• Zscaler, Inc. v. Symantec CorporationAll claims unpatentable
  PTAB · Nov 13, 2019 · IPR2018-00920 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–19 are unpatentable as obvious over Nortel, Nortel and Stone, Alles and Lin, or Alles, Lin, and Stone.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We credit Dr. Jakobsson’s testimony, which is supported by evidence cited above, and determine the Petition and supporting evidence show that a person of ordinary skill in the art would have understood Nortel’s processing rules comprise software instructions to perform specific functions, and that a person of ordinary skill would have considered software instructions to perform specific functions to be applications. We rely on Nortel’s teaching of a processor group configured with processing rules to provide service policies such as security functions, and Dr. Jakobsson’s testimony and his supporting evidence that a person of ordinary skill in the art would have understood that security functions are provided by software applications, to determine that Nortel and the knowledge of a person of ordinary skill in the art teaches “a plurality of application processing hardware modules, each configured with an application for processing data packets” as recited in claim 1 and the corresponding limitation of 13. Ex. 1004, 3:5–9, 23:1–29, Fig. 6A; Ex. 1003 ¶¶ 80–85 (citing Ex. 1004, 3:5–9, 9:12–14, 9:16–19, 14:28–15:2, 15:4–6, 23:3–6, Fig. 6A; Ex. 1012, 4, 6; Ex. 1013, 4).” slip op. at 12

  • BurdenFwd all claims unpatentableUnpatentable

    “For the reasons given above, we determine that the Petition and supporting evidence show, by a preponderance of the evidence, that Nortel in view of the knowledge of a person of ordinary skill in the art would have rendered claims 1 and 13 obvious.” slip op. at 20

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

    “applications includes parallel transmitting of the identified data packets to each of the identified application processor modules.” Claim 14 recites a similar limitation. Petitioner, relying on testimony of Dr. Jakobsson, contends the cited art renders these limitations obvious because it would have been obvious to a person of ordinary skill in the art to apply Stone’s teaching of parallel transmission to Nortel’s ISN, such that the switch fabric transmits data packets in parallel to the packet service cards. Pet. 37–38 (citing Ex. 1004, 21:1–5, 22:31–32, 23:1–29, Figs. 4, 6A; Ex. 1005, 12:58– 13:18, Fig. 4; Ex. 1003 ¶¶ 160–162), 42. Petitioner, relying on testimony of Dr. Jakobsson, contends a person of ordinary skill in the art would have applied Stone’s parallel data transfer to the switch fabric of Nortel for the benefit of increasing the speed of transmitting a subscriber’s data packets to the appropriate service cards. Pet. 43–46 (citing Ex. 1005, 11:59–61; Ex. 1003 ¶¶ 192–199). Dr. Jakobsson testifies that a person of ordinary skill in the art would have been motivated to transfer data packets in parallel between Nortel’s switch fabric and packet service cards in order to increase the operating speed and efficiency of the system. Ex. 1003 ¶¶ 190–192 (citing Ex. 1012, 8; Ex. 1005, 11:59–61). We credit Dr. Jakobsson’s testimony and determine the Petition and supporting evidence articulates a reason with a rational underpinning that a person of ordinary skill in the art would have applied Stone’s teaching of transferring data packets in parallel, to transfer data packets in parallel between Nortel’s switch fabric and packet service cards, for the benefit of increasing speed as taught by Stone. We determine that the Petition and supporting evidence show by a preponderance of the evidence that the combination of Nortel and Stone would have rendered claims 2 and 14 obvious.” slip op. at 24

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

    “For purposes of this decision, we determine no terms need an explicit construction to resolve a controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy). We address claim interpretation to the extent necessary within the unpatentability analysis.” slip op. at 7

  Patent outcomesUS 9,525,696 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,525,696
• Trustid, Inc. v. Next Caller, Inc.All claims unpatentable
  PTAB · Oct 24, 2019 · IPR2018-01066 · APJ Jean R Homere · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious under § 103(a) over Bushnell, Bala, and Pickering.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation and citation omitted). In that regard, Petitioner’s Declarant, Leonard J. Forys, Ph.D., testifies that a person with ordinary skill in the art at the time of the invention would have had a B.S. degree in Computer Science, or Electrical Engineering, or similar engineering discipline with an emphasis in communications and at least three years of experience designing and/or developing contact center solutions, including network interconnection, computer-telephony integration, and customer and agent interfaces. Ex. 1032 ¶¶ 56–58. Further, Petitioner contends that the level of ordinary skill could have varied somewhat so as to allow industry experience and education to compensate for each other. Pet. 8. Patent Owner’s response does not address Petitioner’s proposed assessment of the level of the ordinary skill in the art. On this record, we observe that Petitioner’s undisputed assessment of a person of ordinary skill in the art appears to be consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt the Petitioner’s proposed level of ordinary skill in the art.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “a. Centralized Caller profile System Patent Owner argues “Centralized Caller Profile System,” recited in the preamble of independent claims 1 and 11, is limiting and refers to caller profiles in a central location accessible and revisable by multiple parties. PO Resp. 8–9. According to Patent Owner, unlike caller profiles traditionally stored at a single location, the caller profiles are stored at a centralized database accessible and updatable by the user and authorized third parties (e.g., user’s agent, service provider). Id. at 9–10 (citing Ex. 2005 ¶¶ 40–44). Accordingly, Patent Owner submits that, as acknowledged by Petitioner, “Centralized Caller Profile System” encompasses not only caller profiles located at a single location, but also that which is accessible and revisable by multiple parties. Id. at 10–11 (citing Ex. 2005 ¶¶ 38, 44–54, Ex. 2004, 17:2– 18:7, 18:9–13, 21:7–14). Patent Owner therefore argues that Petitioner’s contention that the preamble is not limiting for lack of antecedent basis, and relates merely to a location (e.g. centralized or on the cloud) is not persuasive because it overlooks the ’612 patent’s description that the “Centralized Caller Profile System” permits multiple parties to access the database. Id. at 11–12, Sur-Reply 2–4. In response, Petitioner reasserts that the preamble is not limiting because it does not provide antecedent basis for and does not breathe meaning into the claims. Pet. Reply 3, Pet. 25. According to Petitioner, because the proposed construction of the preamble is already recited in the claim, namely “the Cloud Database is maintained [(meaning ‘accessible and revisable’)]” by each of a service provider, user, and third party, the reading of the preamble into the claim is duplicative and thereby non-limiting. Pet. Reply 3. We agree with Petitioner insofar as it is undisputed by the parties that the claim, as a whole, requires the Centralized Caller Profile System that comprises the Cloud Database including contents, which are maintained (i.e., accessible and revisable) by each of a user, a service provider, and a third party. Consequently, it is immaterial whether the preamble, which recites similar limitation, is limiting or not.” slip op. at 7

