- Panduit Corp. v. Corning Optical Communications LLCAll claims unpatentablePTAB · Feb 27, 2018 · IPR2016-01703 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–3, 5–15, and 18–20 as obvious over Smrha, Coburn, and Niazi; claims 4, 16, and 17 over those references and Wagner.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Ex. 1001, 16:31–36. The explicit recitation in the claims of a fiber optic module having, among other things, an inside and an optical fiber provided within the inside thereof, does not support Patent Owner’s argument that a housing with an inside and fiber optic components disposed within its walls are “already inherent” in the term “fiber optic module.” See PO Resp. 14. We agree with Petitioner’s assertion that Patent Owner’s proposed construction “has no foundation in the specification.” Reply 3. As” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues for a similar level of skill in the art, contending that “[a] person of ordinary skill in the art of the ’148 patent would have a bachelor’s degree in mechanical engineering, materials science, or a related field; and 2 years of experience in fiber optic equipment.” PO Resp. 1 (citing Ex. 2001 ¶¶ 14–15). We note the parties’ proposals differ in the specific number of years of experience required; however, neither party argues this distinction makes a difference in analyzing the asserted grounds or other issues in this proceeding. Based on this record, we determine that the level of ordinary skill proposed by Petitioner is consistent with the challenged patent and the asserted prior art. We, therefore, adopt that Petitioner’s proposed level of ordinary skill in the art. Our findings and conclusions, however, would be the same under either party’s proposed level of ordinary skill in the art.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“have a reason or motivation to combine Coburn with Smrha and enclose the adapter panels. PO Resp. 16–26. According to Patent Owner, it does not make sense to enclose the adapter panels in modules because (1) “the open faced adapters in Smrha do not include any optical fibers that would require protection by a module” (PO Resp. 17); (2) the adapter panel arrangement in Smrha does not accommodate a rear connector (PO Resp. 19); and (3) Smrha discloses the use of open cable connection locations (PO Resp. 21). But, contrary to Patent Owner’s arguments, Petitioner relies on Coburn (see, e.g., Ex. 1005, Fig. 2) as teaching an enclosed module with an optical fiber inside, a module accommodating a rear connector, and cable connection locations inside an enclosed module. Pet. 38–39, 62–65. Patent Owner ignores that the combination of cited references teaches all the elements of the module guide system limitation and does not squarely address whether claim 1 would have been obvious in light of the proposed combination of the teachings in the cited art. Thus, Patent Owner’s argument is not persuasive. Considering this evidence and the arguments of the parties, we find Petitioner has shown that there existed a rational basis with articulated underpinnings to combine the teachings of Smrha and Coburn that is, “[m]odifying the well-known independently translatable modules as taught by Smrha with the structure of an encased cassette taught by Coburn would lead to the predictable result of independently translatable, fully-enclosed modules with connectors on the front and rear of the cassette.” Pet. 28 (citing Ex. 1003 ¶ 68). Accordingly, we find Coburn and Smrha teach all the elements of this limitation in claim 1 and that there existed a motivation to combine these teachings.” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“non-obviousness establishes that claim 113 of the ’148 patent would not have been obvious. PO Resp. 31–50. Patent Owner offers evidence of purported copying, praise by others, commercial success, long-felt need, recognition of a problem, and failure of others. Id. However, before this evidence may be given substantial weight with regard to the obviousness of claim 1, it must be shown that it relates to the invention recited in claim 1. Having considered all the arguments and evidence presented during trial, Patent Owner has failed to establish its purported evidence of non-obviousness relates to the invention recited in claim 1. With regard to Patent Owner’s EDGE product which is alleged to be covered by the ’148 patent, Patent Owner does not argue or present sufficient evidence establishing that there is, in the EDGE product itself, “at least one optical fiber provided within the inside of the at least one fiber 13 In its argument based on objective evidence of non-obviousness, Patent Owner refers only to claim 1. See PO Resp. 31 (“Objective Indicia Further Establish the Non-Obviousness of Claim 1”). Claims 2–20 are not referred to in this section of Patent Owner’s Response. Id. at 31–50. optical module connected to the at least one fiber optic adapter” as recited in claim 1 (Ex. 1001, 16:33–36). See PO Resp. 31–34; see also Reply 22 (“Nowhere in the ten pages of argument, or three self-serving declarations that Corning submits, can one find evidence of a nexus between any of copying, praise by others, commercial success, or a long, unfelt need for the EDGE™ system and the claimed features.”). The same deficiency exists in Patent Owner’s argument relating to Panduit’s HD Flex product which is alleged to be a copy of Patent Owner’s product. PO Resp. 34–46. In addition, Patent Owner’s arguments regarding commercial success, long-felt need, recognition of a problem, and failure of others seemingly relate to the “’938 patent”14 not the ’148 patent. See PO Resp. 47–50. Indeed, the ’148 patent is not referred to expressly in this part of Patent Owner’s Response. Id. And Patent Owner presents arguments which do not relate to limitations found in claim 1 of the ’148 patent, particularly with respect to the arguments emphasizing that the modules can be installed from the rear. Id. For example, Patent Owner argues, “[i]ndeed, as explained above, not only do these products [Corning’s EDGE and Panduit’s Flex] practice the claims of the ’938 patent, the feature recited in claim 1— slidable trays supporting rear-installable modules—is a ‘key’ feature used by both companies to sell these products and to distinguish them over the existing systems.” PO Resp. 48 (emphasis added). The installation of the modules from the rear or a guide system configured to receive a module from the rear is not recited in claim 1 of the ’148 patent. 14 We assume this is a reference to US Patent No. 8,184,938 B2 at issue in IPR2017-01709.” slip op. at 36
Patent outcomesUS 8,452,148 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,452,148 - Google LLC v. Makor Issues & Rights Ltd.Some claims unpatentablePTAB · Feb 12, 2018 · IPR2016-01535 · APJ Robert L Kinder · IPR · Final written decision
