• Cisco Systems, Inc. v. Centripetal Networks, Inc.All claims unpatentable
  PTAB · Jan 23, 2020 · IPR2018-01386 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious over Narayanaswamy, Kapoor, Johnson, and Kjendal; claims 10–16 are unpatentable as obvious over those references and the Diffserv Specification.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedOther

    “Patent Owner’s sole nexus explanation is a conclusory assertion that “the salutary benefits of Centripetal’s TIG [threat interface gateway] are made possible in large part by the ’213 patent’s dynamic security policies, which are automatically managed and distributed by the claimed SPM, as well as its network layer packet-by-packet rule enforcement, packet digest logging function and packet transformation function for routing packets to a monitoring device.” PO Resp. 62 (citing Ex. 2004, Goodrich Decl. ¶217). Dr. Goodrich’s testimony cited in support of this statement is merely a nearverbatim copy of this conclusory statement with no additional explanation. See Ex. 2004 ¶ 112; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). As a result, we find that Patent Owner has not established a sufficient nexus between the cited industry praise and the invention of the challenged claims.” slip op. at 57

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

    “Patent Owner further argues that our construction removes any patentable weight from the word “dynamic” because it does not explicitly state that the policy is “non-static.” PO Resp. 15–16. Patent Owner does not point to any use of the expression “non-static” in the ’213 patent Specification. In some embodiments, a dynamic security policy may be constructed or revised manually off line and loaded into SPMS memory by an administrator (Ex. 1001, 14:23–47); in other embodiments the SPMS may be configured to add, remove, or alter one or more dynamic security policies based on information received from devices within the network known to be associated with malicious traffic (id. at 14:48–15:37). As discussed above, however, the Specification explicitly states “As used herein, a dynamic security policy includes any rule message, instruction, file data structures, or the like that specifies criteria corresponding to one or more packets and identifies a packet transformation function to be performed on packets corresponding to the specified criteria.” Id. at 4:58–64. As our construction is consistent with that language, we decline to adopt Patent Owner’s construction.” slip op. at 10

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

    “and only now are contesting the construction of “packet-by-packet.” Indeed, we are not convinced that we should construe “packet-by-packet” when the phrase used in claim 1 is “on a packet-by-packet basis.” Both “packet-by-packet” and “on a packet-by-packet basis” are not defined in the Specification. It is unclear from the ’213 patent whether “on a packet-by-packet basis” requires inspecting every single packet, even if the preceding packet indicates there is no application-layer packet-header information in the following expected packet. On the other hand, as packets may arrive out of order, it appears that some inspection of each packet may be necessary. packet-by-packet basis” means performing the transformation function only on those packets that comprise the application-layer packet-header information specified in a rule. For example, claim 1 recites “identifying” such packets “on a packet-by-packet basis,” and then “performing . . . the packet transformation function” on such packets. In any case, we do not apply a construction that encompasses analyzing multiple packets at one time. However, the construction “working a packet at a time” offers little insight into what “on a packet-by-packet basis” actually means. At this late stage of the proceeding, we address this issue only to the extent necessary for this Decision in our substantive analysis of the claims, as explained below.” slip op. at 15

  Patent outcomesUS 9,565,213 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,565,213
• Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Institution denied
  PTAB · Jan 8, 2020 · IPR2019-01209 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted reference combinations.

  RulingsInstitution decision

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

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’253 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level board ownDecided for patent owner

    “ordinary skill in the art, including the type of problems encountered in the art and prior art solutions to those problems. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’253 patent and the prior art of record, we agree with some aspects of Petitioner’s proposal as well as some aspects of Patent Owner’s proposal. For instance, as indicated by its title, the ’253 patent is directed to a merchandise security system with optical communication. See Ex. 1001, code (54). Thus, we agree with Patent Owner that a person of ordinary skill in the art would at least have experience with optical communication technology. We also agree with Patent Owner that the invention disclosed in the ’253 patent is not limited to use as a point-of-purchase anti-theft device. See Prelim. Resp. 7–8 (citing Ex. 1001, 2:55–60). We disagree, however, with Patent Owner’s argument that experience with security systems is unnecessary. See id. In view of the ’253 patent and the principal prior art references in the record, which generally are directed to security systems, we find that a person of ordinary skill in the art would have some experience with security devices. The educational level of inventors and that of active workers in the field are also factors that may be considered. Daiichi, 501 F.3d at 1256. On the present record, we agree with Patent Owner’s more inclusive proposal regarding the educational level of a person skilled in the art. See Prelim. Resp. 8–9. review of the record, we find that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, mechanical engineering, materials science, or some equivalent level of education, and some work experience with the design of security devices and applications using optical communication technology. We note that, even if we adopted either Petitioner’s or Patent Owner’s proposed level of skill in the art in its entirety, our analysis below of Petitioner’s asserted obviousness grounds would not change and we would reach the same conclusions.” slip op. at 7

