• Leggett & Platt, Inc. v. Dreamwell, Ltd.Institution denied
  PTAB · Feb 22, 2016 · IPR2015-01757 · APJ Meredith C Petravick · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on claims 1–9 under the asserted obviousness ground.

  RulingsInstitution decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “II. ANALYSIS A. Claim Construction In an inter partes review, the Board interprets claim terms in an unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as they would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes a construction for “high-carbon steel.” Pet. 21. We, however, determine that an explicit construction of “high-carbon steel” or any other claim term is not necessary for the purposes of our Decision.” slip op. at 4

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

    “Absent other evidence or another articulated rationale with logical underpinning, combining Gladney, Kochi, and Magrab to arrive at the a spring for a cushioning article made from the specifically claimed alloy of high-carbon steel appears to be improper hindsight. “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.” See KSR, 550 U.S. at 421. Petitioner fails to establish a sufficient articulated reasoning with some rational underpinning to support the legal conclusion of obviousness (In re Kahn, 441 F.3d at 988) and, thus, fails to demonstrate a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. iii. Dependent Claims 2–9 Claims 2–9 depend from claim 1, and, like for claim 1, Petitioner contends that claims 2–9 are unpatentable over Gladney, Kochi, and Magrab (Pet. 40–47). For the same reasons as discussed above, we determine that Petitioner fails to demonstrate a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 12

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

    “The evidence of record does not establish sufficiently that the prior art alloyed high-carbon steel is an inexpensive material suitable for springs of a mattress or other cushioning article. Gladney’s general disclosure that springs made from high-carbon spring steels are inexpensive (see Ex. 1003, 5:1–3), fails to establish sufficiently that the prior art alloyed high-carbon steel is inexpensive or suitable for springs of a mattress or cushioning article. Likewise, Magrab’s general disclosures that high-carbon steel is inexpensive and used for springs (see Ex. 1005, 155, 161–162) and Kochi’s brief mention of “spring steel” (Ex. 1004 ¶ 1) does not demonstrate such. Dr. O’Malley’s testimony also does not cure the deficiencies of the prior art because Dr. O’Malley discusses cost with regards to carbon steel generally, but not the cost of the prior art alloyed high-carbon steel. See Ex. 1002 ¶¶ 68, 85. We also acknowledge that Gladney and Magrab disclose that the cost of materials is a factor to be considered when choosing an alloy. Pet. 38 (citing Ex. 1003, 1005). Such disclosure, however, does not demonstrate that claim 1 would have been obvious based on Gladney, Kochi, and Magrab. And Petitioner’s reliance on Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006) does not persuade us otherwise. In Dystar, decided prior to KSR, the Federal Circuit emphasized a flexible approach to considering whether an invention would have been obvious. DyStar, 464 F.3d at 1367 (“It is difficult to see how our suggestion test could be seen as rigid and categorical given the myriad cases over several decades in which panels of this court have applied the suggestion test flexibly.”). As noted by the Court, “[o]bviousness is a complicated subject requiring sophisticated analysis, and no single case lays out all facets of the legal test.” Id. Moreover, as discussed above, there is no persuasive evidence that the alloyed high-carbon steel spring recited in the claim is less expensive or more efficient than prior art springs. See Prelim. Resp. 17 (pointing out there is no “list of materials costs or any manufacturing cost analysis that would substantiate Petitioner’s statement in the context of combining Gladney with Kochi with Magrab to allegedly come up with the claimed invention.”). The evidence of record fails to demonstrate, sufficiently, that the prior art alloyed high-carbon steel is an inexpensive material suitable for a spring for a mattress or cushioning articles and, thus, Petitioner fails to establish that one of ordinary skill in the art would make the proposed modification because the alloyed high-carbon steel required by claim 1 is a well-known inexpensive material that is suitable for springs.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached

    “C. Availability of Magrab as Prior Art Patent Owner argues that Petitioner fails to establish that Magrab was publically accessible prior to April 18, 2008. Prelim. Resp. 34–36. As discussed above, we determine that Petitioner fails to demonstrate that claims 1–9 are unpatentable over Gladney, Kochi, and Magrab and, thus, we need not address whether Petitioner has established sufficiently that Magrab is prior art for the purposes of our Decision.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,919,752
• Leggett & Platt, Inc. v. Dreamwell, Ltd.Institution denied
  PTAB · Feb 22, 2016 · IPR2015-01753 · APJ Barry L Grossman · IPR · Institution

  Institution was denied because the petition did not show a reasonable likelihood of proving claims 1–20 obvious over Gladney, Kochi, and Magrab.