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

    “We agree with Patent Owner that, consistent with the cited disclosure of the ’612 patent, a POSITA would have understood that maintaining the “Cloud Database” relates to updating the “Content” thereof. PO Resp. 12– 13. As correctly noted by Patent Owner, the disclosure of the ’612 patent discusses in great detail updating the “Content” of the Cloud Database in connection with maintaining the Database, whereas Petitioner has not provided any references in the ’612 patent to support that maintaining the “Cloud Database” pertains also to updating the software and hardware thereof. Id., Sur-Reply 5–6. Accordingly, we construe “the Cloud Database is maintained” as being limited to updating or revising the “Content” of the caller information (e.g., profile or billing info) in the “Cloud Database”.” slip op. at 10

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

    “5. Obviousness Analysis Petitioner provides explanations to account for all of the claim limitations required by claims 1–20, and reasons combining the teachings of Bushnell, Pickering, and Bala, citing Dr. Forys’s Declaration for support. Pet. 25–74, Ex. 1032. We begin our analysis with claim 1. We have reviewed the Petition, Patent Owner Response, Petitioner’s Reply, and Patent Owner’s Sur-Reply as well as the relevant evidence discussed in those papers and other record papers. We are persuaded that the record before us establishes Petitioner’s contentions for claims 1–20 by a preponderance of the evidence.” slip op. at 20

  Patent outcomesUS 9,143,612 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,143,612
• Apple Inc. v. Corephotonics, Ltd.Rehearing denied
  PTAB · Aug 5, 2019 · IPR2018-01348 · APJ Bryan F Moore · IPR · Rehearing

  The Board denied Apple’s rehearing request, leaving in place the denial of institution because the petition did not show a sufficient motivation to combine Parulski and Christie.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS 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 [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “and Parulski’s teachings of zoom are combinable (id.) and Petitioner has not established that they are predictable variations of each other. Disparate embodiments in one reference can only be combined if they are a “predictable variation” of each other that does not “require a leap of inventiveness.” C.f. Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009); see e.g. Apple Inc. v. Valencell, Inc., Case IPR2017- 01704, slip op. at 10 (PTAB Mar. 27, 2018) (Paper 9) (acknowledging Boston Scientific stands for the proposition that combining two embodiments from the same reference requires an obviousness analysis); LG Display Co., LLC v. Innovative Display Techs LLC, Case IPR2014-01362, slip op. at 13 (PTAB Mar. 2, 2015) (Paper 12) (“The rationale . . . that a person of ordinary skill would ‘pick and choose’ features from various embodiments of Baur, simply because they are in the same patent, is insufficient to demonstrate a reasonable likelihood of prevailing on this challenge”). “Even when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000).” slip op. at 4

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “fused image.” Reh’g Req. 13. The Petition proposed that “fused image” should be construed as “an output image including information from two images.” We determined that construing that term was unnecessary to resolve any controversy. Inst. Dec. 7. We maintain that determination. Petitioner provides a construction for “fused image” but not for “without fusion continuous Zoom video mode output images of the object or scene.” Id. at 9–10. We properly considered the entire claim limitation in assessing whether Petitioner had shown a reasonable likelihood of prevailing in its obviousness challenge. slip op. at 12

  • BurdenDecided for patent owner

    “The burden of persuasion remains on a petitioner in inter partes review proceedings. See DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999). Petitioner appears to now argue that, in order to understand its contentions as to the “without fusion” limitation in Parulski, we were to mine the Petition for references to “switching between Wide sensor and Tele sensor” associated with Golan. We were not required to do so. Id. (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”); c.f. Fieldpiece Instruments, Inc. v. Twin Rivers Eng’g, Inc., Case IPR2017-00362, slip op. at 4 (PTAB Sept. 25, 2017) (Paper 16)(“the portions of the Petition cited in the Rehearing Request relate only to overviews of the references”)” slip op. at 8

