- Freebit As v. Bose CorporationRehearing deniedPTAB · Jan 23, 2018 · IPR2017-01308 · APJ James B Arpin · IPR · Rehearing
The Board denied Freebit’s rehearing request, leaving in place the denial of institution on claims 1–11 because the arguments did not show the Board overlooked or misapprehended the record or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 4
NonePatents in suitUS 8,254,621 - Emerson Electric Co. v. IP Co., LLCAll claims unpatentablePTAB · Jan 9, 2018 · IPR2016-01602 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1, 2, 4, 5, 10, 11, 13, and 14 are unpatentable under § 103 as obvious over the stated combinations of Burchfiel, Schwartz, and Heart, with Online Encyclopedia for claims 2, 5, and 11.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties differ on the level of ordinary skill applicable to this case. Petitioner contends the person of ordinary skill “would have a minimum of a bachelor’s degree in Electrical Engineering and 2-3 years of experience in the development and design, or technical marketing, of radio communications and computer network systems, or the equivalent.” Pet. 11. Patent Owner’s expert, Dr. Almeroth, responds: “a person of ordinary skill in the art for the patent-in-suit would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent and experience with, or exposure to, computer networks and routing. A person of ordinary skill in the art would also have approximately two years of professional experience with computer networking, routing, and wireless networks.” Almeroth II Decl. ¶ 74. Dr. Almeroth takes issue with Petitioner’s definition “since it does not specifically list Computer Science as a possible degree.” Id. at ¶ 78. We adopt Patent Owner’s slightly more inclusive definition. As the definitions do not differ substantially, however, under either we would reach the same result. C. Claim Construction” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“transmission paths from a particular client to the server. Pet. Reply 5–6. Petitioner responds that Patent Owner’s dictionary definition relates to “a physical map, not a structure for organizing data in mathematics or computer science.” Id. at 6. We agree with Petitioner that this particular definition of “map” is not pertinent to the subject matter of the ’516 patent, and therefore give Patent Owner’s argument based on this definition little weight. See id. If anything, the dictionary entry cited by Patent Owner supports Petitioner’s view that the construction of “map” should not be limited to multiple paths from one client. Thus, the second definition of “map” in the dictionary entry is not limited to multiple elements: “The correspondence of one or more elements in one set to one or more elements in the same set or another set.” Ex. 2001, 827 (“map,” definition 2; emphasis added). We deem this second definition, identified as pertaining to mathematics (“Math.”), to be more pertinent to the technology of the ’516 patent than that chosen by Petitioner. Nor are we persuaded by Patent Owner’s other argument, based on the reference in the ’516 patent claims to plural “paths.” PO Resp. 11–12. As Petitioner points out, claims 1 and 13 recite “changing the transmission path [singular] from the client to the gateway so that the path to the gateway is chosen.” Pet. Reply 6. We are, therefore, not persuaded by the arguments presented that the construction of this term in our Institution Decision requires modification. We therefore construe the term “map” as containing the paths or links to a node in the network, including a single path.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededOther
“We agree with Petitioner that this term needs no express construction. However, we determine that it is necessary to address Patent Owner’s proposed construction, as it is central to its defense to Petitioner’s challenge. Patent Owner’s construction of this term is related to its proffered construction of “map of data packet transmission paths,” discussed supra. According to Patent Owner, “[t]he claim language itself . . . requires the server to change the selection of a transmission path including an identification of an entire path from the client to the server.” PO Resp. 13 (emphasis added). We disagree with this interpretation. The claim uses the word “chosen,” not “select.” We agree with Petitioner that this is a significant difference, in that “chosen” does not necessarily imply a selection among alternative paths. Pet. Reply 7. Further support for this conclusion is found in our discussion of “map of data packet transmission paths,” supra. There, we conclude that “map” should not be limited to multiple paths from a client. See supra. In the same way, the claim language should not be construed as requiring choosing from a selection of alternative paths. Patent Owner points to a decision in which another panel of the Board, in IPR2015-01901, construed the word “select” in a “related patent.” PO Resp. 13–14. We are not persuaded by that decision that we are misconstruing the claims at issue here, which do not use the word “select.” In the context of the ’516 patent claims, we do not regard “chosen” as having the same meaning as “select.”” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find that Petitioner has demonstrated that Burchfiel’s connectivity matrix meets this claim limitation. Pet. 35–35; 54. We are not persuaded by Patent Owner’s arguments in rebuttal. First, addressing the “plurality of descriptions” argument, we have construed the term “map” as not limited to storing multiple paths from one client to the server. Thus, Patent Owner’s argument calling for a “plurality of descriptions” of a path from a client to the server is contrary to our construction. Moreover, we are not persuaded that a map must contain the “entire path.” We have construed “map” as containing the paths or links to a node in the network, including a single path. See infra. Thus, the “entire path” argument fails for this reason alone. We find, however, that even under Patent Owner’s construction of map as requiring a “description of the entire path,” Burchfiel would meet this limitation. Ex. 1005, 246. Burchfiel teaches a map containing both the path from the station to the server and from the server to the station. According to Burchfiel, a connection table provides a map of path information: Once a station has labelled all PRU’s and established connections to them, the information for maintaining these connections is entered into the station’s connection table. This contains the status information described above for handling the connection protocol. Ex. 1005, 247 (emphasis added). As Petitioner points out, Burchfiel specifically describes these connections as “bidirectional.” Pet. Reply 9 (citing Ex. 1005, 246 (“Since most expected uses of the PRN will require bidirectional communication, the PRN connection is bi-directional.”)). Petitioner provides persuasive expert testimony to the effect that “it would have been obvious to recompute the route in both directions, to the extent not disclosed by Burchfiel, based on Burchfiel’s disclosure that, e.g., the ‘PRN connection is [a] bidirectional’ ‘data transmission path.” Geier II Decl. ¶ 69. We find that at the very least, therefore, Burchfiel’s reference to “bi-directional” connections suggests such a computation. “Even if a reference’s teachings are insufficient to find anticipation, that same reference’s teachings may be used to find obviousness.” CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1345 (Fed. Cir. 2017). We find based on the foregoing that Burchfiel’s disclosure would teach or suggest to a person of ordinary skill that the connection table stores bidirectional path information.” slip op. at 18
Patent outcomesUS 6,249,516 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,249,516 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.Rehearing deniedPTAB · Dec 4, 2017 · IPR2017-00649 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution on claims 1–30 because Petitioner did not show that the Board overlooked or misapprehended its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The Decision Denying Institution considered Petitioner’s argument regarding combining Bonella’s power reduction technique and Bonella’s power loss algorithm as it was presented in the Petition. Thus, Petitioner has not established the proposition that the Board overlooked or misapprehended some evidence in the record. A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. Thus, we are not persuaded by this argument.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“disclosed the specific feature alleged to be obvious. Req. Reh’g 12. We disagree. The Decision Denying Institution found that Long and Ashmore did not provide motivation for the specific combination advanced by Petitioner, stating “Petitioner does not point to a motivation to adjust the frequency of the memory banks specifically, simply a general motivation to reduce battery power during power loss.” Inst. Dec. 13. Thus, the Decision Denying Institution stated “we are not persuaded Ashmore [or Long] supports that contention that running at the frequency associated with Power Level 4 during a power loss would have been obvious.” Id. 13–14. “[T]o establish obviousness based on a combination of the elements disclosed in the prior art, there must be some motivation, suggestion or teaching of the desirability of making the specific combination that was made by the applicant.” In re Kotzab, 217 F.3d 1365, 1370 (Fed.Cir.2000) (citation omitted)(emphasis added)). “A determination of obviousness cannot be reached where the record lacks ‘explanation as to how or why the references would be combined to produce the claimed invention.’” Hyundai Motor Co. v. Blitzsafe Texas, LLC, Case IPR2016-01476, slip op. at 32 (PTAB Jan. 24, 2017) (Paper 12) (quoting Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016)). The Decision Denying Institution properly followed this precedent in requiring a specific motivation to make the combination alleged by Petitioner to meet the claimed combination.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“CONCLUSION The Request for Rehearing does not demonstrate that we misapprehended or overlooked any matters raised in the Petition declining to institute review of claims 1–30.