- Facebook, Inc. / Instagram, LLC v. Skky, LLCRehearing deniedPTAB · Sep 28, 2017 · CBM2016-00091 · APJ Glenn J Perry · CBM · Rehearing
The Board denied Facebook and Instagram’s rehearing request, finding no abuse of discretion in denying CBM review because the disclaimed claims could not establish eligibility.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“may deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.208(b). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 4
- Adverse judgmentOther
“when a patent owner files a statutory disclaimer after the filing of the petition but before institution, CBM patent review eligibility can be based on the disclaimed claims. Specifically, Petitioner relies upon limitations of disclaimed claims 6 and 8−11 as supporting its contention that the ’502 patent qualifies for CBM patent review. See Pet. 4–8 (citing claim 6, for example, which recites “charging a fee, to the user”). Patent Owner, however, statutorily disclaimed claims 6 and 8−11, pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). See Prelim. Resp. 4; Ex. 2001. In the Decision on Institution, for purposes of establishing CBM patent review eligibility and in accordance with Federal Circuit case law, we treated the ’502 patent as though these claims never existed. Dec. on Inst. 8–10.” slip op. at 7
NonePatents in suitUS 9,037,502 - Duodecad It Services Luxembourg S.à.R.L. / Friendfinder Networks Inc. et al. v. Wag Acquisition, LLCRehearing deniedPTAB · Apr 4, 2017 · IPR2015-01035 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution for claims 1–18, finding the petition did not persuasively show Ground 3’s references taught the constant-fill-rate limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“construction and construed “playback rate” (as recited in claims 1, 3, 8, 9, and 14) as “a rate at which the data is encoded for playback to a user.” Dec. 6–7 (citing Paper 2 (“Pet.”) 12; Paper 6 (“Prelim. Resp.”) 17). We also declined to adopt Petitioner’s proposed construction for “at about playback rate” as indefinite as it could represent “any rate” (Pet. 12). Dec. 7. We adopted Patent Owner’s proposed construction that “at about playback rate” as recited in claims 1, 8, and 14, should be construed as “at approximately the rate at which the media will be played out.” Dec. 7 (citing Prelim. Resp. 16–18; Ex. 1001, 3:40–42, 4:33–35, 4:47–50, 5:37–40).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“indefinite, contends, in the alternative, that “the Board erred in giving a special meaning to ‘about’ or ‘approximately’ in the context of the playback rate as being related to variations that may arise as a result of variable encoding. Petitioners submit that ‘about’ should be ‘approximately’ without imparting such special meaning to the term.” Reh’g Req. 6 (citing Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); Duraflame, Inc. v. Hearthmark, LLC, 2013 U.S. Dist. LEXIS 21229, *23 (N.D. Cal. Feb. 14, 2013)). We disagree with Petitioner’s arguments that the term “about” in the claim phrase “about playback rate” requires further construction. We note that Petitioner’s rehearing request argument with respect to Chen, Chen FH, Carmel, and ISO-11172 teaching that “the media data elements is sent at a rate that matches the constant fill rate of a server buffer” does not depend on the revised construction of either “playback rate” or the construction of “about” in the claim phrase “about playback rate.” Thus, for purposes of this rehearing decision, we do not further construe “about playback rate”” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Nathaniel Polish, Ph.D. (Ex. 1003 ¶ 63) in arguing that the Board erred in finding that Chen and the Chen FH did not “‘teach or suggest that the server buffer in Chen fills at a constant rate that matches the rate of data coming out of the buffer’” as recited in challenged claims. Reh’g Req. 7–9 (quoting Dec. 15.). The Petition, however, makes no reference to “the case where the stream buffer holds one frame of data” and argues only that in Normal mode the Chen server buffer empties at about playback rate to avoid overflow and underflow conditions. Pet. 19; see also Pet. 31 (citing claim 42 of Chen). In addition, neither the Petition nor Dr. Polish’s declaration cited therein discusses the case where one frame of data is in the Chen stream buffer and subsequently leaves the stream buffer, i.e., that one and only one frame of data is loaded into the stream buffer. Compare Req. Reh’g 9 with Pet. 19, 31; Ex. 1003 ¶ 63. The Board did not misapprehend or overlook arguments that were not presented. In addition, Petitioner’s arguments based on the size of the server buffer in Chen, as presented in the Petition, failed to persuasively show that the server buffer in Chen fills at a constant rate that matches the rate of data coming out of the buffer or that rate into its buffer is constant. Petitioner’s arguments that a one frame buffer “necessarily” shows that one frame is loaded into the Chen buffer is conclusory and not persuasive to the extent it was argued in the Petition.” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 8,185,611 - PTAB · Dec 28, 2016 · IPR2015-01037 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing in both proceedings because Petitioner did not show that Su was publicly accessible by the critical date or that the Board overlooked or misapprehended a petition argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner fails to recognize that our Decision was based on Petitioner’s failure to present sufficient evidence of public accessibility. Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“The sole evidence cited in the Petition is a print-out of a record created in 2008 by Theses Canada. Ex. 1013 (“TH-Su”). As we noted in our Decision Denying Institution, TH-Su includes an active PDF link to Su, identifies Su as resident on two microfiches, indicates the publisher is the Ottawa: National Library of Canada [1999], and includes an abstract. Dec. Denying Inst. 7. TH-Su also includes an AMICUS No. (20672380)1, an international standard book number (ISBN 0612312569), a Canadian Number (992099080) and the following information “Copies: NL Stacks – Mic. TJ- 31256.” Id. at 7-8. However, TH-Su is a document created and modified on July 18, 2008, not in 1999. Id. at 7–8. Petitioner failed to tie 3 We agree with Petitioner’s assertion that it did not concede any of the argument set forth in Patent Owner’s Preliminary Response. Req. Reh’g. 6, fn 4. However, our inquiry during the conference of August 4, 2016 concerned facts and evidence. any of these numerical designations in TH-Su to public accessibility prior to 2008. Thus, Petitioner failed to meet its burden to demonstrate that Su was publically accessible in 1999.” slip op. at 4
§ 102 anticipationPatents in suitUS 8,122,141 - PTAB · Dec 28, 2016 · IPR2015-01033 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing of the institution denials because Petitioner did not show that Su was publicly accessible before the patents’ critical dates.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition or reply. Id. For the reasons discussed below, the Request for Rehearing is DENIED.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Petitioner’s failure to present sufficient evidence of public accessibility. Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).” slip op. at 3
§ 102 anticipationPatents in suitUS 8,327,011 - Unified Patents Inc. v. William GreciaRehearing deniedPTAB · Nov 29, 2016 · IPR2016-00789 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Unified Patents’ rehearing request, leaving in place the denial of institution because the petition did not sufficiently show the claimed token correspondence or GUI and API.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s 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. 4 Wieder, U.S. Patent No. 8,001,612 B1, issued Aug. 16, 2011 (Ex. 1007). 5 Wiser, U.S. Patent No. 6,385,596 B1, issued May 7, 2002 (Ex. 1008). 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“a password or e-mail, not just any password or e-mail automatically satisfies the recited membership verification token. To satisfy the recited membership verification token, the password or e-mail must correspond to the digital media, as recited in each of independent claims 1, 12 and 15. See also Inst. Dec. 7 (construing the claim phrase “the request comprising a membership verification token provided by a first user, corresponding to the encrypted digital media” such that the language “corresponding to the encrypted digital media” modifies the membership verification token). This is supported by the specification of the ’555 patent, which teaches that “an identifier for the digital media is stored in a database with another database of a list of associated tokens for cross-reference identification for verification.” Ex. 1001, 8:52–55 (emphasis added); see also id. at 8:19–21 (“Subsequently, the membership verification token is authenticated at step 604. The authentication is performed in connection with a token database.”).” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“a password or e-mail, not just any password or e-mail automatically satisfies the recited membership verification token. To satisfy the recited membership verification token, the password or e-mail must correspond to the digital media, as recited in each of independent claims 1, 12 and 15. See also Inst. Dec. 7 (construing the claim phrase “the request comprising a membership verification token provided by a first user, corresponding to the encrypted digital media” such that the language “corresponding to the encrypted digital media” modifies the membership verification token). This is supported by the specification of the ’555 patent, which teaches that “an identifier for the digital media is stored in a database with another database of a list of associated tokens for cross-reference identification for verification.” Ex. 1001, 8:52–55 (emphasis added); see also id. at 8:19–21 (“Subsequently, the membership verification token is authenticated at step 604. The authentication is performed in connection with a token database.”).” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“the admitted prior art” For the asserted grounds based on DeMello, Petitioner relied on either DeMello or the admitted prior art as teaching the recited “membership verification token . . . corresponding to the encrypted digital media.” Pet. 17–21, 52. For the asserted grounds based on Pestoni, Petitioner relied on either Pestoni or the admitted prior art as teaching the recited “GUI” and “API.” Id. at 33; see id. at 29 (citing Ex. 1009, Exhibit D). We denied institution of these asserted grounds because we were not persuaded by Petitioner’s arguments regarding the teachings of DeMello or Pestoni, either alone or in combination with the admitted prior art. slip op. at 3
