- Apple Inc. v. Contentguard Holdings, Inc.Rehearing deniedPTAB · Jun 21, 2016 · IPR2015-00454 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Apple’s rehearing request and left in place its denial of institution on claim 18 over Rosen and Hartrick, finding procedural defects and an inadequate obviousness showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on a petition, 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 a decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in” the petition. 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
“failure to comply with 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). Dec. 4–5. In particular, we determined that: (1) “[t]he entire Petition is riddled with vague, nested string citations to broad swaths of the references, the [Declaration of Alan Sherman (‘Sherman Declaration’)], and internal cross-references to whole sections of the Petition” (id. at 5); (2) the Petition utilizes a convoluted structure resulting in an “unpatentability analysis [that] is at least two or three levels removed from the actual disclosure of the references” (id. at 6–7); and (3) the Petition relies on an improper incorporation by reference of the Sherman Declaration4 (id. at 7– 8). In addition to these procedural defects, we also determined “that the Petition’s obviousness analysis does not provide sufficient information to enable us to perform a proper Graham analysis, is driven by improper hindsight, and lacks sufficient articulated reasons with rational underpinnings to support the modifications it proposes.” Id. at 9; see also id. at 9–15 (discussing deficiencies of the obviousness analysis).” slip op. at 3
- BurdenDecided for patent owner
“To succeed on its Rehearing Request, Petitioner must show where we misapprehended or overlooked arguments in making the aforementioned determinations and that we abused our discretion in reaching each of these determinations. As we explain below, Petitioner has not done so.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As we explained in our Decision, even Petitioner’s attempt to classify the changes as limited to four modifications is unconvincing. Dec. 12–14. Having considered Petitioner’s arguments on rehearing, we reaffirm our conclusion in the Decision that the Petition does not explain sufficiently “why a person of ordinary skill would simultaneously make all of the many particular proposed changes [(i.e., ‘modifications’)] and implementation choices to combine Rosen and Hartrick,” for the reasons explained in the Decision. Id. at 13.” slip op. at 7
§ 103 obviousnessPatents in suitUS 7,269,576 - NVIDIA Corporation v. Samsung Electronics Company, Ltd.Rehearing deniedPTAB · Mar 1, 2016 · IPR2015-01318 · APJ Jameson Lee · IPR · Rehearing
The Board denied NVIDIA’s rehearing request and left in place the denial of institution for claims 1–15 because the Petition did not explain Yamakawa’s differing embodiments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“given the discrepancy between the structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, “Petitioner has not adequately explained how, in an anticipation analysis, it properly can rely on Yamakawa’s embodiment of Figure 18 to account for limitation 1(i) when it has relied on Yamakawa’s embodiment of Figures 16–17 to account for limitations 1(a), 1(b), 1(c), 1(d), 1(e), and 1(h).” Dec. 16–17. We stated: “Yamakawa itself does not appear to make clear what process steps are common between its embodiment of Figure 18 and its embodiment of Figures 16–17, and Petitioner has not provided an adequate explanation.” Id. at 17. As Patent Owner argued (Prelim. Resp. 9–10), the Petition must explain the relationship between the different structures shown and how they relate to the same process and involve the same features. Petitioner has not pointed to an explanation in the Petition that accounts for the different structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, and that sufficiently presents the two illustrations as corresponding to a single embodiment of various steps and features. That explanation cannot be provided, for the first time, in a rehearing request. Although Yamakawa itself constitutes evidence, it was incumbent on Petitioner, in its Petition, to present and explain the evidence. We could not have overlooked evidence that was not identified and explained. The Petition may not be supplemented by explanations first set forth in a rehearing request.