• NVIDIA Corporation v. Invensas CorporationAll claims unpatentable
  PTAB · Sep 1, 2021 · IPR2020-00603 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1–8 are unpatentable under §103: claims 1–4 and 8 over Jaso and Stine1998, with alternative grounds adding Pramanik1997; claims 5–7 over combinations adding Robinson.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “Patent Owner is correct that “[a] patent’s statement of the described invention’s purpose informs the proper construction of claim terms.” Kaken Pharm. Co. v. Iancu, 952 F.3d 1346, 1352 (Fed. Cir. 2020). Nevertheless, a claim is not required to encompass all of the advantages or purposes of the invention. See Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed.Cir.2008) (“An invention may that every claim directed to that invention be limited to encompass all of them.”) (citations omitted). Additionally, notwithstanding the importance of a specification, limitations in the specification must not be read into the claims absent lexicography or disclaimer/disavowal. Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’231 patent “would have had a Bachelor of Science degree in physics, chemistry, materials science, electrical engineering, mechanical engineering, or related discipline, in addition to 3–5 years of experience in the fabrication of integrated circuit devices. Additional years of experience could substitute for formal education, and vice versa.” Pet. 22 (citing Ex. 1002 ¶ 35). Patent Owner “does not dispute Petitioner’s description of the qualifications of a POSA for the purposes of this IPR.” PO Resp. 9. We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’231 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “look at Figure 8 and form any understanding of its structures at all” and thus, Dr. Boning’s opinions should be disregarded in their entirety. Id. at 44 (citing Ex. 2011 ¶¶ 191–199). We find that the explanations by Dr. Boning are a reasonable attempt to explain what one of ordinary skill in the art, with general background knowledge in the art, would glean from Figure 8 of Stine 1998 and are supported by additional cited references, such as Maly1991 and the StineThesis. See, e.g., Ex. 1052 ¶¶ 72 (citing Maly Fig. 4), 92 (citing Ex. 2016 (StineThesis), 92 (Ex. 2016, 165), 93. “[A] skilled artisan’s background knowledge is relevant to the reading of the prior art on which the obviousness challenge is based and . . . it is permissible, and sometimes even necessary, to establish such background knowledge by pointing to other prior art.” Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017). Despite Patent Owner’s criticism, Dr. Boning’s testimony cited by Patent Owner evidences Dr. Boning’s opinion that a person of ordinary skill in the art was aware of common artifacts and limitations in downscaled Boning also relies on secondary references to support his testimony about the general background knowledge of one of ordinary skill in the art. Ex. 1002 ¶¶ 65 (citing Ex. 1009 (Mead Textbook)), 74 (citing Ex. 1010 (Rabaey Textbook)), 75, 76, 152–157. Thus, we credit Dr. Boning’s testimony and do not disregard his testimony wholesale based on those alleged inconsistencies. Below, we focus on the testimony that is at issue in this IPR. There are three main reasons why Figure 8 of Stine1998 is at issue. First, Petitioner asserts that the white areas in Figure 8 are open areas between a wide trench and narrow trenches with no metal lines into which dummy conductors would be placed. See Pet. 37–38; Ex. 1002 ¶¶ 112, 152, 157. Patent Owner opposes that contention (PO Resp. 56) but, as explained in association with claim construction, we do not rely on a construction that requires no intervening trenches or other structures between the wide trench and narrow trenches. Additionally, Petitioner relies on the typical layout of chips and the figures of Jaso to support its interpretation of Figure 8. Pet. 45–46, 52–53. 13 Dr. Givens testifies that, because there is a discrepancy in Dr. Boning’s testimony regarding the inserts for various regions of Figure 8 of Stine1998 and the lack of any other inserts one of ordinary skill in the art would not assume the white areas contain no metal lines. Ex. 2011 ¶¶ 195–196. And, based on his magnification experiment, Dr. Givens testifies that Figure 4 of Maly1991 may contain metal lines. Id. We consider the fact that Dr. Givens’s testimony is largely based on what a person of ordinary skill in the art could discern from Figure 8 of Stine1998 and Figure 4 of Maly1991 alone rather than what one or ordinary skill in the art may glean based on their background knowledge in the art—for example whether Figure 8 of Stine1998 is consistent with conventional chip designs as Dr. Boning testified. Thus, we give slightly more weight to Dr. Boning’s testimony.” slip op. at 35

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Analysis of Patent Owner’s Arguments 1) Prior Art Does not “Look for” a Specific Configuration Patent Owner argues “Stine1998 does not tell the POSA to look for a specific configuration of structures, and then insert dummy metal into a particular location within that configuration (as the Relevant Solution does.)” PO Resp. 36–37. Patent Owner also argues that Jaso and Stine1998 “together accordingly tell the POSA to focus on pattern density, and to take steps to ensure that variations in pattern density across the chip are minimized” as opposed to looking for the particular configuration called out by the claims. Id. at 58. There is no requirement in the claims for the prior art to “look for” specific structures, but rather it must disclose those structure required by the claims. For the reasons articulated in the Petition, we agree that the combined teachings of Jaso and Stine1998 teach the structure required by claim 1. Pet. 38–39 (citing Ex. 1004, code (57), 3:29–64; Ex. 1005, 668), 50–52 (citing Ex. 1005, 670). We also credit Dr. Boning’s testimony that these references’ teachings “to locate dummies in sparse regions proximate to wide and narrow lines...would obviously include placing dummies in regions between such lines.” Ex. 1002 ¶ 183 (emphasis added). The fact that Jaso and Stine1998 may not purposefully seek out the configuration relied on by Patent Owner does not undermine Petitioner’s showing that the proper configuration would result from an obvious combination of the references. Thus, we are not persuaded by these arguments. Dummy Trenches We also disagree with Patent Owner’s argument that “Stine1998 does not teach or suggest any ‘trenches in a dielectric layer.’” PO Resp. 47, 55– 56. Patent Owner argues that Stine1998’s “subtractive process used for the manufacture of the disclosed chip does not involve the formation of such trenches.” Id. at 47 (citing Ex. 2011 ¶ 171). That is, Patent Owner asserts Stine1998 deposits a dielectric layer around already-formed metal lines. This argument, however, is not commensurate with the scope of the claims as properly construed. As noted above, to the extent that a damascene process is required, Jaso teaches such a process. Pet. 44. Additionally, assuming arguendo Patent Owner’s argument is correct, it stands to reason that the spaces where dielectric is not deposited are free of dielectric (due to the presence of metal lines) and, therefore, the “trenches” are free of dielectric. Patent Owner also asserts Stine1998 does not disclose dummy trenches because it “states in passing that certain areas of its test chip would be ‘prime candidates’ for ‘metal-fill,’ but does not actually disclose the particular location of any alleged ‘dummy’ conductor.” PO Resp. 56 (citation omitted) (citing Ex. 2011 ¶ 205). Patent Owner’s argument improperly attacks Stine1998 alone when Petitioner argues that the combination of Jaso and Stine1998 teaches “trenches.” See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Petitioner points out that Jaso describes “a damascene method wherein, in general, a via or trench pattern is etched into a planar dielectric layer.” Pet. 44 (emphasis omitted) (citing Ex. 1004, 1:28– 31; 8:5–8; Ex. 1002 ¶¶ 142–144). Petitioner states that Figure 11B of Jaso includes “trenches (15a-d) [which] correspond to trenches for interconnects 45. Patent Owner does not address the trenches taught by Jaso, much less teachings of Jaso in combination with the teachings of Stine1998. See PO Resp. 33–36, 55–61. Accordingly, we are not persuaded that the combination of Jaso and Stine1998 fails to teach “trenches.”” slip op. at 29

