• Ace Bed Co., Ltd. v. Sealy Technology LLCAll claims unpatentable
  PTAB · Nov 24, 2015 · IPR2014-01119 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1–3, 5–8, and 10–17 were held unpatentable: claims 1–3, 5–8, 10–13, and 17 as anticipated by Ahn, and claims 14–16 as obvious over Ahn, Flesher, and Oakhill.

  RulingsFinal written decision

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

    “proposes a construction of “step” based on an explicit definition in the specification — “non-helical shaped segments of the described coils.” Ex. 1001, 3:8–10. Pet. 12. We adopt this construction.” slip op. at 7

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

    “Ahn’s “contact-preventing ends” appear to be substantially coaxial with the longitudinal axis of the coil bodies that terminate at opposed axial ends which are generally perpendicular to the longitudinal axis of the coil. Linear segments (see base of coil 100 shown in Ahn Fig. 1a) of the coil spring accommodate interconnections by lacing wire (shown in Ahn Fig. 2a and 2b). Id. Transition segments (visible in Ahn Fig. 4d) connect coil ends with the “contact-preventing ends.” Pet. 14. Given these disclosures, we find that Ahn anticipates claim 1.” slip op. at 11

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

    “We agree with Ace that it would have been obvious to a person of ordinary skill in the art to include a linear segment in the upper end of the coil disclosed in Ahn to facilitate a connection with lacing wire at the upper end of the coil – either in addition to, or in place of the linear segments already present in the Ahn coil. Pet. 43. Coils connected by lacing wires in that location were taught by Flesher to be both stable and “a common practice.” Ex. 1007, 1:13–26. A person of ordinary skill would have been motivated to connect the coils disclosed in Ahn at their ends to improve stability and form a matrix of interconnected coils in accordance with standard practice in the art. Coils so connected are nothing more than a predictable variation of the coils disclosed in Ahn. Accordingly, this limitation would have been obvious in view of Ahn alone, and/or in combination with Flesher. The preponderance of evidence establishes that claim 1 is unpatentable under 35 U.S.C. § 103(a) over Ahn and Flesher.” slip op. at 18

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

    “Claims 14–16 Dependent claim 14 states a range of spring height of 140 mm to 190 mm. Thus, the Oakhill range falls within the claimed range. Claim 15 depends from claim 14 and further requires that the “step” is substantially coaxial with the longitudinal axis of the coil body. As with claim 11, Ace has shown that this limitation is met by Ahn.” slip op. at 19

  Patent outcomesUS 7,404,223 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,404,223
• American Megatrends, Inc. / Micro-Star International Co., Ltd et al. v. Kinglite Holdings Inc.Institution denied
  PTAB · Nov 20, 2015 · IPR2015-01188 · APJ Glenn J Perry · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 7, 10, 14, and 18 were obvious over Schieve and AAPA.

  RulingsInstitution decision

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

    “inter partes review may not be instituted unless 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.” Upon consideration of the Petition, Patent Owner’s Preliminary Response, and the evidence of record, we conclude Petitioner has not established a reasonable likelihood it would prevail with respect to at least one of the challenged claims. We, therefore, deny the Petition.” slip op. at 2

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

    “FIG. 1 is an example graphical representation of a typical memory map 100 in a computer (e.g., an IBM compatible personal computer, any Intel central processing unit (CPU) -based machine, or similar computing devices). Memory 100 is generally divided into two areas: conventional memory 110 and upper memory 120. Conventional memory 110 comprises a random access memory (RAM) 112 address space that is set aside for use by operating systems and application programs. Conventional memory 110 is, for example, located in the 0 to 9FFFFh (Where “h” indicates hexadecimal notation) address range of memory 100. Upper memory 120 is used by the computer hardWare. Upper memory 120 is, for example, located in the AOOOOh to FFFFFh address range of memory 100. The first 128 kilo bytes (“K”) of upper memory 120 addresses are generally used for video memory 122. The remaining upper memory addresses (e. g., 0000h to 100000h or the end of memory) are set aside for read only memory (ROM) 130. Ex. 1001, 2:45–63. We understand from this passage that “conventional memory” referred only to lower memory and not to upper memory. While we agree with Petitioner that video RAM and other kinds of RAM were conventional in the sense that they were known and used, we are not persuaded that the term “conventional memory” should be construed to include video RAM. The Specification clearly identifies what was meant by “conventional memory.” We therefore adopt Patent Owner’s construction. For purposes of this decision, “conventional memory” refers to the basic 640K of memory available for running DOS programs.” slip op. at 6

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

    “In accordance with our construction of “conventional memory,” we agree with Patent Owner’s argument that Schieve’s teaching to a PHOSITA is to utilize video RAM, and not conventional memory, for running a decompressed diagnostic routine. Schieve’s Figure 2 is reproduced below (with annotation). Schieve describes Figure 2 as a partial block diagram of a PC architecture. Ex. 1002, 4:39–40. Video RAM 232 is shown in Figure 2 in a subsystem separate from memory subsystem 220. As discussed above, the ’013 patent itself, in Figure 1 (Prior Art), demonstrates that “conventional memory” (RAM 112) is separate and distinct from “video memory” (video memory 122). Accordingly, this limitation of claim 10 is not met by Schieve.” slip op. at 9

  Claim construction§ 103 obviousness
  Patents in suitUS 5,836,013
• Webasto Roof Systems, Inc. v. Uusi, LLCAll claims unpatentable
  PTAB · Oct 13, 2015 · IPR2014-00649 · APJ Hyun J Jung · IPR · Final written decision

  Claims 7 and 13 are unpatentable as anticipated by Bernard; claim 1 is unpatentable as obvious over Bernard and Chikaraishi.

