- Permobil, Inc. v. Pride Mobility Products CorporationAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,408,343 - Permobil, Inc. v. Pride Mobility Products CorporationAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,408,598 - PTAB · Dec 30, 2014 · IPR2013-00403 · APJ Justin T Arbes · IPR · Final written decision
The Board canceled claims 1–27 and granted substitute claims 28 and 30, but denied substitute claims 29 and 31–33 for failure to meet amendment requirements or show patentability.
RulingsFinal written decision- ScopeMotion to amend, grantedGranted
“1. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 28 as a substitute for claim 2, claim 29 as a substitute for claim 11, claim 30 as a substitute for claim 13, claim 31 as a substitute for claim 22, claim 32 as a substitute for claim 24, and claim 33 as a substitute for claim 27. Mot. 1–6. Each claim includes all of the limitations of the corresponding claim for which it is a substitute, and adds additional limitations. No limitations are removed. Petitioner in its Opposition does not dispute Patent Owner’s assertion that the proposed substitute claims do not enlarge the scope of the claims of the ’583 patent. See Mot. 8. We are persuaded that the proposed substitute claims do not enlarge the scope of the original patent claims.” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“2. Written Description Support Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.”” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Term Proposed Interpretation “sync point” “a location in a data flow having data meeting a specified criteri[on]” “fine sync point” “a location in a data flow having data meeting a specified fine criteri[on] that is less restrictive than a coarse criteri[on]” “coarse sync point” “a location in a data flow having data meeting a specified coarse criteri[on] more restrictive than a fine criteri[on]” Mot. 6–7 (citing Ex. 1001, col. 9, ll. 20–57). Petitioner in its Opposition does not argue that Patent Owner’s proposed interpretations are incorrect. We agree that Patent Owner’s proposed interpretations represent the broadest reasonable interpretation of the claims in light of the Specification of the ’583 patent. The Specification discloses fine filter 560 and coarse filter 565, where “[t]he appliance designates the locations in the data flow which meet the fine and coarse filter criteria as fine and coarse sync-points, respectively,” and the filter criteria for coarse filter 565 are “more restrictive” than the filter criteria for fine filter 560. Ex. 1001, col. 9, ll. 20–38. The Specification also describes an example where “the filter criteri[on] declares a fine sync-point when the top five bits of the hashes are all zeros and a coarse filter criteri[on] which stores or compares hashes when the top ten bits of the hashes are all zeros” (i.e., the filter criterion for the coarse filter is more restrictive). Id. at col. 9, ll. 30–34. Accordingly, we interpret “sync point,” “fine sync point,” and “coarse sync point” as set forth above.” slip op. at 14
- Prior constructionPrior construction adoptedDecided for patent owner
“Also, in the Decision on Institution, we interpreted various claim terms of the independent claims of the ’583 patent as follows: Term Interpretation “network memory” (claims 1, 12, device(s) in a network for and 23) storing information “appliance” (claims 1, 12, and 23) hardware and/or software elements applied to a particular use “instruction” (claims 1, 12, and a message or signal that 23) indicates, explicitly or implicitly, an action to perform See Dec. on Inst. 6–10. Patent Owner’s proposed substitute claims depend from the original independent claims of the ’583 patent, and the parties do not dispute these interpretations in their papers. We do not perceive any reason or evidence that now compels any deviation from these interpretations. Accordingly, for purposes of assessing the proposed substitute claims, we incorporate our previous analysis of the three terms above. See id.” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 8,370,583 - PTAB · Dec 30, 2014 · IPR2013-00402 · APJ Justin T Arbes · IPR · Final written decision
