- Apple Inc. v. Tracbeam, LLCInstitution deniedPTAB · Feb 19, 2016 · IPR2015-01702 · APJ James A Tartal · IPR · Institution
Instituted review in IPR2015-01703 on specified Loomis grounds for claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215; denied institution in IPR2015-01702.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215, but not of claims 17, 40, or 72. Accordingly, we authorize an inter partes review to be instituted only as to claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 of the ’231 patent. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far (prior to Patent Owner’s Response). This is not a final decision as” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“and second location estimation determiners determine geographical indications “independently of one another.” Independent claim 17, similar to claim 40, requires that “wherein the second instance does not depend on a geographical location of the mobile station obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites.” Petitioner’s sole contention with respect to claim 40 and the cited portions of claim 17 is: “Location determiners can be independent of each other. See, e.g., 5:7–9; Figs. 6, 9.” 1703-Pet 39, 44. The portion of Loomis cited by Petitioner states that “[t]he outdoor LD system operates independently of the radio LD signal system, and each of these systems can determine the present location of the user at selected times.” IPR-1703, Ex. 1008, 5:7–9. Thus, Petitioner has shown that the outdoor LD system of Loomis is independent of the radio LD signal system, but has not shown that the radio LD signal system is independent of the outdoor LD system. Accordingly, Petitioner has not shown that the determiners are “independent of each other,” as required by claim 40, or that “second instance does not depend on a geographical location . . . obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites,” as required by claim 17 and claim 72, which depends from claim 17.” slip op. at 15
- Other 314aInstitution denied discretionary other
“E. Additional Grounds We decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 based on Bruno, in combination with Olsson and/or Geier. We also decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 17, 18, 20, 24, 25, 27, 39, 40, 72, 78, 81, 155, 162, 165, and 215 based on Green and Hashimoto, and additional art, as asserted in IPR-1702. Petitioner asserts multiple grounds to each challenged claim of the ’231 patent across two separate petitions, but does not address the duplicative nature of its arguments across petitions. The Board’s rules for AIA inter partes proceedings, including those pertaining to institution, are “construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); accord 35 U.S.C. §§ 316(b) (regulations for AIA inter partes proceedings take into account “the efficient administration of the Office” and “the ability of the Office to timely complete [instituted] proceedings”). Because we institute an inter partes review of these claims based on the grounds discussed above, we exercise our discretion not to institute a review based on these grounds for reasons of administrative necessity to ensure timely completion of the instituted proceeding. See 37 C.F.R. § 42.108(a).” slip op. at 23
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,764,231 - Neptune Generics, LLC. v. Auspex Pharmaceuticals, Inc.Institution deniedPTAB · Dec 9, 2015 · IPR2015-01313 · APJ Lora M Green · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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.” 35 U.S.C. § 314. Upon considering the Petition and the Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–10. Accordingly, we decline to institute an inter partes review of the challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We recognize that an obvious analysis requires us to consider whether an ordinary artisan would have had a reasonable expectation of success, not absolute predictability of success. In re O’Farrell, 853 F.2d 894, 903–904 (Fed. Cir. 1988). We agree with Patent Owner, however, that Petitioner has not demonstrated that the ordinary artisan would have combined Fogelman with Miwa with a reasonable expectation of arriving at the invention claimed by the ’317 patent. Although Fogelman teaches that ODV may account for 90% of the pathway for intrinsic clearance of VF (Ex. 1003, 483), Fogelman 9 Amanda Yarnell, Heavy Hydrogen Drugs Turn Heads, Again, 87(25) Chem, Eng. News 36–39 (2009). teaches also that ODV has a receptor affinity profile similar to its parent compound VF (id. at 481). As noted by Patent Owner (Prelim. Resp. 32), Petitioner has not explained, through evidence or adequate scientific reasoning, why the ordinary artisan would have wanted to prevent the metabolism of VF to its pharmaceutically active metabolite, ODV. Stated differently, because ODV is a desired metabolite, as it has the same pharmacological activity as its parent compound, VF, Petitioner has not explained why the ordinary artisan would have had a reason to prevent VF from being metabolized to ODV, rather than only preventing metabolism to a non-active metabolite, or make a substitution that would prevent the further metabolism of ODV.” slip op. at 13
