- Fieldpiece Instruments, Inc. v. Twin Rivers Engineering, Inc.Rehearing deniedPTAB · Sep 25, 2017 · IPR2017-00362 · APJ Monica S Ullagaddi · IPR · Rehearing
The Board denied Fieldpiece’s rehearing request, leaving institution denied because the Petition did not sufficiently show that the prior art taught or suggested the negative limitation in claims 2, 3, 6, 7, and 9.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Pet. 44 (for claims 2 and 9); see also id. at 58 (substantially similar argument for claim 6), 68 (for claim 7, referring to argument for claim 6). In its Rehearing Request, Petitioner cites numerous portions of the Laub Declaration in support of its contention. Reh’g. Req. 5, 6, 8–10, 12, 13 (citing Ex. 1003, 29, 30, 32–34, 36, 49, 50, 73, 74). None of these portions of the Laub Declaration were cited in the Petition in connection with the negative limitation. In fact, as noted in our Decision, Petitioner did not cite to the Laub Declaration at all in connection with the negative limitation. See Dec. 14 n.2. The Rehearing 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) (emphasis added). As Petitioner did not cite to the Laub Declaration at all in connection with the negative limitation in its Petition, we could not have “misapprehended or overlooked” this evidence in connection with that limitation. Moreover, the portions of the Petition cited in the Rehearing Request relate only to overviews of the references. See Reh’g. Req. 5–13 (citing Pet. 13, 14, 21, 22, 26, 29, 33, 34, 46, 47). In our Decision, we stated that the burden of persuasion remains on a petitioner in inter partes review proceedings. See Dec. 13 (citing DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”)). Petitioner does not meet its burden because none of these overviews explain why the ordinarily skilled artisan would have understood the references to teach or suggest the negative limitation. Similarly, even having considered the portions of the Laub Declaration first cited in the Request for Rehearing, we still are not persuaded Petitioner explains sufficiently why the negative limitation is taught or suggested by the references.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“person of ordinary skill in the art would have nonetheless expected the limitation ‘without…a secondary tracer’ to have been known in the art.” Reh’g. Req. 2, 14. The Petition, however, does not mention the level of the ordinary skill in the art in connection with the negative limitation, let alone explain why the limitation would have been taught or suggested to one of ordinary skill in the art at the time of the invention. Petitioner further asserts that our Decision “misapprehends the disclosure in the prior art and is based on authority regarding [the] written description requirement of a negative limitation – not the standard required to show disclosure of a negative limitation in the prior art.” Id. at 4 (emphasis added); see also id. at 13–14 (expanding upon argument). We clarify that we relied on the case law cited in our Decision, not to indicate the minimum that a petitioner is required to show regarding a negative limitation, but simply to emphasize that the negative limitation inquiry is focused on what a person of ordinary skill in the art would understand the prior art to teach or suggest. Petitioner does not disagree with this legal point. See, e.g., id. at 15 (“Petitioner contends that the prior art, when viewed from the perspective of a person of ordinary skill in the art, sufficiently discloses the negative limitation . . .”). Nonetheless, as noted above, Petitioner neither points out an express teaching nor provides any other explanation as to why the negative limitation would have been taught or suggested to one of ordinary skill in the art at the time of the invention. Based on our construction of the negative limitation and our reading of the prior art, we concluded that a person of ordinary skill would not have understood the prior art to disclose the negative limitation. And Petitioner did not provide any evidence to the contrary. See, e.g., Pet. 44, 58, 68 (citing “generally” to prior art exhibits, but not citing to Laub Declaration). Thus, we are not persuaded that we erred in determining that Petitioner did not meet its burden to show a reasonable likelihood of prevailing on this issue.” slip op. at 6
- BurdenDecided for patent owner
“Moreover, the portions of the Petition cited in the Rehearing Request relate only to overviews of the references. See Reh’g. Req. 5–13 (citing Pet. 13, 14, 21, 22, 26, 29, 33, 34, 46, 47). In our Decision, we stated that the burden of persuasion remains on a petitioner in inter partes review proceedings. See Dec. 13 (citing DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”)). Petitioner does not meet its burden because none of these overviews explain why the ordinarily skilled artisan would have understood the references to teach or suggest the negative limitation. Similarly, even having considered the portions of the Laub Declaration first cited in the Request for Rehearing, we still are not persuaded Petitioner explains sufficiently why the negative limitation is taught or suggested by the references.” slip op. at 4
