• Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentable
  PTAB · May 13, 2024 · IPR2023-00072 · APJ Julia Heaney · IPR · Final written decision

  Claims 1, 2, 6, 7, 9, 10, 12–19, 23–26, 30, and 32 are unpatentable as obvious over the asserted combinations of prior art.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Nevertheless, based on our review of the ’806 patent, the types of problems and solutions described in the ’806 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 14

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

    “On the fully developed record, we find that Petitioner’s construction, “a layer that adheres,” is more strongly supported by the evidence than Patent Owner’s construction, “a pre-formed layer that is adhered.”” slip op. at 16

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

    “Petitioner shows persuasively that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Mostafazadeh with Ball and Fogal. Pet. 32–33. The evidence discussed above concerning reasons to combine supports a reasonable expectation of success. We are also persuaded by Dr. Suhling’s testimony that the “combination of Ball, Fogal, and Mostafazadeh would require no modification of the multichip modules in Ball and Fogal: rather Mostafazadeh merely explains in more detail methods known in the art for creating chips with adhesive surfaces.” Ex. 1002 ¶ 239; see also id. ¶¶ 62– 69 (describing prior art methods for applying adhesive to the backside of a wafer). For the foregoing reasons, we find that Petitioner has demonstrated that a person of ordinary skill in the art would have had a reasonable expectation of successfully combining Ball, Fogal, and Mostafazadeh.” slip op. at 46

  • ExcludeOther

    “We do not discuss or cite any of these exhibits in this Decision, or rely on any of them in reaching our determination that all of the challenged claims are unpatentable. Because their presence in the record would not affect our analysis in this Decision, we dismiss as moot Petitioner’s motion with respect to these exhibits.” slip op. at 72

  Patent outcomesUS RE38,806 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
• Google LLC v. Parus Holdings, Inc.Rehearing granted
  PTAB · Sep 18, 2023 · IPR2022-00279 · APJ Patrick M Boucher · IPR · Rehearing

  The Board granted rehearing and instituted review of claims 1–4 on all petitioned grounds, finding a reasonable likelihood that claims 1 and 2 are unpatentable over Kovatch and Burrows.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “II. 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.” slip op. at 3

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

    “For purposes of this Decision, we thus make a preliminary determination that collateral estoppel precludes Patent Owner from relitigating the issue of whether Kovatch teaches a ranking associated with web site addresses indicating the order in which to access a plurality of preselected web sites. In challenging independent claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Kovatch and Burrows, the Petition presents an element-by-element analysis to support its position. Pet. 14–32. That analysis relies on Kovatch’s disclosure of the HeyAnita system for accessing web sites to retrieve information a user requested, and relies on Burrows for disclosure of a system for ranking database records that are “presented to the users in a rank order where the pages having a higher rank are presented first.” Id. at 12–13 (citing Ex. 1006, 27:28–32, 32:14–47). Petitioner reasons that a person of ordinary skill in the art “would have found it obvious to apply Burrows’s numbered ranking and polling approach to Kovatch’s destination tree to better identify and present the records of the most interest to the user.” Id. at 13 (citing Ex. 1006, 3:56– 58). In particular, because Burrows explains that “there needs to be a way to rank order the list in a meaningful manner,” Petitioner reasons that a person of ordinary skill in the art “would have been motivated to apply Burrows’s numbered ranking to Kovatch’s destination tree web pages to provide those of interest first.” Id. (citing Ex. 1002 ¶ 115); Ex. 1006, 27:28–29. Petitioner’s element-by-element analysis explains Petitioner’s position as to how each limitation of independent claims 1 and 2 is met within such a combination. Id. at 14–32. Although Patent Owner makes a number of arguments in its Preliminary Response why the combination does not meet certain limitations, those arguments are precluded by our preliminary determination that collateral estoppel applies. See Prelim. Resp. 29–44.7 We have thus re-evaluated the parties’ arguments in light of the findings made in the 846 IPR, and affirmed by the Federal Circuit, and we conclude that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of independent claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Kovatch and Burrows. We accordingly grant Petitioner’s Rehearing Request and institute an inter partes review of all claims on all grounds asserted in the Petition.8 See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 20

