- Apple Inc. v. Qualcomm Inc.Rehearing deniedPTAB · May 23, 2019 · IPR2018-01270 · APJ Aaron W Moore · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving institution denied because Apple did not show Samsung disclosed the claimed notification and power-button silencing during an incoming call.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify the matters misapprehended or overlooked, and where each matter was addressed in a motion, opposition, or reply. Id. When reconsidering an institution decision, we look for an abuse of discretion, which may be found if there was (1) an erroneous interpretation of law, (2) a factual finding not supported by substantial evidence, or (2) unreasonable judgment in weighing relevant factors. See 37 C.F.R. § 42.71(c); Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); The Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“1006, 32)). We found the cited portions of Samsung to describe (1) that if there was no call already in progress, the user could silence an incoming call with the power button, but neither the in-use information nor call waiting would cause the claimed notification, and (2) that if a call was already in progress, call waiting would display a notification for a new call, but there was nothing to indicate that the user could silence a ‘ring,’ or even the call waiting alert, using the power button. See Decision 16. In other words, the “in-use” notification was insufficient because it was not shown to be displayed while a call was incoming, and the “call waiting” notification was insufficient because it was not shown to be employed at a time a user could use the power button to silence a “ring.”” slip op. at 4
- Strike new argumentNew argument disregardedDenied
“New Evidence Petitioner asserts that the “new arguments provided in [the] Request [are] appropriate” because “Petitioners are permitted in a request for rehearing to address inaccurate characterizations that they may not be able” slip op. at 7
- BurdenDecided for patent owner
“distinction,” and the reference need not describe a “separate during incoming calls state.” Instead, the problem is that Samsung’s in-use display is described as showing information that one of skill in the art would expect to be shown after a call has been answered (i.e., the timer), and Petitioner failed to establish that the information would have been displayed before a call was answered. In this proceeding, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). With no showing that the in-use information would be displayed before the call was answered, Petitioner did not carry its burden.” slip op. at 4
NonePatents in suitUS 9,203,940 - Google LLC v. Alex Is The Best, LLCRehearing deniedPTAB · Mar 18, 2019 · IPR2017-02058 · APJ Minn Chung · IPR · Rehearing
The Board denied Google’s rehearing request and left in place the denial of institution for claims 1–3, 10–14, and 21 because the Petition did not sufficiently show the cited references taught the claimed limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“certain teachings in Inoue about the claimed “WSARC.” Req. Reh’g 3. In the Decision, we found that, although the Petition appears to map Inoue’s file server to the claimed “WSARC” by mentioning “WSARC (Inoue’s file server)” (Dec. 16–17 (citing Pet. 17)), aside from that single mention, the Petition does not discuss the term “WSARC” or “website archive and review center” in relation to Inoue, and does not explain adequately why Inoue’s file server teaches or suggests the “WSARC” recited in the claims (id. at 17, 19 (citing Pet. 15–18)). Thus, based on the record presented, we determined that simply stating “a WSARC (Inoue’s file server)” in the Petition without any elaboration does not satisfy Petitioner’s burden required for institution of a review in this case (id. at 19–20 (citations omitted)).” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“At best, Petitioner’s arguments in its Request for Rehearing attempt to remedy the deficiencies in the Petition our Decision identified, by supplementing the arguments in the Petition. A request for rehearing is not a supplemental petition. Nor is it an opportunity to present new arguments or evidence that could have been presented and developed in the first instance in the Petition. As explained in the Decision (Dec. 19–20), it was Petitioner’s burden “from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (emphases added) (citing 35 U.S.C. § 312(a)(3)); see Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“[T]he expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” (emphases added)). The record shows that, rather than overlooking any teachings of Inoue or any “background” discussion by Dr. Madisetti, the Decision simply considered the arguments and explanations of the evidence Petitioner presented in the four corners of the Petition, and properly determined that the Petition did not meet this burden required on Petitioner. Dec. 19–20.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“certain teachings in Inoue about the claimed “WSARC.” Req. Reh’g 3. In the Decision, we found that, although the Petition appears to map Inoue’s file server to the claimed “WSARC” by mentioning “WSARC (Inoue’s file server)” (Dec. 16–17 (citing Pet. 17)), aside from that single mention, the Petition does not discuss the term “WSARC” or “website archive and review center” in relation to Inoue, and does not explain adequately why Inoue’s file server teaches or suggests the “WSARC” recited in the claims (id. at 17, 19 (citing Pet. 15–18)). Thus, based on the record presented, we determined that simply stating “a WSARC (Inoue’s file server)” in the Petition without any elaboration does not satisfy Petitioner’s burden required for institution of a review in this case (id. at 19–20 (citations omitted)).” slip op. at 3
