- LG Display Co., Ltd. v. Delaware Display Group LLCAll claims unpatentablePTAB · Jun 23, 2016 · IPR2015-01666 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1–5 are unpatentable because Shinohara anticipates them.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Following institution, LG Electronics, Inc. filed timely a Petition and Motion for Joinder in Case IPR2015-01666, challenging the same claims of the ’973 patent on the same ground as that on which we instituted review in this proceeding, plus one additional ground. See Paper 24, 2. LG Electronics, Inc. agreed to abandon the additional ground should IPR2015- 01666 be joined with this proceeding. See id. at 2 n.1. To administer the proceedings more efficiently, we granted LG Electronics, Inc.’s Motion for Joinder, joining Case IPR2015-01666 with the instant proceeding. Id. at 5. For purposes of this Decision, we refer to LG Display Co., Ltd. and LG Electronics, Inc., jointly, as “Petitioner.”” slip op. at 2
- Skill levelOther
- BurdenUnpatentable
“B. Anticipation by Shinohara 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). As recently reiterated by the Federal Circuit, “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) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)). We analyze this ground based on anticipation in accordance with the above-stated principles.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Patent Owner repeats its unsuccessful argument that, “[w]ithout offering a construction for this term, the Petitioner has failed to meet the burden of 37 C.F.R. § 42.104(b)(3).” Id. Petitioner responds that this term (1) does not require construction; (2) is limited to a specific embodiment in the specification; (3) and imports a limitation from the specification into the claims. Reply 3–4. Having considered the full record developed during trial, we agree with Petitioner that this term does not require construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner’s arguments distinguishing the prior art do not rely on a particular construction for this term. See infra.” slip op. at 6
Patent outcomesUS 7,434,973 unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,434,973 - LG Display Co., Ltd. v. Delaware Display Group LLCAll claims unpatentablePTAB · Jun 23, 2016 · IPR2015-00506 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1–5 are unpatentable because Shinohara anticipates them.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Following institution, LG Electronics, Inc. filed timely a Petition and Motion for Joinder in Case IPR2015-01666, challenging the same claims of the ’973 patent on the same ground as that on which we instituted review in this proceeding, plus one additional ground. See Paper 24, 2. LG Electronics, Inc. agreed to abandon the additional ground should IPR2015- 01666 be joined with this proceeding. See id. at 2 n.1. To administer the proceedings more efficiently, we granted LG Electronics, Inc.’s Motion for Joinder, joining Case IPR2015-01666 with the instant proceeding. Id. at 5. For purposes of this Decision, we refer to LG Display Co., Ltd. and LG Electronics, Inc., jointly, as “Petitioner.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner repeats its unsuccessful argument that, “[w]ithout offering a construction for this term, the Petitioner has failed to meet the burden of 37 C.F.R. § 42.104(b)(3).” Id. Petitioner responds that this term (1) does not require construction; (2) is limited to a specific embodiment in the specification; (3) and imports a limitation from the specification into the claims. Reply 3–4. Having considered the full record developed during trial, we agree with Petitioner that this term does not require construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner’s arguments distinguishing the prior art do not rely on a particular construction for this term. See infra.” slip op. at 6
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“the ’176 grandparent application is insufficient. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997); see also Reply 5–6. We find that the cited disclosures in the ’176 grandparent application do not describe the density, size, depth, or height of the deformities at approximate midpoints between adjacent pairs of light sources. As discussed above, Patent Owner maintains that a skilled artisan reading the ’176 grandparent application would know that “the approximate midpoint between the two light sources is an area farther away from a light source.” PO Resp. 28 (emphasis added). We are not persuaded by this argument, for it does not establish that the approximate midpoint between adjacent pairs of light sources is the only area farther away from a light source. As Petitioner points out, “the increased distance from the light source is not limited to a distance along the length of the panel member, along the width of the panel member, or along any direction at all.” Reply 11. Thus, Patent Owner fails to meet its burden under Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015) (burden of production shifted to patent owner to prove entitlement to earlier filing date).” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedReference is prior artDecided for petitioner
“In view of the foregoing, we determine that Patent Owner has not demonstrated that the ’176 grandparent application, as originally filed, provides written description support for the disputed limitation. Therefore, we determine that claims 1–5 are not entitled to the benefit of the filing date of the ’176 grandparent application and Patent Owner is thus entitled only to the effective filing date of the application for the ʼ973 patent, February 9, 2007. As a consequence, we find that Shinohara qualifies as prior art.” slip op. at 11
