• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Rehearing denied
  PTAB · Dec 30, 2019 · IPR2019-00152 · APJ Neil T Powell · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request and maintained institution of review of claims 1–20, finding no overlooked or misapprehended matter.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The applicable standard for a request for rehearing of the Institution Decision is set forth in 37 C.F.R. § 42.71(c), which provides that, [w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” A request for rehearing “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, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denialDecided for petitioner

    “Having considered the parties’ arguments, we are not persuaded that we overlooked or misapprehended Deeper, Chevron, or the principle on which those cases rest. Instead, we maintain that unlike the facts in Deeper and Chevron, the facts of the present case do not compel denying inter partes review due to considerations of efficiency. As an initial matter, in Deeper and Chevron, a reasonable likelihood of success had been shown for the challenges of only a very small proportion of the challenged claims. In Deeper, there was a reasonable likelihood of success for only two among 23 challenged claims. Deeper at 42–43. In Chevron, there was a reasonable likelihood of success for only two dependent claims among 20 challenged claims. Chevron at 11. Although we do not have a specific threshold in mind, here, there is a significantly larger portion of claim challenges for which a reasonable likelihood exists than in either Deeper or Chevron. More importantly, in our view, Patent Owner’s efficiency arguments overlook that this proceeding involves one of multiple, similar patents that Patent Owner has asserted against Petitioner, and which Petitioner has challenged in petitions for inter partes review in IPR2019-00150, IPR2019-00151, and IPR2019- 00152. In these proceedings, the asserted prior art and the issues overlap. In each proceeding, Petitioner asserts the prior art references Picard, Ishihara, Tiziani, Gmitro, and Kino. Pet. 7; IPR2019-00150, Paper 3, 7–8; IPR2019-00151, 7. In IPR2019-00150, IPR2019-00151, and IPR2019-00152 collectively, Petitioner demonstrated a reasonable likelihood of prevailing with respect to 17 of 45 challenged claims. See Dec. on Inst. 3, 28–29 (noting a reasonable likelihood of prevailing on challenge of eight claims); IPR2019-00150, Paper 11, 3, 27 (noting reasonable likelihood of prevailing on challenge of five claims); IPR2019-00151, Paper 10, 3, 28 (noting a reasonable likelihood of prevailing on challenge of four claims). Given that Petitioner has demonstrated a reasonable likelihood of prevailing on a significant portion of similar assertions of unpatentability of the claims of multiple, similar patents asserted by Patent Owner against Petitioner, we do not agree with Patent Owner’s assertion that the efficiency considerations noted in Deeper and Chevron weigh heavily in favor of denying inter partes review of the present case.” slip op. at 5

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

    “considered the arguments and precedent presented by Patent Owner, we disagree with Patent Owner’s suggestion that Petitioner’s proposed means-plus-function constructions must be substantively addressed in the Institution Decision. Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). As the Institution Decision explained, the Preliminary Response did not identify any specific reason that the differences between the parties’ proposed claim constructions would affect the ultimate analysis of the patentability of the challenged claims over the cited prior art. Dec. on Inst. 10. In particular, the Preliminary Response did not present any specific reason that the alleged teachings of the cited prior art would not meet Patent Owner’s proposed claim constructions, if we adopted Patent Owner’s proposed claim constructions over Petitioner’s. Thus, the Preliminary Response’s general disagreement regarding the correct construction of the claims did not create any controversy regarding the patentability of the challenged claims over the cited references, making it unnecessary for the Institution Decision to reach a conclusion on claim construction. Thus, the Rehearing Request does not persuade us that we overlooked or misapprehended the law by not construing the claims in the Institution Decision. To the extent Patent Owner later identifies any specific reason that the ultimate question of patentability is affected by specific claim construction issues, those issues can be resolved in the inter partes review. The Federal Circuit has noted expressly a lack of concern for “the Board adopting a construction in its final written decision, as the Board is free to do.” SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1352 (Fed. Cir. 2016). Indeed, the Board may construe claim language in its final written decision, after omitting any construction of the language in a decision to institute. TQ Delta, LLC, v. DISH Network LLC, 929 F.3d 1350, 1355 (Fed. Cir. 2019). The Supreme Court’s observation that Petitioner “gets to define the contours of the proceeding” addresses the Board’s prior practice of instituting inter partes review only for a subset of the claim challenges brought by a Petitioner. See SAS, 138 S. Ct. at 1354–1355. Patent Owner does not persuade us that the Supreme Court’s SAS decision requires the Board to adopt a claim construction in its institution decision. Here, having reviewed the record evidence, including the language of the claims, the Specification of the ’901 patent, and the asserted art, we found the claim constructions and prior art mapping advanced by Petitioner sufficiently viable to demonstrate a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. The Rehearing Request does not persuade us of error in that determination.” slip op. at 8

