• Asustek Computer, Inc. / Asus Computer International v. Avago Technologies General IP (Singapore) Pte. LtdRehearing granted
  PTAB · Mar 8, 2017 · IPR2016-00647 · APJ Glenn J Perry · IPR · Rehearing

  Granted petitioner’s request for reconsideration and added institution of the §102 Cioffi challenge to claims 8, 11, 12, 14, 15, 18, and 19.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “III. CONCLUSIONS For the foregoing reasons, we are persuaded that our Decision to Institute overlooked or misapprehended the matters discussed in this Decision, and that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to its challenge as to the patentability of claims 8, 11, 12, 14, 15, 18, and 19 as being anticipated by Cioffi. The Board has not made a final determination on the patentability of any challenged claims or the construction of any claim terms. Our final decision will be based on the record as fully developed during trial.” slip op. at 5

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

    “Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4

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

    “Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4

  § 102 anticipation
  Patents in suitUS 6,430,148
• Qiagen Inc. v. Oxford Immunotec Ltd.Institution denied
  PTAB · Feb 22, 2017 · IPR2016-01575 · APJ J John Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–9 unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “We have authority to institute an inter partes review only if the information presented in the Petition shows “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; 37 C.F.R. §§ 42.4(a), 42.108. Upon consideration of the Petition and Preliminary Response, we determine that the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims. Accordingly, pursuant to § 314, we do not institute an inter partes review of the challenged claims of the ’821 Patent, and the Petition is denied. A.” slip op. at 2

