- Reed Semiconductor Corp. v. Monolithic Power Systems, Inc.Institution deniedPTAB · Nov 26, 2024 · IPR2024-00871 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood of prevailing on any challenged claim; it also found institution inefficient based on Ground 1 alone.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We discern no material difference between the parties’ definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On this record and for purposes of this decision, we determine that no claim terms require express construction. D. The Alleged Unpatentability of Claims 1, 11, and 12 as Anticipated by TI,” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“establishing the unpatentability of any of the challenged claims of the ’608 patent. IV. ORDER For the foregoing reasons, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 39
- PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied
“Here, Petitioner advances five challenges with four directed to the same three independent claims. Pet. 3. We, for the reasons discussed below, determine that Petitioner has failed to show a reasonable likelihood of prevailing on Grounds 2 through 5. We further determine that, based on the particular facts of this proceeding, instituting a trial with respect to all grounds and all the challenged claims based on evidence and arguments directed only to Ground 1 would not be an efficient use of the Board’s time and resources. Cf. Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Thus, even if Petitioner met the requisite burden for institution as to Ground 1, we would exercise our discretion and not institute an inter partes review. E. The Alleged Anticipation of Claims 1, 11, and 12 by Galinski (Ground 2)” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,590,608 - Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution deniedPTAB · Oct 4, 2022 · IPR2022-00701 · APJ Jeffrey S Smith · IPR · Institution
The Board denied institution because JP029 supports claims 1–4 as of April 26, 2002, making the June 2002 Draft H.264 Standard unavailable as prior art for the asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “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). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’059 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’059 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Ex. 2001 ¶ 46 (emphasis added) (citing Ex. 1004 (H.324, 1998), Fig. 1, 1–2). In other words, according to the testimony of Dr. Richardson, which the record supports and Petitioner does not dispute, the applicable standards, known to artisans of ordinary skill prior to the filing date of JP029, show multiplexing and demultiplexing the coded audio and video, thereby satisfying claim 1’s limitations for multiplexing and demultiplexing coded audio data, contrary to Patent Owner’s arguments. See Pet. 25.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for patent owner
“argument, Petitioner has not shown that such a disclaimer exists in the prosecution history. The purported disavowal of claim scope with respect to the plain meaning of a claim term must be unambiguous, clear, and unmistakable to one of ordinary skill in the art. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (citations omitted). Petitioner has not made such a showing. Rather, Petitioner points to language that was added to the claim during prosecution, namely, “performing arithmetic coding on a first bit of the binary data corresponding to each absolute value of the coefficients,” and concludes that this language requires coding a first bit separately from the remaining bits, using separate probability tables. Pet. Reply 10 (citing Ex. 1012, 656). We agree with Patent Owner, that the plain meaning of this claim language does not require coding a first bit separately from the remaining bits, using separate probability tables. Prelim. Resp. 57–58. Turning to the prosecution history, Petitioner does not explain how the applicant’s remarks to the Examiner in the prosecution history show a clear and unmistakable disavowal of claim scope. See Pet. Reply 9–10. Further, the applicant did not state to the Examiner that the claim requires coding a first bit separately from the remaining bits, using separate probability tables. See Ex. 1012, 662–664. On this limited record, it is not clear how the applicant’s arguments in the prosecution history persuasively show that the applicant made a clear and unmistakable disavowal of claim scope. Therefore, we construe the claim according to its plain and ordinary meaning, which does not require coding a first bit separately from the remaining bits using separate probability tables as alleged by Petitioner.” slip op. at 25
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner. Petitioner’s claim construction regarding prosecution history disclaimer does not address “unanticipated and incorrect statements” made by Patent Owner “regarding the law with respect to written description and the disclosure of the subject patent and priority applications, to which Petitioners need to respond.” Ex. 1041. Specifically, Petitioner does not allege an incorrect statement in Patent Owner’s contention that “Petitioner admits that JP029 discloses performing the encoding on all bits of binary data, including the ‘first bit’ of data.” Prelim. Resp. 55 (citing Pet. 29). Nor does Petitioner allege an incorrect statement in Patent Owner’s contention that “Petitioner’s expert opines – with no explanation or citation – that the claims require ‘separately arithmetically encoding/decoding a first bit of binary data using a separate probability table from the probability table (or tables) used to encode/decode the remaining bits of binary data.’ Nothing in the claims require this.” Id. at 57 (citing Ex. 1003 ¶ 52). Instead, Petitioner, for the first time in its Reply, proposes construing the claim beyond its plain and ordinary meaning in order to rebut Patent Owner’s contention that the plain and ordinary meaning of the claim does not require coding a first bit separately from the remaining bits, using separate probability tables. Petitioner has not explained how Patent Owner made an incorrect statement, nor has Petitioner explained why Patent Owner’s construction of the claim based on the claim’s plain and ordinary meaning was unanticipated. See Pet. 7 (“[T]he Petition does not present any controversy over claim meaning and the Board need not construe any terms.”); see id. at 8 (“Petitioner maintains that the Challenged Claims would have been obvious under any reasonable construction.”). Petitioner’s new claim construction alleging prosecution history disclaimer, and Petitioner’s corresponding new argument based on the alleged disclaimer, are untimely.” slip op. at 24
Claim construction§ 112 disclosurecites GrahamPatents in suitUS 7,970,059 - Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution deniedPTAB · Oct 4, 2022 · IPR2022-00629 · APJ Jeffrey S Smith · IPR · Institution
The Board denied institution because Patent Owner established claim 1’s priority to JP665, antedating the references relied on in both obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “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). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’878 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’878 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“. . . each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. §112.” Lockwood, 107 F.3d at 1571. To satisfy this written description requirement, a priority application must “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., 598 F.3d at 1351. “It is the specification itself that must demonstrate possession,” and “a description that merely renders the invention obvious does not satisfy the requirement.” Id. at 1352.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on its expert, Dr. Schonfeld, Petitioner contends as follows: A POSITA at the time would have had at least an undergraduate degree in Electrical Engineering, Computer Science, Computer Engineering, or a related field (or equivalent work experience in the that field), and two or more years of experience with audio, image, or video coding. Ex. 1003, ¶ 24. The relevant experience would include a working understanding of the then-existing audio and video coding standards, including ongoing work on emerging standards. Id. Pet. 15 (citing Ex. 1003 ¶ 24). Dr. Schonfeld adds that “a POSITA would have a working understanding of the then existing audio and video encoding standards (e.g., H.263), as well as ongoing work on emerging standards (e.g., H.26L/H.264).” 1003 ¶ 24. Dr. Richardson, Patent Owner’s expert, agrees with, and applies, Dr. Schonfeld’s proposed level of ordinary skill. Ex. 2001 ¶ 30 (citing Ex. 1003 ¶ 24). Based on a review of the preliminary record, for purposes of the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, as agreed upon by Dr. Schonfeld and Dr. Richardson, because it is consistent with the evidence of record, including the asserted prior art and ’878 patent specification.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As Petitioner argues, it is not necessary to explicitly construe any claim terms. See Pet. 7. Any construction would have no effect in the analysis of the dispositive priority issue here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 112 disclosurecites GrahamPatents in suitUS 8,139,878 - Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution deniedPTAB · Oct 4, 2022 · IPR2022-00628 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because Patent Owner established priority to JP665, antedating the references asserted against sole challenged claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “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). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’238 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’238 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“In summary, contrary to Petitioner’s arguments, an artisan of ordinary skill would not have read JP665’s disclosed video improvements to H.26L as limited only to a coded video system (i.e., without audio) in the face of known related audio/video coding standards specifically contemplating video coding standards including H.26L and its predecessor H.263. Moreover, the parties agree that an artisan of ordinary skill would have known of the existing audio and video encoding standards. Ex. 1003 ¶ 24; Ex. 2001 ¶ 30; supra § IIIB. Therefore, Patent Owner shows that JP665 conveys possession of a component (video) used in a known system as defined by known standards (coded audio and video in multiplexing and demultiplexing systems) as required by claim 1’s preamble, element 1a, and element 1b. Based on the full record as generally summarized above, Patent Owner establishes priority of the ’238 patent to JP665, thereby antedating Bjontegaard and JVT-C167, which the Petition relies upon to allege obviousness in Grounds 1 and 2, respectively. This priority showing is fatal to the Petition’s obviousness showing.” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“In summary, contrary to Petitioner’s arguments, an artisan of ordinary skill would not have read JP665’s disclosed video improvements to H.26L as limited only to a coded video system (i.e., without audio) in the face of known related audio/video coding standards specifically contemplating video coding standards including H.26L and its predecessor H.263. Moreover, the parties agree that an artisan of ordinary skill would have known of the existing audio and video encoding standards. Ex. 1003 ¶ 24; Ex. 2001 ¶ 30; supra § IIIB. Therefore, Patent Owner shows that JP665 conveys possession of a component (video) used in a known system as defined by known standards (coded audio and video in multiplexing and demultiplexing systems) as required by claim 1’s preamble, element 1a, and element 1b. Based on the full record as generally summarized above, Patent Owner establishes priority of the ’238 patent to JP665, thereby antedating Bjontegaard and JVT-C167, which the Petition relies upon to allege obviousness in Grounds 1 and 2, respectively. This priority showing is fatal to the Petition’s obviousness showing.” slip op. at 22
§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 7,769,238 - Micron Technology, Inc. v. Innovative Memory Systems, Inc.Institution deniedPTAB · Jun 24, 2016 · IPR2016-00325 · APJ James B Arpin · IPR · Institution
The Board denied institution for claims 42–44 because the petition did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review of claims 42–44 of U.S. Patent No. 7,000,063 B2 (Ex. 1001, “the ’063 patent”) under 35 U.S.C. §§ 311–319. Paper 1 (“Petition” or “Pet.”). Innovative Memory Systems, Inc. (“Patent Owner”), filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Under 35 U.S.C. § 314, 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 an inter partes review of any of claims 42–44 of the ’063 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“2. “write-once memory cells” (Claims 42–44) Patent Owner contends that the term “write-once memory cells” means “memory cells to which data can be written only once.” Prelim. Resp. 7 (emphasis added). Petitioner does not propose a construction for this term. See Pet. 9–12.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Patent Owner contends that Kasa does not disclose the “rendering” step of claim 42. Prelim. Resp. 15–17. In particular, Patent Owner contends that Kasa does not disclose causing a write-many memory cell to become a write-once memory cell. Id. at 15–16. Instead, Patent Owner contends that “Kasa merely discloses causing a write-many memory cell to become a read- only memory cell, i.e., a memory cell to which data can no longer be written,” after the data to be protected has been written to the write-many OTP sector. Id.; see Ex. 1005, col. 11, ll. 27–30 (“As set forth above, when the OTP sector write-protect CAM 34 is in the programmed state, the OTP sector 26 can only be used as a read-only sector.” (emphasis added)).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“3. Analysis of Challenge to Claim 43 Claim 43 depends directly from independent claim 42 and recites the method of claim 42 “wherein the memory device comprises a modular memory device that is removabl[y] couplable [with] a host device.” Ex. 1001, col. 10, ll. 33–35; see id., Certificate of Correction. Petitioner argues that Dipert teaches the additional limitations of claim 43 and that a person of ordinary skill in the art would have reason to combine the teachings of Kasa with those of Dipert to achieve the method recited in claim 43. Pet. 25–28. However, Petitioner relies solely on the teachings of Kasa to supply the limitations of independent claim 42. Id. at 27. Patent Owner contends that, because Kasa fails to disclose each and every element of claim 42, Kasa also fails to teach or suggest the limitations of dependent claim 44. See Prelim. Resp. 18. In view of our analysis of the arguments with respect to claim 42 (see supra Section II.B.3.a.), we agree with Patent Owner. Consequently, on this record, we are persuaded that Petitioner fails to demonstrate a reasonable likelihood of prevailing in showing that Kasa and Dipert render claim 43 of the ’063 patent obvious.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,000,063 - PTAB · Mar 2, 2016 · IPR2015-01448 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of institution for claims 1 and 3–6 because Petitioner showed no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“electrode is referred to with the reference numeral 24, the Decision found that the pixel electrode in Figure 36 is single unitary electrode, as is shown clearly in Figure 36, and the pixel electrode in Figure 52 is a combination of two sub-pixel electrodes. Dec. 8–9. The Decision found that Petitioner had not shown sufficient evidence in the record that the unitary electrode embodiment would be combined with the two sub-pixel electrode embodiment. Thus, the Decision did not overlook or misapprehend Petitioner’s arguments or evidence. We fully considered Petitioner’s position and determined that the evidence on which Petitioner relied was not persuasive in establishing that Figures 36 and 52 could be combined. A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing. We are not” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“[a]s our reviewing court’s predecessor stated, for anticipation, the prior art reference “must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Yamamoto, the Petition does not state that Koike could be combined with the admitted prior art in the patent as would be required to prove obviousness. Nor does the Petition state a rationale for combining Koike or Yamamoto with the admitted prior art in the patent as also would be required to prove obviousness. Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000). Further, in its anticipation ground, the Petition does not state that the “opening” was within the knowledge of one of ordinary skill such that it could be combined with the disclosure of Koike for the purpose of anticipation. An argument that a particular limitation in a claim is a “point of novelty” does not relieve the Petitioner from showing each element of the claim is in the prior art and that the elements would have been combined with each other by one of ordinary 4 skill. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (holding that “unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102”). Thus, we are not persuaded by this argument.” slip op. at 4