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“given the discrepancy between the structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, “Petitioner has not adequately explained how, in an anticipation analysis, it properly can rely on Yamakawa’s embodiment of Figure 18 to account for limitation 1(i) when it has relied on Yamakawa’s embodiment of Figures 16–17 to account for limitations 1(a), 1(b), 1(c), 1(d), 1(e), and 1(h).” Dec. 16–17. We stated: “Yamakawa itself does not appear to make clear what process steps are common between its embodiment of Figure 18 and its embodiment of Figures 16–17, and Petitioner has not provided an adequate explanation.” Id. at 17. As Patent Owner argued (Prelim. Resp. 9–10), the Petition must explain the relationship between the different structures shown and how they relate to the same process and involve the same features. Petitioner has not pointed to an explanation in the Petition that accounts for the different structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, and that sufficiently presents the two illustrations as corresponding to a single embodiment of various steps and features. That explanation cannot be provided, for the first time, in a rehearing request. Although Yamakawa itself constitutes evidence, it was incumbent on Petitioner, in its Petition, to present and explain the evidence. We could not have overlooked evidence that was not identified and explained. The Petition may not be supplemented by explanations first set forth in a rehearing request.” slip op. at 2
NonePatents in suitUS 8,252,675 - Intermix Media, LLC v. Bally Gaming, Inc.Institution deniedPTAB · Jan 20, 2016 · CBM2015-00154 · APJ Hyun J Jung · CBM · Institution
The Board denied institution because the petition did not show that claims 1–34, 38, 39, and 45–77 were more likely than not ineligible under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptNot shown unpatentable
“Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7
§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 5,816,918 - NVIDIA Corp. v. Samsung Electronics Co., Ltd.Institution deniedPTAB · Dec 9, 2015 · IPR2015-01316 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show that VESA P&D and VESA Flat Panel were publicly accessible printed publications, so claims 6–10 could not rely on them.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] 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). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of any of claims 6–10 of the ’724 patent. Accordingly, we do not institute an inter partes review of any claim.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“We find Patent Owner’s arguments persuasive. Petitioner does not explain adequately whether or how the VESA documents were made “sufficiently accessible to the public interested in the art.” Lister, 583 F.3d at 1311. Instead, Petitioner merely asserts that “VESA is a well-known standards setting organization that promulgates standards relating to video in electronics.” Pet. 14 (citing Ex. 1003 ¶ 58); id. at 22 (citing Ex. 1003 ¶ 75). As such, we determine that Petitioner has not made a sufficient showing that the VESA documents are printed publications under § 102(b). See Lister, 583 F.3d at 1317 (burden is on the proponent to show the purported reference was publicly available). Therefore, based on the record before us, we conclude Petitioner has not made a sufficient showing that either VESA P&D or VESA Flat Panel may be relied upon as prior art with respect to claims 6–10 of the ’724 patent.” slip op. at 6
§ 102 anticipationcites PhillipsPatents in suitUS 6,804,724 - NVIDIA Corp. v. Samsung Electronics Co., Ltd.Institution deniedPTAB · Dec 9, 2015 · IPR2015-01315 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show that Lai qualified as prior art, defeating both asserted grounds for claims 1, 3, and 26–29.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] 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).” 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
“Lai issued from U.S. Patent Application No. 10/236,794, which was filed on September 6, 2002 and claims the benefit of U.S. Provisional Application No. 60/328,284, filed on October 9, 2001 (Ex. 1004, “the Lai Provisional”). Ex. 1003, [21], [22], [60], 1:8–12. Because Lai’s filing date postdates the effective filing date of the ’602 patent, Lai must be entitled to the benefit of the Lai Provisional filing date to qualify as prior art under 35 U.S.C. § 102(e). Lai is entitled to the benefit of the Lai Provisional filing date if the disclosure of the Lai Provisional supports the claimed subject matter of Lai in accordance with 35 U.S.C. § 112, ¶ 1.1 See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”).” slip op. at 5
- Strike new argumentNew argument disregardedOther
“In a conference call with the parties, the panel authorized Petitioner to submit a five-page, non-argumentative claim chart showing how the claims of a reference patent asserted by Petitioner are supported by a provisional application. Paper 9, 3. The panel also authorized Patent Owner to file a five-page response to Petitioner’s claim chart. Id. at 4. Petitioner filed a claim chart. Paper 8. Paper 8 included two pages of text in addition to the five-page claim chart. Because these two additional pages are not in compliance with our Order (see Paper 9), we have considered the claim chart only and none of the arguments presented in the additional two pages. Patent Owner subsequently filed a response to Petitioner’s claim chart. Paper 10.” slip op. at 2
