• Apple Inc. v. Corephotonics, Ltd.Rehearing denied
  PTAB · Aug 5, 2019 · IPR2018-01348 · APJ Bryan F Moore · IPR · Rehearing

  The Board denied Apple’s rehearing request, leaving in place the denial of institution because the petition did not show a sufficient motivation to combine Parulski and Christie.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “and Parulski’s teachings of zoom are combinable (id.) and Petitioner has not established that they are predictable variations of each other. Disparate embodiments in one reference can only be combined if they are a “predictable variation” of each other that does not “require a leap of inventiveness.” C.f. Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009); see e.g. Apple Inc. v. Valencell, Inc., Case IPR2017- 01704, slip op. at 10 (PTAB Mar. 27, 2018) (Paper 9) (acknowledging Boston Scientific stands for the proposition that combining two embodiments from the same reference requires an obviousness analysis); LG Display Co., LLC v. Innovative Display Techs LLC, Case IPR2014-01362, slip op. at 13 (PTAB Mar. 2, 2015) (Paper 12) (“The rationale . . . that a person of ordinary skill would ‘pick and choose’ features from various embodiments of Baur, simply because they are in the same patent, is insufficient to demonstrate a reasonable likelihood of prevailing on this challenge”). “Even when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000).” slip op. at 4

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

    “fused image.” Reh’g Req. 13. The Petition proposed that “fused image” should be construed as “an output image including information from two images.” We determined that construing that term was unnecessary to resolve any controversy. Inst. Dec. 7. We maintain that determination. Petitioner provides a construction for “fused image” but not for “without fusion continuous Zoom video mode output images of the object or scene.” Id. at 9–10. We properly considered the entire claim limitation in assessing whether Petitioner had shown a reasonable likelihood of prevailing in its obviousness challenge. slip op. at 12

  • BurdenDecided for patent owner

    “The burden of persuasion remains on a petitioner in inter partes review proceedings. See DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999). Petitioner appears to now argue that, in order to understand its contentions as to the “without fusion” limitation in Parulski, we were to mine the Petition for references to “switching between Wide sensor and Tele sensor” associated with Golan. We were not required to do so. Id. (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”); c.f. Fieldpiece Instruments, Inc. v. Twin Rivers Eng’g, Inc., Case IPR2017-00362, slip op. at 4 (PTAB Sept. 25, 2017) (Paper 16)(“the portions of the Petition cited in the Rehearing Request relate only to overviews of the references”)” slip op. at 8

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,185,291
• Bungie, Inc. v. Acceleration Bay, LLCRehearing denied
  PTAB · Jun 29, 2018 · IPR2017-01600 · APJ Marc S Hoff · IPR · Rehearing

  The Board denied Bungie’s rehearing request and maintained denial of institution because Francis and Gilbert did not show a reasonable likelihood of obviousness for claims 1–5, 7, 8, and 11–13.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A. Principles of Law When rehearing a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “B. Discussion In our Decision, we concluded that the information presented did not show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–5, 7, 8, and 11–13 are rendered obvious by Francis1 and Gilbert.2 Dec. 13. Specifically, we determined that the combination of Francis and Gilbert, taken together, did not disclose “identifying a pair of participants of the network that are connected wherein [1] a seeking participant contacts a fully connected portal computer, [2] which in turn sends an edge connection request to [3] a number of randomly selected neighboring participants to which the seeking participant is to connect.” Dec. 9–12.” slip op. at 3

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

    “overlooked any points made in the Petition. In our Decision, we explicitly referred to pages 53–55 of the Petition in discussing Francis’s teaching of “rendezvous hosts,” and Petitioner’s argument that modifying Francis’s rendezvous host with the features of Gilbert’s portal computer would provide some messaging efficiencies. Dec. 11. We concluded that Petitioner “fails to explain sufficiently why it would have been obvious to combine Francis and Gilbert to have a seeking participant contact a fully connected portal computer as claimed.” Id. at 11–12.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 6,910,069
• Bungie, Inc. v. Acceleration Bay, LLCInstitution denied
  PTAB · Jan 10, 2018 · IPR2017-01600 · APJ Marc S Hoff · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–5, 7, 8, and 11–13 obvious over Francis and Gilbert.

