• Zepp Labs, Inc. v. Blast Motion, Inc.Institution denied
  PTAB · Aug 29, 2016 · IPR2016-00672 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4-7, 9, 11, 14-16, and 19 were unpatentable over the asserted § 103 grounds.

  RulingsInstitution decision

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

    “inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, we determine that the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in showing that claims 1, 47, 9, 11, 1416, and 19 are unpatentable.” slip op. at 2

  • BurdenInstitution denied

    “artisan would have had reason to modify Mahajan’s microcontroller such that these functions would be performed by the microcontroller. Petitioner argues that a person of ordinary skill would have been able to program these functions in either the microcontroller of Mahajan’s iClub or the mobile device. See, e.g., Pet. 28. In support, Petitioner contends “whether specific functionality is implemented in the software running on the iClub or software running on the mobile device is a matter of design choice.” Pet. 2728 (citing Ex. 1003 ¶ 123, Ex. 1005 ¶ 62). The argument that implementing the software in the iClub would be a matter of design choice is conclusory, and lacks sufficient factual support. See Prelim. Resp. 2627. Although the Petition mentions power consumption, cost, and speed as possible considerations affecting the purported design choice, the Petition does not explain sufficiently how these factors affect or motivated the alleged design choice advanced by Petitioner. Cutsforth, Inc. v. Motivepower, Inc., No. 20151316, slip. Op. 78 (Fed. Cir. Jan. 22, 2016) (“Merely stating that a particular placement of an element is a design choice does not make it obvious. The Board must offer a reason for why a person of ordinary skill in the art would have made the specific design choice” alleged by Petitioner.).” slip op. at 13

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

    “under the broadest reasonable interpretation standard, the proper construction includes ‘data that comprises sensor values.’” Pet. 8 (citing Ex. 1003 ¶ 47). Patent Owner disagrees that “said data” is indefinite, and instead asserts that “said data” should be construed as “data that comprises sensor values.” Prelim. Rep. 6. Aside from the indefiniteness issue, Petitioner and Patent Owner appear to agree as to the proper construction of “said data.” That would appear to weigh in favor of Patent Owner’s position that “said data” is not indefinite. Notwithstanding the apparent disagreement concerning this term, we do not opine further on this issue at this time, as construction of the term is not necessary to any determination made herein. 2. Other Claim Terms We determine that no express construction of any other claim terms is necessary.” slip op. at 7

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

    “is deficient in articulating a reasonable reason to combine the teachings of Mahajan, Edis, and Su. See Prelim. Resp. 35–36. Specifically, Petitioner has not shown sufficiently why a skilled artisan would have modified Mahajan to incorporate the recited functions, allegedly taught by Edis and/or Su. For example, Petitioner asserts that “[u]sing thresholding techniques of Edis and Su within the microcontroller of Mahajan, to for example distinguish ‘real swing versus your warm up’ motion, would have been obvious because thresholding sensed data against pre-specified values is common to microprocessor controller DAS.” Pet. 30 (citing Ex. 1003 ¶ 127). As another example, Petitioner baldly states that for “signifying a prospective event,” “it would have been obvious to a person of ordinary skill at the time of the invention to combine Edis with Mahajan, for example, as the way to distinguish a real swing from warm up motion, as is used for signifying a prospective event.” Pet. 32. Similarly, Petitioner states that the “false-positive detection methodology of Su and the variable detection strategy of Edis could have been obviously programmed in the microcontroller of Mahajan.” Pet. 34. Stating only that the functions “could have been obviously programmed” or that the combinations would yield the claim limitation is insufficient rationale. The Petition fatally omits the express articulation of a reason why a person of ordinary skill in the art would have combined the teachings as Petitioner asserts. See KSR Int’l Co., v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions”). The omission of a rationale is particularly troublesome in light of Patent Owner’s argument that there is a lack of showing of why it would have been obvious to modify Mahajan’s teachings “so that its microcontroller—with its limited resources and processing power—was responsible for swing identification, rather than the receiving computer.” Prelim. Resp. 27.9 And Petitioner’s reliance on Mr. Nesbit’s 9 We also are persuaded by Patent Owner’s arguments, and the proffered analysis, regarding the deficiencies in the portions Dr. Nesbit’s Declaration identified by Patent Owner, as they amount to conclusory opinions of a rationale for the alleged combinations and lacking factual support or objective evidence supporting those opinions. Prelim. Resp. 2729. Declaration is unavailing as the Declaration repeats the conclusory statement included in the Petition with no further rationale or explanation.” slip op. at 16

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,903,521
• Black & Decker (U.S.) Inc. / Stanley Black & Decker, Inc. v. Christy, Inc.All claims unpatentable
  PTAB · Jun 17, 2016 · IPR2015-00468 · APJ Donna M Praiss · IPR · Final written decision

  Claims 1 and 10 are anticipated by Hayden; claims 1–18 are unpatentable on the instituted anticipation and obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “machines” and “[t]he ordinary artisan in the field would typically have a bachelor’s level degree in mechanical engineering (or gained such knowledge by equivalent experience), and experience developing vacuum machines that filter air.” Pet. 26 (citing Ex. 1001, 1:6–9; Ex. 1013 ¶ 8). Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art or provide an alternative definition in response. For purposes of this Decision, we consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). To the extent that we need to consider the parties’ positions on the issue, we adopt Petitioner’s position.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for patent owner

    “During prosecution, Patent Owner distinguished a pulse back cleaning system for multiple reasons, including the reason that the claimed invention “does not flip-flop between vacuuming and blowing.” File Wrapper of U.S. Patent No. 7,082,640 B2, Ex. 1002, 36. Patent Owner also distinguished other prior art for the reason that it “cannot function without a second centrifugal fan and associated components and limitation (e.g., transverse duct and array of parallel ducts)” whereas the invention was described as “valve 31 and filter 21 are not connected to any other fan, compressor or vacuum source.” Id. at 59. We agree with the district court that the intrinsic evidence does not present a clear and unmistakable disavowal of the source of ambient air. Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (the standard for disavowal of claim scope is “exacting”). Figures 2–5 of the ’640 patent show three ambient air ducts 36 under cover 25. Ex. 1001, Figs. 2–5, 3:1–9, 4:22–27, 5:15–17. As the district court found, “[i]t is not clear from the drawing where that duct terminates, and the detailed description states only that ‘[t]he ambient air duct 36 extends from the ambient air port 31b into the source of ambient air 16.’” Ex. 2004, 12. Similarly, the district court found that the statements in the prosecution history regarding the ambient air also “do not exclude the possibility that ‘ambient air’ could come from inside––or both inside and outside––the vacuum head during backflushing.” Id. at 13. Moreover, the distinctions over the prior art included “differences unrelated to the source of the air used for backflushing.” Id. Based on the complete trial record, including the prosecution history, we agree with the district court’s construction of “air surrounding the canister” as the broadest reasonable interpretation of the term “ambient air.” See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (“The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.”). Accordingly, we maintain our construction of “ambient air” to mean “air surrounding the canister.”” slip op. at 11

