- SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00577 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–3, 7, 8, and 10–12 are unpatentable as obvious over Halbert and Amidi; the other asserted grounds did not establish unpatentability.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill and acknowledge that the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. 10 Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Analysis We determine that it is not necessary to provide an express interpretation of any term of the claims.” slip op. at 11
- BurdenNot shown unpatentable
“written to or read from simultaneously. Pet. 37–41. In particular, Petitioner asserts that Halbert’s directing of data, during a write operation, from the system memory data bus to registers 126 and 128 in successive clock cycles means that data being received by the memory devices corresponding to registers 126 and 128, respectively (e.g., ranks 140 and 142, respectively), occurs in successive clock cycles. Thus, according to Petitioner, “those memory devices associated with register 126 (i.e. Rank 140) receive data transmission from the system memory controller in the first clock cycle, but not in the second clock cycle . . . [and] those memory devices associated with register 128 (i.e., Rank 142) receive data transmissions from the system memory controller in the second clock cycle, but not in the first clock cycle.” Id. at 38. Therefore, according to Petitioner, Halbert does not, and cannot, write to the memory devices in ranks 140 and 142 simultaneously, because the memory devices in ranks 140 and 142 do not receive data concurrently. Id. In its Preliminary Response, Patent Owner asserts8 while data is sequentially latched onto registers 126 and 128, that data is then concurrently, not sequentially, written to memory device array 140/142—such operation is illustrated in Fig. 4, 8 Patent Owner chose not to request additional briefing to address this ground and arguments in the Preliminary Response are generally waived (Paper 8, 2–3), however, we acknowledge these arguments due to the unusual circumstance created by the Supreme Court’s decision in SAS. 15 above. Thus, all of Halbert’s memory devices are selected or enabled concurrently such that Halbert can write to all of its memory devices simultaneously. This is not, and is exactly counter to, the Petitioner’s assertions that the memory devices in ranks 140 and 142 receive—and thus, store—data sequentially. Prelim. Resp. 27–28. We agree. Petitioner has not explained how latching data to registers 126 and 128 is data transmission between a memory controller and a memory module when registers 126 and 128 are outside of the memory module. Moreover, Petitioner’s arguments and evidence with respect to claims 2, 3, 7, 8, and 10–12 do not cure this deficiency.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on Petitioner’s citations to specific prior art disclosures and supporting evidence, we are persuaded that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the legal conclusion that it would have been obvious to modify the teachings of Halbert with Amidi’s teachings to include rank select functionality. Pet. 64– 66. For example, Petitioner asserts: 19 To employ this chip select functionality of Amidi in the system of Halbert would have been only the arrangement old elements with each performing the same function it had been known to perform and yielding no more than one would expect from such an arrangement, i.e., the predictable result of operating each rank at desired times, and well within the level of ordinary skill to achieve. EX1003 ¶¶175-176. Moreover, a person of ordinary skill in the art would have been motivated to use the chip select functionality of Amidi in the system of Halbert to permit the use of lower density, and therefore cheaper and more readily available, memory in the system of Halbert, while using the existing address and data signal lines of Halbert. EX1019, ¶[0008]; see also id., ¶¶ [0002- 0012]; EX1003 ¶177. A skilled artisan would also have been motivated to include such prior art chip selection signals in Halbert in order to follow the traditional design of memory ranks including the use of traditional memory devices and the traditional address signals, as Halbert explains. EX1005, 3:55-57; EX1003 ¶178. Furthermore, Halbert suggests such a use by disclosing that “[m]any other variations on the illustrated embodiments are possible. For instance, . . . [t]he illustrated examples also show two ranks of memory, but other numbers of ranks are also possible.” EX1005, 9:20-26. Skilled artisans at the time would have understood that, in case the number of ranks is increased, chip/bank select signals would need to be used to activate some but not all of the ranks. See, e.g., EX1019 at FIGS. 5, 6A-6B (showing logic circuitry to generate chip select signals for” slip op. at 19