  RulingsFinal written decision

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

    “The record before us does not present a clear disavowal in the prosecution history that would limit the plain and ordinary meaning of the disputed term. Patent Owner cites to portions of the prosecution history of the ’037 patent that argues how the as-filed application provides support for the claimed subject matter. PO Resp. 25–28; Ex. 1004 at 384, 388, 484– 498, 585–779. These cited portions do not discuss the scope of the claim language and do not indicate that Applicants intended to limit the claim language to the cited embodiments. See Ex. 1004 at 384, 388, 484–498, 585–779. Also, we decline to import into the claims a limitation based on specific embodiments in the Specification. See, e.g., SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). Accordingly, based on the complete record before us, we construe “different parameter values” in accordance with its plain meaning. Our construction includes parameter values that are either values of a parameter measured at different times or values of two or more different kinds of parameters. Ex. 1003, 18:29–44.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Petitioner replies, and we agree, that “‘frame,’ ‘closure,’ and ‘drive motor’ are separately recited in claims 1 and 7, so it would be redundant to read them into the ‘power system.’” Reply 4. We also agree with Petitioner that “the additional requirement of ‘a modularized or preassembled’ has no basis in the intrinsic record; it is not mentioned in the ’037 patent.” Id. (citing Reply Decl. ¶ 17). Petitioner argues that “‘power system’ only appears in the claims,” that the “’037 patent ‘concerns motor driven actuator control systems” and references a standard “that ‘establishes requirements for power window control systems,’” and that the “disclosure indicates that . . . ‘power system’ refers to a ‘motor driven system,’ e.g., for use in a power window.” Id. (citing Ex. 1003, 1:24–26, 1:30–33; Reply Decl. ¶ 15), 16 (citing Reply Decl. ¶¶ 14–15). Accordingly, based on the complete record before us, we construe “power system” in accordance with its plain meaning. Our construction does not require that power system be a modularized or preassembled power unit.” slip op. at 10

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

    “As explained above in Part III.A.1, our construction of “different parameter values” includes values of a parameter measured at different times and is not limited to values of two or more different kinds of parameters. Also, as discussed in Part III.A.2, our construction of “power system” does not require that it be a modularized or preassembled power unit or further include frame, closure, and drive motor, which are recited separately in claim 7. Accordingly, based on the complete record before us, we determine that Petitioner, by a preponderance of the evidence, has shown that claim 7 is anticipated by Bernard.” slip op. at 18

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

    “As discussed above in Parts III.A.1 and III.A.2, our construction of “different parameter values” includes values of a parameter measured at different times and our construction of “power system” does not require that it be a modularized or preassembled power unit or further include frame, closure, and drive motor, which are recited separately in claim 1. Accordingly, based on the complete record before us, we determine that Petitioner, by a preponderance of the evidence, has shown that claim 1 is unpatentable over Bernard and Chikaraishi.” slip op. at 22

  Patent outcomesUS 7,548,037 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,548,037
• Webasto Roof Systems, Inc. v. Uusi, LLCAll claims unpatentable
  PTAB · Oct 13, 2015 · IPR2014-00648 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1, 2, and 5–8 were held unpatentable: claims 6–8 as anticipated by Bernard, and claims 1, 2, and 5–8 as obvious over Lamm, Itoh, and Bernard.

  RulingsFinal written decision

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

    “Reading claim 1 as a whole, we do not adopt a construction requiring separate and distinct algorithms. Claim 1, written in outline format, includes a limitation “d” that requires a controller to sense a collision. Limitation “d” ends with the word “by” followed by a colon. What follows is a list of limitations that are enumerated “i,” “ii,” “iii” and “iv,” which are further indented than limitations “a,” “b,” “c,” and “d.” Limitation “d” tells us that the limitations following the colon explain how the sensing is accomplished. The “sensing a collision” (step “d”) is accomplished by i) monitoring movement of the window, ii) adjusting a threshold, and iii) identifying a collision by comparing a signal value to the threshold. The final claim limitation (“iv”) tells us that a control signal deactivates the motor in response to “a sensing of a collision.” Even though “a sensing of a collision” is introduced by the indefinite article “a” (rather than “the”), we do not view this as requiring a separate and distinct “algorithm.” Rather, we read limitations “i” through “iv” as explaining how limitation “d” is carried out. As for UUSI’s “concurrent” argument, the claim does not explicitly or implicitly set forth performing the “identifying” and “sensing” limitations concurrently. Nor does the claim say anything about how the various described activities are to be implemented in code.” slip op. at 7

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

    “We decline to adopt UUSI’s dictionary definition because the Specification of the ’612 patent disparages immediately reversing (without first deactivating) the motor in response to detecting an obstacle (Ex. 1001, 3:42–55), which may result in “motor plugging,” described as “unnecessary” and “undesirable” as causing “undesired motor heating,” is “detrimental to the life and reliability” and because it “can also cause undesirable transients, trip breakers, and blow fuses in a power supply system.” Pet. 8. According to Webasto, at least one of UUSI’s earlier patents includes claim language that is broader with respect to motor control. Id. (citing Ex. 1019, Claims). Thus, as Webasto argues, the choice of the word “deactivate” in the challenged claims was a conscious decision that should be given effect. Id. We construe the claim term “deactivate” to embrace any of turning off, removing power from, and stopping the motor. Our construction excludes immediate reversing of the motor without first turning off, removing power from, or stopping the motor.” slip op. at 8

