- Coastal Industries, Inc. v. Shower Enclosures America, Inc.Some claims unpatentablePTAB · Nov 19, 2018 · IPR2017-00573 · APJ Michael W Kim · IPR · Final written decision
Claims 1–3, 5, 7–9, 11–14, and 16–26 are unpatentable; claims 4, 6, 10, and 15 are not shown unpatentable. Substitute claims 33 and 34 are granted.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention. Pet. 26. Patent Owner sets forth many assertions related to the level of ordinary skill in the art at the time of the invention. PO Resp. 3–14, 20–30; PO Supp. Resp. 15–20. Petitioner responds to those assertions. Pet. Reply 2–4, 9–18; Pet. Supp. Reply 15–16. While we will address each of those assertions, as a substantive matter, Petitioner asserts that “PO does not dispute the definition of a PHOSITA, offer a contrary definition, explain how a different definition might affect the Board’s analysis, nor contest the Board’s specific interpretation of the prior art references to put the PHOSITA determination at issue.” Pet. Reply 16–18; Pet. Supp. Reply 15– 16. We agree with that assessment. Moreover, we note that the level of ordinary skill in the art is often reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Accordingly, as an initial matter, we address Petitioner’s unopposed substantive assertion with respect to the level of ordinary skill in the art at the time of the invention.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“1. “track members” Independent claims 1, 12, 19, and 22 each recite “track members.”” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“B. Patentability of Substitute Claims 33 and 34 Petitioner asserts that various claim limitations are disclosed in the” slip op. at 100
- ExcludeMotion to exclude, deniedDenied
“701, 702 and 37 C.F.R. § 42.65(a). Specifically, Patent Owner asserts that Mr. Poenariu’s testimony is entirely based on his finding as to the level of ordinary skill in the art, and because Mr. Poenariu did not articulate a sufficient factual basis for his conclusion as to the level of ordinary skill in the art, his entire testimony us unreliable and should be excluded. PO Mot. 5–6. Petitioner responds that Mr. Poenariu discloses more than a sufficient amount of underlying facts on which to base his testimony, and, thus, Patent Owner’s assertions go to weight and not admissibility. Pet. Opp. 6–9. We agree with Petitioner.” slip op. at 105
Patent outcomesUS 7,174,944 mixedClaim constructioncites Phillips · KSRPatents in suitUS 7,174,944 - DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentablePTAB · Jul 25, 2018 · IPR2017-00724 · APJ Michael W Kim · IPR · Final written decision
Claims 19 and 26 are unpatentable: claim 19 as anticipated by Hite and claim 26 as obvious over Hite and Baji; claims 32–36 and 41 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for patent owner
“Petitioner, with supporting testimony from Dr. Negus, argues that a person of ordinary skill in the art would have combined Hite’s system with Hill’s teaching of a high access partition in order to increase storage efficiency and address Hite’s goal of providing “advertisers with less waste and greater cost effectiveness.” Pet. 60; Ex. 1008 ¶ 599 (quoting Ex. 1009, 3:21–35; citing Ex. 1010, 4:54–57). According to Petitioner and Dr. Negus, one of ordinary skill would have had reason to combine Hite and Hill— using Hill’s “high access partition allocated for high access data storage” to “store the high access advertisement data of Hite”—to “yield[] the completely predictable and desirable result” of “decrease[d] read and write times of advertisement data stored in Hite’s” storage devices, including optional video storage device 456. Pet. 60, 65; Ex. 1008 ¶ 599; see also Tr. 107:10–15 (asserting the same). Patent Owner argues Dr. Negus’ assertion that advertising data is” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“at least one addressable and reserved storage space is a partitioned area of a hard disk drive.” Ex. 1003, 49:55–58. Petitioner refers to Hite’s disclosures that its storage devices “can be . . . disks.” Pet. 27–28 (quoting Ex. 1009, 12:6–11; citing Ex. 1009, 10:44–49). Dr. Negus testifies that “‘disks’ at the alleged time of the invention of the ’494 patent were commonly known as ‘hard disk drives.’” Ex. 1008 ¶ 680 (emphases omitted). Petitioner and Dr. Negus represent that a person of ordinary skill in the art would, therefore, “have understood Hite to disclose the use of an entire ‘disk’ (or ‘hard disk’) as the ‘Video Storage Device’” or the RD. Pet. 28 (citing Ex. 1008 ¶ 680). Petitioner, with supporting testimony from Dr. Negus, further contends that “[w]hen the entire ‘hard disk’ storage space is undivided, it is within the broadest reasonable interpretation of the claimed ‘partitioned area of a hard disk drive.’” Pet. 28; Ex. 1008 ¶¶ 680, 683. We disagree. Based on Hite’s explanation that “[t]he storage devices used to implement” its system “can be . . . disks” as well as the evidence before us that “disks” or “hard disks” were known as “hard disks drives” at the relevant time, we agree with Petitioner that an ordinarily skilled artisan would have understood Hite to use an entire disk, hard disk, or hard disk drive for OVS Device 456 and for the RD. Ex. 1009, 10:44–49, 12:6–11; Ex. 1008 ¶ 680; see Ex. 3002 (MICROSOFT COMPUTER DICTIONARY (5th ed. 2002)), 246 (explaining, within definition of “hard disk,” that a “hard disk” is “[a]lso called: hard disk drive” and defining “hard disk drive” as “See hard disk” (emphases omitted)). We part ways with Petitioner, however, in its proffered conclusion that such an “entire,” “undivided” hard disk or hard disk drive falls within the ordinary meaning of “partitioned area of a hard disk drive.” Pet. 28; Ex. 1008 ¶¶ 680, 683; see Ex. 3001, 1087 (defining “partition” as “divide into parts”). The claim language expressly requires a “partitioned area of”—not a whole, entire, or undivided—hard disk drive. Thus, we disagree that an entire hard disk or hard disk drive constitutes the “partitioned area of a hard disk drive” required by claim 32. Accordingly, we are unpersuaded that Hite discloses “wherein said at least one addressable and reserved storage space is a partitioned area of a hard disk drive,” as recited in dependent claim 32. Thus, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 32 is anticipated by Hite.” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“e. Conclusion Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is anticipated by Hite. 4. Dependent Claim 26 Claim 26 depends from independent claim 19 and recites, in relevant part, “processing circuitry configured to dynamically merge the particular advertising data with digital media content that is pre-stored in said at least one storage device.” Ex. 1003, 49:6–9. The plain claim language unambiguously and expressly requires that it is the “digital media content” that must be “pre-stored.” Yet in addressing the limitation, the Petition represents, and Dr. Negus testifies, that Hite discloses “‘particular advertising data’ that is ‘pre-stored in said at least one storage device’ (prior to the ‘dynamic merging’ with ‘digital media content’),” because commercials targeted for a display site or consumer according to CID codes are stored in the RD or video storage device. Pet. 26 (emphasis added); Ex. 1008 ¶ 646 (emphasis added). These assertions that Hite’s system pre-stores what Petitioner identifies as the “particular advertising data,” targeted commercials selected using CID codes, fail to address or show adequately that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as claim 26 explicitly requires. Thus, we are unpersuaded that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as recited in dependent claim 26. Accordingly, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 26 is anticipated by Hite.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“We agree with Patent Owner that Petitioner’s proffered rationale for combining Hite with Hill is not adequately supported by the record. Specifically, we agree with Patent Owner that Petitioner’s assertion that advertising data is “high access” data is a conclusory statement that fails to “articulate specific reasoning, based on evidence of record” to support an obviousness determination. In re: Magnum Oil Tools Int’l, Ltd., 829 F.3d at 1380. Although Hite discusses preempting broadcast commercials with stored commercials at broadcast breaks (see Ex. 1009, 7:24–30), Petitioner does not cite any portion of Hite, or provide any evidence at all, that explains how frequently the advertising data would have been accessed. Accordingly, because Petitioner has not shown adequately that it would have been obvious to one of ordinary skill in the art to combine Hite and Hill to arrive at “addressable and reserved storage space for storing the particular advertising data,” as recited in independent claim 19, we are unpersuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is obvious over Hite and Hill.” slip op. at 27
Patent outcomesUS 9,053,494 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,053,494 - DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentablePTAB · Jul 25, 2018 · IPR2017-00717 · APJ Michael W Kim · IPR · Final written decision
Claims 1–4, 6, 7, 19, 23, 24, and 27 are unpatentable as anticipated by Hite or obvious over Hite; claims 16–18 and 28 were not shown unpatentable.
RulingsFinal written decision- BurdenMixed
“preponderance of the evidence that the specified claims are unpatentable over the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent Owner that “any arguments for patentability not raised in the [Patent Owner Response] will be deemed waived.” Paper 10, 6; see also 37 C.F.R. § 42.23(a) (“Any material fact not specifically denied may be considered admitted.”).5 Additionally, the Board’s Trial Practice Guide states that the Patent Owner Response “should identify all the involved claims that are believed to be patentable and state the basis for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There are arguments and evidence advanced by Petitioner to support its positions, though, that Patent Owner chose not to address in either its Preliminary Response (Paper 7) or Response (Paper 22), or that was not addressed in the Decision on Institution (Paper 9). We have evaluated those unrebutted arguments and the evidence in support, and we find the Petitioner persuasively established, with sufficient evidence, the manner in which the asserted prior art teaches corresponding elements of the claims. Pet. 18–66 (citing Exs. 1008–1010) (unchallenged portions only). Based on the preponderance of the evidence before us, we conclude that the prior art identified by Petitioner describes all limitations of the reviewed claims that were not contested by the Patent Owner in either its Preliminary Response 5 For the reasons noted in our Order (Paper 43, 2–3), however, for this proceeding, we will also consider the arguments set forth in Patent Owner’s Preliminary Response. (Paper 7) or Response (Paper 22). In re NuVasive, 841 F.3d 966, 974 (2016). We address only the contested limitations below.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner
“correspond properly to the claimed storage device, because it is not capable of recording programming content selected by a user for later playback. PO Resp. 14. We are not persuaded by this argument because, as discussed above, we are persuaded that a proper construction of “storage device” does not require recording programming content for later playback. We are persuaded that Petitioner has shown sufficiently that Hite’s OVS Device 456 corresponds properly to the “at least one storage device,” as recited in each of independent claims 1 and 19.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner. Petitioner does not explain sufficiently, and the cited portions of Hite do not disclose, how the method by which the progression is made from “children’s aspirin” to “children’s chewable vitamins.” Dr. Negus’s testimony is similarly unavailing, as the only cited paragraph that plausibly supports their position, paragraph 484, is conclusory and unsupported. Absent such explanation or cited disclosure, we are unpersuaded that Petitioner has shown adequately that the recited “key word” is a part of the progression, as required to meet the claim. 8 At least a portion of Dr. Negus’s testimony aligns with this testimony of Dr. Kesan. Ex. 1008 ¶ 669 (“An exemplary targeting characteristic to optimize advertising format scenarios within Hite is the ‘context code’ that ‘could be appended to the commercial’s CID code’ to be ‘compared with program identification codes appended to the program signals’ such that a ‘commercial is displayed if it is in a specific channel or network or show’ as in the example of ‘skiing equipment commercials would be shown during a skiing down hill racing competition’ (emphasis added, see, for example, Ex. 1009 at 4:34–40).”. Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 4 is anticipated by Hite.” slip op. at 22