  RulingsInstitution decision

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

    “Petitioner, however, has not sufficiently explained how or why a person having ordinary skill in the art would have combined Francis and Gilbert to achieve this claim element. Petitioner explains that Francis teaches rendezvous hosts that allow hosts joining a group to find other hosts already in the tree-mesh, and that Francis randomly selects “neighbors” (simply other network members) for every node. See Pet. 53– 55. Petitioner further argues that Gilbert, like Francis, teaches the concept of multifunctional nodes that can execute the steps of adding a new node to the network. According to Petitioner, modifying Francis’s rendezvous host with the features of Gilbert’s portal computer would provide some messaging efficiencies. Pet. 55. In our view, however, Petitioner fails to explain sufficiently why it would have been obvious to combine Francis and Gilbert to have a seeking participant contact a fully connected portal computer as claimed. Still further, the disputed phrase requires that the edge connection request be sent to a “number of randomly selected” neighboring participants to which the seeking participant is to connect. Petitioner asserts that Francis provides for random selection of neighbors for every node. Pet. 55; Ex. 1005, 14. Merely choosing neighboring participants in a random manner to connect to, as Francis does here, is not the same as sending a request to a number of randomly selected neighboring participants. Petitioner has not explained how Francis and Gilbert would be combined to teach a portal computer “send[ing] an edge connection request to a number of randomly selected neighboring participants.”” slip op. at 11

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

    “Petitioner, however, has not sufficiently explained how or why a person having ordinary skill in the art would have combined Francis and Gilbert to achieve this claim element. Petitioner explains that Francis teaches rendezvous hosts that allow hosts joining a group to find other hosts already in the tree-mesh, and that Francis randomly selects “neighbors” (simply other network members) for every node. See Pet. 53– 55. Petitioner further argues that Gilbert, like Francis, teaches the concept of multifunctional nodes that can execute the steps of adding a new node to the network. According to Petitioner, modifying Francis’s rendezvous host with the features of Gilbert’s portal computer would provide some messaging efficiencies. Pet. 55. In our view, however, Petitioner fails to explain sufficiently why it would have been obvious to combine Francis and Gilbert to have a seeking participant contact a fully connected portal computer as claimed.” slip op. at 11

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

    “Still further, the disputed phrase requires that the edge connection request be sent to a “number of randomly selected” neighboring participants to which the seeking participant is to connect. Petitioner asserts that Francis provides for random selection of neighbors for every node. Pet. 55; Ex. 1005, 14. Merely choosing neighboring participants in a random manner to connect to, as Francis does here, is not the same as sending a request to a number of randomly selected neighboring participants. Petitioner has not explained how Francis and Gilbert would be combined to teach a portal computer “send[ing] an edge connection request to a number of randomly selected neighboring participants.” For all of the above reasons, we are not persuaded that Petitioner has established a reasonable likelihood that Petitioner would prevail in its challenge to independent claim 1, or to dependent claims 2–5, 7, 8, and 11–13.” slip op. at 12

  § 103 obviousness
  Patents in suitUS 6,910,069
• Bungie, Inc. v. Acceleration Bay, LLCInstitution denied
  PTAB · Jan 9, 2018 · IPR2017-01601 · APJ Lynne E Pettigrew · IPR · Institution

  Institution was denied for claims 19–24 because the petition did not show a reasonable likelihood that Gilbert and Francis render them obvious.

  RulingsInstitution decision

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

    “We agree with Patent Owner that Petitioner fails to demonstrate that Gilbert in view of Francis teaches “requesting the located portal computer to provide an indication of neighbor participants to which the participant can be connected,” as required by claim 19. See Prelim. Resp. 41–44. First, contrary to Petitioner’s argument, the various “portal computer” embodiments in Gilbert relied on by Petitioner do not describe a joining node requesting the portal computer to provide an indication of two adjacent nodes (i.e., the claimed “neighbor participants”) to which the joining node can connect. In the first example cited by Petitioner, see Pet. 47, a new node contacts a node it knows to be already on the network, which Petitioner alleges is the claimed “portal computer.” Ex. 1021, 6:33–34. That node then provides information regarding an adjacent node. Id. at 6:40–42. Thus, as Patent Owner correctly points out, the alleged portal computer identifies only a single adjacent node. See Prelim. Resp. 41. Although Gilbert describes a joining node contacting two adjacent nodes in the network and then connecting to those two nodes, the “two adjacent nodes” are the alleged portal computer and one of its adjacent nodes, not two nodes adjacent to the portal computer, as Petitioner suggests. See Ex. 1021, 6:32–49, Fig. 7. Thus, the node seeking to join the network does not request the portal computer to provide an indication of neighbor participants to which it can be connected, as required by claim 19, but instead only requests an indication of one neighbor participant.” slip op. at 10

