- Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing deniedPTAB · Dec 11, 2018 · IPR2017-00864 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–5, 7–9, 11–15, and 18–21 unpatentable because their scope did not require the buffer to store the specified information.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s argument as follows.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“misapprehended any argument. Furthermore, we are unpersuaded that our Decision was in error regarding independent claims 1, 3, 7, 18, and 23 because these claims have a different scope than claims 17, 22, and 24. As Patent Owner correctly noted, our construction of “dedicated USB connection” is “a USB connection that may include some shared physical communication path and includes a buffer for maintaining dedicated address, configuration and response information for the connection.” Dec. 33. Thus, a dedicated USB connection must include a buffer that is capable of storing/maintaining “dedicated address, configuration and response information” regardless of whether such data is actually stored/maintained therein.” slip op. at 3
Claim constructionPatents in suitUS 7,523,243 - Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing deniedPTAB · Dec 11, 2018 · IPR2017-00861 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claim 25 unpatentable because its ACR data limitation did not distinguish its scope and the Board had not misapprehended or overlooked the controller argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s arguments below.” slip op. at 2
- BurdenDecided for patent owner
“party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s arguments below.” slip op. at 2
NonePatents in suitUS 7,627,708 - Intel Corporation v. Alacritech, Inc.Rehearing grantedPTAB · Jan 25, 2018 · IPR2017-01395 · APJ Daniel N Fishman · IPR · Rehearing
The Board partly granted Intel’s rehearing request to recognize the Stansbury Declaration as a compliant sworn affidavit, but otherwise denied rehearing and left institution denied.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise 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. 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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). In the Decision, the Board determined that the record before it was insufficient to show that Stevens21 is a prior art printed publication under 35 U.S.C. §§ 102, 311(b) with respect to the ’948 patent. Stevens2 is one of the references relied upon in the sole asserted ground of unpatentability in the Petition. Accordingly, the Board concluded that Petitioner did not slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Stevens2 was published no later than April 7, 1995 and is prior art under 102(b).” Pet. 45 n.9 (citing Ex. 1063 in support thereof (the “Stansbury Declaration”)). The Petition, per se, provides no other evidence or argument to establish a threshold showing that Stevens2 is a printed publication— publicly accessible by an interested person of ordinary skill in the art before the critical date. slip op. at 3
- Expert testimonyOther
“attested that Stevens2 was ‘standard reference book on TCP/IP’ that was ‘widely cited and relied upon,’ ‘well known resources to a [person of ordinary skill in the art]’ (Petition at 15 (citing Ex.1003 at ¶¶21-88, including ¶¶27, 60, and FN3), 45 (citing Ex.1003 at ¶1212), FN9).” Req. 12. Initially we observe the Petition cites these paragraphs of Dr. Horst’s Declaration as part of the “Background Of Technology” discussion rather than as support for public accessibility of Stevens2. See Pet. 15–24. Furthermore, incorporating by reference such a substantial portion of Dr. Horst’s Declaration (paragraphs 21–88) is improper under our rules. See 37 C.F.R. § 42.6(a)(3). Regardless, even if we consider Dr. Horst’s description of well-known background material (including Stevens2) as support for public accessibility of Stevens2, his testimony does not indicate” slip op. at 5
§ 102 anticipationPatents in suitUS 8,805,948 - Apple Inc. v. Saint Lawrence Communications, LLCRehearing deniedPTAB · Dec 26, 2017 · IPR2017-01244 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because Petitioner did not show a reasonable likelihood of proving claims 1–21 and 29–42 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise 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. Star Fruits S.N.C. v. U.S., 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation.” slip op. at 4
NonePatents in suitUS 6,807,524 - Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.Rehearing deniedPTAB · Dec 21, 2017 · IPR2016-00995 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 26 and 27 unpatentable as anticipated by MC33362.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise 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. 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).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner
