• Symantec Corp. v. Finjan, Inc.Institution denied
  PTAB · Feb 26, 2016 · IPR2015-01897 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution because Symantec did not show a reasonable likelihood of prevailing: the challenged claims were entitled to the 1997 priority date, making Touboul I and II not prior art.

  RulingsInstitution decision

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

    “requesting inter partes review pursuant to 35 U.S.C. § 311 of claims 1, 2, 5, 6, 10, 11, 14, and 15 of U.S. Patent No. 8,677,494 B2 to Edery et al. (Ex. 1001, “the ’494 patent”). Pet. 1. Finjan, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We review the Petition under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow and on this record, we are not persuaded that Petitioner demonstrates a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims on the asserted grounds. Accordingly, we deny Petitioner’s request to institute an inter partes review.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “necessary to provide a written description of a claimed invention as required by 35 U.S.C. § 112 may be incorporated into a patent application by reference, provided that the incorporated reference is a U.S. patent or U.S. patent application publication that does not itself incorporate such “essential material” by reference, by “[e]xpress[ing] a clear intent to incorporate by reference by using the words ‘incorporat(e)’ and ‘reference’” and “[c]learly identify[ing] the referenced patent [or] application.” 37 C.F.R. § 1.57(c), (d). Moreover, the Federal Circuit has explained that “incorporated patents are ‘effectively part of the host [patents] as if [they] were explicitly contained therein.’” X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in original) (quoting Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001)). Contrary to Petitioner’s contentions (Pet. 11–15), the “boilerplate language” used in the ’822, ’926, ’086, and ’494 patents, broadly stating without further qualification that the earlier-filed patents are “incorporated by reference,” is sufficient in view of Federal Circuit precedent to incorporate the disclosure of at least the ’780 patent2 into each later-filed patent. See, e.g., Harari v. Lee, 656 F.3d 1331, 1335 (Fed. Cir. 2011) (finding “entire . . . application disclosure was incorporated by the broad and unequivocal language: ‘The disclosures of the two applications are hereby incorporate[d] by reference’”). We agree with Patent Owner that the facts here are distinguishable from those in cases on which Petitioner relies. Prelim. Resp. 23–24. For example, in Zenon, as Patent Owner asserts, there was a lack of continuity of disclosure in a priority chain because the priority references were not incorporated in their entirety, but only with respect to specific portions. Id. On this record, and particularly in view of Petitioner’s statement that the specification of the ’780 patent, among others, describes the “claim elements and features” not otherwise included in the specifications of the ’822, ’926, ’086, and ’494 patents (Pet. 10)—and, thus, does not itself incorporate such “essential material” by reference (see 37 C.F.R. §1.57(d))—we agree with Patent Owner’s conclusion that “each application in the priority chain contains written description support for the challenged claims, and continuity of disclosure exists up to and including the ’494 [p]atent without interruption.” Prelim. Resp. 16.3” slip op. at 11

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “among others, it contains or is amended to contain a specific reference to the earlier filed application. 35 U.S.C. § 120. Contrary to Petitioner’s assertion that “neither the ’086 patent, nor the ’926 patent, include a priority claim or any reference whatsoever to a number of earlier-filed applications (i.e., the ’194 patent, ’520 patent and ’639 provisional) that are included in the priority chain of the ’494 patent” (Pet. 6), the ’086 and ’926 patents both include priority claims to the ’194 patent and incorporate the ’194 patent by reference in its entirety. Ex. 1002, [63], 1:26–30; Ex. 1003, [63], 1:23–27. Moreover, as Patent Owner points out, the ’520 patent and ’639 provisional are not within the priority chain from the ’494 patent to the ’194 patent, and the failure of the ’926 and ’086 patents to include a priority claim or reference to the ’520 patent and ’639 provisional does not affect the ’494 patent’s entitlement to the benefit of the November 6, 1997 filing date of the ’388 application that matured into the ’194 patent (i.e., Touboul I). Petitioner also argues that the failure of the ’926 and ’086 patents to include a priority claim or any reference to the ’520 patent and ’639 provisional constitutes a break in the priority chain of the ’494 patent. Pet. 17. For purposes of this Decision, however, we need not reach this issue.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “C. Anticipation by and Obviousness over Touboul I and Touboul II On this record and for the reasons stated in Section II.B. above, we are persuaded that claims 1, 2, 5, 6, 10, 11, 14, and 15 of the ’494 patent are entitled at least to the benefit of the November 6, 1997 filing date of the ’388 patent that matured into the ’194 patent, and, accordingly, that neither Touboul I (i.e., the ’194 patent) nor Touboul II, which issued on November 28, 2000, from an application filed December 22, 1997, constitutes prior art to those claims. We conclude, therefore, that Petitioner has not demonstrated a reasonable likelihood that it would prevail at trial on any of the asserted grounds. III. CONCLUSION On this record, Petitioner has not shown that Touboul I and Touboul II are prior art to the challenged claims of the ’494 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of those claims on the grounds asserted in the Petition.” slip op. at 15

  Claim construction§ 102 anticipation§ 112 disclosure
  Patents in suitUS 8,677,494
• Symantec Corp. v. Finjan, Inc.Institution denied
  PTAB · Feb 26, 2016 · IPR2015-01895 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution because the challenged claims were entitled to the November 6, 1997 filing date, making the asserted references unavailable as prior art.

  RulingsInstitution decision

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

    “or the combination of Touboul I and Dan, renders the challenged claims obvious. Pet. 32–52. As explained above, the challenged claims are entitled to the benefit of the November 6, 1997 filing date. Thus, neither Touboul I (the ’194 patent) nor Touboul II (issued on November 28, 2000, from an application filed December 22, 1997) constitutes prior art to those claims. We conclude, therefore, that Petitioner has not demonstrated that the 14 combination of Touboul I and Touboul II, or the combination of Touboul I and Dan, renders the challenged claims obvious. CONCLUSION On this record, Petitioner has not shown that Touboul I and Touboul II are prior art to the challenged claims of the ’926 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of at least one of those claims on the grounds asserted in the Petition. ORDER Accordingly, it is ORDERED that Petitioner’s request for an inter partes review of claims 15, 18–20, 22, 25–27, and 30 of the ’926 patent is denied.” slip op. at 14