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner

    “The party seeking to invoke collateral estoppel must show: “(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against who collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action.” Google, 54 F.4th at 1381. Each of these requirements appears to be met with respect to the issue of whether Kovatch discloses rankings associated with the order in which web site addresses are accessed. First, the claim limitations at issue in the two proceedings are sufficiently similar to raise the issue of collateral estoppel. See Ohio Willow Wood, 735 F.3d at 1342 (“If the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity, collateral estoppel applies. . . . Thus, the mere use of different words in these portions of the claims does not create a new issue of invalidity.”). For example, claim 1 of the ’705 patent recites “a rank number assigned to each one of said web sites and stored in said database” and “access[ing] one of said web sites having the highest said rank number,” while claim 10 of the ’431 patent recites “a ranking associated with each said web site address, said ranking indicating the order in which the plurality of pre-selected web sites are accessed.” Ex. 1001, 19:58–59, 19:65–66; 846 IPR, Ex. 1001, 21:9–11.” slip op. at 18

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

    “determination that collateral estoppel precludes Patent Owner from relitigating the issue of whether Kovatch teaches a ranking associated with web site addresses indicating the order in which to access a plurality of preselected web sites. In challenging independent claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Kovatch and Burrows, the Petition presents an element-by-element analysis to support its position. Pet. 14–32. That analysis relies on Kovatch’s disclosure of the HeyAnita system for accessing web sites to retrieve information a user requested, and relies on Burrows for disclosure of a system for ranking database records that are “presented to the users in a rank order where the pages having a higher rank are presented first.” Id. at 12–13 (citing Ex. 1006, 27:28–32, 32:14–47). Petitioner reasons that a person of ordinary skill in the art “would have found it obvious to apply Burrows’s numbered ranking and polling approach to Kovatch’s destination tree to better identify and present the records of the most interest to the user.” Id. at 13 (citing Ex. 1006, 3:56– 58). In particular, because Burrows explains that “there needs to be a way to rank order the list in a meaningful manner,” Petitioner reasons that a person of ordinary skill in the art “would have been motivated to apply Burrows’s numbered ranking to Kovatch’s destination tree web pages to provide those of interest first.” Id. (citing Ex. 1002 ¶ 115); Ex. 1006, 27:28–29.” slip op. at 20

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 6,721,705
• Snap Inc. v. You Map Inc.All claims unpatentable
  PTAB · Aug 31, 2023 · IPR2022-00568 · APJ Jason M Repko · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Feldman and Jackson, or Feldman, Jackson, and Rush; the contingent motion to amend is granted.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a bachelor’s degree in electrical engineering, computer science, or a related field, plus two years’ work or research experience with location-based content delivery and/or visualization.” Pet. 5 (citing Ex. 1003 ¶¶ 19– experience and vice versa.” Id. Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp.; Sur-reply. Patent Owner’s expert, Dr. Shamos, testifies that he “generally agree[s]” with Petitioner’s proposed articulation, and provides substantially the same expression of the level of ordinary skill in the art. Shamos Decl. ¶¶ 30–31. In this Decision, we apply Petitioner’s proposed definition.” slip op. at 6

