSA at the time would have understood that conveyor belts like Lindee’s can be easily cleaned. Ex. 1051 ¶¶ 50–54. Petitioner further asserted that conveyor belts are easy to maintain at low cost. Id. citing ¶¶ 55–58. We agree with Petitioner that, at least for some scenarios, including those that Petitioner specifies, a POSA would have seen that there were advantages to using Lindee’s timing belt rather than the 2006 904 Operating Manual’s ball-screw to drive food article grippers. Petitioner has demonstrated a POSA would have been motivated to combine Lindee’s beltdriven grippers in the 2006 904 Operating Manual’s food slicer notwithstanding Patent Owner’s arguments to the contrary.” slip op. at 39
Patent outcomesUS 10,625,436 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,625,436 - Weber, Inc. v. Provisur Technologies, Inc.All claims unpatentablePTAB · Oct 21, 2024 · IPR2020-01556 · APJ Jon M Jurgovan · IPR · Remand
On remand, the Board held claims 1–16 unpatentable as obvious over the 2006 904 Operating Manual and Lindee, and separately over the 2010 904 Operating Manual and Lindee.
RulingsRemand decision- RemandOther
“Specifically, the Federal Circuit “reverse[d] the Board’s finding that Weber’s operating manuals do not qualify as printed publications.” Weber, 92 F.4th at 1069. The Federal Circuit further held that the prior art disclosed the “disposed over” limitation of claim 1 as properly construed, as well as 1 Patent Owner also submitted redacted versions of its Preliminary Response, Response, and Sur-Reply. Papers 8, 24, 49. The redactions relate to information subject to our Protective Orders. Papers 12, 58. the “stop gate” limitation of claim 1. Weber, 92 F.4th at 1069–1072. In addition, the Federal Circuit indicated it had considered Petitioner’s remaining arguments and found them unpersuasive. Weber, 92 F.4th at 1072. Accordingly, the Federal Circuit vacated our determinations that Petitioner failed to establish unpatentability of claims 1–16 of the ’436 patent, and remanded the case to the Board for further proceedings consistent with its opinion. Weber, 92 F.4th at 1072.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art (“POSA”) would have had “(1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on food processing and/or packaging systems (or in a similar field)” or “(2) at least seven years of experience working on food processing and/or packaging systems (or in a similar field).” Pet. 18 (citing Ex. 1003 ¶ 26). Patent Owner does not contest Petitioner’s definition or provide its own proposal. For purposes of this Decision, we adopt Petitioner’s proposal because Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“III. CLAIM CONSTRUCTION Claim 1’s limitation 1.2 and claim 9’s limitation 9.3 recite in part “a food article feed apparatus disposed over the food article loading apparatus.” The Federal Circuit reversed the construction set forth in the prior FWD and held that the “disposed over” limitation “requires only that the feed apparatus be generally positioned above the loading apparatus.” Weber, 92 F.4th at 1070. We follow the Federal Circuit’s construction of “disposed over” in this decision. We need not provide an express construction for any other claim terms to resolve the dispute before us. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy). We note, though, that in reaching our conclusion, we apply the ordinary and customary meaning to all claim terms. 37 C.F.R. § 42.100(b) (2019).” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“IV. CITED PRIOR ART REFERENCES In the prior FWD, we decided that the 2006 904 Operating Manual and 2010 904 Operating Manual were not “printed publications” under 35 U.S.C. § 311(b). Paper 67, 25–38. The Federal Circuit reversed that determination, and held that these manuals are “printed publications.” Weber, 92 F.4th at 1069. In accord with the Federal Circuit’s decision, we now address the content of these publications in combination with Lindee.” slip op. at 11
Patent outcomesUS 10,625,436 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,625,436 - Weber, Inc. v. Provisur Technologies, Inc.Some claims unpatentablePTAB · Oct 3, 2024 · IPR2020-01557 · APJ Jon M Jurgovan · IPR · Remand
Claims 1–4 and 8–11 are unpatentable as obvious; claims 5–7 were not shown unpatentable because the asserted combinations did not establish claim 5’s recessed-diameter limitation.