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,185,291
• Power Integrations, Inc. v. Semiconductor Components Industries, LLCSome claims unpatentable
  PTAB · May 23, 2019 · IPR2018-00180 · APJ Kamran Jivani · IPR · Final written decision

  Claims 4–7, 9–16, and 18 are unpatentable over Hwang or Hwang and Balakrishnan; claim 17 was not shown unpatentable over Hwang.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Although the parties formulate slightly differently their respective assessments of the skill level, neither party disputes directly the other’s assessment nor makes any arguments related to the assessments. See generally Pet.; PO Resp. The ’221 patent states its disclosure “relates, in general, to integrated circuits and, more particularly, to power converter integrated circuits.” Ex. 1001, 1:9–11. In view of the foregoing, we adopt Patent Owner’s formulation of the level of ordinary skill in the art. Further, this level of ordinary skill is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “construction must begin with the words of the claims themselves.”); In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)) (“As with any claim construction analysis, we begin with the claim language.”). None of the challenged claims (nor even unchallenged claim 8) recites the claimed disabling or terminating occurs in response to the detect signal independent of other circuit conditions or in response only to the detect signal. See Ex. 1001, 12:5–14:36. For instance, independent claim 4 merely recites, “wherein the control circuit disables the switched drive control signal in response to the detect signal.” Id. at 12:49–51. Independent claim 7 similarly recites, “wherein the gating circuit disables the drive control signal in response to the detect signal.” Id. at 13:11–13. Independent claim 9 discloses only, “a first comparator . . . having an output for disabling the pulse generator.” Id. at 13:27–30. Finally, independent claim 15 requires, “comparing the error signal to a reference signal . . . to terminate the step of generating in response to the error signal.” Id. at 14:21–23. Therefore, the plain language of the challenged claims does not, standing alone, support adoption of Patent Owner’s proposed construction.” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “testimony from their respective declarants on whether one of ordinary skill in the art would understand “in response to” as requiring “independent of other circuit conditions.” Compare Reply 2–3 (citing Ex. 1016 ¶¶ 18–21, 26–30; Ex. 2003, 43:16–45:1) with PO Resp. 14–15, 17 (citing Ex. 2001 ¶¶ 42, 44–45.) and Sur-Reply 11–12 (citing Ex. 2001 ¶ 45). Patent Owner further directs our attention to a single sentence of deposition testimony in which Petitioner’s declarant Dr. Szepesi appears to agree with Patent Owner’s construction by stating, in the context of claim 9, that “the output signal of this first comparator disables the output pulses driving the gate of that independent of anything else.” PO Resp. 8 (citing Ex. 2003, 44:16– 45:1). Petitioner rebuts Patent Owner’s arguments by identifying additional deposition testimony and statements made in a second declaration offered by Dr. Szepesi opposing Patent Owner’s construction. Reply 2–3 (citing Ex. 1016 ¶¶ 18–21, 26–30; Ex. 2003, 43:16–45:1). For instance, immediately before the statement Patent Owner cites, Dr. Szepesi testified: Q: “So is it your opinion that an output for disabling the pulse generator must disable the pulse generator regardless of the other conditions in the circuit?” . . . A: “I don't understand your question. I said disabling the pulse generator means that the output of the pulse generator which is providing the pulses to the gate of the main switch, those pulses are disabled. That’s what it means in my opinion in this context.” Ex. 2003, 43:24–44:9. And, in his supplemental declaration, Dr. Szepesi states: As a first matter, I opined during my deposition that “an output disabling a pulse generator” means that “the output signal of this first comparator disables the output pulses driving the gate of that independent of anything else.” But, at the time of my deposition I had not done a focused claim construction analysis of the limitation “a first comparator […] having an output for disabling the pulse generator.” This is because I hadn’t anticipated there being a dispute relevant to the validity analysis in view of what I understood as the plain meaning of the language. Despite the quote that Patent Owner relied upon, I believe now that a POSITA would not understand the claim language to require the first comparator to disable the output pulses independent of anything else. This belief is consistent with my responses to the first two of three successive questions in which I was asked about “disabling the pulse generator.” It is my opinion that the operation of the disclosed embodiment requires the presence of other conditions precedent before the first comparator can disable the drive pulses and this requirement is not excluded by the claim language. Ex. 1016 ¶ 18 (emphasis added). Our reviewing court has made clear that extrinsic evidence “is generally of less significance than the intrinsic record” in matters of claim construction. Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir. 2016) (citation omitted). Here, beyond competing declarant testimony, neither party has entered into the record extrinsic evidence, such as dictionary definitions or contemporaneous usage in the art, addressing the scope of “in response to.” Having considered the testimony upon which Patent Owner relies and weighing it against the claim language itself, the Specification’s disclosures set forth above, and the contrary testimony of Petitioner’s declarant, we find on balance that it does not warrant departing from the plain and ordinary meaning of “in response to” as Patent Owner urges. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (holding that an inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision”) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992)).” slip op. at 17

