- PTAB · Mar 9, 2021 · IPR2020-01337 · APJ Kara L Szpondowski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over Oki alone or in combination with Henry or Toffolo.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1358, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012)); see also Intelligent Bio- Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been anticipated and/or obvious over the proposed combinations of prior art. slip op. at 7
- Parallel petitionsNot reached
“In our Decision on Institution in IPR2020-01283, which is issuing concurrently with this Decision, we determine that Petitioner has not established a reasonable likelihood of showing that at least one of the claims challenged in that IPR is unpatentable, and thus, we do not institute inter partes review in that proceeding. Petitioner’s challenge in this proceeding is similar to the challenge in IPR2019-00043, and suffers from the same deficiencies that warranted denial of institution in that proceeding. As discussed below, and, for substantially the same reasons as in IPR2019- 00043, we determine that Petitioner has not established a reasonable likelihood of showing that at least one of the claims challenged in this proceeding is unpatentable, and thus, we do not institute inter partes review in this proceeding. Given that we do not institute inter partes review in this proceeding or in IPR2020-01283, we need not reach the issue of whether more than one petition is necessary for Petitioner’s challenges to the ’117 patent, and/or whether to otherwise exercise discretion to deny institution of inter partes review under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, physics, optics or a related field, and approximately three years of experience with field of visual displays, circuit design, and related technologies.” Pet. 21 (citing Ex. 1102 ¶¶ 19–20). Patent Owner does not propose a level of ordinary skill in the art or oppose Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. Petitioner’s proposed definition is unopposed and is consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). We, therefore, adopt Petitioner’s level of ordinary skill in the art for purposes of this Decision.” slip op. at 10
- BurdenDecided for patent owner
“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (alteration in original) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)); HTC Corp. v. Cellular Commc’n. Equip. LLC, 701 F. App’x. 978, 982 (Fed. Cir. 2017) (“The separate naming of two structures in the claim strongly implies that the named entities are not one and the same structure.”). Claims 1 and 15 recite the “user [input] signal” and the “dark level bias” as separate and distinct elements of the claimed “brightness control circuit” and method. Claim 1 recites “a first input configured to receive a user signal indicative of a user selectable brightness setting,” with “a multiplier configured to selectively generate a combined signal based on both the user signal and the sensing signal,” and “a dark level bias 1 To the extent Petitioner contends that a signal “reflecting” or “representing” “a” is different from + a as used in Oki’s equation, we reject that argument. The “a” in Oki’s equation is the same, whether in the first part of the equation, (b – a) x, which Petitioner relies on to teach the “combined signal,” or the second part of the equation, + a, which Petitioner relies on to teach the “dark level bias.” Pet. 44, 46. configured to adjust the combined signal to generate a brightness control signal . . .” Ex. 1001, 12:30–43. Claim 15 recites similar limitations in method form. Id. at 13:36–14:9. In other words, the dark level bias adjusts a combined signal that is generated based on the user signal and the sensing signal. slip op. at 18
Discretionary denialcites Phillips · GrahamPatents in suitUS 8,223,117 - PTAB · Mar 9, 2021 · IPR2020-01283 · APJ Kara L Szpondowski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016); see also KSR, 550 U.S. at 418. A motivation to combine the teachings of two references can be “found explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013). Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418; In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’”). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1358, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012)); see also Intelligent Bio- Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (alteration in original) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)); HTC Corp. v. Cellular Commc’n. Equip. LLC, 701 F. App’x 978, 982 (Fed. Cir. 2017) (“The separate naming of two structures in the claim strongly implies that the named entities are not one and the same structure.”). Claims 1 and 15 recite the “user [input] signal” and the “dark level bias” as separate and distinct elements of the claimed “brightness control circuit” and method. Claim 1 recites “a first input configured to receive a user signal indicative of a user selectable brightness setting,” with “a multiplier configured to selectively generate a combined signal based on both the user signal and the sensing signal,” and “a dark level bias configured to adjust the combined signal to generate a brightness control signal . . .” Ex. 1001, 12:30–43. Claim 15 recites similar limitations in