• Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Institution denied
  PTAB · Jan 8, 2020 · IPR2019-01209 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted reference combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “institute an inter partes review if “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). After considering the Petition, the Preliminary Response, and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’253 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level board ownDecided for patent owner

    “ordinary skill in the art, including the type of problems encountered in the art and prior art solutions to those problems. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’253 patent and the prior art of record, we agree with some aspects of Petitioner’s proposal as well as some aspects of Patent Owner’s proposal. For instance, as indicated by its title, the ’253 patent is directed to a merchandise security system with optical communication. See Ex. 1001, code (54). Thus, we agree with Patent Owner that a person of ordinary skill in the art would at least have experience with optical communication technology. We also agree with Patent Owner that the invention disclosed in the ’253 patent is not limited to use as a point-of-purchase anti-theft device. See Prelim. Resp. 7–8 (citing Ex. 1001, 2:55–60). We disagree, however, with Patent Owner’s argument that experience with security systems is unnecessary. See id. In view of the ’253 patent and the principal prior art references in the record, which generally are directed to security systems, we find that a person of ordinary skill in the art would have some experience with security devices. The educational level of inventors and that of active workers in the field are also factors that may be considered. Daiichi, 501 F.3d at 1256. On the present record, we agree with Patent Owner’s more inclusive proposal regarding the educational level of a person skilled in the art. See Prelim. Resp. 8–9. review of the record, we find that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, mechanical engineering, materials science, or some equivalent level of education, and some work experience with the design of security devices and applications using optical communication technology. We note that, even if we adopted either Petitioner’s or Patent Owner’s proposed level of skill in the art in its entirety, our analysis below of Petitioner’s asserted obviousness grounds would not change and we would reach the same conclusions.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “signals.” Ex. 1001, 1:59–60, 1:62–63, 5:34–37; see Pet. 6. Citing definitions of “optical transceiver,” “optical receiver,” “optical transmitter,” and “transceiver” from a technical dictionary, Petitioner contends that “optical transceiver” should be construed as “an optical receiver and an optical transmitter housed in a single unit with appropriate electrical and optical connectors.” Pet. 6–7 (citing Ex. 1002, 347, 674, 676–77, 1022–23). For purposes of this Decision, we adopt Petitioner’s proposed construction of “optical transceiver,” which is consistent with the term’s use in the ’253 patent and its ordinary and customary meaning in the art. No other claim terms require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found

    “its optical waveguide tether, including a spiral cable and a securing tether wound under tensile stress. Ex. 1003, 5; see Prelim. Resp. 12. Notwithstanding these embodiments in which the optical waveguide tether would be subject to bending, Brenner states that “the apparatus according to the invention also has the advantage of reduced susceptibility to faults, because the optoelectronic signal transfer device operates practically without wear.” Ex. 1003, 3; see Prelim. Resp. 12. Thus, contrary to Petitioner’s argument that bending or winding Brenner’s optical waveguide would create reliability issues, Brenner itself suggests that using an optical waveguide in” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,062,253
• Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Institution denied
  PTAB · Jan 8, 2020 · IPR2019-01206 · APJ Lynne E Pettigrew · 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

    “institute an inter partes review if “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). After considering the Petition, the Preliminary Response, and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’274 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level board ownDecided for patent owner