NonePatents in suitUS 7,022,993 - Fieldpiece Instruments, Inc. v. Twin Rivers Engineering, Inc.Institution deniedPTAB · Jun 9, 2017 · IPR2017-00362 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 2, 3, 6, 7, and 9 were obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are not persuaded by Petitioner’s arguments because Petitioner does not point to sufficient evidence or explain how Wong, Wallack, Sibley, Horiba, Johnson Controls, and Moyer teach or suggest the “without . . . secondary tracer” limitations recited in claims 2, 6, 7, and 9. In the present proceeding, citing to these references generally, particularly without citation to specific portions, is insufficient to meet Petitioner’s burden of persuasion. See DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). Moreover, we disagree with Petitioner’s contention that the silence of the references regarding the “without . . . secondary tracer” limitations teaches or otherwise suggests the negative limitation recited in claims 2, 6, 7, and 9. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”); see also Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015) (“We hold that Santarus did not create a heightened written description standard for negative claim limitations and that properly described, alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.”)” slip op. at 13
- BurdenInstitution denied
“We are not persuaded by Petitioner’s arguments because Petitioner does not point to sufficient evidence or explain how Wong, Wallack, Sibley, Horiba, Johnson Controls, and Moyer teach or suggest the “without . . . secondary tracer” limitations recited in claims 2, 6, 7, and 9. In the present proceeding, citing to these references generally, particularly without citation to specific portions, is insufficient to meet Petitioner’s burden of persuasion. See DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). Moreover, we disagree with Petitioner’s contention that the silence of the references regarding the “without . . . secondary tracer” limitations teaches or otherwise suggests the negative limitation recited in claims 2, 6, 7, and 9. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”); see also Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015) (“We hold that Santarus did not create a heightened written description standard for negative claim limitations and that properly described, alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.”)” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We are not persuaded by Petitioner’s arguments because Petitioner does not point to sufficient evidence or explain how Wong, Wallack, Sibley, Horiba, Johnson Controls, and Moyer teach or suggest the “without . . . secondary tracer” limitations recited in claims 2, 6, 7, and 9. In the present proceeding, citing to these references generally, particularly without citation to specific portions, is insufficient to meet Petitioner’s burden of persuasion. See DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). Moreover, we disagree with Petitioner’s contention that the silence of the references regarding the “without . . . secondary tracer” limitations teaches or otherwise suggests the negative limitation recited in claims 2, 6, 7, and 9. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”); see also Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015) (“We hold that Santarus did not create a heightened written description standard for negative claim limitations and that properly described, alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.”) Furthermore, Wong at least suggests “introducing or mixing a secondary tracer within the leak detector,” which is directly contrary to the negative limitations at issue. Specifically, Wong discloses The chamber 104 that is to be tested is filled with a test gas and preferably is pressurized with the test gas so as to accelerate the leakage, if any, of the test gas from the chamber. The chamber is surrounded by an ambient gas which may be the air of the atmosphere, or, alternatively, the chamber 104 may be placed within a larger chamber so as to permit the chamber 104 to be surrounded by a chosen ambient gas other than air. In another embodiment, shown in FIG. 3 a localized region on the surface of the chamber may be flooded by a chosen ambient gas that temporarily displaces the air that otherwise would be present. Ex. 1004, 3:52–62 (emphasis added).” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s Declarant, Mr. Laub, testifies that “Wong discloses a hand-held portable infrared leak detector . . . which detects leaks without introducing or mixing a secondary tracer,” but fails to cite any underlying record evidence supporting his testimony.2 Ex. 1003 ¶ 103. Mr. Laub also fails to address the disclosure of Wong described above. Mr. Laub presents similarly unsupported testimony with respect to Wallack and Sibley. See id. ¶¶ 107, 113. We do not find persuasive Mr. Laub’s conclusory and unsupported testimony regarding the disclosure of Wong, Wallack, and Sibley. 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.”). With respect to claim 6, Mr. Laub supports his testimony by citing portions of Moyer. Id. ¶ 172 (citing Ex. 1010, 3:43–45, 3:53–56, 4:22–25). We have reviewed the cited portions of Moyer and disagree that they disclose or suggest the “without . . . secondary tracer” limitations recited in independent claims 2, 6, 7, and 9. 2 Petitioner does not actually cite to this specific portion of Mr. Laub’s testimony. See 37 C.F.R. § 42.104(b)(5) (requiring petitions to include a statement of the precise relief requested, including “identifying specific portions of the evidence that support the challenge . . . [t]he 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”). It is unnecessary to invoke rule 104(b)(5) here because even considering this portion of Mr. Laub’s testimony, we do not find its contents persuasive.” slip op. at 14
