- Foundation Medicine, Inc. v. Guardant Health, Inc.Rehearing deniedPTAB · Dec 20, 2019 · IPR2019-00637 · APJ Tina E Hulse · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show it had adequately supported the claimed ligation efficiency or a specific motivation to modify Schmitt.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. Under 37 C.F.R. § 42.71(d), the request for rehearing must identify, specifically, 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. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“ligation efficiency. Indeed, we expressly acknowledged it. See Dec. 14 (noting Petitioner’s argument that “tagging ‘at least 20% of the cfDNA molecules’ would have been obvious because ligation efficiency ‘could be improved using a variety of techniques’”). After reviewing Petitioner’s evidence and argument, however, we were not persuaded that it was sufficient. Id. Even if the relevance of ligation efficiency was well known to a person of ordinary skill in the art for the reasons stated by Petitioner, the Petition still fails to provide a specific motivation to modify Schmitt. As explained in the Decision, “even if techniques were known that could have improved ligation efficiency, Petitioner has not shown sufficiently why a person of ordinary skill in the art would have modified Schmitt to tag ‘at least 20%’ of the DNA molecules.” Dec. 15; see also Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). That is, Petitioner’s motivation is “generic and bears no relation to any specific combination of prior art elements.” (Fed. Cir. 2012). As the Federal Circuit has explained, “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references to reach the particular claimed method.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). It is not until its Rehearing Request that Petitioner specifically ties its ligation efficiency argument to Schmitt. Reh’g Req. 11. Specifically, Petitioner asserts that “[b]ecause it would have been desirable to improve the sequencing library’s diversity or representation of the genome, a [person of ordinary skill in the art] trying to detect genetic aberrations with the DCS method of Schmitt would have been motivated to modify the method of Schmitt to optimize sample preparation, e.g., improve ligation efficiency, based on the techniques known in the art.” Id. As evidenced by the lack of citation, Petitioner did not make this argument in its Petition. We, therefore, do not consider it on rehearing, as a request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,902,992 - Foundation Medicine, Inc. v. Guardant Health, Inc.Rehearing deniedPTAB · Dec 20, 2019 · IPR2019-00636 · APJ Tina E Hulse · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show that Schmitt and the asserted obviousness rationale taught or motivated the claimed ligation efficiency.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. Under 37 C.F.R. § 42.71(d), the request for rehearing must identify, specifically, 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. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“ligation efficiency. Indeed, we expressly acknowledged it. See Dec. 14 (noting Petitioner’s argument that “tagging ‘at least 20% of the cfDNA molecules’ would have been obvious because ligation efficiency ‘could be improved using a variety of techniques’”). After reviewing Petitioner’s evidence and argument, however, we were not persuaded that it was sufficient. Id. Even if the relevance of ligation efficiency was well known to a person of ordinary skill in the art for the reasons stated by Petitioner, the Petition still fails to provide a specific motivation to modify Schmitt. As explained in the Decision, “even if techniques were known that could have improved ligation efficiency, Petitioner has not shown sufficiently why a person of ordinary skill in the art would have modified Schmitt to tag ‘at least 20%’ of the DNA molecules.” Dec. 15; see also Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). That is, Petitioner’s motivation is “generic and bears no relation to any specific combination of prior art elements.” (Fed. Cir. 2012). As the Federal Circuit has explained, “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references to reach the particular claimed method.