The Board canceled claims 1–12 and granted the motion to amend for substitute claims 13 and 15, but denied it for claims 14 and 16–18 based on unmet amendment and eligibility requirements.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“In a motion to amend, the patent owner bears the burden of proof to demonstrate patentability of its proposed substitute claims over the prior art and, thus, entitlement to the claims. Idle Free at 7. This does not mean that the patent owner is assumed to be aware of every item of prior art known to a person of ordinary skill in the art. However, the patent owner should explain in its motion why the proposed substitute claims are patentable over not just the prior art of record, but also prior art not of record but known to the patent owner: A patent owner should identify specifically the feature or features added to each substitute claim, as compared to the challenged claim it replaces, and come forward with technical facts and reasoning about those feature(s), including construction of new claim terms, sufficient to persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner. The burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner. Some representation should be made about the specific technical disclosure of the closest prior art known to the patent owner, and not just a conclusory remark that no prior art known to the patent owner renders obvious the proposed substitute claims. Id. This includes addressing the basic knowledge and skill set possessed by a person of ordinary skill in the art even without reliance on any particular item of prior art. Id. at 7–8; Toyota at 4–5. The petitioner then has the opportunity, in its opposition, to argue any deficiency in the patent owner’s motion and “come forward with specific evidence and reasoning, including citation and submission of any applicable prior art,” to rebut the patent owner’s position on patentability. Idle Free at 8.” slip op. at 16
- ScopeMotion to amend, grantedGranted
“1. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 13 as a substitute for claim 4, claim 14 as a substitute for claim 3, claim 15 as a substitute for claim 8, claim 16 as a substitute for claim 7, claim 17 as a substitute for claim 12, and claim 18 as a substitute for claim 11. Mot. 1–6. Each claim includes all of the limitations of the corresponding claim for which it is a substitute, and adds additional limitations. No limitations are removed. Petitioner in its Opposition does not dispute Patent Owner’s assertion that the proposed substitute claims do not enlarge the scope of the claims of the ’226 patent. See Mot. 8–9. We are persuaded that the proposed substitute claims do not enlarge the scope of the original patent claims.” slip op. at 11
- 112 supportGranted
“2. Written Description Support Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.”” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundDecided for patent owner
“Patent Owner argues that it would not have been obvious to incorporate the technique of Spring into a network data de-duplication system, as recited in the proposed substitute claims, because Spring “had very limited practical application in the network memory context.” Mot. 12. Patent Owner’s position is supported by the statement in McCanne ’376 that due to Spring’s small cache and first-in first-out replacement policy, “the efficacy of [Spring’s] approach is limited to detecting and exploiting communication redundancies that are fairly localized in time.” Ex. 1003 ¶ 20; see Mot. 12. The proposed substitute claims, which identify sync points from which forward and backward memory comparisons are performed, are not limited to only recently transmitted data. Patent Owner also asserts that the specific combination of “fine and coarse filtering of hash values” and “forward and backward memory comparison” limitations recited in the proposed substitute claims represents a practical solution to the “tradeoff” that exists with data de-duplication systems, and is not solved by any of the prior art of record. Mot. 12–13. Specifically, Patent Owner states that there is a “tradeoff” between the size of an index and the likelihood that an indexed segment will be matched. Id. Spring uses a small fixed-size cache and small packets, and, thus, works best for only recently transmitted data. Id. By contrast, according to Patent Owner, the proposed substitute claims provide a practical solution to the tradeoff by operating at the byte-level and using a combination of fine and coarse filters to identify sync points from which forward and backward memory comparisons are performed. Id. Patent Owner’s explanations regarding the prior art and why the proposed substitute claims allegedly would not have been obvious are supported by the record and are persuasive. We also note that although Petitioner addresses the “fine and coarse filtering of hash values” limitations in its Opposition (arguing that they are taught by Hsu), Petitioner does not argue that Hsu—or any other reference— teaches or suggests the “forward and backward memory comparison” limitations. Nor does Petitioner propose any specific combination of references that allegedly would have rendered obvious the proposed substitute claims as a whole. Thus, Patent Owner’s assertions regarding key aspects of the prior art, such as Spring, essentially are unrebutted.” slip op. at 23
