• Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.All claims unpatentable
  PTAB · Aug 10, 2017 · IPR2016-00530 · APJ Georgianna W Braden · IPR · Final written decision

  The Board held claims 1–15, 18–20, 22–26, and 28–30 unpatentable as obvious over the five instituted combinations of prior art.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the ’010 patent, the types of problems and solutions described in the ’010 patent and cited prior art, and the testimony of Drs. Kaufman and Kurfess, we adopt and apply Dr. Kaufman’s definition of a person of ordinary skill in the art at the time of the claimed invention. We also 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).” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on our review of the evidence, we determine that Swinton and Nobuaki teach these limitations because the cited portions of the references in the claim chart meet the respective limitations of claim 1, as Petitioner contends (Pet. 26–31). We also credit Dr. Kaufman’s declaration testimony regarding how Swinton and Nobuaki would have conveyed the limitations of claim 1 to one of ordinary skill in the art. Ex. 1003 ¶¶ 25–49. Dr. Kaufman’s detailed analysis is based on multiple citations to the references and, therefore, provides sufficient factual corroboration.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “Rather, to support the legal conclusion of obviousness “there must be some articulated reasoning with some rational underpinning” for combining the teachings of two prior art references. KSR, 550 U.S. at 418. Specifically, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art teachings. Personal Web Techs. v. Apple, 848 F.3d 987, 991–92 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention . . . .”). Petitioner’s arguments must be supported by a “reasoned explanation.” NuVasive, 842 F.3d at 1383 (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). Here, Petitioner has shown that a person of skill in the art would have had reason to combine Nobuaki’s teachings regarding a specific mechanism for moving currency into different storage compartments with the ATM system in Swinton in order to solve the common problem of transporting currency bills or checks in different compartments. See Pet. 14–15; Ex. 1003 ¶ 53. We agree with Petitioner’s position that a person of ordinary skill in the art would have been motivated to replace the storage bins and sorting mechanism of Swinton’s ATM with the sorting/storage device of Nobuaki. See Pet. 13–14; Reply 2; Ex. 1003 ¶¶ 51–54. Specifically, we credit the testimony of Dr. Kaufman that a person of ordinary skill in the art would have recognized that a goal of Swinton’s ATM was to transport checks or bills into separate compartments and Nobuaki teaches a specific mechanism for achieving that goal. Ex. 1003 ¶ 53 (citing Ex. 1004 ¶¶ 140, 343; Ex. 1012, 12:31–36). Therefore, we determine that one of ordinary skill in the art would have had a reason to combine the teachings of Swinton and Nobuaki and would have been led to do so by the teachings of these references. Accordingly, we find that challenged independent claim 1 would have been obvious under 35 U.S.C. § 103 in view of the disclosures of Swinton and Nobuaki.” slip op. at 19

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner proposes constructions for “a movably mounted plunger member” and “[first/second] wall surfaces bounding the [first/second] storage location and in opposed facing direction of the [first/second] backing plate.” Pet. 7–8. Patent Owner does not contest Petitioner’s proposed constructions and does not offer its own constructions. See generally PO Resp. After analyzing the claims and supporting specification of the ’010 patent, we determine that we need not provide express constructions for the claim terms noted by Petitioner. To the extent it is necessary, however, we discuss certain other claims terms in the context of analyzing whether the prior art renders the challenged claims unpatentable.” slip op. at 8

  Patent outcomesUS 7,229,010 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,229,010
• Broadsign International, LLC v. T-Rex Property ABInstitution denied
  PTAB · Apr 26, 2017 · CBM2017-00008 · APJ Barbara A Benoit · CBM · Institution

  The Board denied institution because the challenged patent was not shown eligible for CBM review; claims 1, 11, 12, 49, 51-55, and 58-74 were disclaimed.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We conclude that the information in the Petition does not demonstrate that the challenged patent is eligible for covered business method patent review. In addition, even after Patent Owner submitted, on February 7, 2017, its Preliminary Response and evidence of filing statutory disclaimer, Petitioner did not request an opportunity to present arguments that any other claims would meet the threshold financial requirement for a covered business method patent review. The remaining challenged claims 13, 42, 43, 48, 50, 56, and 57 on their face do not evince claiming a financial product or service, and the written description describes the invention as being broader than placement of commercial advertising. See, e.g., Ex. 1001, 2:50–53 (encompassing “direct placement of commercial advertisements, public service announcements and other content on electronic displays”). Accordingly, we determine that Petitioner has failed to meet its burden of showing that the challenged patent is eligible for covered business method patent review. Therefore, we do not institute a covered business method patent review for claims 13, 42, 43, 48, 50, 56, and 57 of the ’603 patent.” slip op. at 9

