- Hospitality Core Services LLC v. Nomadix, Inc.Institution deniedPTAB · Apr 27, 2016 · IPR2016-00052 · APJ Howard B Blankenship · IPR · Institution
The Board denied institution on all claims because the IPORT grounds lacked a threshold showing of printed-publication status and it declined the Applegate grounds under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and IPORT V2x are prior art “printed publications” in accordance with 35 U.S.C. §§ 102 and 311(b). We look to the underlying facts to make a legal determination as to whether a document is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-by-case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009).” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“and IPORT V2x are prior art “printed publications” in accordance with 35 U.S.C. §§ 102 and 311(b). We look to the underlying facts to make a legal determination as to whether a document is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-by-case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In determining whether to institute or order a proceeding under . . . chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. 35 U.S.C. § 325(d) (titled “MULTIPLE PROCEEDINGS”). Further, in construing our authority to institute inter partes review under 37 C.F.R. § 42.108, we are mindful of the guidance provided in § 42.1(b): “[37 C.F.R. § 42] shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.” Petitioner’s remaining asserted grounds of unpatentability, five of seven asserted grounds, rely on Applegate, alone or in combination with other references. See Pet. 4‒5, 29‒34, 36. Yet, Applegate received full consideration in view of the subject matter claimed in the ʼ894 patent in the denial of inter partes reexamination. The Central Reexamination Unit determined that a redirection server, as claimed, comprises hardware, and the only element disclosed by Applegate that performs redirection is software. See supra § II.D. We find nothing in this record that might demonstrate error in the CRU’s determinations. For example, as alleged by Patent Owner in its “Comments” to the CRU Director’s denial of the inter partes reexamination, the ʼ894 patent discloses that “[t]he redirection is accomplished by a Home Page Redirect (HPR) performed by the gateway device, a AAA server, or by a portal page redirect unit located internal to or external to the gateway device.” Ex. 1001, col. 9, ll. 5‒8. The claims, however, do not set forth a redirection “device” or “unit” but a redirection “server.” The indicated Specification portion of the ʼ894 patent describes an AAA “server” that may perform the redirection, which may be distinguished from a pure software embodiment performing the function, even if the server is located within the gateway device.5 See, e.g., Ex. 1001, col. 7, ll. 22‒24” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“ordinary skill in the art would have combined the teachings of the references, however, is lacking in a factual basis for such combination. According to Petitioner, “IPORT and Birrell describe the redirection server configured as a separate hardware circuit, and Coss and Colby describe systems using packet address modification for packet redirection, which could likewise be combined with Applegate and [Slemmer] to arrive at the system claimed in the [ʼ]894 patent.” Pet. 59 (citing Ex 1020 ¶ 39 (similar allegations)). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). As our reviewing court instructs: Although the obviousness analysis should “take account of the inferences and creative steps that a person of ordinary skill in the art would employ,” the Supreme Court emphasized that this evidentiary flexibility does not relax the requirement that, “[t]o facilitate review, this analysis should be made explicit.” Id. [KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)] (citing [In re] Kahn, 441 F.3d [977, 988 (Fed. Cir. 2006)] (“[R]ejections 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.”)). Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009). Petitioner’s challenge of the claims over Applegate, Slemmer, and Birrell (Pet. 4 (Ground 3), 32‒33, 58‒59) provides mere conclusory statements in support of the legal conclusion of obviousness. Petitioner offers no convincing rationale, in light of the teachings of the prior art, with respect to why one of ordinary skill in the art would have chosen to combine the elements of the asserted art in a way “to arrive at the system claimed in the [ʼ]894 patent.” Pet. 59.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,636,894 - Hughes Network Systems, LLC / Hughes Communications, Inc. v. California Institute Of TechnologyAll claims unpatentablePTAB · Apr 21, 2016 · IPR2015-00059 · APJ Glenn J Perry · IPR · Final written decision
Claims 1 and 2 are unpatentable as anticipated by Divsalar; Patent Owner’s motion to strike and exclude was denied.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Although Petitioner has the ultimate burden of persuasion in an inter partes review, once the Petitioner has represented what it believes to be a proper identification of the real parties-in-interest, Patent Owner has the burden of production in establishing that a real party-in-interest has not been named. Patent Owner has not carried that burden with respect to establishing that Dish is an unnamed real party-in-interest. Petitioner persuasively argues that Patent Owner failed to show that the Petition was filed at the behest of Dish. Paper 15, 1. The key to a real party-in-interest inquiry is the relationship between the potential unnamed real party-in-interest and the proceeding, not the relationship between parties. For example, “[a] common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” 77 Fed. Reg. at 48,759. There is no persuasive evidence of record that Dish controls or even had an opportunity to control Hughes’ decision to file or maintain this inter partes review.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We construe the term “linear transformation” in order to apply the Divsalar reference. The term “linear transformation” is used in the context of a transformation between two vector spaces. We adopt a linear algebra definition7 that a linear transformation is one that obeys the laws of linear algebra including distributive and associative properties, e.g., the transform of vectors a+b is equal to the transform of a + the transform of b. The linear transform of x (a scalar) times a vector y is equivalent to x times the transform of vector y. We decline to read into the claim limitation the requirement of an irregular repeat. 