- PTAB · Jul 1, 2019 · IPR2018-01743 · APJ Michael W Kim · IPR · Rehearing
The Board denied rehearing of its decision denying institution of inter partes review of claims 1–25, finding Petitioner had not shown an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3); see also Dec. 11 (citing statute). Petitioner also has the burden to “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.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Prior constructionPrior construction not adoptedDecided for patent owner
“Petition for the limitation of “application . . . that include interactive services.” See generally Req. Our own review of the Petition results in the same. See generally Pet. Pages 12–17 of the Petition provide constructions for several terms, including “application,” but not for the entirety of the limitation identified above. Indeed, Petitioner relied on the Board’s previous decisions for both explicit and implicit constructions of other claim limitations. See Pet. 13–15, 86, 93, 96, 104 (citing Ex. 1004, 40–41, 137– 138, 146–147, 151–152, 157–158, 161, 171). Noticeably absent, however, is the same for “application . . . that include interactive services.” We could not have misapprehended or overlooked a claim construction that was not made. Even if we delve somewhat into the cited portion of the Board’s previous decision, however, we remain unpersuaded. Specifically, while Petitioner’s quotation of the Decision is correct, the Decision later states: “We agree that the body of claim 4 does not require applications with interactive services, but ‘interactive services’ must be one kind of application that can be requested.” Ex. 1004, 136. So, while our analysis may have been altered somewhat, we are unpersuaded that Petitioner has met its burden of showing that maintaining the same result, denial of institution on this basis, would have been an abuse of discretion.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and, Orbitz, LLC (“Petitioner”) filed a Petition to institute an inter partes review of claims 1–25 of U.S. Patent 7,072,849 B1 (Ex. 1002, “the ’849 Patent”). Paper 2 (“Pet.”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On March 19, 2019, we issued a Decision Denying Institution of Inter Partes Review. Paper 8 (“Decision”). On May 1, 2019, Petitioner filed a Request for Rehearing. Paper 11 (“Req.”).1” slip op. at 2
Claim constructionPatents in suitUS 7,072,849 - Toyota Motor Corporation v. General Electric CompanyRehearing deniedPTAB · Jun 14, 2019 · IPR2019-00018 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Toyota’s rehearing request, leaving the denial of institution on claims 16–19 in place because the Petition did not explain how the proposed combination supplied the claimed second DC/DC conversion device.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Mitsutani’s inverter also should be included in its proposed combination of Robinson and Mitsutani. Req. Reh’g 4. Petitioner admits that “the Petition did not call it out separately.” Id. However, a request for rehearing is not an opportunity to supplement the Petition, or submit new arguments that were not made in the Petition, after the Decision has noted the deficiencies in the Petitioner’s original analysis. See 37 C.F.R. § 42.71(d).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“proposed prior art combination teaches or suggests “a second DC/DC conversion device coupleable to an internal charging device,” as recited in independent claim 16. Dec. 11−15. In its Petition, Petitioner asserts that Robinson discloses the claimed “second DC/DC conversion device.” Pet. 31−32 (citing Ex. 1006 ¶ 145, Fig. 4). Petitioner modifies Robinson’s Figure 4 to “include an additional 4−34 V scavenger power converter for device port 4.” Id. Petitioner’s modified Figure 4 of Robinson is reproduced below with annotations added by Petitioner (id.).” slip op. at 3
- BurdenDecided for patent owner
“The burden to prove unpatentability is on the petitioner, not on the patent owner or the Board. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015) (noting that the petitioner in an inter partes proceeding has the initial burden of production and the burden” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“internal charging device” to device port 4 (light pink). Pet. 31. Petitioner asserts that “[t]his second 4−34V scavenger power converter is ‘coupleable to an internal charging device,’ as claimed, because the combined Robinson/Mitsutani system teaches a motor generator that is internal to the vehicle and would be connected to Robinson’s device port 4.” Id. at 32 (citing Ex. 1002 ¶ 76) (emphases added). slip op. at 4