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “Incorporation by reference “provides a method for integrating material from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Zenon, 506 F.3d at 1378 (quotation marks omitted). Incorporation by reference must be set forth in the specification and must (1) express a clear intent to incorporate by reference by using the root words “incorporate” and “reference” (e.g., “incorporate by reference”); and (2) clearly identify the referenced patent, application, or publication. 37 C.F.R. § 1.57(c). “Essential material,” such as material necessary to provide a written description of a claimed invention, may be incorporated by reference by reference to a U.S. patent or U.S. patent application publication, as long as the referenced patent or patent application publication does not itself incorporate such essential material by reference. Id. § 1.57(d). In Harari v. Lee, 656 F.3d 1331 (Fed. Cir. 2011), the Federal Circuit concluded that the broad and unequivocal language “[t]he disclosures of the two applications are hereby incorporated by reference” incorporates the entire disclosures of the two applications. Id. at 1335. The incorporation statement in the ’822 patent is similar: 9 This application is also a Continuation-In-Part of and hereby incorporates by reference patent application Ser. No. 09/539,667, now U.S. Pat. No. 6,804,780 . . . . This application is also a Continuation-In-Part of and hereby incorporates by reference patent application Ser. No. 09/551,302, now U.S. Pat. No. 6,480,962 . . . . Ex. 1002, 1:11–19. Petitioner acknowledges that the ’780 patent provides written support for the limitations of the challenged claims. Pet. 10. In other words, the ’780 patent does not itself incorporate such “essential material” by reference. See 37 C.F.R. § 1.57(d). Thus, the holding of Harari informs our conclusion that the ’822 patent incorporates by reference the ’780 patent in its entirety. Because the ’194 and ’780 patents share essentially the same disclosure (compare Ex. 1004 with Ex. 1005), we agree with Patent Owner that continuity of disclosure exists between the ’194 and ’926 patents.” slip op. at 9

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

    “ANALYSIS Claim Construction In an inter partes review, the Board interprets a claim term in an unexpired patent according to its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1278–81 (Fed. Cir. 2015), 1 Shlomo Touboul, U.S. Patent No. 6,092,194, issued July 18, 2000 (Ex. 1005, “Touboul I,” or “the ’194 patent”). 2 Shlomo Touboul and Nachshon Gal, U.S. Patent No. 6,154,844, issued Nov. 28, 2000 (Ex. 1012, “Touboul II”). 3 Asit Dan et al., U.S. Patent No. 5,825,877, issued October 20, 1998 (Ex. 1013, “Dan”). 4 cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 4

  Claim construction§ 112 disclosure
  Patents in suitUS 7,613,926
• HTC Corporation / HTC America, Inc. v. NFC Technology, LLCAll claims unpatentable
  PTAB · Feb 3, 2016 · IPR2014-01199 · APJ James B Arpin · IPR · Final written decision

  Claims 13 and 29 are unpatentable as obvious over Amtmann with ECMA-340 and over Charrat with Kuhl.

  RulingsFinal written decision

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

    “terminal” in its submitted papers. At the oral hearing, we asked each party whether it was necessary for us to construe the term “terminal” and, if so, what construction would they propose. Tr. 9:2–20, 19:22–20:15. Petitioner acknowledged that it had not proposed a construction for “terminal,” but indicated that we should construe the term according to its ordinary meaning. Id. at 9:6–8. Petitioner argues that the ordinary meaning of “terminal” is “an end of a particular element.” Id. at 9:20; see Ex. 2003, 44:12–13 (With respect to Figure 6 of the ’664 patent, Petitioner’s declarant, Dr. Tentzeris, testified that “input terminal could be any node or any point.” (emphasis added)). Patent Owner contends that “terminal” should be construed as “a point of entry or exit into a particular circuit element, like a battery’s end terminals.” Id. at 20:3–6. A relevant definition of a “terminal” is “[a] screw, soldering lug, or other point to which electrical connections can be made. Also known as electric terminal. . . . One of the electric input or output points of a circuit or component.” MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 1904 (4th ed. 1989) (emphases added) (Ex. 3001). Because of its breadth, Petitioner’s proposed construction of this term would render the modifier “end,” in the term “end terminal,” essentially meaningless. “A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co., Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Circ. 2005); see Mangosoft, Inc. v. Oracle Corp., 525 F.3d 1327, 1330–31 (Fed. Cir. 2008) (rejecting claim construction that “ascribes no meaning to the term . . . not already implicit in the rest of the claim”). Thus, Patent Owner’s construction of “terminal” is more consistent with the language of the challenged claims and the context, in which the term appears in the Specification (see, e.g., Ex. 1001, col. 2, ll. 8–21), and the ordinary meaning of the term as exemplified by the quoted dictionary definition. Therefore, Patent Owner’s construction is the broadest reasonable interpretation of “terminal.” slip op. at 10

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

    “[b]ecause ECMA-340 describes the particular NFC standard that is referenced in Amtmann as the standard used by Amtmann’s devices to perform contactless communication, a [person of ordinary skill in the art] would have naturally turned to the teachings in ECMA-340 to provide details of how to implement the NFC ECMA-340 standard that is specified in Amtmann. Ex. 1003, ¶ 86. In doing so, a [person of ordinary skill in the art] would have recognized that the “oscillating circuit” in Amtmann should operate at a particular center frequency of 13.56 MHz, as specified in ECMA-340, in order to be compatible with other devices using the same NFC ECMA-340 protocol. Id. Therefore, the combination of Amtmann and ECMA-340 discloses “an antenna circuit substantially tuned to a working frequency” and “an emitter circuit that applies to the input terminal of the antenna circuit, when the reader is in the active operating mode, an excitation signal oscillating at the working frequency, so that the antenna coil emits a magnetic field, and that modulates the excitation signal to send data,” as well as all other features of Claims 13 and 29 . . . . Pet. 44–45 (emphasis added). Thus, Petitioner argues that Amtmann discloses all of the limitations of claims 13 and 29 and that a person of ordinary skill in the art, knowing that the Amtmann devices operate at the working frequency and according to the ECMA-340 standard, would have recognized that the “oscillating circuit” in Amtmann should operate at center frequency, as specified in ECMA-340, in order to be compatible with other devices using the same standard. Id. at 42–45. We agree with and adopt Petitioner’s analysis discussed above. See KSR, 550 U.S. at 421 (“When there is a design need . . . 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.”). Therefore, Petitioner argues that a person of ordinary skill in the art would have had reason to combine the teachings of Amtmann and ECMA-340 and the combination of the teachings of Amtmann and ECMA-340 would achieve the apparatus recited in claims 13 and 29 of the ’664 patent. Pet. 45. Patent Owner does not dispute Petitioner’s argument that there was reason to combine the teachings of Amtmann and ECMA-340.7 Instead Patent Owner contends that, in view of its proposed constructions of the terms: “input terminal” and “two end terminals,” the combination of Amtmann and ECMA-340 fails to teach or suggest all of the limitations of claims 13 and 29. PO Resp. 10–13. In particular, Patent Owner contends that [i]n every instituted ground, HTC’s alleged antenna input terminal is the same as HTC’s alleged coil end terminals. HTC does not identify an antenna circuit that has at least one input terminal that is separate and different from the end terminals of the antenna coil. Because independent claims 13 and 29 require these features, claims 13 and 29 are patentable over the applied references. Id. at 10–11 (emphases added). As noted above, however, we do not construe claims 13 and 29 to “require” the at least one input terminal of the recited antenna circuit to be separate and different, i.e., “electrically distinct” from the end terminals of the antenna coil. See supra Section II.A.2. Therefore, we are not persuaded by Patent Owner’s contentions. For the reasons set forth above, Petitioner demonstrates by a preponderance of the evidence that claims 13 and 29 are unpatentable over Amtmann and ECMA-340.” slip op. at 23