§ 103 obviousnessPatents in suitUS 7,022,993 - Unified Patents Inc. v. Hybrid Audio, LLCRehearing deniedPTAB · Apr 7, 2017 · IPR2016-01265 · APJ Monica S Ullagaddi · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended arguments and upholding its construction of “filter” to exclude QMF filters.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(d) Rehearing. . . . 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.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“evidence when we determined that the term “filter,” in the context of the ’281 patent and its prosecution history, excludes QMF filters. See id.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Reh’g Req.”) of our Decision Denying Institution (Paper 7, “Dec.”). Petitioner requests that we reconsider our decision to deny institution of inter partes review with respect to claims 5, 12, 18, 26, 34, 41, 48, 57, 66, 71, 83, 90, 95, 100, 107, 112, 114, 116, and 120 (“the challenged claims”) and our determination that Petitioner had not demonstrated a reasonable likelihood of prevailing in showing that the challenged claims of U.S. Patent No. RE40,281 (Ex. 1001, “the ’281 patent”) would have been obvious over various combinations of Jones, Adelson, and Veldhuis. For the reasons set forth below, the request is denied. slip op. at 2
Claim construction§ 103 obviousness - Kingston Technology Company, Inc. v. Polaris Innovations Ltd.Rehearing deniedPTAB · Apr 6, 2017 · IPR2016-01622 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Kingston’s rehearing request, leaving in place the denial of institution for claim 4 because the Petition did not sufficiently explain how Simpson would meet the claimed board height.
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. See 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. 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). With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner’s argument is unavailing. Simpson teaches a printed circuit board with a height sufficient to accommodate the components mounted thereon—i.e., two rows of horizontally-oriented memory chips 12A–H. Petitioner relies upon both rows of memory chips as teaching “at least nine identically designed integrated semiconductor memories,” as recited in claim 1. Pet. 18–19. The Intel Specification, by contrast, teaches a single row of vertically-oriented memory chips. Ex. 1003, 7. The Petition and Dr. Subramanian propose modifying the height of Simpson’s printed circuit board, but do not address whether a height in the range of 1 to 1.2 inches would be sufficient to accommodate two rows of horizontally-oriented memory chips, as taught by Simpson. Neither the Petition nor Dr. Subramanian addresses, for example, the dimensions of the components taught by Simpson, whether two rows of memory chips would fit on a printed circuit board that has a height of only 1 to 1.2 inches, or—if the memory chips taught by Simpson would not fit—what a person of ordinary skill in the art would have known about the dimensions of similar memory chips as of the critical date that would have made it obvious to fit two rows of them on a printed circuit board having a height of only 1 to 1.2 inches. In its Rehearing Request, Petitioner does not identify where in the Petition these issues were addressed. As a result, we are not persuaded that we misapprehended or overlooked any arguments and evidence when we concluded that “Petitioner has not explained sufficiently how or why a person of ordinary skill in the art would have modified Simpson to achieve a height of ‘1 to 1.2 inches perpendicular to said contact strip.’” Dec. 17.” slip op. at 5
§ 103 obviousnessPatents in suitUS 6,850,414 - Unified Patents Inc. v. Cuica, LLCInstitution deniedPTAB · Feb 27, 2017 · IPR2016-01644 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution on claims 1–4, 6, 7, 9, and 10 because the cited combinations did not show the claimed means-plus-function limitations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “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 that follow, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Unified would prevail in challenging claims 1–4, 6, 7, 9, and 10 of the ’983 patent as unpatentable under 35 U.S.C § 103(a). Pursuant to 35 U.S.C. § 314, we hereby decline to institute an inter partes review of the ’983 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“We agree with Unified’s view that the term “forresta” does not have ordinary meaning because the Specification indicates that the inventor intended to act as a