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,301,833 - Composite Materials Technology, Inc. v. Greatbatch, Ltd.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01441 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Contrary to Petitioner’s arguments, the fact that two references relate to the same general subject matter is not, by itself, sufficient to explain why one of ordinary skill in the art would have sought to modify one reference in view of the other; it demonstrates at most that the two references are in the same field of endeavor. See In re GPAC Inc., 57 F.3d 1573, 1577–78 (Fed. Cir. 1995). Nor is an alleged admission that Fife and Stephenson are prior art to the ’075 patent sufficient to explain why these two references would be combined in a manner necessary to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 389, 418–19 (2007) (“[I]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”). In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”). As Petitioner provides insufficient rationale to explain why one of ordinary skill in the art would have combined the disclosures of Fife and Stephenson in a manner necessary to achieve the claimed invention, it has not demonstrated a reasonable likelihood that the subject matter of claim 1 would have been obvious over those references. And, because challenged claims 2–11 and 13–18 each depend from claim 1, and because the deficiencies in Petitioner’s arguments and evidence regarding claim 1 are not remedied by Petitioner’s arguments and evidence regarding claims 2–11 and 13–18, Petitioner has likewise not demonstrated a reasonable likelihood that the subject matter of those claims would have been obvious over Fife and Stephenson.6” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”).” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,312,075 - Facebook, Inc. / Instagram, LLC v. Skky, LLCRehearing deniedPTAB · Sep 28, 2017 · CBM2016-00091 · APJ Glenn J Perry · CBM · Rehearing
The Board denied Facebook and Instagram’s rehearing request, finding no abuse of discretion in denying CBM review because the disclaimed claims could not establish eligibility.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“may deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.208(b). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 4
- Adverse judgmentOther
“when a patent owner files a statutory disclaimer after the filing of the petition but before institution, CBM patent review eligibility can be based on the disclaimed claims. Specifically, Petitioner relies upon limitations of disclaimed claims 6 and 8−11 as supporting its contention that the ’502 patent qualifies for CBM patent review. See Pet. 4–8 (citing claim 6, for example, which recites “charging a fee, to the user”). Patent Owner, however, statutorily disclaimed claims 6 and 8−11, pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). See Prelim. Resp. 4; Ex. 2001. In the Decision on Institution, for purposes of establishing CBM patent review eligibility and in accordance with Federal Circuit case law, we treated the ’502 patent as though these claims never existed. Dec. on Inst. 8–10.” slip op. at 7
NonePatents in suitUS 9,037,502 - PTAB · Sep 8, 2017 · IPR2015-01869 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–8, 10–12, 14–18, 20–23, 25, and 27–29 unpatentable over Shuen and RFC1234, and claim 19 unpatentable over Bellovin.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successDecided for petitioner
“mapping for the network address translation” under the Board’s construction of that phrase, i.e., “a property associated with the mapping in which the mapping expires after it has not been used in the translation of a packet for a period of time associated with the mapping,” the Petition cites the following language from Shuen:” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Disclaimer not foundDecided for petitioner
“from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000) (citations omitted). “To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.” Id. (citations omitted). Whether and to what extent material has been incorporated by reference into a host document is a question of law. Id.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for petitioner
“Id. at 3 (emphasis omitted). Notably, Patent Owner did not raise this argument (i.e., that Shuen’s “time to live” does not satisfy the recited “time out . . .” under the Board’s construction) in its Patent Owner Response. Patent Owner asserts, however, it “noted this deficiency of Petitioner’s proofs in the January 18, 2017 hearing” and “[t]his deficiency of Shuen was first raised in Patent Owner’s Preliminary Response.” Req. Reh’g. 4. However, our rules do not allow Patent Owner to incorporate arguments by reference from its Preliminary Response (see 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference form one document into another document”)), and our Scheduling Order provides that any arguments and evidence not contained in the Patent Owner Response will be “deemed waived” (Paper 9, 3). Petitioner asserted at the oral hearing that the argument was new and, as such, Petitioner did not have a reasonable ability to respond to the argument. Tr. 43:8–14. We determine Patent Owner has waived its argument that Shuen does not disclose the “has not been used” portion of our construction of the phrase “time out of the mapping for the network address translation.”” slip op. at 3
