Trials@uspto.gov
`571-272-7822
`
`
`Paper 26
`Entered: April 15, 2020
`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`20/20 VISION CENTER, LLC,
`Petitioner,
`
`v.
`
`DIGITALOPTOMETRICS LLC,
`Patent Owner.
`________________________
`
`PGR2018-00100
`Patent 9,980,644 B2
`
`
`
`Before PATRICK M. BOUCHER, CHRISTOPHER G. PAULRAJ, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`
`
`571-272-7822
`
`
`Paper 26
`Entered: April 15, 2020
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`20/20 VISION CENTER, LLC,
`Petitioner,
`
`v.
`
`DIGITALOPTOMETRICS LLC,
`Patent Owner.
`________________________
`
`PGR2018-00100
`Patent 9,980,644 B2
`
`
`
`Before PATRICK M. BOUCHER, CHRISTOPHER G. PAULRAJ, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`
`
`
`PGR2018-00100
`Patent 9,980,644 B2
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`I.
`
`INTRODUCTION
`
`A. OVERVIEW
`20/20 Vision Center, LLC (“Petitioner”) filed a Petition requesting a
`post-grant review of claims 1–20 of U.S. Patent No. 9,980,644 B2
`(Ex. 1001, “the ’644 patent”).1 Paper 2 (“Pet.”). DigitalOptometrics LLC
`(“Patent Owner”) filed its Mandatory Notices in response to the Petition
`(Paper 5), but did not file an optional Preliminary Response. See 37 C.F.R.
`§ 42.207 (2018) (“The patent owner may file a preliminary response to the
`petition.”) (emphasis added).2
`On April 17, 2019, we issued a Decision ordering that “pursuant to 35
`U.S.C. § 324, a post grant review of the ’644 patent is instituted as to claims
`1–20 based on the unpatentability grounds set forth in the Petition.” Paper 7
`(“Dec.”), 48. After institution, Patent Owner filed a Patent Owner’s
`Response (Paper 15; “PO Resp.”) and a statutory disclaimer of claims 1–113
`
`
`1 Petitioner identifies itself as the real party in interest. Pet. 1.
`2 Patent Owner identifies itself as the real party in interest. Paper 5, 2.
`3 The July 2019 Trial Practice Guide Update notes that “a patent owner may
`file a statutory disclaimer of one or more challenged claims to streamline the
`proceedings. Where no challenged claims remain, the Board would
`terminate the proceeding. Where one or more challenged claims remain, the
`Board’s decision on institution would be based solely on the remaining
`claims. See Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1315
`(Fed. Cir. 2016); Sony Computer Entm’t Am. Inc. v. Dudas, 2006 WL
`1472462 (E.D. Va. May 22, 2006).” Trial Practice Guide Update 21 (July
`2019) (“July 2019 Trial Practice Guide Update”),
`https://www.uspto.gov/TrialPracticeGuide3; see also Office Patent Trial
`Practice Guide, July 2019 Update, 84 Fed. Reg. 33,925 (July 16, 2019);
`Patent Trial and Appeal Board Consolidated Trial Practice Guide 52 (Nov.
`2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
`
`2
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`(Ex. 2005). Petitioner filed a Petitioner’s Reply to Patent Owner’s Response
`(Paper 20; “Pet. Reply”), and Patent Owner filed a Patent Owner’s Sur-
`Reply (Paper 21; “PO Sur-Reply.”). An oral hearing was held on January
`23, 2020. Paper 25 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R § 42.73.
`After reviewing all relevant evidence and assertions, we determine that
`Petitioner has proven, by a preponderance of the evidence, that claims 12–20
`of the ’644 patent are unpatentable.
`
`B.
`
`RELATED PROCEEDINGS
`Petitioner and Patent Owner represent that the ’644 patent is not
`involved in any other matters. Pet. 1; Paper 5, 2.
`
`C.
