- DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentablePTAB · Jul 25, 2018 · IPR2017-00724 · APJ Michael W Kim · IPR · Final written decision
Claims 19 and 26 are unpatentable: claim 19 as anticipated by Hite and claim 26 as obvious over Hite and Baji; claims 32–36 and 41 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for patent owner
“Petitioner, with supporting testimony from Dr. Negus, argues that a person of ordinary skill in the art would have combined Hite’s system with Hill’s teaching of a high access partition in order to increase storage efficiency and address Hite’s goal of providing “advertisers with less waste and greater cost effectiveness.” Pet. 60; Ex. 1008 ¶ 599 (quoting Ex. 1009, 3:21–35; citing Ex. 1010, 4:54–57). According to Petitioner and Dr. Negus, one of ordinary skill would have had reason to combine Hite and Hill— using Hill’s “high access partition allocated for high access data storage” to “store the high access advertisement data of Hite”—to “yield[] the completely predictable and desirable result” of “decrease[d] read and write times of advertisement data stored in Hite’s” storage devices, including optional video storage device 456. Pet. 60, 65; Ex. 1008 ¶ 599; see also Tr. 107:10–15 (asserting the same). Patent Owner argues Dr. Negus’ assertion that advertising data is” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“at least one addressable and reserved storage space is a partitioned area of a hard disk drive.” Ex. 1003, 49:55–58. Petitioner refers to Hite’s disclosures that its storage devices “can be . . . disks.” Pet. 27–28 (quoting Ex. 1009, 12:6–11; citing Ex. 1009, 10:44–49). Dr. Negus testifies that “‘disks’ at the alleged time of the invention of the ’494 patent were commonly known as ‘hard disk drives.’” Ex. 1008 ¶ 680 (emphases omitted). Petitioner and Dr. Negus represent that a person of ordinary skill in the art would, therefore, “have understood Hite to disclose the use of an entire ‘disk’ (or ‘hard disk’) as the ‘Video Storage Device’” or the RD. Pet. 28 (citing Ex. 1008 ¶ 680). Petitioner, with supporting testimony from Dr. Negus, further contends that “[w]hen the entire ‘hard disk’ storage space is undivided, it is within the broadest reasonable interpretation of the claimed ‘partitioned area of a hard disk drive.’” Pet. 28; Ex. 1008 ¶¶ 680, 683. We disagree. Based on Hite’s explanation that “[t]he storage devices used to implement” its system “can be . . . disks” as well as the evidence before us that “disks” or “hard disks” were known as “hard disks drives” at the relevant time, we agree with Petitioner that an ordinarily skilled artisan would have understood Hite to use an entire disk, hard disk, or hard disk drive for OVS Device 456 and for the RD. Ex. 1009, 10:44–49, 12:6–11; Ex. 1008 ¶ 680; see Ex. 3002 (MICROSOFT COMPUTER DICTIONARY (5th ed. 2002)), 246 (explaining, within definition of “hard disk,” that a “hard disk” is “[a]lso called: hard disk drive” and defining “hard disk drive” as “See hard disk” (emphases omitted)). We part ways with Petitioner, however, in its proffered conclusion that such an “entire,” “undivided” hard disk or hard disk drive falls within the ordinary meaning of “partitioned area of a hard disk drive.” Pet. 28; Ex. 1008 ¶¶ 680, 683; see Ex. 3001, 1087 (defining “partition” as “divide into parts”). The claim language expressly requires a “partitioned area of”—not a whole, entire, or undivided—hard disk drive. Thus, we disagree that an entire hard disk or hard disk drive constitutes the “partitioned area of a hard disk drive” required by claim 32. Accordingly, we are unpersuaded that Hite discloses “wherein said at least one addressable and reserved storage space is a partitioned area of a hard disk drive,” as recited in dependent claim 32. Thus, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 32 is anticipated by Hite.” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“e. Conclusion Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is anticipated by Hite. 4. Dependent Claim 26 Claim 26 depends from independent claim 19 and recites, in relevant part, “processing circuitry configured to dynamically merge the particular advertising data with digital media content that is pre-stored in said at least one storage device.” Ex. 1003, 49:6–9. The plain claim language unambiguously and expressly requires that it is the “digital media content” that must be “pre-stored.” Yet in addressing the limitation, the Petition represents, and Dr. Negus testifies, that Hite discloses “‘particular advertising data’ that is ‘pre-stored in said at least one storage device’ (prior to the ‘dynamic merging’ with ‘digital media content’),” because commercials targeted for a display site or consumer according to CID codes are stored in the RD or video storage device. Pet. 26 (emphasis added); Ex. 1008 ¶ 646 (emphasis added). These assertions that Hite’s system pre-stores what Petitioner identifies as the “particular advertising data,” targeted commercials selected using CID codes, fail to address or show adequately that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as claim 26 explicitly requires. Thus, we are unpersuaded that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as recited in dependent claim 26. Accordingly, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 26 is anticipated by Hite.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“We agree with Patent Owner that Petitioner’s proffered rationale for combining Hite with Hill is not adequately supported by the record. Specifically, we agree with Patent Owner that Petitioner’s assertion that advertising data is “high access” data is a conclusory statement that fails to “articulate specific reasoning, based on evidence of record” to support an obviousness determination. In re: Magnum Oil Tools Int’l, Ltd., 829 F.3d at 1380. Although Hite discusses preempting broadcast commercials with stored commercials at broadcast breaks (see Ex. 1009, 7:24–30), Petitioner does not cite any portion of Hite, or provide any evidence at all, that explains how frequently the advertising data would have been accessed. Accordingly, because Petitioner has not shown adequately that it would have been obvious to one of ordinary skill in the art to combine Hite and Hill to arrive at “addressable and reserved storage space for storing the particular advertising data,” as recited in independent claim 19, we are unpersuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is obvious over Hite and Hill.” slip op. at 27
Patent outcomesUS 9,053,494 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,053,494 - DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentablePTAB · Jul 25, 2018 · IPR2017-00717 · APJ Michael W Kim · IPR · Final written decision
Claims 1–4, 6, 7, 19, 23, 24, and 27 are unpatentable as anticipated by Hite or obvious over Hite; claims 16–18 and 28 were not shown unpatentable.