  • Adverse judgmentAdverse judgmentOther

    “that it filed with the Office a statutory disclaimer of claims 1–12, 17, 19, 20, 22, 28–33, 45–47, 49, 51–55, and 58–74 of the challenged patent pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2001, 4; see Prelim. Resp. 7. The disclaimer of a claim “shall . . . be considered as part of the original patent.” 35 U.S.C. § 253(a). The language “considered as part of the original patent” means that a patent subject to a disclaimer under § 253(a) “is treated as though the disclaimed claims never existed.” Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (citing Altoona Publix Theatres v. Am. Tri-Ergon Corp., 294 U.S. 477, 492 (1935); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)). Thus, even though claims of the challenged patent existed at the time the Petition here was filed, we must now treat the challenged patent as if it had never included those claims. 1. Disclaimed Claims Challenged in the Petition Of the challenged claims, Patent Owner disclaimed claims 1, 11, 12, 49, 51–55, and 58–74. Ex. 2001, 4. A covered business method patent review cannot be instituted based on disclaimed claims. 37 C.F.R. § 42.207(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a), disclaiming one or more claims in the patent. No post-grant review will be instituted based on disclaimed claims.”). Accordingly, no covered business method patent review will be instituted for disclaimed claims 1, 11, 12, 49, 51–55, and 58–74. Nevertheless, our analysis continues because not all of the claims challenged in the Petition have been disclaimed by Patent Owner.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Petitioner proposes constructions for several terms that recite “means.” Pet. 33–35; see 37 C.F.R. § 42.104(b)(3) (A petition must set forth “[h]ow the challenged claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.”). Patent Owner does not address directly Petitioner’s proposed constructions. See generally Prelim. Resp. 1–11. We conclude that no term needs to be construed expressly in order for us to determine whether a covered business method patent review should be instituted.” slip op. at 6

  Claim construction
  Patents in suitUS 6,430,603
• Ams AG / Ams-Taos USA Inc. et al. v. 511 Innovations, Inc.Institution denied
  PTAB · Mar 15, 2017 · IPR2016-01804 · APJ John A Hudalla · IPR · Institution

  Institution was denied because Petitioner failed to show a reasonable likelihood that claims 127 and 132 would have been obvious over JP ’028, Mills, or Eguchi.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we do not institute an inter partes review as to claims 127 and 132.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “We agree with Patent Owner. We acknowledge Eguchi states that instead of blade 2, “a color stripe or color division filter may be employed.” Ex. 1006, 5:60–62. Although this statement can be taken to show that a skilled artisan would have understood how to incorporate such a filter into Eguchi’s system, it does not imply that a color stripe or color division filter simply could be swapped for blade 2 with no corresponding modifications to the remainder of Eguchi’s system. Petitioner states that implementation would be done in “the respective known manners for such filters,” but Petitioner’s analysis and Dr. Baker’s testimony are devoid of detail of how replacing blade 2 with a color stripe or color division filter would achieve spectral analysis. See Pet. 53 (citing Ex. 1009 ¶¶ 39, 68). Petitioner does not explain how such a modified system would have spectrally analyzed predetermined bands of wavelengths of light, particularly where Eguchi’s described focusing operation does not rely on color filtering of light beams A and B. In the absence of such evidence, Petitioner has failed to “identif[y], in writing and with particularity, . . . the evidence that supports the grounds for the challenge.” 35 U.S.C. § 312(a)(3). Accordingly, Petitioner has not shown a reasonable likelihood that it would prevail with respect to claim 127 as obvious over Eguchi. Because claim 132 depends from claim 127, and because Petitioner’s arguments directed to the additional limitation of claim 132 (see Pet. 58) do not cure the deficiencies in Petitioner’s showing with respect to claim 127, we additionally determine that Petitioner has not established a reasonable likelihood of prevailing in showing that claim 132 would have been obvious over Eguchi.” slip op. at 26