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

    “(2d ed. 1951) (Ex. 3001). The canister component of the vacuum cleaning machine described in the ’640 patent holds filters and particles filtered by the filters that may settle to the bottom of the canister. Ex. 1001, 3:30–31, 4:50–54. At oral hearing, Patent Owner stated “I believe we chose the word cannister because we are talking about a small unit,” but added “[a]nd I’m not saying this is a distinction.” Tr. 42:12–13, 16. According to Patent Owner, the term is “a common word for this now” as opposed to being uniquely defined by the Specification. Id. at 42:24–25. Patent Owner summarized the generic manner in which the term is used in the ’640 patent as: “We are saying, okay, it doesn’t matter. It’s cannister, a cabinet, a compartment. They are all some form of container.” Tr. 42:25–43:2. Petitioner implicitly construes this term as a “chamber” and not limited to a particular configuration. Pet. Reply 2–5. Petitioner asserts that there is no disavowal in the Specification of configurations for the canister. Id. at 3. In further support of its position, Petitioner quotes the testimony of Mr. Grant describing the prior art wherein he states “[t]he canister of the vacuum is the part where the filters reside and dust is separated from the incoming vacuumed air and collected.” Id. (quoting Ex. 1013 ¶ 10). Based on the entire record, we determine that the ordinary and customary meaning of the term “canister,” as would be understood by one of ordinary skill in the art in the context of the entire disclosure, is “a container.” See Translogic, 504 F.3d at 1257.” slip op. at 13

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

    “We are not persuaded by Patent Owner’s arguments because neither the ’640 patent claims nor the teachings of Hayden preclude reading the term “canister,” as construed herein, on Hayden’s “dirty air chamber below plate 8 in which the filters 7 are located.” See Pet. 26 (citing Ex. 1003, Fig. 1). The ’640 patent itself describes such an embodiment in which the canister component is located under a plate. Ex. 1001, 4:59–61 (“A central housing 44 is preferably concentrically located on top of the circular plate 19 covering the cannister 10.”). In other words, Patent Owner’s plate 19 covers canister 10 just as Hayden’s plate 8 covers Hayden’s canister. As such, we find that Hayden discloses “at least two valves disposed outside of said cannister” and “three valves disposed outside of said cannister” as recited in claims 1 and 10, respectively. We also find no limitation in the ’640 patent claims that would preclude a common chamber between the valves and the vacuum source. No specific connective structure between the valves and the vacuum source is required by “each said valve being in pneumatic communication between said vacuum source and a corresponding one of each of said outlet ports and permitting air to be drawn by said vacuum source from said inlet port simultaneously through corresponding ones of said filters,” as recited in claims 1 and 10. Referring to Figure 1 of Hayden, correspondence exists between each valve 11, outlet port 9, and filter 7. Ex. 1003, Fig. 1, 3:40–45. In addition, there is pneumatic communication between these elements of Hayden due to an “air flow path between the dirty air chamber and clean air chamber 10” in which valve chamber 31 lies. Id. at 4:26–31. Furthermore, independent claims 1 and 10 each use the term “comprising,” signaling an open-ended structure, allowing for the inclusion of a common chamber.” slip op. at 20

  Patent outcomesUS 7,082,640 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,082,640
• Black & Decker (U.S.) Inc. / Stanley Black & Decker, Inc. v. Christy, Inc.All claims unpatentable
  PTAB · Jun 17, 2016 · IPR2015-00472 · APJ Donna M Praiss · IPR · Final written decision

  Claims 1 and 10 are anticipated by Eiben; claims 1, 4–6, 10, and 13–15 are obvious over Eiben and Wellan; claims 7–9 and 16–18 are obvious over Eiben, DE219, and Howeth.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “knowledge by equivalent experience), and experience developing vacuum machines that filter air.” Pet. 25 (citing Ex. 1001, 1:6–9; Ex. 1010 ¶ 8). Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art or provide an alternative definition in response. However, Patent Owner characterizes the field of art for the invention as “the art of portable vacuums” while characterizing the field of art for Eiben as “bag house art.” PO Resp. 29. For purposes of this Decision, we consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). To the extent that we need to consider the parties’ positions on the issue, we adopt Petitioner’s position. We find Patent Owner does not indicate why the field of art should be limited to portable vacuums other than by reference to casters 28 in Figure 2 of the ’640 patent which are said to “allow the cannister 10 to be freely rolled in any direction.” Id. at 28 (citing Ex. 1001, Fig. 2, 4:22–23).4 We also find the ’640 patent describes the invention as broadly relating “generally to vacuum cleaning equipment and more particularly concerns a vacuum cleaner having filters backflushed with ambient air.” Ex. 1001, 1:6– 9; Pet. 25.” slip op. at 7

