- Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentablePTAB · May 4, 2017 · IPR2016-00163 · APJ Matthew R Clements · IPR · Final written decision
Claims 43–46, 48–55, 57, 59–66, and 68 were not held unpatentable because Petitioner did not establish that the Jaffray references were prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art, with respect to and at the time of the’502 patent, would have the following qualifications: “a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications.” Ex. 1202 ¶ 13. Dr. Hashemi, Patent Owner’s expert, essentially agrees, with the only major differences to the above being that an M.S. is acceptable in lieu of a Ph.D., and that three years of experience is preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level because it is based on Dr. Balter’s more complete explanation. We note, however, that neither party has explained substantively any significance that the difference in the proffered levels of ordinary skill in the art would play in the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu- Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“Owner that the ’590 Application provides sufficient written description support for “controlling [said path of / a radiation therapy treatment plan involving] said radiation source based on said image.” In particular, we credit the testimony of Dr. Hashemi that a person of ordinary skill in the art would have understood from the ’590 Application that components of the disclosed system were computer-controlled based upon, e.g., the depiction of an Elekta SL-20 in Figure 3 of the ’590 Application and from the depiction of an electronic portal imaging device. (Ex. 2080 ¶¶ 109–116, 125–132). Petitioner’s arguments are not persuasive because, even assuming that controlling the source path and controlling a radiation therapy treatment plan are “an entirely different class of control step” from controlling patient position (Pet. Reply 8–9), Petitioner has not explained why the portions of the ’590 Application relied upon by Patent Owner do not disclose controlling the source path or controlling a radiation therapy treatment plan.” slip op. at 19
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“Owner that the ’590 Application provides sufficient written description support for “controlling [said path of / a radiation therapy treatment plan involving] said radiation source based on said image.” In particular, we credit the testimony of Dr. Hashemi that a person of ordinary skill in the art would have understood from the ’590 Application that components of the disclosed system were computer-controlled based upon, e.g., the depiction of an Elekta SL-20 in Figure 3 of the ’590 Application and from the depiction of an electronic portal imaging device. (Ex. 2080 ¶¶ 109–116, 125–132). Petitioner’s arguments are not persuasive because, even assuming that controlling the source path and controlling a radiation therapy treatment plan are “an entirely different class of control step” from controlling patient position (Pet. Reply 8–9), Petitioner has not explained why the portions of the ’590 Application relied upon by Patent Owner do not disclose controlling the source path or controlling a radiation therapy treatment plan.” slip op. at 19
- Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artNot shown unpatentable
“[t]he content and nature of the printed publication, as well as the circumstances surrounding its publication” (Katz, 687 F.2d at 455), we are not persuaded that Petitioner has met its burden of persuasion by showing sufficiently that the portions of Jaffray 1999 SPIE and Jaffray 1999 JRO on which it relies are the work “others.” Unlike in Katz, where the question was “the sufficiency of applicant’s showing to establish that the subject disclosure was his original work, and his alone” (687 F.2d at 455), the question before us is the sufficiency of Petitioner’s showing to establish that the subject disclosure was the work of the non-inventor coauthors of Jaffray 13 Both the burden of production and the burden of persuasion. 14 At oral argument, counsel for Petitioner indicated that, in his view, it does not matter who has the burden. Tr. 20:9, 20:16–17. 1999 SPIE and Jaffray 1999 JRO. See Dynamic Drinkware, 800 F.3d at 1378 (“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016) (“In the context of the present case, however, the notion of burden-shifting is inapposite because the patentee’s position is that the patent challenger failed to meet its burden of proving obviousness.”); see also Duncan Parking Techs., Inc. v. IPS Group Inc., Case IPR2016-00067, slip op. at 8–13 (PTAB Mar. 27, 2017) (Paper 29). slip op. at 23
Patent outcomesUS 6,842,502 not shown unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 6,842,502 - Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentablePTAB · May 4, 2017 · IPR2016-00170 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1–13 and 20–31 were not held unpatentable because the strong evidence of industry praise and long-felt need, with supporting evidence of commercial success and copying, outweighed the obviousness showing.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Dr. Balter, Petitioner’s expert, proffers that a hypothetical person of ordinary skill in the art, with respect to and at the time of the’765 Patent, would have the following qualifications: “a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications.” Ex. 1102 ¶ 13. Dr. Hashemi, Patent Owner’s expert, essentially agrees, with the only major differences to the above being that an M.S. is acceptable in lieu of a Ph.D., and that three years of experience is preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level of ordinary skill in the art based on Dr. Balter more complete explanation. We note, however, that neither party has explained substantively any significance that the difference in the proffered levels of ordinary skill in the art would have in the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyNot shown unpatentable
