- Sonos, Inc v. Google LLCInstitution deniedPTAB · Feb 8, 2024 · IPR2023-01288 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that Rosenberger anticipated any challenged claim or that Rosenberger and Jang rendered claims 2, 3, 9, 10, and 12 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Technology, Inc., 815 F.3d 1358, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art “would have had the equivalent of a fouryear degree from an accredited institution (typically denoted as a B.S. degree) in electrical or computer engineering, or a related field, and approximately 2-4 years of experience in the field of speech processing, or an equivalent level of skill, knowledge, and experience.” Pet. 8 (citing Ex. 1002 ¶¶ 36–39). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the asserted prior art. 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).” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“construction in a footnote addressing “perform[ing] speech recognition.” Prelim. Resp. 14 n.1 (“Patent Owner does not concede to the correctness of the ITC’s construction of ‘perform[ing] speech recognition,’ particularly its finding that ‘hotword[6] detection’ necessarily includes speech 5 In the Initial Determination of Violation of Section 337 and Recommended Determination on Remedy and Bond (Ex. 2001 (“Initial Determination”)), the plain and ordinary meaning of “perform speech recognition” was construed “to include[] hotword detection” (id. at 49). 6 According to the ’748 patent, a “hotword” is a predetermined audio command or audio trigger such as “Hello phone,” “Okay car,” “Hello device,” “Give me directions,” “what’s the time,” “make a call,” “go silent,” or “play.” Ex. 1001, 2:66–67, 4:12, 5:14–15, 5:40, 9:61–62, 10:6–7, 20:16– recognition.”). Although Patent Owner does not “concede to the correctness” of this construction in this proceeding, Patent Owner does not argue what, if anything, is wrong with this construction. Before the ITC, Patent Owner argued that the plain and ordinary meaning of “[perform/performing] speech recognition” was not broad enough to cover “hotword detection.” See Ex. 2001, 30. The ITC found Patent Owner’s position to be “untenable” because hotword detection “is a form of speech recognition in every ordinary sense.” Id. at 31. We agree with the ITC that the plain and ordinary meaning of performing speech recognition includes hotword detection. Moreover, the ’748 patent describes using speech recognition for hotword detection. Ex. 1001, 4:57–63 (“[A]udio input modules may be operable to utilize speech recognition techniques . . . to determine whether the obtained audio input includes a predetermined audio command.”). We apply the plain and ordinary meaning and consider the meaning of “perform/performing speech recognition” to include hotword detection. 17, 20:20–21, 24:29–30, 24:38–39, 24:40–41, 24:43–44, 24:51, 25:3–4. The ’748 patent further provides:” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“positions relating to this limitation. See Pet. 33–34 (Ex. 1003, 8:20–39); Prelim. Resp. 4–5 (citing Ex. 1003, 8:20–32). The cited passage in Rosenberger states: Upon receiving and recognizing a speech trigger phrase and determining that it is in a better position to handle subsequent user interaction than any other device that simultaneously recognized the same speech trigger phrase (see device coordination discussion below) . . . the device beeps, changes its status light 34 or plays a prerecorded or synthesized audio message (e.g. "How may I help you?") through speaker 19 and/ or 20 to prompt the user to say one of the speech commands from a known vocabulary or grammar stored in the speech pattern memory 14. Ex. 1003, 8:20–32 (emphasis added). This passage indicates speech recognition to recognize the trigger phrase (i.e., hotword detection) is performed by all the devices that receive the trigger phrase prior to any coordination determination. This passage supports Patent Owner’s argument and contradicts Petitioner’s contention that Rosenberger discloses this limitation. We agree with Patent Owner that the flaw in Petitioner’s reasoning is that the devices disclosed in Rosenberger upon receiving a spoken audio input do not make any determination as to whether speech recognition, particularly hotword detection, should be performed. All the devices perform speech recognition by performing hotword detection before the coordination determination is made. See Ex. 1003, 8:20–32.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,632,748 - Nichia Corporation / Osram Opto Semiconductors, Inc. v. Lighting Science Group Corp.Institution deniedPTAB · Jan 15, 2020 · IPR2019-01260 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any anticipation or obviousness challenge to claims 1, 2, 6, and 10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Corp. (“Patent Owner”) filed a Preliminary Response. Paper 21 (“Prelim. Resp.”). Pursuant to our authorization, Petitioner filed a Reply and Patent Owner filed a Sur-Reply. Papers 23, 24. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for patent owner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. “The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 100(b); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Petitioner proposes that the term “base,” recited in independent claim 1 as well as dependent claim 6, be construed to mean “support or foundation,” and that the phrase “integral part of,” recited in dependent claim 2, be construed to mean “a part of a whole.” Pet. 20–24. Patent Owner contends that we “need not rule on Petitioners’ proposed claim constructions, because construction of those terms is not necessary in order to resolve the parties’ dispute.” Prelim. Resp. 8. Although we agree with Patent Owner that resolution of the parties’” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“dispute does not require construction of “base” or “integral part of,” we find it necessary, in light of the parties’ arguments, to consider the meaning of a “thermally conductive region in solderable thermal contact with the thermally conducting base,” recited in independent claim 1. Neither party addresses this phrase as a matter of claim construction, but both parties implicitly proffer a proposed construction in their arguments. See Pet. 41– 43; Prelim. Resp. 35–40. In particular, Petitioner takes the position that “the term ‘solderable’ does not mean that the ‘thermally conductive region’ is to be ‘solderable’ to the ‘thermally conducting base’; rather, ‘solderable’ requires the thermally conductive region to be ‘solderable’ to another structure outside the assembly.” Pet. 41–42. Conversely, Patent Owner contends that “the modifier ‘solderable’ in ‘solderable thermal contact’ . . . applies to the relationship between (1) the ‘thermally conductive region’ and (2) the ‘thermally conducting base.’” Prelim. Resp. 36. First, we find that the plain meaning of the phrase supports Patent Owner’s proposal. The adjectives “solderable” and “thermal” are grammatically parallel in the phrase, and there is no apparent reason why those adjectives do not each equivalently modify the noun “contact,” such that the “contact” between the thermally conductive region and the thermally conducting base must be both “solderable” and “thermal.” See Prelim. Resp. 35–36 (Patent Owner asserting that “[t]his term plainly requires ‘solderable” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,528,421 - Nichia Corporation / Osram Opto Semiconductors, Inc. v. Lighting Science Group Corp.Institution deniedPTAB · Jan 15, 2020 · IPR2019-01487 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution on claim 7 because Petitioner did not show a reasonable likelihood that Andrews anticipated or rendered the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“But this argument is not commensurate with the scope of the claim as we have construed it. In particular, in advancing this contention, Petitioner does not present any argument or evidence that thermal contact pad 36 of Andrews is in “solderable thermal contact” with the combination of plate 51 and insulating film 49. Rather, because we agree with Patent Owner that “‘solderable thermal contact’ requires solderability between the region and the base, not some other unclaimed structure,” we also agree with Patent Owner that “the Petition fails to show that Andrews teaches a ‘thermally conducti[ve] region’ solderable to a ‘thermally conducting base.’” Prelim. Resp. 30. In addition, Patent Owner specifically addresses the possibility that Andrews’s thermal contact pad 36 and insulating film 49 are in solderable contact, notwithstanding the omission of such an argument in the Petition. See id. at 30–31. Patent Owner observes that the bottom layer of what Petitioner identifies as the recited “thermally conducting base” is an electrically insulating film, and what Petitioner identifies as the recited “thermally conductive region” is an electrical conductor, “such as gold, silver, [or] tin.” Id. at 31 (quoting Ex. 1008 ¶ 70). Patent Owner asserts that “[i]t is not possible to solder a conductor such as gold, silver, or tin to a nonconductive insulating film.” Id. at 31. That assertion is consistent with a technical dictionary’s definition of “solderability” as “[t]hat property of a metal surface to be readily wetted by molten solder.” See Ex. 3001 (definition by The Authoritative Dictionary of IEEE Standards Terms) (emphasis added). In light of these considerations, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of claim 7 as anticipated by Andrews.” slip op. at 16
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“F. Summary Because we conclude that the Petition does not present a reasonable likelihood of demonstrating that any challenged claim is unpatentable, we also deny the Motion for Joinder. See 35 U.S.C. § 315(c) (permitting joinder only where a properly filed petition “warrants the institution of an inter partes review under section 314”). We need not reach Patent Owner’s argument that the Petition should be denied under 35 U.S.C. § 314(a). See Prelim. Resp. 47–56. III. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied and no trial is instituted; and FURTHER ORDERED that the Motion for Joinder is denied.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that the level of skill in the art is apparent from the cited art and that such a person “would have had at least a B.S. in mechanical or electrical engineering or a related field, and four years’ experience designing semiconductor—including LED—packages.” Pet. 10 (citing Ex. 1003 ¶¶ 31–33). Patent Owner does not dispute this articulation, which we adopt for this Decision. See Prelim. Resp. 8.