`
`THE ’644 PATENT (EX. 1001)
`The ’644 patent is titled “REMOTE COMPREHENSIVE EYE
`EXAMINATION SYSTEM.” Ex. 1001, code (54). The ’644 patent relates
`to a remote-based eye testing system that does not require an optometrist or
`ophthalmologist, i.e., a doctor, to be on-site when a patient receives a
`comprehensive eye examination. Id. at 1:64–66. Instead of an optometrist
`or ophthalmologist, the ’644 patent discloses that
`an ophthalmic technician is present with the patient in the exam
`room to operate eye examination equipment and transmit patient
`information to [a] remote location. At that remote location, a
`skilled technician is present to provide the necessary optical
`and/or medical care, and may operate the phoropter from the
`remote location if he/she desires.
` Using video and/or
`teleconferencing equipment and a phoropter located in the
`patient examination room along with management software, the
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`system works to determine the final optical prescription for the
`patient. That information, coupled with findings from other
`devices which are integrated with the management software, and
`that the patient uses locally, are reviewed by a remote based
`optometrist or ophthalmologist.
`While the patient is being evaluated for eyeglasses or
`contacts, the optometrist or ophthalmologist may also operate the
`phoropter located in the patient examination room from the
`remote location if he/she desires and evaluate the patient for
`other ocular-related medical issues. Once the findings are
`finalized by the optometrist or ophthalmologist remotely, the
`final prescription for eyeglasses and/or contact lenses, along with
`any additional comments or findings, will print locally at the
`examination location and be delivered to the patient.
`Id. at 1:67–2:23.
`The ’644 patent describes that its system comprises “exam site 1100,
`central server (exam site and remote technician connection) 1200, remote
`technician 1300, remote doctor 1400, and central server (remote doctor
`connection) 1500.” Id. at 8:22–26. In this regard, the ’644 patent describes
`that the patient, the local technician, and the phoropter are located at the
`exam site or local diagnostic center. Id. at 9:28–45, 14:41–44, 17:38–40.
`The ’644 patent discloses that “[t]he local technician in the system is always
`physically located at the exam site. The local technician takes care of
`registering the patient, collecting patient history, and walking the patient
`through the entire exam process.” Id. at 19:63–66. The ’644 patent further
`discloses that “[t]he local technician also performs the initial pre-refraction
`tests prior to the actual refraction by a remote technician and the final review
`by a remote doctor.” Id. at 19:66–20:2.
`The ’644 patent also discloses that “[t]he remote technicians in the
`system are responsible for performing the subjective refraction part of the
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`eye exam prior to the patient being transferred to the remote doctor.” Id. at
`25:17–19. The ’644 patent discloses that “[t]he remote doctors in the system
`are responsible for evaluating the results of all tests performed during the
`eye examination process and they may optionally verify or refine the
`subjective refraction performed by the remote technician.” Id. at 28:42–46.
`The ’644 patent describes that both the remote technician and the remote
`doctor may control the phoropter equipment located at the exam site from
`their respective remote locations. Id. at 25:20–23, 48:46–49.
`In some embodiments, the ’644 patent discloses that “the eyecare
`doctor, the remote technician and the local technicians are in different
`locations.” Id. at 17:48–50. However, the ’644 patent also discloses that
`while the patient and the local technician are located together at a local
`diagnostic center, the remote technician and the remote doctor may be
`located at the same remote location, i.e.,
`[t]he patient is then assigned to a remote eyecare technician
`(possibly by the local technician), where the remote eyecare
`technician is located at a first remote diagnostic center. The
`patient is finally assigned (possibly by the local technician) to a
`eyecare doctor, where the eyecare doctor is located at a second
`remote diagnostic center, which may or may not be the same
`remote diagnostic center as the first remote diagnostic center.
`Id. at 17:38–50 (emphases added).
`
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`D.
`
`ILLUSTRATIVE CLAIM
`Petitioner challenged claims 1–20 of the ’644 patent in the Petition.