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

    “Petitioner failed to explain why a person of ordinary skill in the art would have placed certain components in certain relative positions, as well as how those components would have worked in those positions. The Institution Decision addressed those arguments. Inst. Dec. 25–27. The Rehearing Request does not reiterate or further explain the arguments from the Preliminary Response that Petitioner failed to explain why a person of ordinary skill in the art would have arranged the components in a certain way, or how such an arrangement would have worked. Instead, the Rehearing Request argues that the arrangement of Picard’s and Ishihara’s components proposed by Petitioner does not meet the claims. Pages 32–36 of the Preliminary Response simply did not make such an argument. For that reason alone, we find unpersuasive the Rehearing Request’s assertion that we overlooked or misapprehended arguments regarding the “illogical arrangement” of certain components. Reh’g Req. 9–13. Additionally, even if the Preliminary Response had made the arguments presented in the Rehearing Request, at this stage, we do not find Patent Owner’s arguments persuasive. In particular, we do not agree with Patent Owner’s assertion that Petitioner places at least a portion of the alleged “illumination unit” downstream of the alleged “optical system.” Instead, Petitioner’s mapping places components of the alleged “illumination unit” upstream of some components of the alleged “optical system” and downstream of one component of the alleged “optical system.” Indeed, such positioning appears in the Rehearing Request’s annotated version of Picard’s Figure 8, which shows Nipkow disk 8 upstream of the alleged optical system’s fiber optic bundle 30 and lenses 15, 321, but downstream of the alleged optical system’s separator cube 11. As Patent Owner notes, Petitioner asserts that Nipkow disk 8 forms part of the claimed “illumination unit . . . configured to generate a plurality of incident light beams.” Reh’g Req. 9–10; Pet. 20–23. Thus, Petitioner identifies a portion of the alleged illumination unit as sitting upstream of the alleged optical system’s fiber optic bundle 30 and lens 15, 32, while placing the same portion of the alleged illumination unit downstream of the alleged optical system’s separator cube 11. This arrangement of components appears to satisfy Patent Owner’s asserted requirement that the illumination unit must create the plurality of incident light beams before the optical system can focus them. Reh’g Req. 9. In particular, Petitioner asserts that Picard’s Nipkow disk 8 generates a plurality of incident light beams and that lens 15, situated downstream of Nipkow disk 8, focuses the plurality of incident light beams. Pet. 22, 25. With Nipkow disk 8 situated upstream of lens 15, any light beam produced by Nipkow disk 8 would be generated before lens 15 receives it. Because lens 15 is part of the alleged optical system, to the extent lens 15 focuses light beams from Nipkow disk 8, it seemingly would follow that the optical system focuses the plurality of incident light beams after Nipkow disk 8 (the alleged module) generates them.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,615,901
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Rehearing denied
  PTAB · Dec 30, 2019 · IPR2019-00151 · APJ Neil T Powell · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request and maintained institution of inter partes review of claims 15–30, finding no error in its institution decision.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Decision is set forth in 37 C.F.R. § 42.71(c), which provides that, [w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” A request for rehearing “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, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denialDecided for petitioner

    “Having considered the parties’ arguments, we are not persuaded that we overlooked or misapprehended Deeper, Chevron, or the principle on which those cases rest. Instead, we maintain that unlike the facts in Deeper and Chevron, the facts of the present case do not compel denying inter partes review due to considerations of efficiency. As an initial matter, in Deeper and Chevron, a reasonable likelihood of success had been shown for the challenges of only a very small proportion of the challenged claims. In Deeper, there was a reasonable likelihood of success for only two among 23 challenged claims. Deeper at 42–43. In Chevron, there was a reasonable likelihood of success for only two dependent claims among 20 challenged claims. Chevron at 11. Although we do not have a specific threshold in mind, here, there is a larger portion of claim challenges for which a reasonable likelihood exists than in either Deeper or Chevron. More importantly, in our view, Patent Owner’s efficiency arguments overlook that this proceeding involves one of multiple, similar patents that Patent Owner has asserted against Petitioner, and which Petitioner has challenged in petitions for inter partes review in IPR2019-00150, IPR2019-00151, and IPR2019- 00152. In these proceedings, the asserted prior art and the issues overlap. In each proceeding, Petitioner asserts the prior art references Picard, Ishihara, Tiziani, Gmitro, and Kino. Pet. 7; IPR2019-00150, Paper 3, 7–8; IPR2019-00152, Paper 3, 7. In IPR2019-00150, IPR2019-00151, and IPR2019-00152 collectively, Petitioner demonstrated a reasonable likelihood of prevailing with respect to 17 of 45 challenged claims. See Dec. on Inst. 3, 28 (noting reasonable likelihood of prevailing on challenge of four claims); IPR2019-00150, Paper 11, 3, 27 (noting reasonable likelihood of prevailing on challenge of five claims); IPR2019-00152, Paper 11, 3, 28–29 (noting a reasonable likelihood of prevailing on challenge of eight claims). Given that Petitioner has demonstrated a reasonable likelihood of prevailing on a significant portion of similar assertions of unpatentability of the claims of multiple, similar patents asserted by Patent Owner against Petitioner, we do not agree with Patent Owner’s assertion that the efficiency considerations noted in Deeper and Chevron weigh heavily in favor of denying inter partes review of the present case.” slip op. at 5