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). It is not until its Rehearing Request that Petitioner specifically ties its ligation efficiency argument to Schmitt. Reh’g Req. 11. Specifically, Petitioner asserts that “[b]ecause it would have been desirable to improve the sequencing library’s diversity or representation of the genome, a [person of ordinary skill in the art] trying to detect genetic aberrations with the DCS method of Schmitt would have been motivated to modify the method of Schmitt to optimize sample preparation, e.g., improve ligation efficiency, based on the techniques known in the art.” Id. As evidenced by the lack of citation, Petitioner did not make this argument in its Petition. We, therefore, do not consider it on rehearing, as a request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“It is not until its Rehearing Request that Petitioner specifically ties its ligation efficiency argument to Schmitt. Reh’g Req. 11. Specifically, Petitioner asserts that “[b]ecause it would have been desirable to improve the sequencing library’s diversity or representation of the genome, a [person of ordinary skill in the art] trying to detect genetic aberrations with the DCS method of Schmitt would have been motivated to modify the method of Schmitt to optimize sample preparation, e.g., improve ligation efficiency, based on the techniques known in the art.” Id. As evidenced by the lack of citation, Petitioner did not make this argument in its Petition. We, therefore, do not consider it on rehearing, as a request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition.” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,902,992 - Anheuser-Busch Inbev S.A. And Anheuser-Busch, LLC v. Heineken Supply Chain B.V. (F.K.A. Heineken Technical Services B.V.)Institution deniedPTAB · Dec 12, 2019 · IPR2019-01151 · APJ John E Schneider · IPR · Institution
The Board denied institution for claims 1, 3, 7, and 10 because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), 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.” Upon considering the Petition and the Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we deny the Petition and decline to institute an inter partes review for that reason.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have at least a Master’s degree in mechanical engineering or product design and/or four years of relevant experience designing fluid dispensing systems. Pet. 14. Patent Owner disputes this definition of the level or ordinary skill in the art but does not offer its own definition. Prelim Resp. 22 n.4. For purposes of this decision, we adopt Petitioner’s description of the level of ordinary skill in the art.” slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Though Dr. Slocum contends that the shoulders of the valves depicted in Figures 17–20 and 21–24 are rigid because they are strong enough to resist fluid flow (see Ex. 1002 ¶¶ 134 and 132, respectively), Dr. Slocum does not provide adequate reasoning or evidence to support this opinion that one of ordinary skill in the art would consider shoulders that deform in the same manner as a flexible tube, and that are depicted as being integral with and made of the same material as the flexible tube, to nevertheless be rigid. For example, Dr. Slocum does not cite any extrinsic or intrinsic evidence that one of skill in the art would equate the ability to resist fluid flow with rigidity. Nor does Dr. Slocum or Petitioner propose any construction of the claim term “rigid” that would adequately distinguish the admittedly flexible pinch valves of Jeans.2 On the current record, and for the reasons discussed above, we find that Dr. Slocum’s testimony that the valve depicted in Jeans’s Figures 17–24 is made of a rigid material is not adequately supported. Accordingly, and based on the entire record presently before us, we determine that Petitioner has failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge based on the combination of Timmermans and Figures 17–24 of Jeans.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Both the ball valve and slit valve configurations shown in Figures 17– 24 of Jeans operate by pinching the valve to open it. Ex. 1005, 18–20; Ex. 1002 ¶¶ 132–135; Ex. 2020, 1180. As discussed above, Patent Owner argues that the ability to be opened by a pinching indicates that the valves disclosed in Figures 17–24 of Jeans are made of a flexible material and do not meet the limitation of being composed on a rigid material. Prelim. Resp. 34–35. We note that this assertion is consistent with the position of Petitioner and its declarant, Dr. Slocum, that pinch valves like those shown in Timmermans and Van Der Meer are not rigid. See Pet. 26–27, 33; Ex. 1002 ¶¶ 99, 120. Jeans explicitly states that Figures 17–20 and 21–24 depict two different embodiments in which “the flexible tube of the container” is “designed to act as a valve which is open and closed between pinched and unpinched conditions, or vice versa.” Ex. 1005, 18 (emphasis added).” slip op. at 12