Patent outcomesUS 8,516,185 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,516,185 - PTAB · Apr 30, 2018 · IPR2017-01904 · APJ James B Arpin · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that Mammano was a printed publication or that the Board misapprehended or overlooked evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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 judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 8 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner had the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that Mammano is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc.,” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 10 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 10–11 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“we should find that Mammano is a printed publication consistent with the requirements of In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Reh’g Req. 10; see id. at 7–10. We decline to draw now the conclusions argued for the first time in this Request for Rehearing. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. It goes without saying that we could not have overlooked or misapprehended arguments that Petitioner did not make, and it is not an abuse of discretion not to consider such arguments. Thus, Petitioner’s submission of new arguments and evidence in its Request for Rehearing is both improper and unpersuasive.” slip op. at 7
§ 102 anticipation - PTAB · Apr 30, 2018 · IPR2017-01975 · APJ James B Arpin · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show the UC1828 datasheet was publicly accessible as a printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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 judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 8 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner has the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that the UC1828 datasheet is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015) (Paper 14)). As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 10 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 10 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 10 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 10 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner did not request the opportunity to submit additional evidence of public accessibility during the Preliminary Proceeding. Id. at 14 n.5; see 37 C.F.R. § 42.2 (“Preliminary Proceeding”). Nevertheless, Petitioner now asks that we take official notice of evidence contained in several issued patents and an abandoned patent application that were not made of record during the Preliminary Proceeding to support arguments presented for the first time in its Request for Rehearing. Reh’g Req. 4 n.1; see 37 C.F.R. § 42.62(c) (“Judicial notice”). We decline to take official notice of any new evidence during consideration of this Request for Rehearing. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence, and it goes without saying that we could not have misapprehended or overlooked new evidence that was not of record during the Preliminary Proceeding or new arguments that were not previously presented regarding that new evidence.” slip op. at 5
§ 102 anticipation - PTAB · Apr 30, 2018 · IPR2017-01944 · APJ James B Arpin · IPR · Rehearing
The Board denied Power Integrations’ rehearing request, leaving in place the denial of institution because Mammano was not shown to be a printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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 judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 9 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner had the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that Mammano is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9–10 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015) (Paper 14)).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 9 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner had the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that Mammano is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9–10 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015) (Paper 14)).” slip op. at 3
- Strike new argumentNew argument disregardedDenied
“Reh’g Req. 4–5 (emphasis added). Regardless whether it “would be reasonable to conclude” that certain facts exist, Petitioner did not make these arguments in its Petition, and it was not error to fail earlier to draw these conclusions, and we decline to draw these conclusions now.” slip op. at 6
§ 102 anticipation - Emerson Electric Co. v. Sipco, LLCAll claims unpatentablePTAB · Mar 21, 2018 · IPR2016-01895 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–3, 6, 8–11, 13–21, and 25 are unpatentable as obvious over Johnson, Mason/EIA-709.1/Shuey/C12.18, and anticipated by Johnson.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 2002 ¶ 76. Patent Owner asserts using its lower level of skill in the art “would diminish the motivation of a POSITA would have for combining references identified in the instituted grounds.” Id. at ¶ 82. We disagree that an understanding of how to design and build a wireless, multi-hop communications systems is a leap in knowledge that would create a motivation to combine that would not be there under Patent Owner’s articulation of the level of skill. See Ex. 1027 ¶¶ 9–11. Thus, we do not discern a difference between the two proposed levels of skill that affects the analysis in this IPR. However, for clarity we adopt Petitioner’s articulation of the level of skill, which is 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).