§ 101 eligibility§ 103 obviousnessPatents in suitUS 8,312,226 - CB Distributors, Inc. / Dr Distributors, LLC v. Fontem Holdings 1 B.V.Some claims unpatentablePTAB · Dec 24, 2014 · IPR2013-00387 · APJ Jacqueline Wright Bonilla · IPR · Final written decision
Claims 1–10, 12, 15–26, and 33–38 are unpatentable: claims 1, 2, 5–8, 10, 33, 35, 37, and 38 as anticipated by Liu; the specified remaining claims as obvious over Hon ’494 and Liu.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1–12, 15–26, and 33–41 of U.S. Patent No. 8,156,944 B2 (Ex. 1001) (“the ’944 patent”). The previous Patent Owner, Ruyan Investment (Holdings) Limited,1 did not file a preliminary response. We determined that the information presented in the Petition demonstrated that there was a reasonable likelihood that Petitioner would prevail in challenging claims 1–12, 15–26, and 33–38, but not claims 39–41, of the ’944 patent, as unpatentable under 35 U.S.C. § 102 or § 103, or both. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on December 30, 2013, to review whether claims 1–12, 15–26, and 33–38 are unpatentable on the following grounds. Reference(s) Basis Claims Challenged Liu (Ex. 1019)2 § 102 1, 2, 5–8, 10, 33, 35, 37, and 38 Hon ’494 (Exs. 1008/1009)3 § 103 1–4, 8–12, 15–26, 33, 34, 36, and 38” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We decline, however, to read limitations that are not recited into the claims. While we read claims in view of the Specification, we do not read limitations from embodiments in the Specification into the claims. Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir 2014) (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004)). Our reviewing court “has expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.” Hill-Rom Servs., 755 F.3d at 1371–72 (quoting Liebel-Flarsheim, 358 F.3d at 906).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“At least one dictionary definition provided by Patent Owner mirrors the dictionary definition cited in our Decision to Institute. Dec. to Inst. 11 (citing Random House Webster’s College Dictionary 1051 (1995) (defining “porous” as “permeable by water, air, etc.” or “full of pores”)). Exhibit B attached to Mr. Sheehan’s Declaration provides several definitions for “porous” as presented in the Free Online Dictionary (http://www.thefreedictionary.com/porous). That dictionary defines “porous” to mean, among other definitions, “having pores,” “[a]dmitting the passage of gas or liquid through pores or interstices,” or “permeable to water, air, or other fluids.” Ex. 2001, Ex. B. The other dictionary cited by Mr. Sheehan provides definitions for “porous” that include “containing minute interstices through which water, air, etc., may pass.” Id. at Ex. C (providing an on-line Oxford English Dictionary). While both dictionaries define “porous” to include the definition of “full of pores,” both dictionaries also include less limiting definitions. Id. at Exs. B, C. We do not agree with Patent Owner or Mr. Sheehan that the broadest reasonable construction of “porous” is limited to “full of pores or interstices into which liquid or gas is absorbed or defused.” PO Resp. 26; Ex. 2001 ¶ 29. Rather, as discussed in our Decision to Institute, we interpret “porous,” consistent with its ordinary meaning and how it is used the Specification, to refer to a component that includes pores and is permeable to liquid, i.e., admits passage of air or liquid through pores or interstices. Dec. to Inst. 11. A component that includes such pores has the ability to “absorb” liquid in the pores, consistent with disclosures in the Specification, regardless of whether the porous component has a few pores or is full of pores, such as in the case of a foam. Ex. 1001, 6:30–34; 7:3–7.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“narrowly as Patent Owner suggests. Rather, we consider whether Liu describes (i) an atomizing chamber that runs through, i.e., inside and along the length of, the atomizer and its electric heating rod, such that (ii) atomization occurs along (i.e., runs through), the length of the chamber. Petitioner has established by a preponderance of the evidence that Figure 2 of Liu depicts (i) an atomizing chamber inside heater housing 24 that runs through, i.e., inside and along the length of, heater housing 24 and its electric heating rod (i.e., rod and heater wire 26). Pet. 18–20, 24, 28 (citing Ex. 1019, Figs. 2, 5, 6:18–22, 7:16–19, 9:19–20). Petitioner also establishes that Liu describes (ii) atomization occurring along the length of the chamber inside heater housing 24. Contrary to Patent Owner’s assertion, it does not matter to our analysis that the upstream end of heater housing 24 in Liu is not “unblocked,” and it does not matter whether apertures 28 are “small.” Rather, we consider whether apertures in heater housing 24 in Liu allow liquid to come into the chamber such that atomization occurs along the length of the chamber, as required by claims 1 and 10.” slip op. at 19
