• Apple Inc. v. Masa LLCAll claims unpatentable
  PTAB · Sep 11, 2017 · IPR2016-00748 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 6–14 are unpatentable: Acharya anticipates them, and Sweeney combined with Acharya renders them obvious.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “1. “Selector Option Switch” Petitioner contends a person of ordinary skill in the art would construe the claim term “selector option switch” as excluding touch screen input devices, because the Specification of the ’834 patent describes a touch screen selector as a substitute for the selector option switch. Pet. 13–14. Patent Owner does not propose further construction of this term. PO Resp. 16. We agree with Petitioner that the broadest reasonable construction of the “selector option switch,” when read in light of the Specification of the ’834 patent, excludes touch screen input devices, because the Specification describes the touch screen selector as a substitute, not as an alternative, for the selector option switch. Ex. 1001, 4:7–9 (“Alternatively, the selector option switch 56 and confirming option switch 62 may be substituted with touch screen selector and confirming options respectively.”). We construe “selector option switch” to exclude touch screen input devices.” slip op. at 6

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

    “2. “Coupled” Patent Owner contends a person of ordinary skill in the art would construe the claim term “coupled” as “connected, directly or indirectly.” PO Resp. 18. Petitioner agrees. Reply 2. Accordingly, we construe the claim term “coupled” to encompass at least a direct connection or an indirect connection.” slip op. at 7

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

    “until the called party is available does not constitute storing an incoming call or text is not commensurate with the scope of the claim. Claim 6 does not limit the first electronic signal to an incoming call or text message. Rather, claim 6 recites a “memory unit further configured to store said first electronic signal.” Column 2 of Acharya discloses that “the portable control device processes the invitation . . . [by] holding the invitation for a specified period of time” (Ex. 1007, 2:48–59), which describes a “memory unit further configured to store said first electronic signal” as recited in claim 6.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable

    “Patent Owner contends Petitioner or its expert did not provide any reason why a person of ordinary skill would have sought to combine particular available elements to reach the claimed invention. PO Resp. 52– 54. According to Patent Owner, Acharya does not suggest a need for transmitting date and time information, or for transmitting, inter alia, a current local weather signal or a current stock ticker signal. PO Resp. 54– 55. Petitioner contends that Acharya discusses the feasibility and motivation to personalize a device to receive different kinds of signals and informational content. Reply 23 (citing Pet. 25–27). Specifically, Petitioner contends that Acharya teaches providing personalized information such as weather conditions or updates on stock prices. Pet. 26–27 (citing Ex. 1007, 15:51–57, 17:39–58, 18:65–19:38). Petitioner contends that a person of ordinary skill in the art would include information such as weather conditions or updates on stock prices as taught by Acharya in the electronic signals received and displayed by the portable device to achieve the predictable benefit of allowing users to receive personalized information as taught by Acharya. Pet. 27. Petitioner’s showing is persuasive. Petitioner provides several reasons, as outlined above, for modifying Acharya. For example, providing different types of information obviously would have appealed to different users, and would have allowed users to personalize their device. See Pet. 26–27. Based on the foregoing discussion and the record, Petitioner has shown by a preponderance of the evidence that the teachings of Acharya render claims 9 and 13 obvious. For independent claims 10 and 14, Petitioner contends persuasively that adding a strap with a buckle fastener to the portable wrist watch device of Acharya would have been obvious because wrist watches commonly have a strap secured to a wearer’s wrist by a buckle in order to secure the device to the wrist. See Pet. 28–29 (citing Ex. 1007, 4:7–13). Based on the foregoing discussion and the record, Petitioner has shown by a preponderance of the evidence that the teachings of Acharya render claims 10 and 14 obvious.” slip op. at 29