  RulingsInstitution decision

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

    “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. It is not enough to show merely that the prior art includes separate references covering each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. Petitioner’s rationale for the proposed combination of references is that it would have been obvious “to apply the alloy compositions as taught by Kochi to the wire spring of Gladney to obtain the multiple benefits as taught by Kochi.” Pet. 33. According to Petitioner, [t]he combination is nothing more than applying a known technique of producing a high-carbon spring steel, as taught by Kochi, to the known spring of Gladney to yield the predictable results of, for example, providing excellent wire-drawing workability, generating wire insusceptible to wire break, extending die life, increasing a wire-drawing rate thereby enhancing productivity during the manufacturing process, reducing cost, and producing a product, e.g., spring that is less susceptible to breakage. Id. at 33–34 (citing Ex. 1002 ¶ 71). Paragraph 71 of Exhibit 1002, the Declaration of Dr. O’Malley, is essentially a verbatim repetition of the portion of the Petition quoted above. It does not provide any underlying facts or data on which the opinion is based, and thus is entitled to little or no probative weight. 37 C.F.R. § 42.65(a). Neither the Petition nor the cited portion of Dr. O’Malley’s Declaration refers to any persuasive evidence to support the assertions that the proposed combination of references extends die life, increases a wire-drawing rate thereby enhancing productivity during the manufacturing process, reduces cost, and produces a product, e.g., a spring, that is less susceptible to breakage. slip op. at 10

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

    “Petitioner’s rationale for the proposed combination of references is that it would have been obvious “to apply the alloy compositions as taught by Kochi to the wire spring of Gladney to obtain the multiple benefits as taught by Kochi.” Pet. 33. According to Petitioner, [t]he combination is nothing more than applying a known technique of producing a high-carbon spring steel, as taught by Kochi, to the known spring of Gladney to yield the predictable results of, for example, providing excellent wire-drawing workability, generating wire insusceptible to wire break, extending die life, increasing a wire-drawing rate thereby enhancing productivity during the manufacturing process, reducing cost, and producing a product, e.g., spring that is less susceptible to breakage. Id. at 33–34 (citing Ex. 1002 ¶ 71). Paragraph 71 of Exhibit 1002, the Declaration of Dr. O’Malley, is essentially a verbatim repetition of the portion of the Petition quoted above. It does not provide any underlying facts or data on which the opinion is based, and thus is entitled to little or no probative weight. 37 C.F.R. § 42.65(a). Neither the Petition nor the cited portion of Dr. O’Malley’s Declaration refers to any persuasive evidence to support the assertions that the proposed combination of references extends die life, increases a wire-drawing rate thereby enhancing productivity during the manufacturing process, reduces cost, and produces a product, e.g., a spring, that is less susceptible to breakage.” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached

    “C. Availability of Magrab as Prior Art Patent Owner argues that Petitioner fails to establish that Magrab was publically accessible prior to April 18, 2008. Prelim. Resp. 36–38. As discussed above, we determine that Petitioner fails to demonstrate that claims 1–20 are unpatentable over Gladney, Kochi, and Magrab and, thus, we need not address whether Petitioner has established sufficiently that Magrab is prior art for the purposes of our decision.” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “II. ANALYSIS A. Claim Construction When interpreting a claim, words of the claim are generally given their ordinary and accustomed meaning, unless it appears from the specification, the file history, or other evidence asserted by the parties that the inventor used them differently. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. Id. Petitioner proposes a construction for “high-carbon steel.” Pet. 20– 21. We, however, determine that an explicit construction of “high-carbon steel” or any other claim term is not necessary for the purposes of our Decision.” slip op. at 5

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,474,805
• Blackhawk Specialty Tools, LLC v. Top-Co Cementing Products Inc.Institution denied
  PTAB · Feb 8, 2016 · IPR2015-01661 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, 6, and 7 anticipated by Hartman or obvious over Hartman and Lirette.

  RulingsInstitution decision

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

    “It was Petitioner’s burden to show how the claims are unpatentable. 37 C.F.R. § 42.104(b)(4). Petitioner has not done so. Accordingly, there is not a reasonable likelihood of Petitioner prevailing in showing claims 1, 2, 6, and 7 would have been obvious over Hartman and Lirette.” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Petitioner proposes that “sub” be construed to mean “tube” but provides no explanation for its proposal and cites no evidence to support it. Pet. 20. Patent Owner argues that “a ‘sub’ means ‘a small inline component in a drillstring’,” citing a “Glossary of Oilfield Terms” for support. Prelim. Resp. 12 (citing Ex. 2008, 10). Although it is clear from its title as to what the “Glossary of Oilfield Terms” purports to be, the glossary’s origin is unknown on the record before us, as the record does not shed any light on who authored it, when it was authored, or from where Patent Owner obtained it. Patent Owner does direct us, however, to intrinsic evidence that demonstrates that Petitioner’s proposed construction, which equates sub and tube, is unreasonably broad. First, Patent Owner points out that the ’131 patent distinguishes between a sub and a tubing string by noting that Figure 7 depicts the former but not the latter. Prelim. Resp. 13 (“‘FIG. 7 can be constructed so as to allow relative rotation between sub 12, and hence, a tubing string (not shown in FIG. 7).’”) (quoting Ex. 1001, 5:27–30) (Patent Owner’s emphasis). Second, Patent Owner notes that related U.S. Patent No. 6,484,803 B1, which issued from the parent application of the ’131 patent, distinguishes between a sub and tubing. Prelim. Resp. 13; see also Ex. 2009, Abstract (referring to “the diameter of the sub and/or the tubing to which it is mounted”). At a minimum, this evidence suggests that a sub is a particular part of, or within, a tubing string. In light of Petitioner’s lack of evidence for its proposed construction of sub as well as Patent Owner’s intrinsic evidence to the contrary, i.e., that a sub is a particular part of, or within, a tubing string, we reject Petitioner’s proposed construction of sub. No further construction of sub is necessary for purposes of this Decision.” slip op. at 7

