• Yahoo! Inc. v. Almondnet, Inc.Rehearing denied
  PTAB · Feb 5, 2018 · CBM2017-00046 · APJ Michael W Kim · CBM · Rehearing

  The Board denied Yahoo!’s rehearing request, leaving in place the denial of institution on the § 101 challenge to claims 1–8, 10, 13–16, 24, 27–29, 31, 32, 36, 37, 39, and 41–47.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable

    “targeted” (to say nothing of “first Internet site,” “second Internet site,” and directing off-site advertisements to visitors of the second Internet site as a consequence of determining visits to the first Internet site “using the tags and the records,” as also recited in claim 1). See Decision 11–14. Moreover, Petitioner’s assertion is incorrect, as while certainly at times, an omission of “Internet” from an identification of what a claim is directed to is proper, our review of the case law cited by Petitioner does not support a blanket assertion that the term “Internet” should never be considered in this manner, under any circumstances. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256–57 (Fed. Cir. 2014) (under Alice step one, the court held that “[a]lthough the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet”). We are unpersuaded that we could have misapprehended or overlooked that which is incorrect. slip op. at 6

  § 101 eligibility
  Patents in suitUS 7,822,639
• LG Electronics, Inc. v. Broadcom CorporationInstitution denied
  PTAB · Dec 19, 2017 · IPR2017-01624 · APJ Norman H Beamer · IPR · Institution

  The Board denied institution because Diaz did not disclose internally reprogrammable hardware accelerators, and the other grounds did not cure that deficiency.

  RulingsInstitution decision

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

    “3. Construction of “configurable” In construing this term, we have considered the specification of the ’353 patent and its prosecution history. Microsoft Corp. v. Proxycinn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). In accord with these portions of the ’844 patent specification and file history discussed supra, we conclude that a hardware accelerator is configurable only if its functionality can be internally reprogrammed. Thus, under our construction, an accelerator selected by an API or other instrumentality would not itself be “configurable.” This will be discussed further infra.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “However, as Patent Owner argues, Diaz ’353 does not explicitly or inherently disclose hardware accelerators that are configurable to perform decoding functions according to a plurality of decoding methods. In Diaz ’533 the overall decoder — as opposed to the constituent hardware accelerators — is configurable in that the processor controls which hardware accelerators are activated. Prelim. Resp. 2, 5–8. We see no meaningful distinction in this respect between Diaz ’353 and Sullivan ’021 which, as discussed above, discloses an API that is configurable to select various hardware accelerators, but which are not themselves configurable, to assist in the decoding process. See Prelim. Resp. 6. In sum, the functionality of the hardware accelerators of Diaz ’353 cannot be internally reprogrammed, but rather can only be bypassed or reused for various operations. Therefore, in accord with our claim construction set forth above, we determine that those hardware accelerators are not “configurable” as required by claim 1. Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “C. Obviousness of Claims 8 and 14 over Diaz ’353 and Purcell ’483, and of Claim 12 over Diaz ’353 and Fandrianto ’459 or Kim As discussed above, Petitioner has not demonstrated a reasonable likelihood of prevailing on the issue of whether Diaz ’353 discloses the claim 1 requirement of configurable hardware accelerators. Claims 8, 12, and 14 depend from claim 1 and so also include this requirement by virtue of their dependency. Petitioner’s obviousness grounds directed to these claims is premised on Petitioner’s arguments with respect to claim 1 that Diaz ’353 discloses configurable hardware accelerators. Pet. 51–63. Petitioner does not provide argument or evidence — aside from the above-considered anticipation arguments based on Diaz ’353 alone — that the combination of Diaz ’353 with Purcell ’483, Fandrianto ’459 or Kim teaches or suggests “a hardware accelerator . . . configurable to perform the decoding function according to a plurality of decoding methods.” Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of claims 8 and 14 as obvious over Diaz ’353 and Purcell ’483, or of claim 12 as obvious over Diaz ’353 and Fandrianto ’459 or Kim.” slip op. at 12

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

    “Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,284,844
• Hutchinson Technology Inc. / Hutchinson Technology Operations (Thailand) Co., Ltd. v. Nitto Denko CorporationInstitution denied
  PTAB · Dec 5, 2017 · IPR2017-01499 · APJ Melissa A Haapala · IPR · Institution

  The Board denied institution on claims 1–4 and 6 because Petitioner did not show a reasonable likelihood of proving anticipation or obviousness on the asserted grounds.