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

    “As stated supra in Part III.A.3, claim 6 does not require an “abrupt” stoppage. Thus, UUSI’s argument does not apply. Furthermore, UUSI appears to conflate abrupt stoppage of the window panel with how rapidly stoppage is detected. Arguments that Bernard requires an additional 0.1 second or 0.4 second miss the point. Bernard reacts (albeit with a small delay) to stoppage of the window as claim 6 requires. C. Challenges relying on Lamm (Ex. 1008), Itoh (Ex. 1006), and Bernard” slip op. at 11

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We do not find UUSI’s argument persuasive. Obviousness does not require direct substitution. Both Lamm and Itoh are reasonably pertinent to the particular problem with which the inventor is involved — preventing pinching. They both would have commended themselves to an inventor’s attention in considering the problem addressed by claims 1, 2 and 5–8 of the ’612 patent. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).” slip op. at 17

  Patent outcomesUS 8,217,612 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,217,612
• Webasto Roof Systems, Inc. v. Uusi, LLCAll claims unpatentable
  PTAB · Oct 13, 2015 · IPR2014-00650 · APJ Jason J Chung · IPR · Final written decision

  Claims 1, 6–9, 11, 15, and 16 are unpatentable under § 103(a) over the five stated combinations of prior art.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “experience with the state of the art in 1992 at the time of filing and is not an expert in automotive vehicle window or sunroof movement mechanisms or their control systems. PO Resp. 4–8. We are persuaded, however, that Dr. Toliyat is an expert in the field of electrical and computer engineering since before 1992. Ex. 1004. Dr. Toliyat’s specific expertise is in industrial drives, electrical machines, power electronics, power systems and control, which are all in the field of automotive engineering. Ex. 1003 ¶ 7. Accordingly, we conclude that Dr. Toliyat is an expert familiar with the State of the Art of automotive engineering in 1992.” slip op. at 34

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundPlain and ordinary meaningDecided for petitioner

    “parameter of a motor . . . that varies in response to a resistance to motion” (claim 1) to “a sensor that measures a magnitude of motor current.” PO Resp. 12. We disagree. Patent Owner notes a supposedly claim-limiting prosecution history in which Applicant argued that the sensor includes an “operational amplifier that amplifies a voltage across a current-measuring resistor.” PO Resp. 9– 10. However, we do not find any clear disavowal in the prosecution history that would limit the plain and ordinary meaning of the disputed term. Patent Owner also finds support for its proposed narrow construction in the Specification, which states “motor current is the primary measured parameter of immediate importance for both hard and soft obstacle detection” (emphasis added) and “motor current” denotes magnitude. Id. at 11 (citing Ex. 1001, 15:66–16:3, 18:35–37). The Specification of the ’802 patent states: “obstacle detection via motor current sensing or current sensing and speed sensing means becomes the remaining reliable backup method of detecting an obstacle” (emphasis added). Ex. 1001, 4:12–14. We are not persuaded to import this narrowing limitation from the Specification based on the examples argued.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Although the doctrine of claim differentiation suggests claims 7 and 15 do not require “all or part of a range of motion” because claim 1 recites “all or part of a range of motion” and claims 7 and 15 merely recite “a travel path,” this suggestion is not a hard and fast rule and will be overcome by a contrary construction dictated by the written description or prosecution history. See Seachange Int’l, 413 F.3d at 1369. The Specification and prosecution history of the ’802 patent do not provide a special definition nor provide a clear disavowal of the plain meaning of the “travel path” limitation, and Patent Owner does not argue otherwise. Rather, the Specification of the ’802 patent indicates during and immediately after the startup phase, obstacle detection will not occur. The Specification of the ’802 patent refers to variable I as motor current and to variable PP as pulse period in discussing obstacle detection along a travel path. Ex. 1001, 15:57–67. In particular, the Specification of the ’802 patent states “after allowing some small initial amount of time for the motor rotor to begin rotation, I is immediately measured and compared against a fixed maximum threshold value and PP is immediately measured and compared against some maximum threshold number of clock cycles” (emphasis added). Id. at 16:31–36. Thus, in this embodiment, obstacle detection is not performed along the entire travel path. Because the Specification of the ’802 patent indicates obstacle detection is not performed along the entire travel path and the prosecution history does not include a special definition nor a clear disavowal of the plain meaning (Ex 1001, 16:31–36), we conclude from the totality of the evidence that the “travel path” recited in claims 7 and 15 is not limited to the “entire travel path.” Rather, it can refer to a portion of the entire travel path.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “At the same time, 35 U.S.C. § 112, sixth paragraph, does not apply if persons of ordinary skill in the art reading the specification understand the term to be the name for the structure that performs the function, even when the term covers a broad class of structures or identifies the structures by their function. Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1372–73 (Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002); Watts v. XL Sys. Inc., 232 F.3d 877, 880–81 (Fed. Cir. 2000); Personalized Media, 161 F.3d at 704; Greenberg v. Ethicon Endo- Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many devices take their names from the functions they perform.”). The term is not required to denote a specific structure or a precise physical structure to avoid the application of pre-AIA 35 U.S.C. § 112, sixth paragraph. See Watts, 232 F.3d at 880. In this case, the Specification of the ’802 patent states “[t]he circuitry of FIGS. 2A–2D includes a number of operational amplifiers which require higher voltage than the five volt VCC logic circuitry power signal” (emphasis added). Ex. 1001, 6:30–32. As a result, one of ordinary skill in the art reading the Specification of the ’802 patent would understand the term “logic” to be the name of a type of circuitry (e.g., structure) that performs the function. Moreover, “circuit” has been found to be a structural term that does not invoke pre-AIA 35 U.S.C. § 112, sixth paragraph. Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1321, (Fed. Cir. 2004); Apex, 325 F.3d at 1373; Greenberg, 91 F.3d at 1583–84; Personalized Media, 161 F.3d at 704–05; CCS Fitness, 288 F.3d at 1369–70; Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996); Watts, 232 F.3d at 881; Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1318–19 (Fed. Cir. 1999). Because one of ordinary skill in the art reading the Specification of the ’802 patent would understand the term “logic” to be the name of a type of circuitry and “circuit” has been found not to invoke pre-AIA 35 U.S.C. § 112, sixth paragraph, we conclude from the totality of the evidence that claim 15 does not invoke pre-AIA 35 U.S.C. § 112, paragraph six.” slip op. at 11