  Patent outcomesUS 6,232,231 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,232,231
• Polycom, Inc. v. Directpacket Research, Inc.All claims unpatentable
  PTAB · Jan 11, 2021 · IPR2019-01235 · APJ Russell E Cass · IPR · Final written decision

  Claims 1–23 are unpatentable as obvious under §103 over Krtolica and Rosenberg, with Eisenberg and DSDP added for certain dependent-claim grounds.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “with the claim language itself, we agree with Petitioner that the ordinary meaning of “multimedia communication data” is data related to multimedia communication, and that this may comprise signaling data required for communicating multimedia between two or more locations. We see nothing in the claim language that requires that data must include the underlying media content itself (such as video or voice signals) in order to qualify as “multimedia communication data.” We also are not persuaded by Patent Owner’s argument that Petitioner’s construction of “multimedia” “means no media” (PO Supp. 1 (emphasis omitted)), because Petitioner is not arguing that media content cannot be present, but instead is simply arguing that media content is one type of “multimedia communication data,” with” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable

    “each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “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) (citation omitted); see KSR, 550 U.S. at 418 (For an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (A finding of a motivation to combine “must be supported by a ‘reasoned explanation.’” (citation omitted)). D. Ground 1: Obviousness over Krtolica and Rosenberg — Claims 1, 3–5, 9–11, 13, 14, 16, 17, 22, and 23 Petitioner contends that claims 1, 3–5, 9–11, 13, 14, 16, 17, 22, and 23 are unpatentable as obvious under 35 U.S.C. § 103(a) over Krtolica and Rosenberg. Pet. 30–70. For the reasons that follow, Petitioner has demonstrated by a preponderance of the evidence that claims 1, 3–5, 9–11, 13, 14, 16, 17, 22, and 23 are unpatentable on this ground. 1. Overview of Krtolica Krtolica is directed to a system that sends information data packets” slip op. at 18

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “H. Objective Indicia of Nonobviousness Patent Owner also presents arguments and evidence of objective indicia or secondary considerations of nonobviousness. PO Resp. 51–57; PO Sur-Reply 19–22. Objective indicia of nonobviousness may include long-felt but unsolved need, failure of others, unexpected results, commercial success, copying, licensing, industry praise, and expert skepticism. Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir. 2012). “[O]bjective indicia ‘may often be the most probative and cogent evidence of nonobviousness in the record,’” and “help turn back the clock and place the claims in the context that led to their invention.” Id. at 1378 (quoting Ortho–McNeil Pharm. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008)). Evidence of objective indicia of nonobviousness “must always when present be considered en route to a determination of obviousness.” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012); see also Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc). Objective indicia of nonobviousness are “only relevant to the obviousness inquiry ‘if there is a nexus between the claimed invention and the [objective indicia of nonobviousness].’” In re Affinity Labs of Tex., LLC, 856 F.3d 883, 901 (Fed. Cir. 2017) (quoting Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)). For objective indicia of nonobviousness to be accorded substantial weight, their proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). As the Federal Circuit has explained, “a patentee is entitled to a rebuttable presumption of nexus between the asserted evidence of secondary considerations and a patent claim if the patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). That is, presuming nexus is appropriate “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). On the other hand, the patentee is not entitled to a presumption of nexus if the patented invention is only a component of a commercially successful machine or process. Id. Once “the patentee has presented a prima facie case of nexus, the burden of coming forward with evidence in rebuttal shifts to the challenger . . . to adduce evidence to show that the commercial success was due to extraneous factors other than the patented invention.” Demaco, 851 F.2d at 1392–93. However, “[a] finding that a presumption of nexus is inappropriate” slip op. at 82

  • ExcludeMotion to exclude, grantedGranted

    “highly confidential source for the STNS system, and seeks to seal that identification. Paper 29, 1. The Motion is unopposed. We have reviewed the redacted portion of the document, as well as the explanations of the confidential nature of the materials for which sealing is sought, as discussed in the Motion. We grant the Motion and the associated request to enter the Protective Order.” slip op. at 92