“arguments. Our claim construction made clear in interpreting “multi-function circuit” that we agree with Patent Owner that the circuit is separate and distinct from the recited “control circuit” in the sense that the claim recites two distinct elements. Dec. 18. However, our interpretation further determined that although we agree “that the multi-function circuit and the control circuit are separate and distinct components in the claims, the claim language does not require that the functions performed by the two distinct circuits must be similarly separate and distinct.” Id. at 22. We further observed that, contrary to Patent Owner’s assertions, the Specification of the ’908 patent mentions certain functions of the multi-function circuit that are clearly tightly coupled to the “core regulation” function of the recited “control circuit.” Id. at 24–25 (e.g., shutting down the power supply in response to detecting over-voltage or under-voltage conditions). Thus, our Decision is consistent with our interpretation of “multi-function circuit” and expressly disagrees with Patent Owner’s arguments that the functions of the two circuits must also be separate and distinct.” slip op. at 3
Claim constructionPatents in suitUS 6,538,908 - Apple Inc. v. Saint Lawrence Communications, LLCInstitution deniedPTAB · Oct 25, 2017 · IPR2017-01244 · APJ Daniel N Fishman · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 1–21 and 29–42 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For at least the above reasons, we are not persuaded that Petitioner has established a reasonable likelihood that it would prevail in showing any of claims 1, 8, 15, 29, and 36 are unpatentable as obvious over the proposed combination of Salami and Kroon.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“encoding device of, for example, claim 1. However, we agree with Patent Owner that Salami does not disclose that the preemphasized input speech signal is used as an input to a perceptual weighting filter as recited in claim 1. See PO Resp. 35–37. Specifically, claim 1 specifies both the synthesis filter calculator and the perceptual weighting filter are responsive to the preemphasized signal generated by the preemphasis filter, which is, in turn, responsive to the input wideband speech signal, and further specifies that the perceptual weighting filter is also responsive to the coefficients generated by the synthesis filter calculator. In other words, the claim requires an arrangement of the various elements of an encoder in which the output of the preemphasis filter (the preemphasized signal) is applied to the synthesis filter calculator and applied to the perceptual weighting filter, and the coefficients generated by the synthesis filter calculator are applied to the perceptual weighting filter. An excerpt of Figure 1 of the ’524 patent, reproduced below, shows a block diagram of relevant portions of such an encoder arrangement. The above excerpt of Figure 1 of the ’524 patent depicts preemphasis filter 103, coupled to receive wideband speech signals (“Sp”) and configured to generate preemphasized speech signal (“S”). Ex. 1001, 7:64–8:18. The output of preemphasis filter 103 (“S”) is applied to LP analysis quantization and interpolation calculator 104 and perceptual weighting filter 105. Id. at 8:19–9:45. Petitioner directs us to no disclosure in Salami of such an arrangement of filters in an encoding device.” slip op. at 17
- BurdenInstitution denied
“Ex. 1008, 23. We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation. Ex. 1003, 65 (the portion of the claim chart of paragraph 114 for this element of claim 1).” slip op. at 19
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,807,524 - On Semiconductor Corporation / Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.All claims unpatentablePTAB · Sep 22, 2017 · IPR2016-00809 · APJ Daniel N Fishman · IPR · Final written decision
Claims 31, 32, 34, 38, 39, and 42 are unpatentable as obvious over Oda and Nakamura because the combination teaches the claimed features, including varying pulse frequency and on-time in the second feedback range.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Panels of the Board have interpreted 315(b) (and our associated rule 37 C.F.R. § 42.101(b)) to mean that “it is only privity relationships up until the time a petition is filed that matter.” Synopsys, Inc. v. Mentor Graphics 5 Patent Owner entered the Merger Agreement into the record as Exhibit 2018. Corp., Case IPR2012-00042, slip op. at 12 (PTAB Feb. 19, 2014) (Paper 60); see also ARRIS Group, Inc. v. TQ Delta LLC, Case IPR2016-00430, slip op. at 6 (PTAB July 1, 2016) (Paper 9). Although not the exclusive factor for establishing privity, control of the requested review procedure is an important factor to establish privity in this context. Our Office Patent Trial Practice Guide explains that “[w]hether a party who is not a named participant in a given proceeding nonetheless constitutes a . . . ‘privy’ to that proceeding is a highly fact-dependent question.” 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). “There are multiple factors relevant to the question of whether a non-party may be recognized as a . . . ‘privy.’” Id. “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. However, it is recognized that there is no definitive test regarding the degree of participation required to establish such control and, hence, to establish a privity relationship. Id.