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

    “We agree with Patent Owner that Petitioner fails to demonstrate that Gilbert in view of Francis teaches “requesting the located portal computer to provide an indication of neighbor participants to which the participant can be connected,” as required by claim 19. See Prelim. Resp. 41–44. First, contrary to Petitioner’s argument, the various “portal computer” embodiments in Gilbert relied on by Petitioner do not describe a joining node requesting the portal computer to provide an indication of two adjacent nodes (i.e., the claimed “neighbor participants”) to which the joining node can connect. In the first example cited by Petitioner, see Pet. 47, a new node contacts a node it knows to be already on the network, which Petitioner alleges is the claimed “portal computer.” Ex. 1021, 6:33–34. That node then provides information regarding an adjacent node. Id. at 6:40–42. Thus, as Patent Owner correctly points out, the alleged portal computer identifies only a single adjacent node. See Prelim. Resp. 41. Although Gilbert describes a joining node contacting two adjacent nodes in the network and then connecting to those two nodes, the “two adjacent nodes” are the alleged portal computer and one of its adjacent nodes, not two nodes adjacent to the portal computer, as Petitioner suggests. See Ex. 1021, 6:32–49, Fig. 7. Thus, the node seeking to join the network does not request the portal computer to provide an indication of neighbor participants to which it can be connected, as required by claim 19, but instead only requests an indication of one neighbor participant.” slip op. at 10

  § 103 obviousness
  Patents in suitUS 6,829,634
• Commscope Technologies, LLC v. Communications Components Antenna Inc.Rehearing denied
  PTAB · Mar 15, 2017 · IPR2016-00999 · APJ Jeffrey S Smith · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution for claims 1–28 because Petitioner did not show a reasonable likelihood that steered planar-array beams are necessarily asymmetrical.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d). Section 42.71(d) further provides that the request must identify where each matter was previously addressed.” slip op. at 2

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

    “Lastly, Petitioner contends the Decision overlooked or “misapprehended the facts showing that all steered planar array antennas inherently result in radiation patterns having at least one asymmetrical beam.” Req. 13–15. According to Petitioner, Figure 4 of U.S. Patent No. 5,929,823 (Exhibit 2010) and Figure 3 of U.S. Patent No. 6,198,434 (Exhibit 2011), relied upon in Patent Owner’s Preliminary Response as describing remedies for distortion effects due to asymmetrical beams (Prelim. Resp. 47–48), do not eliminate the inherent asymmetry of the main beam. Req. 14. However, our Decision relies on Paragraphs 151 to 156 of Mr. Cosgrove’s testimony (Ex. 2001), which cite additional sections of Exhibits 2010 and 2011, to determine that the steered beams of a planar array are not necessarily asymmetrical. Dec. 21–23 (citing Ex. 2001 ¶¶ 151–156). For example, Mr. Cosgrove addresses the asymmetric bulge shown in Figure 4 of Exhibit 2010 by citing to a description of Figure 6, which describes a lobe symmetry of main lobe 610 that presents a more slender beam mid-section than that of main lobe 410 of Figure 4. Ex. 2001 ¶ 152 (citing Ex. 2010, 7:65–8:6). Mr. Cosgrove also addresses the asymmetric bulge shown in Figure 3 of Exhibit 2011 by citing to a description of Figure 6, which describes main lobe 610 as substantially symmetric, and more suited than lobe 310 of Figure 3 to provide communications within a defined subsection of an area to be served. Ex. 2001 ¶ 156 (citing Ex. 2011, 10:13–16). Accordingly, the Decision did not misapprehend or overlook any arguments or evidence presented by Petitioner. We did not abuse our discretion in determining that the Petitioner did not adequately establish a reasonable likelihood that a steered beam of a planar array is necessarily asymmetrical.” slip op. at 5

  None
  Patents in suitUS 8,311,582
• Commscope Technologies, LLC v. Communications Components Antenna Inc.Institution denied
  PTAB · Nov 3, 2016 · IPR2016-00999 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–28 unpatentable, principally because Yea did not establish the claimed asymmetrical coverage areas.

