- Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentablePTAB · Nov 30, 2020 · IPR2019-01044 · APJ Timothy J Goodson · IPR · Final written decision
Claims 1–8 were not shown unpatentable under § 103 over Hedderwick, Koning, and Benac because Petitioner did not establish motivation to combine or a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedPetitioner expert discountedDecided for patent owner
“have had either (1) a bachelor’s degree plus four years of experience in mechanical engineering, agricultural engineering, or a related field or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 42 (citing Ex. 1002 ¶¶ 19– 20). In the testimony the Petition cites in support of that proposal, Mr. Prairie lists factors that are typically considered in assessing the level of ordinary skill in the art, and then states “[b]ased on these factors together with my experience and expertise,” his opinion of the level of ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–20. This conclusory testimony is entitled to little weight. See 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.”).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).6 That standard “includ[es] construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). V. OBVIOUSNESS OVER HEDDERWICK, KONING, AND BENAC” slip op. at 14
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Patent Owner’s expert, Dr. Glancey, explains that [i]f a wheel is used to load and place seeds within a moving belt with brush hairs, the wheel must be able to disengage from seeds while the seeds remain in between brush hairs. If the wheel maintains contact with the seed after the seed has moved into the brush hairs, the wheel will continue to apply force to the seed and eject or remove the seed from the profile of the brush hairs . . . . Ex. 2200 ¶ 223. Dr. Glancey testifies, credibly, that in Petitioner’s combination, seeds would have been rejected from the belt because, as the paddle wheel rotates, seeds “would be scooped through the belt.” Id. ¶ 225.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“way the references use endless members in the form of brush belts and paddle wheels, versus the way Petitioner uses those components in the proposed combination. Contrary to Petitioner’s and Mr. Prairie’s assertions, the proposed combination does not merely apply known techniques to a known device, because none of the cited references use brush belts and paddle wheels in the manner Petitioner proposes. As discussed in greater detail below, Benac teaches that a paddle wheel can be used to ensure that seeds jammed in vacuum holes are released reliably, and then dropped to the ground. Benac does not address brush belts as an endless member and, therefore, does not teach that paddle wheels can be used to guide seeds into the bristles of a brush belt, as Petitioner proposes. See Pet. 64. And Koning does not teach a brush belt that captures seeds released from above, as Petitioner and Mr. Prairie propose. See Pet. 61–62; Ex. 1002 ¶ 104; Ex. 2193, 190:10–191:3; Ex. 2263, 167:21–170:9. Rather, Koning’s brush belt maintains the relative position of potatoes lying on a conveying surface by holding them from above while the conveyor moves them to the furrow. Ex. 1004, 3:16–24, 5:3–14, Fig. 4. Petitioner’s arguments do not adequately account for these differences between the references’ use of a brush belt as an endless member and paddle wheels versus the proposed combination. Moreover, Patent Owner points out problems ordinarily skilled artisans would have encountered in attempting to combine the references as Petitioner proposes. Petitioner does not persuasively explain how those issues could have been overcome, and instead simply asserts, essentially, that ordinarily skilled artisans could have figured it out. See, e.g., Ex. 1135 ¶ 80. It is Petitioner’s burden to establish that ordinarily skilled artisans would have been motivated to combine the success in doing so. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that burden.” slip op. at 28
Patent outcomesUS 8,813,663 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,813,663 - Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentablePTAB · Nov 30, 2020 · IPR2019-01046 · APJ Timothy J Goodson · IPR · Final written decision
Claims 1 and 3 were not shown unpatentable over Hedderwick, Koning, and Yamahata under § 103 because Petitioner did not establish motivation to combine or a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Based on the evidence and arguments of record, we determine that the evidence favors Patent Owner’s proposed level of skill. Our determination is primarily based on Dr. Glancey’s analysis and reasons summarized above, as well as the prior art of record and the sophistication of the technology of the ’199 patent. We have considered Mr. Prairie’s opinion, but we give that testimony minimal weight due to the lack of supporting explanation. Accordingly, we adopt Patent Owner’s proposed level of ordinary skill in the art. Specifically, we determine that a person of ordinary skill in agricultural engineering, or a similar field, and two years of experience designing agricultural products or related machinery. Alternatively, a person of ordinary skill in the art would have had five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“IV. CLAIM CONSTRUCTION “In an inter partes review proceeding, a claim of a patent . . . shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).7 That standard “includ[es] construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent” slip op. at 14
- BurdenNot shown unpatentable
“Ex. 1135 ¶ 51. Yet it is Petitioner’s burden to show motivation and reasonable expectation of success for the proposed combination, not Patent Owner’s burden to show that the prior art demonstrates the futility of the proposed combination. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Here, Petitioner’s affirmative showing on motivation and reasonable expectation of success for using Koning’s brush belt in the proposed combination is unpersuasive for the reasons discussed above. And Patent Owner’s evidence of difficulties an ordinarily skilled artisan would have expected to encounter in that proposal serves to highlight the issues that Petitioner’s showing ignores. Petitioner additionally contends that Patent Owner’s arguments are based on the erroneous premise that an ordinarily skilled artisan must be able to physically combine the references. See Pet. Reply 7 (citing In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012)). We disagree. Patent Owner’s arguments, summarized above, simply point out that an ordinarily skilled artisan would not have expected success in combining the references’ teachings in the way Petitioner proposes. Motivation to combine and reasonable expectation of success are properly assessed with reference to the combination as Petitioner has framed it. The Federal Circuit has explained that doing so is not inconsistent with Mouttet. See Samsung, 925 F.3d at 1382–83 (“We will not fault the Board for analyzing Petitioners’ obviousness grounds in the way presented in the Petition.”).” slip op. at 34