`However, Patent Owner’s disclaimer of claims 1–11 (Ex. 2005) leaves only
`claims 12–20 remaining. Independent claim 12 is illustrative of the
`remaining challenged claims and is reproduced below:
`
`12. A system for providing eye health and vision examinations,
`comprising:
`a diagnostic center including ophthalmic equipment comprising
`a set of instruments that are utilized in administering eye
`examinations and being coupled to an equipment controller
`that is configured to receive instructions for controlling the
`ophthalmic equipment, wherein the diagnostic center is
`configured to:
`in response to receiving a first request from the diagnostic center,
`select a subset of remote technicians to administer an eye
`examination based, at least in part, on analyzing availability
`data to identify at least one remote technician who is logged
`into the web-based platform and not currently providing real-
`time eye examinations;
`transmit a second request over a network to a select remote
`technician to administer the eye examination in real-time for
`a patient located at the diagnostic center;
`receive first instructions over the network to permit the select
`remote technician to control operation of the ophthalmic
`equipment at the diagnostic center from a first remote location
`in order to administer at least one test pertaining to the eye
`examination;
`generate patient examination data pertaining to the at least one
`test administered using the ophthalmic equipment;
`in response to receiving a third request from the diagnostic
`center, select a subset of eyecare doctors to review the eye
`examinations based, at least in part, on analyzing the
`availability data to identify at least one eyecare doctor who is
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`logged into the web-based platform and not currently
`providing real-time eye examinations;
`transmit a fourth request over the network to a select eyecare
`doctor to review the eye examination in real-time for the
`patient located at the diagnostic center;
`receive second instructions over the network to permit the select
`eyecare doctor to control operation of the ophthalmic
`equipment at the diagnostic center from a second remote
`location in order to review the at least one test pertaining to
`the eye examination; and
`review the patient examination data pertaining to the at least one
`test administered using the ophthalmic equipment;
`wherein the eyecare doctor, the remote technician and the patient
`are in different locations.
`Ex. 1001, 40:31–41:7.
`
`E.
`
`EVIDENCE AND ASSERTED GROUNDS OF UNPATENTABILITY
`We instituted review of claims 12–20 of the ’644 patent on the
`following grounds:
`
`Ground
`No.
`
`2
`3
`4
`
`5
`
`6
`
`Claim(s)
`Challenged
`12–20
`12–20
`12–14, 17–
`20
`12–14, 17–
`20
`15, 16
`
`Reference(s)/Basis
`
`35 U.S.C.
`§
`Indefiniteness
`§ 112(b)
`§ 112(a) Enablement
`§ 102
`Seriani4
`
`§ 103
`
`§ 103
`
`Seriani
`
`Seriani, Cox5
`
`
`4 U.S. 9,230,062 B2, issued Jan. 5, 2016 (Ex. 1003).
`5 U.S. 6,499,843 B1, issued Dec. 31, 2002 (Ex. 1004).
`
`7
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`Ground
`No.
`
`7
`
`Claim(s)
`Challenged
`20
`
`35 U.S.C.
`§
`§ 103
`
`Reference(s)/Basis
`
`Seriani, Kangarloo6
`
`In support of its asserted grounds of unpatentability, Petitioner relies
`on the Declaration of Dr. Michael Schuette. Ex. 1006 (“Schuette Decl.”). In
`support of its Response, Patent Owner relies on the Declaration of Dr. Brian
`Barsky. Ex. 2002 (“Barsky Decl.”). Dr. Schuette and Dr. Barsky were both
`cross-examined. See Ex. 1010 (deposition transcript of Dr. Barsky, “Barsky
`Dep.”); Ex. 2001 (deposition transcript of Dr. Schuette, “Schuette Dep.”).
`
`F.
`
`ELIGIBILITY OF PATENT FOR POST-GRANT REVIEW
`The post-grant review provisions of the Leahy-Smith America Invents
`Act (“AIA”)7 apply only to patents subject to the first inventor to file
`provisions of the AIA. AIA § 6(f)(2)(A). Specifically, the first inventor to
`file provisions apply to any application for patent, and to any patent issuing
`thereon, that contains or contained at any time a claim to a claimed invention
`that has an effective filing date on or after March 16, 2013. AIA § 3(n)(1).
