- Infobionic, Inc. v. Braemar Manufacturing, LLCSome claims unpatentablePTAB · Dec 29, 2016 · IPR2015-01688 · APJ Scott C Moore · IPR · Final written decision
Claims 1, 2, 4, 6, 7, 11–16, and 19–23 are anticipated by Sellers; claims 3, 5, 8, 9, 17, and 18 are obvious over Sellers and Stutman; claim 10 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we adopt Petitioner’s formulation concerning the level of ordinary skill in the art because this formulation more accurately describes the subject matter to which the ’403 Patent pertains. Patent Owner’s formulation is unduly narrow because subject matter of the ’403 Patent is not limited to “ECG telemetry devices” or other “remote monitoring and telemetry devices.” The parties do not dispute that Dr. Stone and Dr. Fernald are both qualified to testify about the perspective of one having ordinary skill in the art, regardless of which formulation we adopt. Tr. 24:22–25:3, 62:6–11. The parties also agree that the issues in this case do not turn on the differences between Petitioner’s and Patent Owner’s proposed formulations regarding the level of ordinary skill in the art. Id. at 24:13–19, 62:12–21. On this record, we find that both Dr. Stone and Dr. Fernald are qualified to offer expert opinions in this case. The factual findings and legal conclusions set forth below would not have differed had we adopted Patent Owner’s formulation regarding the level of ordinary skill in the art.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“The parties agree that a central monitoring device/service is a device/service that “watch[es], keep[s] track of, or check[s]” on something “from a central location.” See PO Resp. 21; Reply 2. On this record, we determine that the claim term central monitoring device/service is not further limited to a device/service that performs monitoring “during a monitoring session” such that it is able to “respond to patient status . . . when it detects evidence of certain physiologic conditions as they occur.” See PO Resp. 20– 22. The Specification uses the term “central monitoring device” in an openended manner, and Patent Owner does not identify any lexicographic definition or disclaimer that would limit this claim term in the manner it proposes. See PO Resp. 19–22; Tr. 38:1–17. The term “central monitoring service” does not appear in the Specification. Though Patent Owner cites a dictionary that defines “monitoring” as “constant checking on a patient’s condition” (Ex. 2021, 930), this definition is overly narrow because the Specification makes clear monitoring may be performed on a periodic basis. See, e.g., Ex. 1001, 3:6–35, 8:63–9:2. Moreover, Patent Owner’s other dictionary definition (Ex. 2020, 752) does not reference a patient, or require detecting “physiologic conditions as they occur.” Dr. Fernald’s testimony regarding this claim term (Ex. 2003 ¶¶ 39– 41) is not persuasive because the portions of the Specification he cites do not limit the term central monitoring device/service in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:14–20, 6:42–47, 7:17–25, 7:57–64, 8:28–42); Tr. 38:1–17), and because Dr. Fernald does not adequately account for the dictionary evidence indicating that the claim term “monitoring” does not require constantly observing a patient’s status (see Ex. 2020, 752). We find persuasive Dr. Stone’s testimony that one of ordinary skill would have understood the portions of the Specification cited by Patent Owner and Dr. Fernald to be non-limiting examples. Ex. 1011 ¶¶ 21–34. For the foregoing reasons, on this record, and under the applicable broadest reasonable interpretation standard, we construe central monitoring device/service as a device or service “that watches, keeps track of, or checks from a central location.” 2.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this record, and under the applicable broadest reasonable interpretation standard, we determine that the claim term “in communication with” encompasses indirect communications (e.g., communication by way of an intermediate component). We further determine that a processor need not generate a message, or respond to a message, in order to be “in communication with” a separate component. The ’403 Patent Specification uses the term “in communication with” in a broad, open-ended manner. See, e.g., Ex. 1001, 2:17–27, 2:42–48. In addition, Patent Owner does not cite any persuasive intrinsic or extrinsic evidence that a person of ordinary skill in the art would have read the claim term “in communication with” to exclude embodiments in which a processor merely receives information. See PO Resp. 40–44. Nor does Patent Owner cite any persuasive intrinsic or extrinsic evidence that the claim term “in communication with” excludes communication between a processor and a component when the processor is acting as an intermediary between that component and some other component. See id. In addition, Dr. Fernald fails to sufficiently support his conclusion that the claim term “in communication with” excludes such forms of communication. See Ex. 2003 ¶¶ 99–103. 4.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the arguments and evidence presented in the Petition and having considered the arguments and evidence presented by both parties during the trial, we are persuaded that Petitioner has established by a preponderance of the evidence that claims 1, 2, 4, 6, 7, 11–16, and 19–23 are anticipated by Sellers. 4.” slip op. at 26
Patent outcomesUS 6,940,403 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,940,403 - Infobionic, Inc. v. Braemar Manufacturing, LLCInstitution deniedPTAB · Dec 23, 2016 · IPR2016-01237 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–44 would have been obvious over Baker, Xu, and Hatke.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of U.S. Patent No. 7,212,850 B2 (“the ’850 patent”). Paper 2 (“Pet.”). The Petition challenges the patentability of claims 1–44 of the ’850 patent on the grounds of obviousness under 35 U.S.C. § 103. Braemar Manufacturing, LLC (Patent Owner) filed a Preliminary Response to the Petition. Paper 7 (“Prelim. Resp.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the claims challenged in the Petition. Accordingly, we do not authorize an inter partes review to be instituted as to any challenged claim of the ’850 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Further, a patent claim composed of several elements is not proved obvious merely by demonstrating that each of its elements was known, independently, in the prior art. Id. at 418. Additionally, we determine Petitioner—by, inter alia, ambiguously referring to disclosures in multiple references individually and in combination—has failed to explain adequately how it is proposing to combine or modify the references’ teachings to arrive at the claimed subject matter of the forty-four challenged claims. See, e.g., Pet. 29 (“Baker or Xu alone, as well as in combination, disclose the broader claim feature and the narrower feature in claims 35 and 41.”) For these reasons, we determine Petitioner has not demonstrated there is a reasonable likelihood of establishing the unpatentability of the challenged claims.