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

    “signals.” Ex. 1001, 1:59–60, 1:62–63, 5:34–37; see Pet. 6. Citing definitions of “optical transceiver,” “optical receiver,” “optical transmitter,” and “transceiver” from a technical dictionary, Petitioner contends that “optical transceiver” should be construed as “an optical receiver and an optical transmitter housed in a single unit with appropriate electrical and optical connectors.” Pet. 6–7 (citing Ex. 1002, 347, 674, 676–77, 1022–23). For purposes of this Decision, we adopt Petitioner’s proposed construction of “optical transceiver,” which is consistent with the term’s use in the ’253 patent and its ordinary and customary meaning in the art. No other claim terms require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “its optical waveguide tether, including a spiral cable and a securing tether wound under tensile stress. Ex. 1003, 5; see Prelim. Resp. 12. Notwithstanding these embodiments in which the optical waveguide tether would be subject to bending, Brenner states that “the apparatus according to the invention also has the advantage of reduced susceptibility to faults, because the optoelectronic signal transfer device operates practically without wear.” Ex. 1003, 3; see Prelim. Resp. 12. Thus, contrary to Petitioner’s argument that bending or winding Brenner’s optical waveguide would create reliability issues, Brenner itself suggests that using an optical waveguide in” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,062,253
• Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Institution denied
  PTAB · Jan 8, 2020 · IPR2019-01206 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’274 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level board ownDecided for patent owner

    “ordinary skill in the art, including the type of problems encountered in the art and prior art solutions to those problems. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’274 patent and the prior art of record, we agree with some aspects of Petitioner’s proposal as well as some aspects of Patent Owner’s proposal. For instance, as indicated by its title, the ’274 patent is directed to a merchandise security system with optical communication. See Ex. 1001, code (54). Thus, we agree with Patent Owner that a person of ordinary skill in the art would at least have experience with optical communication technology. We also agree with Patent Owner that the invention disclosed in the ’274 patent is not limited to use as a point-of-purchase anti-theft device. See Prelim. Resp. 7–8 (citing Ex. 1001, 2:55–60). We disagree, however, with Patent Owner’s argument that experience with security systems is unnecessary. See id. In view of the ’274 patent and the principal prior art references in the record, which generally are directed to security systems, we find that a person of ordinary skill in the art would have some experience with security devices. The educational level of inventors and that of active workers in the field are also factors that may be considered. Daiichi, 501 F.3d at 1256. On the present record, we agree with Patent Owner’s more inclusive proposal regarding the educational level of a person skilled in the art. See Prelim. Resp. 8–9. review of the record, we find that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, mechanical engineering, materials science, or some equivalent level of education, and some work experience with the design of security devices and applications using optical communication technology. We note that, even if we adopted either Petitioner’s or Patent Owner’s proposed level of skill in the art in its entirety, our analysis below of Petitioner’s asserted obviousness grounds would not change and we would reach the same conclusions.” slip op. at 7

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

    “transceiver” is relevant to this Decision. The ’274 patent states that “an optical transceiver [is] configured to transmit and receive data” and “may be used to transmit optical signals in predetermined sequences or patterns, as signals.” Ex. 1001, 1:59–60, 1:62–63, 5:34–37; see Pet. 6. Citing definitions of “optical transceiver,” “optical receiver,” “optical transmitter,” and “transceiver” from a technical dictionary, Petitioner contends that “optical transceiver” should be construed as “an optical receiver and an optical transmitter housed in a single unit with appropriate electrical and optical connectors.” Pet. 6–7 (citing Ex. 1002, 347, 674, 676–77, 1022–23). For purposes of this Decision, we adopt Petitioner’s proposed construction of “optical transceiver,” which is consistent with the term’s use in the ’274 patent and its ordinary and customary meaning in the art. No other claim terms require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

