- The Chamberlain Group, LLC. v. Overhead Door CorporationInstitution deniedPTAB · Oct 25, 2022 · IPR2022-00842 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution because the petitioner did not show a reasonable likelihood of proving claims 1–6, 8, 10, 11, 13–15, and 17 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION For the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability claims 1–6, 8, 10, 11, 13–15, and 17 of the ’120 patent. Accordingly, we do not institute an inter partes review of the ’120 patent. IV. ORDER It is: ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 39
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience in the fields of access control or automated door control systems, or equivalent work experience or training in the field of such technologies. Pet. 4 (citing Ex. 1003 ¶ 31). Patent Owner does not address the level of skill of the ordinary artisan. See, generally, Prelim. Resp. Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundNot shown unpatentable
“i. Principles of Law A reference does not teach away “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). However, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Id. (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We find that Patent Owner’s argument is supported by Marchetto’s disclosure, which explains that one must first enter a certificate via the programming unit’s keypad 56 in order to activate a new transmitter (see Ex. 1007 ¶ 87). Thus, using Marchetto’s external device would involve an extra step of manually entering recognition codes. This is in contrast to Sommer, which actuates transmitters simply by transmitting a code to the receiver once its learn–in mode is activated (see Ex. 1004 ¶ 11). Adding an extra manual–entering step would increase, rather than “alleviate,” the labor needed to activate transmitters per Sommer’s system. Petitioner relies on the testimony of Dr. Davis. See Ex. 1003 ¶ 47; Pet. 12. But it simply repeats the argument in the Petition. Dr. Davis states that “[u]sing an external programming device … alleviate[s] the need for a human to locate, physically handle, and manually actuate each wireless transmitter [as in Sommer]” (id.; Pet. 12) but does not elaborate. Dr. Davis does not, address, for example, Marchetto’s stated need to additionally enter recognition codes into the external device and whether the combination of Sommer and Marchetto still yields an alleviation from having to do so. Absent evidentiary support or persuasive explanation, we afford Dr. Davis’s conclusory testimony little weight. There is insufficient evidence on this record showing one of ordinary skill in the art would have combined Sommer and Marchetto because it would “alleviate” the human labor associated with actuating transmitters per Sommer’s procedure.” slip op. at 23
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,869,120 - PTAB · Mar 9, 2021 · IPR2020-01337 · APJ Kara L Szpondowski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over Oki alone or in combination with Henry or Toffolo.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1358, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012)); see also Intelligent Bio- Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been anticipated and/or obvious over the proposed combinations of prior art. slip op. at 7
- Parallel petitionsNot reached
“In our Decision on Institution in IPR2020-01283, which is issuing concurrently with this Decision, we determine that Petitioner has not established a reasonable likelihood of showing that at least one of the claims challenged in that IPR is unpatentable, and thus, we do not institute inter partes review in that proceeding. Petitioner’s challenge in this proceeding is similar to the challenge in IPR2019-00043, and suffers from the same deficiencies that warranted denial of institution in that proceeding. As discussed below, and, for substantially the same reasons as in IPR2019- 00043, we determine that Petitioner has not established a reasonable likelihood of showing that at least one of the claims challenged in this proceeding is unpatentable, and thus, we do not institute inter partes review in this proceeding. Given that we do not institute inter partes review in this proceeding or in IPR2020-01283, we need not reach the issue of whether more than one petition is necessary for Petitioner’s challenges to the ’117 patent, and/or whether to otherwise exercise discretion to deny institution of inter partes review under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, physics, optics or a related field, and approximately three years of experience with field of visual displays, circuit design, and related technologies.” Pet. 21 (citing Ex. 1102 ¶¶ 19–20). Patent Owner does not propose a level of ordinary skill in the art or oppose Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. Petitioner’s proposed definition is unopposed and is consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). We, therefore, adopt Petitioner’s level of ordinary skill in the art for purposes of this Decision.” slip op. at 10