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“display of Hatke’s Figure 6 is “strikingly similar” to that of Figures 2 and 4 of the ’850 patent, with Hatke’s “detected events on top of the trend data instead of below it.” Pet. 43–44. We determine that Petitioner’s argument is insufficient because it primarily relies on the purported similarity in appearance of the figures and fails to articulate sufficiently how the prior art suggests the claim limitation. We also agree with Patent Owner that this use of the ’850 patent hints at hindsight. See Prelim. Resp. 31 (“Aside from a desire to recreate Figure 2 of the ’850 patent, Petitioner fails to explain why the skilled person would have wanted to do this.”). Additionally, we disagree with Petitioner’s assertion that Hatke’s figure is “strikingly similar” to that of the ’850 patent. At most, Hatke’s oxyhemoglobin saturation data has an I-beam shape like that of the ’850 patent’s heart rate. However, Hatke’s histogram showing the quantity of apnea events does not have the appearance of AF burden. Rather, Petitioner is forced to look to a separate figure in Hatke, Figure 7, to find what Petitioner calls “blocks” similar to those of the ’850 patent. Id. at 45–46. Petitioner then proposes modifying Hatke’s Figure 6 by “dumbing [it] down,” apparently proposing to convert the quantities of apnea events to blocks depicting apnea event duration, reasoning that drawing a line for time span was a well-known and intuitive technique to depict time span. Id. at 46; see also id. at 49 (Petitioner impliedly arguing that displaying AF burden merely is drawing AF event time spans as a line). We do not find this persuasive because the fact that one could depict duration as a line does not explain adequately why one would modify Figure 6, even in the context of apnea events. Further, even were we to accept that it first would have been obvious to modify a display related to sleep apnea to arrive at Petitioner’s proposed modified Figure 6, Petitioner fails to explain persuasively why one would have utilized that proposed modified display—which would show oxyhemoglobin saturation and respiratory effort—as the format to display heart rate and AF burden. Mere similarity of appearance—particularly assuming, as we must, that one of ordinary skill lacks the knowledge of the figures of the ’850 patent—does not point towards an eventual conclusion of obviousness of the claimed subject matter.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundNot shown unpatentable
“display of Hatke’s Figure 6 is “strikingly similar” to that of Figures 2 and 4 of the ’850 patent, with Hatke’s “detected events on top of the trend data instead of below it.” Pet. 43–44. We determine that Petitioner’s argument is insufficient because it primarily relies on the purported similarity in appearance of the figures and fails to articulate sufficiently how the prior art suggests the claim limitation. We also agree with Patent Owner that this use of the ’850 patent hints at hindsight. See Prelim. Resp. 31 (“Aside from a desire to recreate Figure 2 of the ’850 patent, Petitioner fails to explain why the skilled person would have wanted to do this.”). Additionally, we disagree with Petitioner’s assertion that Hatke’s figure is “strikingly similar” to that of the ’850 patent. At most, Hatke’s oxyhemoglobin saturation data has an I-beam shape like that of the ’850 patent’s heart rate. However, Hatke’s histogram showing the quantity of apnea events does not have the appearance of AF burden. Rather, Petitioner is forced to look to a separate figure in Hatke, Figure 7, to find what Petitioner calls “blocks” similar to those of the ’850 patent. Id. at 45–46. Petitioner then proposes modifying Hatke’s Figure 6 by “dumbing [it] down,” apparently proposing to convert the quantities of apnea events to blocks depicting apnea event duration, reasoning that drawing a line for time span was a well-known and intuitive technique to depict time span. Id. at 46; see also id. at 49 (Petitioner impliedly arguing that displaying AF burden merely is drawing AF event time spans as a line). We do not find this persuasive because the fact that one could depict duration as a line does not explain adequately why one would modify Figure 6, even in the context of apnea events. Further, even were we to accept that it first would have been obvious to modify a display related to sleep apnea to arrive at Petitioner’s proposed modified Figure 6, Petitioner fails to explain persuasively why one would have utilized that proposed modified display—which would show oxyhemoglobin saturation and respiratory effort—as the format to display heart rate and AF burden. Mere similarity of appearance—particularly assuming, as we must, that one of ordinary skill lacks the knowledge of the figures of the ’850 patent—does not point towards an eventual conclusion of obviousness of the claimed subject matter.” slip op. at 13
§ 103 obviousnesscites KSRPatents in suitUS 7,212,850 - Infobionic, Inc. v. Braemar Manufacturing, LLCInstitution deniedPTAB · Dec 23, 2016 · IPR2016-01236 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims 1–28 because Petitioner did not show a reasonable likelihood that the claims were obvious over Baker, Xu, and Hatke.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“limitation would have been obvious in view of the combination of Baker, Xu, and Hatke.”); id. at 26 (“Baker or Xu alone, as well as in combination, disclose the first claim limitation of independent claim 1 and 12.”). A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Further, a patent claim composed of several elements is not proved obvious merely by demonstrating that each of its elements was known, independently, in the prior art. Id. at 418. Petitioner’s discussion of the “subset” feature is an example of a flawed analysis focused on individual elements rather than an ordered whole. Petitioner’s rationale for the combining of Baker and Xu is that Xu “provid[es] an efficient and accurate AF detection algorithm” (Pet. 24) and “because [Xu’s algorithm] has the desirable characteristics of rapidly and accurately detecting AF events with robust anti-noise performance and requires a short amount of computing time” (id. at 31). Although it is not clear as to how Petitioner proposes to modify Baker by Xu, it appears that Petitioner may be proposing to substitute that efficient, rapid, and accurate algorithm into Baker’s system. Xu’s algorithm is efficient and accurate when it is “ready to use.” See Pet. 21. According to Petitioner (see id.), human assessment ceases before the algorithm becomes “ready to use” because human assessment is used only to “train up” the