  • Prior constructionPrior construction adoptedDecided for petitioner

    “collect light, among other things. Ex. 1001, 3:26–28, 5:16–33, 7:33–41. As such, the district court in the related litigation construed “probe” to mean “fiber-optic instrument to collect light and guide the collected light from one point to another.” Ex. 2001, 21. In explaining this construction, the district court found that, in the context of the challenged patent, “a ‘probe’ is an instrument that is used to collect light from an object,” which “is passed on for analysis.” Id. The district court also determined that the probe in the ’038 patent necessarily is associated with fiber optics. See id. at 19–20 (citing, inter alia, Ex. 1001, 3:26–28, 6:1–11). The court additionally stated that “‘probe’ is a broad term,” and that the extrinsic evidence supported a broad construction whereby “a ‘probe’ is an instrument that is used for collecting information about something.” Id. at 21. We find the district court’s reasoned analysis persuasive. Cf. Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326–27 (Fed. Cir. 2015) (Although the Board generally is not bound by a previous district court interpretation of a claim term, it is obligated to acknowledge and consider that interpretation in some circumstances.). On this record, we determine that the district court’s construction comports with the usage of “probe” in the Specification, and we adopt it as our own. We additionally observe that the district court did not construe “probe” as having any particular size or form factor. Although certain statements in the Specification describe the probe as “handheld” (see, e.g., Ex. 1001, 3:26–28), the probe is not universally described in this way (see, e.g., id. at 4:10–23). Thus, in the absence of clear and unequivocal evidence indicating that the disclosed probe must be “handheld,” and for purposes of this Decision, we decline to modify the district court’s construction to reflect a particular size or form factor. See Poly–America, L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016) (“[T]he standard for disavowal is exacting, requiring clear and unequivocal evidence that the claimed invention includes or does not include a particular feature.”). Accordingly, for purposes of this Decision, we construe “probe,” as recited in claim 127 of the ’038 patent, to mean “fiber-optic instrument to collect light and guide the collected light from one point to another.” Based on the current record, we determine that no further terms require explicit construction at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 8

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,490,038
• American Honda Motor Co., Inc. v. Blitzsafe Texas, LLCInstitution denied
  PTAB · Feb 2, 2017 · IPR2016-01472 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on every challenged claim because the Petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “To institute an inter partes review, we must determine that the information presented in the Petition shows “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered both the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1, 5–8, 10, 14, 57, 60–62, 64, and 65. We do not institute an inter partes review of any claim of the ’786 patent.” slip op. at 2

  • Skill levelOther

    “With regard to the level of ordinary skill in the art, we determine that no express finding is necessary, on this record, and that the level of ordinary skill in the art is 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).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “1. “portable” Independent claim 57 recites a portable MP3 player. It may be that the term requires no express construction, and simply would be understood by one with ordinary skill in the art. We note that even the ’786 patent itself and Bhogal, both using the term “portable” in their written description, do not provide a definition therefor. Nevertheless, an express construction is helpful to this proceeding. We construe “portable,” in the context of the ’786 patent, as meaning capable of being carried by a user.3” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDecided for petitioner

    “During prosecution, the Applicants of the ’786 patent distinguished U.S. Patent 6,993,615 B2 (“Falcon”)4 in part by arguing that the reference 4 Falcon discloses a portable computing device connectable to a car stereo through an interface configurable within the portable computing device. Ex. 3001, Abstr. failed to disclose an interface connected between a car stereo system and an external audio source. Ex. 1002, 267. Specifically, in distinguishing the invention from Falcon, Applicants stated: “[Falcon’s graphical user interface] is an entirely different concept than the interface of the present invention, which includes a physical interface device connected between a car stereo system and an external audio source (e.g., a plurality of auxiliary input sources).” Id. Construing the term “interface” in light of the Specification, other language in the claims, as well as the prosecution history of the ’786 patent, we determine that—interface is a physical unit that connects one device to another and that has a functional and structural identity separate from that of both connected devices.5 In the specific context of claim 1, the connected devices are the car stereo and an after-market device. In the specific context of claim 57, the connected devices are the car stereo and a portable device. Each of claims 1 and 57 further requires the interface to include a microcontroller.” slip op. at 12

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,489,786
• Nautilus Hyosung, Inc. v. Diebold, Inc.Rehearing denied
  PTAB · Jan 31, 2017 · IPR2016-00580 · APJ Georgianna W Braden · IPR · Rehearing

