- PTAB · Oct 15, 2020 · IPR2019-00995 · APJ Timothy J Goodson · IPR · Final written decision
The Board granted the non-contingent motion to amend, canceling claims 2, 8, 10, 18, 19, 28–30, 32–34, 37, 38, 40–42, 45, and 47 and substituting claims 48–62, which were not shown obvious.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“minimal probative value because Patent Owner has not adequately demonstrated a nexus between the asserted objective indicia and the merits of the claimed invention. Mot. to Exclude 3–4; Reply Mot. to Exclude 1–2. This argument attacks the merits of Patent Owner’s substantive arguments on objective indicia and does not establish an evidentiary basis for excluding Mr. Van Vliet’s testimony. We agree with Patent Owner that Mr. Van Vliet’s testimony is relevant to the issue of objective indicia of nonobviousness. See Opp. Mot. to Exclude 1–2. Petitioner also argues that Mr. Van Vliet’s declaration should be excluded because it contains hearsay. Mot. to Exclude 4–6; Reply Mot. to Exclude 2. Petitioner states that it “is not moving to exclude based on the fact that the Declaration itself [is] hearsay, but rather that it contains a multitude of statements therein that are themselves hearsay, made by persons other than Van Vliet . . . .” Mot. to Exclude 5. However, as Patent Owner points out, Petitioner does not identify any specific statements in the declaration that constitute hearsay. Opp. Mot. to Exclude 4. Even after Patent Owner pointed out this lack of specificity, Petitioner’s Reply still does not clarify which specific statements in the declaration are alleged to be hearsay and instead simply repeats the assertion there are “a multitude of statements therein that are themselves hearsay.” Reply Mot. to Exclude 2.” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“however, we first consider whether Patent Owner’s Revised Motion to Amend meets the statutory and regulatory requirements of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4. To satisfy those requirements, Patent Owner must demonstrate that: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; and (4) the proposed claims are supported in the original disclosure (and any earlier filed disclosure for which the benefit of filing date is sought). See 35 U.S.C. § 316(d) (2018); 37 C.F.R. § 42.121 (2018).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We determine that the plain language of the claim, which requires that the fuel delivery connections “compris[e]” the fuel level sensor, shows that the fuel level sensor is structurally connected to the fuel level sensor. As Petitioner agrees, this claim language requires that the fuel delivery connection includes the fuel level sensor. Tr. 34:17–20. Both the fuel delivery connections and the fuel level sensor are structures, so for one to include the other, they must be physically connected. Petitioner’s argument give effect to the word “comprising.” Because a fuel delivery connection and a fuel level sensor would be operationally connected in any system that has both items, Petitioner’s interpretation essentially reads out the word “comprising” and treats the claim phrase as if it recited “fuel delivery connections and a fuel level sensor.” Our interpretation that the fuel delivery connections must be physically connected to the fuel level sensor is more faithful to the claim’s recitation that the fuel delivery connections “compris[e]” the fuel level sensor. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”) (quoting Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005)).” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“a low and high fuel level in the tanks to which the fuel delivery connection is connected.” RMTA A1. Patent Owner proposes that “low” fuel level means “empty or nearly empty” and “high” means “full or nearly full.” Id. at 5 nn.16–17 (citing Ex. 1001, 4:1–4, 6:7–12; Ex. 2002, 10). Petitioner does not contest Patent Owner’s proposed constructions or offer competing constructions for these terms. See generally Opp. RMTA; Tr. 13:17–15:14. Although Patent Owner’s argument in support of these constructions is truncated, we determine that Patent Owner’s proposals are supported by the evidence of record. The ’906 patent describes that operators can be provided with “visual representations or displays showing the fuel level in each of the tanks 12. Any visual representation or display may be used that shows at least a high level condition (tank full) and a low level condition (tank empty or nearly empty) and preferably also shows actual fuel level.” Ex. 1001, 3:66–4:4; see also id. at 6:7–10 (explaining that “[t]he control station 56 may be provided with a full readout or display for each fuel tank 12 being filled that shows the level of fuel in the fuel tank 12 including when the fuel tank 12 is near empty and near full. An alternative is to provide only fuel empty (low sensor dry) or fuel full (high sensor wet) signals.”). These descriptions equate a high fuel level with the tank being full or nearly full and a low fuel level with the tank being empty or nearly empty. Patent” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,029,906 - PTAB · Nov 26, 2014 · IPR2014-01438 · APJ Robert J Weinschenk · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding as to all parties before deciding whether to institute review.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Preliminary Response has not been filed, and a decision whether to institute a trial has not been rendered. Patent Owner represents that there is no currently pending district court litigation or ITC proceeding regarding the ’990 patent, and no decision has been made regarding future litigation. Mot. 1–2. Patent Owner also represents that there is no other related proceeding regarding the ’990 patent in the Office. Id. at 2. Based on the facts of this case, we determine it is appropriate to enter judgment terminating this proceeding with respect to all parties. We further find sufficient cause to treat the settlement agreement as business confidential information. Therefore, we grant the joint motion to terminate and the joint request to treat the settlement agreement as business confidential information. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that the joint motion to terminate is granted, and this proceeding is terminated as to all parties; and” slip op. at 2
NonePatents in suitUS 6,844,990 - PTAB · Oct 28, 2014 · IPR2014-00059 · APJ Joni Y Chang · IPR · Order
The Board granted the parties’ joint motions, terminated the instituted review as to all parties, and entered judgment after settlement before deciding the merits.