§ 103 obviousnessPatents in suitUS 8,581,991 - Intel Corporation v. Alacritech, Inc.Rehearing grantedPTAB · Jan 25, 2018 · IPR2017-01395 · APJ Daniel N Fishman · IPR · Rehearing
The Board partly granted Intel’s rehearing request to recognize the Stansbury Declaration as a compliant sworn affidavit, but otherwise denied rehearing and left institution denied.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“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 the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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). In the Decision, the Board determined that the record before it was insufficient to show that Stevens21 is a prior art printed publication under 35 U.S.C. §§ 102, 311(b) with respect to the ’948 patent. Stevens2 is one of the references relied upon in the sole asserted ground of unpatentability in the Petition. Accordingly, the Board concluded that Petitioner did not slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Stevens2 was published no later than April 7, 1995 and is prior art under 102(b).” Pet. 45 n.9 (citing Ex. 1063 in support thereof (the “Stansbury Declaration”)). The Petition, per se, provides no other evidence or argument to establish a threshold showing that Stevens2 is a printed publication— publicly accessible by an interested person of ordinary skill in the art before the critical date. slip op. at 3
- Expert testimonyOther
“attested that Stevens2 was ‘standard reference book on TCP/IP’ that was ‘widely cited and relied upon,’ ‘well known resources to a [person of ordinary skill in the art]’ (Petition at 15 (citing Ex.1003 at ¶¶21-88, including ¶¶27, 60, and FN3), 45 (citing Ex.1003 at ¶1212), FN9).” Req. 12. Initially we observe the Petition cites these paragraphs of Dr. Horst’s Declaration as part of the “Background Of Technology” discussion rather than as support for public accessibility of Stevens2. See Pet. 15–24. Furthermore, incorporating by reference such a substantial portion of Dr. Horst’s Declaration (paragraphs 21–88) is improper under our rules. See 37 C.F.R. § 42.6(a)(3). Regardless, even if we consider Dr. Horst’s description of well-known background material (including Stevens2) as support for public accessibility of Stevens2, his testimony does not indicate” slip op. at 5
§ 102 anticipationPatents in suitUS 8,805,948 - Apple Inc. v. Saint Lawrence Communications, LLCRehearing deniedPTAB · Dec 26, 2017 · IPR2017-01244 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because Petitioner did not show a reasonable likelihood of proving claims 1–21 and 29–42 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment 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); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation.” slip op. at 4
NonePatents in suitUS 6,807,524 - Apple Inc. v. Saint Lawrence Communications, LLCInstitution deniedPTAB · Oct 25, 2017 · IPR2017-01244 · APJ Daniel N Fishman · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 1–21 and 29–42 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For at least the above reasons, we are not persuaded that Petitioner has established a reasonable likelihood that it would prevail in showing any of claims 1, 8, 15, 29, and 36 are unpatentable as obvious over the proposed combination of Salami and Kroon.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“encoding device of, for example, claim 1. However, we agree with Patent Owner that Salami does not disclose that the preemphasized input speech signal is used as an input to a perceptual weighting filter as recited in claim 1. See PO Resp. 35–37. Specifically, claim 1 specifies both the synthesis filter calculator and the perceptual weighting filter are responsive to the preemphasized signal generated by the preemphasis filter, which is, in turn, responsive to the input wideband speech signal, and further specifies that the perceptual weighting filter is also responsive to the coefficients generated by the synthesis filter calculator. In other words, the claim requires an arrangement of the various elements of an encoder in which the output of the preemphasis filter (the preemphasized signal) is applied to the synthesis filter calculator and applied to the perceptual weighting filter, and the coefficients generated by the synthesis filter calculator are applied to the perceptual weighting filter. An excerpt of Figure 1 of the ’524 patent, reproduced below, shows a block diagram of relevant portions of such an encoder arrangement. The above excerpt of Figure 1 of the ’524 patent depicts preemphasis filter 103, coupled to receive wideband speech signals (“Sp”) and configured to generate preemphasized speech signal (“S”). Ex. 1001, 7:64–8:18. The output of preemphasis filter 103 (“S”) is applied to LP analysis quantization and interpolation calculator 104 and perceptual weighting filter 105. Id. at 8:19–9:45. Petitioner directs us to no disclosure in Salami of such an arrangement of filters in an encoding device.” slip op. at 17
- BurdenInstitution denied
“Ex. 1008, 23. We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation. Ex. 1003, 65 (the portion of the claim chart of paragraph 114 for this element of claim 1).” slip op. at 19