“In our Decision on Institution, we were not persuaded that the terms “computer” (claim 1), “controller” (claim 7), “structure” (claim 20), and “support table” (claim 26) fail to recite sufficiently definite structure, and, therefore, we declined to construe these terms as means-plus-function limitations in accordance with 35 U.S.C. § 112 ¶ 6. Dec. 10‒12. Neither Patent Owner nor Petitioner provide any more argument or evidence to disturb our interpretation of these terms. See PO Resp. 12. Accordingly, we do not construe these terms as means-plus-function limitations under 35 U.S.C. § 112 ¶ 6. See SAS Institute, Inc. v. ComplementSoft, LLC., 825 F.3d 1341, 1351 (Fed. Cir. 2016) (The Board may not change a claim interpretation from the institution decision where neither party anticipated that “already-interpreted terms were actually moving targets.”).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We begin first with the claim language, and note that “three- dimensional information” appears facially to be co-extensive with any information relevant to three-dimensions. We discern that “length, width, 6 In evaluating the assertions set forth in the Declaration of James Balter Ph.D. in Support of Petitioner’ Reply (Ex. 1500), we considered Patent Owner’s Motion for Observations on the Cross-Examination of Dr. James Balter (Paper 48) and Petitioner’s Response to Patent Owner’s Motion for Observations on Cross-Examination (Paper 56). 7 In the Decision on Institution, we preliminarily agreed with Petitioner’s proposed construction of “three-dimensional information.” Dec. 9–10. and depth” are just such information. We have considered Patent Owner’s above-cited portions of the ’765 patent, but are unpersuaded that those portions narrow “three-dimensional information” with sufficient “reasonable clarity, deliberateness, and precision” such that one of ordinary skill would have understood “three-dimensional information” as co-extensive with Patent Owner’s proffered construction. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). For example, column 2, lines 44‒56 certainly disclose that “volume” is desirable, but does not provide any equivalence between “threedimensional information” and “volume.” Indeed, column 2, lines 55–56 disclose “provide information regarding the location of soft-tissue target volumes,” indicating that “information” is a subset of “volume.” In another example, column 3, lines 41–56, mentions “three-dimensional (3-D) images,” which we agree would appear to require “volumetric data;” however, the claim limitation at issue is the broader term “three-dimensional information.” In a further example, column 9, line 54‒64, clearly refers to “volumetric data,” but does not indicate its relation to “three-dimensional information.” In yet another example, column 16, lines 23–25 and 38–42, do not recite “three-dimensional information,” instead disclosing “3-D structure” and “3-D nature” in relation generally to “volumetric data,” but, again, not in a manner sufficient to indicate a particular relationship. Finally, in regards to assertions set forth in the Declaration of Dr. Hashemi, we discern some merit in his assertion that when reading the claim limitation “three-dimensional information” in conjunction with another claim limitation “cone-beam computed tomography,” “a CBCT image is a volumetric image that provides the location, shape, and spatial orientation of the target volume in all directions, not just its length, width, and depth.” Ex. 2080 ¶ 85. Furthermore, the claim limitation does not preclude an image having more information than “three-dimensional information concerning said object” (such as length, width, and depth), “based on a plurality of two-dimensional projection images.” Under Patent Owner’s construction, however, the image would be required to have such information. We are unpersuaded that such information is required under a proper construction of “three-dimensional information” for the reasons set forth supra. We construe “three-dimensional information” as “information” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We are unpersuaded for several reasons. Primarily, we are unpersuaded because a fundamental assumption made by Patent Owner is that the patient must remain unrestrained. Patent Owner makes this assumption based on the assertion that “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.” PO Resp. 33. We have reviewed Patent Owner’s supporting evidence, and are unpersuaded that the evidence supports Patent Owner’s assertion that “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.” For example, Patent Owner cites to certain paragraphs of Dr. Hashemi’s Declaration, which in turn cite to certain portions of Depp. Ex. 2080 ¶¶ 117, 133, 136 (citing Ex. 1104, 11:66–12:23, Fig. 9). We have reviewed those portions of Depp, and find that while they do disclose that target location and treatment periods are on the order of seconds, they do not mention anything