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,188,751 - Ioxus, Inc. v. Cap-Xx, Ltd.Institution deniedPTAB · Dec 4, 2019 · IPR2019-01178 · APJ Jennifer Meyer Chagnon · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood of success on its asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314, which provides that an inter partes review may be instituted only upon a showing 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) (2012). After considering the Petition, the Preliminary Response, and the evidence of record, we conclude that the information presented does not establish a reasonable likelihood that Petitioner will prevail in challenging the patentability of the challenged claims. We, therefore, decline to institute an inter partes review of the ’034 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“On this record, we agree that Petitioner has not offered sufficient argument or supporting evidence that a person skilled in the art would have had reason to combine the teachings of Yoshida and AAPA. Petitioner first argues that the PowerStor device uses the same cylinder-type supercapacitor as that is described in Yoshida and “[i]t would have therefore been obvious to a [person of ordinary skill in the art] to combine the ‘Prior Art 1’ AAPA with Yoshida so that Yoshida’s supercapacitor has a volumetric FOM of 3.0 (or 3.02).” Pet. 62; see also Ex. 1002 ¶ 202 (“Because Yoshida has the same EDLC shape and wound-cell configuration as the PowerStor supercapacitor . . . it would have been obvious to a [person of ordinary skill in the art] to combine the data for that supercapacitor . . . with the general cylindrical EDLC disclosures in Yoshida to obtain the 3.0 FOMv value.”). Petitioner’s reasoning, while relevant to showing that the references could have been combined, i.e., that they may be analogous, nevertheless falls short of establishing what would have prompted the ordinarily skilled artisan to make the proffered combination to yield a supercapacitor having volumetric FOM of 3.0. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Petitioner’s further argument that “there were no standard electrode shapes/sizes/dimensions at the time of the ’034 patent” and, therefore, “[i]t would have been a simple matter of the [person of ordinary skill in the art art] playing around with the dimensions of Yoshida’s device to get to the 3.0 FOMv” fares no better. Pet. 62–63; Ex. 1002 ¶ 204. As our reviewing court has explained, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc., 805 F.3d at 1703 (citations omitted). That the person of ordinary skill in the art would have known how to achieve a volumetric FOM of 3.0 does not explain why modifying Yoshida to achieve a volumetric FOM of 3.0 is desirable in the first instance. The prior art may show a supercapacitor having a gravimetric FOM as claimed, but without more, this fails to provide the requisite reason for a skilled artisan to modify Yoshida’s device to include the claimed gravimetric FOM. KSR, 550 U.S. at 418–419. Accordingly, Petitioner’s assertions here are “insufficient to show persuasively that a relevant artisan would have recognized some deficiency in one reference or had some other reason to motivate looking to the other and combining them.” Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (unpublished); see also id. (“[T]he Board correctly concluded that Microsoft did not articulate a sufficient motivation to combine,” where “Microsoft gave no reason for the motivation of a person of ordinary skill to combine [two references] except that the references were directed to the same art or same techniques.”). Thus, Petitioner fails to show why a person of ordinary skill in the art would have been motivated to combine the teachings of Yoshida and AAPA as proposed. Arguments Regarding a Presumption of Obviousness” slip op. at 27
- Expert testimonyPetitioner expert creditedOther
“11 Petitioner requested authorization to file a Reply to Patent Owner’s Preliminary Response to address Patent Owner’s arguments regarding the credibility of Dr. Juzkow’s testimony. See Ex. 3001. We denied Petitioner’s request. Paper 7, 2. For purposes of this Decision, we have given full weight to Dr. Juzkow’s testimony, notwithstanding any alleged credibility issues raised by Patent Owner.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person having ordinary skill in the art would have had “a bachelor’s degree or the equivalent in electrical engineering or chemistry (or equivalent degree or experience) and at least two years of additional experience in the area of supercapacitors, or equivalent work experience.” Pet. 7. Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt and apply Petitioner’s proposed description of the person of ordinary skill in the art.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,920,034 - Ioxus, Inc. v. Cap-Xx, Ltd.Institution deniedPTAB · Dec 4, 2019 · IPR2019-01179 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution because the petition did not show a reason to combine Yoshida and AAPA to achieve the claimed gravimetric FOM for claims 1, 2, and 6–13.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Petitioner fails to show why a person of ordinary skill in the art would have been motivated to combine the teachings of Yoshida and AAPA as proposed, Petitioner has not shown a reasonable likelihood that it would prevail with respect to claim 1.