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

    “Claim 4 further recites, “a control circuit having an input coupled for receiving the detect signal, wherein the control circuit disables the switched drive control signal in response to the detect signal.” Patent Owner’s sole contention with respect to claim 4 is that “[t]he alleged detect signal in Hwang does not satisfy this limitation” because “unlike the ’221 patent, the alleged ‘control circuit’ does not disable the switched drive control signal ‘in response to the detect signal’ independent of other circuit conditions.” PO Resp. 15–16. As discussed above, we decline to import into claim 4 a requirement that the claimed disabling must occur independent of other circuit conditions. See supra Section III.C.1. Because Patent Owner’s argument relies on a claim construction that we rejected above, we are not persuaded that Hwang fails to meet the limitations of claim 4. Rather, having reviewed the evidence cited by Petitioner, we agree with Petitioner that Hwang discloses the limitations of independent claim 4, arranged as recited in the claim. Petitioner’s analysis, as supported by the Szepesi Declaration, further demonstrates where Petitioner contends each element of dependent claims 5 and 6 is disclosed in Hwang. Pet. 21–24. Patent Owner does not dispute Petitioner’s analysis beyond the argument raised with respect to claim 4. See PO Resp. 17. Having reviewed the evidence cited by Petitioner, we agree with Petitioner that Hwang discloses the limitations of dependent claims 5 and 6, arranged as recited in these claims, and we adopt that analysis as our own. Accordingly, for the foregoing reasons, we find Petitioner has shown by a preponderance of the evidence that Hwang anticipates claims 4–6.” slip op. at 25

  Patent outcomesUS 6,597,221 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,597,221
• RPX Corporation / Huawei Enterprise USA, Inc. et al. v. Parity Networks, LLCAll claims unpatentable
  PTAB · Apr 9, 2019 · IPR2018-00100 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1–19 are unpatentable: claims 1–4, 6–9, 11–16, and 18–19 as obvious over Wilford; claims 5, 10, and 17 as obvious over Wilford and Ayres.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts a person of ordinary skill in the art of the subject matter of the ’378 patent would have had “(a) a bachelor’s degree in computer science or electrical engineering, and four or more years of experience with networks and networking devices, or (b) a master’s degree in computer science or electrical engineering, and two or more years of experience with networks and networking devices.” Pet. 10 (citing Ex. 1105 ¶¶ 30–34). Patent Owner does not offer a proposed level of skill in its Patent Owner Response and does not address Petitioner’s assertions regarding the education or experience of an ordinarily skilled artisan at the time of the invention. See generally PO Resp. We adopt Petitioner’s articulation of the level of skill and acknowledge that the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima, 261 F.3d at 1355; GPAC Inc., 57 F.3d at 1579 (Fed. Cir. 1995); Oelrich, 579 F.2d at 91.” slip op. at 8

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

    “All challenged claims require a “hardware queue.” Petitioner argues “under BRI, the term ‘hardware queue’ should be interpreted to include hardware that is configurable by software to form a queue.” Pet. 42 (citing Ex. 1105 ¶ 210). Petitioner also suggests that an alternative definition of the term could “require special-purpose hardware circuitry to control at least some portion of the queue.” Id. at 44. Patent Owner does not define explicitly “hardware queue.” Nevertheless, Patent Owner’s declarant asserts “[t]he plain and ordinary meaning of a hardware queue, is well known,” i.e., that “such a queue would be designed by a circuit designer and formed to function as a queue as part of the manufacturing process of an electronic circuit,” and that it differs from a software queue “formed by software operating on general purpose or multi-purpose hardware.” Ex. 2001 ¶ 34. Additionally, Patent Owner’s argument in the Patent Owner Response suggests “hardware queue” means that the queue cannot be a “software queue” and “must be implemented in hardware.” PO Resp. 7, 9–12 (stating “Petitioners do not assert that the queue must be implemented in hardware”).” slip op. at 9

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

    “Petitioner demonstrates reasons supported by a rational underpinning for combining Wilford and Ayres, including at least that the combination uses known methods to obtain predictable results. Pet. 61–66. For example, Petitioner provides evidence and argument that: A [person of ordinary skill in the art at the time of the invention] would have understood that monitoring CPU utilization as taught in Ayres is a conventional technique for monitoring CPU load in relation to the CPU’s capacity, and that known technology could be employed in Wilford to monitor utilization of the linecard’s CPU (as Ayres does) and provide that information to the added dynamic packet flow rate control module. (Lavian, ¶259 (discussing Ayres and citing Ex. 1112 at 4:67, 9:62-65, 10:18- 20, and 10:26)). Pet. 66. We agree with and adopt Petitioner’s contentions in the Petition as to claims 5, 10, and 17.” slip op. at 36

  • Strike new argumentNew argument consideredDenied

    “because it contains allegedly new arguments. Paper 24. Specifically, Petitioner states Patent Owner argued for the first time “a hardware queue” requires some unspecified “structure” “define[d]” by hardware “such as shift registers.” Paper 42, 2 (citing Sur-Reply at 2–3). Petitioner also asserts that Patent Owner, for the first time in “[t]he Sur-Reply[,] offers unsupported attorney arguments about alleged differences between the ‘hardware queues’ in Exs. 1110 and 1111 and Wilford’s queues based on alleged differences between SRAM and DRAM.” Paper 42, 3 (citing Sur-Reply at 2–3). Petitioner asserts Patent Owner’s arguments could have been made in the Patent Owner Response and thus are waived. Paper 8, 3 (arguments not in POR “will be deemed waived”); Update to the Trial Practice Guide (83 Fed. Reg. 38,989 (Aug. 13, 2018) (notifying the public of the updated “Trial Practice Guide” and its accessibility through the USPTO website: https://go.usa.gov/xU7GP)) at 15 (a “sur-reply that raises a new issue or belatedly presents evidence may not be considered”; a sur-reply may “respond” to arguments “raised” in the reply but “respond … does not mean embark in a new direction with a new approach as compared to positions taken in a prior filing.”). Petitioner’s motion is denied. Patent Owner’s reference to “shift registers” is in response to arguments in the Reply regarding the definition of hardware queue. Additionally, Patent Owner’s reference to Exhibits 1110 and 1111 are in response to Petitioner’s reference to those exhibits for the first time in its Reply.” slip op. at 37