Patent outcomesUS 7,434,973 unpatentableClaim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 7,434,973 - Westerngeco, L.L.C. v. PGS Geophysical AsSome claims unpatentablePTAB · Jun 8, 2016 · IPR2015-00310 · APJ Justin Busch · IPR · Final written decision
Claims 23, 24, and 30 are unpatentable as anticipated by de Kok; claims 23, 24, 28, and 29 are unpatentable as obvious over Beasley and Edington.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We agree with Patent Owner that the “indexed” limitation requires more than merely “selecting” times. Petitioner offers no explanation how Dr. Ikelle’s testimony that “indexed” should be construed broadly to mean “selected,” Ex. 2002, 184:8–11, would be consistent with the rest of the limitation that requires enabling separate identification of events originating from different sources. Patent Owner’s proposed construction, however, is unduly narrow to the extent it requires recording. As explained in the passage cited by Patent Owner, recording the signal and indexing are two separate aspects of the process involved in the ’981 patent. Ex. 1001, 5:62–67 (“A recording is made of the signal . . . that is indexed to a known time reference with respect to time of firing of the first source) (emphases added). The ’981 patent demonstrates that the term “indexed” is used in the “indexed” limitation according to one of its ordinary meanings that one thing is arranged in reference to another. Id.; see also id. at 6:66–7:1 (“[A] time of firing of each source with respect to a time index” is shown in Figure 4.), 8:33–40 (“[W]hen time is indexed with respect to the firing time of source A,” source B events are not coherent between firing sequences.).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Owner’s distinctions between what de Kok discloses and what claim 23 recites are inapposite. We are persuaded by Petitioner’s arguments, which Patent Owner does not contest, that de Kok’s firing times for each source are indexed (as we have construed the “indexed” limitation) to the reference time in a way that allows the shot records to be separated into source records. Because de Kok discloses both indexing and enabling separate identification of seismic events originating from each source, de Kok discloses the “indexed” limitation as we have construed it.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“unpersuaded. Petitioner’s challenge relies on Edington for its teaching that time-delays can be used to encode and decode signals. Based on the arguments and evidence presented during trial, we are persuaded by Petitioner that a person having ordinary skill would have used time-aligning signals, as taught by Edington, as a type of decoding without needing to take multiple shots from the same source. Accordingly, a person having ordinary skill would have been able to decode a signal for a given encoding scheme, and we find Patent Owner’s assertion that an ordinarily skilled artisan would “lack[] an effective decoding scheme” unpersuasive.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Beasley clearly states that “no time shift” results in “no spatial reflection-point smearing.” Ex. 1004, 7:61–62. Both parties agree that some amount of spatial reflection point smearing would result from using Edington’s time delay encoding with Beasley’s seismic surveying system. See Tr. 28:3–8, 38:14–15 (counsel for Patent Owner stating that “frankly, any time you have a time delay at all, there is spatial reflection point smearing”). However, neither party pointed us to evidence explaining the relationship between the amount of delay and the amount of smearing, or how much smearing would be tolerated in marine seismic surveying. One consequence of the lack of evidence on this point is that it is unclear whether Beasley is stating that simultaneous activation versus sequential activation avoids smearing or if simultaneous activation versus near-simultaneous activation avoids smearing. Beasley’s disclosure regarding the benefit of eliminating smearing immediately follows the discussion that distinguishes between sequential and concurrent source activation. Based on the record before us, we find Beasley indicates that simultaneous (or near-simultaneous) activation of sources avoids the smearing that otherwise results when activating the sources sequentially. Ex. 1004, 7:52–63. Furthermore, Patent Owner has not argued, and we do not find, that claim 23 should be construed to exclude any amount of spatial reflection point smearing.10 The parties have pointed to no evidence or argument explaining sufficiently why the level of smearing resulting from Petitioner’s proposed combination of Beasley and Edington would be unacceptable, but the level of smearing resulting from the time delay encoding recited in the ’981 patent would be acceptable. Therefore, to the extent that incorporating Edington’s time delay encoding into Beasley’s system generates reflection point smearing, the evidence does not support a finding that claim 23 excludes any amount of smearing. Based on the record before us, we are not 10 When asked whether the subject matter of the ’981 patent suffered from spatial reflection point smearing because of its use of time delays, counsel for Patent Owner stated “I do think it suffers it to some degree.” Tr. 41:14– 15. persuaded the smearing allegedly introduced by combining Edington’s time delay encoding with Beasley’s system would have led an ordinarily skilled artisan away from that combination.” slip op. at 25
Patent outcomesUS 6,906,981 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,906,981 - Westerngeco, L.L.C. v. PGS Geophysical AsSome claims unpatentablePTAB · Jun 8, 2016 · IPR2015-00309 · APJ Justin Busch · IPR · Final written decision
Claims 1, 2, 6, 7, 10, 11, 16, 17, 21, and 22 are unpatentable; claims 3–5 are not shown unpatentable, and challenges to claims 18–20 are dismissed.
