- PTAB · Apr 14, 2023 · IPR2022-01489 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(4) Claim 1 – Conclusion For these reasons, Petitioner has demonstrated a reasonable likelihood of proving that claim 1 would have been obvious over the proposed combination of Lairson and Erdogan, and over the proposed combination of Lairson and Tsai-133.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“set of layers includes oxygen.” Ex. 1001, 10:41–49. Petitioner argues that the proper construction of this limitation “means that there is a third set of layers on the opposite side of the substrate, whether or not [the layers] include oxygen” – i.e., that the third set of layers do not need to include oxygen. Pet. 7–8. Patent Owner contends that this is a typographical error and “wherein” was intended. Prelim. Resp. 8 n.2. Petitioner asserts that “each of the challenges presented in this Petition” addresses “adding a third set of layers with oxygen on a second side of a substrate.” Pet. 8. Because we find Petitioner’s contentions to be sufficient for institution even under Patent Owner’s proposed construction, we need not address Patent Owner’s proposed construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We also conclude that no express claim construction is necessary for any other claim terms. See id.” slip op. at 12
- Skill levelSkill level board ownOther
“Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. See generally Prelim. Resp. Based on the present record including the disclosure in the ʼ794 patent, we apply a slightly modified 4 In the present record, neither party presents arguments or evidence relating to secondary considerations. version of Petitioner’s definition of the level of ordinary skill in the art that removes the open-ended term “at least.”. On this record and for the purposes of institution, we determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ794 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“However, Patent Owner’s arguments regarding the combination are directed towards a bodily incorporation of structures described in the references, rather than the combination of their teachings proposed by Petitioner. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Given the teachings in each reference and our direction that an ordinarily skilled artisan is a person of ordinary creativity, we find, on this preliminary record, that Petitioner has adequately shown that an ordinarily skilled artisan would have applied Lairson’s teachings regarding a short-pass filter with Erdogan or Tsai-133’s teachings concerning filter layers on both sides of a substrate used to form a bandpass filter. KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Petitioner’s proposed combination does not involve adding the exact layers taught in Erdogan and Tsai-133 on the second side of the substrate to Lairson’s short-pass filter on the first side of the substrate. Pet. 33–34, 36– 39. Rather, Petitioner proposes, in one example, using the same materials for filter stacks on both sides of the substrate. Id. at 37–38. Thus, Patent Owner’s arguments that adding the second-side layers disclosed in Erdogan and Tsai-133 to the first-side layers of Lairson is not responsive to Petitioner’s proposed combination. Additionally, on the present record, we credit Petitioner’s declarant’s uncontroverted testimony that Lairson does not explicitly describe a bandpass filter with a long pass filter, and thus that one of ordinary skill would have looked to Erdogan and Tsai-133 for the technique of using a long-pass filter on the other side of the substrate. Id. at 34–37 (citing Ex. 1002 ¶¶ 152, 158). On the present record, and for the purposes of institution, Petitioner sufficiently shows that the combination of Lairson and either Erdogan and Tsai-133 teaches a near infrared band pass filter comprising a first set of layers on the first side, wherein the first set of layers includes silicon and hydrogen, and a second set of layers on the first side, wherein the second set of layers includes oxygen. Additionally, on the present record and for the purposes of institution, Petitioner sufficiently sets forth its showing with respect to the motivation to combine the teachings of Lairson with those of Erdogan or Tsai-133 as it proposes.” slip op. at 21
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,131,794 - Zhejiang Crystal-Optech Co. Ltd. v. Viavi Solutions Inc.Institution deniedPTAB · Feb 7, 2023 · IPR2022-01184 · APJ Debra K Stephens · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“8. Conclusion Based on the record before us, we determine Petitioner’s proffered arguments, evidence, and supporting testimony fails to establish a reasonable likelihood that Petitioner would prevail in showing that claims 1–7, 9, 10, 12–14, 17, 18, 20–23, 27, 30, and 31 would have been obvious over Pilgrim, Gibbons, Lairson, and Yoda.” slip op. at 32