  RulingsInstitution decision

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

    “partes review of claims 1–28 of U.S. Patent No. 8,311,582 B2 (Ex. 1001, “the ’582 patent”). Paper 1 (“Pet.”). Patent Owner, Communications Components Antenna Inc., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1–28 of the ’582 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “Petitioner’s proposed construction of this limitation is supported by the specification of the ’582 patent. The ’582 patent discloses replacing a single sector coverage area with sub-sector coverage areas, at least one of which is an asymmetrical coverage area. Ex. 1001, 3:16–18. The ’582 patent discloses that the use of asymmetrical coverage areas permits the total coverage area to closely approximate the symmetrical sector coverage area being replaced, without creating excessively large sub-sector handover zones or introducing sever degradation in network performance. Id. at 3:18–24. The ’582 patent discloses creating the asymmetrical coverage areas by replacing an existing antenna with an antenna that has substantially the same coverage area, but divides the coverage area into a plurality of separate asymmetrical beams or sub-sectors. Id. at 4:32–38. As disclosed by the ’582 patent, the replacement antenna produces a plurality of separate beams, each defining a new sub-sector with only a small overlapping area between them and which together provide substantially identical coverage to the sector supported by the original antenna, to upgrade the single sector to a plurality of sub-sectors without significantly affecting neighboring sites. Id. at 4:51–57. The replacement antenna introduces asymmetry into the generated beam pattern. Id. at 4:58–60. The introduction of asymmetrical beams by the replacement antenna allows close approximation of the coverage area of the conventional sector antenna being replaced. Id. at 5:61–64. For purposes of this Decision, we adopt Petitioner’s proposed construction of “a plurality of sub-sector coverage areas extending therefrom, at least one of which is asymmetrical,” as a plurality of replacement sub-sector beams, at least one of which has an asymmetrical shape, where asymmetry includes deliberate or inherent asymmetry as the broadest reasonable construction consistent with the specification.” slip op. at 8

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

    “49 (Fed. Cir. 2005). There, the district court invalidated claims of the patent in suit on summary judgment based on the measured dimensions of a prior art patent figure. Id. at 1148. The Federal Circuit reversed, warning “that arguments based on drawings not explicitly made to scale in issued patents are unavailing.” Id. at 1149. Petitioner here does not identify any portion of Yea disclosing that Figures 4 and 8 are drawn accurately enough to determine an asymmetrical nature of the radiation patterns. Petitioner also fails to cite to any disclosure in Yea that identifies or describes an asymmetrical nature of the radiation patterns. Furthermore, Petitioner also has not explained why the shapes shown in the linear scale drawings of Figure 4 would show similar shapes when converted to a logarithmic scale. Additionally, Petitioner does not explain why the carrier to interference ratio shown in Figure 8 can be used to accurately measure antenna radiation beam patterns. We find Petitioner does not sufficiently establish that the plots shown in Figures 4 and 8 of Yea can be used to determine whether the antenna radiation beam pattern is asymmetrical. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that Petitioner would prevail in showing that Yea anticipates independent claims 1, 13, and 20. b. Dependent Claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27 Petitioner argues that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27. Pet. 47–53. In so arguing, Petitioner relies on Yea as disclosing the claimed asymmetrical coverage area. Id. Because we are not persuaded that Yea discloses this limitation, we are not persuaded that Petitioner establishes a reasonable likelihood of prevailing in showing that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27.” slip op. at 14