  Patent outcomesUS 8,519,834 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,519,834
• Sony Mobile Communications Inc. v. SSH Communications Security OyjRehearing denied
  PTAB · Sep 8, 2017 · IPR2015-01869 · APJ Bryan F Moore · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–8, 10–12, 14–18, 20–23, 25, and 27–29 unpatentable over Shuen and RFC1234, and claim 19 unpatentable over Bellovin.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. 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 successDecided for petitioner

    “mapping for the network address translation” under the Board’s construction of that phrase, i.e., “a property associated with the mapping in which the mapping expires after it has not been used in the translation of a packet for a period of time associated with the mapping,” the Petition cites the following language from Shuen:” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Disclaimer not foundDecided for petitioner

    “from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000) (citations omitted). “To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.” Id. (citations omitted). Whether and to what extent material has been incorporated by reference into a host document is a question of law. Id.” slip op. at 8

  • Strike new argumentNew argument disregardedDecided for petitioner

    “Id. at 3 (emphasis omitted). Notably, Patent Owner did not raise this argument (i.e., that Shuen’s “time to live” does not satisfy the recited “time out . . .” under the Board’s construction) in its Patent Owner Response. Patent Owner asserts, however, it “noted this deficiency of Petitioner’s proofs in the January 18, 2017 hearing” and “[t]his deficiency of Shuen was first raised in Patent Owner’s Preliminary Response.” Req. Reh’g. 4. However, our rules do not allow Patent Owner to incorporate arguments by reference from its Preliminary Response (see 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference form one document into another document”)), and our Scheduling Order provides that any arguments and evidence not contained in the Patent Owner Response will be “deemed waived” (Paper 9, 3). Petitioner asserted at the oral hearing that the argument was new and, as such, Petitioner did not have a reasonable ability to respond to the argument. Tr. 43:8–14. We determine Patent Owner has waived its argument that Shuen does not disclose the “has not been used” portion of our construction of the phrase “time out of the mapping for the network address translation.”” slip op. at 3

  Claim construction§ 103 obviousness
  Patents in suitUS 8,544,079
• Avx Corporation v. Samsung Electro-Mechanics Co., Ltd.Rehearing denied
  PTAB · Aug 16, 2017 · PGR2017-00010 · APJ Sally C Medley · PGR · Rehearing

  The Board denied AVX’s rehearing request, leaving institution on claims 1–4, 6–11, and 13–19 unchanged because AVX showed no abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • Strike new argumentNew argument disregardedDecided for patent owner

    “with “dielectric grains.” Req. Reh’g 3–4. This is a new argument. We could not have overlooked or misapprehended an argument that was never presented by Petitioner in the first place. A request for rehearing is not an opportunity to submit new arguments. See 37 C.F.R. § 42.71(d).1 Petitioner’s rehearing request in this regard is telling, because it never directs us to places in the Petition that we overlooked, but rather takes various disjunctive statements from Patent Owner’s Preliminary Response and Patent Owner’s evidence to contend that we overlooked Patent Owner’s alleged admission of this issue. Req. Reh’g 3–4. The request for rehearing is misplaced because the burden to show the claims are unpatentable is on Petitioner, not Patent Owner. 37 C.F.R. § 42.20(c). Petitioner must put forth its case in its Petition. 1 Petitioner argues that it requested leave to respond to Patent Owner’s arguments made in Patent Owner’s Preliminary Response in a sur-reply, but that we denied that request. Req. Reh’g 3; Paper 9. Petitioner’s implicit due process argument is misplaced. It is incumbent upon Petitioner to make its case in its Petition. Petitioner cannot rely on a sur-reply to fix what should have been in the Petition.” slip op. at 3

  • BurdenDecided for patent owner

    “with “dielectric grains.” Req. Reh’g 3–4. This is a new argument. We could not have overlooked or misapprehended an argument that was never presented by Petitioner in the first place. A request for rehearing is not an opportunity to submit new arguments. See 37 C.F.R. § 42.71(d).1 Petitioner’s rehearing request in this regard is telling, because it never directs us to places in the Petition that we overlooked, but rather takes various disjunctive statements from Patent Owner’s Preliminary Response and Patent Owner’s evidence to contend that we overlooked Patent Owner’s alleged admission of this issue. Req. Reh’g 3–4. The request for rehearing is misplaced because the burden to show the claims are unpatentable is on Petitioner, not Patent Owner. 37 C.F.R. § 42.20(c). Petitioner must put forth its case in its Petition.” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached

    “capacitors be proven to be prior art. Req. Reh’g 7–9. Rather, Petitioner argues, “it was not necessary to prove that the Group 39 capacitors themselves were prior art, only that they faithfully represent products made, offered for sale, and/or sold before the priority date.” Id. at 7. Petitioner’s argument is misplaced because we considered the Group 39 capacitors and representations made by Petitioner with respect to the Group 39 capacitors. Indeed, it was Petitioner that asserted in its Petition that “the Group 39 capacitors that were in on sale, sold, and in public use before the effective filing date of the ’381 patent.” Pet. 65. Thus, we did not err in addressing Petitioner’s own argument when we explained that Petitioner had failed to show that the Group 39 capacitors, purchased four years after the effective filing date of the ’381 patent, was prior art. Dec. 28–30.” slip op. at 4

  § 102 anticipation
  Patents in suitUS 9,326,381
• Skechers U.S.A., Inc. v. Nike, Inc.Institution denied
  PTAB · Jul 6, 2017 · IPR2017-00607 · APJ Trenton A Ward · IPR · Institution

  The Board denied institution because Skechers did not show a reasonable likelihood of proving the challenged claim obvious over either asserted combination.

  RulingsInstitution decision

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

    “Because Skechers has failed to establish that RCD 0015 is an appropriate primary reference, Skechers has not demonstrated that there is a reasonable likelihood that it would prevail in showing that the challenged claim is obvious over RCD 0015 and the ’256 Application or over RCD 0015 and the ’058 Application. III. CONCLUSION For the foregoing reasons, we determine that the information presented in the Petition fails to establish a reasonable likelihood that Skechers would prevail in showing that the claim in the ’853 patent is obvious over RCD 0015 and the ’256 Application, or over RCD 0015 and the ’058 Application.” slip op. at 17

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

    “We are not persuaded by Skechers’ arguments because these arguments conflate the two separate steps typical of an obviousness analysis in the context of a design patent. We first must find an appropriate primary reference, “a something in existence,” before moving on to the second step of modifying that primary reference “to create a design that has the same overall visual appearance as the claimed design.” High Point Design, 730 F.3d at 1311. In assessing whether there is an appropriate primary reference, we determine whether the proposed reference “creates basically the same visual impression” as “created by the patented design as a whole.” Id. at 1312 (internal quotation and citations omitted). We find Skechers fails to establish sufficiently that its proffered primary reference, RCD 0015, creates basically the same visual impression as that of the ’853 patent because of several differences in appearance.” slip op. at 14

  § 103 obviousness
• Sony Mobile Communications Inc. v. SSH Communications Security OyjAll claims unpatentable
  PTAB · Apr 20, 2017 · IPR2015-01869 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1–32 are unpatentable: claims 1–3, 5–10, 12–16, 18–20, 22–27, and 29–32 as obvious over Bellovin; claims 1, 3–8, 10–12, 14–18, 20–23, 25, and 27–29 over Shuen and RFC 1234.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard in an inter partes review proceeding). Under the broadest reasonable interpretation standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).” slip op. at 5

  • ExcludeMotion to exclude, deniedDenied

    “III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Ex. 1040 cited by Petitioner in its Petitioner’s Reply as hearsay and as irrelevant. Mot. to Exclude 1. Petitioner relies on Ex. 1040 to support its obviousness case by stating “[i]n a co-pending action in the United Kingdom, the Patents Court found similar claims of related EP(UK) 2 254 311 invalid.” Pet. Reply 1 n.1. This issue is moot because this Final Written Decision does not cite to or rely upon Ex. 1040 or the Petitioner’s statement quoted above regarding Ex. 1040. For that reason, we do not address the matter on the merits and dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 48