  Patent outcomesUS 7,665,664 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,665,664
• Sophos, Inc. v. Finjan, Inc.Rehearing denied
  PTAB · Jan 28, 2016 · IPR2015-01022 · APJ Charles J Boudreau · IPR · Rehearing

  The Board denied Sophos’s rehearing request and left intact its denial of institution on all four grounds for claims 1, 10, 14, and 18.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “III. DISCUSSION 1. Standard for Reconsideration Under 37 C.F.R. § 42.71(d), A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. (emphasis added). When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” slip op. at 3

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

    “we remain unpersuaded by the evidence cited in the Petition for Petitioner’s assertions that TBAV and the combination of TBAV and Ji teach or suggest storing security profile data in a database. For the foregoing reasons, Petitioner has not demonstrated that we abused our discretion by not instituting inter partes review of claims 1, 10, 14, and 18 of the ’494 patent. IV. ORDER For the reasons given, it is ORDERED that Petitioner’s Request for Rehearing is denied.” slip op. at 10

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

    “Petitioner’s unreasonably broad interpretation of “database” as “any structured store of data.” Dec. 9–10. As we explained, Petitioner cited as evidence that one of ordinary skill in the art would understand “database” to have that meaning a claim construction order from an unrelated district court action, concerning claims of an unrelated patent, which did not construe the term “database” at all. Id.; see also Mangosoft, Inc. v. Oracle Corp., No. 02- 545-SM (D.N.H.), Claim Construction Order at 29 (Ex. 1020, 29) (construing the phrase “structured store of data”). Although that claim construction order provided database files “as examples of structured stores of data,” as Petitioner contends (Pet. 13), we discern no basis in Petitioner’s cited evidence to conclude that all structured stores of data are, therefore, databases. Indeed, the cited claim construction order construed “structured store of data” as “data that are organized in some recognized fashion (e.g., database files, word processing document files, or Web pages) and stored in the volatile and/or non-volatile memory of the various nodes participating in the shared memory system.” Ex. 1020, 29. Thus, if we were to adopt Petitioner’s interpretation of database as “any structured store of data,” that would lead to the conclusion in view of Petitioner’s cited evidence that a database is “any [data that are organized in some recognized fashion (e.g., database files, word processing document files, or Web pages) and stored in the volatile and/or non-volatile memory of the various nodes participating in the shared memory system].” We are not persuaded that “word processing document files” and “Web pages” are databases, although they presumably may be “organized in some recognized fashion” and “stored in volatile and/or non-volatile memory”; nor would it be helpful to interpret database circularly as “any . . . database files.” Petitioner’s arguments that its proposed construction is consistent with the disclosure in the ’639 application and the ’424 patent are also unpersuasive. First, the fact that security database 240 of the ’639 application is stored in data storage device 230 does not broaden the scope of the term “database” beyond its ordinary and customary meaning. Second, the reference to “database or other storage structure(s)” in the passage of the ’494 patent cited by Petitioner does not imply that “any structured store of data” is a database.” slip op. at 8

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

    “challenged claims, recites, inter alia, “deriving security profile data for [a] Downloadable, including a list of suspicious computer operations that may be attempted by the Downloadable.” Ex. 1001, 21:21–23, 22:11–13. In our Decision Denying Institution, we determined that TBAV discloses “detecting suspicious instruction sequences within a file and applying heuristic flags to the file,” and that heuristic flags could be termed “security profile data for [a] Downloadable.” Dec. 13. We explained, however, that “a suspicious computer operation might result from the execution of instructions deemed to be potentially hostile,” but that “instructions are not operations.” Id. at 8 (emphasis omitted). Petitioner argues in the Request for Rehearing that “[t]his is a distinction without a difference, as no operation can take place without execution of instructions, and the instructions dictate the operations that take place when the instructions are executed.” Reh’g Req. 5. According to Petitioner, “the Board misapprehended or overlooked Petitioner’s arguments that establish TBAV’s heuristic flags indicate suspicious operations and that TBAV lists heuristic flags in a log file.” Id. at 4–5. Petitioner’s arguments are not persuasive. Notwithstanding Petitioner’s current assertions, Petition argued in the Petition that TBAV’s heuristic flags are assigned to suspicious instructions. See, e.g., Pet. 18–19 (stating that “[TBAV’s] heuristic scanner . . . searches for suspicious instruction sequences” and that “[h]euristic flags are assigned to suspicious instructions, such as instructions that are common to viruses but uncommon to normal programs” (emphases added)). Notably missing from the Petition is any argument that TBAV’s heuristic flags derive a list of suspicious operations. We cannot have misapprehended or overlooked an argument not raised. Although the Petition did use the word “operations” in several parenthetical statements paraphrasing TBAV’s descriptions of certain heuristic flags, those references also are provided in the context of illustrating that the heuristic flags indicate suspicious instructions, and no argument is provided that the flags instead indicate operations: TBAV discloses that a heuristic flag is a character indicating a specific type of suspicious instruction. For example, the flags include “# - Decryptor code found” (indicating that the file contains instructions that perform self-decryption operations”, “A – Suspicious Memory Allocation” (“indicating the program contains instructions that perform non-standard memory search and/or allocation operations), “B – Back to entry” (indicating the program contains instructions that perform endless loop operations), . . . among others. Pet. 19 (emphases added) (citations omitted). Accordingly, we are not persuaded that Petitioner has shown that we misapprehended or overlooked argument or supporting evidence, or both, presented in the Petition, such that it amounted to an abuse of discretion.” slip op. at 4

  Claim construction§ 103 obviousness
  Patents in suitUS 8,677,494
• HTC Corporation / HTC America, Inc. et al. v. Parthenon Unified Memory Architecture LLCInstitution denied
  PTAB · Jan 6, 2016 · IPR2015-01494 · APJ Matthew R Clements · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted § 103 combinations.