RulingsRemand decision- RemandOther
“Specifically, the Federal Circuit “reverse[d] the Board’s finding that Weber’s operating manuals do not qualify as printed publications.” Weber, 1 Patent Owner also submitted redacted versions of its Preliminary Response, Response, and Sur-Reply. Papers 8, 24, 48. The redactions relate to information subject to our Protective Orders. Papers 13, 57. 92 F.4th at 1069. The Federal Circuit further held that the prior art disclosed the “disposed over” limitation of claim 1 as properly construed, as well as the “stop gate” limitation of claim 1. Weber, 92 F.4th at 1069–1072. In addition, the Federal Circuit indicated it had considered Petitioner’s remaining arguments and found them unpersuasive. Weber, 92 F.4th at 1072. Accordingly, the Federal Circuit vacated our determinations that Petitioner failed to establish unpatentability of claims 1–11 of the ’812 patent, and remanded the case to the Board for further proceedings consistent with its opinion. Weber, 92 F.4th at 1072.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art would have had “(1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on food processing and/or packaging systems (or in a similar field)” or “(2) at least seven years of experience working on food processing and/or packaging systems (or in a similar field).” Pet. 20 (citing Ex. 1003 ¶¶ 26–27). Patent Owner does not contest Petitioner’s definition or provide its own proposal. For purposes of this Decision, we adopt Petitioner’s proposal because Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“disposed over the food article loading apparatus.” The Federal Circuit reversed the construction set forth in the prior FWD and held that the “disposed over” limitation “requires only that the feed apparatus be generally positioned above the loading apparatus.” Weber, 92 F.4th at 1070. We follow the Federal Circuit’s construction of “disposed over” in this decision. We need not provide an express construction for any other claim terms to resolve the dispute before us. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy). We note, though, that in reaching our conclusion, we apply the ordinary and customary meaning to all claim terms. 37 C.F.R. § 42.100(b) (2019).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“the structure and function of the 2006 904 Operating Manual’s product holder and Lindee’s grippers are similar in that they serve to grip food product and guide it to the slicing station. See, e.g., Ex. 1005, 23; Ex. 1006, 18:20–35, Fig. 7A. The two devices differ in their actuation—the 2006 904 Operating Manual uses a ball screw spindle actuator to drive the product holder along the feed path, whereas Lindee uses a timing belt 334 to drive its grippers 151 along the feed path. Ex. 1005, 273–274; Ex. 1006, 18:33–34, Fig. 7A. However, Petitioner presented evidence that “unlike ball screws, belt drives do not require periodic lubrication with grease or exhibit backlash when they change direction.” Ex. 1003 ¶ 160. In addition, Petitioner demonstrates that a POSA at the time would have understood that conveyor belts like Lindee’s can be easily cleaned. Ex. 1051 ¶¶ 50–54. Petitioner further asserted that conveyor belts are easy to maintain at low cost. Id. citing ¶¶ 55–58. We agree with Petitioner that, at least for some scenarios, including those that Petitioner specifies, a POSA would have seen that there were advantages to using Lindee’s timing belt rather than the 2006 904 Operating Manual’s ball-screw to drive food article grippers. Petitioner has demonstrated a POSA would have been motivated to combine Lindee’s belt-driven grippers in the 2006 904 Operating Manual’s food slicer notwithstanding Patent Owner’s arguments to the contrary.” slip op. at 50
Patent outcomesUS 10,639,812 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,639,812 - PTAB · Sep 11, 2024 · IPR2023-00763 · APJ Kristen L Droesch · IPR · Remand
Instituted review of claims 7 and 11 on the § 103 ground over Park and IEEE 802.16-2004.