RulingsFinal written decision- BurdenMixed
“preponderance of the evidence that the specified claims are unpatentable over the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent Owner that “any arguments for patentability not raised in the [Patent Owner Response] will be deemed waived.” Paper 10, 6; see also 37 C.F.R. § 42.23(a) (“Any material fact not specifically denied may be considered admitted.”).5 Additionally, the Board’s Trial Practice Guide states that the Patent Owner Response “should identify all the involved claims that are believed to be patentable and state the basis for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There are arguments and evidence advanced by Petitioner to support its positions, though, that Patent Owner chose not to address in either its Preliminary Response (Paper 7) or Response (Paper 22), or that was not addressed in the Decision on Institution (Paper 9). We have evaluated those unrebutted arguments and the evidence in support, and we find the Petitioner persuasively established, with sufficient evidence, the manner in which the asserted prior art teaches corresponding elements of the claims. Pet. 18–66 (citing Exs. 1008–1010) (unchallenged portions only). Based on the preponderance of the evidence before us, we conclude that the prior art identified by Petitioner describes all limitations of the reviewed claims that were not contested by the Patent Owner in either its Preliminary Response 5 For the reasons noted in our Order (Paper 43, 2–3), however, for this proceeding, we will also consider the arguments set forth in Patent Owner’s Preliminary Response. (Paper 7) or Response (Paper 22). In re NuVasive, 841 F.3d 966, 974 (2016). We address only the contested limitations below.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner
“correspond properly to the claimed storage device, because it is not capable of recording programming content selected by a user for later playback. PO Resp. 14. We are not persuaded by this argument because, as discussed above, we are persuaded that a proper construction of “storage device” does not require recording programming content for later playback. We are persuaded that Petitioner has shown sufficiently that Hite’s OVS Device 456 corresponds properly to the “at least one storage device,” as recited in each of independent claims 1 and 19.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner. Petitioner does not explain sufficiently, and the cited portions of Hite do not disclose, how the method by which the progression is made from “children’s aspirin” to “children’s chewable vitamins.” Dr. Negus’s testimony is similarly unavailing, as the only cited paragraph that plausibly supports their position, paragraph 484, is conclusory and unsupported. Absent such explanation or cited disclosure, we are unpersuaded that Petitioner has shown adequately that the recited “key word” is a part of the progression, as required to meet the claim. 8 At least a portion of Dr. Negus’s testimony aligns with this testimony of Dr. Kesan. Ex. 1008 ¶ 669 (“An exemplary targeting characteristic to optimize advertising format scenarios within Hite is the ‘context code’ that ‘could be appended to the commercial’s CID code’ to be ‘compared with program identification codes appended to the program signals’ such that a ‘commercial is displayed if it is in a specific channel or network or show’ as in the example of ‘skiing equipment commercials would be shown during a skiing down hill racing competition’ (emphasis added, see, for example, Ex. 1009 at 4:34–40).”. Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 4 is anticipated by Hite.” slip op. at 22
- Obviousness (§103) › KSR rationalesUnpatentableDecided for petitioner
“Essentially, Patent Owner assertions are the same as those advanced for the anticipation ground for the same claim. We agree with Patent Owner’s assertions for the same reasons as set forth above. Having said that, the assertions are misplaced, because this is an obviousness ground, and Patent Owner does not address the modification to Hite proposed by the Examiner. To that end, we are persuaded by Petitioner that it would have been obvious to code Hite’s viewer responses using keywords, as we agree that such a technique was common and well known at the time of the invention, and that it would have been an obvious design choice. Ex. 1008 ¶ 486. Indeed, Patent Owner acknowledges this possibility, as they do not assert that using key words would not have been known, just that it may not have been preferable under certain circumstances. PO Resp. 53 (citing Ex. 2003 ¶ 92). Insofar as Patent Owner may be asserting that such a preference teaches away from a modification, we have considered it, but determine that it is outweighed by the evidence of the ubiquity of key word searches at the time of the invention. Indeed, we are unclear as to how, other than using numbers or key words, such searches could have been performed. KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”).” slip op. at 39
Patent outcomesUS 9,053,494 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,053,494 - DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.All claims unpatentablePTAB · Jul 25, 2018 · CBM2017-00032 · APJ Meredith C Petravick · CBM · Final written decision
Claims 1–4, 6–7, 16–19, 23–24, 26–28, 32–36, and 41 are unpatentable under § 101; the petitioner did not show claims 17, 18, 23, 24, and 28 unpatentable under § 112.