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

    “as well as testimony of both Mr. Collins and Mr. Cosgrove. Under Rule 37 C.F.R. § 42.108, any genuine issues of material fact created by the testimonial evidence should be viewed in light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review. Even reviewing the testimony of Mr. Collins in the light most favorable to Petitioner, we determine Petitioner has established only that asymmetrical beams may be used in a planar array antenna, but not that a person of ordinary skill in the art would have understood steered beams of a planar array antenna are necessarily asymmetrical. Mr. Collins cites to Litva (Ex. 1009) and Wästberg (Ex. 1018) in stating that prior art steered beams of a planar array antenna can be asymmetrical beams. Ex. 1024 ¶ 179. We credit Patent Owner’s arguments and the testimony of Mr. Cosgrove to determine Petitioner does not sufficiently establish the likelihood that a person of ordinary skill in the art would have understood that steered beams of a planar array antenna are necessarily asymmetrical. Further, Petitioner fails to set forth a sufficient rationale for why a person of ordinary skill in the art would use the asymmetrical beams of the prior art with the disclosure of Yea. Pet. 39–40. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that using asymmetrical beams in Yea would have been obvious. We therefore conclude that the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the subject matter of claims 1, 2, 6, 7, 9, 11–15, 18–22, 24, and 27 would have been obvious over Yea, Metawave Website, Litva, and Wästberg.” slip op. at 22

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,311,582
• Toyota Motor Corporation v. Signal IP, Inc.Institution denied
  PTAB · Jun 9, 2016 · IPR2016-00293 · APJ Jason J Chung · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 2, and 6 obvious over either asserted combination.

  RulingsInstitution decision

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

    “inter partes review of claims 1, 2, and 6 of U.S. Patent No. 5,714,927 (Ex. 1001, “the ’927 patent”). Paper 2 (“Pet.”). In response, Patent Owner, Signal IP, Inc., filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we deny institution of inter partes review of the ’927 patent.” slip op. at 2

  • Prior constructionPrior construction adoptedDecided for petitioner

    “(1) a related inter partes review (Pet. 8), and (2) a related matter before the U.S. District Court for the Central District of California (id. at 6–8). Regarding the related inter partes review, the Board previously construed the term “alert command” as raw alert data that is used to generate an alert signal, and the term “alert signal” as a signal that provides a visual or audio alert to a driver. Volkswagen Grp. of Am., Inc. v. Signal IP, Inc., Case IPR2015-00968, slip op. at 6–7 (PTAB Aug. 25, 2015), Paper 6. In order to reach our decision below, we need only construe the terms “alert command” and “alert signal.” We, therefore, decline to specifically construe any other claim terms at this time. We agree with Petitioner’s construction of the terms “alert command” and “alert signal,” consistent with our prior construction in IPR2015-00968. (See id. for our prior construction of the terms.) Thus, we construe the term “alert command” as raw alert data that is used to generate an alert signal, and the term “alert signal” as a signal that provides a visual or audio alert to a driver. Id. As explained below, even using Petitioner’s construction of these terms, Petitioner’s challenge fails to establish a reasonable likelihood that Petitioner would prevail in establishing unpatentability.” slip op. at 6

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

    “Petitioner asserts that it would have been obvious “to modify Pakett’s system such that it determines whether the ‘alert signal,’ as opposed to the ‘alert command,’ was active for a ‘threshold time’ as the claim requires.” Pet. 47. Petitioner asserts that this could be accomplished by activating a warning (alert signal) as soon as Pakett recognizes that an obstacle is present, and then applying the processing method previously applied to the persistence period instead to determine whether to sustain the warning. Id. at 47–48 (citing Ex. 1010 ¶¶ 101–04). Petitioner asserts that “one of ordinary skill in the art would consider Pakett’s delay of a warning until after the end of the persistence period to be nothing more than an optional redundancy,” and, thus, that this modification would have been obvious as “nothing more than a routine, obvious design choice.” Id. at 48 (citing Ex. 1010 ¶ 104). We disagree with Petitioner that the cited portions of Pakett’s teaching to delay the warning until after the persistence period is “nothing more than an optional redundancy,” at least because the cited portions of Packett do not indicate, either explicitly or implicitly, the 17 function of waiting for the persistence period before sending a warning to the driver indicators as optional or redundant. See id. Pakett clearly states that during the persistence period, “no warnings are sent to the driver indicators.” Ex. 1002, 6:50–51 (emphasis added). Pakett explains that waiting through the persistence period before sending warnings to the driver indicators prevents the system from incorrectly identifying stationary obstacles that were identified by the square wave generator 29 as valid obstacles in the blind spot. Id. at 7:56–63. Pakett thus explains that waiting through the persistence period before sending warnings to the driver indicators filters out false positives of objects in the blind spot of the vehicle. Id.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,714,927
• Corelogic, Inc. v. Boundary Solutions, Inc.Institution denied
  PTAB · May 24, 2016 · CBM2016-00016 · APJ Peter P Chen · CBM · Institution