§ 102 anticipation§ 103 obviousnessPatents in suitUS 5,995,176 - Funai Electric Co., Ltd. / Samsung Display Co., Ltd. v. Gold Charm Ltd.Institution deniedPTAB · Jan 11, 2016 · IPR2015-01448 · APJ Bryan F Moore · IPR · Institution
The Board denied institution for claims 1 and 3–6 because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“III. CONCLUSION The information presented does not show that there is a reasonable likelihood that Petitioner would prevail at trial with respect to at least one 17 claim of the ’176 patent, based on any grounds presented in the Petition. On this record, we deny the petition for inter partes review of claims 1 and 3–6. IV. ORDER Accordingly, it is ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 17
- PTAB / AIA Trials › Real party in interest / privityNot reached
“The current situation does not require us to assess the merits of the real parties in interest issue because, as we explain below, the dispositive issue in this proceeding is whether Petitioner has shown a reasonable likelihood of success on the merits of the grounds presented in the Petition. Consequently, we need not reach and, therefore, do not address whether Petitioner identifies all real parties in interest in its Petition, as required by § 312(a)(2).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1281–1282 (Fed. Cir. 2015) (“Congress implicitly adopted the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For the purposes of this Decision, and on this record, none of the claim terms require an express construction. 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 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As our reviewing court’s predecessor stated, for anticipation, the prior art reference “must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972); see also Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (holding that “unless a reference discloses within the four corners of the document not only all of the 9 limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102”). We determine that Petitioner has not shown sufficiently that all the limitations of claim 1 are arranged or combined in Koike in the same way as in claim 1.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,995,176 - Mastercard International Incorporated v. John D’AgostinoInstitution deniedPTAB · Mar 7, 2014 · CBM2013-00058 · APJ Kalyan K Deshpande · CBM · Institution
The Board denied institution on claims 1-30 because Cohen and Flitcroft did not qualify as prior art for a covered business method review under AIA § 18(a)(1)(C).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“THRESHOLD—The Director may not authorize a post-grant review to be instituted unless the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable. Petitioner challenges the patentability of claims 1-30 of the ’486 patent under 35 U.S.C. §§ 102 and 103. Taking into account Patent Owner’s preliminary response, we determine that the information presented in the petition does not demonstrate that it is more likely than not that the challenged claims are unpatentable. Pursuant to 35 U.S.C. § 324(a), we deny the institution of a covered business method patent review as to claims 1-30 of the ’486 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“neither Cohen nor Flitcroft was published prior to the effective filing date of the ’486 patent. As such, we agree with Petitioner that both Cohen and Flitcroft only qualify as § 102(e) references. Accordingly, neither Cohen nor Flitcroft qualifies as prior art, for a covered business methods review, under Section 18(a)(1)(C) of the AIA. Petitioner does not direct us to any further evidence to demonstrate that Cohen and Flitcroft qualify as prior art under Section 18(a)(1)(C) of the AIA. Instead, Petitioner argues that the Board previously has instituted a covered business method patent review on the basis of a reference that qualifies under § 102 (e). Pet. 15, n. 6 (citing CBM2013-00008, paper 20, 20-21, 35). Nonetheless, Section 18 (a)(1)(C) of the AIA governs what qualifies as prior art in this proceeding, and in that earlier Board proceeding the Board issued a clarifying order, effectively amending the decision to institute and withdrawing the previously instituted ground based on the § 102(e) reference, reasoning that the reference does not qualify as prior art in CBM proceedings under Section 18(a)(1)(C) of the AIA. See CBM2013- 00008, paper 24, 2-3. Because Petitioner has not demonstrated that Cohen or Flitcroft qualifies as prior art under Section 18(a)(1)(C) of the AIA, we are not persuaded that Petitioner demonstrates that it is more likely than not that claims 1-15 and 22-30 are unpatentable as being anticipated by Cohen or Flitcroft. We similarly are not persuaded that Petitioner demonstrates that it is more likely than not that claims 16-21 are unpatentable as being obvious over Cohen or Flitcroft, and Musmanno.” slip op. at 9
§ 102 anticipationPatents in suitUS 7,840,486
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.