RulingsRemand decision- Director reviewDirector review, grantedGranted
“considering the factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential only as to Section II.B.4.i) (“General Plastic”), and expanded upon in Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019) (precedential) (“Valve”). Paper 17 (“Decision”). Petitioner requested Director Review of the Decision, which was granted. Papers 18, 19. On March 22, 2024, the Director issued a Decision Vacating the Decision as an improper extension of the “significant relationship,” as set forth in General Plastic and Valve, and remanding to the Board to issue a decision on institution that addresses the merits of the Petition. Paper 28 (“Director’s Decision”).” slip op. at 2
- RemandOther
“considering the factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential only as to Section II.B.4.i) (“General Plastic”), and expanded upon in Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019) (precedential) (“Valve”). Paper 17 (“Decision”). Petitioner requested Director Review of the Decision, which was granted. Papers 18, 19. On March 22, 2024, the Director issued a Decision Vacating the Decision as an improper extension of the “significant relationship,” as set forth in General Plastic and Valve, and remanding to the Board to issue a decision on institution that addresses the merits of the Petition. Paper 28 (“Director’s Decision”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not institute an inter partes review “unless . . . 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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposal is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”). Accordingly, for purposes of this decision, we adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,447,450 - PTAB · Sep 3, 2024 · IPR2023-00797 · APJ Stephen E Belisle · IPR · Remand
The Board denied institution because Honda did not show a reasonable likelihood that claims 23, 24, 26, or 27 were obvious over either asserted combination.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 23, 24, 26, and 27 of the ’302 patent. Accordingly, constrained by the record before us, we deny institution of an inter partes review of the ’302 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We find Patent Owner’s arguments persuasive, and the above testimony of its technical expert, Mr. Alberth, even more so. Based on the foregoing and the record before us, we find Petitioner fails to sufficiently show that the ’586 Provisional lacks written description support for the feature of a transmitter configured to form and transmit, in response to a received request, “the probing signal with a code sequence modulated in the frequency domain,” as recited in independent claim 23. Although not its burden, we find Patent Owner sufficiently evidences that the disclosure of the ’586 Provisional would have reasonably conveyed to skilled artisans that the inventor possessed the features of the subject limitation. 5. Conclusion For the reasons expressed above, and based on the record before us, we determine Petitioner has not sufficiently shown that Koo is prior art to the Challenged Claims. Accordingly, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that any of the Challenged Claims is unpatentable as obvious over the combination of 802.16a-2003, 802.16-2001, and Koo.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“But in doing so, Petitioner ignores the context in which the skilled artisan would have read Kitroser: where IEEE, the governing body issuing the Call for Contributions, itself explicitly questioned “if [implementing 802.16a in a mobile systems environment] is technically feasible and, if so, at what level” (Ex. 2007, 1 (emphasis added)), and where, as noted above, Kitroser provides no explanation, support, or other commentary for its “no changes” statements, and admits such statements are “subject to change in form and content after further study” and subject to amendment and withdrawal entirely (Ex. 1007, 1–4 (emphasis added)). Based on the foregoing, although Petitioner may have identified a “reason” that the skilled artisan allegedly would have combined 802.16a with Kitroser, we are not persuaded that it is a rational reason, i.e., a reason sufficiently shown to have a rational underpinning at the time of the invention of the Challenged Claims. See KSR, 550 U.S. at 418 (To support the legal conclusion of obviousness, “there must be some articulated reasoning with some rational underpinning” for combining elements in the manner claimed. (quoting In re Kahn, 441 F.3d at 988)).” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’302 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Buehrer (Ex. 1003 ¶ 23), except that we omit the two instances of “at least” to remove the unbounded nature of the definition.” slip op. at 13
§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,771,302 - PTAB · Aug 30, 2024 · IPR2022-01531 · APJ Devon Zastrow Newman · IPR · Remand
On remand, the Board instituted inter partes review of claims 1–17, 20–21, 24–26, and 29–34 on all grounds stated in the Petition.