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

    “The district court found the meaning of “ambient air” was not limited by clear and unmistakable evidence to either (1) air surrounding the outside of the vacuum cleaning machine or (2) air that is not forced or compressed. Opinion and Order, Ex. 2004, 6–14. In our Decision on Institution, we agreed with the district court’s construction and analysis, which is broader than Petitioner’s proposed construction, and found it consistent with the Specification. Dec. on Inst. 7–8. Specifically, Figure 2 of the ’640 patent shows cover 25 “seated on” plate 19 to protect the valves, the operating mechanisms, the controller, and the vacuum source, which are all “mounted above” plate 19. Ex. 1001, 4:22–25. Thus, ambient air coming through the valves may come from the vacuum head under the cover; it need not come exclusively from outside the vacuum machine as Petitioner asserts. There is no evidence in the record whether the ambient air under the cover necessarily would have a particular pressure, including whether it is under atmospheric pressure. See Tr. 43:13–44:2 (Patent Owner describing ambient air as being “in comparison to what is inside of the cannister”). During prosecution, Patent Owner distinguished a pulse back cleaning system for multiple reasons, including the reason that the claimed invention “does not flip-flop between vacuuming and blowing.” File Wrapper of U.S. Patent No. 7,082,640 B2, Ex. 1002, 36. Patent Owner also distinguished other prior art for the reason that it “cannot function without a second centrifugal fan and associated components and limitation (e.g., transverse duct and array of parallel ducts)” whereas the invention was described as “valve 31 and filter 21 are not connected to any other fan, compressor or vacuum source.” Id. at 59. We agree with the district court that the intrinsic evidence does not present a clear and unmistakable disavowal of the source of ambient air. Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (the standard for disavowal of claim scope is “exacting”). Figures 2–5 of the ’640 patent show three ambient air ducts 36 under cover 25. Ex. 1001, Figs. 2–5, 3:1–9, 4:22–27, 5:15–17. As the district court found, “[i]t is not clear from the drawing where that duct terminates, and the detailed description states only that ‘[t]he ambient air duct 36 extends from the ambient air port 31b into the source of ambient air 16.’” Ex. 2004, 12. Similarly, the district court found that the statements in the prosecution history regarding the ambient air also “do not exclude the possibility that ‘ambient air’ could come from inside––or both inside and outside––the vacuum head during backflushing.” Id. at 13. Moreover, the distinctions over the prior art included “differences unrelated to the source of the air used for backflushing.” Id. Based on the complete trial record, including the prosecution history, we agree with the district court’s construction of “air surrounding the canister” as the broadest reasonable interpretation of the term “ambient air.” See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (“The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.”). Accordingly, we maintain our construction of “ambient air” to mean “air surrounding the canister.”” slip op. at 10

  • Expert testimonyPatent owner expert discountedDecided for patent owner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We find Patent Owner’s arguments unpersuasive because the ’640 patent claims are sufficiently broad so as to encompass the distinctions drawn between the figures in the ’640 patent and Eiben. While claims 1 and 10 read on Patent Owner’s embodiment shown in Figures 1–5, the claims also read on Eiben’s embodiment shown in Figures 1 and 3–6. See Ex. 1001, 3:28–4:56 (describing the vacuum shown in Figure 1); Ex. 1003, 3:67–4:57 (describing the vacuum shown in Figures 1, 3–6). Based on the evidence presented, we find nothing in the claim language that precludes Eiben’s “compartment units 10, 12, 14, and 16 [that] are assembled together and mounted atop a hopper 24,” from being a canister with inlet port 28 and at least two outlet ports 30 as required by claims 1 and 10. Pet. 26; id. at 29– 31. Claims 1 and 10 both signal an open-ended structure with the transition term “comprising,” allowing for (1) the inclusion of walls or compartments within the canister, including a hopper compartment at the bottom, and (2) inlet port 28 to include ducts 27. Similarly, we find nothing in claims 1 and 10 that precludes a bag filter as used in Eiben, because the claims do not recite a dirty air/clean air arrangement relative to the outside/inside of the filters. Patent Owner’s arguments regarding the ’640 patent having the dirty air/clean air on the outside/inside of the filters are not tied to claim limitations. See PO Resp. 18–27; Pet. Reply 6–8. Claims 1 and 10 merely require that air be drawn “through” the filters. Ex. 1001, 8:13, 17, 9:2, 5. Eiben describes air passing through the walls of its filter bags. Ex. 1003, 4:30–31 (“the air passes transversely through the bags’ walls”), 4:48 (“reverse air flow through the bags”). Therefore, the type of filter used in the ’640 patent is not a patentable difference over Eiben.” slip op. at 19

  Patent outcomesUS 7,082,640 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,082,640
• American Simmental Association v. Leachman Cattle Of Colorado, LLCAll claims unpatentable
  PTAB · Jun 13, 2016 · PGR2015-00005 · APJ Michael W Kim · PGR · Final written decision

  Claims 1–20 are held unpatentable under § 101; claims 1–4, 8–12, and 14–19 are also obvious over Wang alone. The motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Ultimately, we discern that Petitioner and Patent Owner are not very far apart. On education, we agree with Petitioner that evaluating genetic quality is sufficiently complex that it would require, at a minimum, a Master’s Degree in the field. On work experience, we agree with both parties that several years of experience in the field is necessary, with the optimum for a Master’s Degree being five years, and commensurately less for an individual possessing a PhD. We agree with Patent Owner that some understanding of economics and software is required, but agree with Petitioner that such understanding need only be a basic one that can be readily acquired through work experience in the field, with no formal education in that field being necessary. Finally, we disagree with Patent Owner that formal training or experience specific to the feeder calf market needs to be addressed separately, as, for the reasons set forth below, we are unpersuaded that evaluating feeder calves as a subgroup differs materially from evaluation of cattle overall, and that one of ordinary skill in evaluating of genetic quality of cattle generally would not have been familiar with feeder calves specifically, especially when the overwhelming goal of cattle production is to sell beef, of which the primary type sold is feeder calves. Perhaps more importantly, the significance of the level of ordinary skill in the art here is the role it plays in an obviousness analysis, and Patent Owner has not explained in a sufficiently persuasive manner how the disparate definitions impact dispositively the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Accordingly, unless expressly indicated otherwise, we determine that a specific finding on the level of skill in the art is not required, because the prior art itself reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 6

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

    “3. “genetic merit scorecard” Each of independent claims 1, 8, and 14 recite “genetic merit scorecard.” Petitioner asserts that “genetic merit scorecard” should be construed as “visual display of genetic merit information.” Pet. 17–18 (citing Ex. 1001). Patent Owner does not dispute this construction. PO Resp. 23–26. After considering all evidence and assertions concerning this claim construction, we agree with Petitioner that “genetic merit scorecard” should be construed as “visual display of genetic merit information.”” slip op. at 11