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s and Mr. Prairie’s analysis does not acknowledge, much less bridge, the gap between Koning’s use of a brush belt to hold potatoes from above as they lie on a conveying surface, versus the brush belt’s use in above.10 During his deposition, Mr. Prairie resisted agreeing that the potatoes are lying on the conveyor in Koning, testifying that he takes from Koning’s description that “they are captured within the belt with brush hairs. And that there is some weight that’s along the conveying member 23.” Ex. 2193, 96:24–99:25. Mr. Prairie testified that he “do[es]n’t believe the brush hairs support the full weight of the potatoes,” but that Koning did not provide him sufficient information to answer whether the conveying member supports the majority of the weight of the potatoes. Id. at 106:22–107:21. In our view, it is clear from Koning’s description that the potatoes lie on the conveyor and the purpose of the brush belt is to maintain their position relative to each other while they are moved by the conveyor. Ex. 1004, 3:16–24, 5:3–14, Fig. 4; see also Ex. 2205 ¶¶ 140–141 (Patent Owner’s expert, Dr. Glancey, testifying that a simple mechanical analysis shows that in Koning, about 87% of the potatoes’ weight is supported by the conveying member). Mr. Prairie’s refusal to acknowledge the differences between the brush belt’s function in Koning versus the proposed combination undermines the credibility of his testimony that the proposed combination would have been a simple application of a known technique to a known device. 10 See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (noting expert testimony that supported the absence of a motivation to combine: “[I]f I can equate this one to kind of a simple analogy, if you’re trying to build a piece of furniture. What’s a typical thing? You put on a piece of wood. You take a nail, and you hit the nail with a hammer. In control terms, what Mr. Phipps is suggesting is that you put the hammer on the workbench, pick up the piece of furniture and bash the piece of furniture onto the hammer. It’s totally backwards from what I believe one of skill in the art would even attempt . . . .”). have been simple for an ordinarily skilled artisan to adapt Koning’s brush belt for use in the proposed combination, where seeds are deposited onto the brush belt from above—is further undermined by his testimony that he “can’t recall a time where I’ve seen a seed being dropped into a brush belt.” Ex. 2193, 113:5–9; see also Ex. 2263, 81:2–12 (“Q. And you never attempted to drop a seed onto a moving brush belt to see whether that would be inserted into the brush belt, correct? A. As I stated, for the purposes of this case, I did not do any physical experimentation with a moving brush belt as I didn’t feel it was necessary. The prior art discloses sufficient information.”) (objection omitted). Mr. Prairie has “had some industrial design projects where we’ve had to utilize brushes for various applications,” but he “ha[s] not used a brush belt to convey seed.” Ex. 2194, 297:6–16. Mr. Prairie testified that “prior to writing this declaration, brush belt technology was not a specific area that I study, that I was researching.” Ex. 2263, 79:6–9. Indeed, during his initial deposition in this case, the only specific example of a moving brush belt Mr. Prairie could recall seeing was Patent Owner’s ExactEmerge product. Ex. 2193, 108:6–110:10. The basis for Mr. Prairie’s opinion, that a seed would be expected to enter a moving brush belt in the proposed combination, appears to only be Koning itself. Ex. 1002 ¶¶ 79–81; Ex. 2193, 116:12–19, 118:7–23; Ex. 2263, 159:5–160:2. When asked at his deposition, Mr. Prairie did not explain any other engineering analysis he performed to make that determination. Ex. 2193, 114:23–117:12. Mr. Prairie testified that he “did not operate a brush belt for this declaration because [he] didn’t feel it was necessary to make my assessments” and he “did not do study or experimentation on a brush belt as I did not feel it was necessary.” unpersuasive because, as discussed above, Koning does not teach using a brush belt to receive and convey seeds that have been dropped onto it from above. Mr. Prairie does not account for that difference by explaining why an ordinarily skilled artisan would expect Koning’s brush belt to effectively capture and carry seeds dropped from above, as in the proposed combination.” slip op. at 26
Patent outcomesUS 9,480,199 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,480,199 - Vestas-American Wind Technology, Inc. / Vestas Wind Systems A/S v. General Electric Co.Rehearing deniedPTAB · Apr 11, 2019 · IPR2018-01563 · APJ Michael W Kim · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution on all challenged claims and grounds unchanged because the petitions differed in their use of EON and the § 325(d) analysis remained unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“outset, we acknowledge that we did misapprehend or overlook some aspects identified by Patent Owner. Ultimately, however, Patent Owner’s assertions are unpersuasive, because while they certainly highlight the similarities between the two proceedings, they do not address adequately the differences. It is those differences that did, and once again, carry the day, even when we reweigh our previous determination in light of our acknowledged errors.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“on EON is for substantively the same claim limitation, i.e., the recited “uninterruptible power supply.” Compare Pet. 46–48; -01029 Pet. 28–29. The issue, however, are the portions of these petitions that precede those identified by Patent Owner. In the cited portion of -01029 Petition, the only other reference identified is Cousineau. -01029 Pet. 28–29. Neither petition relies on Cousineau for the “uninterruptible power supply.” Accordingly, in the -01029 Petition, we could come to no conclusion other than Petitioner was relying on EON alone for the “uninterruptible power supply.” And it was on that basis that we agreed with Patent Owner that the Office had already considered, and rejected, that position during reexamination. Req. 12.” slip op. at 4