Claims 12–14 and 18 are unpatentable as obvious over Xu and Peterson; unpatentability was not shown for claims 15, 16, and 19.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We first examine the claim as a whole with a focus on the disputed language. The claim language itself requires “computing real time traffic jam identification.” Ex. 1001, 23:10 (emphasis added). By qualifying the claimed traffic jam as being determined in real time, and by also by using “sample vehicles to measure time delays,” a person of ordinary skill in the art would understand that traffic jams are more immediate, e.g., real time, than the regular, statistical, congestion described in the ’783 patent. See Ex. 2002 ¶ 7 (“[C]laim 12 further goes on to recite the computation of ‘traffic jams,’ by using ‘sample vehicles to measure time delays,’ which a person of ordinary skill in the art would understand must therefore be distinct from regular, statistical, congestion.”). The claim also requires “collecting GPS data and computing individual statistical travel time estimates (regular times) for predetermined roads.” Ex. 1001, 23:3–6; Tr. 27:16–29:17 (discussing the relevance of this limitation). Reading the claim as a whole suggests that a “traffic jam” must be a sudden unpredictable change of traffic on a segment as compared to these regular times. See Ex. 2002 ¶ 7.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). In that regard, Petitioner’s expert, Dr. Braasch, testifies that:” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Based on the final record, Petitioner has not provided sufficient arguments or credible evidence establishing how TravTek teaches the traffic jam limitation. Specifically, Petitioner has not persuasively shown how TravTek teaches the use of measured time delays of sample vehicles for computing a real time traffic jam. As explained above, we construed the term “traffic jam” to mean “a sudden unpredictable change of traffic in a segment as compared to regular times, i.e., individual statistical travel time estimates,” and thus the claimed “measuring time delays” must also be in relation to regular times. Claim 12 also requires that traffic jam identification is determined “by utilizing the sample vehicles for measuring time delays.” Petitioner has not directed us to record evidence sufficient to show that TravTek teaches these limitations.” slip op. at 24
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“First, we are not persuaded by Patent Owner’s argument that Xu only uses information from third party, or other external, sources to identify current traffic conditions. Patent Owner’s argument narrowly focuses on one example described in Xu, and fails to consider Xu as a whole, from the perspective of an ordinarily skilled artisan. A prior art reference must be considered for everything it teaches by way of technology and is not limited to the particular example it is describing. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). Furthermore, in an obviousness analysis, we must consider the combination of references, as a whole, in light of the general knowledge of an ordinarily skilled artisan. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). One stated objective of Xu is to create “a method for collecting dynamic traffic data using equipment installed in vehicles” as opposed to just relying on the prior art “methods for collecting traffic data” such as “sensing systems” that “are installed along highways,” using “[v]ideo cameras” or “pulsed laser range image technology.” Ex. 1006, 3:23–48. Given that a purpose of Xu was to use dynamic traffic data obtained from GPS receivers installed in vehicles, Xu, as a whole, provides a basis for using that same dynamic traffic data for determination of real time traffic conditions as testified by Dr. Braasch. Id.; see also id. at 2:63–67, 4:17–22; Ex. 1026 ¶ 36. For example, Xu explains how current traffic conditions may impact traffic forecasts and “the [TSC] receives a plurality of traffic data indicating that the link is experiencing an unusual congestion, by comparing the current traffic status with the normal traffic condition.” Id. at 12:66–13:6 (emphasis added); Ex. 1026 ¶ 36. Based on the final record, Petitioner establishes that the “plurality of traffic data” would include dynamic vehicle position data and that “time delays” are determined by comparing the current traffic status as determined by vehicle position with the normal traffic condition. Ex. 1006, 13:2–5 (“comparing the current traffic status with the normal traffic condition”); see also Pet. 68; Ex. 1003 ¶¶ 145–46; Ex. 1026 ¶¶ 32–40. Indeed, as Dr. Braasch testifies, vehicle position data would be a source of real time traffic conditions indicative of unusual congestion. See Ex. 1026 ¶ 36; Ex. 1006, 12:66–13:6; Tr. 33:7–34:8 (citing Ex. 1006, 12:54–65). We are also persuaded by Petitioner’s argument that Xu’s “communication system ‘forwards road traffic data reported from all vehicles 20 . . . to the traffic service center’ and that this data is used to provide ‘an optimum travel route based on real-time traffic conditions.’” Pet. Reply 17 (citing Ex. 1006, 7:37–52; 8:26–36; 12:66–13:6). Also persuasive is the cross-examination testimony of Dr. Kurzhanskiy that “one of the plurality of traffic data that could be being [sic] used to detect unusual congestion is vehicle probe position data.” Pet. Reply 17 (quoting Ex. 1024, 82:19–83:7) (also agreeing “that Xu discloses that vehicle position data is a form of traffic data that the system collects”). For these reasons, we are not persuaded by Patent Owner’s argument that Xu fails to disclose the traffic jam limitation.” slip op. at 36
Patent outcomesUS 6,480,783 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,480,783 - Pacific Surf Designs, Inc. v. Surf Waves, Ltd.Some claims unpatentablePTAB · Jan 17, 2018 · IPR2016-01454 · APJ Jason W Melvin · IPR · Final written decision
Claims 1–5 and 7–20 are unpatentable; claim 6 was not shown unpatentable, based on the anticipation and obviousness grounds summarized by the Board.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Although the district court construed “activity section” as Petitioner describes, it also construed “curved sidewall extending substantially upwardly from [an/another] edge of the middle section,” which is part of the activity section, as “upwardly curved wall that the rider may traverse extending from [an/another] edge of the middle section.” Ex. 1013, 12–14. That said, it does not appear that the district court specifically considered whether to include “that the rider may traverse” in its construction. Id. It did, however, identify the issue regarding “activity section” as whether that term should include Petitioner/Defendant’s “additional proposed phrase ‘on 6 At the hearing, Patent Owner argued that the Lochtefeld 530 lacks the claimed sidewall because: the sidewall is “not to be designed [to be traversed]. But more than designed, there’s nothing in this reference that tells you that you should be traversing on it. So it’s more than just designed. There’s nothing in this reference that says you would traverse it.” Tr. 34:15–22. all of which a rider can ride.’” Ex. 1013, 10:1–4. It concluded that such language would be “superfluous and introduce[] ambiguity.” Id. at 10:9–12. We conclude the broadest-reasonable interpretation of “activity section” in light of the Specification does not require that a rider may traverse the entire activity section, including all portions of the sidewalls. Such a construction would be inconsistent with the Specification’s description that sidewalls may curve past vertical, as shown in Figure 12C. Ex. 1002, 4:5–6, Fig. 12C. In this regard, our construction comports with that of the district court. See Ex. 1013, 10:9–12. Beyond that, as discussed below (see infra at 41), whether the claims require that a rider may traverse some portion of the sidewall does not affect our conclusions regarding unpatentability. Thus, we do not further construe the “activity section.