  RulingsInstitution decision

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

    “We find that the cited evidence does not support Petitioner’s position that the specific identified trace 53 meets the “eighth line” limitation. Petitioner’s own annotated version of Figure 2A shows the identified trace 53 bypassing the lines identified as the fifth and sixth lines and not “branching from fifth and sixth lines” as asserted by Petitioner. 1 See Pet. 24. The cited portions of Contreras also fail to describe that the identified trace 53 extends to be branched from the end of line 72 (fifth line) or the end of line 74 (sixth line). See Ex. 1005, 3:6–16, 4:26–34. We do not find credible Dr. Coughlin’s testimony that there is a mistake in Figure 2A because it is conclusory and not supported by evidence. See 37. C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017)” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “that the specific identified trace 53 meets the “eighth line” limitation. Petitioner’s own annotated version of Figure 2A shows the identified trace 53 bypassing the lines identified as the fifth and sixth lines and not “branching from fifth and sixth lines” as asserted by Petitioner. 1 See Pet. 24. The cited portions of Contreras also fail to describe that the identified trace 53 extends to be branched from the end of line 72 (fifth line) or the end of line 74 (sixth line). See Ex. 1005, 3:6–16, 4:26–34. We do not find credible Dr. Coughlin’s testimony that there is a mistake in Figure 2A because it is conclusory and not supported by evidence. See 37. C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017) 1 Figure 2A does show a trace that extends from the ends of lines 71, 72, 73, 74, but Petitioner maps this trace to the claimed “fourth line” and not the “eighth line.” See Pet. 21–22. (“The Board reviewed the evidence presented by the parties, and chose not to credit Skky’s expert testimony. . . we discern no reversible error in that choice.”). Furthermore, we agree with Patent Owner that even if Dr. Coughlin’s testimony is correct that the identified line should be connected with the buried conductive island (Ex. 1007 ¶ 96), Petitioner fails to explain how a line that connects to the buried conductive island meets the claim limitation “extends to be branched from the other end of said fifth line or the other end of said sixth line” (emphasis added).” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “In view of our analysis, we do not find it necessary to construe any terms for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 9

  Claim construction
  Patents in suitUS 7,923,644
• Sprint Spectrum, L.P. v. TC Technology LLCInstitution denied
  PTAB · Jul 28, 2017 · IPR2017-00771 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of establishing claims 1 and 2 unpatentable over any of the three asserted § 103 grounds.

  RulingsInstitution decision

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

    “review of claims 1 and 2 of U.S. Patent No. 5,815,488 (Ex. 1001, “the ’488 patent”). Paper 1 (“Pet.”). Patent Owner, TC Technology LLC, filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1 and 2 of the ’488 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.5(b); see also In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims are generally given their broadest possible scope during prosecution, the Board’s review of the claims of an expired patent is similar to that of a district court’s review.”) (internal citation omitted) (“Phillips” standard). Under this approach, claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Phillips, 415 F.3d at 1313. Petitioner and Patent Owner do not dispute any claim constructions. Prelim. Resp. 14. For purposes of this decision, we determine no terms need an explicit construction to resolve a controversy at this preliminary stage. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy).” slip op. at 5