RulingsFinal written decision- BurdenOther
“Considering each claim limitation, as well as each explicit citation to the specification expressly set forth in the Petition, we are persuaded that Petitioner has met its burden of showing, via analysis and evidence explicitly set forth on pages 6–7 of the Petition, that independent claim 1, as a whole, does not recite a technological feature that is novel or unobvious.” slip op. at 22
- Adverse judgmentOther
“Response (Paper 24, “PO Resp.”) and disclaimed claims 5, 25, 39, and 43 (Ex. 2006). Petitioner filed a Reply to the Patent Owner’s Response (Paper 38, “Pet. Reply”). Patent Owner filed a Sur-Reply (Paper 40, “PO Sur”), and Petitioner filed a Response to the Sur-Reply (Paper 41, “Pet. Sur”).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“II. ANALYSIS A. Claim Construction Petitioner and Patent Owner dispute the construction of certain claim terms. Pet. 23–28; PO Resp. 34–46. We apply the constructions of those terms set forth in Paper 49 in this decision.” slip op. at 7
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We agree. The preambles of independent claims 1, 19, and 33 expressly state as much. In particular, the preamble of claims 1 and 33 provide: “A system for providing targeted advertising to a multimedia content end user” (claim 1) or “a plurality of multimedia content end users” (claim 33). Ex. 1003, 46:13–14, 49:59–60. Likewise, claim 19’s preamble refers to “[a] device for providing targeted advertising to an end user.” Id. at 48:20–21. Taking claim 1 as a representative example, the remainder of the claim recites certain tangible components, namely a “storage device” and specifically, an “addressable and reserved storage space”; a “processor”; and “software implemented by” the processor. Id. at 46:13–28. The claim further requires the following functionalities: the processor “reserv[ing]” the storage space; the processor “select[ing] particular advertising data suitable for targeting to at least one end user based upon predefined criteria data”; the storage space “storing digital advertising data” and specifically, the “particular advertising data”; and the “particular advertising data” being “accessible to” the user. Id. Thus, we are persuaded that claim 1, taken as a whole, is focused on the concept of providing targeted advertising to a user. Further, the claims merely invoke computers as a tool to implement the concept of targeted advertising, and are not directed to any improvement in computer functionality. See Pet. 34; Ex. 1008 ¶¶ 944–945. The claims recite generic components and functionality. For example, in claim 1, the required components, outlined above—a storage device and specifically, a storage space, a processor, and software— are conventional. The recited functionalities—reserving the storage space for advertising data, selecting advertising data targeted to a user, storing that data, and making that data accessible to the user—are likewise basic and routine. As Petitioner points out, the specification expressly acknowledges that some of the tangible components of the recited system were known. See Pet. 7–8, 33–34, 40–75; Ex. 1008 ¶ 949. For instance, the specification refers to storage device 14 as “any medium known in the art for storing electronic data” and similarly, “any storage device for audio/video information known in the art.” Ex. 1003, 13:22–28, 15:1–5, 24:66–25:7; see id. at [57], 5:3–6, 21:42–22:2. The testimony of Petitioner’s declarant, Dr. Negus, also persuade us that each recited component and functionality was generic, conventional, and known. Ex. 1008 ¶¶ 945, 949–954; see id. ¶¶ 955–987.” slip op. at 26
Patent outcomesUS 9,053,494 unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Mayo · EnfishPatents in suitUS 9,053,494 - Titeflex Corporation v. Goodson Holdings, LLCAll claims unpatentablePTAB · Sep 8, 2017 · IPR2016-00731 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1–7 are unpatentable under § 103 over the combinations of Yamane, Ohki, Rivest, and the Design Guide stated in the conclusion.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“The “connecting means” is a means-plus-function limitation under 35 U.S.C. § 112, sixth paragraph, because the claim uses the word “means,” describes the function performed by the “means,” and recites no structure for performing the function. The function of the means-plus-function limitation is defined in claim 1 as “coupling the tubing to gas lines and appliances.” The clauses “at each end of the gas tubing” and “wherein the connecting means are made of a conductive material that has a higher conductivity than the gas tubing” do not modify the coupling function, but indicate that the “connection means” comprises at least two physical structures. The specification of the” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner constructionDecided for petitioner
“The specification clearly links “copper ground wire 601” and “wire mesh 650” to the functions of providing direct electrical contact between the connecting means at either end of the gas tubing and carrying electrical current between the connecting means in the event of electrical arcing and ground faults, thereby keeping the current off the gas tubing and preventing damage to the tubing. See, e.g., Ex. 1001, Abstract (stating the “[c]onductive wire (i.e. mesh surrounding the gas tubing) provides a direct 14 electrical contact between the end connectors”), 3:39–44 (“If an electrical charge goes to ground via the CSST or the appliance connector, such as from a lightning strike or an appliance short, the majority of the current is carried by the conductive wire rather than the CSST or appliance connector itself, thus preventing damage to the CSST from the current.”), 3:44–49 (“When using a mesh type shield, if the CSST or appliance connector receives an electrical charge from arcing to the side walls, the mesh serves as a current shunt and thus both shunts the current and causes the charge on the actual CSST (or appliance connector) wall to be dissipated over a larger area.” ), 3:35–37 (“Conductive ground wire, such as #8 AWG copper, provides a direct electrical contact between the end connectors.”), 5:10–15 (stating “[t]he present invention reduces the risk of . . . failures . . . by placing . . . copper ground wire 601 of ~#8 American Wire Gauge (AWG) or larger electrically in parallel with the length of CSST or the appliance connectors 610, 620”), 5:29–31 (stating “CSST flex line 600 is shrouded by . . . wire mesh 650, which is attached to . . . collars 630, 640 on each end”), 5:36–42 (stating the embodiments of Figures 6A and 6B “keep[] electrical current from damaging the flared ends of the CSST by providing an electrical shunt in the form of copper ground wire between the brass connectors on the ends” and that “[s]ince copper is a superior conductor to CSST, it can safely carry currents that the CSST was never designed to handle”). Based on the full record, applying the broadest reasonable interpretation of the claims in light of the specification, we construe the “conducting means” of claim 1 as: 15 Functions: providing direct electrical contact between the connecting means at either end of the gas tubing and carrying electrical current between the connecting means in the event of electrical arcing and ground faults, thereby keeping the current off the gas tubing and preventing damage to the tubing.