- Other 314aDenied
“In the present case, GE respectfully suggests that an expanded panel is appropriate to secure and maintain uniformity of the Board’s decisions where the same panel has taken inconsistent positions with respect to the same reference (EON), used in the same manner, to challenge the same patent (the ’985 patent), in cases IPR2018-01029 and IPR2018-01563, involving the same parties. The panel came to its conclusion in the DI -01029 following a reasoned and complete Becton, Dickinson analysis, then reaffirmed that conclusion in the -01029 Rehearing Decision, recognizing the reliance on the same art and the same or substantially the same argument that was presented previously to the office. The consistent conclusion of exercising the Board’s discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review is also appropriate here. Req. 14–15. The Chief Judge has considered Patent Owner’s request for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 8
Discretionary denialPatents in suitUS 6,921,985 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Oct 26, 2018 · PGR2018-00039 · APJ Lynne H Browne · PGR · Rehearing
The Board denied GREE’s rehearing request, finding no abuse of discretion in instituting PGR of claims 1–8 based on the § 101 challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“limitations. For example, as noted by Patent Owner, the full quotation is “[i]n a conventional battle game, however, during one battle, the user needs to select a command to determine the action of the player character many times . . . .” Ex. 1001, 1:41–43 (emphasis added). And by modeling that behavior in the future, the number of user operations are reduced. Accordingly, while we acknowledge that it is plausible, during trial, that Patent Owner will be able to show that such a disclosure is insufficient evidentiary support for “a second mode for executing the battle with fewer user operations received from the communication terminal than in the first mode,” we disagree that it has no factual bearing on the above limitation.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached
“not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“address Patent Owner’s countervailing evidence with respect to the above limitations, in particular, paragraphs 24 and 28–34 of Mr. Zyda’s Declaration. Req. 8–9. While we acknowledge that it was not expressly referenced in our Decision, it was taken into account and determined that, while it is worthy of some weight, Petitioner’s evidence and analysis presented a sufficient factual dispute for which trial is warranted. Given the Petition’s adequate analysis, at this stage of the proceeding, about the generic nature of the components recited in the ’308 patent and the lack of inventive means for achieving the results claimed (Pet. 32–39), we are unpersuaded that our Decision granting institution was an abuse of discretion.” slip op. at 5
§ 101 eligibilitycites BerkheimerPatents in suitUS 9,669,308 - Telebrands Corp. v. Tinnus Enterprises, LLCNo claims unpatentablePTAB · Oct 10, 2018 · PGR2017-00015 · APJ Kevin W Cherry · PGR · Final written decision
The Board held claims 1–4 not unpatentable: the obviousness grounds failed to establish the claimed elastic fastener limitation, and claim 3 was not shown indefinite or lacking written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner and determine that a POSA would have been a person having a general knowledge about, and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in mechanical engineering, or the equivalent. This level of skill is consistent with the types of problems and solutions described in the ’612 patent and cited prior art. For example, the ’612 patent describes a fluid inflatable system that uses elastic valve 20A (e.g., mechanical gasket, O-ring, etc.) for sealing fluid inside multiple containers (e.g., water balloons). See Ex. 1001, 1:22–24, 3:10–16. In any event, none of the issues in this case turn on the definition of a POSA, and the prior art of record provides ample evidence of the level of skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill was best determined by the references of record); see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown”’) (internal citation omitted).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“1. Terms Construed in the Institution Decision We construed the term “elastic fastener” in our Decision on Institution, which is set forth in the following table. Inst. Dec. 14. Claim Term Construction in Institution Decision elastic fastener “an elastic element for attaching things together” Neither party disputes the language of this construction. See generally Prelim Resp. 17; Reply. We adopt them for this Final Written Decision. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (quoting Rodale Press, Inc. v. FTC, 407 F.2d 1252, 1256–57 (D.C. Cir. 1968)) (“‘an agency may not change theories in midstream without giving respondents reasonable notice of the change’ and ‘the opportunity to present argument under the new theory.’”)” slip op. at 14
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable
“While the terms “unfilled state” and “filled state” describe the fullness for a container, we do not agree with Petitioner that the claim language requires determining the precise amount of fluid for each state. Section 112(b) requires that we read claim terms in the context of the surrounding claim language, not in isolation. Telebrands, 733 F. App’x at 1020. When we look at the entire claim phrase—“regardless whether the first and second ones of the plurality of containers are in a filled state or an unfilled state”— the plain language is clear that regardless of whether the balloons are in either state, the “at least first and second ones of the plurality of containers are disposed sufficiently close to each other such that they press against each other.” In other words, the exact volume of fluid or water needed to reach a “filled state” does not need to be determined in order to understand the metes and bounds of the claim so as to understand how to avoid infringement. We are further persuaded because this is consistent with the district court’s construction of this term. See Ex. 1023, 19–20.” slip op. at 17