- BurdenDecided for patent owner
“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (alteration in original) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)); HTC Corp. v. Cellular Commc’n. Equip. LLC, 701 F. App’x. 978, 982 (Fed. Cir. 2017) (“The separate naming of two structures in the claim strongly implies that the named entities are not one and the same structure.”). Claims 1 and 15 recite the “user [input] signal” and the “dark level bias” as separate and distinct elements of the claimed “brightness control circuit” and method. Claim 1 recites “a first input configured to receive a user signal indicative of a user selectable brightness setting,” with “a multiplier configured to selectively generate a combined signal based on both the user signal and the sensing signal,” and “a dark level bias 1 To the extent Petitioner contends that a signal “reflecting” or “representing” “a” is different from + a as used in Oki’s equation, we reject that argument. The “a” in Oki’s equation is the same, whether in the first part of the equation, (b – a) x, which Petitioner relies on to teach the “combined signal,” or the second part of the equation, + a, which Petitioner relies on to teach the “dark level bias.” Pet. 44, 46. configured to adjust the combined signal to generate a brightness control signal . . .” Ex. 1001, 12:30–43. Claim 15 recites similar limitations in method form. Id. at 13:36–14:9. In other words, the dark level bias adjusts a combined signal that is generated based on the user signal and the sensing signal. slip op. at 18
Discretionary denialcites Phillips · GrahamPatents in suitUS 8,223,117 - PTAB · Mar 9, 2021 · IPR2020-01283 · APJ Kara L Szpondowski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016); see also KSR, 550 U.S. at 418. A motivation to combine the teachings of two references can be “found explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013). Further, an assertion of obviousness “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.” KSR, 550 U.S. at 418; In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’”). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1358, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012)); see also Intelligent Bio- Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (alteration in original) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)); HTC Corp. v. Cellular Commc’n. Equip. LLC, 701 F. App’x 978, 982 (Fed. Cir. 2017) (“The separate naming of two structures in the claim strongly implies that the named entities are not one and the same structure.”). Claims 1 and 15 recite the “user [input] signal” and the “dark level bias” as separate and distinct elements of the claimed “brightness control circuit” and method. Claim 1 recites “a first input configured to receive a user signal indicative of a user selectable brightness setting,” with “a multiplier configured to selectively generate a combined signal based on both the user signal and the sensing signal,” and “a dark level bias configured to adjust the combined signal to generate a brightness control signal . . .” Ex. 1001, 12:30–43. Claim 15 recites similar limitations in method form. Id. at 13:36–14:9. In other words, the dark level bias adjusts a combined signal that is generated based on both the user signal and the sensing signal. slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“First, Petitioner asserts that Ottenstein discloses that it will maintain the sensing signal at least “10% of full scale” when the ambient light level decreases to approximately zero. Pet. 63. We disagree. Ottenstein states: Further for very low ambient light levels, a night mode should be used in place of auto mode. Thus the automatic brightness control need not and should not operate at low ambient light levels, say less than 10% of maximum. The sensed ambient brightness level should be limited so that it is always at least 10% of full scale. Ex. 1012, 3:66–4:4. We agree with Patent Owner that Ottenstein does not disclose that the sensing signal is maintained above a certain level; rather, Ottenstein refers to the bottom of the ambient light range that should be used in auto mode before switching to night mode. See Prelim. Resp. 73. Moreover, Petitioner contends that maintaining the sensing signal at this level would be implemented using one of two techniques: (1) “the sensed signal should be replaced with a dark level bias that is 10% of full scale brightness” or (2) “the dark level bias can be added to the ambient light signal.” Pet. 63. However the claim recites “a dark level bias configured to adjust the combined signal . . .” Ex. 1001, 12:38 (emphasis added). Both of the constructions advanced by Petitioner for this limitation also require a “deviation from the combined signal” or “a dark level bias . . . to adjust the combined signal.” Pet. 18 (emphasis added). Neither of Petitioner’s two proposed implementations teach adjusting the combined signal; rather, Petitioner proposes either replacing the sensed signal or adding the dark level bias to the ambient light signal. Therefore, Petitioner has not shown that either of the two proposed techniques teach limitation 1[D].” slip op. at 40