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

    “Although Patent Owner appears to argue that applying the preference factors to a general score does not encompass weighting the general score’s components (see, e.g., id. at 10–12; Sur-reply 13–16), this is not reflected in Patent Owner’s proposed construction (PO Resp. 12). Patent Owner’s construction provides no limitation on how the preference factors are applied to a general score. See id. To the extent Patent Owner argues that the phrase “applied to,” as recited in the claim, excludes such component-based weighting, we disagree. Rather, the record better aligns with Petitioner’s argument that “applied to” involves a linear combination of values, which could be the values of the general score’s components. See Pet. 30–31. Petitioner’s position is supported by the plain language of the claim, the ’727 patent’s discussion of weighted aggregation, and Mr. William’s testimony—all of which indicate that weighting the component scores is encompassed by claim 1. As for the plain language, the claim does not define how the factors are “applied to” the general score. Rather, the claim only recites that they are. In the context of the claim, the preference factors are applied to the general score. Patent Owner does not dispute this. PO Resp. 12. Claim 1 further recites that the customized score is based on the application of the preference factors to the general score. Ex. 1001, 23:14–27. We note that the generate the combined ranking, which is then used for the recited selection. Beyond that, the claim does not specify how the two rankings are used or how the combined ranking must be generated. Thus, under the claim’s plain language, the customized score can be used to rank the posts and is based on the general score. Id.” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “adequately supported. We find that Mr. William’s declaration is adequately supported. This is not case where an expert “does not disclose the underlying facts or data on which the opinion is based.” See 37 C.F.R. § 42.65(a). Rather, Mr. Williams adequately supports his testimony about the second preference factor with reasoning based on Jackson’s teachings about how the social-network distance is used to weight the global score. See, e.g., Williams Decl. ¶ 133 (citing Ex. 1006, Fig. 4A, 16:23–25, 58–60). weighting criteria can be used together. Id. ¶¶ 147–149 (citing Ex. 1006, 3:57–44:22, 5:53–58, 9:54–67, 13:17–22, 17:47–67). Mr. Williams’s analysis relies on Jackson’s discussion of using multiple factors to score a post. Ex. 1006, 17:47–55, cited in Williams Decl. ¶ 147; see also Pet. 42–43; Reply 9. Mr. Williams also cites Jackson’s discussion of how social-network distance and geographic distance can be used together. Williams Decl. ¶ 147 (citing Ex. 1006, 3:57–4:22). We agree with Petitioner that Jackson adequately supports this part of Mr. Williams’s analysis. Reply 7–9. Specifically, Jackson discloses that a determination may use social-network distance to “modify the criteria” that it uses to provide posts to users. Ex. 1006, 3:66–4:1, cited in Williams Decl. ¶ 147. Jackson further explains how geographic distance can be used in addition to other criteria: “Transmitting the post to the second computing device may be dependent upon determining that the criteria is met and determining that the posting location is within the threshold distance.” Id. at 4:19–22 (emphasis added), cited in Williams Decl. ¶ 147. This is consistent with Jackson’s teaching that a post may be recommended based on several factors and for several reasons. Id. at 17:47–67, cited in Williams Decl. ¶ 147. Also, Jackson explains how the global score, which Petitioner mapped to the recited “general score,” is used to generate a post’s score: “[A] particular post’s global score . . . is multiplied by, divided by, or summed with a distance between” a user and the post’s author. Id. at 9:54–67, cited in Williams Decl. ¶ 148. Jackson weights a post’s global score against a position of the posts author in a social graph. Id. at 9:25–53. Mr. Williams testifies that it is obvious and conventional to generate the modified scores embodiment. Williams Decl. ¶ 144. This is supported by Jackson. In another example cited by Petitioner, Jackson multiplies a post’s global score by a geographic distance to generate a personal score. Id. at 21:60–22:5, cited in Pet. 37, 39, 43. Thus, Petitioner has shown Jackson teaches or suggests applying two different sets of preference factors to a post’s global score. Pet. 41 (citing Williams Decl. ¶ 144). We disagree with Patent Owner’s argument that neither Petitioner nor” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “We agree with Petitioner that Jackson adequately supports this part of Mr. Williams’s analysis. Reply 7–9. Specifically, Jackson discloses that a determination may use social-network distance to “modify the criteria” that it uses to provide posts to users. Ex. 1006, 3:66–4:1, cited in Williams Decl. ¶ 147. Jackson further explains how geographic distance can be used in addition to other criteria: “Transmitting the post to the second computing device may be dependent upon determining that the criteria is met and determining that the posting location is within the threshold distance.” Id. at 4:19–22 (emphasis added), cited in Williams Decl. ¶ 147. This is consistent with Jackson’s teaching that a post may be recommended based on several factors and for several reasons. Id. at 17:47–67, cited in Williams Decl. ¶ 147. Also, Jackson explains how the global score, which Petitioner mapped to the recited “general score,” is used to generate a post’s score: “[A] particular post’s global score . . . is multiplied by, divided by, or summed with a distance between” a user and the post’s author. Id. at 9:54–67, cited in Williams Decl. ¶ 148. Jackson weights a post’s global score against a position of the posts author in a social graph. Id. at 9:25–53. Mr. Williams testifies that it is obvious and conventional to generate the modified scores embodiment. Williams Decl. ¶ 144. This is supported by Jackson. In another example cited by Petitioner, Jackson multiplies a post’s global score by a geographic distance to generate a personal score. Id. at 21:60–22:5, cited in Pet. 37, 39, 43. Thus, Petitioner has shown Jackson teaches or suggests applying two different sets of preference factors to a post’s global score. Pet. 41 (citing Williams Decl. ¶ 144).” slip op. at 32