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

    “Independent claim 1 recites a “sub having at each end thereof thread means for threadably connecting the sub in a tubing string.” Patent Owner argues that this limitation is not met by Hartman because Hartman discloses the use of a centralizer on a standard drilling pipe but not on a sub. As discussed above, Petitioner asserts that a tube (and, thus, presumably also the “pipe” of Hartman) is a sub, but Petitioner does not support its proposed construction with any evidence, and Patent Owner identifies intrinsic evidence that demonstrates that not every tubular component of a tubing string is considered a sub. On the record before us, Petitioner has not shown that Hartman teaches a sub. For this reason alone, there is not a reasonable likelihood of Petitioner prevailing in showing that claims 1, 2, 6, and 7 were anticipated by Hartner.” slip op. at 10

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

    “First, Petitioner does not articulate any particular combination and/or modification of prior art elements that purportedly would have been obvious to a person of ordinary skill in the art. In other words, Petitioner has not identified any prior art construct for us to compare to the claims. See Pet. 46 (“Should HARTMAN be found to fail to teach any of the limitations of claim 1, LIRETTE fills in any such gaps.”). Second, Petitioner does not provide any reasoning or rationale to make any particular combination and/or modification of prior art elements. Instead, it states “Applicable rationales include: . . .” and then repeats, without any analysis, six of the seven rationales that are provided in the Manual of Patent Examining Procedure. Compare Pet. 46–47, with MPEP § 2141(III). It was Petitioner’s burden to show how the claims are unpatentable. 37 C.F.R. § 42.104(b)(4). Petitioner has not done so. Accordingly, there is not a reasonable likelihood of Petitioner prevailing in showing claims 1, 2, 6, and 7 would have been obvious over Hartman and Lirette.” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 7,182,131
• Linear Technology Corporation v. In-Depth Test LLCInstitution denied
  PTAB · Jan 29, 2016 · IPR2015-01994 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution on all grounds because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “Upon review of the parties’ arguments, we conclude that Patent Owner is correct because the Specification of the ’373 patent clearly defines the term “outlier.” The Specification discloses the following: Each test generates at least one result for at least one of the components. Referring to FIG. 9, an exemplary set of test results for a single test of multiple components comprises a first set of test results having statistically similar values and a second set of test results characterized by values that stray from the first set. Each test result may be compared to an upper test limit and a lower test limit. If a particular result for a component exceeds either limit, the component may be classified as a “bad part”. Some of the test results in the second set that stray from the first set may exceed the control limits, while others do not. For the present purposes, those test results that stray from the first set but do not exceed the control limits or otherwise fail to be detected are referred to as “outliers”. Ex. 1001, col. 6, ll. 32–46 (emphasis added). Thus, according to the Specification, the test system may determine whether any of the second set of test results (1) exceeds an upper or lower test limit, in which case the component is considered a “bad part,” or (2) strays from a first set of test results having “statistically similar values,” but does not exceed control limits or otherwise fail to be detected, in which case the test result is considered an “outlier.” Id. The above language of the Specification, in particular the portion stating that “[f]or the present purposes,” certain test results are “referred to as ‘outliers,’” indicates an intent by the applicant to act as his own lexicographer and explicitly define the term. See id.” slip op. at 8

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

    “Petitioner has not shown sufficiently that Sun discloses the identification of an “outlier,” as recited in independent claims 1, 8, and 15. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1–10, 12–16, and 18–20 are either anticipated by Sun or unpatentable over Sun and the other cited references.” slip op. at 15