  Patent outcomesUS 7,579,802 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,579,802
• Wavemarket Inc. D/B/A Location Labs v. Locationet Systems Ltd.Rehearing denied
  PTAB · Jul 29, 2015 · IPR2014-00199 · APJ Kristen L Droesch · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended evidence supporting a different construction or exclusion of Dr. Rosenberg’s testimony.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “similar arguments in Patent Owner’s Motion to Exclude Evidence, and Patent Owner’s Reply to Petitioner’s Opposition. Final Dec. 18–19; see PO Mot. Exclude 2–5; PO Reply Opp. 1–3. A request for rehearing is not an opportunity to reiterate arguments that were addressed in our Final Written Decision, and merely express disagreement. As explained in the Final Written Decision, Patent Owner does not direct us to binding authority sufficient to support its argument that in order for expert testimony to be admissible, the expert must be a person of ordinary skill in the art. Final Dec. 19. Specifically, Sundance is binding authority; however, Sundance does not support fully Patent Owner’s arguments. The court in Sundance held, in the context of the admissibility of a testimony by a technically unqualified patent attorney, “it was an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art.” Sundance, 550 F.3d at 1363.” slip op. at 7

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

    “that it is improper to import limitations from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). The ’970 Patent does not disclose, explicitly or implicitly, that the map database performs the functions of deriving street names, and correlating between maps and location and/or positioning information. In contrast to Patent Owner’s arguments, the ’970 Patent discloses “[i]t may be linked to an SMS (simple messaging service) server (140) and supply locations as coordinates, street names derived from map databases or other location data available to mobile telephones (141), pagers (142), etc.” Ex. 1001, col. 5, ll. 45–53. The pronoun “it” refers to the subject of the preceding sentence––location determination system 1. Id. at col. 5, ll. 43– 45. The ’970 Patent also discloses the following: (1) “map server (4) is capable of correlating between maps stored in the database (5) and positioning information,” (id. at col. 4, ll. 17–20 (emphasis added)); and (2) “the at least one mobile platform location system being adapted to receive said mobile platform location information and access said map database for correlating map to said location information, so as to obtain correlated location information,” (id. at col. 8, l. 66–col. 9, l. 3 (emphasis added)). In other words, the map server (4) and at least one mobile platform location system are the subjects of the aforementioned sentences that perform the correlating between maps and positioning and/or location information. Lastly, the ’970 Patent discloses “[s]tep (e) may further comprise the step of correlating the location of each remote platform with a map database and transmitting a map having marked said remote platform location(s) to said subscriber.” Id. at col. 3, ll. 21–24. This sentence is written in passive voice; it does not include a subject.” slip op. at 4

  • ExcludeMotion to exclude, deniedDenied

    “We considered and found unpersuasive Patent Owner’s substantially similar arguments in Patent Owner’s Motion to Exclude Evidence, and Patent Owner’s Reply to Petitioner’s Opposition. Final Dec. 18–19; see PO Mot. Exclude 2–5; PO Reply Opp. 1–3. A request for rehearing is not an opportunity to reiterate arguments that were addressed in our Final Written Decision, and merely express disagreement. As explained in the Final Written Decision, Patent Owner does not direct us to binding authority sufficient to support its argument that in order for expert testimony to be admissible, the expert must be a person of ordinary skill in the art. Final Dec. 19. Specifically, Sundance is binding authority; however, Sundance does not support fully Patent Owner’s arguments. The court in Sundance held, in the context of the admissibility of a testimony by a technically unqualified patent attorney, “it was an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art.” Sundance, 550 F.3d at 1363.” slip op. at 7

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1364 (Fed. Cir. 2008), and Morpho Detection, Inc. v. Smiths Detection, Inc., No. 211cv498, 2012 WL 6004085 at *1–2 (E.D. Va. Nov. 30, 2012) cited by Patent Owner to support its argument that Dr. Rosenberg’s testimony should be excluded as not admissible. Req. Reh’g 8–9 (citing PO Mot. to Exclude 2–5; PO Reply Opp. 1–2; Tr. 29, l. 3–30, l. 14). In the Final Written Decision, we determined Dr. Rosenberg was qualified as an expert based at least on Dr. Rosenberg’s experience, in particular, over four years of experience as founder and CEO of WhereWuz, a technology company focusing on location tracking applications for GPS enabled smartphones. Final Dec. 20. Patent Owner asserts, under the Federal Rules of Evidence and Federal Circuit case law, a declarant who is not qualified as a person of ordinary skill in the art cannot testify as to issues of invalidity, the substance and disclosure of the prior art, or how a person of ordinary skill in the art would understand the prior art. Req. Reh’g 8; see id. at 9–11. We considered and found unpersuasive Patent Owner’s substantially similar arguments in Patent Owner’s Motion to Exclude Evidence, and Patent Owner’s Reply to Petitioner’s Opposition. Final Dec. 18–19; see PO Mot. Exclude 2–5; PO Reply Opp. 1–3. A request for rehearing is not an opportunity to reiterate arguments that were addressed in our Final Written Decision, and merely express disagreement. As explained in the Final Written Decision, Patent Owner does not direct us to binding authority sufficient to support its argument that in order for expert testimony to be admissible, the expert must be a person of ordinary skill in the art. Final Dec. 19. Specifically, Sundance is binding authority; however, Sundance does not support fully Patent Owner’s arguments. The court in Sundance held, in the context of the admissibility of a testimony by a technically unqualified patent attorney, “it was an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art.” Sundance, 550 F.3d at 1363.” slip op. at 6