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,223,117 - Vizio, Inc. v. Polaris Powerled Technologies, LLCRehearing grantedPTAB · Sep 15, 2020 · IPR2020-00043 · APJ Kara L Szpondowski · IPR · Rehearing
The Board granted rehearing but denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“We have considered Petitioner’s Request for Rehearing and, for the reasons set forth below, we grant Petitioner’s Request for Rehearing, but we are not persuaded to change our ultimate conclusion to deny institution of inter partes review. II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.” slip op. at 3
- Other 314aInstitution denied discretionary otherDenied
“III. DISCUSSION OF THE REQUEST FOR REHEARING On May 4, 2020, we issued our Decision denying institution of inter partes review based upon: (1) the advanced stage of the California District Court proceeding; (2) the investment of time and resources by the District Court and the parties in the California District Court proceeding; (3) overlap in the invalidity theories that Petitioner is pursuing here and in the California District Court proceeding; and (4) overlap in the claims challenged in the California District Court proceeding. Inst. Dec. 6–12. In the Decision, we did not reach any of the ten substantive grounds for patentability. See generally Inst. Dec. Rather, the denial of institution was solely based on our findings under 35 U.S.C. § 314(a). Id.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review under 35 U.S.C. §314(a) and 37 C.F.R. §42.4. Institution of an inter partes review is authorized 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) (2012); see also 37 C.F.R. § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”) For the reasons set forth below, upon considering the arguments and evidence of record, we are not persuaded to change our ultimate conclusion to deny institution of inter partes review.7” slip op. at 5
- BurdenDenied
“The petition must identify 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); see also 37 C.F.R. § 42.22(a) (content of petitions); 37 C.F.R. 42.104 (content of petition). Petitioner’s conclusory statements, without more, are irreparably lacking in detail. Petitioner does not provide any analysis to support the assertion of obviousness over Oki. In fact, Petitioner instead asserts that Oki discloses all of the limitations in each of claims 1, 2, 4–7, 9, 15, 16, and 18, so it is unclear what modification, if any, is required to Oki, or even the basis of Petitioner’s obviousness grounds. E.g., Pet. 28– 33. Petitioner does not clearly point out the differences between the claimed invention and Oki. Nor does Petitioner explain why a person of ordinary skill in the art would have found the claimed subject matter obvious in spite of those differences. Petitioner has not provided sufficient reasoning or facts on which to base a conclusion that a person of ordinary skill in the art would have found it obvious, in light of Oki’s disclosure, to modify Oki to meet the claim limitations. Accordingly, Petitioner fails to demonstrate a reasonable likelihood that it would prevail on this ground of unpatentability.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,223,117 - Advanced Bionics, LLC v. Med-El Elektromedizinsche Geräte GmbHInstitution deniedPTAB · Mar 19, 2020 · IPR2019-01572 · APJ Russell E Cass · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claim 19 would have been obvious over any of the three asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claim. For the reasons set forth below, and pursuant to 35 U.S.C. § 314, we decline to institute an inter partes review of claim 19 of the ’057 patent.” slip op. at 2
- BurdenNot shown unpatentable
“sufficiently shown that a person of ordinary skill would have combined Teissl with Adelberg to achieve the claimed invention, including specifically the “freely turnable” limitation. We agree with Petitioner that Teissl describes the problem the ’057 patent is directed to, namely that when a patient with the implant undergoes an MRI procedure, “[f]orce and torque on ferromagnetic parts of the implant due to magnetic field gradients and the homogenous magnetic field could dislodge the implant, which could result in damage to the implant or the surrounding tissue.” Ex. 1004, 70–71. Teissl also discloses that a possible solution to this problem could be the use of “an internal magnet which aligns itself within an external magnetic field.” Id. at 127. As discussed above, however, Teissl does not describe the structure of this “self-aligning” magnet. And although Teissl elsewhere describes cylindrical shape magnets (Ex. 1004, 72), it does not disclose that these cylindrical magnets could be used as the “self-aligning” magnet described on page 127, much less that such a magnet could be freely turnable around a rotatable cylinder axis. The question then becomes whether Adelberg would have taught