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“II. ANALYSIS A. Discretionary Denial – 35 U.S.C. § 314(a) Patent Owner argues that we should exercise discretion to deny institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution (Prelim. Resp. 49–54). Petitioner argues we should not discretionarily deny institution under Fintiv (Pet. 66–67). Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged would have been obvious as discussed below, we do not reach this issue.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“B. Discretionary Denial – 35 U.S.C. §325(d) Patent Owner contends we should exercise our discretion under 35 U.S.C. § 325(d) because of the Petition’s “reliance upon the secondary references Gibbons, Lairson, and Yoda. Gibbons and Lairson were considered by the Examiner, and Yoda does not contain any meaningful additional disclosure or basis for unpatentability that was not considered by the Examiner” (Prelim. Resp. 21–22). Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged in those grounds would have been obvious as discussed below, we do not reach this issue.” slip op. at 9
- Skill levelSkill level board ownOther
“Based on the present record including the disclosure in the ʼ269 Patent, we apply a slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the qualification of “at least” and clarifies some statements (see Pet. 6). More specifically, we determine a POSITA would have had a Bachelor’s degree or equivalent in physics, or in a related science or engineering field, along with five years of experience in optical element design and optical filters although additional education (e.g., a Master’s degree with exposure to optical element design and optical filters) may substitute for some industrial experience in optical element and optical filter design, and more industrial experience can substitute for a different educational background. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ269 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,588,269 - Zhejiang Crystal-Optech Co. Ltd. v. Viavi Solutions Inc.Institution deniedPTAB · Feb 7, 2023 · IPR2022-01281 · APJ Sharon Fenick · IPR · Institution
Institution was denied because Petitioner failed to show a reasonable likelihood that claims 1–3, 6–11, 13–17, and 19 were obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged would have been obvious as discussed below, we do not reach this issue.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution. Prelim. Resp. 43–47. Petitioner argues we should not discretionarily deny institution under Fintiv. Pet. 58–59; Paper 9. 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Petitioner uses the pre-AIA statutory framework in its analysis. Pet. 1 n.1. Patent Owner does not comment on this. The ’794 patent claims priority to a provisional filed before March 16, 2013, the effective date of the applicable AIA amendments. Thus, we refer to the pre-AIA version of 35 U.S.C. § 103. Our decision would be the same were we to apply the AIA version of the statute. Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged would have been obvious as discussed below, we do not reach this issue.” slip op. at 8
- Skill levelSkill level board ownOther
“Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. See generally Prelim. Resp. Based on the present record including the disclosure in the ʼ526 patent, we apply a slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the qualification of “at least” and clarifies some statements. More specifically, we determine a POSITA would have had a Bachelor’s degree or equivalent in physics, or in a related science or engineering field, along with 3 In the present record, neither party presents arguments or evidence relating to secondary considerations. five years of experience in optical element design and optical filters although additional education (e.g., a Master’s degree with exposure to optical element design and optical filters) may substitute for some industrial experience in optical element and optical filter design, and more industrial experience can substitute for a different educational background. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ794 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts the term “center wavelength” (recited in claims 8, 9, and 17) should be interpreted as “the average of the two half-power wavelengths (i.e., [full width half maximum]) in a passband.” Pet. 15 (citing Ex. 1001, 7:53–56, 9:1–4, FIGS. 7D, 8C, 9B; Ex. 1037, 5; Ex. 1039 ¶ 47). Petitioner asserts the term “passband” (recited in claim 14) should be interpreted as “a wavelength range within which a signal can pass through a filter and outside of which the signal is blocked,” as per Patent Owner’s construction Id. (citing Ex. 1037, 12–15). Patent Owner does not directly address Petitioner’s proposed interpretations or provide its own constructions for any claim term. See generally Prelim. Resp. Having considered the record, we conclude that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). E. Claims 1, 2, 3, 6, and 8 – Obviousness over Pilgrim, Yoda, and Thelen” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,131,794 - Configit A/S v. Versata Development Group, Inc.All claims unpatentablePTAB · Dec 20, 2022 · IPR2021-01055 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–5 and 9–19 are unpatentable as obvious under § 103 over the combinations of Oracle1, Oracle2, and the additional references listed for each ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Computer Science, Computer or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art, but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. PO Resp. 11 (citing Ex. 2004 ¶¶ 35–37). We continue to find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision. See Dec. 6.