  Claim construction
  Patents in suitUS 6,771,970
• Brose North America, Inc. / Brose Fahrzeugteile GmbH & Co. KG, Hallstadt v. Uusi, LLCAll claims unpatentable
  PTAB · Jul 27, 2015 · IPR2014-00416 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1, 2, and 5–8 are unpatentable: claims 1 and 2 are anticipated and obvious, claim 5 is obvious, and claims 6–8 are anticipated or obvious.

  RulingsFinal written decision

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

    “We do not subscribe to UUSI’s view. Looking at claim 1 as a whole, we do not adopt a construction requiring separate and distinct algorithms. Claim 1, written in outline format, includes a limitation “d” that requires a controller to sense a collision. Limitation “d” ends with the word “by” followed by a colon. What follows is a list of limitations that are enumerated “i,” “ii,” and “iii” and which are written so as to be further indented than limitations “a,” “b,” “c,” and “d.” A reading of the claim as a whole suggests that limitation “d” is telling us that the limitations following the colon explain how the sensing is accomplished. The “sensing a collision” (step “d”) is accomplished by i) monitoring movement of the window, ii) adjusting a threshold, and iii) identifying a collision by comparing a signal value to the threshold. The final claim limitation (“iv”) tells us that a control signal deactivates the motor in response to “a sensing of a collision.” Even though “a sensing of a collision” is introduced by the pronoun “a” (rather than “the”), we do not view this limitation as requiring a separate and distinct “algorithm.” Rather, we read limitations “i” through “iv” as explaining how limitation “d” is carried out. The claim does not specify explicitly a temporal relation among its various recited activities. However, a temporal sequence is implied by the cause and effect relationships expressed by the individual actions described in the claim. The claim says nothing about how the various described activities are to be implemented in code.” slip op. at 8

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

    “We decline to read the limitation “abrupt” into the claim. The meaning of “has stopped moving” in the context of claim 6 simply describes the present state of window movement, namely that it is no longer moving. “Has stopped moving” tells us that the window at some time in the past was moving and now it is not moving. The term does not speak to how rapidly or slowly (rate of deceleration) the window’s velocity slowed to its stopped condition. Claim 6 also recites a “controller programmed with multiple position limits that define an acceptable travel range.” UUSI would have us construe this limitation as requiring that position limits must be stored that define both a fully-opened position and a fully-closed position. Resp. 35. Its reasoning is that such interpretation would be consistent with the Detailed Description of the ’612 patent. Ex. 2001, 75. In support, UUSI points to column 12, lines 5–11 of the ’612 patent. We have reviewed this portion of the specification. It describes calibration and is taken by UUSI out of context. If the claim drafter had meant to describe “fully open” and “fully closed,” there were a number of different ways a claim drafter could have conveyed the desired meaning. For example, claim 6 could have simply stated “entire travel path” instead of “acceptable travel range” or it could have made reference to fully open and fully closed positions.” slip op. at 20

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

    “We are persuaded that Itoh’s disclosure at 3:28–60 indicates Itoh’s Embodiment 3 may operate to either reverse motor 20 or stop motor 20 under differing circumstances. Motor action is triggered based on comparison of Tp/Tm with α and satisfies the claim limitation requiring a control signal to “deactivate said motor in response to a sensing of a collision.” Itoh identifies a collision based on a comparison that is mathematically identical to comparing the most recent speed measurement (Tp) to a threshold that is adjusted in real time based on the average of the immediately prior speed values. Claim 1 requires that the collision be identified by “comparing a value based on a most recent signal form the sensor with the obstacle detection threshold” and “adjusting the obstacle detection threshold in real time based on immediate past measurements of the signal sensed by the sensor.” Thus, we are satisfied that Itoh discloses what is required by claim 1. Pet. 14–15, 31 (citing Ex. 1001 ¶¶ 113–122; Ex. 1007, 3:44–68, 10:33–11:15). UUSI argues that Itoh discloses using only a single algorithm. Based on its proposed construction of claim 1 requiring two separate and distinct algorithms, UUSI argues Itoh would not alone or in combination render claim 1 unpatentable. Resp. 14. UUSI’s expert, Dr. Mark Ehsani, states that Itoh’s use of two different parameters (α and β) are mutually exclusive, and are simply used as a parameter of interest for a single algorithm. Resp. 14 (citing Ex. 2001, 39). However, based on our construction of claim 1, we do not find UUSI’s argument regarding two algorithms to be persuasive. Claim 1 requires (1) an obstacle detection threshold to be established and adjusted in real time based on measurements by a sensor that senses speed of movement of the window or panel; and (2) that a current measurement of window speed satisfies a predetermined relationship to that obstacle detection threshold. As described supra in section III.A.2, we see no requirement of two separate and distinct algorithms. A reference describing both of these claimed activities, such as Itoh, meets these limitations of claim 1. Itoh identifies a collision based on a threshold, which is Tp/Tm > α. Itoh adjusts the threshold by effectively taking a moving average of n immediately prior speed values to be used for each comparison of a current window speed. This moving average constitutes the claimed “adjusting.”” slip op. at 14