  • Skill levelOther

    “differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 17

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

    “specification and prosecution history. Cuozzo, 136 S. Ct. at 2144–46. There are, however, two distinct exceptions. The first is the circumstance in which a patentee sets forth a definition by acting as his own lexicographer. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.Cir.2012) (citation omitted). The second is the circumstance in which a patentee disavows the full scope of a claim term either in the specification or during prosecution. Id.; see also PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734, 745 (Fed. Cir. 2016) (citing disavowal as an exception to the broadest reasonable interpretation standard). Here, Patent Owner relies on several embodiments in the Specification and the knowledge of its Declarant, but does not cite to sufficient evidence: 1) of the patentee becoming a lexicographer defining a NAT as bidirectional between two “realms,” or 2) of a clear disavowal of a NAT which translates addresses in a single direction or operates in a single “realm.”” slip op. at 9

  Patent outcomesUS 8,544,079 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,544,079
• Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.All claims unpatentable
  PTAB · Feb 7, 2017 · IPR2015-01657 · APJ William M Fink · IPR · Final written decision

  Claims 1, 5–8, 19, 26, 27, and 31–36 are unpatentable as obvious over Schnuckle ’455 with Meeker or Physics Lab.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find these “definitions” to be substantially similar. For example, both require at least a mechanical engineering degree and experience varying between “some,” in Dr. Brown’s opinion, and “one to three years,” in Dr. Delson’s opinion. Given this apparent lack of disagreement, we adopt Dr. Delson’s statement of the level of ordinary skill for purposes of this Decision, but we note that our analysis would be the same under either formulation.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer foundDecided for petitioner

    “By teaching that the “present description” solves the problems associated with the prior art candle devices because it is driven by “real but chaotic movements,” the patentee disclaims devices driven by rhythmic or metronomic patterns. Id. at 1354. Thus, the Federal Circuit started the paragraph by stating that the specification disclaimed non-chaotic pivoting, and then, after reviewing the ’166 patent specification evidence, concluded that this meant the patentee disclaims devices driven by rhythmic or metronomic patterns. We discern no suggestion by the Federal Circuit that it believed the disclaimer of chaotic pivoting to require more than not being driven by rhythmic or metronomic patterns such that Patent Owner’s mathematical definition of chaos is required.” slip op. at 12

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

    “Although unsupported, we have considered whether replacing the entire gimbal would destroy the principle of operation, and we find that it would not. As discussed above, replacing the two-axis gimbal in Figure 12 with Meeker’s support wire would eliminate one of the two axes of rotation. Thus, the replacement would involve trade-offs, but, in this case, the trade-offs would be similar to those already contemplated by Schnuckle ’455. See also In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016) (agreeing that a person of ordinary skill in the art would have been motivated to pursue the desirable qualities taught by one reference at the expense of foregoing the benefit taught by another reference). For example, at a high level, all embodiments of Schnuckle ’455, even the single-axis embodiment of Figure 7, are designed to provide a realistic flame effect. See Ex. 1003, 2:1–3 (“[R]otation of the at least one channel about at least one axis of the mount creates an artificial flickering flame on the flame shaped surface.”). Given these teachings, and Patent Owner’s failure to explain why Meeker’s structure would have undermined or destroyed the principle of operation of Schnuckle ’455, we do not find that the proposed combination would have destroyed Schnuckle ’455’s principle of operation. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). As to the rationale for combining, Schnuckle ’455 and Meeker, based on reducing the number of components and reducing the possibility of the wire support slipping off the ring, Patent Owner’s arguments are again based on keeping parts of the gimbal structure, which is not the proposal. See PO Resp. 24 (“If Schnuckle’s gimbal is kept even partially intact, modification of the gimbal would be even more costly and require the same number of parts. (Ex. 2010, Brown Decl. ¶¶ 99, 129.)”). Dr. Brown makes similar statements in his Declaration. See Ex. 2010 ¶¶ 99, 129. Petitioner’s cost and reliability rationales, based on replacing the entire gimbal, remain unrebutted. We find Petitioner’s reasons for combining Schnuckle ’455 and Meeker to be based on rational underpinnings. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). 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 28