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

    “Next, we agree with Patent Owner that Petitioner provides insufficient evidentiary support for its conclusion that Brenner’s optical waveguide is prone to signal loss that makes Brenner’s system unreliable. See Prelim. Resp. 15. In asserting that optical waveguides subjected to bending and winding are prone to signal loss, Petitioner cites only dictionary definitions of “loss,” “curvature loss,” and “microbend loss” and the Declaration of Mr. Figh. Pet. 19–20, 36 (citing Ex. 1002, 196, 535–36, 546, 576; Ex. 1007 ¶ 44). Mr. Figh, in turn, relies solely on the same definitions from the same dictionary. Ex. 1007 ¶¶ 44, 66. Neither Petitioner nor Mr. Figh, however, shows what effect, if any, a curvature loss or microbend loss would have on the optical waveguide used in Brenner’s securing tether. See Pet. 19–21, 36–37; Ex. 1007 ¶¶ 44, 66. Furthermore, the Petition fails to explain adequately why a person of ordinary skill in the art would have recognized that a curvature loss or microbend loss in Brenner’s device would result in signal loss sufficient to adversely affect the reliability of communications between Brenner’s transceivers. See Pet. 21, 36–37 (citing Ex. 1007 ¶¶ 45, 67). Although Petitioner cites Mr. Figh’s Declaration for support, his testimony on this point is entitled to little or no weight because he does not identify any evidence in the record to support his conclusory statements, which are essentially the same as those in the Petition. See Ex. 1007 ¶¶ 45, 67; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). have been motivated to improve the reliability of Brenner’s security device by eliminating the optical waveguide in the securing tether and moving the optical transceiver from the base unit to the proximal end of the securing tether to communicate directly with the transceiver in Brenner’s sensor unit. Pet. 37; see id. at 21–22. But without a sufficient showing in the Petition that a person of ordinary skill would have considered Brenner’s device as having reliability issues, there is no valid basis underlying Petitioner’s proposed motivation for modifying Brenner in view of the teachings of Vogt and Chapman. Thus, Petitioner fails to provide sufficient articulated reasoning with rational underpinning for modifying Brenner’s system as proposed and combining the teachings of the references in the manner asserted.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,818,274
• NEC Corporation / Nokia Corporation et al. v. Neptune Subsea IP LimitedAll claims unpatentable
  PTAB · Nov 25, 2019 · IPR2018-01157 · APJ Jason W Melvin · IPR · Final written decision

  Claims 13–20 are unpatentable as obvious over Yamamoto and Nishimoto; the Chowdhury and Webb grounds, with or without Tanaka162, do not establish unpatentability.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableDecided for petitioner

    “III. CONCLUSION For the foregoing reasons, we determine Petitioner has shown by a preponderance of the evidence that each of claims 13–20 is unpatentable.” slip op. at 26

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

    “The parties submit and we agree that there is no need to construe any term to resolve the issues in this decision. See Pet. 7–9; PO Resp. 6; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

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

    “e. Summary For the reasons described above, we find that a person of ordinary skill in the art at the time of invention would have had reason to combine Yamamoto’s and Nishimoto’s teachings as asserted by Petitioner and that the combination teaches all of claim 13’s limitations. Accordingly, Petitioner has shown by a preponderance of the evidence that the subject matter of claim 13 would have been obvious over Yamamoto and Nishimoto.” slip op. at 21

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

    “tunable compensators is a contingent argument, applicable only if one reads claim 13 to require a certain transmission rate. PO Resp. 21–25. We do not read Petitioner’s argument as so constrained. Rather, we understand Petitioner to argue that a desire for higher transmission speeds would drive skilled artisans to use solutions such as Nishimoto’s tunable compensators, particularly in light of Nishimoto’s guidance regarding the ability to achieve high speeds with the system. See Pet. 21–23. In that regard, we agree with Petitioner that the increase in transmission rates from Yamamoto’s to Nishimoto’s disclosures would have given skilled artisans reason to consider Nishimoto’s teachings. Pet. Reply 16–18 (citing Ex. 1005 8:9–11; Ex. 1007, 12:37–39). As Petitioner points out, Nishimoto specifically discloses that higher-speed transmissions were more sensitive to dispersion. Pet. Reply 17 n.9. Thus, we find the desire for higher transmission speeds and the need for techniques such as taught by Nishimoto would have given skilled artisans reasons to combine Nishimoto’s disclosure regarding dispersion compensation with Yamamoto’s system to achieve Yamamoto’s goals regarding the dispersion maps for multiple channels. Further, Petitioner does not rest entirely on the desire for high-speed operation. Petitioner argues also that using Nishimoto’s adjustable compensators and feedback control would “yield an improved WDM system capable of automatic compensation for degradation of the optical signal waveform caused by both wavelength dispersion and polarization mode dispersion of the optical transmission path, resulting in further reduced size and cost.” Pet. 16 (citing Ex. 1003 ¶¶ 99, 101; Ex. 1007, 3:41–60, 4:3–58, Figs. 17, 20, 21), 29–30 (quoting Ex. 1007, Abstract, 3:37–40, 6:56–64, 7:53–56, 11:41–46, 17:53–55, 17:59–60; citing Ex. 1003 ¶¶ 114–115); accord id. at 14 (quoting Ex. 1007, 3:19–25). Patent Owner recognizes that basis for the combination but argues that the record lacks evidence to support Petitioner’s claim of reduced size and cost. PO Resp. 25–26. Patent Owner does not contest that the modification would give Yamamoto’s system the ability to automatically compensate for signal degradation from dispersion. Nishimoto discloses that as transmission speeds increase, “changes in wavelength dispersion characteristics due to temperature changes of optical fiber; and the influence by polarization mode dispersion” both “can not be neglected,” therefore requiring a system for automatically compensating for wavelength dispersion and polarization mode dispersion,” as taught by Nishimoto. Ex. 1007, 1:34–41. We find that a skilled artisan would have had reason to make the combination because the system would gain capability for automatic compensation. Regarding reduced size and cost resulting from the combination, Patent Owner does not provide any contrary evidence and we conclude that Nishimoto’s statements regarding the benefit of its invention also would have motivated skilled artisans to make the combination. See Ex. 1007, 3:17–26 (“to thereby provide a dispersion compensating apparatus of reduced sizes at a reduced cost”).” slip op. at 18