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“On this record, we agree that Petitioner has not offered sufficient argument or supporting evidence that a person skilled in the art would have had reason to combine the teachings of Yoshida and AAPA. Petitioner first argues that the PowerStor device uses the same cylinder-type supercapacitor as that is described in Yoshida and “[i]t would have therefore been obvious to a POSITA to combine the ‘Prior Art 1’ AAPA with Yoshida so that Yoshida’s supercapacitor has a gravimetric FOM of 2.06.” Pet. 27–28; see also Ex. 1002 (“Because Yoshida has the same EDLC shape and wound-cell configuration as the PowerStor supercapacitor . . . it would have been obvious to a POSITA to combine data for that supercapacitor . . . with the general cylindrical EDLC disclosures in Yoshida to obtain the 2.06 FOMg value.”). Petitioner’s reasoning, while relevant to showing that the references could have been combined, i.e., that they may be analogous, nevertheless falls short of establishing what would have prompted the ordinarily skilled artisan to make the proffered combination to yield a supercapacitor having gravimetric FOM of 2.1. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Petitioner’s further argument that “the skilled artisan would have known to test Yoshida’s supercapacitor and then, based on the measured FOMg for that device . . . would start modifying certain aspects of the device to reach the target FOMg” fares no better. Pet. 28. As our reviewing court has explained, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc., 805 F.3d at 1703 (citations omitted). That the person of ordinary skill in the art would have known how to achieve a gravimetric FOM of 2.1 does not explain why modifying Yoshida to achieve a gravimetric FOM of 2.1 is desirable in the first instance. That the prior art may show a supercapacitor having a gravimetric FOM as claimed, without more, fails to provide the requisite reason for a skilled artisan to modify Yoshida’s device to include the claimed gravimetric FOM. KSR, 550 U.S. at 418–419. Accordingly, without more, Petitioner’s assertions are “insufficient to show persuasively that a relevant artisan would have recognized some deficiency in one reference or had some other reason to motivate looking to the other and combining them.” Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (unpublished); see also id. (“[T]he Board correctly concluded that Microsoft did not articulate a sufficient motivation to combine,” where “Microsoft gave no reason for the motivation of a person of ordinary skill to combine [two references] except that the references were directed to the same art or same techniques.”).” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,382,600 - Charter Communications, Inc. v. Sprint Communications Company, L.P.Institution deniedPTAB · Dec 3, 2019 · IPR2019-01135 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–53 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In consideration of the above, we are not persuaded that Petitioner has demonstrated a reasonable likelihood it will succeed in its challenge to claim 1 as unpatentable over the combined teachings of Sampsell and Yosuke.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in electrical engineering, computer science, or a related field with at least five years of experience or research in interactive systems applicable to digital television, including VOD for cable and Internet delivery.” Pet. 12–13 (citing Ex. 1002, Declaration of Dr. Kevin Almeroth (“Almeroth Dec.”) ¶¶ 44–46. Patent Owner does not offer a definition of the level of ordinary skill, but reserves the right to dispute Petitioner’s assessment of the level of ordinary skill. Prelim. Resp. 20. Petitioner’s commensurate with the subject matter for the ’7907 patent, for purposes of this Decision we apply Petitioner’s description of the level of ordinary skill.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“Having reviewed the claims and the specification of the ’7907 patent, we determine that the phrase “video-on-demand” in the preamble is necessary to give life and meaning to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“[I]f the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim.”). The difference between watching television and watching a video on demand is a difference in kind, rendering a video-on-demand system different from a non-video-on-demand system. While a person watching television can change channels and thus in some sense selects video content, such video content is being distributed regardless of whether the user selects specifically selects it.1 Because of that nature, the user also has control over the playback of the video content, such as pausing and stopping. Although the dependent claims more clearly demonstrate the on-demand nature of the video content (e.g., with the menu and control buttons), only the preamble in the independent claims provides the clue as to this context.2 Thus, the preamble serves to provide the framework necessary to understand the body of the claims, and is limiting.