lexicographer for the term based upon the use of quotation marks for identification of the term therein, and referring to “forresta” as “a set of values herein named” and “herein labeled.” Ex. 1001, Abstract, 3:31–33. The Specification states that the invention “overcomes the deficiencies of prior schemes for controlling content dissemination,” by using a “forresta” as “passive information” that is included “within the user’s request,” and that by “[u]sing the functionality provided by the forresta, each of the client requests and each of the server responses are individualized.” Id. at 3:28–34. On this record, we agree that the Specification supports Unified’s proposed construction of the term “forresta” as “any passive data which can be used to identify the user’s level of access to a repository of data,” and we adopt this construction for purposes of this Decision.” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“means-plus-function terms Independent claims 1 and 9 include several recitations of “means” or “means for” limitations. See Ex. 1001, 20:39–63, 22:43–23:35. Unified advocates that 35 U.S.C. § 112 ¶ 6 applies to the “means for allowing access” term of claim 1 and “means for organizing data” of claim 9 because the claim language does not provide sufficient structure to perform the claimed function.3 Pet. 16–18. We agree with Unified on this issue because the use of the word “means” in a claim element creates a rebuttable presumption that § 112 ¶ 6 applies, and there is no structure identified in the claims. Personalized Media Comm’s, LLC v. ITC, 161 F.3d 696, 703–04 (Fed. Cir. 1998). Unified identifies the “server computer 102 [that] contains . . . data access control (‘DAC’) process 106 of the present invention” as the structure for the “means for allowing access” term of claim 1, and the “reference tool 500,” depicted in Figure 5, as the structure of the “means for organizing data” of claim 9. Pet. 16–18 (citing Ex. 1001, 4:60–67, 7:57–8:5, Figs. 1, 2, 5; Ex. 1002 ¶¶ 25, 27).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 1006, 7:27–41; see Pet. 32.5 Unified appears to rely upon Shannon’s client computer number or machine addresses such as Internet Protocol (“IP”), Media Access Control (“MAC”) addresses, and/or usernames as teaching the claimed n-byte character sequence. Pet. 32. The claim limitation, however, requires the creation of a forresta identity as an n-byte character sequence, and Shannon merely discloses that there are different identifiers of a computer or of a user of a computer that may be associated with different groups and have different assigned levels of access. See Ex. 1006, 7:11–26. Even assuming the identifiers in Shannon are “an n-byte character sequence,” as recited by the claim, Shannon still fails to teach any “creating” because the computer numbers taught by Shannon—e.g., IP 5 In the Petition, Unified cites to Exhibit 1006 at 7:11–26 (Pet. 32), but the text quoted by Unified, and reproduced above, is at 7:27–41. The erroneous citation appears to be inadvertent error, and we rely on the textual portion of Shannon quoted in the Petition. address or MAC address—already exist and, therefore, are not “creat[ed]” by Shannon’s group/source database 203. Moreover, even assuming that Shannon teaches “creating” computer numbers, we still would not be persuaded that Shannon teaches the recited “means for creating said forresta identity” because Unified does not identify, and we cannot find, any teaching in Shannon of the use of the algorithm disclosed in the ’983 patent “for creating a forresta identity,” i.e., fcode process 900. Unified also does not argue that Shannon’s process is equivalent to fcode process 900, or that He teaches this limitation. We are, therefore, not persuaded that the asserted combination of Shannon and He teaches or suggests the limitation of “means for creating said forresta identity as an n-byte character sequence” of the “access control means” of claim 1. Because claims 2–4, 6, and 7 depend from independent claim 1, and because Unified cites no additional evidence in discussing these claims that would remedy the deficiency of the prior art discussed above with respect to claim 1, the obviousness challenge to dependent claims 2–4, 6, and 7 also is not persuasive.” slip op. at 21
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,466,983 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Apr 12, 2016 · IPR2016-00018 · APJ Peter P Chen · IPR · Institution
The Board denied institution because Arista did not show a reasonable likelihood that claims 1, 2, 6–9, 12, 13, and 17–20 were unpatentable over Chau or Chau and Wils.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of claims 1, 2, 6–9, 12, 13, and 17–20 of U.S. Patent No. 8,051,211 B2 (Ex. 1001, “the ’211 patent”). Paper 2 (“Pet.”). Patent Owner, Cisco Systems, Inc., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1, 2, 6–9, 12, 13, and 17–20 of the ’211 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- BurdenNot shown unpatentable