  The Board denied the petitioner’s rehearing request, leaving in place the denial of institution on claims 1, 5-8, 10, 16, 26, and 27 because the obviousness arguments were insufficient.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated 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. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). Applying these legal standards, we address the arguments presented by Petitioner.” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “overlooked an explanation as to how and why it would have been obvious to modify Dickenson to have the service opening of Gussack. Petitioner provided multiple reason for why a “[person of ordinary skill in the art] would have been prompted to modify the device of Dickenson to have a bottom service opening as described in Gussack.” Pet. 16–18 (emphasis added). Yet, as explained in the Decision Denying Institution, Petitioner’s arguments for combining the cited art for very specific limitations are insufficient, because Petitioner failed to “explain why a person of ordinary skill in the art would combine together the prior art teachings to arrive at the challenged claim as a whole.” Dec. 25. The Petition merely offers conclusory statements that someone of ordinary skill in the art could have modified Dickenson, yet fails to explain persuasively why a person of ordinary skill in the art would have modified the gaming machine of Dickenson to use the removable bottom panel of Gussack in order to have a service opening as required by claim 1.6 Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374, n. 3 (Fed. Cir. 2008) (criticizing “a complete absence of any proof that one skilled in the art would find the particular claimed method obvious . . . for any reason”). Therefore, as our Decision Denying Institution states, Petitioner’s analysis is conclusory and fails to explain adequately how the evidence supports the contentions that Dickenson in view of Gussack would have rendered the limitations of challenged claim 1 obvious. See Dec. 17–22, 24–28. 6 We specifically address claim 1, because it was only for claim 1 where Petitioner provided the list of reasons for modifying Dickenson in view of Gussack. See Pet. 16–18. 5 Accordingly, we are not persuaded that we misapprehended or overlooked Petitioner’s argument that it would have been obvious to one of ordinary skill in the art to modify Dickenson to use a removable bottom panel from Gussack’s drawer to teach the claimed “service opening.” Although we recognize that removable panels for servicing of components may have been known in the prior art, Petitioner does not explain what would have led a person of ordinary skill in the art at the time of the invention to choose to use Gussack’s removable panel to create a service opening in a wall in Dickenson’s rolling tray. Rather, as discussed in our Decision, we find Petitioner’s arguments fraught with hindsight bias. See KSR Int’l Co. v. Teleflex, 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious by merely demonstrating that each of its elements was, independently, known in the prior art.”); Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368–69 (Fed. Cir. 2012) (“[Smith & Nephew] never offered evidence articulating why a person having ordinary skill in the art would combine the primary references to obtain the disclosed inventions.”); Innogenetics, N.V., 512 F.3d at 1374, n. 3 (“We must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”).” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner

    “overlooked an explanation as to how and why it would have been obvious to modify Dickenson to have the service opening of Gussack. Petitioner provided multiple reason for why a “[person of ordinary skill in the art] would have been prompted to modify the device of Dickenson to have a bottom service opening as described in Gussack.” Pet. 16–18 (emphasis added). Yet, as explained in the Decision Denying Institution, Petitioner’s arguments for combining the cited art for very specific limitations are insufficient, because Petitioner failed to “explain why a person of ordinary skill in the art would combine together the prior art teachings to arrive at the challenged claim as a whole.” Dec. 25. The Petition merely offers conclusory statements that someone of ordinary skill in the art could have modified Dickenson, yet fails to explain persuasively why a person of ordinary skill in the art would have modified the gaming machine of Dickenson to use the removable bottom panel of Gussack in order to have a service opening as required by claim 1.6 Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374, n. 3 (Fed. Cir. 2008) (criticizing “a complete absence of any proof that one skilled in the art would find the particular claimed method obvious . . . for any reason”). Therefore, as our Decision Denying Institution states, Petitioner’s analysis is conclusory and fails to explain adequately how the evidence supports the contentions that Dickenson in view of Gussack would have rendered the limitations of challenged claim 1 obvious. See Dec. 17–22, 24–28. 6 We specifically address claim 1, because it was only for claim 1 where Petitioner provided the list of reasons for modifying Dickenson in view of Gussack. See Pet. 16–18. 5 Accordingly, we are not persuaded that we misapprehended or overlooked Petitioner’s argument that it would have been obvious to one of ordinary skill in the art to modify Dickenson to use a removable bottom panel from Gussack’s drawer to teach the claimed “service opening.” Although we recognize that removable panels for servicing of components may have been known in the prior art, Petitioner does not explain what would have led a person of ordinary skill in the art at the time of the invention to choose to use Gussack’s removable panel to create a service opening in a wall in Dickenson’s rolling tray. Rather, as discussed in our Decision, we find Petitioner’s arguments fraught with hindsight bias. See KSR Int’l Co. v. Teleflex, 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious by merely demonstrating that each of its elements was, independently, known in the prior art.”); Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368–69 (Fed. Cir. 2012) (“[Smith & Nephew] never offered evidence articulating why a person having ordinary skill in the art would combine the primary references to obtain the disclosed inventions.”); Innogenetics, N.V., 512 F.3d at 1374, n. 3 (“We must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”).” slip op. at 5