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

    “Patent Owner does not persuade us that we misapprehended the law. Having considered the arguments and precedent presented by Patent Owner, we disagree with Patent Owner’s suggestion that Petitioner’s proposed means-plus-function constructions must be substantively addressed in the Institution Decision. Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). As the Institution Decision explained, the Preliminary Response did not identify any specific reason that the differences between the parties’ proposed claim constructions would affect the ultimate analysis of the patentability of the challenged claims over the cited prior art. Dec. on Inst. 10. In particular, the Preliminary Response did not present any specific reason that the alleged teachings of the cited prior art would not meet Patent Owner’s proposed claim constructions, if we adopted Patent Owner’s proposed claim constructions over Petitioner’s. Thus, the Preliminary Response’s general disagreement regarding the correct construction of the claims did not create any controversy regarding the patentability of the challenged claims over the cited references, making it unnecessary for the Institution Decision to reach a conclusion on claim construction. Thus, the Rehearing Request does not persuade us that we overlooked or misapprehended the law by not construing the claims in the Institution Decision. To the extent Patent Owner later identifies any specific reason that the ultimate question of patentability is affected by specific claim construction issues, those issues can be resolved in the inter partes review. The Federal Circuit has noted expressly a lack of concern for “the Board adopting a construction in its final written decision, as the Board is free to do.” SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1352 (Fed. Cir. 2016). Indeed, the Board may construe claim language in its final written decision, after omitting any construction of the language in a decision to institute. TQ Delta, LLC, v. DISH Network LLC, 929 F.3d 1350, 1355 (Fed. Cir. 2019). The Supreme Court’s observation that Petitioner “gets to define the contours of the proceeding” addresses the Board’s prior practice of instituting inter partes review only for a subset of the claim challenges brought by a Petitioner. See SAS, 138 S. Ct. at 1354–1355. Patent Owner does not persuade us that the Supreme Court’s SAS decision requires the Board to adopt a claim construction in its institution decision. . Here, having reviewed the record evidence, including the language of the claims, the Specification of the ’448 patent, and the asserted art, we found the claim constructions and prior art mapping advanced by Petitioner sufficiently viable to demonstrate a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. The Rehearing Request does not persuade us of error in that determination.” slip op. at 7

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

    “presented in the Rehearing Request, at this stage, we do not find Patent Owner’s arguments persuasive. In particular, we do not agree with Patent Owner’s assertion that Petitioner places at least a portion of the alleged “illumination unit” downstream of the alleged “optical system.” Instead, Petitioner’s mapping places components of the alleged “illumination unit” upstream of some components of the alleged “optical system” and downstream of one component of the alleged “optical system.” Indeed, such positioning appears in the Rehearing Request’s annotated version of Picard’s Figure 8, which shows Nipkow disk 8 upstream of the alleged optical system’s fiber optic bundle 30 and lenses 15, 321, but downstream of the alleged optical system’s separator cube 11. As Patent Owner notes, Petitioner asserts that Nipkow disk 8 forms part of the claimed “illumination unit . . . configured to generate a plurality of incident light beams.” Reh’g Req. 9–10; Pet. 18–21. Thus, Petitioner identifies a portion of the alleged illumination unit as sitting upstream of the alleged optical system’s fiber optic bundle 30 and lens 15, 32, while placing the same portion of the alleged illumination unit downstream of the alleged optical system’s separator cube 11. This arrangement of components appears to satisfy Patent Owner’s asserted requirement that the illumination unit must create the plurality of incident light beams before the optical system can focus them. Reh’g Req. 9. In particular, Petitioner asserts that Picard’s Nipkow disk 8 generates a plurality of incident light beams and that lens 15, situated downstream of Nipkow disk 8, focuses the plurality of incident light beams. Pet. 20–21, 23–24. With Nipkow disk 8 situated upstream of lens 15, any light beam produced by Nipkow disk 8 would be generated before lens 15 receives it. Because lens 15 is part of the alleged optical system, to the extent lens 15 focuses light beams from Nipkow disk 8, it seemingly would follow that the optical system focuses the plurality of incident light beams after Nipkow disk 8 (the alleged module) generates them. For these reasons, we are not persuaded that it was an abuse of discretion to institute review of claim 15 based on the arrangement of components proposed by 1 Although Patent Owner’s annotated version of Picard’s Figure 8 does not identify Picard’s lens 15 as part of the alleged optical system, the Petition asserts that it forms part of the optical system and serves to focus the plurality of incident light beams. Pet. 23–24. Petitioner. Patent Owner’s argument rests on a claim interpretation that requires that the claimed “optical system” be positioned, in its entirety, downstream of the claimed “illumination unit.” At this stage, neither party has fully addressed the correctness of Patent Owner’s claim interpretation. We, therefore, do not decide at this stage whether Patent Owner’s claim interpretation is correct and make no final determination as to whether Petitioner’s proposed arrangement of components falls within the scope of the claim.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,638,448
• Cxloyalty, Inc. v. Maritz Holdings Inc.All claims unpatentable
  PTAB · Dec 19, 2019 · CBM2018-00037 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1–15 are unpatentable under § 101; the motion to amend is granted for proposed substitute claims 16–23, which were not shown unpatentable.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “does not remove the claim from the realm of abstract ideas. See Pet. 52–53; Reply 12; SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (holding that it “does not matter to [the conclusion that the claim is directed to an abstract idea] whether the information here is information about real investments,” as “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract” (citation omitted)). Further, the last two clauses of claim 1 that recite how the transaction is viewed from the perspectives of the participant and vendor system, respectively, merely express the “non-physical result” of the information transfers and confirm the abstract nature of the claimed subject matter. See Pet. 57. In fact, as to the vendor system clause, the Specification indicates that the vendor system transfers information no differently than it would for any other transaction. See Ex. 1001, col. 7, ll. 15–18 (disclosing that vendor system 208 responds to purchase request 216 “in the same way that it would respond to any other purchase request from a consumer that presents a credit card”).” slip op. at 35