  Patent outcomesUS 8,560,828 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,560,828
• Polycom, Inc. v. Directpacket Research, Inc.Some claims unpatentable
  PTAB · Jan 11, 2021 · IPR2019-01234 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 2–5, 15–17, 23–26, 29, and 30 are unpatentable over the stated obviousness grounds; claims 8, 9, 19, 20, 27, and 28 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed skill level, that is, that one of ordinary skill in the art would have a Bachelor’s degree or equivalent in electrical engineering, computer engineering, or similar field, and at least two years of experience in a relevant field such as telecommunications or multimedia communications. Inst. Dec. 20. We also agreed with Petitioner that one of ordinary skill would have some familiarity with the design and implementation of VoIP and multimedia networks. Id. We did not agree, however, that the level of qualifications included monitoring and maintaining VoIP and multimedia networks, as Petitioner asserted, and therefore declined to adopt those requirements. Id. ordinary skill in the art adopted in the Decision on Institution to include “familiarity with the design and implementation of VoIP and multimedia networks,” but further described this requirement to include other requirements: an understanding of the techniques employed by network firewalls and the issues they present with respect to establishing and conducting multimedia communication sessions; an understanding of the performance demands placed on the network by multimedia communications, and the constraints that such demands place on processing and security measures that could be adopted; and a recognition of the distinctions between prior art firewall traversal solutions and the inventions of the ’978 Patent. PO Resp. 21–22. Patent Owner refers to GPAC, which identifies the factor of the “type of problems encountered in the art” as a consideration in determining the level of ordinary skill in the art. Id. at 22 (citing In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We have reviewed the relevant technology and claims of the ’978 patent, as well as the technology of the asserted prior art, and we adopt the same qualifications as those adopted in the Decision on Institution because they are commensurate with the relevant technology. These qualifications are similar to presented by Petitioner, with the” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner relies on the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art. Pet. 20. Patent Owner indicates that its arguments are also based upon the ordinary and customary meaning of the terms as they would be understood by one of ordinary skill in the art. PO Resp. 22. We determine that it is not necessary to provide an express interpretation of any of the terms of the claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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.”).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “As discussed above, we agree with Petitioner that Kirchhoff discloses the use of SSL, a protocol that uses data encryption (Ex. 1005, 8:47–49). We also agree with Petitioner that Krtolica discloses the use of HTTP protocols on port 80 (Ex. 1004, 6:23–24), and does so with a goal of maintaining high network security (id. at 1:7–10, 2:33–36). As Kirchhoff discloses, and Dr. Lavian’s testimony supports, one of ordinary skill in the art would have been aware that port 443, rather than port 80, would be used for secure web connections using SSL, which includes the use of encryption, and this would have resulted in enhanced network security. See Ex. 1005, 3:38–41; Ex. 1002 ¶¶ 52, 69, 108. As Dr. Lavian testifies, SSL/TLS was the most widely deployed security protocol in the world and the well-known use of SSL in HTTPS protocol enables secure web-based e-commerce. Ex. 1002 ¶¶ 69, 108; Ex. 1035 ¶ 8; Ex. 1006, 5. And, Krtolica has a stated goal to maintain network security. Ex. 1004, 1:7–10, 2:33–37. We find this evidence provides a sufficient rational underpinning in support of obviousness for combining the teachings of Krtolica and Kirchhoff. See KSR, 550 U.S. at 418. Owner’s arguments that use of encryption in SSL was optional and adding encryption would allegedly undermine network security. Nor do we find persuasive the argument that the Petitioner’s motivation to combine based on efficiency is insufficient, because Petitioner relies on another rationale for the combination of Krtolica and Kirchhoff, that is, enhanced network security, also discussed above. We additionally do not find persuasive Patent Owner’s arguments that combining Krtolica and Kirchhoff would render the system of Krtolica unsatisfactory for its intended purpose because, as Petitioner argues, this assertion is contradicted by the state of the art at the time. See Pet. Reply 9. As discussed above, Dr. Lavian explains that there were known systems having firewalls with SSL traversal at the time of the invention. Ex. 1002 ¶¶ 53, 59–65; Ex. 1035 ¶ 20; Ex. 1014. Moreover, the ’978 patent uses encryption with firewalls using a single-port protocol, and Patent Owner does not direct us to any disclosure in that patent that indicates that the use of encryption with a single-port protocol was inventive in that the system, or that encryption had to be done in a special manner. See Pet. Reply 3 (citing Ex. 1001, Fig. 3 (at 311, 341), Fig. 5 (503, 508)); see also Ex. 1001, 6:4–8. In a similar vein, Patent Owner argues that due to incompatibilities the combination of SSL with Krtolica would be unsuccessful, and we address this issue below.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Where the prior art contains “apparently conflicting” teachings (i.e., where some references teach the combination and others teach away from it) each reference must be considered “for its power to suggest solutions to an artisan of ordinary skill . . . consider[ing] the degree to which one reference might accurately discredit another.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). In Hosner, AES encryption appears to have one of the higher processing speeds of the algorithms tested. See Ex. 1006, 23. Further, the ’978 patent itself supports the acceptable performance of AES encryption in single-port protocol, stating that “[a]ny method or algorithm of encryption may be used” with its invention “including, but not limited to 128-bit find Patent Owner’s argument on the use of AES to be persuasive. We have reviewed Petitioner’s explanations and supporting evidence as to how the combination of Kirchhoff and Krtolica teach the limitations of claims 4, 16, and 24, and we agree with and adopt Petitioner’s analysis. Pet. 75–76, 81.” slip op. at 65