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

    “structurally related to the physical substrate holding the printed matter, may not be given patentable weight. In re DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015). “[A] limitation is printed matter only if it claims the content of information.” Id. If determined to claim printed matter, the limitation is nonetheless given patentable weight “if the claimed informational content has a functional or structural relation to the substrate.” Id. at 851. According to Petitioner, the “CD8+ epitope” limitation claims printed matter because it is merely the content of information, namely “the string of amino acids in a subfragment of ESAT-6 that includes the amino acids that constitute a CD8+ epitope.” Pet. 15. Petitioner likens the “CD8+ epitope” to an “instruction limitation” that merely “informs” about the epitope in ESAT-6. Id. (citing In re Kao, 639 F.3d 1057, 1072–73 (Fed. Cir. 2011)). We disagree. In Kao, the relevant limitation claimed “providing information” regarding a particular biological correlation, which the Federal Circuit concluded had no functional relationship to the following step of “providing” a particular drug treatment. Kao, 639 F.3d at 1072–73. Here, the relevant limitation is “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope.” The epitope is not “printed” onto a physical substrate (i.e., the peptide); it is part of the substrate—the epitope is a sequence of amino acids that is recognized by a CD8+ T cell, and those amino acids are part of the amino acids that make up the peptide itself. Moreover, the epitope does not merely inform someone of purely informational content. Rather, the epitope has a structural and functional relationship to the claims and to the substrate (i.e., the peptide subfragments). For example, claim 1 recites, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope” (emphasis added). The claim further recites, “measuring secretion of a cytokine from said T cells” to determine “whether said T cells are activated by said peptide subfragment.” The specification describes the activation of CD8+ T cells by peptide subfragments that are CD8+ epitopes. See Ex. 1001, 2:30–45. Thus, the CD8+ epitopes are involved in the activation of T cells, which yields immunogenicity (i.e., generation of an immune system response) in the form of cytokine secretion, which is measured as part of the claimed method. The CD8+ epitope limitation is more akin to the attribute data object (ADO) limitations in In re Lowry, 32 F.3d 1579, 1583–84 (Fed. Cir. 1994), where the recited ADOs were processed by a computer and affected how data was stored and organized in a memory. Thus, the CD8+ epitope limitation does not constitute printed matter with no patentable weight. See DiStefano, 808 F.3d at 851. B.” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Pet. 22–34. The Petition does not, however, demonstrate sufficiently that Brandt-1996 discloses, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope,” which is recited in both independent claims. Brandt-1996 discloses the results of a study in which murine (i.e., mouse) T cells were exposed to whole ESAT-6 protein, as well as nine subfragments of ESAT-6. Ex. 1010, 3528, Fig. 3. Whole ESAT-6 protein, as well as two of the subfragments, yielded a response from the T cells in the form of significant IFN-γ release. See id. at 3529–31, Figs. 2, 4. Petitioner argues that Brandt-1996 discloses exposing T cells to an immunogenic amount of a peptide subfragment of ESAT-6 because it reports a positive response (i.e., heightened IFN-γ release) to the “p1-20” peptide subfragment of ESAT-6 (also referred to as the “p1” peptide). Pet. 22–23 (citing Ex. 1010, 3531, Table 2). The Petition does not explain, however, why exposing the mice in Brandt-1996 to the “p1-20” peptide subfragment of ESAT-6 necessarily exposed the T cells to an immunogenic amount of peptide containing a CD8+ epitope. Petitioner’s assertion that a CD8+ epitope is not required by the claims is based on its arguments regarding printed matter, which are unpersuasive as discussed above. Alternatively, Petitioner argues that whole ESAT-6 protein contains CD8+ epitopes and, thus, the “ESAT-6 fragments disclosed in Brandt-1996 necessarily constitute ESAT-6 subfragments that contain a CD8+ epitope.” Pet. 23. Only two of the subfragments tested in Brandt-1996 were immunogenic, however, as required by the challenged claims. See Ex. 1010, Fig. 4 (showing responses to the “p1” (amino acids 1-20) and “p6” (amino acids 51-70) subfragments). Petitioner asserts that amino acids 15–29 and 61–82 correspond to murine CD8+ epitopes, but neither of them correspond to the immunogenic subfragments disclosed in Brandt-1996. See Pet. 23 (citing Ex. 1008, 3348 (“Bennekov-2006”)). Although Petitioner also asserts that ESAT-6 contains human and bovine CD8+ epitopes (id.), Brandt-1996 only tested mice and, thus, does not disclose immunogenicity for these epitopes specific to other species. Finally, Petitioner argues Brandt-1996 shows that whole ESAT-6 protein is immunogenic, which inherently discloses an immunogenic amount of subfragments containing CD8+ epitopes because ESAT-6 protein necessarily is processed into subfragments. Pet. 24. As Patent Owner argues, however, the record indicates that exposure to ESAT-6 protein does not necessarily produce a CD8+ response, particularly when a non-viral vector is used. See Prelim. Resp. 55–57. For example, Bennekov-2006 (cited by Petitioner as disclosing murine CD8+ epitopes) reports a response from CD8+ T cells of mice exposed to ESAT-6 protein via an adenovirus vector, but no significant CD8+ response when a liposome vector was used. See Ex. 1008, 3348, Fig. 2. It is undisputed that the Brandt-1996 study did not use a viral vector. Despite citing Bennekov-2006 to support its inherency arguments, Petitioner does not address or explain these aspects of Bennekov-2006, or their bearing on the disclosures of Brandt-1996. For the above reasons, Petitioner has not provided sufficient information showing that Brandt-1996 discloses, explicitly or inherently, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope,” as required by the challenged claims. Thus, Petitioner has not demonstrated a reasonable likelihood of prevailing as to anticipation by Brandt-1996. D.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “Finally, Petitioner argues Brandt-1996 shows that whole ESAT-6 protein is immunogenic, which inherently discloses an immunogenic amount of subfragments containing CD8+ epitopes because ESAT-6 protein necessarily is processed into subfragments. Pet. 24. As Patent Owner argues, however, the record indicates that exposure to ESAT-6 protein does not necessarily produce a CD8+ response, particularly when a non-viral vector is used. See Prelim. Resp. 55–57. For example, Bennekov-2006 (cited by Petitioner as disclosing murine CD8+ epitopes) reports a response from CD8+ T cells of mice exposed to ESAT-6 protein via an adenovirus vector, but no significant CD8+ response when a liposome vector was used. See Ex. 1008, 3348, Fig. 2. It is undisputed that the Brandt-1996 study did not use a viral vector. Despite citing Bennekov-2006 to support its inherency arguments, Petitioner does not address or explain these aspects of Bennekov-2006, or their bearing on the disclosures of Brandt-1996. For the above reasons, Petitioner has not provided sufficient information showing that Brandt-1996 discloses, explicitly or inherently, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope,” as required by the challenged claims. Thus, Petitioner has not demonstrated a reasonable likelihood of prevailing as to anticipation by Brandt-1996. D.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,617,821
• Qiagen Inc. v. Oxford Immunotec Ltd.Institution denied
  PTAB · Feb 14, 2017 · IPR2016-01543 · APJ J John Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–20 unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