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

    “2. Analysis Independent claims 1, 8, and 15 recite the identification of an “outlier.”3 For each of the asserted grounds, Petitioner relies on Sun as allegedly disclosing such identification. Pet. 29–32, 41. Specifically, Petitioner argues that an “out of control” test result in Sun is an “outlier” because it is within specification limits (i.e., not a failure) but outside the LCL and UCL control thresholds, similar to the threshold determinations described in the Specification of the ’373 patent. Id. at 30 (citing Ex. 1002 ¶ 139). Petitioner’s argument is premised on its proposed interpretation of “outlier” as being a test result that strays from a target value, but does not exceed specification limits or otherwise fail to be detected. As explained above, we disagree and interpret “outlier” to mean a test result whose value strays from a set of test results having statistically similar values, but does not exceed the control limits specified for the tested component or otherwise fail to be detected. See supra Section I.E. Although Sun compares test results to individual target values (LCL and UCL), Petitioner does not point to any evidence that those values are test results having statistically similar values, or even that they are based on any measured data. As Patent Owner 3 Claim 1 recites “a computer connected to the tester and configured to receive the test data, identify an outlier in the test data, and generate an output report including the identified outlier.” Claim 8 recites “a supplementary data analysis element configured to identify outliers in the semiconductor test data.” Claim 15 recites “automatically identifying an outlier in the test data at run time using a computer system.” correctly points out, Sun does not disclose how the LCL and UCL are determined, and only states that they represent the “preferred range.” See Prelim. Resp. 30–32 (citing Ex. 1011, col. 3, ll. 40–47). Further, even if we agreed with Petitioner’s proposed interpretation of “outlier,” Petitioner’s position that an “out of control” test result in Sun must be outside the LCL-UCL range but within the LSL-USL range is incorrect based on the reference itself. On page 31 of its Preliminary Response, Patent Owner provides the following highlighted version of Figure 3A of Sun. As shown in the modified Figure 3A above, the LSL-USL range is the same as the LCL-UCL range for the “50/0.9 IDSN” column, and the LCL-UCL range is outside (not within) the LSL-USL range for the “0.9N BVDSS” column. Thus, it appears that the control and specification limits in Sun are independent of each other. See id. Petitioner has not shown sufficiently that Sun discloses the” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “2. Analysis Independent claims 1, 8, and 15 recite the identification of an “outlier.”3 For each of the asserted grounds, Petitioner relies on Sun as allegedly disclosing such identification. Pet. 29–32, 41. Specifically, Petitioner argues that an “out of control” test result in Sun is an “outlier” because it is within specification limits (i.e., not a failure) but outside the LCL and UCL control thresholds, similar to the threshold determinations described in the Specification of the ’373 patent. Id. at 30 (citing Ex. 1002 ¶ 139). Petitioner’s argument is premised on its proposed interpretation of “outlier” as being a test result that strays from a target value, but does not exceed specification limits or otherwise fail to be detected. As explained above, we disagree and interpret “outlier” to mean a test result whose value strays from a set of test results having statistically similar values, but does not exceed the control limits specified for the tested component or otherwise fail to be detected. See supra Section I.E. Although Sun compares test results to individual target values (LCL and UCL), Petitioner does not point to any evidence that those values are test results having statistically similar values, or even that they are based on any measured data. As Patent Owner 3 Claim 1 recites “a computer connected to the tester and configured to receive the test data, identify an outlier in the test data, and generate an output report including the identified outlier.” Claim 8 recites “a supplementary data analysis element configured to identify outliers in the semiconductor test data.” Claim 15 recites “automatically identifying an outlier in the test data at run time using a computer system.” correctly points out, Sun does not disclose how the LCL and UCL are determined, and only states that they represent the “preferred range.” See Prelim. Resp. 30–32 (citing Ex. 1011, col. 3, ll. 40–47). Further, even if we agreed with Petitioner’s proposed interpretation of “outlier,” Petitioner’s position that an “out of control” test result in Sun must be outside the LCL-UCL range but within the LSL-USL range is incorrect based on the reference itself. On page 31 of its Preliminary Response, Patent Owner provides the following highlighted version of Figure 3A of Sun. As shown in the modified Figure 3A above, the LSL-USL range is the same as the LCL-UCL range for the “50/0.9 IDSN” column, and the LCL-UCL range is outside (not within) the LSL-USL range for the “0.9N BVDSS” column. Thus, it appears that the control and specification limits in Sun are independent of each other. See id. Petitioner has not shown sufficiently that Sun discloses the” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,792,373
• Maxim Integrated Products Inc. v. In-Depth Test LLCInstitution denied
  PTAB · Jan 29, 2016 · IPR2015-01627 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution on all grounds because the petition did not show a reasonable likelihood of prevailing on any challenged claim.