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“First, we find that the plain meaning of the phrase supports Patent Owner’s proposal. The adjectives “solderable” and “thermal” are grammatically parallel in the phrase, and there is no apparent reason why those adjectives do not each equivalently modify the noun “contact,” such that the “contact” between the thermally conductive region and the thermally conducting base must be both “solderable” and “thermal.” See Prelim. Resp. 25 (Patent Owner asserting that “[t]his term plainly requires ‘solderable thermal contact between a thermally conductive region and the thermally conductive base’”). Second, we find that the prosecution history of the ’421 patent also supports Patent Owner’s proposal. Although both parties cite the same relevant aspect of that prosecution history, they interpret it differently. See Pet. 33–34; Prelim. Resp. 26–29. When the application that matured into the ’421 patent was originally filed, independent claim 1 did not include the word “solderable,” but instead recited only that a bottom surface of the LED assembly include “a thermally conductive region in thermal contact with the thermally conducting base, for spreading heat transmitted to the base from the one or more LED die.” Ex. 1002, 21. After the Applicant successfully traversed an obviousness rejection based on a combination of U.S. Patent Nos. 5,847,935 (“Thaler”) and 6,565,239 (“Rizkin”), the Examiner rejected claim 1 as anticipated by U.S. Patent Publ. No. 2003/0189830 (Ex. 1011, “Sugimoto”). Id. at 109. Sugimoto describes a light-source apparatus using an LED in which light-emission efficiency is improved to achieve greater light-output intensity, operational life, and mechanical strength. Ex. 1011 ¶¶ 1, 17. In responding to the anticipation rejection during prosecution to distinguish Sugimoto, the Applicant made two amendments to independent claim 1. First, the claim was amended to add the last limitation of the issued claim (“further comprising an LED assembly mount selected from the group consisting of an electrically insulated fastener and a solderable bonding pad”). Ex. 1002, 124. Second, the claim was amended to add the word “solderable” in the limitation at issue, thereby requiring that the “thermally conductive region [be] in solderable thermal contact with the thermally conducting base” (emphasis added). Id. Both of these aspects of Applicant’s amendments were identified by the Examiner in the reasons for allowance as not disclosed by Sugimoto. Id. at 167.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,528,421 - U.D. Electronic Corp. v. Pulse Electronics, Inc.Institution deniedPTAB · Apr 15, 2019 · IPR2019-00262 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 14 or 17 were unpatentable over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine, based on the record before us, Petitioner has not established that there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As demonstrated in the analysis below, no claim terms or phrases require an explicit construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner’s arguments. Petitioner does not direct us to any description in Molex or Regnier sufficient to support a finding that clip 110 is configured to provide electrical connectivity between internal printed circuit board 74 or 78 and elongated body shield 190, as required by claim 14. As pointed out by Patent Owner, elongated shield member 190 has solder tails 193–195 that electrically engage upper circuit board 74 and lower circuit board 78. See Prelim. Resp. 35–36 (reproducing Ex. 1005, Fig. 13; citing Ex. 1005, 7:3–6, 7:9–12; Ex. 2002 ¶ 102). In other words, although there is electrical connectivity between upper circuit board 74 and body shield 190, provided directly by way of solder tails 194, 195, and electrical connectivity between lower circuit board 78 and body shield 190, provided directly by way of solder tails 193, Petitioner fails to provide evidence of the disclosure of “the shielding tab configured to provide electrical connectivity between the internal printed circuit board and the body shield at a front portion of the internal printed circuit board” in Molex or Regnier. Additionally, although Petitioner points out that Molex and Regnier disclose clip 110 is configured to provide electrical connectivity to circuit board 74 at a front portion of circuit board 74 by way of grounding tab 73, Petitioner, however, does not direct us to any description in Molex or Regnier that clip 110 is configured to provide electrical connectivity between circuit board 74 and elongated body shield 190 at the front portion of circuit board 74. See Pet. 33–34, 50–51; Ex. 1003 ¶¶ 33, 34, 50, Figs. 10– 11; Ex. 1005, 5:4–30, 8:24–40, Figs. 10–11. Finally, although this is not disclosed in the Petition, assuming that Petitioner attempts to assert that Molex’s and Regnier’s inter-module shields 60 disclose the claimed “body shield,” in the alternative, there does not appear to be any disclosure in Molex or Regnier of inter-module shields 60 interfacing with circuit board 74, at least at a back portion of circuit board 74, to improve electrical isolation for the plurality of sets of electronic components, as required by the body shield limitation of claim 14. See Pet. 31–33, 47–49. Accordingly, based on the record before us, given the deficiencies in the Petition, we conclude that Petitioner has not established that there is a reasonable likelihood that it would prevail in showing independent claim 14 is unpatentable under 35 U.S.C. § 102(a) as anticipated by Molex, or unpatentable under 35 U.S.C. § 102(e) as anticipated by Regnier.