2. Additional Claim Terms We find it unnecessary to construe additional claim terms.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“Based on the same named authors that appear in bibliographic citations in the 1998–1999 time frame, we find that the evidence of record supports that a relatively small community of artisans worked in error correction coding, several of whom referenced the Divsalar paper. Under 9 The presence of the citation in a book copyrighted in 2000 suggests that the author of that portion of the book (here, David Mackay) would have received the article prior to the book’s publication. these circumstances, we find that the Divsalar paper was published to the relevant community of skilled artisans well before the earliest effective filing date of the patent at issue. We determine, based on the totality of the evidence discussed above, that Divsalar is prior art with respect to the ’781 Patent. We conclude that the preponderance of evidence establishes that Divsalar is a printed publication available as prior art against the ’781 Patent as required by 35 U.S.C. § 311(b).” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Patent Owner that the specification explains how irregular coding is achieved. However, we do not read limitation [a] of claim 1 as being limited to irregular repeat coding, as discussed above in our claim construction. Claim 1 requires “performing a first encoding operation on at least some of the information bits, the first encoding operation being a linear transform operation that generates L transformed bits.” The first encoding can be on “at least some” of the information bits. Thus, it could also be on all of the information bits. Also, according to the claim, the first encoding operation must produce “L” transformed bits. There is no explanation in the claim as to the relationship of “L” to the incoming block of bits being transformed. All that claim 1 recites, at the end of the claim, is that L is 2 or more. Thus, claim 1 could produce a regular repeat code by repeating all of the information bits to generate L (more than 2) transformed bits. Although Patent Owner argues that claim 1 is limited to producing irregular codes, there is no language in the claim that so limits it. Claim 1 is in contrast to claims 9 and 22 (not at issue) which require information bits to appear in a “variable number of subsets.” If limitation [a] were limited to “irregular” codes, Patent Owner’s position would have merit. However, claim 1 embraces more than just “irregular” repeat codes. It includes first and second encoding operations that may produce regular and irregular repeat codes. Thus, on the full record, Patent Owner’s argument is not commensurate in scope with the actual language of claim 1.” slip op. at 24
Patent outcomesUS 7,916,781 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 7,916,781 - Toshiba Corporation v. Optical Devices, LLCNo claims unpatentablePTAB · Mar 9, 2016 · IPR2014-01446 · APJ Glenn J Perry · IPR · Final written decision
Toshiba did not prove claims 1, 2, 6, 7, 11, 13, 14, and 16 unpatentable over Baird and Yoshimoto, or that combination with the ST Datasheet, which was not established as prior art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“As we seek to give the term “DSP” its ordinary and customary meaning, as would have been understood by one of ordinary skill in the art at the time of the invention, we take into account the Microsoft and IBM dictionary definitions submitted by Optical Devices. We note that each of those dictionaries define a DSP as designed for “high speed” manipulation of data/digital signals. Ex. 2002; Ex. 2003. Optical Devices, however, has not directed our attention to evidence establishing what “high speed” encompasses. We note that one of the submitted dictionary definitions characterizes such digital signal manipulation as “real-time.” Ex. 2003. However, the Specification’s disclosure describes that some embodiments can execute real time digital servo algorithms on a DSP. We determine that Optical Devices has not established persuasively that the broadest reasonable interpretation of a DSP requires “high speed” processing achieving this “real time” feature. Indeed, Patent Owner’s “basic” construction for a DSP does not include a “real time” requirement for “real time” processing. See PO Resp. 10 (providing a minimal definition for a DSP). We are persuaded that the broadest reasonable interpretation of the term “digital signal processor,” consistent with the Specification, is “an integrated circuit structured and arranged for manipulation of digital signals in accordance with programmed commands, and in a manner that operates faster than a microprocessor.” We do not adopt Optical Devices’ proposal to further characterize further an integrated circuit as “specialized.” We find that proposed modification is superfluous in that our construction describes that the integrated circuit is structured and arranged to achieve a specific function, i.e., manipulation of digital signals and operating faster than a microprocessor.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Optical Devices asserts that one of ordinary skill in the art would have “a Bachelor of Science in Mechanical or Electrical Engineering and at least two years of experience in control systems technology.” PO Resp. 6 (citing Ex. 2008 ¶¶ 9–11) (emphasis added). Based on our consideration of the record, we find that the evidence as a whole supports Toshiba’s description of the level of ordinary skill in the art. Accordingly, we adopt Toshiba’s statement of the ordinary skill in the art.” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“that Toshiba has established by a preponderance of the evidence that Baird inherently discloses a DSP configured to determine a FES and a TES from digital signals received by the SCP. In particular, Toshiba’s primary contention with respect to inherency is that one of ordinary skill in the art would have understood that Baird must determine a FES and TES in order for the SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex. 1006 ¶ 81). However, neither Toshiba nor Toshiba’s declarant, Dr. Zech, provides any explanation why that is true. When asked for an explanation during his deposition, Dr. Zech responded in a manner that relied upon a probability that Baird’s SCP determines FES and TES. For example, the following is an excerpt from Dr. Zech’s deposition: Q Can you explain to me why it is your opinion that it is inherent that a servo control processor in Baird determines a focus error signal and a tracking error signal? A Well, because the way he designed it, it does. And I can’t imagine why somebody, an engineer at Cirrus Logic, would swim against the current and come up with something entirely new. The chip surely would not sell. I know that from pretty broad experience in sales and marketing. Once you tell me optical disk drive -- I’ve explained to you the statistics of it -- 99 percent plus are probably using continuous composite servoing. When you use continuous composite servoing, you need to have a tracking error and a focus error signal. So it’s not much of a leap for me to conclude that that’s what’s going on here. Ex. 2001, 151, 3–20 (emphases added). Dr. Zech’s deposition testimony describes what functions and systems optical disk drives “are probably using” and that “it’s not much of a leap” for him to conclude what is occuring in Baird with respect to whether error signals are determined Id.; See MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (inherency is not to be established by probabilities or possibilities). Moreover, both in his declaration and at the deposition, Dr. Zech bases his opinion regarding that issue on assumptions unsupported by evidence. See Office Patent Trial Practice Guide 77 Fed. Reg. 48, 756, 48,763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. . . . Opinions expressed without disclosing the underlying facts or data may be given little to no weight.”) (citations omitted). Thus, we do not afford Dr. Zech’s unsupported opinions persuasive weight.” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Having considered the arguments and evidence, we are not persuaded that Toshiba has established by a preponderance of the evidence that Baird inherently discloses a DSP configured to determine a FES and a TES from digital signals received by the SCP. In particular, Toshiba’s primary contention with respect to inherency is that one of ordinary skill in the art would have understood that Baird must determine a FES and TES in order for the SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex. 1006 ¶ 81). However, neither Toshiba nor Toshiba’s declarant, Dr. Zech, provides any explanation why that is true. When asked for an explanation during his deposition, Dr. Zech responded in a manner that relied upon a probability that Baird’s SCP determines FES and TES. For example, the following is an excerpt from Dr. Zech’s deposition: Q Can you explain to me why it is your opinion that it is inherent that a servo control processor in Baird determines a focus error signal and a tracking error signal? A Well, because the way he designed it, it does. And I can’t imagine why somebody, an engineer at Cirrus Logic, would swim against the current and come up with something entirely new. The chip surely would not sell. I know that from pretty broad experience in sales and marketing. Once you tell me optical disk drive -- I’ve explained to you the statistics of it -- 99 percent plus are probably using continuous composite servoing. When you use continuous composite servoing, you need to have a tracking error and a focus error signal. So it’s not much of a leap for me to conclude that that’s what’s going on here. Ex. 2001, 151, 3–20 (emphases added). Dr. Zech’s deposition testimony describes what functions and systems optical disk drives “are probably using” and that “it’s not much of a leap” for him to conclude what is occuring in Baird with respect to whether error signals are determined Id.; See MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (inherency is not to be established by probabilities or possibilities). Moreover, both in his declaration and at the deposition, Dr. Zech bases his opinion regarding that issue on assumptions unsupported by evidence. See Office Patent Trial Practice Guide 77 Fed. Reg. 48, 756, 48,763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. . . . Opinions expressed without disclosing the underlying facts or data may be given little to no weight.”) (citations omitted). Thus, we do not afford Dr. Zech’s unsupported opinions persuasive weight.” slip op. at 21
Patent outcomesUS 7,196,979 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,196,979 - Toshiba Corporation v. Optical Devices, LLCNo claims unpatentablePTAB · Mar 9, 2016 · IPR2014-01445 · APJ Erica A Franklin · IPR · Final written decision
Claims 1–10 were not shown unpatentable: Baird did not disclose the required FES and TES determination, and the ST Datasheet was not established as prior art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Ex. 1001, 13:50–61. From this disclosure, we recognize that the Specification suggests that a DSP operates faster than a microprocessor and, in some embodiments, real time digital servo algorithms can be executed on a DSP. Id. at 53–55. The Specification, however, does not expressly define the term “digital signal processor.” We note the competing views of Dr. de Callafon, on behalf of Patent Owner, and Dr. Zech, on behalf of Petitioner. We also note issues regarding the testimony of each declarant. For example, in some respects, Dr. de Callafon bases his proposed construction of a DSP on features that he asserts one of ordinary skill in the art would have understood that “most DSP processors have,” as opposed to features that all DSP processors require. Ex. 2008 ¶ 21(a). Dr. Zech’s deposition testimony describing the design of a DSP, also relied upon by Patent Owner, is unreliable because Dr. Zech testified that he had “no expertise” as to design elements distinguishing a DSP from a general processor. See, e.g., Ex. 2001, 35:12–13, 44:12–14. As we seek to give the term “DSP” its ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, we take into account the Microsoft and IBM dictionary definitions submitted by Patent Owner. We note that each of those dictionaries define a DSP as being designed for “high speed” manipulation of data/digital signals. Ex. 2002; Ex. 2003. Patent Owner, however, has not directed our attention to evidence establishing what “high speed” encompasses. We