  RulingsInstitution decision

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

    “Pet.”) requesting inter partes review of claims 1–20 of U.S. Patent No. 6,792,373 B2 (Ex. 1001, “the ’373 patent”) pursuant to 35 U.S.C. § 311(a). Patent Owner In-Depth Test LLC filed a Preliminary Response (Paper 7, “Prelim. Resp.”) pursuant to 35 U.S.C. § 313. We have jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary 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.” For the reasons that follow, we have decided not to institute an inter partes review. slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “Each test generates at least one result for at least one of the components. Referring to FIG. 9, an exemplary set of test results for a single test of multiple components comprises a first set of test results having statistically similar values and a second set of test results characterized by values that stray from the first set. Each test result may be compared to an upper test limit and a lower test limit. If a particular result for a component exceeds either limit, the component may be classified as a “bad part”. Some of the test results in the second set that stray from the first set may exceed the control limits, while others do not. For the present purposes, those test results that stray from the first set but do not exceed the control limits or otherwise fail to be detected are referred to as “outliers”. Ex. 1001, col. 6, ll. 32–46 (emphasis added). Thus, according to the Specification, the test system may determine whether any of the second set of test results (1) exceeds an upper or lower test limit, in which case the component is considered a “bad part,” or (2) strays from a first set of test results having “statistically similar values,” but does not exceed control limits or otherwise fail to be detected, in which case the test result is considered an “outlier.” Id. The above language of the Specification, in particular the portion stating that “[f]or the present purposes,” certain test results are “referred to as ‘outliers,’” indicates an intent by the applicant to act as his own lexicographer and explicitly define the term. See id.” slip op. at 8

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

    “described in the Specification of the ’373 patent. Id. at 30 (citing Ex. 1002 ¶ 139). Petitioner’s argument is premised on its proposed interpretation of “outlier” as being a test result that strays from a target value, but does not exceed specification limits or otherwise fail to be detected. As explained above, we disagree and interpret “outlier” to mean a test result whose value strays from a set of test results having statistically similar values, but does not exceed the control limits specified for the tested component or otherwise fail to be detected. See supra Section I.E. Although Sun compares test results to individual target values (LCL and UCL), Petitioner does not point to any evidence that those values are test results having statistically similar values, or even that they are based on any measured data. As Patent Owner correctly points out, Sun does not disclose how the LCL and UCL are determined, and only states that they represent the “preferred range.” See Prelim. Resp. 32 (citing Ex. 1011, col. 3, ll. 44–47). Further, even if we agreed with Petitioner’s proposed interpretation of “outlier,” Petitioner’s position that an “out of control” test result in Sun must be outside the LCL-UCL range but within the LSL-USL range is incorrect based on the reference itself. Figure 3A of Sun depicts the LSL-USL range as the same as the LCL-UCL range for the “50/0.9 IDSN” column, and the LCL-UCL range as outside (not within) the LSL-USL range for the “0.9N BVDSS” column. Thus, it appears that the control and specification limits in Sun are independent of each other. Petitioner has not shown sufficiently that Sun discloses the identification of an “outlier,” as recited in independent claims 1, 8, and 15. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1–10, 12–16, and 18–20 are either anticipated by Sun or unpatentable over Sun and the other cited references.” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “described in the Specification of the ’373 patent. Id. at 30 (citing Ex. 1002 ¶ 139). Petitioner’s argument is premised on its proposed interpretation of “outlier” as being a test result that strays from a target value, but does not exceed specification limits or otherwise fail to be detected. As explained above, we disagree and interpret “outlier” to mean a test result whose value strays from a set of test results having statistically similar values, but does not exceed the control limits specified for the tested component or otherwise fail to be detected. See supra Section I.E. Although Sun compares test results to individual target values (LCL and UCL), Petitioner does not point to any evidence that those values are test results having statistically similar values, or even that they are based on any measured data. As Patent Owner correctly points out, Sun does not disclose how the LCL and UCL are determined, and only states that they represent the “preferred range.” See Prelim. Resp. 32 (citing Ex. 1011, col. 3, ll. 44–47). Further, even if we agreed with Petitioner’s proposed interpretation of “outlier,” Petitioner’s position that an “out of control” test result in Sun must be outside the LCL-UCL range but within the LSL-USL range is incorrect based on the reference itself. Figure 3A of Sun depicts the LSL-USL range as the same as the LCL-UCL range for the “50/0.9 IDSN” column, and the LCL-UCL range as outside (not within) the LSL-USL range for the “0.9N BVDSS” column. Thus, it appears that the control and specification limits in Sun are independent of each other. Petitioner has not shown sufficiently that Sun discloses the identification of an “outlier,” as recited in independent claims 1, 8, and 15. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1–10, 12–16, and 18–20 are either anticipated by Sun or unpatentable over Sun and the other cited references.” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,792,373
• NRT Technology Corp. / NRT Technologies, Inc. v. Everi Payments, Inc.Institution denied
  PTAB · Jan 22, 2016 · CBM2015-00167 · APJ Michael J Fitzpatrick · CBM · Institution

  The Board denied institution because Petitioner did not show any challenged claim was more likely than not unpatentable under § 101, Akel, or grounds relying on Reeder.