§ 103 obviousnessPatents in suitUS 9,821,668 - Toyota Motor Corp. v. GE Hybrid Technologies, LLCRehearing deniedPTAB · May 9, 2019 · IPR2019-00015 · APJ Lynne H Browne · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 1–16 because the petition did not adequately explain why the prior art would be modified to meet the vehicle-control limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. PRINCIPLES OF LAW 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. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“pertaining to a vehicle control unit. Pet. 20, 24; Ex. 1002 ¶ 55. The Petition and the Miller Declaration provide evidence that Sugimoto discloses control device 60, and that one skilled in the art would have considered Sugimoto’s control device 60 to be a vehicle control unit, as required by each of claims 1 and 5. Id. The Petition and the Miller Declaration also provide evidence that Sugimoto’s control device 60 controls a switch. Pet. 17–19; Ex. 1002 ¶ 50. Such evidence alone, however, does not provide sufficient reasoning, with adequate rational underpinnings, for modifying Fassnacht’s process to include a vehicle control unit that is allowed to turn on a first switch when the vehicle is below a first threshold temperature. Rather, as we explained in our Decision, “[t]he allegations in the Petition rely on an assumption that mere inclusion of a vehicle control unit as part of Fassnacht’s method would result in the claimed method.” Dec. 13 (citing Pet. 20, 22–24). Further, even though we did not specifically cite paragraphs 52–53, 61–62, and 103–109 of the Miller Declaration in our Decision, we did not overlook or misapprehend them. These paragraphs provide detailed explanations of how Sugimoto’s control device 60 could have been incorporated in to Fassnacht’s vehicle, but these descriptions also start from the assumption that merely including Sugimoto’s control unit 16 in Fassnacht’s process would have resulted in the claimed method. Neither the Petition nor the Miller Declaration explain why one skilled in the art would modify Fassnacht’s process to include the step of allowing the vehicle control unit to turn on a switch when such a step is unnecessary to Fassnact’s process. In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (“[T]he mere capability of pulling the handles is not the inquiry that the Board should have made; it should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine.”).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“pertaining to a vehicle control unit. Pet. 20, 24; Ex. 1002 ¶ 55. The Petition and the Miller Declaration provide evidence that Sugimoto discloses control device 60, and that one skilled in the art would have considered Sugimoto’s control device 60 to be a vehicle control unit, as required by each of claims 1 and 5. Id. The Petition and the Miller Declaration also provide evidence that Sugimoto’s control device 60 controls a switch. Pet. 17–19; Ex. 1002 ¶ 50. Such evidence alone, however, does not provide sufficient reasoning, with adequate rational underpinnings, for modifying Fassnacht’s process to include a vehicle control unit that is allowed to turn on a first switch when the vehicle is below a first threshold temperature. Rather, as we explained in our Decision, “[t]he allegations in the Petition rely on an assumption that mere inclusion of a vehicle control unit as part of Fassnacht’s method would result in the claimed method.” Dec. 13 (citing Pet. 20, 22–24). Further, even though we did not specifically cite paragraphs 52–53, 61–62, and 103–109 of the Miller Declaration in our Decision, we did not overlook or misapprehend them. These paragraphs provide detailed explanations of how Sugimoto’s control device 60 could have been incorporated in to Fassnacht’s vehicle, but these descriptions also start from the assumption that merely including Sugimoto’s control unit 16 in Fassnacht’s process would have resulted in the claimed method. Neither the Petition nor the Miller Declaration explain why one skilled in the art would modify Fassnacht’s process to include the step of allowing the vehicle control unit to turn on a switch when such a step is unnecessary to Fassnact’s process. In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (“[T]he mere capability of pulling the handles is not the inquiry that the Board should have made; it should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine.”).” slip op. at 3