- Obviousness (§103) › KSR rationalesUnpatentableDecided for petitioner
“Essentially, Patent Owner assertions are the same as those advanced for the anticipation ground for the same claim. We agree with Patent Owner’s assertions for the same reasons as set forth above. Having said that, the assertions are misplaced, because this is an obviousness ground, and Patent Owner does not address the modification to Hite proposed by the Examiner. To that end, we are persuaded by Petitioner that it would have been obvious to code Hite’s viewer responses using keywords, as we agree that such a technique was common and well known at the time of the invention, and that it would have been an obvious design choice. Ex. 1008 ¶ 486. Indeed, Patent Owner acknowledges this possibility, as they do not assert that using key words would not have been known, just that it may not have been preferable under certain circumstances. PO Resp. 53 (citing Ex. 2003 ¶ 92). Insofar as Patent Owner may be asserting that such a preference teaches away from a modification, we have considered it, but determine that it is outweighed by the evidence of the ubiquity of key word searches at the time of the invention. Indeed, we are unclear as to how, other than using numbers or key words, such searches could have been performed. KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”).” slip op. at 39
Patent outcomesUS 9,053,494 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,053,494 - Oracle America Inc. / Oracle Corporation et al. v. Intellectual Ventures I LLCSome claims unpatentablePTAB · Jan 8, 2018 · IPR2016-01434 · APJ Michael W Kim · IPR · Final written decision
Claims 11–13 and 15–20 are unpatentable as obvious; claim 14 was not shown unpatentable because the cited personal notes were not “content contributed.”
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“While the parties use slightly different language, we are unable to discern any substantive differences between the proffered levels of skill and basic qualifications of a person of ordinary skill in the art. Accordingly, we adopt Dr. Papakonstantinou’s articulation of the level of ordinary skill as our own, if for no other reason then for its conciseness, with the understanding that the differences between the proffered levels of ordinary skill are limited and inconsequential in our analysis.” slip op. at 23
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for patent owner
“above-identified single statement in the specification, which uses permissible language such as “can be” and “does not need to be,” is sufficient to justify Patent Owner’s assertions, which for all practical purposes, is a disavowal of claim scope. See Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a clear disavowal in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language.”) We also credit the testimony of Dr. Almeroth over that of Dr. Papakonstantinou, because, among other reasons, Dr. Almeroth supports his testimony with relevant citations to the specification, while Dr. Papakonstantinou largely repeats that which is set forth in the Patent Owner Response, without further analysis. graphical fields that allow the input of administrative information without programming” are advantageous over “cumbersome programming performed in the past.” Ex. 2002 ¶¶ 44, 47. We treat this argument as subsumed within Patent Owner’s argument that the specification disparages prior art systems that require HTML programming to perform administrative tasks.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“224, 232 encompasses a “link to content.” In application, however, “what is a wireless LAN?” 224, 232 is actually two separate components: (1) the underlying technical set of computer instructions that, upon clicking the link associated with “what is a wireless LAN?” 232, transports a user to a web page associated with “what is a wireless LAN?” 232; and (2) the words “what is a wireless LAN?” 224 itself displayed on the computer display, but separate from the technical set of computer instructions set forth in (1). In this example, (1) is “link to content, but not itself ‘content,’” however, (2) is itself “content.” More precisely, when we now consider “what is a wireless LAN?” 224, 232 in relation to the aforementioned construction of “content” as “electronic data embodying information for an individual or individuals,” it becomes clear that “what is a wireless LAN?” 224, 232 is both “links to content” and “content.” Specifically, component (1) of “what is a wireless LAN?” 232 is “links to content,” but not “content” itself, because the underlying technical set of computer instructions is not “electronic data embodying information for an individual or individuals,” but for a computer. By contrast, component (2) of “what is a wireless LAN?” 224 is “content,” as it is clearly “electronic data embodying information for an individual or individuals,” in that the words “what is a wireless LAN?” are intended to convey information to an individual. So, as a practical matter, we discern that every disclosure of a “link to content” that includes “electronic data embodying information for an individual or individuals” (i.e., any information associated with a “link” that is separate from a generic indication of the “link” itself), is “content.” See also Ex. 3001, 6–16 (providing further analysis concerning construction, which we expressly incorporate herein). Accordingly, we determine that a proper construction of “content” is “electronic data embodying information for an individual or individuals,” and excluding “links to content,” but not excluding “content” associated with the “links to content.”” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner. We are persuaded that “administrative interface” is broader than the “administrative page” mentioned in the specification, in that an “administrative interface” may encompass 9 While discussing “graphical user interface” during oral argument, Patent Owner stated that it was not disclaiming claim scope. Tr. 47:20–22 (“We’re not arguing that the claim terms have been disclaimed in some phrase.”). something other than an “administrative page.” We are also persuaded that the specification’s disclosure of a non-limiting embodiment, that of a highlyautomated and browser-based “administrative page,” does not require that a proper construction of “administrative interface” include “graphical user interface.” As admitted by Patent Owner, these pages are “example[s]” only, and, at best, merely “impl[y]” the presence of a “graphical user interface.” See PO Resp. 8–9 (citing Ex. 1002, 16:39–44; Ex. 2002 ¶ 40). We are persuaded that an “implied example” does not belong in a proper construction of a claim term. Indeed, Petitioner asserts that Patent Owner’s factual premise, concerning the above “implied example,” is flawed, as the specification’s “reference to automation and a browser provides no basis for restricting the claimed ‘administrative interface’ to a graphical user interface.” Pet. Reply 5–6 (citing Ex. 1033 ¶ 15) (Dr. Almeroth testifies that “automation of computer systems does not require a graphical user interface.”). More specifically, Dr. Almeroth identifies other automated “interfaces” in the specification, such as “a networked cash register, bar code scanner or electronic product code reader” (Ex. 1002, 13:8–15, 14:51–52) that do not require a “graphical user interface.” Ex. 1033 ¶ 14. We agree with Dr. Almeroth’s analysis of the specification. Dr. Almeroth asserts further, and we agree, again, that “[o]ne of ordinary skill would understand that that cash register could be connected to a server that is accessible only via a command line interface, and that administrators could use command-line tools . . . to group content on that server.” Ex. 1033 ¶ 14. Patent Owner cites In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1149–1150 (Fed. Cir. 2012) for its finding of an implicit definition of a” slip op. at 13
Patent outcomesUS 7,516,177 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,516,177 - Zepp Labs, Inc. v. Blast Motion, Inc.Some claims unpatentablePTAB · Aug 14, 2017 · IPR2016-00676 · APJ Rama G Elluru · IPR · Final written decision
Claims 1, 7–9, and 12–15 were held unpatentable as obvious; claims 5 and 6 were not shown unpatentable because the evidence did not establish the claimed database limitation.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“to the ’855 patent is “a person with a Bachelor’s degree in mechanical or electrical engineering or a related field with two to three years of experience working with data acquisition systems.” Pet. 9 (citing Ex. 1003 ¶ 19). According to Petitioner, “[w]ith more education, such as additional graduate degrees and/or study, less experience is needed to attain the ordinary level of skill.” Id.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“The Supreme Court has made clear that “[t]hroughout this Court’s engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here.” KSR, 550 U.S. at 415. In direct contrast, Patent Owner’s assertions of law, by use of the terms “unnecessary” and “unneeded,” harkens back to the rigid TSM test, which the Supreme Court held explicitly as being incorrect. The Supreme Court further opined as follows: Neither the enactment of § 103 nor the analysis in [Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)] disturbed this Court’s earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art. For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Id. at 415–416. Contrary to Patent Owner’s assertions of law, there is no use of terms similar to “unnecessary,” “unneeded,” or even “goals” in the obviousness analysis. Instead, the Supreme Court’s inquiry is straightforward: (1) if the elements are found in the prior art, and (2) if the combination results in “no change in respective function” and “does no more than yield predictable results,” i.e., a predictable reason to combine for a predictable advantage, then the resulting combination is “likely to be obvious.” Id.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner asserts further that “Mahajan teaches such a person of skill in the art not to include a memory, as its real-time data transmission system is described as preferable to a memory-based system such as Lee’s.” PO Resp. 28 (emphasis omitted). We disagree. While Mahajan does disclose such a general preference in one embodiment, we find that it, at the same time, expressly acknowledges the possibility of the alternative. Ex. 1005 ¶ 42 (“The hardware device need not have an on-board memory for storing the orientation and position information.”). See, e.g., Merck & Co. v. Biocraft Labs, 874 F.2d 804, 807 (Fed. Cir. 1989) (non-preferred embodiments can be the basis for an obviousness analysis). Specifically, we find that the words “need not” actually conveys the following meaning in the context of the Mahajan: “may, but need not.” This understanding is further underscored by the fact that Mahajan expressly incorporates-by-reference Lee, and, in describing Lee, asserts the following: “A distinctive feature of this instrumented golf club is the use of a data storage memory device located within the golf club that eliminates the need for radio transmission hardware.” Ex. 1005 ¶ 6. Indeed, not only does Mahajan acknowledge that an alternative of adding memory was known, it even identifies an advantage for that alternative. The argument that such an advantage may be allegedly contrary to the goals of Mahajan is unpersuasive, for the reasons set forth above. Finally, insofar as Patent Owner is asserting that Mahajan teaches away from the proffered modification, we disagree for the same reasons. See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (a reference that “merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into” the claimed invention does not teach away).” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“We determine that Petitioner’s evidence and argument is insufficient to demonstrate that Mahajan teaches the limitation of claim 5. As an initial matter, Petitioner does not explain sufficiently how Mahajan’s teaching of storing information informs a skilled artisan that that storage is a “database,” as required by claim 5. See Pet. 32–33; Pet. Reply 14–15. Petitioner does not adequately explain why a storage medium, such a hard drive or a server, sufficiently equates with a “database.” Indeed, in response to the question— “[s]o Mahajan's disclosure of a remote server is not the same thing as disclosing a remote database, correct?”