method form. Id. at 13:36–14:9. In other words, the dark level bias adjusts a combined signal that is generated based on both the user signal and the sensing signal. slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“First, Petitioner asserts that Ottenstein discloses that it will maintain the sensing signal at least “10% of full scale” when the ambient light level decreases to approximately zero. Pet. 63. We disagree. Ottenstein states: Further for very low ambient light levels, a night mode should be used in place of auto mode. Thus the automatic brightness control need not and should not operate at low ambient light levels, say less than 10% of maximum. The sensed ambient brightness level should be limited so that it is always at least 10% of full scale. Ex. 1012, 3:66–4:4. We agree with Patent Owner that Ottenstein does not disclose that the sensing signal is maintained above a certain level; rather, Ottenstein refers to the bottom of the ambient light range that should be used in auto mode before switching to night mode. See Prelim. Resp. 73. Moreover, Petitioner contends that maintaining the sensing signal at this level would be implemented using one of two techniques: (1) “the sensed signal should be replaced with a dark level bias that is 10% of full scale brightness” or (2) “the dark level bias can be added to the ambient light signal.” Pet. 63. However the claim recites “a dark level bias configured to adjust the combined signal . . .” Ex. 1001, 12:38 (emphasis added). Both of the constructions advanced by Petitioner for this limitation also require a “deviation from the combined signal” or “a dark level bias . . . to adjust the combined signal.” Pet. 18 (emphasis added). Neither of Petitioner’s two proposed implementations teach adjusting the combined signal; rather, Petitioner proposes either replacing the sensed signal or adding the dark level bias to the ambient light signal. Therefore, Petitioner has not shown that either of the two proposed techniques teach limitation 1[D].” slip op. at 40
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,223,117 - Vizio, Inc. v. Polaris Powerled Technologies, LLCRehearing grantedPTAB · Sep 15, 2020 · IPR2020-00043 · APJ Kara L Szpondowski · IPR · Rehearing
The Board granted rehearing but denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“We have considered Petitioner’s Request for Rehearing and, for the reasons set forth below, we grant Petitioner’s Request for Rehearing, but we are not persuaded to change our ultimate conclusion to deny institution of inter partes review. II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.” slip op. at 3
- Other 314aInstitution denied discretionary otherDenied
“III. DISCUSSION OF THE REQUEST FOR REHEARING On May 4, 2020, we issued our Decision denying institution of inter partes review based upon: (1) the advanced stage of the California District Court proceeding; (2) the investment of time and resources by the District Court and the parties in the California District Court proceeding; (3) overlap in the invalidity theories that Petitioner is pursuing here and in the California District Court proceeding; and (4) overlap in the claims challenged in the California District Court proceeding. Inst. Dec. 6–12. In the Decision, we did not reach any of the ten substantive grounds for patentability. See generally Inst. Dec. Rather, the denial of institution was solely based on our findings under 35 U.S.C. § 314(a). Id.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review under 35 U.S.C. §314(a) and 37 C.F.R. §42.4. Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2012); see also 37 C.F.R. § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”) For the reasons set forth below, upon considering the arguments and evidence of record, we are not persuaded to change our ultimate conclusion to deny institution of inter partes review.7” slip op. at 5
- BurdenDenied
“The petition must identify with particularity each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim. 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.22(a) (content of petitions); 37 C.F.R. 42.104 (content of petition). Petitioner’s conclusory statements, without more, are irreparably lacking in detail. Petitioner does not provide any analysis to support the assertion of obviousness over Oki. In fact, Petitioner instead asserts that Oki discloses all of the limitations in each of claims 1, 2, 4–7, 9, 15, 16, and 18, so it is unclear what modification, if any, is required to Oki, or even the basis of Petitioner’s obviousness grounds. E.g., Pet. 28– 33. Petitioner does not clearly point out the differences between the claimed invention and Oki. Nor does Petitioner explain why a person of ordinary skill in the art would have found the claimed subject matter obvious in spite of those differences. Petitioner has not provided sufficient reasoning or facts on which to base a conclusion that a person of ordinary skill in the art would have found it obvious, in light of Oki’s disclosure, to modify Oki to meet the claim limitations. Accordingly, Petitioner fails to demonstrate a reasonable likelihood that it would prevail on this ground of unpatentability.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,223,117 - Axon Enterprise, Inc. v. Digital Ally, Inc.Rehearing deniedPTAB · Feb 25, 2019 · IPR2017-00515 · APJ Minn Chung · IPR · Rehearing