  Patent outcomesUS 6,738,378 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,738,378
• Nikon Corporation v. Carl Zeiss AG And ASML Netherlands B.V.Rehearing denied
  PTAB · Feb 1, 2019 · IPR2018-00686 · APJ Bryan F Moore · IPR · Rehearing

  The Board denied Nikon’s rehearing request, leaving institution denied for claims 1–5, 7–10, 16, 24, and 30–33 based on § 325(d) and the priority-date analysis.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically 1 The Petition, in an apparent typographic error, omits claim 5 from its listing of challenged claims on page 1. identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “In the Institution Decision, we denied institution of Ground 1 based on our discretion under 35 U.S.C. § 325(d). Inst. Dec. 17. Specifically, we determined that the Kaifu reference relied on by Petitioner was considered during prosecution. Id. Petitioner asserts that we misapprehended or overlooked its arguments regarding why its contentions as to Kaifu were not considered by the Examiner.” slip op. at 3

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “written description. To satisfy the written description requirement of 35 U.S.C. § 112 ¶ 1, the specification must “clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (internal brackets omitted) (en banc) (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). Thus, the specification must reasonably convey to those skilled in the art that the inventor possessed, at the time of filing, the subject matter that he or she has claimed. Id. “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. Whether a specification complies with the written description requirement is a question of fact. Id. at 1351, 1355. Entitlement to a filing date extends only to subject matter that is disclosed, not to that which is obvious. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997).” slip op. at 7

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

    “We determine that because the open ended term “comprising” was used in the original claim reciting “a” signal, the recitation of “a” signal and “one or more” signals would have the same scope. An indefinite article, such as “a,” in patent parlance encompasses “one or more” when used, as here, in open-ended claims containing the transitional phrase “comprising.” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). “Unless the claim is specific as to the number of elements, the article ‘a’ receives a singular interpretation only in rare circumstances when the patentee evinces a clear intent to so limit the article.” Id. Thus, the claim as amended, which removes the open ended preface “comprising” and changes the modifier of “select signals” from “a” to “one or more,” does not change the scope of the claim in that respect. It merely is a different phrasing. Thus, as we stated in the Institution Decision, any description of a system with one signal would necessarily support a claim to one or more signals. Inst. Dec. 28. Additionally, the claim, as amended, does not suggest there is choice between alternatives that would meet this claim. For example, the claim does not require a choice between a first type of signal and a second type of signal. The claim recites “one” signal, which can be optionally accompanied (“or”) by “more” signals.” slip op. at 8

  Claim construction§ 112 disclosureDiscretionary denial
  Patents in suitUS 9,728,574
• Emerson Electric Co. v. Sipco, LLCSome claims unpatentable
  PTAB · Nov 28, 2018 · IPR2017-00359 · APJ Bryan F Moore · IPR · Final written decision

  Claims 32, 34, 37–38, 55–57, and 59 are unpatentable over Cunningham; claims 1, 3–8, 11–14, 24–31, 36, 42, 43, 46–49, 51–54, and 60–64 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “This argument is conclusory and not supported by sufficient evidence. Moreover, the stated conclusion is vague with respect to the limitation at issue. Petitioner argues that “the node 18 must translate messages” (id. (emphasis added)), but does not explicitly argue that all three recited pieces of information—“the select information, the transmitter identification information, and transceiver identification information”—must be translated. Even assuming Mason’s node must translate all three recited pieces of information, Petitioner does not show that all such translated pieces of information must be further transmitted to the AMR server over the WAN. In particular, Petitioner does not show that transceiver identification information would have to be further transmitted.” slip op. at 21