RulingsFinal written decision- BurdenMixed
“Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1, 2, 6, 7, 10, 11, 16, 17, 21, and 22 are unpatentable, but has failed to do so for claims 3–5 and 12–15. We dismiss the Petition with respect to the challenges asserted against claims 18–20.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“more than merely “selecting” times. Petitioner offers no explanation how Dr. Ikelle’s testimony that “indexed” should be construed broadly to mean “selected,” Ex. 2002, 184:8–11, would be consistent with the rest of the limitation that requires enabling separate identification of events originating from different sources. Patent Owner’s proposed construction, however, is unduly narrow to the extent it requires recording. As explained in the passage cited by Patent Owner, recording the signal and indexing are two separate aspects of the process involved in the ’981 patent. Ex. 1001, 5:62–67 (“A recording is made of the signal . . . that is indexed to a known time reference with respect to time of firing of the first source) (emphases added). The ’981 patent demonstrates that the term “indexed” is used in the “indexed” limitation according to one of its ordinary meanings that one thing is arranged in reference to another. Id.; see also id. at 6:66–7:1 (“[A] time of firing of each source with respect to a time index” is shown in Figure 4.), 8:33–40 (“[W]hen time is indexed with respect to the firing time of source A,” source B events are not coherent between firing sequences.).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Although a prior art reference may anticipate when the claim limitations not expressly found in that reference are inherent in it, inherency requires that “the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Here, Petitioner’s arguments and evidence fail to persuade us that de Kok disclosure of suppressing random noise inherently includes determining trace to trace coherence. Merely demonstrating a step may be done is not sufficient to show that step is inherently anticipated. Accordingly, based on the arguments and evidence submitted, we find Petitioner has failed to demonstrate, by a preponderance of the evidence, that de Kok anticipates claims 12 and 17. Similarly, because claims 13–15 ultimately depend from claim 12, we find Petitioner has failed to demonstrate, by a preponderance of the evidence, that de Kok anticipates claims 13–15.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The relevant passages cited by both parties demonstrate that Beasley distinguishes between alternating and concurrent firings. See, e.g., Ex. 1004, 7:52–63. Although Herkenhoff states that the concurrent disclosure in Beasley means “exactly concurrently,” Patent Owner has not pointed to any clear disclosure in Beasley itself indicating “concurrently” should be understood as excluding any amount of time delay. Petitioner, however, has pointed to multiple references where Beasley explains that sources may be fired “simultaneously or nearly simultaneously.” Pet. Reply 15 (citing Ex. 1004, 8:46–47); Pet. 47 (quoting Ex. 1004, 1:19–25 (“The present invention, in certain aspects, is directed to seismic survey systems and methods in which two or more seismic sources are fired simultaneously, or significantly close together temporally . . . .”)); see also Ex. 1004, 1:47–51, 8:44–47, 9:5–10, 12:26–29. Moreover, claim 1 of the ’655 patent, which Patent Owner asserts claims the “first embodiment” of the ’981 patent, recites a method including the step of “substantially simultaneously launching a first acoustic wavefield,” from the leading source, “the first wavefield being characterized by a first unique code and launching a second acoustic wavefield” from the trailing source, “the second acoustic wavefield being characterized by a second unique code.” Ex. 2009, 6:46–53. Accordingly, Beasley does not exclude time delay encoding from its disclosed “concurrent” activation embodiments.” slip op. at 27
Patent outcomesUS 6,906,981 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 6,906,981 - Westerngeco, L.L.C. v. PGS Geophysical AsSome claims unpatentablePTAB · Jun 8, 2016 · IPR2015-00311 · APJ Justin Busch · IPR · Final written decision
Claims 31, 32, and 35–37 are unpatentable as obvious over Beasley and Edington; the Board did not find claims 31–34 and 36–38 anticipated by de Kok or claims 33–34 obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner initially argued for a specific construction of “wavelet time” as “the duration of the source signature.” Pet. 14–15. For purposes of the Decision on Institution, we preliminarily construed wavelet time consistent with Petitioner’s proposed construction. Dec. on Inst. 14–15. Now, with the full record before us, we determine an explicit construction of “wavelet time” is not necessary to resolve this controversy. Petitioner does not clearly set forth a proposed construction for any other term in its Petition. Patent Owner argues for specific constructions of “quasi-randomly” and “randomly.” PO Resp. 15–19. The constructions of “quasi-randomly” and “randomly” are not in dispute, and an explicit construction is not necessary to resolve the controversy; accordingly, we do not provide an explicit construction of “quasi-randomly” or “randomly.” Therefore, we determine there is no need to construe explicitly any term for purposes of this decision.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that de Kok’s polarity encoding and decoding process does not disclose the “time aligning” step. As Patent Owner argues, de Kok describes a polarity encoding and decoding system that does not align the “recorded signals with respect to a firing time of the second source in each firing sequence.” Specifically, de Kok explains that it uses activation sequences and polarity to generate signals, from which “source records may be derived” “using a combination of shot record summations, inversions and filtering.” Ex. 1003, 2:51–53; see also id. at 4:55–5:4, 5:55–65. To the extent de Kok discusses time delay encoding, any arguable time alignment applies to the firing of the sources, not the recorded signals. Id. at 5:66–6:2, 6:41–52. Accordingly, Petitioner has not pointed to persuasive evidence that de Kok’s polarity encoding and decoding discloses the “time-aligning” step.