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “that Fattouche’s teaching of transmitting a frame 410 over one vc slot is not compatible with Fattouche’s teaching of transmitting a frame that encompasses all of the vc slots shown in Figure 2. Prelim. Resp. 20 (citing Ex. 1004, 6:37–38, Fig. 2; Ex. 2001 ¶¶ 36–47, 53–57). Dr. Haas testifies that: Fattouche states, “the portable transmits a frame 410 over one vc slot. See the discussion in relation to Figure 5a below.” Fattouche 6:38. This is either a different embodiment than Figure 2 above or a mistake because in Figure 2 a “frame” equals all the N vc slots, so transmitting a “frame 410 over one vc slot” does not make sense. Further, certain portions of Fattouche, which I explain further below, describe Figure 2’s frame in more detail and disclose that a frame is all 4096 points (i.e., all N vc slots) and that the full frame is transmitted by a single transmitter. In fact, Fattouche’s detailed description (including its explanation of Figure 5) also describes transmitting a frame over one time slot, and not one vc slot . . . . Ex. 2001 ¶ 37. Dr. Haas further testifies that Fattouche teaches each portable transmitting one frame at a time using the Time Division Duplex operation illustrated in Figure 4. Ex. 2001 ¶¶ 44–45. We are persuaded by the testimony of Dr. Haas that, taken literally, the meaning of Fattouche’s description of transmitting a frame 410 having multiple vc slots over one vc slot “does not make sense.” We are also persuaded by the testimony of Dr. Haas that the description of transmitting a frame 410 over one vc slot in Fattouche likely means transmitting one frame over one time slot, using a Time Division operation, as shown in Figure 4 of Fattouche. In light of this expert testimony, we are not persuaded by Petitioner’s explanation of how Fattouche teaches that a person of ordinary skill in the art would transmit a frame of N voice channel slots as shown in Figure 2 of Fattouche over one voice channel slot as discussed on Page 6, line 38 of Fattouche. Petitioner, therefore, does not sufficiently show that Fattouche teaches “the subsets of baseband frequencies allocated to each remote location being mutually exclusive” as claimed in the “translating” step.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “2. Analysis Claim 1 recites the following “translating” step: at each remote location, coding data to be transmitted by translating each group of one or more bits of said data into a transform coefficient associated with a particular baseband frequency in a particular subset of orthogonal baseband frequencies allocated to the remote location . . . the subsets of baseband frequencies allocated to each remote location being mutually exclusive. Ex. 1001, 10:49–53 (emphasis added). Claim 2 recites a similar limitation. Id. at 11:13–17. Petitioner contends that Fattouche teaches this limitation in disclosing that each portable transmits information over one vc slot. Pet. 18 (citing Ex. 1004, 6:38). Petitioner also asserts that Fattouche “teaches the portables use the set of N vc slots depicted in Figure 2, each vc representing a particular subset of the baseband frequencies, in accordance with frequency division multiple access (“FDMA”). Id. Petitioner relies on testimony of Dr. Singer to support its argument that FDMA denotes assigning multiple users exclusive frequencies within a frequency band. Id. (citing Ex. 1002 ¶ 86).” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 5,815,488
• Rockwell Automation, Inc. / Rockwell Automation Technologies, Inc. v. Automation Middleware Solutions, Inc.Institution denied
  PTAB · Apr 18, 2017 · IPR2017-00048 · APJ Gregg I Anderson · IPR · Institution

  The Board denied institution on claims 1–3 because neither asserted obviousness combination showed a reasonable likelihood of prevailing.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “II. ANALYSIS A. Preliminary Matter Patent Owner urges us to exercise our discretion and deny the petition under 35 U.S.C. § 325(d). Prelim. Resp. 18–35. Patent Owner argues that Petitioner presented “the same or substantially the same art or arguments addressed during prior PTO proceedings” involving the ’236 patent. Id. at 18–19. Patent Owner provides charts comparing the prior art arguments made in the Petition with similar arguments in the ’062 IPR. Id. at 27–28. Patent Owner’s argument is compelling. However, we choose not to exercise our discretion here and instead address the Petition on its merits.” slip op. at 7

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

    “We have authority under 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 37 C.F.R. § 42.4(a). We are not persuaded there is a reasonable likelihood that Petitioner would prevail in showing that at least one of the challenged claims is unpatentable and decline to institute an inter partes review of the challenged claims.” slip op. at 2