§ 103 obviousnessPatents in suitUS 8,409,052 - Necksgen, Inc. v. Simpson Performance Products, Inc.Rehearing deniedPTAB · Jul 25, 2018 · IPR2018-00133 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show the asserted art taught claim 1[d] or establish motivation to combine with a reasonable expectation of success.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision was 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. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). Additionally: “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. 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“the Preliminary Response. In our Decision, we determined that “[w]e do not need to construe expressly any claim terms for purposes of this Decision” because it did not appear, from the arguments presented, that any claim terms were in dispute. Dec. 6. When we considered the parties’ positions in reaching our Decision, we were aware that the term “tether” was defined in the ’529 patent, even though Petitioner did not state that expressly. In other words, we understood, and now explicitly determine, that the patentee acted as his own lexicographer by setting forth a specific definition for “tether” in the ’529 patent. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (if the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs”) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Motivation to Combine & Reasonable Expectation of Success Petitioner contends that we abused our discretion by failing to consider the appropriate claim scope when evaluating motivation to combine and reasonable expectation of success. Req. Reh’g 10–14. First, as discussed above, we did not fail to consider the appropriate claim scope. Second, we have now set forth that claim scope expressly. In light of our discussion above, our analysis regarding motivation to combine and reasonable expectation of success is no different from that which we set forth in our Decision. Dec. 11–15. Petitioner’s reiteration of the same positions set forth in Petition does not persuade us that we abused our discretion in finding that Petitioner has not established a reasonable likelihood of demonstrating that one of ordinary skill in the art would have been promoted to modify and combine the teachings as proposed by Petitioner with a reasonable expectation of success. Accordingly, we are unpersuaded by Petitioner’s argument that we abused our discretion with respect to these issues.” slip op. at 8
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,351,529 - Nevro Corp. v. Boston Scientific Neuromodulation Corp.Rehearing deniedPTAB · May 31, 2018 · IPR2017-01831 · APJ Hubert C Lorin · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claims 1, 3, 14, and 15 because Nevro did not sufficiently show Schulman rendered the no-stimulation voltage-measurement limitation obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing must identify specifically all matters that 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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“Schulman simply discloses that (a) when no stimulation is provided a request is made for a battery recharge and (b) when a battery recharge occurs, battery voltage is measured. Based on that alone, it is unclear when, or even if, the requested recharge will, in fact, ever occur, or whether it will occur when there is no stimulation provided. Arguably, a battery recharge normally follows a battery recharge request. But there is insufficient evidence that a battery recharge request, when there is no stimulation due to low voltage, necessarily leads to the battery being recharged, let alone recharged when there is no stimulation due to low voltage. As we stated in the Decision, “[i]ndeed, we find that the fact that microstimulator 100 has ceased operation when it emits a status signal (due to the low voltage condition) suggests the opposite; that is, the battery is not being recharged and is not performing any operation aside from emitting a status signal, which would include measuring the voltage of the rechargeable battery.” Dec. 15– 16. Accordingly, even Petitioner’s current position lacks sufficient evidence to support Petitioner’s contention that Schulman renders obvious the claimed subject matter whereby “voltage is measured when no stimulation is being provided by the electronic subassembly.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“The Petition went no further. No explanation was given as to how one of ordinary skill in the art, given that Schulman discloses (a) requesting battery recharge via emitted periodic signals when no stimulation is provided due to low battery and (b) monitoring (and measuring) voltage during recharge, would have been led to measure voltage “when no stimulation is being provided by the electronic subassembly,” as claimed. The Petition did not explain, for example, as Petitioner now contends, that “[a]t some point, [Schulman’s] recharge request will be honored. And when recharging commences from that low voltage, zero stimulation condition, Schulman will begin measuring voltage where there is still no stimulation.” Req. 3. We could not have misapprehended or overlooked this explanation, as it was not given.” slip op. at 7
