- Toyota Motor Corporation v. Cellport Systems, Inc.Institution deniedPTAB · Dec 16, 2015 · IPR2015-01422 · APJ Scott C Moore · IPR · Institution
The Board denied institution on all claims: claims 1–11 lacked a sufficient showing of the claimed network protocol converter structure, and claims 12–21 were denied as a second, delayed petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“network communication means” claim limitation. Claims 2, 6, and 8–11 depend from claim 1 and, thus, incorporate this limitation by way of dependence. A petition for inter partes review “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Because the “first standard network communication means” is a means-plus-function claim limitation, Petitioner is required to show that both the recited function of this claim limitation and the corresponding structure or an equivalent are present in the applied references. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (“[A] challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.”). The Petition does not identify any structure in the applied references that is allegedly identical or equivalent to the corresponding structure of the “first standard network communication means” claim limitation, i.e., network protocol converter 26. Petitioner’s entire argument concerning the “first standard network communication means” of claims 1, 3, 4, 5, and 7, is reproduced below: Cao discloses a “first standard network communications means” (i.e., wireless Proxim radio link with base station) that uses Internet Protocol for “presenting information for transmission over the airlink in a first format that is acceptable to a first standardized network that includes the airlink” (i.e., TCP/IP format). See Ex. 1019 at 6; see also supra Section VIII.A.4. Pet. 40. Though Petitioner alleges that the “wireless Proxim radio link with base station” of Cao performs the recited function of the “first standard network communication means,” Petitioner does not compare the structure of the “wireless Proxim radio link with base station” of Cao to the structure of network protocol converter 26. Cited Section VIII.A.4 of the Petition similarly does not address the structure of the “wireless Proxim radio link with base station” of Cao. See Pet. 18–20. Thus, the Petition does not identify any structure in the applied references that is allegedly identical or equivalent to the corresponding structure of the “first standard network communication means” claim limitation. For the foregoing reasons, the Petition fails to show persuasively that the “first standard network communication means” claim limitation is found in the references that Petitioner relies upon with respect to claims 1–11. Thus, the information presented in the Petition is not sufficient to demonstrate a reasonable likelihood that Petitioner will prevail in demonstrating that claims 1–11 are unpatentable. 3.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“The 4½ month delay between Petitioner’s first and second Petitions is problematic for several reasons. First, the timing of this Petition makes consolidation impractical, and, thus, frustrates the interest of judicial economy. The oral hearing in IPR2015-00633 is set for April 14, 2016. IPR2015-00633, Paper 12. Thus, it would not be practical to institute a second inter partes review and consolidate that proceeding with IPR2015- 00633. See 35 U.S.C. § 315(d). Assuming that Petitioner has shown here a reasonable likelihood that claims 12–21 are unpatentable, two separate trials would be necessary, requiring the parties, as well as the Board, to expend significant additional resources. Second, even if we were to institute a second inter partes review involving claims 12–21, Petitioner might be unable to “maintain” the second inter partes review upon issuance of a final written decision in IPR2015-00633. 35 U.S.C. § 325(e)(1) provides that any final written decision in IPR2015-00633 on the patentability of claims 12–21 would preclude Petitioner from “maintain[ing] a proceeding before the Office . . . on any ground that the petition raised or reasonably could have raised during [the earlier] post-grant review.” Thus, instituting a second inter partes review may result in a significant waste of time and resources for the parties and for Board. See 37 C.F.R. § 42.1(b) (“This part shall be construed to secure a just, speedy, and inexpensive resolution of every proceeding.”). Third, the timing of the second Petition raises the potential for gamesmanship. Petitioner did not file this Petition until one month after Patent Owner filed its Preliminary Response in IPR2015-00633. The timing of the second Petition gave Petitioner the opportunity to preview the arguments set forth in the Patent Owner Preliminary Response in IPR2015- 00633. Petitioner also has not provided an adequate explanation for the 4½ month delay between the filing of this Petition and the filing of its previous Petition. Though Petitioner alleges that it was