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,402,555 - Unified Patents Inc. v. William GreciaRehearing deniedPTAB · Nov 22, 2016 · IPR2016-00602 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Unified Patents’ rehearing request, finding no abuse of discretion in denying institution on the DeMello- and Pestoni-based grounds challenging claim 1.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s 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). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“argument for ‘requesting the query data.’” Req. Reh’g 8 (emphasis omitted). According to Petitioner, “[t]he Petition certainly offers reasons to combine with Wieder for the token database . . . , but [the requesting step] doesn’t require combination because it is obvious from Pestoni alone.” Id. at 9. We disagree with Petitioner’s contention. As we noted in our Institution Decision, an obviousness analysis requires “‘some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Inst. Dec. 14 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Even if the recited requesting step “doesn’t require combination” with another patent or printed publication, Petitioner did not explain sufficiently why one of ordinary skill in the art would have considered modifying Pestoni to arrive at the claimed invention. See id. For instance, Petitioner merely asserted, without further explanation, that “it would be obvious to one of skill in the art to implement Pestoni with a request and corresponding reception.” Pet. 49. Accordingly, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness as to the recited requesting step. See Kahn, 441 F.3d at 988.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,887,308 - Unified Patents Inc. v. William GreciaRehearing deniedPTAB · Oct 13, 2016 · IPR2016-00600 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving institution denied on the DeMello-based anticipation and obviousness grounds because the petition did not sufficiently show the claimed verification token or reason to modify DeMello.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s 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). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent 3 Wiser, U.S. Patent No. 6,385,596 B1, issued May 7, 2002 (Ex. 1008). 4 Cooper, U.S. Publ’n No. US 2009/0037388 A1, published Feb. 5, 2009 (Ex. 1009). Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the asserted grounds based on DeMello, Petitioner relied on either DeMello or the admitted prior art as teaching the recited “verification token . . . corresponding to the digital content.” Pet. 17–21, 52. We denied institution of these asserted grounds because we were not persuaded by Petitioner’s arguments regarding the teachings of DeMello, either alone or in combination with the admitted prior art.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“noted in our Institution Decision, an obviousness analysis requires “‘some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Inst. Dec. 12. With respect to claim elements [C], [D], and [G], Petitioner did not explain sufficiently why one of ordinary skill in the art would have considered modifying DeMello to arrive at the claimed invention. See id. at 13; see also Req. Reh’g 8 (“A claim can be rejected as obvious over a single reference by identifying a teaching, suggestion, or motivation (TSM) to modify the single reference to fall within the scope of the claim.”). For example, with respect to claim element [D], Petitioner merely asserts that “DeMello describes a browser, which clearly implies or suggests a GUI.” Req. Reh’g 8; see also id. at 12 (“one of skill in the art, analyzing the ‘browser’ in DeMello, would understand that these browsers obviously have a GUI”); Pet. 23 (“it is obvious that the browser of the reader mentioned in DeMello includes a GUI, since browsers provide a GUI”). We are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness over DeMello alone as to claim element [D]. Similarly, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness over DeMello alone as to claim elements [C] and [G]. See Req. Reh’g 10–11; Pet. 20–21, 26–28.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“DeMello, Petitioner contends that we “overlooked the Petition’s argument that the claims are obvious in view of DeMello alone, without any of the additional, admitted prior art.” Req. Reh’g 7 (emphasis omitted). According to Petitioner, “the admitted prior art was added, as background information,” and the Petition showed that claim elements [C], [D], and [G] are obvious over DeMello alone. Id. at 8, 10, 12. This is a new argument, which does not address what was overlooked or misapprehended in our Decision, and is not appropriate in a request for rehearing. See 37 C.F.R. § 42.71(d). For instance, the heading at page 15 of the Petition reads “Ground 1: Claims 1–20 are unpatentable as obvious over DeMello (EX1006) in view of the admitted prior art” (emphasis omitted). None of the other headings in the Petition alleges that any of the claims are unpatentable as obvious over DeMello alone. Nor has Petitioner directed us to any portion of the Petition presenting such argument.