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

    “For the purposes of this Decision, we need construe only the term “primitive operation.” For “primitive operation,” Petitioner applies the following construction, which it says Patent Owner proposed: “motion control operations that cannot be simulated using a combination of other motion control operations.” Pet. 14 (citing Ex. 1006,3 14; 15; 17; 31; 38; Ex. 1002 ¶48). This is consistent with the specification (see I.B. above) and the District Court’s preliminary claim construction. Ex. 2016,4 2. We, therefore, agree with this construction and, therefore, adopt it for this Decision.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “While Petitioner presents a credible rationale for combining WOSA and ODBC, we are not persuaded by Petitioner’s showing that a person of ordinary skill would have looked to WOSA and ODBC for use in a motion control application. According to Petitioner, there is “ample evidence” that companies in “the motion control space” desired to improve their products “by making them less proprietary and more hardware independent.” Pet. 37. We are not convinced, however, that this helps Petitioner establish that a person of ordinary skill would look to Cashin or ODBC as a solution. As the’236, patent specification points out, “[t]he WOSA model has no relation to motion control devices.” Id. at col. 2, ll. 66–67. Petitioner, thus, provides no persuasive evidence that a person or ordinary skill “would have appreciated the applicability to motion control of the well-known hardwareindependent benefits of the WOSA software design.” Pet. 37. Petitioner argues that the inventors of the ’236 patent “merely combined known technologies in a predictable way.” Pet. 23–26. Petitioner asserts the commercial embodiment of the ’236 patent (XMC) is based on WOSA. Id. at 24. We are not persuaded by this argument because it is contrary to the principle that an inventor’s own work may not be considered prior art in the absence of a statutory basis. Riverwood Intern. Corp. v. R.A. Jones & Co., Inc., 324 F.3d 1346, 1355 (Fed. Cir. 2003). In sum, we are not convinced that Petitioner has presented a sufficient rationale, apart from hindsight, demonstrating that a person of ordinary skill would have combined Cashin/WOSA and ODBC with either of the motion control references.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 6,516,236
• Resmed Limited / Resmed Inc., And Resmed Corp v. Fisher & Paykel Healthcare LimitedInstitution denied
  PTAB · Mar 9, 2017 · IPR2016-01723 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation or obviousness grounds.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute a trial under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may be instituted only if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We are persuaded there is not a reasonable likelihood that Petitioner would prevail in showing that the challenged claims are unpatentable. Pursuant to 35 U.S.C. § 314, we do not institute an inter partes review as to claims 1–7, 10 and 11 of the ’345 patent1.” slip op. at 2

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Patent Owner’s argument fails. Prior Board decisions have consistently interpreted 35 U.S.C. § 315(a)(1) as not barring inter partes 2 Claims 8 and 9 were disclaimed and have therefore been omitted from this listing. review if the previously filed civil action was dismissed without prejudice, as is the case here. See, e.g., Microsoft Corp. v. Parallel Networks Licensing, LLC, Case IPR2015-00486, slip op. at 6–7 (PTAB Jul. 15, 2015) (Paper 10); Oracle Corp. v. Click-to-Call Techs. LP, Case IPR2013-00312, slip op. at 12–13 (PTAB Oct. 28, 2014) (Paper 52).” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Patent Owner responds that the “Petition should be denied because it fails to provide the required evidence necessary to establish the prior art status of [the MR810] technical manual.” Prelim. Resp. 25. Patent Owner asserts “[w]hether a reference has been established as prior art is not merely an evidentiary matter, but a substantive element of Petitioner’s prima facie case of invalidity.” Id. Patent Owner responds to the proofs that its own manual was published by April 2004, including the issue date appearing in the Manual itself, by challenging them as “unclear”: In attempting to establish the prior art status of the MR810 Manual, i.e., that it was “published in April 2004,” the Petition purports to rely on an “April 2004” “Date Issued” date corresponding to Revision C on page 6 of the MR810 Manual. Pet. at 6; Ex. 1006 at 6. But it is unclear from the document what this means, or to whom the document was actually “issued.” Id. at 27–28. We do not find this argument, coming from the party that produced the Manual and presumably knows when it was published, to be credible. Instead, on this record, we determine that Petitioner’s showing that the MR810 Manual was published in April 2004 is sufficient at this stage. Nor do we agree with Patent Owner’s suggestion that the determination whether the Manual qualifies as prior art is not “evidentiary.” See Fed. R. Evid. 104(b) (“When the relevance of evidence depends on whether a fact exists, proof must be introduced sufficient to support a finding that the fact does exist.”)” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownNo construction neededMixed