a person of ordinary skill to use a cylindrical shape magnet that is freely We agree with Patent Owner that Petitioner has not sufficiently articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Petitioner fails to establish that Adelberg’s propeller-shaped rotor would have taught one of ordinary skill to use a “cylinder shaped” rotatable magnet as the “self-aligning” magnet in Teissl. Although Teissl elsewhere teaches the use of “magnets of cylindrical shape” in the implant for “holding the external transmitter in place” (Ex. 1004, 72), Petitioner does not show how Adelberg would have led one of ordinary skill to make such a cylindrical magnet in a cochlear implant rotate around a cylindrical axis and still hold the external transmitter in place. Not only is Adelberg’s rotor not cylindrical, it also is not an “implant holding magnet” because it does not hold anything in place, as discussed above.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“sufficiently shown that a person of ordinary skill would have combined Teissl with Adelberg to achieve the claimed invention, including specifically the “freely turnable” limitation. We agree with Petitioner that Teissl describes the problem the ’057 patent is directed to, namely that when a patient with the implant undergoes an MRI procedure, “[f]orce and torque on ferromagnetic parts of the implant due to magnetic field gradients and the homogenous magnetic field could dislodge the implant, which could result in damage to the implant or the surrounding tissue.” Ex. 1004, 70–71. Teissl also discloses that a possible solution to this problem could be the use of “an internal magnet which aligns itself within an external magnetic field.” Id. at 127. As discussed above, however, Teissl does not describe the structure of this “self-aligning” magnet. And although Teissl elsewhere describes cylindrical shape magnets (Ex. 1004, 72), it does not disclose that these cylindrical magnets could be used as the “self-aligning” magnet described on page 127, much less that such a magnet could be freely turnable around a rotatable cylinder axis. The question then becomes whether Adelberg would have taught a person of ordinary skill to use a cylindrical shape magnet that is freely We agree with Patent Owner that Petitioner has not sufficiently articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Petitioner fails to establish that Adelberg’s propeller-shaped rotor would have taught one of ordinary skill to use a “cylinder shaped” rotatable magnet as the “self-aligning” magnet in Teissl. Although Teissl elsewhere teaches the use of “magnets of cylindrical shape” in the implant for “holding the external transmitter in place” (Ex. 1004, 72), Petitioner does not show how Adelberg would have led one of ordinary skill to make such a cylindrical magnet in a cochlear implant rotate around a cylindrical axis and still hold the external transmitter in place. Not only is Adelberg’s rotor not cylindrical, it also is not an “implant holding magnet” because it does not hold anything in place, as discussed above.” slip op. at 25
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on the present record, and at this stage of the proceeding, we agree with Patent Owner that “implant holding magnet” should be given its magnet that holds an external part in place. Claim 19 recites “the implant holding magnet and the external holding magnet magnetically cooperate to maintain the external portion in a fixed position on the skin relative to the implantable portion,” thus requiring that the implanted magnet magnetically cooperates with the external holding magnet to hold the external portion in place. Ex. 1001, 14:41–44. The Specification also states that “[p]artly implantable systems may use magnets to hold internal and external pieces in place,” and explains that the magnet is positioned “such that the external part 101 is held against the implant 102 in an optimum position.” Id. at 1:46–53. The Specification further states that the implanted magnet “is adapted to be magnetically attracted to a non-implanted magnet of an external device so as to hold the external device in a desired position relative to the implant.” Id. at 3:13–15. See also id at 6:64–65 (describing “the implant and the external part held adjacent to the implant”), 7:26–27 (describing “an external part 510 held in place by an implant 505”). Thus, for the purposes of this decision, we construe “implant holding magnet” to mean “an implanted magnet that holds an external part in place.” We determine that it is not necessary to provide an express interpretation of any other claim terms at this juncture. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., 200 F.3d at 803 (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · Graham - Facebook, Inc. v. Bruce ZakRehearing deniedPTAB · Oct 31, 2017 · IPR2017-00003 · APJ Kalyan K Deshpande · IPR · Rehearing