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “However, UUSI does not point to any discussion in the ’612 patent specification that supports the 40 ms time window as being significant. Support for the 40 ms time window is set forth in the original 1992 specification (see footnote 4), which is incorporated by reference. Tr. 12. Given no explanation in the ’612 specification and its priority chain as to the significance of the 40 ms time window, we conclude that it is a matter of design choice and would have been obvious to one of ordinary skill in the art. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”) Therefore, based on the evidence and the record before us, we conclude that Brose has established by a preponderance of the evidence that claim 5 is obvious based on Itoh alone, in combination with either Kinzl or Zuckerman, and in combination with both Kinzl and Zuckerman.” slip op. at 18

  Patent outcomesUS 8,217,612 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,217,612
• Brose North America, Inc. / Brose Fahrzeugteile GmbH & Co. KG, Hallstadt v. Uusi, LLCAll claims unpatentable
  PTAB · Jul 20, 2015 · IPR2014-00417 · APJ Jason J Chung · IPR · Final written decision

  Claims 1, 6–9, and 14 are unpatentable under the instituted Itoh and Kinzl anticipation and obviousness grounds.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner

    “Patent Owner argues a limiting prosecution history in which Patent Owner argued that the sensor includes an “operational amplifier that amplifies a voltage across a current-measuring resistor.” PO Resp. 13–14. We do not find any clear disavowal in the prosecution history that would limit the plain and ordinary meaning of the disputed term. Patent Owner argues support for its narrow construction in the Specification, which states “motor current is the primary measured parameter of immediate importance for both hard and soft obstacle detection” (emphasis added) and “motor current” denotes magnitude. Id. at 14 (citing Ex. 1005, 15:66–16:3, 18:35–37). The Specification of the ’802 patent states: “obstacle detection via motor current sensing or current sensing and speed sensing means becomes the remaining reliable backup method of detecting an obstacle” (emphasis added). Ex. 1005, 4:12–14. We are not persuaded to import this narrowing limitation from the specification based on the examples argued.” slip op. at 6

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

    “We agree with Patent Owner that claim 13’s recitation of a “current sensor” is consistent with the claim 7 recitation of a “movement sensor.” We disagree, however, with Patent Owner that claim 13 should be treated as having both a “movement sensor” and a “current sensor” because claim 13 recites “the sensor” (emphasis added), which looks to claim 7’s “movement sensor” for antecedent basis. It would make no sense for claim 13 to specify that “the sensor” (emphasis added) of claim 7 is a “current sensor” unless the sensor of claim 7 is sufficiently broad to include a current sensor and other sensors. Moreover, the Specification of the ’802 patent suggests that “movement sensor” is sufficiently broad to include a current sensor, among a broader range of sensors. For example, the Specification of the ’802 patent recites “obstacle detection via motor current sensing or current sensing and speed sensing means becomes the remaining reliable backup method of detecting an obstacle” (emphasis added). Ex. 1005, 4:12–14. Patent Owner’s claim differentiation argument is not persuasive for similar reasons. Claim 13 is narrower in scope than claim 7. It further limits the sensor set forth in claim 7 to be a current sensor, thus differentiating it from claim 7. We do not read the prosecution history as limiting the “movement sensor” so as to exclude a “current sensor.” Id. Accordingly, we construe “a movement sensor for monitoring movement of the object” as “any sensor that directly or indirectly monitors movement of the object.” Our construction embraces a speed sensor and a current sensor that indirectly monitors movement.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “The Federal Circuit held that “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for,” are non-structural generic placeholders that may invoke pre-AIA 35 U.S.C. § 112, sixth paragraph. Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008); Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006); Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696, 704 (Fed. Cir. 1998); Mas- Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1214–15 (Fed. Cir. 1998). Although this list is not exhaustive, and other generic placeholders may invoke pre-AIA 35 U.S.C. § 112, sixth paragraph, “decision making logic for” is not on the list of generic placeholders. As such, a rebuttable presumption applies that the term is not within the purview of 35 U.S.C. § 112, sixth paragraph. See Phillips, 415 F.3d at 1310. Furthermore, pre-AIA 35 U.S.C. § 112, sixth paragraph does not apply if persons of ordinary skill in the art reading the specification understand the term to be the name for the structure that performs the function, even when the term covers a broad class of structures or identifies the structures by their function. Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1372–73 (Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002); Watts v. XL Sys. Inc., 232 F.3d 877, 880–81 (Fed. Cir. 2000); Personalized Media, 161 F.3d at 704; Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many devices take their names from the functions they perform.”). The term is not required to denote a specific structure or a precise physical structure to avoid the application of pre-AIA 35 U.S.C. § 112, sixth paragraph. See Watts, 232 F.3d at 880. In this case, the Specification of the ’802 patent states “[t]he circuitry of FIGS. 2A–2D includes a number of operational amplifiers which require higher voltage than the five volt VCC logic circuitry power signal” (emphasis added). Ex. 1005, 6:30–32. As a result, one of ordinary skill in the art reading the Specification of the ’802 would understand the term “logic” to be the name of a type of circuitry (e.g., structure) that performs the function.” slip op. at 12