The Board denied Axon’s rehearing request, leaving in place the denial of institution for claims 10–17 and 20 because the petition did not show a reasonable likelihood of unpatentability.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. ANALYSIS In the Decision, we determined that Petitioner did not demonstrate sufficiently that the combination of Vasavada and Tabak teaches or renders obvious all limitations of independent claim 10. Dec. 30–37. Our analysis focused on the limitations of claim 10 identified by Petitioner as limitations 10[D] and 10[G] (Pet. 58, 64), which recite “a recording device manager operable” (limitation 10[D]) to “broadcast, in response to receiving the trigger signal, at least one communication signal including correlation data to the first recording device and the second recording device instructing the first recording device to begin recording said first set of record data and instructing the second recording device to begin recording said second set of record data” (limitation 10[G]). Dec. 30–37. Claim 10 refers to the signal broadcast to the first and second recording devices as “the broadcast communication signal.” Ex. 1001, 16:52–53.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“required an “actual, physical substitution” of Tabak’s content recording device for Vasavada’s radios. Req. Reh’g 11, 13. The Decision did not require Petitioner to prove an actual physical substitution or bodily incorporation of Tabak’s content recording device into Vasavada’s system. Instead, the Decision properly determined that the Petition failed to explain adequately how Petitioner’s proposed combination of Vasavada and Taka produces the claimed invention. See Dec. 34–38; see also TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (an explanation of how the references would be combined to produce the claimed invention is necessary to show obviousness).” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The Request appears to simply disagree with our determination that Dr. Houh’s testimony was not supported or corroborated by the disclosures of Vasavada. Mere disagreement with a decision is not a proper basis for rehearing when a party’s arguments were considered and addressed in the decision. The Request also contends that we “overlooked Dr. Houh’s expertise in the field” (Req. Reh’g 13) and “[b]ased on his qualifications, Dr. Houh indisputably possesses sufficient technical expertise to be of assistance to the trier of fact” (id. at 15). We were not, however, required to accept Dr. Houh’s testimony merely because Petitioner offered it. See Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board was not required to credit expert evidence simply because [a party] offered it) (citing In re Ethicon, Inc., 844 F.3d 1344, 1352 (Fed. Cir. 2017); 37 C.F.R. § 42.65(a)). Dr. Houh’s qualifications, impressive as they may be, do not by themselves render Dr. Houh’s testimony credible without being supported by underlying facts or evidence of record. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). As discussed above, upon review of the disclosures of Vasavada cited by Dr. Houh, we determined on our own that Dr. Houh’s testimony was not supported by Vasavada, and found Dr. Houh’s testimony not credible. Dec. 32–33. Finally, the Request asserts that Dr. Houh’s testimony was unrebutted because Patent Owner did not submit a declaration disputing Dr. Houh’s testimony. Req. Reh’g 13–15. Petitioner appears to turn the burdens requirement of an inter partes review proceeding on its head. Patent Owner had no obligation to “rebut” Petitioner’s contentions or submit a declaration “rebutting” Petitioner’s contention that Vasavada discloses limitation 10[G]. See 37 C.F.R. §§ 42.107(a) (“The patent owner may file a preliminary response to the petition.” (emphasis added)), 42.108(c) (“The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, . . . .” (emphasis added)). Rather, it was Petitioner’s burden to demonstrate sufficiently in the Petition that the cited prior art renders the challenged claims unpatentable, including showing that the Petition’s contentions (e.g., Vasavada discloses limitation 10[G]) are supported by evidence. See 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (emphases added)) (citing 35 U.S.C. § 312(a)(3)); Intelligent Bio-Sys., 821 F.3d at 1369 (requiring “the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (emphases added)). As discussed above, the Decision properly determined that the Petition did not meet this burden required on Petitioner.” slip op. at 13
§ 103 obviousnesscites KSRPatents in suitUS 9,253,452 - Kranos Corporation D/B/A Schutt Sports v. Riddell, Inc.Institution deniedPTAB · Dec 13, 2017 · IPR2017-01530 · APJ Barry L Grossman · IPR · Institution
The Board denied institution on all challenged claims and grounds under §325(d), finding substantially the same art and arguments had been presented in an earlier petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“on behalf of the Director, may take into account whether, and reject a petition because, the same or substantially the same prior art or arguments previously were presented to the Office. 35 U.S.C. § 325(d). Because the 1530 Petition now before us presents substantially the same prior art, and substantially the same arguments, as asserted in the petition in IPR2016-01650 (see Ex. 3002) (the “1650 Petition”), we exercise our discretion under 35 U.S.C. § 325(d) and deny institution of a trial.” slip op. at 9