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“Based upon our review of the specification, and consideration of the arguments and evidence presented, Petitioner’s position is not persuasive. We agree with Patent Owner that Petitioner has failed to show that the ’612 patent does not provide such adequate guidance to a person of ordinary skill in the art. On its face, Figure 1 of the ’612 patent (reproduced below) shows containers 18 in contact or pressing against one another with the reasonable clarity required by Vas–Cath Inc. Figure 1 of the ’612 patent is reproduced above. Although the ’612 patent describes, as Petitioner notes, that tubes 16 can be different lengths, we are not persuaded that the ’612 patent’s disclosure of an embodiment with different tube lengths detracts from the concurrent disclosure in Figure 1 of an embodiment, where it is difficult to describe containers 18 as being not in contact with each other. Additionally, we agree with Patent Owner that Petitioner has failed to show adequately that a person of ordinary skill would not have understood the ’612 patent as describing the containers in Figure 1 as pressing against one another in an unfilled state. The ’612 patent indicates Figure 1 shows elastic valve 20A in an open configuration when container 18A is attached to tube 16A to allow container 18A to fill with fluid. Ex. 1001, 3:14–18. In this open configuration, container 18A is to be filled with fluid, after which, “it may be removed from tube 16A, whereupon elastic valve 20A closes, thereby closing the neck of container 18A and sealing the fluid inside.” Id. at 3:18–21 (emphasis omitted). The ’612 patent refers to Figure 1 to describe an embodiment where elastic valve 20A is in an open configuration to fill a container that has not been filled (i.e., unfilled) and removed from tube 16A. Thus, we are persuaded that, at least, Figure 1 and this accompanying description of Figure 1 in the ’612 patent provides sufficient written description for the recited limitation that “at least first and second ones of the plurality of containers are disposed sufficiently close to each other such that they press against each other . . . in a filled state or an unfilled state.”” slip op. at 21
Patent outcomesUS 9,527,612 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 9,527,612 - DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentablePTAB · Jul 25, 2018 · IPR2017-00724 · APJ Michael W Kim · IPR · Final written decision
Claims 19 and 26 are unpatentable: claim 19 as anticipated by Hite and claim 26 as obvious over Hite and Baji; claims 32–36 and 41 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for patent owner
“Petitioner, with supporting testimony from Dr. Negus, argues that a person of ordinary skill in the art would have combined Hite’s system with Hill’s teaching of a high access partition in order to increase storage efficiency and address Hite’s goal of providing “advertisers with less waste and greater cost effectiveness.” Pet. 60; Ex. 1008 ¶ 599 (quoting Ex. 1009, 3:21–35; citing Ex. 1010, 4:54–57). According to Petitioner and Dr. Negus, one of ordinary skill would have had reason to combine Hite and Hill— using Hill’s “high access partition allocated for high access data storage” to “store the high access advertisement data of Hite”—to “yield[] the completely predictable and desirable result” of “decrease[d] read and write times of advertisement data stored in Hite’s” storage devices, including optional video storage device 456. Pet. 60, 65; Ex. 1008 ¶ 599; see also Tr. 107:10–15 (asserting the same). Patent Owner argues Dr. Negus’ assertion that advertising data is” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“at least one addressable and reserved storage space is a partitioned area of a hard disk drive.” Ex. 1003, 49:55–58. Petitioner refers to Hite’s disclosures that its storage devices “can be . . . disks.” Pet. 27–28 (quoting Ex. 1009, 12:6–11; citing Ex. 1009, 10:44–49). Dr. Negus testifies that “‘disks’ at the alleged time of the invention of the ’494 patent were commonly known as ‘hard disk drives.’” Ex. 1008 ¶ 680 (emphases omitted). Petitioner and Dr. Negus represent that a person of ordinary skill in the art would, therefore, “have understood Hite to disclose the use of an entire ‘disk’ (or ‘hard disk’) as the ‘Video Storage Device’” or the RD. Pet. 28 (citing Ex. 1008 ¶ 680). Petitioner, with supporting testimony from Dr. Negus, further contends that “[w]hen the entire ‘hard disk’ storage space is undivided, it is within the broadest reasonable interpretation of the claimed ‘partitioned area of a hard disk drive.’” Pet. 28; Ex. 1008 ¶¶ 680, 683. We disagree. Based on Hite’s explanation that “[t]he storage devices used to implement” its system “can be . . . disks” as well as the evidence before us that “disks” or “hard disks” were known as “hard disks drives” at the relevant time, we agree with Petitioner that an ordinarily skilled artisan would have understood Hite to use an entire disk, hard disk, or hard disk drive for OVS Device 456 and for the RD. Ex. 1009, 10:44–49, 12:6–11; Ex. 1008 ¶ 680; see Ex. 3002 (MICROSOFT COMPUTER DICTIONARY (5th ed. 2002)), 246 (explaining, within definition of “hard disk,” that a “hard disk” is “[a]lso called: hard disk drive” and defining “hard disk drive” as “See hard disk” (emphases omitted)). We part ways with Petitioner, however, in its proffered conclusion that such an “entire,” “undivided” hard disk or hard disk drive falls within the ordinary meaning of “partitioned area of a hard disk drive.” Pet. 28; Ex. 1008 ¶¶ 680, 683; see Ex. 3001, 1087 (defining “partition” as “divide into parts”). The claim language expressly requires a “partitioned area of”—not a whole, entire, or undivided—hard disk drive. Thus, we disagree that an entire hard disk or hard disk drive constitutes the “partitioned area of a hard disk drive” required by claim 32. Accordingly, we are unpersuaded that Hite discloses “wherein said at least one addressable and reserved storage space is a partitioned area of a hard disk drive,” as recited in dependent claim 32. Thus, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 32 is anticipated by Hite.” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“e. Conclusion Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is anticipated by Hite. 4. Dependent Claim 26 Claim 26 depends from independent claim 19 and recites, in relevant part, “processing circuitry configured to dynamically merge the particular advertising data with digital media content that is pre-stored in said at least one storage device.” Ex. 1003, 49:6–9. The plain claim language unambiguously and expressly requires that it is the “digital media content” that must be “pre-stored.” Yet in addressing the limitation, the Petition represents, and Dr. Negus testifies, that Hite discloses “‘particular advertising data’ that is ‘pre-stored in said at least one storage device’ (prior to the ‘dynamic merging’ with ‘digital media content’),” because commercials targeted for a display site or consumer according to CID codes are stored in the RD or video storage device. Pet. 26 (emphasis added); Ex. 1008 ¶ 646 (emphasis added). These assertions that Hite’s system pre-stores what Petitioner identifies as the “particular advertising data,” targeted commercials selected using CID codes, fail to address or show adequately that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as claim 26 explicitly requires. Thus, we are unpersuaded that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as recited in dependent claim 26. Accordingly, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 26 is anticipated by Hite.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“We agree with Patent Owner that Petitioner’s proffered rationale for combining Hite with Hill is not adequately supported by the record. Specifically, we agree with Patent Owner that Petitioner’s assertion that advertising data is “high access” data is a conclusory statement that fails to “articulate specific reasoning, based on evidence of record” to support an obviousness determination. In re: Magnum Oil Tools Int’l, Ltd., 829 F.3d at 1380. Although Hite discusses preempting broadcast commercials with stored commercials at broadcast breaks (see Ex. 1009, 7:24–30), Petitioner does not cite any portion of Hite, or provide any evidence at all, that explains how frequently the advertising data would have been accessed. Accordingly, because Petitioner has not shown adequately that it would have been obvious to one of ordinary skill in the art to combine Hite and Hill to arrive at “addressable and reserved storage space for storing the particular advertising data,” as recited in independent claim 19, we are unpersuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is obvious over Hite and Hill.” slip op. at 27
Patent outcomesUS 9,053,494 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,053,494 - DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentablePTAB · Jul 25, 2018 · IPR2017-00717 · APJ Michael W Kim · IPR · Final written decision
Claims 1–4, 6, 7, 19, 23, 24, and 27 are unpatentable as anticipated by Hite or obvious over Hite; claims 16–18 and 28 were not shown unpatentable.
RulingsFinal written decision- BurdenMixed
“preponderance of the evidence that the specified claims are unpatentable over the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent Owner that “any arguments for patentability not raised in the [Patent Owner Response] will be deemed waived.” Paper 10, 6; see also 37 C.F.R. § 42.23(a) (“Any material fact not specifically denied may be considered admitted.”).5 Additionally, the Board’s Trial Practice Guide states that the Patent Owner Response “should identify all the involved claims that are believed to be patentable and state the basis for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There are arguments and evidence advanced by Petitioner to support its positions, though, that Patent Owner chose not to address in either its Preliminary Response (Paper 7) or Response (Paper 22), or that was not addressed in the Decision on Institution (Paper 9). We have evaluated those unrebutted arguments and the evidence in support, and we find the Petitioner persuasively established, with sufficient evidence, the manner in which the asserted prior art teaches corresponding elements of the claims. Pet. 18–66 (citing Exs. 1008–1010) (unchallenged portions only). Based on the preponderance of the evidence before us, we conclude that the prior art identified by Petitioner describes all limitations of the reviewed claims that were not contested by the Patent Owner in either its Preliminary Response 5 For the reasons noted in our Order (Paper 43, 2–3), however, for this proceeding, we will also consider the arguments set forth in Patent Owner’s Preliminary Response. (Paper 7) or Response (Paper 22). In re NuVasive, 841 F.3d 966, 974 (2016). We address only the contested limitations below.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner
“correspond properly to the claimed storage device, because it is not capable of recording programming content selected by a user for later playback. PO Resp. 14. We are not persuaded by this argument because, as discussed above, we are persuaded that a proper construction of “storage device” does not require recording programming content for later playback. We are persuaded that Petitioner has shown sufficiently that Hite’s OVS Device 456 corresponds properly to the “at least one storage device,” as recited in each of independent claims 1 and 19.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner. Petitioner does not explain sufficiently, and the cited portions of Hite do not disclose, how the method by which the progression is made from “children’s aspirin” to “children’s chewable vitamins.” Dr. Negus’s testimony is similarly unavailing, as the only cited paragraph that plausibly supports their position, paragraph 484, is conclusory and unsupported. Absent such explanation or cited disclosure, we are unpersuaded that Petitioner has shown adequately that the recited “key word” is a part of the progression, as required to meet the claim. 8 At least a portion of Dr. Negus’s testimony aligns with this testimony of Dr. Kesan. Ex. 1008 ¶ 669 (“An exemplary targeting characteristic to optimize advertising format scenarios within Hite is the ‘context code’ that ‘could be appended to the commercial’s CID code’ to be ‘compared with program identification codes appended to the program signals’ such that a ‘commercial is displayed if it is in a specific channel or network or show’ as in the example of ‘skiing equipment commercials would be shown during a skiing down hill racing competition’ (emphasis added, see, for example, Ex. 1009 at 4:34–40).”. Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 4 is anticipated by Hite.” slip op. at 22
- Obviousness (§103) › KSR rationalesUnpatentableDecided for petitioner