  • BurdenDecided for patent owner

    “The Board could not have overlooked a detailed explanation or analysis not presented in the Petition. A rehearing request is not a supplemental petition. The petition, itself, must identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. The Petitioner has the responsibility to identify and explain in the petition specific evidence that supports its arguments. See 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”).” slip op. at 10

  § 103 obviousnesscites KSR
  Patents in suitUS 6,082,616
• Hyundai Motor Company / Hyundai Motor America et al. v. Blitzsafe Texas, LLCInstitution denied
  PTAB · Jan 24, 2017 · IPR2016-01476 · APJ Kerry Begley · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the Petition and the Preliminary Response, we determine that the information presented does not show that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’342 patent. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level board ownOther

    “art. We determine that in this case, no express articulation of the level of ordinary skill is necessary and that the level of ordinary skill in the art is 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).” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “We conclude that the plain and ordinary meaning of the word “subsystem” as understood by a person of ordinary skill in the art requires that both the “subsystem” and the “system” to which it is subordinate must be “systems.” As evidence of this construction, we note that a dictionary of electrical and electronics terms defines “subsystem” as “[a] system which is subordinate to another system.” Subsystem, WILEY ELECTRICAL AND ELECTRONICS ENGINEERING DICTIONARY 755 (2004) (also defining the term as “[a] system which is a part of, or assists, a larger system”) (Ex. 3001); see subsystem, ACADEMIC PRESS DICTIONARY OF SCIENCE AND TECHNOLOGY 2126 (1992) (“a portion of a system that can be treated as a single element in the main system, but that can also be considered a distinct system itself”) (Ex. 3002).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Under 37 C.F.R. § 42.104(b)(3), the Petition “must set forth . . . [h]ow the challenged claim is to be construed.” Here, the Petition falls short of this requirement by merely listing, without endorsing, Patent Owner’s proposed construction before the district court under a different claim construction standard supported only by a citation to a claim chart filed in the district court, which lacks any analysis or evidentiary support (e.g., citations to the intrinsic record of the ’342 patent). See Pet. 13–14, 16; Ex. 1004, 47; see also PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734, 740–43 (Fed. Cir. 2016) (explaining that district courts apply the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and that this standard differs from the broadest reasonable interpretation standard that the Board applies to unexpired patents). Therefore, Petitioner has not complied with 37 C.F.R. § 42.104(b)(3) or adequately proffered the term for construction in this proceeding. Moreover, having considered the specification of the ’342 patent and the parties’ arguments in this proceeding, we determine that “generated . . . for playing on the car audio/video system,” as recited in claims 49 and 73 of the ’342 patent, does not require an express construction beyond the plain and ordinary meaning of its terms to resolve the issues presented by the 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that “are in controversy” need to be construed and “only to the extent necessary to resolve the controversy”). 3. Other Claim Terms Based on our review of the record and the dispositive issues in our determination of whether to institute inter partes review on the asserted grounds of unpatentability, we need not address the construction of any other claim terms. See id.; Pet. 13–16; Prelim. Resp. 5.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,155,342
• Volkswagen Group Of America, Inc. v. Blitzsafe Texas, LLCInstitution denied
  PTAB · Jan 13, 2017 · IPR2016-01448 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted prior-art combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “To institute an inter partes review, we must determine that the information presented in the petition shows “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered both the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any challenged claim. Thus, we do not institute an inter partes review of any claim of the ’786 patent.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “Neither party proposes a construction for the term “interface.” With regard to an “interface,” the Specification states:” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Ex. 1001, 29:17–31. The sixth paragraph of 35 U.S.C. § 112 provides:1 An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The above-quoted recitations of claim 92 presumptively set forth elements under 35 U.S.C. § 112 ¶ 6, and are construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc); In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc).” slip op. at 30

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “B. Alleged Obviousness of Claims 1, 2, 13, 14, 23, 24, 44, and 47 over Owens, Beckert, and Cooper We have reviewed the Petition and the Preliminary Response, and determine that Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1, 2, 13, 14, 23, 24, 44, and 47 as obvious over Owens, Beckert, and Cooper. Petitioner has failed to articulate, with reasonable clarity (1) what element of which prior art reference is relied on to meet which element of each claim, and (2) what element from which reference is combined with what element of which other reference or references, and in what manner, to meet what element of each claim. Petitioner has not sufficiently identified differences between the claimed invention and the prior art, as well as the manner in which the prior art teachings are combined to account for such differences.” slip op. at 14