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

    “We have authority to institute an inter partes review only if the information presented in the Petition shows “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; 37 C.F.R. §§ 42.4(a), 42.108. Upon consideration of the Petition and Preliminary Response, we determine that the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims. Accordingly, pursuant to § 314, we do not institute an inter partes review of the challenged claims of the ’902 Patent, and the Petition is denied.” slip op. at 2

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

    “of PPD with peptides, Vordermeier undermines Petitioner’s asserted reasoning to combine the asserted references. Although Vordermeier suggests replacing PPD with “recombinant proteins or synthetic peptides,” only proteins or peptides that are “specific and sensitive” are recommended. Ex. 1015, 663s. In addressing “peptide-based reagents” in particular, Vordermeier describes as “encouraging” only mycobacterial epitopes that “are recognized in a genetically permissive way.” Id. As Patent Owner notes (Prelim. Resp. 42–43), Vordermeier distinguishes “permissive” recognition from “restricted” recognition—“restricted” recognition is defined as “recognized . . . in the context of only one or two MHC class II alleles,” whereas “permissive” recognition exhibits broader recognition (i.e., with respect to more than two MHC genetic types). See Ex. 1015, 658s. Thus, Vordermeier supplies a reason to combine diagnostic assays with permissively-recognized proteins and peptides, but not those exhibiting only restricted recognition. Based on Vordermeier, both of the ESAT-6 peptides that yielded recognition responses in Brandt, including the “p1” peptide, appear to demonstrate restricted recognition—i.e., a recognition response was elicited in only two MHC haplotypes. See Ex. 1010, 3531, Fig. 4. Thus, to the extent an artisan would have been motivated to replace the ESAT-6 protein in the Pollock assay with an ESAT-6 peptide, Vordermeier does not support Petitioner’s reasoning that the artisan would have selected the peptides identified in Brandt. Although Dr. Ernst concluded in his declaration that a skilled artisan would have been motivated to combine Pollock’s assay with the “p1-15” peptide from Brandt, he does not address Vordermeier’s distinction between permissive and restricted epitopes, or whether the peptides in Brandt were permissive or restricted. See Ex. 1004 ¶¶ 57–58.” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “recognition responses in Brandt, including the “p1” peptide, appear to demonstrate restricted recognition—i.e., a recognition response was elicited in only two MHC haplotypes. See Ex. 1010, 3531, Fig. 4. Thus, to the extent an artisan would have been motivated to replace the ESAT-6 protein in the Pollock assay with an ESAT-6 peptide, Vordermeier does not support Petitioner’s reasoning that the artisan would have selected the peptides identified in Brandt. Although Dr. Ernst concluded in his declaration that a skilled artisan would have been motivated to combine Pollock’s assay with the “p1-15” peptide from Brandt, he does not address Vordermeier’s distinction between permissive and restricted epitopes, or whether the peptides in Brandt were permissive or restricted. See Ex. 1004 ¶¶ 57–58. Finally, the sole support for Petitioner’s assertion that peptides offer the advantages of “lower production costs, easier standardization, and lack of any risk of infection or immunotoxicity” is Dr. Ernst’s testimony. Pet. 29. His testimony on this point, however, is conclusory and does not present any supporting facts or data. Ex. 1004 ¶ 58. Thus, this testimony is entitled to little or no weight. See 37 C.F.R. § 42.65(a).” slip op. at 10

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,005,902
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCNo claims unpatentable
  PTAB · Feb 8, 2017 · IPR2015-01664 · APJ Justin Busch · IPR · Final written decision

  The Board held claims 8–12 and 18–22 not shown unpatentable as obvious over Dulin, Yamaura, Zhuang, and Hwang because the combination did not teach the entire broadcast channel within the core-band.

  RulingsFinal written decision

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

    “Upon further review of the ’431 patent, particularly in view of Patent Owner’s arguments supported by Dr. Zeger’s testimony discussed above, we are persuaded that our preliminary partial construction was unreasonably broad to the extent that construction indicated the transmitting a broadcast channel limitation would be met by the transmission of a broadcast channel that is only partially within the core-band. Thus, we agree with Patent Owner that to show that the transmitting “a broadcast channel in an” OFDMA core-band limitation is met, Petitioner must demonstrate that the prior art teaches or suggests transmitting a broadcast channel, wherein the entire channel is contained within the core-band.” slip op. at 8