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “Our conclusion also is supported by the ’087 patent’s description of” slip op. at 41

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75

  • 101 substituteMixed

    “transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75

  Patent outcomesUS 7,134,087 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · Enfish
  Patents in suitUS 7,134,087
• Donner Technology, LLC v. Pro Stage Gear, LLCRehearing denied
  PTAB · Dec 9, 2019 · IPR2018-00707 · APJ John A Hudalla · IPR · Rehearing

  The Board denied the petitioner’s rehearing request, leaving claims 5, 7, 8, 18, 20, and 21 not shown unpatentable on the challenged obviousness grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. See 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “construction of the phrase ‘above the surface,’ then the Board’s construction cannot be reasonably discerned.” Req. Reh’g 8. If that were the case, Petitioner contends we “must articulate and explain [our] construction for the purposes of judicial review.” Id. at 9. Yet Petitioner failed to explain in the Petition how the cited references teach the “above the surface” limitations of claims 5 and 18 under any construction of these limitations, including the one implied in footnote 8 of the Petition. See Pet. 55 n.8, 69 n.10. Petitioner did not specify any dispute regarding the meaning of the term “the surface” and neither did Patent Owner. See, e.g., id. at 8–9 (no terms proposed by Petitioner for construction), 55 (Petitioner’s analysis for claim 18 referring to earlier analysis relative to the “effect mounting surface”); Paper 26, 34–41, 43 (no arguments in Patent Owner’s Response based on an interpretation of “the surface”); Paper 34, 16–17 (Petitioner in its Reply referring to arguments in the Petition for “above the surface”). As such, we did not expressly construe “above the surface.” See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). In addition, Petitioner purports to construe “above the surface” for the first time. See Req. Reh’g 2, 7 (stating that the plain and ordinary meaning of “above the surface” is “above the ground” or “above the area to provide spacing for cables to run underneath the frame”). Petitioner could have, but did not, put forth such constructions in its Petition. See 37 C.F.R. ordinary meaning of “above the surface” in the Request for Rehearing (see Req. Reh’g 7), Petitioner’s arguments come too late. And Petitioner never previously attempted to associate the recited “surface” with “the ground” or “the area to provide spacing for cables to run underneath the frame.” Contrary to Petitioner’s new constructions, and as explained above, Petitioner previously associated the recited “surface” with “the effect mounting surface.” See Pet. 55 n.8 (“the ’023 Patent provides no support for the frame in Claim 15 being supported above the effect mounting surface in Claim 18” (bold emphasis added)), 69 n.10 (referring to footnote 8).” slip op. at 5

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

    “of the “above the surface” limitation was framed by its statement in the Petition that claims 5 and 18 are invalid “under 35 U.S.C. § 112, second paragraph, because the ’023 Patent provides no support for the frame . . . being supported above the effect mounting surface.” Pet. 55 n.8 (italics in original; bolding emphasis added), 69 n.10 (referring to footnote 8); see also Final Dec. 51 n.12 (quoting same). Thus, Petitioner associated the “surface” in the recitation “above the surface” with the “effect mounting surface” recited in base claims 2 and 15. Despite this association, Petitioner’s obviousness analysis made no attempt to show that Arseneault’s higher backwall (i.e., the “frame base,” see Pet. 51–53, 55–56) supports SCC-700’s cross members A–D (i.e., the “frame,” see id. at 50) above the units board of SCC-700 (i.e., the “effects mounting surface,” see Pet. 46–47).1 Rather, Petitioner addressed only the “frame base supporting the frame” and “allowing the cable to pass beneath the frame” limitations of claims 5 and 18. See Pet. 54–55, 69–70. Thus, we determined that Petitioner’s analysis “d[id] not establish that Arseneault teaches ‘a frame base supporting the 1 As we acknowledged, Petitioner’s analysis for claim 18 builds upon its anticipation analysis for claim 15 and its analysis for the recited “frame” in claim 1. See Final Dec. 51–52.” slip op. at 3

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

    “3 We also considered Petitioner’s argument from its Reply that an ordinarily skilled artisan “could have easily made a rigid connection between the cross members and end-members using the same fasteners that are disclosed in Carter.” Final Dec. 72 (citing Paper 34, 24; Ex. 1051 ¶ 26). We were not persuaded by this rationale because Petitioner did not provide a reason why an ordinarily skilled artisan would have made such a connection. See id. at 75. Petitioner does not contest this determination in its Request for Rehearing.” slip op. at 9

  Claim construction§ 103 obviousness
  Patents in suitUS 6,459,023
• Mobile Tech, Inc. v. Invue Security Products Inc.All claims unpatentable
  PTAB · Dec 5, 2019 · IPR2018-01138 · APJ Stacey G White · IPR · Final written decision

  Claims 1–10, 12–45 are unpatentable: claims 1–10, 12–15, 17–32, 34–43, and 45 as obvious over Rothbaum and Denison; claims 16, 33, and 44 over Rothbaum, Denison, and Ott.