    “ordinary skill in the art, including the type of problems encountered in the art and prior art solutions to those problems. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’274 patent and the prior art of record, we agree with some aspects of Petitioner’s proposal as well as some aspects of Patent Owner’s proposal. For instance, as indicated by its title, the ’274 patent is directed to a merchandise security system with optical communication. See Ex. 1001, code (54). Thus, we agree with Patent Owner that a person of ordinary skill in the art would at least have experience with optical communication technology. We also agree with Patent Owner that the invention disclosed in the ’274 patent is not limited to use as a point-of-purchase anti-theft device. See Prelim. Resp. 7–8 (citing Ex. 1001, 2:55–60). We disagree, however, with Patent Owner’s argument that experience with security systems is unnecessary. See id. In view of the ’274 patent and the principal prior art references in the record, which generally are directed to security systems, we find that a person of ordinary skill in the art would have some experience with security devices. The educational level of inventors and that of active workers in the field are also factors that may be considered. Daiichi, 501 F.3d at 1256. On the present record, we agree with Patent Owner’s more inclusive proposal regarding the educational level of a person skilled in the art. See Prelim. Resp. 8–9. review of the record, we find that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, mechanical engineering, materials science, or some equivalent level of education, and some work experience with the design of security devices and applications using optical communication technology. We note that, even if we adopted either Petitioner’s or Patent Owner’s proposed level of skill in the art in its entirety, our analysis below of Petitioner’s asserted obviousness grounds would not change and we would reach the same conclusions.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “transceiver” is relevant to this Decision. The ’274 patent states that “an optical transceiver [is] configured to transmit and receive data” and “may be used to transmit optical signals in predetermined sequences or patterns, as signals.” Ex. 1001, 1:59–60, 1:62–63, 5:34–37; see Pet. 6. Citing definitions of “optical transceiver,” “optical receiver,” “optical transmitter,” and “transceiver” from a technical dictionary, Petitioner contends that “optical transceiver” should be construed as “an optical receiver and an optical transmitter housed in a single unit with appropriate electrical and optical connectors.” Pet. 6–7 (citing Ex. 1002, 347, 674, 676–77, 1022–23). For purposes of this Decision, we adopt Petitioner’s proposed construction of “optical transceiver,” which is consistent with the term’s use in the ’274 patent and its ordinary and customary meaning in the art. No other claim terms require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Next, we agree with Patent Owner that Petitioner provides insufficient evidentiary support for its conclusion that Brenner’s optical waveguide is prone to signal loss that makes Brenner’s system unreliable. See Prelim. Resp. 15. In asserting that optical waveguides subjected to bending and winding are prone to signal loss, Petitioner cites only dictionary definitions of “loss,” “curvature loss,” and “microbend loss” and the Declaration of Mr. Figh. Pet. 19–20, 36 (citing Ex. 1002, 196, 535–36, 546, 576; Ex. 1007 ¶ 44). Mr. Figh, in turn, relies solely on the same definitions from the same dictionary. Ex. 1007 ¶¶ 44, 66. Neither Petitioner nor Mr. Figh, however, shows what effect, if any, a curvature loss or microbend loss would have on the optical waveguide used in Brenner’s securing tether. See Pet. 19–21, 36–37; Ex. 1007 ¶¶ 44, 66. Furthermore, the Petition fails to explain adequately why a person of ordinary skill in the art would have recognized that a curvature loss or microbend loss in Brenner’s device would result in signal loss sufficient to adversely affect the reliability of communications between Brenner’s transceivers. See Pet. 21, 36–37 (citing Ex. 1007 ¶¶ 45, 67). Although Petitioner cites Mr. Figh’s Declaration for support, his testimony on this point is entitled to little or no weight because he does not identify any evidence in the record to support his conclusory statements, which are essentially the same as those in the Petition. See Ex. 1007 ¶¶ 45, 67; 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.”). have been motivated to improve the reliability of Brenner’s security device by eliminating the optical waveguide in the securing tether and moving the optical transceiver from the base unit to the proximal end of the securing tether to communicate directly with the transceiver in Brenner’s sensor unit. Pet. 37; see id. at 21–22. But without a sufficient showing in the Petition that a person of ordinary skill would have considered Brenner’s device as having reliability issues, there is no valid basis underlying Petitioner’s proposed motivation for modifying Brenner in view of the teachings of Vogt and Chapman. Thus, Petitioner fails to provide sufficient articulated reasoning with rational underpinning for modifying Brenner’s system as proposed and combining the teachings of the references in the manner asserted.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,818,274
• Apple Inc. v. Red.Com, LLCInstitution denied
  PTAB · Nov 7, 2019 · IPR2019-01064 · APJ J John Lee · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 1–29 were unpatentable as obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have authority to institute an inter partes review only if 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). Upon consideration of the Petition and the Preliminary Response, we conclude that Petitioner has not shown a reasonable likelihood of prevailing in its challenges to the ’299 Patent. Accordingly, the Petition is denied. A.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art at the relevant time would have had (1) “a Bachelor’s degree in Computer Science, Electrical Engineering, or equivalent training”; (2) “approximately three years of experience in designing and/or manufacturing video capture, processing, and display systems”; and (3) “experience in data compression.” Pet. 6. At this stage, Patent Owner does not dispute Petitioner’s contention or propose its own formulation of the relevant level of ordinary skill. For purposes of this Decision, we adopt Petitioner’s description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “We agree with Petitioner that the specification’s definition is critical to the proper construction of this term. Petitioner’s proposed construction, however, differs significantly from the definition provided in the specification. First, Petitioner’s construction refers to “sets of data” that are compared for visual similarity, but it does not reflect the specification’s requirement for comparison “side by side” specifically with “original (never compressed) image data.” See Ex. 1001, 9:55–60. Second, Petitioner’s construction makes no mention of the specification’s requirement that the comparison be made based on display “on the same display device.” See id. Third, Petitioner’s construction looks to whether the data sets are “substantially visually similar,” but does not explain how or why that benchmark differs from the specification’s requirement that a person of ordinary skill “would not be able to determine which image is the original with a reasonable degree of accuracy, based only on a visual inspection of the images.” See id. Although the claim term at issue is “substantially visually lossless” whereas the specification defines “visually lossless,” Petitioner does not indicate that they should be considered differently or explain its deviations from the specification’s definition. Nor do we discern any basis to deviate from that definition to the extent required to adopt Petitioner’s proposed construction. Thus, we determine Petitioner’s construction to be incomplete and insufficiently supported in light of the specification. See Phillips, 415 F.3d at 1315–16. Although Patent Owner does not dispute Petitioner’s construction at this time, Petitioner is required to present a full explanation of its position and how the relevant evidence and governing law support its proposed construction, as part of its overall burden to demonstrate a reasonable likelihood of prevailing. See 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(3). We determine the Petition did not adequately do so. Consequently, based on the available evidence and for purposes of this Decision, we construe “substantially visually lossless” as “substantially indistinguishable from the original (never compressed) image, to a reasonable degree of accuracy, when compared side by side on the same display device by a person of ordinary skill, based only on a visual inspection of the images,” consistent with the definition provided in the specification of the ’299 Patent. C.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “As Patent Owner notes, however, Mølgaard actually urges the use of near-lossless compression. Prelim. Resp. 70–71. For example, Mølgaard indicates that “[i]n the present invention, near-lossless compression is implemented using a gamma function to provide a compression that is visually lossless.” Ex. 1006, 2:62–64 (emphases added). In other words, Mølgaard teaches that using near-lossless techniques (rather than truly lossless techniques) is sufficient to produce “visually lossless” images. See id. Petitioner does not explain adequately why a skilled artisan nonetheless would have been motivated to combine Mølgaard with Chui for its truly lossless Huffman compression when Mølgaard teaches that its near-lossless technique was sufficient. See Pet. 42–43. Petitioner notes (Pet. 39) that Mølgaard states, “[t]he next stage in the algorithm is an optional lossy bit reduction stage used to adjust the compression ratio, the stage is bypassed if lossless compression is desired.” Ex. 1006, 10:32–34 (emphasis added). At most, however, this indicates that using lossless compression was known at the time of Mølgaard, which is undisputed. Mølgaard proceeds to describe how “[t]he use of a gamma-function [in the bit reduction stage] to implement a near-lossless data reduction yields a very high quality image” with image artifacts that are “simple quantization errors” that “can easily be removed,” which is “a huge advantage of the present invention.” Id. at 10:56–11:15; see also id. at 15:20–25 (“Using the near-lossless compression setting, a typical high-quality image will be compressed to 1/8th . . . . The image quality achieved is superior . . . as visual image artifacts are totally absent . . . .”). Petitioner does not address Mølgaard’s teachings regarding near-lossless compression at all; in fact, Petitioner appears to treat them as teachings of lossless compression. See Pet. 42–43. We are not persuaded Petitioner explained adequately why a person of ordinary skill, based primarily on the teachings of Mølgaard (as Petitioner urges), would have been motivated to replace its near-lossless technique with Chui’s lossless Huffman technique.7” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,230,299
• Kingston Technology Company, Inc. v. Memory Technologies, LLCInstitution denied
  PTAB · Jul 8, 2019 · IPR2019-00638 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–3, 5–7, 12–15, 19, or 25 were unpatentable on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “To institute an inter partes review, we must determine that the information presented in the Petition shows “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered all submissions of both parties, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1–3, 5–7, 12–15, 19, and 25. The Petition is denied, and no inter partes review is instituted.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “result in permanent write protection to result in permanent write protection—lacks sufficient clarity. It is unclear whether a single instance of permanent write protection is sufficient to meet the limitation, or whether all future executions of the redefined command must result in permanent write protection until another redefinition occurs. We determine that, in the context of the Specification of the ’370 patent, the redefinition, when accomplished, applies to all future executions of the command until it is redefined again. It is insufficient to meet the limitation if, after the redefinition, the redefined command still may function the way it used to function prior to the redefinition.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable

    “respect to the requirements of “to redefine the command to allow permanent write protection” as we have construed and discussed above. Nothing in Chevallier as identified by Petitioner indicates that setting the secure function bit to some value changes the meaning of the write protect command in the sense that it can no longer be used to provide temporary write protection, and can be used thereafter, until the next redefinition, solely to provide permanent write protection. The secure function bit of Chevallier, identified by Petitioner, serves only to enable the secure function (Ex. 1003 ¶¶ 37, 38, 40) and is nowhere described in Chevallier as changing the meaning of the locking command such that it no longer can be used to cause write protection of a memory block temporarily.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not found

    “ordinary skill in the art would have found ambiguity in Chevallier’s embodiment in which the same command is used both for “locking” and for “securing.” In that regard, Petitioner refers to “any” ambiguity. The same is true with respect to Dr. Baker, who testifies: “a person having ordinary skill in the art would have been particularly motivated to use the secure function bit in that circumstance because doing so would eliminate any ambiguity as to whether the command meant ‘lock’ or ‘secure.’” Ex. 1006 ¶¶ 259, 270, 276 (emphasis added). Also, neither Petitioner nor Dr. Baker in the cited paragraphs of his Declaration addresses the specific disclosure in Chevallier that implements using one command to cause “locking” and the same command to cause “securing.” Chevallier describes: “The secure command used in the present invention, in one embodiment, is also used for another function within the memory device. However, in such an embodiment, the command is written to a different register that is assigned to that particular function.” Ex. 1003 ¶ 18 (emphasis added). Thus, there is no “ambiguity” as to whether the command means “lock” or “secure” in any instance because Chevallier uses different registers to distinguish between them. We are not sufficiently persuaded that there is ambiguity in Chevallier’s disclosure to be resolved. Petitioner’s assertion of a motivation that lies in resolving an ambiguity is not sufficiently supported by the record. Petitioner also argues, assuming that there is ambiguity: “A POSA [person of ordinary skill in the art] would understand that Chevallier’s secure function bit, which enables and disables the secure function, could provide the beneficial specificity—if the secure function is not enabled, then the command results in the lock function; if the bit is enabled, then the command results in the secure function.” Pet. 42 (emphasis added). This argument also is not persuasive. The issue is not whether one with ordinary skill in the art “could” perform an operation but whether one with ordinary skill in the art, without application of improper hindsight, would have reason and want to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009). Here, whether one with ordinary skill in the art would want to do in Chevallier what Petitioner proposes is not sufficiently explained. Chevallier expressly states that the secure function it provides is an added feature relative to the locking function. Ex. 1003 ¶ 29. Thus, the two functions are concurrently supported in Chevallier, not mutually exclusively at any one time. The limitation “to redefine the command to allow permanent write protection” as we have construed it above, is contrary to Chevallier’s concept and implementation. Petitioner has not adequately explained why one with ordinary skill in the art would have wanted to modify Chevallier to eliminate concurrent support for both functions. For determining obviousness, the benefits, both lost and gained, in making a modification, should be weighed against each other. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1348 (Fed. Cir. 2000).” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,827,370
• Roland Corporation v. Inmusic Brands, Inc.Rehearing denied
  PTAB · Feb 21, 2019 · IPR2018-00396 · APJ Kamran Jivani · IPR · Rehearing

  The Board denied Roland Corporation’s rehearing request, leaving in place denial of institution on claims 1–21 because the petition did not sufficiently show anticipation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW 37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012) (emphasis added). 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” slip op. at 2

  • BurdenNot reached

    “02178, 2018 WL 3490804, at *1 (July 19, 2018) (citing 37 C.F.R. § 42.71(d)). Under our rules, the Petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). If the Petition does not demonstrate that there is a reasonable likelihood of success, then the Board shall not institute an inter partes review. See 37 C.F.R. § 42.108(c) (“Inter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.”). Because Petitioner failed to set forth its analysis of the claimed proportional relationship in the Petition, we are not persuaded that we erred in finding Petitioner’s analysis insufficient to show a reasonable likelihood of success on this anticipation challenge.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “is proportional to the position of the control shaft relative to the foot pedal control module.” Ex. 1001, 5:32–34, 6:4–6, 6:37–39 (emphasis added). We construed the term “proportional” as “requiring a constant relationship, such as, for example, a linear relationship.” Dec. 16. In so doing, we found that “the claims and Specification of the ’758 patent do not elaborate on [the] nature of the control signal generated by the foot pedal control module beyond describing one embodiment in which the signal is ‘proportional to the plunger 116 position to the drum synthesizer through the cables.’” Id. (citing Ex. 1001, 4:30–33). We further found that “[t]he prosecution history also does not explicitly define the term ‘proportional;’ however, the Examiner relies on the ‘position-proportional signal’ as a reason for allowance of the claims.” Id. (citing Ex. 1005, 6). Recognizing that “[a]lthough extrinsic evidence ‘is generally of less significance than the intrinsic record’ in matters of claim construction,” we turned to “certain extrinsic evidence [to] inform[] our construction in the absence of a more fulsome intrinsic record.” Id. at 16–17 (citing Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir. 2016)). In particular, we relied upon “a relevant technical dictionary, namely The Authoritative Dictionary of IEEE Standards Terms,” to “show the common understanding that usage of term ‘proportional’ when used to describe an electrical signal indicates the signal maintains a constant relationship, such as, for example, a linear relationship.” Id. at 17 (citing Ex. 3001, 690, 879–80). We also observed that the dictionary.com “definition Patent Owner proffers supports our construction of ‘proportional’ as requiring a constant relationship.” Id. (citing Ex. 2002). slip op. at 7

