- Apple Inc. / Zte(Usa) Inc. v. Invt Spe LLCInstitution deniedPTAB · Mar 5, 2019 · IPR2018-01474 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claim 4 because Petitioner did not show a reasonable likelihood that Bender and Piret rendered it obvious; claim 3 had been statutorily disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“For the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claim 4 would have been obvious over Bender and Piret. See 35 U.S.C. § 316(e) (To prevail in an inter partes review that has been instituted, “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”). III. CONCLUSION We conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’587 patent challenged in the Petition. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to all challenged claims of the ’587 patent, and no trial is instituted.” slip op. at 17
- Adverse judgmentAdverse judgmentOther
“We agree with Patent Owner. “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (citing Altoona Publix Theatres, Inc. v. Am. Tri–Ergon Corp., 294 U.S. 477 (1935)). An inter partes review cannot be instituted on claims that have been disclaimed and no longer exist. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”). This conclusion is consistent with other panel decisions addressing this issue. See, e.g., Intuitive Surgical, Inc. v. Ethicon LLC, Case IPR2018-00935, Paper 9, 9–10 (PTAB Dec. 7, 2018); Vestas-Am. Wind Tech. Inc. v. Gen. Elec. Co., Case IPR2018-01015, Paper 9, 12–14 (PTAB Nov. 14, 2018). Accordingly, we treat claim 3 as having never been part of the ’587 patent, and do not institute inter partes review on this claim. As discussed above, we regard claim 4 as the only challenged claim. See Sections I.A and I.E.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Accordingly, a plain reading of the reference does not support a finding that Bender teaches or suggests that the FEC scheme is used to encode the SNR itself. Therefore, we are not persuaded that Bender’s FEC description would have provided reason to look to Piret’s encoding techniques for encoding Bender’s “quality” information. That is, although we agree with the Petitioner that Piret teaches and suggests a method of encoding less significant bits differently from the more significant bits of each data word, wherein the most significant bit of the plurality of bits is encoded to be less susceptible to errors (Ex. 1005, 1:20–33), that alone is insufficient to support a conclusion of obviousness of providing an encoder that encodes Bender’s SNR “quality” information, as required by claim 4. That Piret discloses encoding transmitted information does not address the requirements set forth in KSR to provide articulated reasoning with rational underpinning to support the legal conclusion of obviousness. That is, the Petitioner’s obviousness position does not explain why a person of ordinary skill in the art would have encoded the SNR value in Bender, which may not even be transmitted, using Piret’s encoding method. Indeed, Petitioner does not direct us to persuasive evidence that encoding the SNR value would have been expected to provide any advantage, outside the teachings of the ’587 patent. Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Singer’s declaration testimony to support its contention that one of ordinary skill in the art would have used Piret’s techniques to encode Bender’s SNR values in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Therefore, Petitioner has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. In that regard, Petitioner’s Declarant, Dr. Singer, testifies that a person of ordinary skill in the art at the time of the ʼ587 Patent’s invention would have been a person having a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with wireless communication systems or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering. Pet. 6; Ex. 1003 ¶ 39. At this juncture, Patent Owner does not dispute Dr. Singer’s assessment on the level of ordinary skill in the art. See generally Prelim. Resp. Based on the current record, we apply Dr. Singer’s assessment for purposes of this Decision. We also note that the prior art of record currently in the instant proceeding is consistent with this level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 8
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,206,587 - Unified Patents Inc. v. Red Rock Analytics, LLCRehearing deniedPTAB · Feb 28, 2018 · IPR2017-01490 · APJ John D Hamann · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show that the Board misapprehended “calibration cycle” or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. 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. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). III.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“calibration cycle.” E.g., Ex. 1001, 11:66–67 (emphasis added). We found that how the calibration cycle is referred to in this limitation (i.e., signal includes it) underscores that the calibration cycle is a feature of the calibration RF signal itself. Dec. 15–16. Rather than addressing this claim 1 U.S. Patent No. 6,940,916 B1 (issued Sept. 6, 2005) (Ex. 1003, “Warner”). 2 We do not address further Warner’s teachings because Petitioner’s arguments are predicated on our having misapprehended the meaning of “calibration cycle,” which we did not. In an inter partes review, the petitioner has the burden to show why the patent it challenges is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)(citation omitted).” slip op. at 4