  Patent outcomesUS 8,351,798 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,351,798
• Apple Inc. v. Red.Com, LLCInstitution denied
  PTAB · Nov 7, 2019 · IPR2019-01064 · APJ J John Lee · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 1–29 were unpatentable as obvious over the asserted combinations.

  RulingsInstitution decision

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

    “We have authority to institute an inter partes review only if 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.” 35 U.S.C. § 314(a). Upon consideration of the Petition and the Preliminary Response, we conclude that Petitioner has not shown a reasonable likelihood of prevailing in its challenges to the ’299 Patent. Accordingly, the Petition is denied. A.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art at the relevant time would have had (1) “a Bachelor’s degree in Computer Science, Electrical Engineering, or equivalent training”; (2) “approximately three years of experience in designing and/or manufacturing video capture, processing, and display systems”; and (3) “experience in data compression.” Pet. 6. At this stage, Patent Owner does not dispute Petitioner’s contention or propose its own formulation of the relevant level of ordinary skill. For purposes of this Decision, we adopt Petitioner’s description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 5

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

    “We agree with Petitioner that the specification’s definition is critical to the proper construction of this term. Petitioner’s proposed construction, however, differs significantly from the definition provided in the specification. First, Petitioner’s construction refers to “sets of data” that are compared for visual similarity, but it does not reflect the specification’s requirement for comparison “side by side” specifically with “original (never compressed) image data.” See Ex. 1001, 9:55–60. Second, Petitioner’s construction makes no mention of the specification’s requirement that the comparison be made based on display “on the same display device.” See id. Third, Petitioner’s construction looks to whether the data sets are “substantially visually similar,” but does not explain how or why that benchmark differs from the specification’s requirement that a person of ordinary skill “would not be able to determine which image is the original with a reasonable degree of accuracy, based only on a visual inspection of the images.” See id. Although the claim term at issue is “substantially visually lossless” whereas the specification defines “visually lossless,” Petitioner does not indicate that they should be considered differently or explain its deviations from the specification’s definition. Nor do we discern any basis to deviate from that definition to the extent required to adopt Petitioner’s proposed construction. Thus, we determine Petitioner’s construction to be incomplete and insufficiently supported in light of the specification. See Phillips, 415 F.3d at 1315–16. Although Patent Owner does not dispute Petitioner’s construction at this time, Petitioner is required to present a full explanation of its position and how the relevant evidence and governing law support its proposed construction, as part of its overall burden to demonstrate a reasonable likelihood of prevailing. See 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(3). We determine the Petition did not adequately do so. Consequently, based on the available evidence and for purposes of this Decision, we construe “substantially visually lossless” as “substantially indistinguishable from the original (never compressed) image, to a reasonable degree of accuracy, when compared side by side on the same display device by a person of ordinary skill, based only on a visual inspection of the images,” consistent with the definition provided in the specification of the ’299 Patent. C.” slip op. at 7