  • Strike new argumentNew argument disregardedDecided for patent owner

    “A Request for Rehearing is not an opportunity to present new arguments and evidence. 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.”). “Because we do not consider an argument made in a request for rehearing unless the request [specifically identif[ies] . . . the place where [that argument] was previously addressed in a motion, an opposition, or a reply,” we do not consider Petitioner’s newly presented information here. Commvault Sys., Inc. v. Realtime Data LLC, IPR2017- 02178, 2018 WL 3490804, at *1 (July 19, 2018) (citing 37 C.F.R. § 42.71(d)). Under our rules, the Petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). If the Petition does not demonstrate that there is a reasonable likelihood of success, then the Board shall not institute an inter partes review. See 37 C.F.R. § 42.108(c) (“Inter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.”). Because Petitioner failed to set forth its analysis of the claimed proportional relationship in the Petition, we are not persuaded that we erred in finding Petitioner’s analysis insufficient to show a reasonable likelihood of success on this anticipation challenge.” slip op. at 6

  Claim constructioncites Phillips
  Patents in suitUS 8,785,758
• Roland Corporation v. Inmusic Brands, Inc.Rehearing denied
  PTAB · Dec 20, 2018 · IPR2018-00335 · APJ Debra K Stephens · IPR · Rehearing

  The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended basis to show the claimed acoustic noise reducing cavity in the cited references or their combination.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS 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 in a motion, an opposition, or a reply” (37 C.F.R. § 42.71(d)). The party challenging a decision bears the burden of showing the decision should be modified (id.).” slip op. at 3

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates” (In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted)). “[A]nticipation by inherent disclosure is appropriate only when the [single prior art] reference discloses prior art that must necessarily include the unstated limitation.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (internal quotation marks and citations omitted). Rather, “[t]he inherent result must inevitably result from the disclosed steps....” In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012) slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “As set forth above, we were not persuaded by Petitioner’s arguments that Puschner anticipated an acoustic noise reducing cavity. Moreover, as we stated in our Decision, Petitioner did not “identify where Yoshino ’117, directed to an ‘electronic percussion instrument and vibration detection apparatus,’ teaches or suggests the claimed ‘acoustic noise reducing cavity’” (Dec. 21). Petitioner provided no cites to Yoshino ’117 to support its assertion that Yoshino ’117 teaches “an acoustic noise reducing cavity in an electronic drum” in either the Petition or the Declaration of Dr. Paradiso with respect to this asserted ground (Pet. 19–20; Ex. 1002 ¶ 74). We also determined Petitioner had not proffered persuasive argument as to why an ordinarily skilled artisan would have found it obvious to combined the teachings (Dec. 21). Rather, Petitioner merely proffered the conclusory statement that “it would have been obvious” because of “a desire to reduce acoustic sound . . .” (Pet. 19–20) –– i.e., it would have been obvious to have the recited feature. Moreover, we determined Petitioner had not “explained how the teachings of Puschner’s and Yoshino ’117’s different structures would have been combined to teach the invention,” as recited in claim 15 (Dec. 21). Petitioner has not identified any matter that the Board misapprehended or overlooked, or identified where each matter was previously addressed, in the relevant portions of the Petition or cited evidence. Petitioner did not fully address how the references taught the limitation or the reasons for combining the teachings.” slip op. at 6

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,424,827
• Cpi Card Group Inc. v. Gemalto S.A.Rehearing denied
  PTAB · Mar 14, 2017 · IPR2016-01092 · APJ Patrick M Boucher · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution for claims 6, 8–11, 15, and 16 over Griffin alone or with Matsumura.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Accordingly, we are not persuaded that we misapprehended or overlooked Petitioner’s arguments as to the construction of “means for decorrelating” under 35 U.S.C. § 112, ¶ 6, as it relates to the second and third structures. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Request for Rehearing is denied.” slip op. at 6

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable

    “The Board’s obligation at this stage is both well-defined and limited— to determine whether the Petition demonstrates “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). In the Institution Decision, we determined that the Petition did not meet that standard with respect to claims 6, 8–11, 15, or 16. Dec. 20–22. In requesting that we make specific findings with respect to its “alternative” claim-construction positions, Petitioner asks that we disregard unambiguous opinions of its own expert. Dr. Polish testifies that “a person of ordinary skill in the art would have also understood from the specification that this third structure that executes random secondary sequences does not perform the claimed function,” that the third structure “does not perform the function in a manner such ‘that the execution of the at least one instruction sequence is desynchronized with respect to the internal or external electrical signals,’” and that the specification “fails to disclose that the execution of the random secondary sequences causes the execution of any instructions ‘to be desynchronized with respect to the internal or external electrical signals.’” Ex. 1003 ¶ 56. We recognize that, like Petitioner, Dr. Polish addresses the possibility of a finding that “the ‘means for decorrelating’ includes this third structure for randomly executing secondary sequences.’” Id. ¶ 58–60. Nevertheless, after considering the full context of the arguments made in the Petition and the supporting testimony of Dr. Polish, we remain unpersuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges of claims 6, 8–11, 15, and 16 as unpatentable over Griffin alone or in combination with Matsumura.” slip op. at 5