`Furthermore, “[a] petition for a post-grant review may only be filed not later
`than the date that is 9 months after the date of the grant of the patent or of
`the issuance of a reissue patent (as the case may be).” 35 U.S.C. § 321(c)
`(2012); see also 37 C.F.R. § 42.202(a) (setting forth the same).
`Petitioner asserts “that the ’644 patent is available for [post-grant
`review] and Petitioner is not barred or estopped from requesting [post-grant
`review] of the challenged claims of the ’644 patent.” Pet. 2. The issue date
`
`
`6 U.S. 2009/0228299 A1, published Sept. 10, 2009 (Ex. 1005).
`7 Pub L. No. 112–29, 125 Stat. 284 (2011).
`
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`of the ’644 patent is May 29, 2018 (Ex. 1001, code (45)) and the Petition
`was filed on September 14, 2018.8 Patent Owner does not contest
`Petitioner’s assertions. See generally PO Resp.; PO Sur-Reply. We are
`persuaded that Petitioner has met its burden of showing, by a preponderance
`of the evidence, that the ’644 patent is eligible for post-grant review.
`II. ANALYSIS
`We turn now to Petitioner’s asserted grounds of unpatentability to
`determine whether Petitioner has met its burden of showing, by a
`preponderance of the evidence, that claims 12–20 of the ’644 patent are
`unpatentable.
`PERSON OF ORDINARY SKILL IN THE ART
`A.
`Factual indicators of the level of ordinary skill in the art include “the
`various prior art approaches employed, the types of problems encountered in
`the art, the rapidity with which innovations are made, the sophistication of
`the technology involved, and the educational background of those actively
`working in the field.” Jacobson Bros., Inc. v. U.S., 512 F.2d 1065, 1071 (Ct.
`Cl. 1975); see also Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed.
`Cir. 1983) (quoting with approval Jacobson Bros.).
`Petitioner contends that the person of ordinary skill in the art
`(“POSITA”) “would have a bachelor’s degree in ophthalmology, or a similar
`field, with approximately two years of industry experience relating to
`optometry or ophthalmology. Additional graduate education might
`substitute for experience, while significant experience in the field of
`
`
`8 The ’644 patent claims priority to U.S. Provisional Application No.
`62/394,369, which was filed on September 14, 2016. Ex. 1001, code (60).
`
`9
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`optometry/ophthalmology might substitute for formal education.” Pet. 9
`(citing Ex. 1006 ¶¶ 15–20).
`Patent Owner disagrees with Petitioner’s proposed level of skill.
`Instead, Patent Owner asserts that
`a POSITA would have had at least a combination of Bachelor’s
`Degree (or a similar technical Master’s Degree, or higher degree)
`in an academic area emphasizing electrical engineering,
`computer science, or a related field, and two or more years of
`work experience in vision examination (e.g., optometry,
`ophthalmology). [Ex. ]2002, ¶¶ 26–27. Additional education or
`industry experience may compensate for a deficit in one of the
`other aspects of the requirements stated above.
`PO Resp. 2 (citing Ex. 2002 ¶¶ 26–27).
`The parties’ respective proposed definitions of the skilled artisan are
`similar except for Patent Owner’s expansion of the education of the skilled
`artisan to further include “education or experience in computer network
`architecture,” or a combination of “education/experience in vision
`examination and network architecture.” PO Resp. 1–2 (citing Ex. 2002
`¶¶ 22–25). However, in the Oral Hearing, Petitioner conceded that it would
`accept Patent Owner’s articulation of level of skill in the art:
`JUDGE BOUCHER: -- do you disagree with the Patent
`Owner’s articulation of level of skill in the art or is that
`something you’re willing to accept?