about “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.”11 Accordingly, absent such an evidentiary foundation, we do not find credible Dr. Hashemi’s assertions concerning this matter. Even without explicit analysis by Patent Owner, we logically understand the connection between longer image acquisition and processing times, and the higher likelihood of interim patient movement. Absent the aforementioned “primary goal,” however, we are unclear as to why the converse of that goal would not be correct, i.e., that one of ordinary skill would have resolved the timing consideration by restraining the patient. Indeed, in opposition, Petitioner asserts, and we agree, that “POSA would understand that in the majority of radiotherapy treatment settings, patients are in fact restrained to some degree.” Pet. Reply 7‒8 (citing Ex. 1500 ¶¶ 33–35; Ex. 2080 ¶¶ 54–55; Ex. 1502, 142:23–143:19). In particular, we are persuaded by the consistency of Dr. Balter’s and Dr. Hashemi’s testimony that molds were used in 2000 to minimize unwanted patient motion during treatment. Ex. 1500 ¶ 35; Ex. 2080 ¶ 55.” slip op. at 23
Patent outcomesUS 7,471,765 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,471,765 - Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentablePTAB · May 4, 2017 · IPR2016-00169 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1–13 and 20–31 were not held unpatentable under § 103 because the petitioner did not establish that Jaffray 1999 SPIE and Jaffray 1999 JRO were prior art.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“Having considered the arguments and evidence, we agree with Patent Owner that the ’590 Application provides sufficient written description support for “wherein said receiving said x-rays by said flat panel imager is performed substantially at a time of occurrence of said controlling said path of said beam of radiation through said object.” As an initial matter, we understand that Petitioner acknowledges that the ’590 Application supports the limitation “substantially at a time,” and arguments raised towards this limitation were originally presented as arguments towards indefiniteness.” slip op. at 19
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“1. Principles of Law Petitioner has the burden of persuasion to prove unpatentability by a preponderance of the evidence. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Petitioner also has the initial burden of production to show that a reference is prior art to certain claims under a relevant section of 35 U.S.C. § 102. Id. Once Petitioner has met that initial burden, the burden of production shifts to Patent Owner to argue or produce evidence that the asserted reference is not prior art to certain claims, for example, because those claims are entitled to the benefit of priority of an earlier-filed application. Id. at 1380. Once Patent Owner has met that burden of production, the burden is on Petitioner to show that the claims at issue are not entitled to the benefit of priority of the earlier filed application. Id.” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference not prior artNot shown unpatentable
“Having considered the parties arguments and evidence regarding, we are not persuaded that Petitioner has met its burden of persuasion by showing sufficiently that the portions of Jaffray 1999 SPIE and Jaffray 1999 JRO on which it relies are the work “others.” Unlike in Katz, where the 10 Both the burden of production and the burden of persuasion. 11 At oral argument, counsel for Petitioner indicated that, in his view, it does not matter who has the burden of production. Tr. 20:9, 20:16–17. question was “the sufficiency of applicant’s showing to establish that the subject disclosure was his original work, and his alone” (687 F.2d at 455), the question before us is the sufficiency of Petitioner’s showing to establish that the subject disclosure was the work of the non-inventor coauthors of Jaffray 1999 SPIE and Jaffray 1999 JRO. See Dynamic Drinkware, 800 F.3d at 1378 (“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016) (“In the context of the present case, however, the notion of burden-shifting is inapposite because the patentee’s position is that the patent challenger failed to meet its burden of proving obviousness.”); see also Duncan Parking Techs., Inc. v. IPS Group Inc., Case IPR2016-00067, slip op. at 8–13 (PTAB Mar. 27, 2017) (Paper 29). Patent Owner presents testimony of Dr. Jaffray and Mr. Drake that the subject matter relied upon by Petitioner was not the work of the non-inventor coauthors, and after considering all relevant arguments and evidence, we are unpersuaded by Petitioner’s assertions that this testimony is unreliable. Dr. Jaffray testifies, for example, that “[t]he JRO article and the SPIE article disclose work done at the direction of me and Dr. Wong in support of the joint research conducted by the two of us.” Ex. 2077 ¶ 2. Dr. Jaffray further testifies that “with the exception of Dr. Siewerdsen coming up with the pre-reconstruction image processing for the SPIE article, the [non-inventor] co-authors did not come up with the ideas for the systems described in those articles.” Id. ¶ 6. Dr. Jaffray describes the contributions of the co-authors as follows:” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“1999 JRO, Adler, and Depp renders obvious claims 1–13 and 20‒31. Pet. 28–59. Petitioner relies solely upon Jaffray 1999 SPIE and Jaffray 1999 JRO for several limitations of independent claims 1, 7, 20 