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“3. Level of Ordinary Skill in the Art Section 103(a) forbids issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 21 KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103(a)). Petitioner argues that a person of ordinary skill in the art “would have been familiar with basic concepts of lightning-protection,” and such familiarity would have come from “an undergraduate degree in electrical engineering or [a] comparable subject,” or “one to three years of practical work experience designing and installing lightning-protection systems.” Pet. 10 (citing Ex. 1028 ¶¶ 56–57). Patent Owner does not propose a different level of ordinary skill in its Response. Based on our review of the ’763 patent, the types of problems and solutions described in the ’763 patent and cited prior art, and the testimony of the parties’ declarants, we agree with Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner has shown that the Design Guide was sufficiently accessible to the public interested in the art more than one year before July 18, 2005, the filing date of the ’448 patent, to which the ’763 patent claims priority. See In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989) (stating that to qualify as a printed publication, a document must have been sufficiently accessible to the public interested in the art before the critical date); Ex. 1001, [62]. “A reference is publicly accessible ‘upon a satisfactory showing that such document has been 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.’” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350–51 (Fed. Cir. 2008). Mr. Harris, business development manager for the Gastite Division of Petitioner, testifies that Exhibit 1021 is a “true and correct copy of excerpts 20 from the January 2004 Gastite Design and Installation Guide,” that the complete Design Guide “was published and made available to the public during or before January 2004 through Gastite’s website, www.gastite.com, through Gastite’s distributors, through Gastite’s certification and training programs, and directly from Gastite upon request.” Ex. 1026 ¶ 2. For these reasons, we determine that the Design Guide qualifies as a printed publication.” slip op. at 20
Patent outcomesUS 7,821,763 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,821,763 - Travelers Indemnity Company v. Integrated Claims Systems, LLCAll claims unpatentablePTAB · Aug 29, 2017 · IPR2016-00660 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–4, 14, 16, 19–21, 26, and 30–33 are unpatentable as obvious over Borghesi; claims 1 and 16 are also unpatentable over Beizer.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We determine that the claims do not indicate that the term “fields” must include label data and content data. Claim 1, for example, indicates data is received in fields, a filled identifiable field contains an image, fields of a GUI contain an image and data from filled identifiable fields, and data from filled identifiable fields is used to complete at least one field in a data bank. See Ex. 1001, 44:28–52. Patent Owner’s proposed interpretation of “fields” is narrower than the claims because the claims do not require expressly that the fields also contain label data or are delimited. The claims require receiving first and second data into identifiable fields, and do not indicate the fields are also “data comprised of ‘label data’ and ‘content data,’” as proposed by Patent Owner. Therefore, we determine that Patent Owner’s interpretation is narrower than and inconsistent with the claims. Turning next to the specification, Patent Owner relies on portions that describe data packages that include data fields with a digital attachment (Ex. 1001, 10:55–59), boxes in which alpha-numeric characters are entered to “fill a ‘field,’ a delimited alpha-numeric character string” (id. at 12:50–55, 22:30–35, 32:23–28), how fields are used and created from various forms to provide customized claim forms (id. at 12:55–13:23, 22:35–23:3, 32:28–63), how some form of signature can be provided in a field (id. at 33:11–20), and how PAC forms are processed (id. at 33:21–63, 34:38–40). See PO Resp. 13–15. Although the specification describes a field as being a delimited alpha-numeric character string when alpha-numeric characters are entered (Ex. 1001, 12:50–55, 22:30–35, 32:23–28), Patent Owner also cites to a portion of the specification that explains “some form of signature can be provided in the appropriate field,” such as by “a special electronic pad and pen . . . that when the patient signs on the pad his signature is affixed to the electronic PAC form” (id. at 33:16–20; see also id. at 13:44–48, 23:23–27). See PO Resp. 15 (citing Ex. 1001, 33:10–63). The specification does not indicate that such a signature would be an alpha-numeric character string or delimited. The specification also states that the “present invention encompasses the preparation, transmission, and processing of data packages including a plurality of data fields wherein at least one of the data fields is a digital attachment, e.g., a digital or graphic image.” Ex. 1001, 10:55–59. Nowhere does the specification describe a field as delimited when a digital attachment or digital or graphic image is entered. In view of the above, we also find that the specification of the ’129 patent does not provide a clear or precise definition of “fields.” Any special definitions for claim terms or phrases must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Instead of reasonable clarity, deliberateness, and precision, we find that the specification does not describe expressly that a field is “data comprised of ‘label data’ and ‘content data,’” as proposed by Patent Owner.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, and the sophistication of the technology. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). With support from the testimony of its declarant, Dr. Clark, Petitioner argues that a person of ordinary skill in the art at the time of the invention “would have a bachelor’s degree in Computer Science or Computer Engineering, or two years of work experience in the field of network data processing.” Pet 3 n.1 (citing Clark Decl. ¶ 20). No competing proposed definition of ordinary skill in the art or rebuttal to Petitioner’s proposal is offered by Patent Owner or its declarant, Mr. Gross. See PO Resp.; Gross Decl. After considering the disclosures of the ’129 patent and the cited prior art references, we adopt Petitioner’s proposal.” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“argue for a meaning of “fields.” See PO Resp. 12–16; Pet. Reply 3–10. Patent Owner, however, cites to paragraphs 12 and 13 of its Gross Declaration that, in turn, rely on portions of the specification discussed above and a definition from the Microsoft Computer Dictionary. See PO Resp. 13, 15 (citing Gross Decl. ¶¶ 12–13). For the reasons above, we determine that one of ordinary skill in the art would understand “field” as used in the cited portions of the specification and elsewhere to have a meaning broader than Patent Owner’s proposed interpretation. We also agree with Petitioner that Patent Owner did not provide an evidentiary record to support its reliance on the Microsoft Computer Dictionary because it did not file the dictionary excerpt as an exhibit. See 37 C.F.R. § 42.63(a) (“All evidence must be filed in the form of an exhibit.”). Even if it were filed as an exhibit, a dictionary definition of “delimit” would not persuade us Patent Owner’s proposed interpretation is correct, because, as explained above, Patent Owner does not convince us that a field must be delimited. Similarly, the testimony of Mr. Gross, on which Patent Owner relies, is also unpersuasive because its starting point is the premise that a field must be delimited. See Gross Decl. ¶ 12 (“A person of ordinary skill in the art would know, at the time the applications leading to the patents were filed, that in light of the specification the term ‘field’ means a delimited alpha-numeric character string.”). Neither Patent Owner nor Mr. Gross provides any persuasive evidence or explanation why delimiting inheres in the meaning of “field” as used in the ’129 patent.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“identifiable fields, wherein at least one of the first set of filled identifiable fields contains at least one image.” Pet. 17 (arguing a “first set of data input into filled identifiable fields, for example, is created by the initial estimate and images sent from the body shop to the appraiser through a workfile”) (citing Ex. 1002, 17:56–60; Clark Decl. ¶ 41), 19–24 (citing Ex. 1002, 5:26– 30, 6:56–67, 7:24–28, 7:40–53, 8:65–9:21, 9:29–32, 10:43–45, 11:28–42, 13:42–43, 14:40–47, 17:52–18:1, Figs. 6, 7, 9–15, 19). We find that Borghesi teaches that “[a]ll the information related to a given claim is preferably contained in a single workfile such as an electronic datafile 24” (Ex. 1002, 5:26–30), that “[o]n each computer . . . a user views datafiles and other insurance claim processing information . . . and can enter . . . data” (id. at 7:24–28), that “[e]ach remote computer . . . provides an interface for a user to access the . . . workfile” that preferably is a “graphic user interface” (id. at 7:40–46), and that in the “graphic user interface . . . , an opened insurance claim datafile has a plurality of tabbed sections, each tabbed section representing a separate view of the datafile” (id. at 7:49–51). We also find that Borghesi teaches that in the “ADMIN” tab are several frames, one of which is the “parties” frame, shown in Figure 6, which includes “a number of text fields 110 for entering or viewing name, address and telephone information.” Id. at 9:18–20, 9:29–32, Fig. 6. We further find that Borghesi teaches that “[o]ther options a user has while viewing items in the in box are to . . . attach 184 the transaction . . . to a workfile in the in process box” and the “transaction may be a digitized image.” Id. at 11:28– 31, 11:35–37. Borghesi also teaches that a “digitized image of the damaged vehicle is appended to the workfile.” Id. at 6:60–61. Petitioner also persuades us that one of ordinary skill in the art would have at least found it obvious to display a GUI where at least one of the fields contains an image and at least one of the fields is filled with data, such as information relating to the image, at least because the user would be able to more efficiently review relevant materials in preparing a work order.” slip op. at 22
Patent outcomesUS 7,694,129 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,694,129 - RPX Corporation v. Rothschild Connected Devices Innovations, LLCAll claims unpatentablePTAB · Jul 6, 2017 · IPR2016-00443 · APJ Scott C Moore · IPR · Final written decision
Claims 1–8 are unpatentable under § 103: claims 1–7 over the Zimmerman-based combinations, and claims 1 and 8 over the Omnisphere- and Zimmerman-based grounds, respectively.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“would have had an undergraduate degree in computer science, electrical engineering, or computer engineering, or an equivalent degree, and at least two years of experience with network control systems, or have an equivalent amount of relevant work or research experience. Pet. 10. In our Decision on Institution, we declined to adopt the specific formulation set forth by Petitioner, and instead treated the cited references as being representative of the level of ordinary skill in the art. Dec. on Inst. 12 n.5 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). In its Response, Patent Owner does not propose a specific formulation regarding the level of skill in the art, and does not object to treating the cited references as being representative of the level of ordinary skill in the art. Petitioner also does not object in its Reply to treating the cited references as being representative of the level of skill in the art. On this record, we decline to adopt a specific formulation regarding the level of ordinary skill in the art, and instead find that the cited references are representative of the level of ordinary skill in the art. See Okajima, 261 F.3d at 1355 (the level of ordinary skill in the art may be evidenced by the cited references themselves). However, our analysis of the issues below would have been the same had we adopted Petitioner’s proposed formulation.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, preambles are not construed as claim limitations. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). “[W]here a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). We find, on this record, that the body of claim 1 defines a structurally complete invention. In particular, the body of claim 1 defines a system that includes a remote server, and a predetermined product that includes a first communication module, wherein the remote server is configured to perform certain recited actions and to interact with the first communication module in the recited manner. Furthermore, the preamble of claim 1 recites “[a] system for customizing a product according to a user’s preferences.” That is, claim 1 recites a system with the intended purpose of customizing a product. We determine on this record that the preamble of claim 1 is a non-limiting statement of intended use.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“Confirmation of Undisputed Claim Construction In our Decision on Institution, we expressly construed the claim term “predetermined product” by determining that this claim term “encompasses a type or class of product,” and rejecting “Patent Owner’s contention that this claim term is limited to a specific, unique product in customized form.” Dec. on Inst. 9. The parties do not dispute our prior construction of this claim term. Thus, on this record and to the extent necessary for our Final Written Decision, we see no reason to disturb our prior construction of “predetermined product,” and adopt the supporting reasoning from our Decision on Institution. See Dec. on Inst. 7–9. Accordingly, the claim term “predetermined product” encompasses a type or class of product, and is not limited to a specific, unique product in customized form. 3.” slip op. at 9