note also that only one of the submitted dictionary definitions additionally characterizes such digital signal manipulation as “real-time.” Id. at 2003. The Specification, however, discloses that only some embodiments can execute real time digital servo algorithms on a DSP. We determine that Patent Owner has not established persuasively that the broadest reasonable interpretation of a DSP requires “high speed” processing achieving this “real time” feature. Indeed, Patent Owner’s “basic” construction for a DSP does not include a requirement for “real time” processing. See PO Resp. 20 (providing a minimal definition for a DSP). Thus, we are persuaded that that the broadest reasonable intepretation of the term “digital signal processor,” consistent with the Specification, is “an integrated circuit structured and arranged for manipulation of digital signals in accordance with programmed commands, and in a manner that operates faster than a microprocessor.” Patent Owner’s proposal to characterize further an integrated circuit as “specialized” is not well taken. Indeed, we find that proposed modification to be superfluous in that our construction describes that the integrated circuit is structured and arranged to achieve a specific function, i.e., manipulation of digital signals and operating faster than a microprocessor. 2.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner proposes constructions for additional claim phrases without providing any discussion or reference to the Specification in support of those proposed constructions. PO Resp. 12–13. Based on our analysis, we determine that no express claim construction is necessary for any remaining claim term. Thus, we are not persuaded to adopt those proposed constructions.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that one of ordinary skill in the art at the time of the filing of the ’729 patent as having: (1) a Bachelor’s of Science Degree in Electrical Engineering, Mechanical Engineering, Physics or a related field and at least two years of additional experience in control system technology, optical disk servo technology, magnetic disk servo technology, or related technologies, either in industry or research[,] or (2) at least a Master’s of Science Degree in Electrical Engineering, Mechanical Engineering, Physics or a related field with coursework in control system technology, optical disk servo technology, magnetic disk servo technology, or related technologies. Pet. 36–37 (citing Ex. 1006 ¶¶ 65–66) (emphases added). Patent Owner asserts that one of ordinary skill in the art would have “a Bachelor of Science in Mechanical or Electrical Engineering and at least two years of experience in control systems technology.” PO Resp. 5 (citing Ex. 2008 ¶¶ 9–11) (emphasis added). Based on our consideration of the record, we find that the evidence as a whole supports Petitioner’s broader description of the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary skill in the art.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Having considered the arguments and evidence, we are not persuaded that Petitioner has established by a preponderance of the evidence that Baird inherently discloses a DSP configured to determine a FES and a TES from digital signals received by the SCP. In particular, Petitioner’s primary contention with respect to inherency is that one of ordinary skill in the art would understand that Baird must determine a FES and TES in order for the SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex. 1006 ¶ 82). However, neither Petitioner, nor Petitioner’s declarant, Dr. Zech, provides any explanation why that is true. When asked for an explanation during his deposition, Dr. Zech responded in a manner that relied upon a probability that Baird’s SCP determines FES and TES. For example, the following is an excerpt from Dr. Zech’s deposition: Q Can you explain to me why it is your opinion that it is inherent that a servo control processor in Baird determines a focus error signal and a tracking error signal? A Well, because the way he designed it, it does. And I can’t imagine why somebody, an engineer at Cirrus Logic, would swim against the current and 0 come up with something entirely new. The chip 1 surely would not sell. I know that from pretty broad experience in sales and marketing. Once you tell me optical disk drive -- I’ve explained to you the statistics of it -- 99 percent plus are probably using continuous composite servoing. When you use continuous composite servoing, you need to have a tracking error and a focus error signal. So it’s not much of a leap for me to conclude that that’s what’s going on here. Ex. 2001, 151:3–20 (emphases added). Dr. Zech’s deposition testimony describes what functions and systems optical disk drives “are probably using” and that “it’s not much of a leap” for him to conclude what is occuring in Baird with respect to whether error signals are determined Id.; see MEHL/Biophile Int’l. Corp., 192 F.3d at 1365 (inherency is not established by probabilities or possibilities). Moreover, both in his declaration and at the deposition, Dr. Zech bases his opinion regarding that issue on assumptions unsupported by evidence. See Office Patent Trial Practice Guide 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. . . . Opinions expressed without disclosing the underlying facts or data may be given little to no weight.”) (citations omitted). Thus, we do not afford Dr. Zech’s opinions persuasive weight.” slip op. at 20
Patent outcomesUS 7,839,729 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,839,729 - Toshiba Corporation v. Optical Devices, LLCNo claims unpatentablePTAB · Mar 9, 2016 · IPR2014-01447 · APJ James B Arpin · IPR · Final written decision