The majority denied Facebook’s rehearing request, leaving institution denied because the petition did not show Boyce taught or suggested the claimed configurable links or application links.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“failed to demonstrate that Boyce teaches or suggests ‘generat[ing] at least one configurable link that points to at least one of the configurable applications’” and “Petitioner has failed to demonstrate that Boyce teaches or suggests ‘at least one application link . . . that points to at least one of the plurality of configurable applications so as to enable the users to selectively activate the configurable application to which the application link points.’” 002 Dec. 19; 003 Dec. 19.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We are not persuaded by this argument. First, the Petition does not discuss the combination of the delegation functionality with OWA in order to “generate at least one configurable link that points to at least one of the configurable applications.” Rather, pages 44 and 45 of the Petition discuss an entirely different limitation. The Petition’s discussion of the limitation “generat[ing] at least one configurable link that points to at least one of the configurable applications” does not include this discussion, nor does it reference the discussion on pages 44 and 45 of the Petition, and discuss its application to the limitation of “generat[ing] at least one configurable link that points to at least one of the configurable applications.” It is not the Board’s burden to mix and match Petitioner’s arguments in order to unearth a cogent analysis of each of the challenged claim limitations. Rather, it is the Petitioner’s burden under 35 U.S.C. § 314(a) to demonstrate a reasonable likelihood it will prevail. Furthermore, even if we were to consider it our burden to mix and match Petitioner’s arguments in order to fill in gaps in Petitioner’s analysis, Petitioner’s analysis is still deficient in demonstrating that the desktop “clickable icons” represented in Figure 36-23 of Boyce, are configurable based on the delegation functionality.2 Rather, “we are left speculating as to what the user will see, and 2 We specifically note that pages 44 and 45 of the Petition provides several arguments that are not supported by the evidence. For example, the Petition asserts that “Boyce discloses express motivations for having delegation functionality in OWA,” and cites a passage that discusses providing access to mailboxes to roaming users. Pet. 45 (citing Ex. 1003, 872). However, merely providing access to a user’s mailbox through OWA does not support Petitioner’s position that Boyce expresses a motivation to provide a user with delegation functionality. Similarly, Petitioner’s arguments in its Request for Rehearing are not supported by evidence. For example, Petitioner asserts that “it would have been obvious to whether the user will see ‘clickable icons’ that are selectively displayed based on their configuration.” Dec. 20. That is, Petitioner has not established a reasonable likelihood it will prevail in showing that the multiple embodiments of Boyce teach or suggest “generat[ing] at least one configurable link that points to at least one of the configurable applications.” It is the link itself that needs to be configurable, not the result of selecting the link or the rendered information after selection of the link.” slip op. at 5
- BurdenDecided for patent owner
“the combination of the delegation functionality with OWA in order to “generate at least one configurable link that points to at least one of the configurable applications.” Rather, pages 44 and 45 of the Petition discuss an entirely different limitation. The Petition’s discussion of the limitation “generat[ing] at least one configurable link that points to at least one of the configurable applications” does not include this discussion, nor does it reference the discussion on pages 44 and 45 of the Petition, and discuss its application to the limitation of “generat[ing] at least one configurable link that points to at least one of the configurable applications.” It is not the Board’s burden to mix and match Petitioner’s arguments in order to unearth a cogent analysis of each of the challenged claim limitations. Rather, it is the Petitioner’s burden under 35 U.S.C. § 314(a) to demonstrate a reasonable likelihood it will prevail.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,141,720 - Facebook, Inc. v. Bruce ZakRehearing deniedPTAB · Oct 31, 2017 · IPR2017-00002 · APJ Kalyan K Deshpande · IPR · Rehearing
The majority denied Facebook’s rehearing request, leaving institution denied because the petition did not reasonably show Boyce teaches or suggests the claimed configurable links and application links.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are not persuaded by this argument. First, the Petition does not discuss the combination of the delegation functionality with OWA in order to “generate at least one configurable link that points to at least one of the configurable applications.” Rather, pages 44 and 45 of the Petition discuss an entirely different limitation. The Petition’s discussion of the limitation “generat[ing] at least one configurable link that points to at least one of the configurable applications” does not include this discussion, nor does it reference the discussion on pages 44 and 45 of the Petition, and discuss its application to the limitation of “generat[ing] at least one configurable link that points to at least one of the configurable applications.” It is not the Board’s burden to mix and match Petitioner’s arguments in order to unearth a cogent analysis of each of the challenged claim limitations. Rather, it is the Petitioner’s burden under 35 U.S.C. § 314(a) to demonstrate a reasonable likelihood it will prevail.” slip op. at 5
