- Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.Institution deniedPTAB · Jan 20, 2016 · IPR2015-01541 · APJ Barry L Grossman · IPR · Institution
The Board denied institution for claims 1–3 because Petitioners did not show a reasonable likelihood that the asserted combinations rendered the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Whether a party who is not a named participant in a given proceeding is a “real party-in-interest” to that proceeding “is a highly fact-dependent question.” Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,759. There is no “bright line test.” Id. Courts invoke the term “real party-in-interest” to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Id. The non-party’s participation with a petitioner may be overt or covert, and the evidence may be direct or circumstantial, but the evidence as a whole must show that the non-party possessed effective control over the petitioner relating to the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., IPR2013-00609, Paper 15 at 10 (PTAB Mar. 20, 2014). Accordingly, we look to the evidence as a whole to determine the fact dependent issue of whether Daifuku Holdings is a real party in interest in this proceeding. Here, the evidence on which Patent Owner relies does not establish that Daifuku Holdings has actual or potential effective control over this proceeding.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In an inter partes review, claim terms in an unexpired patent are interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs. LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioners propose express claim constructions for two functional phrases in the challenged claims, “for temporarily depositing the work” and “for storing work.” Pet. 7–9. Patent Owner does not propose specific construction of any claim term. Prelim. Resp. 14. Petitioners also propose a specific construction for the term “non-movable.” Pet. 9–10.” slip op. at 14
- Skill levelSkill level board ownOther
“c. Level of Ordinary Skill Petitioners asserts that a person of ordinary skill in the technology relevant to the ’184 patent “would have had at least a Bachelor of Science degree in Mechanical or Industrial and Systems Engineering, and 3–5 years of experience or substantially more practical experience in designing mechanical systems for conveying and loading articles.” Pet. 6 (citing Ex. 1009 ¶ 26). Patent Owner does not comment on the level of ordinary skill proposed by Petitioners or propose a different level of skill. We determine that, for purposes of this Decision, the asserted prior art reflects the level of skill. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (lack of specific findings on the level of skill in the art is not error where the prior art itself reflects an appropriate level and a need for testimony is not shown).” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioners”) filed a Petition requesting an inter partes review of claims 1–3 of U.S. Patent No. 6,183,184 B1 (Ex. 1001, “the ’184 patent”). Paper 1 (“Pet.”). Murata Machinery, Ltd. (“Patent Owner”) filed a Patent Owner Preliminary Response. Paper 6 (“Prelim. Resp.”). We review the Petition and Preliminary Response under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” “The ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765 (Aug. 14, 2012). Upon consideration of the Petition and Preliminary Response, we determine that the information presented does not show that there is a reasonable likelihood that Petitioners would prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we deny the Petition and do not institute an inter partes review of the ’184 patent. slip op. at 2
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,183,184 - Servicenow, Inc. v. BMC Software, Inc.Institution deniedPTAB · Jan 14, 2016 · IPR2015-01555 · APJ John A Hudalla · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that either asserted obviousness combination rendered the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review unless the information in the petition and preliminary 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.” For the reasons that follow, we have decided not to institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“modification of Meyer conflicts with ServiceNow’s mapping of Best Practice to the “first model of the modeled deployment of the software product” and Meyer to the “second model of the modeled software license contract for the software product.” See Pet. 29–32. ServiceNow would have us supplant (or disregard) its own asserted use of Best Practice for teaching the “first configuration item” elsewhere in claim 1, see id. at 29 (citing Ex. 1004, Table D.2), and substitute Meyer’s “information related to the software product” simply to reach the “comparing” step. See id. at 41–44. We find ServiceNow’s shifting application of the references to the “first configuration item” of claim 1 to be irreconcilable. Moreover, even if it were feasible, ServiceNow’s proposed modification of Meyer to include CIs in a CMDB would relate to stored data, namely, the license records that ServiceNow maps to the recited “license certificate.” See id. at 34 (“Under this combination, the claimed ‘license certificate’ . . . is generated based on the license information in the CMDB . . . .”). But, inconsistently, ServiceNow also likens CIs in the CMDB to Meyer’s license request issued to the licensing server. See id. at 40 (relating the “first configuration item” to a “license request issued to the licensing server”). The result would be a system that no longer issues a license request, as taught by Meyer, because