Claims 1–39 were not shown unpatentable: Baird did not necessarily disclose determining FES and TES, and the ST Datasheet was not established as publicly accessible prior art.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“that Petitioner has established by a preponderance of the evidence that Baird inherently discloses a DSP configured to determine a FES and a TES from digital signals received by the SCP. In particular, Petitioner’s primary contention with respect to inherency is that one of ordinary skill in the art would have understood that Baird must determine a FES and TES in order for the SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex. 1006 ¶ 77). However, neither Petitioner nor Petitioner’s declarant, Dr. Zech, provides any explanation why that is so. When asked for an explanation during his deposition, Dr. Zech responded in a manner that relied upon a probability that Baird’s SCP determines FES and TES. In particular, the following is an excerpt from Dr. Zech’s deposition: Q Can you explain to me why it is your opinion that it is inherent that a servo control processor in Baird determines a focus error signal and a tracking error signal? A Well, because the way he designed it, it does. And I can’t imagine why somebody, an engineer at Cirrus Logic, would swim against the current and 0 come up with something entirely new. The chip 1 surely would not sell. I know that from pretty broad experience in sales and marketing. Once you tell me optical disk drive -- I’ve explained to you the statistics of it -- 99 percent plus are probably using continuous composite servoing. When you use continuous composite servoing, you need to have a tracking error and a focus error signal. So it’s not much of a leap for me to conclude that that’s what’s going on here. Ex. 2001, 151:3–20 (emphases added); see Tr. 100:13–101:2. Dr. Zech’s deposition testimony describes what functions and systems optical disk drives “are probably using” and that “it’s not much of a leap” for him to conclude what is occuring in Baird with respect to whether error signals are determined Ex. 2001, 151:15–18; see MEHL/Biophile Int’l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (inherency is not to be established by probabilities or possibilities). Moreover, both in his declaration and at the deposition, Dr. Zech bases his opinion regarding that issue on assumptions unsupported by evidence. See Office Patent Trial Practice Guide 77 Fed. Reg. 48, 756, 48,763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. . . . Opinions expressed without disclosing the underlying facts or data may be given little to no weight.”) (citing Fed. R. Evid. 705; 37 C.F.R. § 42.65; Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)). Thus, we do not credit Dr. Zech’s unsupported opinions with persuasive weight.” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“As we seek to give the term “digital signal processor” its ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, we take into account the Microsoft and IBM dictionary definitions submitted by Patent Owner. Ex. 2002, 145; Ex. 2003, 198. We note that each of those dictionaries define a DSP as being designed for “high speed” manipulation of data/digital signals. Id. Patent Owner, however, has not directed our attention to evidence establishing what “high speed” encompasses. See Tr. 98:12–23; see also id. at 95:10–96:3 (Petitioner’s argument that speed governed by function). We also note one of the submitted dictionary definitions characterizes “high speed,” such that digital signal manipulation as “real-time.” Ex. 2003, 198. Another dictionary definition simply includes “high speed.” Ex. 2002, 145. However, the Specification discloses that only some embodiments can execute real time digital servo algorithms on a DSP. See Ex. 1001, col. 13, ll. 38–42. We determine that Patent Owner has not established persuasively that the broadest reasonable interpretation of a DSP requires “high speed” processing achieving this “real time” feature. Indeed, Patent Owner’s “basic” construction for a DSP does not include a requirement for “real time” processing. See PO Resp. 16 (providing a minimal definition for a DSP). We are persuaded, however, that the broadest reasonable interpretation of the term “digital signal processor,” consistent with the Specification and the ordinary and customary meaning of the term as understood at the time of the invention by a person of ordinary skill in the art, is “an integrated circuit structured and arranged for manipulation of digital signals in accordance with programmed commands, and in a manner that operates faster than a microprocessor.” We do not adopt Patent Owner’s proposal to characterize further an integrated circuit as “specialized.” We determine that proposed modification is superfluous in that our construction describes that the integrated circuit is structured and arranged to achieve a specific function, i.e., manipulation of digital signals and operation faster than a microprocessor. B.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. PO Resp. 30–31 (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (emphasis added) (citations omitted)). Petitioner argues that, because Baird discloses that the servo control processor performs focus and tracking control loops (Ex. 1003, col. 5 l. 63–col. 6, l. 11), “it is necessarily the case that a focus error and tracking error signal are generated” in order to perform that function (Pet. 42–43). See Ex. 1006 ¶ 77; Tr. 20:21–23:5. According to Petitioner and, its declarant, Dr. Zech, one of ordinary skill in the art would” slip op. at 25
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“qualify as a prior art printed publication under 35 U.S.C. § 102, the reference must be shown to have been “sufficiently accessible to the public interested in the art” prior to the earliest effective filing date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference will be considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008). Whether a reference qualifies as a printed publication is a legal conclusion based on underlying factual determinations. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). Blue Calypso, LLC v. Groupon, Inc., Dkt. Nos. 2015-1391, 2015-1393, 2015- 1394, slip op. at 28–29 (Fed. Cir. Mar. 1, 2016).” slip op. at 38
Patent outcomesUS 8,416,651 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,416,651 - Toshiba Corporation v. Optical Devices, LLCAll claims unpatentablePTAB · Mar 8, 2016 · IPR2014-01443 · APJ Erica A Franklin · IPR · Final written decision