  RulingsFinal written decision

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

    “Here, the same RPI issue was raised in the prior decisions, the RPI issue was actually litigated by the parties (replete with discovery and dispositive motions on this issue), and our determination that the RPI identification was proper was essential to the prior decisions (especially because Patent Owner has sought to have the proceedings terminated due to an allegedly improper identification of RPIs). As such, we agree with the parties’ assertion that collateral estoppel applies to the RPI issue in this case, and we conclude that no exception to collateral estoppel applies. Thus, we determine that collateral estoppel prevents the relitigation of the RPI issue in this proceeding. Accordingly, for the reasons given in the 1900 IPR Decision and in the Order on Patent Owner’s Motion to Terminate from IPR2017-00344, we determine that Petitioner identified all RPIs in this proceeding, as required by 35 U.S.C. § 312(a)(2).” slip op. at 15

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner’s declarant, Thaine Allison III, testifies that a person of ordinary skill in the art would have had a four year technical degree (e.g. B.S. engineering) with a minimum of three years of experience in using, provisioning, designing or creating, or supervising the design or creation, of such theft prevention devices, and other related security devices. Extended experience in the industry could substitute for a technical degree. A [person of ordinary skill in the art] would have known how to research the technical literature in fields relating to theft prevention, including in retail and other environments, as well as security in general. Also, a [person of ordinary skill in the art] may have worked as part of a multidisciplinary team and drawn upon not only his or her own skills, but also taken advantage of certain specialized skills of others in the team, e.g., to solve a given problem. For example, designers, engineers (e.g., mechanical or electrical), and computer scientists or other computer programmers may have been part of a team. Ex. 1019 ¶ 20; see Pet. 14 (citing Ex. 1019 ¶¶ 18–21). Based on the evidence of record, including the testimony of Mr. Allison, the subject matter at issue, and the prior art of record, we adopt the level of ordinary skill in the art set forth in the Decision on Institution, which is that a person of ordinary skill in the art would have had a four-year technical degree or equivalent experience with a minimum of two years of professional technical experience in the field of theft prevention devices or related security devices. Dec. on Inst. 10; see also PO Resp. 17–18 (agreeing with statement of level of ordinary skill in the Decision on Institution). We apply this level of ordinary skill in the art in our analysis below.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther

    “usable in only a single retail store,” “unique to the single retail store and the programming station,” “a ‘housing’ with ‘a port,’” “logic control circuit,” and “‘invalidating’ the ‘key.’” Pet. 8–14. Patent Owner seeks construction of “single security code” and “invalidates the single security code,” and Patent Owner provides arguments responsive to Petitioner’s proposed construction of “usable in only a single retail store.” PO Resp. 12–17. Based on the issues before us, we discern a need to provide express construction for “single security code,” “unique to the single retail store and the programming station,” and “invalidating the single security code.” No other term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor slip op. at 8

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

    “Id. at 38. Petitioner responds by arguing that Patent Owner is not addressing the combination proposed in the Petition, which is “modifying Rothbaum’s system (used in a retail store) to have an electronic-key system instead of a mechanical-key system. It isn’t a vending machine.” Reply 4. Thus, Petitioner’s argument focuses on incorporating the teachings regarding Denison’s key into the retail security system of Rothbaum. Therefore, Patent Owner’s arguments that are directed to the features of Denison’s vending machines are not responsive to the proposed combination because the vending machine is not part of the proposed modified system. Mr. Allison’s testimony supports Petitioner by explaining that a [person of ordinary skill in the art] would have found it obvious that a retail store employing the modified Rothbaum system would not share or use the system (or individual parts of the system, for example, the programming station / “external computing device,” the electronic keys, and the security device / “strip or housing 12”) with another retail store because doing so would compromise the integrity of the security system. Ex. 1019 ¶ 116. We credit Mr. Allison’s testimony and find that one of ordinary skill in the art would have found it obvious to improve security by using Denison’s operation limits to limit the use of the security code to a single store because such a limit would reduce the possibility that unauthorized individuals would gain access to the code by, for example, obtaining a key from one store and using it in another store. See Ex. 1019 ¶¶ 113, 116. We determine that the findings made in our analysis of claim 1 of the ’762 patent along with our findings regarding the “usable in only a single retail store” limitation also support a finding of unpatentability of claim 17 of the ’472 patent. We are careful to view the claim as a whole and not just its constituent parts. We determine that the findings noted above as to prior related cases along with the findings we make in this Decision as to the disputed limitation are sufficient to establish the unpatentability of claim 17 as a whole. The prior findings were essential to determining the patentability of the prior challenged claims and the parties had a full and fair opportunity to litigate those claims. Therefore, we determine that Petitioner has shown by a preponderance of the evidence that claim 17 of the ’472 patent would have been obvious over Rothbaum and Denison. As noted above, our analysis equally applies to claims 1 and 39 of the ’472 patent. Therefore, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1, 17, and 39 are unpatentable.” slip op. at 26

  Patent outcomesUS 9,659,472 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,659,472
• Ioxus, Inc. v. Cap-Xx, Ltd.Institution denied
  PTAB · Dec 4, 2019 · IPR2019-01178 · APJ Jennifer Meyer Chagnon · IPR · Institution

  The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood of success on its asserted obviousness grounds.