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The relevant passages cited by both parties demonstrate that Beasley distinguishes between alternating and concurrent firings. See, e.g., Ex. 1004, 7:52–63. Although Herkenhoff states that the concurrent disclosure in Beasley means “exactly concurrently,” Patent Owner has not pointed to any clear disclosure in Beasley itself indicating “concurrently” should be understood as excluding any amount of time delay. Petitioner, however, has pointed to multiple references where Beasley explains that sources may be fired “simultaneously or nearly simultaneously.” Pet. Reply 12 (citing Ex. 1004, 8:46–47); Pet. 38 (quoting Ex. 1004, 1:19–25 (“The present invention, in certain aspects, is directed to seismic survey systems and methods in which two or more seismic sources are fired simultaneously, or significantly close together temporally . . . .”)); see also Ex. 1004, 1:47–51, 8:44–47, 9:5–10, 12:26–29. Moreover, claim 1 of the ’655 patent, which Patent Owner asserts claims the “first embodiment” of the ’981 patent, recites a method including the step of “substantially simultaneously launching a first acoustic wavefield,” from the leading source, “the first wavefield being characterized by a first unique code and launching a second acoustic wavefield” from the trailing source, “the second acoustic wavefield being characterized by a second unique code.” Ex. 2009, 6:46–53. Accordingly, Beasley does not exclude time delay encoding from its disclosed “concurrent” activation embodiments. Patent Owner’s argument that time delay encoding results in a plain wavefield rather than an encoded wavefield and, therefore, using time delay encoding would not fall within Beasley’s “any type of coding,” is similarly unpersuasive. Patent Owner fails to address that Beasley distinguishes between “a signal with no encoded feature, individual identifier, tag, discriminating feature, or separate signature” and “signals that can be discriminated from each other due to some identifying characteristic, parameter, signature or feature.” Ex. 1004, 9:67–10:8 (emphasis added). Accordingly, the evidence supports Petitioner’s contention that time delay encoding generates signals with an identifying parameter or characteristic (the timing) that would allow the signals to “be discriminated from each other.” Pet. Reply 11–12. Furthermore, Dr. Lynn acknowledged that “Edington’s time delay source coding is ‘a type of source signature encoding.’” Id. (quoting Ex. 1022, 148:18–23).” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“nonobviousness. PO Resp. 55–60. The factual inquiries for obviousness include secondary considerations based on evaluation and crediting of objective evidence. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). However, to accord substantial weight to objective evidence requires the finding of a nexus between the evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). “Nexus” is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The burden of showing that a nexus exists lies with the patent owner. Id.; see In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994). Patent Owner points to various prior attempts (including Edington, Beasley, and de Kok) to conduct simultaneous shootings in a marine environment and the failings of each of them. Id. at 43–44. Patent Owner also points to various published papers allegedly “investigat[ing] data processing techniques for use with data sets modeled on [the ’981 patent]’s varied time delays” and field trials and studies allegedly using the ’981 patent’s “time-delay acquisition and indexing methods.” Id. at 44–48. Petitioner argues Patent Owner has shown no nexus between Patent Owner’s proffered secondary considerations and the invention of the ’981 patent. Pet. Reply 20–22. Petitioner contends Patent Owner’s focus on the varied time delays of claim 31 is insufficient because time delayed encoding “existed long before the ’981 patent.” Id. We agree with Petitioner that Patent Owner has not demonstrated sufficiently a nexus between the secondary considerations and the alleged novelty of claim 31. First, as Petitioner points out, and as borne out by the evidence in this case, time delay encoding for seismic surveying existed prior to the ’981 patent. E.g., Exs. 1006, 1021. Second, the majority of the evidence cited by Patent Owner focuses on the randomness of the time delays, not just the use of time delays generally. Consequently, Patent Owner has not presented persuasive evidence or analysis linking the claims at issue with the alleged “long-felt but unmet need, industry praise, and copying.” See PO Resp. 55.” slip op. at 20
Patent outcomesUS 6,906,981 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,906,981 - Westerngeco LLC v. PGS Geophysical AsSome claims unpatentablePTAB · Jun 3, 2016 · IPR2015-00313 · APJ Beverly M Bunting · IPR · Final written decision