- BurdenDecided for patent owner
“We are not persuaded by this argument. First, the Petition does not discuss the combination of the delegation functionality with OWA in order to “generate at least one configurable link that points to at least one of the configurable applications.” Rather, pages 44 and 45 of the Petition discuss an entirely different limitation. The Petition’s discussion of the limitation “generat[ing] at least one configurable link that points to at least one of the configurable applications” does not include this discussion, nor does it reference the discussion on pages 44 and 45 of the Petition, and discuss its application to the limitation of “generat[ing] at least one configurable link that points to at least one of the configurable applications.” It is not the Board’s burden to mix and match Petitioner’s arguments in order to unearth a cogent analysis of each of the challenged claim limitations. Rather, it is the Petitioner’s burden under 35 U.S.C. § 314(a) to demonstrate a reasonable likelihood it will prevail.” slip op. at 5
NonePatents in suitUS 9,141,720 - PTAB · Aug 24, 2017 · IPR2017-00936 · APJ Michael W Kim · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 9, 10, and 13–16 were unpatentable over Ginter or Ginter and Stefik.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted unless 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.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.4(a). Upon consideration of the Petition, Preliminary Response, and the associated evidence, we determine that Petitioner has failed to demonstrate a reasonable likelihood it would prevail with respect to at least one of the challenged claims. Accordingly, and for the reasons that follow, we deny institution of an inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“claim terms, “processing circuitry” and “microprocessor,” to the same CPU 654 of Ginter. Prelim. Resp. 17–20. We agree. See Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1563 (Fed. Cir. 1991) (two distinct claim elements should each be given full effect). Indeed, to determine otherwise would impermissibly read one of “processing circuitry” and “microprocessor” out of the claim. See Tex. Instruments Inc. v. U. S. Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (explaining claim language cannot be mere surplusage, an express limitation cannot be read out of the claim). Mapping both claim terms to CPU 654 of Ginter is especially problematic for the “microprocessor” limitation, which reads, in context, “a microprocessor having software programming to control the operation of the processing circuitry” (Claim 1 (emphasis added)). In making our determination, we acknowledge that Ginter discloses “one or more conventional general purpose central processing units (‘CPUs’) 654 . . . .” Ex. 1002, 185:21–22 (emphasis added). Accordingly, it is plausible that Petitioner intended for one of CPUs 654 to correspond to the recited “processing circuitry” and another of CPUs 654 to correspond to the recited “microprocessor.” We are unpersuaded, however, that Petitioner has articulated that intention with sufficient particularity in the aforementioned portions of the Petition. See 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 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 . . . .”).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“claim terms, “processing circuitry” and “microprocessor,” to the same CPU 654 of Ginter. Prelim. Resp. 17–20. We agree. See Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1563 (Fed. Cir. 1991) (two distinct claim elements should each be given full effect). Indeed, to determine otherwise would impermissibly read one of “processing circuitry” and “microprocessor” out of the claim. See Tex. Instruments Inc. v. U. S. Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (explaining claim language cannot be mere surplusage, an express limitation cannot be read out of the claim). Mapping both claim terms to CPU 654 of Ginter is especially problematic for the “microprocessor” limitation, which reads, in context, “a microprocessor having software programming to control the operation of the processing circuitry” (Claim 1 (emphasis added)). In making our determination, we acknowledge that Ginter discloses “one or more conventional general purpose central processing units (‘CPUs’) 654 . . . .” Ex. 1002, 185:21–22 (emphasis added). Accordingly, it is plausible that Petitioner intended for one of CPUs 654 to correspond to the recited “processing circuitry” and another of CPUs 654 to correspond to the recited “microprocessor.” We are unpersuaded, however, that Petitioner has articulated that intention with sufficient particularity in the aforementioned portions of the Petition. See 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 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 . . . .”).