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

    “as calling signals) in a “broadcast burst” (including Yamaura’s BCH and FCH) using only a subset of the subcarriers near the center of the bandwidth that makes up the channel. Pet. 27–29, 36–37; PO Resp. 30; Ex. 1003, 1:65–67, 6:5–8, 20:65–67, 21:30–32, 24:6–14; Ex. 1012 ¶¶ 65–68. There is some ambiguity, however, regarding whether Yamaura transmits signals outside of its narrow band during the time slots assigned to the alleged broadcast channels BCH and FCH (e.g., SC1 and SC2 as depicted in Figure 17 of Yamaura). See Ex. 1003, 21:1–43, Fig. 17. After reviewing the relevant portions of Yamaura, we determine Petitioner has not demonstrated by a preponderance of the evidence that Yamaura transmits signals only in its narrow band during the BCH and FCH time slots for the reasons discussed below.” slip op. at 13

  • Expert testimonyPetitioner expert creditedOther

    “Petitioner argues there are no signals other than calling signals sent during BCH and FCH because “the whole broadcast burst is part of the calling signal.” Tr. 102:17–103:2. However, upon review of the complete record and in the context of Yamaura’s entire disclosure, we credit Dr. Haas’s testimony that Yamaura’s repeated references to calling signals being specific control signals or part of the control signals indicates that Yamaura transmits other control signals during the BCH and FCH time slots. PO Resp. 30–31; Ex. 2001 ¶ 107.” slip op. at 15

  Patent outcomesUS 7,787,431 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,787,431
• Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.All claims unpatentable
  PTAB · Feb 7, 2017 · IPR2015-01657 · APJ William M Fink · IPR · Final written decision

  Claims 1, 5–8, 19, 26, 27, and 31–36 are unpatentable as obvious over Schnuckle ’455 with Meeker or Physics Lab.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find these “definitions” to be substantially similar. For example, both require at least a mechanical engineering degree and experience varying between “some,” in Dr. Brown’s opinion, and “one to three years,” in Dr. Delson’s opinion. Given this apparent lack of disagreement, we adopt Dr. Delson’s statement of the level of ordinary skill for purposes of this Decision, but we note that our analysis would be the same under either formulation.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer foundDecided for petitioner

    “By teaching that the “present description” solves the problems associated with the prior art candle devices because it is driven by “real but chaotic movements,” the patentee disclaims devices driven by rhythmic or metronomic patterns. Id. at 1354. Thus, the Federal Circuit started the paragraph by stating that the specification disclaimed non-chaotic pivoting, and then, after reviewing the ’166 patent specification evidence, concluded that this meant the patentee disclaims devices driven by rhythmic or metronomic patterns. We discern no suggestion by the Federal Circuit that it believed the disclaimer of chaotic pivoting to require more than not being driven by rhythmic or metronomic patterns such that Patent Owner’s mathematical definition of chaos is required.” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Although unsupported, we have considered whether replacing the entire gimbal would destroy the principle of operation, and we find that it would not. As discussed above, replacing the two-axis gimbal in Figure 12 with Meeker’s support wire would eliminate one of the two axes of rotation. Thus, the replacement would involve trade-offs, but, in this case, the trade-offs would be similar to those already contemplated by Schnuckle ’455. See also In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016) (agreeing that a person of ordinary skill in the art would have been motivated to pursue the desirable qualities taught by one reference at the expense of foregoing the benefit taught by another reference). For example, at a high level, all embodiments of Schnuckle ’455, even the single-axis embodiment of Figure 7, are designed to provide a realistic flame effect. See Ex. 1003, 2:1–3 (“[R]otation of the at least one channel about at least one axis of the mount creates an artificial flickering flame on the flame shaped surface.”). Given these teachings, and Patent Owner’s failure to explain why Meeker’s structure would have undermined or destroyed the principle of operation of Schnuckle ’455, we do not find that the proposed combination would have destroyed Schnuckle ’455’s principle of operation. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). As to the rationale for combining, Schnuckle ’455 and Meeker, based on reducing the number of components and reducing the possibility of the wire support slipping off the ring, Patent Owner’s arguments are again based on keeping parts of the gimbal structure, which is not the proposal. See PO Resp. 24 (“If Schnuckle’s gimbal is kept even partially intact, modification of the gimbal would be even more costly and require the same number of parts. (Ex. 2010, Brown Decl. ¶¶ 99, 129.)”). Dr. Brown makes similar statements in his Declaration. See Ex. 2010 ¶¶ 99, 129. Petitioner’s cost and reliability rationales, based on replacing the entire gimbal, remain unrebutted. We find Petitioner’s reasons for combining Schnuckle ’455 and Meeker to be based on rational underpinnings. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). 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 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Although unsupported, we have considered whether replacing the entire gimbal would destroy the principle of operation, and we find that it would not. As discussed above, replacing the two-axis gimbal in Figure 12 with Meeker’s support wire would eliminate one of the two axes of rotation. Thus, the replacement would involve trade-offs, but, in this case, the trade-offs would be similar to those already contemplated by Schnuckle ’455. See also In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016) (agreeing that a person of ordinary skill in the art would have been motivated to pursue the desirable qualities taught by one reference at the expense of foregoing the benefit taught by another reference). For example, at a high level, all embodiments of Schnuckle ’455, even the single-axis embodiment of Figure 7, are designed to provide a realistic flame effect. See Ex. 1003, 2:1–3 (“[R]otation of the at least one channel about at least one axis of the mount creates an artificial flickering flame on the flame shaped surface.”). Given these teachings, and Patent Owner’s failure to explain why Meeker’s structure would have undermined or destroyed the principle of operation of Schnuckle ’455, we do not find that the proposed combination would have destroyed Schnuckle ’455’s principle of operation. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). As to the rationale for combining, Schnuckle ’455 and Meeker, based on reducing the number of components and reducing the possibility of the wire support slipping off the ring, Patent Owner’s arguments are again based on keeping parts of the gimbal structure, which is not the proposal. See PO Resp. 24 (“If Schnuckle’s gimbal is kept even partially intact, modification of the gimbal would be even more costly and require the same number of parts. (Ex. 2010, Brown Decl. ¶¶ 99, 129.)”). Dr. Brown makes similar statements in his Declaration. See Ex. 2010 ¶¶ 99, 129. Petitioner’s cost and reliability rationales, based on replacing the entire gimbal, remain unrebutted. We find Petitioner’s reasons for combining Schnuckle ’455 and Meeker to be based on rational underpinnings. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). 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 28