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,489,786
• Sony Corporation v. Imation CorporationAll claims unpatentable
  PTAB · Jan 3, 2017 · IPR2015-01557 · APJ Kevin F Turner · IPR · Final written decision

  Claims 10 and 14 are unpatentable: claim 10 is anticipated by Yen, and claim 14 is obvious over Yen and Yu.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We do not agree with Patent Owner’s comments on the use of the preposition “from.” The standard linguistic usage of the verb “protrude” takes the prepositions “from” and “over”; it would not be standard usage to talk about “protruding in” or “protruding on.” See Ex. 3004; see also Protrude, www.merriam-webster.com/dictionary/protrude (for examples of standard usage, last visited Dec. 21, 2016). Therefore, ascribing certain requirements based on the use of a preposition may not be appropriate when only certain prepositions have common usage. As such, we are not persuaded that “from” in the claim limitation “protruding from” must take on the special meaning advocated by Patent Owner. We continue to determine that the “host connector protruding from the housing” encompasses “the host connector and the housing as different parts of a single integral structure.” See Dec. 10.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. “The importance of resolving the level of ordinary skill in the art 15 lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). The level of ordinary skill in the art may be reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id. Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”).” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Accordingly, we conclude that Petitioner has demonstrated by a preponderance of the evidence that Yen’s USB interface contact 300 in its second embodiment is a distinct part, comprising gold contacts 111, fool proof jut piece 112, and base 113. See Ex. 1002 ¶ 61. Other disclosures of Yen reinforce that Yen’s USB interface contact 300 is a distinct part. See Pet. 24; Ex. 1002 ¶¶ 62, 64. Yen refers to the USB interface contact being” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Petitioner contends that a person of ordinary skill in the art would have had sound reason, with “rational underpinning,” to combine Yu’s hinge with the memory card disclosed in Yen. Pet. 37–38. As Mr. Berg testifies, both Yen and Yu are directed to a portable memory device with a cover for a USB connector. See Ex. 1003, 3:34–40, 6:7–10, Fig. 14; Ex. 1004, 2:63–3:5, Figs. 2–3; Ex. 1002 ¶¶ 76–77. Additionally, Yu discloses that using a hinge to connect the cover to the housing of the device has the benefit of preventing loss of the cover. Ex. 1004, 3:3–5; see id. at 1:65–67. We credit Mr. Berg’s testimony that a person of ordinary skill would have improved Yen’s cover by incorporating the hinge disclosed in Yu “to have the protection of a cover for the USB connector without the risk of losing the cover.” Ex. 1002 ¶ 77.” slip op. at 27

  Patent outcomesUS 6,890,188 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 6,890,188
• Sony Corporation v. Imation CorporationAll claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01556 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1, 3, and 8 are unpatentable as anticipated by Yen; the obviousness ground over Chang, Yen, and either specification was not established.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “preposition “from.” The standard linguistic usage of the verb “protrude” takes the prepositions “from” and “over;” it would not be standard usage to talk about “protruding in” or “protruding on.” See Ex. 3004; see also Protrude, www.merriam-webster.com/dictionary/protrude (for examples of standard usage, last visited Dec. 21, 2016). Therefore, ascribing certain requirements based on the use of a preposition may not be appropriate when only certain prepositions have common usage. As such, we are not persuaded that “from” in the claim limitation “protruding from” must take on the special meaning advocated by Patent Owner. We continue to determine that the “host connector protruding from the housing” 8 encompasses “the host connector and the housing as different parts of a single integral structure.” See Dec. 9.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Additionally, we conclude that Petitioner has demonstrated that USB interface contact 300 (“host connector”), with sub-parts gold contacts 111, jut piece 112, and base 113, protrudes from casings 113A, 114 (“housing”). See Pet. 22–24. As we explain supra in Section II.A.1, the host connector and the housing can meet the language of claim 1, “host connector protruding from the housing,” even if they are different parts of a single integral structure, i.e., attached, connected, joined, or molded to one another. Petitioner and Mr. Berg persuasively demonstrate that Figs. 11–13 of Yen show USB interface contact 300, comprising gold pieces 111, jut piece 112, and base 113, protruding, or jutting out, from casings 113A, 114. See Ex. 1003, Figs. 11–13; Pet. 22–24; Ex. 1002 ¶¶ 55, 58. We see no meaningful difference in the relationship between the host connector and the housing in these figures and that in Figure 5 of the ’038 patent, which the ’038 patent characterizes as the host connector protruding from housing. Compare Ex. 1001, 8:47–51, Fig. 5, with Ex. 1003, Figs. 11–13. For these reasons, we determine that Petitioner demonstrates by a preponderance of the evidence that Yen would have conveyed to one of ordinary skill in the art the limitations recited in claim 1 and that claim 1 is anticipated by Yen.” slip op. at 23