algorithm. Accordingly, the use of Xu’s system, after having been trained up and ready to use, would not involve human assessment of any subset of events identified by the system. Thus, Petitioner’s identification of a “subset” as being that data apparently the subject of one hundred percent human review prior to being “ready to use” (Pet. 40) is inconsistent with Petitioner’s reason why one would have combined Baker and Xu. Further, Petitioner’s style of addressing claim terms in a vacuum leaves us unable to determine whether Petitioner has demonstrated a likelihood of proving the claimed subject matter as a whole would have been obvious. It is not enough for Petitioner to assert that one or more references disclose a human assessment of a subset of data. See Prelim. Resp. 40. In claim 1, for example, the “subset” is of the “identified AF events,” which ties the subset to the limitation directed to identifying AF events and to the “pictographically presenting” limitation, which is based on the human assessment of the subset of the identified AF events. Petitioner does not adequately explain why or how the three relied-upon references would have been combined or modified such that all of the limitations of the claimed subject matter would have been satisfied at the same time in the same related manner as in the claims. Accordingly, Petitioner does not persuasively articulate an adequate reason why and how the teachings of the three reliedupon references would have rendered obvious the claimed subject matter as a whole.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“display of Hatke’s Figure 6 is “strikingly similar” to that of Figures 2 and 4 of the ’996 patent, with Hatke’s “detected events on top of the trend data instead of below it.” Pet. 41–42. We determine that Petitioner’s argument is insufficient because it primarily relies on the purported similarity in appearance of the figures and fails to articulate sufficiently how the prior art suggests the claim limitation. We also agree with Patent Owner that this use of the ’996 patent hints at hindsight. See Prelim. Resp. 29 (“Aside from a desire to recreate Figure 2 of the ’996 patent, Petitioner fails to explain why the skilled person would have wanted to do this.”). Additionally, we disagree with Petitioner’s assertion that Hatke’s figure is “strikingly similar” to that of the ’996 patent. At most, Hatke’s oxyhemoglobin saturation data has an I-beam shape like that of the ’996 patent’s heart rate. However, Hatke’s histogram showing the quantity of apnea events does not have the appearance of AF burden. Rather, Petitioner is forced to look to a separate figure in Hatke, Figure 7, to find what Petitioner calls “blocks” similar to those of the ’996 patent. Id. at 43–44. Petitioner then proposes modifying Hatke’s Figure 6 by “dumbing [it] down,” apparently proposing to convert the quantities of apnea events to blocks depicting apnea event duration, reasoning that drawing a line for time span was a well-known and intuitive technique to depict time span. Id. at 44; see also id. at 46 (Petitioner impliedly arguing that displaying AF burden merely is drawing AF event time spans as a line). We do not find this persuasive because the fact that one could depict duration as a line does not explain adequately why one would modify Figure 6, even in the context of apnea events. Further, even were we to accept that it first would have been obvious to modify a display related to sleep apnea to arrive at Petitioner’s proposed modified Figure 6, Petitioner fails to explain persuasively why one would have utilized that proposed modified display—which would show oxyhemoglobin saturation and respiratory effort—as the format to display heart rate and AF burden. Mere similarity of appearance—particularly assuming, as we must, that one of ordinary skill lacks the knowledge of the figures of the ’996 patent—does not point towards an eventual conclusion of obviousness of the claimed subject matter.” slip op. at 9
§ 103 obviousnesscites KSRPatents in suitUS 7,907,996 - ZTE USA, Inc. v. Saint Lawrence Communications LLCInstitution deniedPTAB · Sep 14, 2016 · IPR2016-00705 · APJ Scott C Moore · IPR · Institution
The Board denied institution on all challenged claims because Ozawa did not show the required comparison of pitch prediction errors across signal paths, and the obviousness grounds did not cure that deficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). We have reviewed the Petition and supporting declaration of Dr. Johnson, and these materials do not contain adequate support for Petitioner’s assertion that Ozawa discloses the “a selector for comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 1, or the “comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 55. Petitioner asserts that “vector selector 22 selects one of the candidate code vectors and one of the gain code vectors that minimize the distortion [i.e., pitch prediction error].” Pet. 18. Petitioner, however, does not cite persuasive evidence that Ozawa discloses calculating the distortion of a pitch codevector in each of at least two signal paths, or that Ozawa’s vector selector 22 performs a comparison between distortions calculated in at least two signal paths. See Pet. 17–19, 37–40, 58. Petitioner’s declarant, Dr. Johnson, testifies that vector selector 22 performs one type of comparison “during mode 1, 2, or 3,” and a different type of comparison “during mode 0.” See Ex. 1036 ¶ 98 (citing Ex. 1006, 6:21–40). Dr. Johnson, however, does not offer persuasive testimony or evidence that Ozawa discloses a comparison between distortions (i.e., pitch prediction errors) that were calculated in two different modes (i.e., signal paths). See Ex. 1036 ¶¶ 96–101, 145–147. For the reasons set forth above, Petitioner has not made an adequate showing that Ozawa discloses the “a selector for comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 1, or the “comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 55. Accordingly, the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail on its anticipation challenge to independent claims 1 and 55. For the same reasons, the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail on its anticipation challenge to dependent claims 2, 5, 7, 8, 56, 59, and 62, all of which depend from either claim 1 or claim 55. 3.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“is . . . used for selecting a single path used for the computation of the codevector distortions” (i.e., the Petitioner-identified pitch prediction error).” Prelim. Resp. 27. “In other words, Ozawa does not calculate pitch prediction errors for subframes for each of the different modes [paths] and select the mode [path] with the lowest calculated pitch prediction error,” as required by independent claims 1 and 55. Id. (emphasis added). On this record, we find Patent Owner’s argument to be persuasive.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Obviousness of Claims 6, 10, 11, 14, 15, 17, 28, 29, 32, 33, 35, 37, 38, 41, 42, 44, and 60 over Ozawa, G.729, and/or Ordentlich Claims 6, 10, 11, 14, 15, 17, 28, 29, 32, 33, 35, 37, 38, 41, 42, 44, and 60, all depend from either claim 1 or claim 55, and Petitioner’s obviousness arguments regarding these claims all rely on Petitioner’s assertion that Ozawa discloses all limitations of claims 1 and 55. See Pet. 24, 27, 35, 41– 60. Petitioner does not argue that G.729 and Ordentlich individually or collectively cure the deficiencies discussed above in Petitioner’s argument with respect to claims 1 and 55. See id. Accordingly, the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail on its obviousness challenges to dependent claims 6, 10, 11, 14, 15, 17, 28, 29, 32, 33, 35, 37, 38, 41, 42, 44, and 60.” slip op. at 16