Claims 37, 38, 48, 49, 51–53, 55, 57, 58, 60, 61, 63, 64, 67–69, and 71 are anticipated by Ando; the contingent motion to amend is denied for insufficient written-description support.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“Patent Owner’s arguments notwithstanding, we conclude that the strongest evidence for construing the term “optical gain” comes from the Specification itself which defines the term. As the Federal Circuit has explained, [The claims] are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification . . . . [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. See Phillips v. AWH Corp., 415 F.3d 1303, 1320–21 (Fed. Cir. 2005) (the specification is “the single best guide to the meaning of a disputed term” and “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication”); In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (any broadest reasonable construction must be consistent with the specification, and claim language should be read in” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For this reason, we provide express constructions for only the following terms.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that one of ordinary skill in the art at the time of the filing of the ’729 patent as having either: (1) a Bachelor’s of Science Degree in Physics, Optics, Electrical Engineering, or a related field with coursework in Optics technology, Photonics technology, or related technologies, either in industry, academia, or research, or (2) a Master’s degree in Physics, Optics, Electrical Engineering, or a related field with coursework in Optics or Photonics. Pet. 26–27 (citing Ex. 1008 ¶ 32) (emphasis added). Patent Owner asserts that one of ordinary skill in the art in 1967 would have “held a Bachelor of Science and Master of Science Degrees in either Physics or Electrical Engineering with a focus on optics, and additionally, at least two to three (2-3) years of experience in Physics or Electrical Engineering optics research.” PO Resp. 4 (citing Ex. 2104 ¶ 10) (emphasis added). Based on our consideration of the record, we find that the evidence as a whole supports Petitioner’s broader description of the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary skill in the art.” slip op. at 15
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Contrary to Patent Owner’s assertion, Dr. Leger’s declaration does not confirm that each of the proposed amendments find support in the ’186 application. To begin, the portion of Dr. Leger’s declaration cited by Patent Owner contains a conclusory opinion that is allegedly supported by disclosures in the ’186 application. Ex. 2104 ¶ 134. Dr. Leger, however, does not explain or otherwise justify why one of skill in the art would have understood from those cited portions of the ’186 application that the inventor possessed the claimed subject matter. Further, we agree with Petitioner that Dr. Leger’s testimony on cross-examination undermined his credibility with respect to written description support for the amended claim. In particular, we consider Dr. Leger’s cross-examination testimony regarding detecting radiant flux density and comparing radiant flux density that Petitioner listed: Making a determination “by comparing the radiant flux density of the retroreflected radiant energy to that of a reference in the scanned area” as recited in claims 72, 74 and 83 requires measuring radiant flux density twice and comparing the measured values. ([Ex.]-1009 at 155:20-160:4.) Measuring radiant flux density requires measuring radiant flux through a known area, and dividing the radiant flux by the known area. (Id. at 50:9-51:4.) Without knowing the area (e.g. spot size hitting detector), radiant flux density cannot be measured or determined. (Id. at 53:21-54:1.) Even if the beam completely fills the detector, a utilization” slip op. at 31
Patent outcomesUS RE40,927 unpatentableClaim construction§ 102 anticipationcites Phillips · Graham - Toshiba Corporation v. Optical Devices, LLCAll claims unpatentablePTAB · Mar 8, 2016 · IPR2014-01439 · APJ Glenn J Perry · IPR · Final written decision
Claims 48–53 are unpatentable as anticipated by Ando; the motion to amend with substitute claims 54–59 is denied for insufficient written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our consideration of the record, we find that the evidence as a whole supports Petitioner’s broader description of the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Optical Devices’ arguments notwithstanding, we conclude that the strongest evidence for construing the term “optical gain” comes from the Specification itself which clearly defines the term. [The claims] are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification . . . . [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. See Phillips v. AWH Corp., 415 F.3d 1303, 1320–21 (Fed. Cir. 2005) (the specification is “the single best guide to the meaning of a disputed term” and “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication”); In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (any broadest reasonable construction must be consistent with the specification, and claim language should be read in light of the specification. We give less weight to Optical Devices’ argument that all embodiments should be embraced by the construction. “‘[E]ach claim does not necessarily cover every feature disclosed in the specification. When the claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features.’” Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683,689 (Fed. Cir. 2008) (quoting Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006)). The ’913 patent includes description of a radar system embodiment with respect to Figures 13 and 14. Ex. 1001, 9:34–65. It is described that the radar system is detected by means of the “retroreflection principles” of the invention. However, the term “optical gain” is not used in connection with this embodiment. The term appears in the Specification only in connection with embodiments relying on what has traditionally been referred to as “optical.” WEBSTER’S SEVENTH NEW COLLEGIATE DICTIONARY 592 (1967) (Ex. 3002)3 (the adjective “optic” defined as “of or relating to vision or the eye” and the adjective “optical” defined as “relating to the science of optics” and “relating to vision”).” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Optical Devices’ description of Ando, but not with Optical Devices’ conclusion. We do not read into the “detecting” step of claim 48 a requirement of detecting an optical gain. The ’913 patent invention lies in discerning a retroreflector from its background. The retroreflector provides a brighter spot than does its background because of the concentration of flux caused by the retroreflector that makes it appear brighter. However, that key feature is missing from claim 48. Claim 48 requires “receiving reflected radiation energy with an optical gain after retroreflection of the radiant energy.” However, the “detecting” step that follows simply requires detecting the reflected radiant energy after retroreflection to determine at least one characteristic of the object. Ando does indeed detect reflected radiant energy after retroreflection. It also determines at least one characteristic of the object, namely its contour. Ex. 1007 at Abstract. We “determine that there is no reasoned basis to read into the “detecting” step of claim 48 a requirement of detecting an optical gain. We, therefore, conclude that Ando meets the limitations of claim 48.” slip op. at 20