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “First, a copyright indication alone is not necessarily evidence of publication or that a document was distributed or had public accessibility. Although the year indicated in a copyright notice is intended to be “the year of first publication of the work” (37 C.F.R. § 401(b)), it details nothing about accessibility before the critical date. See In re Lister, 583 F.3d 1307, 1312–13 (Fed. Cir. 2009) (detailing that even when the Copyright Office issues a certificate of registration for a manuscript, that does not mean that the manuscript was listed in a catalog or index that would have permitted an interested researcher to learn of its existence and locate it for inspection); see also Microsoft Co. v. Corel Software, LLC, Case IPR2016-01083, slip op. at 13–14 (PTAB December 1, 2016) (Paper 14) (“The copyright notice, alone, however, sheds virtually no light on whether the document was publicly accessible as of that date, therefore additional evidence is typically necessary to support a showing of public accessibility”). Additionally, although the SD Specification details “[c]onditions for publication” (Ex. 1007, 2), we have no information about its dissemination, i.e., was it publically disseminated, or reproduced for some subset of a private group. As well, reproduction is prohibited without permission of “SD Group” (id.), which does not offer evidence of public accessibility. 27 Similarly, the MMC Specification discloses that “[n]o part of this publication may be transmitted, reproduced or distributed in any way,” without prior written consent (Ex. 1008, 2), which does not offer proof of sufficient accessibility to interested parties. Petitioner also asserts that the ’038 Patent admits that the MMC and SD standards, as well as cards following those standards, were in the prior art. Pet. 16–17. The acknowledgement that the standards were known, or even well-known, does not provide evidence regarding the specific documents relied upon by Petitioner. As provided in 35 U.S.C. § 311(b), a ground of unpatentability in an inter partes review can be made “only on the basis of prior art consisting of patents or printed publications.” The general knowledge of systems or methods, or their public use, cannot serve as a basis. As such, the general citation of the standards existing in the prior art can not substantiate the publication status of the specifically cited MMC Specification and SD Specification documents.” slip op. at 27

  • Strike new argumentNew argument disregardedDenied

    “At oral hearing, when the issue of printed publication status was raised, counsel for Petitioner raised the issues discussed above. Tr. 28–34. Petitioner also argues that without the MMC Specification and the SD Specification, “the obviousness position would still prevail.” Id. at 35. Petitioner asserts that “there’s no question that those skilled in the art understand that if you’re talking about a specific size, that there was no choice once those MMC or SD cards or their associated specs are known to be prior art, that it’d be obvious to modify the size to however you want.” Id. We are not persuaded, however, that dropping the Specification references would not be viewed as altering the grounds upon which trial instituted. Per In re Magnum Oil Tools, 829 F.3d 1364 (Fed. Cir. 2016), that could be interpreted as “borrowing the rationale for combining the first set of references [and] equally apply[ing it] to the second set of references” (id. at 1378), without providing Patent Owner its due process rights with respect to the “new” ground. We respectfully decline to entertain such a new position at this stage of the proceeding.” slip op. at 29

  Patent outcomesUS 6,908,038 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,908,038
• Bungie, Inc. v. Worlds Inc.All claims unpatentable
  PTAB · Dec 6, 2016 · IPR2015-01319 · APJ Jason J Chung · IPR · Final written decision

  Claims 1–8, 10, 12, and 14–16 are unpatentable: obvious over the Funkhouser combinations; the Durward anticipation and obviousness grounds were not proven.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “art. Petitioner argues, and Dr. Zyda opines, that a person of ordinary skill in the art relevant to the ’501 patent would have had “through education or practical experience, the equivalent of a bachelor’s degree in computer science or a related field and at least an additional two years of work experience developing or implementing networked virtual environments.” Pet. 7; Ex. 1002 ¶ 55. Mr. Pesce similarly testifies that a person of ordinary skill in the art would have had “at least a bachelor’s degree or equivalent in computer science, with two or more years of experience in coding related to both virtual environments and computer networking.” Ex. 2017 ¶ 33. The parties’ proposals for the level of ordinary skill in the art have slight differences in wording, yet we do not find them to have meaningful distinctions (e.g., “at least” two years versus “two or more years,” “networked virtual environments” versus “virtual environments and computer networking”). Neither party asserts that there is any such distinction. Based on the testimony of the parties’ experts as well as our review of the ’501 patent, the types of problems and solutions described therein, and the prior art involved in this proceeding, we adopt the following as the level of ordinary skill in the art: the equivalent, through education or practical experience, of a bachelor’s degree in computer science or a related field, and at least two years of experience developing, coding, or implementing networked virtual environments, or virtual environments and computer networking.” slip op. at 5