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

    “Although unsupported, we have considered whether replacing the entire gimbal would destroy the principle of operation, and we find that it would not. As discussed above, replacing the two-axis gimbal in Figure 12 with Meeker’s support wire would eliminate one of the two axes of rotation. Thus, the replacement would involve trade-offs, but, in this case, the trade-offs would be similar to those already contemplated by Schnuckle ’455. See also In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016) (agreeing that a person of ordinary skill in the art would have been motivated to pursue the desirable qualities taught by one reference at the expense of foregoing the benefit taught by another reference). For example, at a high level, all embodiments of Schnuckle ’455, even the single-axis embodiment of Figure 7, are designed to provide a realistic flame effect. See Ex. 1003, 2:1–3 (“[R]otation of the at least one channel about at least one axis of the mount creates an artificial flickering flame on the flame shaped surface.”). Given these teachings, and Patent Owner’s failure to explain why Meeker’s structure would have undermined or destroyed the principle of operation of Schnuckle ’455, we do not find that the proposed combination would have destroyed Schnuckle ’455’s principle of operation. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). As to the rationale for combining, Schnuckle ’455 and Meeker, based on reducing the number of components and reducing the possibility of the wire support slipping off the ring, Patent Owner’s arguments are again based on keeping parts of the gimbal structure, which is not the proposal. See PO Resp. 24 (“If Schnuckle’s gimbal is kept even partially intact, modification of the gimbal would be even more costly and require the same number of parts. (Ex. 2010, Brown Decl. ¶¶ 99, 129.)”). Dr. Brown makes similar statements in his Declaration. See Ex. 2010 ¶¶ 99, 129. Petitioner’s cost and reliability rationales, based on replacing the entire gimbal, remain unrebutted. We find Petitioner’s reasons for combining Schnuckle ’455 and Meeker to be based on rational underpinnings. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). 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 28

  Patent outcomesUS 8,534,869 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,534,869
• Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.All claims unpatentable
  PTAB · Feb 7, 2017 · IPR2015-01658 · APJ William M Fink · IPR · Final written decision

  Claims 1–4, 7, 13, 14, 18–20, 22, and 26 are unpatentable on at least one ground; Sandell anticipation of claims 1–3 and Sandell-Hall obviousness of claim 7 were not proven.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find these “definitions” to be substantially similar. For example, both require at least a mechanical engineering degree and experience varying between “some,” in Dr. Brown’s opinion, and “one to three years,” in Dr. Delson’s opinion. Given this apparent lack of disagreement, we adopt 7 U.S. Patent No. 782,156, issued Feb. 7, 1905 (Ex. 1009) (“Meeker”). 8 U.S. Patent No. 4,551,794, issued Nov. 5, 1985 (Ex. 1010) (“Sandell”). 9 U.S. Patent No. 1,842,167, issued Jan. 19, 1932 (Ex. 1011) (“Hall”). Dr. Delson’s statement of the level of ordinary skill for purposes of this Decision, but we note that our analysis would be the same under either formulation.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “1. “flame silhouette element” In the Decision to Institute, we construed the term “flame silhouette element,” recited in at least claims 1 and 26, as “a body of material having a shape that is suitable to generate a flame flickering effect.” Inst. Dec. 9. In their respective Response and Reply, neither party disputes the preliminary construction of this term. Accordingly, we see no reason to change our construction, which we based on the broadest reasonable interpretation, consistent with the Specification.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundPlain and ordinary meaningDecided for petitioner