    “We are persuaded by Petitioner’s argument that their construction is correct as to some, but not all challenged claims. Specifically, claim 1 identifies the “heater wire” and “identification elements” as separate elements. “Where a claim lists elements separately, the clear implication of the claim language is that those elements are distinct components of the patented invention.” Becton, Dickinson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1253 (Fed. Cir. 2010) (internal quotation marks and alterations omitted). Furthermore, we agree with Patent Owner that the ’345 patent specification “consistently teaches that the heater wire is a separate component connected in series with the identification element.” Prelim. Resp. 34–37. As the Federal Circuit said in Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015), “[t]he protocol of giving claims their broadest reasonable interpretation . . . does not include giving claims a legally incorrect interpretation.” (internal quotation marks omitted). Further, the Court stated: “Even under the broadest reasonable interpretation, the Board’s construction cannot be divorced from the specification and the record evidence.” Id. (internal quotation marks omitted). We conclude, therefore, that the terms “heater wire” and “identification element” in challenged claim 1 and its dependent claims 2 and 4–7 should be construed as requiring separate elements. Claims 10 and 11 present a different situation. These claims depend from claim 8. That claim, directed to a method for identifying a conduit attached to an apparatus, recites the following step: “attaching a conduit comprising a heater wire including an identification element to said apparatus.” (emphasis added). In the context of these claims, and based on the language of the claims themselves, we conclude that “a heater wire including an identification element” could reasonably be construed to encompass a heater wire that is also the identification element.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,186,345
• Seabery North America Inc. v. Lincoln Global, Inc.Rehearing denied
  PTAB · Nov 17, 2016 · IPR2016-00840 · APJ Thomas L Giannetti · IPR · Rehearing

  The Board denied rehearing, leaving institution denied for claims 32, 51, 70–79, and 105–111 because Petitioner did not show Aiteanu taught or suggested comparing performance data to known parameters.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides in relevant part: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. slip op. at 3

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

    “claims, we did not rely on the lack of disclosure of an algorithm in the ’398 patent in concluding that Petitioner had failed to carry its burden of demonstrating obviousness. Instead, we considered Petitioner’s analysis of Aiteanu and found it insufficient to persuade us that the “comparison” element was met: The description in that analysis does not teach or suggest a comparison to known parameters. See [Pet.] 19–21. Because we conclude that Aiteanu does not teach or suggest such a comparison, we determine that Petitioner has failed to establish a reasonable likelihood of succeeding on its challenge to these claims. Dec. 22–23. These insufficiencies in the Petition are not cured by attacking the ’398 patent’s disclosure, nor is Petitioner relieved its burden of proving the claims unpatentable. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (“In an inter partes review . . . , the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”) (citation omitted).” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Id. at 16 (emphasis added) (citation omitted). The Board found Petitioner’s analysis of this element in relation to Aiteanu insufficient to describe a comparison to known parameters to arrive at this quality characteristic. Dec. 22. Petitioner’s main argument in its Rehearing Request focuses on a different alleged “quality characteristic” in Aiteanu, namely torch position. Req. Reh’g 5–6. The Petition did not present such an argument, and therefore the Board could not have been overlooked or misapprehended it. Instead, we addressed the argument presented by Petitioner: that calculated weld seam thickness was based on a comparison of known parameters. Pet. 16. For the reasons stated in our Institution Decision and in the Preliminary Response (at pp. 38–39), we concluded that Petitioner did not present sufficient proof that Aiteanu met this condition.” slip op. at 5

  § 103 obviousness
• Toyota Motor Corporation v. Blitzsafe Texas, LLCRehearing denied
  PTAB · Aug 31, 2016 · IPR2016-00419 · APJ Hung H Bui · IPR · Rehearing

  The Board denied Toyota’s rehearing request, leaving in place the denial of institution for claims 49–57, 62–64, 66, 68, 70, 71, 73–80, 94, 95, 97, 99–103, 106, 109–111, 113, 115, and 120 because Ohmura did …

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “We have reviewed Petitioner’s request for rehearing and carefully considered Petitioner’s arguments. However, we are not persuaded that the Board misapprehended or overlooked Petitioner’s arguments presented with respect to the patentability of claims 49–57, 62–64, 66, 68, 70, 71, 73–80, 94, 95, 97, 99–103, 106, 109–111, 113, 115, and 120 of the ’342 patent.” slip op. at 2

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

    “In contrast, all challenged claims of the ’342 patent require (1) “the portable device” to play (i.e., decode) an audio file, and (2) “the integration subsystem” to receive “audio generated by the portable device.” As explained in the Decision, we referred to the requirement that audio generated by the portable device as the result of playing the audio file as “the audio generated by the portable device” limitation, which was consistent with Dr. Thomas Matheson’s Declaration at ¶¶ 50–53. Decision 23; see also Matheson’s Declaration (Ex. 1120 ¶¶ 50–53).” slip op. at 5

  • Strike new argumentNew argument disregardedDenied

    “Second, Petitioner identifies numerous portions of Ohmura, for the first time, that it did not identify in the Petition or Reply. In particular, Petitioner contends the Board “misapprehended or overlooked the cited portions of Ohmura that disclose the functions of the construed ‘integration subsystem.’” See Req. Reh’g 10. However, we could not have misapprehended or overlooked portions of Ohmura that were not presented in the Petition or Reply. A request for rehearing is not an opportunity to present new arguments.” slip op. at 7