- BurdenNot shown unpatentable
“signal includes a calibration cycle.” Ex. 1001, 11:56–12:5 (claim 1), 12:22– 54 (claim 7), 13:18–49 (claim 16), 13:63–14:30 (claim 22), 14:65–15:32 (claim 32), 15:46–62 (claim 38), 16:12–44 (claim 44), 17:8–37 (claim 53), 17:52–18:19 (claim 59), 18:52–19:18 (claim 69) (emphasis added). In denying the Petition, we found that Petitioner did not establish that the prior art disclosed or rendered obvious this limitation. Dec. 8–19. More specifically, we found that the calibration cycle relates to a feature of the calibration radio frequency (“RF”) signal (i.e., the signal includes), rather than simply requiring having a calibration process occur, as Petitioner submitted. Id. at 15–19. Our reasoning underlying this finding related to (A) the language of the limitation, (B) the language of dependent claims, and (C) the ’313 Patent’s Specification. Id.” slip op. at 3
Claim constructionPatents in suitUS 7,346,313 - Nautilus Hyosung, Inc. v. Diebold, Inc.Rehearing deniedPTAB · Jan 31, 2017 · IPR2016-00580 · APJ Georgianna W Braden · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the denial of institution on claims 1, 5-8, 10, 16, 26, and 27 because the obviousness arguments were insufficient.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the 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. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). Applying these legal standards, we address the arguments presented by Petitioner.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“overlooked an explanation as to how and why it would have been obvious to modify Dickenson to have the service opening of Gussack. Petitioner provided multiple reason for why a “[person of ordinary skill in the art] would have been prompted to modify the device of Dickenson to have a bottom service opening as described in Gussack.” Pet. 16–18 (emphasis added). Yet, as explained in the Decision Denying Institution, Petitioner’s arguments for combining the cited art for very specific limitations are insufficient, because Petitioner failed to “explain why a person of ordinary skill in the art would combine together the prior art teachings to arrive at the challenged claim as a whole.” Dec. 25. The Petition merely offers conclusory statements that someone of ordinary skill in the art could have modified Dickenson, yet fails to explain persuasively why a person of ordinary skill in the art would have modified the gaming machine of Dickenson to use the removable bottom panel of Gussack in order to have a service opening as required by claim 1.6 Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374, n. 3 (Fed. Cir. 2008) (criticizing “a complete absence of any proof that one skilled in the art would find the particular claimed method obvious . . . for any reason”). Therefore, as our Decision Denying Institution states, Petitioner’s analysis is conclusory and fails to explain adequately how the evidence supports the contentions that Dickenson in view of Gussack would have rendered the limitations of challenged claim 1 obvious. See Dec. 17–22, 24–28. 6 We specifically address claim 1, because it was only for claim 1 where Petitioner provided the list of reasons for modifying Dickenson in view of Gussack. See Pet. 16–18. 5 Accordingly, we are not persuaded that we misapprehended or overlooked Petitioner’s argument that it would have been obvious to one of ordinary skill in the art to modify Dickenson to use a removable bottom panel from Gussack’s drawer to teach the claimed “service opening.” Although we recognize that removable panels for servicing of components may have been known in the prior art, Petitioner does not explain what would have led a person of ordinary skill in the art at the time of the invention to choose to use Gussack’s removable panel to create a service opening in a wall in Dickenson’s rolling tray. Rather, as discussed in our Decision, we find Petitioner’s arguments fraught with hindsight bias. See KSR Int’l Co. v. Teleflex, 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious by merely demonstrating that each of its elements was, independently, known in the prior art.”); Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368–69 (Fed. Cir. 2012) (“[Smith & Nephew] never offered evidence articulating why a person having ordinary skill in the art would combine the primary references to obtain the disclosed inventions.”); Innogenetics, N.V., 512 F.3d at 1374, n. 3 (“We 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.”).” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“overlooked an explanation as to how and why it would have been obvious to modify Dickenson to have the service opening of Gussack. Petitioner provided multiple reason for why a “[person of ordinary skill in the art] would have been prompted to modify the device of Dickenson to have a bottom service opening as described in Gussack.” Pet. 16–18 (emphasis added). Yet, as explained in the Decision Denying Institution, Petitioner’s arguments for combining the cited art for very specific limitations are insufficient, because Petitioner failed to “explain why a person of ordinary skill in the art would combine together the prior art teachings to arrive at the challenged claim as a whole.” Dec. 25. The Petition merely offers conclusory statements that someone of ordinary skill in the art could have modified Dickenson, yet fails to explain persuasively why a person of ordinary skill in the art would have modified the gaming machine of Dickenson to use the removable bottom panel of Gussack in order to have a service opening as required by claim 1.6 Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374, n. 3 (Fed. Cir. 2008) (criticizing “a complete absence of any proof that one skilled in the art would find the particular claimed method obvious . . . for any reason”). Therefore, as our Decision Denying Institution states, Petitioner’s analysis is conclusory and fails to explain adequately how the evidence supports the contentions that Dickenson in view of Gussack would have rendered the limitations of challenged claim 1 obvious. See Dec. 17–22, 24–28. 6 We specifically address claim 1, because it was only for claim 1 where Petitioner provided the list of reasons for modifying Dickenson in view of Gussack. See Pet. 16–18. 5 Accordingly, we are not persuaded that we misapprehended or overlooked Petitioner’s argument that it would have been obvious to one of ordinary skill in the art to modify Dickenson to use a removable bottom panel from Gussack’s drawer to teach the claimed “service opening.” Although we recognize that removable panels for servicing of components may have been known in the prior art, Petitioner does not explain what would have led a person of ordinary skill in the art at the time of the invention to choose to use Gussack’s removable panel to create a service opening in a wall in Dickenson’s rolling tray. Rather, as discussed in our Decision, we find Petitioner’s arguments fraught with hindsight bias. See KSR Int’l Co. v. Teleflex, 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious by merely demonstrating that each of its elements was, independently, known in the prior art.”); Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368–69 (Fed. Cir. 2012) (“[Smith & Nephew] never offered evidence articulating why a person having ordinary skill in the art would combine the primary references to obtain the disclosed inventions.”); Innogenetics, N.V., 512 F.3d at 1374, n. 3 (“We 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.”).” slip op. at 5
- BurdenDecided for patent owner
“The Board could not have overlooked a detailed explanation or analysis not presented in the Petition. A rehearing request is not a supplemental petition. The petition, itself, must identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. The Petitioner has the responsibility to identify and explain in the petition specific evidence that supports its arguments. See 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 10
§ 103 obviousnesscites KSRPatents in suitUS 6,082,616 - Directv, LLC v. Qurio Holdings, Inc.Institution deniedPTAB · Apr 4, 2016 · IPR2015-02006 · APJ Jason J Chung · IPR · Institution
The Board denied institution on both §103 grounds because the Petition failed to explain the prior-art differences, justify the combinations, and avoid hindsight.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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., 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, the Petition fails to identify sufficiently the differences between independent claim 1 (and independent claim 17 as similarly recited) of the ’863 patent and the asserted prior art references, Taesombut, Ducharme, and Wijting. Pet. 31–39, 42. Rather than address these differences, the Petition creates a combination of Taesombut, Ducharme, and Wijting—based on six assertions to combine Taesombut, Ducharme, and Wijting. Id. at 31–39, 42. First, the Petition asserts that a person of ordinary skill in the art would have combined Ducharme and Taesombut “as a possible implementation of some of the techniques taught in Taesombut,” then would have applied Wijting’s cross-layer optimization techniques to the Taesombut and Ducharme combination “to improve the wireless delivery of video to clients over WLAN networks.” Id. at 31–32 (citing Decl. of Dr. Tal Lavian, Ex. 1005 ¶¶ 164–175). Second, the Petition asserts that a person of ordinary skill in the art would have combined Taesombut, Ducharme, and Wijting “because of their overlapping technical teachings with respect to this [preamble] limitation.” Id. at 33–34 (citing Ex. 1005 ¶¶ 185–198). Third, the Petition contends that “because Taesombut and Ducharme describe delivery of video data over a WLAN, one of skill would be motivated to apply Wijting’s cross-layer performance enhancing proxy to similarly improve delivery of video over wireless channels of varying quality.” Id. at 35 (citing Ex. 1005 ¶¶ 164–175). Fourth, the Petition argues that a person of ordinary skill in the art would have combined Taesombut, Ducharme, and Wijting “because of their overlapping technical teachings on this [Element 1B]10 limitation.” Id. at 36 (citing Ex. 1005 ¶¶ 199–217). Fifth, the Petition argues that “[i]t would be obvious to combine the EMMs of Ducharme with the DRM rules of Taesombut, as both are examples of rules or messages for processing digital rights or content permissions in the gateway to facilitate security.” Id. at 38 (citing Ex. 1005 ¶¶ 164–175). Sixth, the Petition contends that “Ducharme, Taesombut, and Wijting contain similar technical teachings which support the combination.” Id. at 39 (citing Ex. 1005 ¶¶ 164–175). As noted above, the Petition argues in conclusory fashion, that the combination of Taesombut, Ducharme, and Wijting meets each of the limitations of the claims. Id. at 31–39, 42. This analysis—which compares the challenged claims to the combination of Taesombut, Ducharme, and Wijting 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. In particular, it does not explain with any particularity which claim limitations are absent from Taesombut, Ducharme, and Wijting. Id. at 33–39, 42. Therefore, the Petition fails to perform an adequate Graham analysis, as required for an obviousness determination. slip op. at 7