Claims 1, 4, 10, and 11 are unpatentable: claims 1, 4, and 10 as anticipated by Gallagher, and claim 11 as obvious over Gallagher and Frasier; claims 2, 3, and 5 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Id. at 3:59–65. Additionally, the specification describes how, in this embodiment, “a plurality of the coordinate-designated set of traces have the same coordinates . . . the acquisition geometry resulted in two traces populating each common-inline/common-crossline bin.” Id. at 3:66–4:3. In an alternative embodiment, “there will be a unique set of coordinates per trace (i.e. a single trace per coordinate bin).” Id. at 4:5–7. Thus, based on the specification of the ’059 patent, we credit the testimony of Dr. Lynn that one of skill in the art would understand the “set of bins having a regularized number of traces” into which the coordinate-designated set of traces is organized are “common-offset bins.”4 Ex. 2037 ¶¶ 57–65, 111–113.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“As discussed supra, we determined that the correct interpretation of the claim term “set of bins” is “a set of common offset bins within a common reference point bin.” Patent Owner’s arguments directed to “posthoc bins” are not persuasive because the claims do not limit the bins to “pre” or “post” hoc bins. Thus, in view of the correct construction of the claim term “set of bins,” we are persuaded by Petitioner’s arguments that Gallagher discloses a “set of bins.” Specifically, Petitioner explains how the section shells group the sources based on their azimuth and offset from the CMP (Reply 10–11), and that the sub-squares represent common offset bins (Id. at 11–12). Additionally, Petitioner argues persuasively that the single-trace bin satisfies the claim limitation “a set of bins” as we have construed this term, because “[e]ach trace within the sub-bins or sections of Gallagher is necessarily common [to itself] with respect to offset and even azimuth.” Reply 13. In considering the record in its entirety, Petitioner has presented persuasive evidence to support a finding that Gallagher describes the “organizing” step recited in independent claim 1.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We are not persuaded by Patent Owner’s argument that the disclosure in Gallagher teaches away from the recited method. Patent Owner has not shown, nor can we find, that Gallagher criticizes, discredits, or otherwise discourages the use of a common reflection point instead of a common reference point. A reference teaches away from a claimed invention if it “criticizes, discredits, or otherwise discourages” modifying the reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We will not, however, “read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“The Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry here is whether Petitioner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. Patent Owner does not proffer persuasive arguments or evidence that Petitioner’s proposed modification of the system of Gallagher using the teachings of Frasier regarding common reflection point would not have been obvious to one of skill in the art. We have considered Patent Owner’s arguments; however, we are persuaded that Petitioner has provided an articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 26
Patent outcomesUS 6,026,059 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,026,059 - Nestlé USA, Inc. v. Steuben Foods, Inc.All claims unpatentablePTAB · Jun 2, 2016 · IPR2015-00195 · APJ Christopher G Paulraj · IPR · Final written decision
Claims 1–10, 14, 16–21, 25, 27, 29, and 32–36 are unpatentable as obvious over either of two combinations of prior art.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Petitioner’s new arguments and evidence do not persuasively demonstrate that the machines purchased as lines 1–6/7 were built to Petitioner’s specification, nor has Patent Owner demonstrated persuasively that the purchase agreements otherwise created privity between GEA and Petitioner. Even if the agreements for lines 1–6/7 were similar to the Line 8 Agreement as Patent Owner contends, we examined the relationship created by the Line 8 Agreement in detail, and determined that Petitioner and GEA were not privies. See Inst. Dec. 6–17. Given this, Patent Owner has added nothing new of significance since our Institution Decision.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“with the specification does not limit the claimed “sterilant concentration levels” to only airborne concentrations. We recognize that the specification, in one instance, refers to zones with “different concentration levels of gas laden sterilant (e.g., hydrogen peroxide in air).” Ex. 1001, 9:51–53. The specification, however, refers elsewhere to the “residual concentration” of H2O2, measured in terms of ppm. Id. at 12:46–47 (“The hot sterile air knives 208 also remove the hydrogen peroxide from the lids 200 so that the residual concentration of hydrogen peroxide is less than 0.5 PPM.”) (emphasis added); see also id. at 11:15–17 (“After bottle 12 has dried, the residual hydrogen peroxide remaining on the bottle 12 surface is less than 0.5 PPM.”) (emphasis added). Patent Owner acknowledges that “[o]ther discussions of ppm within the specification are in the context of residual sterilant on the bottle,” which is measured in accordance with the FDA Regulations (21 C.F.R § 178.1005(d) (Ex. 1013)) as the concentration in distilled water, but nonetheless asserts that “[t]his is consistent with the definition of ‘sterilant concentration’ in the context of the claim [as] parts of sterilant per million parts of carrier gas.” PO Resp. 6. However, insofar as it is undisputed that “residual” sterilant concentrations on the bottle surface are disclosed in the specification and encompassed by the claim scope, Patent Owner does not explain why the skilled artisan would have understood such a concentration would be measured as parts of sterilant per million parts of carrier gas (i.e., airborne) as opposed to parts of sterilant per million parts of distilled water in accordance with the FDA Regulations. See Ex. 1013, 326 (“No use of hydrogen peroxide solution in the sterilization of food packaging material shall be considered to be in compliance if more than 0.5 part per million of hydrogen peroxide can be determined in distilled water packaged under production conditions.”). In short, neither the claims nor the specification limit how or where within “the plurality of zones” the sterilant concentration levels should be assessed in order to determine whether the 5 to 1 ratio is satisfied. As such, we find no basis to limit the claimed sterilant concentration levels to only airborne concentrations.