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 7,260,521 - Infobionic, Inc. v. Braemar Manufacturing, LLCInstitution deniedPTAB · Feb 16, 2016 · IPR2015-01705 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–9, 20, 21, 31–34, 37, and 38 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of U.S. Patent No. 7,212,850 B2 (“the ’850 patent”). Paper 1 (“Pet.”). The Petition challenges the patentability of claims 1–9, 20, 21, 31– 34, 37, and 38 of the ’850 patent on the grounds of obviousness under 35 U.S.C. § 103. Braemar Manufacturing, LLC (Patent Owner) filed a Preliminary Response to the Petition. Paper 9 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the claims challenged in the Petition. Accordingly, we do not authorize an inter partes review to be instituted as to any challenged claim of the ’850 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“states that are identified by Bock’s engine 40 assessed by a human based on knowledge in the art (as indicated in the ACC Guidelines) and Walker’s disclosure. Pet. 30–31 (citing Ex. 1002 ¶ 44). Petitioner maintains that “Walker selectively presents information based on a measure of correlation between algorithm-identified diagnosis and human-assessments of at least a portion of the algorithm-identified diagnosis.” Id. at 34 (citing Ex. 1002 at ¶ 47). Petitioner identifies steps 412 and 418 as the human-assessments and those same steps as “determin[ing] how the information is presented taking into consideration the degree of relationship between the algorithm and the human diagnoses [i.e. Petitioner’s definition of a measure of correlation].” Id. at 33. Petitioner’s proposal fails to explain sufficiently how the combination teaches both (1) the human assessment and (2) measurement of a correlation between that human assessment and a machine-identified dataset. Petitioner does not explain how Petitioner’s proposal results in the respective features of the claimed invention. The purported disclosure of the “measure of correlation” feature is premised on Petitioner’s assertion that “[s]ince parts of the dataset D2 that the expert does not agree with, or has changed . . ., are not included in datasets D4 and D5, they are not reported in step 430.” Pet. 33 (citing Ex. 1006, col. 72, ll. 65–66; col. 73, ll. 4–5). However, Petitioner does not explain adequately why this is correct. For example, Petitioner does not persuade us that the analysis of dataset D2 results in the deletion of data in the creation of datasets D4 and D5. Walker explains that the “changes” to a dataset may be by “conventional annotation, dictation, interactive marking, and similar techniques.” Ex. 1006, col. 72, ll. 6–8. This does not suggest” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under the broadest reasonable construction standard, claim 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 patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 5
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“In a petition for inter partes review, Petitioner must identify, for a term proposed to be construed as a means-plus-function term, “the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). “[I]n a means-plus-function claim ‘in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed 1 In discussing the recitations of claims 33 and 37, we use shorthand designations and do not reach the issue of the appropriate identity of any claimed function. Cf., e.g., Prelim. Resp. 7 (arguing that Petitioner failed to properly identify the entire correct function). structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.’” Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 Fed. Cir. 1999); id., (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005) (“the corresponding structure is the algorithm.”). In addition to identifying the algorithm disclosed in the Specification, Petitioner “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4); see also Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (“[A] challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.”).” slip op. at 13
Claim construction§ 103 obviousnessPatents in suitUS 7,212,850 - Infobionic, Inc. v. Braemar Manufacturing, LLCInstitution deniedPTAB · Feb 16, 2016 · IPR2015-01704 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 12, 18, and 23 were obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of U.S. Patent No. 7,907,996 B2 (“the ’996 patent”). Paper 1 (“Pet.”). The Petition challenges the patentability of claims 1, 12, 18, and 23 of the ’996 patent on the grounds of obviousness under 35 U.S.C. § 103. Braemar Manufacturing, LLC (Patent Owner) filed a Preliminary Response to the Petition. Paper 9 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the claims challenged in the Petition. Accordingly, we do not authorize an inter partes review to be instituted as to any challenged claim of the ’996 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The Specification refers to a “subset” in describing the embodiment of Figures 5 and 6. See Ex. 1001, col. 4, ll. 26–59. In that embodiment, the system at step 502 analyzes the physiological data and, at step 503, identifies and flags AF events and reports those flags (constituting a first group of data) to the processing system. Id., col. 4, ll. 26–34. Similarly, at 504, the system identifies and reports physiological data, such as ECG [electrocardiogram] data, for a subset of the events identified at 502 and reported at 503. Notably, the system, in this implementation, need not report physiological data for each flag assigned at 503, but need only report data associated with the most significant events identified at 502, thereby minimizing the data sent to a CVT [cardiovascular technician]. Id., col. 4, ll. 35–41 (emphasis added). The CVT analyzes this data and identifies arrhythmia events thereby creating a second group of data. Id., col. 4, ll. 42–44. The processing system compares the two groups of data and, if the system determines that enough of the human-assessed events match the system-reported events, the system-reported data (at step 302) is deemed valid and the data associated with each system-flagged event is pictorially presented. Id., col. 4, ll. 44–54. Significantly, in this implementation, while this pictographic representation can contain all such data, the CVT need only review a subset of this data. In short, the system achieves increased accuracy in the presentation of information relating to arrhythmia events while minimizing the data that the CVT reviews. Id., col. 4, ll. 54–59 (emphasis added).” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner also relies upon the testimony of Dr. Stone. Id. at 12–13 (citing Ex. 1002 ¶¶ 24, 25). We do not find the testimony of Petitioner’s expert to be persuasive or helpful as it repeats the Petitioner’s arguments and offers little or no elaboration as to how one of ordinary skill in the art would understand the term “subset.” See Ex. 1002 ¶¶ 24, 25. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing requires a fact finder to credit the inadequately explained testimony of an expert). We also do not find persuasive Petitioner’s argument, based on extrinsic evidence, that Patent Owner’s position in related litigations should influence our determination of the proper construction in this forum. See Pet. 13–14. We now turn to the intrinsic evidence.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner maintains that Walker’s D4 is a subset of dataset D2 and the reconciler’s action is a human assessment of that subset. Pet. 27–28. Petitioner asserts that “[b]ecause of the changes made to dataset D2 by the expert, dataset D4 includes a subset of dataset D2.” Pet. 27 (citing Ex. 1002 ¶ 39). 3 However, Petitioner does not explain adequately why this is correct, and the cited expert testimony merely repeats the Petitioner’s conclusory argument, adding the phrase “[i]n my opinion” (Ex. 1002 ¶ 39). Specifically, Petitioner does not persuade us that the analysis of dataset D2 results in the deletion of data in the creation of dataset D4 such that dataset D4 contains less members than the original dataset D2. Walker explains that the “changes” to a dataset may be by “conventional annotation, dictation, interactive marking, and similar techniques.” Ex. 1006, col. 72, ll. 6–8. Furthermore, Walker discloses that dataset D4 “may be annotated to indicate features identified by the algorithm.” Ex. 1006, col. 72, ll. 63–67 (emphasis added). This does not suggest that the analysis produces a new dataset that contains fewer elements than the analyzed dataset. Further, the reconciler acts upon a union dataset 416 (D5 or DS) of datasets D3 and D4, not simply dataset D4 alone, suggesting that the human (reconciler) assessment is performed on a set of data larger than D2. See id., col. 73, ll. 1–19. For these reasons, we do not find that Walker discloses a human assessment of a subset of data. Petitioner does not rely on any other reference in its proposed combination for the claim recitation regarding a “human assessment of the subset of the identified atrial fibrillation events,” Claims 1, 12, 18, and 23. Accordingly, we are not persuaded that Petitioner has shown a reasonable likelihood of prevailing in its challenge that claims 1, 12, 18, and 23 of the ’996 patent would have been obvious to a person of ordinary skill in the art at the time of the invention over Bock,” slip op. at 12
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,907,996 - Toyota Motor Corporation v. Cellport Systems, Inc.Institution deniedPTAB · Dec 16, 2015 · IPR2015-01422 · APJ Scott C Moore · IPR · Institution
The Board denied institution on all claims: claims 1–11 lacked a sufficient showing of the claimed network protocol converter structure, and claims 12–21 were denied as a second, delayed petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“network communication means” claim limitation. Claims 2, 6, and 8–11 depend from claim 1 and, thus, incorporate this limitation by way of dependence. A petition for inter partes review “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Because the “first standard network communication means” is a means-plus-function claim limitation, Petitioner is required to show that both the recited function of this claim limitation and the corresponding structure or an equivalent are present in the applied references. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (“[A] challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.”). The Petition does not identify any structure in the applied references that is allegedly identical or equivalent to the corresponding structure of the “first standard network communication means” claim limitation, i.e., network protocol converter 26. Petitioner’s entire argument concerning the “first standard network communication means” of claims 1, 3, 4, 5, and 7, is reproduced below: Cao discloses a “first standard network communications means” (i.e., wireless Proxim radio link with base station) that uses Internet Protocol for “presenting information for transmission over the airlink in a first format that is acceptable to a first standardized network that includes the airlink” (i.e., TCP/IP format). See Ex. 1019 at 6; see also supra Section VIII.A.4. Pet. 40. Though Petitioner alleges that the “wireless Proxim radio link with base station” of Cao performs the recited function of the “first standard network communication means,” Petitioner does not compare the structure of the “wireless Proxim radio link with base station” of Cao to the structure of network protocol converter 26. Cited Section VIII.A.4 of the Petition similarly does not address the structure of the “wireless Proxim radio link with base station” of Cao. See Pet. 18–20. Thus, the Petition does not identify any structure in the applied references that is allegedly identical or equivalent to the corresponding structure of the “first standard network communication means” claim limitation. For the foregoing reasons, the Petition fails to show persuasively that the “first standard network communication means” claim limitation is found in the references that Petitioner relies upon with respect to claims 1–11. Thus, the information presented in the Petition is not sufficient to demonstrate a reasonable likelihood that Petitioner will prevail in demonstrating that claims 1–11 are unpatentable. 3.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“The 4½ month delay between Petitioner’s first and second Petitions is problematic for several reasons. First, the timing of this Petition makes consolidation impractical, and, thus, frustrates the interest of judicial economy. The oral hearing in IPR2015-00633 is set for April 14, 2016. IPR2015-00633, Paper 12. Thus, it would not be practical to institute a second inter partes review and consolidate that proceeding with IPR2015- 00633. See 35 U.S.C. § 315(d). Assuming that Petitioner has shown here a reasonable likelihood that claims 12–21 are unpatentable, two separate trials would be necessary, requiring the parties, as well as the Board, to expend significant additional resources. Second, even if we were to institute a second inter partes review involving claims 12–21, Petitioner might be unable to “maintain” the second inter partes review upon issuance of a final written decision in IPR2015-00633. 