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Similarly, Patent Owner’s arguments regarding the Confidentiality Agreement (Ex. 2026) are insufficient to demonstrate that Fairchild exercised, or could have exercised, any control over this proceeding. PO Resp. 65. The mere exchange of unidentified confidential information and recitations of the Confidentiality Agreement that the parties could be joint defendants in the future, without more, do not provide sufficient evidence that Fairchild has exercised, or could have exercised, any control over this proceeding. Thus, the record lacks sufficient evidence to demonstrate even the opportunity to control this review and, thus, to establish privity between Petitioner and Fairchild.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In our Decision on Institution, we agreed with Petitioner that nothing in the claims or the specification of the ’079 patent limits the term “energy transfer element” to only transformers in a flyback architecture converter and, more specifically, nothing in the claims defines a particular direction of current flow through the terminals of the power switch. Dec. 15–16. Thus, we determined that, in accordance with the broadest reasonable interpretation, “energy transfer element” should not be construed so narrowly as to include only a transformer (flyback topology converter) and to exclude an inductor (buck topology converter). Id. at 16. Instead, we determined “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. Id. After considering all evidence and assertions anew, we discern no persuasive reason to alter our preliminary interpretation and conclude, for the reasons given in our Decision on Institution and this Decision, that “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. See id. at 14–16.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Thus, although we discern no need to expressly construe the phrase “corresponds to” as used in the claims, we determine “corresponds to” as used in the claims is at least as broad as to encompass non-overlapping first 9 Patent Owner’s narrow interpretation demands a one-to-one relationship between the feedback values and the pulse on-time values, i.e., a reversible function in mathematical terms. The ’079 patent Specification does not support such a narrow interpretation. and second ranges of feedback values corresponding to first and second ranges of on-time values regardless of overlap of feedback values in the first and second ranges of feedback values.” slip op. at 25
Patent outcomesUS 6,212,079 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,212,079 - Kingston Technology Company, Inc. v. Spex Technologies, Inc.Institution deniedPTAB · Aug 17, 2017 · IPR2017-00825 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all asserted grounds because Petitioner did not show a reasonable likelihood of prevailing on claims 55 or 57.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Our Rules require that a petition for inter partes review identify “[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is 3 Petitioner proposes a definition for a person of ordinary skill in the art. Pet. 13; see Ex. 1010 ¶ 20. Patent Owner does not challenge this definition. For purposes of this Decision and to the extent necessary, we adopt Petitioner’s definition. found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc)).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. “security module” and “target module” The terms “security module” and “target module” both are recited in each challenged claim. Petitioner identifies a dispute between itself and Patent Owner in related district court litigation as to whether those terms require only “functional (not necessarily physically distinct) modules.” Pet. 15. Specifically, Petitioner points to a statement in an infringement claim chart that appears to have been attached as an exhibit to Patent Owner’s complaint in the litigation that the accused device “has at least two modules, a security module (e.g., cryptographic functionality) and a target module (e.g., storage functionality).” Id. (citing Ex. 1008, 2). Petitioner states that it “expressly disagrees with Patent Owner’s broad construction of the ‘modules’ language as covering structures that are not physically distinct.” Id. Petitioner contends that the proper construction of “module” “requires a structure that performs as a ‘security’ module and another separate (potentially connected) structure that performs as a ‘target’ (e.g., memory module, second security module, etc.).” Id. at 18.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Petitioner does not sufficiently, persuasively explain how Jones’s disclosure of a memory card that “stores information enabling [a] host computer to automatically identify the particular . . . card as soon as the card and host are connected, and to automatically establish [an] appropriate hardware/software interface” teaches or suggests “receiving a request from the host computing device for information regarding the type of the modular device” and “providing the type of the target module to the host computing device in response to the request,” as recited in claim 55. Indeed, Jones’s statement that the card includes information enabling the host to “automatically” identify the card “as soon as the card and host are connected” suggests not only that receipt of a request is unnecessary, but also that the information is not provided “in response to [a] request.” We also are not persuaded by Petitioner’s alternative