and 26. For example, claim 1 recites “a cone-beam computed tomography system comprising: an x-ray source that moves about said object and emits toward said object from multiple positions around said object x-ray beams in a cone-beam form” and “a flat-panel imager positioned to receive x-rays after at least a portion of said x-ray beams pass through said object, said imager providing an image that contains three-dimensional information concerning said object based on a plurality of two-dimensional projection images.” Petitioner relies solely on Jaffray 1999 SPIE and Jaffray 1999 JRO to meet these claim limitations. See Pet. 36‒38 (citing Ex. 1005, 17, 25; Ex. 1006, 9; Ex. 1002 ¶¶ 82‒84). Independent claims 7, 20, and 26 recite substantially similar limitations that Petitioner again solely relies on Jaffray 1999 SPIE and Jaffray 1999 JRO as disclosing these limitations. As discussed above, however, we not persuaded that Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to claims 1–13 and 20‒31. Moreover, Petitioner does not contend that Adler or Depp teach these limitations. As a result, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that claims 1–13 and 20–31 are obvious over a combination of Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp.” slip op. at 32
Patent outcomesUS 7,471,765 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 7,471,765 - Unified Patents Inc. v. Hybrid Audio, LLCRehearing deniedPTAB · Apr 7, 2017 · IPR2016-01265 · APJ Monica S Ullagaddi · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended arguments and upholding its construction of “filter” to exclude QMF filters.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(d) Rehearing. . . . 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, an opposition, or a reply.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“evidence when we determined that the term “filter,” in the context of the ’281 patent and its prosecution history, excludes QMF filters. See id.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Reh’g Req.”) of our Decision Denying Institution (Paper 7, “Dec.”). Petitioner requests that we reconsider our decision to deny institution of inter partes review with respect to claims 5, 12, 18, 26, 34, 41, 48, 57, 66, 71, 83, 90, 95, 100, 107, 112, 114, 116, and 120 (“the challenged claims”) and our determination that Petitioner had not demonstrated a reasonable likelihood of prevailing in showing that the challenged claims of U.S. Patent No. RE40,281 (Ex. 1001, “the ’281 patent”) would have been obvious over various combinations of Jones, Adelson, and Veldhuis. For the reasons set forth below, the request is denied. slip op. at 2
Claim construction§ 103 obviousness - Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.Some claims unpatentablePTAB · Mar 6, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Final written decision
Claims 1, 3, 5, and 7–15 are unpatentable as anticipated by Rabinovich; Petitioner did not prove claims 1–15 obvious over Rabinovich.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner
“Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 16. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 19–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 21. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating object xs if the ratio of cnt(s,xs) over aff(xs) is greater than m, i.e., a non-zero value. PO Resp. 34; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication step. This means that Rabinovich will not replicate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that Rabinovich object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independently of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer. We are not persuaded by Petitioner’s argument that Rabinovich” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“pieces” Claim 1 recites “each file including a plurality of individual pieces, the pieces containing parts of the files.” Ex. 1002, 25:67–26:1. The other independent claims recite limitations commensurate in scope. Neither party proposes explicitly a construction of the term “piece.” Petitioner argues that “files are inherently composed of pieces in the form of bits that make up bytes, the bytes themselves being pieces of the file.” Pet. 32. Patent Owner argues that construing “piece” to cover “bits and bytes” of a file “would read out the ‘pieces’ limitation from the claim entirely” (PO Resp. at 29–30) and that “one of ordinary skill in the art would not read the ‘pieces’ limitation of the claim to include bits and bytes” (id. at 30). The claims themselves define “piece” by requiring that a “file” have a “plurality of individual pieces,” but do not establish a lower bound—i.e., a minimum number of bits or bytes—to qualify as a “piece.” Patent Owner identifies no support in the ’680 patent for its contention that “piece” or “pieces” excludes a byte or bytes of a file, relying instead solely on the testimony of Dr. Paul S. Jacobs. Id. (citing Ex. 2006 ¶¶ 38, 39). We are not persuaded by Dr. Jacobs’s conclusory testimony. Because “piece” and “pieces” are limited by the claims only to being a subset of a file and because a byte or collection of bytes of a file is a subset of that file, we are persuaded that the broadest reasonable interpretation of “piece” and “pieces” in light of the Specification of the ’680 patent encompasses a byte or bytes. slip op. at 7