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We determine that Patent Owner has not identified objective indicia of nonobviousness. For example, Patent Owner does not allege, much less persuasively show, that the cited mass customization literature demonstrates a long-felt but unresolved need that is satisfied by the claimed invention, or the failure of others to solve a problem addressed by the claimed invention. See PO Resp. 5–7. Patent Owner uses the cited mass customization literature to bolster its claim construction arguments, but does not offer any coherent or persuasive explanation of how this literature would constitute objective evidence that the claims of the ’090 patent are nonobvious. See id. at 4–7, 11–21. Patent Owner also has failed to establish any nexus between this alleged objective evidence of nonobviousness and the claims of the ’090 patent. Our reviewing court has held that objective evidence of nonobviousness must be “reasonably commensurate with the scope of the claims.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Patent Owner does not sufficiently explain how the mass customization literature relates to the claimed invention, or to any problem addressed by the claimed invention. For example, Patent Owner does not persuasively explain how the challenged claims relate to the specific need that is allegedly identified in the mass customization literature, i.e., to “kee[p] the products affordable.” PO Resp. 4. Patent Owner does not cite sufficient persuasive evidence that the inventor of the ’090 patent was attempting to address the issue of cost, or that the claimed invention would result in less-costly product as compared to the prior art. See id. at 4–7. Accordingly, even if Patent Owner had identified a specific secondary consideration that is evidenced by the cited mass customization literature, this evidence would not be entitled to substantial weight in the obviousness analysis. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (“For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.”); In re Kao, 639 F.3d at 1068 (same). 3.” slip op. at 13
Patent outcomesUS 8,788,090 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,788,090 - Varian Medical Systems, Inc. v. William Beaumont Hospital And Elekta, Ltd.All claims unpatentablePTAB · May 4, 2017 · IPR2016-00187 · APJ Michael W Kim · IPR · Final written decision
Claims 25–29 and 35–42 are unpatentable: claims 25–29 and 36–39 as obvious, and claims 35 and 40–42 as anticipated.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“2. Analysis Petitioner asserts that Jaffray ’97 anticipates claims 35 and 40–42. Pet. 41–45 (citing Exs. 1003, 1004). For example, independent claim 35 recites “providing an existing radiation therapy system that comprises a radiation source that is supported on a support structure.” Petitioner cites Jaffray ’97 for disclosing a rotating gantry including an MV source. Independent claim 35 recites further “attaching an imager that does not directly 5 We refer to the original pagination of Jaffray ’97, and not Petitioner’s pagination. face said radiation source to said support structure.” Petitioner cites Jaffray ’97 for disclosing a kV imager that does not directly face the MV source. Petitioner provides similar analyses for claims 40–42. Patent Owner does not dispute any of the Petitioner’s assertions. 3. Conclusion After considering all of the above-referenced evidence and arguments anew, in light of the appropriate standard, we are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 35 and 40–42 are anticipated by Jaffray ’97.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the framework for determining obviousness as set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court summarized the four factual inquiries set forth in Graham that we apply in determining whether a claim is reasonably likely to be unpatentable as obvious under 35 U.S.C. § 103(a) as follows: 1. determining the scope and content of the prior art, 2. ascertaining the differences between the prior art and the claims at issue, 3. resolving the level of ordinary skill in the pertinent art, and 4. considering objective evidence present in the application indicating obviousness or nonobviousness. KSR, 550 U.S. at 406. With these standards in mind, we address the challenges based on obviousness below.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner’s arguments are not persuasive. Initially, we note that Patent Owner does not dispute that Span discloses the movable imager support system recited in claim 25. Nor does Patent Owner dispute that Span’s movable support system is a known improvement. Ex. 1005, 2:59– 63 (disclosing that due to the movable support structure, imaging equipment “can be very easily moved by rotation of the arm 14 about the pivot 24”). Instead, Patent Owner alleges that one of ordinary skill would not have modified the CBCT system of Jaffray ’97 to include the Span’s movable support system, for the known improvement of facilitating movement of a detector toward and away from a patient, because there is no need for such an improvement for a CBCT system. PO Resp. 14–20 (citing Exs. 1005, 1:12–21, 1:30–35, 2:35–36, 2:38–44, 2:48–55, 2:59–63, 3:2–4, Fig. 1a; 2080 ¶¶ 78–85, 100–103, 117). Patent Owner’s argument is misplaced, because Petitioner’s proffered modification is for the known improvement of movement generally, and not limited to the movement of a detector toward and away from a patient disclosed in Span. Specifically, Petitioner asserts: Jaffray ’97 does suggest that “important characteristics [of the imaging system] include . . . (iii) flexibility of use . . . and, (v) convenience.” (Id. at 5.) Span addresses this flexibility and convenience, explaining that, with the disclosed support structure, equipment “can be very easily moved by rotation of the arm 14 about the pivot 24 . . . .’’ (Ex. 1005 at 2:59–63.) Pet. 27–28. KSR Int’l Co., 550 U.S. at 419 (“The second error of the Court of Appeals lay in its assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem.”). The Petition does not rely on the movement in Span being limited to “toward and away from a patient.” See generally Pet. 27–28.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“It is my opinion that a person of ordinary skill in the art relevant to the ’592 Patent would be a person with a graduate degree (M.S. or Ph.D.) in medical physics or a related field (e.g. Physics, Engineering) and three years of experience in radiation oncology physics, imaging science, and image processing related to radiation oncology applications beyond the completion date of their degree. Ex. 2080 ¶ 17. The Declarants are in agreement that the person of ordinary skill in the art has a relatively high level of skill, and also are in agreement as to the basic qualifications for that person. Accordingly, we adopt Patent Owner’s Declarant’s articulation of the level of ordinary skill as our own, if for no other reason than for conciseness, with the understanding that the differences between the proffered levels of ordinary skill are, at best, limited and inconsequential in our analysis.” slip op. at 9