  RulingsInstitution decision

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

    “Electronics Co., Ltd.; and Samsung Electronics America, Inc. (collectively “Petitioner”) filed a Petition requesting inter partes review of claims 1–4, 8– 12, 14, 15, 19, and 20 (“the challenged claims”) of U.S. Patent No. 8,054,315 B2 (Ex. 1001, “the ’315 patent”). Paper 2 (“Pet.”). Parthenon Unified Memory Architecture LLC (“Patent Owner”) did not file a Preliminary Response. We review the Petition pursuant to 35 U.S.C. § 314, which provides that an inter partes review may be authorized only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the accompanying evidence, we determine that the information presented by Petitioner does not establish that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims of the ’315 patent. Accordingly, pursuant to 35 U.S.C. § 314, we deny institution of an inter partes review.” slip op. at 2

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

    “Apart from the claims, the ’315 patent does not use the term “image decoder circuit.” The ’315 patent’s definition of “decoder” to mean “a video and/or audio decompression device,” and its disclosure that the “decoder/encoder” can be any conventional decoder complying with any conventional standard support a construction of “decoder” that encompasses both hardware and software, but those portions of the Specification do not use the word “circuit,” as the claim term recites. Elsewhere, the Specification uses “circuit” to describe hardware. See, e.g., Ex. 1001, 2:26 (referring to video decoding circuit 12), 3:2 (referring to interface circuit 146), 6:45–51 (referring to decoder/encoder 80 as either a device or a cell in an integrated circuit), 6:52 (referring to video decoding circuit 12), 14:60–62 (“Thus, decoding in a computer can be performed according to the invention by means of a low-cost (due to the small number of pins) single integrated circuit . . . .”). Based on our review, the ’315 patent does not use the word “circuit” to refer to software executing on hardware. The dependent claims, however, suggest that the “circuits” recited in claim 1 are not limited to physical hardware. Dependent claim 4, for example, recites “wherein the audio circuit includes a software audio decoding component” (id. at 16:17– 18 (emphasis added)), which suggests that the “audio circuit” recited in claim 1 is broad enough to encompass software. See also id. at 6:57–62 (“The audio decoding can be performed by a separate audio coder-decoder (codec) coupled to the first device 42, or through software. In the preferred embodiment of the invention, when the decoder/encoder 80 is in a system containing a processor and is coupled to the processor, the audio decoding is performed in software.” (emphasis added)). Similarly, dependent claim 8 recites “wherein the first, second, and third onboard memories are configured in the same onboard storage space,” which suggests that the “first onboard memory,” “second onboard memory,” and “third onboard memory” recited as components of the “image decoder circuit” in claim 1 are logical memories rather than distinct, physical memories. Accordingly, on this record, and for purposes of this Decision, we adopt Petitioner’s proposed construction of “image decoder circuit.”” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “On this record, Petitioner does not explain adequately how Gulick would have been modified. It is not clear from the Petition, for example, whether Petitioner is arguing that a person of ordinary skill in the art would have modified Gulick to perform the functions described in MPEG by writing software to execute on the one or more DSPs of Gulick’s multimedia engine 112, or by adding known decoder hardware to the one or more DSPs of Gulick’s multimedia engine 112. Dr. Stone’s testimony is equally insufficient. In paragraph 99, for example, Dr. Stone testifies that “it was well known in the art at the time of the alleged invention to employ a DSP for MPEG video processing.” Ex. 1030 ¶ 99 (citing Ex. 1007; Ex. 1023). Although Exhibit 1007 refers to its “MPEG accelerator circuit” as “a dedicated digital signal processor for video decompression” (6:56–57), it describes the video decompression engine as “hardwired (circuitry)” (7:2). Exhibit 1023, in contrast, suggests the use of software. Ex. 1023, 6:20–24 (“DSP engine 206 which is programmable to perform various functions such as MPEG decoding” (emphasis added)). To the extent Petitioner is arguing that a person of ordinary skill in the art would have implemented the functions described in MPEG by writing software to execute on the one or more DSPs of Gulick’s multimedia engine, we are not persuaded that such a modification would have been obvious. Gulick does not teach that multimedia engine 112 decompresses or decodes video. Although Gulick describes the multimedia engine as performing “video and audio processing functions” (see, e.g., Ex. 1017, 5:18), the examples described—“polygon rendering and texture mapping” (id. at 5:26)—relate to graphics processing rather than to video decoding or decompression. In addition, Gulick describes multimedia engine 112 as including “video processing circuitry and/or firmware” that converts video data into analog signals for output directly to video monitor 114 or for outputting digital video pixel data (id. at 5:37–61), which further suggests that the “video” functions performed by multimedia engine 112 relate to processing graphics data for output rather than to decoding or decompressing video. Neither Petitioner nor its expert explains in sufficient detail why or how a person of ordinary skill in the art would have programmed a DSP intended for graphics processing to perform the functions required for video decoding or decompression. To the extent that Petitioner is arguing that a person of ordinary skill in the art would have implemented the functions described in MPEG by adding known decoder hardware to Gulick’s multimedia engine 112, we are not persuaded that doing so would have constituted a combination of familiar elements according to known methods to yield predictable results. Petitioner also does not explain how known decoder hardware would be added to the digital signal processor of Gulick, or why a person of ordinary skill in the art would have been motivated to do so. Although Exhibit 1007 refers to its MPEG accelerator chip as a “dedicated digital signal processor,” we are not persuaded on that basis alone that the addition of dedicated video decoding hardware to any digital signal processor would have constituted a combination of familiar elements according to known methods to yield predictable results.” slip op. at 16