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

    “We are not persuaded by Patent Owner’s argument that Itoh fails to disclose, teach, or suggest “a sensor for measuring a parameter of a motor that varies in response to a resistance to motion.” At the outset, we construed the claim 1 limitation “sensor for measuring a parameter of a motor . . . that varies in response to a resistance to motion” as “any sensor that measures any motor parameter that varies as a result of resistance to motion” rather than as “a sensor that measures a magnitude of motor current.” See supra Part III.A. The cited portions of Itoh relied upon by Petitioner disclose circuit 30 detects a ripple current corresponding to the rotational frequency of motor 20, and outputs a motor pulse signal to CPU 34 and counter 36 of controller 32, which discloses “a sensor for measuring a parameter of a motor” as recited in claim 1. Pet. 15, 30; Ex. 1007, 8:33–40. Moreover, the cited portions of Itoh relied upon by Petitioner disclose CPU 34 detects if an obstacle is stuck between the window frame and window and determines whether to descend or interrupt the motion of the window, which discloses “varies in response to a resistance to motion” as recited in claim 1. Pet. 15, 30; Ex. 1007, 8:49–9:62; Figs. 6–7. Based on our claim construction discussed supra in part III.A, Itoh’s disclosure discussed supra, and the record before us, we conclude that Petitioner has established by a preponderance of evidence that claim 1 is anticipated by Itoh.” slip op. at 15

  Patent outcomesUS 7,579,802 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,579,802
• Apple Inc. v. Contentguard Holdings, LLCInstitution denied
  PTAB · Jul 10, 2015 · IPR2015-00448 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–18 would have been obvious over Rosen and Hartrick.

  RulingsInstitution decision

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

    “1. Insufficient Information for Graham Analysis A patent claim is unpatentable as obvious under 35 U.S.C. § 103(a) if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Resolving the legal conclusion of obviousness requires resolving the following underlying factual determinations: (1) “the 16 scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). In other words, these underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). As Patent Owner contends, the Petition fails to identify sufficiently the differences between any claim of the ’956 patent and the asserted prior art references, Rosen and Hartrick. See Prelim. Resp. 6–7, 42; Pet. 22–60. Rather than addressing these differences, the Petition creates a hypothetical Rosen-Hartrick system—based on how a person of ordinary skill in the art allegedly “would” or “could” combine the two references to create an integrated system—in an analysis largely divorced from specific claim limitations. See Pet. 38–44. The Petition then argues, in conclusory fashion, that this hypothetical system “would” meet each of the limitations of the claims. See id. at 50–60. This analysis—which compares the challenged claims to a hypothetical integrated system that allegedly implements aspects of Rosen and Hartrick and the knowledge of one of ordinary skill in the art––obscures a meaningful comparison of the claim limitations to the individual prior art references. As Patent Owner contends, the analysis fails to explain with requisite particularity which claim limitations are absent from Rosen or Hartrick. See Prelim. Resp. 6–7, 42. Therefore, the Petition 17 fails to provide sufficient information regarding its proffered ground of unpatentability. Accordingly, for the reasons discussed above, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that the challenged claims would have been obvious over Rosen and Hartrick. See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB May 28, 2015) (Paper 11) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . . . risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.”).” slip op. at 16

  • BurdenInstitution denied

    “procedural defects. A petition for inter partes review must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review “must identify . . . [h]ow the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Rule 42.104(b)(5) adds that the Petition 11 must “identify[] specific portions of the evidence that support the challenge.” Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). We agree with the Patent Owner that the Petition fails to satisfy at least these rule requirements. See Prelim. Resp. 4–10. The Petition comprises vague, nested string citations to broad swaths of the references, the Sherman Declaration, and internal cross-references to whole sections of the Petition. See, e.g., Pet. 50–51 (discussing the preamble of claim 1, and citing inter alia, Pet. §§ IV.A.1–3, A.5, B3; Ex. 1013 ¶¶ E20, E53–E65, E117, E118, E142, E194). Without counting internal cross-citations within the cited sections of the Petition and Sherman Declaration, this citation to the Petition spans 11 pages of the Petition and 18 paragraphs of the Sherman Declaration.” slip op. at 11

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

    “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Resolving the legal conclusion of obviousness requires resolving the following underlying factual determinations: (1) “the 16 scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). In other words, these underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). As Patent Owner contends, the Petition fails to identify sufficiently the differences between any claim of the ’956 patent and the asserted prior art references, Rosen and Hartrick. See Prelim. Resp. 6–7, 42; Pet. 22–60. Rather than addressing these differences, the Petition creates a hypothetical Rosen-Hartrick system—based on how a person of ordinary skill in the art allegedly “would” or “could” combine the two references to create an integrated system—in an analysis largely divorced from specific claim limitations. See Pet. 38–44. The Petition then argues, in conclusory fashion, that this hypothetical system “would” meet each of the limitations of the claims. See id. at 50–60. This analysis—which compares the challenged claims to a hypothetical integrated system that allegedly implements aspects of Rosen and Hartrick and the knowledge of one of ordinary skill in the art––obscures a meaningful comparison of the claim limitations to the individual prior art references. As Patent Owner contends, the analysis fails to explain with requisite particularity which claim limitations are absent from Rosen or Hartrick. See Prelim. Resp. 6–7, 42. Therefore, the Petition 17 fails to provide sufficient information regarding its proffered ground of unpatentability. Accordingly, for the reasons discussed above, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that the challenged claims would have been obvious over Rosen and Hartrick. See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB May 28, 2015) (Paper 11) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . . . risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.”). slip op. at 16