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“With respect to this rationale, we are not persuaded by Patent Owner’s arguments. The first part of the claim construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. While it seems clear that “internal” errors may result in a “configuration error,” we are not persuaded that the specification limits the term to only such errors. Further, the recitation in the specification that the invention is concerned with configuration errors in a system for configuring products describes generally the context of such configuration errors, and not that they need to be explicitly “in” the system. As such, we are not persuaded that “configuration errors,” as recited in the instant claims must be limited to errors contained in the configuration engine.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“Looking at all of the evidence presented and taking the arguments of the parties into consideration, we continue to determine that Petitioner has sufficiently shown that Oracle1 and Oracle2 were publicly available to serve as art under § 102(a). We further determine that Petitioner has shown by a preponderance of the evidence that the references were published at dates consistent with the evidence and testimony submitted, with the publication date for Oracle1 as April 30, 2000 and with the publication date for Oracle2 as March 31, 2000.” slip op. at 19
- Expert testimonyPetitioner expert creditedDecided for petitioner
“arguments. We find it curious that Patent Owner has not polled its own expert declarant or provided other evidence such as a survey of the appropriate literature at the time that the application that resulted in the ’766 Patent was filed to provide a showing of what the appropriate understanding of “configuration error” would have been. Looking to the examples cited in Dr. Woods testimony, they are purely exemplary, and he is certainly not definitive, as Patent Owner appears to acknowledge, when using the term “configuration error.” Patent Owner seeks to have us give weight to the portions that seem to support its understanding of the claim term, but give less weight to portions that do not, asserting the latter to be guided only by hindsight. This does not even address Patent Owner’s other assertions that Dr. Woods declaration should be entitled to little weight because it is “incomplete.” PO Resp. 37–39. In sum, according to Patent Owner, we should pick and choose aspects of Dr, Wood’s testimony to support Patent Owner’s contention, where the overall declaration should be given little weight. Looking at the totality of Dr. Wood’s testimony and his deposition testimony (Exs. 1002, 2005), we are not persuaded that it supports the proposition that Patent Owner relies upon to illustrate, namely that those of skill in the art would have known that configuration errors are internal to the configurator. Exemplary of this, Dr Wood avers that “[t]hroughout my Declaration I provide context of other configuration errors that would be understood by a person of ordinary skill in the art at the time of the patent. They can include syntax types of errors, semantic errors, logical errors, logical rule errors, as examples.” Ex. 2005, 59:22–60:05. Petitioner points out that Dr. Wood cited examples from Exhibits 1006, 1033, 1046, and 1050 pertaining to “configuration errors,” and those citations are not limited to those that would have been internal to the configurator. Pet. Reply 8 (citing Ex. 1002 ¶¶ 40–41, 48–49). As such, we are not persuaded that there is sufficient evidence before us that those of skill in the art would have known that configuration errors are internal to the configurator.” slip op. at 13
Patent outcomesUS 6,836,766 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,836,766 - Darfon Electronics Corp. v. Michael ShipmanInstitution deniedPTAB · Dec 2, 2022 · IPR2022-01008 · APJ Debra K Stephens · IPR · Institution
The Board denied institution under § 325(d), finding the asserted art cumulative of art previously presented to the Office and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In evaluating arguments under § 325(d), we use [a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 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 (35 U.S.C. § 314(a)). Petitioner challenges claims 1–20 as unpatentable under 35 U.S.C. § 103 in twelve grounds of unpatentability (Pet. 7). Generally, Patent Owner contends that the Petition should be denied as to all challenged claims (see Prelim. Resp.). We do not reach whether Petitioner has shown a reasonable likelihood of prevailing on at least one claim. For reasons discussed below, we discretionarily deny the Petition under 35 U.S.C. § 325(d).” slip op. at 2