  Patent outcomesUS 7,710,978 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,710,978
• Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Dodots Licensing Solutions LLCNo claims unpatentable
  PTAB · Jan 5, 2021 · IPR2019-01279 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1, 8–13, and 20–24 were not shown unpatentable under any asserted §103 ground because the prior art did not teach a separate NIM template excluding executable code.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a bachelor’s degree in Electrical or Computer Engineering, Computer Science, or a related field and have three or more years of experience” in the field. Pet. 8 (citing Ex. 1003 (“Madisetti Decl.”) ¶ 44). Patent Owner does not provide an alternative description of the proper level of ordinary skill or comment on Petitioner’s proposal. Petitioner’s proposal appears to be consistent with the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required where the prior art itself reflects an appropriate level and a need for testimony is not shown). We adopt this proposal for this Final Written Decision.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “1. “outside of and separate from any graphical user interface of any other application” In the Petition, Petitioner requests that we construe one term, found in element 1.F of claim 1: that presentation of the viewer graphical user interface (“GUI”) defined by the networked information monitor template be “outside of and separate from any graphical user interface of any other application.” Pet. 4–8. Petitioner argues that the correct construction should be “so that the viewer [graphical user interface] is distinct from and not presented within the frame of any other GUI generated by another application.” Id. Because our ultimate decision does not rest on the construction of this claim term, we do not construe it. 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.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “The definition of NIM provided in the Specification describes a frame “through which content is optionally presented.” Ex. 1001, 5:21–24. Claim 1 also describes the subject of the definition in a NIM template alternatively as (a) a NIM (in 1.C), (b) “a viewer graphical user interface having a frame within which time-varying content in a web browser-readable language may be presented on a display associated with the client computing device” (in 1.B), or (c) a “viewer graphical user interface” (in 1.D, 1.F, 1.G). Id. at consistent with the use in the claim. With respect to the word “optionally” in the Specification definition, we note that, in the claims, time-varying content is recited as being presented on the display within a frame (element 1.G and the last element of claim 13). Id.; see also id. at 43:61–44:31. For these reasons, we determine that the correct construction of a NIM is “a fully configurable frame, with one or more controls, through which content is presented to the user,” and this is the interpretation we apply here.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “In one embodiment, the NIM definitions are defined using Extensible Markup Language (XML), so that the NIM as a whole–the frame and the content within the viewer––is advantageously as flexible as standard web content. NIMs are extremely flexible, because the definition of the NIM is content, rather than compiled code. The NIM definition defines the structure of the NIM, and everything that is visible in a NIM is based on standard Internet content, such as HTML, dHTML, or GIFs, and is referenced or pointed to by the NIM definition. An “application”–type NIM, such as a web calendar or web mail, may be changed by the user, by the content provider, or by other content, while advantageously avoiding the need to distribute and support a hard-coded compiled application. The definition of a NIM thus includes everything that is needed for the NIM to be rendered and filled with Internet content. Id. at 21:45–60 (emphases added). From this disclosure, we understand that the Specification prohibits the NIM template from using compiled code or an executable application. Our review of the Specification did not identify disclosure of use of compiled code or an executable application by the NIM template.” slip op. at 16

  Patent outcomesUS 8,510,407 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,510,407
• Askeladden LLC v. Leigh M. RothschildAll claims unpatentable
  PTAB · Nov 19, 2020 · IPR2019-00856 · APJ Mitchell G Weatherly · IPR · Final written decision

  Original claims 3–10, 12, 13, and 20 were canceled; the Board denied the motion to amend because the proposed substitute claims were unpatentable as obvious.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The claim language itself implies that the financial services provider decides which biometric information is required during the transaction stage because the Decision Limitation is added to element 1F, which is the first step in the transaction stage recited in elements 1F–H. “[I]n assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908 (2014). Patent Owner identifies support for the Decision Limitation in the Specification that favors interpreting the Decision Limitation as occurring during the transaction stage (i.e., during elements 1E–H). Mot. 14–15 (citing Ex. 1001, 9:9–14). The cited portion of the Specification states: “In another embodiment, the financial service provider may have the system set up such that the server 114 queries through the point-of-sale terminal 102 and informs the merchant which biometric identification data is/are required for the desired transaction.” Ex. 1001, 9:9–14 (emphasis added). The plain language of the claim is consistent with our interpretation because it specifies that the biometric data uploaded in element 1E is used to validate and execute “a purchase transaction,” in element 1H (describing the operation of the claimed system during the transaction stage). Based on our review of the Specification and claim language, we conclude that the Decision Limitation is sufficiently definite under 35 U.S.C. § 112, ¶ 2. Based on that review, we also interpret the Decision Limitation to require that the financial services provider informs, through the server, which type(s) of user biometric identification data must be received at the terminal (e.g., a point-of-sale terminal) to validate the transaction. E. WHETHER THE MOTION MEETS THE REQUIREMENTS OF 35 U.S.C. § 316(d) AND 37 C.F.R. § 42.121” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “expressly discloses the Decision Limitation. Opp. 19–20. However, Petitioner contends that Ortiz discloses this concept by describing a system in which the user of a point-of-sale terminal is prompted to input at least one biometric attribute that is randomly selected from a database of previously provided (during enrollment) biometric data. Id. at 20 (citing Ex. 1026 ¶¶ 85–87, 90, 91, Figs. 5 (steps 106, 108) 6 (steps 140, 142); Ex. 1027 ¶¶ 38, 39). The security of Ortiz’s systems and methods is enhanced by enabling the system to randomly challenge the user of a point-of-sale terminal at the time of the transaction because an imposter could not know in advance which biometric attribute would be required by the financial service provider to authorize the transaction. Id. (citing Ex. 1026 ¶¶ 23, 87, 96, 97, 141, Figs. 5, 6; Ex. 1027 ¶¶ 40, 41). Petitioner relies on Dr. Alexander’s testimony to support its contention that an ordinarily skilled artisan “recognized the need to verify user authenticity, such as, e.g., at least in the first instance when enrolling initial biometric(s), to prevent imposters from accessing Karthik’s system and uploading his own fraudulent biometric data.” Pet. 26; see also id. at 27 (citing Ex. 1002 ¶¶ 139–141; Ex. 1004, 2:31–36, 3:33–38). Petitioner reasons that an ordinarily skilled artisan would have been motivated to utilize Robinson’s suggestion to use third party biometric data to verify a user with Karthik’s validation procedure because it “would provide additional security against identity theft.” Id. at 27 (citing Ex. 1002 ¶¶ 139–141). Dr. Alexander opines that an ordinarily skilled artisan would have reasonably expected to be able to incorporate Robinson’s use of third party biometric data into Karthik’s user enrollment protocol. Ex. 1002 ¶ 143. Based on Dr. Alexander’s testimony, Petitioner argues that an ordinarily skilled artisan would have found it obvious to modify the systems and methods suggested by the combined teachings of Karthik and Robinson to incorporate Ortiz’s ability for the financial services provider to decide the type of biometric information required for a transaction (i.e., the Decision Limitation). Doing so would “deter attempts to impersonate the legitimate user of a financial services card during the transaction stage.” Opp. 21 (citing Ex. 1027 ¶¶ 41, 42). Dr. Alexander also opines that an ordinarily skilled artisan would have expected to succeed in incorporating Ortiz’s system and method into the combined Karthik/Robinson system and method because doing so “would have only required a financial services provider to implement a program that allows a server to randomly select one or more of the plurality of biometrics enrolled in Karthik’s database, and communicate that selection to, e.g., a point-of-sale terminal for a user to input” and that the “combined methods, systems, and servers [would] work for their intended purpose.” Id. at 21–22 (citing Ex. 1026 ¶ 27; Ex. 1027 ¶ 43). Patent Owner has not provided any countervailing argument or evidence in response to Petitioner’s Opposition. Based on our review of Petitioner’s argument and evidence of record, which we adopt as our own (see In re NuVasive, 841 F.3d 966, 974 (Fed. Cir. 2016)), we determine that Petitioner has demonstrated by a preponderance of evidence that the combined teachings of Karthik, Robinson, and Ortiz render substitute independent claim 1 unpatentable as obvious.” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Based on testimony by Peter Alexander, Ph.D., Petitioner contends that an ordinarily skilled artisan as of June 11, 2008, would have either: “(i) a Bachelor-of-Science degree in electrical engineering, computer science, or computer engineering, or equivalent, and at least two years of additional experience in database and networking technology, computer security and/or authentication using biometric data, or (ii) a post-graduate degree in electrical engineering, computer science, or computer engineering, or equivalent.” Pet. 15 (citing Ex. 1002 ¶¶ 14–17). Patent Owner does not contest Petitioner’s position relating to the level of ordinary skill. See generally Mot. We find Petitioner’s description of the ordinary level of skill in the art at the time of the invention to be consistent with the level of skill reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt and apply the level of ordinary skill proffered by the Petitioner in this proceeding. D. WHETHER THE “DECISION LIMITATION” IS INDEFINITE” slip op. at 12