Claim construction§ 103 obviousnessPatents in suitUS 8,544,079 - Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Aug 28, 2017 · IPR2016-00593 · APJ Garth D Baer · IPR · Final written decision
The Board held that claims 12–15, 21–23, 25–27, 33–38, 44, and 45 were not shown unpatentable because Pictometry was not established as a publicly accessible printed publication.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Version 2.7 (“EFS 2.7 User Guide,” “Pictometry,” or “User Guide”) and, as the name suggests, is a user guide for the Pictometry software product. See Ex. 1004, xiii. Patent Owner argues that Petitioner does not demonstrate that Pictometry is prior art. PO Resp. 5–10. In our Final Written Decision in IPR2016-00594, we considered substantively the same arguments and evidence Patent Owner and Petitioner raise in this case. See IPR2016-00594 FWD 17–29; compare IPR2016-00594 Paper 31, 13–20 with PO Resp. 6– 13; and compare IPR2016-00594 Paper 33, 3–9 with Reply 4–11. In IPR2016-00594, we found Pictometry’s limited dissemination to some governmental entities subject to licensing restrictions was not sufficient to show public dissemination or public accessibility. IPR2016-00594 FWD 17–29. We adopt that same finding here. For the reasons explained in IPR2016-00594, we find that Petitioner has not established by a preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. §§ 102(b) and 311(b).” slip op. at 6
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“substantively the same as the arguments made in IPR2016-00594. In IPR2016-00594, we denied Patent Owner’s motion to exclude Exhibit 1004 (Pictometry), Exhibit 1011 (a Merriam-Webster Dictionary Definition “database” copied from a web page), Exhibit 2010 (Cohasset Town Report 2008), 2011 (LARIAC1 Pictometry Training), Exhibit 2012 (LAR-IAC2 Product Guide), Exhibit 2020 (“GIS: Pictometry: Oblique Imagery training), Exhibit 2021 (“Pictometry License Guidelines”), and Exhibit 2022 (“Pictometry – April 19, 2007”). IPR2016-00594 FWD 5–17. We granted Patent Owner’s motion to exclude Exhibit 2013 (article titled “Los Angeles County Extends its License Agreement with Pictometry for New Oblique Aerial Photos”), Exhibit 2014 (“Pictometry Administrative Training”), Exhibit 2015 (“Information about TXWILM Administrative Training”), Exhibit 2016 (“Pictometry Administrative Training”), Exhibit 2019 (“GIS Working Group Meeting Minutes”), Exhibit 2023 (“Welcome to Your End User Training”), Exhibit 2024 (“Electronic Field Study Getting Started Guide”), Exhibit 2025 (“Pictometry Announces Technical Advancements for GIS Professionals1”), and Exhibit 2026 (“Pictometry Announces Technical Advancements for GIS Professionals2”). Id. We adopt the same findings and conclusions here. For the reasons explained in IPR2016-00594, we deny the motion to exclude Exhibits 1004, 1011, 2010, 2011, 2020, 2021, and 2022, but grant the motion to exclude Exhibits 2013, 2014, 2015, 2016, 2019, 2023, 2024, 2025, and 2026. See id.” slip op. at 5
Patent outcomesUS 8,823,732 not shown unpatentable§ 102 anticipationPatents in suitUS 8,823,732 - Apple Inc. v. Immersion CorporationInstitution deniedPTAB · Aug 25, 2017 · IPR2017-00887 · APJ Bryan F Moore · IPR · Institution
The Board denied institution for claims 1–15 under § 314(a), finding the second petition an inadequately explained follow-on challenge filed after Petitioner saw the earlier response and decision.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“because (1) it would be inequitable to Patent Owner to allow Petitioner’s second challenge to the same claims when Petitioner had the opportunity to see Patent Owner’s preliminary response and the Board’s Decision Denying Institution in Case IPR2016-01371, and (2) Petitioner was aware or should have been aware of the primary prior art references asserted in the Second Petition before the filing of its First Petition in Case IPR2016-01371. Prelim. Resp. 4–5, 21–26 (citing Synaptics Inc. v. Amkor Tech., Inc., Case IPR2017-00085, slip op. at 10 (PTAB Apr. 18, 2017) (Paper 12). We are persuaded that the specific circumstances of this case invoke a concern, under 35 U.S.C. § 314(a), over the potential inequity of Petitioner filing multiple attacks, with the benefit of having seen Patent Owner’s contentions and the Board’s decision regarding a prior challenge by the same Petitioner to the same patent.” slip op. at 5
Discretionary denialPatents in suitUS 8,619,051 - Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Aug 24, 2017 · IPR2016-00594 · APJ Bryan F Moore · IPR · Final written decision
Petitioner did not prove claims 1–10 and 13–20 unpatentable because it failed to establish that Pictometry was a publicly accessible printed publication.