“Petitioner’s only apparent contention for Chau’s disclosure that the first and second LANs are both usable for simultaneous transmission “subsequent to” the aggregation of LANs, is that “the simultaneous transmission occurs as a result of the grouping of the first LAN (channel C2) and second LAN (channel C1).” Pet. 19–20, citing Ex. 1014 ¶ 54. The Lin declaration is similarly worded, and like the Petition, is silent as to whether Chau’s alleged simultaneous transmission occurs “subsequent to,” i.e., after the aggregation of LANs. Petitioner’s argument of simultaneous transmission occurring “as a result of” alleged aggregation of LANs is unavailing, because “subsequent to” means, “after,” not “as a result of.” In fact, in the related ’975 IPR, we expressly rejected the Patent Owner’s proposed construction of “as a result of” for “subsequent to.” See Section II.A. Neither the Petition nor the Lin declaration (Ex. 1014) cite any evidence of simultaneous transmission occurring “after” aggregation of LANs in Chau. Accordingly, we are not persuaded that Petitioner’s showing demonstrates a reasonable likelihood that it would prevail as to claim 1 being anticipated by Chau.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In addition, as we determined in the ’975 IPR, for purposes of this decision, we determine that the broadest reasonable construction of “subsequent to” is its ordinary and customary meaning, namely, “after.” See Case IPR2015-00975, slip op. at 7–8 (PTAB Oct. 6, 2015) (declining to adopt Patent Owner’s proposed construction of “as a result of” for “subsequent to”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s only apparent contention for Chau’s disclosure that the first and second LANs are both usable for simultaneous transmission “subsequent to” the aggregation of LANs, is that “the simultaneous transmission occurs as a result of the grouping of the first LAN (channel C2) and second LAN (channel C1).” Pet. 19–20, citing Ex. 1014 ¶ 54. The Lin declaration is similarly worded, and like the Petition, is silent as to whether Chau’s alleged simultaneous transmission occurs “subsequent to,” i.e., after the aggregation of LANs. Petitioner’s argument of simultaneous transmission occurring “as a result of” alleged aggregation of LANs is unavailing, because “subsequent to” means, “after,” not “as a result of.” In fact, in the related ’975 IPR, we expressly rejected the Patent Owner’s proposed construction of “as a result of” for “subsequent to.” See Section II.A. Neither the Petition nor the Lin declaration (Ex. 1014) cite any evidence of simultaneous transmission occurring “after” aggregation of LANs in Chau. Accordingly, we are not persuaded that Petitioner’s showing demonstrates a reasonable likelihood that it would prevail as to claim 1 being anticipated by Chau.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,051,211 - Apple Inc. v. Tracbeam, LLCRehearing deniedPTAB · Mar 29, 2016 · IPR2015-01697 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving institution denied for claims 25, 45, 49, and their dependent claims because the petition did not adequately show Bruno taught the limitations.
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. See 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. 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). With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“Rehg. Req. 1. Specifically, Petitioner contends that it explained, in its Petition, that Bruno’s GPS, cellular, and RF Signpost techniques are independent. Id. at 3–4 (citing Pet. 17; Ex. 1007, Fig. 9); see also id. at 6–7 (addressing claim 45). The analysis in the Petition, however, merely asserts that the techniques are independent without further explanation. We reviewed the evidence cited by Petitioner, but were not persuaded that it supported Petitioner’s conclusory assertion.” slip op. at 3
- BurdenNot shown unpatentable
“Rehg. Req. 1. Specifically, Petitioner contends that it explained, in its Petition, that Bruno’s GPS, cellular, and RF Signpost techniques are independent. Id. at 3–4 (citing Pet. 17; Ex. 1007, Fig. 9); see also id. at 6–7 (addressing claim 45). The analysis in the Petition, however, merely asserts that the techniques are independent without further explanation. We reviewed the evidence cited by Petitioner, but were not persuaded that it supported Petitioner’s conclusory assertion.” slip op. at 3
NonePatents in suitUS 7,525,484 - Arista Networks, Inc. v. Cisco Systems, Inc.Rehearing deniedPTAB · Feb 29, 2016 · IPR2015-00973 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing and again denied institution on all challenged claims because the petition did not show a reasonable likelihood that Hendel disclosed the claimed access result.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made 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). The party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“being forwarded (restriction) or that an output port is selected and altered. Rather, these citations generally state that priority can be given to certain packets and quality of service can be applied to layer 2 routing. Thus, we are not persuaded that Petitioner’s citation to quality of service in general discloses “generating an access result in response to said at least one selected match.