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

    “Owner are rooted sufficiently in the express claim language, and in any case, are peripheral to the above-identified fundamental concept, in that while they may represent variations of the fundamental concept, we are unpersuaded that they alter materially the fundamental concept itself. For example, being “dynamic,” while perhaps placing some temporal aspects on “determining an animal’s relative economic value based on its genetic and physical traits,” does not alter the fact that independent claim 1 is fundamentally directed to “determining an animal’s relative economic value based on its genetic and physical traits.” A similar analysis is applicable to “sale group of feeder calves,” “disparate sources,” and “transforming.” The Specification further supports Petitioner’s argument. The “Field of the Invention” section set forth in the ’557 patent reads as follows: Embodiments of the present invention relate generally to the field of genetic quality and relative market value of livestock. More specifically, embodiments of the present invention facilitate an owner or potential buyer of one or more sale groups of livestock to evaluate the relative market value of the sale groups based on predictions derived from genetic merit estimates of the herd. Ex. 1001, 1:23–29. The “Description of Related Art” section that follows delves heavily into problems associated with determining what the actual value of the livestock is, and more specifically what premium or discount the livestock should command based on these desired genetic merits. Ex. 1001, 1:47–49. The first three sentences of the “Summary” section then read as follows: The Applicants recognize the importance of determining relative market value of a sale group or a group of animals offered for sale from a livestock operation. Various embodiments of methods and apparatus for determining relative market value of a sale group are provided herein. Exemplary embodiments of the present invention include an online genetic merit scorecard system. Ex. 1001, 2:6–12. Based on the above cited portions of the ’557 patent, we determine that the Specification supports heavily Petitioner’s proposed fundamental concept. The unambiguous disclosure in the Specification as to the nature of the invention indicates to us that Petitioner has not over-generalized here.” slip op. at 16

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

    “PO Resp. 66. However, we are unpersuaded that (a) valuing a group of animals is “significantly more” than valuing a single animal, (b) tailoring a price to a user is “significantly more,” and (c) comparison shopping is “significantly more,” whether taken in succession or as a whole. Indeed, these requirements appear to be routine parts of commerce involving the fundamental concept of “determining an animal’s relative economic value based on its genetic and physical traits.” Patent Owner asserts additionally that the claimed invention does not merely recite the alleged abstract idea and say “apply it” on computer components, because the recited computer components are an integral part of rooting the invention in computer technology. Specifically, Patent Owner asserts that the claimed invention involves novel technical software that “transforms genetic and performance information associated with the sale group into a dynamically-generated scorecard available to users on-demand.” PO Resp. 67. We disagree, as the recitation of software in the claim, if any at all, is at a highly abstract level, in that the claims recite no more than taking in and outputting data, with no detail as to how that data is manipulated between input and output.5 Absent such detail, we are unpersuaded that the claims are reciting any more than “applying to software” the fundamental concept of “determining an animal’s relative economic value based on its genetic and physical traits,” which is not “significantly more.” As for “dynamically-generated scorecard available to users on-demand,” our analysis of the same in the abstract idea prong of Alice is equally applicable here, namely, that 5 “MR. COHN: Your Honor, the little calculator that’s in Windows is a dynamic calculator. It’s been there for 25, 30 years. You pull it up. You type in five times two and you hit equals and it spits the answer back to you on demand right there.” Tr. 85:24–86:2. we are unpersuaded that “dynamic” and “on-demand” are sufficiently related to the claims. Patent Owner cites DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) in support of their position, but it is precisely because of the instructive nature of the problem-solution approach in that case that we arrive at our conclusion here. Specifically, DDR Holdings held that the “problem of retaining website visitors” involves a “claimed solution [that] is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR Holdings, LLC, 773 F.3d at 1257. Such is not the case here, where the problem, as clearly articulated above in the aforementioned portions of the Specification, is “determining an animal’s relative economic value based on its genetic and physical traits.” We are unpersuaded that this problem, or its solution, involves or requires anything computer-related. 4. Conclusion For the foregoing reasons, we conclude that Petitioner has shown, by a” slip op. at 20

  Patent outcomesUS 8,725,557 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo
  Patents in suitUS 8,725,557
• American Simmental Association v. Leachman Cattle Of Colorado, LLCAll claims unpatentable
  PTAB · Jun 13, 2016 · PGR2015-00003 · APJ Michael W Kim · PGR · Final written decision

  Claims 1–20 are unpatentable under § 101; the obviousness grounds were not proven because the Angus system was not established as prior art and Wang alone did not disclose the online scorecard.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Ultimately, we discern that Petitioner and Patent Owner are not very far apart. On education, we agree with Petitioner that evaluating genetic quality is sufficiently complex that it would require, at a minimum, a Master’s Degree in the field. On work experience, we agree with both parties that several years of experience in the field is necessary, with the optimum for a Master’s Degree being five years, and commensurately less for an individual possessing a PhD. We agree with Patent Owner that some understanding of economics and software is required, but agree with Petitioner that such understanding need only be a basic one that can be readily acquired through work experience in the field, with no formal education in that field being necessary. Finally, we disagree with Patent Owner that formal training or experience specific to the feeder calf market needs to be addressed separately, as, for the reasons set forth below, we are unpersuaded that evaluating feeder calves as a subgroup differs materially from evaluation of cattle overall, and that one of ordinary skill in evaluating of genetic quality of cattle generally would not have been familiar with feeder calves specifically, especially when the overwhelming goal of cattle production is to sell beef, of which the primary type sold is feeder calves.” slip op. at 7

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

    “implicitly asserting that “market value of any other market group” only makes sense if it is the “national market average value.” PO Resp. 55–56. We disagree. The claim limitation itself reads “relative market value,” and does not include either the “national” or “average,” and the aforementioned portion of the ’888 7 Divorced from surrounding claim language, we construe “relative market value” as “the market value of something as compared to the market value of any other market group.” patent discloses expressly that “relative market value may be expressed in various ways,” providing a non-limiting example of at least “the market value of a sale group that represents the average progeny of all registered bulls in the country or market region.” Also through their assertions concerning the prior art, Patent Owner appears to be implicitly asserting that by including the phrase “any other market group,” any values used to calculate the “relative market value” must be of a format that is standardized to allow comparisons across all other market groups, for example, across different breeds. PO Resp. 52–56. We disagree. Neither the express claim language nor the aforementioned portion of the ’888 patent requires that any values used to calculate the recited “relative market value,” or even the “relative market value” itself, be comparable across all market groups. Certainly calculating a value of one breed that is of a format that allows direct comparisons to a value of any other breed would appear to be more useful. The claim language itself, however, does not require such a result. For example, even if any values are only applicable to one specific breed, so long as there are two different market groups of that specific breed that are compared using that format, the value resulting from that comparison would still meet the recited “relative market value.” To eliminate any such confusion, we modify the aforementioned construction of “relative market value,” in the context of the aforementioned surrounding claim language, as follows: “the market value of a sale group as compared to the market value of at least one other market group.”” slip op. at 9