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

    “Moreover, we agree with Petitioner that such a construction is “non- specific, vague and unhelpful” in the context of the ’692 patent. Reply. 16. Patent Owner’s construction limits “low power” to signals having a “limited transmission range,” but provides no guidance of what “limited” means, or what its boundaries might be. Petitioner argues correctly that Patent Owner’s construction fails to address questions its proposed construction raises, such as, what a ‘limited’ transmission range means and how ‘limited’ the range must be (i.e., what the range’s distance should be), whether the transmission range depends on the particular system or application, and whether other factors should be considered in determining whether the transmission range is limited.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Notably, Petitioner says these contentions are “further evidence” but does not explain how this evidence is to be used to buttress Cunningham’s disclosure or how it is to be combined with Cunningham’s disclosure. Specifically, given the limited contentions in the Petition detailed above, Petitioner does not explain how Energy Management Services or the “routines” described in the Provisional send control signals from the computer to the actuator as required by the claims. For example, even if we to accept that the “Williams Network Control Center” creates control signals as required by the claim Petitioner has not explained how those signals are translated from network transfer protocol to RF signals and then translated to an analog signal that can be used at an actuator. Even though the ’978 Provisional is allegedly incorporated by reference, an obviousness determination still requires--“[w]hether a [obviousness challenge] is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference[--] a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan Co., 868 F.3d 1342, 1346 n. 1 (Fed. Cir. 2017); c.f. Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (finding obviousness shown despite fact that “all of the limitations are found in two separate embodiments pictured side by side in the patent, not in one embodiment” because the party showed motivation to combine and reasonable likelihood of success). Additionally, “there must be evidence presented on the obviousness of the claim as a whole.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1337 (Fed. Cir. 2015) (citing KSR, 550 U.S. at 420, 127 S.Ct. 1727); see also Acorda Therapeutics, Inc. v. Roxane Labs., Inc., 903 F.3d 1310, 1352 (Fed. Cir. 2018) (“The determination of obviousness is made with respect to the subject matter as a whole, not separate pieces of the claim”). Here, the “routines” described in the ’978 Provisional work differently than the “utility prices” embodiment of Cunningham. Petitioner has not explained how those would work together to meet the claim limitations.” slip op. at 30

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

    “Patent Owner’s argument is inapposite, as it is premised on reading a limitation into the claims, namely that the information encoded in the RF signal must be translated in real time. Further, we agree with Petitioner, that even under such an erroneously narrow construction, Cunningham would meet the limitation. In that regard, Petitioner argues that, “although Cunningham discloses sending cumulative data readings, individual signals from the sensor are identified by the gateway and this information is then transmitted (with transmitter identification information) to a computer on the WAN.” Reply 6 (citing Ex. 1046 ¶¶31–32; Ex. 1004, 31:6–28). Petitioner argues, and we are persuaded, that “Cunningham explains that the ‘most current cumulative reading’ is the current absolute ‘reading’ (i.e., information signal) from the sensor (Ex. 1004, 13:44–46) and that two cumulative readings can be used to ‘interpolate’ and ‘recover’ a missed reading (i.e., a signal from the sensor).” Reply 7 (citing Ex. 1004, 13:44–56; 31:6–27; Pet. 75; Ex. 1002 ¶¶115, 152; Ex. 1046 ¶32). We are persuaded that Cunningham discloses this limitation. Lastly, claim 32 also recites “a computer configured to execute at least one computer program that formats and stores select information responsive to the electrical signal for retrieval upon demand from a remotely located device.” To meet this limitation, Petitioner accurately points out that “Cunningham discloses that[,] in response to receiving information from the sensor interface module through the data collection modules, the host module compiles the information into a user specified readable format and stores it for later retrieval upon demand from a customer computer or workstation.” Pet. 83 (citing Ex. 1004, 7:19–27, 44:12–41, 44:53–64, 46:44–61, 47:44–54, Ex. 1002 ¶¶138–140). Patent Owner does not contest that Cunningham discloses “a computer configured to execute at least one computer program that formats and stores select information responsive to the electrical signal for retrieval upon demand from a remotely located device.” See PO Resp. 22–29, 41–46. We are persuaded that Cunningham discloses this limitation. For the forgoing reasons, Petitioner has shown by a preponderance of” slip op. at 37

  Patent outcomesUS 6,437,692 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,437,692
• Power Integrations, Inc. v. Semiconductor Components Industries, LLCRehearing denied
  PTAB · Jul 26, 2018 · IPR2017-01903 · APJ Kamran Jivani · IPR · Rehearing

  The Board denied Power Integrations’ rehearing request, leaving institution denied because it did not show Mammano and the SMP3 Datasheet were publicly accessible printed publications.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 9 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 9 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 4

  • Strike new argumentNew argument disregardedDecided for patent owner

    “we should find that Mammano is a printed publication consistent with the requirements of In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Reh’g Req. 10; see id. at 7–10. We decline to draw now the conclusions argued for the first time in this Request for Rehearing. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. It goes without saying that we could not have overlooked or misapprehended arguments that Petitioner did not make, and it is not an abuse of discretion not to consider such arguments. Thus, Petitioner’s submission of new arguments and evidence in its Request for Rehearing is both improper and unpersuasive.” slip op. at 7

  • BurdenDecided for patent owner

    “Reh’g Req. 13–14. Although we did not require that Petitioner show “every possible detail,” we did require Petitioner to make a threshold showing. In finding that Petitioner failed to make the necessary threshold showing, we applied the standard clearly set forth by our reviewing court in Blue Calypso, Kyocera Wireless, and SRI International to Petitioner’s arguments and evidence. Inst. Dec. 9. A request for rehearing is not an opportunity to reargue positions, elaborate on previous positions, or to disagree with the analysis or conclusions of the panel. See Nestlé Purina Petcare Co. v. Oil-Dri Corp. of Amer., Case IPR2015-00737, slip op. at 8 (PTAB Feb. 9, 2017) (Paper 39) (“Merely disagreeing with our analysis or conclusions does not serve as a proper basis for a request for rehearing.”).” slip op. at 10

  § 102 anticipation
• National Oilwell Varco, L.P. v. Technical Industries, Inc.All claims unpatentable
  PTAB · Jul 18, 2018 · IPR2017-00699 · APJ Jacqueline T Harlow · IPR · Final written decision