`MR. WALDEN: I think I would say as I would be willing to
`accept it on the basis that I don’t think it makes any difference
`to the -- so the application of the Seriani reference which is the
`only one we’re really dealing with at this point to claim 12 and
`so for purposes of the proceeding, yes, I’d be willing to accept
`it on that basis.
`
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`Tr. 7. Therefore, on the present record, we adopt Patent Owner’s definition,
`which is consistent with the level of skill reflected in the asserted prior art
`references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
`(holding that the prior art itself can reflect the appropriate level of ordinary
`skill in the art). However, our decision here would not change if we adopted
`Petitioner’s proposed definition.
`
`B.
`
`CLAIM INTERPRETATION
`In a post-grant review, a claim in an unexpired patent shall be given
`its broadest reasonable construction in light of the specification of the patent
`in which it appears. 37 C.F.R. § 42.200(b) (2018);9 see also Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).
`In its Petition, Petitioner proposes two claim terms be construed:
`“[d]ifferent [l]ocations” and “[e]yecare [t]echnician/[d]octor.” Pet. 9–12.
`
`
`9 The broadest reasonable interpretation (“BRI”) construction standard
`applies to post-grant reviews filed before November 13, 2018. Changes to
`Implement Inter Partes Review Proceedings, Post-Grant Review
`Proceedings, and Transitional Program for Covered Business Method
`Patents, 77 Fed. Reg. 48,680, 48,729 (Aug. 14, 2012), as amended at
`Amendments to the Rules of Practice for Trials Before the Patent Trial and
`Appeal Board, 81 Fed. Reg. 18,750, 18,766 (Apr. 1, 2016); see also Changes
`to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
`(Oct. 11, 2018) (changing the standard for interpreting claims in inter partes
`reviews filed on or after November 13, 2018). Because the Petition was
`filed prior to this date, on September 14, 2018, the BRI construction
`standard applies.
`
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`In our Decision on Institution, we construed the terms “different
`locations,” “[local/remote] eyecare technician,” and “eyecare doctor.” Dec.
`8–10.
`With respect to the term “different locations,” we declined to adopt
`Petitioner’s proffered construction and instead construed the term “‘different
`locations’ according to its plain meaning, i.e., each of the parties is in a
`different location.” Dec. 10; cf. Pet. 11. In its Response, Patent Owner
`asserts that “[t]he Board applied the correct plain meaning of this term, as
`confirmed by Dr. Barsky’s testimony.” PO Resp. 2–3 (citing Ex. 2002
`¶¶ 42–43). In its Reply, Petitioner asserts that “for purposes of this
`proceeding, Petitioner adopts this construction.” Pet. Reply 3.
`With respect to the terms “eyecare technician” and “eyecare doctor,”
`we adopted Petitioner’s construction of the terms. Dec. 10–11; cf. Pet. 12.
`In its Response, Patent Owner asserts that “[t]he Board applied the correct
`interpretations of ‘eyecare technician’ and ‘eyecare doctor,’ as confirmed by
`Dr. Barsky’s testimony.” PO Resp. 3 (citing Ex. 2002 ¶ 44). In its Reply,
`Petitioner notes that “Patent Owner also agrees with the Board’s
`construction, originally proposed by Petitioner, for these two claim terms.”
`Pet. Reply 3.
`Given that the parties do not identify a dispute in this proceeding that
`turns on the construction of any claim term, we determine that we need not
`expressly construe any claim term for purposes of this Decision. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy,
`and only to the extent necessary to resolve the controversy . . . .’” (quoting
`
`12
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`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999))).
`
`A.
`
`III. PATENTABILITY
`35 U.S.C. § 112(B) – INDEFINITENESS – GROUND 210
`Petitioner contends that claims 12–20 are indefinite under 35 U.S.C.
`§ 112(b). Pet. 23–29 (citing Exs. 1001, 1006).
`
`Relevant Law
`1.
`In any patent, “[t]he specification shall conclude with one or more
`claims particularly pointing out and distinctly claiming the subject matter
`which the inventor or a joint inventor regards as the invention.” 35 U.S.C.