Patent outcomesUS 7,904,680 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,904,680 - Unified Patents Inc. v. Cuica, LLCInstitution deniedPTAB · Feb 27, 2017 · IPR2016-01644 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution on claims 1–4, 6, 7, 9, and 10 because the cited combinations did not show the claimed means-plus-function limitations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “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 conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Unified would prevail in challenging claims 1–4, 6, 7, 9, and 10 of the ’983 patent as unpatentable under 35 U.S.C § 103(a). Pursuant to 35 U.S.C. § 314, we hereby decline to institute an inter partes review of the ’983 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“We agree with Unified’s view that the term “forresta” does not have ordinary meaning because the Specification indicates that the inventor intended to act as a lexicographer for the term based upon the use of quotation marks for identification of the term therein, and referring to “forresta” as “a set of values herein named” and “herein labeled.” Ex. 1001, Abstract, 3:31–33. The Specification states that the invention “overcomes the deficiencies of prior schemes for controlling content dissemination,” by using a “forresta” as “passive information” that is included “within the user’s request,” and that by “[u]sing the functionality provided by the forresta, each of the client requests and each of the server responses are individualized.” Id. at 3:28–34. On this record, we agree that the Specification supports Unified’s proposed construction of the term “forresta” as “any passive data which can be used to identify the user’s level of access to a repository of data,” and we adopt this construction for purposes of this Decision.” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“means-plus-function terms Independent claims 1 and 9 include several recitations of “means” or “means for” limitations. See Ex. 1001, 20:39–63, 22:43–23:35. Unified advocates that 35 U.S.C. § 112 ¶ 6 applies to the “means for allowing access” term of claim 1 and “means for organizing data” of claim 9 because the claim language does not provide sufficient structure to perform the claimed function.3 Pet. 16–18. We agree with Unified on this issue because the use of the word “means” in a claim element creates a rebuttable presumption that § 112 ¶ 6 applies, and there is no structure identified in the claims. Personalized Media Comm’s, LLC v. ITC, 161 F.3d 696, 703–04 (Fed. Cir. 1998). Unified identifies the “server computer 102 [that] contains . . . data access control (‘DAC’) process 106 of the present invention” as the structure for the “means for allowing access” term of claim 1, and the “reference tool 500,” depicted in Figure 5, as the structure of the “means for organizing data” of claim 9. Pet. 16–18 (citing Ex. 1001, 4:60–67, 7:57–8:5, Figs. 1, 2, 5; Ex. 1002 ¶¶ 25, 27).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 1006, 7:27–41; see Pet. 32.5 Unified appears to rely upon Shannon’s client computer number or machine addresses such as Internet Protocol (“IP”), Media Access Control (“MAC”) addresses, and/or usernames as teaching the claimed n-byte character sequence. Pet. 32. The claim limitation, however, requires the creation of a forresta identity as an n-byte character sequence, and Shannon merely discloses that there are different identifiers of a computer or of a user of a computer that may be associated with different groups and have different assigned levels of access. See Ex. 1006, 7:11–26. Even assuming the identifiers in Shannon are “an n-byte character sequence,” as recited by the claim, Shannon still fails to teach any “creating” because the computer numbers taught by Shannon—e.g., IP 5 In the Petition, Unified cites to Exhibit 1006 at 7:11–26 (Pet. 32), but the text quoted by Unified, and reproduced above, is at 7:27–41. The erroneous citation appears to be inadvertent error, and we rely on the textual portion of Shannon quoted in the Petition. address or MAC address—already exist and, therefore, are not “creat[ed]” by Shannon’s group/source database 203. Moreover, even assuming that Shannon teaches “creating” computer numbers, we still would not be persuaded that Shannon teaches the recited “means for creating said forresta identity” because Unified does not identify, and we cannot find, any teaching in Shannon of the use of the algorithm disclosed in the ’983 patent “for creating a forresta identity,” i.e., fcode process 900. Unified also does not argue that Shannon’s process is equivalent to fcode process 900, or that He teaches this limitation. We are, therefore, not persuaded that the asserted combination of Shannon and He teaches or suggests the limitation of “means for creating said forresta identity as an n-byte character sequence” of the “access control means” of claim 1. Because claims 2–4, 6, and 7 depend from independent claim 1, and because Unified cites no additional evidence in discussing these claims that would remedy the deficiency of the prior art discussed above with respect to claim 1, the obviousness challenge to dependent claims 2–4, 6, and 7 also is not persuasive.” slip op. at 21
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,466,983 - DISH Network L.L.C. v. TQ Beta, LLCNo claims unpatentablePTAB · Jan 30, 2017 · IPR2015-01791 · APJ John F Horvath · IPR · Final written decision
The Board entered adverse judgment against claims 11, 14, and 15; petitioner did not show claim 13 unpatentable under any of the three instituted grounds.