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,807,524 - Kingston Technology Company, Inc. v. Spex Technologies, Inc.Institution deniedPTAB · Aug 17, 2017 · IPR2017-00825 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all asserted grounds because Petitioner did not show a reasonable likelihood of prevailing on claims 55 or 57.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Our Rules require that a petition for inter partes review identify “[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is 3 Petitioner proposes a definition for a person of ordinary skill in the art. Pet. 13; see Ex. 1010 ¶ 20. Patent Owner does not challenge this definition. For purposes of this Decision and to the extent necessary, we adopt Petitioner’s definition. found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc)).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. “security module” and “target module” The terms “security module” and “target module” both are recited in each challenged claim. Petitioner identifies a dispute between itself and Patent Owner in related district court litigation as to whether those terms require only “functional (not necessarily physically distinct) modules.” Pet. 15. Specifically, Petitioner points to a statement in an infringement claim chart that appears to have been attached as an exhibit to Patent Owner’s complaint in the litigation that the accused device “has at least two modules, a security module (e.g., cryptographic functionality) and a target module (e.g., storage functionality).” Id. (citing Ex. 1008, 2). Petitioner states that it “expressly disagrees with Patent Owner’s broad construction of the ‘modules’ language as covering structures that are not physically distinct.” Id. Petitioner contends that the proper construction of “module” “requires a structure that performs as a ‘security’ module and another separate (potentially connected) structure that performs as a ‘target’ (e.g., memory module, second security module, etc.).” Id. at 18.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Petitioner does not sufficiently, persuasively explain how Jones’s disclosure of a memory card that “stores information enabling [a] host computer to automatically identify the particular . . . card as soon as the card and host are connected, and to automatically establish [an] appropriate hardware/software interface” teaches or suggests “receiving a request from the host computing device for information regarding the type of the modular device” and “providing the type of the target module to the host computing device in response to the request,” as recited in claim 55. Indeed, Jones’s statement that the card includes information enabling the host to “automatically” identify the card “as soon as the card and host are connected” suggests not only that receipt of a request is unnecessary, but also that the information is not provided “in response to [a] request.” We also are not persuaded by Petitioner’s alternative argument based on a device driver “directly interrogat[ing] the CIS structures in the attribute memory.” Pet. 20. As Patent Owner points out (Prelim. Resp. 16), Jones describes that as separate from the embodiment relied upon by Petitioner as disclosing all other limitations of claim 55, whereas anticipation requires that all of the limitations be arranged or combined in the same way in the prior art as recited in the claim. Net MoneyIN, 545 F.3d at 1371. Moreover, because Petitioner does not advance any argument that the “CIS structures in the attribute memory” perform the remaining claim steps or explain how the “operably connecting” step of claim 55 would be taught or suggested by Jones “in cases wherein the host computer is not provided with PCMCIA Card Services and Socket Services functions,” we agree with Patent Owner that this alternative argument also fails to establish a reasonable likelihood that Petitioner would prevail in its obviousness challenge to claim 55 over Jones.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Petitioner does not sufficiently, persuasively explain how Jones’s disclosure of a memory card that “stores information enabling [a] host computer to automatically identify the particular . . . card as soon as the card and host are connected, and to automatically establish [an] appropriate hardware/software interface” teaches or suggests “receiving a request from the host computing device for information regarding the type of the modular device” and “providing the type of the target module to the host computing device in response to the request,” as recited in claim 55. Indeed, Jones’s statement that the card includes information enabling the host to “automatically” identify the card “as soon as the card and host are connected” suggests not only that receipt of a request is unnecessary, but also that the information is not provided “in response to [a] request.” We also are not persuaded by Petitioner’s alternative argument based on a device driver “directly interrogat[ing] the CIS structures in the attribute memory.” Pet. 20. As Patent Owner points out (Prelim. Resp. 16), Jones describes that as separate from the embodiment relied upon by Petitioner as disclosing all other limitations of claim 55, whereas anticipation requires that all of the limitations be arranged or combined in the same way in the prior art as recited in the claim. Net MoneyIN, 545 F.3d at 1371. Moreover, because Petitioner does not advance any argument that the “CIS structures in the attribute memory” perform the remaining claim steps or explain how the “operably connecting” step of claim 55 would be taught or suggested by Jones “in cases wherein the host computer is not provided with PCMCIA Card Services and Socket Services functions,” we agree with Patent Owner that this alternative argument also fails to establish a reasonable likelihood that Petitioner would prevail in its obviousness challenge to claim 55 over Jones.