  Patent outcomesUS 10,616,727 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,616,727
• T-Mobile USA, Inc. v. Traxcell Technologies, LLCInstituted
  PTAB · May 24, 2022 · IPR2022-00669 · APJ Norman H Beamer · IPR · Institution

  The Board instituted IPR on claims 1–30 under all six §103 grounds and granted T-Mobile’s motion to join IPR2021-01552.

  RulingsInstitution decision

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

    “The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” As elaborated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we institute an inter partes review as to the challenged claims and grounds raised in the Petition. We also grant the Joinder Motion.” slip op. at 2

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “We are persuaded by Petitioner’s arguments. Because the Petition challenges the same claims on the same grounds using the same prior art, Kyocera factor (2) favors joinder. See Kyocera, IPR2013-00004, Paper 15 at 4. Indeed, the Board “routinely grants motions for joinder where the party seeking joinder introduces identical arguments and the same grounds raised in the existing proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Company, IPR2016-00962, Paper 12 at 9 (PTAB Aug. 24, 2016).” slip op. at 34

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 10

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

    “Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner states, “[n]o claim term requires express construction.” Pet. 11. Patent Owner states that it “considered the plain and ordinary meaning of each term of the ’196 patent as it would have been understood by one skilled in the art as of October 23, 2001.” Prelim. Resp. 3–4. For purposes of this Decision, we do not construe any claim terms.” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,918,196
• Favored Tech Corporation v. P2i LtdNo claims unpatentable
  PTAB · Aug 23, 2021 · IPR2020-00478 · APJ Jeffrey W Abraham · IPR · Final written decision

  Favored Tech did not prove claims 1–17 unpatentable: Baalmann did not anticipate the asserted claims, and the obviousness grounds lacked adequate disclosure or motivation with a reasonable expectation of success.

  RulingsFinal written decision

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

    “After considering Petitioner’s arguments regarding claim 9, Patent Owner’s silence regarding claim 9, and the language in the ’070 patent itself (e.g., Ex. 1001, 11:45–52, 12:60–61), we agree with Petitioner that the term “1H, 1H, 2H, 3H-heptadecafluorodecylacylate” in claim 9 should be construed to correctly recite HDFDA (1H, 1H, 2H, 2H-heptadecafluorodecylacrylate). The error Petitioner identifies is conspicuous and undisputed, and the intrinsic record does not suggest a different interpretation. Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1119–20 (Fed. Cir. 2020); Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). Additionally, after reviewing the parties’ remaining claim construction arguments and evidence, we determine that we do not need to expressly construe any other terms for purposes of this Decision because, as addressed in detail below, we find Petitioner’s showings deficient for reasons that do not depend on the construction of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art in the field of the ’070 patent would have had “at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 14 (citing Ex. 1002 ¶¶ 26–31). Patent Owner agrees with this proposed definition “with the understanding that ‘experience with plasma-polymerization techniques’ includes plasma-enhanced chemical vapor deposition (PECVD) techniques.” PO Resp. 9 (citing Ex. 2010 ¶ 20; Ex. 1002 ¶¶ 12, 63). In light of the record before us, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. As Patent Owner points out, Dr. Gleason states that PECVD is a form of plasma polymerization, and thus the parties agree that experience with plasma-polymerization techniques would include PECVD. PO Resp. 9; Ex. 1002 ¶ 63. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “We agree with Patent Owner. Petitioner has failed to demonstrate adequately that each and every element in claim 1, arranged as recited in the claim, is found in a single prior art reference. NetMoneyIN, 545 F.3d at 1369; Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Here, Petitioner combines several different teachings from Baalmann to support its anticipation argument. For example, Petitioner relies on the “evacuable chamber with a volume of 1 m3” from Baalmann’s Example 1, but not the power (2kW) expressly disclosed as being used with that reactor of Example 1. Ex. 1004 ¶ 47. With regard to power density, Petitioner relies on Baalmann’s general disclosure that “[t]he electrical power input per chamber volume is set between 0.5 kilowatt/m3 and 5 kilowatt/m3.” Ex. 1004 ¶ 20. As Patent Owner points out, however, that power density range is not tied to any particular reactor volume or plasma zone volume. PO Resp. 19. Baalmann also fails to expressly disclose the plasma zone volume of the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. To attempt to overcome this absence of an express disclosure, Petitioner argues that, for the reactor used in Example 1, the plasma zone volume and reactor volume are the same based on the configuration of the electrodes in the reactor. Pet. 24–25. Baalmann, however, does not expressly disclose the electrode configuration of the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. Instead, Petitioner relies on Baalmann’s general disclosure of an embodiment wherein one electrode is formed by the chamber wall itself. Pet. 24–25; Ex. 1004 ¶¶ 35, 61. In so doing, Petitioner ignores the fact that Baalmann also states that “[t]wo opposite rod-shaped electrodes may also be used.” Ex. 1004 ¶ 35. In view of this, we disagree with Petitioner’s conclusion that a person of ordinary skill in the art “would have understood that chamber to be configured as described throughout the rest of the specification: with the chamber wall serving as one of the electrodes.” Pet. 24. Even if we were persuaded by Petitioner’s argument, the fact remains that Petitioner’s anticipation challenge is based on the combination of different features disclosed in separate portions of Baalmann. “Such picking and choosing . . . has no place in the making of a 102, anticipation rejection.” In re Arkley, 455 F.2d 586, 587–88 (CCPA 1972) (cited with approval in Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008)); see also Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017) (stating that anticipation is not proven by multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention).” slip op. at 12