35 U.S.C. § 325(e)(1) provides that any final written decision in IPR2015-00633 on the patentability of claims 12–21 would preclude Petitioner from “maintain[ing] a proceeding before the Office . . . on any ground that the petition raised or reasonably could have raised during [the earlier] post-grant review.” Thus, instituting a second inter partes review may result in a significant waste of time and resources for the parties and for Board. See 37 C.F.R. § 42.1(b) (“This part shall be construed to secure a just, speedy, and inexpensive resolution of every proceeding.”). Third, the timing of the second Petition raises the potential for gamesmanship. Petitioner did not file this Petition until one month after Patent Owner filed its Preliminary Response in IPR2015-00633. The timing of the second Petition gave Petitioner the opportunity to preview the arguments set forth in the Patent Owner Preliminary Response in IPR2015- 00633. Petitioner also has not provided an adequate explanation for the 4½ month delay between the filing of this Petition and the filing of its previous Petition. Though Petitioner alleges that it was not aware of Cao “at the time it filed Petition No. 2015-00633” (Pet. 2), Petitioner does not state when and under what circumstances, during the 4½ months that preceded the filing of the current Petition, it became aware of Cao. Cao is a technical paper that was published by a major research university in the United States, and, thus, it is not clear on this record why Petitioner was unable to locate Cao at an earlier date. See Ex. 1019, 1. We further note that Petitioner has not identified any meaningful distinctions between the arguments regarding claims 12–21 in this Petition and the arguments Petitioner set forth in its earlier Petition. For instance, Petitioner does not explain in what ways the grounds asserted against claims 12–21 in this proceeding are superior to the grounds against the same claims and on the basis of which we instituted trial in IPR2015-00633. In view of the foregoing, we exercise our discretion and decline to” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Despite the rebuttable presumption, we do not construe “controller means” as a means-plus-function claim limitation. The presumption is overcome because the claim language does not link the “controller means” to a specific recited function. See York Prod., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996) (“Without a ‘means’ sufficiently connected to a recited function, the presumption in use of the word ‘means’ does not operate.”). In addition, the presumption is overcome when the claim specifies detailed structure sufficient to perform any recited or implicit function, e.g., controlling. See TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008) (“Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.”); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1376 (Fed. Cir. 2003). Each of independent claims 1, 3, 4, 5, and 7 recites that the “controller means” includes the “processing means” and the “first standard network communication means.” As discussed herein, the processing means and the first standard network communication means are means-plus-function claim limitations that are defined in terms of specific structures disclosed in the Specification. Moreover, the recited “controller” is also a structure that is sufficient to perform any recited or implicit function of the “controller means.” The rebuttable presumption also is overcome because the controller means claim limitation is associated with these structures. Thus, in accordance with the ordinary and customary meaning of the claim language, and consistent with the Specification (see Ex. 1001, 2:66–3:29, 6:11–37, 8:1–45), for purposes of this Decision, we construe “controller means” as “a controller.” 3.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)§112(f) appliesDecided for patent owner
“is a means-plus-function limitation is overcome because this limitation lacks an associated function. Prelim. Resp. 13. We agree. The grammatical structure of the claim and, in particular, the fact that the functional language cited by Petitioner appears immediately after the recitation of the “processing means” evidences an intent to associate this functional language with the “processing means” claim limitation. Thus, for purposes of this Decision, we construe “processing means” as a means-plus-function claim limitation having a recited function of “controlling the sending and receiving of said information using said wireless device between said first remote station and the vehicle.” “Structure disclosed in the specification qualifies as ‘corresponding structure’ if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.” Williamson, 792 F.3d at 1352. The Specification of the ’074 Patent indicates that the sending and receiving of vehicle information between the remote station and the vehicle is controlled by processor 90 in conjunction with real time operating system 94. See Ex. 1001, 8:1–23, 13:54–56. Data memory 106 is not linked clearly to the recited function because data memory 106 merely stores information, and does not control the sending and receiving of information. See id. 8:45–58, 9:31–45, 10:58–64, 13:8–10, 23–26. Thus, the structure in the Specification that corresponds to the “processing means” is “processor 90 in conjunction with real time operating system 94.”” slip op. at 11
Claim constructionDiscretionary denialcites GrahamPatents in suitUS 5,732,074 - Unified Patents Inc. v. Olivistar, LLCInstitution deniedPTAB · Nov 20, 2015 · IPR2015-01216 · APJ Scott C Moore · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on anticipation by Monroe or obviousness over Mangasarian and Walker for any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“1–8, 11–14, 16–23, 29–32, 37, 47, and 48 (Paper 2; “Pet.”) of U.S. Patent No. 7,606,843 B2 (Ex. 1001; “the ’843 Patent”). Patent Owner filed a Preliminary Response (Paper 12; “Prelim. Resp.”). We have jurisdiction 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.” On this record and for the reasons discussed below, we do not institute an inter parties of any claim of the ’843 Patent. The Petition is denied.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner
“We agree with Patent Owner’s position that Petitioner’s constructions are overbroad. The challenged claims all relate to the archival of monitoring device data either by an archive server (i.e., a computer), or according to according to computer-executable instructions. See Ex. 1001, 13:10–33, 14:61–15:17, 15:20–47, 16:35–61. In the context of computers and computer systems, the term “archival” ordinarily and customarily refers to long-term, persistent storage of computer data.2 In contrast, the term “buffer” ordinarily and customarily refers to memory that temporarily holds information, for example, to account for differences in data flow rates between computer components.3 Similarly, random access memory (“RAM”) is non-persistent memory that temporarily stores data while that” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“characterized by one or more archival attributes.” Ex. 1001, 13:15–17, 14:65–67. Claims 1 and 29 also require “determining whether the archival profile is associated with one or more archival attributes of the incoming monitoring data,” and if so, “processing the incoming monitoring device data . . . into a compressed format” and “selectively storing the incoming monitoring device data . . . on a storage medium.” Id. at 13:20–29, 15:3–12. Claims 1 and 29 further require that the “archival attribute from which the archival profile selectively stores incoming monitoring device data is one selected from the group of file type, monitoring device identifier, and monitoring device type that collected the incoming monitoring device data.” Id. at 13:29–33, 15:13–17. Thus, the “one or more archival attributes” recited in the “determining” step of claims 1 and 29 must be “selected from the group of file type, monitoring device identifier, and monitoring device type that collected the incoming monitoring device data.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We are not persuaded that Petitioner has “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). For example, Petitioner does not provide a persuasive explanation of why a skilled artisan would have found it obvious to modify the system and method of Mangasarian to include unique data channel identifiers of the type described in Walker. Petitioner’s argument that “both references are directed to monitoring data on a network and storing such monitoring data for later analysis” (Pet. 44, citation omitted) does not explain why it would have been obvious to make the specific modification that Petitioner proposes. The fact that two references both describe monitoring data on a network and storing such data does not, without more, demonstrate that specific combinations of teachings from these references would have been obvious. Petitioner also has not provided a persuasive explanation of why a skilled artisan would have found it obvious to use unique data channel identifiers of the type described in Walker as an archival attribute that determines whether the data of Mangasarian is selectively stored. Petitioner’s assertion that a “person of ordinary skill in the art would recognize that Walker describes an additional attribute of the monitoring data . . . and would have found it obvious to combine such teachings with the teachings of Mangasarian to selectively collect and archive data based on this specific attribute of the data” (Pet. 44, citation omitted) is conclusory in nature, and is not supported by persuasive evidence or argument.8 For the foregoing reasons, Petitioner has not shown a reasonable likelihood that it would prevail on its obviousness challenge to claims 1 and 29. Dependent Claims 2, 3, 8, 12–14, 16, 17, 21, 22, 29, and 30” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,606,843 - Unified Patents Inc. v. Olivistar, LLCInstitution deniedPTAB · Nov 20, 2015 · IPR2015-01217 · APJ Scott C Moore · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on its Monroe anticipation or Mangasarian-Walker obviousness challenges to claims 1, 3, 4, 8–12, and 17–20.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of claims 1, 3, 4, 8–12, and 17–20 of U.S. Patent No. 8,239,347 B2 (Ex. 1001; “the ’347 Patent”). Patent Owner filed a Preliminary Response (Paper 12; “Prelim. Resp.”). We have jurisdiction 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.” On this record and for the reasons discussed below, we do not institute an inter parties of any claim of the ’347 Patent. The Petition is denied.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner’s position that Petitioner’s constructions are overbroad. The challenged claims all relate to a system employs “archival attributes” and “archival profiles” to determine whether to store data in a “data repository,” or a method of “selectively archiving” data that employs “archival attributes” and “archival profiles.” Ex. 1001, 13:11–33, 14:28–46. In the context of computers and computer systems, the term “archival” refers to long-term, persistent storage of computer data.2 In contrast, the term “buffer” ordinarily and customarily refers to memory that temporarily holds information, for example, to account for differences in data flow rates between computer components.3 Similarly, random access memory (“RAM”) is non-persistent memory that temporarily stores data while that data is being processed.4 Thus, the plain and ordinary meaning of 2 See Ex. 3001 (definition from Academic Press Dictionary of Science and Technology, defining “archival storage” as “[s]torage media, such as off-line magnetic tapes or disks, used for long-term storage of data seldom accessed, such as transaction history or backup copies of working programs”); Ex. 3002 (definition from Webster’s New World Computer Dictionary, defining “archive” as “an infrequently used but comprehensive collection of data”). 3 See Ex. 3003 (definition from Webster’s New World Computer Dictionary, defining “buffer” as “a unit of memory given the task of holding information temporarily, especially while waiting for slower components to catch up”); Ex. 3004 (definition from Academic Press Dictionary of Science and Technology, defining “buffer” as “[a]n intermediate storage area used to compensate for differences in rates of data flow when information is being transmitted from one computer device to another”). 