Meyer’s licensing request would have been replaced by a CI. As noted by BMC, ServiceNow does not address how such a modified system in Meyer would operate in the absence of licensing requests. See Prelim. Resp. 17, 22–23. ServiceNow cannot both rely on the license request to initiate the “comparing” action and at the same time replace the license request with a data structure, the first configuration item, which is not associated with any request or “comparing” action. For these reasons, and because ServiceNow’s citations to Addy do not cure the deficiencies noted above, ServiceNow has not established the combination of Meyer, Best Practice, and Addy teaches or suggests “comparing the first configuration item with the license certificate,” as recited in claim 1. Therefore, ServiceNow has not demonstrated a reasonable likelihood of prevailing on its assertion that Meyer, Best Practice, and Addy would have rendered obvious the subject matter of claim 1.” slip op. at 12
- Skill levelOther
§ 103 obviousnessPatents in suitUS 8,646,093 - Servicenow, Inc. v. BMC Software, Inc.Institution deniedPTAB · Dec 18, 2015 · IPR2015-01329 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 4, and 7 obvious over Glasser and Davis.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner. Petitioner’s evidence does not establish that the ACLs in Glasser’s system are stored in a folder or file within a hierarchical namespace. To the contrary, the evidence shows that Glasser stores the ACLs in registry 167, separate from the hierarchically organized arrangement of folders and files that Petitioner identifies as the asserted “objects” defined in the ’586 patent. See Pet. 34 (arguing that the Windows 95 “folders and files [in Glasser and Davis] qualify as ‘objects’”), 35 (“Glasser and Davis confirm that folders and files are self‐contained entities that contain data, and therefore, qualify as ‘objects’ that were added to the namespace.”). Petitioner also acknowledges that “[a] folder object in Glasser can inherit values from the access control list (ACL) of its parent folder” (Pet. 43 (emphasis added)), which is not the same thing as inheriting ACL values from the parent folder. Therefore, Petitioner has not provided sufficient evidence to establish that i) the ACLs are contained in Glasser’s hierarchy of folders and files, which are the recited “objects” identified by Petitioner, and ii) the ACLs are “shar[ed] . . . with a plurality of the one or more computer system[s],” because the ACLs are not dynamically inherited by a child folder (the recited “instance” object) from a parent folder, i.e., “from the prototype” object, as recited in claim 1 of the ’586 patent. For the reasons given above, we are not persuaded by Petitioner that Glasser or Davis discloses the self-contained “objects” defined in the ’586 patent or “sharing the plurality of objects with a plurality of the one or more computer system[s]” by “dynamic[] inherit[ance],” as recited in claim 1. Claims 4 and 7 depend from claim 1. Therefore, for the same reasons, we are not persuaded by Petitioner’s obviousness argument regarding claims 4 and 7. III. CONCLUSION Petitioner has failed to demonstrate a reasonable likelihood of prevailing with respect to at least one of the claims challenged in this Petition, based on the ground asserted and information presented therein. IV. ORDER For the reasons given, it is ORDERED that the Petition is denied.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“according to their broadest reasonable interpretation in light of the patent specification. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279–81 (Fed. Cir. 2015). Under the broadest reasonable interpretation standard, we assign claim terms their ordinary and customary meaning, as understood by one of ordinary skill in the art, in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The ’586 patent provides the following definition of the term “object”: “As used herein, an object is a self‐contained entity that contains data and/or 1 U.S. Patent No. 5,956,715 issued September 21, 1999 to Glasser et al., on an application filed September 23, 1996, which is a continuation of an earlier application filed December 13, 1994. Ex. 1003 (“Glasser”). Petitioner asserts that Glasser qualifies as prior art under 35 U.S.C. §§ 102(a), (e). Pet. 21. 2 Davis, selected excerpts from Fred Davis, THE WINDOWS BIBLE, Peachpit Press (1996). Ex. 1004 (“Davis”). Petitioner asserts that Davis qualifies as prior art under 35 U.S.C. § 102(b). Pet. 22. procedures to manipulate the data. Objects may be stored in a volatile memory and/or a nonvolatile memory.” Ex. 1001, 9:19–22. The ’586 patent uses lexicography to define the term “object” with reasonable clarity, deliberateness, and precision. Petitioner and Patent Owner both agree to the broadest reasonable construction of “object” as it is defined in the ’586 patent. Pet. 14, 16; Prelim. Resp. 8, 10. Therefore, we construe the term “object” as “a self-contained entity that contains data and/or procedures to manipulate the data, which may be stored in a volatile memory and/or a nonvolatile memory.”3” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Petitioner’s evidence does not establish that the ACLs in Glasser’s system are stored in a folder or file within a hierarchical namespace. To the contrary, the evidence shows that Glasser stores the ACLs in registry 167, separate from the hierarchically organized arrangement of folders and files that Petitioner identifies as the asserted “objects” defined in the ’586 patent. See Pet. 34 (arguing that the Windows 95 “folders and files [in Glasser and