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“Owner’s proposed construction, i.e., plain and ordinary meaning or “a signal reflecting viewer control” and instead construed “view control signal” to mean “a viewer control signal generated and processed without the involvement of a set-top box for remote control of the video-on-demand system.” Pet. 15. Petitioner notes that the Comcast court found the ’7907 patent does not dispute the use of a set-top box for purposes other than remote control, e.g. for the purpose of decoding a video signal and presenting it to a television. Id. n. 3. Referring to Figure 1, the Specification states “[i]n response to viewer input to the control screen, the second display 122 transfers a corresponding viewer control signal to the second communication system 112,” the second communication system 112 1 See, e.g., Ex. 1001, 1:17–33 (instructing that, with video-on-demand, the system receives a request to view a selection from the video content library, the video is played “[i]n response to the [user’s] request,” and the user is allowed “to immediately view [the] selected video content”). 2 This is broadly recited in claim 12 to encompass the controls relevant to video-on-demand, e.g., play, pause, stop, etc. Limiting claim 1 to a video-on-demand system provides meaningful context. and “[t]he second communication interface 102 transfers the [viewer] control signal to the processing system 103.” Ex. 1001, 2:61–67. Thus, we understand the viewer control signal to be a signal generated in response to user input.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,757,907 - Procon Analytics, LLC v. Spireon, Inc.Institution deniedPTAB · Nov 22, 2019 · PGR2019-00051 · APJ John P Pinkerton · PGR · Institution
The Board denied institution of PGR on claims 1–14 because the Petition did not show it was more likely than not that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“A patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367– 68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). Further, an assertion of obviousness “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.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’” (citation omitted)).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 17
- Expert testimonyPetitioner expert discountedDecided for patent owner
“is conclusory and not supported by the evidence. Prelim. Resp. 32, 37–40. Petitioner’s argument relies on Dr. Wilhelm’s testimony, Jefferies, and the knowledge of a person of ordinary skill in the art. See Pet. 28. Dr. Wilhelm testifies that “[c]onventional vehicle inventory management systems associate information with a particular identifier; the systems are agnostic as to whether that identifier represents a financial institution or dealer.” Ex. 1029 ¶ 73. Based on this testimony, Petitioner argues “it does not matter whether that identifier represents a bank or dealer.” Pet. 28. Petitioner then argues Jefferies teaches that a location device may be marked as “available/in inventory” to be associated with a vehicle. Id. Finally, Petitioner argues that, in view of these teachings, a person of ordinary skill “would have sought to manage various types of vehicle inventories for several types of owners, including dealers.” Id. As stated, we agree with Patent Owner that Petitioner’s argument that the “ownership” requirement would have been obvious is conclusory and not supported by the evidence of record. Initially, we note that Dr. Wilhelm’s testimony concerning conventional vehicle inventory management systems is conclusory and unsupported by factual evidence. Thus, we give little, if any, weight to Dr. Wilhelm’s opinion testimony that such systems are “agnostic” to whether equipment identifiers are associated with lending institutions or auto dealers. 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 In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (noting that “the Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations”). In any event, Dr. Wilhelm’s testimony adds nothing in this regard because, as discussed supra, Boling discloses equipment identifiers, such as UINs, are associated with the ID number of banks and auto dealers. See Ex. 1005, 6:22–26; 6:29–33.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,089,598 - PTAB · Nov 22, 2019 · IPR2019-01111 · APJ Joni Y Chang · IPR · Institution