Discretionary denialPatents in suitUS 8,938,818 - Axon Enterprise, Inc. v. Digital Ally, Inc.Institution deniedPTAB · Jul 6, 2017 · IPR2017-00515 · APJ Minn Chung · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 10–17 and 20 were unpatentable over either asserted § 103 ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“35 U.S.C. § 314(a), which provides that an 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 that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims on the grounds set forth in the Petition. Accordingly, we deny Petitioner’s request to institute an inter partes review of claims 10–17 and 20.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard as the claim construction standard to be applied in an inter partes review proceeding). Under the broadest reasonable interpretation standard, and absent any special definitions, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in view of the specification. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For the purposes of this decision, and on the record presented, we determine that no claim terms need express interpretation. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“two-way radio, etc.” Ex. 1014 ¶ 62. Neither Petitioner nor Dr. Houh explains what specific modification to the remote handheld camera would have been necessary or how a person of ordinary skill would have been motivated to make the necessary modification based on “the structure and operation” of a walky-talky or a two-way radio. In addition, Dr. Houh does not explain what specific modification was “well within the skill of one skilled in the art” and why one would make such a modification. See Ex. 1003 ¶ 164. Further, Dr. Houh does not cite any evidence in support of his testimony. See id.; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Hence, we agree with Patent Owner that, at least with respect to the proposed modification to the remote handheld camera of Pierce, Petitioner’s argument and Dr. Houh’s testimony are conclusory, are based on hindsight, and do not include a reasoned analysis and evidentiary support sufficient to establish obviousness. See Magnum Oil Tools, 829 F.3d at 1380.” slip op. at 18
- Expert testimonyPetitioner expert discountedDecided for patent owner
“two-way radio, etc.” Ex. 1014 ¶ 62. Neither Petitioner nor Dr. Houh explains what specific modification to the remote handheld camera would have been necessary or how a person of ordinary skill would have been motivated to make the necessary modification based on “the structure and operation” of a walky-talky or a two-way radio. In addition, Dr. Houh does not explain what specific modification was “well within the skill of one skilled in the art” and why one would make such a modification. See Ex. 1003 ¶ 164. Further, Dr. Houh does not cite any evidence in support of his testimony. See id.; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Hence, we agree with Patent Owner that, at least with respect to the proposed modification to the remote handheld camera of Pierce, Petitioner’s argument and Dr. Houh’s testimony are conclusory, are based on hindsight, and do not include a reasoned analysis and evidentiary support sufficient to establish obviousness. See Magnum Oil Tools, 829 F.3d at 1380.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,253,452 - Arctic Cat, Inc. v. Polaris Industries Inc.Institution deniedPTAB · Jul 5, 2017 · IPR2017-00455 · APJ Phillip J Kauffman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on the challenged claims, failing to provide a sufficient rationale for either proposed prior-art combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner, and for that reason, section 325(d) is not relevant to our analysis. Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. We consider Patent Owner’s three underlying contentions under this standard.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“cooling air unobstructed by exterior body panels and would avoid receiving hot air from inside the engine compartment, thereby cooling the CVT more effectively, reducing wear, and improving CVT efficiency. Pet. 19, 22; Ex. 1001 ¶¶ 48–50, 54, 55, 230, 233; Ex. 1005 ¶¶ 4–5. The premise of this reasoning is that airflow to Suzuki’s CVT is obstructed by an exterior body panel or panels. That premise is not supported adequately the record.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this decision, and on this record, we determine that no claim terms need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“We reserve ruling on the Motion to Seal. Paper 7 and Exhibit 2015 will remain under seal in the interim. After the absence of a timely request for rehearing, or if filed, after resolution of a request for rehearing, Patent Owner may seek authorization to file a Motion to Expunge Paper 7 and Exhibit 2015. See 37 C.F.R. §§ 42.71(d)(1), 42.56.” slip op. at 3
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,217,501 - Irwin Seating Company v. Camatic Proprietary LimitedInstitution deniedPTAB · Jun 12, 2017 · IPR2017-00385 · APJ Mitchell G Weatherly · IPR · Institution