  • BurdenNot shown unpatentable

    “determine that its corroborative value is compromised by a variety of factors, to the point where we determine that it does not provide sufficient corroboration for Ms. Kurtz’s testimony that the document and the information it contains was available online at least as early as June 8, 2011. As an initial matter, we find that Exhibit 1014 was generated after every possible priority date. Ex. 2033, 57:7–58:6 (Ms. Kurtz testified, concerning Exhibit 1014, that “[i]t was actually printed last year is when I sent those to counsel.”) We find further that in attempting to make sense of the dates of the various documents, Ms. Kurtz had to consult the “IS department,” which also weighs against her testimony that she was personally aware that “[t]he revision date is the date on which Angus, through AngusSource, began providing electronic marketing documents to the public which have the same form, layout, and data as shown in Angus 2.” Ex. 1011 ¶ 6; Ex. 2033, 27:14– 28:2. We find additionally that changes were made at various times to the website on which Exhibit 1014 resides, and there is no definitive evidence presented in this proceeding as to which changes were made at which time. Ex. 2033, 28:8–31:6, 45:14–17, 46:1–47:7. To be sure, we find Ms. Kurtz to be credible, in that after reviewing all of the deposition testimony, we find that she was honest and sincere in trying to provide the most accurate information possible. The problem, however, is that her statement in the Declaration at paragraph 6, that she was personally aware that Exhibit 1014 existed in its exact form prior to every effective date, is in conflict with her testimony on cross-examination that she had to consult the IS department concerning the mechanics of the dates printed in Exhibit 1014, and that the format of Exhibit 1014 may have been altered between every possible priority date and the time that Exhibit 1014 was printed. Accordingly, given the weak corroborative value of Exhibit 1013, and the now-discounted corroborative value of Exhibit 1014, we conclude that Exhibits 1013 and 1014, collectively, do not constitute sufficient evidence to corroborate the Declaration of Ms. Kurtz that the Angus system is prior art.” slip op. at 20

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

    “Wang and the Angus system as corresponding to the recited “online genetic merit scorecard.” Pet. 56–58, 61–65, 68–71; see also Pet. Reply 20–21. As set forth above, we determined that Petitioner has not met its burden of showing that the Angus system is prior art. Accordingly, Petitioner must rely on Wang alone for the “online genetic merit scorecard.” Aside from the Angus system, Petitioner relies on paragraphs 11, 14, and 72 of Wang (Ex. 1004) for disclosing an “online genetic merit scorecard.” Pet. 57–58. We have considered paragraphs 11, 14, and 72 of Wang, and find that while they do provide disclosure that corresponds properly to “genetic merit scorecard,” construed above as “visual display of genetic merit information,” Petitioner has not pointed to any disclosure or provided any analysis, unrelated to the Angus system, concerning the “online” aspect of “online genetic merit scorecard.” To be sure, at a high level, the fact that the “genetic merit scorecard” may be “online” seems like a relatively minor distinction, especially given that the ’888 patent has an earliest possible priority date of April 13, 2013. Furthermore, it is unclear how much weight should be given to “online,” in that it is possible that any computer output, in a sense, can be considered capable of being placed “online.” Additionally, Wang does provide some disclosure that a computer is connected to databases, and that the computer is used to “generate the output rankings and individual animal estimated breeding values” (Ex. 1004 ¶ 11, 14), which could, perhaps, be enough to be considered “online.” Petitioner, however, has not advanced any of the above assertions, nor provided evidence in support thereof. See 35 U.S.C. § 326(e) (“In a post-grant review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”) Absent such assertions or evidence, we determine that Petitioner has not met its burden of showing, by a preponderance of the evidence, that the “online” aspect of “online genetic merit scorecard,” as recited in each of independent claims 1, 9, and 16, is obvious in view of Wang alone.10” slip op. at 22

  Patent outcomesUS 8,660,888 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Phillips
  Patents in suitUS 8,660,888
• Jackel International Limited / Mayborn USA, Inc. v. Admar International, Inc.Rehearing denied
  PTAB · May 20, 2016 · IPR2015-00979 · APJ Hyun J Jung · IPR · Rehearing

  The Board denied rehearing, leaving claims 6 and 13 uninstituted over Raymond and Mutti and over Mutti, Kano, and Suffa.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The applicable standard for a request for rehearing of an institution decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. For the reasons stated below, Petitioners’ request is denied.” slip op. at 2

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

    “regarding “cap” and “valve holder” for claims 6 and 13. Reh’g Req. 1–5 (citing Pet. 17–19, 28). Petitioners explain that the Petition asserted clamping ring 27, body 16, nipple pieces 15, and upper membrane 7 combined are the required “cap” of claim 1. Id. at 2–4 (discussing Pet. 17– 19). Petitioners also explain that the Petition asserted clamping ring 27 meets the “valve holder” of dependent claims 6 and 13 “because the cap in Raymond is much more than clamping ring 27” and clamping ring 27 “is separable from the other parts of the claimed ‘cap.’” Id. at 5 (discussing Pet. 28). Petitioners further argue that the claims, specification, and case law do not require the recited valve holder and cap to be separate structures. Id. at 6–7, 12–13 (citing Ex. 1001, 6:38–41; Ex. 1013; Dec. 16).” slip op. at 3

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

    “on Mutti, Kano, and Suffa was also misapprehended and should have been instituted. Reh’g Req. 2, 14–15. Petitioners acknowledge that they rely on Figure 6 for claim 1 and rely on Figures 1–5, which depict another embodiment, for claim 6 which depends from claim 1. Id. Petitioners, however, argue that the “motivation to combine the teachings of Mutti in one embodiment with the teachings of Mutti in another embodiment is entirely obvious—it’s the same reference.” Id. at 15. Petitioners do not identify where the asserted motivation was presented in their Petition. See 37 C.F.R. § 42.71(d). Even if the Petition included this particular motivation, it does not address the deficiency identified in the Decision. Citing to two embodiments in the same reference does not explain “how and why stop ring 23 of Figure 1 . . . , which holds membrane 22 in position . . . , would be combined with outer part 14b of Figure 6 . . . , which includes inner part/body 14a . . . that also holds membrane 22 in place . . . . In other words, inner part/body 14a, which is an integral part of outer part 14b, already holds membrane 22 in place.” Dec. 21. The Petition does not explain why one of ordinary skill in the art would be motivated to add stop ring 23 of Figure 1 to outer part 14b of Figure 6, when Mutti teaches each can hold a membrane in place. In particular, the Petition does not explain why both would be required when Mutti teaches that one is adequate. Without such an explanation in the Petition, we are not persuaded to modify our Decision regarding claims 6 and 13 as rendered obvious by Mutti, Kano, and Suffa.” slip op. at 4

  Claim construction§ 103 obviousness
  Patents in suitUS 8,695,841
• Arctic Cat, Inc. v. Polaris Industries, Inc.Rehearing granted
  PTAB · May 3, 2016 · IPR2014-01427 · APJ Michael W Kim · IPR · Rehearing

  The Board granted rehearing only as to the assertions it addressed and denied the rest, finding no rehearing basis for the unbriefed “extending between” issue.