The Board denied institution on claims 20 and 69 because the petition was time-barred under § 315(b), finding Amazon was in privity with at least one petitioner.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“(b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). “[T]he IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b).” Worlds Inc. v. Bungie, the context of a real party in interest analysis); see also Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 4−5 (PTAB Jan. 24, 2019) (precedential) (placing “the burden on IPR petitioners to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a privy more than a year before a petition is filed”). “The Board’s decision under § 315(b) is whether to institute or not. The condition precedent for this decision is whether a time-barred party (a party that has been served with a complaint alleging infringement of the patent more than one year before the IPR was filed) is the petitioner, real party in interest, or privy of the petitioner.” Power Integrations, Inc. v. Semiconductor Components Indus., LLC, 926 F.3d 1306, 1314 (Fed. Cir. 2019) (emphases added). In the Federal Circuit’s view, the language of the statute makes privity and real parties in interest relationships that may arise “before institution relevant to the § 315(b) time-bar analysis.” Id. at 1315 (emphasis added).” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“More importantly, upon consideration of the parties’ contentions and evidence before us, we similarly determine that Amazon is a privy of several Petitioner Entities under the Taylor framework. See Taylor, 553 U.S. at 894−95. Here, at least the second, third, and fifth categories of Taylor support our determination that these Petitioner Entities are in privity with Amazon, a time-barred party. Second Taylor Category As to the second Taylor category, the record shows a pre-existing substantive legal relationship between Amazon and several Petitioner Entities—namely, PayPal, Strava, Valassis, Upwork Global, and RetailMeNot. The evidence of record shows that the relationship between Amazon and these Petitioner Entities went beyond typical transactions between supplier and buyer because there exists a substantive legal relationship between them that is defined by legal obligations and a sufficient degree of commonality of interest.” slip op. at 20
Discretionary denialPatents in suitUS 7,802,310 - Guardiar Solutions, Inc. v. Rsa Protective Technologies, LLCInstitution deniedPTAB · Nov 21, 2019 · IPR2019-01161 · APJ James J Mayberry · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“structural components of Kogyo’s base to which the alleged bollards are secured are configured to retain within the base supporting media introduced into the base when the base is mounted in the excavation, as required by the “retaining supporting media” limitation of claim 1. Instead, Petitioner appears to treat the elements of claim 1 as a list of separate structural requirements and ignores the relationship between the requirements. This approach is fatal to Petitioner’s position with respect to claim 1 under this ground. Specifically, Petitioner identifies member 32 as the at least one first structural member to which support column 36—the alleged bollard—is attached and member 33 as the at least one structural member when discussing the “secured bollard” limitation. Pet. 50–51. Petitioner then identifies first base 21 (and specifically, member 22 or 23) as the structural component configured to retain supporting media (concrete) with respect to the “retaining supporting media” limitation. Pet. 60–61. The Petition fails to explain adequately how Kogyo’s member 32 or 33 of second base 31 can satisfy the “secured bollard” limitation and member 22 or 23 of first base 21 can satisfy the “retaining supporting media” limitation when the claim requires the same structure to satisfy both of these limitations (the at least first structural member or the at least one structural member). Accordingly we determine, on the record before us, that the information in the Petition fails to demonstrate a reasonable likelihood that claim 1 is unpatentable under 35 U.S.C. § 103 over Kogyo and Carlyle.9” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“structural components of Kogyo’s base to which the alleged bollards are secured are configured to retain within the base supporting media introduced into the base when the base is mounted in the excavation, as required by the “retaining supporting media” limitation of claim 1. Instead, Petitioner appears to treat the elements of claim 1 as a list of separate structural requirements and ignores the relationship between the requirements. This approach is fatal to Petitioner’s position with respect to claim 1 under this ground. Specifically, Petitioner identifies member 32 as the at least one first structural member to which support column 36—the alleged bollard—is attached and member 33 as the at least one structural member when discussing the “secured bollard” limitation. Pet. 50–51. Petitioner then identifies first base 21 (and specifically, member 22 or 23) as the structural component configured to retain supporting media (concrete) with respect to the “retaining supporting media” limitation. Pet. 60–61. The Petition fails to explain adequately how Kogyo’s member 32 or 33 of second base 31 can satisfy the “secured bollard” limitation and member 22 or 23 of first base 21 can satisfy the “retaining supporting media” limitation when the claim requires the same structure to satisfy both of these limitations (the at least first structural member or the at least one structural member). Accordingly we determine, on the record before us, that the information in the Petition fails to demonstrate a reasonable likelihood that claim 1 is unpatentable under 35 U.S.C. § 103 over Kogyo and Carlyle.9” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We note that, for the nine disputed claim terms construed by the District Court, the court adopted the purported plain and ordinary meaning of the claim term. Ex. 1026, 4–17. We also apply the plain and ordinary meaning to these terms, as that meaning would have been understood by a person having ordinary skill in the art at the time of the invention, when read in context of the Specification. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (“We have made clear, moreover, that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention . . . in the context of the entire patent, including the specification.”). We determine, for the purposes of this Decision, that none of the terms require an express construction here to resolve the parties’ dispute. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having ordinary skill in the art: would have at least a bachelor’s degree or a technical degree in a field such as mechanical or civil engineering or physics and at least several years of experience in designing or manufacturing vehicle barrier systems, but numerous years of experience in the design or manufacture of vehicle barriers, particularly anti-ram systems, could substitute for formal education. Pet. 31 (referencing Ex. 1003 ¶¶ 71–76 (providing Mr. Roland’s testimony regarding the level of ordinary skill in the art)). Patent Owner does not dispute this characterization of the level of ordinary skill in the art. Prelim. Resp. 18. For the purposes of this Decision, we accept Petitioner’s characterization of the level of ordinary skill in the art, which we find is consistent with the level of skill reflected in the prior art of record.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,215,865 - PTAB · Nov 21, 2019 · IPR2019-01093 · APJ Denise M Pothier · IPR · Institution
The Board denied institution for challenged claims 46, 48, 52, and 55 because Amazon was a privy of at least one petitioner and its 2011 service made the petition time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDecided for patent owner
“B. Principles of Law Section 315(b) of Title 35 of the United States Code provides: (b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). Petitioner entities “bear[] the ultimate burden of persuasion to show that [their] petitions are not time-barred under § 315(b) based on a complaint served on an alleged [privy of Petitioner entities] more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). “[S]ervice of a pleading asserting a claim alleging infringement triggers the one-year time period for a petitioner to file a petition under 35 U.S.C. § 315(b).” GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 at 6 (PTAB Aug. 23, 2019) (precedential); id. at 24. This one-year trigger under 35 U.S.C. § 315(b) also applies to Petitioner entities’ privies or real parties in interest. See id. at 14 (“[T]he text of § 315(b) clearly and unmistakably considers only the date on which the petitioner, its privy, or a real party in interest was properly served with a complaint.”) (quoting Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1332 (Fed. Cir. 2018) (en banc in part)).” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“We recognize that the mere existence of an indemnity agreement might not be enough to find privity. See, e.g., WesternGeco, 889 F.3d at 1321. However, as is clear from the MDL record (summarized above), Amazon performed pursuant to the indemnity agreement and secured summary judgment related to infringement of the ’544 patent in favor of several of Petitioner entities. See, e.g., Ex. 2012, 3 (including the ’544 patent as part of the infringement action), 9 (listing “Category 3” infringement), 14 (“As to the effect of the indemnification agreement, it is undisputed that: . . . (2) sometime following PersonalWeb’s filing of complaints in the customer cases, Amazon agreed to indemnify its customers”), 16 (“Amazon assumed the indemnification of its customers prior to the consolidation of the MDL, and Amazon has not turned away any customer who has asked for indemnification”), 23 (finding that claim preclusion applied because, inter alia, the 2011 Amazon case involved the same parties or privies as the MDL proceeding), 26 (granting the DJ action “with respect to the Category 3 allegations involving use of . . . S3”). Thus, unlike in WesternGeco, in which the existence of an obligation to indemnify was ambiguous and undefined and, therefore, insufficient, 889 F.3d at 1321, Amazon actually assumed control of the lawsuits involving its customers, defended them, and secured relief on their behalf. We find this to be much stronger evidence of a pre-existing legal relationship than that shown in WesternGeco.” slip op. at 18
Discretionary denialPatents in suitUS 7,945,544
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.