- Expert testimonyPetitioner expert creditedDecided for patent owner
“Dr. Hesselink opines that the additional limitations of the substitute claims are not taught by the ’913 patent. Ex. 1010 ¶¶ 36–37. We find his testimony to be persuasive. Further, under cross-examination in his deposition Dr. Leger testified that (1) the detectors described in the ’913 patent could not detect radiant flux density because they do not know the size of the spot hitting the detector (Ex. 1009, 50:9–51:4, 53:21–54:1) and measuring radiant flux density cannot be done with detectors that only measure radiant flux like those described in the ‘913 patent (Id. at 82:6–10, 85:18–86:6, 145:14– 146:4, 148:22–25) and (2) the ’913 patent does not describe a detector or utilization means that compares radiant flux density values to determine a change (Id. at 163:20–25, 164:20–24). 4. Conclusions Considering and weighing the priority document references, the” slip op. at 34
Patent outcomesUS RE42,913 unpatentableClaim construction§ 102 anticipationcites Phillips · Graham - PTAB · Mar 8, 2016 · IPR2014-01441 · APJ James B Arpin · IPR · Final written decision
The Board canceled claims 48, 50–53, and 60–69, but denied entry of substitute claims 70–84 for inadequate written-description support.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“(1) cancellation of challenged claims 48, 50–53, and 60–69 of the ’681 patent and (2) entry of substitute claims 70–84. Mot. 1, 25; see supra Section I.D. As the moving party, Patent Owner bears the burden of proof to establish that it is entitled to the relief requested. See 37 C.F.R. § 42.20(c). Entry of proposed amendments is not automatic, but occurs only upon the patent owner having met the requirements of 37 C.F.R. § 42.121 and demonstrated, by a preponderance of the evidence, the patentability of the proposed substitute claims. Nike, 2016 WL 537609, at *3–*5 (“[T]he Board did not err by placing the burden on [Patent Owner] to establish patentability over the prior art of [Patent Owner]’s proposed substitute claims.”); see Idle Free, Case IPR2012-00027, slip op. at 7–8 (Paper 26).” slip op. at 31
- ScopeDecided for patent owner
“A patent owner may not seek to broaden a challenged claim in any respect, in the name of responding to an alleged ground of unpatentability. A proper substitute claim under 37 C.F.R. § 42.121(a)(2)(i) must only narrow the scope of the challenged claim it replaces. Similarly, under 37 C.F.R. § 42.121(a)(2)(ii), a substitute claim may not enlarge the scope of the challenged claim it replaces by eliminating any feature. Idle Free, Case IPR2012-00027, slip op. at 5 (Paper 26). As noted above, in its Motion to Amend, Patent Owner proposes independent claim 70 as a substitute for independent claim 48, independent claim 75 as a substitute for independent claim 60, and independent claim 80 as a substitute for claim 65. Mot. 2–7. Each substitute claim includes all of the limitations of the corresponding challenged claim, for which it is a substitute, and only adds additional limitations. No limitations are removed. In its Opposition, Petitioner does not dispute Patent Owner’s assertion that the proposed substitute claims do not enlarge the scope of the cancelled, challenged claims of the ’681 patent. Opp. 1, 11. The substitute dependent claims are similarly narrowed by the limitations added to the independent claims, from which they depend. Consequently, the proposed substitute claims do not enlarge the scope of the challenged claims.” slip op. at 33
- 112 supportDenied
“partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” In Nichia, “[t]he Board also explained that merely indicating where each claim limitation individually described in the original disclosure may be insufficient to demonstrate support for the claimed subject matter as a whole.” Case IPR2012-00005, slip op. at 4 (Paper 27) (emphasis in original). Moreover, the Board recognized that the proposed substitute claims need not be described “in haec verba” in the original disclosure in order to satisfy the written description requirement. However, should the claim language does not appear in ipsis verbis in the original disclosure, a mere citation to the original disclosure without any explanation as to why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole may be similarly inadequate. Id. (emphasis in original). Whether a patent claim is supported by an adequate written description is a question of fact. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1355 (Fed. Cir. 2010) (en banc).” slip op. at 34
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“strongest evidence for construing the term “optical gain” comes from the Specification itself, which clearly defines the term. [The claims] are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification . . . . [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (citations omitted) (internal quotation marks omitted; emphasis added); In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (any broadest reasonable construction must be consistent with the specification, and claim language should be read in light of the specification). Given the plain language of the claims, in particular the emphasis on “optical”; the testimony of the parties’ declarants, and the clear definition of the Specification, we are not persuaded here by Patent Owner’s argument that all disclosed embodiments should be embraced by our construction. “It is not necessary that each claim read on every embodiment.” Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010); Broadcom Corp.” slip op. at 27
Claim constructioncites Phillips - PTAB · Nov 25, 2015 · IPR2015-01289 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 15, and 21 were anticipated by Perry or obvious over Hochstein and Perry.