  RulingsInstitution decision

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

    “We may not institute a CBM patent review “unless the Director[2] determines that the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a).3 Based on our review of the record, we conclude that Petitioner is less likely than not to prevail with respect to all of the challenged claims. Accordingly, we deny the Petition to institute a CBM patent review, as set forth below.” slip op. at 2

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable

    “As Patent Owner points out, Petitioner has oversimplified the challenged claims. Prelim. Resp. 31. The challenged claims are not directed simply to the idea of providing money to an account holder or using trial-and-error until success is achieved. Rather, the claims are directed to particular methods of providing money to an account holder using an ATM via a POS transaction after an ATM transaction has failed. See Alice, 134 S. Ct. at 2354 (“Applications of such concepts to a new and useful end . . . remain eligible for patent protection.”) (internal quotation marks and brackets omitted). Further, Petitioner’s analysis omits any consideration of the elements of the claims as ordered combinations to determine whether the additional elements transform the nature of the claims into a patent-eligible application. It was Petitioner’s burden to do so. Petitioner has not shown that the claims are more likely than not patent-ineligible. Alice, 134 S. Ct. at 2354 (“an invention is not rendered ineligible for patent simply because it involves an abstract concept”).” slip op. at 11

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

    “It is a petitioner’s burden to explain how a challenged claim should be construed and how, being so construed, it is unpatentable. 37 C.F.R. § 42.204(b)(3)–(4). Petitioner does not propose an express construction for “personal identification number” and does not show that its plain and ordinary meaning would include a password. Further, claim 1 requires entering a PIN into the terminal. In the context of the specification and surrounding claim language, this step is part of the claimed “method of providing money or an item of value to an account-holder.” The teaching on which Petitioner relies, however, relates to a system operator’s back-end access of the Akel system. See Ex. 1006, 6:58–62 (“Each system operator requires a password to access the system . . . .”) (emphasis added). Elsewhere, Akel describes a “customer” (distinct from a system operator) as using a kiosk to obtain cash. Id. at 2:56–3:11. But, Akel does not describe entering a password into a terminal, let alone a PIN, as part of that process. Thus, even if Akel’s password fell within the scope of the recited PIN, the Petition would still fail to show how its use by an operator “to access the system” (see Ex. 1006, 258–60) meets the recited “entering a personal identification number into the terminal” as part of the claimed “method of providing money or an item of value to an account-holder.” Petitioner has not shown that Akel teaches “entering a personal identification number into the terminal.” Accordingly, Petitioner has not shown that claim 1, or dependent claims 2–8, are more likely than not anticipated by Akel.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “The invention date of the ’792 patent is no later than its filing date, which is January 5, 1998. Although the Reeder application was filed, and thus privately known to Mr. Reeder, before the ’792 filing date, such private knowledge is not within the scope of § 102(a). See, e.g., Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 139 (Fed. Cir. 1986) (“The statutory language, ‘known or used by others in this country’ (35 U.S.C. § 102(a)), means knowledge or use which is accessible to the public.”). Reeder was 8 The AIA took effect on March 18, 2013. Because the application from which the ’792 patent issued was filed before that date, our citations to 35 U.S.C. § 102 are to its pre-AIA version. eventually patented of course but not until after the filing date of the ’792 patent. For these reasons, Reeder is not prior art under 35 U.S.C. § 102(a), which is the only provision under which the Petition asserted Reeder. Reeder presumptively is prior art to the ’792 patent under a different subsection of the statute, namely § 102(e). However, a reference that is prior art under only § 102(e) may not be asserted in a CBM patent review. Under the AIA, a Petition for a CBM patent review may challenge novelty or non-obviousness of a claim only on the basis of: (i) prior art that is described by section 102(a) . . . ; or (ii) prior art that— (I) discloses the invention more than 1 year before the date of the application for patent in the United States; and (II) would be described by section 102(a) . . . if the disclosure had been made by another before the invention thereof by the applicant for patent. AIA § 18(a)(1)(C). Because Petitioner has not shown that Reeder is prior art that may be asserted in a Petition for a CBM patent review, all of the grounds that rely on Reeder are denied.” slip op. at 15

  § 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice
  Patents in suitUS 6,081,792
• Apple Inc. v. Ziilabs Inc., Ltd.Institution denied
  PTAB · Oct 1, 2015 · IPR2015-00963 · APJ Michael R Zecher · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 21, 25, and 33 were 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

    “inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in ZiiLabs’ Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Apple will prevail in challenging claims 21, 25, and 33 of the ’649 patent as unpatentable under 35 U.S.C. §§ 102(e) and 103(a). We, therefore, deny the Petition.” slip op. at 2