RulingsFinal written decision- Adverse judgmentAdverse judgmentGranted
“The Board’s rules permit a party to “request judgment against itself at any time during a proceeding.” 37 C.F.R § 42.73(b). The Board construes a party’s “[a]bandonment of the contest,” as a request for adverse judgment. 37 C.F.R § 42.73(b)(3). Accordingly, we construe Patent Owner’s lack of response to Petitioner’s various challenges to claims 11, 14, and 15, Patent Owner’s offer to cancel claims 11, 14, and 15, and Patent Owner’s admission that it was “not contesting those claims,” to be an “abandonment of the contest,” and a request for adverse judgment. See PO Resp. 2 n.2; see also Tr. 24:12–18. The request for entry of adverse judgment on claims 11, 14, and 15 is granted, concurrently with entry of adverse judgment on these same claims in DISH Network L.L.C. et al. v. TQ Beta, LLC, Case IPR2015-01756 (PTAB) (Paper 31).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction The Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142–46 (2016). Consistent with the rule of broadest reasonable interpretation, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner asks us to construe the terms “delay between first time frame and second time frame,” “first geographic location,” and “second geographic location.” Pet. 12–14. Petitioner does not propose any constructions for these terms, but asks they be construed in the manner implied by Patent Owner’s infringement contentions in the District Court litigation. Id. In our Decision to Institute, we declined to expressly construe these claim terms, finding their meaning was readily understood by persons of ordinary skill in the art. Dec. Inst. 6. Neither Petitioner nor Patent Owner contests that decision. See PO Resp. 12–13; Pet. Reply passim. Based on the record developed during this proceeding, we find no need to expressly construe these claim terms.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Although we agree with Petitioner that the ’456 patent discloses “encoding the received signal” using a lossy encoding algorithm, using a lossy encoding algorithm to encode a signal does not identify the signal to which the encoding algorithm is applied. Claim 13 requires encoding the received television signal—using a lossy or lossless encoding algorithm— and Patent Owner persuasively argues that Monteiro’s Primary Servers 20, by compressing an extracted audio stream only, are not encoding the received television signal, which has both audio and video components. See PO. Resp. 16–17; Ex. 2003, 2180 (defining a “television signal” as “the visual and aural signals that are broadcast together in order to produce the picture and sound components of a television program.”) (emphasis added).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“In an inter partes review, Petitioner bears the burden of proof. See 35 U.S.C. § 316(e). Thus, Petitioner must “demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Intelligent Bio–Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367-68 (Fed. Cir. 2016) (internal quotations omitted). Petitioner argues one reason to combine Monteiro and Compton is because both references are directed “to giving a user greater control of the time and place for reproduction of audio or visual information as desired by a user.” Pet. 55 (emphasis added). The fact that two references are directed to solving the same problem is an indication that the references are analogous art that can be combined. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). It is not, however, a reason, in itself, explaining why a person skilled in the art would have combined certain specific teachings of the references in a certain way. Even if it might have been obvious, given Monteiro’s teaching to provide audio and/or video communication services, to modify Monteiro’s processing of received television signals to encode and transmit the received signal’s audio and video components as taught by Compton, Petitioner did not make that argument and did not present the evidence in a manner supporting that theory. The Board does not “raise, address, and decide unpatentability theories never presented by the petitioner.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016). Instead, the Board’s decision is based “on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.” Id. Moreover, Petitioner’s assertion that Monteiro is directed to giving users greater control of the time and place for reproduction of audio/video information is not supported by the evidence. In Monteiro, it is the distributor of audio/video information that chooses the distribution time, not Monteiro’s user. For example, Monteiro discloses real-time information can be delivered to any number of users because “the same information is being sent at approximately the same time to everyone who is enabled to receive the information.” Ex. 1016, 2:11–16 (emphasis added). Monteiro further discloses that users can “choose[] to tune in or tune out a particular [distribution] channel, but do[] not choose the time at which the channel distributes its information.” Id. at 2:20–22 (emphasis added). Thus, Monteiro does not allow the user to choose the time for video reproduction, and Petitioner fails to articulate a reason why a skilled artisan would have been motivated to modify Monteiro to include the elements of Compton that would have allowed the user to choose the time for video reproduction.” slip op. at 15
Patent outcomesUS 7,203,456 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,203,456 - DISH Network L.L.C. v. TQ Beta, LLCAll claims unpatentablePTAB · Jan 30, 2017 · IPR2015-01756 · APJ John F Horvath · IPR · Final written decision
The Board entered adverse judgment against claims 11, 14, and 15, and held claims 13 and 16 unpatentable as anticipated by and obvious over Compton; claim 13 was also obvious over Compton and Shteyn.