    “We determine that the Federal Circuit’s statement of the disclaimer of “non-chaotic pivoting” and devices “driven by rhythmic and metronomic patterns,” Luminara, 814 F.3d at 1353–54, is sufficiently specific to determine the scope of the term “pivot” in claim 1 and “pivotally supported” in claim 13.13 Accordingly, we apply the Federal Circuit’s construction that the plain and ordinary meaning of “pivot” and “pivotally supported” applies, 13 We have also considered Patent Owner’s Motion for Observations (Paper 37), which are substantially directed at obtaining admissions from Petitioner’s declarant in support of its proposed construction of chaotic pivoting (or that Schnuckle ’455 does not disclose chaotic pivoting based on this construction). See id. at 6–13. Although we have considered Patent Owner’s observations, we do not find them persuasive for the reasons explained herein. except that non-chaotic pivoting and devices driven by rhythmic and metronomic patterns are disclaimed.” slip op. at 17

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

    “consider whether Schnuckle ’455 sufficiently discloses the pivot (or pivotally supported) limitation given the disclaimer of non-chaotic pivoting and devices driven by rhythmic and metronomic patterns. As noted above, the Federal Circuit specifically determined, at least as a preliminary matter, that Schnuckle ’455 seemed to meet this claim requirement with its discussion of a two-axis gimbal articulated by “chaotic forces” that can articulate the flame element to “randomly simulate blowing in the wind. ’455 patent, col. 6, ll. 53–62.” Luminara, 814 F.3d at 1354. We agree with the Federal Circuit’s preliminary determination. Although Patent Owner observes that “‘chaotic’ describes the ‘external or internal force’––i.e., the force entering the system, not the resulting motion” (PO Resp. 20–21), Patent Owner does not address the fact that this driving force is coupled to resulting motion “simulating blowing in the wind” (Ex. 1003, 6:62) and “provid[ing] a realistic flame effect” (id. at 1:54–58). As such, we agree that this excerpt of Schnuckle ’455 satisfies the chaotic pivoting requirement and is not driven by a “rhythmic or metronomic” driving force. Pet. Reply 4 n.1. Petitioner also cites the discussion of “programmable movement patterns” as additional evidence of this fact. Id. (citing Ex. 1003, 5:52–67 (“The desired movement pattern of the flame shaped surface 326 may be encoded and stored in the memory module 408 of the control board 302 in the form of digital data or control signals.”)). We agree that the column 5 description in Schnuckle ’455 of programmable movement patterns, when viewed against column 6’s description relied upon by the Federal Circuit (Ex. 1003, 6:53–62), suggests the programmed pattern is not rhythmic or metronomic but natural and chaotic.14 Accordingly, we find that Schnuckle ’455 discloses chaotic pivoting as required by claims 1 and 13. Accordingly, for the foregoing reasons, we determine Petitioner has satisfied its burden of proving anticipation based on Schnuckle ’455 against claims 1 and 13 by a preponderance of the evidence.” slip op. at 21

  Patent outcomesUS 8,696,166 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,696,166
• Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.All claims unpatentable
  PTAB · Feb 6, 2017 · IPR2015-01656 · APJ William M Fink · IPR · Final written decision