§ 103 obviousnessPatents in suitUS 7,437,193 - PTAB · Aug 24, 2017 · IPR2017-00936 · APJ Michael W Kim · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 9, 10, and 13–16 were unpatentable over Ginter or Ginter and Stefik.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted unless the information presented in the Petition shows “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 also 37 C.F.R. § 42.4(a). Upon consideration of the Petition, Preliminary Response, and the associated evidence, we determine that Petitioner has failed to demonstrate a reasonable likelihood it would prevail with respect to at least one of the challenged claims. Accordingly, and for the reasons that follow, we deny institution of an inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“claim terms, “processing circuitry” and “microprocessor,” to the same CPU 654 of Ginter. Prelim. Resp. 17–20. We agree. See Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1563 (Fed. Cir. 1991) (two distinct claim elements should each be given full effect). Indeed, to determine otherwise would impermissibly read one of “processing circuitry” and “microprocessor” out of the claim. See Tex. Instruments Inc. v. U. S. Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (explaining claim language cannot be mere surplusage, an express limitation cannot be read out of the claim). Mapping both claim terms to CPU 654 of Ginter is especially problematic for the “microprocessor” limitation, which reads, in context, “a microprocessor having software programming to control the operation of the processing circuitry” (Claim 1 (emphasis added)). In making our determination, we acknowledge that Ginter discloses “one or more conventional general purpose central processing units (‘CPUs’) 654 . . . .” Ex. 1002, 185:21–22 (emphasis added). Accordingly, it is plausible that Petitioner intended for one of CPUs 654 to correspond to the recited “processing circuitry” and another of CPUs 654 to correspond to the recited “microprocessor.” We are unpersuaded, however, that Petitioner has articulated that intention with sufficient particularity in the aforementioned portions of the Petition. See 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if . . . the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim . . . .”).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“claim terms, “processing circuitry” and “microprocessor,” to the same CPU 654 of Ginter. Prelim. Resp. 17–20. We agree. See Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1563 (Fed. Cir. 1991) (two distinct claim elements should each be given full effect). Indeed, to determine otherwise would impermissibly read one of “processing circuitry” and “microprocessor” out of the claim. See Tex. Instruments Inc. v. U. S. Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (explaining claim language cannot be mere surplusage, an express limitation cannot be read out of the claim). Mapping both claim terms to CPU 654 of Ginter is especially problematic for the “microprocessor” limitation, which reads, in context, “a microprocessor having software programming to control the operation of the processing circuitry” (Claim 1 (emphasis added)). In making our determination, we acknowledge that Ginter discloses “one or more conventional general purpose central processing units (‘CPUs’) 654 . . . .” Ex. 1002, 185:21–22 (emphasis added). Accordingly, it is plausible that Petitioner intended for one of CPUs 654 to correspond to the recited “processing circuitry” and another of CPUs 654 to correspond to the recited “microprocessor.” We are unpersuaded, however, that Petitioner has articulated that intention with sufficient particularity in the aforementioned portions of the Petition. See 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if . . . the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim . . . .”).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Patent Owner asserts that Petitioner impermissibly maps two distinct claim terms, “processing circuitry” and “microprocessor,” to the same processing means 1200 of Stefik. Prelim. Resp. 29–31. We agree. See Unique Concepts, 939 F.2d at 1563 (two distinct claim elements should each be given full effect). Indeed, to determine otherwise would impermissibly read one of “processing circuitry” and “microprocessor” out of the claim. See Texas Instr., 988 F.2d at 1171 (explaining that claim language cannot be mere surplusage, an express limitation cannot be read out of the claim). Mapping both claim terms to processing means 1200 of Stefik is especially problematic for the “microprocessor” limitation, which reads, in context, “a microprocessor having software programming to control the operation of the processing circuitry” (Claim 1 (emphasis