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Patent Owner asserts that Petitioner impermissibly maps two distinct claim terms, “processing circuitry” and “microprocessor,” to the same processing means 1200 of Stefik. Prelim. Resp. 29–31. We agree. See Unique Concepts, 939 F.2d at 1563 (two distinct claim elements should each be given full effect). Indeed, to determine otherwise would impermissibly read one of “processing circuitry” and “microprocessor” out of the claim. See Texas Instr., 988 F.2d at 1171 (explaining that claim language cannot be mere surplusage, an express limitation cannot be read out of the claim). Mapping both claim terms to processing means 1200 of Stefik is especially problematic for the “microprocessor” limitation, which reads, in context, “a microprocessor having software programming to control the operation of the processing circuitry” (Claim 1 (emphasis added)). In making our determination, we acknowledge that it is plausible that Petitioner is mapping “processing circuitry” and “microprocessor” to processing means 1200 and processor element 1201, respectively, where processor element 1201 is a component of processing means 1200. We are unpersuaded, however, that Petitioner has articulated that mapping with sufficient particularity in the aforementioned portions of the Petition. See 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 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 . . . .”). Moreover, as each of “processing circuitry” and “microprocessor” are recited as performing functions, if anything, it would appear that both “processing circuitry” and “microprocessor” should be mapped to processor element 1201, which would still be deficient for the reasons set forth above concerning processing means 1200. Patent Owner also asserts that Petitioner maps the ASIC chip of processing means 1200, which appears to be the same as processor element 1201, of Stefik to the recited “microprocessor,” but that an ASIC chip cannot correspond properly to a “microprocessor.” Prelim. Resp. 31. We agree. Patent Owner cites to a webpage that defines ASIC as follows: (Application Specific Integrated Circuit) Pronounced “a-sick.” A chip that is custom designed for a specific application rather than a general-purpose chip such as a microprocessor. The use of ASICs improve performance over general-purpose CPUs, because ASICs are “hardwired” to do a specific job and do not incur the overhead of fetching and interpreting stored instructions. Prelim. Resp. 31 (citing Ex. 2002); see also Dictionary.com Unabridged, Random House, Inc. http://www.dictionary.com/browse/microprocessor (accessed: June 12, 2017) (Ex. 3001) (microprocessor is “an integrated computer circuit that performs all the functions of a CPU”). Based on the above, we find that an ASIC is not a microprocessor. Against this objective evidence, Petitioner only states that “[a] person of ordinary skill in the art would know that an ASIC chip is a microprocessor” (Pet. 35), and provides a citation to paragraph 223 of Mr. Wechselberger’s Declaration, the relevant portion of which merely states, similarly, that “[a] person of ordinary skill in the art would appreciate that an ASIC chip functions would include those of a microprocessor,” without further relevant explanation or analysis. For the foregoing reasons, we determine that Petitioner failed to establish a reasonable likelihood it would prevail in showing that at least one of claims 1, 9, 10, and 13–16 is unpatentable as obvious over Ginter and Stefik.” slip op. at 10
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,840,437 - Microsoft Corporation v. Keith A. RaniereRehearing deniedPTAB · Nov 10, 2016 · IPR2016-00663 · APJ John A Hudalla · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving in place the denial of institution on the Delaney anticipation ground for claims 1, 5, 7, 9, 12, and 21.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)
“3 As Patent Owner points out (Prelim. Resp. 4–7), Technology Licensing discussed the relative burdens in the case where a patent claims priority by virtue of a continuation-in-part application that added new matter. As the Federal Circuit has explained, “when neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008). The Federal Circuit has distinguished this from instances, such as detailed in Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570 (Fed. Cir. 1985), in which the Office has made a priority determination. See PowerOasis, 522 F.3d at 1304. The Ralston court placed the burden of proving insufficient disclosure in the parent application on the patent challenger. See Ralston, 772 F.2d at 1573–74. Because the ’752 patent claims priority to Delaney and earlier applications through an unbroken chain of continuations, it is arguable that the framework of Ralston, rather than that of Technology Licensing, should apply here. Nevertheless, Microsoft has failed to show a reasonable likelihood of success on this ground even under the framework of Technology Licensing.” slip op. at 6