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

    “As Patent Owner notes, however, Mølgaard actually urges the use of near-lossless compression. Prelim. Resp. 70–71. For example, Mølgaard indicates that “[i]n the present invention, near-lossless compression is implemented using a gamma function to provide a compression that is visually lossless.” Ex. 1006, 2:62–64 (emphases added). In other words, Mølgaard teaches that using near-lossless techniques (rather than truly lossless techniques) is sufficient to produce “visually lossless” images. See id. Petitioner does not explain adequately why a skilled artisan nonetheless would have been motivated to combine Mølgaard with Chui for its truly lossless Huffman compression when Mølgaard teaches that its near-lossless technique was sufficient. See Pet. 42–43. Petitioner notes (Pet. 39) that Mølgaard states, “[t]he next stage in the algorithm is an optional lossy bit reduction stage used to adjust the compression ratio, the stage is bypassed if lossless compression is desired.” Ex. 1006, 10:32–34 (emphasis added). At most, however, this indicates that using lossless compression was known at the time of Mølgaard, which is undisputed. Mølgaard proceeds to describe how “[t]he use of a gamma-function [in the bit reduction stage] to implement a near-lossless data reduction yields a very high quality image” with image artifacts that are “simple quantization errors” that “can easily be removed,” which is “a huge advantage of the present invention.” Id. at 10:56–11:15; see also id. at 15:20–25 (“Using the near-lossless compression setting, a typical high-quality image will be compressed to 1/8th . . . . The image quality achieved is superior . . . as visual image artifacts are totally absent . . . .”). Petitioner does not address Mølgaard’s teachings regarding near-lossless compression at all; in fact, Petitioner appears to treat them as teachings of lossless compression. See Pet. 42–43. We are not persuaded Petitioner explained adequately why a person of ordinary skill, based primarily on the teachings of Mølgaard (as Petitioner urges), would have been motivated to replace its near-lossless technique with Chui’s lossless Huffman technique.7” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,230,299
• Kingston Technology Company, Inc. v. Memory Technologies, LLCInstitution denied
  PTAB · Jul 8, 2019 · IPR2019-00638 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–3, 5–7, 12–15, 19, or 25 were unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine that the information presented in the Petition shows “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered all submissions of both parties, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1–3, 5–7, 12–15, 19, and 25. The Petition is denied, and no inter partes review is instituted.” slip op. at 2

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

    “result in permanent write protection to result in permanent write protection—lacks sufficient clarity. It is unclear whether a single instance of permanent write protection is sufficient to meet the limitation, or whether all future executions of the redefined command must result in permanent write protection until another redefinition occurs. We determine that, in the context of the Specification of the ’370 patent, the redefinition, when accomplished, applies to all future executions of the command until it is redefined again. It is insufficient to meet the limitation if, after the redefinition, the redefined command still may function the way it used to function prior to the redefinition.” slip op. at 10

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

    “respect to the requirements of “to redefine the command to allow permanent write protection” as we have construed and discussed above. Nothing in Chevallier as identified by Petitioner indicates that setting the secure function bit to some value changes the meaning of the write protect command in the sense that it can no longer be used to provide temporary write protection, and can be used thereafter, until the next redefinition, solely to provide permanent write protection. The secure function bit of Chevallier, identified by Petitioner, serves only to enable the secure function (Ex. 1003 ¶¶ 37, 38, 40) and is nowhere described in Chevallier as changing the meaning of the locking command such that it no longer can be used to cause write protection of a memory block temporarily.” slip op. at 16

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

    “ordinary skill in the art would have found ambiguity in Chevallier’s embodiment in which the same command is used both for “locking” and for “securing.” In that regard, Petitioner refers to “any” ambiguity. The same is true with respect to Dr. Baker, who testifies: “a person having ordinary skill in the art would have been particularly motivated to use the secure function bit in that circumstance because doing so would eliminate any ambiguity as to whether the command meant ‘lock’ or ‘secure.’” Ex. 1006 ¶¶ 259, 270, 276 (emphasis added). Also, neither Petitioner nor Dr. Baker in the cited paragraphs of his Declaration addresses the specific disclosure in Chevallier that implements using one command to cause “locking” and the same command to cause “securing.” Chevallier describes: “The secure command used in the present invention, in one embodiment, is also used for another function within the memory device. However, in such an embodiment, the command is written to a different register that is assigned to that particular function.” Ex. 1003 ¶ 18 (emphasis added). Thus, there is no “ambiguity” as to whether the command means “lock” or “secure” in any instance because Chevallier uses different registers to distinguish between them. We are not sufficiently persuaded that there is ambiguity in Chevallier’s disclosure to be resolved. Petitioner’s assertion of a motivation that lies in resolving an ambiguity is not sufficiently supported by the record. Petitioner also argues, assuming that there is ambiguity: “A POSA [person of ordinary skill in the art] would understand that Chevallier’s secure function bit, which enables and disables the secure function, could provide the beneficial specificity—if the secure function is not enabled, then the command results in the lock function; if the bit is enabled, then the command results in the secure function.” Pet. 42 (emphasis added). This argument also is not persuasive. The issue is not whether one with ordinary skill in the art “could” perform an operation but whether one with ordinary skill in the art, without application of improper hindsight, would have reason and want to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009). Here, whether one with ordinary skill in the art would want to do in Chevallier what Petitioner proposes is not sufficiently explained. Chevallier expressly states that the secure function it provides is an added feature relative to the locking function. Ex. 1003 ¶ 29. Thus, the two functions are concurrently supported in Chevallier, not mutually exclusively at any one time. The limitation “to redefine the command to allow permanent write protection” as we have construed it above, is contrary to Chevallier’s concept and implementation. Petitioner has not adequately explained why one with ordinary skill in the art would have wanted to modify Chevallier to eliminate concurrent support for both functions. For determining obviousness, the benefits, both lost and gained, in making a modification, should be weighed against each other. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1348 (Fed. Cir. 2000).” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,827,370
• Roland Corporation v. Inmusic Brands, Inc.Rehearing denied
  PTAB · Feb 21, 2019 · IPR2018-00396 · APJ Kamran Jivani · IPR · Rehearing