Davis] qualify as ‘objects’”), 35 (“Glasser and Davis confirm that folders and files are self‐contained entities that contain data, and therefore, qualify as ‘objects’ that were added to the namespace.”). Petitioner also acknowledges that “[a] folder object in Glasser can inherit values from the access control list (ACL) of its parent folder” (Pet. 43 (emphasis added)), which is not the same thing as inheriting ACL values from the parent folder. Therefore, Petitioner has not provided sufficient evidence to establish that i) the ACLs are contained in Glasser’s hierarchy of folders and files, which are the recited “objects” identified by Petitioner, and ii) the ACLs are “shar[ed] . . . with a plurality of the one or more computer system[s],” because the ACLs are not dynamically inherited by a child folder (the recited “instance” object) from a parent folder, i.e., “from the prototype” object, as recited in claim 1 of the ’586 patent. For the reasons given above, we are not persuaded by Petitioner that Glasser or Davis discloses the self-contained “objects” defined in the ’586 patent or “sharing the plurality of objects with a plurality of the one or more computer system[s]” by “dynamic[] inherit[ance],” as recited in claim 1. Claims 4 and 7 depend from claim 1. Therefore, for the same reasons, we are not persuaded by Petitioner’s obviousness argument regarding claims 4 and 7.” slip op. at 13
Claim construction§ 103 obviousnessPatents in suitUS 6,895,586 - Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.Institution deniedPTAB · May 4, 2015 · IPR2015-00084 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 6–14 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons given above, we are not persuaded by a preponderance of the evidence that Petitioner has shown a reasonable likelihood of prevailing in its challenge that claims 6, 7, 9–11, and 14 of the ’153 patent would have been obvious to a person of ordinary skill in the art at the time of the invention over JPAP 216 and JPAP 237.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The claim language requires the translating stage to be configured to move the gripper laterally (horizontally) after the overhead transport vehicle has positioned the translating stage and gripper “adjacent to” the storage bin. The gripper moves laterally such that it can “directly access” the material unit in the adjacent storage bin. The claimed system, taken as a whole, is not defined in such a way as to prevent the gripper from having rotational or angular movement, as argued by Patent Owner, as long as the gripper moves laterally to grip the stored material unit.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“We further agree with Patent Owner that Petitioner has not provided persuasive evidence of a reason why a person skilled in the art of AMHS would have been motivated to combine JPAP 216 and JPAP 237 in the manner asserted by Petitioner, with a reasonable expectation of success. Prelim. Resp. 21–26. Petitioner generally describes how the two references could be combined to meet the claim limitations, but Petitioner does not explain why a person of ordinary skill in the art would have combined JPAP 216 and JPAP 237 “‘in the way the claimed invention does.’” Id. at 22 (citing ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012)). In particular, we are not persuaded that Petitioner has explained why a person of skill in the art would want to add an overhead hoist to the AMHS of JPAP 216. The AMHS of JPAP 216 utilizes the vertical motion of the storage carousel to move the pods, and there is no indication in JPAP 216, JPAP 237, or Petitioner’s analysis of why an overhead hoist would be necessary or beneficial to the functioning of an AMHS of the type disclosed in JPAP 216. Id. at 27–28. Although Petitioner consistently paraphrases the tests for obviousness set forth by the Supreme Court in KSR, we agree with Patent Owner that such paraphrasing cannot substitute for factual analysis and application of the particular facts and evidence of this case according to the analytical framework set out in KSR. Id. at 22. For example, Petitioner argues that modifying the system disclosed in JPAP 216 to use the extendable arm and hoist disclosed in JPAP 237 “would have been merely an arrangement of old elements with each performing the same function it had been known to perform, yielding no more than one would expect from such an arrangement, and this conclusion is supported by logic, judgment, and common sense.” Pet. 23 (citing Ex. 1028 ¶ 61). Although the quoted statement is consistent with KSR, neither Petitioner nor Dr. Sturges provides the important analysis of explaining why, based on the particular facts and evidence of the present case, one of ordinary skill would have made the suggested modification or why the logic, judgment, and common sense of such a person would have led to the asserted combination with a reasonable expectation of success. A review of the cited testimony from paragraphs 60 and 61 of Dr. Sturges’s Declaration reveals similarly conclusory testimony, unsupported by a specific engineering and technical analysis of how the asserted combination would have worked and why it would have been an obvious combination to one of skill in the art. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (Quoted with approval in KSR, 550 U.S. at 418). Perhaps the most relevant evidence relied upon by Petitioner is found in one sentence from paragraph 62 of Dr. Sturges’s Declaration. “[T]he motivation to modify is self-evident from the problem that needed to be resolved – moving article 40 from port 28 to station 56.” Pet. 24 (citing Ex. 1028 ¶ 62). Dr. Sturges, however, does not explain why such a problem existed – JPAP 216 does not indicate such a problem – or precisely how and why it would have been resolved by a person of skill in the art in the manner claimed in the ’153 patent. The quoted sentence, by itself, is far from sufficient to satisfy Petitioner’s burden of persuasion on the question of obviousness. We find that “[t]he expert failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims.” ActiveVideo Networks, 694 F.3d at 1327.” slip op. at 15