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

    “Independent claim 1 recites “a shared memory.” Petitioner identifies Gulick’s multimedia memory 160 and argues that it is “shared” because Gulick teaches that “arbiter block 161 performs arbitration between the CPU 102 and the multimedia engine 112 for the multimedia memory.” Pet. 22– 23 (quoting Ex. 1017, 4:41–43). We are not persuaded, however, that Gulick’s multimedia memory 160 is “shared.” The ’315 patent describes decoder/encoder 80 and a first device using a single memory. See, e.g., Ex. 1001, Figs. 2–4. Gulick, in contrast, describes main memory 110 in addition to multimedia memory 160. The system described in Gulick does not, therefore, realize the advantage of sharing a single memory described by the ’315 patent. Gulick describes CPU 102 as using primarily main memory 110: Referring again to FIG. 1, in the preferred embodiment, the main memory 110 stores the operating system and applications software as well as driver software, including video drivers and audio drivers. The CPU 102 executes applications software and driver software from the main memory 110 and writes any associated video and audio data to the main memory 110. The CPU 102 then provides high level instructions directly to the multimedia memory 160 and/or to the DMA engine 164, or to the multimedia engine 112. Ex. 1017, 6:13–22. Gulick describes CPU 102 using multimedia memory 160 only in exceptional circumstances, such as when main memory 110 is full: Thus the multimedia memory 160 is available to store non-multimedia data as needed. In other words, if the main memory 110 becomes full and additional memory is needed, the CPU 102 can store code and data in the multimedia memory 160. Thus, the multimedia memory 160 is used for real-time or multimedia data and is also used by the CPU 102 as overflow memory space. Id. at 4:34–40; see also id. at 8:2–3 (“Thus the multimedia memory 160 is available to store non-multimedia data as needed.”). Because multimedia memory 160 exists in addition to main memory 110 and because CPU 102 uses main memory 160 only in exceptional circumstances, we are not persuaded that multimedia memory 160 is the “shared memory” of claim 1. Moreover, to the extent Petitioner is arguing that Gulick’s main” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,054,315
• HTC Corporation / HTC America, Inc. et al. v. Parthenon Unified Memory Architecture LLCInstitution denied
  PTAB · Jan 6, 2016 · IPR2015-01503 · APJ Matthew R Clements · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 6–12, or 17 unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

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

    “Electronics Co., Ltd.; and Samsung Electronics America, Inc. (collectively “Petitioner”) filed a Petition requesting inter partes review of claims 1, 6– 12, and 17 (“the challenged claims”) of U.S. Patent No. 8,681,164 B2 (Ex. 1001, “the ’164 patent”). Paper 1 (“Pet.”). Parthenon Unified Memory Architecture LLC (“Patent Owner”) did not file a Preliminary Response. We review the Petition pursuant to 35 U.S.C. § 314, which provides that an inter partes review may be authorized only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the accompanying evidence, we determine that the information presented by Petitioner does not establish that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims of the ’164 patent. Accordingly, pursuant to 35 U.S.C. § 314, we deny institution of an inter partes review.” slip op. at 2

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

    “Petitioner proposes to construe the term to mean “hardware and/or software that translates data streams into video or audio information and vice versa.”2 Pet. 9–10 (citing Ex. 1001, 2:1–6 (“Video and/or audio compression devices (hereinafter ‘encoders’)” and “a video and/or audio decompression device (hereinafter ‘decoder’)”), 6:62–7:5, 15:38–41 (“[a]ny conventional decoder including a decoder complying to the MPEG-1, MPEG-2, H.261, or H.261 standards, or any combination of them, or any other conventional standard can be used as the decoder/encoder.”), 16:63–64, and 17:9–13). Petitioner further relies upon a dictionary definition for “decoder” as evidence of the term’s ordinary and customary meaning to a person of ordinary skill in the art as of the effective filing date of the ’164 patent, in the context of the entire patent including the Specification. Id. at 10 (citing Ex. 1014, 56 (“decoder (n). Any hardware or software system that translates data streams” slip op. at 8

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

    “Petitioner offers no other constructions of any claim term in the challenged claims. See Pet. 8–11. Only terms which are in controversy in this proceeding need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this Decision, no other claim terms require express construction.” slip op. at 9

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

    “Independent claim 1 recites “a shared main memory.” Petitioner identifies Gulick’s main memory 110 and multimedia memory 160 and argues that multimedia memory 160 is “shared” because Gulick teaches that DMA engine 164 “performs transfers between the main memory 110 and the multimedia memory 160.” Pet. 14–15 (quoting Ex. 1017, 4:44–46). We are not persuaded, however, that Gulick’s multimedia memory 160 is “shared” main memory. The ’164 patent describes decoder/encoder 80 and a first device using a single memory. See, e.g., Ex. 1001, Figs. 2–4. Gulick, in contrast, describes main memory 110 in addition to multimedia memory 160. The system described in Gulick does not, therefore, realize the advantage of sharing a single memory described by the ’164 patent. Gulick describes CPU 102 as using primarily main memory 110:” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,681,164
• Toyota Motor Corporation v. Cellport Systems, Inc.Institution denied
  PTAB · Dec 16, 2015 · IPR2015-01422 · APJ Scott C Moore · IPR · Institution

  The Board denied institution on all claims: claims 1–11 lacked a sufficient showing of the claimed network protocol converter structure, and claims 12–21 were denied as a second, delayed petition.

  RulingsInstitution decision

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

    “network communication means” claim limitation. Claims 2, 6, and 8–11 depend from claim 1 and, thus, incorporate this limitation by way of dependence. A petition for inter partes review “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Because the “first standard network communication means” is a means-plus-function claim limitation, Petitioner is required to show that both the recited function of this claim limitation and the corresponding structure or an equivalent are present in the applied references. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (“[A] challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.”). The Petition does not identify any structure in the applied references that is allegedly identical or equivalent to the corresponding structure of the “first standard network communication means” claim limitation, i.e., network protocol converter 26. Petitioner’s entire argument concerning the “first standard network communication means” of claims 1, 3, 4, 5, and 7, is reproduced below: Cao discloses a “first standard network communications means” (i.e., wireless Proxim radio link with base station) that uses Internet Protocol for “presenting information for transmission over the airlink in a first format that is acceptable to a first standardized network that includes the airlink” (i.e., TCP/IP format). See Ex. 1019 at 6; see also supra Section VIII.A.4. Pet. 40. Though Petitioner alleges that the “wireless Proxim radio link with base station” of Cao performs the recited function of the “first standard network communication means,” Petitioner does not compare the structure of the “wireless Proxim radio link with base station” of Cao to the structure of network protocol converter 26. Cited Section VIII.A.4 of the Petition similarly does not address the structure of the “wireless Proxim radio link with base station” of Cao. See Pet. 18–20. Thus, the Petition does not identify any structure in the applied references that is allegedly identical or equivalent to the corresponding structure of the “first standard network communication means” claim limitation. For the foregoing reasons, the Petition fails to show persuasively that the “first standard network communication means” claim limitation is found in the references that Petitioner relies upon with respect to claims 1–11. Thus, the information presented in the Petition is not sufficient to demonstrate a reasonable likelihood that Petitioner will prevail in demonstrating that claims 1–11 are unpatentable. 3.” slip op. at 18