  Claims 6 and 20 are unpatentable as anticipated by Assanelli; claims 4, 6, 9, 11, 14, 16, 18, and 20 are unpatentable over Kiefer and Assanelli; claims 6 and 20 are unpatentable over Lam and …

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “In addition, on April 5, Patent Owner filed a Request for Adverse Judgment seeking cancelation of claims 1–3, 5, 7, 8, 10, 12, 13, 15, 17, and 19 of the ’518 patent (Paper 44), which we granted (Paper 50). Claims 4, 6, 9, 11, 14, 16, 18, and 20 of the ’518 patent remain in trial. Id.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In view of the evidence described above, including the sophistication of the technology at issue, and the problems encountered and solutions disclosed in the prior art, we do not find persuasive either Mr. Webre’s or Mr. Sfeir’s opinions concerning the level of ordinary skill in the field. Mr. Webre’s opinion that a relevant skilled artisan would have been “a person that was exposed to tubular inspection methods and equipment that was in commercial use by providers of tubular inspection services or as a user of pipe inspection services” (Ex. 2002 ¶ 11) is based on the faulty premise that an ordinarily skilled artisan would have been one who uses tubular inspection techniques, rather than one who develops them. Furthermore, Dr. Webre’s opinion does not comport with the level of sophistication of the ’518 patent or the prior art, each of which addresses the development of improved methods of pipe inspection, not the rote use of commercially available products. Mr. Webre’s reference to the purported educational criteria for obtaining nondestructive testing certification does not cure the defects in his opinion, as Mr. Webre does not explain what such certification entails, or whether one so certified would be an artisan of” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “In view of the evidence described above, including the sophistication of the technology at issue, and the problems encountered and solutions disclosed in the prior art, we do not find persuasive either Mr. Webre’s or Mr. Sfeir’s opinions concerning the level of ordinary skill in the field. Mr. Webre’s opinion that a relevant skilled artisan would have been “a person that was exposed to tubular inspection methods and equipment that was in commercial use by providers of tubular inspection services or as a user of pipe inspection services” (Ex. 2002 ¶ 11) is based on the faulty premise that an ordinarily skilled artisan would have been one who uses tubular inspection techniques, rather than one who develops them. Furthermore, Dr. Webre’s opinion does not comport with the level of sophistication of the ’518 patent or the prior art, each of which addresses the development of improved methods of pipe inspection, not the rote use of commercially available products. Mr. Webre’s reference to the purported educational criteria for obtaining nondestructive testing certification does not cure the defects in his opinion, as Mr. Webre does not explain what such certification entails, or whether one so certified would be an artisan of 13 ordinary skill in the relevant field, i.e., the development of tubular inspection techniques. In addition, Mr. Webre’s unsupported, conclusory testimony that Assanelli was “inconsistent” with the “then-current industry standard” screening (Ex. 2002 ¶ 16) is unpersuasive, entitled to little weight (37 C.F.R. § 42.65(a)), and seemingly beyond the scope of his engagement to testify regarding the level of ordinary skill in the art at the time of invention of the ’518 patent (Ex. 2002 ¶¶ 1–2). Mr. Sfeir’s opinion, which expressly excludes those with “the education, training, experience or motivation to attempt to develop a new, allegedly better, way to calculate pipe collapse pressure” as ordinarily skilled artisans (Ex. 2003, 3) suffers from the same shortcomings as Mr. Webre’s opinions, in that it ignores the level of sophistication of the technology and prior art at issue. In addition, Mr. Sfeir does not provide evidentiary support for his opinions; as such, we give them little weight (37 C.F.R. § 42.65(a)).” slip op. at 13

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

    “to . . . compute the effect of stressors on the wall of said tubular good” (Ex. 1001, 10:4–7), and that requirement is captured by our construction of that claim phrase to mean “causing a computer to use at least some of the information contained in the computer readable recording to compute the effect, on the strength of the tubular, of stressors applied to the tubular” 18 (Inst. Dec. 8). To the extent Patent Owner contends that the term “computer” should be understood in accordance with its plain and ordinary meaning, i.e., as referring to a device for performing calculations on data, we agree, and observe that such understanding is captured by our original construction. Accordingly, for the reasons above, as well as those set forth in the Decision to Institute (id.), we construe the phrase “causing a computer means to use at least some of the information contained in said computer readable recording to compute the effect of stressors on the wall of said tubular good” to mean “causing a computer to use at least some of the information contained in the computer readable recording to compute the effect, on the strength of the tubular, of stressors applied to the tubular.”” slip op. at 18

  Patent outcomesUS 7,401,518 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,401,518
• National Oilwell Varco, L.P. v. Technical Industries, Inc.All claims unpatentable
  PTAB · Jul 18, 2018 · IPR2017-00648 · APJ Jacqueline T Harlow · IPR · Final written decision