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,533,860 - Micron Technology, Inc. / SK Hynix, Inc. v. Elm 3ds Innovations, LLCInstitution deniedPTAB · Sep 6, 2016 · IPR2016-00703 · APJ Barbara A Benoit · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, including for failure to establish the required partitioned control layer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“4. Conclusion “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 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., No. 2015-1693, 2016 WL 2620512, at *6 (Fed. Cir. May 9, 2016) (“It was [Petitioner]’s burden to demonstrate 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.”) (internal quotation marks removed). Thus, Petitioner must explain how the combination of Hsu and Sakuta would have rendered the independent claims 1 and 5 unpatentable. For the foregoing reasons, we determine that the Petition does not demonstrate sufficiently that Petitioner’s proposed combination of Hsu and Sakuta would have conveyed to one of ordinary skill in the art a control layer of the stacked memory integrated circuit partitioned into a plurality of vertically interconnected circuit block stacks as required by independent claims 1 and 5. Accordingly, after considering the information presented in” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art relevant to the challenged patent “would have had at least a B.S. degree in electrical engineering, material science, or equivalent thereof, and at least 3–5 years of experience in the relevant field, e.g., semiconductor processing.” Ex. 1002 ¶ 58; see Pet. 6–7 (relying on Ex. 1002 ¶ 58). Patent Owner does not offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the challenged patent. See generally Prelim. Resp. Based on our review of the challenged patent, the types of problems and solutions described in the challenged patent and cited prior art, and the testimony of Petitioner’s Declarant, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“required partitioned circuit control layer of a stacked memory integrated circuit, Petitioner asserts, without further explanation or analysis, that one of ordinary skill in the art “would have recognized that the stacked memory integrated circuits disclosed by Hsu, e.g., ROM and SRAM, are often partitioned into a plurality of circuit blocks. Ex. 1002 at ¶147.” Id. at 33 (quoting ¶ 147 of Dr. Franzon’s testimony (Ex. 1002)). Although Petitioner quotes Dr. Franzon’s testimony for support, Dr. Franzon’s testimony is unavailing because it is conclusory. Dr. Franzon’s testimony merely states, without providing further analysis or evidence, that one of ordinary skill in the art would have recognized stacked memory integrated circuits are often partitioned. As such, Dr. Franzon’s testimony does not disclose the facts underlying his conclusion or provide sufficient analysis or evidence to support his conclusion. Accordingly, Dr. Franzon’s testimony is entitled to” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In referring to “the block-based design” or “the block-based memory design” of Sakuta, Petitioner fails to distinguish between Sakuta’s various embodiments, only one of which even arguably discloses a partitioned control circuit (embodiment shown in Figure 3) for the reasons previously discussed. See id. at 33–34 (discussing embodiments shown in both Figures 1 and 3). This further demonstrates shortcomings in Petitioner’s position relying on Sakuta’s purported “memory circuit design that is partitioned into a plurality of circuit blocks” for a partitioned two-dimensional control circuit. Id. Moreover, Petitioner does not address, much less sufficiently explain, why one of ordinary skill in the art would have combined, with Hsu’s threedimensional memory structure, Sakuta’s embodiment that includes a control circuit in the memory block (as shown in Figure 3), rather than Sakuta’s embodiment that includes the memory blocks controlled by a shared control circuit (as shown in Figure 1). See generally id. at 25–30, 35. For these reasons, we are not persuaded by Petitioner’s reasons to” slip op. at 20
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,791,581 - Micron Technology, Inc. / SK Hynix, Inc. v. Elm 3ds Innovations, LLCInstitution deniedPTAB · Sep 6, 2016 · IPR2016-00706 · APJ Barbara A Benoit · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 5, 12, 36, 54, 78, 113, 116, 133, or 136 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (“It was [Petitioner]’s burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art” slip op. at 17
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner then asserts, without further explanation or analysis, that one of ordinary skill in the art “would have recognized that the integrated circuits are often partitioned into a plurality of circuit blocks.” Id. (citing Ex. 1002 ¶ 132 (claim element 1c) 8). Although Petitioner cites Dr. Franzon’s testimony regarding how one of ordinary skill in the art would have understood Bertin ’945, Dr. Franzon’s testimony is unavailing because it is conclusory. Dr. Franzon’s testimony merely states, without providing further analysis or evidence, that one of ordinary skill in the art would have recognized that the integrated circuits are often partitioned into a plurality of circuit blocks. As such, Dr. Franzon’s testimony does not disclose the facts underlying his conclusion or provide sufficient analysis or evidence to support his conclusion. Accordingly, Dr. Franzon’s testimony is entitled to little or no weight. 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.”