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied

    “The 4½ month delay between Petitioner’s first and second Petitions is problematic for several reasons. First, the timing of this Petition makes consolidation impractical, and, thus, frustrates the interest of judicial economy. The oral hearing in IPR2015-00633 is set for April 14, 2016. IPR2015-00633, Paper 12. Thus, it would not be practical to institute a second inter partes review and consolidate that proceeding with IPR2015- 00633. See 35 U.S.C. § 315(d). Assuming that Petitioner has shown here a reasonable likelihood that claims 12–21 are unpatentable, two separate trials would be necessary, requiring the parties, as well as the Board, to expend significant additional resources. Second, even if we were to institute a second inter partes review involving claims 12–21, Petitioner might be unable to “maintain” the second inter partes review upon issuance of a final written decision in IPR2015-00633. 35 U.S.C. § 325(e)(1) provides that any final written decision in IPR2015-00633 on the patentability of claims 12–21 would preclude Petitioner from “maintain[ing] a proceeding before the Office . . . on any ground that the petition raised or reasonably could have raised during [the earlier] post-grant review.” Thus, instituting a second inter partes review may result in a significant waste of time and resources for the parties and for Board. See 37 C.F.R. § 42.1(b) (“This part shall be construed to secure a just, speedy, and inexpensive resolution of every proceeding.”). Third, the timing of the second Petition raises the potential for gamesmanship. Petitioner did not file this Petition until one month after Patent Owner filed its Preliminary Response in IPR2015-00633. The timing of the second Petition gave Petitioner the opportunity to preview the arguments set forth in the Patent Owner Preliminary Response in IPR2015- 00633. Petitioner also has not provided an adequate explanation for the 4½ month delay between the filing of this Petition and the filing of its previous Petition. Though Petitioner alleges that it was not aware of Cao “at the time it filed Petition No. 2015-00633” (Pet. 2), Petitioner does not state when and under what circumstances, during the 4½ months that preceded the filing of the current Petition, it became aware of Cao. Cao is a technical paper that was published by a major research university in the United States, and, thus, it is not clear on this record why Petitioner was unable to locate Cao at an earlier date. See Ex. 1019, 1. We further note that Petitioner has not identified any meaningful distinctions between the arguments regarding claims 12–21 in this Petition and the arguments Petitioner set forth in its earlier Petition. For instance, Petitioner does not explain in what ways the grounds asserted against claims 12–21 in this proceeding are superior to the grounds against the same claims and on the basis of which we instituted trial in IPR2015-00633. In view of the foregoing, we exercise our discretion and decline to” slip op. at 20

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “Despite the rebuttable presumption, we do not construe “controller means” as a means-plus-function claim limitation. The presumption is overcome because the claim language does not link the “controller means” to a specific recited function. See York Prod., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996) (“Without a ‘means’ sufficiently connected to a recited function, the presumption in use of the word ‘means’ does not operate.”). In addition, the presumption is overcome when the claim specifies detailed structure sufficient to perform any recited or implicit function, e.g., controlling. See TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008) (“Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.”); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1376 (Fed. Cir. 2003). Each of independent claims 1, 3, 4, 5, and 7 recites that the “controller means” includes the “processing means” and the “first standard network communication means.” As discussed herein, the processing means and the first standard network communication means are means-plus-function claim limitations that are defined in terms of specific structures disclosed in the Specification. Moreover, the recited “controller” is also a structure that is sufficient to perform any recited or implicit function of the “controller means.” The rebuttable presumption also is overcome because the controller means claim limitation is associated with these structures. Thus, in accordance with the ordinary and customary meaning of the claim language, and consistent with the Specification (see Ex. 1001, 2:66–3:29, 6:11–37, 8:1–45), for purposes of this Decision, we construe “controller means” as “a controller.” 3.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)§112(f) appliesDecided for patent owner

    “is a means-plus-function limitation is overcome because this limitation lacks an associated function. Prelim. Resp. 13. We agree. The grammatical structure of the claim and, in particular, the fact that the functional language cited by Petitioner appears immediately after the recitation of the “processing means” evidences an intent to associate this functional language with the “processing means” claim limitation. Thus, for purposes of this Decision, we construe “processing means” as a means-plus-function claim limitation having a recited function of “controlling the sending and receiving of said information using said wireless device between said first remote station and the vehicle.” “Structure disclosed in the specification qualifies as ‘corresponding structure’ if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.” Williamson, 792 F.3d at 1352. The Specification of the ’074 Patent indicates that the sending and receiving of vehicle information between the remote station and the vehicle is controlled by processor 90 in conjunction with real time operating system 94. See Ex. 1001, 8:1–23, 13:54–56. Data memory 106 is not linked clearly to the recited function because data memory 106 merely stores information, and does not control the sending and receiving of information. See id. 8:45–58, 9:31–45, 10:58–64, 13:8–10, 23–26. Thus, the structure in the Specification that corresponds to the “processing means” is “processor 90 in conjunction with real time operating system 94.”” slip op. at 11

  Claim constructionDiscretionary denialcites Graham
  Patents in suitUS 5,732,074
• Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCRehearing denied
  PTAB · Nov 12, 2015 · IPR2014-00304 · APJ James B Arpin · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving intact its final decision that claims 24 and 25 are unpatentable as obvious over Gass.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION 1. Standard for Reconsideration 37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. (emphasis added). When reconsidering a Final Written Decision, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). Thus, a request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “selected sequence of fastening” from claim 24 during prosecution necessarily alters the construction of additional terms in the claims. Reh’g Req. 3–6 (discussing “fastening location,” “predetermined sequence,” “fastening monitor,” and “sequence output”). With respect to these claim interpretation arguments, however, Patent Owner again fails to identify where each of these arguments was raised previously.1 Moreover, with respect to the effect of any such disavowal on the interpretation of other claim terms, we could not have misapprehended or overlooked arguments that Patent Owner did not raise previously. Even if we addressed this new argument, as Patent Owner urges we must under Microsoft Corp. v. Proxyconn, Inc., it fails. Patent Owner asserts that its clear disavowal may be drawn from a comparison of claim 1 with claims 7 and 11 and the addition of claim 46, which became challenged claim 24, “to focus on one of the important aspects of the present invention, namely the predetermined sequence program requiring a predetermined sequence fastening.” Req. Reh’g 2 (quoting Ex. 1006, 17); PO Resp. 22–23. This, however, does not rise to the level of an unequivocal and unambiguous disavowal of claim scope to narrow the meaning of the claim as 1 New arguments may not be raised at an oral hearing. Patent Owner’s challenge during the oral hearing to Petitioner’s allegedly late submission of a dictionary definition of “location” does not make these arguments part of the record. Reh’g Req. 3–4 (citing Tr. 43:6–18). Patent Owner asserts. See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1094-95 (Fed. Cir. 2013). Patent Owner also argues that governing case law requires that we consider the prosecution history. Patent Owner notes that, in Microsoft Corp. v. Proxyconn, Inc., the Federal Circuit observed that the Board “should also consult the patent's prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Nos. 2014-1542, 2014-1543, 2015 WL3747257 at *3 (Fed. Cir. Jun. 16, 2015). In this regard, Patent Owner argues that we are bound by the Examiner’s claim construction resulting from Applicants’ disavowal of scope during prosecution. Reh’g Req. 7–8 (citing Tr. 55:17–18); see Tr. 55:13–24. As the prosecution history makes clear, Patent Owner proffered a new claim 46 during prosecution “to focus on one of the important aspects of the present invention, namely the predetermined sequence program requiring a predetermined sequence fastening,” but not in response to any Examiner request (Ex. 1006, 17) unlike the situation in Tempo Lighting, Inc. v. Tivoli, LLC. Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014). Thus, we are not persuaded that Patent Owner has identified a claim construction resulting from the prosecution history that constitutes a “deal” between Applicants and the Examiner, binding on this panel. See Reh’g Req. 3 (“A deal was made to secure allowance of the claims by specifically amending them to only read on the ‘predetermined sequence program’ embodiment of the specification that requires a predetermined sequence of fastening among locations 52a–52c.”; emphasis added). Even if we were to accept Patent Owner’s arguments that a clear disavowal of claim scope exists in the prosecution history of the ’573 patent, as the Federal Circuit observed, in such a situation, “the PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.” Tempo Lighting, 742 F.3d at 978. Therefore, we are not persuaded that our consideration of the prosecution history was contrary to governing precedent, as argued by Patent Owner, such that it amounted to an abuse of discretion.” slip op. at 5