- 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., 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, the Petition fails to identify sufficiently the differences between independent claim 1 (and independent claim 17 as similarly recited) of the ’863 patent and the asserted prior art references, Taesombut, Ducharme, and Wijting. Pet. 31–39, 42. Rather than address these differences, the Petition creates a combination of Taesombut, Ducharme, and Wijting—based on six assertions to combine Taesombut, Ducharme, and Wijting. Id. at 31–39, 42. First, the Petition asserts that a person of ordinary skill in the art would have combined Ducharme and Taesombut “as a possible implementation of some of the techniques taught in Taesombut,” then would have applied Wijting’s cross-layer optimization techniques to the Taesombut and Ducharme combination “to improve the wireless delivery of video to clients over WLAN networks.” Id. at 31–32 (citing Decl. of Dr. Tal Lavian, Ex. 1005 ¶¶ 164–175). Second, the Petition asserts that a person of ordinary skill in the art would have combined Taesombut, Ducharme, and Wijting “because of their overlapping technical teachings with respect to this [preamble] limitation.” Id. at 33–34 (citing Ex. 1005 ¶¶ 185–198). Third, the Petition contends that “because Taesombut and Ducharme describe delivery of video data over a WLAN, one of skill would be motivated to apply Wijting’s cross-layer performance enhancing proxy to similarly improve delivery of video over wireless channels of varying quality.” Id. at 35 (citing Ex. 1005 ¶¶ 164–175). Fourth, the Petition argues that a person of ordinary skill in the art would have combined Taesombut, Ducharme, and Wijting “because of their overlapping technical teachings on this [Element 1B]10 limitation.” Id. at 36 (citing Ex. 1005 ¶¶ 199–217). Fifth, the Petition argues that “[i]t would be obvious to combine the EMMs of Ducharme with the DRM rules of Taesombut, as both are examples of rules or messages for processing digital rights or content permissions in the gateway to facilitate security.” Id. at 38 (citing Ex. 1005 ¶¶ 164–175). Sixth, the Petition contends that “Ducharme, Taesombut, and Wijting contain similar technical teachings which support the combination.” Id. at 39 (citing Ex. 1005 ¶¶ 164–175). As noted above, the Petition argues in conclusory fashion, that the combination of Taesombut, Ducharme, and Wijting meets each of the limitations of the claims. Id. at 31–39, 42. This analysis—which compares the challenged claims to the combination of Taesombut, Ducharme, and Wijting 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. In particular, it does not explain with any particularity which claim limitations are absent from Taesombut, Ducharme, and Wijting. Id. at 33–39, 42. Therefore, the Petition fails to perform an adequate Graham analysis, as required for an obviousness determination. slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“provide sufficiently articulated reasoning, with rational underpinning, to combine Taesombut, Ducharme, and Wijting to reach the invention recited in the challenged claims and, instead, is driven by conclusory reasons to combine the references and improper hindsight. As explained supra in Part II.B.1., Petitioner improperly makes six conclusory assertions when attempting to combine Taesombut, Ducharme, and Wijting. In addition, The Supreme Court has explained that an obviousness analysis should “determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. Similarly, the Federal Circuit has made clear that an obviousness determination “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); see KSR, 550 U.S. at 418 (quoting Kahn, 441 F.3d at 988). An obviousness analysis, however, must “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.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011). We find the six rationales to combine proffered in the Petition for the proposed modifications to be conclusory and superficial for the reasons explained supra in Part II.B.1. In all six of the aforementioned examples, the Petition notes, in conclusory fashion, that overlapping technical teachings is a reason to combine the references. Id. at 33–39. Yet the Petition does not provide a persuasive reason to combine Taesombut, Ducharme, and Wijting beyond overlapping technologies. These proposed modifications are supported by little to no reasoning to support a determination that it would have been obvious to combine the elements as proposed in the Petition.” slip op. at 12
- BurdenDenied