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Petitioner argues that if Patent Owner were to argue that the Decision Limitation can be met by the financial services provider deciding which biometric information is required for a transaction during the enrollment or transaction stages, then the claims would be unpatentable for lack of written description support in the Specification. Opp. 8. Petitioner concedes that the portion of the Specification relied upon by Patent Owner for support describes making the decision about what biometric information is needed during the transaction stage. Id. at 9. As explained in Part II.D above, we have narrowly interpreted the Decision Limitation to encompass only such decisions. Accordingly, Petitioner does not persuade us that the Specification fails to provide the required written description for the Decision Limitation as we have interpreted it. Additionally, we conclude that Patent Owner has established that the Specification meets the written description requirement for the Decision Limitation. F. PROPOSED SUBSTITUTE CLAIMS 3–10, 12, AND 13: OBVIOUSNESS IN VIEW OF KARTHIK, ROBSINSON, ORTIZ, AND ONE OF LYON, CARTMELL, OR” slip op. at 18

  Patent outcomesUS 8,799,088 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,799,088
• Askeladden LLC v. Leigh M. RothschildAll claims unpatentable
  PTAB · Nov 19, 2020 · IPR2019-00855 · APJ Mitchell G Weatherly · IPR · Final written decision

  The Board canceled original claims 1, 2, 11, 14–19, and 21 and denied the motion to amend because the proposed substitute claims were obvious over Karthik, Robinson, and Ortiz.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “The claim language itself implies that the financial services provider decides which biometric information is required during the enrollment stage because the Decision Limitation is added to element 17A, which is the first step in the enrollment stage recited in elements 17A–D. However, “in assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908 (2014). Patent Owner identifies support for the Decision Limitation in the Specification that favors interpreting the Decision Limitation as occurring during the transaction stage (i.e., during elements 17E–G). Mot. 14–15 (citing Ex. 1001, 9:9–14). The cited portion of the Specification states: “In another embodiment, the financial service provider may have the system set up such that the server 114 queries through the point-of-sale terminal 102 and informs the merchant which biometric identification data is/are required for the desired transaction.” Ex. 1001, 9:9–14 (emphasis added). The plain language of the claim is consistent with our interpretation because it specifies that the biometric data is the data “required for the transaction,” which refers to the “transaction” recited in element 17G (describing the operation of the claimed system during a transaction stage). Based on our review of the Specification and claim language, we conclude that the Decision Limitation is sufficiently definite under 35 U.S.C. § 112, ¶ 2. Based on that review, we also interpret the Decision Limitation to require that the financial services provider informs, through the server, which type(s) of user biometric identification data must be received at the terminal (e.g., a point-of-sale terminal) to validate the transaction. E. WHETHER THE MOTION MEETS THE REQUIREMENTS OF 35 U.S.C. § 316(d) AND 37 C.F.R. § 42.121” slip op. at 14

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteDecided for patent owner

    “The claim language itself implies that the financial services provider decides which biometric information is required during the enrollment stage because the Decision Limitation is added to element 17A, which is the first step in the enrollment stage recited in elements 17A–D. However, “in assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908 (2014). Patent Owner identifies support for the Decision Limitation in the Specification that favors interpreting the Decision Limitation as occurring during the transaction stage (i.e., during elements 17E–G). Mot. 14–15 (citing Ex. 1001, 9:9–14). The cited portion of the Specification states: “In another embodiment, the financial service provider may have the system set up such that the server 114 queries through the point-of-sale terminal 102 and informs the merchant which biometric identification data is/are required for the desired transaction.” Ex. 1001, 9:9–14 (emphasis added). The plain language of the claim is consistent with our interpretation because it specifies that the biometric data is the data “required for the transaction,” which refers to the “transaction” recited in element 17G (describing the operation of the claimed system during a transaction stage). Based on our review of the Specification and claim language, we conclude that the Decision Limitation is sufficiently definite under 35 U.S.C. § 112, ¶ 2. Based on that review, we also interpret the Decision Limitation to require that the financial services provider informs, through the server, which type(s) of user biometric identification data must be received at the terminal (e.g., a point-of-sale terminal) to validate the transaction. E. WHETHER THE MOTION MEETS THE REQUIREMENTS OF 35 U.S.C. § 316(d) AND 37 C.F.R. § 42.121” slip op. at 14