RulingsFinal written decision- Adverse judgmentAdverse judgmentGranted
“The Board’s rules permit a party to “request judgment against itself at any time during a proceeding.” 37 C.F.R § 42.73(b). The Board construes a party’s “[a]bandonment of the contest,” as a request for adverse judgment. 37 C.F.R § 42.73(b)(4). Accordingly, we construe Patent Owner’s lack of response to Petitioner’s various challenges to claims 11, 14, and 15, Patent Owner’s offer to cancel claims 11, 14, and 15, and Patent Owner’s admission that it was “not contesting those claims,” to be an “abandonment of the contest” and a request for adverse judgment as to those claims. See PO Resp. 2 n.2; see also Tr. 24:12–18. The request for entry of adverse judgment on claims 11, 14, and 15 is granted, concurrently with entry of adverse judgment on these same claims in DISH Network L.L.C. et al. v. TQ Beta, LLC, Case IPR2015-01791 (PTAB) (Paper 30).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“B. Claim Construction The Board interprets claims of an unexpired patent using the broadest reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC, v. Lee, 136 S. Ct. 2131, 2142–46 (2016). Consistent with the rule of broadest reasonable interpretation, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner asks us to construe the terms “delay between first time frame and second time frame,” “first geographic location,” and “second geographic location.” Pet. 11–13. Petitioner does not propose any constructions for these terms, but requests they be construed in the manner implied by Patent Owner’s infringement contentions in the District Court litigation. Id. In our Decision to Institute, we declined to expressly construe these claim terms, finding their meaning was readily understood by persons of ordinary skill in the art. Dec. Inst. 6. Neither Petitioner nor Patent Owner contests that decision. See PO Resp. 13–14; Pet. Reply passim. Based on the record developed during this proceeding, we find no need to expressly construe these claim terms.” slip op. at 6
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Petitioner further asks us to construe the terms “means for receiving a second broadcast via a world wide network,” “means for decoding the encoded signal,” “means . . . for storing the decoded signal,” and “means for reproducing the information.” Pet. 14–15. Petitioner argues these terms should be construed pursuant to 35 U.S.C. § 112 ¶ 6, and identifies the following as structures corresponding to the recited functions: (a) a network coupling system or adapter for the “means for receiving a second broadcast via a world wide network,” (b) a media player that includes an MPEG-compatible decoder for the “means for decoding the encoded signal,” (c) a semiconductor or magnetic based memory for the “means . . . for storing the decoded signal,” and (d) a display system, display, or speakers for the “means for reproducing the information.” Id. In our Decision to Institute, upon reviewing the Specification of the ’456 patent, we agreed with Petitioner’s proposed constructions for these terms, and adopted them as our own. Dec. Inst. 7. Neither Petitioner nor Patent Owner contests our constructions of these terms. See PO Resp. 14; Pet. Reply passim. Based on the record developed during this proceeding, we continue to apply these constructions.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Compton fails to disclose encoding the same signal that was originally broadcast and received in a first location. . . . Instead, Compton discloses that what is encoded (specific clips out of an entire newscast) is very different from what was originally broadcast.” PO Resp. 21–22. According to Patent Owner, “there is no express disclosure in Compton of encoding the same signal that was received and then transmitting an encoded version of the received signal.” Id. at 24. Patent Owner further argues that Compton requires using edit decision lists to edit and segment the received signal, and therefore specifically teaches “to not encode and transmit the same signal that was received.” Id. at 23–24. We are not persuaded by Patent Owner’s arguments. frame, transmitting the signal to the second location, and receiving and decoding the signal at the second location in the second time frame. Although Compton’s system is capable of receiving multi-segmented CNN NEWSROOM broadcasts and encoding only segments of those broadcasts, Compton’s system is not so limited. See Pet. Reply 7–8. Significantly, Compton’s system specifies neither the content nor the segmentation of received CNN NEWSROOM broadcasts. For example, Compton discloses the CNN NEWSROOM broadcast is a daily 15 minute broadcast of arbitrary composition that “generally consists of 3–5 segments of 2–5 minutes each.” Ex. 1004, 11 (emphasis added). Consequently, Compton’s system does not depend on receiving CNN NEWSROOM broadcasts having any particular or well-defined segmentation. Instead, the system is configurable to receive and encode CNN NEWSROOM broadcasts of arbitrary segmentation, including broadcasts containing a single 15 minute segment. This flexibility is provided by the edit decision list, which can contain an arbitrary number of start and stop time codes to segment and encode whatever arbitrary number of CNN NEWSROOM program segments are received in a given day’s broadcast. Pet. Reply 8–9; Ex. 1004, 20–21. These start and stop time codes are received from CNN prior to the broadcast, and entered into the edit decision list. Ex. 1004, 20–21. slip op. at 15