`§ 112(b) (2012). “A decision on whether a claim is indefinite . . . requires a
`determination of whether those skilled in the art would understand what is
`claimed when the claim is read in light of the specification.” MPEP
`§ 2173.02 (9th ed. rev. 08.2017 Jan. 2018). “The claims, when read in light
`of the specification and the prosecution history, must provide objective
`boundaries for those of skill in the art.” Interval Licensing, LLC v. AOL,
`Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014); see also Ex parte McAward,
`Appeal No. 2015–006416, slip op. at 11 (PTAB Aug. 25, 2017)
`(precedential) (When applying the broadest reasonable interpretation
`standard, the proper criterion for determining definiteness is that “[a] claim
`is indefinite when it contains words or phrases whose meaning is unclear,”
`
`
`10 We begin our analysis with Ground 2 because Ground 1, as asserted in the
`Petition, challenged disclaimed claims 1–11 and, thus, is not addressed in the
`Decision.
`
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`or that “claims are required to be cast in clear—as opposed to ambiguous,
`vague, indefinite—terms.” (citing In re Packard, 751 F.3d 1310, 1314, 1313
`(Fed. Cir. 2014))).
`
`Claims 12–20 – “diagnostic center”
`2.
`Petitioner argues that claims 12–20 are indefinite “because the
`meaning of the limitation: ‘a diagnostic center . . . configured to: . . . review
`the patient examination data pertaining to the at least one test administered
`using the ophthalmic equipment’ is unclear and vague.” Pet. 24–26. More
`particularly, Petitioner argues that “only a single paragraph in the
`[S]pecification even mentions the term ‘diagnostic center’ and this passage
`in no way describes any corresponding structure or functions performed by
`the diagnostic center.” Pet. 25 (citing Ex. 1001, 17:34–50).
`In response, Patent Owner asserts that
`[a]s properly understood, claim 12 actually recites the full feature
`of “a diagnostic center
`including ophthalmic equipment
`comprising a set of instruments that are utilized in administering
`eye examinations and being coupled to an equipment controller
`that is configured to receive instructions for controlling the
`ophthalmic equipment, wherein
`the diagnostic center
`is
`configured to: . . . review the patient examination data.”
`PO Resp. 15–16 (citing Ex. 1001, 40:33–38, 41:3–5). Patent Owner further
`asserts that
`Dr. Barsky’s testimony confirms that “given the ’644 Patent’s
`disclosure of an ‘exam site,’ a POSITA would not have
`understood the ‘diagnostic center’ to simply be only a room or
`office, but instead would have understood that the ’644 Patent
`discloses that the ‘exam site’ includes ophthalmic instruments
`such as a phoropter, autorefractor, lensometer, keratomer, etc.”
`
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`PO Resp. 16–17 (quoting Ex. 2002 ¶ 59 (citing Ex. 1001, 13:43–56, Fig.
`1E)). We agree with Patent Owner.
`At the outset, we note that Petitioner provides no support from its
`expert, Dr. Schuette, to rebut Dr. Barsky’s opinion. Instead, Petitioner
`attempts to support its position by pointing to a portion of Dr. Barsky’s
`deposition testimony that Petitioner believes establishes a “fatal lack of
`clarity.” Pet. Reply 25 (quoting Ex. 1010, 86:25–87:15). However, we
`credit Dr. Barsky, who states that “a POSITA would have instead understood
`claim 12 as reciting a component located in the ‘diagnostic center’ as being
`configured to ‘review the patient examination data pertaining to the at least
`one test administered using the ophthalmic equipment.’” Ex. 2002 ¶ 59.
`Thus, we maintain that
`the language of claim 12 conveys to a person of ordinary skill in
`the art that it is the “diagnostic center including ophthalmic
`equipment comprising a set of instruments that are utilized in
`administering eye examinations and being coupled to an
`equipment controller” that is configured to perform the function
`of “review[ing] the patient examination data pertaining to the at
`least one test administered using the ophthalmic equipment.”