- Obviousness (§103) › KSR rationalesNot shown unpatentable
“We agree. In In re O’Farrell, the Federal Circuit set forth two situations in which an “obvious to try” rationale was usually applied improperly. In re O’Farrell, 853 F.2d at 903. The first improper situation was to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters are critical or no direction as to which of many possible choices is likely to be successful.” Id. The second improper situation was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.” Id.; see also In re Kubin, 561 F.3d 1351, 1358–1360 (Fed. Cir. 2009) (noting that the rationale in O’Farrell was “affirmed in the logical inverse” in KSR, 550 U.S. at 417, in a statement that “§103 bars patentability unless ‘the improvement is more than the predictable use of prior art elements according to their established functions.’”). Based on the above framework, we conclude that it would not have been obvious to try to achieve the invention of claim 1 of the ’317 patent. As noted by Patent Owner (Prelim. Resp. 35), and not disputed by Petitioner (see Pet. 10–11), there are approximately 227-1, or 124,217,727 deuterated forms of VF, minus some number of forms which are equivalent due to symmetry or rotatable bonds. Although Petitioner contends that as P-450 enzymes act on two main sites of VF—that is, -OCH3 and –N(CH3)2, arguing that it would have been obvious to deuterate only those sites (Pet. 10–11)—as discussed above, the ordinary artisan would not have had a reasonable expectation that deuteration of those sites would result in enhanced bioavailability and maintaining the activity of VF for a longer period of time. Thus, the ordinary artisan would be left with trying the over 100,000,000 possible deuterated forms of VF until possibly arriving at a successful result.” slip op. at 20
- Additional discoveryAdditional discovery, deniedDenied
“III. PENDING MOTIONS Patent Owner filed a Motion for Additional Discovery (Paper 9). In addition, Petitioner filed a Motion to Seal (Paper 18), as well as a Motion to Expunge Paper 17 (Paper 19). We grant Petitioner’s Motion to Expunge. We deny Patent Owner’s Motion for Additional Discovery as moot in view of our denial of the Petition. Finally, as we did not rely on the material Petitioner sought to seal, we decline to address the merits of the Motion to Seal. Petitioner is authorized to file a motion to expunge any material that it seeks to keep confidential within thirty (30) days of the date of this decision, or within thirty (30) days of a decision on rehearing, if rehearing is requested.” slip op. at 22
§ 103 obviousnessPatents in suitUS 7,456,317 - PTAB · Jul 20, 2015 · IPR2015-00517 · APJ Kevin F Turner · IPR · Institution
The Board denied institution because neither petition showed a reasonable likelihood that claims 1, 9, 10, 12, 30, 32, 42, or 45 were unpatentable over Kitamura or Mehrotra.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We review the Petitions 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.” Based on our review of the record, we conclude that neither Petitioner is reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable, based on the Petitions filed. See 35 U.S.C. § 314. B.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Kitamura is largely silent as to the specific functioning of the D/A conversion circuit 10. Kitamura discloses that D/A conversion circuit 10 and A/D conversion circuit 13 “preferably share a voltage dividing element and a reference voltage supply (for the purpose of making their characteristics uniform),” and level differences to maximize the operating margin (Ex. 1010 ¶ 11), but does not disclose a “selection” between reference voltages or signals. Although Petitioners emphasize the obviousness of certain elements of the challenged claims (Pet. 25– 26), the obviousness of selecting a reference voltage versus outputting a voltage from a D/A conversion is not discussed. Indeed, Dr. Baker’s discussion is clear (Ex. 1003 ¶¶ 74–79) as to how the output voltages could be set, but it remains unclear how Kitamura itself suggests the examples proffered. The normal function of a D/A converter is not to select between reference voltages, but to render the digital input into analog form. We are not persuaded that Kitamura teaches or suggests the selection of one of a plurality of reference voltages in accordance with the input information, per the challenged claims. In addition, the Petitions fail to provide any rationale for why Kitamura’s disclosure of D/A conversion renders the selection of a reference voltage or signal obvious. For these reasons, Patent Owner’s contentions that Kitamura does not teach or suggest “reference voltage selecting means,” or equivalent elements, or “reference voltages,” per the challenged claims, are persuasive. C.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner construction§112(f) appliesDecided for petitioner