argument based on a device driver “directly interrogat[ing] the CIS structures in the attribute memory.” Pet. 20. As Patent Owner points out (Prelim. Resp. 16), Jones describes that as separate from the embodiment relied upon by Petitioner as disclosing all other limitations of claim 55, whereas anticipation requires that all of the limitations be arranged or combined in the same way in the prior art as recited in the claim. Net MoneyIN, 545 F.3d at 1371. Moreover, because Petitioner does not advance any argument that the “CIS structures in the attribute memory” perform the remaining claim steps or explain how the “operably connecting” step of claim 55 would be taught or suggested by Jones “in cases wherein the host computer is not provided with PCMCIA Card Services and Socket Services functions,” we agree with Patent Owner that this alternative argument also fails to establish a reasonable likelihood that Petitioner would prevail in its obviousness challenge to claim 55 over Jones.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Petitioner does not sufficiently, persuasively explain how Jones’s disclosure of a memory card that “stores information enabling [a] host computer to automatically identify the particular . . . card as soon as the card and host are connected, and to automatically establish [an] appropriate hardware/software interface” teaches or suggests “receiving a request from the host computing device for information regarding the type of the modular device” and “providing the type of the target module to the host computing device in response to the request,” as recited in claim 55. Indeed, Jones’s statement that the card includes information enabling the host to “automatically” identify the card “as soon as the card and host are connected” suggests not only that receipt of a request is unnecessary, but also that the information is not provided “in response to [a] request.” We also are not persuaded by Petitioner’s alternative argument based on a device driver “directly interrogat[ing] the CIS structures in the attribute memory.” Pet. 20. As Patent Owner points out (Prelim. Resp. 16), Jones describes that as separate from the embodiment relied upon by Petitioner as disclosing all other limitations of claim 55, whereas anticipation requires that all of the limitations be arranged or combined in the same way in the prior art as recited in the claim. Net MoneyIN, 545 F.3d at 1371. Moreover, because Petitioner does not advance any argument that the “CIS structures in the attribute memory” perform the remaining claim steps or explain how the “operably connecting” step of claim 55 would be taught or suggested by Jones “in cases wherein the host computer is not provided with PCMCIA Card Services and Socket Services functions,” we agree with Patent Owner that this alternative argument also fails to establish a reasonable likelihood that Petitioner would prevail in its obviousness challenge to claim 55 over Jones.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,003,135 - Kingston Technology Company, Inc. v. Spex Technologies, Inc.Institution deniedPTAB · Aug 17, 2017 · IPR2017-00824 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution because Kingston did not show a reasonable likelihood that claims 1–3, 6–8, 11–15, 23–28, and 36–39 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we are not persuaded, on this record, that Petitioner has established a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims on the asserted grounds. Accordingly, we deny the Petition and decline to institute an inter partes review of claims 1–3, 6–8, 11–15, 23–28, and 36–39 of the ’802 patent.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“A claim limitation using the phrase “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.2 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Section 112 ¶ 6 provides that: An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Construing a means-plus-function claim term is a two-step process, wherein we first identify the claimed function and then determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351; Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Moreover, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004); Cardiac Pacemakers, 296 F.3d at 1113. This analysis applies similarly under both the broadest reasonable construction and district court-type claim construction standards. See Williamson, 792 F.3d at 1348 (affirming application of § 112 ¶ 6 in district court litigation); In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011)” slip op. at 8
- BurdenNot shown unpatentable
