- Apple Inc. v. Contentguard Holdings, LLCInstitution deniedPTAB · Jul 10, 2015 · IPR2015-00446 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 1–18 were obvious over ABYSS and Denning, with or without Hartrick.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“C. Procedural Defects As a threshold matter, the Petition has several significant procedural defects. For instance, a petition for inter partes review must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review “must identify . . . [h]ow the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Rule 42.104(b)(5) requires a petition to “identify[] specific portions of the evidence that support the challenge.” Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus 12 on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). We agree with the Patent Owner that the Petition fails to satisfy at least the rule requirements. See Prelim. Resp. 4–10. The Petition contains vague, nested string citations to broad swaths of the references, the Sherman Declaration, and internal cross-references to whole sections of the Petition. See, e.g., Pet. 48–49 (discussing the preamble of claim 1, and citing inter alia, “[Pet.] § IV.A.1, A.3; Ex. 1016 at 38–40, 43–45; Ex. 1013 at ¶ C18–22 and “Ex. 1016 at 38–40, 42, 49, 50; [Pet.] § IV.A.3–4; Ex. 1013 at ¶ C106– 26”).” slip op. at 12
- BurdenDenied
“defects. For instance, a petition for inter partes review must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review “must identify . . . [h]ow the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Rule 42.104(b)(5) requires a petition to “identify[] specific portions of the evidence that support the challenge.” Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus 12 on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). We agree with the Patent Owner that the Petition fails to satisfy at least the rule requirements. See Prelim. Resp. 4–10. The Petition contains vague, nested string citations to broad swaths of the references, the Sherman Declaration, and internal cross-references to whole sections of the Petition. See, e.g., Pet. 48–49 (discussing the preamble of claim 1, and citing inter alia, “[Pet.] § IV.A.1, A.3; Ex. 1016 at 38–40, 43–45; Ex. 1013 at ¶ C18–22 and “Ex. 1016 at 38–40, 42, 49, 50; [Pet.] § IV.A.3–4; Ex. 1013 at ¶ C106– 26”).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“1. Insufficient Information for Graham Analysis A patent claim is unpatentable as obvious under 35 U.S.C. § 103(a) if “the differences between” the claimed subject matter and the prior art “are such that the subject matter, as a whole, would have been obvious at the time 17 the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).3 The legal conclusion of obviousness is resolved on the basis of underlying factual determinations, including (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). These underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). As Patent Owner points out, the Petition fails to identify sufficiently the differences between any claim of the ’956 patent and the asserted prior art references, ABYSS, Denning, and Hartrick. See Prelim. Resp. 6–7, 42–44; Pet. 22–60. Rather than address these differences, the Petition creates a hypothetical ABYSS-Denning system—based on how a person of ordinary skill in the art allegedly “would” or “could” do––in an “Operation of the Implemented System” analysis divorced from the language of the ’956 patent claims. See Pet. 39–42 (emphasis omitted). The Petition then argues, 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), revised 35 U.S.C. § 103, effective March 16, 2013. Because the ’956 patent was filed before March 16, 2013, references and citations to § 103 in this Decision are to the pre-AIA version. 18 in conclusory fashion, that this hypothetical system meets each of the limitations of the claims. See id. at 48–60. This analysis—which compares the challenged claims to a hypothetical integrated system that allegedly implements elements of both ABYSS and Denning as well as the knowledge of one of ordinary skill in the art—obscures any comparison of the individual prior art references to the claim limitations. It does not explain with any particularity which claim limitations are absent from ABYSS or Denning. See Prelim. Resp. 6–7, 42–44. Therefore, the Petition fails to provide sufficient information regarding its proffered ground of unpatentability, and fails to present a proper Graham analysis as required to show that the challenged claims are unpatentable. Accordingly, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that the challenged claims would have been obvious over ABYSS and Denning. See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB May 28, 2015) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . .” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“2. Lack of Rationale to Combine and Improper Hindsight “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The reason for this is that “[w]hile the Supreme Court made clear that a mechanical application of the teaching-suggestion-motivation test, requiring an explicit teaching in the prior art, is inappropriate, ‘[w]e must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.’” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008)); see also KSR , 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against slipping into use of hindsight’” (citation omitted)). Thus, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to 20 achieve the result of the claims in suit.’” Grain Processing Corp. v. Am. Maize–Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). As discussed above, Petitioner reads the claims onto a proposed hypothetical ABYSS-Denning system. See Pet. 38–60. Although Petitioner frames the hypothetical ABYSS-Denning system as created by four main modifications, each of these modifications includes what appear to be additional modifications about what the hypothetical system “could” do, which neither reference discloses, and which the Petition does not support with sufficient reasoning or citation. See Pet. 36–39 (modifications); see, e.g., Pet. 40–41 (reasoning that a “vendor could restrict distribution to processors that had a digital certificate issued by a particular authority,” and “[t]he vendor also could specify as a condition” further changes) (citing Pet. “§ IV.D.1; Ex. 1013 at ¶ C83–89, C113”). Considering the proposed changes together, which are devoid of a clear reference to claim limitations, the Petition lacks adequate reasoning, with rational underpinning, to show sufficiently that a person of ordinary skill would have combined the teachings of ABYSS and Denning to reach the hypothetical ABYSS- Denning system and render the claims obvious. In other words, the Petition fails to explain sufficiently why a person of ordinary skill would simultaneously make all of the particular proposed changes and implementation choices. Moreover, the mere fact that individual changes might have been obvious does not make doing all of the changes at once 21 obvious. See In re Irani, 427 F.2d 806, 809 (CCPA 1970) (“Obviousness, however, must not be judged by hindsight, and a ‘little modification’ can be a most unobvious one.”). The extent of the proposed modifications and the thin reasoning proffered for each modification suggests that the Petition improperly uses Patent Owner’s claims as a guide in constructing a system loosely based on ABYSS and Denning. See Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1355 (Fed. Cir. 2013) (“Where, as here, the necessary reasoning is absent, we cannot simply assume that ‘an ordinary artisan would be awakened to modify prior art in such a way as to lead to an obviousness rejection.’ It is in such circumstances, moreover, that it is especially important to guard against the dangers of hindsight bias.” (citation omitted)); see also W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983) (“The result is that the claims were used as a frame, and individual, naked parts of separate prior art references were employed as a mosaic to recreate a facsimile of the claimed invention. At no point did the district court, nor does Garlock, explain why that mosaic would have been obvious to one skilled in the art . . . .”). The Petition’s analysis, infected with impermissible hindsight, cannot form the basis of a proper obviousness finding. See KSR , 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to 22 read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against slipping into use of hindsight’” (citation omitted)).” slip op. at 20
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,370,956 - Apple Inc. v. Contentguard Holdings, LLCInstitution deniedPTAB · Jul 10, 2015 · IPR2015-00448 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–18 would have been obvious over Rosen and Hartrick.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“1. Insufficient Information for Graham Analysis A patent claim is unpatentable as obvious under 35 U.S.C. § 103(a) if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Resolving the legal conclusion of obviousness requires resolving the following underlying factual determinations: (1) “the 16 scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). In other words, these underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). As Patent Owner contends, the Petition fails to identify sufficiently the differences between any claim of the ’956 patent and the asserted prior art references, Rosen and Hartrick. See Prelim. Resp. 6–7, 42; Pet. 22–60. Rather than addressing these differences, the Petition creates a hypothetical Rosen-Hartrick system—based on how a person of ordinary skill in the art allegedly “would” or “could” combine the two references to create an integrated system—in an analysis largely divorced from specific claim limitations. See Pet. 38–44. The Petition then argues, in conclusory fashion, that this hypothetical system “would” meet each of the limitations of the claims. See id. at 50–60. This analysis—which compares the challenged claims to