Discretionary denialPatents in suitUS 10,942,581 - Cisco Systems, Inc. v. Securityprofiling, LLCInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01242 · APJ Sharon Fenick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 19 and 20 were obvious over Willebeek-LeMair.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we do not institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“However, unaddressed is the claim’s requirement that each of the two of the plurality of mitigation techniques be automatically applied “to the at least one device.” Throughout the discussion of the limitations of claim 14, and again with respect to remaining challenged claim 19, Petitioner only describes the mitigation techniques to be taught by the application of signatures to the intrusion detector functionality and the firewalling defense system. However, Petitioner also asserts that the “plurality of devices” of the claim are the devices within the network being protected. See Pet. 26 (in arguing that Willebeek-LeMair teaches “code for: receiving information in connection with at least one of a plurality of devices,” (14.4) citing network discovery functionality to discover vulnerabilities in a scan of “machines” in protected network 14). Thus, Petitioner fails to show how Willebeek-LeMair teaches or suggests “automatically applying at least two of the plurality of mitigation techniques . . . to the at least one device,” that is, to a device in network 14.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner explicitly requests claim construction. Pet. 10–11; see Prelim. Resp. Patent Owner’s Preliminary Response raises certain implicit claim construction issues. Additionally, we acknowledge that, in a related litigation, a district court has issued a Markman order construing certain claims of the ’431 patent. Ex. 1016. However, in this instance, no resolution of claim construction issues is necessary to resolve the controversy, and thus, we do not construe any claim terms. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 11
- Adverse judgmentOther
“requesting inter partes review of claims 1, 2, 4–12, and 14–20 of U.S. Patent No. 9,100,431 B2. Ex. 1001 (“the ’431 patent”). After the Petition was filed, SecurityProfiling, LLC (“Patent Owner”) filed a Statutory Disclaimer of claims 1, 2, 4–12, and 14–18. See Ex. 2002. Thus, claims 19 and 20 for our consideration.1 Patent Owner also filed a Preliminary Response opposing institution of review as to the remaining challenged claims 19 and 20. Paper 6 (“Prelim. Resp.”).” slip op. at 1
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,100,431 - Unified Patents Inc. v. Sound View Innovations, LLCAll claims unpatentablePTAB · Apr 9, 2019 · IPR2018-00096 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–3 and 8–10 are unpatentable under § 103 over Bernstein alone and over Bernstein combined with Rubin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Thus, Dr. Jones does not disagree with Petitioner and Dr. Franzon’s assessment but, rather, offers additional exceptions and qualifications, which 4 Dr. Phillip Gibbons is Petitioner Hulu’s declarant in IPR2018-00017, and Dr. Franzon and Dr. Gibbons offer the same assessment as to the level of ordinary skill in the art, as noted by Dr. Jones. See Ex. 2012 ¶ 20. we address in our analysis below. Because there is general agreement among the parties that Petitioner and Dr. Franzon’s assessment of the level of ordinary skill is correct, we adopt Petitioner’s statement of the level of ordinary skill in the art with the exception of the language “at least,” which introduces ambiguity. Thus, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering or computer science (or equivalent degree or experience) with two years of experience in the design and/or development of database and record management systems.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner’s interpretation of “measurable characteristic” is refuted by the specification of the ’371 patent, which states that aging controller 120 determines a current value of L in response to one or more measurable main memory characteristics, step 200, such as a current utilization or capacity of main memory, a trend analysis of a utilization or capacity of main memory over a time period (t), or any other applied mathematics-or statistics-based analysis, including a comparison of any of the same with a threshold, ceiling/floor, limit, set point or the like. Ex. 1001, 6:46–53 (emphases added). According to the ’371 patent, therefore, a comparison of a memory’s current utilization or capacity to a threshold is within the scope of a “measurable main memory characteristic[].” Thus, Patent Owner’s attempt to distinguish “logical events” and “qualitative assessments” from measurable characteristics of memory is contrary to the specification. We determine that the phrase “measurable characteristic of said memory” does not require further construction.5” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“titled Concurrency Control and Recovery in Database Systems. Petitioner asserts that “Bernstein qualifies as prior art to the claims of the ’371 patent under 35 U.S.C. § 102(b) (pre-AIA).” Pet. 9. Petitioner introduces 6 Patent Owner has not presented evidence of secondary considerations as to any of the challenged claims. additional evidence that the Bernstein textbook was published more than one year before the August 19, 1997, filing date of the ’371 patent. See Exs. 1006 (Bernstein textbook excerpts, including title page and date stamp (April 27, 1987) from Library of Congress), 1007 (Bernstein textbook excerpts, including stamp from the University of Michigan Libraries and date annotation (1987)), 1015 (declaration testimony of Dr. Sylvia Hall-Ellis that Bernstein was publicly available no later than March 3, 1986), 1018 (Machine Readable Cataloging (“MARC”) record for Bernstein). During the trial, Patent Owner did not contest the status of Bernstein as a prior art printed publication under 35 U.S.C. § 102(b). Based on the evidence of record, we determine Bernstein is a prior art printed publication under 35 U.S.C. § 102(b).