  Claim 4 was held unpatentable as anticipated by Assanelli and obvious over Kiefer and Assanelli and over Lam and Assanelli.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “On April 5, 2018, Patent Owner filed a Request for Adverse Judgment, disclaiming and canceling claims 1–3 of the ’887 patent (Paper 41), which was granted on July 11, 2018 (Paper 44).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In view of the evidence described above, including the sophistication of the technology at issue, and the problems encountered and solutions disclosed in the prior art, we do not find persuasive either Mr. Webre’s or Mr. Sfeir’s opinions concerning the level of ordinary skill in the field. Mr. Webre’s opinion that a relevant skilled artisan would have been “a person that was exposed to tubular inspection methods and equipment that was in commercial use by providers of tubular inspection services or as a user of pipe inspection services” (Ex. 2002 ¶ 11) is based on the faulty premise that an ordinarily skilled artisan would have been one who uses tubular inspection techniques, rather than one who develops them. Furthermore, Dr. Webre’s opinion does not comport with the level of 11 sophistication of the ’887 patent or the prior art, each of which addresses the development of improved methods of pipe inspection, not the rote use of commercially available products. Mr. Webre’s reference to the purported educational criteria for obtaining nondestructive testing certification does not cure the defects in his opinion, as Mr. Webre does not explain what such certification entails, or whether one so certified would be an artisan of ordinary skill in the relevant field, i.e., the development of tubular inspection techniques. In addition, Mr. Webre’s unsupported, conclusory testimony that Assanelli was “inconsistent” with the “then-current industry standard” screening (Ex. 2002 ¶ 16) is unpersuasive, entitled to little weight (37 C.F.R. § 42.65(a)), and seemingly beyond the scope of his engagement to testify regarding the level of ordinary skill in the art at the time of invention of the ’887 patent (Ex. 2002 ¶¶ 1–2). Mr. Sfeir’s opinion, which expressly excludes those with “the education, training, experience or motivation to attempt to develop a new, allegedly better, way to calculate pipe collapse pressure” as ordinarily skilled artisans (Ex. 2003, 3) suffers from the same shortcomings as Mr. Webre’s opinions, in that it ignores the level of sophistication of the technology and prior art at issue. In addition, Mr. Sfeir does not provide evidentiary support for his opinions; as such, we give them little weight (37 C.F.R. § 42.65(a)). Accordingly, we find that Petitioner’s description of a relevant skilled artisan as possessing at least a Bachelor of Science degree in mechanical, petroleum, or chemical engineering, and having at least 2–3 years of experience with pipe testing technology is supported by the record as a” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “In view of the evidence described above, including the sophistication of the technology at issue, and the problems encountered and solutions disclosed in the prior art, we do not find persuasive either Mr. Webre’s or Mr. Sfeir’s opinions concerning the level of ordinary skill in the field. Mr. Webre’s opinion that a relevant skilled artisan would have been “a person that was exposed to tubular inspection methods and equipment that was in commercial use by providers of tubular inspection services or as a user of pipe inspection services” (Ex. 2002 ¶ 11) is based on the faulty premise that an ordinarily skilled artisan would have been one who uses tubular inspection techniques, rather than one who develops them. Furthermore, Dr. Webre’s opinion does not comport with the level of 11 sophistication of the ’887 patent or the prior art, each of which addresses the development of improved methods of pipe inspection, not the rote use of commercially available products. Mr. Webre’s reference to the purported educational criteria for obtaining nondestructive testing certification does not cure the defects in his opinion, as Mr. Webre does not explain what such certification entails, or whether one so certified would be an artisan of ordinary skill in the relevant field, i.e., the development of tubular inspection techniques. In addition, Mr. Webre’s unsupported, conclusory testimony that Assanelli was “inconsistent” with the “then-current industry standard” screening (Ex. 2002 ¶ 16) is unpersuasive, entitled to little weight (37 C.F.R. § 42.65(a)), and seemingly beyond the scope of his engagement to testify regarding the level of ordinary skill in the art at the time of invention of the ’887 patent (Ex. 2002 ¶¶ 1–2). Mr. Sfeir’s opinion, which expressly excludes those with “the education, training, experience or motivation to attempt to develop a new, allegedly better, way to calculate pipe collapse pressure” as ordinarily skilled artisans (Ex. 2003, 3) suffers from the same shortcomings as Mr. Webre’s opinions, in that it ignores the level of sophistication of the technology and prior art at issue. In addition, Mr. Sfeir does not provide evidentiary support for his opinions; as such, we give them little weight (37 C.F.R. § 42.65(a)).” slip op. at 11

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

    “Claim 4 expressly requires the use of a “computer means to compute the effect of stresses on the wall of said tubular good” (Ex. 1001, 10:36–38), and that requirement is captured by our construction of that claim phrase to 16 mean “using a computer to compute the effect, on the strength of the tubular, of stressors applied to the tubular” (Inst. Dec. 8). To the extent Patent Owner contends that the term “computer” should be understood in accordance with its plain and ordinary meaning, i.e., as referring to a device for performing calculations on data, we agree, and observe that such understanding is captured by our original construction. Accordingly, for the reasons above, as well as those set forth in the Decision to Institute (Inst. Dec. 8–9), we construe the phrase “using a computer to compute the effect of stresses on the wall of said tubular good” to mean “using a computer to compute the effect, on the strength of the tubular, of stressors applied to the tubular.” We further note that there is no meaningful dispute between the parties concerning the interpretation of “computer,” as Petitioner contends that Assanelli discloses the use of a computer to perform calculations, i.e., finite element analysis (“FEA”) or finite element modeling (“FEM”),2 using data obtained from inspection of a tubular good in order to model the effect of various stresses on that tubular good. See, e.g., Pet. 23–24 (describing the data acquisition and FEA modeling steps disclosed by Assanelli).” slip op. at 16

  Patent outcomesUS 7,263,887 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,263,887

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.