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Here, the intrinsic evidence does not support limiting the challenged claims to sending “original” messages. Thus, sending sensed data acquired from another device is within the ambit of the challenged claims. In fact, dependent claims 2, 11, 15, 17, 21 specifically recite a sensor and/or actuator which suggests that the independent claims can be broader and may not require a remote device “including” a sensor and/or actuator. Additionally, the court in the related Amazon litigation did not construe “remote devices” to require actuators. Id. at 16, 74. For the reasons above, the broadest reasonable construction of the remote device terms does not require a sensor and/or actuator. Based on the 4 Sipco, LLC v. Amazon.com, Inc., No. 2-08-cv-00359 (E.D. Tex.) (“the related Amazon litigation”). 8 record before us, it is unnecessary to expressly construe the remote device terms further.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on Petitioner’s citations to specific prior art disclosures and supporting evidence, we are persuaded that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the legal conclusion that it also would have been obvious to modify the teachings of Mason, with EIA-709.1’s teachings, to include an address that varies in size. Pet. 50. For example, Petitioner contends: A [person of ordinary skill in the art] would have been motivated to use the scalable destination address of EIA-709.1 in Mason’s system. The ‘492 patent uses scalable addresses in order to accommodate systems of different sizes and complexity. Ex. 1001 at 9:59-61. The scalable addresses of EIA-709.1 would also accommodate systems of different sizes and complexity in a more flexible manner. Mason expresses a desire to implement a large scale AMR system. Mason at 1:46-48, 5:25-57. Mason also recognizes the importance of uniquely identifying a large number of destination meters. Mason at 10:43-56. Using the scalable addresses of EIA-709.1 in Mason’s system would allow a [person of ordinary skill in the art] to effectively identify message destinations in networks with increasing sizes and complexity. Kinney, ¶¶116-117. Moreover, Mason explicitly discloses that the LonTalk protocol can be used with its system. Mason at 17:4-9. The LonTalk protocol ultimately was adopted as EIA-709.1. Exs. 1022, 1023, 1024. Indeed, the LonTalk protocol specification includes the same scalable addresses disclosed in EIA-709.1. Ex. 1020 at 14-16. A [person of ordinary skill in the art] would thus be motivated to combine Mason and EIA-709.1, with a reasonable expectation of success in doing so. Kinney, ¶118.” slip op. at 44
- Expert testimonyPetitioner expert creditedDecided for petitioner
“configured to detect a condition and output a signal to the controller,” as recited in claim 15. In that regard, Petitioner contends each meter 12 of Mason includes a metering board for performing the metering function. Pet. 44; Ex. 1006, 5:59–63. Each meter also includes a set of analog transducers. Id.; Ex. 1006, 5:59–64. Thus, according to Petitioner a person of ordinary skill in the art “would appreciate that a sensor is a type of transducer, and that Mason’s transducers are sensors. Mason’s metering board and/or analog transducers correspond to the claimed ‘sensor.’” We agree and credit Petitioner’s declarant’s supporting testimony. Pet. 44; Ex. 1002 ¶ 101. Petitioner also asserts the metering board and/or analog transducers are operable to detect a condition related to, for example, electricity, gas, or water, and output meter information corresponding to the condition to the meter’s controller. Pet. 44; Ex. 1006, 5:32–41, 9:56–65, 15:37–47, 49–53; Ex. 1002 ¶ 101. c. Claims 17 Petitioner persuades us that Mason teaches “at least one actuator configured to implement an action corresponding to the command code,” as recited in claim 17. In that regard, Petitioner contends Mason discloses that each meter 12 includes a disconnect switch drive circuit. Pet. 45; Ex. 1006, 5:59–64. Thus, according to Petitioner a person of ordinary skill in the art 48 “would appreciate that a disconnect drive circuit implements an action, such as a disconnect function, in response to receiving a command to do so using the C12.18 protocol. This operation corresponds to the claimed actuator configured to implement an action corresponding to the command code.” Pet. 45; Ex. 1002 ¶ 101. We agree and credit Petitioner’s declarant’s supporting testimony. Ex. 1002 ¶ 101.” slip op. at 48