Patent outcomesUS 7,203,456 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,203,456 - Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Jan 17, 2017 · IPR2015-01707 · APJ Michael W Kim · IPR · Final written decision
Claims 11–13 and 15–20 are unpatentable: claims 11, 12, and 16–20 as obvious over Payne, and claims 13 and 15 as obvious over Payne and Ackley.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“guidance in resolving this disagreement. To that end, the relevant portion of independent claim 11 recites “at least one server operative to store one or more of: a) content, b) links to content.” As an initial matter, controlling precedent from our reviewing court instructs us that different claim terms are presumed to have different meanings. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings.”); CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of . . . evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”). Accordingly, on a high level, each of the following express claim terms are presumed to have different meanings: “content”; and, “links to content.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We disagree with Patent Owner because Patent Owner’s assertions are misplaced. Most prominently, were O’Neil the only factual support for Patent Owner’s position, it may be persuasive. Petitioner’s proposed modification, however, relies not only on O’Neil, but also on Payne and the Declaration of Dr. Greenspun. Pet. 48–49 (citing Ex. 1003 ¶¶ 240, 241; Ex. 1006, 6:9–42, 8:38–53, 9:64–10:1, 5:16–25, and Fig. 5); see also Ex. 1003 ¶ 272. In short, we are persuaded that the following findings in Payne asserted by Petitioner are accurate, and that it supports adequately Petitioner’s proposed modification. The system of Payne already includes functionality requiring a user to log on to an account, Ex. 1006 at 6:9–42, 8:38–53, so it would have been trivial to place the log in functionality directly on the digital advertising documents, which are web pages, see id. at 9:64–10:1, 5:16–25, Fig. 5. Ex. 1003 at ¶ 240. When a patent simply arranges old elements, each performing the same function it had been known to perform and together yielding no more than one would expect from such an arrangement, the combination is obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Pet. 48; see also Reply 11–16. As counter-evidence, Patent Owner cites to paragraphs 46–48 of the Declaration of Dr. Papakonstantinou. Those paragraphs, however, suffer from the same logical flaw identified above.” slip op. at 23
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Insofar as Patent Owner is asserting that Payne and Ackley are non- analogous art, we disagree. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). To that end, Payne discloses that it relates to the field of “user-interactive network sales systems for implementing an open marketplace for goods or services over computer networks such as the Internet.” Ex. 1006, 1:14–17. Ackley discloses that it relates to the field “computer-based systems and methods that enable sales transactions between third parties through a communications network, such as internet auctions and classified systems.” Ex. 1008, 1:21–25. We see little daylight between these two fields, especially given that Ackley’s use of the word “such as” with “internet auctions” indicates that such “internet auctions” are a non-limiting example, and, thus, do not materially limit Ackley’s field of endeavor.” slip op. at 28
Patent outcomesUS 7,516,177 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,516,177 - Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Jan 17, 2017 · IPR2015-01706 · APJ Michael W Kim · IPR · Final written decision
Claims 11, 12, and 16–20 are unpatentable as obvious over MyLibrary.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In summary, we construe “content” as “electronic data embodying information for an individual or individuals,” and excluding “links to content,” but not excluding “content” associated with the “links to content.”5” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (Affirming that USPTO has statutory authority to construe claims according to 37 C.F.R. § 42.100(b).). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the Specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we generally give claim terms their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’”). For the purposes of this decision, and on this record, we determine that most claim terms do not need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy.).” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“7. Conclusion We are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 11, 12, and 16–20 are unpatentable as obvious in view of MyLibrary. In addition to findings we make above in connection with our analysis of claims 11, 12, and 16–20 as obvious in view MyLibrary, we also adopt as our findings Petitioner’s positions as to how MyLibrary discloses each of the limitations of claims 11, 12, and 16–20. We further adopt as our own Petitioner’s rationales for modifying MyLibrary, as referenced above.” slip op. at 32
Patent outcomesUS 7,516,177 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,516,177
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.