“Essentially, Patent Owner assertions are the same as those advanced for the anticipation ground for the same claim. We agree with Patent Owner’s assertions for the same reasons as set forth above. Having said that, the assertions are misplaced, because this is an obviousness ground, and Patent Owner does not address the modification to Hite proposed by the Examiner. To that end, we are persuaded by Petitioner that it would have been obvious to code Hite’s viewer responses using keywords, as we agree that such a technique was common and well known at the time of the invention, and that it would have been an obvious design choice. Ex. 1008 ¶ 486. Indeed, Patent Owner acknowledges this possibility, as they do not assert that using key words would not have been known, just that it may not have been preferable under certain circumstances. PO Resp. 53 (citing Ex. 2003 ¶ 92). Insofar as Patent Owner may be asserting that such a preference teaches away from a modification, we have considered it, but determine that it is outweighed by the evidence of the ubiquity of key word searches at the time of the invention. Indeed, we are unclear as to how, other than using numbers or key words, such searches could have been performed. KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”).” slip op. at 39
Patent outcomesUS 9,053,494 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,053,494 - Fox Factory, Inc. v. Sram, LLCNo claims unpatentablePTAB · Apr 2, 2018 · IPR2016-01876 · APJ Kevin W Cherry · IPR · Final written decision
Claims 7–12 and 20–26 were not proven unpatentable over Hattan and JP-Shimano because the weak motivation to combine was outweighed by objective evidence of non-obviousness.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedPatent owner expert creditedOther
“benefit of improved durability, see Pet. 63, neither the Petition nor JP- Shimano ever tie improved durability to improved chain retention, and the Petition never contends that durability was the rationale to modify Hattan in view of JP-Shimano. See Pet. 62–66. Dr. Neptune admitted that these arguments were not contained in his original declaration. Ex. 2129, 96:16– 97:5. A reply is not the place to raise an almost entirely new motivation to combine. See 37 C.F.R. § 42.23(b). While we will consider this argument, nevertheless, we find that Dr. Neptune’s shifting basis for the rationale to combine the references suggests that his reasoning is motivated heavily by hindsight, and not by what a person of ordinary skill at the time of the invention would have understood. See InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1349 (Fed. Cir. 2014) (holding it is improper to combine references “like separate pieces of a simple jigsaw puzzle” without “explain[ing] what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place these pieces together”). Accordingly, we give little weight to Dr. Neptune’s testimony on rationale to combine. Patent Owner also argues that there is no rationale to combine,” slip op. at 18
- Skill levelSkill level patent owner adoptedDecided for patent owner
“of the effective filing date of the ’027 patent, “would have a skill level of at least a bachelor’s degree in mechanical engineering and/or at least three to five years’ experience in the development and design of chain drive systems and components thereof.” Pet. 1 n.1 (citing Ex. 1002 ¶ 14). Patent Owner contends that a person of ordinary skill would have a bachelor’s degree in mechanical engineering and at least one year of design experience with chainrings or related technologies. PO Resp. 12 n.3 (citing Ex. 2074 ¶ 25). Any difference between these two definitions is insignificant to this analysis. On this record, however, we find Patent Owner’s definition of a person of ordinary skill in the art to be more persuasive given the well-developed, relatively simple nature of the art, and apply it for our analysis.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“on an assumption that the chain retention techniques of Hattan and JP- Shimano are additive, and would “improve chain retention to the maximum extent possible.” Pet. 63, see also Tr. 8:6–9; Ex. 2074 ¶ 50. The Petition and Dr. Neptune’s opening declaration, however, contain no explanation to support or explain this underlying assumption. Ex. 2074 ¶ 50. This gap in Petitioner’s reasoning is problematic, at least in part, because, as Dr. Sturges explains, Hattan discloses that its device prevents the chain from jumping off the forward oblong sprocket under “any operating conditions,” Ex. 1004, 1:63–66, and that it will “compensate for any out of line condition” of the chain line and will “prevent the chain from ever jumping off of the sprocket wheel,” id. at 2:26–27, 2:34–35. Ex. 2074 ¶ 46. In view of Hattan’s disclosure, Dr. Sturges testifies that a person of ordinary skill in the art would have understood that JP-Shimano would not have improved chain retention and engagement in Hattan, because both are directed to solving the same kind of problems that result in chain drop. Ex. 2074 ¶¶ 45–47. For example, Dr. Sturges testifies that Hattan specifically states that its solution prevents chain line displacement chain drops. Id. ¶ 47. Dr. Sturges also testifies that JP-Shimano seeks to address chain drop resulting from chain line displacement. Id. ¶ 45.” slip op. at 16
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner
“Having reviewed Patent Owner’s evidence, we agree with Patent Owner that it has shown that it is entitled to a presumption of a nexus between the evidence secondary considerations tied to the X-Sync chainring and the invention recited in the challenged claims. In particular, we find that 5 Petitioner contends that there are “possibly” other patents that cover Patent Owner’s commercial product (Pet. Reply 22), but does not identify them. Petitioner’s allegations of other patents are too insubstantial to be entitled to any weight. Patent Owner has shown that the various X-Sync chainrings are covered by the challenged claims and are coextensive with them. See Ex. 2074 ¶¶ 63, 64 (testimony of Dr. Sturges that the products practice the claims); Ex. 2078–2089 (claim charts); Ex. 2076 ¶ 11 (explaining the families of products Patent Owner sells); Ex. 2073 ¶ 10 (explaining the families of products Patent Owner sells). Here, the claims are directed to chainrings, as well as cranksets and drivetrains that include chainrings. Thus, there is a presumption of a nexus between the evidence of secondary considerations tied to the X-Sync chainring, as well as to cranksets and drive trains that include the X-Sync chainring, and the challenged claims that recite these bicycle components. See Polaris Indus., 882 F.3d at 1073 (“[The challenged claims] broadly cover the entire vehicle, rather than ‘only a component of a commercially successful machine.’ . . . Moreover, the Board did not point to any limitation it found missing in the RZR vehicles. On these undisputed facts, we hold that the Board erred in failing to find that Polaris’s eight RZR vehicles are the inventions disclosed in [the claims].” (citation omitted)). Petitioner tries to rebut this presumption of a nexus by attempting to shift the burden of proof to Patent Owner to prove that the objective indicia is tied to certain claimed features rather than unclaimed features present in the commercial embodiments. Pet. Reply 26–27. We agree with Patent Owner that this argument improperly attempts to shift the burden to Patent Owner. Sur-Reply 8–9. Here, because Patent Owner has shown that it is entitled to a presumption of a nexus between the X-Sync chainring and the challenged claims, the burden is on Petitioner to rebut that nexus. Demaco, 851 F.2d at 1392. With respect to the improved chain retention of the X-Sync chainring, Petitioner argues that there are numerous unclaimed features, many of which are touted in advertising materials, but Petitioner asserts that none of the claimed features are touted. Pet. Reply 32–33. Petitioner argues that “[i]n light of the unclaimed features touted by [Patent Owner] and the press, and in the absence of any touting/recognition for the claimed combination,” Patent Owner cannot establish a nexus between the claimed invention and the objective indicia. Id. at 33 (citing Ethicon Endo Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1035 (Fed. Cir. 2016)). Although Petitioner points to some evidence touting other features, see id. at 33 (citing Ex. 1055), 42 (citing Exs. 2005, 2008, 2027), we find that this evidence is insufficient to overcome the presumption of a nexus that Patent Owner has established. Moreover, much of the evidence is clearly broader than Petitioner acknowledges. In addition to pointing out unclaimed features, there is also praise pointing generally to the “unique tooth profile,” Ex. 2006, “tooth profile,” Ex. 2008, Patent Owner’s “adaptation of the narrow-wide chainring tooth profile,” Ex. 2019, and the “cleverly profiled chainring,” Ex. 2023.” slip op. at 26
Patent outcomesUS 9,182,027 not shown unpatentable§ 103 obviousnesscites KSRPatents in suitUS 9,182,027 - Fox Factory, Inc. v. Sram, LLCNo claims unpatentablePTAB · Apr 2, 2018 · IPR2017-00118 · APJ Kevin W Cherry · IPR · Final written decision
Claims 7–12 and 20–26 were not proven unpatentable under either § 103 ground because the objective evidence of non-obviousness outweighed the case for obviousness.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“of the effective filing date of the ’027 patent, “would have a skill level of at least a bachelor’s degree in mechanical engineering and/or at least three to five years’ experience in the development and design of chain drive systems and components thereof.” Pet. 1 n.1 (citing Ex. 1023 ¶ 16). Patent Owner contends that a person of ordinary skill would have a bachelor’s degree in mechanical engineering and at least one year of design experience with chainrings or related technologies. PO Resp. 12 n.3 (citing Ex. 2074 ¶ 25). Any difference between these two definitions is insignificant to this analysis. On this record, however, we find Patent Owner’s definition of a person of ordinary skill in the art to be more persuasive given the well-developed, relatively simple nature of the art, and apply it for our analysis.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find that Petitioner has shown a sufficient rationale to combine the teachings of the references. Petitioner has offered evidence that Thompson would have been improved by adding the wide-narrow teeth of JP-Shimano in certain situations when the chain approaches the chairing from the rear gears at an angle. Ex. 1050 ¶¶ 12–14; Ex. 1006, 15:73–75. We find this evidence persuasive and give it significant weight. We do note that we also give some weight to Patent Owner’s evidence that Thompson and JP- Shimano do largely overlap in their solutions, and that the benefits of the combination would be limited. Ex. 2074 ¶¶ 45–50. We find that even though Patent Owner’s arguments do not amount to a teaching away, they do slightly weaken the factual basis of Petitioner’s combination. See Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018) (“But even if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference.”).” slip op. at 15
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusObjective indicia no nexusDecided for patent owner
“Unclaimed features do not prevent the presumption of a nexus, but they may be the basis for rebutting the presumption. Id. To do so, a person challenging patent validity must show that the commercial success, or other objective evidence of non-obviousness, was due to “extraneous factors” including “additional unclaimed features.” Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018). Merely pointing out unclaimed features in the X-Sync chainring is not enough. Id. (“However, a patent challenger cannot successfully rebut the presumption with argument alone— it must present evidence.”).” slip op. at 20
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia outweighedDecided for patent owner