RulingsOther- Adverse judgmentAdverse judgmentGranted
“a proceeding will terminate after the filing of a settlement agreement, unless the Board already has decided the merits of the proceedings. Id. In their Joint Motions to Terminate, the parties indicate that they have settled all of their disputes involving the Rackspace inter partes reviews, as well as the related district court proceeding styled PersonalWeb Tech. LLC v. Rackspace US, Inc., No. 6-12-cv-00659 (E.D. Tex.). Mot. 1, 4. The parties also indicate that they concurrently filed their Stipulation of Dismissal, as to only the Rackspace Defendants with prejudice, in that related district court proceeding. Id.; Ex. 2019. More importantly, the parties expressly state that “no other disputes between the parties remain,” and “[t]here is no other litigation or dispute in any court or forum involving [Rackspace and PersonalWeb].” Id. at 4. Upon consideration of the facts before us, we determine that it is appropriate to terminate the Rackspace inter partes reviews as to both parties, and enter judgment.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“3. However, Google’s Petitions were not filed timely in accordance with 35 U.S.C. § 315(b) (“[a]n 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.”).3 Google could have, but did not, file a petition for inter partes review with the one-year time period. More significantly, Google’s Motions for Joinder were not filed timely in accordance with 37 C.F.R. § 42.122(b) (“[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.”).4 Google fails to provide sufficient reasons as to why we should exercise our discretion under 37 C.F.R. § 42.5(b) to waive the one-month time limit for filing a Motion for Joinder.5” slip op. at 4
NonePatents in suitUS 6,415,280 - PTAB · Oct 28, 2014 · IPR2014-00066 · APJ Joni Y Chang · IPR · Order
The Board granted the parties’ joint motions, terminated the Rackspace inter partes reviews as to all parties, and granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties further argue that maintaining the Rackspace inter partes reviews, after the parties have settled their disputes, would be contrary to public policy and would discourage future settlements by removing a significant motivation for settlement. Mot. 5. In view of the circumstances, we agree. Indeed, there are strong public policy reasons to favor settlement between the parties to a proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Generally, the Board expects that” slip op. at 4
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“3. However, Google’s Petitions were not filed timely in accordance with 35 U.S.C. § 315(b) (“[a]n 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.”).3 Google could have, but did not, file a petition for inter partes review with the one-year time period. More significantly, Google’s Motions for Joinder were not filed timely in accordance with 37 C.F.R. § 42.122(b) (“[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.”).4 Google fails to provide sufficient reasons as to why we should exercise our discretion under 37 C.F.R. § 42.5(b) to waive the one-month time limit for filing a Motion for Joinder.5” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“3. However, Google’s Petitions were not filed timely in accordance with 35 U.S.C. § 315(b) (“[a]n 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.”).3 Google could have, but did not, file a petition for inter partes review with the one-year time period. More significantly, Google’s Motions for Joinder were not filed timely in accordance with 37 C.F.R. § 42.122(b) (“[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.”).4 Google fails to provide sufficient reasons as to why we should exercise our discretion under 37 C.F.R. § 42.5(b) to waive the one-month time limit for filing a Motion for Joinder.5” slip op. at 4
NonePatents in suitUS 6,928,442 - PTAB · Oct 28, 2014 · IPR2014-00062 · APJ Joni Y Chang · IPR · Order
The Board granted the joint motion and terminated IPR2014-00062 as to all parties after settlement, before deciding the merits.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“reviews, after the parties have settled their disputes, would be contrary to public policy and would discourage future settlements by removing a significant motivation for settlement. Mot. 5. In view of the circumstances, we agree. Indeed, there are strong public policy reasons to favor settlement between the parties to a proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Generally, the Board expects that” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDenied
“3. However, Google’s Petitions were not filed timely in accordance with 35 U.S.C. § 315(b) (“[a]n 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.”).3 Google could have, but did not, file a petition for inter partes review with the one-year time period. More significantly, Google’s Motions for Joinder were not filed timely in accordance with 37 C.F.R. § 42.122(b) (“[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.”).4 Google fails to provide sufficient reasons as to why we should exercise our discretion under 37 C.F.R. § 42.5(b) to waive the one-month time limit for filing a Motion for Joinder.5” slip op. at 4
NonePatents in suitUS 7,802,310 - PTAB · Oct 28, 2014 · IPR2014-00058 · APJ Joni Y Chang · IPR · Order