  The Board denied Roland Corporation’s rehearing request, leaving in place denial of institution on claims 1–21 because the petition did not sufficiently show anticipation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW 37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012) (emphasis added). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of” slip op. at 2

  • BurdenNot reached

    “02178, 2018 WL 3490804, at *1 (July 19, 2018) (citing 37 C.F.R. § 42.71(d)). Under our rules, the Petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). If the Petition does not demonstrate that there is a reasonable likelihood of success, then the Board shall not institute an inter partes review. See 37 C.F.R. § 42.108(c) (“Inter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.”). Because Petitioner failed to set forth its analysis of the claimed proportional relationship in the Petition, we are not persuaded that we erred in finding Petitioner’s analysis insufficient to show a reasonable likelihood of success on this anticipation challenge.” slip op. at 7

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

    “is proportional to the position of the control shaft relative to the foot pedal control module.” Ex. 1001, 5:32–34, 6:4–6, 6:37–39 (emphasis added). We construed the term “proportional” as “requiring a constant relationship, such as, for example, a linear relationship.” Dec. 16. In so doing, we found that “the claims and Specification of the ’758 patent do not elaborate on [the] nature of the control signal generated by the foot pedal control module beyond describing one embodiment in which the signal is ‘proportional to the plunger 116 position to the drum synthesizer through the cables.’” Id. (citing Ex. 1001, 4:30–33). We further found that “[t]he prosecution history also does not explicitly define the term ‘proportional;’ however, the Examiner relies on the ‘position-proportional signal’ as a reason for allowance of the claims.” Id. (citing Ex. 1005, 6). Recognizing that “[a]lthough extrinsic evidence ‘is generally of less significance than the intrinsic record’ in matters of claim construction,” we turned to “certain extrinsic evidence [to] inform[] our construction in the absence of a more fulsome intrinsic record.” Id. at 16–17 (citing Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir. 2016)). In particular, we relied upon “a relevant technical dictionary, namely The Authoritative Dictionary of IEEE Standards Terms,” to “show the common understanding that usage of term ‘proportional’ when used to describe an electrical signal indicates the signal maintains a constant relationship, such as, for example, a linear relationship.” Id. at 17 (citing Ex. 3001, 690, 879–80). We also observed that the dictionary.com “definition Patent Owner proffers supports our construction of ‘proportional’ as requiring a constant relationship.” Id. (citing Ex. 2002). slip op. at 7

  • Strike new argumentNew argument disregardedDecided for patent owner

    “A Request for Rehearing is not an opportunity to present new arguments and evidence. 37 C.F.R. § 42.71(d) (A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.”). “Because we do not consider an argument made in a request for rehearing unless the request [specifically identif[ies] . . . the place where [that argument] was previously addressed in a motion, an opposition, or a reply,” we do not consider Petitioner’s newly presented information here. Commvault Sys., Inc. v. Realtime Data LLC, IPR2017- 02178, 2018 WL 3490804, at *1 (July 19, 2018) (citing 37 C.F.R. § 42.71(d)). Under our rules, the Petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). If the Petition does not demonstrate that there is a reasonable likelihood of success, then the Board shall not institute an inter partes review. See 37 C.F.R. § 42.108(c) (“Inter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.”). Because Petitioner failed to set forth its analysis of the claimed proportional relationship in the Petition, we are not persuaded that we erred in finding Petitioner’s analysis insufficient to show a reasonable likelihood of success on this anticipation challenge.” slip op. at 6

  Claim constructioncites Phillips
  Patents in suitUS 8,785,758
• Unified Patents Inc. v. Red Rock Analytics, LLCRehearing denied
  PTAB · Feb 28, 2018 · IPR2017-01490 · APJ John D Hamann · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show that the Board misapprehended “calibration cycle” or abused its discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “STANDARD OF REVIEW The applicable standard for a request for rehearing is 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. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). III.” slip op. at 2