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

    “on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The reason for this is that [w]hile the Supreme Court made clear that a mechanical application of the teaching-suggestion-motivation test, 18 requiring an explicit teaching in the prior art, is inappropriate, “[w]e 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.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008)); see also KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against slipping into use of hindsight’” (citation omitted)). Thus, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. Am.–Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). As discussed above, Petitioner reads the claims onto a hypothetical Rosen-Hartrick implementation. See Pet. 38–60. Petitioner appears to suggest making four changes to Rosen’s system to achieve this hypothetical implementation. See id. at 38–44 (generally discussing “First,” “Second,” “Third,” and “Finally” modifications). The Petition characterizes the third modification as being “an inconsequential variation” of the disclosed 19 process. Id. at 43. Specifically, the Petition states that “a person of skill would have adjusted Rosen’s cryptographic protocols to accommodate any particular implementation that was desired.” However, the Petition does not set forth a sufficient reason why a person of skill would have “desired” (or implemented) the modification proposed—i.e., configuring Rosen’s “purchase protocol such that the MTA initiated the Establish Session protocol by sending the CTA its digital certificate.” Id. (citing Ex. 1013 ¶¶ E122, E123 (largely restating, word for word, the statements of the brief)). Moreover, although Petitioner frames the hypothetical Rosen-Hartrick scheme as created by four primary modifications, these primary modifications include additional modifications unsupported by sufficient rationale. For example, in the first modification Petitioner proposes, i.e., storing security and royalty markup statements of Hartrick in the “Usage” field of Rosen (Pet. 39), Petitioner asserts that a person of ordinary skill also “would have considered it an obvious implementation choice to have the security tags [of Hartrick] . . . grant affirmative rights—e.g., a ‘Display’ tag (instead of ‘Do Not Copy’), or a ‘Print’ tag and ‘Display’ tag (instead of ‘Do Not Distribute’)” (Pet. 40). Further, according to the Petition, a person of ordinary skill would have recognized that Hartrick could be applied beyond the context of softcopy books, and “[the person would simply] modify the tags accordingly to reflect the actions associated with other types of content.” Id. at 41. Beyond explaining that each of these many changes to Hartrick (made in the process of modifying Rosen) would be a routine 20 change, Petitioner does not provide an adequate rationale as to why a person of ordinary skill would actually make the myriad group of changes.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,370,956
• Apple Inc. v. Contentguard Holdings, Inc.Institution denied
  PTAB · Jul 10, 2015 · IPR2015-00447 · APJ Karl D Easthom · IPR · Institution

  Institution was denied for claims 1–18 because the Petition did not show a reasonable likelihood of prevailing on either obviousness ground.

  RulingsInstitution decision

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

    “of claims 1–18 of U.S. Patent No. 8,370,956 B2 (“the ’956 patent,” Ex. 1005). Paper 1 (“Pet.”). Patent Owner, ContentGuard Holdings Inc., responded with a Preliminary Response. Paper 8 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Id. at § 314(a). For the reasons set forth below, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 1–18 of the ’956 patent. Accordingly, we deny institution of inter partes review.” slip op. at 2

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

    “According to the ’956 patent, “[i]dentification certificates are the means by which a repository is identified as ‘trustworthy.’” Ex. 1005, 7:44– 46. As discussed above, the Specification states that the “identification certificate . . . attests to the fact that the repository . . . is a bona fide repository.” Id. at 26:57–60. Therefore, on this record, we construe “determined to be trusted” to mean “using an identification or digital certificate to attest to the fact that a recipient is a trusted device.”” slip op. at 9

  • BurdenDenied

    “be considered only if . . . the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” (Emphases added). Additional Board rules further address the showing required in a petition. In particular, 37 C.F.R. § 42.104(b)(4) provides that “[t]he petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon” (emphasis added), and 37 C.F.R. § 42.104(b)(5) adds that the Petition must “identify[] specific portions of the evidence that support the challenge” (emphasis added). Similarly, 37 C.F.R. § 42.22(a)(2) states that a petition “must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.” (Emphases added). For the reasons discussed below and as Patent Owner contends, the Petition fails to comply with at least these rule requirements in addressing the asserted grounds. See Prelim. Resp. 4–10.” slip op. at 9

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

    “§ 103(a) if “the differences between” the claimed subject matter and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The legal conclusion of obviousness is resolved on the basis of the following underlying factual determinations: (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). These underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). As Patent Owner contends, the Petition fails to identify sufficiently the differences between any claim of the ’956 patent and the asserted prior art references, Kahn and Linn. See Pet. 22–57; Prelim. Resp. 6–7, 42–43. Rather than address these differences, the Petition creates a hypothetical Kahn-Linn system—based on how a person of ordinary skill in the art allegedly “would” or “could” combine the two references into an integrated system. See, e.g., Pet. 39 (“could have configured the Kahn repository servers”), id. at 40 (“could have readily integrated”), id. at 41 (“could have readily integrated”); see generally id. at 35–41 (§ IV.C., use of “could” and “would”). The Petition then argues, in conclusory fashion, that this hypothetical system “would” meet each of the limitations of the claims. See id. at 52 (“In a combined Kahn/Linn system, end-users would use rendering software to render content. Ex. 1013 at ¶ D101–04.”); see generally id. at 49–57 (§ IV.E., similar conclusory statements). This analysis—which compares the challenged claims, without clear references to particular claim terms, to a hypothetical integrated system that allegedly implements elements of both Kahn and Linn as well as the knowledge of one of ordinary skill in the art—obscures a meaningful comparison of the individual prior art references to the claim limitations. The analysis does not explain with requisite particularity which claim limitations are absent from Kahn or Linn. See Prelim. Resp. 6, 42. Therefore, the Petition fails to perform an adequate Graham analysis. Accordingly, for these additional reasons, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that claims 1–18 of the ’956 patent would have been obvious over Kahn and Linn. See Apple Inc. v. SmartFlash LLC, Case CBM2015- 00029, slip op. at 16–18 (PTAB May 28, 2015) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . . . risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.”).” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,370,956

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.