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner’s arguments. Petitioner does not direct us to any description in Molex or Regnier sufficient to support a finding that clip 110 is configured to provide electrical connectivity between internal printed circuit board 74 or 78 and elongated body shield 190, as required by claim 14. As pointed out by Patent Owner, elongated shield member 190 has solder tails 193–195 that electrically engage upper circuit board 74 and lower circuit board 78. See Prelim. Resp. 35–36 (reproducing Ex. 1005, Fig. 13; citing Ex. 1005, 7:3–6, 7:9–12; Ex. 2002 ¶ 102). In other words, although there is electrical connectivity between upper circuit board 74 and body shield 190, provided directly by way of solder tails 194, 195, and electrical connectivity between lower circuit board 78 and body shield 190, provided directly by way of solder tails 193, Petitioner fails to provide evidence of the disclosure of “the shielding tab configured to provide electrical connectivity between the internal printed circuit board and the body shield at a front portion of the internal printed circuit board” in Molex or Regnier. Additionally, although Petitioner points out that Molex and Regnier disclose clip 110 is configured to provide electrical connectivity to circuit board 74 at a front portion of circuit board 74 by way of grounding tab 73, Petitioner, however, does not direct us to any description in Molex or Regnier that clip 110 is configured to provide electrical connectivity between circuit board 74 and elongated body shield 190 at the front portion of circuit board 74. See Pet. 33–34, 50–51; Ex. 1003 ¶¶ 33, 34, 50, Figs. 10– 11; Ex. 1005, 5:4–30, 8:24–40, Figs. 10–11. Finally, although this is not disclosed in the Petition, assuming that Petitioner attempts to assert that Molex’s and Regnier’s inter-module shields 60 disclose the claimed “body shield,” in the alternative, there does not appear to be any disclosure in Molex or Regnier of inter-module shields 60 interfacing with circuit board 74, at least at a back portion of circuit board 74, to improve electrical isolation for the plurality of sets of electronic components, as required by the body shield limitation of claim 14. See Pet. 31–33, 47–49. Accordingly, based on the record before us, given the deficiencies in the Petition, we conclude that Petitioner has not established that there is a reasonable likelihood that it would prevail in showing independent claim 14 is unpatentable under 35 U.S.C. § 102(a) as anticipated by Molex, or unpatentable under 35 U.S.C. § 102(e) as anticipated by Regnier. D. Unpatentability of Claim 17 under 35 U.S.C. § 103(a) over Molex and Zhang, and over Regnier and Zhang Claim 17 depends from claim 14. As applied by Petitioner, the teachings of Zhang do not remedy the deficiencies of Molex and Regnier discussed in the preceding section-addressing claim 14. See Pet. 51–70. Accordingly, for the same reasons as those addressing claim 14 in the preceding section, based on the record before us, Petitioner has not established that there is a reasonable likelihood it would prevail in showing claim 17 is unpatentable over Molex and Zhang, or unpatentable over Regnier and Zhang.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,178,318 - Askeladden L.L.C. v. Encoditech, LLCRehearing deniedPTAB · Jul 31, 2017 · IPR2017-00452 · APJ Gregg I Anderson · IPR · Rehearing
The Board denied Askeladden’s rehearing request and left in place the denial of IPR for claims 1–8 because the request showed no overlooked or misapprehended matter or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated 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). The Request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Decision, we concluded Petitioner did not show sufficiently that Chieu taught the “direct limitation,” i.e., a “first mobile station” transmitting a signal “directly to the second mobile station,” as required by claims 1–7 of the ’095 patent. Dec. 16–19 (citing Ex. 1001, col. 21, ll. 34–39 (claim 1); Ex. 1001, col. 23, ll. 8–16 (claim 7)). We also concluded that Petitioner did not point to any teaching in Ford that expressly shows a “first communications device” or a “second communications device” as required by the preamble to independent claim 8. Id. at 19–21. Accordingly, the Petition was denied as to all challenged claims. Id. at 21.” slip op. at 2
- Strike new argumentNew argument disregardedDenied
“the ’095 patent, the Examiner found that Chieu disclosed these same [direct] limitations.” Req. Reh’g 4 (citing Pet. at 20 (citing Ex. 1004, 124–125)). Neither page 20 nor any other portion of the Petition argues the prosecution history as a basis for unpatentability. To the extent the prosecution history is a new argument, a request for rehearing is not an opportunity to make new arguments. Accordingly, we are not persuaded to change the Decision based on this assertion.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“In essence, Petitioner proposes that Chieu be modified to omit the base station, thus meeting the direct limitation. However, “a proposed modification [is] inappropriate for an obviousness inquiry when the modification [would] render[] the prior art reference inoperable for its intended purpose.” In re Fritch, 972 F.2d 1260, 1266 n.12 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)). As discussed in section II.A.2. above, both the method and apparatus claims of Chieu require a base station. Chieu requires a base station in order to implement the methods and apparatus claimed and ignoring the base station would be counter to the invention described and claimed in Chieu. The invention would be “inoperable” in that nowhere in Chieu is there any suggestion that the base station could be omitted while still achieving the objects of the invention.” slip op. at 11
§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,321,095 - Qualcomm, Incorporated v. NVIDIA CorporationInstitution deniedPTAB · Mar 10, 2016 · IPR2015-01862 · APJ Kevin F Turner · IPR · Institution