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Nevertheless, as Petitioner notes, Mr. Osentoski testified that Gass teaches that its predetermined sequence is programmed “before the operator begins the process of assembly the bolts at the process sites.” Ex. 2032, 15:19–16:2. In response to essentially the same questions presented repeatedly by Wildcat’s counsel, Mr. Osentoski consistently testified that Gass teaches the “predetermined sequence” and “sequence output” claim elements. E.g., id., 19:12–20:5; 21:14–22:2; 27:10–17; 30:2–31:2; 44:2–23. Paper 38, 4. Thus, we were not persuaded that Patent Owner’s characterization of Mr. Osentoski’s response to this question should be read to outweigh Mr. Osentoski’s repeated and otherwise consistent testimony on this point.  Therefore, we are not persuaded that we misapprehended or overlooked a significant inconsistency in Mr. Osentoski’s testimony.” slip op. at 7

  Claim construction
  Patents in suitUS 6,763,573
• Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCRehearing denied
  PTAB · Nov 12, 2015 · IPR2014-00305 · APJ James B Arpin · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request and left in place its final decision that claims 22–28 were unpatentable under § 103(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION 1. Standard for Reconsideration 37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. (emphasis added). When reconsidering a Final Written Decision, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). Thus, a request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “claims 7 and 11 and the addition of claim 46, which became challenged claim 24 of the parent patent to the ’831 patent, Patent No. US 6,763,573 B2 (Ex. 1001, “the ’573 patent”), “to focus on one of the important aspects of the present invention, namely the predetermined sequence program requiring a predetermined sequence fastening.” Req. Reh’g 2 (quoting Ex. 1006, 17); PO Resp. 22–23. This, however, does not rise to the level of an unequivocal and unambiguous disavowal of claim scope to narrow the meaning of claim 22 of the ’831 patent, as Patent Owner asserts. See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1094-95 (Fed. Cir. 2013).” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Nevertheless, as Petitioner notes, Mr. Osentoski testified that Gass teaches that its predetermined sequence is programmed “before the operator begins the process of assembly the bolts at the process sites.” Ex. 2033, 15:19–16:2. In response to essentially the same questions presented repeatedly by Wildcat’s counsel, Mr. Osentoski consistently testified that Gass teaches the “predetermined sequence” and “sequence output” claim elements. E.g., id., 19:12–20:5; 21:14–22:2; 27:10–17; 30:2–31:2; 44:2–23. Paper 39, 4. Thus, we were not persuaded that Patent Owner’s characterization of Mr. Osentoski’s response to this question should be read to outweigh Mr. Osentoski’s repeated and otherwise consistent testimony on this point. Therefore, we are not persuaded that we misapprehended or overlooked a significant inconsistency in Mr. Osentoski’s testimony.” slip op. at 8

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

    “We agree with Petitioner that the broadest reasonable interpretation of “fastening location” is not limited to a single opening, but may encompass a position or site where fastening occurs when assigned its ordinary meaning. See Ex. 1041, 3. Having to make such a distinction between a single opening and a fastening site with more than one opening is negated, however, by the open transitional phrase, [“comprising,”] in claim 22. Because claim 22 uses the open transitional phrase “comprising,” additional fastening operations between the first and second fastening operations are not excluded, as long as the predetermined sequence between the first and second locations is maintained. See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) (“In the patent claim context, the term ‘comprising’ is well understood to mean ‘including but not limited to.’”); Ex. 1001, 12:13–16 (contemplating a “plurality” of fastening locations, but [“at least”] first and second fastening locations). Final Dec. 8 (emphasis added). This interpretation does not change the order of the recited operations, but acknowledges that other operations may be encompassed within the scope of the challenged claims. Thus, we have not abused our discretion by misapplying governing precedent. In addition, Patent Owner fails to identify where it made these arguments previously in its Patent Owner Response. Because Patent Owner has not raised these arguments in its Patent Owner Response, we could not have misapprehended or overlooked an argument that Patent Owner did not raise previously.” slip op. at 9

  Claim construction
  Patents in suitUS 7,062,831
• Ets-Lindgren Inc. v. Microwave Vision, S.A.Institution denied
  PTAB · Oct 26, 2015 · IPR2015-01048 · APJ Rama G Elluru · IPR · Institution

  The Board denied institution because claim 12’s means-for-pivoting limitation lacked identified corresponding structure for pivoting both the probe network and support.