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Petitioner argues that if Patent Owner were to argue that the Decision Limitation can be met by the financial services provider deciding which biometric information is required for a transaction during the enrollment or transaction stages, then the claims would be unpatentable for lack of written description support in the Specification. Opp. 8. Petitioner concedes that the portion of the Specification relied upon by Patent Owner for support describes making the decision about what biometric information is needed during the transaction stage. Id. at 9. As explained in Part II.D above, we have narrowly interpreted the Decision Limitation to encompass only such decisions. Accordingly, Petitioner does not persuade us that the Specification fails to provide the required written description for the 7 Normally, a Patent Owner must identify material in the originally filed application leading to issuance of the patent at issue that supports the proposed amendment. Lectrosonics, Paper 15 at 7. Failing to cite the original disclosure is a basis for denying a motion to amend. Id. However, because Patent Owner appears pro se, we reviewed the original disclosure ourselves to verify that the portion of the Specification cited is identically found in that disclosure. Compare Ex. 1016 ¶ 42, with Ex. 1001, 9:9–14. Accordingly, in this case, we find that Patent Owner’s citation to the Specification functionally refers to material in the original disclosure. Decision Limitation as we have interpreted it. Additionally, we conclude that Patent Owner has established that the Specification meets the written description requirement for the Decision Limitation. F. PROPOSED SUBSTITUTE CLAIMS 1, 2, 11, 14–19, AND 21:” slip op. at 17

  • ScopeDecided for patent owner

    “3. Whether the Amendments Enlarge the Scope of the Claims An amendment may not enlarge the scope of the claims of the patent. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii). We determine that Patent Owner’s addition of the Decision Limitation narrows the scope of every challenged claim and thus satisfies the prohibition against enlarging the scope of any claim.” slip op. at 16

  Patent outcomesUS 8,799,088 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Graham · Nautilus
  Patents in suitUS 8,799,088
• Victoria’S Secret Stores LLC v. Andra Group, LPInstitution denied
  PTAB · Oct 22, 2020 · IPR2020-00853 · APJ Eric C Jeschke · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 5–8, and 11 were unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). Section 314(a) of Title 35 of the United States Code provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, for the reasons below, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level board ownDecided for patent owner

    “For the reasons asserted by Patent Owner, we agree as to the ambiguous nature of (1) the “passing understanding” requirement in the first alternative definition proposed and (2) the “equivalent experience” requirement in the second alternative definition. See Prelim. Resp. 7. Further undermining Petitioner’s first alternative definition, as noted by Patent Owner, Petitioner’s declarant, Mr. Weadock, does not include the “passing understanding” requirement in his definition of the level of ordinary skill in the art. See Weadock Decl. ¶ 20, cited at Pet. 31. For these reasons, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner with the ambiguous aspects removed. For purposes of this Decision only, one of ordinary skill in the art at the time of the invention in the ’498 patent would have had a Bachelor’s degree in Computer Science or another engineering or technical field, with at least two years of experience in World Wide Web design.8” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “(1) “perspective view”; (2) “front,” “side,” and “rear” views; (3) “isometric” view; (4) “thumbnail image[s]”; (5) “master display field”; (6) “icon”; (7) “a distinctive characteristic [to said one of said plurality of thumbnail images]”; and (8) “article.” Pet. 32–40. Patent Owner responds by addressing those claim terms. Prelim. Resp. 10–25. We do not discern a need to construe explicitly any of the claim language discussed in this section or any other claim terms because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 8 Although we do not adopt Petitioner’s definition in its entirety, we decline Patent Owner’s invitation to deny the Petition on this basis alone. See Prelim. Resp. 9. Rather, because we adopt Petitioner’s expert’s definition and the Petition relies on this testimony throughout, we examine the merits of the Petition. 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Patent Owner argues that “Petitioner errs in mapping a female model onto the claimed ‘article.’” Prelim. Resp. 30. We agree. As argued by Patent Owner, the record does not support Petitioner’s position that the scope of the term “article” (or “articles” in parts of claim 7) includes human beings. See id. at 30–32. As an initial matter, as noted by Patent Owner, Petitioner does not explain why a human being allegedly falls within the scope of the term “article.” See Prelim. Resp. 31 (“There simply is no argument or evidence set forth in the Petition to support the interpretation that the ‘article’ term recited in claim 1 encompasses a person.”). And although Petitioner notes the parties’ agreement, in the Texas District Court, that “article” means “item” (see Pet. 40), Petitioner does not explain why a human being allegedly falls within the scope of the term “item.” Petitioner does not identify any aspect of the claim language itself that supports Petitioner’s position as to the scope of the term “article.” And, as argued by Patent Owner, the Specification strongly supports the contrary view. See Prelim. Resp. 30–31. The Specification consistently frames an “article” as an inanimate object that is, for example, “offered for purchase” and has a “price” as well as a “manufacturer” and “supplier.” See, e.g., Ex. 1001, 1:48–52 (describing the “present invention” as “a network server with enhanced graphics and improved methods for displaying articles offered for purchase, to allow a purchaser to fully evaluate the article while shopping ‘on-line’” (emphasis added)), 4:10–11 (discussing the “price of the articles or products”), 6:28–29 (discussing “an analysis of a particular article from the manufacturer, supplier, network operator and/or any other clothing professional”), 6:41–42 (discussing “[i]nformation regarding the manufacturer of a particular article”), 8:49–52 (discussing how, “each time a” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,078,498
• Apple Inc. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Oct 15, 2020 · IPR2019-00918 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 3–6, and 8–10 are unpatentable under § 103 over Charbonnier, RFC793, SMS Specification, and DECT Speakerphone; claims 4 and 9 also over Lee.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person having such skill “would have had a Bachelor’s degree in computer science or a comparable field of study, plus approximately two to three years of professional experience with cellular phone and IP networks, or other relevant industry experience. Additional graduate education could substitute for professional experience and significant experience in the field could substitute for formal education.” Pet. 11 (citing Ex. 1002 ¶ 41). Patent Owner “does not offer a competing definition at this stage of the proceeding.” PO Resp. 4. We determine that Petitioner’s description of the 9 Patent Owner does not put forth evidence it alleges tends to show secondary considerations of non-obviousness in its Patent Owner Response. level of ordinary skill in the art is supported by the record. Therefore, we adopt Petitioner’s proposal.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We do not adopt Petitioner’s construction. First, for reasons discussed below, Petitioner’s construction does not find sufficient support. Second, Petitioner’s construction does not resolve the controversy between the parties. We also do not adopt Patent Owner’s construction, that the “terminal” must be capable of short-range wireless communications, such as Bluetooth communications, that may be employed by computers, for the reasons discussed below.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner argues it would have been obvious to modify Charbonnier’s DECT base 7 to include a digital speakerphone as taught by DECT Speakerphone. Pet. 67. We find persuasive Petitioner’s rationale for the combination because both Charbonnier and DECT Speakerphone relate to DECT phones, and DECT Speakerphones provides several express motivations to combine by teaching digital speakerphones in DECT base stations. Id. at 66–67 (citing Ex. 1029, 1). Furthermore, DECT Speakerphone provides several reasons to include a digital speakerphone, including: (1) making and receiving calls from the base unit even when the handset is elsewhere, (2) hand free for more convenience, and (3) conference calling where more than one person can listen or speak. Id. (citing Ex. 1029, 1). We are persuaded by Petitioner’s argument that a person of ordinary skill in the art would have had a reasonable expectation of success in adding a speakerphone to Charbonnier’s DECT base station 7 based on, for example, DECT Speakerphone and other documents showing Samsung and other phones with similar DECT speakerphones in the base station. Id. at 67 (citing Ex. 1046, Exhibit A). Furthermore, we find persuasive Petitioner’s argument that DECT” slip op. at 30