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
  • BurdenNot shown unpatentable

    “The Board’s obligation at this stage is both well-defined and limited— to determine whether the Petition demonstrates “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). In the Institution Decision, we determined that the Petition did not meet that standard with respect to claims 6, 8–11, 15, or 16. Dec. 20–22. In requesting that we make specific findings with respect to its “alternative” claim-construction positions, Petitioner asks that we disregard unambiguous opinions of its own expert. Dr. Polish testifies that “a person of ordinary skill in the art would have also understood from the specification that this third structure that executes random secondary sequences does not perform the claimed function,” that the third structure “does not perform the function in a manner such ‘that the execution of the at least one instruction sequence is desynchronized with respect to the internal or external electrical signals,’” and that the specification “fails to disclose that the execution of the random secondary sequences causes the execution of any instructions ‘to be desynchronized with respect to the internal or external electrical signals.’” Ex. 1003 ¶ 56. We recognize that, like Petitioner, Dr. Polish addresses the possibility of a finding that “the ‘means for decorrelating’ includes this third structure for randomly executing secondary sequences.’” Id. ¶ 58–60. Nevertheless, after considering the full context of the arguments made in the Petition and the supporting testimony of Dr. Polish, we remain unpersuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges of claims 6, 8–11, 15, and 16 as unpatentable over Griffin alone or in combination with Matsumura.” slip op. at 5