  The Board denied institution for claims 1–19 because the petition did not establish that the ’957 patent qualifies as a covered business method patent.

  RulingsInstitution decision

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

    “method patent,” as defined by the AIA. CoreLogic bears the burden of persuasion that the ’957 patent is a covered business method patent. See 37 C.F.R. § 42.304(a). For the reasons discussed below, we determine CoreLogic has made an insufficient showing that the ’957 patent is a “covered business method patent.” The AIA defines “covered business method patent” as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” AIA § 18(d)(1); see also 37 C.F.R. § 42.301(a). The legislative history of the AIA “explains that the definition of covered business method patent was drafted to encompass patents ‘claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.’” Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed. Reg. 48,374, 48,735 (Aug. 14, 2012) (“CBM Final Rules”) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)); see also Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1338 (Fed. Cir. 2016). To determine whether a patent is eligible for a covered business method patent review, the focus is on the claims. AIA § 18(d)(1) (“a patent that claims . . .” (emphasis added)); 37 C.F.R. § 42.301(a) (same); CBM Final Rules, 77 Fed. Reg. at 48,736 (comment 4) (“[T]he definition set forth in § 42.301(a) . . . is based on what the patent claims.”). A patent need have only one claim directed to a covered business method to be eligible for review. CBM Final Rules, 77 Fed. Reg. at 48,736 (comment 8) (“A patent having one or more claims directed to a covered business method is a covered business method patent for purposes of the review, even if the patent includes additional claims.”).” slip op. at 5

  • Adverse judgmentAdverse judgmentOther

    “patent because “[a]t least claim 1 of the ’957 patent claims data processing or other operations that are financial in nature or, at a minimum, incidental or complementary to a financial activity.” Pet. 7. CoreLogic also relies on dependent claims 13 and 16–18, and argues that those claims “explicitly limit the claims to financial applications.” Id. at 9; see also id. at 11 (alleging that claims 16–18 cover “subject matter incidental or complementary to a financial activity”). As noted above, however, BSI disclaimed claims 13 and 16–18 at the same time it filed its Preliminary Response. See Ex. 2003. “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996). We agree with other panels that have considered this issue under similar facts and concluded that the disclaimed claims should not be consulted when determining whether the patent is a covered business method patent under AIA §18(d)(1).1 We are mindful that other Board decisions have evaluated compliance with CBM standing requirements at the time of filing, but those cases are distinguishable2 and not binding here. Any suggestion in those cases that a decision on institution should address the disclaimed claims because they existed at the time the petition was filed is inconsistent with Federal Circuit precedent instructing us to treat the claims as if they never existed, and our Rules forbidding institution “based on disclaimed claims.” Guinn, 96 F.3d at 1422; 37 CFR § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); see also Google Inc. v. SimpleAir, Inc., CBM2015- 00019, slip op. at 5–6 (PTAB Aug. 19, 2015) (Paper 15) (Order Denying Request for Rehearing) (rejecting petitioner’s argument that disclaimed claim should be considered because it existed at the time the petition was 1 See, e.g., AT&T Mobility LLC v. Intellectual Ventures II LLC, CBM2015- 00185, slip op. at 9–10 (PTAB May 4, 2016) (Paper 10); Great West Casualty Co. v. Intellectual Ventures II LLC, CBM2015-00171, slip op. at 7–9 (PTAB Feb. 9, 2016) (Paper 10); Google Inc. v. SimpleAir, Inc., CBM2015-00019, slip op. at 14–15 (PTAB May 19, 2014) (Paper 11). 2 In Travelers Lloyds of Texas Ins. Co. v. Integrated Claims Sys., LLC, CBM2014-00187, slip op. at 7, 8 n.1 (PTAB Mar. 30, 2016) (Paper 31), the Patent Owner attempted to cancel a claim after institution, not disclaim a claim prior to institution. In J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC, CBM2014-00157, slip op. at 9 (PTAB Jan. 12, 2016) (Paper 40), the Patent Owner’s disclaimer occurred after institution, not prior to institution. filed). We therefore do not consider disclaimed claims 13 and 16–18 in our analysis.” slip op. at 6