added)). In making our determination, we acknowledge that it is plausible that Petitioner is mapping “processing circuitry” and “microprocessor” to processing means 1200 and processor element 1201, respectively, where processor element 1201 is a component of processing means 1200. We are unpersuaded, however, that Petitioner has articulated that mapping with sufficient particularity in the aforementioned portions of the Petition. See 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if . . . the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim . . . .”). Moreover, as each of “processing circuitry” and “microprocessor” are recited as performing functions, if anything, it would appear that both “processing circuitry” and “microprocessor” should be mapped to processor element 1201, which would still be deficient for the reasons set forth above concerning processing means 1200. Patent Owner also asserts that Petitioner maps the ASIC chip of processing means 1200, which appears to be the same as processor element 1201, of Stefik to the recited “microprocessor,” but that an ASIC chip cannot correspond properly to a “microprocessor.” Prelim. Resp. 31. We agree. Patent Owner cites to a webpage that defines ASIC as follows: (Application Specific Integrated Circuit) Pronounced “a-sick.” A chip that is custom designed for a specific application rather than a general-purpose chip such as a microprocessor. The use of ASICs improve performance over general-purpose CPUs, because ASICs are “hardwired” to do a specific job and do not incur the overhead of fetching and interpreting stored instructions. Prelim. Resp. 31 (citing Ex. 2002); see also Dictionary.com Unabridged, Random House, Inc. http://www.dictionary.com/browse/microprocessor (accessed: June 12, 2017) (Ex. 3001) (microprocessor is “an integrated computer circuit that performs all the functions of a CPU”). Based on the above, we find that an ASIC is not a microprocessor. Against this objective evidence, Petitioner only states that “[a] person of ordinary skill in the art would know that an ASIC chip is a microprocessor” (Pet. 35), and provides a citation to paragraph 223 of Mr. Wechselberger’s Declaration, the relevant portion of which merely states, similarly, that “[a] person of ordinary skill in the art would appreciate that an ASIC chip functions would include those of a microprocessor,” without further relevant explanation or analysis. For the foregoing reasons, we determine that Petitioner failed to establish a reasonable likelihood it would prevail in showing that at least one of claims 1, 9, 10, and 13–16 is unpatentable as obvious over Ginter and Stefik.” slip op. at 10
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,840,437 - Arctic Cat, Inc. v. Polaris Industries Inc.Institution deniedPTAB · Jul 5, 2017 · IPR2017-00455 · APJ Phillip J Kauffman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on the challenged claims, failing to provide a sufficient rationale for either proposed prior-art combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner, and for that reason, section 325(d) is not relevant to our analysis. Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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); 37 C.F.R. § 42.108. We consider Patent Owner’s three underlying contentions under this standard.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“cooling air unobstructed by exterior body panels and would avoid receiving hot air from inside the engine compartment, thereby cooling the CVT more effectively, reducing wear, and improving CVT efficiency. Pet. 19, 22; Ex. 1001 ¶¶ 48–50, 54, 55, 230, 233; Ex. 1005 ¶¶ 4–5. The premise of this reasoning is that airflow to Suzuki’s CVT is obstructed by an exterior body panel or panels. That premise is not supported adequately the record.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this decision, and on this record, we determine that no claim terms need express interpretation. 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 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“We reserve ruling on the Motion to Seal. Paper 7 and Exhibit 2015 will remain under seal in the interim. After the absence of a timely request for rehearing, or if filed, after resolution of a request for rehearing, Patent Owner may seek authorization to file a Motion to Expunge Paper 7 and Exhibit 2015. See 37 C.F.R. §§ 42.71(d)(1), 42.56.” slip op. at 3
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,217,501 - Electronic Arts Inc. v. White Knuckle IP, LLCAll claims unpatentablePTAB · Jan 12, 2017 · IPR2015-01595 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–10, 12–16, and 23 are unpatentable under §103 as obvious over the FIFA 2001 References and over Pisanich with the Madden References.