“Reference Voltage Selection Claim 1 recites “reference voltage selecting means for selecting one of a plurality of reference voltages,” with claims 9, 12, and 30 reciting “selecting device which selects one of a plurality of reference signals,” and claims 42 and 45 reciting “selecting one of a plurality of predetermined reference signals.” Petitioners acknowledge that the means-plus-function element in claim 1 is “governed by 35 U.S.C. § 112, ¶ 6,” and that the construction of the claim term in claim 1 “is applicable to claim terms” recited in claims 9, 12, 30, 42, and 45, discussed above. Pet. 5, 8. Petitioners assert that “the verify reference voltage select circuit 222 selects and provides such a reference voltage to the comparator,” and is the corresponding structure described in the specification. Id. at 56 (citing Ex. 1003 ¶¶ 4552). For purposes of this Decision, we construe the referenced claim terms according to that structure and apply the same to the analysis below. B.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Reference Voltages” “Reference Signals” All of the independent claims of the challenged claims recite either “reference signals” or “reference voltages.” Petitioners emphasize that “a person of ordinary skill in the art would have interpreted these features to be broad enough to include and be met by either a digital reference voltage/ signal or an analog reference voltage/signal.” Id. at 10 (citing Ex. 1003 ¶¶ 53–58). For purposes of this Decision, we construe the reference voltages and signals terms as being met by either digital or analog reference voltages/signals, and apply that construction to the analysis below. slip op. at 7
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 5,764,571 - PTAB · Jul 20, 2015 · IPR2015-00504 · APJ Kevin F Turner · IPR · Institution
The Board denied institution in both proceedings because neither petition showed a reasonable likelihood of proving any challenged claim obvious over Kitamura or Mehrotra.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We review the Petitions 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.” Based on our review of the record, we conclude that neither Petitioner is reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable, based on the Petitions filed. See 35 U.S.C. § 314. B.” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Kitamura is largely silent as to the specific functioning of the D/A conversion circuit 10. Kitamura discloses that D/A conversion circuit 10 and A/D conversion circuit 13 “preferably share a voltage dividing element and a reference voltage supply (for the purpose of making their characteristics uniform),” and level differences to maximize the operating margin (Ex. 1010 ¶ 11), but does not disclose a “selection” between reference voltages or signals. Although Petitioners emphasize the obviousness of certain elements of the challenged claims (Pet. 25– 26), the obviousness of selecting a reference voltage versus outputting a voltage from a D/A conversion is not discussed. Indeed, Dr. Baker’s discussion is clear (Ex. 1003 ¶¶ 74–79) as to how the output voltages could be set, but it remains unclear how Kitamura itself suggests the examples proffered. The normal function of a D/A converter is not to select between reference voltages, but to render the digital input into analog form. We are not persuaded that Kitamura teaches or suggests the selection of one of a plurality of reference voltages in accordance with the input information, per the challenged claims. In addition, the Petitions fail to provide any rationale for why Kitamura’s disclosure of D/A conversion renders the selection of a reference voltage or signal obvious. For these reasons, Patent Owner’s contentions that Kitamura does not teach or suggest “reference voltage selecting means,” or equivalent elements, or “reference voltages,” per the challenged claims, are persuasive. C.” slip op. at 10
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The standard for granting a motion to seal is “good cause,” reflecting the strong public policy for making all information in inter partes review proceedings open to the public. 37 C.F.R. § 42.54. The moving party bears the burden of showing that the relief requested should be granted. 37 C.F.R. § 42.20(c). This includes showing that the information is truly confidential, and that such confidentiality outweighs the strong public interest in having an open record. See Garmin Int’l v. Cuozzo Speed Techs., LLC, Case IPR2012-00001, slip op. at 3 (PTAB Mar. 14, 2013) (Paper 36). Petitioner Micron has made a sufficient showing. Accordingly, the Motion to Seal Exhibit 1011 is granted.” slip op. at 15
§ 103 obviousnesscites KSRPatents in suitUS 5,764,571 - Zhongshan Broad Ocean Motor Co., Ltd. / Broad Ocean Motor LLC et al. v. Nidec Motor CorporationInstitution deniedPTAB · Jul 20, 2015 · IPR2015-00762 · APJ Patrick M Boucher · IPR · Institution