§ 102 anticipationcites PhillipsPatents in suitUS 6,819,602 - Apple Inc. v. Contentguard Holdings, Inc.Rehearing deniedPTAB · Nov 2, 2015 · IPR2015-00448 · APJ Karl D Easthom · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution on claims 1–18 because Apple did not show an abuse of discretion in the Board’s merits decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“proposed modifications were, how they were to be made, and why a person of ordinary skill would have made them. See Dec. 11–21. Petitioner’s Rehearing Request—characterizing the modifications as “a single change” as noted—neither clarifies the Petition nor shows that the Board overlooked or misapprehended a matter. Petitioner correctly notes that the need for extensive modification, alone, does not necessarily doom a proposed ground of obviousness, see Reh’g Req. 5–6; however, extensive modification was just one of many problems obfuscating the asserted ground. The Decision explains that combined with the many other deficiencies of the Petition, Petitioner had not shown a reasonable likelihood of prevailing on any of the challenged claims. See Dec. 11–21 (discussing the Petition’s vague, nested string citations to broad swaths of references; clarity problems created by pervasive use of internal cross-references and nested citations; improper incorporation by reference of the Sherman Declaration to support conclusory statements, thin analysis, and inadequate reasoning; and lack of sufficient information to enable a proper Graham analysis).” slip op. at 3
NonePatents in suitUS 8,370,956 - Apple Inc. v. Contentguard Holdings, Inc.Institution deniedPTAB · Jul 13, 2015 · IPR2015-00440 · APJ Kevin W Cherry · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 1, 3, 5, 8, 13, 15, 16, 19–21, 24, 29, 31, 33, 36, 40, 42, 43, 46–48, 51, 58, 60, 62, …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that the challenged claims of the ’859 patent would have been obvious over ABYSS and Denning. See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB May 28, 2015) (Paper 11) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . . . risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.”).” slip op. at 13
- BurdenDenied
“which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review “must identify how the construed claim is unpatentable under the statutory grounds on which the petitioner challenges the claims, and must specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and 37 C.F.R. § 42.104(b)(5) adds that the Petition must “identify[] specific portions of the evidence that support the challenge,” 37 C.F.R. § 42.104(b)(5). Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). For the reasons discussed below, we agree with Patent Owner’s assertions that the Petition fails to comply with each of these requirements in addressing the asserted ground based on ABYSS and Denning.2 See Prelim. Resp. 4–9.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“differences between” the claimed subject matter and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The Supreme Court has explained that: Under § 103, [(1)] the scope and content of the prior art are to be determined; [(2)] differences between the prior art and the claims at issue are to be ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such [(4)] secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“choices that Petitioner contends would be obvious were supported, individually, by articulated reasoning with rational underpinning, nowhere in its analysis in the Petition does Petitioner provide adequate articulated reasoning for making all of these changes at once. Petitioner merely claims that “[e]ach of these would have been an obvious implementation choice for a person of ordinary skill based on the guidance within ABYSS and Denning.” Pet. 40. Petitioner also justifies why a person of ordinary skill would use PKI security generally, but does not explain why a person of ordinary skill would make all of these choices and create the particular implementation that Petitioner has put forward. We see no difference between conclusory statements that these are “design choices,” and stating that these changes are “common sense,” which, without more, is insufficient to support an obviousness analysis. See Mintz v. Dietz & Watson, 679 F.3d 1372, 1377 (Fed. Cir. 2012) (“The mere recitation of the words ‘common sense’ without any support adds nothing to the obviousness equation.”). The mere fact that individual changes might have been minor or even obvious does not make doing all of the changes at once obvious. See In re Irani, 427 F.2d 806, 809 (CCPA 1970) (“Obviousness, however, must not be judged by hindsight, and a ‘little modification’ can be a most unobvious one.”). Without sufficient reason why a person of ordinary skill would engage in, what appears to us to be, a nearly wholesale reconstruction of ABYSS, we conclude that Petitioner is simply using Patent Owner’s claims as a guide in constructing a system loosely based on ABYSS that resembles the claimed invention. See Plantronics v. Aliph, Inc., 724 F.3d 1343, 1355 (Fed. Cir. 2013) (“Where, as here, the necessary reasoning is absent, we cannot simply assume that ‘an ordinary artisan would be awakened to modify prior art in such a way as to lead to an obviousness rejection.’ It is in such circumstances, moreover, that it is especially important to guard against the dangers of hindsight bias.” (citation omitted)); see also W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983) (“The result is that the claims were used as a frame, and individual, naked parts of separate prior art references were employed as a mosaic to recreate a facsimile of the claimed invention. At no point did the district court, nor does Garlock, explain why that mosaic would have been obvious to one skilled in the art . . . .”). This analysis that we determine is infected with impermissible hindsight cannot form the basis of an obviousness finding. See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against slipping into use of hindsight’” (citation omitted)). Because Petitioner has failed to support its obviousness analysis with articulated reasoning with rational underpinning, its obviousness analysis is deficient and cannot establish a reasonable likelihood of success. See Kahn, 441 F.3d at 988. Therefore, we determine that the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing that any of the challenged claims of the ’859 patent would have been obvious over ABYSS and Denning.” slip op. at 16
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,963,859 - Apple Inc. v. Contentguard Holdings, Inc.Institution deniedPTAB · Jul 13, 2015 · IPR2015-00442 · APJ Kevin W Cherry · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 3, 5, 8, 13, 15, 16, 19-21, 24, 29, 31, 33, 36, 40, 42, 43, 46-48, 51, 58, 60, …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“differences between the challenged claims of the ’859 patent and the asserted prior art references, Rosen and Hartrick. See Pet. 22–60; Prelim. Resp. 6–7, 42–43. Rather than address these differences, the Petition creates a hypothetical Rosen- Hartrick system—based on how a person of ordinary skill in the art allegedly “would” or “could” combine the two references into an integrated system—in an analysis that is divorced entirely from the challenged claims of the ’859 patent. See Pet. 39–44. The Petition then argues, in conclusory fashion, that this hypothetical system “would” meet each of the limitations of the challenged claims. See id. at 51–60. This analysis—which compares the challenged claims to a hypothetical integrated system that allegedly implements elements of both Rosen and Hartrick as well as the knowledge of one of ordinary skill in the art—obscures any comparison of the individual prior art references to the claim limitations. It does not explain with any particularity which claim limitations are absent from Rosen or Hartrick. See Prelim. Resp. 6–7, 42–43. Therefore, the Petition fails to provide sufficient information regarding its proffered ground of unpatentability, and leaves us unable to conduct a proper Graham analysis as required to determine whether the challenged claims are unpatentable. Accordingly, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that the challenged claims would have been obvious over Rosen and Hartrick. See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB May 28, 2015) (Paper 11) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . . . risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.”).” slip op. at 12
- BurdenDenied
“In sum, the Petition’s conclusory analysis with supporting citations to an incomprehensible web of internal cross-references to the Petition and the Sherman Declaration, and imprecise citations to Rosen and Hartrick, leaves us “to play archeologist with the record.” Cisco Sys., Inc., IPR2014-00454, at 10 (Paper 12) (informative). Based on the deficiencies addressed above, the Petition fails: (1) to specify sufficiently where the limitations of the challenged claims of the ’859 patent are taught or suggested by Rosen or Hartrick; and (2) to provide a sufficiently detailed explanation of the significance of the citations to these references and the Sherman Declaration—as required under 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4) – (5). We, therefore, deny institution of the asserted ground of obviousness over Rosen and Hartrick.