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “For the reasons above, we are persuaded that Petitioner has shown by a preponderance of the evidence that Charbonnier, RFC793, SMS Specification, and DECT Speakerphone teach the limitations of claims 1 and 6.” slip op. at 44

  Patent outcomesUS 8,369,298 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,369,298
• Oticon Medical AB / Oticon Medical LLC et al. v. Cochlear LimitedNo claims unpatentable
  PTAB · Oct 14, 2020 · IPR2019-00975 · APJ James A Worth · IPR · Final written decision

  Claims 1–12, 14, 16, 17, 25, 28, 33–35, 37–41, and 45–47 were not shown unpatentable because Petitioner failed to establish a rationale to combine Westerkull ’794 and Choi.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “At the oral hearing, Petitioner acknowledged that the differences between the parties’ assertions regarding the level of skill in the art would not be dispositive. Tr. 25:12–26:11. In view of the lack of material dispute on this issue, we adopt Patent Owner’s asserted level of skill, which we find to be supported by the testimony of Dr. Rentschler. See Ex. 2037 ¶¶ 54–55; see also Tr. 26:10–11 (Counsel for Petitioner: “We agree that the issues really here are highly mechanical.”).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We now turn to the issue of whether the preamble of claim 1 is limiting. Petitioner argues that the preamble recites an intended use because the body of claim 1 recites the structural limitations but the preamble does not. Pet. Supp. Br. 3. Petitioner also argues that the preamble recites an intended use because, in another case between the same parties involving a different claim relating to the same subject matter, the court concluded that the preamble recited an intended use. Id. at 3 (citing Cochlear Bone Anchored Sols. AB v. Oticon Med. AB, 958 F.3d 1348, 1355 (Fed. Cir. 2020)). Patent Owner argues that the preamble is limiting because the phrase “the bone” has its antecedent basis in the phrase “a skull bone” in the preamble. PO Supp. Br. 3 (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). We determine, as a matter of reading the words of the claim, that the antecedent basis for “the bone” is “a skull bone” in the preamble of claim 1. See Ex. 1001, 5:56–57. Accordingly, we determine that the preamble is limiting. See Energizer Holdings, Inc. v. Int’l Trade Comm’n, 436 F.3d 1366 (Fed. Cir. 2006) (“anode gel” was understood to be the antecedent basis for “said zinc anode”).9 In other words, it is a requirement that the prosthesis is structured so that it is appropriate for being anchored into the skull bone. See Catalina 9 Patent Owner also argues that the cases relied on in the Petition to argue that the preamble is not limiting stand for the opposite proposition because, in those cases, the preambles were limiting because they introduced or defined terms later used in the claims. PO Supp. Br. 4 n.1 (citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305–06 (Fed. Cir. 1999); Rowe v. Dror, 112 F.3d 473, 478-79 (Fed. Cir. 1997)). We agree with Patent Owner that the statement of law in the Petition, i.e., that a preamble may recite an intended use when the body of the claim recites all structural elements (see Pet. 19), is not dispositive of this case because the body of the claim refers back to the preamble. Marketing International, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.”). 2. the preamble: “bone fixture configured to anchor to bone” (claim 8) For similar reasons as for the preamble of claim 1, we determine that the preamble of claim 8 is limiting, i.e., because it provides antecedent basis for “the bone” in the body of the claim. However, the preamble of claim 8 only refers to “bone” and not to “a skull bone” and therefore does not itself impose a limitation of a “skull bone.” Compare Ex. 1001, 6:22, with id. at 5:56–57.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “means “a channel, distinct from the screw thread and distinct from the flange, extending around the cylindrical portion of the main body of the anchor, having an inner diameter and an outer diameter.” Pet. 20. Petitioner also asserts that a person of ordinary skill would understand that a circumferential groove is provided to “exert a compressive radial force on the skull bone to improve stability of the anchoring fixture.” Id. (citing Ex. 1013, 3; Ex. 1002 ¶ 36). The District Court construed “circumferential groove” to mean “a narrow channel extending around the cylindrical periphery of the main body of the implant.” Ex. 3001, 33.10” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “In response to our question inviting further briefing, Petitioner submits that “periphery” refers to the widest portion of the fixture inserted into the skull and distinct from the flange. See Pet. Reply 2. Patent Owner does not comment on the question. See PO Resp. 15–17. For purposes of this Decision, we determine that it is not necessary to further construe the term “periphery.” See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary to resolve a dispute). 4. “wherein the anchoring fixture is configured for anchoring a hearing” slip op. at 14