RulingsRemand decision- Director reviewOther
“Petition did not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and did not institute inter partes review. Paper 17 (“Inst. Dec.”). Petitioner requested Director review of our decision denying institution (Paper 18 (“Request”)). The Director delegated review of the decision to a Delegated Rehearing Panel. Paper 19. Patent Owner was granted the option to file a response to Petitioner’s Request (Paper 22 (“Request Resp.”)). The Director Review Panel (“DRP”) vacated our decision and remanded the case to this panel with a revised construction for claim 1. Paper 23 (“DRP Dec.”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect (2018). Upon reconsideration of the briefing and the evidence of record in light of the DRP’s claim construction, we conclude that Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable. Accordingly, we grant institution of inter partes review of claims 1–17, 20–21, 24–26, and 29–34 of the ’682 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find that Petitioner has demonstrated a material error by the Office in the prior consideration of Morales-Sanfrutos, Straus, Singh, and Lees. For instance, under the second prong of Advanced Bionics, we consider “(c) the extent to which the asserted art was evaluated during “(e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art.” Becton, Dickinson, 17–18. We agree with Petitioner that the Office overlooked Morales- Sanfrutos’ and Singh’s teachings during examination and reexamination. Pet. 79. Although Morales-Sanfrutos, Straus, and Singh were listed on an IDS, they were not the subject of a rejection during examination or reexamination. Moreover, for the reasons discussed below at this stage with regard to Petitioner’s grounds over Morales-Sanfrutos, as evidenced by Straus, and over Singh, Petitioner sufficiently demonstrates that the Office materially erred in overlooking Morales-Sanfrutos’s and Singh’s teachings regarding their linker structures. Id. Further, to the extent the Lees’ teachings were considered during examination and reexamination, Lees’ disclosure of a homobifunctional sulfone linker was overlooked. Lees’ homobifunctional linker, which Patent Owner argues is substantially similar to Harris’ homobifunctional linker, which Petitioner chiefly relies upon in Grounds 2–5, was not the subject of a rejection during examination. Pet. Resp. Brief 1; Prelim. Resp. 25–26. We agree with Petitioner that only Lees’ heterobifunctional linker was applied in a rejection during examination. Pet. Resp. Brief 1; Ex. 1018, 42–43, 62. 4. Conclusion For the foregoing reasons, we decline to exercise discretion to deny institution under § 325(d).” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply Petitioner’s unopposed definition for purposes of determining whether to institute review because it is consistent with the disclosures of the asserted prior art references.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,131,682 - PTAB · Aug 15, 2024 · IPR2023-01339 · APJ Brent M Dougal · IPR · Remand
The Board instituted inter partes review of claims 4–9, 12, and 14 on the asserted §103 ground based on Peev and Spitballs.
RulingsRemand decision- Director reviewOther
“(“Decision Denying Institution”). The Director has now reversed and remanded our Decision Denying Institution. Paper 12 (“Remand Dec.”). Further, the Director ordered institution of inter partes review. Id. at 21.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“in showing that at least one of the claims challenged . . . would have been obvious over Peev and Spitballs.” Remand Dec. 17. Additionally, having considered arguments from Patent Owner vying for discretionary denial of inter partes review, the Director “decline[d] to exercise . . . discretion under § 314(a) to deny institution of inter partes review.” Id. at 21. Accordingly, the Director “reverse[d] [our Decision Denying Institution] and remand[ed] to the Board to institute trial.” Id. III. CONCLUSION For the reasons stated in the Director Review Decision (Paper 12), the Director has determined there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged.” slip op. at 5
NonePatents in suitUS 8,640,683 - Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentablePTAB · Aug 13, 2024 · IPR2022-01006 · APJ Barry L Grossman · IPR · Remand
The Board revised the construction of “biometric signal” on remand, then held that Petitioner did not prove claims 1–17 unpatentable under the asserted obviousness grounds.
RulingsRemand decision- RemandOther
“vacated following review by the Director and remanded to us: (1) for additional briefing by the parties on the construction of the claim term “biometric signal;” and (2) our further consideration of the construction of this claim term. Paper 49 (“Director’s Decision” or “Dir. Dec.”).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 9 (citing Ex. 1005 ¶ 30). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 30. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“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 56
- Expert testimonyPetitioner expert discountedOther
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 9 (citing Ex. 1005 ¶ 30). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 30. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“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 56
Patent outcomesUS 9,665,705 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,665,705
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.