“The Petition’s practice of citing multiple pages of the Dr. Lavian Declaration to support conclusory statements and to expand its thin analysis violates our rules in two respects. First, this practice amounts to incorporation by reference—which is impermissible under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”); Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454, slip op. at 7–10 (PTAB Aug. 29, 2014) (Paper 12) (informative). This incorporation by reference from the Declaration into the Petition “serves to circumvent the page limits imposed on petitions for inter partes review, while imposing on our time by asking us to sift through over 2[5]0 pages of Dr. [Lavian’s] Declaration . . . to locate the specific [relevant] arguments” and supporting evidence. Cisco Sys., Inc., IPR2014-00454, at 10 (Paper 12). We will not consider arguments and information that are not presented and developed in the Petition, and instead are incorporated by reference to the Dr. Lavian Declaration. Second, the Petition’s consistent citations to large portions of the Dr. Lavian Declaration runs afoul of the particularity and specificity required of supporting evidence under our governing statute and rules. See 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5). Further, the cited portions of Dr. Lavian’s Declaration relied upon by Petitioner to support its reasons to combine Taesombut, Ducharme, and Wijting provide the same conclusory reasons to combine Taesombut, Ducharme, and Wijting as the Petition. We, therefore, are not persuaded that Dr. Lavian’s testimony remedies Petitioner’s reasons to combine Taesombut, Ducharme, and Wijting because Dr. Lavian’s testimony relies on conclusory statements. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for an expert opinion “may render the testimony of little probative value in [a patentability] determination”).” slip op. at 10
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,102,863 - Directv, LLC v. Qurio Holdings, Inc.Institution deniedPTAB · Apr 4, 2016 · IPR2015-02007 · APJ Kerry Begley · IPR · Institution
The Board denied institution on both §103 grounds because the petition lacked particularity and adequate support for its combinations and did not show a reasonable likelihood of proving any challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the Petition and the Preliminary Response, we determine that the information presented does not show that there is a reasonable likelihood that Petitioner would prevail in establishing that any of the challenged claims of the ’567 patent are unpatentable. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- BurdenDenied
“i. Non-Compliance with 35 U.S.C. § 312(a)(3) and 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5) Under 35 U.S.C. § 312(a)(3), a petition “may be considered only if . . . the petition identifies, 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” (emphases added). Our rules further address the showing required in a petition. In particular, 37 C.F.R. § 42.104(b)(4) provides that “[t]he petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon” (emphasis added), and 37 C.F.R. § 42.104(b)(5) adds that the Petition must “identify[] specific portions of the evidence that support the challenge” (emphasis added). Similarly, 37 C.F.R. § 42.22(a)(2) states that a petition “must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence” (emphases added). For the reasons discussed below, we agree with Patent Owner that the Petition fails to comply with the requirements of 37 C.F.R. § 42.104(b)(4)–(5). See Prelim. Resp. 1. We also determine that the Petition does not meet the standards of 35 U.S.C. § 312(a)(3) and 37 C.F.R. § 42.22(a)(2).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“combining O’Connor’s teachings with Taesombut, Ducharme, and Wijting or reasoning as to why one of ordinary skill in the art would have done so. See id. ¶¶ 197–199, 200–202. Thus, the Petition’s asserted reason to combine O’Connor’s teaching with Taesombut, Ducharme, and Wijting is merely attorney argument, devoid of evidentiary support, and is entitled to no weight. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence.”); Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”). Accordingly, the Petition does not support adequately this alleged reason to combine O’Connor’s teachings distinguishing secure and non-secure memory with the other asserted prior art references. In addition, the Petition’s reasoning addresses only an alleged reason to combine O’Connor’s teachings with the other asserted prior art references—without addressing how a person of ordinary skill would have done so and whether such a person would had a reasonable expectation of success in arranging a secure and non-secure data cache in the manner recited in claim 1. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014) (“A party asserting that a patent is obvious must demonstrate . . . that a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.”) (internal citations and quotations omitted). In sum, the Petition does not present adequate reasoning, with rational underpinning, to support combining O’Connor’s teachings of secure and non-secure memory with the other asserted prior art references to reach the “secure data cache associated with the offload engine” and “a non-secure data cache” recited in independent claim 1.” slip op. at 19
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,879,567
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.