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Regarding the claim phrase “extending substantially upwardly,” Patent Owner’s expert takes the position that curvature must be measured “perpendicular to a tangent along the edge.” See Ex. 1014, 59:3–60:1. Patent Owner relies on its expert to argue that Lochtefeld 589 does not disclose the claimed sidewalls but provides no support for construing “extending substantially upwardly” in such a manner. Patent Owner’s expert does not provide any support for such a construction in his declaration. Instead, he asserts that Lochtefeld 589 discloses sidewalls that extend either downward or horizontally, without explaining how he comes to that conclusion. Ex. 2001 ¶ 23. We will not impose a limiting construction based solely on an expert’s unsupported statements. Without some reason to construe “extending substantially upwardly” as sought by Patent Owner, we consider the ordinary meaning of the phrase within the context of the claims and Specification. The Specification gives a very permissive and general description of the sidewalls. E.g., Ex. 1001, 3:15–22, 3:56–4:6. Thus, the Specification leads us to construe “extending substantially upwardly” as encompassing a sidewall that, at some point, extends above the edge of middle section corresponding to the side wall.” slip op. at 13
- Prior constructionTerm construed petitioner constructionDecided for petitioner
“3. “the first curved side” All claims recite that the “second curved sidewall” is opposite “the first curved side.” Although the claims do not provide antecedent basis for “the first curved side,” Petitioner proposes that the term be construed as “the first curved sidewall.” Pet. 20. Petitioner notes that Patent Owner argued in the related district court proceeding that “[i]t is beyond dispute that the claim term ‘the first curved side’ was intended to be ‘the first curved sidewall,’ both to comport with all of the disclosures of the ’016 Patent and also in accordance with proper antecedent basis.” Id. (citing Ex. 1010, 28:13–18). Patent Owner does not address this issue. A district court may “correct an error in a patent by interpretation of the patent where no certificate of correction has been issued . . . only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Indus., LP v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). We have applied this same standard in our proceedings. E.g., Apple Inc. v. Achates Reference Publ’g, Inc., Case IPR2013-00080, slip op at 10–12 (PTAB June 3, 2013) (Paper 22). Here, we conclude the claims are properly read such that “first curved side” refers to the “first curved sidewall” and that such correction is not subject to reasonable debate. Neither party has identified how the prosecution history suggests a different interpretation. Thus, we adopt Petitioner’s proposed construction, namely “first curved sidewall.”” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. The level of ordinary skill in the art Petitioner asserts that the applicable person of ordinary skill in the art is “a person with skill in designing, manufacturing, or refurbishing surfing simulation water rides.” Pet. 17. Petitioner’s expert declarant applies that definition in his analysis. Ex. 1002 ¶ 17. We adopted that definition in our institution decision and noted that the teachings of the prior art presented in the Petition reflect that level of skill. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Inst. 19. Patent Owner does not challenge Petitioner’s definition of the level of ordinary skill in the art, and we also adopt it here.” slip op. at 30
Patent outcomesUS 8,088,016 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,088,016 - Cree, Inc. v. Optolum, Inc.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01511 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable, chiefly because Begemann did not disclose the claimed heat-conduction-to-contained-fluid limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“evidence. As explained below and given the evidence of record, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertions that Begemann anticipates either of claims 17 or 30. 1. Principles of Law” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“136 S. Ct. 2131, 2144–46 (2016) (upholding the Board’s use of the broadest reasonable interpretation standard in Inter Partes Review proceedings). Under the broadest reasonable interpretation standard, and absent any special definitions, claims terms 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). Any special definitions for claim terms or phrases must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Petitioner advances interpretations of the claim terms “elongate,” “thermally conductive member,” and “heat dissipation protrusions.” Pet. 17–18. In turn, Patent Owner advances interpretations of “thermally conductive member,” “heat dissipation protrusions,” and “configured to.” Prelim. Resp. 17–21. Having considered the evidence of record and as reflected in the discussion below, we determine that express construction of these terms is not necessary for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“A claim is anticipated if each limitation of the claim is disclosed in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “The requirement that the prior art elements themselves be ‘arranged as in the claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.’” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Lindemann Maschinenfabrik GmbH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984)). The Federal Circuit has also explained, however, that “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“likewise require that the thermally conductive member includes the “configured to” limitation and “one or more heat dissipation protrusions, at least one of said heat dissipation protrusions being carried on said elongate member outer surface” limitations discussed above. Ex. 1001 at 4:47–50, 5:60–63. In addition to the anticipation arguments for claims 17 and 30, Petitioner argues in the alternative, “[s]hould it be determined that Begemann does not disclose the claimed heat dissipation protrusions, then claim 17 is obvious in view of Begemann in combination with English” (Pet. 28) and “claim 30 is obvious in view of Begemann in combination with English . . . for reasons previously explained . . . for claim 17” (Pet. 59). According to Petitioner, English expressly discloses the placement of cooling fins on an exterior of a hollow, metal base portion of an elongated, thermally conductive metal support to further enhance heat dissipation for cooling LEDs mounted on the metal support. Pet. 31. Petitioner argues a person of ordinary skill would have been motivated to provide the cooling fins of the lamp of English to the outer surface of Begemann’s gear column to enhance the performance and/or efficiency of cooling the LEDs by enhancing heat dissipation away from the gear column, substrate, and LEDs “to air circulating inside and at the outer surface of the gear column 1.” Pet. 31 (citing Ex. 1008 ¶¶ 93–94). Further, Petitioner presents the following annotated copy of Begemann’s Figure 1 to illustrate its proposed modification of Begemann’s gear column using English’s fins: Petitioner’s annotated version of Begemann Figure 1 with accompanying text that describes providing cooling fins to the outer surface of Begemann’s gear column 1. Pet. 33 (citing Ex. 1003 at 4:6–9). As Patent Owner argues (Prelim. Resp. 39), Petitioner does not rely on English to meet the “configured to” limitation for either of claim 17 or 30 (see, e.g., Pet. 26–27, 55–56 (citing only Begemann for the “configure to” limitation)). Having determined above that Begemann fails to disclose the “configured to” limitation, Petitioner’s reliance on English to satisfy the heat dissipation protrusions limitation fails to cure the noted deficiencies in Begemann with regards to the “configured to” limitation of claims 17 and 30 of the ’028 Patent.