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

    “As explained in the Decision, we rejected Petitioner’s proposed construction of “integration subsystem” because Petitioner’s proposed construction required the claimed “integration subsystem” to be a microprocessor or processor programmed to perform a method for wirelessly integrating a portable device for use with a car audio/video system, shown in FIG. 24. Decision 13–15. Instead, we construed the term “integration subsystem” as performing the functions as expressly defined by the Specification of the ’342 patent. Id. at 15 (citing Ex. 1101, 8:64–9:3).” slip op. at 7

  Claim construction
  Patents in suitUS 8,155,342
• Toyota Motor Corporation v. Blitzsafe Texas, LLCInstitution denied
  PTAB · Jul 6, 2016 · IPR2016-00422 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Toyota did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted grounds.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine that the information presented in the Petition shows “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered both the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any claim. Thus, we do not institute an inter partes review of any claim of the ’786 patent.” slip op. at 2

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

    “functionally and structurally separate” from the car stereo, the proposed construction is incomplete in that it omits any requirement of separation or distinctness of the interface from the portable or after-market device connected thereto. Prelim. Resp. 6–7. Second, the proposed construction is too narrow by specifying that the interface “integrates an after-market device with a car stereo.” We note that the Specification of the ’786 patent provides a special definition for “integration” or “integrated.” Ex. 1001, 4:47–52. We discern no reason to import limitations into a claim if they are unnecessary to accord meaning to the claim. Third, the proposed construction is too narrow by requiring the interface to be a microcontroller. In the Specification of the ’786 patent, the term “interface” is described as including not only a microcontroller but also several discrete components, such as resistors, diodes, capacitors, transistors, oscillators, amplifiers, and multiplexers, shown in various embodiments of Figures 3A, 3B1–3B2, 3C1–3C2, and 3D. Ex. 1101, 9:8–20, 10:19–33, 11:4–18, 11:59–67. As such, the term “interface” itself is not limited to a microcontroller. In that regard, note that if the interface itself is construed as a microcontroller, as Petitioner proposes, then the additional claim language reciting that the interface includes a microcontroller would serve no meaningful purpose. slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable

    “dashed lines, and the parts regarded by Petitioner as the portable or after-market device in green and surrounded by dashed lines. We are unpersuaded by Petitioner’s identification of the part colored blue in the above-reproduced illustration to meet the requirement of the interface in claims 57 and 86. First, there is insufficient showing of separate structural identity between the alleged “interface” and the portion colored green by Petitioner in the same illustration and alleged as by Petitioner as the external device. Both blue and green portions are component parts within Lau’s music server 102. It would be incorrect to regard them as having separate structural identities. Petitioner has not adequately explained what accords these portions separate structural identities, e.g., separate supporting frames, independent housing, etc. Also, Petitioner has not identified any description within Lau that refers to the combination of parts labeled in blue as collectively constituting a unit of any kind, or that refers to the combination of parts labeled in green as collectively constituting a unit of any kind. Thus, the separate structural identity requirement between the alleged interface and a portable MP3 player (claim 57) or an after-market video device (claim 86) is not met.” slip op. at 19

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “The above-quoted recitations of claim 92 presumptively set forth elements under 35 U.S.C. § 112, ¶ 6, and are construed to cover the corresponding structure, material, or acts described in the specification and equivalents 3 Paragraphs 1 through 6 of § 112 were renamed as paragraphs (a) through (f) when § 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112– 29, 125 Stat. 284, 329 (2011) (“AIA”) took effect on September 16, 2012. Because the patent application resulting in the ’786 patent was filed before the effective date of the AIA, we refer to the pre-AIA version of § 112. thereof. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). For a means-plus-function element under 35 U.S.C. § 112, ¶ 6, the Board’s trial rules require the Petition to identify the corresponding structure, material, or acts corresponding to each claimed function. Specifically, 37 C.F.R. § 42.104(b)(3) governs the content of a petition with respect to claim construction and provides: “[w]here the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. § 112 [, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.”4 37 C.F.R. § 42.104(b)(3). The “construction” referred to by 37 C.F.R. § 42.104(b)(3) is the construction proposed by the Petitioner, one that Petitioner believes is the correct construction under applicable law and should apply in the involved proceeding. Here, Petitioner did not comply with 37 C.F.R. § 42.104(b)(3).” slip op. at 25