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“differences between the challenged claims of the ’859 patent and the asserted prior art references, Rosen and Hartrick. See Pet. 22–60; Prelim. Resp. 6–7, 42–43. Rather than address these differences, the Petition creates a hypothetical Rosen- Hartrick system—based on how a person of ordinary skill in the art allegedly “would” or “could” combine the two references into an integrated system—in an analysis that is divorced entirely from the challenged claims of the ’859 patent. See Pet. 39–44. The Petition then argues, in conclusory fashion, that this hypothetical system “would” meet each of the limitations of the challenged claims. See id. at 51–60. This analysis—which compares the challenged claims to a hypothetical integrated system that allegedly implements elements of both Rosen and Hartrick as well as the knowledge of one of ordinary skill in the art—obscures any comparison of the individual prior art references to the claim limitations. It does not explain with any particularity which claim limitations are absent from Rosen or Hartrick. See Prelim. Resp. 6–7, 42–43. Therefore, the Petition fails to provide sufficient information regarding its proffered ground of unpatentability, and leaves us unable to conduct a proper Graham analysis as required to determine whether the challenged claims are unpatentable. Accordingly, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that the challenged claims would have been obvious over Rosen and Hartrick. See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB May 28, 2015) (Paper 11) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . . . risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.”).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“Petition lacks adequate reasoning, with rational underpinning, to show sufficiently that a person of ordinary skill would have combined the teachings of Rosen and Hartrick and the knowledge in the art to reach the hypothetical Rosen-Hartrick System, which the Petition alleges would satisfy each limitation of the challenged claims. In other words, we are not persuaded that the Petition sufficiently explains why a person of ordinary skill would simultaneously make all of the many particular proposed changes and implementation choices to combine Rosen and Hartrick. We see no difference between conclusory statements that each of these modifications are “logical” or “a simple design choice” and saying that these changes are “common sense,” which, without more, is insufficient to support an obviousness analysis. See Mintz v. Dietz & Watson, 679 F.3d 1372, 1377 (Fed. Cir. 2012) (“The mere recitation of the words ‘common sense’ without any support adds nothing to the obviousness equation.”). Moreover, the mere fact that individual changes might have been obvious does not make doing all of the changes at once obvious. See In re Irani, 427 F.2d 806, 809 (CCPA 1970) (“Obviousness, however, must not be judged by hindsight, and a ‘little modification’ can be a most unobvious one.”). Rather, given the extent of the proposed modifications, as well as the thin reasoning proffered for each modification, the only reasonable conclusion we can draw is that the Petition improperly uses Patent Owner’s claims as a guide in constructing a system loosely based on Rosen and Hartrick that resembles the claimed invention. See Plantronics v. Aliph, Inc., 724 F.3d 1343, 1355 (Fed. Cir. 2013) (“Where, as here, the necessary reasoning is absent, we cannot simply assume that ‘an ordinary artisan would be awakened to modify prior art in such a way as to lead to an obviousness rejection.’ It is in such circumstances, moreover, that it is especially important to guard against the dangers of hindsight bias.” (citation omitted)); see also W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983) (“The result is that the claims were used as a frame, and individual, naked parts of separate prior art references were employed as a mosaic to recreate a facsimile of the claimed invention. At no point did the district court, nor does Garlock, explain why that mosaic would have been obvious to one skilled in the art . . . .”). This analysis infected with impermissible hindsight cannot form the basis of an obviousness finding. See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against slipping into use of hindsight’” (citation omitted)).” slip op. at 16
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,963,859 - Apple Inc. v. Contentguard Holdings, Inc.Institution deniedPTAB · Jul 13, 2015 · IPR2015-00454 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 18, 19, 21, 24–27, 29, 32, and 34 were obvious over Rosen and Hartrick.