`Dec. 22 (quoting Ex. 1001, 40:33–38, 41:3–5). Accordingly, we are not
`persuaded that the “diagnostic center,” as it appears in independent claim 12,
`renders the claim indefinite.
`
`Claims 12–20 – “different locations”
`3.
`Petitioner asserts that the term “different locations” renders claims
`12–20 indefinite because “it is unclear whether the eyecare doctor, the
`remote technician and the patient/local technician are required to be located
`in different geographic areas, different buildings, different rooms, or even
`within the same room, but in different locations within the room or using
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`Patent 9,980,644 B2
`
`different devices.” Pet. 27; Pet. Reply 26–27. Petitioner further argues that
`“because the [S]pecification of the ’644 patent does not resolve the
`ambiguities associated with the meaning of this claim limitation ((see [Pet.]
`at 9–11), it is impossible for a POSITA to reasonably determine the scope
`and meaning of this claim limitation.” Pet. 27 (citing Ex. 1006 ¶¶ 64–69).
`In response, Patent Owner asserts that “Dr. Barsky’s testimony
`confirms that ‘a POSITA would have understood . . . the term ‘different
`locations’ to mean some separation in distance, as described in the ’644
`Patent.” PO Resp. 17 (quoting Ex. 2002 ¶ 62 (citing Ex. 1001, 4:14–15)).
`Relying on the testimony of its expert, Dr. Barsky, Patent Owner asserts that
`a POSITA would have understood that a first individual is in a
`different location than a second individual if the first and second
`individuals are
`in different geographic
`locations and
`communicate via, for instance, video conferencing over an
`Internet connection, which is recognized as an exemplary
`communication technique employed by individuals at “different
`locations” in the ’644 Patent.
`PO Resp. 17–18 (quoting Ex. 2002 ¶ 62 (citing Ex. 1001, 4:12–14, 4:35–36,
`10:42–46)). We agree with Patent Owner.
`Again, we note that Petitioner provides no support from its expert, Dr.
`Schuette, to rebut Dr. Barsky’s opinion. Instead, Petitioner attempts to
`support its position by pointing to a portion of Dr. Barsky’s deposition
`testimony. Pet. Reply 26. In this regard, Petitioner asserts that “in his
`declaration, Dr. Barsky opined that ‘different locations’ means the
`participants are ‘separated by some distance’” (Pet. Reply 26 (citing Ex.
`2002 ¶ 61)), yet “[d]uring his deposition, Dr. Barsky acknowledged that two
`people in sitting in the same room are separated by some distance, but
`disagreed that this would satisfy ‘different locations’” (Id. (citing Ex. 1010,
`
`16
`
`
`
`PGR2018-00100
`Patent 9,980,644 B2
`
`39:24–52:11)). Petitioner further asserts that in the deposition, “Dr. Barsky
`modified his opinion of this phrase to require separation by “some distance
`that’s not a trivial distance.” Id. (emphasis added by Petitioner). And,
`according to Petitioner, the fact that “Dr. Barsky was unable to reasonably
`delineate how a POSITA would know whether or not two participants are
`separated by a ‘nontrivial’ distance” demonstrates that “the phrase ‘different
`locations’ is ambiguous on its face, and, therefore, renders claims 12–20
`unpatentable as indefinite.” Id. at 27.
`We are not persuaded by Petitioner’s argument. Instead, we maintain
`“that the claim language at issue would have been sufficiently clear, to a
`person of ordinary skill in the art, that an ‘individual’ at a ‘different location’
`would be separated by some distance, as set forth in the ’644 patent.” Dec.
`23–24 (citing Ex. 1001, 4:14–15); see also Ex. 1001, 10:42–46 (“At the
`exam site 1100, the exam is completed, and the video conference link may
`be disconnected and instructions may be displayed to wait for the doctor to
`issue the final prescription 1115.”). Here, we agree with Patent Owner that
`Consistent with Dr. Barsky’s declaration testimony, when
`interpreted in the context of the system recited in claim 12, a
`POSITA would have understood
`that even
`though
`two
`individuals are separated by some distance but are in the same
`room, they are not in “different locations” because this would
`render the “remote” aspects of claim 12 trivial and obsolete.