not aware of Cao “at the time it filed Petition No. 2015-00633” (Pet. 2), Petitioner does not state when and under what circumstances, during the 4½ months that preceded the filing of the current Petition, it became aware of Cao. Cao is a technical paper that was published by a major research university in the United States, and, thus, it is not clear on this record why Petitioner was unable to locate Cao at an earlier date. See Ex. 1019, 1. We further note that Petitioner has not identified any meaningful distinctions between the arguments regarding claims 12–21 in this Petition and the arguments Petitioner set forth in its earlier Petition. For instance, Petitioner does not explain in what ways the grounds asserted against claims 12–21 in this proceeding are superior to the grounds against the same claims and on the basis of which we instituted trial in IPR2015-00633. In view of the foregoing, we exercise our discretion and decline to” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Despite the rebuttable presumption, we do not construe “controller means” as a means-plus-function claim limitation. The presumption is overcome because the claim language does not link the “controller means” to a specific recited function. See York Prod., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996) (“Without a ‘means’ sufficiently connected to a recited function, the presumption in use of the word ‘means’ does not operate.”). In addition, the presumption is overcome when the claim specifies detailed structure sufficient to perform any recited or implicit function, e.g., controlling. See TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008) (“Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.”); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1376 (Fed. Cir. 2003). Each of independent claims 1, 3, 4, 5, and 7 recites that the “controller means” includes the “processing means” and the “first standard network communication means.” As discussed herein, the processing means and the first standard network communication means are means-plus-function claim limitations that are defined in terms of specific structures disclosed in the Specification. Moreover, the recited “controller” is also a structure that is sufficient to perform any recited or implicit function of the “controller means.” The rebuttable presumption also is overcome because the controller means claim limitation is associated with these structures. Thus, in accordance with the ordinary and customary meaning of the claim language, and consistent with the Specification (see Ex. 1001, 2:66–3:29, 6:11–37, 8:1–45), for purposes of this Decision, we construe “controller means” as “a controller.” 3.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)§112(f) appliesDecided for patent owner
“is a means-plus-function limitation is overcome because this limitation lacks an associated function. Prelim. Resp. 13. We agree. The grammatical structure of the claim and, in particular, the fact that the functional language cited by Petitioner appears immediately after the recitation of the “processing means” evidences an intent to associate this functional language with the “processing means” claim limitation. Thus, for purposes of this Decision, we construe “processing means” as a means-plus-function claim limitation having a recited function of “controlling the sending and receiving of said information using said wireless device between said first remote station and the vehicle.” “Structure disclosed in the specification qualifies as ‘corresponding structure’ if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.” Williamson, 792 F.3d at 1352. The Specification of the ’074 Patent indicates that the sending and receiving of vehicle information between the remote station and the vehicle is controlled by processor 90 in conjunction with real time operating system 94. See Ex. 1001, 8:1–23, 13:54–56. Data memory 106 is not linked clearly to the recited function because data memory 106 merely stores information, and does not control the sending and receiving of information. See id. 8:45–58, 9:31–45, 10:58–64, 13:8–10, 23–26. Thus, the structure in the Specification that corresponds to the “processing means” is “processor 90 in conjunction with real time operating system 94.”” slip op. at 11
Claim constructionDiscretionary denialcites GrahamPatents in suitUS 5,732,074 - HTC Corporation / HTC America, Inc. v. NFC Technology, LLCRehearing deniedPTAB · Aug 20, 2015 · IPR2015-00384 · APJ James B Arpin · IPR · Rehearing