a hypothetical integrated system that allegedly implements aspects of Rosen and Hartrick and the knowledge of one of ordinary skill in the art––obscures a meaningful comparison of the claim limitations to the individual prior art references. As Patent Owner contends, the analysis fails to explain with requisite particularity which claim limitations are absent from Rosen or Hartrick. See Prelim. Resp. 6–7, 42. Therefore, the Petition 17 fails to provide sufficient information regarding its proffered ground of unpatentability. Accordingly, for the reasons discussed above, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that the challenged claims would have been obvious over Rosen and Hartrick. See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB May 28, 2015) (Paper 11) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . . . risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.”).” slip op. at 16
- BurdenInstitution denied
“procedural defects. A petition for inter partes review must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review “must identify . . . [h]ow the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Rule 42.104(b)(5) adds that the Petition 11 must “identify[] specific portions of the evidence that support the challenge.” Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). We agree with the Patent Owner that the Petition fails to satisfy at least these rule requirements. See Prelim. Resp. 4–10. The Petition comprises vague, nested string citations to broad swaths of the references, the Sherman Declaration, and internal cross-references to whole sections of the Petition. See, e.g., Pet. 50–51 (discussing the preamble of claim 1, and citing inter alia, Pet. §§ IV.A.1–3, A.5, B3; Ex. 1013 ¶¶ E20, E53–E65, E117, E118, E142, E194). Without counting internal cross-citations within the cited sections of the Petition and Sherman Declaration, this citation to the Petition spans 11 pages of the Petition and 18 paragraphs of the Sherman Declaration.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Resolving the legal conclusion of obviousness requires resolving the following underlying factual determinations: (1) “the 16 scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). In other words, these underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). As Patent Owner contends, the Petition fails to identify sufficiently the differences between any claim of the ’956 patent and the asserted prior art references, Rosen and Hartrick. See Prelim. Resp. 6–7, 42; Pet. 22–60. Rather than addressing these differences, the Petition creates a hypothetical Rosen-Hartrick system—based on how a person of ordinary skill in the art allegedly “would” or “could” combine the two references to create an integrated system—in an analysis largely divorced from specific claim limitations. See Pet. 38–44. The Petition then argues, in conclusory fashion, that this hypothetical system “would” meet each of the limitations of the claims. See id. at 50–60. This analysis—which compares the challenged claims to a hypothetical integrated system that allegedly implements aspects of Rosen and Hartrick and the knowledge of one of ordinary skill in the art––obscures a meaningful comparison of the claim limitations to the individual prior art references. As Patent Owner contends, the analysis fails to explain with requisite particularity which claim limitations are absent from Rosen or Hartrick. See Prelim. Resp. 6–7, 42. Therefore, the Petition 17 fails to provide sufficient information regarding its proffered ground of unpatentability. Accordingly, for the reasons discussed above, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that the challenged claims would have been obvious over Rosen and Hartrick. See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB May 28, 2015) (Paper 11) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . . . risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.”). slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The reason for this is that [w]hile the Supreme Court made clear that a mechanical application of the teaching-suggestion-motivation test, 18 requiring an explicit teaching in the prior art, is inappropriate, “[w]e must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008)); see also KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against slipping into use of hindsight’” (citation omitted)). Thus, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. Am.–Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). As discussed above, Petitioner reads the claims onto a hypothetical Rosen-Hartrick implementation. See Pet. 38–60. Petitioner appears to suggest making four changes to Rosen’s system to achieve this hypothetical implementation. See id. at 38–44 (generally discussing “First,” “Second,” “Third,” and “Finally” modifications). The Petition characterizes the third modification as being “an inconsequential variation” of the disclosed 19 process. Id. at 43. Specifically, the Petition states that “a person of skill would have adjusted Rosen’s cryptographic protocols to accommodate any particular implementation that was desired.” However, the Petition does not set forth a sufficient reason why a person of skill would have “desired” (or implemented) the modification proposed—i.e., configuring Rosen’s “purchase protocol such that the MTA initiated the Establish Session protocol by sending the CTA its digital certificate.” Id. (citing Ex. 1013 ¶¶ E122, E123 (largely restating, word for word, the statements of the brief)). Moreover, although Petitioner frames the hypothetical Rosen-Hartrick scheme as created by four primary modifications, these primary modifications include additional modifications unsupported by sufficient rationale. For example, in the first modification Petitioner proposes, i.e., storing security and royalty markup statements of Hartrick in the “Usage” field of Rosen (Pet. 39), Petitioner asserts that a person of ordinary skill also “would have considered it an obvious implementation choice to have the security tags [of Hartrick] . . . grant affirmative rights—e.g., a ‘Display’ tag (instead of ‘Do Not Copy’), or a ‘Print’ tag and ‘Display’ tag (instead of ‘Do Not Distribute’)” (Pet. 40). Further, according to the Petition, a person of ordinary skill would have recognized that Hartrick could be applied beyond the context of softcopy books, and “[the person would simply] modify the tags accordingly to reflect the actions associated with other types of content.” Id. at 41. Beyond explaining that each of these many changes to Hartrick (made in the process of modifying Rosen) would be a routine 20 change, Petitioner does not provide an adequate rationale as to why a person of ordinary skill would actually make the myriad group of changes.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,370,956 - Apple Inc. v. Contentguard Holdings, Inc.Institution deniedPTAB · Jul 10, 2015 · IPR2015-00447 · APJ Karl D Easthom · IPR · Institution
Institution was denied for claims 1–18 because the Petition did not show a reasonable likelihood of prevailing on either obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“of claims 1–18 of U.S. Patent No. 8,370,956 B2 (“the ’956 patent,” Ex. 1005). Paper 1 (“Pet.”). Patent Owner, ContentGuard Holdings Inc., responded with a Preliminary Response. Paper 8 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Id. at § 314(a). For the reasons set forth below, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 1–18 of the ’956 patent. Accordingly, we deny institution of inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“According to the ’956 patent, “[i]dentification certificates are the means by which a repository is identified as ‘trustworthy.’” Ex. 1005, 7:44– 46. As discussed above, the Specification states that the “identification certificate . . . attests to the fact that the repository . . . is a bona fide repository.” Id. at 26:57–60. Therefore, on this record, we construe “determined to be trusted” to mean “using an identification or digital certificate to attest to the fact that a recipient is a trusted device.”” slip op. at 9
- BurdenDenied
“be considered only if . . . the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” (Emphases added). Additional Board rules further address the showing required in a petition. In particular, 37 C.F.R. § 42.104(b)(4) provides that “[t]he petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon” (emphasis added), and 37 C.F.R. § 42.104(b)(5) adds that the Petition must “identify[] specific portions of the evidence that support the challenge” (emphasis added). Similarly, 37 C.F.R. § 42.22(a)(2) states that a petition “must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.” (Emphases added). For the reasons discussed below and as Patent Owner contends, the Petition fails to comply with at least these rule requirements in addressing the asserted grounds. See Prelim. Resp. 4–10.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“§ 103(a) if “the differences between” the claimed subject matter and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The legal conclusion of obviousness is resolved on the basis of the following underlying factual determinations: (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). These underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). As Patent Owner contends, the Petition fails to identify sufficiently the differences between any claim of the ’956 patent and the asserted prior art references, Kahn and Linn. See Pet. 22–57; Prelim. Resp. 6–7, 42–43. Rather than address these differences, the Petition creates a hypothetical Kahn-Linn system—based on how a person of ordinary skill in the art allegedly “would” or “could” combine the two references into an integrated system. See, e.g., Pet. 39 (“could have configured the Kahn repository servers”), id. at 40 (“could have readily integrated”), id. at 41 (“could have readily integrated”); see generally id. at 35–41 (§ IV.C., use of “could” and “would”). The Petition then argues, in