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“14 Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would possess “an undergraduate scientific or engineering degree in a relevant field (such as microbiology or mechanical, packaging, process, or food engineering), at least five years of experience in an aseptic packaging and/or processing field (or a graduate degree conferring similar expertise), and an understanding of the relevant principles of microbiology and food science and technology.” Pet. 12; Ex. 1004, ¶ 12. Patent Owner has not contested that definition in its Patent Owner Response, but its expert Dr. Sharon asserts that Petitioner’s definition is only partially correct insofar as it does not recognize that the POSITA could have a mechanical engineering Patent Owner’s arguments are directed primarily to the sterilant concentration ratio requirement recited in each of the challenged independent claims 1, 4, 17, and 33. Specifically, the challenged claims all require that the sterilant concentration levels in the plurality of zones within the sterilization tunnel “are maintained at a ratio of at least about 5 to 1.” Accordingly, we focus on that limitation, and treat the claims together for purpose of our analysis. 1. Scholle in view of Chambers, the FDA Regulations, Biewendt, Kelbrick, Elliott, Akai, and Kodera Petitioner asserts that, using partitions and pressure differentials, the apparatus of Scholle (Ex. 1004) is configured to prevent the H2O2 sterilant from migrating from the sterilizing compartment to the drying and filling compartments, and, thus, the sterilant concentration in the sterilization compartment of Scholle is necessarily different from the concentration in the drying and filling compartments. Pet. 20 (citing Ex. 1004 ¶ 55; Ex. 1005, 6:36–41). Petitioner also points to Scholle’s teaching of using a 30% solution of H2O2 in water (i.e., 300,000 ppm) as a sterilant (id. at 21 (citing Ex. 1004 ¶ 56; Ex. 1005, 5:18–22)), and asserts that the skilled artisan “would understand that to ensure consistent sterilization and residual peroxide levels, the concentration of applied sterilant must necessarily be ‘maintained.’” Id. degree. Ex. 2056, ¶ 12. We note, however, that Petitioner has included mechanical engineering as a “relevant field” within its definition. Accordingly, we apply Petitioner’s proposed level of skill in the art in our analysis.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“A preponderance of the evidence supports the conclusion that the skilled artisan would have found it obvious to optimize the sterilant concentration levels within the different “zones” (i.e., compartments) of Scholle’s apparatus in such a manner. Several features of Scholle’s apparatus facilitate such an optimization. First, a 30-percent solution of H2O2 in water is atomized and continuously sprayed into the spraying compartment during operation. Ex. 1005, 5:18–26, 45–49. Second, the spraying zone is separated from other compartments by a partition with a narrow opening designed “to reduce the amount of [H2O2] mist passing through the opening.” Id. at 6:12-15. Third, in the drying compartment, the H2O2 is “evaporated” and vented out of the sterile tunnel. Id. at 6:33-36, 44- 55. And finally, the sterile air maintains a positive pressure in the filling and drying compartments, thus reducing any tendency of the H2O2 mist in the spray compartment to migrate through the narrow opening into those other compartments. Id. at 5:36–43, 6:36-41. Although the parties dispute the particular concentration of H2O2 that exists in the sterilization tunnel after it is sprayed, there is no dispute that the spraying compartment in Scholle’s apparatus will have a higher sterilant concentration than the filling compartment. Indeed, even if airborne concentration levels were to be considered, Patent Owner’s counsel acknowledged during oral argument that “there is going to be more sterilant in the air in the spray zone than in the fill zone.” Tr. 122:12–14; see also Ex. 1035, 122:21–123:3 (Patent Owner’s expert Dr. Sharon conceding that the airborne concentration is lower in the fill zone than in the spray zone). Furthermore, we find that the concentration of the 30% solution of H2O2 will remain close to 300,000 ppm in the liquid phase at some point after it is sprayed into the spraying compartment. Scholle discloses that the spray heads atomize the H2O2 solution into a “fine mist or fog,” which coats the exterior of the containers to kill microorganisms. Ex. 1005, 5:22–23, 8:8–13. Although Dr. Sharon asserts that the skilled artisan “would be motivated to use as little sterilant in the sterilization zone as necessary to get the job done” (Ex. 2056, ¶24), he nonetheless acknowledged that, after condensation, the concentration of liquid H2O2 that coats the containers is “somewhere in the neighborhood” of 30%, or 300,000 ppm. Ex. 1035, Tr. 105:17–106:15. Here, we also credit Dr. Heldman’s testimony who stated that although the process of atomizing H2O2 may “result in varying concentrations,” the skilled artisan nonetheless “would understand that to ensure consistent sterilization and residual peroxide levels, the concentration of applied sterilant must necessarily be ‘maintained.’” Ex. 1004 ¶¶ 51, 56.” slip op. at 22
Patent outcomesUS 6,475,435 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,475,435 - Securus Technologies, Inc. v. Global Tel*link CorporationAll claims unpatentablePTAB · Apr 29, 2016 · IPR2015-00156 · APJ Beverly M Bunting · IPR · Final written decision
Claims 1–8 and 11–27 are unpatentable as anticipated by Rae under pre-AIA 35 U.S.C. § 102(e).