Patent outcomesUS 7,826,592 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 7,826,592 - Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentablePTAB · May 4, 2017 · IPR2016-00166 · APJ Michael W Kim · IPR · Final written decision
Petitioner did not prove claims 43–46, 48–55, 57, 59–66, and 68 unpatentable; strong evidence of industry praise and long-felt need, with commercial success and copying, outweighed the obviousness case.
RulingsFinal written decision- 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, and depth” are just such information. We have considered Patent Owner’s above-cited portions of the ’502 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 42–48 and 51–55 certainly disclose that “volume” is desirable, but does not provide any equivalence between “three dimensional information” and “volume.” Indeed, column 2, lines 54–55 disclose “provide information regarding the location of soft-tissue target volumes,” indicating that “information” is a subset of “volume.”” slip op. at 8
- 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’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. 1302 ¶ 14. 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’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 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“the radiation therapy systems of Adler/Depp to include the CBCT/FPI system of Cho/Antonuk/Jaffray 1997, on pages 33–37 of the Petition which, for the reasons set forth below, we agree with and adopt. Patent Owner asserts that one of ordinary skill would not have modified the radiation therapy systems of Adler/Depp to include the CBCT/FPI system of Cho/Antonuk/Jaffray 1997, because both timing and dosage considerations teach away from the proposed combination. PO Resp. 29–36. We disagree. We begin with timing considerations. PO Resp. 29–34. Fundamentally, Patent Owner asserts that replacing the orthogonal 2-D images projections of Adler/Depp with the CBCT acquired images of Cho/Antonuk/Jaffray 1997 would represent “very poor methodology” because the CBCT system takes a significantly longer period of time to acquire and process images from a patient than the 2-D image system, e.g., 60 seconds to acquire the image, and 30–50 minutes to reconstruct the entire CT conebeam data set. PO Resp. 33–34. According to Patent Owner, such a delay is detrimental in the context of sending targeted radiation to a specific volume within the patient, because during that time, the patient from whom the images was acquired would most likely have shifted positions. PO Resp. 33–35. 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. 31. 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 ¶¶ 107, 123, 126 (citing Ex. 1304, 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.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“the radiation therapy systems of Adler/Depp to include the CBCT/FPI system of Cho/Antonuk/Jaffray 1997, on pages 33–37 of the Petition which, for the reasons set forth below, we agree with and adopt. Patent Owner asserts that one of ordinary skill would not have modified the radiation therapy systems of Adler/Depp to include the CBCT/FPI system of Cho/Antonuk/Jaffray 1997, because both timing and dosage considerations teach away from the proposed combination. PO Resp. 29–36. We disagree. We begin with timing considerations. PO Resp. 29–34. Fundamentally, Patent Owner asserts that replacing the orthogonal 2-D images projections of Adler/Depp with the CBCT acquired images of Cho/Antonuk/Jaffray 1997 would represent “very poor methodology” because the CBCT system takes a significantly longer period of time to acquire and process images from a patient than the 2-D image system, e.g., 60 seconds to acquire the image, and 30–50 minutes to reconstruct the entire CT conebeam data set. PO Resp. 33–34. According to Patent Owner, such a delay is detrimental in the context of sending targeted radiation to a specific volume within the patient, because during that time, the patient from whom the images was acquired would most likely have shifted positions. PO Resp. 33–35. 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. 31. 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 ¶¶ 107, 123, 126 (citing Ex. 1304, 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.” slip op. at 19
Patent outcomesUS 6,842,502 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,842,502 - Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentablePTAB · May 4, 2017 · IPR2016-00162 · APJ Michael W Kim · IPR · Final written decision
Claims 1–14, 16–29, 33, and 35–38 were not held unpatentable because the strong evidence of industry praise and long-felt need, with other objective evidence, outweighed the obviousness showing.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“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)). Under the broadest reasonable construction standard, claim terms are generally given their ordinary and customary meaning, as would have been understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For the purposes of this Decision, we determine that only the following claim terms need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). 7 A.L. Boyer, Laser “cross-hair” sidelight, Med. Phys., 5:58-60 (1978) (Ex. 1108, “Boyer”).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“dimensional information” appears facially to be co-extensive with any information relevant to three dimensions. We discern that “length, width, and depth” are just such information. We have considered Patent Owner’s above-cited portions of the ’502 Patent, but are unpersuaded that those portions narrow “three dimensional information” with sufficient “reasonable 8 In evaluating the assertions set forth in the Declaration of James Balter, Ph.D., in Support of Petitioner’s 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). 9 In the Decision on Institution, we preliminarily agreed with Petitioner’s proposed construction of “three dimensional information.” Dec. 7–8. 