conclusory fashion, that this hypothetical system “would” meet each of the limitations of the claims. See id. at 52 (“In a combined Kahn/Linn system, end-users would use rendering software to render content. Ex. 1013 at ¶ D101–04.”); see generally id. at 49–57 (§ IV.E., similar conclusory statements). This analysis—which compares the challenged claims, without clear references to particular claim terms, to a hypothetical integrated system that allegedly implements elements of both Kahn and Linn as well as the knowledge of one of ordinary skill in the art—obscures a meaningful comparison of the individual prior art references to the claim limitations. The analysis does not explain with requisite particularity which claim limitations are absent from Kahn or Linn. See Prelim. Resp. 6, 42. Therefore, the Petition fails to perform an adequate Graham analysis. Accordingly, for these additional reasons, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that claims 1–18 of the ’956 patent would have been obvious over Kahn and Linn. See Apple Inc. v. SmartFlash LLC, Case CBM2015- 00029, slip op. at 16–18 (PTAB May 28, 2015) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . . . risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.”).” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,370,956 - Apple, Inc. v. Contentguard Holdings, Inc.Institution deniedPTAB · Jul 2, 2015 · IPR2015-00358 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim obvious over Ginter alone or Ginter and Wiggins.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition also lacks an articulated or apparent reason supported by “some rationale underpinning” to modify/combine the purportedly known elements into the fashion claimed by the ’053 patent. See KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Instead, and as demonstrated in the block quote above, Petitioner leaves it to the Board to ascertain what gaps to fill, stating that “possible distinctions between Ginter and the contested ’053 claims, even if found to exist, would not render [the challenged] claims patentable.” Pet. 44.5 Contrary to Petitioner’s implication, however, Patent Owner need not present a showing to “render” its claims patentable. The burden is on Petitioner to show unpatentability. 35 U.S.C. § 42.20(c). Petitioner’s vague statements regarding what the prior art suggests, referring to “a range of possible implementations,” “obvious variations,” and “obvious design or implementation choices” does not satisfy its burden. Pet. 43–44. Petitioner’s blanket citation to over one hundred paragraphs of Dr. Prakash’s declaration to support its assertion that “the core techniques and functionalities of the ’053 claimed processes and systems were well-known to persons of ordinary skill in the art before 2001,” and that a “person of ordinary skill could readily implement systems for distributing digital” slip op. at 9
- BurdenDenied
“The Petition also lacks an articulated or apparent reason supported by “some rationale underpinning” to modify/combine the purportedly known elements into the fashion claimed by the ’053 patent. See KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Instead, and as demonstrated in the block quote above, Petitioner leaves it to the Board to ascertain what gaps to fill, stating that “possible distinctions between Ginter and the contested ’053 claims, even if found to exist, would not render [the challenged] claims patentable.” Pet. 44.5 Contrary to Petitioner’s implication, however, Patent Owner need not present a showing to “render” its claims patentable. The burden is on Petitioner to show unpatentability. 35 U.S.C. § 42.20(c). Petitioner’s vague statements regarding what the prior art suggests, referring to “a range of possible implementations,” “obvious variations,” and “obvious design or implementation choices” does not satisfy its burden. Pet. 43–44. Petitioner’s blanket citation to over one hundred paragraphs of Dr. Prakash’s declaration to support its assertion that “the core techniques and functionalities of the ’053 claimed processes and systems were well-known to persons of ordinary skill in the art before 2001,” and that a “person of ordinary skill could readily implement systems for distributing digital” slip op. at 9
- Strike new argumentOther