  Patent outcomesUS 8,534,869 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,534,869
• Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.All claims unpatentable
  PTAB · Feb 7, 2017 · IPR2015-01658 · APJ William M Fink · IPR · Final written decision

  Claims 1–4, 7, 13, 14, 18–20, 22, and 26 are unpatentable on at least one ground; Sandell anticipation of claims 1–3 and Sandell-Hall obviousness of claim 7 were not proven.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find these “definitions” to be substantially similar. For example, both require at least a mechanical engineering degree and experience varying between “some,” in Dr. Brown’s opinion, and “one to three years,” in Dr. Delson’s opinion. Given this apparent lack of disagreement, we adopt 7 U.S. Patent No. 782,156, issued Feb. 7, 1905 (Ex. 1009) (“Meeker”). 8 U.S. Patent No. 4,551,794, issued Nov. 5, 1985 (Ex. 1010) (“Sandell”). 9 U.S. Patent No. 1,842,167, issued Jan. 19, 1932 (Ex. 1011) (“Hall”). Dr. Delson’s statement of the level of ordinary skill for purposes of this Decision, but we note that our analysis would be the same under either formulation.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “1. “flame silhouette element” In the Decision to Institute, we construed the term “flame silhouette element,” recited in at least claims 1 and 26, as “a body of material having a shape that is suitable to generate a flame flickering effect.” Inst. Dec. 9. In their respective Response and Reply, neither party disputes the preliminary construction of this term. Accordingly, we see no reason to change our construction, which we based on the broadest reasonable interpretation, consistent with the Specification.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundPlain and ordinary meaningDecided for petitioner

    “We determine that the Federal Circuit’s statement of the disclaimer of “non-chaotic pivoting” and devices “driven by rhythmic and metronomic patterns,” Luminara, 814 F.3d at 1353–54, is sufficiently specific to determine the scope of the term “pivot” in claim 1 and “pivotally supported” in claim 13.13 Accordingly, we apply the Federal Circuit’s construction that the plain and ordinary meaning of “pivot” and “pivotally supported” applies, 13 We have also considered Patent Owner’s Motion for Observations (Paper 37), which are substantially directed at obtaining admissions from Petitioner’s declarant in support of its proposed construction of chaotic pivoting (or that Schnuckle ’455 does not disclose chaotic pivoting based on this construction). See id. at 6–13. Although we have considered Patent Owner’s observations, we do not find them persuasive for the reasons explained herein. except that non-chaotic pivoting and devices driven by rhythmic and metronomic patterns are disclaimed.” slip op. at 17