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“g. Conclusion as to claims 1 and 8 In summary, we find Bernstein teaches all of the limitations of claims 1 and 8, and we also find the combination of Bernstein and Rubin teaches all of the limitations of claims 1 and 8. In addition, we find that a person of ordinary skill in the art would have had a reasonable expectation of success in arriving at the invention recited in claims 1 and 8 based on Bernstein alone and based on the combined teachings of Bernstein and Rubin. We also find that a person of ordinary skill in the art would have been motivated to combine the teachings of Bernstein and Rubin. Having considered the full record developed during trial, we conclude Petitioner has shown, by a preponderance of the evidence, that the subject matter of claims 1 and 8 would have been obvious under 35 U.S.C. § 103(a) based on Bernstein alone and based on the combined teachings of Bernstein and Rubin.” slip op. at 36
Patent outcomesUS 6,125,371 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,125,371 - Tomtom, Inc. v. Blackbird Tech, LLC D/B/A Blackbird Technologies, LLCSome claims unpatentablePTAB · Mar 11, 2019 · IPR2017-02023 · APJ Debra K Stephens · IPR · Final written decision
Claims 1–5 are unpatentable over Jimenez, Levi, and ordinary-skill knowledge; claims 6–8 were not shown unpatentable because Jimenez did not teach the claimed transmitter.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We find the ’212 Patent is directed to data for a particular user (see, e.g., ’212 Patent, Abstract). This conclusion is supported by the Specification. Indeed, all discussion in the ’212 patent is directed to a pedometer for use by and relying on data obtained from an individual user. Thus, the Specification suggests that the term “calibration” should be construed as a process that correlates a user’s stride rate and stride length. The Oral hearing confirms this conclusion. In the Oral Hearing, Petitioner’s counsel, Mr. Doshi, responded to a request to identify the calibration and the plurality of calibrations as follows: JUDGE STEPHENS: So what are you pointing at in the 212 patent as being [a] calibration and the plurality of calibrations? MR. DOSHI: That’s in column 5. So at column 5 it says that after a proper warm up the user completes a sample run or walk on the track at normal pace, et cetera, et cetera. So it's saying that here’s S1 and following completion of the first run, so here it’s saying you’re doing different walks at different speeds . . .where you're having the user walk at different walking speeds and measuring their step size as you do that (Trans. 21:1–10; see also Tr. 19:4–7) JUDGE ZADO: Okay. And then so taking that further then, I understand your argument to be that in the 212 patent the runner for the first sample S1 will run at one pace and that’s, according to Petitioner, that's one calibration and then the runner will run at a second pace for the S2 sample and that’s the second calibration, and then the runner will run at a third pace and then that's the S3 sample and then that's a third calibration? Is that Petitioner's argument? MR. DOSHI: Yes 13 (Tr. 22:4–11). Therefore, based on Petitioner’s statements at the Oral Hearing, the term “calibration” should be construed as the process of taking a sample that correlates step rate and step length for an individual.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.), 18 despite Patent Owner’s declarant, Dr. Caloyannides, opining that the level of ordinary skill would not be so limited as proposed by Mr. Blackadar: I note that although the qualifications Mr. Blackadar describes would qualify one as a PHOSITA in this case, I do not believe the definition of a PHOSITA here would be so limited. The technology of the ‘212 Patent implicates other fields, such as Sports Medicine, Exercise Science, and Physiology. I believe that a bachelor’s degree in one of these fields, or a similar field, with at least two years of practical experience working with pedometers and/or health or fitness trackers or sensors, or an advanced degree in one of these areas, could qualify one as a PHOSITA in this case (Ex. 2001 ¶ 26). Petitioner argues that Patent Owner’s definition of a person of ordinary skill in the art would mean a “[person having ordinary skill in the art] under Patent Owner’s definition would be more well-informed than Patent Owner’s own expert” (Pet. Reply. 2); however, we do not read Patent Owner’s assertion or Dr. Caloyannides’ testimony as suggested by Petitioner. Rather, we read Dr. Caloyannides’ testimony as expanding the fields of expertise. We do not observe a meaningful difference between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F.3d at 1355). Our analysis in this Decision is supported by either assessment. Based on our review of the ’212 Patent, the types of problems and solutions described in the ’212 Patent and cited prior art, and the testimony of Mr. Blackadar and Dr. Caloyannides, we adopt and” slip op. at 18