The Board denied HTC’s rehearing request and left in place its discretionary denial of institution on claims 13–15 and 19 based on § 325(d) and follow-on petition concerns.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a 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, opposition, or a reply. (Emphasis added.) When rehearing a Decision on Institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“that, contrary to Petitioner’s argument, the two petitions challenge overlapping sets of claims.1 In particular, Petitioner expressly challenges claim 13 in both IPR2014- 01199 (see 1199 Dec. on Inst. 3) and IPR2015-00384 (Pet. 60 (“This Petition demonstrates that there is a reasonable likelihood that Petitioners will prevail in their challenge of patentability for Claims 13, 14, 15 and 19.” (emphasis added)). Further, to the extent that Petitioner argues that it only challenges the dependent claims, challenges to independent claim 13 are made expressly as part of the challenges to each of dependent claims 14, 15, and 19. Pet. 12–26 (claim 13 as unpatentable over Akiho); 31–39 (claim 13 as unpatentable over Amtmann); 44–46 (claim 13 as unpatentable over Amtmann and ECMA-340); 49–57 (claim 13 as unpatentable Charrat and Kuhl).2 With respect to claim 13, the asserted grounds in the Petition in IPR2015-00384 rely on the same references and make substantially the same arguments against claim 13 as those asserted in the Petition in IPR2014- 01199. As we indicated in the Decision on Institution, “we may exercise our discretion and decline to institute inter partes review under 35 U.S.C. § 325(d)” based on the assertion of the same references against claim 13. 384 Dec. on Inst. 9–10. Moreover, although at the time Petitioner filed its second Petition, Petitioner did not know on which, if any, of its asserted grounds we might institute review, Petitioner’s request that we consider identical challenges to claim 13 in each” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“Petition is unquestionably an attempt to obtain a “second bite at the apple,” at least with respect to claim 13.3 384 Dec. on Inst. 11; see Reh’g Req. 1. Moreover, to the extent that Petitioner also relies upon Arisawa to challenge claims 14, 15, or 19 on another ground(s), Petitioner’s asserted grounds and arguments make clear that Akiho or Charrat and Kuhl, or both, allegedly teach the additional limitations recited in claims 14, 15, or 19. See, e.g., Pet. 26–30 (applying the teachings of Akiho to claims 14, 15, and 19), 39–43 (applying the teachings of Amtmann and Arisawa to claims 14, 15, and 19). Petitioner presents no evidence or argument that Arisawa was not known or available to Petitioner at the time the Petition was filed in IPR2014-01199. We also note that Arisawa is listed among the “References Cited” on page 2 in Kuhl. See Conopo, Inc. v. The Proctor & Gamble Co., Case IPR2014-00506, slip op. at 6 (PTAB July 7, 2014) (Paper 17) (informative) (“The instant Petition relies on thirteen pieces of prior art: six that were raised in the 505 Petition . . .; and seven that are new to this proceeding . . . . Unilever, however, presents no argument or evidence that the seven newly cited references were not known or available to it at the time of filing of the 505 Petition.”); see also Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP, Case IPR2015-00555, slip op. at 7 (PTAB June 19, 2015) (Paper 20) (“Petitioner simply presents arguments now that it could have made in [its earlier Petition], had it merely chosen to do so.”). Therefore, we deny Petitioner’s Request for Rehearing on this basis. 3 As noted below, however, Petitioner waited until after Patent Owner had filed a Preliminary Response in IPR2014-01199 before filing the follow-on Petition in IPR2015-00384.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“presents evidence (e.g., Arisawa) and arguments that Petitioner had no reason to raise in the Petition in IPR2014-01199. Reh’g Req. 8–10. In particular, Petitioner argues that Patent Owner had not asserted that Petitioner infringed dependent claims 14, 15, and 19 until after the Petition in IPR2014-01199 was filed. Id. Petitioner presents a timeline in its Request for Rehearing, in which Petitioner suggests that Patent Owner filed an amended complaint in the related litigation alleging for the first time that Petitioner infringed dependent claims 14, 15, and 19. Id. at 2. Petitioner argues in the Request for Rehearing that, on August 19, 2014, Patent Owner served a second set of infringement contentions in the lawsuit, asserting dependent claims 14, 15, and 19 for the very first time. Because it was too late to address those claims in the first petition, Petitioner[] prepared and filed this second petition for inter partes review on December 6, 2014. Id. at 3 (emphasis added). Petitioner does not identify, however, where it raised this argument in its Petition in IPR2015-00384, as required by 37 C.F.R. § 42.71(d). See id. We determine that neither the timeline nor the fact that Patent Owner filed an amended complaint was raised or argued in the Petition in IPR2015-00384, as justification for filing a second petition. We could not have “misapprehended or overlooked” evidence or argument not previously presented. Therefore, we also deny Petitioner’s Request for Rehearing on this basis.” slip op. at 6
Discretionary denialPatents in suitUS 7,665,664
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.