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

    “consider whether Schnuckle ’455 sufficiently discloses the pivot (or pivotally supported) limitation given the disclaimer of non-chaotic pivoting and devices driven by rhythmic and metronomic patterns. As noted above, the Federal Circuit specifically determined, at least as a preliminary matter, that Schnuckle ’455 seemed to meet this claim requirement with its discussion of a two-axis gimbal articulated by “chaotic forces” that can articulate the flame element to “randomly simulate blowing in the wind. ’455 patent, col. 6, ll. 53–62.” Luminara, 814 F.3d at 1354. We agree with the Federal Circuit’s preliminary determination. Although Patent Owner observes that “‘chaotic’ describes the ‘external or internal force’––i.e., the force entering the system, not the resulting motion” (PO Resp. 20–21), Patent Owner does not address the fact that this driving force is coupled to resulting motion “simulating blowing in the wind” (Ex. 1003, 6:62) and “provid[ing] a realistic flame effect” (id. at 1:54–58). As such, we agree that this excerpt of Schnuckle ’455 satisfies the chaotic pivoting requirement and is not driven by a “rhythmic or metronomic” driving force. Pet. Reply 4 n.1. Petitioner also cites the discussion of “programmable movement patterns” as additional evidence of this fact. Id. (citing Ex. 1003, 5:52–67 (“The desired movement pattern of the flame shaped surface 326 may be encoded and stored in the memory module 408 of the control board 302 in the form of digital data or control signals.”)). We agree that the column 5 description in Schnuckle ’455 of programmable movement patterns, when viewed against column 6’s description relied upon by the Federal Circuit (Ex. 1003, 6:53–62), suggests the programmed pattern is not rhythmic or metronomic but natural and chaotic.14 Accordingly, we find that Schnuckle ’455 discloses chaotic pivoting as required by claims 1 and 13. Accordingly, for the foregoing reasons, we determine Petitioner has satisfied its burden of proving anticipation based on Schnuckle ’455 against claims 1 and 13 by a preponderance of the evidence.” slip op. at 21

  Patent outcomesUS 8,696,166 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,696,166
• Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.All claims unpatentable
  PTAB · Feb 6, 2017 · IPR2015-01656 · APJ William M Fink · IPR · Final written decision

  Claims 1 and 5 are anticipated by Schnuckle ’455, and claims 1–5 are unpatentable as obvious over Schnuckle ’455.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “30, 2013) (Paper 26) (precedential as to Section III.A) squarely address Patent Owner’s argument. In LG, the Board determined that a proceeding was time-barred even though the prior case (in which a complaint was served more than one year prior to the Petition) was dismissed with prejudice in part and without prejudice in part. Id. at 6. Because even a partial dismissal with prejudice did not leave the parties in the position that they would have been in had the prior complaint never been brought, the Board found the exception to § 315(b) for prior complaints dismissed without prejudice did not apply. Id. In Oracle, by contrast, the facts are similar to those alleged here. Specifically, a petitioner was served with a complaint alleging infringement of the challenged patent more than one year before the petition the proceeding was filed. Id. at 15. That suit was dismissed without prejudice. Id. at 16–17. Applying the Federal Circuit decisions in Graves and Bonneville, the Board determined that “the dismissal of the infringement suit . . . nullifies the effect of the service of the complaint and, as a consequence, does not bar [Petitioner] or any of the other Petitioners from pursuing an inter partes review.” Id. at 17. As with Oracle, Patent Owner here concedes the 2012 case was dismissed without prejudice and does not allege any circumstances that would tend to show the parties are not in the position they were in had the complaint never been served. Accordingly, we find Oracle is controlling under the circumstances alleged in this proceeding.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find these “definitions” to be substantially similar. For example, both require at least a mechanical engineering degree and experience varying between “some,” in Dr. Brown’s opinion, and “one to three years,” in Dr. Delson’s opinion. Given this apparent lack of disagreement, we adopt Dr. Delson’s statement of the level of ordinary skill for purposes of this Decision, but we note that our analysis would be the same under either formulation.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “based interpretation of the disclaimer addressed by the Federal Circuit, we also consider whether Patent Owner’s construction of “pivotally mounted” (i.e., requiring three, independent, non-linear types of motions that must not be controlled or modulated) is appropriate. See PO Resp. 12–13. We conclude it is not. Though preliminary, the Federal Circuit specifically rejected this reading both before and after determining that non-chaotic pivoting is disclaimed. Luminara, 814 F.3d at 1352–53 (rejecting the district court’s construction that “free to pivot” requires “movement that is more than rotation around two axes”; “Pivoting includes rotation around a single axis.”), 1354 (finding that “[t]he [Schnuckle] ’455 patent undisputedly teaches pivoting in two axes” and the “final limitation in claim 1 of the ’166 patent—chaotic movement—seems to be met . . . in the prior art [Schnuckle] ’455 patent.”). We agree with the Federal Circuit’s analysis, because it is consistent with the intrinsic evidence. Conversely, Patent Owner’s proposed construction contradicts the intrinsic evidence in other respects. For example, claim 17 has a limitation directed to both pivoting (i.e. “allowing the pendulum to pivot about the hole on the support wire”) and “chaotic motion at the coupling member in at least two dimensions.” Ex. 1001, 23:28–30 (emphasis added). By requiring chaotic motion in at least two dimensions (as on a single-axis), the claims suggest chaotic motion nominally includes motion in even one dimension, as in up or down or side to side. On the other hand, interpreting the specification disclaimer of “chaotic pivoting” for purposes of claim 1 to require three, independent nonlinear types of motion, as Patent Owner argues, would lead to the incompatible result that claim 17, which requires movement in only two dimensions, would cover devices that are disclaimed by the specification.” slip op. at 17