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). Here, Petitioner has persuaded us that Levi is from the same field of endeavor as the ’212 Patent –– pedometers that count the number of steps taken to calculate distance traveled (see Pet. 20). Specifically, although Levi adds a navigation feature, Levi is directed to a pedometer that, in pertinent part, adjusts step size according to step frequency in order to estimate distance traveled by a user (Levi, 6:6–43). Levi states “[t]he present invention for a ground speed/distance sensor is an improvement over a common hiker’s pedometer” and “[t]he present invention analyzes the frequency of a user’s footsteps to aid in the detection of future footsteps, and further to aid in determining the size of footsteps taken by the user” (Levi, Abstract, 2:57–60, 2:65–67). Similarly, the ’212 Patent is directed to a pedometer and specifically, a pedometer that calculates actual stride lengths of a user based on relative stride rates (’212 Patent, Abstract). Thus, both the ’212 Patent and Levi are from the same field of endeavor –– pedometers or devices that include or rely on pedometers. Furthermore, both Levi and the ’212 Patent are pertinent to the particular problem with which the inventor is involved –– accurate distance identification. 44 Patent Owner additionally argues “[t]he different problems addressed” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“A holding of obviousness can be based on a showing that “there was an apparent reason to combine the known elements in the fashion claimed” (KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Such a showing requires some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. (id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (internal quotation marks omitted)). As admitted by Patent Owner, an ordinarily skilled artisan would have known a user’s stride length could vary with stride rate at the time of invention (see PO Resp. 52). As noted by Petitioner, Levi discloses using a dynamic step size algorithm that “improve[s] the accuracy of distance 49 measurements of a human footstep sensor” (Pet. Reply 25 (citing Levi, 6:17–21)). We further credit Mr. Blackadar’s testimony that an ordinarily skilled artisan would have been motivated to improve Jimenez using Levi’s dynamic step size algorithm, to improve the calculated distances (Ex. 1005 ¶¶ 92). Indeed, we find that an ordinarily skilled artisan would have been motivated to combine the teachings of Jimenez and Levi to “monitor [ ] the distance traveled more accurately than prior pedometers that calculated distance based on average stride length” (Pet. 31 (citing Ex. 1005 ¶ 90), 32 (citing Ex. 1005 ¶ 92)). In particular, we find that, given it was known a user’s stride length could vary with stride rate, as admitted by Patent Owner (PO Resp. 52), an ordinarily skilled artisan would have been motivated to implement a data processor that accounted for this relationship, such as that described in Levi (Pet. 32–33 (citing Ex. 1005 ¶¶ 93–94)).” slip op. at 49
Patent outcomesUS 6,434,212 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,434,212 - Roland Corporation v. Inmusic Brands, Inc.Rehearing deniedPTAB · Feb 21, 2019 · IPR2018-00396 · APJ Kamran Jivani · IPR · Rehearing
The Board denied Roland Corporation’s rehearing request, leaving in place denial of institution on claims 1–21 because the petition did not sufficiently show anticipation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW 37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012) (emphasis added). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of” slip op. at 2
- BurdenNot reached
“02178, 2018 WL 3490804, at *1 (July 19, 2018) (citing 37 C.F.R. § 42.71(d)). Under our rules, the Petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). If the Petition does not demonstrate that there is a reasonable likelihood of success, then the Board shall not institute an inter partes review. See 37 C.F.R. § 42.108(c) (“Inter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.”). Because Petitioner failed to set forth its analysis of the claimed proportional relationship in the Petition, we are not persuaded that we erred in finding Petitioner’s analysis insufficient to show a reasonable likelihood of success on this anticipation challenge.