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

    “calibration cycle.” E.g., Ex. 1001, 11:66–67 (emphasis added). We found that how the calibration cycle is referred to in this limitation (i.e., signal includes it) underscores that the calibration cycle is a feature of the calibration RF signal itself. Dec. 15–16. Rather than addressing this claim 1 U.S. Patent No. 6,940,916 B1 (issued Sept. 6, 2005) (Ex. 1003, “Warner”). 2 We do not address further Warner’s teachings because Petitioner’s arguments are predicated on our having misapprehended the meaning of “calibration cycle,” which we did not. In an inter partes review, the petitioner has the burden to show why the patent it challenges is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)(citation omitted).” slip op. at 4

  • BurdenNot shown unpatentable

    “signal includes a calibration cycle.” Ex. 1001, 11:56–12:5 (claim 1), 12:22– 54 (claim 7), 13:18–49 (claim 16), 13:63–14:30 (claim 22), 14:65–15:32 (claim 32), 15:46–62 (claim 38), 16:12–44 (claim 44), 17:8–37 (claim 53), 17:52–18:19 (claim 59), 18:52–19:18 (claim 69) (emphasis added). In denying the Petition, we found that Petitioner did not establish that the prior art disclosed or rendered obvious this limitation. Dec. 8–19. More specifically, we found that the calibration cycle relates to a feature of the calibration radio frequency (“RF”) signal (i.e., the signal includes), rather than simply requiring having a calibration process occur, as Petitioner submitted. Id. at 15–19. Our reasoning underlying this finding related to (A) the language of the limitation, (B) the language of dependent claims, and (C) the ’313 Patent’s Specification. Id.” slip op. at 3

  Claim construction
  Patents in suitUS 7,346,313
• Tricklestar LLC v. Embertec Pty Ltd.All claims unpatentable
  PTAB · Dec 20, 2017 · IPR2016-01336 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1–4, 7, and 9 are unpatentable as anticipated by EP ’379; claims 5 and 6 are unpatentable as obvious over EP ’379 and EP ’752.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We determine that the level of ordinary skill proposed by Petitioner and Petitioner’s declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt that definition of the level of ordinary skill in the art for the purposes of the analysis below. See Ex. 1001, 1:14–15 (“The invention relates to aspects of the monitoring of electrical power supply to electrical equipment.”); Ex. 1002 ¶ 1 (“The present invention relates to a method and system to provide power saving for electronic devices while such devices are in the standby mode and are not in use, particularly for a setting accommodating multiple electronic devices especially in the end-user sector.”); Ex. 1003 ¶ 1 (“The present invention relates to an automatic means switch device used to disconnect a load from” slip op. at 9

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

    “We determine that we do not need to expressly construe “input” (claim 1), “electrical input” (claim 9), “sensor” (claims 1 and 9), and “alert device” (claim 5) to determine whether Petitioner has shown by a preponderance of the evidence that claims 1–7 and 9 are unpatentable.” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “EP ’379 was published April 22, 2009. Ex. 1002, [43]. Because EP ’379 was published before the earliest possible invention date of record in this proceeding, Petitioner has shown by a preponderance of the evidence that EP ’379 is prior art to claims 1–4, 7, and 9 of the ’099 patent at least under 35 U.S.C. § 102(a).” slip op. at 16

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

    “Pet. 16. As illustrated above, Petitioner adds red ovals around what it contends, and with which we agree, correspond to the claimed sensor and microprocessor: infrared receiver unit 10 and microprocessor 12. Id. EP ’379 discloses that infrared receiver unit 10 is coupled to microprocessor 12 and that the infrared receiver unit monitors wireless output signals from a remote control. Ex. 1002, Fig. 3, ¶¶ 24, 26. Specifically, EP ’379 discloses that “the signals of the remote controls of electronic devices connected to the subject controller [are] sensed, identified, and interpreted by the controller.” Id. ¶ 23; see also id. ¶ 26 (stating that “the remote control signals controlling the devices connected to the controller can also be sensed by the controller”). According to EP ’379, “[t]he controller unit identifies as to which electronic device’s remote control the user has depressed by means of the signal receiver (10) on itself.” Id. ¶ 24. EP ’379 also discloses that the microprocessor terminates power supplied to the external electrical device based upon the absence of detection of signals from the remote control. Id. ¶ 26. EP ’379 states the following: The controller can be set to a predetermined time period in order to save power, and if no signal is received within this time period from a remote control of any device connected to it, the controller can turn OFF such devices in turn or at the same time according to a predetermined power saving rule. Id. EP ’379 adds an example of a user setting the automatic turn-off period to three hours. Id. Under this example, according to EP ’379, “if the user does not depress any key on any remote control of any electronic device connected to the controller, or if no signal is sensed by the controller within three hours, the controller may power off the electronic devices connected to itself in sequence according to an automatic turning-off rule.” Id. In sum, Petitioner shows by a preponderance of the evidence that claim 1 is unpatentable as anticipated by EP ’379.” slip op. at 20

  Patent outcomesUS 9,106,099 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,106,099
• Securus Technologies, Inc. v. Global Tel*link CorporationNo claims unpatentable
  PTAB · Nov 16, 2017 · IPR2016-01123 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–11 were not shown unpatentable under either § 103 ground because Petitioner failed to explain adequately why or how a skilled artisan would combine the references.