  • BurdenDecided for patent owner

    “We agree with BSI. CoreLogic does not explain adequately how any of the claims of the ’957 patent recite a method or apparatus “for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” AIA § 18(d)(1); see also 37 C.F.R. § 42.301(a). CoreLogic focuses on claim 1, but fails to identify any limitation in claim 1 or any other claim that relates to a financial activity in any way. Claim 1 claims a “method for retrieving geographic parcel boundary polygon maps and associated parcel attribute data,” which has applicability to retrieving and displaying map data, not financial products and services. CoreLogic suggests that the “transmitting” step of claim 1 “can be used” by various entities in a business context, but does not argue, let alone establish, that the claim terms on their face are financial in nature. See Pet. 1. CoreLogic asserts that the Specification of the ’957 patent describes several methods of generating revenue using the claimed methods, and that numerous businesses may pay for access to map data generated using the claimed method. Pet. 10–16. CoreLogic’s reliance on these portions of the Specification is unavailing. First, CoreLogic fails to address how these disclosures relate directly to, or meaningfully informs our analysis of, the language of the claims. For example, CoreLogic does not direct us to any claims or claim limitations that require users to pay for access to the map database or use of the claimed methods. Second, CoreLogic fails to address portions of the Specification that indicate the claimed invention can be used “for free,” i.e., without any generation of revenue or financial aspect at all. See Ex. 1001, 2:58 (“These end users may access for free . . . .”), 14:11–15 (“Another public-private alliance option is to offer the free use of the NPDP server to such data sponsors in addition to or in lieu of their revenue share.”), 14:41–45 (“[C]ommodity service subscriber end users (customers) can have access to the NPDP at no charge.”), 16:8–12 (“It is also contemplated that other independent public and private data sponsors could be provided with links as part of the NPDP display which end users could access on a free or fee basis.”). Given that the Specification contemplates use of the claimed inventions for free, it is not apparent that the “purpose of the claimed method is to provide data in exchange for money,” as CoreLogic suggests. Pet. 10. At most, CoreLogic has established that the claimed methods could be used to generate revenue in a number of ways, even though the language of the claims does not require any exchange of money or other financially related step. Under these circumstances, we conclude that the “financial prong” has not been met. Numerous Board decisions have taken a similar approach in situations where the Specification refers to potential financial applications for the claimed inventions but the claim language does not expressly indicate a financial context.3 In Qualtrics, LLC v. OpinionLab,” slip op. at 10

  None
  Patents in suitUS 7,092,957
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · May 17, 2016 · IPR2016-00119 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution for claims 1–26 because Martinez-Guerra did not teach or suggest the claimed command action value in each parse-tree element.

  RulingsInstitution decision

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

    “value” has an ordinary meaning in the context of the invention. When a claim term “does not have an ordinary meaning, and its meaning is not clear from a plain reading of the claim, we turn to the remaining intrinsic evidence, including the written description, to aid in our construction of that term.” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1326 (Fed. Cir. 2001) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582–83, 39 USPQ2d 1573, 1576–77 (Fed. Cir. 1996); Hockerson– Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 955, 55 USPQ2d 1487, 1490 (Fed. Cir. 2000).) If the applicants for a patent desire to be their own lexicographer, the purported definition must be set forth in either the specification or prosecution history. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Such a definition must be set forth with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).” slip op. at 10

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

    “Prelim. Resp. 27–28. We find that the error reporting aspect of Martinez- Guerra is not a value used to identify a prescribed command, as required by our claim construction. The error does not indicate a prescribed command. Additionally, the error is not contained in each element of the parse tree; rather, it is only at the particular branch of the tree that causes an error.” slip op. at 15