  Patent outcomesUS 9,838,807 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,838,807
• Nanocellect Biomedical, Inc. v. Cytonome/St, LLCInstitution denied
  PTAB · Sep 1, 2020 · IPR2020-00548 · APJ Wesley B Derrick · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–3, 9, 17, and 18 unpatentable over any asserted §103 ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) as “requiring inter partes review petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”); cf. Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)) (addressing “the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim’”). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail in an inter partes review, Petitioner must explain how the proposed combinations and/or alterations of the prior art would render them unpatentable as obvious. At this preliminary stage, we determine whether the information in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations and/or alterations of the prior art. slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s or master’s degree in the field of bioengineering, mechanical engineering, chemical engineering, or analytical chemistry; or a bachelor’s or master’s degree in a related field and at least three years of experience in designing or developing microfluidic systems.” Pet. 14 (citing Ex. 1002 ¶¶ 46–49). Patent Owner reserves the right to dispute Petitioner’s proposed definition of the level of ordinary skill in the art, but applies Petitioner’s proposed definition “[s]olely for purposes of [the Patent Owner Preliminary Response].” Prelim. Resp. 29. On this record, we have no reason to fault Petitioner’s definition of the level of ordinary skill and, therefore, adopt it for the purposes of this Decision. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “For the purposes of this Decision, based on the current record, we determine that the claim term “pressure pulse” means “a transient increase in pressure” because this is the plain and ordinary meaning of the term and is consistent with the use of this term in the ’295 patent. We further note that this determination is consistent with the district court’s determination that the claim term “pressure pulse” has its “plain and ordinary meaning.” Ex. 2012, 5–6. Turning to the claim term “reservoir,” for the purposes of this Decision, based on the current record, we determine that the claim term has its plain and ordinary meaning of “a physical structure that contains fluid,” but decline to reach any determination as to the nature or type of fluid as it is not necessary to resolve the issues here. Wellman, 642 F.3d at 1361. This determination is consistent with the construction adopted by the district court. Ex. 2012, 4–5. As to the recited reservoir being “adapted for dampening or absorbing a pressure pulse” (claim 1), this, and other, limitations are addressed to the limited extent necessary in reaching our Decision that Petitioner has not established a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim. Wellman, 642 F.3d at 1361.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “reservoir that absorbs or dampens a pressure pulse. The required function of the side microchannels is wholly different, and there is no showing that what is required to absorb or dampen a pressure pulse is included in the disclosed structure for introducing hydrodynamic flow into the central microchannel that cells to be sorted pass through. See generally Pet. Petitioner and Dr. Weigl rely on Wada “describing that the fluid direction components ‘nudge’ materials across the width of the first channel,’” however, that is insufficient to support Petitioner’s contention that “the opposed microchannel structure in each of Figures 22 and 23 is configured to receive . . . and to dampen and absorb the pressure pulse.” Pet. 27–29; Ex. 1002 ¶ 126. On the record before us, thus, we are not persuaded that Wada includes any reservoir adapted for dampening or absorbing a pressure pulse such as recited in the claims. As to Dr. Weigl’s testimony to the contrary, we find it conclusory, largely unsupported as applied to Wada, and entitled to little weight. Dr. Weigl contends that the orientation of opposing microchannels across from one another indicates that one, or both, of them function as a reservoir that is adapted to dampening or absorbing a pressure pulse, and then points to structures in other references that are not shown to be similar or to have the same function as support. See Ex. 1002 ¶¶ 125– 139. This position is not sufficiently supported, though, particularly where there is insufficient explanation provided as to why what Dr. Weigl contends is disclosed in the further “background references” is what is also present in Wada’s disclosed structure, and what would follow based on its function. See generally Pet.; Ex. 1002. For example, while Dr. Weigl contends that the use of microchannel structure geometry with a channel, chamber or reservoir structure across the source of the transient pressure pulse for dampening or absorbing the transient pressure pulse was well known, and that it was understood that they can be used to mitigate undesirable flow fluctuations (see, e.g., Ex. 1002 ¶¶ 126–130), it simply does not follow that a pair of oppositely-oriented microchannels, as disclosed in Wada for providing fluid flow into the main microchannel, have similar structure or that they function in like manner, and Petitioner fails to set forth clearly how the structures are sufficiently similar at a level of detail sufficient to establish like function (see generally Pet.). Similarly, Petitioner’s reliance on the disclosed Joule heating wells in Wada as dampening or absorbing a pressure pulse or fluid (id. at 29–31) fails to establish sufficient basis for including structure that is adapted to dampen or absorb a pressure or fluid (see generally Pet.; Ex. 1002). As discussed above, as to “a first reservoir . . . adapted for dampening or absorbing a pressure pulse propagated across the flow channel,” what Wada discloses falls short, and Petitioner provides no reasonable basis for modifying what is, in fact, disclosed in Wada to arrive at the claimed invention. See generally Pet. Instead, as discussed above, Petitioner merely sets forth what one of ordinary skill in the art could have done. This is not sufficient to reasonably support a ground of obviousness. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Further, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). Here, absent a sufficient explanation as to why the opposing microchannels in Wada function to dampen or absorb a pressure pulse, or would be adapted to do so, there is an insufficient showing that the ground set forth by Petitioner is not grounded on hindsight reconstruction. See Grain Processing, 840 F.2d at 907.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,623,295

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