RulingsFinal written decision- Obviousness (§103) › Analogous artNot reached
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“White Knuckle also argues that EA failed to provide a rationale for combining the FIFA 2001 References. PO Resp. 14. That is not the case. As explained in the Petition, the FIFA 2001 References are all directed to solving the same problem, namely, providing the most realistic gaming experience through the availability of updates to various parameters of the video game, including updates that reflect changes to the real-life stadiums and fields depicted in the game. See Pet. 28–29. A skilled artisan would have realized the benefit of combining the FIFA 2001 References from the references themselves, as they describe features of the same video game system, FIFA 2001, and illustrate contemporaneously how actual users were playing the game. Ex. 1003 ¶ 118. Indeed, FIFA 2001 News cross-references FIFA MRA Support extensively, even providing direct links to relevant pages of the MRA website.12 Ex. 1008, 1, 4, 6 (“MRA Patches Database,” “the MRA site”); Ex. 1009, 1, 3 (same).” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“[A]n inventor’s testimony, standing alone, is insufficient to prove conception—some form of corroboration must be shown.” Price v. Symsek, 988 F.2d 1187, 1194–95 (Fed. Cir. 1993) (citation omitted). “An evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor’s story may be reached.” Id. at 1195 (citation omitted). Here, to corroborate Mr. Angelopoulos’s testimony, White Knuckle introduces the declaration of the co-worker, Mr. Huffaker, with whom Mr. Angelopoulos met and first described his invention. Ex. 2010. Mr. Huffaker testifies that he was a licensed attorney engaged by Mr. Angelopoulos to assist him in reducing the invention to practice and drafting the application for the ’350 patent. Id. ¶¶ 4(a), 5(a). Accompanying the declarations of Mr. Huffaker and Mr. Angelopoulos is a series of exhibits, consisting of emails and attachments sent around the time of their meeting, which White Knuckle submits as additional evidence of corroboration, namely Exhibits 2004, 2006, 2007, and 2008.13 slip op. at 14
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“Although there is a presumption of nexus when the patent owner shows the asserted praise or success is tied to a specific product embodying the claimed invention, that presumption is rebuttable when the patent challenger “respond[s] by presenting evidence that shows the proffered objective evidence was due to extraneous factors other than the patented invention.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1329–1330 (Fed. Cir. 2016) (internal quotes and citation omitted). Here, EA responds with evidence from the MIT article itself, which touts the NCAA Football 2008 game’s success as due in part to “many other new features,” including “new trick plays, a highlight reel, and advanced animations,” as well as the fact that “[t]he game is playing far smoother than it [was] a year ago.” Reply 20 (citing Ex. 2012, 2). White Knuckle offers no rebuttal to EA’s evidence that the MIT article ascribes the game’s success to these extraneous features. Thus, EA succeeds in rebutting the presumption of nexus. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312–13 (Fed. Cir. 2006) (evidence that success was due to “unclaimed or non-novel features” of product “clearly rebuts the presumption that [product’s] success was due to the claimed and novel features”). In the absence of any further proof, White Knuckle falls short of tying the success of NCAA Football 2008 to the claimed invention. As such, we attribute little, if any, weight to White Knuckle’s evidence of commercial success and industry praise. Furthermore, even assuming the success and praise of NCAA Football 2008 was attributable to the live-weather update feature, the evidence shows that live-weather feeds for video games already existed in the prior art, as reflected in Pisanich. Evidence of industry praise attributable to a feature already known in the prior art is not a persuasive secondary consideration. South Alabama Med. Sci. Found. v. Gnosis S.P.A., 808 F.3d 823, 826–27 (Fed. Cir. 2015). Here, Pisanich (which is prior art, as determined above) illustrates that a live-weather feed for a sports video game was well-known. Ex. 100616; see also Ex. 1003 ¶¶ 179–183. As such, White Knuckle’s evidence of success and praise, insofar as it concerns live-weather feeds for video games, must fail because it is “focused on conventional features in the prior art.” ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). In the end, upon weighing all the evidence, we conclude that White Knuckle’s relatively weak evidence of commercial success and industry praise fails to undermine our initial findings of obviousness with respect to the ground based on the FIFA 2001 References, as well as the grounds based on Pisanich and the Madden References.” slip op. at 20