Patent outcomesUS 7,697,492 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,697,492 - Freebit As v. Bose CorporationRehearing deniedPTAB · Jan 23, 2018 · IPR2017-01309 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Freebit’s rehearing request and left in place the denial of institution on claims 1–3, 5, 6, 8–11, and 13 based on the deficient obviousness showing and Tan antedating.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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 1 IPR2017-01307 Inst. Dec. 34 (“As we noted above, although Patent Owner mentions both March 26, 200[9] (Prelim. Resp. 8), and May 26, 2009 (id. at 1, 10), as the date of actual reduction to practice, it is clear from Mr. Annunziato’s testimony and supporting evidence, that actual reduction to practice occurred by May 26, 2009. Ex. 2001 ¶¶ 9, 11; see id., Ex. A, 2.”). 2 We note that Petitioner presented substantially identical arguments regarding Patent Owner’s antedating of Tan in its Request for Rehearing filed in IPR2017-01307 and IPR2017-01308. See, e.g., IPR2017-01308, Paper 11. Our reasons for denying rehearing here regarding the antedating of Tan are substantially the same as the reasons presented in IPR2017-01307 and IPR2017-01308. 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 judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“testimony that there was a known, retention problem with in-ear earpieces as of the earliest priority date for challenged claims of the ’853 patent. See Inst. Dec. 14 (citing Ex. 1003 ¶ 149). Nor did we question that Howes discusses that problem and teaches a possible solution to that problem. See id. at 11–13. The failure in Petitioner’s argument and Petitioner’s declarant’s testimony was to draw the necessary link between the known problem and Howes’s possible solution and the teachings of Sapiejewski. In order to link this problem and its possible solution to the teachings of Sapiejewski, Petitioner relies on Dr. Staab’s testimony. Id. at 14. It is this testimony that we find unsupported and conclusory.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundTeaching away not found
“testimony that there was a known, retention problem with in-ear earpieces as of the earliest priority date for challenged claims of the ’853 patent. See Inst. Dec. 14 (citing Ex. 1003 ¶ 149). Nor did we question that Howes discusses that problem and teaches a possible solution to that problem. See id. at 11–13. The failure in Petitioner’s argument and Petitioner’s declarant’s testimony was to draw the necessary link between the known problem and Howes’s possible solution and the teachings of Sapiejewski. In order to link this problem and its possible solution to the teachings of Sapiejewski, Petitioner relies on Dr. Staab’s testimony. Id. at 14. It is this testimony that we find unsupported and conclusory.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“Initially, we note that Petitioner did not raise these arguments anywhere in its Petition or its authorized Reply to Patent Owner’s Preliminary Response. Not only did Petitioner fail to raise the issue of “Peeler diligence,” but Petitioner’s Request for Rehearing does not include a single citation to its Petition or to its Reply on this point. Thus, Petitioner’s Request for Rehearing fails to identify the place where each matter that allegedly was overlooked or misapprehended was previously addressed in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. It goes without saying that we could not have overlooked or misapprehended arguments that Petitioner did not make, and it is not an abuse of discretion not to consider such arguments.” slip op. at 10
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,036,853 - Freebit As v. Bose CorporationRehearing deniedPTAB · Jan 23, 2018 · IPR2017-01307 · APJ James B Arpin · IPR · Rehearing
The Board denied Freebit’s rehearing request, leaving institution denied for claims 1–4, 6–9, 13, and 17 because the obviousness challenge lacked a supported reason to combine and Tan was antedated.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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 1 Inst. Dec. 34 (“As we noted above, although Patent Owner mentions both March 26, 200[9] (Prelim. Resp. 8), and May 26, 2009 (id. at 1, 10), as the date of actual reduction to practice, it is clear from Mr. Annunziato’s testimony and supporting evidence, that actual reduction to practice occurred by May 26, 2009. Ex. 2001 ¶¶ 9, 11; see id., Ex. A, 2.”). 2 We note that Petitioner presented substantially identical arguments regarding Patent Owner’s antedating of Tan in its Request for Rehearing filed in IPR2017-01308 and in IPR2017-01309. See, e.g., IPR2017-01308, Paper 11. Our reasons for denying rehearing here regarding the antedating of Tan are substantially the same as the reasons presented in IPR2017-01308 and IPR2017-01309. 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 judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“testimony that there was a known, retention problem with in-ear earpieces as of the earliest priority date for challenged claims of the ’253 patent. See Inst. Dec. 41 (citing Ex. 1003 ¶ 149). Nor did we question that Howes discusses that problem and teaches a possible solution to that problem. See id. at 37–39. The failure in Petitioner’s argument and Petitioner’s declarant’s testimony was to draw the necessary link between the known problem and Howes’s possible solution and the teachings of Sapiejewski. In order to link this problem and its possible solution to the teachings of Sapiejewski, Petitioner relies on Dr. Staab’s testimony. Id. at 41. It is this testimony that we find unsupported and conclusory.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner
“neither Petitioner nor its declarant explains why a general need to secure an earpiece in an ear would lead to adding a positioning and retaining structure in the context of Sapiejewski’s teachings, when that function allegedly already is provided by the Sapiejewski device, besides seeking the benefits described in the ’253 patent – a reason tainted by hindsight. Inst. Dec. 45–46 (citations omitted). Consequently, we considered fully Petitioner’s arguments and Dr. Staab’s testimony, including any supporting evidence, in view of Sapiejewski’s disclosure. Based on this consideration, we agreed with Patent Owner that “Petitioner relies on a far too general reason to combine the references and engages in impermissible hindsight as to the particular combination of the teachings of Sapiejewski and Howes.” Id. at 45.” slip op. at 8
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“suppression or concealment may be overcome with evidence that the reason for the delay was to perfect the invention.” 843 F.2d 1364, 1367 (Fed. Cir. 1988); see Inst. Dec. 33. Nevertheless, the delay could not be excused (1) if “the delay is caused by working on refinements and improvements which are not reflected in the final patent application,” or (2) if “the activities which caused the delay go to commercialization of the invention.” Lutzker, 843 F.2d at 1367. In its Reply, Petitioner focused on the length of the delay between the actual reduction to practice and the filing of a patent application. Reply 3–4. Petitioner, however, made only cursory and conclusory reference to Patent Owner’s activities3 between the actual reduction to practice and the filing of a patent application. See Reply 4 (“Moreover, Mr. Annunziato’s testimony (¶ 6) that his team put in hundreds (if not thousands) of hours trying out and testing different designs for ear interfaces is not credible.”). Petitioner now argues that “all the alleged work carried out by [Patent Owner] to complete the [printed circuit board] is irrelevant to the suppression/concealment issue because it was not reflected in the final patent application, and rather, was relevant simply for commercialization.” Reh’g Req. 12. We continue to disagree.” slip op. at 10
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,311,253 - Emerson Electric Co. v. IP Co., LLCAll claims unpatentablePTAB · Jan 9, 2018 · IPR2016-01602 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1, 2, 4, 5, 10, 11, 13, and 14 are unpatentable under § 103 as obvious over the stated combinations of Burchfiel, Schwartz, and Heart, with Online Encyclopedia for claims 2, 5, and 11.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties differ on the level of ordinary skill applicable to this case. Petitioner contends the person of ordinary skill “would have a minimum of a bachelor’s degree in Electrical Engineering and 2-3 years of experience in the development and design, or technical marketing, of radio communications and computer network systems, or the equivalent.” Pet. 11. Patent Owner’s expert, Dr. Almeroth, responds: “a person of ordinary skill in the art for the patent-in-suit would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent and experience with, or exposure to, computer networks and routing. A person of ordinary skill in the art would also have approximately two years of professional experience with computer networking, routing, and wireless networks.” Almeroth II Decl. ¶ 74. Dr. Almeroth takes issue with Petitioner’s definition “since it does not specifically list Computer Science as a possible degree.” Id. at ¶ 78. We adopt Patent Owner’s slightly more inclusive definition. As the definitions do not differ substantially, however, under either we would reach the same result. C. Claim Construction” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“transmission paths from a particular client to the server. Pet. Reply 5–6. Petitioner responds that Patent Owner’s dictionary definition relates to “a physical map, not a structure for organizing data in mathematics or computer science.” Id. at 6. We agree with Petitioner that this particular definition of “map” is not pertinent to the subject matter of the ’516 patent, and therefore give Patent Owner’s argument based on this definition little weight. See id. If anything, the dictionary entry cited by Patent Owner supports Petitioner’s view that the construction of “map” should not be limited to multiple paths from one client. Thus, the second definition of “map” in the dictionary entry is not limited to multiple elements: “The correspondence of one or more elements in one set to one or more elements in the same set or another set.” Ex. 2001, 827 (“map,” definition 2; emphasis added). We deem this second definition, identified as pertaining to mathematics (“Math.”), to be more pertinent to the technology of the ’516 patent than that chosen by Petitioner. Nor are we persuaded by Patent Owner’s other argument, based on the reference in the ’516 patent claims to plural “paths.” PO Resp. 11–12. As Petitioner points out, claims 1 and 13 recite “changing the transmission path [singular] from the client to the gateway so that the path to the gateway is chosen.” Pet. Reply 6. We are, therefore, not persuaded by the arguments presented that the construction of this term in our Institution Decision requires modification. We therefore construe the term “map” as containing the paths or links to a node in the network, including a single path.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededOther
“We agree with Petitioner that this term needs no express construction. However, we determine that it is necessary to address Patent Owner’s proposed construction, as it is central to its defense to Petitioner’s challenge. Patent Owner’s construction of this term is related to its proffered construction of “map of data packet transmission paths,” discussed supra. According to Patent Owner, “[t]he claim language itself . . . requires the server to change the selection of a transmission path including an identification of an entire path from the client to the server.” PO Resp. 13 (emphasis added). We disagree with this interpretation. The claim uses the word “chosen,” not “select.” We agree with Petitioner that this is a significant difference, in that “chosen” does not necessarily imply a selection among alternative paths. Pet. Reply 7. Further support for this conclusion is found in our discussion of “map of data packet transmission paths,” supra. There, we conclude that “map” should not be limited to multiple paths from a client. See supra. In the same way, the claim language should not be construed as requiring choosing from a selection of alternative paths. Patent Owner points to a decision in which another panel of the Board, in IPR2015-01901, construed the word “select” in a “related patent.” PO Resp. 13–14. We are not persuaded by that decision that we are misconstruing the claims at issue here, which do not use the word “select.” In the context of the ’516 patent claims, we do not regard “chosen” as having the same meaning as “select.”” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find that Petitioner has demonstrated that Burchfiel’s connectivity matrix meets this claim limitation. Pet. 35–35; 54. We are not persuaded by Patent Owner’s arguments in rebuttal. First, addressing the “plurality of descriptions” argument, we have construed the term “map” as not limited to storing multiple paths from one client to the server. Thus, Patent Owner’s argument calling for a “plurality of descriptions” of a path from a client to the server is contrary to our construction. Moreover, we are not persuaded that a map must contain the “entire path.” We have construed “map” as containing the paths or links to a node in the network, including a single path. See infra. Thus, the “entire path” argument fails for this reason alone. We find, however, that even under Patent Owner’s construction of map as requiring a “description of the entire path,” Burchfiel would meet this limitation. Ex. 1005, 246. Burchfiel teaches a map containing both the path from the station to the server and from the server to the station. According to Burchfiel, a connection table provides a map of path information: Once a station has labelled all PRU’s and established connections to them, the information for maintaining these connections is entered into the station’s connection table. This contains the status information described above for handling the connection protocol. Ex. 1005, 247 (emphasis added). As Petitioner points out, Burchfiel specifically describes these connections as “bidirectional.” Pet. Reply 9 (citing Ex. 1005, 246 (“Since most expected uses of the PRN will require bidirectional communication, the PRN connection is bi-directional.”)). Petitioner provides persuasive expert testimony to the effect that “it would have been obvious to recompute the route in both directions, to the extent not disclosed by Burchfiel, based on Burchfiel’s disclosure that, e.g., the ‘PRN connection is [a] bidirectional’ ‘data transmission path.” Geier II Decl. ¶ 69. We find that at the very least, therefore, Burchfiel’s reference to “bi-directional” connections suggests such a computation. “Even if a reference’s teachings are insufficient to find anticipation, that same reference’s teachings may be used to find obviousness.” CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1345 (Fed. Cir. 2017). We find based on the foregoing that Burchfiel’s disclosure would teach or suggest to a person of ordinary skill that the connection table stores bidirectional path information.” slip op. at 18
Patent outcomesUS 6,249,516 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,249,516 - PTAB · Sep 8, 2017 · IPR2015-01869 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–8, 10–12, 14–18, 20–23, 25, and 27–29 unpatentable over Shuen and RFC1234, and claim 19 unpatentable over Bellovin.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successDecided for petitioner