RulingsInstitution decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“means-plus-function format. Both parties also agree that the recited function is “detecting an incorrect functioning of the converter or of the semiconductor light source connected thereto” (claim 1) and “detecting a defective converter or semiconductor light source connected thereto” (claim 15). The parties, however, disagree on whether the structure should refer to a Zener diode, or a Zener diode Z60 or Zener diode Z70, specifically. See Prelim. Resp. 19 (“Philips disagrees with [Petitioner’s] construction insofar as it requires a generic zener diode.”). We agree with the parties that the “detection means” is a Zener diode that performs the recited function. But we do not agree, at this time, that the diode must be the Z60 or Z70 diode, arranged as indicted in the drawings of the ’458 patent. Nor do we find that the Zener diode must be arranged to detect minimum and maximum voltages, because the recited function specifically defines the function of the Zener diode and its equivalents. See 35 U.S.C. § 112, ¶ 6 (the structure of a means-plus-function term is construed to “cover the corresponding structure . . . described in the specification and equivalents thereof”) (emphasis added). Therefore, we construe the “detection means” as a Zener diode that performs the recited function, according to the claim language of the appropriate claim.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Second, Petitioner failed to show that a Zener diode (or its equivalent) performs the recited function. We agree with Patent Owner that failure circuit 70 does not contain a Zener diode. Prelim. Resp. 28. We also find that Petitioner did not explain how failure circuit 70 is an equivalent to a Zener diode. Neither the Petition nor the cited passages of the Dr. Tingler’s Declaration allude to a Zener diode or its equivalent in describing the contention that Perry discloses the “detection means” limitation. Accordingly, we determine that Petitioner has failed to show a reasonable likelihood of prevailing in its contention that the challenged claims are unpatentable as anticipated by Perry.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“First, the Petition did not show how the construed claim (as presented in the Petition) renders unpatentable the challenged claims in view of the prior art. See 37 C.F.R. § 42.104 (b)(4). Although the Petitioner proposed a Zener diode as the structure corresponding to the “detection means,” it presented an analysis of the prior art relying on a different position, i.e., that a transistor and a Zener diode are the corresponding structure of the “detection means.” Petitioner does not explain these different positions or how the applied construction of “a transistor and a Zener diode” is supported by the specification. Second, Petitioner failed to show that a Zener diode (or its equivalent) performs the recited function. We agree with Patent Owner that failure circuit 70 does not contain a Zener diode. Prelim. Resp. 28. We also find that Petitioner did not explain how failure circuit 70 is an equivalent to a Zener diode. Neither the Petition nor the cited passages of the Dr. Tingler’s Declaration allude to a Zener diode or its equivalent in describing the contention that Perry discloses the “detection means” limitation.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“claims 1, 15, and 21. Pet. 1735. Petitioner relies exclusively on Perry, however, as disclosing the “detection means.” Pet. 4345. The Petition cites for support the Declaration of Dr. Tingler. Id. (citing Ex. 1005, ¶¶ 119–121). Petitioner’s position with regard to the obviousness ground is the same as its anticipation contention that Perry discloses the “detection means.” Further, the Dr. Tingler Declaration passages relied upon for the “detection means” in the obviousness ground repeat the same analysis provided for the anticipation ground. Patent Owner has persuaded us that Petitioner’s obviousness contention relies on the same evidence of “detection means” proffered with respect to the anticipation ground. We determined above that Petitioner did not show that Perry discloses a “detection means.” Further, we find that Petitioner has not shown that Perry teaches or suggests the “detection means,” as we have construed the term. Consequently, we determine that Petitioner has failed to show a reasonable likelihood that it will prevail in its contention that the challenged claims are unpatentable as obvious over the combination of Hochstein and Perry.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,147,458 - Ace Bed Co., Ltd. v. Sealy Technology LLCAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,404,223
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.