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

    “First, we recognize that McCormack discloses that memory controller 210 delays or stalls reading pixel data associated with a fragment request that fragment overlap detector 235 identifies as being overlapping until the pixel data at all the previous non-overlapping addresses are rewritten from pixel write queue 220 to frame memory 205. Ex. 1010, 9:3–19. Nonetheless, McCormack also discloses that, when a pixel data entry associated with a fragment request is removed from the CAM, all such entries are removed. See Ex. 1010, 3:64–4:1 (“the address memory is cleared of the detected first address, as well as all other addresses stored in the detector, responsive to the detector detecting a request to read overlapping pixel data associated with the second address”), 9:35–36 (“fragment overlap detector 235 will clear the CAM of the previously stored address, then store the address detected in the most recently received fragment of the CAM”). Given that McCormack’s CAM is cleared completely whenever an entry is removed from the CAM, it is not apparent to us how its disclosure of memory controller 210 delaying or stalling further reads is triggered by a pixel data entry that remains in the CAM because it has not been updated or discarded. Second, we accord Dr. Owens’ testimony regarding the claimed “suspending” step little weight. Dr. Owens’ testimony in this regard is essentially the same as the contentions Apple offers in its Petition, which we have considered above and found unpersuasive. Compare Pet. 30–31, with Ex. 1003 ¶ 181. Dr. Owens does not attempt to reconcile the deficiency we identified in McCormack—namely, how McCormack’s disclosure of memory controller 210 delaying or stalling further reads is triggered by a pixel data entry that remains in the CAM because it has not been updated or discarded, especially given the fact that the CAM is cleared completely whenever an entry is removed from the CAM. See Ex. 1010, 3:54–4:1, 9:35–36. Absent a cogent explanation from Dr. Owens, we are not persuaded that Apple has presented sufficient evidence to support a finding that McCormack describes the “suspending” step, as recited in independent claim 21.” slip op. at 11

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

    “to discern how each of the cited disclosures in McCormack work in conjunction to account for all the features recited in the “suspending” step. 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). Here, Apple directs us to disparate disclosures in McCormack, and then generally asserts that McCormack accounts for all the features recited in the “suspending” step. For instance, Apple cites to and relies upon the following disclosures in McCormack: (1) the “Background Art” section, see, e.g., Ex. 1010, 1:63–64, 2:4–5; (2) the “Summary Disclosure of the Invention” section, see, e.g., id. at 3:14–18; and (3) the “Best Mode for Carrying Out the Invention” section, see, e.g., 8:7–16, 8:22–23, 8:30–35. Apple, however, does not provide a credible or sufficient explanation as to how one of ordinary skill in the art might combine these disparate disclosures to arrive at the “suspending” step. As we explain in our Introduction Section above, § 314(a) places the burden on Apple to demonstrate that there is a reasonable likelihood that the combined teachings of McCormack and Kenworthy render obvious independent claim 25, which includes, among other things, offering concise, well-organized, easy-to-follow arguments as to how these asserted prior art references account for all the features recited in the “suspending” step. We decline to shoulder this burden and, as a result, we will not attempt to fit the disparate disclosures from McCormack together into a coherent explanation to supplement Apple’s insufficient arguments presented in its Petition. Cf. United States v. Lanzotti, 205 F.3d 951, 957 (7th Cir. 2000) (“It is not this court’s responsibility to research and construct the parties’ arguments.”). To the extent that Apple relies upon the supporting testimony of Dr. Owens to bridge the gap between the disparate disclosures of McCormack, we are not persuaded. The testimony of Dr. Owens relied upon by Apple to support its position that McCormack teaches the “suspending” step either reiterates disclosures in McCormack with minimal discussion regarding the level of skill in art, see e.g., Ex. 1003 ¶¶ 103–05, 156, 181, or essentially repeats the contentions offered by Apple in its Petition, see e.g., id. ¶¶ 207– 10. Rarely, however, will minimal discussion regarding the level of skill in the art, without further explanation, act to bridge gaps in the substantive presentation of an asserted ground based on obviousness. See Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999). Consequently, we do not credit Dr. Owens’ cited testimony because it does not provide additional insight beyond Apple’s insufficient arguments presented in its Petition that helps us evaluate how one of ordinary skill in the art might combine the disparate disclosures of McCormack to arrive at the “suspending” step.” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “To the extent that Apple relies upon the supporting testimony of Dr. Owens to bridge the gap between the disparate disclosures of McCormack, we are not persuaded. The testimony of Dr. Owens relied upon by Apple to support its position that McCormack teaches the “suspending” step either reiterates disclosures in McCormack with minimal discussion regarding the level of skill in art, see e.g., Ex. 1003 ¶¶ 103–05, 156, 181, or essentially repeats the contentions offered by Apple in its Petition, see e.g., id. ¶¶ 207– 10. Rarely, however, will minimal discussion regarding the level of skill in the art, without further explanation, act to bridge gaps in the substantive presentation of an asserted ground based on obviousness. See Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999). Consequently, we do not credit Dr. Owens’ cited testimony because it does not provide additional insight beyond Apple’s insufficient arguments presented in its Petition that helps us evaluate how one of ordinary skill in the art might combine the disparate disclosures of McCormack to arrive at the “suspending” step.” slip op. at 17