The Board denied institution because Qualcomm did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted “unless . . . 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 given below, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“calculation, claims 9 and 10 recite, in part, “saving the output,” claims 11 and 19 recite, in part, “a code segment for saving the output,” and claims 21 recites in part, “logic for saving the output” of a first shading calculation. In a related proceeding, we determined that the plain and ordinary meaning of “save” is “to write data (typically a file) to a storage medium, such as a disk or tape.” See Ex. 3001, 463 (see also IPR2015-01070, Paper 9). Consistent with this ordinary meaning, the ’372 Patent discloses that the “saving” may be done using a storage device, namely using a First-in-First-Out (“FIFO”) Buffer. Ex. 1001 7:1–7. The ’372 Patent also discloses that “the loopback FIFO 407 may be utilized to hold barycentric weights, colors from previous passes, triangle information, and additional scheduling information,” and that the “FIFO 407 may include a plurality of bits that can be reconfigured to store whatever piece of data is appropriate.” Id. Although there are conceivably multiple way of “saving” output, our review of the Specification of the ’372 Patent does not indicate a clear intent to deviate from the plain and ordinary meaning of the term “saving.” As such, we are persuaded, on this record, that the “saving” limitations recited in the challenged claims are directed to “saving in a storage device” and should be construed as such. Patent Owner has acceded to this construction, and Petitioner provides no specific construction for this claim term. Prelim. Resp. 6–7; Pet. 14–18.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991); see also Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (“[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” (citations omitted)). In the instant case, we are persuaded that Cf could be reused without saving in a storage device, i.e., directly passed without any saving, in the context of Kajiya. Although the value could be saved, that is insufficient to anticipate the claim limitation “(b) logic for saving the output,” based on the applied claim construction. As discussed above, claims 1, 10, 11, and 20 also contain the same limitation, and those other independent claims cannot be anticipated by the disclosure of Kajiya. slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We have found previously that the recirculation of data within Gossett is not necessarily equivalent to “saving,” per the challenged claims, or that indefinite recirculation necessarily requires storage in a storage medium or device. See IPR2015-01070, Paper 9, 10. The evidence presented in this proceeding does not persuade us that this previous interpretation was incorrect or provide a reason to deviate from that conclusion. Thus, even if we determined that one of ordinary skill in the art would have had reason to combine the recirculation pipes of Gossett with Kajiya, it is not clear that such ordinarily skilled artisans would have saved output, per the claim limitations, given that neither Gossett nor Kajiya explicitly discloses the same. Because the Petition assumes that both Gossett and Kajiya disclose saving, the Petition does not provide any specific arguments why the combination would have necessarily utilized the saving of output, as recited by the challenged, independent claims. Petitioner’s Declarant, Dr. Fussell, makes similar arguments made in the Petition and testifies that “to save the output of the first shading calculation for its use in the second shading calculation would have been obvious.” Ex. 1010 ¶ 167. This testimony, however, is conclusory, and must be weighed against the disclosure of Gossett, which warns against using unnecessary hardware that could slow down operations. Ex. 1003, 2:52–54, 7:32–35. Therefore, the combination of Gossett and Kajiya could have provided a system that allowed for recirculation of values from a first shading calculation, but that would not necessarily result in the saving of that input. Although the saving of such output could have been obvious in view of Gossett and Kajiya, the Petition does not provide support for such a proposition. See 37 C.F.R. § 42.108(c).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,690,372 - Apple Inc. v. Tracbeam, LLCInstitution deniedPTAB · Feb 19, 2016 · IPR2015-01696 · APJ Matthew R Clements · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 25–28, 31, 36–43, 45, 47–51, 55–57, 60–61, 63, and 72 were unpatentable over the asserted § 103 combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Upon consideration of the Petition and Preliminary Response, we conclude, under 35 U.S.C. § 314(a), that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one challenged claim of the ’484 patent. Accordingly, under the standard of § 314, we deny the Petition and decline to institute an inter partes review of the challenged claims of the ’484 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Petitioner bears the overall burden of persuasion to prove unpatentability, but the burden of production may, in certain circumstances, shift to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–80 (Fed. Cir. 2015). It is unnecessary, however, to determine whether the burden of production shifted on the issue of written description support for the challenged claims because, even if Patent Owner bore the burden, we determine that it identified sufficient written description support in PCT ’307, as discussed above. The proper inquiry is whether PCT ’307 “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Furthermore, “[t]he disclosure as originally filed does not . . . have to provide in haec verba support for the claimed subject matter at issue,” nor must it describe “every conceivable and possible future embodiment of [the] invention.