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,242,028 - Wendt Corporation v. Iqasr, LLCInstitution deniedPTAB · Sep 28, 2017 · IPR2017-01080 · APJ Richard H Marschall · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–15, 18–20, and 22 were unpatentable over Jody or Jody and the 1998 Handbook.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We review the Petition under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we determine that Petitioner has failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review. A.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“automobile shredder residue,” “sorting, non-ferrous recovery system,” “magnetic fuzz,” “selected magnetic fuzz,” “substantially free,” “recyclable materials,” and “air-locked automobile shredder residue sorting, non-ferrous recovery system” require construction. Pet. 12–35. In turn, Patent Owner proposes its own construction for those same terms. Prelim. Resp. 3–24. Having considered the evidence presented, we determine that we need only address the meaning of “magnetic fuzz” for purposes of this Decision. See 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
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“The Petition also lacks an explicit inherency analysis. As Petitioner acknowledges in its legal background, inherent disclosure “necessarily describes” the unstated limitation. Pet. 35 (citing Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002)). Even if Petitioner established that magnetic fuzz is likely present and sorted using Jody’s process, that does not establish inherency. See Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011) (“The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” (citation omitted)). To the extent that Petitioner’s argument that magnetic fuzz “would be part of the plastic-rich stream and initially would be sorted from the PUF, fines, etc.,” amounts to an inherency argument, it lacks adequate support. Pet. 40–41 (citing Ex. 1004 ¶ 69) (emphasis added). Petitioner’s assertion fails to address why magnetic fuzz would be present in Jody’s automobile shredder residue in the first place, much less that Jody’s process necessarily must sort that magnetic fuzz. Given Jody’s failure to disclose magnetic fuzz expressly, Petitioner needed to do more than merely assume that magnetic fuzz is present and assert that magnetic fuzz “would be” sorted, without explaining why this must be the case.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“2. Discussion To establish anticipation under 35 U.S.C. § 102, “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, the reference must “enable one of ordinary skill in the art to make the invention without undue experimentation.” Impax Labs., Inc. v. Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008); see In re LeGrice, 301 F.2d 929, 940–44 (CCPA 1962).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,132,432 - Avx Corporation v. Presidio Components, Inc.Some claims unpatentablePTAB · Aug 21, 2017 · IPR2016-00636 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 13–16 and 18 are unpatentable under §103; claims 1–12, 17, and 19–21 were not shown unpatentable because the asserted combinations relying on Liebowitz and Devoe lacked sufficient motivation to combine.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayNot shown unpatentableMotivation not foundNot shown unpatentable
“Liebowitz discloses a “high inductance drawback” to buried metallizations and vias, and expressly states that its invention is designed to “avoid[] any of these inductance-increasing methods.” Ex. 1004, 1:40–53; see also Ex. 2009, 113 (prosecution history of the ’639 patent, where the applicants distinguished Devoe by arguing that “the present invention recognizes that buried multi-layered structures can be used to make capacitors using vias and edge connections” and “it is this very construction that the present inventor seeks to avoid” (emphases omitted)). Indeed, Dr. Chung in her declaration filed in support of the Petition expressly recognized the high inductance drawback mentioned in Liebowitz. Ex. 1003 ¶ 49. Yet Petitioner’s proposed combination is based on a POSITA looking to Devoe to incorporate the very feature that Liebowitz states should be avoided. Petitioner and Dr. Chung do not account sufficiently for this express disclosure in Liebowitz. Instead, Dr. Chung testifies that a skilled artisan would have understood that the benefits of increased capacitance “may outweigh any negative impacts of an increase in inductance” because “the inductance concerns raised in Liebowitz are not always applicable.” Ex. 1003 ¶ 49 (emphasis added). Dr. Chung concludes that a skilled artisan would have combined the buried metallizations and vias of Devoe with the capacitor of Liebowitz “when increasing capacitance is of greater concern than lowering inductance.” Id. However, Petitioner does not provide sufficient explanation or credible evidence to explain when or under what circumstances increasing capacitance would have been of greater concern than lowering capacitance, or sufficient evidence to show that a skilled artisan would have understood that the benefits of increased capacitance would have outweighed the negative effects of high inductance. In particular, Dr. Chung’s unsupported and equivocal testimony that increased capacitance “may” outweigh increased inductance is insufficient for Petitioner to meet its burden.11 See id.” slip op. at 24
- Skill levelSkill level patent owner adoptedPetitioner expert creditedDecided for patent owner
“We disagree with Patent Owner’s contention that a declarant must actually be a person of ordinary skill in the art in order to present testimony as to what a person of ordinary skill in the art would have understood at the time of the invention. See, e.g., SEB S.A. v. Montgomery Ward & Co. Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010) (stating there is no requirement of a 9 Patent Owner further contends Petitioner admitted that it was “required to present the opinions of a person of ordinary skill in the art . . . at the time of the invention of the ’639 patent.” PO Resp. 20 (citing Ex. 1003 ¶ 15). We have reviewed the cited material and find Petitioner did not make any such admission. perfect match between an expert’s experience and the field of the art in question, provided the expert has “sufficient relevant technical experience” to testify). The Federal Circuit has explained that a person of ordinary skill in the art is a “hypothetical person postulated by § 103” that is “presumed to have . . . knowledge of all material prior art.” Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1452–53 (Fed. Cir. 1984); see also id. at 1454 (“It should be clear that that hypothetical person [of ordinary skill in the art] is not the inventor, but an imaginary being possessing ‘ordinary skill in the art’ created by Congress to provide a standard of patentability . . . .”). Thus, the proper question to ask is not whether the testifying witness is in fact such a “hypothetical person,” but rather whether the testifying witness possesses sufficient qualifications to be able to testify as to what the hypothetical person of ordinary skill in the art postulated by § 103 would have known and understood at the time of the invention. Although Dr. Chung may not have “industry” experience (Ex. 1016 ¶ 65), we find that Dr. Chung possesses sufficient education, training, and experience to provide testimony as to what a POSITA would have understood at the time of the invention, under either party’s proffered definition. See, e.g., Ex. 1011, 1–34; Ex. 1003 ¶¶ 2–5; Ex. 1016 ¶¶ 63–65 (describing Dr. Chung’s experience). For example, Dr. Chung has both a master’s degree and a doctorate in Materials Science from the Massachusetts Institute of Technology. Ex. 1003 ¶ 3. Dr. Chung has been active in capacitor research for at least 16 years, including experience in the design of single-layer capacitors, as evidenced by numerous publications. Ex. 1011; Ex. 1016 ¶¶ 64, 65. Additionally, Dr. Chung is the Founding Director of the Composite Materials Research Laboratory at the University of Buffalo, is a professor, and has taught classes in Materials Science, including teaching concepts in the design of single layer capacitors to her students. See, e.g., Ex. 1003 ¶¶ 4–5; Ex. 1016 ¶ 64. We further note that Dr. Chung is the author of Yih (Ex. 1012), which is one of the prior art references that is asserted in this proceeding. Certainly, the prior art of record in this proceeding—namely, Liebowitz, Devoe, Veater, SinghDeo, Insetta, and Yih —is indicative of the level of ordinary skill in the art. See Okajima, 261 F.3d at 1355; GPAC Inc., 57 F.3d at 1579. Moreover, to the extent Dr. Chung is less familiar with aspects” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We disagree with Patent Owner’s contention that a declarant must actually be a person of ordinary skill in the art in order to present testimony as to what a person of ordinary skill in the art would have understood at the time of the invention. See, e.g., SEB S.A. v. Montgomery Ward & Co. Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010) (stating there is no requirement of a 9 Patent Owner further contends Petitioner admitted that it was “required to present the opinions of a person of ordinary skill in the art . . . at the time of the invention of the ’639 patent.” PO Resp. 20 (citing Ex. 1003 ¶ 15). We have reviewed the cited material and find Petitioner did not make any such admission. perfect match between an expert’s experience and the field of the art in question, provided the expert has “sufficient relevant technical experience” to testify). The Federal Circuit has explained that a person of ordinary skill in the art is a “hypothetical person postulated by § 103” that is “presumed to have . . . knowledge of all material prior art.” Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1452–53 (Fed. Cir. 1984); see also id. at 1454 (“It should be clear that that hypothetical person [of ordinary skill in the art] is not the inventor, but an imaginary being possessing ‘ordinary skill in the art’ created by Congress to provide a standard of patentability . . . .”). Thus, the proper question to ask is not whether the testifying witness is in fact such a “hypothetical person,” but rather whether the testifying witness possesses sufficient qualifications to be able to testify as to what the hypothetical person of ordinary skill in the art postulated by § 103 would have known and understood at the time of the invention. Although Dr. Chung may not have “industry” experience (Ex. 1016 ¶ 65), we find that Dr. Chung possesses sufficient education, training, and experience to provide testimony as to what a POSITA would have understood at the time of the invention, under either party’s proffered definition. See, e.g., Ex. 1011, 1–34; Ex. 1003 ¶¶ 2–5; Ex. 1016 ¶¶ 63–65 (describing Dr. Chung’s experience). For example, Dr. Chung has both a master’s degree and a doctorate in Materials Science from the Massachusetts Institute of Technology. Ex. 1003 ¶ 3. Dr. Chung has been active in capacitor research for at least 16 years, including experience in the design of single-layer capacitors, as evidenced by numerous publications. Ex. 1011; Ex. 1016 ¶¶ 64, 65. Additionally, Dr. Chung is the Founding Director of the Composite Materials Research Laboratory at the University of Buffalo, is a” slip op. at 11
- Prior constructionPrior construction adoptedDecided for patent owner
“In our Decision on Institution, we construed “essentially monolithic structure” in claims 1 and 8 to mean “an essentially solid structure of materials that are sintered together” and that has “internal metallizations that create a partial boundary or seam within the structure, but because the metallizations do not cover the entire area of the dielectric layer, the ceramic materials sinter together around the edges of the metallization.” Dec. on Inst. 8–12. We disagreed with Petitioner’s argument that “essentially monolithic structure” should be interpreted broadly “to incorporate the elimination of any or all ‘boundaries/joints’ within a structure.” Id. (citing Pet. 6). Rather, we determined that the ’639 patent distinguished between a “monolithic structure,” which lacks any boundary or seam, and an “essentially monolithic structure” that possesses a partial boundary or seam. Id. at 10 (citing Ex. 1001, 5:3–19). The parties do not dispute our interpretation in their Patent Owner Response and Reply. Moreover, in consideration of the arguments and evidence developed during trial, we do not perceive any reason or evidence that compels any deviation from this interpretation. Accordingly, we adopt our previous analysis and claim interpretation of “essentially monolithic structure” for purposes of this Decision. Id. at 8–12. We further determine that for the purposes of this Decision, no other claim terms require construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating “only those terms need be construed that in controversy and only to the extent necessary to resolve the controversy”).” slip op. at 15
Patent outcomesUS 6,661,639 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,661,639 - Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing deniedPTAB · Aug 17, 2017 · IPR2017-00218 · APJ James J Mayberry · IPR · Rehearing