  Claim construction
  Patents in suitUS 5,944,833
• Qiagen Inc. v. Oxford Immunotec Ltd.Institution denied
  PTAB · Feb 22, 2017 · IPR2016-01575 · APJ J John Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–9 unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have authority to institute an inter partes review only if 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; 37 C.F.R. §§ 42.4(a), 42.108. Upon consideration of the Petition and Preliminary Response, we determine that the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims. Accordingly, pursuant to § 314, we do not institute an inter partes review of the challenged claims of the ’821 Patent, and the Petition is denied. A.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “structurally related to the physical substrate holding the printed matter, may not be given patentable weight. In re DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015). “[A] limitation is printed matter only if it claims the content of information.” Id. If determined to claim printed matter, the limitation is nonetheless given patentable weight “if the claimed informational content has a functional or structural relation to the substrate.” Id. at 851. According to Petitioner, the “CD8+ epitope” limitation claims printed matter because it is merely the content of information, namely “the string of amino acids in a subfragment of ESAT-6 that includes the amino acids that constitute a CD8+ epitope.” Pet. 15. Petitioner likens the “CD8+ epitope” to an “instruction limitation” that merely “informs” about the epitope in ESAT-6. Id. (citing In re Kao, 639 F.3d 1057, 1072–73 (Fed. Cir. 2011)). We disagree. In Kao, the relevant limitation claimed “providing information” regarding a particular biological correlation, which the Federal Circuit concluded had no functional relationship to the following step of “providing” a particular drug treatment. Kao, 639 F.3d at 1072–73. Here, the relevant limitation is “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope.” The epitope is not “printed” onto a physical substrate (i.e., the peptide); it is part of the substrate—the epitope is a sequence of amino acids that is recognized by a CD8+ T cell, and those amino acids are part of the amino acids that make up the peptide itself. Moreover, the epitope does not merely inform someone of purely informational content. Rather, the epitope has a structural and functional relationship to the claims and to the substrate (i.e., the peptide subfragments). For example, claim 1 recites, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope” (emphasis added). The claim further recites, “measuring secretion of a cytokine from said T cells” to determine “whether said T cells are activated by said peptide subfragment.” The specification describes the activation of CD8+ T cells by peptide subfragments that are CD8+ epitopes. See Ex. 1001, 2:30–45. Thus, the CD8+ epitopes are involved in the activation of T cells, which yields immunogenicity (i.e., generation of an immune system response) in the form of cytokine secretion, which is measured as part of the claimed method. The CD8+ epitope limitation is more akin to the attribute data object (ADO) limitations in In re Lowry, 32 F.3d 1579, 1583–84 (Fed. Cir. 1994), where the recited ADOs were processed by a computer and affected how data was stored and organized in a memory. Thus, the CD8+ epitope limitation does not constitute printed matter with no patentable weight. See DiStefano, 808 F.3d at 851. B.” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Pet. 22–34. The Petition does not, however, demonstrate sufficiently that Brandt-1996 discloses, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope,” which is recited in both independent claims. Brandt-1996 discloses the results of a study in which murine (i.e., mouse) T cells were exposed to whole ESAT-6 protein, as well as nine subfragments of ESAT-6. Ex. 1010, 3528, Fig. 3. Whole ESAT-6 protein, as well as two of the subfragments, yielded a response from the T cells in the form of significant IFN-γ release. See id. at 3529–31, Figs. 2, 4. Petitioner argues that Brandt-1996 discloses exposing T cells to an immunogenic amount of a peptide subfragment of ESAT-6 because it reports a positive response (i.e., heightened IFN-γ release) to the “p1-20” peptide subfragment of ESAT-6 (also referred to as the “p1” peptide). Pet. 22–23 (citing Ex. 1010, 3531, Table 2). The Petition does not explain, however, why exposing the mice in Brandt-1996 to the “p1-20” peptide subfragment of ESAT-6 necessarily exposed the T cells to an immunogenic amount of peptide containing a CD8+ epitope. Petitioner’s assertion that a CD8+ epitope is not required by the claims is based on its arguments regarding printed matter, which are unpersuasive as discussed above. Alternatively, Petitioner argues that whole ESAT-6 protein contains CD8+ epitopes and, thus, the “ESAT-6 fragments disclosed in Brandt-1996 necessarily constitute ESAT-6 subfragments that contain a CD8+ epitope.” Pet. 23. Only two of the subfragments tested in Brandt-1996 were immunogenic, however, as required by the challenged claims. See Ex. 1010, Fig. 4 (showing responses to the “p1” (amino acids 1-20) and “p6” (amino acids 51-70) subfragments). Petitioner asserts that amino acids 15–29 and 61–82 correspond to murine CD8+ epitopes, but neither of them correspond to the immunogenic subfragments disclosed in Brandt-1996. See Pet. 23 (citing Ex. 1008, 3348 (“Bennekov-2006”)). Although Petitioner also asserts that ESAT-6 contains human and bovine CD8+ epitopes (id.), Brandt-1996 only tested mice and, thus, does not disclose immunogenicity for these epitopes specific to other species. Finally, Petitioner argues Brandt-1996 shows that whole ESAT-6 protein is immunogenic, which inherently discloses an immunogenic amount of subfragments containing CD8+ epitopes because ESAT-6 protein necessarily is processed into subfragments. Pet. 24. As Patent Owner argues, however, the record indicates that exposure to ESAT-6 protein does not necessarily produce a CD8+ response, particularly when a non-viral vector is used. See Prelim. Resp. 55–57. For example, Bennekov-2006 (cited by Petitioner as disclosing murine CD8+ epitopes) reports a response from CD8+ T cells of mice exposed to ESAT-6 protein via an adenovirus vector, but no significant CD8+ response when a liposome vector was used. See Ex. 1008, 3348, Fig. 2. It is undisputed that the Brandt-1996 study did not use a viral vector. Despite citing Bennekov-2006 to support its inherency arguments, Petitioner does not address or explain these aspects of Bennekov-2006, or their bearing on the disclosures of Brandt-1996. For the above reasons, Petitioner has not provided sufficient information showing that Brandt-1996 discloses, explicitly or inherently, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope,” as required by the challenged claims. Thus, Petitioner has not demonstrated a reasonable likelihood of prevailing as to anticipation by Brandt-1996. D.