The Board denied joinder and denied institution because the petition was time-barred under § 315(b), despite finding a reasonable likelihood that claims 1–3, 8, 9, 12, 16, and 19 were anticipated.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied
“Petitioners were served with a complaint alleging infringement of the ’349 patent on September 25, 2013. The Petition was filed on February 20, 2015, more than a year later. Notwithstanding our determination that the Petition meets the standard set forth in 35 U.S.C. § 314(a), we conclude that institution of an inter partes review is barred by § 315(b).” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Section 315(c) provides: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. In our view, the phrase “join as a party” indicates that only a person who is not already a party to an instituted inter partes review can be joined to the proceeding. A person cannot be joined as a party to a proceeding in which it is already a party. That the statute uses the expansive term “any person” is of little moment because the overall language of the statute places unambiguous limits on the term. Specifically, the phrase “join as a party” excludes a person who is already a party.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstituted
“We conclude that Petitioners have established a reasonable likelihood of prevailing on their contention that Hideji discloses performing sinewave commutation using independent values of Q and d axis currents in the manner recited in each of independent claims 1, 16, and 19. Thus, we conclude that Petitioners have established a reasonable likelihood of prevailing on their challenge of claims 1–3, 8, 9, 12, 16, and 19 as anticipated by Hideji. B. Time Bar Under 35 U.S.C. § 315(b) Section 315(b) provides: An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). Petitioners were served with a complaint alleging infringement of the ’349 patent on September 25, 2013. The Petition was filed on February 20, 2015, more than a year later. Notwithstanding our determination that the Petition meets the standard set forth in 35 U.S.C. § 314(a), we conclude that institution of an inter partes review is barred by § 315(b).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“contention that Hideji discloses “performing sinewave commutation, using independent values of Q and d axis currents, in response to one or more control signals received from the system controller to produce continuous phase currents in the permanent magnet motor for driving the air-moving component,” recited in each of independent claims 1, 16, and 19. Pet. at 19– 26. Patent Owner contends that Hideji fails to disclose the use of independent values of Q and d axis currents: “In fact, Hideji discloses that it employs calculations in the rotating frame of reference in which Q and d axis currents depend on each other.” Prelim. Resp. 20. Petitioners observe that Figure 2 of Hideji illustrates that three-phase / two-phase coordinate conversion part 36 outputs separate values for Iq and Id, i.e. the Q and d axis currents.3 Pet. 23–24. Hideji discloses that 3 We note that the labels “Iq” and “Id” output from part 36 of Hideji are identified directly as such in the original Japanese reference. Ex. 1003, 8. [t]he three-phase/two-phase coordinate conversion part 36 converts the coordinates of the alternating current Iu and Iv introduced by the current input part 35 to a revolving coordination system (d-q coordination system) on the rotor of the brushless DC motor 30A, and calculates flux current Id (d-axis current) and torque current Iq (q-axis current). Ex. 1005 ¶ 35. Petitioners reason that such transformation results in separate, independent values of Q and d axis currents determined from control signals received from the system controller. Pet. 23. Petitioners support this reasoning with testimony by Dr. Ehsani. Ex. 1009 ¶ 38. Patent Owner responds that “the values coming from part 36 are at best a transform into the rotating frame of reference of actual measured currents” and that “[t]hey are not the demanded currents generated by the controller.” Prelim. Resp. 22. Notwithstanding the explicit identification of these values as “Iq” and “Id” in the original Japanese reference, Patent Owner also contends that they “are not values one of ordinary skill would refer to as Iq and Id.” Id. at 23. In addition, Patent Owner contends that “[i]t is the current control part 40 output that is used to create the continuous phase sine wave commutated currents for the motor after being transformed back out of the rotating frame of reference,” reasoning that “[i]f Iq and Id are not independent at this step, the ‘motor controller’ is not using ‘independent values of Q and d axis current’ to perform ‘sine wave commutation.’” Id. at 24. Patent Owner contends that such inputs are not independent, noting” slip op. at 9
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 7,626,349
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.