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner’s reliance on Sakuta’s two-dimensional memory circuit design for the requisite partitioned control layer, however, does not distinguish sufficiently between Sakuta’s embodiment with a two-dimensional matrixed memory circuit that shares a control circuit (as shown in Sakuta’s Figure 1) and Sakuta’s embodiment with a two-dimensional matrixed memory circuit in which each memory block includes a control circuit (as shown in Sakuta’s Figure 3). See id. at 31–32 (citing Ex. 1067, Abstract, 5:52–54 (discussing embodiment shown in Fig. 1), 8:49–60 (discussing embodiment shown in Fig. 3), Fig. 3). Thus, Petitioner relies both on Sakuta’s embodiment in which the control circuit arguably seems to be partitioned (Figure 3) and on Sakuta’s embodiment in which the control circuit is not partitioned (Figure 1). See, e.g., Ex. 1067, 6:34–35 (indicating the “control circuit” is the “timing and address generator of FIG. 1”), 8:49– 60 (indicating Fig. 3 shows “each memory block of this embodiment” as being “equipped with . . . the control circuit”). Petitioner’s reliance on both embodiments—only one of which arguably has a partitioned control 15 circuit—undermines Petitioner’s position that its proposed combination of Bertin ’945 and Sakuta would have conveyed to one of ordinary skill in the art the required partitioned control layer of a stacked memory integrated circuit. Thus, we are not persuaded that Petitioner has shown sufficiently that Petitioner’s proposed combination of Bertin ’945 and Sakuta would have conveyed to one of ordinary skill in the art the required partitioned circuit control layer of a stacked memory integrated circuit.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In referring to “the block-based design” or “the block-based memory design” of Sakuta, Petitioner fails to distinguish between Sakuta’s various embodiments, only one of which even arguably discloses a partitioned control circuit (embodiment shown in Figure 3) for the reasons previously 16 discussed. See id. at 31 (discussing embodiments shown in both Figures 1 and 3). This further demonstrates shortcomings in Petitioner’s position relying on Sakuta’s purported “memory circuit design that is partitioned into a plurality of circuit blocks” for a partitioned two-dimensional control circuit. Id. Moreover, Petitioner does not address, much less sufficiently explain, why one of ordinary skill in the art would have combined, with Bertin ’945’s multichip semiconductor stack, Sakuta’s embodiment that includes a control circuit in the memory block (as shown in Figure 3), rather than Sakuta’s embodiment that includes the memory blocks controlled by a shared control circuit (as shown in Figure 1). See generally id. at 27–29, 32. For these reasons, we are not persuaded that Petitioner’s reasons to combine explain how Sakuta would have conveyed to one of ordinary skill in the art a partitioned control circuit.” slip op. at 16
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,791,581 - Unified Patents Inc. v. William GreciaInstitution deniedPTAB · Aug 30, 2016 · IPR2016-00602 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 1 unpatentable over DeMello or Pestoni, alone or in the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“requesting inter partes review of claim 1 of U.S. Patent No. 8,887,308 B2 (Ex. 1003, “the ’308 patent”). William Grecia (“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), 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.” For the reasons that follow, we have decided not to institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under this standard, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer,” however, and clearly set forth a definition of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Claim 1 requires the “credential” to be assigned to the apparatus of (a). As Patent Owner points out, the specification of the ’308 patent describes such credential as “an API Key, an Application Secret Key and could also include an Application ID,” which “[is] usually embedded in the source code of the apparatus, or stored on a remote Internet server.” Id. at 28–29 (citing Ex. 100[3], 10:51–56); Ex. 1003, 10:51–66. The apparatus, such as an Internet-powered desktop or a browser-based application, uses the API Key to establish a data exchange session with the API. Ex. 1003, 10:51–58. By contrast, the “credential in DeMello is assigned to the user, not the device.” Prelim. Resp. 28. As Petitioner explains, “[i]n DeMello, the reader prompts a user to provide login credentials (e.g., PASSPORTTM credentials) to connect to the PASSPORT server via the API of the PASSPORT server to authenticate the user at the PASSPORT server.” Pet. 31 (emphases added); see also Ex. 1006, 23:6–10. Further, Mr. Cherukuri characterizes the PASSPORT credentials as “user’s credentials.” See Ex. 1009 ¶ 72 (cited at Pet. 32) (emphasis added). Neither Petitioner nor Mr. Cherukuri explains persuasively how the user PASSPORT credentials in DeMello are assigned to the reader (apparatus of (a)). Based on the record presented, we are not persuaded that DeMello discloses the recited credential. In view of the foregoing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that DeMello anticipates claim 1.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“B. Obviousness over DeMello, Wieder, and the Admitted Prior Art Petitioner argues that claim 1 of the ’308 patent would have been obvious over DeMello, Wieder, and “the admitted prior art.” See Pet. 19– 39. Petitioner does not cite Wieder or the admitted prior art as teaching the elements found to be lacking in the above discussion with respect to DeMello. Accordingly, on this record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 would have been obvious over DeMello, Wieder, and the admitted prior art.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,887,308
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.