  RulingsRehearing decision

  • RehearingRehearing, grantedRehearing, deniedGranted in part

    “A request for rehearing can only point out that which the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Moreover, as the moving party, the burden of persuasion falls on Patent Owner. 37 C.F.R. § 42.20(c). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and where each matter was previously addressed in a motion, an opposition, or a reply. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).” slip op. at 2

  • Strike new argumentNew argument disregardedDecided for petitioner

    “proceeding that could plausibly be considered as being directed to “extending between.” Substantively, the only place in this proceeding where arguments and evidence were asserted concerning “extending between” was in the oral hearing transcript, which Patent Owner correctly identifies as being directed to both proceedings, and, thus, the contents of which are equally applicable to both proceedings. Paper 54, 3:18–23. As set forth expressly in our Office Patent Trial Practice Guide, however, “[n]o new evidence or arguments may be presented at the oral argument.” 77 Fed. Reg. at 48,768. See also Dell Inc. v. Acceleron, LLC, 2016 WL 1019075, *6, *7 (Fed. Cir. Mar. 15, 2016) (“the Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”). Accordingly, when the oral hearing transcript is excluded from consideration, there is no argument or asserted evidence concerning “extending between” in this proceeding. Of course, there is asserted evidence, along with arguments providing context to that evidence, in the substantive papers for the other proceeding. In asserting that the Board should consider those arguments, Patent Owner asserts that claim constructions should be consistent across proceedings. We would agree with Patent Owner if the evidence and arguments presented in the two proceedings were consistent. Such is not the case here. Indeed, even if we were to import some arguments from the other proceeding, they would be directed solely to a proper construction of “extending between,” with no explanation of the relevance of “extending between” to the combination of Denney and Furuhashi in the instant proceeding, as that combination was not at issue in the other proceeding.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached

    “claim construction of “extending between” in a Final Written Decision of related proceeding IPR2014-01428 (Ex. 2095, “other proceeding”). Specifically, Patent Owner asserts that if that claim construction of “extending between” from the other proceeding were applied in the instant proceeding, the record would show that the prior art asserted in the instant proceeding is missing a claim element recited in every challenged independent claim, and, thus, the Board’s determination that independent claims are unpatentable cannot be maintained. When considered in the confines of a request for rehearing, this is a straightforward case. By Patent Owner’s own acknowledgment, no proposed claim construction concerning “extending between,” much less any assertion concerning its relevance to proffered prior art, was considered in the Final Written Decision for the instant proceeding. This should come as no surprise, as it is undisputed that no argument or evidence has been advanced in any substantive paper, and, thus, no evaluation of any argument or evidence has been conducted, concerning this issue, in the instant proceeding. Absent such argument or evidence, Patent Owner has not, and cannot, identify that which the Board misapprehended or overlooked in the instant proceeding, as required by the Office Patent Trial Practice Guide. And without such identification, we are unpersuaded that there is any basis for a request for rehearing, in that it certainly cannot be said that the Board misapprehended or overlooked that which was not argued.” slip op. at 2

  Claim construction
  Patents in suitUS 8,596,405
• Microsoft Corporation v. Iplearn-Focus, LLCSome claims unpatentable
  PTAB · Apr 11, 2016 · IPR2015-00095 · APJ Richard E Rice · IPR · Final written decision

  Claims 1, 2, 18, 22, 37, and 39 are unpatentable; claims 38, 40–42, 48, 55, and 56 are patentable, based on anticipation and obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “in the art (“POSITA”). According to Petitioner’s expert, Dr. David Forsyth, a POSITA would have had a combination of experience and education in computer vision and the design of human-computer interfaces. This typically would consist of a minimum of a bachelor of science in Computer Science or Electrical Engineering (or a related engineering field) plus either a year of graduate training or 2-4 years of relevant experience. The POSITA also would have been familiar with the design of, theory behind, principles of operation of, intended use of, and the underlying technology used in computer vision and human-computer interfaces. Ex. 1003 ¶ 27. In contrast, Patent Owner’s expert, Mr. David Crane, testifies that a POSITA “would have had a bachelor’s degree or equivalent in the field of computer engineering, computer science or electrical engineering and at least two to three years of experience relating to humanmachine interface design.” Ex. 2009 ¶ 15. Based on the competing arguments and evidence of record, we largely accept Patent Owner’s proposed definition. The definition proposed by Petitioner appears to be overly narrow because of its focus on “computer vision.” We have made minor modifications to Patent Owner’s definition to clarify the educational requirement, and to broaden the experience requirement to include at least a year of graduate training as an alternative to work experience, consistent with the background of researchers in the field as indicated by prior art references such as Hutchinson. See Ex. 1004, 1533–1534. We determine that a POSITA would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or an equivalent field, and at least a year of graduate training, or two years of work experience, relating to human-machine interfaces.” slip op. at 8