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1364–65 (Fed. Cir. 2003) (internal quotation marks omitted). Based on the evidence in the Petition, including Mr. Judge’s testimony and the respective portions of PCT ’307 cited by Petitioner and Patent Owner, we determine that the record here indicates there is sufficient written description support for the challenged claims. Petitioner, therefore, has not persuaded us that PCT ’307 is prior art to the challenged claims.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We are not persuaded by Mr. Judge’s testimony, which is conclusory and does not disclose sufficiently the underlying facts or data on which his opinion is based. See 37 C.F.R. § 42.65(a). As a result, we give little weight to Mr. Judge’s testimony regarding, for example, the expectation of one of ordinary skill in the art in light of the disclosure of PCT ’307 considered in its entirety. As Patent Owner points out, Mr. Judge and the Petition also do not consider sufficiently the “definitions” section of PCT ’307, which we are persuaded is highly relevant to understanding what PCT ’307 discloses. Prelim. Resp. 15.” slip op. at 9
§ 102 anticipationPatents in suitUS 7,525,484 - Apple Inc. v. Tracbeam, LLCInstitution deniedPTAB · Feb 12, 2016 · IPR2015-01700 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Apple had not shown a reasonable likelihood that claims 1–3, 6, 7, 15, 17, 18, 20, 21, 23, 24, 27–29, 32, 33, 35–39, and 42 were obvious over PCT ’307 …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“LLC, filed a Preliminary Response (Paper 6, “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.” 35 U.S.C. § 314(a).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“1. Whether the ’153 Patent is Entitled to the Filing Date of the ’367 Application Petitioner asserts that the challenged claims are not entitled to priority because “they lack written description support.” Pet. 33. In particular, Petitioner contends that PCT ’892, published as PCT ’307, “does not contain any disclosure whatsoever of a GPS handset.” Id. at 36. Patent Owner points out correctly that the challenged claims do not recite expressly “GPS handset.” Prelim. Resp. 8. However, even assuming that the claims encompass a GPS handset, we are not persuaded, based on the arguments and evidence presented, that PCT ’307 fails to disclose a GPS handset. Petitioner asserts that the parent application to which the priority claim is made was published as PCT ’307 (Ex. 1003). Pet. 2–3. PCT ’307 provides more than 200 pages of textual description and more than 50 pages of drawings. See, generally, Ex. 1003. We note that PCT ’307 includes a similar definition section to that in the ’153 Patent Specification. Id. at 11. 3 We also note that PCT ’307 provides a non-exclusive list of wireless technologies that the mobile stations may use to communicate with any of “infrastructure base stations 122,” “mobile base stations(s) 148,” and “LBS [location base stations] 152.” Id. at 26. Furthermore, as Patent Owner points out (Prelim. Resp. 13–14), PCT ’307 discloses that the “mobile location unit” in a mobile base station may be similar to that in a mobile unit “For example . . . the electronics of the 3 Citations are to the page numbers of the PCT ‘307, not to the page numbering provided in the footer. mobile location unit may be little more than an onboard MS 140.” Ex. 1003, 102. This is consistent with the definitions section, which indicates that the term “mobile station” (“MS”) is synonymous with “location unit.” Id. at 11(explaining in definition 3.2 that “in some contexts herein instead or in addition to MS, the following terms are also used . . . ‘location unit’ (LU). In general these terms may be considered synonymous.”). PCT ’307 further discloses that a GPS receiver may be incorporated into that “mobile location unit”—which may be “little more than an onboard MS 140.” Id. (“In an enhanced version of the mobile location unit, a GPS receiver may also be incorporated so that the location of the mobile location unit may be determined.”). Therefore, in light of these disclosures and the arguments before us, we determine that even if the claims require a GPS handset as Petitioner asserts, the evidence considered in its entirety supports the conclusion that the inventor had possession of the invention as of the PCT ’892 filing date.” slip op. at 6
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“we are not persuaded, based on the arguments and evidence presented, that PCT ’307 fails to disclose a GPS handset. Petitioner asserts that the parent application to which the priority claim is made was published as PCT ’307 (Ex. 1003). Pet. 2–3. PCT ’307 provides more than 200 pages of textual description and more than 50 pages of drawings. See, generally, Ex. 1003. We note that PCT ’307 includes a similar definition section to that in the ’153 Patent Specification. Id. at 11. 