“mapping for the network address translation” under the Board’s construction of that phrase, i.e., “a property associated with the mapping in which the mapping expires after it has not been used in the translation of a packet for a period of time associated with the mapping,” the Petition cites the following language from Shuen:” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Disclaimer not foundDecided for petitioner
“from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000) (citations omitted). “To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.” Id. (citations omitted). Whether and to what extent material has been incorporated by reference into a host document is a question of law. Id.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for petitioner
“Id. at 3 (emphasis omitted). Notably, Patent Owner did not raise this argument (i.e., that Shuen’s “time to live” does not satisfy the recited “time out . . .” under the Board’s construction) in its Patent Owner Response. Patent Owner asserts, however, it “noted this deficiency of Petitioner’s proofs in the January 18, 2017 hearing” and “[t]his deficiency of Shuen was first raised in Patent Owner’s Preliminary Response.” Req. Reh’g. 4. However, our rules do not allow Patent Owner to incorporate arguments by reference from its Preliminary Response (see 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference form one document into another document”)), and our Scheduling Order provides that any arguments and evidence not contained in the Patent Owner Response will be “deemed waived” (Paper 9, 3). Petitioner asserted at the oral hearing that the argument was new and, as such, Petitioner did not have a reasonable ability to respond to the argument. Tr. 43:8–14. We determine Patent Owner has waived its argument that Shuen does not disclose the “has not been used” portion of our construction of the phrase “time out of the mapping for the network address translation.”” slip op. at 3
Claim construction§ 103 obviousnessPatents in suitUS 8,544,079 - Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Aug 28, 2017 · IPR2016-00593 · APJ Garth D Baer · IPR · Final written decision
The Board held that claims 12–15, 21–23, 25–27, 33–38, 44, and 45 were not shown unpatentable because Pictometry was not established as a publicly accessible printed publication.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Version 2.7 (“EFS 2.7 User Guide,” “Pictometry,” or “User Guide”) and, as the name suggests, is a user guide for the Pictometry software product. See Ex. 1004, xiii. Patent Owner argues that Petitioner does not demonstrate that Pictometry is prior art. PO Resp. 5–10. In our Final Written Decision in IPR2016-00594, we considered substantively the same arguments and evidence Patent Owner and Petitioner raise in this case. See IPR2016-00594 FWD 17–29; compare IPR2016-00594 Paper 31, 13–20 with PO Resp. 6– 13; and compare IPR2016-00594 Paper 33, 3–9 with Reply 4–11. In IPR2016-00594, we found Pictometry’s limited dissemination to some governmental entities subject to licensing restrictions was not sufficient to show public dissemination or public accessibility. IPR2016-00594 FWD 17–29. We adopt that same finding here. For the reasons explained in IPR2016-00594, we find that Petitioner has not established by a preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. §§ 102(b) and 311(b).” slip op. at 6
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“substantively the same as the arguments made in IPR2016-00594. In IPR2016-00594, we denied Patent Owner’s motion to exclude Exhibit 1004 (Pictometry), Exhibit 1011 (a Merriam-Webster Dictionary Definition “database” copied from a web page), Exhibit 2010 (Cohasset Town Report 2008), 2011 (LARIAC1 Pictometry Training), Exhibit 2012 (LAR-IAC2 Product Guide), Exhibit 2020 (“GIS: Pictometry: Oblique Imagery training), Exhibit 2021 (“Pictometry License Guidelines”), and Exhibit 2022 (“Pictometry – April 19, 2007”). IPR2016-00594 FWD 5–17. We granted Patent Owner’s motion to exclude Exhibit 2013 (article titled “Los Angeles County Extends its License Agreement with Pictometry for New Oblique Aerial Photos”), Exhibit 2014 (“Pictometry Administrative Training”), Exhibit 2015 (“Information about TXWILM Administrative Training”), Exhibit 2016 (“Pictometry Administrative Training”), Exhibit 2019 (“GIS Working Group Meeting Minutes”), Exhibit 2023 (“Welcome to Your End User Training”), Exhibit 2024 (“Electronic Field Study Getting Started Guide”), Exhibit 2025 (“Pictometry Announces Technical Advancements for GIS Professionals1”), and Exhibit 2026 (“Pictometry Announces Technical Advancements for GIS Professionals2”). Id. We adopt the same findings and conclusions here. For the reasons explained in IPR2016-00594, we deny the motion to exclude Exhibits 1004, 1011, 2010, 2011, 2020, 2021, and 2022, but grant the motion to exclude Exhibits 2013, 2014, 2015, 2016, 2019, 2023, 2024, 2025, and 2026. See id.” slip op. at 5
Patent outcomesUS 8,823,732 not shown unpatentable§ 102 anticipationPatents in suitUS 8,823,732
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.