Eis GmbH v. Novoluto GmbH, IPR2019-01302
| Decision Date | 14 June 2021 |
| Docket Number | 937,Patent 9,IPR2019-01302,097 B2 |
| Parties | EIS GMBH, Petitioner, v. NOVOLUTO GMBH, Patent Owner. |
| Court | United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board |
Before SUSAN L. C. MITCHELL, CHRISTOPHER G. PAULRAJ, and JOHN E SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge
Final Written Decision Determining Challenged Claims Not Unpatentable
Denying Petitioner's Motion to Exclude
EIS GmbH ("Petitioner") filed a Petition requesting inter partes review of claims 1-30 of U.S. Patent No. 9, 937, 097 B2 (Ex. 1001, "the '097 patent"). Paper 1. ("Pet"). NOVOLUTO GmbH ("Patent Owner") filed a Preliminary Response to the Petition. Paper 14. On January 13, 2020 we issued our Decision Denying Institution. Paper 17 ("Dec").
Petitioner filed a Request for Rehearing of our Decision Denying Institution under 37 C.F.R. § 42.71 (c) and (d). Paper 18 ( ).[1]Upon reconsideration of the arguments and evidence of record at the time, we granted the Request for Rehearing and instituted inter partes review on all grounds presented in the Petition. Paper 23. ("Reh'g Dec." or "Rehearing Decision").
Patent Owner then filed a Response on September 11, 2020. Paper 30 ("Resp."). Petitioner filed a Reply on December 14, 2020. Paper 37 ("Reply"). Patent Owner filed a Sur-Reply on January 15, 2021. Paper 42 ("Sur-Reply"). On February 2, 2021, the parties jointly informed the Board that no oral hearing was needed in this case. Paper 44.
We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final Written Decision under 35 U.S.C. § 318(a) as to the patentability of the claims on which we instituted trial. Based on the complete record before us, we determine that Petitioner has not shown, by a preponderance of the evidence, that claims 1-30 are unpatentable. In addition, for the reasons explained below, we deny Petitioner's Motion to Exclude evidence.
Petitioner identifies the following entities as real parties-in-interest: EIS GmbH, EIS Inc., Triple A Import GmbH, Triple A Marketing GmbH, Triple A Sales GmbH, and Triple A Internetshops GmbH (formerly known as "Internetsupport Bielefeld"). Paper 43.
Patent Owner identifies itself as the real party-in-interest and that WOW Tech International GmbH is the corporate parent of Novoluto GmbH. Paper 41.
Petitioner has stated that the '097 patent is the subject of litigation in two district court actions: EIS Inc. v. WOW Tech International GmbH et al, No. 1:19-cv01227-LPS, (D. Del.) and Novoluto, GmbH v. Uccellini LLC d/b/a Lora DiCarlo, C. A. No. DOR-6-20-cv-02284-MTK (D. Ore.). Paper 43, 3.
Petitioner also states that two related patents, U.S. 9, 763, 851 B2 and U.S. 9, 849, 061 B2 are the subject of IPR2019-01444 and IPR2020-00007 respectively. Id. Both of those proceedings are currently pending before the Board.
The '097 patent, titled Stimulation Device Having an Appendage, issued on April 10, 2018, from Application 15/487, 123 filed on April 13, 2017. Ex. 1001, codes (10), (21), (22), (45)col. 3,, and (54). It claims priority to German Patent Application No. 102015103694.0, filed March 13, 2015. Ex. 1001, col. 1, ll. 7-12.
The '097 patent relates to a sexual stimulation device which applies positive and negative pressure to a human body part, such as the clitoris. Ex. 1001, col. 3, ll. 21-22. The positive and negative pressures are created by changing the volume of a chamber in the device. Id. at col. 3, ll. 19-20. The volume of the chamber is changed by deflecting a flexible wall of the chamber. Id. at col. 3, ll. 16-19. Positive and negative pressures are determined relative to a "reference pressure." Id. col. 4, l. 63- col. 5, l. 4. The device may also have an appendage which can be used as a handle. Id. at col. 4, ll. 27-28. The appendage may be in the form of a dildo. Id. at col. 8, ll.24-31.
Claims 1 and 12 are representative of the challenged claims and read as follows:
Petitioner relies on the following references:
Petitioner also relies on the declarations of Michael R. Prisco, P.E., Ph.D., Exs. 1002 and 1018, and the declaration of Richard Meyst. Ex. 1020. Patent Owner relies on the declarations of Morton Olgaard Jensen, Ph. D., Dr. Med. (Exs. 2001 and 2026) and Debra Herbenick, Ph.D. (Ex. 2004 and 2028).
Petitioner asserts that claims 1-30 would have been unpatentable on the following grounds:
Claim(s) Challenged
Reference(s)/Basis
1-9, 12-24, 26-30
102
Taylor
1-30
103
Taylor, Hovland
1-30
103
In an inter partes review, the burden of proof is on the Petitioner to show that the challenged claims are unpatentable, and that burden never shifts to the patentee. 35 U.S.C. § 316(e); In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016).
Section 102(a) provides that "[a] person shall be entitled to a patent unless ... the claimed invention was patented [or] described in a printed publication . . . before the effective filing date of the claimed invention." 35 U.S.C. § 102(a)(1) (2018).[2] Accordingly, unpatentability by anticipation requires that the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, arranged as in the claims. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994).
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 skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). If the differences between the claimed subject matter 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, the claim is unpatentable under 35 U.S.C. § 103. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
A proper § 103 analysis requires "a searching comparison of the claimed invention-including all its limitations-with the teaching of the prior art." In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
"Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination." Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). "Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention." Id.
"[O]bjective evidence of nonobviousness includes copying, long felt but unsolved need, failure of others, commercial success, unexpected results created by the claimed invention, unexpected properties of the claimed invention, licenses showing industry respect for the invention, and skepticism of skilled artisans before the invention." In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998) (citations omitted). "For objective [evidence of secondary considerations] to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention" Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (alterations in original) (quoting In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995)).
The level of ordinary skill in the art is a factual determination that provides a primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int'l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999...
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