3 We also note that PCT ’307 provides a non-exclusive list of wireless technologies that the mobile stations may use to communicate with any of “infrastructure base stations 122,” “mobile base stations(s) 148,” and “LBS [location base stations] 152.” Id. at 26. Furthermore, as Patent Owner points out (Prelim. Resp. 13–14), PCT ’307 discloses that the “mobile location unit” in a mobile base station may be similar to that in a mobile unit “For example . . . the electronics of the 3 Citations are to the page numbers of the PCT ‘307, not to the page numbering provided in the footer. mobile location unit may be little more than an onboard MS 140.” Ex. 1003, 102. This is consistent with the definitions section, which indicates that the term “mobile station” (“MS”) is synonymous with “location unit.” Id. at 11(explaining in definition 3.2 that “in some contexts herein instead or in addition to MS, the following terms are also used . . . ‘location unit’ (LU). In general these terms may be considered synonymous.”). PCT ’307 further discloses that a GPS receiver may be incorporated into that “mobile location unit”—which may be “little more than an onboard MS 140.” Id. (“In an enhanced version of the mobile location unit, a GPS receiver may also be incorporated so that the location of the mobile location unit may be determined.”). Therefore, in light of these disclosures and the arguments before us, we determine that even if the claims require a GPS handset as Petitioner asserts, the evidence considered in its entirety supports the conclusion that the inventor had possession of the invention as of the PCT ’892 filing date.” slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“GPS receiver in a mobile base station 152 [is] separate from the mobile station 140.” Pet. 37 (citing Ex. 1002 ¶¶ 35–38). Mr. Judge testifies that “one of ordinary skill in the art would have understood the disclosure of GPS in the ’892 application as applying to use of GPS only in base stations, not GPS in mobile stations or handsets.” Ex. 1003 ¶ 37. Mr. Judge acknowledges that PCT ’307 describes (1) “use of a GPS receiver in a mobile base station” and (2) use of “the included GPS” to determine “the mobile station’s location.” Id. ¶ 35. Mr. Judge, however, testifies “if the inventors had contemplated and were in possession of GPS in a mobile station or handset, one of skill in the art would have expected them to have similarly included such disclosure in the application as was included for GPS in the mobile base station.” Id. ¶ 37. We are not persuaded by Mr. Judge’s testimony, which is conclusory and does not disclose sufficiently the underlying facts or data on which his opinion is based. See 37 C.F.R. § 42.65(a). As a result, we give little weight to Mr. Judge’s testimony regarding, for example, the expectation of one of ordinary skill in the art in light of the disclosure of PCT ’307 considered in its entirety. As Patent Owner points out, Mr. Judge and the Petition also do not consider sufficiently the “definitions” section of PCT ’307, which we are persuaded is highly relevant to understanding what PCT ’307 discloses. Prelim. Resp. 15.” slip op. at 7
§ 103 obviousness§ 112 disclosurePatents in suitUS 8,032,153 - Apple Inc. v. Tracbeam, LLCInstitution deniedPTAB · Feb 12, 2016 · IPR2015-01694 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 1–6, 13–19, 24, 25, 28, 31–33, 47, 50, 54, 55, 60–62, 65–67, 69, 72, 74, 76, and 80 were obvious over …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Patent Owner, TracBeam, LLC, filed a Preliminary Response (Paper 6, “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.” 35 U.S.C. § 314(a).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Analysis For the purposes of this Decision, we are not persuaded that any of the terms identified by Petitioner requires express construction, because even if we were to adopt Petitioner’s proffered positions on claim construction, Petitioner has not met its burden to show that it is reasonably likely to succeed in showing that the challenged claims are unpatentable. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“definition 3.2 that “in some contexts herein instead or in addition to MS, the following terms are also used . . . ‘location unit’ (LU). In general these terms may be considered synonymous.”). PCT ’307 further discloses that a GPS receiver may be incorporated into that “mobile location unit”—which may be “little more than an onboard MS 140.” Id. (“In an enhanced version of the mobile location unit, a GPS receiver may also be incorporated so that the location of the mobile location unit may be determined.”). Therefore, in light of these disclosures and the arguments before us, we determine that even if the claims require a GPS handset as Petitioner asserts, the evidence considered in its entirety supports the conclusion that the inventor had possession of the invention as of the PCT ’892 filing date.” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“definition 3.2 that “in some contexts herein instead or in addition to MS, the following terms are also used . . . ‘location unit’ (LU). In general these terms may be considered synonymous.”). PCT ’307 further discloses that a GPS receiver may be incorporated into that “mobile location unit”—which may be “little more than an onboard MS 140.” Id. (“In an enhanced version of the mobile location unit, a GPS receiver may also be incorporated so that the location of the mobile location unit may be determined.”). Therefore, in light of these disclosures and the arguments before us, we determine that even if the claims require a GPS handset as Petitioner asserts, the evidence considered in its entirety supports the conclusion that the inventor had possession of the invention as of the PCT ’892 filing date.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 7,298,327 - Informatica Corporation v. Protegrity CorporationRehearing deniedPTAB · Aug 6, 2015 · CBM2015-00010 · APJ Meredith C Petravick · CBM · Rehearing