  Claims 1 and 5 are anticipated by Schnuckle ’455, and claims 1–5 are unpatentable as obvious over Schnuckle ’455.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “30, 2013) (Paper 26) (precedential as to Section III.A) squarely address Patent Owner’s argument. In LG, the Board determined that a proceeding was time-barred even though the prior case (in which a complaint was served more than one year prior to the Petition) was dismissed with prejudice in part and without prejudice in part. Id. at 6. Because even a partial dismissal with prejudice did not leave the parties in the position that they would have been in had the prior complaint never been brought, the Board found the exception to § 315(b) for prior complaints dismissed without prejudice did not apply. Id. In Oracle, by contrast, the facts are similar to those alleged here. Specifically, a petitioner was served with a complaint alleging infringement of the challenged patent more than one year before the petition the proceeding was filed. Id. at 15. That suit was dismissed without prejudice. Id. at 16–17. Applying the Federal Circuit decisions in Graves and Bonneville, the Board determined that “the dismissal of the infringement suit . . . nullifies the effect of the service of the complaint and, as a consequence, does not bar [Petitioner] or any of the other Petitioners from pursuing an inter partes review.” Id. at 17. As with Oracle, Patent Owner here concedes the 2012 case was dismissed without prejudice and does not allege any circumstances that would tend to show the parties are not in the position they were in had the complaint never been served. Accordingly, we find Oracle is controlling under the circumstances alleged in this proceeding.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find these “definitions” to be substantially similar. For example, both require at least a mechanical engineering degree and experience varying between “some,” in Dr. Brown’s opinion, and “one to three years,” in Dr. Delson’s opinion. Given this apparent lack of disagreement, we adopt Dr. Delson’s statement of the level of ordinary skill for purposes of this Decision, but we note that our analysis would be the same under either formulation.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “based interpretation of the disclaimer addressed by the Federal Circuit, we also consider whether Patent Owner’s construction of “pivotally mounted” (i.e., requiring three, independent, non-linear types of motions that must not be controlled or modulated) is appropriate. See PO Resp. 12–13. We conclude it is not. Though preliminary, the Federal Circuit specifically rejected this reading both before and after determining that non-chaotic pivoting is disclaimed. Luminara, 814 F.3d at 1352–53 (rejecting the district court’s construction that “free to pivot” requires “movement that is more than rotation around two axes”; “Pivoting includes rotation around a single axis.”), 1354 (finding that “[t]he [Schnuckle] ’455 patent undisputedly teaches pivoting in two axes” and the “final limitation in claim 1 of the ’166 patent—chaotic movement—seems to be met . . . in the prior art [Schnuckle] ’455 patent.”). We agree with the Federal Circuit’s analysis, because it is consistent with the intrinsic evidence. Conversely, Patent Owner’s proposed construction contradicts the intrinsic evidence in other respects. For example, claim 17 has a limitation directed to both pivoting (i.e. “allowing the pendulum to pivot about the hole on the support wire”) and “chaotic motion at the coupling member in at least two dimensions.” Ex. 1001, 23:28–30 (emphasis added). By requiring chaotic motion in at least two dimensions (as on a single-axis), the claims suggest chaotic motion nominally includes motion in even one dimension, as in up or down or side to side. On the other hand, interpreting the specification disclaimer of “chaotic pivoting” for purposes of claim 1 to require three, independent nonlinear types of motion, as Patent Owner argues, would lead to the incompatible result that claim 17, which requires movement in only two dimensions, would cover devices that are disclaimed by the specification.” slip op. at 17