“[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d at 1193). slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d at 1193). slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,088,802 - Unified Patents Inc. v. Nonend Inventions N.V.Rehearing deniedPTAB · Jul 25, 2017 · IPR2016-00174 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied rehearing, leaving intact its findings that claims 1–6 and 8–18 were anticipated by Shastri and claims 1–20 were unpatentable over Goldszmidt-based grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a panel will review the decision for an abuse of discretion.” “An abuse of discretion occurs 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). On rehearing, the burden of showing the Decision should be modified lies with the party challenging the Decision—here, Patent Owner. 37 C.F.R. § 42.71(d). “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.” Id.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“by our rules. Patent Owner’s argument that it received insufficient notice that its preliminary arguments regarding real party in interest (Paper 7, 4–13) would be waived fails to identify an argument we overlooked or misapprehended. Instead, Patent Owner’s argument challenges the propriety of our cautionary order that such arguments not raised in its Response will be waived. Arguments that are not raised in Patent Owner’s Response could not have been overlooked or misapprehended.” slip op. at 4
- BurdenDecided for petitioner
“to Patent Owner. As we observed in our Decision, Patent Owner complied with its burden to produce evidence supporting its position that the patent at issue antedates Shastri. Dec. 18–19 (“We find that Patent Owner has met that burden by producing the Declarations of the inventors of the ’862 patent (Exs. 2018, 2019) and corroborating evidence (Exs. 2020–2027, 2029) that allegedly show conception prior to Shastri, and reasonable diligence through filing of a patent application (constructive reduction to practice) to antedate the filing of Shastri. PO Resp. 11–13.”). As an initial matter, we disagree with Patent Owner’s argument that it provided the only evidence relating to antedating Shastri. Petitioner did provide cross-examination testimony of Patent Owner’s declarants—the inventors of the ’862 patent—concerning this issue, which is “evidence.” Even putting that aside, however, what Patent Owner is actually asserting is that the evidence Patent Owner provided supports only its position, and that, relatedly, Petitioner cannot use that same evidence to support Petitioner’s position. That assertion has no merit. While certainly a party would be expected to present evidence that, on balance, would favor their position, the evidence itself is merely objective information that can be used by any party, as appropriate. To that end, a party submitting evidence submits it at their own peril. In that vein, Petitioner had every right to, and indeed did, reply to Patent Owner’s proffered evidence (inventor Declarations and related documents) by arguing that Patent Owner’s evidence on this issue was not persuasive. Pet. Reply 6–8 (citing Exs. 1014 and 1015). As we discussed in our Decision, we weighed Petitioner’s proffered testimony against Patent Owner’s proffered evidence. Dec. 20–26. We determined that Patent Owner’s proffered evidence in support of its claim to antedate Shastri was not persuasive when viewed in the context of the entire record, including the cross-examination testimony of Patent Owner’s Declarants. Thus, our Decision did not overlook or misapprehend Patent Owner’s arguments to antedate Shastri, nor did we “discard” the “only” evidence on the issue.” slip op. at 5
- Expert testimonyDecided for petitioner
“to Patent Owner. As we observed in our Decision, Patent Owner complied with its burden to produce evidence supporting its position that the patent at issue antedates Shastri. Dec. 18–19 (“We find that Patent Owner has met that burden by producing the Declarations of the inventors of the ’862 patent (Exs. 2018, 2019) and corroborating evidence (Exs. 2020–2027, 2029) that allegedly show conception prior to Shastri, and reasonable diligence through filing of a patent application (constructive reduction to practice) to antedate the filing of Shastri. PO Resp. 11–13.”). As an initial matter, we disagree with Patent Owner’s argument that it provided the only evidence relating to antedating Shastri. Petitioner did provide cross-examination testimony of Patent Owner’s declarants—the inventors of the ’862 patent—concerning this issue, which is “evidence.” Even putting that aside, however, what Patent Owner is actually asserting is that the evidence Patent Owner provided supports only its position, and that, relatedly, Petitioner cannot use that same evidence to support Petitioner’s position. That assertion has no merit. While certainly a party would be expected to present evidence that, on balance, would favor their position, the evidence itself is merely objective information that can be used by any party, as appropriate. To that end, a party submitting evidence submits it at their own peril. In that vein, Petitioner had every right to, and indeed did, reply to Patent Owner’s proffered evidence (inventor Declarations and related documents) by arguing that Patent Owner’s evidence on this issue was not persuasive. Pet. Reply 6–8 (citing Exs. 1014 and 1015). As we discussed in our Decision, we weighed Petitioner’s proffered testimony against Patent Owner’s proffered evidence. Dec. 20–26. We determined that Patent Owner’s proffered evidence in support of its claim to antedate Shastri was not persuasive when viewed in the context of the entire record, including the cross-examination testimony of Patent Owner’s Declarants. Thus, our Decision did not overlook or misapprehend Patent Owner’s arguments to antedate Shastri, nor did we “discard” the “only” evidence on the issue.” slip op. at 5
NonePatents in suitUS 8,090,862
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.