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

    “(emphasis added). In the Institution Decision, we determined that the broadest reasonable interpretation consistent with the Specification of the term “window” is a bounded sub-region of a computer display that is capable of displaying a distinctly different type of information than one or more other sub-regions of the computer display. Inst. Dec. 8 (citing Ex. 1001, 8:20–42). Neither of the parties proposes any change to that interpretation, and our review of the evidence does not indicate that any change is necessary. Consequently, we maintain our previous interpretation.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “the parties, we determine that Petitioner has shown by a preponderance of the evidence that Hutchinson anticipates claim 1. See Pet. 14–15, 29–32; Pet. Reply 3–6; Ex. 1003 ¶¶ 46–51. As set forth in Petitioner’s claim chart, Hutchinson discloses each limitation of claim 1, including the “acquiring,” “analyzing,” “determining,” and “adjusting” steps. See Pet. 29–32. For example, the “adjusting” step requires “adjusting, by the computing device, materials for presenting to the user if the determining determines that the volitional input suggests the user not paying attention to materials in the first window.” Corresponding to that step, Hutchinson discloses that, after the user gazes for a period of time at a menu option in a display window, a tone sounds and an icon (cursor) appears in the display window in line with the gaze, but the enabled option is aborted if the user does not continue to gaze at the menu option for an additional period of time. Ex. 1004, 1530; see Pet. 31–32; Pet. Reply 3–6; Ex. 1003 ¶¶ 49–50. The abort mechanism of Hutchinson’s computing device discloses the “adjusting” step by aborting the enabled option (“adjusting . . . materials for presenting to the user”) if the computing device determines, itself, that the user is not directing his or her gaze at the menu option in the window (“if the determining determines that the volitional input suggests the user not paying attention to materials in the first window”). See Ex. 1004, 1530; supra Section II.A.5.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “claim 2. Pet. 20, 41–42; Pet. Reply 5–6; Ex. 1003 ¶¶ 52–55. We agree, for example, that Hutchinson discloses “waiting for a period of time before adjusting,” as required by claim 2, “so that the user has a moment to alter his or her gaze before the system adjusts what is being presented.” Pet. 20, 41 (citing Ex. 1004, 1530; Ex. 1003 ¶ 52). With respect to the “network” requirement, we also agree that a person of ordinary skill in the art would have known to retrieve materials from another computing device over a network. Id. at 20, 42 (citing Ex. 1003 ¶¶ 9, 15, 55). There is evidence of record that Black, for example, discloses such retrieval. Ex. 1003 ¶ 97. Further, we agree that Hutchinson discloses “adjusting comprises switching to alternative materials that are different from materials that would have been presented,” and that including “materials on a product” would have been obvious, as Petitioner contends. Pet. 20, 41–42 (citing Ex. 1004, 1530– 1531; Ex. 1003 ¶¶ 52–55). Patent Owner responds that: “the ‘waiting before adjusting’ step must be performed after the ‘determining’ step and, additionally, be a distinct step from the ‘determining step’”; and that “Hutchinson . . . does not disclose a ‘waiting before adjusting step’ that is either separate and distinct from the ‘determining’ step or subsequent to it.” PO Resp. 29. Patent Owner argues that, “[a]t most, Hutchinson discloses waiting as part of the determining step.” Id. at 30. Patent Owner’s argument is not consistent with our interpretation that claim 2 encompasses “waiting for a period of time” as part of the “determining” step. See supra Section II.A.4. Hutchinson’s system satisfies the “waiting for a period of time before adjusting” step by allowing the user “a moment” to change or abort an enabled option before the system performs it. Ex. 1004, 1530 (emphasis added). The system performs the option only if the user continues to stare at the enabled option for a period of time (“a moment”) after a tone sounds and an icon appears. Id. For the reasons given, we conclude that Petitioner has shown by a preponderance of the evidence that Hutchinson renders obvious claim 2.” slip op. at 27

  Patent outcomesUS 8,475,174 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,475,174
• Microsoft Corporation v. Iplearn-Focus, LLCSome claims unpatentable
  PTAB · Mar 23, 2016 · IPR2015-00097 · APJ Richard E Rice · IPR · Final written decision

  Claims 13, 34, and 35 are unpatentable as anticipated by Hutchinson; claims 39 and 44 are unpatentable as obvious over Hutchinson and Krueger; claims 36 and 37 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Ex. 1003 ¶ 27. In contrast, Patent Owner’s expert, Mr. Crane, testifies that a POSITA “would have had a bachelor’s degree or equivalent in the field of computer engineering, computer science or electrical engineering and at least two to three years of experience relating to human-machine interface design.” Ex. 2007 ¶ 15. Based on the competing arguments and evidence of record, we largely accept Patent Owner’s proposed definition. The definition proposed by Petitioner appears to be overly narrow because of its focus on “computer vision.” We have made minor modifications to Patent Owner’s definition to clarify the educational requirement, and to broaden the experience requirement to include at least a year of graduate training as an alternative to work experience, consistent with the background of researchers in the field as indicated by prior art references such as Hutchinson. See Ex. 1004, 1533–1534. We determine that a POSITA would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or an equivalent field, and at least a year of graduate training, or two years of work experience, relating to human-machine interfaces.” slip op. at 8

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

    “We find that the ordinary meanings of “content” are “[s]omething contained, as in a receptacle: the contents of my desk drawer; the contents of an aerosol can,”2 and “[i]nformation, such as text, video, and sound, usually as contrasted with its format of presentation: a television producer looking for content that was more entertaining.”3 Although the Specification does not define or use the term “content,” it sheds light on the meaning of the term, by describing a calibration technique utilizing the text and graphics (the content) of a message box to direct the user’s attention and to take a reference image. See Ex. 1001, 8:55–60 (describing a preferred embodiment 1 Exhibit 1033 does not contain Petitioner’s asserted definition, although, as referenced below, we found essentially the same definition on-line. 2 Ex. 1033. 3 http://search.credoreference.com/content/entry/hmdictenglang/content_ 1/0?searchId=4da7a984-e49d-11e5-9bca-0e58d2201a4d&result=5 (last visited March 8, 2016). in which a reference image of the student’s face is taken when the student is looking at a message box containing the message “LOOK AT ME” and a picture of two eyes staring at the student; “the digital camera 180 takes a reference image of the student’s face, who typically looks at the two eyes”). Accordingly, we determine that the broadest reasonable construction consistent with the Specification of “content presented by the display” is “something contained within a portion of the display,” including, but not limited to, what is advocated for by Petitioner, i.e., “information, such as text, video, and sound.”” slip op. at 9

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

    “processor coupled to the imaging sensor and the display, the processor to analyze, relative to the display, at least the first set of measurements to identify whether the user is not paying attention to content presented by the display.” Specifically, as disclosed in Hutchinson, after the user gazes for a period of time at a menu box on the display, a tone sounds and an icon (cursor) appears in the menu box in line with the gaze, but the option associated with the menu box is aborted if the user does not continue to gaze at the box for an additional period of time. Ex. 1004, 1530; see Pet. 36 (citing Ex. 1003 ¶ 71). Hutchinson’s processor meets the claim requirement for “a processor . . . to identify whether the user is not paying attention to content presented by the display” because, to implement the abort mechanism, the processor determines, itself, whether the user is not directing his or her gaze at the icon contained in the menu box, in accordance with our claim interpretation. See Ex. 1004, 1530; supra Section II.A.3.” slip op. at 19