RulingsFinal written decision- Skill levelOther
“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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Petitioner’s expert witness, Dr. Akl, attests that a person with ordinary skill in the art in the relevant time frame would be an individual who possesses a combination of experience and education in the field of telecommunications, including “data storage, data transmission and analog/digital signal processing.” Ex. 1003 ¶ 46. According to Dr. Akl, this would consist of the following: (1) a minimum of a Bachelor’s Degree in electrical engineering, computer engineering or the equivalent; and (2) 2 or more years of industry or academic experience in the relevant field. Id. Petitioner’s rebuttal witness, Dr. Forys, offers testimony as to the knowledge level of a person with ordinary skill in the art at the relevant time frame that is essentially the same as Dr. Akl’s assessment. Ex. 2010 ¶ 29. Additionally, we note that the prior art of record in this proceeding— namely, Rae—is indicative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“arguments and evidence concerning the construction of “streaming converter.” We first look to the full phrase that includes this claim term, namely, “a streaming converter coupled to said storage device.” The claim language informs us of the connection between the “streaming converter” and the storage device, i.e., “coupled,” and is not concerned necessarily with the format of the data, i.e. compressed. Patent Owner’s arguments, however, seemingly interpret “streaming converter” in the context of the data, without consideration of the entire claim phrase. Patent Owner does not direct us to, nor do we discern, language in the claim itself requiring the data be compressed. As for the portions of the specification identified by Patent Owner, all refer to the function performed by the streaming converter, namely to convert the compressed conversation data into a streaming format. Although the cited passages describe the voice data themselves as “compressed,” Patent Owner does not direct us to, nor can we find, disclosure in the specification necessarily limiting the voice data to a particular format for transmission, such as a compressed format. Indeed, our review of the specification reveals that: the present technology provides an Integrated Access Device (IAD) 30 wherein voice signals are converted to a digital format and routed by way of a wide area network (WAN) transport mechanism to the central data center 110 for storage. IAD 30 may be embodied as a device more commonly known as a Voice over Internet Protocol (VoIP) Gateway. It is to be specifically understood, however, that the present technology does not require specific devices or systems for implementation but rather is more broadly directed to the inclusion of devices and systems designed to convert analog voice signals into a digital format suitable for transmission over a digital network.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededDecided for petitioner
“dictionary definition of “Boolean search” does not support Patent Owner’s assertion that one of skill in the art would understand “logical search” to mean “Boolean search.” Reply 5–6. We agree. The proffered extrinsic evidence does not inform us sufficiently that one of skill in the art in the relevant time frame would equate a logical search with a Boolean search. Moreover, Patent Owner does not direct us to, nor can we find, any disclosure in the specification that supports Patent Owner’s proposed definition. Indeed, “logical search” is recited only in claims 16 and 17. We are not persuaded by Patent Owner’s arguments and evidence that the plain and ordinary meaning of “logical search” is a Boolean search. Nevertheless, the parties seemingly agree that a “logical search” is understood by one of skill in the communications field. PO Resp. 9; Reply 5; See Tr. 119:21–23 (“logical search was a well-known term”). Therefore, based on the record before us, we conclude the claim term “logical search” need not be construed expressly for purposes of this decision. 4. “file”” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed
“We have reviewed the expert testimony from both sides, and find that both experts have, at times, taken liberties in proffering conclusory statements without real analysis.4 As such, it is within our discretion to assign the appropriate weight to the testimony of both Dr. Akl and Dr. Forys. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) 4 Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). We are not persuaded by Patent Owner’s contentions that Dr. Akl’s testimony be disregarded. Thus, we accord the testimony of both Dr. Akl and Dr. Forys the appropriate weight in view of the arguments and evidence of record in this trial. 2. Overview of Rae (Ex. 1002)” slip op. at 16
Patent outcomesUS 7,551,732 unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,551,732 - PTAB · Apr 18, 2016 · IPR2015-01542 · APJ Beverly M Bunting · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petition on July 02, 2015 pursuant to 35 U.S.C. §§ 311–319, requesting an inter partes review of claims 1–10 and 20–38 (the “challenged claims”) of U.S. Patent No. 6,519,581 B1 (Ex. 1004, “the ’581 patent”). Paper 2, (“Pet.”). Pursuant to our December 7, 2015 Order (Paper 16), Intellectual Ventures I LLC (“IV”), timely filed a Preliminary Response to the Petition on January 20, 2016 (Paper 17, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, 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.”” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). As recently reiterated by the Federal Circuit, “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)). We analyze the ground based on anticipation in accordance with the above-stated principles.” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also are not persuaded by Dr. Taylor’s supporting testimony because it is not supported by underlying facts. See 37 C.F.R. § 42.65. For example, Dr. Taylor testifies that one of ordinary skill in the art would have understood, even when a particular action is not required of the control point subsystem, the information generated is received there to facilitate system management. (Ex. 1001 ¶113). In addition, Dr. Taylor testifies that: one of ordinary skill would understand, any changes to the system resulting from a rule’s action would be reflected in updates to this database. (Id. ¶ 114). Thus, we understand Dr. Taylor to testify that Seiffert’s control point C necessarily could perform the same function of receiving the information from Managed System A. “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed Cir. 1999) (citations omitted). Although Seiffert’s system may indeed be capable of receiving the generated information, mere probabilities or possibilities fall short of demonstrating that the missing descriptive matter is necessarily present in Seiffert, as is required for a ground based on anticipation.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not found
“Moreover, a ground of obviousness must include “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “[T]his analysis should be made explicit” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418. We have considered Petitioner’s arguments (Pet. 55– 59), however, Petitioner does not articulate sufficiently why or how one of ordinary skill in the art would have combined or modified the teachings and suggestions of Fawcett and Ghezzi, or Fawcett, Ghezzi or Berry, to address with sufficient specificity the differences between the claimed invention and the prior art. Based on the record before us, Petitioner has not demonstrated a reasonable likelihood that it will prevail on its assertion that claims 1–8, 10, 20–26, 28–36, and 38 would have been obvious over the combination of Fawcett and Ghezzi. Nor has Petitioner demonstrated a reasonable likelihood that it will prevail on its assertion that claims 9, 27, and 37 would have been obvious over the combination of Fawcett, Ghezzi, and Berry.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,519,581 - PTAB · Apr 18, 2016 · IPR2015-01543 · APJ Beverly M Bunting · IPR · Institution
The Board denied institution on all asserted grounds because IBM did not show a reasonable likelihood of proving claims 11–19 and 39–47 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petition and Preliminary Response, and for the reasons explained below, we conclude that the Petition does not establish a reasonable likelihood that Petitioner would prevail in challenging the patentability of claims 11–19 and 39–47 of the ’581 patent. We, therefore, deny the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“Seiffert expressing that the information generated by transmitting a watchdog rule from control point C to Managed System A and applying the rule to values returned by watchdog checks within Managed System A, is also communicated back to control point C. See Pet. 24–26. Indeed, the passage of Seiffert cited by Petitioner is silent with respect to any correlation between action agent 12, 22, and 33 that carries out the specified action(s) and a particular rule evaluator module 13, 23, and 33. See Ex. 1005, 5:49– 58. Petitioner’s argument, i.e., because control point C maintains information about Managed Systems A and B and the computer system as a whole, it would receive any changes resulting from a rule, is not supported by a sufficient factual basis. See Pet. 26 (citing Ex. 1001 ¶ 114; Ex. 1005, 4:47–55, 6:9–14). We also are not persuaded by Dr. Taylor’s supporting testimony” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not found
“Moreover, a ground of obviousness must include “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “[T]his analysis should be made explicit” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418. We have considered Petitioner’s arguments (Pet. 51– 52), however, Petitioner does not articulate sufficiently why or how one of ordinary skill in the art would have combined or modified the teachings and suggestions of Fawcett and Ghezzi, or Fawcett, Ghezzi or Berry, to address with sufficient specificity the differences between the claimed invention and the prior art. Based on the record before us, Petitioner has not demonstrated a reasonable likelihood that it will prevail on its assertion that claims 11–17, 19, 39–45, and 47 would have been obvious over the combination of Fawcett and Ghezzi. Nor has Petitioner demonstrated a reasonable likelihood that it will prevail on its assertion that claims 18 and 46 would have been obvious over the combination of Fawcett, Ghezzi, and Berry.” slip op. at 22
- Expert testimonyPetitioner expert discountedOther
“We also are not persuaded by Dr. Taylor’s supporting testimony because it is not supported by underlying facts. See 37 C.F.R. § 42.65. For example, Dr. Taylor testifies that one of ordinary skill in the art would have understood, even when a particular action is not required of the control point subsystem, the information generated is received there to facilitate system management. (Ex. 1001 ¶113). In addition, Dr. Taylor testifies that: one of ordinary skill would understand, any changes to the system resulting from a rule’s action would be reflected in updates to this database. (Id. ¶ 114). Thus, we understand Dr. Taylor to testify that Seiffert’s control point C necessarily could perform the same function of receiving the information from Managed System A. “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed Cir. 1999). Although Seiffert’s system may indeed be capable of communicating the generated information, mere probabilities or possibilities fall short of demonstrating that the missing descriptive matter is necessarily present in Seiffert, as is required for a ground based on anticipation.” slip op. at 13
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,519,581
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.