- Expert testimonyPetitioner expert discountedDecided for patent owner
“vehicle that can move articles vertically to a processing station as stated by Petitioner. Prelim. Resp. 18–19. We agree with Patent Owner. In JPAP 216 Figure 1, vertical movement of the storage shelves is performed by the vertical carousel stocker. Id. at 19–20 (citing Ex. 1007, Fig. 3); Ex. 1007, ¶ 10, Fig. 1. Vertical movement of the ceiling vehicle is not necessary, or in any way indicated, to move the pods vertically from port 28 to work station 56 as argued by Petitioner. Id. at 19–20 (citing Ex. 1007, Fig. 3); Ex. 1007 ¶¶ 13, 15, 17–19. Petitioner’s reliance on paragraph 58 of Dr. Sturges’s Declaration (Pet. 22) is not persuasive, because it makes the conclusory statement that a person skilled in the art would have recognized that transfer device 38 “must have the capability to move . . . vertically to effect transfer of the article 40 to both port 28 and station 56,” without explaining why. Ex. 1028 ¶ 58. The quoted statement, moreover, appears to be at odds with the drawings and description of JPAP 216, as explained by Patent Owner. Prelim. Resp. 19–20. In the absence of any engineering and design analysis of the AMHS disclosed in JPAP 216 to support the quoted statement, we give it no weight.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,771,153 - Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.Institution deniedPTAB · May 4, 2015 · IPR2015-00087 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood of proving claims 6–14 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION Petitioner has failed to demonstrate a reasonable likelihood of prevailing with respect to at least one of the claims challenged in this Petition, based on the grounds asserted and information presented therein. IV. ORDER For the reasons given, it is ORDERED that the Petition is denied.” slip op. at 18
- BurdenDenied
“For the reasons given above, we are not persuaded by a preponderance of the evidence that Petitioner has shown a reasonable likelihood of prevailing in its challenge that claims 6, 7, 9–11, and 14 of the ’153 patent would have been obvious to a person of ordinary skill in the art at the time of the invention over JPAP 216 and JPAP 237.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“persuasive evidence of a reason why a person skilled in the art of AMHS would have been motivated to combine JPAP 216 and JPAP 237 in the manner asserted by Petitioner, with a reasonable expectation of success. Prelim. Resp. 21–26. Petitioner generally describes how the two references could be combined to meet the claim limitations, but Petitioner does not explain why a person of ordinary skill in the art would have combined JPAP 216 and JPAP 237 “‘in the way the claimed invention does.’” Id. at 22 (citing ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012)). In particular, we are not persuaded that Petitioner has explained why a person of skill in the art would want to add an overhead hoist to the AMHS of JPAP 216. The AMHS of JPAP 216 utilizes the vertical motion of the storage carousel to move the pods, and there is no indication in JPAP 216, JPAP 237, or Petitioner’s analysis of why an overhead hoist would be necessary or beneficial to the functioning of an AMHS of the type disclosed in JPAP 216. Id. at 27–28. Although Petitioner consistently paraphrases the tests for obviousness set forth by the Supreme Court in KSR, we agree with Patent Owner that such paraphrasing cannot substitute for factual analysis and application of the particular facts and evidence of this case according to the analytical framework set out in KSR. Id. at 22.” slip op. at 15
- Expert testimonyPetitioner expert discountedDecided for patent owner
“vehicle that can move articles vertically to a processing station as stated by Petitioner. Prelim. Resp. 18–19. We agree with Patent Owner. In JPAP 216 Figure 1, vertical movement of the storage shelves is performed by the vertical carousel stocker. Id. at 19–20 (citing Ex. 1007, Fig. 3); Ex. 1007, ¶ 10, Fig. 1. Vertical movement of the ceiling vehicle is not necessary, or in any way indicated, to move the pods vertically from port 28 to work station 56 as argued by Petitioner. Id. at 19–20 (citing Ex. 1007, Fig. 3); Ex. 1007 ¶¶ 13, 15, 17–19. Petitioner’s reliance on paragraph 58 of Dr. Sturges’s Declaration (Pet. 22) is not persuasive, because it makes the conclusory statement that a person skilled in the art would have recognized that transfer device 38 “must have the capability to move . . . vertically to effect transfer of the article 40 to both port 28 and station 56,” without explaining why. Ex. 1028 ¶ 58. The quoted statement, moreover, appears to be at odds with the drawings and description of JPAP 216, as explained by Patent Owner. Prelim. Resp. 19–20. In the absence of any engineering and design analysis of the AMHS disclosed in JPAP 216 to support the quoted statement, we give it no weight.” slip op. at 13
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,165,927
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.