4 See, e.g., Ex. 3005 (definition from Webster’s New World Computer Dictionary, defining “random access memory” as “[t]he computer’s primary working memory . . . . In RAM, the CPU can write and read data. Most programs set aside a portion of RAM as a temporary workspace for data so that one can modify (rewrite) as needed until the data is ready for printing or storage on secondary storage media, such as a hard or floppy disk. RAM does not retain its contents when the power to the computer is switched off.”). “archival” does not encompass the storage of data in buffer memory or RAM. This interpretation of “archival” is consistent with the Specification. In particular, the Specification indicates that “archival” data is data that “needs to be maintained for a number of possible uses,” and does not include data that “can be generated, processed, and discarded after its intended purpose.” Id. at 1:20–23. The Specification also provides several examples of “archival” storage, all of which are types of long-term, persistent storage. See id. at 1:26–36 (indicating that archived data may be stored in “storage devices, such as magnetic media and optical media that are directly attached to a computing device generating the data to be archived,” “special-purpose file management server-computing devices [that] function as a storage destination for a number of computing devices,” and “multiple file management servers functioning[] as a storage location for a number of networked computing devices.”). Independent claims 1 and 17 both require selectively storing monitoring device data “if the archival profile is associated with one or more archival attributes.” Ex. 1001, 13:26–33; 14:39–46. For the reasons set forth above, based on the current record, and for purposes of this Decision, we are persuaded that the claim term “archival attribute” does not encompass an attribute relating to the storage of data in buffer memory or RAM, and that the claim term “archival profile” does not encompass a profile relating to the storage of data in buffer memory or RAM. No further construction of these claim terms is necessary at this time. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“processor.” Ex. 1001, 13:16. The fourth element of claim 1 recites that “the monitoring device data processor determines whether the archival profile is associated with one or more archival attributes of the monitoring device data.” Id. at 13:22–24. The final element of claim 1 recites that “the monitoring device data processor . . . selectively stores the monitoring device data in the compressed format on the at least one data repository.” Ex. 1001, 13:11–33. In order to demonstrate anticipation, Petitioner must demonstrate that Monroe discloses “not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, 545 F.3d at 1371. Thus, Petitioner cannot demonstrate anticipation by picking and choosing different “monitoring device data processors” when discussing different elements of claim 1. Instead, Petitioner must identify a “monitoring device data processor” that performs all of the steps recited above. Petitioner fails to do so.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As discussed above, however, we construe “archival attributes” and “archival profiles” to not include attributes and profiles that relate to the storage of data in buffer memory. The Petition also does not provide any persuasive evidence or argument that one of ordinary skill would consider storage of information in packet buffer 208 of Mangasarian to be “archival” storage. Thus, viewing Mangasarian through the lens of Petitioner’s First Perspective, we are not persuaded that the reference teaches an “archival attribute” or “archival profile.” In the Second Perspective, Petitioner alleges that remote probe 107 is a “monitoring device,” and that the processor of protocol analyzer/host 111 connected to the host network interface is a “monitoring device data processor.” Id. at 27. Petitioner also alleges that the network data packets of Mangasarian correspond to the “monitoring device data” of the claims (see id. at 33), that the class code information for data packets corresponds to the “archival attributes” of the claims (id. at 34), and that the filter, classification, and upload routines of Mangasarian correspond to the “archival profiles” of the claims (id.). Petitioner alleges that host 111 (i.e., the monitoring device data processor) uses the class code information (i.e., archival attributes) and upload routines (i.e., the archival profile) to “enable intelligent selection of portions of packet buffer to be downloaded” to host 111. 35 (citing Ex. 1004, 6:3–5; Jawadi Decl. ¶¶ 78–79, 95, and Ex. B cl. 1(b))). Petitioner also asserts that the processor of host 111 “includes sufficient memory and mass storage to store and manipulate the portions of packet buffer 208 that are downloaded for analysis.” Pet. 35 (citing Ex. 1004, 6:15–26, 4:61–65; Jawadi Decl. ¶¶ 75, 78, 81, 95, and Ex. B cl. 1(b) & 1(e)). But Mangasarian makes clear that the filter, classification, and upload routines are software that executes on remote probe 108. See Ex. 1004, 5:5, 5:16–33, 5:66–6:13, Fig. 2. Petitioner has not pointed to any description in Mangasarian of filter, classification, and upload routines that control how or where host 111 stores data. See Pet. 40. Petitioner merely alleges that the “upload routines” of Mangasarian cause network data packets to be uploaded to host 111. The uploading of data to host 111 may cause data to be stored in the “working memory (e.g., random access memory or ‘RAM’)” of the host. See Ex. 1004 at 2:17–19, 6:23–31. Petitioner, however, does not allege that this uploading would cause data to be stored in the separate “mass storage” of host 111. Thus, viewing Mangasarian through the lens of Petitioner’s Second Perspective, we are not persuaded that the reference teaches an “archival attribute” or “archival profile.” For the foregoing reasons, Petitioner has not shown a reasonable” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 8,239,347 - Apple Inc. v. Opentv, Inc.Rehearing deniedPTAB · Oct 22, 2015 · IPR2015-00969 · APJ David C Mckone · IPR · Rehearing
The Board denied Apple's rehearing request, leaving in place the denial of institution because Baker ’898 did not show the claimed immediate and deferred filters.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated 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. See 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). The burden of showing that the Decision should be modified is on Petitioner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“filters specifying immediate action” means “filters that, once they are retrieved, specify whether to allow or block a transmission immediately and unconditionally” and “filters specifying deferred action” means “filters that, once they are retrieved, defer the specification of whether to allow or block a transmission until additional conditions are satisfied.” Dec. 11. Although Petitioner did not present arguments applying Baker ’898 under these preliminary constructions, we, nevertheless, considered the evidence presented by Petitioner in light of our constructions. Id. at 16. Evaluating Petitioner’s evidence, we found that Baker ’898 describes two ways of storing data specifying web sites that particular users are permitted to view: a stored list of URLs and a tree structure that facilitates comparison to regular expressions. Id. at 17. We found that Baker ’898 describes these as alternatives. In other words, these two types of information are not stored together. Id. Thus, we found that Baker ’898 does not disclose or teach storage of two separate types of filters, as recited by claims 1, 15, and 23. Id. slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
§ 103 obviousnessPatents in suitUS 5,884,033
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.