“Petitioner’s vague statements regarding what the prior art suggests, referring to “a range of possible implementations,” “obvious variations,” and “obvious design or implementation choices” does not satisfy its burden. Pet. 43–44. Petitioner’s blanket citation to over one hundred paragraphs of Dr. Prakash’s declaration to support its assertion that “the core techniques and functionalities of the ’053 claimed processes and systems were well-known to persons of ordinary skill in the art before 2001,” and that a “person of ordinary skill could readily implement systems for distributing digital 5 The Petition does not identify the differences between Ginter and the claimed inventions. Yet, the Petition also does not show that there are no differences. The Petition fails to show, let alone assert, anticipation at least because the Petition does not show that Ginter discloses all the limitations of the challenged claims, as arranged in the challenged claims. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (holding that an anticipatory reference must show all limitations arranged or combined in the same way as recited in the claims). content using these design elements based on the guidance in Ginter and routine programming skills” also does not satisfy its burden. (Pet. 44 (citing Ex. 1003 ¶¶ 129–154, 156–185, 188–231, and 819–824)). Board rules require an identification of “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). Board rules also prohibit incorporation by reference, such as incorporating over one hundred paragraphs6 of a declaration into a petition. 37 C.F.R. § 42.6(a)(3). It is unreasonable to expect the Board to sort through this huge swath of declaration testimony.7” slip op. at 9
Nonecites KSR · GrahamPatents in suitUS 8,001,053 - Apple, Inc. v. Contentguard Holdings, Inc.Institution deniedPTAB · Jun 29, 2015 · IPR2015-00357 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“There is not a reasonable likelihood that Petitioner would prevail in showing the subject matter of any of the challenged claims is obvious over any of the grounds identified in the Petition. First, the Petition does not identify sufficiently the differences between the claimed invention and the prior art, or how the prior art teachings are to be modified or combined, if at all. Pet. 43–58; see Graham, 383 U.S. at 17–18 (obviousness inquiry is based on factual inquiries including the difference between the claimed invention and the prior art). Indeed, it is difficult to understand the” slip op. at 7
- BurdenDenied
“First, the Petition does not identify sufficiently the differences between the claimed invention and the prior art, or how the prior art teachings are to be modified or combined, if at all. Pet. 43–58; see Graham, 383 U.S. at 17–18 (obviousness inquiry is based on factual inquiries including the difference between the claimed invention and the prior art). Indeed, it is difficult to understand the” slip op. at 7
Nonecites KSR · GrahamPatents in suitUS 8,001,053 - Mastercard International Incorporated v. John D’AgostinoInstitution deniedPTAB · Mar 7, 2014 · CBM2013-00058 · APJ Kalyan K Deshpande · CBM · Institution
The Board denied institution on claims 1-30 because Cohen and Flitcroft did not qualify as prior art for a covered business method review under AIA § 18(a)(1)(C).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“THRESHOLD—The Director may not authorize a post-grant review to be instituted unless the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable. Petitioner challenges the patentability of claims 1-30 of the ’486 patent under 35 U.S.C. §§ 102 and 103. Taking into account Patent Owner’s preliminary response, we determine that the information presented in the petition does not demonstrate that it is more likely than not that the challenged claims are unpatentable. Pursuant to 35 U.S.C. § 324(a), we deny the institution of a covered business method patent review as to claims 1-30 of the ’486 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“neither Cohen nor Flitcroft was published prior to the effective filing date of the ’486 patent. As such, we agree with Petitioner that both Cohen and Flitcroft only qualify as § 102(e) references. Accordingly, neither Cohen nor Flitcroft qualifies as prior art, for a covered business methods review, under Section 18(a)(1)(C) of the AIA. Petitioner does not direct us to any further evidence to demonstrate that Cohen and Flitcroft qualify as prior art under Section 18(a)(1)(C) of the AIA. Instead, Petitioner argues that the Board previously has instituted a covered business method patent review on the basis of a reference that qualifies under § 102 (e). Pet. 15, n. 6 (citing CBM2013-00008, paper 20, 20-21, 35). Nonetheless, Section 18 (a)(1)(C) of the AIA governs what qualifies as prior art in this proceeding, and in that earlier Board proceeding the Board issued a clarifying order, effectively amending the decision to institute and withdrawing the previously instituted ground based on the § 102(e) reference, reasoning that the reference does not qualify as prior art in CBM proceedings under Section 18(a)(1)(C) of the AIA. See CBM2013- 00008, paper 24, 2-3. Because Petitioner has not demonstrated that Cohen or Flitcroft qualifies as prior art under Section 18(a)(1)(C) of the AIA, we are not persuaded that Petitioner demonstrates that it is more likely than not that claims 1-15 and 22-30 are unpatentable as being anticipated by Cohen or Flitcroft. We similarly are not persuaded that Petitioner demonstrates that it is more likely than not that claims 16-21 are unpatentable as being obvious over Cohen or Flitcroft, and Musmanno.” slip op. at 9
§ 102 anticipationPatents in suitUS 7,840,486
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.