Patent outcomesUS 8,156,944 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,156,944 - PTAB · Dec 23, 2014 · IPR2014-00673 · APJ Kristen L Droesch · IPR · Rehearing
The Board denied rehearing of the decision declining institution on claims 23–27, 29, 30, 32, 33, and 36–40 because the Petition did not adequately explain its prior-art arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW In its request for rehearing, the dissatisfied party must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- BurdenInstitution denied merits
“declaration in the claim charts at pages 19, 21, 25, 27, 28, and 30 of the Petition. Pet. 19, 21, 25, 27, 28, and 30. The citations to the specific paragraphs of the Declaration appear in the claim chart, and take the form of “(See Ex. 1001, ¶¶ 105-107),” “(See Ex. 1001, ¶¶ 114–117),” “(See Ex. 1001, ¶¶ 143–146),” “(See . . . Ex. 1001, ¶¶ 154–157),” “(See Ex. 1001, ¶¶ 165–169),” “(See Ex. 1001, ¶¶ 178–180),” and “(See . . . Ex. 1001, ¶¶ 196–199).” Id. The Petition does not include a detailed explanation of the significance of Mr. Rosenblatt’s Declaration, as required by 37 C.F.R. § 42.22(a)(2). See id. Nor does Mr. Rosenblatt’s testimony explain how the relied upon language in Digibox discloses the limiting access to unprotected data limitation. Based on Petitioner’s arguments in its Request for Rehearing, Petitioner alleges that we overlooked the evidence in Mr. Rosenblatt’s declaration because we did not incorporate the arguments and explanations from the cited paragraphs of Mr. Rosenblatt’s declaration into the Petition. Contrary to Petitioner’s arguments, however, our rules state that arguments must not be incorporated by reference from one document into another document. 37 C.F.R. § 42.6(a)(3). Because the Petition did not include a detailed explanation of the significance of paragraphs 105–107, 114–117, 143–146, 154–157, 165–169, 178–180, and 196–199 of Mr. Rosenblatt’s declaration, and because arguments must not be incorporated by reference from Mr. Rosenblatt’s declaration into the Petition, we did not abuse our discretion in denying institution of inter partes review of claims 24, 25, 30, 32, 33, 36, and 38 as anticipated by Digibox.” slip op. at 4
NonePatents in suitUS 6,314,409 - PTAB · Dec 23, 2014 · IPR2014-00672 · APJ Kristen L Droesch · IPR · Rehearing
The Board denied IBM’s rehearing request, leaving institution denied for claims 1–11 and 13–21 because the petition did not adequately explain how Digibox disclosed the disputed limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“21, the Petition does not explain how Digibox’s disclosure of access rules that can designate who may unlock a DigiBox, together with Digibox’s disclosure of encrypted (i.e., protected) digital information contained in the Digibox, discloses limited or controlled access to an unprotected (i.e., unencrypted) form of the protected portions of the data, as required by claims 1 and 21. In effect, Petitioner’s arguments in the Request for Rehearing allege that we misapprehended the evidence in the Petition because we did not fit together Petitioner’s dispersed puzzle pieces of quotations and disclosures from Digibox. Contrary to Petitioner’s arguments, however, our rules state that each petition must include a detailed explanation of the significance of the evidence, and must specify where each element of the claim is found in the prior art relied upon. 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4). The Petition does not include a detailed explanation of the significance of Digibox’s disclosure of access rules that can designate who can unlock the Digibox, and does not specify where the disputed limitations of claims 1 and 21 are found in Digibox. But, as we discussed above, even if Digibox did include sufficient disclosure, we do not see how the newly cited portions of Digibox meet the disputed limitations of claims 1 and 21. Thus, we did not abuse our discretion in denying institution of inter partes review of the claims based on Digibox.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Contrary to Petitioner’s apparent invitation, the members of the Board deciding an institution matter do not, under 35 U.S.C. § 6(c), select themselves, and, similarly are not granted authority to select other Board members to decide the matter, upon request of a party or otherwise. See Apple Inc. v. Rensselaer Polytechnic Instit., Case IPR2014-00319, slip. op. 