  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,977,649
• Fieldcomm Group v. Sipco, LLCInstitution denied
  PTAB · Aug 11, 2015 · IPR2015-00659 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution for claims 1–4 and 6–25 because the petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

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

    “We have reviewed the proposed ground of obviousness over Kantronics and AX.25 against claims 1–4, 6, 8–11, 13–22, 24–25, and we are not persuaded, on the record before us, that Petitioner has established a reasonable likelihood that Petitioner would prevail in its challenge to claims 1–4, 6, 8–11, 13–22, 24–25 on this ground.” slip op. at 6

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

    “Alternatively, Petitioner argues that “a person of ordinary skill in the art would know that scalable addresses were well known as far back as the 1980’s [and therefore it] would be obvious to a person of ordinary skill in the art to modify AX.25 to include scalable addresses to use an address format other than call signs.” Pet 14. We are not persuaded by this conclusory argument. Petitioner also relies on its expert to make arguments not contained in the Petition. We decline to import the discussion about the use of scalable addresses from Mr. Goldberg’s Declaration into the Petition, based solely on the Petition’s citation of paragraphs within the Declaration. As stated in 37 C.F.R. § 42.6(a)(3), “[a]rguments must not be incorporated by reference from one document into another document.” Finally, Petitioner and its declarant failed to show that scalable addresses would have been the obvious scheme for routing packets in the system of Kantronics.” slip op. at 8

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner also relies on its expert to make arguments not contained in the Petition. We decline to import the discussion about the use of scalable addresses from Mr. Goldberg’s Declaration into the Petition, based solely on the Petition’s citation of paragraphs within the Declaration. As stated in 37 C.F.R. § 42.6(a)(3), “[a]rguments must not be incorporated by reference from one document into another document.” Finally, Petitioner and its declarant failed to show that scalable addresses would have been the obvious scheme for routing packets in the system of Kantronics.” slip op. at 8

  • BurdenNot shown unpatentable

    “Petitioner asserts that an AX.25 information packet contains a “control field [that] is responsible for identifying the type of frame being sent, and is also used to convey commands and responses from one end of the link to the other in order to maintain proper link control.” Pet. 12 (quoting Ex. 1003 (AX.25), 10). Petitioner points to a CTRL command that is available in Kantronics but does not point to any evidence that the CTRL code can be or actually is placed in the packet. In addition, Petitioner does not discuss whether it would have been obvious to one of ordinary skill in the art to use the control field in the AX.25 protocol to send commands in the Kantronics system. In fact, Kantronics discloses that a user’s “host program will provide you with some means to give commands to the TNC. For a complete description of your host program, refer to the manual that comes with your software.” Kantronics 184. Petitioner does not provide this manual with the Petition. Thus, the record is at best unclear as to how commands are sent by Kantronics. Additionally, Petitioner has not shown that one of ordinary skill would use the control field of the AX.25 protocol to send command code consistent with the command codes of the Kantronics system. Ex. 1004, 169. For that reason, the Petitioner did not show that it is more likely than not to prevail on its proposed obviousness grounds with respect to independent claim 8 or claims 9– 13 that depend therefrom. 3. Claims 22, 24 Petitioner relies on its argument for claims 1–4 and 6 to support its assertion that the various means-plus-function limitations in claim 22 are taught by the prior art. However, claims 1–4 and 6 do not recite any means-plus-function limitations. Additionally, Petitioner did not provide the proper analysis for any of the means-plus-function limitations. That is, the Petitioner did not “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function,” let alone show how the prior art teaches such structure. 37 C.F.R. § 42.104(b)(3)–(4). For these reasons, on the record before us, Petitioner has not shown sufficiently that there is a reasonable likelihood that it would prevail on its proposed obviousness grounds with respect to independent claim 22 or claim 24 that depends therefrom. D. Obviousness of Claims over Kantronics, AX.25, and Zimmerman Petitioner asserts that claims 7, 12, and 23 are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Kantronics, AX.25, and Zimmerman. Pet. 43. As noted above in Section C, Petitioner has not shown that the combination of Kantronics and AX.25 meet all the limitations of claims 1, 8 and 22, from which claims 7, 12, and 23 depend. Further, Petitioner has not argued that Zimmerman makes up for the deficiencies in the combination of Kantronics and AX.25 discussed above. For those reasons, we are not persuaded that Petitioner has established a reasonable likelihood that Petitioner would prevail in its challenge to claims 7, 12, and 23 on this ground.” slip op. at 9

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,697,492
• Apple, Inc. v. Contentguard Holdings, Inc.Institution denied
  PTAB · 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 · Graham
  Patents in suitUS 8,001,053
• Apple, Inc. v. Contentguard Holdings, Inc.Institution denied
  PTAB · 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 · Graham
  Patents in suitUS 8,001,053

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.