  RulingsInstitution decision

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

    “The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314, which provides that an inter partes review may be instituted only upon a showing that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2012). After considering the Petition, the Preliminary Response, and the evidence of record, we conclude that the information presented does not establish a reasonable likelihood that Petitioner will prevail in challenging the patentability of the challenged claims. We, therefore, decline to institute an inter partes review of the ’034 patent.” slip op. at 2

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

    “On this record, we agree that Petitioner has not offered sufficient argument or supporting evidence that a person skilled in the art would have had reason to combine the teachings of Yoshida and AAPA. Petitioner first argues that the PowerStor device uses the same cylinder-type supercapacitor as that is described in Yoshida and “[i]t would have therefore been obvious to a [person of ordinary skill in the art] to combine the ‘Prior Art 1’ AAPA with Yoshida so that Yoshida’s supercapacitor has a volumetric FOM of 3.0 (or 3.02).” Pet. 62; see also Ex. 1002 ¶ 202 (“Because Yoshida has the same EDLC shape and wound-cell configuration as the PowerStor supercapacitor . . . it would have been obvious to a [person of ordinary skill in the art] to combine the data for that supercapacitor . . . with the general cylindrical EDLC disclosures in Yoshida to obtain the 3.0 FOMv value.”). Petitioner’s reasoning, while relevant to showing that the references could have been combined, i.e., that they may be analogous, nevertheless falls short of establishing what would have prompted the ordinarily skilled artisan to make the proffered combination to yield a supercapacitor having volumetric FOM of 3.0. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Petitioner’s further argument that “there were no standard electrode shapes/sizes/dimensions at the time of the ’034 patent” and, therefore, “[i]t would have been a simple matter of the [person of ordinary skill in the art art] playing around with the dimensions of Yoshida’s device to get to the 3.0 FOMv” fares no better. Pet. 62–63; Ex. 1002 ¶ 204. As our reviewing court has explained, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc., 805 F.3d at 1703 (citations omitted). That the person of ordinary skill in the art would have known how to achieve a volumetric FOM of 3.0 does not explain why modifying Yoshida to achieve a volumetric FOM of 3.0 is desirable in the first instance. The prior art may show a supercapacitor having a gravimetric FOM as claimed, but without more, this fails to provide the requisite reason for a skilled artisan to modify Yoshida’s device to include the claimed gravimetric FOM. KSR, 550 U.S. at 418–419. Accordingly, Petitioner’s assertions here are “insufficient to show persuasively that a relevant artisan would have recognized some deficiency in one reference or had some other reason to motivate looking to the other and combining them.” Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (unpublished); see also id. (“[T]he Board correctly concluded that Microsoft did not articulate a sufficient motivation to combine,” where “Microsoft gave no reason for the motivation of a person of ordinary skill to combine [two references] except that the references were directed to the same art or same techniques.”). Thus, Petitioner fails to show why a person of ordinary skill in the art would have been motivated to combine the teachings of Yoshida and AAPA as proposed. Arguments Regarding a Presumption of Obviousness” slip op. at 27

  • Expert testimonyPetitioner expert creditedOther

    “11 Petitioner requested authorization to file a Reply to Patent Owner’s Preliminary Response to address Patent Owner’s arguments regarding the credibility of Dr. Juzkow’s testimony. See Ex. 3001. We denied Petitioner’s request. Paper 7, 2. For purposes of this Decision, we have given full weight to Dr. Juzkow’s testimony, notwithstanding any alleged credibility issues raised by Patent Owner.” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person having ordinary skill in the art would have had “a bachelor’s degree or the equivalent in electrical engineering or chemistry (or equivalent degree or experience) and at least two years of additional experience in the area of supercapacitors, or equivalent work experience.” Pet. 7. Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt and apply Petitioner’s proposed description of the person of ordinary skill in the art.” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,920,034
• Ioxus, Inc. v. Cap-Xx, Ltd.Institution denied
  PTAB · Dec 4, 2019 · IPR2019-01179 · APJ Avelyn M Ross · IPR · Institution

  The Board denied institution because the petition did not show a reason to combine Yoshida and AAPA to achieve the claimed gravimetric FOM for claims 1, 2, and 6–13.

  RulingsInstitution decision

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

    “Because Petitioner fails to show why a person of ordinary skill in the art would have been motivated to combine the teachings of Yoshida and AAPA as proposed, Petitioner has not shown a reasonable likelihood that it would prevail with respect to claim 1.” slip op. at 20