`PO Sur-Reply 21–22 (citing Ex. 2002 ¶¶ 60–62). Accordingly, Petitioner
`does not demonstrate on the record that the term “different locations”
`renders any of the challenged claims unpatentable for indefiniteness.
`
`17
`
`
`
`PGR2018-00100
`Patent 9,980,644 B2
`
`
`Claims 12–20 – antecedent basis
`4.
`Petitioner asserts that “[t]he recitations of ‘the eyecare doctor’ and
`‘the remote technician’ in claim 12 lack clear antecedent bases and, thus,
`render the claim indefinite.” Pet. 28. More particularly, Petitioner asserts
`that
`
`claim 12 initially recites that “availability data [is analyzed]” “to
`identify at least one remote technician” and “to identify at least
`one eyecare doctor.” Claim 12 then recites that the diagnostic
`center is configured to “transmit a second request over a network
`to a select remote technician” and “transmit a fourth request over
`the network to a select eyecare doctor.” In turn, claim 12
`concludes with a wherein clause stating that “the eyecare doctor,
`the remote technician and the patient are in different locations.”
`Pet. 28.
`Failure to provide explicit antecedent basis, however, does not always
`render a claim indefinite. For example, the failure to provide explicit
`antecedent basis does not render a claim indefinite if a POSITA would
`sufficiently understand the meaning of the claim when it is read in the
`context of the specification. Energizer Holdings, Inc. v. Int’l Trade Comm’n,
`435 F.3d 1366, 1370–71 (Fed. Cir. 2006) (finding implied antecedent basis
`for “said zinc anode” and characterizing the issue as one of what persons of
`ordinary skill would have understood when read in light of the
`specification). In our Decision on Institution, we stated that
`independent claim 12 provides a context for the recited “eyecare
`doctor” and “remote technician” making it understandable that
`“the eyecare doctor” refers to the “select[ed] eyecare doctor,”
`i.e., the eyecare doctor selected from the “subset of eyecare
`doctors,” and “the remote technician” refers to the “select[ed]
`remote technician,” i.e., the remote technician selected from the
`“subset of remote technicians,” as set forth by independent claim
`12.
`
`18
`
`
`
`PGR2018-00100
`Patent 9,980,644 B2
`
`Dec. 25.
`In response, “Patent Owner agrees with the Institution Decision” and
`asserts that “Dr. Barsky’s testimony confirms that ‘a POSITA would have
`understood, based on the overall examination architecture disclosed in the
`’644 Patent, that “the remote technician” coincides with the “select remote
`technician” and the “remote eyecare doctor” coincides with the “select
`eyecare doctor.”’” PO Resp. 18 (citing Ex. 2002 ¶¶ 63–65; Ex. 1001, 8:20–
`12:5).
`Petitioner provides no argument in response to the Decision on
`Institution or rebuttal to Dr. Barsky’s opinion. Instead, Petitioner simply
`“maintains that claims 12–20 are indefinite . . . under §112, and, therefore,
`unpatentable, for at least the reasons set forth in . . . the Petition.” Pet. Reply
`24. Accordingly, for the reasons stated in our Institution Decision, Petitioner
`does not demonstrate, on this record, that a lack of antecedent basis for the
`recitations “the eyecare doctor” and “the remote technician” renders claims
`12–20 indefinite.
`
`Claims 13 and 14 – “normal visual acuity test”
`5.
`Petitioner asserts that the term “normal visual acuity test,” as recited
`by dependent claim 13, “is vague and subjective because a POSITA would
`not understand what is meant by a ‘normal’ visual acuity test, much less
`what tests fall within this term.” Pet. 29 (citing Ex. 1006 ¶¶ 76–82).
`In
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