The Board denied Fisher & Paykel’s rehearing request, leaving institution denied because it found no abuse of discretion in its assessment of the claim limitation and Berthon-Jones.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “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). And, because Fisher seeks rehearing of our Decision on Institution, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d) (requiring the rehearing request to “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”) (emphasis added).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“the effect of the prosecution history on the scope of the claims, as substantial evidence supports our findings. We understand that prosecution disclaimer requires that a patentee make it clear “that the invention does not include a particular feature” and that, although “such disavowal can occur either explicitly or implicitly, it must be clear and unmistakable.” Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016). We are not persuaded by Fisher that ResMed’s disclaimer is limited to adjustment mechanisms that correspond to a structure that forms the engagement between a cushion component and a common frame.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“discretion, as the argument is inconsistent with our construction of the “fixed, non-adjustable position” claim limitations. As we indicated above, we interpret these limitations to exclude masks with structures that adjust the” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“3 Fisher’s Petition did not identify raised central structure 538 as satisfying the subject matter of the “fixed, non-adjustable position” claim limitations. See Pet. 23–25 (identifying protrusions 524 and receiving holes 526). We do not consider new arguments in a request for rehearing. See 37 C.F.R. § 42.71(d).” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 9,381,316 - Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing deniedPTAB · Aug 17, 2017 · IPR2017-00215 · APJ James J Mayberry · IPR · Rehearing
The Board denied Fisher’s rehearing request, leaving trial denied because Fisher did not show an abuse of discretion in the findings on the fixed, non-adjustable position limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “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). And, because Fisher seeks rehearing of our Decision on Institution, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d) (requiring the rehearing request to “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”) (emphasis added).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“the effect of the prosecution history on the scope of the claims, as substantial evidence supports our findings. We understand that a prosecution disclaimer requires that a patentee make it clear “that the invention does not include a particular feature” and that, although “such disavowal can occur either explicitly or implicitly, it must be clear and unmistakable.” Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016). We are not persuaded by Fisher that ResMed’s disclaimer is limited to adjustment mechanisms that correspond to a structure that forms the engagement between a cushion component and a common frame.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached
“discretion. First, we do not understand Fisher as making this argument in the Petition. That is, we interpret Fisher to argue in the Petition that after a user adjusts the fit of mask 510 using adjustment wheels 530 to a desired configuration, the user will not further adjust the mask, and cushion/secondary frame 514 is in a fixed, non-adjustable position relative to chassis 512. See Pet. 27. We cannot misapprehend or overlook an argument that is not made. Even if the argument as Fisher articulates here is the argument in the Petition, we are not persuaded that we overlooked Berthon-Jones disclosing the “fixed, non-adjustable position” claim limitations, as substantial evidence supports our findings. Berthon-Jones’s adjustment is not the “wiggle” that ResMed referenced in its Preliminary Response, which would be associated with manufacturing tolerances and flexible materials that may allow for some small movement between the components.4 See Prelim. Resp. 15. Instead, Berthon-Jones discloses that its adjustment wheel 530 is used to adjust the sealing force or fit of the cushion against a user’s face— that is, the reason for adjustment wheel 530 as part of the mask is to adjust the cushion relative to the frame. See Ex. 1002 ¶ 186; see also ¶ 168 (“[Figures] 41 through 53 illustrate additional embodiments which allow 4 We stress that we do not decide whether the “fixed, non-adjustable position” claim limitations would encompass a structure with the “wiggle” that ResMed referenced in its Preliminary Response, as we do not need to reach that issued in deciding this Request.” slip op. at 10
- Strike new argumentNew argument disregardedDecided for patent owner
“discretion, as the argument is inconsistent with our construction of the “fixed, non-adjustable position” claim limitations. As we indicated above, we interpret these limitations to exclude masks with structures that adjust the 3 Fisher’s Petition did not identify raised central structure 538 as satisfying the subject matter of the fixed, non-adjustable position” claim limitations. See Pet. 25–27 (identifying protrusions 524 and receiving holes 526). We do not consider new arguments in a request for rehearing. See 37 C.F.R. § 42.71(d).” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 9,381,316 - Kayak Software Corp. / Opentable, Inc. et al. v. International Business Machines Corp.All claims unpatentablePTAB · Aug 7, 2017 · IPR2016-00609 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1, 3, 12, 13, 15, and 18 are unpatentable as anticipated by Mellmer under § 102.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“for the first time in its Reply, even though it had an opportunity to brief this issue in its Petition. We therefore find Petitioner’s new argument in this regard waived. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016). Even if we were to consider Petitioner’s argument, however, we would still find it to be unpersuasive. “[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (cited at PO Resp. 25). In this case, as Patent Owner points out, “the inventors stated that the preambles of [c]laims 1, 15, and 18 limit those claims,” and they “also used the term ‘federated computing environment’ to distinguish their claims over a reference cited during prosecution.” PO Resp. 24–25; see also Ex. 1003, 14–15 (“the subject disclosure provides for a ‘runtime user account creation operation within a single-sign-on process’ within the context of a ‘federated computing environment’” and “[t]he ‘federated’ context of the subject disclosure is evident from the preamble in each independent claim”); id. at 16 (“the ‘federated computing environment’ limitations of the preamble[s] are limiting”); id. at 17 (“Ting, the alleged anticipatory prior art, is not a ‘federated’ teaching. For that reason alone, the reference cannot and does not anticipate any pending claim.”). Based on the record before us, we conclude that the term “federated computing environment” is limiting.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We do not conclude, however, that the scope of the term is limited to an affiliation of enterprises, as both parties urge. Pet. 18; PO Resp. 23. Indeed, the specification of the ’346 patent teaches that, “[i]n the context of the present invention, a federation is a set of distinct entities, such as enterprises, organizations, institutions, etc., that cooperate to provide a single-sign-on, ease-of-use experience to a user.” Ex. 1001, 10:62–64 (emphasis added). According to the specification of the ’346 patent, an entity “generally refers to an organization, an individual, or a system that operates on behalf of an organization, an individual, or another system.” Id. at 8:31–33. We recognize that the portion of the ’346 patent that the parties cite specifies enterprises, but, in light of the specification of the patent as a whole, we find this instance of “enterprises” to illustrate an example of the types of entities that may make up a federation. Compare id. at 10:62–64 (“[i]n the context of the present invention, a federation is a set of distinct entities, such as enterprises”), with id. at 1:64–2:1 (“[a] federation is a loosely coupled affiliation of enterprises”). Accordingly, we determine that, under a broadest reasonable interpretation in light of the specification of the ’346 patent, the term “federated computing environment” refers to “an environment having a loosely coupled affiliation of entities that adhere to certain standards of interoperability; the federation provides a mechanism for trust among those entities with respect to certain computational operations for the users within the federation.”” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner counters, arguing that “federated computing environment” is not limiting “because that term only appears in the preamble, which the patentee used merely to state an intended use for the claimed subject matter,” the invention of the ’346 patent “is not limited to operating in a federated computing environment,” and “[t]he claim body of each independent claim defines a structurally complete invention.” Pet. Reply 2–3. According to Petitioner, that “the applicant argued that the preamble was limiting during prosecution” is not “categorically determinative,” but, rather, should be treated as a “guidepost[]” in “deciding whether a preamble is limiting.” Id. at 4. Petitioner raises the argument as to whether the preamble is limiting for the first time in its Reply, even though it had an opportunity to brief this issue in its Petition. We therefore find Petitioner’s new argument in this regard waived. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016). Even if we were to consider Petitioner’s argument, however, we” slip op. at 7
- Expert testimonyOther
“above in the “Claim Construction” section, we construe the term “single sign-on operation” to mean “a process by which a user is authenticated at a first entity and subsequently not required to perform another authentication before accessing a protected resource at a second entity.” An authentication, as explained by Petitioner, refers to a “process of validating a set of credentials that are provided by a user or on behalf of a user.” Pet. Reply 8. This is supported by the ’346 patent. See Ex. 1001, 9:50–51 (providing the same definition); see also Tr. 27:24–28:2 (Patent Owner stating that there is “no real dispute on the meaning of authentication”). While we recognize that DigitalMe “will construct an accessCard, prompt the user to associate a meCard, and re-issue the post” before the user is logged into the partner site in Mellmer, (see Ex. 1008, 25:66–26:2, Fig. 34), we do not find this disclosure to be indicative of a second authentication, as Patent Owner urges, (see PO Resp. 34). For instance, we note that an accessCard in Mellmer “represent[s] the partner site.” Ex. 1008, 24:48. As Petitioner points out, Mellmer “is silent as to what information is included in the accessCard” described in the “No Account On This Site Scenario” section. Pet. Reply 12. That is, Mellmer does not teach that the accessCard in a “No Account On This Site Scenario” includes a set of credentials. See id.; see also PO Resp. 34 (citing Ex. 1008, 24:62–25:4 (describing “A Normal Scenario”), 25:9–13 (describing “A Normal Scenario”), 25:38–43 (describing “A No Access Card Scenario”), 25:63– 26:2 (describing an accessCard in “A No Account On This Site Scenario,” without describing the contents of the accessCard), 26:32–35 (describing “A Site that is not DigitalMeTM—Aware Scenario”)). Thus, based on the arguments and evidence presented, we find that constructing an accessCard representing the partner site does not constitute providing or validating a set of credentials.” slip op. at 20
Patent outcomesUS 7,631,346 unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,631,346 - Kayak Software Corp. / Opentable, Inc. et al. v. International Business Machines Corp.All claims unpatentablePTAB · Aug 7, 2017 · IPR2016-00608 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1, 3, 12, 14, 15, and 18 are unpatentable as anticipated by Sunada under 35 U.S.C. § 102.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“We do not conclude, however, that the scope of the term is limited to an affiliation of enterprises, as both parties urge. Pet. 18; PO Resp. 13. Indeed, the specification of the ’346 patent teaches that, “[i]n the context of the present invention, a federation is a set of distinct entities, such as enterprises, organizations, institutions, etc., that cooperate to provide a single-sign-on, ease-of-use experience to a user.” Ex. 1001, 10:62–64 (emphasis added). According to the specification of the ’346 patent, an entity “generally refers to an organization, an individual, or a system that operates on behalf of an organization, an individual, or another system.” Id. at 8:31–33. We recognize that the portion of the ’346 patent that the parties cite specifies enterprises, but, in light of the specification of the patent as a whole, we find this instance of “enterprises” to illustrate an example of the types of entities that may make up a federation. Compare id. at 10:62–64 (“[i]n the context of the present invention, a federation is a set of distinct entities, such as enterprises”), with id. at 1:64–2:1 (“[a] federation is a loosely coupled affiliation of enterprises”). Accordingly, we determine that, under a broadest reasonable interpretation in light of the specification of the ’346 patent, the term “federated computing environment” refers to “an environment having a loosely coupled affiliation of entities that adhere to certain standards of interoperability; the federation provides a mechanism for trust among those entities with respect to certain computational operations for the users within the federation.” Based on our construction, the scope of this term encompasses enterprises, but is not limited to enterprises.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Petitioner raises the argument as to whether the preamble is limiting for the first time in its Reply, even though it had an opportunity to brief this issue in its Petition. We therefore find Petitioner’s new argument in this regard waived. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016). Even if we were to consider Petitioner’s argument, however, we would still find it to be unpersuasive. “[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (cited at PO Resp. 15). In this case, as Patent Owner points out, “the inventors stated that the preambles of [c]laims 1, 15, and 18 limit those claims,” and they “also used the term ‘federated computing environment’ to distinguish their claims over a reference cited during prosecution.” PO Resp. 15 (citing Ex. 1003, 15–22); see also Ex. 1003, 14–15 (“the subject disclosure provides for a ‘runtime user account creation operation within a single-sign-on process’ within the context of a ‘federated computing environment” and “[t]he ‘federated’ context of the subject disclosure is evident from the preamble in each independent claim”); id. at 16 (“the ‘federated computing environment’ limitations of the preamble[s] are limiting”); id. at 17 (“Ting, the alleged anticipatory prior art, is not a ‘federated’ teaching. For that reason alone, the reference cannot and does not anticipate any pending claim.”). Based on the record before us, we conclude that the term “federated computing environment” is