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “witness has applied the principles and methods reliably to the facts of the case.” Fed. R. Evid. 702. Under this standard, testimony on the issue of unpatentability proffered by a witness who is not “qualified in the pertinent art” generally is not admissible. Sundance Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). Rule 702, however, does not “require[] a witness to possess something more than ordinary skill in the art to testify as an expert” and a “witness possessing merely ordinary skill will often be qualified to present expert testimony.” Id. at 1363. Nor does the Rule require a perfect match or complete overlap between the witness’s technical qualifications and the field of the invention. See SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010). In his declaration and curriculum vitae, Mr. Pesce details his relevant work experience from 1984 to the present as well as his teaching experience and numerous technical publications and presentations. See Ex. 2017 ¶¶ 3– 19, 35–42, pp. 67–82; see also Ex. 1046, 19:8–21:16, 39:11–40:20. Having reviewed this experience and Mr. Pesce’s technical testimony, we find his knowledge, skill, and experience in the relevant field of networked virtual environments, as well as computer networking and virtual reality more generally, sufficient to render him qualified to offer expert testimony in this proceeding under Rule 702.” slip op. at 8

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “unnamed real party in interest, who was served with a complaint in the District Court Case more than one year before the Petition was filed. PO Resp. 39–45. Thus, according to Patent Owner, the Petition fails to comply with 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8, and institution of review was barred under 35 U.S.C. § 315(b). PO Resp. 36–42. Patent Owner argues the Board erred in denying its Motion for Routine or Additional Discovery related to this issue (Paper 9) and in instituting review despite Patent Owner’s assertions of Activision’s status as a real party in interest. PO Resp. 36–42.” slip op. at 54

  • ExcludeMotion to exclude, deniedMixed

    “Given that Exhibit 1041 is relevant for this purpose and its admission is not barred by Rules 404, 405, and 608, we turn to Rule 403 to consider whether it should nonetheless be excluded because its “probative value is substantially outweighed by a danger of . . . unfair prejudice.” Fed. R. Evid. 403.15 Here, the probative value of Exhibit 1041 as to Mr. Pesce’s ability to perceive and recall events and details from the art in the early to mid-1990s is limited as, for example, it lacks specific details regarding the extent and regularity of his drug use. Yet, on the other hand, the risk of unfair prejudice is minimal. To begin with, an unfair prejudice analysis is not well suited to a bench trial, such as this. See, e.g., Schultz v. Butcher, 24 F.3d 626, 632 (4th Cir. 1994) (“[I]n the context of a bench trial, evidence should not be excluded under 403 on the ground that it is unfairly prejudicial.”); Gulf States Utilities Co. v. Ecodyne Corp., 635 F.2d 517, 519 (5th Cir. 1981) (holding that “exclusion of evidence under Rule 403’s weighing of probative value against prejudice was improper” and was a “useless procedure” because “[t]his portion of Rule 403 has no logical application to bench trials”). Moreover, the only “unfair prejudice” that Patent Owner alleges is that all of Mr. Pesce’s testimony will be given little to no weight—which is not accurate, as we are considering the admissibility of Exhibit 1041 only for its relevance to his capacity and reliability in perceiving and recalling events and other details from the early to mid- 1990s, on which he offers testimony. See Mot. 8. Although we are cognizant of the sensitive nature of evidence of drug use, there is minimal 15 Rule 403 lists other considerations but Patent Owner does not argue that any of these apply, and we conclude that they do not. See id.; Mot. 7–8. risk of any unfair prejudice from considering Exhibit 1041 for this limited purpose. In sum, the probative value of Exhibit 1041 for this limited purpose is not “substantially outweighed” by any danger of unfair prejudice and, thus, exclusion under Rule 403 is not warranted.” slip op. at 60

  Patent outcomesUS 8,082,501 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,082,501

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.