—Dr. Nesbitt testified, “[n]ot exclusively.” Ex. 2011, 123:8–12; see id. at 120:19–21. Dr. Nesbitt further testified that, [a] server would be more of a hardware device, where a database would be more of a software. It would be a place where the data is actually stored within a remote computer or remote server. So it’s the hardware versus what’s in the hardware is the distinction between the two. Id. at 122:17–23; see Ex. 2001 ¶ 63 (Patent Owner’s expert opining that “[d]isclosure of sending data to remote server for storage, without more, is insufficient to convey to a person of ordinary skill in the art that the server contains a database.”). The ’855 patent also distinguishes between a “remote database” and a “remote server.” See Ex. 1001, 8:33–34 57 (“[t]he data uploaded to the Internet, i.e., a remote database or remote server or memory remote to the system”); id. at 26:48–51. At oral argument,” slip op. at 30
Patent outcomesUS 8,905,855 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,905,855 - Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.Some claims unpatentablePTAB · Mar 6, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Final written decision
Claims 1, 3, 5, and 7–15 are unpatentable as anticipated by Rabinovich; Petitioner did not prove claims 1–15 obvious over Rabinovich.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner
“Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 16. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 19–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 21. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating object xs if the ratio of cnt(s,xs) over aff(xs) is greater than m, i.e., a non-zero value. PO Resp. 34; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication step. This means that Rabinovich will not replicate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that Rabinovich object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independently of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer. We are not persuaded by Petitioner’s argument that Rabinovich” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“pieces” Claim 1 recites “each file including a plurality of individual pieces, the pieces containing parts of the files.” Ex. 1002, 25:67–26:1. The other independent claims recite limitations commensurate in scope. Neither party proposes explicitly a construction of the term “piece.” Petitioner argues that “files are inherently composed of pieces in the form of bits that make up bytes, the bytes themselves being pieces of the file.” Pet. 32. Patent Owner argues that construing “piece” to cover “bits and bytes” of a file “would read out the ‘pieces’ limitation from the claim entirely” (PO Resp. at 29–30) and that “one of ordinary skill in the art would not read the ‘pieces’ limitation of the claim to include bits and bytes” (id. at 30). The claims themselves define “piece” by requiring that a “file” have a “plurality of individual pieces,” but do not establish a lower bound—i.e., a minimum number of bits or bytes—to qualify as a “piece.” Patent Owner identifies no support in the ’680 patent for its contention that “piece” or “pieces” excludes a byte or bytes of a file, relying instead solely on the testimony of Dr. Paul S. Jacobs. Id. (citing Ex. 2006 ¶¶ 38, 39). We are not persuaded by Dr. Jacobs’s conclusory testimony. Because “piece” and “pieces” are limited by the claims only to being a subset of a file and because a byte or collection of bytes of a file is a subset of that file, we are persuaded that the broadest reasonable interpretation of “piece” and “pieces” in light of the Specification of the ’680 patent encompasses a byte or bytes. slip op. at 7
Patent outcomesUS 7,904,680 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,904,680 - Repro-Med Systems, Inc. v. Emed Technologies CorporationSome claims unpatentablePTAB · Jan 12, 2017 · IPR2015-01920 · APJ James J Mayberry · IPR · Final written decision
Claims 1–8 and 10 are unpatentable on the stated anticipation and obviousness grounds; claim 9 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Claim Construction In an inter partes review, claim terms in an unexpired patent, such as the ’476 patent, are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016) (concluding that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office”). Under the broadest reasonable construction standard, claim terms are generally given their ordinary and customary meaning, as would be 5 The Decision on Institution considered 27 separate grounds. See Dec. on Inst. 6–8. understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Also, we are careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the specification.” (citation omitted)). 1. Level of Ordinary Skill in the Art RMS’s expert, Dr. Kazmer, contends that the level of ordinary skill of the ’476 patent is “a degreed Chemical, Mechanical, or Plastics engineer with three years of experience directly related to plastics product design and injection molding” or, alternatively, “a non-degreed practitioner with ten years of experience directly related to plastics product design and injection molding.” Ex. 1002 ¶ 21. EMED counters that the level of ordinary skill is “a degreed BioMedical, Chemical, Mechanical, or Plastics engineer with 3-5 years [of] experience designing medical products including medical products with a sharps protection device or alternatively a professional with 5-7 years [of] experience designing medical products, including medical products with a sharps protection device.” PO Resp. 6 (citing Ex. 2003 ¶ 22).6 At oral argument, EMED clarified that the “experience designing medical products 6 In his Declaration supporting EMED’s Motion to Amend, Mr. Stoker provides a different level of ordinary skill in the art— “a degreed BioMedical, Chemical, Mechanical, or Plastics engineer with five years of experience directly related to needle product design, particularly concentrating on the safety aspects of needle design” or, alternatively, “a non-degreed practitioner with ten years of experience directly related to the safety aspects of needle design.” Ex. 2007 ¶ 44. including medical products with a sharps protection device” merely required some of the experience in product design must concern sharps. See Tr. 36:13–6 (“[O]ne of skill in the art necessarily wouldn’t need three to five years specifically working in sharps technology, but they would have to have at least some experience.”).” slip op. at 8