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

    “For all of the foregoing reasons, we are not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have inferred the volume of the plasma zone10 in Coulson is 470 cm3 based on Coulson’s disclosure of a “glow discharge reactor” having a volume of 470 cm3. Pet. 38; Reply 15–16. In view of this, we are likewise not persuaded that Coulson discloses a power density of 85.1 W/m3, because Petitioner’s 9 Dr. Gleason confirmed that she did not perform any experiments to verify her opinions regarding Coulson’s plasma zone. Ex. 2017, 80:10–18. 10 As noted above, Petitioner presented its argument in the context of its proposed construction of plasma zone. Petitioner did not present an alternative argument supported by sufficient evidence addressing the volume of Coulson’s plasma zone based on Patent Owner’s proposed construction of plasma zone. Accordingly, we agree with Patent Owner’s assertion that we do not need to expressly construe the term plasma zone to resolve this issue. Sur-reply 1. argument that Coulson discloses this power density is based on its assertion that Coulson has a plasma zone volume of 470 cm3. Pet. 38. This finding is fatal to Petitioner’s obviousness challenge of claim 1 based on the combined teachings of Baalmann and Coulson because Coulson’s purported disclosure of using a power density of 85.1 W/m3 is an essential component of Petitioner’s obviousness challenge. An obviousness determination requires finding both “that a skilled artisan would have been motivated to combine the teachings of the prior art . . . and that the skilled artisan would have had a reasonable expectation of success in doing so.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367-68 (Fed. Cir. 2016). In attempting to establish a person of ordinary skill in the art would have had reason to combine the teachings of Baalmann and Coulson, and would have had a reasonable expectation of success in doing so, Petitioner repeatedly refers to using Coulson’s optimized reaction conditions, including power density, in Baalmann’s larger reactor. Pet. 48 (stating that a person of ordinary skill in the art “would have been motivated to maintain the same or similar reaction conditions within a larger reaction chamber that were present in Coulson’s chamber during Coulson’s reported plasma polymerization reactions, including power density and pressure, to preserve the same effective results.”), 48–49 (“That would have included motivation to maintain Coulson’s disclosed power density when scaling up to a larger reaction volume to preserve the beneficial results Coulson reported at that optimized power density.”); Reply 23 (referring to the “straightforward, compelling obviousness case set forth in the petition” that a person of ordinary skill in the art “would have expected to succeed performing Coulson’s reactions on a larger scale in view of Baalmann”); 23 (“The petition explained why a POSA would have modified Baalmann to use Coulson’s HDFDA monomer and reaction conditions to produce coatings with a reasonable expectation of success” ), 24 (stating the Petition “explained why a POSA would have expected success using known parameters from Coulson in an established large-scale apparatus”). During the oral hearing, counsel for Petitioner confirmed its obviousness positions depend on using Coulson’s power density. Tr. 20:10–21:16. Accordingly, Petitioner’s failure to demonstrate adequately that Coulson discloses or suggests a power density of 85.1 W/m3 undermines its reason to combine and reasonable expectation of success arguments. Petitioner’s argument that Baalmann discloses the claimed power” slip op. at 26