The Board denied institution because Irwin did not show a reasonable likelihood that claims 13, 18–22, 27–33, 35, and 36 were obvious over the asserted reference combinations.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (affirming that USPTO has statutory authority to construe claims according to Rule 42.100(b)). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’”). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Based upon our review of the Petition and Preliminary Response, we do not consider it necessary to interpret expressly any terms in the challenged claims to resolve a controversy presented by the parties.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“timely filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. Based on our review of the record, we conclude that because Irwin is not reasonably likely to prevail with respect to any of its challenges to the patentability of claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“analysis as follows: “In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.” Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017). However, “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references.” Id.at 1367 (quoting Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008)). The Metalcraft court further explained: Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against. See KSR, 550 U.S. at 421 . . . . And while we understand that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,” we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention. See KSR, 55 U.S. at 419, 421 . . . .” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“demonstrate a reasonable likelihood of establishing that an ordinarily skilled artisan would have been motivated to combine teachings from Head, Allison, and Burdick to arrive at the inventions as set forth in independent claims 13, 20, and 33. The testimony from Mr. Simons upon which Irwin relies is of little probative value because Mr. Simons merely parrots Irwin’s argument without citing objective evidence in support, even when such evidence should be readily available. For example, Mr. Simons testifies: In the context of beams, flanges/overhangs serve the dual purpose of mitigating torsional and bending movement while at the same time affording undercuts for positive attachment of other elements by either clamping or capturing. These benefits were well known to those of skill in the art before September 1999, and provide motivation for one of skill in the art to add flanges or overhangs to beam seating. Ex. 1002 ¶ 50 (parroting argument at Pet. 28). It is not sufficient simply to state a broad concept regarding “flanges/overhangs” as they relate to “mitigating torsional and bending movement” that is “well known” without also providing some objective evidence that the concept is well known as of the time of the invention. Like the testimony rejected for insufficiency in ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012), Mr. Simons’ testimony is generic and fails to explain with objective evidence in support why an ordinarily skilled artisan would have been motivated to modify Head’s beam 12 by adding the flanges of Allison or Burdick. Under ActiveVideo, an expert must: “explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims.” Mr. Simons fails to do so. Moreover, Expert testimony in these proceedings that “does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). As discussed below, Mr. Simons’ testimony regarding motivation to combine elements of Head, Allison, and Burdick is devoid of any disclosure of underlying facts or data and is therefore entitled to little or no weight.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,073,858 - Pacific Surf Designs, Inc.Institution deniedPTAB · Feb 22, 2017 · IPR2016-01674 · APJ Jason W Melvin · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted prior-art combinations.
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 “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that the Petition does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any challenged claim. We therefore do not institute inter partes review.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“are not persuaded Petitioner has demonstrated a reasonable likelihood of prevailing on grounds based on Frenzl. Each claim of the ’589 patent recites a nozzle cover in one form or another, e.g., “nozzle cover” (claims 1, 31, 38, and 42), “cover for a water ride sluice gate” (claim 17), “cover which covers and extends over the top surface of said sluice” (claim 24), “covering said sluice gate with a padded material” (claim 37), “padded cover [that] extends over at least one of the nozzles” (claim 50). Petitioner asserts that Frenzl “discloses a nozzle cover (shaded in red by Petitioner)” and provides an annotated portion of Frenzl’s Figure 7, which is reproduced below: The annotated portion of Figure 7 depicts what Frenzl describes as a “discharge nozzle 2” and “pivoting flap 25” along with the surrounding structures, where Petitioner has shaded the pivoting flap blue and shaded a portion of the surrounding structure red. Pet. 24; Ex. 1003, 4:74–5:20. We do not agree that the portion shaded red by Petitioner reasonably discloses a “cover” to Frenzl’s nozzle. At