- Expert testimonyPatent owner expert discountedDecided for petitioner
“support its contention that an artisan of ordinary skill would understand the claim limitation “the wings in the open position are spaced apart from each other to expose the medical needle to allow placement of the medical needle into a treatment site and delivery of a medicinal fluid” to require the wings to be folded back to permit inserting the needle. See PO Resp. 31 (citing Ex. 2003, Decl. of Ron Stoker, ¶ 78). Mr. Stoker merely provides the same statement as that appearing in the Patent Owner Response—“[o]ne of skill in the art would understand permitting placement to mean that the wings could be folded back to permit insertion of the needle”—without providing any basis for his opinion. See Ex. 2003 ¶ 78. Accordingly, we give little weight to this testimony. See 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 conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); see also 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.”).” slip op. at 18
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“for the term “and are configured for”—“a pair of wings being selectively positionable from a first position to a second position, the first position for placing the medical [ ] needle into a patient and delivering a medicinal fluid to a second position.” PO Reply 9–10 (citing its Motion to Amend at 11– 14). The Motion to Amend, however, refers to the disclosure that serves as the basis for this “construction” as support for the amendment, not as the meaning of the term. Also, this construction conflicts with how EMED evaluates the claim limitation with respect to the prior art. Accordingly, we address EMED’s implicit construction and this post hoc construction, below.” slip op. at 74
- ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed
“that Mr. Stoker has a sufficient educational foundation and sufficient experience in sharps protection to help the Board understand the evidence or make factual findings in this proceeding. Further, to the extent that RMS identifies specific deficiencies in the methods and principles supporting Mr. Stoker’s opinions, we find that such matters go to the probative weight of his testimony, as opposed to its admissibility. We note that the policy considerations for excluding expert testimony, such as those implemented by the gatekeeping framework established by the Supreme Court in Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993), are less compelling in bench proceedings such as inter partes reviews than in jury trials because, unlike a lay jury, the Board by statutory definition has competent scientific ability (35 U.S.C. § 6) and has significant experience in evaluating expert testimony. Accordingly, the danger of prejudice in this proceeding is considerably lower than in a conventional district court trial.” slip op. at 86
Patent outcomesUS 8,961,476 mixed§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,961,476 - Sandisk Corp. v. Netlist, Inc.Some claims unpatentablePTAB · Sep 28, 2016 · IPR2015-01020 · APJ Peter P Chen · IPR · Final written decision
Claims 17, 22, 24, 26, and 33 are unpatentable as obvious over Takeda, JEDEC, and Connolly; claims 15, 16, 31, and 32 were not shown unpatentable over Takeda and JEDEC.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are unpersuaded by Patent Owner’s position. First, the claim language does not recite any physical or structural connection, rather, only “electrically coupling.” Pet. Reply 3, 8–9. In addition, the specification of the ’150 patent does not define explicitly the term “selectively electrically coupling.” Therefore, as in IPR2014-00882 and IPR2014-01011, we refer to its ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Translogic Tech., 504 F.3d at 1257. A technical dictionary, the IEEE Dictionary,4 defines “electrical coupling” as “[e]lectrical charges in conductors of a disturbed circuit formed by electrical induction.” Ex. 3001. The IEEE Dictionary explains that “[s]ince the ratio of a conductor’s electrostatic charge to the potential difference between conductors (required to maintain that charge) is the general definition of capacitance, electrical coupling is also called capacitive coupling.” Id. The IEEE Dictionary defines” slip op. at 9
- Skill levelSkill level board ownOther
“Based on our review of the ’150 patent and the types of problems and solutions described in the ’150 patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’150 patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D. Declarant Testimony” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that, although Dr. Jagannathan may be less experienced than Dr. Sechen in the area of memory module design, he is nonetheless qualified sufficiently to testify about memory systems and memory modules. E. Asserted Obviousness of Claims 15, 16, 31, and 32 in view of Takeda” slip op. at 14
- ExcludeMotion to exclude, deniedDenied
“We have reviewed the parties’ contentions on this issue, and exercise our discretion to determine that Petitioner’s Reply and the Jagannathan Supplemental Declaration will not be excluded. We find that, although they may be “inartfully” drafted, the first Jagannathan declaration and Petition sufficiently outlined Petitioner’s position on the function of the chip select signal, namely, that the chip select signal was not itself the logic signal enabling operation of bit-switches. We further find that Petitioner’s Reply and the Supplemental Jagannathan Declaration did not present an entirely new rationale of unpatentability based on Takeda, JEDEC, and Connolly. Cf. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (affirming Board’s exclusion of reply brief and declaration that changed unpatentability theory to “an entirely new rationale”). Moreover, there is no dispute that Patent Owner was aware of Petitioner’s position by no later than the Jagannathan deposition, which preceded Patent Owner’s Response by ten days. Patent Owner could have addressed Petitioner’s chip select signal contention, procedurally or substantively, in its Response, but chose to raise the issue only after Petitioner filed its Reply and Supplemental Jagannathan Declaration. Accordingly, Patent Owner had notice of Petitioner’s position and an opportunity to refute that position in its Response.” slip op. at 24