The Board granted the parties’ joint motions, terminated the Rackspace inter partes reviews as to all parties, and granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Hosting, Inc. (collectively, “Rackspace”) and Patent Owner PersonalWeb Technologies, LLC and Level 3 Communications (collectively, PersonalWeb) filed a Joint Motion to Terminate in each of the above-identified inter partes reviews (“the Rackspace inter partes reviews”). Paper 34, “Mot.”2 The parties also filed a true copy of their Written Settlement Agreement, made in connection with the termination of the Rackspace inter partes reviews, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Ex. 1014. Additionally, the parties submitted a Joint Request to have their Written Settlement Agreement treated as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 33. For the reasons set forth below, the Joint Motions to Terminate and the Requests to have their Written Settlement Agreement treated as confidential business information are granted.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDenied
“court proceedings involving PersonalWeb and third parties. Mot. 6–7. However, except for EMC Corporation and VMWare, Inc. (collectively “EMC”) and Apple, Inc. (“Apple”), none of the third parties elected to file a Petition for inter partes review within the one-year statutory period under 35 U.S.C. § 315(b). Id. at 7. We note that the termination of the Rackspace inter partes reviews would not affect the inter partes reviews that involve EMC and Apple. We are cognizant that Google, Inc. and YouTube, LLC (collectively “Google”) filed four Petitions—IPR2014-00977, IPR2014- 00978, IPR2014-00979, and IPR2014-00980—and Motions for Joinder with four of the Rackspace inter partes reviews. See, e.g., IPR2014-00977, Paper 3. However, Google’s Petitions were not filed timely in accordance with 35 U.S.C. § 315(b) (“[a]n 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.”).3 Google could have, but did not, file a petition for inter partes review with the one-year time period. More significantly, Google’s Motions for Joinder were not filed timely in accordance with 37 C.F.R. § 42.122(b) (“[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.”).4 Google fails to provide sufficient reasons as to why we should exercise our discretion under 37 C.F.R. § 42.5(b) to waive the one-month time limit for filing a Motion for Joinder.5” slip op. at 3
NonePatents in suitUS 8,099,420 - PTAB · Sep 15, 2014 · IPR2014-00470 · APJ Joni Y Chang · IPR · Order
The Board granted the joint motions to terminate the instituted inter partes reviews as to Intel and Zond after settlement; it did not decide patentability.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the facts before us, we determine that it is appropriate to terminate the above-identified proceedings as to both parties, and enter judgment. For the foregoing reasons, it is: ORDERED that the Joint Motions to Terminate the above-identified inter partes reviews are granted; FURTHER ORDERED that the above-identified proceedings are terminated as to all parties—namely, Intel and Zond; and” slip op. at 3
NonePatents in suitUS 7,811,421 - PTAB · Sep 15, 2014 · IPR2014-00455 · APJ Joni Y Chang · IPR · Order
The Board granted the parties’ joint motions and terminated IPR2014-00455 and IPR2014-00456 as to Intel and Zond after settlement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the facts before us, we determine that it is appropriate to terminate the above-identified proceedings as to both parties, and enter judgment. For the foregoing reasons, it is: ORDERED that the Joint Motions to Terminate the above-identified inter partes reviews are granted; FURTHER ORDERED that the above-identified proceedings are terminated as to all parties—namely, Intel and Zond; and” slip op. at 3
NonePatents in suitUS 7,808,184 - PTAB · Sep 15, 2014 · IPR2014-00446 · APJ Joni Y Chang · IPR · Order
The Board granted the joint motions and terminated the instituted proceedings as to Intel and Zond after settlement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the facts before us, we determine that it is appropriate to terminate the above-identified proceedings as to both parties, and enter judgment. For the foregoing reasons, it is: ORDERED that the Joint Motions to Terminate the above-identified inter partes reviews are granted; FURTHER ORDERED that the above-identified proceedings are terminated as to all parties—namely, Intel and Zond; and FURTHER ORDERED that the parties’ Joint Request that their Written Settlement Agreement be treated as business confidential information kept separate from the patent file, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.” slip op. at 3
NonePatents in suitUS 7,147,759 - PTAB · Sep 15, 2014 · IPR2014-00444 · APJ Joni Y Chang · IPR · Order
The Board granted the joint motions, terminated the instituted proceedings as to Intel and Zond, and granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the facts before us, we determine that it is appropriate to terminate the above-identified proceedings as to both parties, and enter judgment. For the foregoing reasons, it is: ORDERED that the Joint Motions to Terminate the above-identified inter partes reviews are granted; FURTHER ORDERED that the above-identified proceedings are terminated as to all parties—namely, Intel and Zond; and FURTHER ORDERED that the parties’ Joint Request that their Written Settlement Agreement be treated as business confidential information kept separate from the patent file, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.” slip op. at 3
NonePatents in suitUS 7,147,759
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.