  Patent outcomesUS 8,389,070 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,389,070
• Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing granted
  PTAB · Oct 26, 2020 · IPR2018-01014 · APJ Patrick M Boucher · IPR · Rehearing

  Granted petitioner’s rehearing request and held claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 unpatentable over the listed prior-art grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 8,515,825
• Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing granted
  PTAB · Oct 26, 2020 · IPR2018-01012 · APJ Patrick M Boucher · IPR · Rehearing

  Granted Petitioner’s rehearing request and held claims 1–3, 5, 7–8, 11–13, 15, 17, and 18 unpatentable, including claims 4, 5, 12, and 13 over the Digital River Publications.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.”” slip op. at 5

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

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 105 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 23; Ex. 1002 ¶ 105. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 105 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’228 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 4 is met by the Digital River Publications.” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 105 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 23; Ex. 1002 ¶ 105. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 105 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’228 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 9,043,228
• Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing granted
  PTAB · Oct 26, 2020 · IPR2018-01011 · APJ Patrick M Boucher · IPR · Rehearing

  Petitioner’s rehearing request was granted; claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 were held unpatentable over the listed grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “II. LEGAL STANDARD A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2

  • Expert testimonyPetitioner expert creditedOther

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 107 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 25; Ex. 1002 ¶ 107. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 107 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’876 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6

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

    “Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies” slip op. at 5

  § 103 obviousness
  Patents in suitUS 9,639,876
• Blue Coat Systems, Inc. v. Finjan, Inc.Rehearing granted
  PTAB · Jul 18, 2017 · IPR2016-01444 · APJ Patrick M Boucher · IPR · Rehearing

  Granted Blue Coat’s rehearing request and instituted review of claims 1, 4–6, 9, 12–14, 17, 24, 35, and 37; the petition showed a reasonable likelihood of prevailing on the asserted § 103 grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “reexamination proceeding. Of particular relevance, the reexamination concluded with a Reexamination Certificate issued on November 28, 2016, including a claim for the benefit of the November 8, 1996 filing date of U.S. Provisional Appl. No. 60/030,639 (“the ’639 provisional application”). Ex. 3006 at [60]. In denying the Petition, the Prior Decision noted that “Petitioner has taken no steps to explain or respond to the effect of these developments on its argument.” Dec. 7. This remains true. Nevertheless, we agree with Petitioner that our Prior Decision gave insufficient consideration to the Petition’s assertion that “U.S. Patent No. 7,613,926 [(“the ’926 patent”), i.e., an intermediate patent in the priority chain of the ’086 patent] fails to claim priority to the ’639 provisional application and instead the earliest priority document cited in the ’926 patent is [the ’194 patent].” Pet. 5 (citing Ex. 1012, col. 1, ll. 8–32); see Req. Reh’g 4–5, 6 n.4, 7–9. For a claim of a patent to be entitled to the effective filing date of an earlier filed application, each application in the priority chain must refer to the earlier filed application. Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1350–52 (Fed. Cir. 2010). Accordingly, we grant Petitioner’s Rehearing Request and proceed to the merits of the Petition.” slip op. at 8