Patent outcomesUS 7,881,150 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,881,150 - Microsoft Corporation v. Iplearn-Focus, LLCSome claims unpatentablePTAB · Apr 11, 2016 · IPR2015-00095 · APJ Richard E Rice · IPR · Final written decision
Claims 1, 2, 18, 22, 37, and 39 are unpatentable; claims 38, 40–42, 48, 55, and 56 are patentable, based on anticipation and obviousness grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“in the art (“POSITA”). According to Petitioner’s expert, Dr. David Forsyth, a POSITA would have had a combination of experience and education in computer vision and the design of human-computer interfaces. This typically would consist of a minimum of a bachelor of science in Computer Science or Electrical Engineering (or a related engineering field) plus either a year of graduate training or 2-4 years of relevant experience. The POSITA also would have been familiar with the design of, theory behind, principles of operation of, intended use of, and the underlying technology used in computer vision and human-computer interfaces. Ex. 1003 ¶ 27. In contrast, Patent Owner’s expert, Mr. David Crane, testifies that a POSITA “would have had a bachelor’s degree or equivalent in the field of computer engineering, computer science or electrical engineering and at least two to three years of experience relating to humanmachine interface design.” Ex. 2009 ¶ 15. Based on the competing arguments and evidence of record, we largely accept Patent Owner’s proposed definition. The definition proposed by Petitioner appears to be overly narrow because of its focus on “computer vision.” We have made minor modifications to Patent Owner’s definition to clarify the educational requirement, and to broaden the experience requirement to include at least a year of graduate training as an alternative to work experience, consistent with the background of researchers in the field as indicated by prior art references such as Hutchinson. See Ex. 1004, 1533–1534. We determine that a POSITA would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or an equivalent field, and at least a year of graduate training, or two years of work experience, relating to human-machine interfaces.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“(emphasis added). In the Institution Decision, we determined that the broadest reasonable interpretation consistent with the Specification of the term “window” is a bounded sub-region of a computer display that is capable of displaying a distinctly different type of information than one or more other sub-regions of the computer display. Inst. Dec. 8 (citing Ex. 1001, 8:20–42). Neither of the parties proposes any change to that interpretation, and our review of the evidence does not indicate that any change is necessary. Consequently, we maintain our previous interpretation.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“the parties, we determine that Petitioner has shown by a preponderance of the evidence that Hutchinson anticipates claim 1. See Pet. 14–15, 29–32; Pet. Reply 3–6; Ex. 1003 ¶¶ 46–51. As set forth in Petitioner’s claim chart, Hutchinson discloses each limitation of claim 1, including the “acquiring,” “analyzing,” “determining,” and “adjusting” steps. See Pet. 29–32. For example, the “adjusting” step requires “adjusting, by the computing device, materials for presenting to the user if the determining determines that the volitional input suggests the user not paying attention to materials in the first window.” Corresponding to that step, Hutchinson discloses that, after the user gazes for a period of time at a menu option in a display window, a tone sounds and an icon (cursor) appears in the display window in line with the gaze, but the enabled option is aborted if the user does not continue to gaze at the menu option for an additional period of time. Ex. 1004, 1530; see Pet. 31–32; Pet. Reply 3–6; Ex. 1003 ¶¶ 49–50. The abort mechanism of Hutchinson’s computing device discloses the “adjusting” step by aborting the enabled option (“adjusting . . . materials for presenting to the user”) if the computing device determines, itself, that the user is not directing his or her gaze at the menu option in the window (“if the determining determines that the volitional input suggests the user not paying attention to materials in the first window”). See Ex. 1004, 1530; supra Section II.A.5.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“claim 2. Pet. 20, 41–42; Pet. Reply 5–6; Ex. 1003 ¶¶ 52–55. We agree, for example, that Hutchinson discloses “waiting for a period of time before adjusting,” as required by claim 2, “so that the user has a moment to alter his or her gaze before the system adjusts what is being presented.” Pet. 20, 41 (citing Ex. 1004, 1530; Ex. 1003 ¶ 52). With respect to the “network” requirement, we also agree that a person of ordinary skill in the art would have known to retrieve materials from another computing device over a network. Id. at 20, 42 (citing Ex. 1003 ¶¶ 9, 15, 55). There is evidence of record that Black, for example, discloses such retrieval. Ex. 1003 ¶ 97. Further, we agree that Hutchinson discloses “adjusting comprises switching to alternative materials that are different from materials that would have been presented,” and that including “materials on a product” would have been obvious, as Petitioner contends. Pet. 20, 41–42 (citing Ex. 1004, 1530– 1531; Ex. 1003 ¶¶ 52–55). Patent Owner responds that: “the ‘waiting before adjusting’ step must be performed after the ‘determining’ step and, additionally, be a distinct step from the ‘determining step’”; and that “Hutchinson . . . does not disclose a ‘waiting before adjusting step’ that is either separate and distinct from the ‘determining’ step or subsequent to it.” PO Resp. 29. Patent Owner argues that, “[a]t most, Hutchinson discloses waiting as part of the determining step.” Id. at 30. Patent Owner’s argument is not consistent with our interpretation that claim 2 encompasses “waiting for a period of time” as part of the “determining” step. See supra Section II.A.4. Hutchinson’s system satisfies the “waiting for a period of time before adjusting” step by allowing the user “a moment” to change or abort an enabled option before the system performs it. Ex. 1004, 1530 (emphasis added). The system performs the option only if the user continues to stare at the enabled option for a period of time (“a moment”) after a tone sounds and an icon appears. Id. For the reasons given, we conclude that Petitioner has shown by a preponderance of the evidence that Hutchinson renders obvious claim 2.” slip op. at 27