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“rehearing, we determine that the phrase “modifications on the intended destination address to which a packet is to be transmitted” introduces uncertainly into the construction.4 The construction in the Decision appears to conflate the “destination” of a packet with the output interface to which a packet is directed. The Specification does not describe, however, modifying the “destination” of the packet; the only “modification” on how the packet is routed specifically described in the Specification is when “the access control element 120 . . . [alters] the output interface, which was selected by the routing element 110, to another selected output interface.” Ex. 1001, 6:13– 4 Petitioner does not seek rehearing of the claim construction (Reh’g Req. 4, n. 1) but our analysis requires that we revisit the claim construction determination from the Decision. 16; Reh’g Req. 4–5. Thus, we modify our construction of “access control” to mean only restrictions on the transmission of a packet or alteration of a selected output interface for the packet.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Additionally, Petitioner cites to its Declarant Dr. Chao. Reh’g Req. 6 (citing Ex. 1003 ¶ 31). Petitioner’s Declarant states without citation that “a switch may modify the forwarding decision to account for network policies such as quality of service determinations. That is, a packet may be destined for a certain MAC address and port on the switch, but the switch may determine that the packet can be transmitted more reliably through another port, and so it will change the destination port for that packet.” Ex. 1003 ¶ 31. Petitioner’s Declarant’s testimony is conclusory and unsupported by evidence, and, therefore, we give that testimony no weight.” slip op. at 7
Claim constructionPatents in suitUS 6,377,577 - 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 19, 2016 · IPR2015-01702 · APJ James A Tartal · IPR · Institution
Instituted review in IPR2015-01703 on specified Loomis grounds for claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215; denied institution in IPR2015-01702.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Upon consideration of the Petition and the Preliminary Response, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215, but not of claims 17, 40, or 72. Accordingly, we authorize an inter partes review to be instituted only as to claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 of the ’231 patent. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far (prior to Patent Owner’s Response). This is not a final decision as” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“and second location estimation determiners determine geographical indications “independently of one another.” Independent claim 17, similar to claim 40, requires that “wherein the second instance does not depend on a geographical location of the mobile station obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites.” Petitioner’s sole contention with respect to claim 40 and the cited portions of claim 17 is: “Location determiners can be independent of each other. See, e.g., 5:7–9; Figs. 6, 9.” 1703-Pet 39, 44. The portion of Loomis cited by Petitioner states that “[t]he outdoor LD system operates independently of the radio LD signal system, and each of these systems can determine the present location of the user at selected times.” IPR-1703, Ex. 1008, 5:7–9. Thus, Petitioner has shown that the outdoor LD system of Loomis is independent of the radio LD signal system, but has not shown that the radio LD signal system is independent of the outdoor LD system. Accordingly, Petitioner has not shown that the determiners are “independent of each other,” as required by claim 40, or that “second instance does not depend on a geographical location . . . obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites,” as required by claim 17 and claim 72, which depends from claim 17.” slip op. at 15
- Other 314aInstitution denied discretionary other
“E. Additional Grounds We decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 based on Bruno, in combination with Olsson and/or Geier. We also decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 17, 18, 20, 24, 25, 27, 39, 40, 72, 78, 81, 155, 162, 165, and 215 based on Green and Hashimoto, and additional art, as asserted in IPR-1702. Petitioner asserts multiple grounds to each challenged claim of the ’231 patent across two separate petitions, but does not address the duplicative nature of its arguments across petitions. The Board’s rules for AIA inter partes proceedings, including those pertaining to institution, are “construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); accord 35 U.S.C. §§ 316(b) (regulations for AIA inter partes proceedings take into account “the efficient administration of the Office” and “the ability of the Office to timely complete [instituted] proceedings”). Because we institute an inter partes review of these claims based on the grounds discussed above, we exercise our discretion not to institute a review based on these grounds for reasons of administrative necessity to ensure timely completion of the instituted proceeding. See 37 C.F.R. § 42.108(a).” slip op. at 23
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,764,231
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.