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). As indicated in the Standard Operating Procedure, the Chief Judge, on behalf of the Director, may act to expand a panel on a “suggestion” from a judge or panel. BPAI SOP 1 at 1. The Standard Operating Procedure creates “internal norms for the administration of the Board” but “does not create any legally enforceable rights.” Id. Accordingly, we cannot grant Petitioner’s request for rehearing by an expanded panel. We further note that our application of 37 C.F.R. §§ 42.6(a)(3), 42.22(a)(2) and 42.104(b)(4) in the case before us is bound to the specific facts of this case, and is consistent with the application of these rules in the expanded panel decision in Cisco Systems, Inc. v. C-Cation Technologies, LLC, Case IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12). II. DECISION ON REHEARING Petitioner’s request for rehearing is denied and request for panel expansion is dismissed.” slip op. at 6
NonePatents in suitUS 6,314,409 - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,444,696 - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,444,696 - Cyanotech Corporation v. The Board Of Trustees Of The University Of IllinoisSome claims unpatentablePTAB · Dec 12, 2014 · IPR2013-00404 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 1–14 and 26 are unpatentable over Grangaud and/or Grangaud with Dowling; claims 15, 21, and 22 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“treating damage caused by injury or disease (Resp. 14–15), however, the specification does not contain any indication that the patentee intended to act as his own lexicographer clearly defining “disease” and “damage” in the same manner. For example, the specification does not clearly convey the patentee’s intent to appoint a special meaning to the phrase “retinal damage or retinal disease.” We must determine, therefore, the ordinary meaning of “disease” and “damage” as used in these claims to one of skill in the art in light of the specification and prosecution history. In re Paulsen, 30 F.3d at 1480. In this regard, the term “damage,” as used in the specification, refers to damage resulting from injury or disease. Ex. 1001, 1:14–19. The specification does not equate damage and disease, but provides that damage may be caused by disease. Id. The meaning of the term disease, however, refers to conditions that may cause damage (such as degenerative eye disease), and are treatable themselves. Id. at 15:36–40. That is, the underlying cause of the damage is treatable, not just the damage alone. The University does not direct our attention to anything in the specification or prosecution that would clearly alter the ordinary meaning of “disease” and “damage.” Resp. 14–16. In view of the above, we do not construe “retinal damage” and “retinal disease” as a single concept. The evidence of record does not support a finding that the patentee acted as his own lexicographer by clearly defining the claim terms “damage” and “disease” in the same manner. In our Decision to Institute, we adopted the dictionary definition of “disease” and construed the term as “[a] morbid entity ordinarily characterized by two or more of the following criteria: recognized etiologic agent(s), identifiable group of signs and symptoms, or consistent anatomic alterations.” Dec. 8–9; see, Pet. ’401 (citing Ex. 1040). We adopted the dictionary definition of “damage” and construed the term as “[h]arm, diminution, or destruction of an organ, body part, system, or function.” Id. We maintain these constructions for “disease” and “damage” as they are consistent with the use of these terms in the Specification. “Retinal damage” refers to damage to the retina and “retinal disease” refers to disease of the retina. The phrase “retinal damage or retinal disease” refers to either retinal damage or retinal disease.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureUnpatentableNot shown unpatentableMixed
“To establish inherent disclosure, the evidence must show that a feature necessarily is described in the reference, and that it would be recognized by persons of ordinary skill. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999); cf. EMI Grp. N. Am., Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1351 (Fed. Cir. 2001) (“Theoretical mechanisms or rules of natural law that are recited in a claim, that themselves are not patentable, however, do not need to be recognized by one of ordinary skill in the art for a finding of inherency.”). The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Inherency may not be established by probabilities or possibilities. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“As to secondary considerations, we note that factual inquiries for an obviousness determination include secondary considerations based on evaluation and crediting of objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Notwithstanding what the teachings of the prior art would have suggested to one with ordinary skill in the art at the time of the University’s invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471-1472 (Fed. Cir. 1984). However, such a conclusion requires the finding of a nexus to establish that the evidence relied upon traces its basis to a novel element in the claim and not to something in the prior art. Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013). All types of objective evidence of nonobviousness must be shown to have nexus. In re GPAC Inc., 57 F.3d at 1580 (nexus generally); In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (commercial success); In re Antor Media Corp., 689 F.3d 1282, 1293 (Fed. Cir. 2012) (licensing); Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012) (copying); Rambus Inc. v. Rea, 731 F.3d 1248, 1256 (Fed. Cir. 2013) (long-felt need); and In re Kao, 639 F.3d 1057, 1069 (Fed. Cir. 2011) (unexpected results). As discussed above, we conclude that claims 1, 3, and 8–12 are anticipated by Grangaud, as evidenced by Dowling. Because anticipation is the epitome of obviousness, a disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (“[E]vidence establishing lack of all novelty in the claimed invention necessarily evidences obviousness.”); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). Here, Cyanotech presents substantially the same evidence for both their anticipation and obviousness challenges of claims 1, 3, 8–14, and 26. As such, and for the same reasons set forth in our anticipation analysis above, we hold that claims 1, 3, 8–14, and 26 are rendered obvious by Grangaud, alone or in combination with Dowling. Because we have determined that claims 1, 3, and 8–12 lack a novel feature with which to establish a nexus with secondary considerations, Cyanotech, as a matter of law, cannot establish a nexus. In re Kao, 639 F.3d at 1068 (Objective evidence that results from something that is not “both claimed and novel in the claim” lacks a nexus to the merits of the invention.). As to claims 2 and 4–7, the University has not directed any arguments to these claims specifically and has not made any attempts to establish a nexus between the presented objective evidence of nonobviousness and these claims. Thus, we maintain our unopposed determination that the specific doses and routes of administration recited in these claims are predictable variations within the technical grasp of a person of ordinary skill in the art, and are not persuaded by the objective evidence that claims 2 and 4–7 are nonobvious.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“of all novelty in the claimed invention necessarily evidences obviousness.”); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). Here, Cyanotech presents substantially the same evidence for both their anticipation and obviousness challenges of claims 1, 3, 8–14, and 26. As such, and for the same reasons set forth in our anticipation analysis above, we hold that claims 1, 3, 8–14, and 26 are rendered obvious by Grangaud, alone or in combination with Dowling. Because we have determined that claims 1, 3, and 8–12 lack a novel feature with which to establish a nexus with secondary considerations, Cyanotech, as a matter of law, cannot establish a nexus. In re Kao, 639 F.3d at 1068 (Objective evidence that results from something that is not “both claimed and novel in the claim” lacks a nexus to the merits of the invention.). As to claims 2 and 4–7, the University has not directed any arguments to these claims specifically and has not made any attempts to establish a nexus between the presented objective evidence of nonobviousness and these claims. Thus, we maintain our unopposed determination that the specific doses and routes of administration recited in these claims are predictable variations within the technical grasp of a person of ordinary skill in the art, and are not persuaded by the objective evidence that claims 2 and 4–7 are nonobvious. In view of the above, we conclude that Cyanotech has demonstrated the unpatentability of claims 1–14 and 26 by a preponderance of the evidence. (2) Claim 15 Claim 15 depends from claim 14. As discussed above, we conclude that the preponderance of evidence of record demonstrates that neuronal damage to a retina is inherent to the condition of vitamin A deficiency-induced xerophthalmia. The question before us with regard to claim 15, however, is whether” slip op. at 24
Patent outcomesUS 5,527,533 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,527,533
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.