best, it depicts part of the structure comprising the nozzle. Stated otherwise, the portion Petitioner relies on as disclosing a nozzle cannot be both a nozzle and a cover for that same nozzle, and Petitioner fails to explain how various parts of the structure fulfill each requirement. Because each challenged claim recites a nozzle cover but Petitioner has not adequately identified disclosure of the claimed structure in Frenzl, we conclude that the Petition does not show a reasonable likelihood that Petitioner would prevail for any claim challenged based on Frenzl alone or in combination with Lochtefeld 547. Petitioner does not assert that Lochtefeld 547 teaches the claimed nozzle cover. See Pet. 36–45. We address Petitioner’s contentions regarding Lochtefeld 590 (see id. at 44–45) below. In light of the foregoing, we do not institute review based on Frenzl alone or in combination with Lochtefeld 547.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“Petitioner argues that “a person of ordinary skill would have been motivated to implement the ‘modular’ approach taught by Lochtefeld 547 to Hill to facilitate” Hill’s transportability. Id. at 58. Petitioner asserts that using Lochtefeld 547’s transportable modules would “improve transportability” of Hill’s ride in the way those modules operated in Lochtefeld 547. Id. But Petitioner has relied on Hill and Lochtefeld 547 in a more particular manner, drawing elements from each as explained above. As described above, Petitioner does not rely on Lochtefeld 547 simply for its teaching of a “modular approach.” Thus, without providing some rationale why a person of skill would have looked to each of the teachings from Lochtefeld 547 and Hill, Petitioner has failed to articulate the proposed ground of unpatentability with sufficient particularity. See 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.104(b). We conclude that the Petition does not show a reasonable likelihood that Petitioner would prevail for any claim challenged in a ground including Lochtefeld 547. We therefore do not institute review of those claims on any ground relying on Lochtefeld 547.” slip op. at 18
§ 103 obviousnesscites KSRPatents in suitUS 6,491,589 - PTAB · Jan 24, 2017 · IPR2016-00960 · APJ James A Tartal · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show a reasonable likelihood that claims 1–4 and 6–11 were obvious over Zhavoronkin, CA Honey, and US Honey.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“with Patent Owner that Petitioner has not clearly identified the known technique to which it refers or to any known modification. See Prelim. Resp. 69–70. Suggesting that a person of ordinary skill would simply add “a pickup assembly to Zhavoronkin as taught by CA Honey and associating the added pickup assembly with the existing middle conveyor disclosed by Zhavoronkin such that the pickup assemblies were aligned side by side,” is the epitome of a hindsight analysis. Pet. 54; see also In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991) (“It is impermissible [to use] applicant’s structure as a template and select[] elements from references to fill the gaps.”). Mr. Shirley’s conclusory statement that aligning the pickup assemblies “would be within the grasp of a person of ordinary skill in the art” does not persuade us because Petitioner has not identified any disclosure of the “aligned side by side” feature in any of the asserted references. See Ex. 1009 ¶ 383.[] The only apparent source of the missing disclosure of the “aligned side by side” feature is the ’488 patent itself. Petitioner has not sufficiently identified either how each of the elements of independent claims 1, 8, and 10 was disclosed in Zhavoronkin, CA Honey, and US Honey or a persuasive rationale in support of the combination of the three references.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“with Patent Owner that Petitioner has not clearly identified the known technique to which it refers or to any known modification. See Prelim. Resp. 69–70. Suggesting that a person of ordinary skill would simply add “a pickup assembly to Zhavoronkin as taught by CA Honey and associating the added pickup assembly with the existing middle conveyor disclosed by Zhavoronkin such that the pickup assemblies were aligned side by side,” is the epitome of a hindsight analysis. Pet. 54; see also In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991) (“It is impermissible [to use] applicant’s structure as a template and select[] elements from references to fill the gaps.”). Mr. Shirley’s conclusory statement that aligning the pickup assemblies “would be within the grasp of a person of ordinary skill in the art” does not persuade us because Petitioner has not identified any disclosure of the “aligned side by side” feature in any of the asserted references. See Ex. 1009 ¶ 383.[] The only apparent source of the missing disclosure of the “aligned side by side” feature is the ’488 patent itself. Petitioner has not sufficiently identified either how each of the elements of independent claims 1, 8, and 10 was disclosed in Zhavoronkin, CA Honey, and US Honey or a persuasive rationale in support of the combination of the three references.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,863,488
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.