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,003,135 - Kingston Technology Company, Inc. v. Spex Technologies, Inc.Institution deniedPTAB · Aug 17, 2017 · IPR2017-00824 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution because Kingston did not show a reasonable likelihood that claims 1–3, 6–8, 11–15, 23–28, and 36–39 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we are not persuaded, on this record, that Petitioner has established a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims on the asserted grounds. Accordingly, we deny the Petition and decline to institute an inter partes review of claims 1–3, 6–8, 11–15, 23–28, and 36–39 of the ’802 patent.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“A claim limitation using the phrase “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.2 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Section 112 ¶ 6 provides that: An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Construing a means-plus-function claim term is a two-step process, wherein we first identify the claimed function and then determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351; Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Moreover, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004); Cardiac Pacemakers, 296 F.3d at 1113. This analysis applies similarly under both the broadest reasonable construction and district court-type claim construction standards. See Williamson, 792 F.3d at 1348 (affirming application of § 112 ¶ 6 in district court litigation); In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011)” slip op. at 8
- BurdenNot shown unpatentable
“[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d at 1193). slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d at 1193). slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,088,802 - Johnson Safety, Inc. v. Voxx International CorporationRehearing grantedPTAB · Mar 9, 2017 · IPR2016-01074 · APJ Bryan F Moore · IPR · Rehearing
Petitioner’s rehearing request was granted for clarification but otherwise denied; review remains denied for the challenged claims on the Lavelle-365/Jost/Chang and LCM500NP/Lavelle-365 grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“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
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“defective prior oath that did not include language covering new matter in the continuation-in-part application is properly remedied by the filing of a supplemental oath in the particular set of circumstances presented here, in which the Patent Office accepted the defective, originally filed oath. In any event, we determine that the filing of a supplemental oath, under these circumstances, does not operate to invalidate the patent at issue or prevent Voxx from being considered the Patent Owner.3 Thus, we are not persuaded by this argument.” slip op. at 5
- BurdenDenied
“CONCLUSION The Request for Rehearing does not demonstrate that we misapprehended or overlooked any matters raised in the Petition declining to 3 This decision does not address the propriety of filing a supplemental oath in other situations such as during prosecution or in the event of a reissue. 4 We also note that Petitioner filed this request for inter partes review, and in doing so, specifically identified Voxx as the owner of the ’355 patent. See Paper 2, 3. institute review of claims 1, 2, 4, 10, 11, 12, 14, 18, 20, 26, 30, 32, 38, 39, and 42 over Lavelle-365, Jost, and Chang, and claims 14, 18, 20, and 42 over LCM500NP and Lavelle-365. 35 U.S.C. § 314(a).” slip op. at 5
NonePatents in suitUS 7,839,355 - Microsoft Corporation v. Corel Software, LLCInstitution deniedPTAB · Jan 4, 2017 · IPR2016-01300 · APJ James A Tartal · IPR · Institution
The Board denied institution on claims 1–3 because the Petition did not show that QuarkXPress or IRIS was a prior art printed publication.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“date of a reference disregards Petitioner’s burden to show that the reference was publicly accessible by a particular date. Indeed, a copyright notice may be evidence of the date of a reference. See, e.g., FLIR Systems, Inc., slip op. at 18–19 (stating that “[o]n the record before us, we are persuaded that the Copyright notice prima facie establishes a prior art date of 2002”). The copyright notice, alone, however, sheds virtually no light on whether the document was publicly accessible as of that date, therefore additional 6 We note that Petitioner sought authorization to file a reply brief to Patent Owner’s Preliminary Response to further address whether either QuarkXPress or IRIS is prior art. See 37 C.F.R. § 42.108(c) (providing that a petitioner may be authorized to file a reply to the preliminary response upon a showing of good cause). During a teleconference between counsel for the parties and the Board on October 27, 2016, Petitioner explained that it not only sought to file an additional brief, but also to submit additional evidence in the form of declarations. Petitioner’s request was denied for lack of “good cause.” That Petitioner may have determined from Patent Owner’s Preliminary Response that the information Petitioner provided with the Petition failed to provide a threshold showing that either QuarkXPress or IRIS is a prior art printed publication did not support a finding of “good cause” in this case, much less justify submitting additional evidence not included with the Petition, which Patent Owner was deprived of addressing in its Preliminary Response. As noted above, an inter partes review may not be instituted unless “the information presented in the petition” shows a reasonable likelihood that the petitioner would prevail. 