Patent outcomesUS 8,475,174 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,475,174 - Microsoft Corporation v. Iplearn-Focus, LLCSome claims unpatentablePTAB · Mar 23, 2016 · IPR2015-00097 · APJ Richard E Rice · IPR · Final written decision
Claims 13, 34, and 35 are unpatentable as anticipated by Hutchinson; claims 39 and 44 are unpatentable as obvious over Hutchinson and Krueger; claims 36 and 37 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Ex. 1003 ¶ 27. In contrast, Patent Owner’s expert, Mr. Crane, testifies that a POSITA “would have had a bachelor’s degree or equivalent in the field of computer engineering, computer science or electrical engineering and at least two to three years of experience relating to human-machine interface design.” Ex. 2007 ¶ 15. Based on the competing arguments and evidence of record, we largely accept Patent Owner’s proposed definition. The definition proposed by Petitioner appears to be overly narrow because of its focus on “computer vision.” We have made minor modifications to Patent Owner’s definition to clarify the educational requirement, and to broaden the experience requirement to include at least a year of graduate training as an alternative to work experience, consistent with the background of researchers in the field as indicated by prior art references such as Hutchinson. See Ex. 1004, 1533–1534. We determine that a POSITA would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or an equivalent field, and at least a year of graduate training, or two years of work experience, relating to human-machine interfaces.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“We find that the ordinary meanings of “content” are “[s]omething contained, as in a receptacle: the contents of my desk drawer; the contents of an aerosol can,”2 and “[i]nformation, such as text, video, and sound, usually as contrasted with its format of presentation: a television producer looking for content that was more entertaining.”3 Although the Specification does not define or use the term “content,” it sheds light on the meaning of the term, by describing a calibration technique utilizing the text and graphics (the content) of a message box to direct the user’s attention and to take a reference image. See Ex. 1001, 8:55–60 (describing a preferred embodiment 1 Exhibit 1033 does not contain Petitioner’s asserted definition, although, as referenced below, we found essentially the same definition on-line. 2 Ex. 1033. 3 http://search.credoreference.com/content/entry/hmdictenglang/content_ 1/0?searchId=4da7a984-e49d-11e5-9bca-0e58d2201a4d&result=5 (last visited March 8, 2016). in which a reference image of the student’s face is taken when the student is looking at a message box containing the message “LOOK AT ME” and a picture of two eyes staring at the student; “the digital camera 180 takes a reference image of the student’s face, who typically looks at the two eyes”). Accordingly, we determine that the broadest reasonable construction consistent with the Specification of “content presented by the display” is “something contained within a portion of the display,” including, but not limited to, what is advocated for by Petitioner, i.e., “information, such as text, video, and sound.”” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“processor coupled to the imaging sensor and the display, the processor to analyze, relative to the display, at least the first set of measurements to identify whether the user is not paying attention to content presented by the display.” Specifically, as disclosed in Hutchinson, after the user gazes for a period of time at a menu box on the display, a tone sounds and an icon (cursor) appears in the menu box in line with the gaze, but the option associated with the menu box is aborted if the user does not continue to gaze at the box for an additional period of time. Ex. 1004, 1530; see Pet. 36 (citing Ex. 1003 ¶ 71). Hutchinson’s processor meets the claim requirement for “a processor . . . to identify whether the user is not paying attention to content presented by the display” because, to implement the abort mechanism, the processor determines, itself, whether the user is not directing his or her gaze at the icon contained in the menu box, in accordance with our claim interpretation. See Ex. 1004, 1530; supra Section II.A.3.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We agree with Petitioner and Dr. Forsyth that a POSITA would have been motivated to combine the teachings of Hutchinson and Krueger. As Petitioner argues, Hutchinson expressly contemplates using Erica with 7 Richard Epworth, Eye Movements, for a Bidirectional Human Interface, ICL TECHNICAL JOURNAL 384–411 (1990) (Ex. 1026). “hardware alternatives . . . such as head-tracking systems.” Ex. 1004, 1532 (emphasis added); see Pet. Reply 13 (citing Ex. 1004, 1532 and Ex. 2008, 108:21–109:7). Krueger not only discloses head-tracking, but touts its VIDEOTOUCH system as an improvement that identifies human-body features such as the head in real time, and without use of intrusive markers. Ex. 1008, 2:44–3:44, 4:5–10. We credit Dr. Forsyth’s deposition testimony explaining how Hutchinson’s eye-gaze system would have worked in combination with a head-tracking system. Ex. 2008, 93:16–102:1, 108:21– 109:7, 109:22–128:17. For example, we credit the following testimony:” slip op. at 29
Patent outcomesUS 8,538,321 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,538,321
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.