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

    “a formally defined safety policy” and allows checking “with certainty, that the proof is valid and hence the foreign code is safe to execute.” Ex. 1004, 107. Thus, Petitioner argues that one of ordinary skill in the art would reasonably understand Necula to teach that its proof-carrying code adds to the foreign code, consistent with the construction of “append” that we apply herein, and Petitioner articulates sufficient reasoning with rational underpinning to apply that teaching to Swimmer’s representation of DSP data. See Pet. 46–49. This is not an instance, for example, in which Petitioner relies on a characterization of the problem provided by the patent to derive its reasoning. Cf., e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012). Indeed, Patent Owner’s contention that “the storage of the DSP in a database is one of the key features that distinguishes the ‘086 Patent over the prior art” dilutes the strength of its argument. The contrary positions of the parties’ declarants in their testimonial evidence creates a genuine issue of material fact, which we resolve in the light most favorable to Petitioner for purposes of this Decision. 37 C.F.R. § 42.108(c). Accordingly, we conclude that Petitioner has made a sufficient showing also with respect to these elements, and that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of claims 1 and 9. See infra Section II.E.10 (discussing limits in our weighing of Patent Owner’s Secondary Considerations evidence in this Preliminary Proceeding).” slip op. at 21

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “be considered under 35 U.S.C. § 312 because Petitioner has failed to name all real parties in interest, as required by the statute.” Prelim. Resp. 9. The parties agree that, on June 12, 2016, Symantec Corporation (“Symantec”) announced that it was acquiring Petitioner. Pet. 13; Prelim. Resp. 9. The Petition discloses that “[t]he transaction is expected to close in the third quarter of 2016,” and that “[a]s of the filing date of this petition the transaction has not been executed.” Pet. 13. The Petition further represents that “Symantec has not controlled or had the ability to control the filing of this petition, whether through funding or strategy.” Id. As noted above, Petitioner expressly identified Symantec as a real party in interest before any decision on institution of an inter partes review was made. Paper 8, 2. Patent Owner contends that “Symantec had control over the filing of the Petition during the period between the announcement of the acquisition and the closing of the acquisition,” which it asserts occurred on August 1, 2016. Prelim. Resp. 9. Patent Owner also contends that it “understands from the underlying litigation that ‘Blue Coat Systems, Inc.’ no longer exists 1 A petition to accept an unintentionally delayed claim of priority for the ’926 patent, claiming the benefit of U.S. Patent Appl. No. 08/790,097 which was filed January 29, 1997, was dismissed by the Office on June 13, 2017. Exs. 1027, 3007. A renewed petition was filed on June 16, 2017. Ex. 3008. At this time, the Office has not ruled on the renewed petition, and that pending petition accordingly does not affect our determination of the challenged claims’ effective filing date for purposes of this Decision. as an entity, or at least goes by ‘Blue Coat Systems LLC’ for at least the last two months.” Id. at 10. We have reviewed the evidence provided by Patent Owner and find it insufficient to support Patent Owner’s allegation that Petitioner has failed to comply with 35 U.S.C. § 312(a) or 37 C.F.R. § 42.8(a)(3). That evidence is, at best, suggestive regarding an issue that is not jurisdictional. Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. (PTAB Mar. 4, 2016) (Paper 38) (precedential).” slip op. at 9

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

    “1. “Downloadable” Every challenged independent claim recites a “Downloadable,” and Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘downloadable’ includes ‘an executable application program, which is downloaded from a source computer and run on a destination computer.’” Pet. 15. Petitioner’s proposed construction parallels a statement made in the Specification of the ’194 patent. Ex. 1012, col. 1, ll. 44–47. Patent Owner “does not dispute” this proposed construction, which we adopt for purposes of this Decision. Prelim. Resp. 5. 2. “database” Challenged independent claim 42 recites “a database of Downloadable security profiles.” Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘database’ includes ‘a collection of interrelated data organized according to a database schema to serve one or more applications.’” Pet. 15. Patent Owner also “does not dispute” this proposed construction, but argues that “the practical import of Petitioner’s proposed construction for the term ‘database,’ is that log files, such as Swimmer’s audit trail, do not fall within the scope of the claims.” Prelim. Resp. 5–6. That is, Patent Owner contends that “logging functionality is distinct from storing in a database, which allows DSP to be efficiently retrieved from the database,” as compared with the “record-keeping” functionality of an “event log.” Id. at 7. Patent Owner’s argument was considered by the panel in IPR2015- 01892, which concluded that, “[t]o the extent that construction would exclude a log file consisting of an ‘unstructured collection of data on a computer,’ . . . [an] unstructured log file would not be a database,” but the construction does not “necessarily exclude[] all log files from being databases.” 1892 Dec. 16 (emphasis in original). We agree with the reasoning expressed in the Final Written Decision of IPR2015-01892. Id. at 12–17. For purposes of this Decision, we adopt Petitioner’s proposed construction.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,079,086
• Elekta, Inc. v. Varian Medical Systems, Inc.All claims unpatentable
  PTAB · Jun 16, 2017 · IPR2016-00476 · APJ Garth D Baer · IPR · Final written decision