Patent outcomesUS 8,529,350 unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,529,350 - Zepp Labs, Inc. v. Blast Motion, Inc.Institution deniedPTAB · Aug 29, 2016 · IPR2016-00674 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 and 14 were unpatentable over the asserted § 103 combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“transmitted after an “event,” and refers to Mahajan’s disclosure that “[a]fter you have swung the iClub, data is wirelessly transmitted to your hand held laptop, cell phone or other electronic device.” Pet. 32 (citing Ex. 1005 ¶ 63). As Patent Owner explains (Prelim. Resp. 14), however, Mahajan expressly teaches real-time transmission of data from the microcontroller to the software running on the receiving computer. See Ex. 1005 ¶ 53. After the computer receives the sensor data from the motion capture element, the receiving computer determines whether the incoming data represents a swing event. Id. at ¶ 57. Thus, the receiving computer receives the data before the system has determined that an “event” has occurred. Petitioner does not explain sufficiently how Mahajan, which expressly describes a system predicated on real-time transmission, teaches or suggests receiving data “after an event or periodically requesting said motion capture data.” In addition, Petitioner refers to the disclosure in Oleson of a sensor transmitting data to a mobile phone where the “mobile phone must periodically transmit a message to the motion sensor to prevent the sensor from entering low-power mode,” and that “while in active mode, the motion sensor periodically transmits data to the mobile phone.” Pet. 32 (citing Ex. 1011, ¶¶ 76, 85, 86). We agree with Patent Owner (Prelim. Resp. 1718) that the Petition does not sufficiently address why a skilled artisan would modify Mahajan’s real-time transmitting microcontroller to implement the cited aspects of Oleson. See Pet. 33. Petitioner’s articulation that the references have similarities, such as Oleson’s field of quantifying sports performance, and that it would have been an “obvious design choice” to combine their teachings provides insufficient facts and reasons to combine. Accordingly, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to claim 1, and the remaining dependent challenged claims (claims 2 and 3). Claim 14 recites the same limitation, and Petitioner relies on the same arguments and evidence presented with respect to claim 1. See Pet. 52 (referring, for claim 14, to the corresponding limitations of claim 1).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“transmitting data to a mobile phone where the “mobile phone must periodically transmit a message to the motion sensor to prevent the sensor from entering low-power mode,” and that “while in active mode, the motion sensor periodically transmits data to the mobile phone.” Pet. 32 (citing Ex. 1011, ¶¶ 76, 85, 86). We agree with Patent Owner (Prelim. Resp. 1718) that the Petition does not sufficiently address why a skilled artisan would modify Mahajan’s real-time transmitting microcontroller to implement the cited aspects of Oleson. See Pet. 33. Petitioner’s articulation that the references have similarities, such as Oleson’s field of quantifying sports performance, and that it would have been an “obvious design choice” to combine their teachings provides insufficient facts and reasons to combine. Accordingly, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to claim 1, and the remaining dependent challenged claims (claims 2 and 3). Claim 14 recites the same limitation, and Petitioner relies on the same arguments and evidence presented with respect to claim 1. See Pet. 52 (referring, for claim 14, to the corresponding limitations of claim 1).” slip op. at 9
§ 103 obviousnessPatents in suitUS 9,039,527 - Zepp Labs, Inc. v. Blast Motion, Inc.Institution deniedPTAB · Aug 29, 2016 · IPR2016-00672 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4-7, 9, 11, 14-16, and 19 were unpatentable over the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, we determine that the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in showing that claims 1, 47, 9, 11, 1416, and 19 are unpatentable.” slip op. at 2
- BurdenInstitution denied