  RulingsInstitution decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other

    “for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112 ¶ 6.5 A limitation using the term “means for” creates a rebuttable 5 Section 4(c) of the Leahy-Smith America Invents Act (AIA) re-designated 35 U.S.C. § 112 ¶ 6, as 35 U.S.C. § 112(f). Because the ’170 patent has a filing date before September 16, 2012 (effective date of the statute), we will refer to the pre-AIA version of 35 U.S.C. § 112. presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6. When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, we must first identify the claimed function, and we then look to the specification to identify the corresponding structure that performs the claimed function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Our Rules specifically require that the petition identify the corresponding structure in proposing a construction for a means-plus-function claim limitation. Specifically, “[w]here the claim to be construed contains a means-plus-function or step-plus-function limitation, as permitted under 35 U.S.C. § 112 [¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Furthermore, with respect to the second step, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004) (citations and quotation marks omitted); Cardiac Pacemakers, 296 F.3d at 1113 (“the structure must not only perform the claimed function, but the specification must clearly associate the structure with the performance of the function”). “This inquiry is undertaken from the perspective of a person of ordinary skill in the art.” Cardiac Pacemakers, 296 F.3d at 1113. Claimed function ETS and Microwave agree that the “means for pivoting” limitation of claim 12 should be construed in accordance with 35 U.S.C. § 112 ¶ 6. Pet. 18– 19; Prelim. Resp. 14–25. The parties, however, disagree as to the scope of the claimed function. According to ETS, [a] key dispute in the parties’ underlying litigation is whether this claimed function requires movement of both ‘one or more of the network of probes’ and ‘the support,’ or if movement of one or the other is within the scope of the claim. Pet. 19. In the present Petition, ETS asserts that “[t]he ‘one or more’ language [of the means for pivoting limitation] unambiguously refers to the network of probes, namely that less than all of the probes may be moved.” Id. at 21 (emphasis added). ETS argues that the claimed function of this limitation requires movement of the network of probes and the support. Id. at 19. Microwave argues that the claimed function of this limitation is “pivoting the network of probes, the support, or both.” Prelim. Resp. 14. We need not decide whether the claimed function of the “means for pivoting” limitation is limited to pivoting both the network of probes and the support, as urged by ETS, or whether it also includes pivoting either the network of probes or the support, as urged by Microwave. For purposes of this Decision, we accept that the claimed function at least includes pivoting6 both the network of probes and the support, as urged by both parties.7 In other words, the parties agree that one of the claimed functions of the “means for pivoting” limitation is pivoting the network of probes and the support. “Where there are multiple claimed functions . . . the patentee must 6 ETS uses the term “movement” in arguing the scope of the claimed function. Pet. 19. However, “a court may not construe a means-plus-function limitation ‘by adopting a function different from that explicitly recited in the claim.’” JVW Enters., Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1331 (Fed. Cir. 2005) (quoting Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999)). Thus, we determine the claimed function requires “pivoting” as that is the term expressly recited in the claim limitation. 7 Even under ETS’s construction, whereby the clause “at least one of” refers to the network of probes, and, thus, “less than all of the probes may be moved” (Pet. 21), the scope of the claimed function includes pivoting the entire network of probes and the support. disclose adequate corresponding structure to perform all of the claimed functions.” Media Rights Techs., Inc. v. Capital One Fin. Corp., No. 2014-1218, 2015 WL 5166358, *6 (Sept. 4, 2015) (quoting Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1318–19 (Fed. Cir. 2012)).” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner

    “As we noted above, because this is a means-plus-function limitation under 35 U.S.C. 112 ¶ 6, ETS’s proposed construction must identify the specific portions of the Specification that describe the structure, material, or acts corresponding to the claimed dual function. 37 C.F.R. § 42.104(b)(3). Moreover, the ’170 patent Specification must “clearly associate” structure with performance of the dual function. See Cardiac Pacemakers, 296 F.3d at 1113– 14. ETS’s Petition is deficient for failing to identify structure that corresponds to the full scope of the claimed function. Although ETS urges that the claimed function of the “means for pivoting” limitation is movement of the network of probes and the support (Pet. 19), ETS does not identify corresponding structure that performs the dual function—pivoting the network of probes and pivoting the support. Rather, ETS identifies structures disclosed in Figure 1 “for pivoting the support” (Pet. 23 (citing Ex. 1001, 3:22–38) and separate structures disclosed in Figure 2 for pivoting the probes (id. at 25 (citing Ex. 1001, 3:40–49)). ETS, however, does not identify structure that both pivots the network of probes and the support. Specifically, ETS does not argue expressly that the structure corresponding to the dual function of pivoting the network of probes and pivoting the support is the combination of these structures disclosed in Figures 1 and 2 of the ’170 patent. See Pet. 23–25.8 ETS does assert that “the patent never refers to Figures 1 and 2 as mutually exclusive ‘embodiments’” and rather that “it uses two figures to describes the operation of the two moving components.” Id. at 22. Although the ’170 patent Specification does not refer to the structures in Figures 1 and 2 as mutually exclusive, that silence alone is insufficient to “clearly associate” the combination of structures disclosed in Figures 1 and 2 as 8 ETS’s petition is also deficient under 37 C.F.R. § 42.104(b)(3) because it does not identify corresponding structure for its own proposed construction. ETS argues that the “one or more” claim language refers to the network of probes and that “less than all of the probes may be moved.” Pet. 21. As Microwave argues (Prelim. Resp. 15), however, ETS does not identify any structure in the ’170 patent Specification that corresponds to pivoting fewer than all of the probes in the network of probes. See Pet. 19–25. ETS contends that the Specification “provides only one structure for moving any probe” (Pet. 25 (citing Ex. 1001, 3:40–49)), and identifies an “arc mounted on rollers and an electric motor drive.” Pet. 25. The Specification explains, however, that the rollers 50 allow the arc (i.e., the entire network of probes) to pivot on itself and that electric motor drive 60 is provided for the purpose of moving the arc on itself with an angular motion. Ex. 1001, 3:41–46. ETS does not explain how the structures disclosed in this embodiment perform, and, thus, correspond to, pivoting less than all of the probes in the network of probes. corresponding to the dual function. ETS’s failure to comply with 37 C.F.R. § 42.104(b)(3) is basis alone to deny an inter partes review of claim 12.” slip op. at 11

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

    “identified by ETS or our review of the Specification, that clearly associates structure with pivoting the network of probes and the support, there is no disclosed corresponding structure for the “means for pivoting one or more of the network of probes and the support,” as recited in claim 12. For these reasons, we determine that Petitioner has not met its burden of showing a reasonable likelihood of prevailing in any of its challenges and that, on this record, the recitation “means for pivoting one or more of the network of probes and the support” cannot be construed. III. CONCLUSION Accordingly, because we determine that ETS has not identified structure corresponding to the “means for pivoting” limitation recited in claim 12 of the ’170 patent, as required by 37 C.F.R. § 42.104(b)(3), and further, because we cannot construe the challenged claim, we deny ETS’s Petition for inter partes review. IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 16

  Claim construction
  Patents in suitUS 7,443,170

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