  RulingsFinal written decision

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

    “Petitioner proposes constructions for the claim terms “continuous noise detection algorithm” and “power distribution filter algorithm.” Pet. 24–28. Patent Owner disputes Petitioner’s proposed constructions for these terms. Prelim. Resp. 8–11. After analyzing the claims and supporting specification of the ’726 patent, we determine that we need not provide express constructions for the disputed claim terms in order to reach our decision.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Dr. Williams’ testimony. See generally Prelim. Resp. Patent Owner’s Declarant, Dr. Leonard J. Forys (“Dr. Forys”), however, proffers his own assessment regarding a person of ordinary skill in the art relevant to the ’726 patent. According to Dr. Forys, one of ordinary skill in the art would have had “a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3–5 years of academic or industry experience in communications systems, or comparable industry experience.” Ex. 2002 ¶ 29. Dr. Forys does not address Dr. Williams’ testimony in this regard or otherwise indicate whether his analysis would change if Dr. Williams’ proffered level of ordinary were adopted. Id. We have reviewed the ’726 patent, the types of problems and solutions described in the ’726 patent and cited prior art, and the testimony of Dr. Williams and Dr. Forys (who mostly agree as to the level of skill of an ordinarily skill artisan). Based on our review, we adopt and apply Dr. Williams’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. In addition, our analysis would not change if Dr. Forys’ proffered level of ordinary skill were adopted.” slip op. at 14

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “time of the ’726 patent would likely understand the relationship between power and energy. We also agree that there is a relationship between power and energy, and that it is possible to derive information about one from the other. See Ex. 1012, 18:14–25:8; Ex. 2001, 25:10–27:14; Ex. 2005, 238. Based on the evidence of record, we do not agree, however, that power and energy “are essentially equivalent and can be used interchangeably” as asserted in the Petition. See id.; see Pet. 36 (citing Ex. 1009 ¶¶ 174–177). Nor do we agree one of ordinary skill in the art would have understood that the Gupta energy threshold is the same as the power level threshold disclosed in Li. See Ex. 1012, 18:14–25; Ex. 2001, 25:10–27:14; Ex. 2005, 238. Petitioner’s reliance on Dr. Williams’s testimony regarding Gupta’s disclosure that “[a] minimum energy threshold may be programmed to [the cadence tone’s] required power level for a valid signal on a line” is equally unpersuasive. Ex. 1009 ¶ 181 (citing Ex. 1004, 6:41–44). We are unpersuaded because neither Petitioner nor Dr. Williams explains sufficiently how Gupta’s minimum energy threshold relates to a required power level or how it relates to Li’s power estimator and the purpose of Li’s power estimators. Given the lack of equivalence between power and energy, we find Petitioner fails to present sufficient evidence explaining why a person of ordinary skill in the art would have switched from detecting a power threshold, such as that described in Li and required by the challenged claims, to detecting an energy threshold as disclosed in McNitt and Gupta. Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. Personal Web Techs. v. Apple, 848 F.3d 987, 991–92 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would combine the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). We understand that a person of ordinary skill is a person of ordinary creativity, not an automaton, but “[w]ithout any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.” Metalcraft, 848 F.3d at 1367 (“‘[T]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,’ we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention” (quoting KSR, 550 U.S. at 420–21)).” slip op. at 30

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

    “Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. Personal Web Techs. v. Apple, 848 F.3d 987, 991–92 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would combine the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). We understand that a person of ordinary skill is a person of ordinary creativity, not an automaton, but “[w]ithout any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.” Metalcraft, 848 F.3d at 1367 (“‘[T]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,’ we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention” (quoting KSR, 550 U.S. at 420–21)). We agree with Petitioner that the cited references do not need to be physically combinable to render claim 1 obvious. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”); see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Obviousness, however, “may not be established using hindsight or in view of the teachings or suggestions of the inventor.” Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir. 1983)). Additionally, it is impermissible for Petitioner to “use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Accordingly, Petitioner must set forth clearly in the Petition which references it is relying on for each specific limitation and how those combined teachings would render the challenged claims obvious. See 35 U.S.C. § 312(a)(3).” slip op. at 31

  Patent outcomesUS 8,630,726 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,630,726

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.