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

    “consider whether Schnuckle ’455 sufficiently discloses the pivotally mounted limitation given the disclaimer of non-chaotic pivoting and devices driven by rhythmic and metronomic patterns. As noted above, the Federal Circuit specifically determined, at least as a preliminary matter, that Schnuckle ’455 seemed to meet this claim requirement with its discussion of a two-axis gimbal articulated by “chaotic forces” that can articulate the flame element to “randomly simulat[e] blowing in the wind. ’455 patent, col. 6, ll. 53–62.” Luminara, 814 F.3d at 1354. We agree with the Federal Circuit’s preliminary determination. Petitioner, relying on Dr. Delson’s testimony, also states the disclosure of driving with “natural and chaotic forces” “simulating blowing in the wind” is not a “rhythmic or metronomic” driving force in accordance with the disclaimer. Pet. Reply 20 (citing Ex. 1019 ¶¶ 19–27). Petitioner cites the discussion of “programmable movement patterns” as additional evidence of this fact. Id. (citing Ex. 1003, 5:52–67 (“The desired movement pattern of the flame shaped surface 326 may be encoded and stored in the memory module 408 of the control board 302 in the form of digital data or control signals.”); Ex. 1019 ¶¶ 25–26 (explaining that exciting electromagnets according to digital data can produce chaotic motion)). Patent Owner interprets this excerpt differently, arguing that because “the movement pattern of the flame shaped surface 326 may be encoded and stored in the memory module 408 of the control board 302 in the form of digital data or control signals,” Schnuckle ’455 admits the gimbal of Figure 7 does not move naturally. PO Resp. 21 (quoting Ex. 1003, 5:53–56; Ex. 2010 ¶ 141). We disagree. Nothing in the column 5 excerpt of Schnuckle ’455 suggests memory is programmed with rhythmic or metronomic patterns. Rather, column 5 explains how the electromagnets 316 are excited according to the data programmed into the memory module. See Ex. 1003, 5:54–63. This column 5 description is informed by column 6’s explanation that magnetism articulates the light pipe (i.e., pendulum) with a “natural and chaotic external . . . force (such as . . . magnetism)” resulting in “simulating blowing in the wind.” See id. at 6:56–63. From these descriptions, the programmed pattern is not rhythmic or metronomic, but is natural and chaotic. We, therefore, find the column 5 description consistent with the column 6 description relied upon by the Federal Circuit (Ex. 1003, 6:53–62).5 This is consistent with Dr. Delson’s testimony (Ex. 1002 ¶¶ 57–58; Ex. 1019 ¶ 26), which we credit. Accordingly, we find Schnuckle ’455 discloses chaotic pivoting.” slip op. at 24

  Patent outcomesUS 8,070,319 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,070,319
• Microsoft Corp. v. Windy City Innovations LLCInstitution denied
  PTAB · Nov 29, 2016 · IPR2016-01138 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 18–49, 54–57, and 59–63 would have been obvious over Brown and Tang.