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

    “consider whether Schnuckle ’455 sufficiently discloses the pivotally mounted limitation given the disclaimer of non-chaotic pivoting and devices driven by rhythmic and metronomic patterns. As noted above, the Federal Circuit specifically determined, at least as a preliminary matter, that Schnuckle ’455 seemed to meet this claim requirement with its discussion of a two-axis gimbal articulated by “chaotic forces” that can articulate the flame element to “randomly simulat[e] blowing in the wind. ’455 patent, col. 6, ll. 53–62.” Luminara, 814 F.3d at 1354. We agree with the Federal Circuit’s preliminary determination. Petitioner, relying on Dr. Delson’s testimony, also states the disclosure of driving with “natural and chaotic forces” “simulating blowing in the wind” is not a “rhythmic or metronomic” driving force in accordance with the disclaimer. Pet. Reply 20 (citing Ex. 1019 ¶¶ 19–27). Petitioner cites the discussion of “programmable movement patterns” as additional evidence of this fact. Id. (citing Ex. 1003, 5:52–67 (“The desired movement pattern of the flame shaped surface 326 may be encoded and stored in the memory module 408 of the control board 302 in the form of digital data or control signals.”); Ex. 1019 ¶¶ 25–26 (explaining that exciting electromagnets according to digital data can produce chaotic motion)). Patent Owner interprets this excerpt differently, arguing that because “the movement pattern of the flame shaped surface 326 may be encoded and stored in the memory module 408 of the control board 302 in the form of digital data or control signals,” Schnuckle ’455 admits the gimbal of Figure 7 does not move naturally. PO Resp. 21 (quoting Ex. 1003, 5:53–56; Ex. 2010 ¶ 141). We disagree. Nothing in the column 5 excerpt of Schnuckle ’455 suggests memory is programmed with rhythmic or metronomic patterns. Rather, column 5 explains how the electromagnets 316 are excited according to the data programmed into the memory module. See Ex. 1003, 5:54–63. This column 5 description is informed by column 6’s explanation that magnetism articulates the light pipe (i.e., pendulum) with a “natural and chaotic external . . . force (such as . . . magnetism)” resulting in “simulating blowing in the wind.” See id. at 6:56–63. From these descriptions, the programmed pattern is not rhythmic or metronomic, but is natural and chaotic. We, therefore, find the column 5 description consistent with the column 6 description relied upon by the Federal Circuit (Ex. 1003, 6:53–62).5 This is consistent with Dr. Delson’s testimony (Ex. 1002 ¶¶ 57–58; Ex. 1019 ¶ 26), which we credit. Accordingly, we find Schnuckle ’455 discloses chaotic pivoting.” slip op. at 24

  Patent outcomesUS 8,070,319 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,070,319
• Viasat, Inc. v. Advanced Media Networks, LLCRehearing denied
  PTAB · Dec 30, 2016 · IPR2016-00795 · APJ Christa P Zado · IPR · Rehearing

  The Board denied ViaSat’s rehearing request, leaving in place denial of institution on claims 1–9, 13–21, 29–50, 67–82, 104, 105, 107, and 110 because it had not shown motivation to combine Norand with the Eng …

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . 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, and opposition, or a reply.” slip op. at 2

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

    “references disclose similar networks and share common goals were in support of its assertion that “[t]he disclosed communication protocols of the Eng Patent could be readily applied to the communications systems disclosed by Norand.” Pet. 25. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 20–21.” slip op. at 3

  § 103 obviousness
  Patents in suitUS 6,445,777
• Viasat, Inc v. Advanced Media Networks, LLCRehearing denied
  PTAB · Dec 30, 2016 · IPR2016-00796 · APJ Christa P Zado · IPR · Rehearing

  The Board denied ViaSat’s rehearing request, leaving in place the denial of institution because the petition did not show that combining Norand with the Eng references would have been obvious.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . 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, and opposition, or a reply.” slip op. at 2

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

    “references disclose similar networks and share common goals were in support of its assertion that “[t]he disclosed communication protocols of the Eng Patent could be readily applied to the communications systems disclosed by Norand.” Pet. 26–27. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 21–22.” slip op. at 3

  • Strike new argumentNew argument disregardedDecided for patent owner

    “that a benefit of TCP/IP networks is that ‘there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Req. Reh’g. 14 (citing Ex. 1004, 3:52–54). Petitioner does not identify where in the Petition it made such an argument. See 37 C.F.R. § 42.71(d) (“The request must specifically identify . . . where each matter was previously addressed in a motion”). Petitioner did not explain in the Petition how the cited portion of the Eng patent describes a “benefit” of “TCP/IP networks.” Indeed, this is a new argument improperly raised for the first time in the Request. See id. When read with its surrounding context, the Eng patent discloses that in “TCP/IP networks, there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Ex. 1004, 3:52–54. Petitioner did not explain sufficiently how this teaches any “benefits” of using TCP/IP, or how this demonstrates motivation to combine the Eng references with Norand.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 6,445,777

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.