  Claim 6 is unpatentable over Jaffray MICCAI 2001 under §§ 102(a), 102(b), and 103(a); claims 1–3, 7–10, and 12 are canceled on Patent Owner’s granted motion to amend.

  RulingsFinal written decision

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

    “construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b). We presume a claim term carries its “ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only those claim terms necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). 2. “communications network”” slip op. at 7

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

    “i. Jaffray MICCAI 2001 Teaches “a translatable treatment couch coupled to the rotatable gantry via a communications network” Claim 6 requires “a translatable treatment couch coupled to the rotatable gantry via a communications network.” As Petitioner explains, the linear accelerator in Jaffray MICCAI 2001 is an Elekta SL-20. Pet. 16 (citing Ex. 1021, 1076; Ex. 1026 ¶ 167), 24 (citing Ex. 1021, 1076, Fig. 1; Ex. 1026 ¶¶ 156, 167). A technical note describing the SL-20 explains as follows: “The hardware/software interaction of the SL-20 makes it particularly suitable for automated data collection. Communication between the control processor and the accelerator, gantry and patient couch is handled by a pair of high-speed serial links. These are daisy-chained through three separate control areas distributed throughout the machine.” Ex. 1015, 220. “[R]ecourse to extrinsic evidence is proper to determine whether a feature, while not explicitly discussed, is necessarily present in a reference.” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1328 (Fed. Cir. 2001). In light of Exhibit 1015, we agree with Petitioner one skilled in the art would understand Jaffray MICCAI 2001’s translatable treatment couch and rotatable gantry are coupled via a communications network—i.e., a link between the two components that allows information to be shared between them. See Pet. 24 (citing Ex. 1021, 1076, Fig. 1; Ex. 1015, 220; Ex. 1026 ¶¶ 156, 167); see also Reply 7–12; Ex. 1031 ¶¶ 19– 29.” slip op. at 10

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

    “Petitioner asserts “to the extent [claim 6 is] not found to be anticipated by Jaffray MICCAI 2001, [claim 6] would have been obvious in view of Jaffray MICCAI 2001.” Pet. 27. In light of our findings on anticipation based on Jaffray MICCAI 2001, and absent any assertions of secondary considerations supporting non-obviousness, we are persuaded Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 6 would have been obvious over Jaffray MICCAI 2001. See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled that anticipation is the epitome of obviousness.”); cf. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) (distinguishing anticipation from obviousness because “obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation”). 3. Anticipation of Claim 6 Based on the Jaffray Publication” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “We agree with Patent Owner that using a computer-controlled treatment couch does not necessarily mean the treatment couch is connected to the gantry via a communications network, as claim 6 requires. See PO Resp. 28. As Patent Owner explains, controlling the couch with a computer “says nothing about how, if at all, the table would be coupled to the rotatable gantry.” Id. In addition, Petitioner’s standard-feature argument, even if correct, is not enough to show the Jaffray Publication necessarily discloses the disputed communications network feature. See Rexnord Indus., LLC v. Kappos, 705 F.3d 1347, 1355 (Fed. Cir. 2013) (explaining that “anticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation”). Thus, we find Petitioner has not shown the Jaffray Publication expressly or inherently discloses “a translatable treatment couch coupled to the rotatable gantry via a communications network,” as claim 6 requires, and consequently has not met its burden to show the Jaffray Publication anticipates claim 6. 4. Obviousness of Claim 6 Based on the Jaffray Publication” slip op. at 14

  Patent outcomesUS 8,116,430 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,116,430

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.