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“sufficiently the differences between the challenged claims of the ’576 patent and the asserted prior art references, Rosen and Hartrick. See Pet. 19–59; Prelim. Resp. 2, 6. Rather than address these differences, the Petition, as discussed above, creates a hypothetical system implementing Rosen and Hartrick. This hypothetical system is based on how a person of ordinary skill in the art allegedly “would” or “could” combine the references into an integrated system—in an analysis that is divorced from the language of the challenged claims of the ’576 patent. See Pet. 36–41. The Petition then argues, in conclusory fashion, that this hypothetical system “would” meet each of the limitations of the challenged claims. See id. at 48–59. This analysis—which compares the challenged claims to a hypothetical integrated system that allegedly implements elements of both references as well as the knowledge of one of ordinary skill in the art—obscures any comparison of the individual prior art references to the claim limitations. This analysis does not explain with any particularity which claim limitations are absent from the asserted references. Therefore, the Petition fails to provide sufficient information regarding its proffered ground of unpatentability. Accordingly, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that the challenged claims would have been obvious over the combination of Rosen and Hartrick. See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB May 28, 2015) (Paper 11) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . . . risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.”). 2.” slip op. at 10
- BurdenDenied
“partes review must identify “[h]ow the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Section 42.104(b)(5) of the Code of Federal Regulations adds that the Petition must “identify[] specific portions of the evidence that support the challenge.” Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). Patent Owner argues, and we agree, that the Petition fails to satisfy each of these requirements. See Prelim. Resp. 4–10. The entire Petition is riddled with vague, nested string citations to broad swaths of the references, the Sherman Declaration, and internal cross-references to whole sections of the Petition. For example, in discussing the claim 18 limitation of “specifying rights within said apparatus for digital content stored in said storage, said rights specifying how digital content can be rendered,” the Petition cites, inter alia, “See § IV.C; . . . Ex. 1013 at ¶¶ E104–E114, E124– E135,” “See §§ IV.B.2, C, D.1; . . . Ex. 1013 at ¶¶ E125–E130, E108– E114,” “See Ex. 1020 at 19:37–39, 24:52–54, 4:54–55, Fig. 2;§§ IV.A2–3, A.5,” and “See §§ IV.A.3, B.#, C; . . . E x. 1013 at ¶¶ E117–E118, E233.”” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“the differences between” the claimed subject matter and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The legal conclusion of obviousness is resolved on the basis of underlying factual determinations, including: (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), revised 35 U.S.C. § 103, effective March 16, 2013. Because the ’576 patent was filed before March 16, 2013, our references and citations to § 103 in this decision are to the pre-AIA version. of nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). These underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). Here, as Patent Owner points out, the Petition fails to identify sufficiently the differences between the challenged claims of the ’576 patent and the asserted prior art references, Rosen and Hartrick. See Pet. 19–59; Prelim. Resp. 2, 6. Rather than address these differences, the Petition, as discussed above, creates a hypothetical system implementing Rosen and Hartrick. This hypothetical system is based on how a person of ordinary skill in the art allegedly “would” or “could” combine the references into an integrated system—in an analysis that is divorced from the language of the challenged claims of the ’576 patent. See Pet. 36–41. The Petition then argues, in conclusory fashion, that this hypothetical system “would” meet each of the limitations of the challenged claims. See id. at 48–59. This analysis—which compares the challenged claims to a hypothetical integrated system that allegedly implements elements of both references as well as the knowledge of one of ordinary skill in the art—obscures any comparison of the individual prior art references to the claim limitations. This analysis does not explain with any particularity which claim limitations are absent from the asserted references. Therefore, the Petition fails to provide sufficient information regarding its proffered ground of unpatentability. Accordingly, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that the challenged claims would have been obvious over the combination of Rosen and Hartrick. See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB May 28, 2015) (Paper 11) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . . . risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.”). 2. slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“Even assuming the modifications described by the Petition can be understood adequately, the Petition lacks adequate reasoning, with rational underpinning, to show sufficiently that a person of ordinary skill would have had reason to combine the teachings of Rosen and Hartrick and the knowledge in the art to reach the hypothetical Rosen-Hartrick system, which the Petition alleges would account for each feature of the challenged claims. In other words, we are not persuaded that the Petition sufficiently explains why a person of ordinary skill would simultaneously make all of the many particular proposed changes and implementation choices to combine Rosen and Hartrick. We see no difference between conclusory statements that each of these modifications is a “routine engineering task,” an “obvious implementation choice,” or an “inconsequential variation” and stating that these changes are “common sense,” which, without more, is insufficient to support an obviousness analysis. See Mintz v. Dietz & Watson, 679 F.3d 1372, 1377 (Fed. Cir. 2012) (“The mere recitation of the words ‘common sense’ without any support adds nothing to the obviousness equation.”). Moreover, the mere fact that individual changes might have been obvious does not make doing all of the changes at once obvious. See In re Irani, 427 F.2d 806, 809 (CCPA 1970) (“Obviousness, however, must not be judged by hindsight, and a ‘little modification’ can be a most unobvious one.”). Rather, given the extent of the proposed modifications, as well as the thin reasoning proffered for each modification, we conclude that the Petition improperly uses the challenged claims of the ’576 patent as a guide in constructing a system loosely based on Rosen and Hartrick that resembles the claimed invention embodied in the challenged claims. See Plantronics v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (“Where, as here, the necessary reasoning is absent, we cannot simply assume that ‘an ordinary artisan would be awakened to modify prior art in such a way as to lead to an obviousness rejection.’ It is in such circumstances, moreover, that it is especially important to guard against the dangers of hindsight bias.” (citation omitted)); see also W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983) (“The result is that the claims were used as a frame, and individual, naked parts of separate prior art references were employed as a mosaic to recreate a facsimile of the claimed invention. At no point did the district court, nor does Garlock, explain why that mosaic would have been obvious to one skilled in the art . . . .”). This analysis infected with impermissible hindsight cannot form the basis of an obviousness conclusion. See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against slipping into use of hindsight’” (citation omitted)). In sum, we are not persuaded that the Petition shows sufficiently why one of ordinary skill in the art—without improper hindsight—would have combined Rosen and Hartrick, to account for all the features of the challenged claims of the ’576 patent. Therefore, we determine that the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing that any of the challenged claims would have been obvious over the combination of Rosen and Hartrick.” slip op. at 13
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,269,576 - Apple Inc. v. Contentguard Holdings, Inc.Institution deniedPTAB · Jul 13, 2015 · IPR2015-00453 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 18, 19, 21, 24–27, 29, 32, and 34 obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] 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).” slip op. at 2
- BurdenDenied
“procedural defects. For instance, a petition for inter partes review must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review must identify “[h]ow the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Section 42.104(b)(5) of the Code of Federal Regulations adds that the Petition must “identify[] specific portions of the evidence that support the challenge.” Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“the differences between” the claimed subject matter and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The legal conclusion of obviousness is resolved on the basis of underlying factual determinations, including: (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), revised 35 U.S.C. § 103, effective March 16, 2013. Because the ’576 patent was filed before March 16, 2013, our references and citations to § 103 in this decision are to the pre-AIA version. 17–18 (1966). These underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Lack of Rationale to Combine and Improper Hindsight “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The reason for this is that, [w]hile the Supreme Court made clear that a mechanical application of the teaching-suggestion-motivation test, requiring an explicit teaching in the prior art, is inappropriate, “[w]e must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008)); see also KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against slipping into use of hindsight’” (citation omitted)). Thus, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. Am.–Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)).” slip op. at 12
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,269,576
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.