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

    “On this record, we agree that Petitioner has not offered sufficient argument or supporting evidence that a person skilled in the art would have had reason to combine the teachings of Yoshida and AAPA. Petitioner first argues that the PowerStor device uses the same cylinder-type supercapacitor as that is described in Yoshida and “[i]t would have therefore been obvious to a POSITA to combine the ‘Prior Art 1’ AAPA with Yoshida so that Yoshida’s supercapacitor has a gravimetric FOM of 2.06.” Pet. 27–28; see also Ex. 1002 (“Because Yoshida has the same EDLC shape and wound-cell configuration as the PowerStor supercapacitor . . . it would have been obvious to a POSITA to combine data for that supercapacitor . . . with the general cylindrical EDLC disclosures in Yoshida to obtain the 2.06 FOMg value.”). Petitioner’s reasoning, while relevant to showing that the references could have been combined, i.e., that they may be analogous, nevertheless falls short of establishing what would have prompted the ordinarily skilled artisan to make the proffered combination to yield a supercapacitor having gravimetric FOM of 2.1. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Petitioner’s further argument that “the skilled artisan would have known to test Yoshida’s supercapacitor and then, based on the measured FOMg for that device . . . would start modifying certain aspects of the device to reach the target FOMg” fares no better. Pet. 28. As our reviewing court has explained, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc., 805 F.3d at 1703 (citations omitted). That the person of ordinary skill in the art would have known how to achieve a gravimetric FOM of 2.1 does not explain why modifying Yoshida to achieve a gravimetric FOM of 2.1 is desirable in the first instance. That the prior art may show a supercapacitor having a gravimetric FOM as claimed, without more, fails to provide the requisite reason for a skilled artisan to modify Yoshida’s device to include the claimed gravimetric FOM. KSR, 550 U.S. at 418–419. Accordingly, without more, Petitioner’s assertions are “insufficient to show persuasively that a relevant artisan would have recognized some deficiency in one reference or had some other reason to motivate looking to the other and combining them.” Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (unpublished); see also id. (“[T]he Board correctly concluded that Microsoft did not articulate a sufficient motivation to combine,” where “Microsoft gave no reason for the motivation of a person of ordinary skill to combine [two references] except that the references were directed to the same art or same techniques.”).” slip op. at 18

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

    “After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 11

  • Skill levelSkill level petitioner adoptedOther
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,382,600
• Charter Communications, Inc. v. Sprint Communications Company, L.P.Institution denied
  PTAB · Dec 3, 2019 · IPR2019-01135 · APJ Brian J Mcnamara · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–53 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “In consideration of the above, we are not persuaded that Petitioner has demonstrated a reasonable likelihood it will succeed in its challenge to claim 1 as unpatentable over the combined teachings of Sampsell and Yosuke.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “bachelor’s degree in electrical engineering, computer science, or a related field with at least five years of experience or research in interactive systems applicable to digital television, including VOD for cable and Internet delivery.” Pet. 12–13 (citing Ex. 1002, Declaration of Dr. Kevin Almeroth (“Almeroth Dec.”) ¶¶ 44–46. Patent Owner does not offer a definition of the level of ordinary skill, but reserves the right to dispute Petitioner’s assessment of the level of ordinary skill. Prelim. Resp. 20. Petitioner’s commensurate with the subject matter for the ’7907 patent, for purposes of this Decision we apply Petitioner’s description of the level of ordinary skill.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “Having reviewed the claims and the specification of the ’7907 patent, we determine that the phrase “video-on-demand” in the preamble is necessary to give life and meaning to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“[I]f the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim.”). The difference between watching television and watching a video on demand is a difference in kind, rendering a video-on-demand system different from a non-video-on-demand system. While a person watching television can change channels and thus in some sense selects video content, such video content is being distributed regardless of whether the user selects specifically selects it.1 Because of that nature, the user also has control over the playback of the video content, such as pausing and stopping. Although the dependent claims more clearly demonstrate the on-demand nature of the video content (e.g., with the menu and control buttons), only the preamble in the independent claims provides the clue as to this context.2 Thus, the preamble serves to provide the framework necessary to understand the body of the claims, and is limiting.” slip op. at 10

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

    “Owner’s proposed construction, i.e., plain and ordinary meaning or “a signal reflecting viewer control” and instead construed “view control signal” to mean “a viewer control signal generated and processed without the involvement of a set-top box for remote control of the video-on-demand system.” Pet. 15. Petitioner notes that the Comcast court found the ’7907 patent does not dispute the use of a set-top box for purposes other than remote control, e.g. for the purpose of decoding a video signal and presenting it to a television. Id. n. 3. Referring to Figure 1, the Specification states “[i]n response to viewer input to the control screen, the second display 122 transfers a corresponding viewer control signal to the second communication system 112,” the second communication system 112 1 See, e.g., Ex. 1001, 1:17–33 (instructing that, with video-on-demand, the system receives a request to view a selection from the video content library, the video is played “[i]n response to the [user’s] request,” and the user is allowed “to immediately view [the] selected video content”). 2 This is broadly recited in claim 12 to encompass the controls relevant to video-on-demand, e.g., play, pause, stop, etc. Limiting claim 1 to a video-on-demand system provides meaningful context. and “[t]he second communication interface 102 transfers the [viewer] control signal to the processing system 103.” Ex. 1001, 2:61–67. Thus, we understand the viewer control signal to be a signal generated in response to user input.” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,757,907
• Apple Inc. v. Corephotonics Ltd.All claims unpatentable
  PTAB · Dec 3, 2019 · IPR2018-01140 · APJ Marc S Hoff · IPR · Final written decision

  Claims 1 and 13 are unpatentable as anticipated by Ogino; claims 14 and 15 are unpatentable as obvious over Ogino and Chen II.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “claims 1 and 13 of the ’032 Patent are anticipated by Ogino. Petitioner has also demonstrated, by a preponderance of the evidence, that claims 14 and 15 of the ’032 Patent are unpatentable over the combination of Ogino and Chen II. The chart below summarizes our conclusion. References Claims Claims Claims 35. Shown Not shown Challenged U.S.C. Unpatent- Unpatentable able Ogino 1 and 13 1 and 13 § 102 Ogino, Chen 14 and 15 14 and 15 § 103 II 1 and 13-15” slip op. at 40