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

    “We agree with Petitioner and Dr. Forsyth that a POSITA would have been motivated to combine the teachings of Hutchinson and Krueger. As Petitioner argues, Hutchinson expressly contemplates using Erica with 7 Richard Epworth, Eye Movements, for a Bidirectional Human Interface, ICL TECHNICAL JOURNAL 384–411 (1990) (Ex. 1026). “hardware alternatives . . . such as head-tracking systems.” Ex. 1004, 1532 (emphasis added); see Pet. Reply 13 (citing Ex. 1004, 1532 and Ex. 2008, 108:21–109:7). Krueger not only discloses head-tracking, but touts its VIDEOTOUCH system as an improvement that identifies human-body features such as the head in real time, and without use of intrusive markers. Ex. 1008, 2:44–3:44, 4:5–10. We credit Dr. Forsyth’s deposition testimony explaining how Hutchinson’s eye-gaze system would have worked in combination with a head-tracking system. Ex. 2008, 93:16–102:1, 108:21– 109:7, 109:22–128:17. For example, we credit the following testimony:” slip op. at 29

  Patent outcomesUS 8,538,321 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,538,321
• EMC Corporation / EMC International US. Holdings, Inc. et al. v. Clouding Corp.Institution denied
  PTAB · Mar 16, 2016 · IPR2015-01922 · APJ Rama G Elluru · IPR · Institution

  Review of claims 1, 15, and 17 was denied because Petitioner did not show a reasonable likelihood that Douik anticipates them.

  RulingsInstitution decision

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

    “For all of the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in demonstrating that claims 1, 15, and 17 are unpatentable under 35 U.S.C. § 102(e) as anticipated by Douik. III.” slip op. at 16

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “Although the arguments in the present Petition are similar to those asserted in IPR2014-01309, the present challenge relies upon a reference not relied upon in IPR2014-01309. We are cognizant of the concerns regarding harassment of patent owners by the filing of serial petitions. The instant case, however, involves only a single ground, and Patent Owner has not demonstrated persuasively that the Petition constitutes harassment or is part of a pattern of filing serial petitions against the ’839 patent. Moreover, we are unpersuaded that we should exercise our discretion to deny institution based on 325(d) because we determine that the instant petition relies on a reference that was not asserted in IPR2014-01309, and determine also that the Petition does not present the same or substantially the same prior art or arguments presented in IPR2014-01309. In sum, considering the totality of the circumstances, we decline to exercise our discretion to deny the Petition.” slip op. at 6

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

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b), see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1277–78 (Fed. Cir. 2015) (“We conclude that Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA.”), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 2016 WL 205946 (U.S. Jan. 15, 2016) (No. 15-446). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning in view of the specification, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). For purposes of this decision, we determine that no term of the ’839 patent needs express interpretation.” slip op. at 7

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

    “As an initial matter, Petitioner has not persuaded us sufficiently that Douik contemplates the situation “when a likely solution to the computer problem does not exist,” as recited in claim 15. As described above, in Douik’s reactive mode, for known faults, i.e., faults that have already been experienced, the system includes “experienced knowledge” in its database and provides corrective actions. Ex. 1003, 13:60–63, 13:12–14 (stating the system provides corrective actions to the troubleshooter once the trouble is detected);16:38–41 (stating that the diagnostic process must maintain knowledge such as the Known Faults case base and fault scenarios); 16:54– 62 (explaining that the system includes a knowledge base having knowledge such as the behavior of the managed resources in a given fault scenario or a propagation of a known fault); 33:3–12 (explaining the system includes “knowledge base models such as the fault scenarios, the known faults repository, and the corresponding corrective procedure”). Thus, for known faults, the Software Fault Management process selects an appropriate troubleshooting method from its knowledge base, i.e., a likely solution. Id. at Fig. 1, Fig. 5. However, if the fault is not a known fault, i.e., not a fault that has already been experienced for which “experienced knowledge” exists, the fault situation is recursively analyzed wherein the process performs further fault analyses and diagnostic tests, until a successful diagnosis is obtained, in which case the process performs the fault localization and repair. Ex. 1003, 36:65–37:22; Fig. 5. In other words, for unknown faults, the fault situation is recursively analyzed until a solution is found. Thus, we are not persuaded that Douik contemplates “when a likely solution to the computer problem does not exist,” as recited in claim 154. Moreover, Petitioner has not sufficiently persuaded us that Douik discloses “the AI engine saves the gathered data [about the computer system] in the knowledge database as a new case,” as recited in claim 1, and “saving the sensed information [about the computer system] as a new case of the plurality of cases,” as recited in claim 155. The claims require the saving to occur at a specific time —“when the knowledge database does not describe a likely solution to the computer problem” (claim 1) and “when a likely solution to the computer problem does not exist” (claim 15). For ease of reference, we refer to these limitations collectively as the “when a likely solution does not exist” limitation. In arguing that Douik discloses this limitation, Petitioner cites disclosure from Douik (Pet. 39–40) stating that 4 Unlike claim 15, independent claim 1 requires “when the knowledge database does not describe a likely solution to the computer problem.” (Emphasis added.) Claim 1, thus, requires that the “knowledge database” does not describe a likely solution to the problem. We are persuaded that Douik describes this limitation of claim 1 because Douik explains that the system may detect a fault that it has not previously experienced, for which it has no experienced knowledge in the known faults database, such as corrective actions, as discussed above. 5 For this limitation of claim 15, Petitioner refers to its analysis of the similar limitation in claim 1. Pet. 44 “[f]or unknown faults, the reactive SFM process assists the engineer during the trouble shooting by providing access to relevant information and tools.” (Emphasis added). Ex. 1003, 36:24–26. Douik’s description of “providing access to relevant information and tools” does not anticipate saving the gathered data or the sensed information about the computer system, when a likely solution does not exist, as required by the claims. In particular, Petitioner does not sufficiently persuade us that Douik describes providing access, during trouble shooting, to relevant information that was saved when a likely solution does not exist. Indeed, the above-cited portions of Douik are silent concerning the timing of the saving operation.” slip op. at 10

  Claim construction§ 102 anticipationDiscretionary denial
  Patents in suitUS 5,944,839

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