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“is proportional to the position of the control shaft relative to the foot pedal control module.” Ex. 1001, 5:32–34, 6:4–6, 6:37–39 (emphasis added). We construed the term “proportional” as “requiring a constant relationship, such as, for example, a linear relationship.” Dec. 16. In so doing, we found that “the claims and Specification of the ’758 patent do not elaborate on [the] nature of the control signal generated by the foot pedal control module beyond describing one embodiment in which the signal is ‘proportional to the plunger 116 position to the drum synthesizer through the cables.’” Id. (citing Ex. 1001, 4:30–33). We further found that “[t]he prosecution history also does not explicitly define the term ‘proportional;’ however, the Examiner relies on the ‘position-proportional signal’ as a reason for allowance of the claims.” Id. (citing Ex. 1005, 6). Recognizing that “[a]lthough extrinsic evidence ‘is generally of less significance than the intrinsic record’ in matters of claim construction,” we turned to “certain extrinsic evidence [to] inform[] our construction in the absence of a more fulsome intrinsic record.” Id. at 16–17 (citing Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir. 2016)). In particular, we relied upon “a relevant technical dictionary, namely The Authoritative Dictionary of IEEE Standards Terms,” to “show the common understanding that usage of term ‘proportional’ when used to describe an electrical signal indicates the signal maintains a constant relationship, such as, for example, a linear relationship.” Id. at 17 (citing Ex. 3001, 690, 879–80). We also observed that the dictionary.com “definition Patent Owner proffers supports our construction of ‘proportional’ as requiring a constant relationship.” Id. (citing Ex. 2002). slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“A Request for Rehearing is not an opportunity to present new arguments and evidence. 37 C.F.R. § 42.71(d) (A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.”). “Because we do not consider an argument made in a request for rehearing unless the request [specifically identif[ies] . . . the place where [that argument] was previously addressed in a motion, an opposition, or a reply,” we do not consider Petitioner’s newly presented information here. Commvault Sys., Inc. v. Realtime Data LLC, IPR2017- 02178, 2018 WL 3490804, at *1 (July 19, 2018) (citing 37 C.F.R. § 42.71(d)). Under our rules, the Petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). If the Petition does not demonstrate that there is a reasonable likelihood of success, then the Board shall not institute an inter partes review. See 37 C.F.R. § 42.108(c) (“Inter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.”). Because Petitioner failed to set forth its analysis of the claimed proportional relationship in the Petition, we are not persuaded that we erred in finding Petitioner’s analysis insufficient to show a reasonable likelihood of success on this anticipation challenge.” slip op. at 6
Claim constructioncites PhillipsPatents in suitUS 8,785,758 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00476 · APJ Debra K Stephens · IPR · Rehearing
The Board denied Google's rehearing request, leaving institution denied for claims 1–27 because Cheyer was not shown reasonably likely to qualify as publicly accessible prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply” (37 C.F.R. § 42.71(d)). The party challenging a decision bears the burden of showing the decision should be modified (id.).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot reached
“how to retrieve Cheyer, included in Moran’s footnote citation, did not persuade us that Cheyer was publicly accessible (id. at 15; see Pet. 3)). Importantly, we note Petitioner has not shown the link provided in the footnote worked, or that the link, which is to a “Bibliography” page (see Ex. 1029), provided Cheyer’s paper or a publicly accessible link to Cheyer’s paper. In particular, Petitioner does not provide a copy of this Bibliography page to show what actually was on this page and how or if an ordinarily skilled artisan would have been able to access Cheyer’s paper from the Bibliography page. In our Decision, we noted Petitioner failed to provide testimonial or other evidence that the link provided in the article actually worked at the relevant time period, what content was included at the linked website, how one would find Cheyer after selecting the link, or which version of Cheyer allegedly was accessible via the link (Dec. 15). We also explained that this latter showing is of special importance here because Petitioner acknowledges that there were several different versions of Cheyer (id. at 12 (citing Pet. 3)).” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“professional computer scientist or engineer directed to find an article on a section of a website would have been unable to do so with reasonable diligence” (id. at 7–8). Petitioner’s argument fails for several reasons. First, it is a new argument not appropriately raised on rehearing. Second, Petitioner identifies no support in the record for the assertion that Cheyer was actually available (see Ex. 2001 and 2002) or that an ordinarily skilled artisan would have been able to find Cheyer, only Petitioner’s speculation.2 Finally, this argument overlooks that the burden is on Petitioner, not the Board, to demonstrate a reasonable likelihood of prevailing on this issue.” slip op. at 7
§ 102 anticipationPatents in suitUS 6,757,718
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.