  RulingsInstitution decision

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

    “alternatives” to allow members in “at least one group . . . [to] send communications and receive communications . . . wherein at least some of the communications are received in real time via the Internet network.” See, e.g., Ex. 1001, 23:59–67 (emphases added). Here, “wherein at least some of the communications are received in real time” refers to the communications sent and received by members of “at least one group.” Claim 1 is clear that both client software alternatives must “allow at least some of the participator computers to form at least one group in which members can send communications and receive communications.” Thus, the communications in a group pursuant to each of the client software alternatives must include real-time communications.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable

    “alternatives” to allow members in “at least one group . . . [to] send communications and receive communications . . . wherein at least some of the communications are received in real time via the Internet network.” See, e.g., Ex. 1001, 23:59–67 (emphases added). Here, “wherein at least some of the communications are received in real time” refers to the communications sent and received by members of “at least one group.” Claim 1 is clear that both client software alternatives must “allow at least some of the participator computers to form at least one group in which members can send communications and receive communications.” Thus, the communications in a group pursuant to each of the client software alternatives must include real-time communications.” slip op. at 9

  § 103 obviousness
  Patents in suitUS 8,473,552
• Oracle America, Inc. v. Realtime Data LLCInstitution denied
  PTAB · Jul 1, 2016 · IPR2016-00375 · APJ J John Lee · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 4, 10-12, and 18-20 were obvious over Kawashima and Sebastian.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Its challenge to the remaining claims also fails because each claim is dependent on claim 1. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms. Techs., LLC, Case IPR2015-00017, 2015 WL 1777146, at *8 (PTAB Apr. 8, 2015).” slip op. at 12

  • BurdenDenied

    “In sum, Petitioner does not explain adequately how Kawashima and Sebastian teach an individual memory device that meets the limitations of claim 1. To the extent Petitioner intended to allege that multiple structures in Kawashima together teach these limitations, the Petition does not explain such an allegation clearly, nor does it explain how or why a person of ordinary skill would have combined those different elements—some from different embodiments of Kawashima—to arrive at the recited memory device and its claimed characteristics. See Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (holding that two embodiments in a single reference could be combined to render a claim obvious where an ordinary artisan would have been motivated to combine them). As discussed above, each limitation of claim 1 that recites a “memory device” refers to the same memory device, and it is unclear how the multiple different memory devices from different embodiments in Kawashima relied on by Petitioner teach the “memory device” of claim 1. Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Its challenge to the remaining claims also fails because each claim is dependent on claim 1. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms. Techs., LLC, Case IPR2015-00017, 2015 WL 1777146, at *8 (PTAB Apr. 8, 2015).” slip op. at 11

  Nonecites KSR · Graham
  Patents in suitUS 7,415,530
• Oracle America, Inc. v. Realtime Data LLCInstitution denied
  PTAB · Jul 1, 2016 · IPR2016-00377 · APJ Jason J Chung · IPR · Institution

  The Board denied institution on claims 1, 2, 4–6, 9, 11, 21, 22, 24, and 25 because the petition did not adequately show the same memory device met claim 1’s limitations.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms.” slip op. at 14

  • BurdenDenied

    “Petitioner, therefore, fails to explain how Kawashima and Sebastian teach an individual memory device that meets the limitations of claim 1. To the extent Petitioner intended to allege that multiple structures in Kawashima together teach these limitations, the Petition does not explain such an allegation clearly, nor does it explain how or why a person of ordinary skill would have combined those different elements—some from different embodiments of Kawashima—to arrive at the recited memory device and its claimed characteristics. See Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (holding that two embodiments in a single reference could be combined to render a claim obvious where an ordinary artisan would have been motivated to combine them). Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Petitioner, therefore, fails to explain how Kawashima and Sebastian teach an individual memory device that meets the limitations of claim 1. To the extent Petitioner intended to allege that multiple structures in Kawashima together teach these limitations, the Petition does not explain such an allegation clearly, nor does it explain how or why a person of ordinary skill would have combined those different elements—some from different embodiments of Kawashima—to arrive at the recited memory device and its claimed characteristics. See Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (holding that two embodiments in a single reference could be combined to render a claim obvious where an ordinary artisan would have been motivated to combine them).” slip op. at 14

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

    “We decline to adopt Petitioner’s proposed claim construction, at least because Petitioner’s proposed claim construction omits the claimed “memory device” and its relationship to the faster storage limitation. See Prelim. Resp. 13. As noted by Patent Owner, “a claim should be constructed so that each word in the claim has meaning.” Id., citing Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) and In re Wilson, 424 F.2d 1382, 1385 (C.C.P.A.1970). Accordingly, no claim terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,116,908

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.