“We have reviewed Patent Owner’s evidence of sales and market share, and find that it demonstrates substantial commercial success within the single chainring market. Ex. 2076 ¶¶ 16–29. In particular, we find the large growth in market share and sales volume, and resulting large market share in the single chainring market, to be indicative of commercial success. Id. ¶¶ 20–29. We find this evidence compelling and entitled to substantial weight. We do not agree with Petitioner’s argument that Patent Owner’s growth in the single-chainring market was primarily due to cannibalization of its multi-chainring market share, and that Patent Owner’s lack of achieved growth in the overall chainring market (single- and multi-) indicates that there was no commercial success. As Patent Owner notes, cannibalization does not preclude commercial success. See Medtronic, Inc. v. Daig Corp., 789 F.2d 903, 907 (Fed. Cir. 1986). Moreover, Patent Owner presented evidence that it has achieved this large market share, in the single-chainring market, while charging between two and eight times the prices of its competitors in the single chainring market. Ex. 2076 ¶ 13 (stating that Patent Owner’s X-Sync chainrings are sold for more than $90, which is at least twice as expensive as the Race Face chainrings, and in some cases eight times more expensive). Patent Owner also noted that this large market share does not include the sales of its competitors who are licensees. Id. ¶¶ 26–29; see also Tr. 16:12–15 (agreeing that Patent Owner’s drivetrain as a whole was a commercial success). Thus, we find that Patent Owner has presented substantial evidence of commercial success. As we noted above, Petitioner points to evidence that the sales information presented is primarily directed to sales of X-Sync chainrings as parts of cranksets and drivetrain groupsets. See Pet. Reply 21–24. We found above that, for data related to cranksets and groupsets, Patent Owner has only established a nexus for claims 11, 12, 25, and 26. Thus, we find that a strong demonstration of a nexus that exists between claims 11, 12, 25, and 26 and this commercial success information. Accordingly, we find that commercial success weighs significantly in favor of non-obviousness of claims 11, 12, 25, and 26.” slip op. at 30
Patent outcomesUS 9,182,027 not shown unpatentable§ 103 obviousnesscites KSRPatents in suitUS 9,182,027 - Twilio Inc. v. Telesign CorporationAll claims unpatentablePTAB · Mar 6, 2018 · IPR2016-01688 · APJ Justin T Arbes · IPR · Final written decision
Claims 1, 2, 4, 6, 8, 10, 11, 13, 15, and 17 are unpatentable as obvious over Bennett and Campbell under § 103(a).
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art at the time of the ’792 patent would have had “at least an undergraduate degree in computer science, or equivalent experience, and in addition would be familiar with Internet and telephone communications.” Pet. 22 (citing Ex. 1002 ¶¶ 11–20). Patent Owner does not dispute Petitioner’s assessment in its Response. Based on the record developed during trial, including our review of the ’792 patent and the types of problems and solutions described in the ’792 patent and cited prior art, we agree with Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for petitioner
“As shown in the chart above, the ’792 patent claims priority as a continuation or divisional application of a series of applications, and as a continuation-in-part (CIP) of U.S. Patent Application No. 11/034,421 (Ex. 1027, “the ’421 application”), filed on January 11, 2005. See Ex. 1001, col. 1, ll. 7–25. Petitioner argues that there is no presumption that the challenged claims are entitled to the filing date of the ’421 application, because the Office did not consider priority during prosecution of the ’792 patent, and the ’421 application does not provide written description support for certain limitations pertaining to the recited “notification event” in independent claims 1 and 10 of the ’792 patent. Pet. 9–15. In our Decision on Institution, we agreed with Petitioner, based on the record at the time, that the challenged claims are not entitled to the filing date of the ’421 application, and the earliest effective filing date of the challenged claims is October 5, 2006. Dec. on Inst. 10–12. Patent Owner does not dispute Petitioner’s assertions regarding the effective filing date of the challenged claims in its Response, and we do not perceive any reason or evidence that compels any deviation from our earlier conclusion. Thus, we adopt the previous analysis, and conclude that Bennett is prior art under 35 U.S.C. § 102(e) and Campbell is prior art under 35 U.S.C. § 102(a).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“reasonable construction in light of the specification of the patent in which [they] appear[ ].” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). In the Decision on Institution, we preliminarily interpreted the claim term “notification event” to mean an event that results in the user being notified that the event occurred. Dec. on Inst. 6–10. The parties apply this interpretation in their Response and Reply, and we do not perceive any reason or evidence that compels any deviation from our earlier interpretation. See Resp. 14–15; Reply 11. We adopt the previous analysis and conclude that no other terms require interpretation.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner’s position, in effect, would require that a single prior art reference have to disclose the full concept of a “notification event” “associated with” an “action” requiring user acknowledgement. See, e.g., PO Resp. 18–19 (arguing that “[t]he Petition would need to rely on Campbell to teach the notification-event limitations . . . because Bennett does not, . . . but Petitioner fails to adequately argue or show that Campbell teaches such actions”); Tr. 18:7–19:9 (acknowledging that there need not be one reference disclosing the entire limitation, but arguing that “one cannot untether the action from the notification event”). The test for obviousness, however, is “what the combined teachings of the references would have suggested to those having ordinary skill in the art.” In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012); see also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1166 (Fed. Cir. 2006) (explaining that in an obviousness analysis, “the prior art must be considered as a whole for what it teaches”); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Petitioner explains sufficiently what the combined teachings of Bennett and Campbell would have suggested to a person of ordinary skill in the art, namely, “events” in Bennett that trigger an SMS message to the user and that have associated “actions,” and adding a sentence to the SMS message in Bennett to provide notification to the user that the event occurred. See Pet. 37–59; Reply 16 (“Bennett discloses different types of ‘actions’ and Campbell discloses ‘notification events.’ . . . Thus, it is the combination of Bennett and Campbell that discloses ‘notification events associated with actions.’”). Thus, we are persuaded that, collectively, Bennett and Campbell account for a “notification event” “associated with” an “action” requiring user acknowledgement, as recited in claim 1.” slip op. at 21
Patent outcomesUS 9,300,792 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,300,792
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.