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,489,786
• Palo Alto Networks, Inc. v. Finjan, Inc.Rehearing denied
  PTAB · May 20, 2016 · IPR2015-02000 · APJ Thomas L Giannetti · IPR · Rehearing

  The Board denied Palo Alto Networks’ rehearing request, leaving in place the denial of institution for claims 1–22 because it showed no overlooked or misapprehended matter.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “least the following reasons. Under our rules a petition must set forth, for each claim challenged, “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). As we pointed out in our Decision, the Petition did not proffer a specific construction for the term “file cache.” Decision 6. Instead, Petitioner proposed the following blanket construction for all terms: “the BRI for every claim term to be its plain and ordinary meaning.” Pet. 12 (footnote omitted). Petitioner provided no further explanation or support for its proposal. Nor does Petitioner provide a construction for “file cache” in the rehearing request, or any explanation why the Board’s construction is incorrect. Thus, while Petitioner contends that the Patent Owner’s construction adopted by the Board is “unsupported by the ʼ731 patent claims, specification, or even any extrinsic evidence,” Petitioner provides no details as to what was allegedly overlooked or misapprehended by the Board. Req. Reh’g 7. Petitioner’s argument is unavailing because it shifts the burden of advancing a claim construction from the petitioner to the Board. The AIA statute is clear that the burden lies with Petitioner to demonstrate a reasonable likelihood of prevailing before an inter partes review is instituted. 35 U.S.C. § 314(a). Consequently, our rules require the petition to set forth a claim construction. See supra. Having failed to present a specific construction for “file cache” in its Petition, or to convince the Board that the term needed no further construction, Petitioner did not discharge its burden and therefore is not in a position to complain now that the Board chose an alternative construction presented by Patent Owner.” slip op. at 3

  • Strike new argumentNew argument disregardedDecided for patent owner

    “This argument could not have been overlooked or misapprehended because it was not presented in the Petition. The Petition’s argument on this issue was one paragraph long and raised two points. Pet. 12. First, Petitioner asserted that neither the parent nor grandparent applications disclosed a file cache because “the word ‘cache’ does not appear in either application.” Id. The second argument was that Patent Owner “tacitly admitted during prosecution” that the challenged claims were not entitled to the earlier date. Id. Both arguments were addressed by the Board in the Decision on Institution, at pages 11–13. The rehearing request cites no discussion in the Petition of the current assertion that the known Downloadables are lists. Moreover, the evidence relied on by Patent Owner to support this argument does not contradict the Board’s finding that the ’194 patent described a file cache. Patent Owner relies on the ʼ194 patent itself, which states: “A Downloadable is an executable application program, which is downloaded from a source computer and run on the destination computer.” Ex. 2001, col. 1, ll. 44–47. Thus, Petitioner’s argument that a “known Downloadable” is just a list and not a file is not supported by the ʼ194 patent. A rehearing request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed. See supra. It is not an opportunity to present new arguments. Petitioner’s argument that known Downloadables are lists was not raised by in the Petition and is not proper in a rehearing request.” slip op. at 6

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “because it was not presented in the Petition. The Petition’s argument on this issue was one paragraph long and raised two points. Pet. 12. First, Petitioner asserted that neither the parent nor grandparent applications disclosed a file cache because “the word ‘cache’ does not appear in either application.” Id. The second argument was that Patent Owner “tacitly admitted during prosecution” that the challenged claims were not entitled to the earlier date. Id. Both arguments were addressed by the Board in the Decision on Institution, at pages 11–13. The rehearing request cites no discussion in the Petition of the current assertion that the known Downloadables are lists. Moreover, the evidence relied on by Patent Owner to support this argument does not contradict the Board’s finding that the ’194 patent described a file cache. Patent Owner relies on the ʼ194 patent itself, which states: “A Downloadable is an executable application program, which is downloaded from a source computer and run on the destination computer.” Ex. 2001, col. 1, ll. 44–47. Thus, Petitioner’s argument that a “known Downloadable” is just a list and not a file is not supported by the ʼ194 patent.” slip op. at 6

  Claim construction§ 102 anticipation
  Patents in suitUS 7,418,731

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.