limiting.” slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“Based on the record before us, we find that Patent Owner does not meet its burden of producing evidence sufficient to show that Mr. Bray’s work on the source code inured to the benefit of the named inventors. It follows that we also find that Patent Owner does not meet its burden of producing evidence sufficient to show that any of the named inventors constructed an embodiment or performed a process that met all the claim limitations. See Cooper, 154 F.3d at 1327. Even if we were to accept that Mr. Bray’s work on the source code inured to the benefit of the named inventors, however, we find that Patent Owner fails to provide sufficient evidence showing that Mr. Bray’s code was tested successfully and adequately to show that the code actually worked for its intended purpose, as required by the second element of actual reduction to practice. See id. We note Petitioner’s argument that Patent Owner “fails to corroborate the testing by anyone who had first-hand knowledge of that alleged testing.” Pet. Reply 11. Petitioner explains that “Dr. Hinton, when asked on redirect at her deposition in this proceeding, testified that runtime account provisioning was tested, although on recross she admitted that she had no documentation to corroborate that testing.” Id. at 13 n.2 (citing Ex. 1018, 109:14–110:4). Petitioner also explains that “Mr. Wardrop testified that he did not write or test the code, nor was he able to find any documentation about the alleged testing.” Id. at 14 (citing Ex. 1017, 64:16– 22, 79:9–23). In addition, Petitioner points out, “Mr. Wardrop was also unable to say under what configuration the alleged testing would have occurred, which is significant because he testified that not all configurations would have involved runtime account creation.” Id. (citing Ex. 1017, 91:19– 92:21). We agree with Petitioner. In particular, we note the absence from the record of any evidence showing that Mr. Bray’s source code actually worked for its intended purpose. The only evidence that Patent Owner relies on to show testing of Mr. Bray’s code is the testimony of Dr. Hinton, a named inventor, and Mr. Wardrop, a non-inventor. See PO Resp. 40 (citing Ex. 2038 ¶¶ 12–14, 26; Ex. 2061 71:2–72:24). Patent Owner does not direct us to any test documentation corresponding to the code. Indeed, Dr. Hinton testified during her deposition that she has no access to any such documentation. Ex. 1018, 109:18–24 (“Q. You are not aware of any documentation that reflects that testing of runtime account creation for the PRPQ; correct? A. I don’t have access to the test documents. There would have been test cases created. I just don’t have them.”). Similarly, Mr. Wardrop testified during his deposition that he also has no access to any test documentation corresponding to Mr. Bray’s source code, and that he was not involved with the testing. Ex. 1017, 64:16–22 (“Q. Is there any documentation of that testing? A. I couldn’t find any, . . . but I know there was at the time, but it’s so long ago . . . because I’m not a tester, so I don’t know where they actually kept all those records.”); id. at 79:18–23 (“Q. . . . So the Exhibits 2040 to 2049 that you said wouldn’t have been included in the release but that would have been in the build, would you have been involved in testing with those? A. I was not part of the testing.”). In Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1373 (Fed. Cir. 1998), the Federal Circuit found significant “the absence of any physical record to support the oral evidence,” despite “the ubiquitous paper trail of virtually all commercial activity” that normally exists “in modern times.”” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the record before us, we agree with Petitioner. Claims 1, 15, and 18 do not recite any “hallmark[]” of a mechanism for trust. Further, Patent Owner’s own assertion that computer components within a single enterprise implicitly trust each other implies that Sunada discloses a mechanism for trust among those computer components. See PO Resp. 27; see also Ex. 1001, 19:54–63 (“Within an exemplary federated environment that is able to support the present invention, there are two types of ‘trust domains’ . . . . An enterprise trust domain contains those components that are managed by the enterprise; all components within that trust domain may implicitly trust each other.”) (cited at Pet. Reply 24). Moreover, in her declaration, Ms. Spielman directs us to where the ’346 patent teaches that, “[i]f there is no trust relationship, then the service provider cannot depend upon the assertions received from the identity provider; they cannot be used by the service provider to determine how to interpret any information received from the identity provider.” Ex. 2039 ¶ 70 (citing Ex. 1001, 20:28– 32). As discussed above, Sunada’s SSO server sends attributes to a web application, and that web application uses those attributes for runtime account creation. Ex. 1005, Fig. 3. Having considered the arguments and evidence developed during trial, we find that Sunada’s exchange of attributes implies a trust relationship. Specifically, we note the cited teachings in the ’346 patent that all components within an enterprise trust domain may implicitly trust each other, (see Ex. 1001, 19:54–63), and that the service provider cannot depend on assertions from the identity provider where there is no trust relationship, (see id. at 20:28–32). Accordingly, we find that Sunada discloses a mechanism for trust. Patent Owner further argues that Sunada does not disclose a “federated computing environment” because, “‘[w]ithin a single enterprise, some web applications may participate in a single-sign-on, while others may not.’” PO Resp. 27 (quoting Ex. 2039 ¶ 79). Although this may be true generally, Patent Owner does not direct us to evidence showing a web application in Sunada specifically that does not participate in a single-sign-on. Indeed, Sunada teaches that both web applications 2 and 3 “have a function by which, in a case where a user who has logged in by way of the SSO function requests to be provided with a service and the user is not registered, the applications automatically create a user account.” Ex. 1005 ¶ 16 (cited at Pet. 25–26); see also Pet. 24 (“the [web applications in Sunada] ‘participate’ in the SSO and are configured to create a user account for a user that attempts to log on using the SSO server, but does not have an account with the [web application]”). We find that each of Sunada’s web applications participates in single-sign-on operations. Lastly, Patent Owner argues “that Sunada’s web applications and SSO server can share a user’s login status and information about the user is also not sufficient to show that Sunada discloses a ‘federated computing environment.’” PO Resp. 28. According to Patent Owner, computers within a single enterprise trust each other “because they can communicate over the same standard or protocol on a secure internal network,” and “that Sunada’s web application and SSO server purportedly communicate using the same standard or protocols also is not enough to make them a ‘federated computing environment’ because components within a single enterprise can communicate over the same standard or protocol.” Id.” slip op. at 28
Patent outcomesUS 7,631,346 unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,631,346
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.