The Board denied both rehearing requests, leaving institution and denial of the identified claims and grounds unchanged after finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. Standard of Review When rehearing a decision on petition, the Board will 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 Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must identify specifically all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In its Request for Rehearing, the dissatisfied party must (1) “specifically identify all matter that party believes the Board misapprehended or overlooked” and (2) identify the place where each matter was previously addressed. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “[T]he prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 1371. “[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id. Petitioner first quotes a passage from Denning that describes the columns of the access matrix as corresponding to objects which are controlled by the access matrix. See Ex. 1006, 192. Petitioner then quotes a disparate portion of Denning that describes a relational database system that consists of n-tuples having n attributes or columns, with respect to authorization lists, which are a different type of access control. See id. at 213. Neither of these quoted passages links the objects of the access matrix model to the columns of the relational database system, described in connection with the authorization lists, or provides any other adequate explanation as to how Denning discloses that the object of the access matrix model “corresponds” to the columns of the relational database system. In the Petition, Petitioner and its declarant also state that Denning discloses that the access matrix is applicable to database systems. Pet. 3; Ex. 1010 ¶ 54 (citing Ex. 1006, 192). However, this also does not describe the objects of the access matrix model as columns of the relational database system. slip op. at 14
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“LLC. See Decision 9–10. As we stated in our Decision, a party may not petition for post-grant review if it has filed a civil action challenging the validity of a claim of the patent before the petition is filed. 35 U.S.C. § 325(a)(1); 37 C.F.R. § 42.201(a); see Securebuy, LLC, CBM2014-00035, (PTAB Apr. 25, 2014) (Paper 12, precedential) (explaining that 35 U.S.C. § 325(a)(1) applies to covered business method patent review proceedings). In this case, however, Petitioner’s filing of a civil action before filing the Petition did not trigger the statutory bar because the civil action was dismissed without prejudice. See id. Dismissal without prejudice does not trigger the statutory bar. See Decision 9 (citing Cyanotech Corp. v. Bd. of Trustees of the Univ. of Ill., IPR2013-00401, slip op. at 11–12 (PTAB Dec. 19, 2013) (Paper 17) (“Excluding an action that de jure never existed from the scope of § 315(a)(1) is consistent with both relevant case law and legislative history.”); Callidus Software, Inc. v. Versata Software, Inc., CBM2013-00052, slip op. at 5–7 (PTAB Mar. 4, 2014) (Paper 21).); “The dismissal of an action without prejudice leaves the parties as though the action had never been brought. Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, slip op. at 16–18 (PTAB Sept. 2, 2014)(Paper 166) (citing Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002)). In SecureBuy, LLC, the Board determined the 35 U.S.C. § 325(a)(1) applied to covered business method review proceedings, but made no determination as to whether or not a dismissal without prejudice triggered the statutory bar. See SecureBuy, LLC, CBM2014-00035 (PTAB April 25, 2014)( Paper 12).” slip op. at 4
- BurdenDecided for patent owner
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “[T]he prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 1371. “[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id. Petitioner first quotes a passage from Denning that describes the columns of the access matrix as corresponding to objects which are controlled by the access matrix. See Ex. 1006, 192. Petitioner then quotes a disparate portion of Denning that describes a relational database system that consists of n-tuples having n attributes or columns, with respect to authorization lists, which are a different type of access control. See id. at 213. Neither of these quoted passages links the objects of the access matrix model to the columns of the relational database system, described in connection with the authorization lists, or provides any other adequate explanation as to how Denning discloses that the object of the access matrix model “corresponds” to the columns of the relational database system. In the Petition, Petitioner and its declarant also state that Denning discloses that the access matrix is applicable to database systems. Pet. 3; Ex. 1010 ¶ 54 (citing Ex. 1006, 192). However, this also does not describe the objects of the access matrix model as columns of the relational database system. Petitioner alternatively argues that Denning’s objects at the top of the columns of the access matrix model are associated with a data category, when “data category” is given the broadest reasonable construction adopted in the Decision. Pet. Req. 3, 9. Petitioner states: “[f]or example, M1 refers to a division of data that shares a common attribute of being stored in memory segment M1.” Id. Petitioner, however, does not identify where this argument was raised in the first instance in the Petition, and we can find no such argument in the Petition. We could not have overlooked or misapprehended an argument that was not raised in the Petition. We, thus, are not persuaded by Petitioner that we abused our discretion in denying institution of covered business method patent review of claims 15, 31, 33, and 47 on the ground of obviousness over Denning. slip op. at 14
§ 101 eligibility§ 102 anticipationDiscretionary denialPatents in suitUS 8,402,281
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.