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “Finally, Petitioner argues Brandt-1996 shows that whole ESAT-6 protein is immunogenic, which inherently discloses an immunogenic amount of subfragments containing CD8+ epitopes because ESAT-6 protein necessarily is processed into subfragments. Pet. 24. As Patent Owner argues, however, the record indicates that exposure to ESAT-6 protein does not necessarily produce a CD8+ response, particularly when a non-viral vector is used. See Prelim. Resp. 55–57. For example, Bennekov-2006 (cited by Petitioner as disclosing murine CD8+ epitopes) reports a response from CD8+ T cells of mice exposed to ESAT-6 protein via an adenovirus vector, but no significant CD8+ response when a liposome vector was used. See Ex. 1008, 3348, Fig. 2. It is undisputed that the Brandt-1996 study did not use a viral vector. Despite citing Bennekov-2006 to support its inherency arguments, Petitioner does not address or explain these aspects of Bennekov-2006, or their bearing on the disclosures of Brandt-1996. For the above reasons, Petitioner has not provided sufficient information showing that Brandt-1996 discloses, explicitly or inherently, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope,” as required by the challenged claims. Thus, Petitioner has not demonstrated a reasonable likelihood of prevailing as to anticipation by Brandt-1996. D.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,617,821
• Qiagen Inc. v. Oxford Immunotec Ltd.Institution denied
  PTAB · Feb 14, 2017 · IPR2016-01543 · APJ J John Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–20 unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have authority to institute an inter partes review only if 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; 37 C.F.R. §§ 42.4(a), 42.108. Upon consideration of the Petition and Preliminary Response, we determine that the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims. Accordingly, pursuant to § 314, we do not institute an inter partes review of the challenged claims of the ’902 Patent, and the Petition is denied.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “of PPD with peptides, Vordermeier undermines Petitioner’s asserted reasoning to combine the asserted references. Although Vordermeier suggests replacing PPD with “recombinant proteins or synthetic peptides,” only proteins or peptides that are “specific and sensitive” are recommended. Ex. 1015, 663s. In addressing “peptide-based reagents” in particular, Vordermeier describes as “encouraging” only mycobacterial epitopes that “are recognized in a genetically permissive way.” Id. As Patent Owner notes (Prelim. Resp. 42–43), Vordermeier distinguishes “permissive” recognition from “restricted” recognition—“restricted” recognition is defined as “recognized . . . in the context of only one or two MHC class II alleles,” whereas “permissive” recognition exhibits broader recognition (i.e., with respect to more than two MHC genetic types). See Ex. 1015, 658s. Thus, Vordermeier supplies a reason to combine diagnostic assays with permissively-recognized proteins and peptides, but not those exhibiting only restricted recognition. Based on Vordermeier, both of the ESAT-6 peptides that yielded recognition responses in Brandt, including the “p1” peptide, appear to demonstrate restricted recognition—i.e., a recognition response was elicited in only two MHC haplotypes. See Ex. 1010, 3531, Fig. 4. Thus, to the extent an artisan would have been motivated to replace the ESAT-6 protein in the Pollock assay with an ESAT-6 peptide, Vordermeier does not support Petitioner’s reasoning that the artisan would have selected the peptides identified in Brandt. Although Dr. Ernst concluded in his declaration that a skilled artisan would have been motivated to combine Pollock’s assay with the “p1-15” peptide from Brandt, he does not address Vordermeier’s distinction between permissive and restricted epitopes, or whether the peptides in Brandt were permissive or restricted. See Ex. 1004 ¶¶ 57–58.” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “recognition responses in Brandt, including the “p1” peptide, appear to demonstrate restricted recognition—i.e., a recognition response was elicited in only two MHC haplotypes. See Ex. 1010, 3531, Fig. 4. Thus, to the extent an artisan would have been motivated to replace the ESAT-6 protein in the Pollock assay with an ESAT-6 peptide, Vordermeier does not support Petitioner’s reasoning that the artisan would have selected the peptides identified in Brandt. Although Dr. Ernst concluded in his declaration that a skilled artisan would have been motivated to combine Pollock’s assay with the “p1-15” peptide from Brandt, he does not address Vordermeier’s distinction between permissive and restricted epitopes, or whether the peptides in Brandt were permissive or restricted. See Ex. 1004 ¶¶ 57–58. Finally, the sole support for Petitioner’s assertion that peptides offer the advantages of “lower production costs, easier standardization, and lack of any risk of infection or immunotoxicity” is Dr. Ernst’s testimony. Pet. 29. His testimony on this point, however, is conclusory and does not present any supporting facts or data. Ex. 1004 ¶ 58. Thus, this testimony is entitled to little or no weight. See 37 C.F.R. § 42.65(a).” slip op. at 10