35 U.S.C. § 314(a). Petitioner did not identify any persuasive basis to provide additional declaration evidence outside of the Petition prior to institution of inter partes review to show a fundamental element of Petitioner’s contentions -- that the references asserted by Petitioner are prior art as printed publications. evidence is typically necessary to support a showing of public accessibility. See, e.g., Ford Motor Co. v. Cruise Control Techs. LLC, Case IPR2014- 00291, slip op. at 9–10 (PTAB June 29, 2015) (Paper 44) (discussing evidence of public accessibility that supported a finding that a reference was a prior art printed publication). Rather than evidence public accessibility, the copyright notice appears in QuarkXPress along with an express limitation on the use and dissemination of QuarkXPress, stating “[t]his manual may not, in whole or in part, be copied, photocopied, reproduced, translated, or converted to any electronic or machine readable form without prior written consent of Quark, Inc.” Ex. 1007, 4. Thus, the evidence suggests that if it was distributed at all, it was only in a restricted and limited fashion to persons who acquired the underlying QuarkXPress software product. Accordingly, we look to whether Petitioner has provided other evidence or argument to support its contention that QuarkXPress was publicly accessible.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION The only grounds of unpatentability asserted by Petitioner against the ’309 patent in the Petition rely upon QuarkXPress or IRIS, and, as discussed above, Petitioner has not presented sufficient persuasive information in the Petition and accompanying evidence to make a threshold showing that either QuarkXPress or IRIS is a prior art printed publication. Accordingly, for the foregoing reasons, the information presented in the Petition and accompanying evidence does not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any challenged claim of the ’309 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied and no inter partes review is instituted.” slip op. at 15
§ 102 anticipationPatents in suitUS 6,731,309 - Alstom Grid LLC v. Dominion Resources, Inc. And Virginia Electric And Power CompanyInstitution deniedPTAB · Jul 6, 2016 · IPR2016-00504 · APJ Kalyan K Deshpande · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1-3, 5-10, 12, 13, and 15-20 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review of claims 1‒3, 5‒10, 12, 13, and 15‒20 of U.S. Patent No. 8,437,883 B2 (Ex. 1002, “the ’883 patent”). Paper 1 (“Pet.”). Dominion Resources, Inc. and Virginia Electric and Power Company (collectively, “Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and associated evidence, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing unpatentability of all the challenged claims. We, therefore, deny the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Patent Owner argues that Deaver fails to disclose “a signal reporting what was sensed by a sensor that is not included in the subset.” Prelim. Resp. 14‒15. We agree with Patent Owner. As argued by Patent Owner, Petitioner contends that Deaver discloses “alerts” that are transmitted when the minimum and maximum voltage thresholds are exceeded. Prelim. Resp. 14‒15; see Pet. 23. However, the CPVMs transmitting the alerts are monitors at each customer premises that are “selected by an electric utility company as a desired point within the power distribution system [] that will be voltage monitored.” Ex. 1004, 4:1‒3. As such, the CPVMs are all in the subset of sensors being monitored, and none of CPVMs are “not included in the subset.” Accordingly, we agree with Patent Owner that Deaver fails to disclose “at least one other sensor of the plurality of sensors that is not included in the subset is further configured to send a respective reporting signal.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner. Petitioner fails to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Petitioner generally states that Deaver, LaPlace, Richeson, and Bell are analogous to the ’883 patent because they are in the same field of endeavor, dealing with power distribution systems and power management in power distribution systems, and metering technology. Pet. 16. Petitioner goes on to characterize each of the references in this field of endeavor. Id. at 16‒17. Although a determination that the cited prior art is analogous to the ’883 patent provides insight into the scope and content of the prior art to be examined, such a determination is, by itself, insufficient to support the conclusion of obviousness. Petitioner must set forth an articulated reasoning with some rational underpinning in supporting its legal conclusion of obviousness, and must provide a reason that would have prompted a person of ordinary skill in the art to combine the elements disclosed by each of the references. Here, Petitioner has failed to provide such a reasoning.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that there is no need to construe expressly any of the claim terms at this time. Although Petitioner and Patent Owner disagree as to the construction of the term “energy delivery parameter,” we need not construe this term because it is not necessary to resolve the dispositive issues discussed below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,437,883
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.