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 42–48 and 51–55 certainly disclose that “volume” is desirable, but does not provide any equivalence between “three dimensional information” and “volume.” Indeed, column 2, lines 54–55 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 40–43, 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 62, through column 10, line 5, clearly refers to “volumetric data,” but does not indicate its relation to “three dimensional information.” In yet another example, column 16, lines 43–45 and 58–62, 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 regard 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. The claim limitation at issue, however, reads “an image of said object, wherein said image contains at least three dimensional information of said object based on one rotation of said x-ray source around said object” (emphasis added). Accordingly, the claim limitation does not preclude an image having more information than “information concerning three dimensions of an object (such as length, width, and depth),” such as “a volumetric image of an object generated by reconstructing 2-D 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 concerning three dimensions of an object (such as length, width, and depth).”” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“In the Institution Decision, we preliminary determined that “we are not persuaded that the term ‘computer’ fails to recite sufficiently definite structure. As a result, we decline to construe this limitation as a means-plusfunction limitation in accordance with § 112 ¶ 6.” Dec. 10. In its Response, Patent Owner agreed with the Board’s preliminary determination. PO Resp. 11. Petitioner did not address this construction in its Reply. See generally Pet. Reply 1–4. After considering our preliminary determination anew, in light a complete trial record, we remain unpersuaded that the term “computer” fails to recite sufficiently definite structure. Accordingly, we decline to construe this limitation as a means-plus-function limitation in accordance with § 112 ¶ 6.” slip op. at 10
- 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’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. 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’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 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 10
Patent outcomesUS 6,842,502 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,842,502 - Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentablePTAB · May 4, 2017 · IPR2016-00160 · APJ Matthew R Clements · IPR · Final written decision
Claims 1–14, 16–29, 33, and 35–38 were not held unpatentable because Petitioner failed to show the Jaffray references were prior art or that the asserted combination rendered the claims obvious.
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 “said computer receives said image of said object and based on said image sends a signal to said radiation source that controls said path of said radiation source.” 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 9 Both the burden of production and the burden of persuasion. 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 they are based upon a construction of the disputed limitation that excludes human intervention. We have construed that limitation, however, to encompass a person or user operating the computer to perform the recited control functions. In post-hearing briefing, both parties agree that this is the proper construction. Papers 80, 81. As a result, even if we assume, as Petitioner contends in Reply, that a person of ordinary skill in the art reading the ’590 Application would have understood that “the step of controlling the path of the beam based on image data was performed by a human operator, not a computer acting autonomously” (Pet. Reply 9) and that “[t]he computer elements connected to table control . . . are all operated in response to commands received from a human operator, and none are tied to table movements specifically based on image data” (id.), it would not show a lack of support for the disputed limitation, because the disputed limitation does not exclude human intervention. Accordingly, we determine that Petitioner has not shown sufficiently,” slip op. at 18
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“Having considered the arguments and evidence, we agree with Patent Owner that the ’590 Application provides sufficient written description support for “said computer receives said image of said object and based on said image sends a signal to said radiation source that controls said path of said radiation source.” 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 9 Both the burden of production and the burden of persuasion. 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 they are based upon a construction of the disputed limitation that excludes human intervention. We have construed that limitation, however, to encompass a person or user operating the computer to perform the recited control functions. In post-hearing briefing, both parties agree that this is the proper construction. Papers 80, 81. As a result, even if we assume, as Petitioner contends in Reply, that a person of ordinary skill in the art reading the ’590 Application would have understood that “the step of controlling the path of the beam based on image data was performed by a human operator, not a computer acting autonomously” (Pet. Reply 9) and that “[t]he computer elements connected to table control . . . are all operated in response to commands received from a human operator, and none are tied to table movements specifically based on image data” (id.), it would not show a lack of support for the disputed limitation, because the disputed limitation does not exclude human intervention. Accordingly, we determine that Petitioner has not shown sufficiently, on this record, that both Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to independent claim 1, and the challenged claims that depend therefrom, under 35 U.S.C. § 102(b).” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Having considered the parties arguments and evidence regarding “[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 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 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. 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 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“D. The Challenged Claims – Obviousness over Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp Petitioner asserts that a combination of Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp renders obvious claims 1–14, 16–29, 33, and 35–38. Pet. 18–58. Petitioner relies solely upon Jaffray 1999 SPIE and Jaffray 1999 JRO for several limitations of claim 1, including, for example, “a cone-beam computed tomography system comprising: an x-ray source that emits an x-ray beam in a cone-beam form towards said object,” and “a flat-panel imager receiving x-rays after they pass through the object, said imager providing an image of said object.” Pet. 29–31. As discussed above, however, we not persuaded that Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to claims 1–14, 16–29, 33, and 35–38. 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 1–14, 16–29, 33, and 35–38 are obvious over a combination of Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp.” slip op. at 31
Patent outcomesUS 6,842,502 not shown unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 6,842,502
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.