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,005,902
• Microsoft Corp. v. Windy City Innovations LLCInstitution denied
  PTAB · Nov 29, 2016 · IPR2016-01138 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 18–49, 54–57, and 59–63 would have been obvious over Brown and Tang.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “alternatives” to allow members in “at least one group . . . [to] send communications and receive communications . . . wherein at least some of the communications are received in real time via the Internet network.” See, e.g., Ex. 1001, 23:59–67 (emphases added). Here, “wherein at least some of the communications are received in real time” refers to the communications sent and received by members of “at least one group.” Claim 1 is clear that both client software alternatives must “allow at least some of the participator computers to form at least one group in which members can send communications and receive communications.” Thus, the communications in a group pursuant to each of the client software alternatives must include real-time communications.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable

    “alternatives” to allow members in “at least one group . . . [to] send communications and receive communications . . . wherein at least some of the communications are received in real time via the Internet network.” See, e.g., Ex. 1001, 23:59–67 (emphases added). Here, “wherein at least some of the communications are received in real time” refers to the communications sent and received by members of “at least one group.” Claim 1 is clear that both client software alternatives must “allow at least some of the participator computers to form at least one group in which members can send communications and receive communications.” Thus, the communications in a group pursuant to each of the client software alternatives must include real-time communications.” slip op. at 9

  § 103 obviousness
  Patents in suitUS 8,473,552

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.