“artisan would have had reason to modify Mahajan’s microcontroller such that these functions would be performed by the microcontroller. Petitioner argues that a person of ordinary skill would have been able to program these functions in either the microcontroller of Mahajan’s iClub or the mobile device. See, e.g., Pet. 28. In support, Petitioner contends “whether specific functionality is implemented in the software running on the iClub or software running on the mobile device is a matter of design choice.” Pet. 2728 (citing Ex. 1003 ¶ 123, Ex. 1005 ¶ 62). The argument that implementing the software in the iClub would be a matter of design choice is conclusory, and lacks sufficient factual support. See Prelim. Resp. 2627. Although the Petition mentions power consumption, cost, and speed as possible considerations affecting the purported design choice, the Petition does not explain sufficiently how these factors affect or motivated the alleged design choice advanced by Petitioner. Cutsforth, Inc. v. Motivepower, Inc., No. 20151316, slip. Op. 78 (Fed. Cir. Jan. 22, 2016) (“Merely stating that a particular placement of an element is a design choice does not make it obvious. The Board must offer a reason for why a person of ordinary skill in the art would have made the specific design choice” alleged by Petitioner.).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“under the broadest reasonable interpretation standard, the proper construction includes ‘data that comprises sensor values.’” Pet. 8 (citing Ex. 1003 ¶ 47). Patent Owner disagrees that “said data” is indefinite, and instead asserts that “said data” should be construed as “data that comprises sensor values.” Prelim. Rep. 6. Aside from the indefiniteness issue, Petitioner and Patent Owner appear to agree as to the proper construction of “said data.” That would appear to weigh in favor of Patent Owner’s position that “said data” is not indefinite. Notwithstanding the apparent disagreement concerning this term, we do not opine further on this issue at this time, as construction of the term is not necessary to any determination made herein. 2. Other Claim Terms We determine that no express construction of any other claim terms is necessary.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not found
“is deficient in articulating a reasonable reason to combine the teachings of Mahajan, Edis, and Su. See Prelim. Resp. 35–36. Specifically, Petitioner has not shown sufficiently why a skilled artisan would have modified Mahajan to incorporate the recited functions, allegedly taught by Edis and/or Su. For example, Petitioner asserts that “[u]sing thresholding techniques of Edis and Su within the microcontroller of Mahajan, to for example distinguish ‘real swing versus your warm up’ motion, would have been obvious because thresholding sensed data against pre-specified values is common to microprocessor controller DAS.” Pet. 30 (citing Ex. 1003 ¶ 127). As another example, Petitioner baldly states that for “signifying a prospective event,” “it would have been obvious to a person of ordinary skill at the time of the invention to combine Edis with Mahajan, for example, as the way to distinguish a real swing from warm up motion, as is used for signifying a prospective event.” Pet. 32. Similarly, Petitioner states that the “false-positive detection methodology of Su and the variable detection strategy of Edis could have been obviously programmed in the microcontroller of Mahajan.” Pet. 34. Stating only that the functions “could have been obviously programmed” or that the combinations would yield the claim limitation is insufficient rationale. The Petition fatally omits the express articulation of a reason why a person of ordinary skill in the art would have combined the teachings as Petitioner asserts. See KSR Int’l Co., v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions”). The omission of a rationale is particularly troublesome in light of Patent Owner’s argument that there is a lack of showing of why it would have been obvious to modify Mahajan’s teachings “so that its microcontroller—with its limited resources and processing power—was responsible for swing identification, rather than the receiving computer.” Prelim. Resp. 27.9 And Petitioner’s reliance on Mr. Nesbit’s 9 We also are persuaded by Patent Owner’s arguments, and the proffered analysis, regarding the deficiencies in the portions Dr. Nesbit’s Declaration identified by Patent Owner, as they amount to conclusory opinions of a rationale for the alleged combinations and lacking factual support or objective evidence supporting those opinions. Prelim. Resp. 2729. Declaration is unavailing as the Declaration repeats the conclusory statement included in the Petition with no further rationale or explanation.” slip op. at 16
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,903,521
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.