RulingsFinal written decision- ExcludeMixed
“Mot. Reply 3. Given the sequence of events, there is no prejudice to Petitioner, who introduced these documents and was served objections at an early stage. Patent Owner apparently cited to the documents in its Patent Owner Response to preserve the right to substantively respond to these documents rather than wait to see if they were presented in Petitioner’s Reply. Pursuant to our discretion under 37 C.F.R. § 42.5(c)(3), we do not dismiss Patent Owner’s Motion to Exclude due to allegedly untimely filed objections.” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“are also prohibited. Id. The MAPC Agreement states under “Confidentiality of Licensed Products” that the Licensed Products are commercially valuable, proprietary products owned by Pictometry and are treated by Pictometry as confidential and contain substantial trade secrets of Pictometry. Ex. 2009, 16, Article 8.4. The licensee agrees that it will not disclose, provide a copy of, or disseminate the Licensed Products and that its personnel will protect the Licensed Products from unauthorized use, disclosure, copying, and dissemination, and that access to the Licensed Products and each part thereof will be strictly limited. Id. We acknowledge that these represent significant limitations on the dissemination of the User Guide.” slip op. at 21
- BurdenDecided for patent owner
“involving the EFS software and provides no evidence that the EFS software and the EFS 2.7 User Guide were actually maintained confidential by the parties of the MAPC Agreement, or that the EFS software and the EFS 2.7 User Guide were inaccessible to those of ordinary skill in the art.” Reply 9. However, this improperly puts the burden to disprove public accessibility on Patent Owner. Although Patent Owner challenges whether Pictometry is a printed publication, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an inter partes review). Petitioner must demonstrate by a preponderance of the evidence that the challenged claims are unpatentable, and one aspect of such a showing is that the references relied upon are patents or printed publications. See 35 U.S.C. §§ 311(b) 316(e).” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. § 102(b). C. Anticipation of Claims by Pictometry Petitioner asserts that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry. Pet. 16. As noted above, we determine that Petitioner has not shown that Pictometry is a printed publication under 35 U.S.C. § 102(b). Thus, Petitioner has not established by a preponderance of the evidence that that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry.” slip op. at 29
Patent outcomesUS 8,542,880 not shown unpatentable§ 102 anticipationPatents in suitUS 8,542,880 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Elm 3ds Innovations, LLCNo claims unpatentablePTAB · Aug 22, 2017 · IPR2016-00770 · APJ Glenn J Perry · IPR · Final written decision
Claims 12, 13, 24, 36, 37, 38, 83, 86, 87, and 132 were not shown unpatentable over the asserted combinations because the evidence did not establish substantial flexibility or motivation for the proposed dielectric substitutions.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, with support of its declarant Paul D. Franzon, Ph.D., contends that one of ordinary skill in the art at the time of the inventions of the challenge patents “would have had at least a B.S. degree in electrical engineering, material science, or equivalent thereof, and at least 3–5 years of experience in the relevant field, e.g., semiconductor processing.” Pet. 7 (citing Ex. 1002 ¶¶ 52–53). Dr. Franzon’s testimony as to the level of 12 ordinary skill is based on “the type of problems encountered in the art, prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field.” Ex. 1002 ¶ 53. Patent Owner did not propose expressly a particular level of ordinary skill. See generally PO Resp. At the oral hearing, Petitioner indicatedthat there did not seem to be any dispute as to the correct level of ordinary skill. Tr. 112:11–14 (“I don’t think there was any dispute about whether [Dr. Franzon’s proposed level of ordinary skill] was the correct level of skill, although Patent Owner can correct me.”). Having reviewed the prior art asserted in these proceedings (see, e.g., Exs. 1004–07, 1009, 2160), we determine that the level of ordinary skill proposed by Petitioner’s declarant is consistent with the challenged patent and the referenced prior art, and we adopt Petitioner’s proposed definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In the context of the Elm 3DS family, we find that the broadest reasonable interpretation of “substantially flexible” is the same as our construction under the Philips standard, which was the standard applied in IPR2016-00386. Under the broadest reasonable construction standard, we presume a claim term carries its ordinary and customary meaning, which “is the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). As discussed in detail in the Final Written Decisions in IPR2016-00386, IPR2016-00387, and IPR2016- 00388, the ordinary and customary meaning of “substantially flexible” is “largely able to bend without breaking.” Also as discussed extensively in” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“same as set forth in IPR2016-00708. Each of the challenged claims in this review require the use of a dielectric having a stress of less than 5 x 108 dynes/cm2 tensile. The evidentiary record in this case with regard to dielectric substitution adds nothing further to the evidentiary record established in IPR2016-00708. For the same reasons set forth in our Final Written Decision in IPR2016-00708, we determine that Petitioner has not met its burden to demonstrate by a preponderance of the evidence that a person of ordinary skill in the art would have made the proposed dielectric substitution.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As noted in our claim construction section, above and as referenced in our Final Written Decision in IPR2016-00386, a preponderance of the evidence establishes that, in the context of semiconductor substrates, mere thinning is not the same as flexibility—being able to bend without breaking. 20 Although Petitioner presents arguments attempting to demonstrate thinning, there are no arguments that this thinning necessarily results in flexibility. Thus, we determine that Petitioner has not met its burden to demonstrate that the required “substantial flexibility.” This reason alone sufficiently supports our conclusion. However, we also conclude, as set forth below that for a second, independent reason, Petitioner has not established that the challenged claims are unpatentable. Petitioner has not sufficiently established that one of ordinary skill would have substituted the dielectric material of Leedy ’695 for the various layers proposed for substitution in Hsu. Therefore we do not credit Leedy ’695 as providing any potential “substantial flexibility” to Hsu.” slip op. at 20
Patent outcomesUS 8,907,499 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,907,499
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.