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“expect Raniere to be in unique possession of rebuttal evidence, as the case might be if it sought to present evidence of prior invention. See, e.g., Dynamic Drinkware, 800 F.3d at 1380. The 1995 ancestor application itself, already part of the record, is the best evidence of whether an earlier application provides support, under 35 U.S.C. § 120, for the challenged claims. See Ex. 1002. Microsoft does not contest that the common specification, included in both Delaney and the ’752 patent, describes examples within the scope of each of the challenged claims. Nor could Microsoft reasonably maintain such a position in light of its position that Delaney anticipates those same claims. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (stating that to anticipate, a reference must “show all of the limitations of the claims arranged or combined in the same way as recited in the claims”). It was not necessary for Raniere to re-establish this. Rather, the issue raised in the Petition (and addressed in the Decision on Institution) was whether those examples were sufficient to describe claims that Microsoft argued had been broadened beyond what those examples support. Raniere presented arguments, with reference to the evidence already of record, disputing this point. See Prelim. Resp. 8–20. At that point, the burden shifted back to Microsoft to persuade us that the ’752 patent is not entitled the benefit of an earlier priority date. See Tech. Licensing Corp., 545 F.3d at 1328. As explained below, Microsoft failed to meet that burden.” slip op. at 7
§ 102 anticipationPatents in suitUS 7,215,752 - Microsoft Corporation v. Keith A. RaniereRehearing deniedPTAB · Nov 10, 2016 · IPR2016-00669 · APJ John A Hudalla · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving in place its refusal to institute on the Delaney anticipation ground for claims 1, 4, 5, and 7.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“Microsoft’s burden-shifting arguments. Rather, Microsoft confuses the burden of production with the burden of persuasion. Microsoft has asserted that Delaney discloses each limitation of the challenged claims and that Delaney predates those claims. Microsoft has the burden of persuasion, based on all of the evidence, on both of these assertions. See Dynamic Drinkware, 800 F.3d at 1378. In some instances, evidence in the possession of a patent owner might be necessary to rebut a petitioner’s evidence and, in those cases, the patent owner has a burden to produce such evidence. See, e.g., id. at 1380 (stating the burden of production was properly shifted to a patent owner to establish the reduction to practice date of the challenged patent claims). Although Raniere has not introduced additional evidence into the record, Raniere has made an adequate showing, as described below, such that the burden returns to Microsoft to persuade us that the ’041 patent is not entitled to earlier priority.” slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“expect Raniere to be in unique possession of rebuttal evidence, as the case might be if it sought to present evidence of prior invention. See, e.g., Dynamic Drinkware, 800 F.3d at 1380. The 1995 ancestor application itself, already part of the record, is the best evidence of whether an earlier application provides support, under 35 U.S.C. § 120, for the challenged claims. See Ex. 1002. Microsoft does not contest that the common specification, included in both Delaney and the ’041 patent, describes examples within the scope of each of the challenged claims. Nor could Microsoft reasonably maintain such a position in light of its position that Delaney anticipates those same claims. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (stating that to anticipate, a reference must “show all of the limitations of the claims arranged or combined in the same way as recited in the claims”). It was not necessary for Raniere to re-establish this. Rather, the issue raised in the Petition (and addressed in the Decision on Institution) was whether those examples were sufficient to describe claims that Microsoft argued had been broadened beyond what those examples support. Raniere presented arguments, with reference to the evidence already of record, disputing this point. See Prelim. Resp. 7–17. At that point, the burden shifted back to Microsoft to persuade us that the ’041 patent is not entitled the benefit of an earlier priority date. See Tech. Licensing Corp., 545 F.3d at 1328. As explained below, Microsoft failed to meet that burden.” slip op. at 7
§ 102 anticipationPatents in suitUS 7,844,041
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.