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “To the extent that Petitioner relies on a sequence in which an error occurs and then a correct translation is made, as shown on page 19 of the 15 Petition, that sequence is not described in the Specification and appears only in the Petitioner’s declarant’s testimony, without citation to the record, at paragraphs 38 and 39. We give such testimony little weight. See 37 C.F.R. § 42.65(a) (“[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). It is within our discretion to assign the appropriate weight to the testimony offered by a declarant. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). Thus, Petitioner has not provided sufficient evidence that in the case in which an error occurs there is a command action value at each element of the parse tree.” slip op. at 15

  Claim constructioncites KSR · Graham
  Patents in suitUS 7,047,526
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Apr 12, 2016 · IPR2016-00018 · APJ Peter P Chen · IPR · Institution

  The Board denied institution because Arista did not show a reasonable likelihood that claims 1, 2, 6–9, 12, 13, and 17–20 were unpatentable over Chau or Chau and Wils.

  RulingsInstitution decision

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

    “review of claims 1, 2, 6–9, 12, 13, and 17–20 of U.S. Patent No. 8,051,211 B2 (Ex. 1001, “the ’211 patent”). Paper 2 (“Pet.”). Patent Owner, Cisco Systems, Inc., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1, 2, 6–9, 12, 13, and 17–20 of the ’211 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • BurdenNot shown unpatentable

    “Petitioner’s only apparent contention for Chau’s disclosure that the first and second LANs are both usable for simultaneous transmission “subsequent to” the aggregation of LANs, is that “the simultaneous transmission occurs as a result of the grouping of the first LAN (channel C2) and second LAN (channel C1).” Pet. 19–20, citing Ex. 1014 ¶ 54. The Lin declaration is similarly worded, and like the Petition, is silent as to whether Chau’s alleged simultaneous transmission occurs “subsequent to,” i.e., after the aggregation of LANs. Petitioner’s argument of simultaneous transmission occurring “as a result of” alleged aggregation of LANs is unavailing, because “subsequent to” means, “after,” not “as a result of.” In fact, in the related ’975 IPR, we expressly rejected the Patent Owner’s proposed construction of “as a result of” for “subsequent to.” See Section II.A. Neither the Petition nor the Lin declaration (Ex. 1014) cite any evidence of simultaneous transmission occurring “after” aggregation of LANs in Chau. Accordingly, we are not persuaded that Petitioner’s showing demonstrates a reasonable likelihood that it would prevail as to claim 1 being anticipated by Chau.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “In addition, as we determined in the ’975 IPR, for purposes of this decision, we determine that the broadest reasonable construction of “subsequent to” is its ordinary and customary meaning, namely, “after.” See Case IPR2015-00975, slip op. at 7–8 (PTAB Oct. 6, 2015) (declining to adopt Patent Owner’s proposed construction of “as a result of” for “subsequent to”).” slip op. at 7

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

    “Petitioner’s only apparent contention for Chau’s disclosure that the first and second LANs are both usable for simultaneous transmission “subsequent to” the aggregation of LANs, is that “the simultaneous transmission occurs as a result of the grouping of the first LAN (channel C2) and second LAN (channel C1).” Pet. 19–20, citing Ex. 1014 ¶ 54. The Lin declaration is similarly worded, and like the Petition, is silent as to whether Chau’s alleged simultaneous transmission occurs “subsequent to,” i.e., after the aggregation of LANs. Petitioner’s argument of simultaneous transmission occurring “as a result of” alleged aggregation of LANs is unavailing, because “subsequent to” means, “after,” not “as a result of.” In fact, in the related ’975 IPR, we expressly rejected the Patent Owner’s proposed construction of “as a result of” for “subsequent to.” See Section II.A. Neither the Petition nor the Lin declaration (Ex. 1014) cite any evidence of simultaneous transmission occurring “after” aggregation of LANs in Chau. Accordingly, we are not persuaded that Petitioner’s showing demonstrates a reasonable likelihood that it would prevail as to claim 1 being anticipated by Chau.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,051,211

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.