  • Skill levelSkill level board ownDecided for petitioner

    “that Ogino and Chen II disclose substantially different lens systems. PO Resp. 36. As Petitioner points out, both Ogino and Chen II describe mobile phone camera systems with all lenses being aspheric; a first lens with a meniscus shape with positive refractive power; a second lens with negative refractive power; a third lens with a meniscus shape and with a negative refractive power; a fourth lens with a meniscus shape with positive refractive power; and a fifth lens with a meniscus shape and with a negative refractive power. Pet. Reply 22; Pet. 41–44. We agree with Petitioner that such a skilled artisan, possessing an applicable college degree, approximately three years experience in designing multi-lens optical systems, “experience in analyzing, tolerancing, adjusting, and optimizing multilens systems, and experience with lens design software such as CodeV, Oslo, or Zemax,” would have the appropriate knowledge to perform routine modifications to a lens design. Pet. Reply 24; Pet. 7; PO Resp. 12. Patent Owner’s expert Dr. Moore testified that such a skilled artisan “would be able to use the computer program [i.e. CodeV or Zemax] to optimize lens designs.” Pet. Reply 24; Ex. 1025, 29:25–30:9. Dr. Moore testified that the skilled artisan would “tell the [lens design] program that you want to vary certain parameters of a lens . . . . And then the program, through a fairly complicated algorithm, then actually goes through and varies them and determines how to make a better lens. You determine as a lens designer what you’re trying to improve.” Ex. 1025, 28:13–23.” slip op. at 38

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “We are unpersuaded by Patent Owner’s argument that the skilled artisan would have understood that third, fourth, and fifth lenses also contribute to vignetting in Ogino. PO Resp. 38. We credit Petitioner’s argument that Dr. Moore’s conclusion regarding vignetting in the third, fourth, and fifth lenses is unreliable because it is based on assumptions not specified in Ogino. Pet. Reply 16; Ex. 1026 ¶ 11. For example, Ogino does not provide lens diameters or vignetting apertures for the lens assembly of Example 6 that would vignette the light beams on the third, fourth or fifth lens elements. Pet. Reply 17; Ex. 1026 ¶ 11. Additionally, Dr. Sasián testifies that vignetting is a result of the second lens. Pet. Reply 17–18; Pet. 54; Ex. 1003, 59.” slip op. at 36

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

    “Effective Focal Length (EFL) Petitioner asserts that while the specification of the ’032 Patent does not offer an express definition for the term “effective focal length,” “its meaning is well known in the art, as exemplified in Li (Ex. 1007), which states that “[t]he focal length of a lens assembly [is] also referred to as the effective focal length [(]EFL).” Pet. 9–10 (internal parentheses omitted); Ex. 1007, 2:59–61. Patent Owner, in response, does not dispute Petitioner’s construction of “effective focal length,” stating that the Petition does not turn on the construction of the term. PO Resp. 20. Having reviewed the evidence of record, we agree with Petitioner that Li supports construing the term “effective focal length” as “the focal length of a lens assembly.” We adopt this construction.” slip op. at 10

  Patent outcomesUS 9,402,032 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,402,032
• Microsoft Corporation v. Uniloc 2017 LLCInstitution denied
  PTAB · Nov 27, 2019 · IPR2019-01125 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on claim 5 because its ambiguous scope prevented a reliable merits assessment and made trial resource intensive.

  RulingsInstitution decision

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

    “Id. at 2:29–42. Thus, within the context of both the claim and the Specification, a radio system and a station are not the same. It is unclear what is referred to by the reference in claim 5 to “radio systems in accordance with the first radio interface standard.”” slip op. at 14

  • Other 314aInstitution denied discretionary otherDenied

    “Because the claim language is ambiguous as discussed above, we have an inadequate basis to assess the merits of Petitioner’s alleged grounds 5 We recognize that in limited circumstances, clear errors in claims can be corrected. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). The deficiency in the claim language here clearly does not meet that standard. What the Applicant for patent intended by the language used is subject to much speculation and conjecture. of unpatentability. If the scope of the claims cannot be determined without undue speculation, as is the case here, the differences between the claimed invention and the prior art cannot be ascertained. See BlackBerry Corp. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 65 at 19–20 (PTAB Mar. 7, 2014) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). Also, the difficulties and speculation we would encounter at trial if review is instituted, stemming from ambiguous claim language, substantially increase the resources and efforts required for reaching a resolution and thus weigh heavily against institution of review. In the circumstance here, reaching the merits of the alleged grounds of unpatentability, either before or after institution of review, involves substantial uncertainty and speculation. See In re Steele, 305 F.2d at 862– 63. Furthermore, given that any trial instituted here would address a single claim that we regard to be ambiguous, that issue would likely become the sole focus of that trial. That seems problematic given that Petitioner may not request to cancel any claim based on an assertion of indefiniteness. See 35 U.S.C. § 311(b). See 35 U.S.C. § 311(b).” slip op. at 16

  Claim constructionDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,016,676

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.