- Snap Inc. v. Sanderling Management Ltd.InstitutedPTAB · Nov 9, 2021 · IPR2021-00781 · APJ Timothy J Goodson · IPR · Institution
The Board instituted IPR on all challenged claims, finding a reasonable likelihood that claims 1, 3, 18, and 20 were obvious over Hogeg and claims 3, 7, 17, 20, 24, and 34 over Hogeg and …
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We agree with Petitioner that this factor weighs against discretionary denial. As Wyze explained, the reason a stay favors institution is because it “allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Because the [district] court decided an issue that does not overlap with those presented in this proceeding, and the [district] court is not likely to address the obviousness issues before our final written decision (if it addresses the issues at all), the [district] court’s ruling has allayed any concerns about inefficiency and duplication of efforts between us and the [district] court. Wyze, Paper 14 at 10. The same reasoning applies here. The district court’s judgment of invalidity under § 101 and Patent Owner’s appeal of that judgment virtually assures that the district court will not be considering the same obviousness issues presented in this Petition during the course of this proceeding.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Patent Owner that the same or substantially the same art or arguments were previously considered by the Examiner during prosecution of the ’986 patent. There is no dispute that Hogeg was at least considered by the Examiner, even if the Examiner never discussed Hogeg or applied it in a rejection. See Ex. 1002, 502. Advanced Bionics Part One asks whether a reference was previously presented to the Office, not whether the Office formed a rejection based on the reference. See Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS).”). Although Petitioner correctly points out that Arujunan was not of record during prosecution of the ’986 patent, Petitioner relies on Hogeg alone for its challenge to claims 1, 3, 18, and 20. See Pet. 11, 18. Under these circumstances, we find Advanced Bionics Part One satisfied because the prior art before the Examiner was substantially the same as the prior art relied on in the Petition.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the current record, we determine that Petitioner has established a reasonable likelihood of prevailing in its contention that claim 1 would have been obvious over Hogeg. 3. Claims 3, 18, and 20 Claim 18 is a system claim that recites many limitations similar to those recited in claim 1. See Ex. 1001, 24:55–25:14. Petitioner contends that Hogeg teaches or renders obvious each of the limitations of claim 18, referring back to its arguments regarding claim 1 for common subject matter. See Pet. 59–65. Claims 3 and 20 recite similar features but depend from different claims: claim 3 depends from claim 1, while claim 20 depends from claim 18. See Ex. 1001, 24:3–7, 25:17–21. Petitioner asserts, with detailed citations to the record, that Hogeg teaches the limitations of claims 3 and 20. See Pet. 57–59, 65. We determine, on the current record, that Petitioner has established a reasonable likelihood of prevailing in its contention that claims 3, 18, and 20 would have been obvious over Hogeg.” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 21. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Id. (citing Ex. 1003 ¶¶ 173–174). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC, 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,108,986 - Snap Inc. v. Sanderling Management Ltd.InstitutedPTAB · Nov 9, 2021 · IPR2021-00780 · APJ Timothy J Goodson · IPR · Institution
The Board instituted review of claims 1, 2, 4–6, 8–16, 18, 19, 21–23, and 25–33 because Snap showed a reasonable likelihood they would have been obvious over Hogeg.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Concerning [1b], Petitioner relies on Hogeg’s system 100, which includes network servers, as the claimed “at least one hardware processor,” and the visual content editing functions stored in Hogeg’s repository 104 as the claimed “one or more digital media content processing functions.” Id. at 28–32. Petitioner argues that Hogeg teaches that its visual content editing functions are “associated with at least one distribution rule defining a sensor data condition” as claimed because a subset of functions are selected and distributed based on sensed conditions such as client terminal location. Id. at 33–41. Turning to [1c], Petitioner argues that Hogeg teaches receiving over network 101 sensor data from client terminals 102 that is determined according to outputs of GPS units of client terminals 102. Id. at 42–46. As to [1d], Petitioner argues that Hogeg teaches distributing digital media content processing functions to mobile devices “based on a match between the sensor data condition . . . and the sensor data of the at least one mobile device” as claimed because it describes sending a subset of visual content editing functions to a client terminal based on matching the GPS data from the mobile device with location information related to the visual editing functions stored in system 100. Id. at 46–50. Finally, with respect to [1e], Petitioner asserts that Hogeg teaches that “the at least one digital media content processing function is configured to be used by an application executed on the at least one mobile device” as claimed because Hogeg describes that its visual content editing function is configured to be used by an app, widget, or add-on in client terminal 102. Id. at 50–52. Further, Petitioner asserts that Hogeg’s content editing function “process[es] a digital media content to create an output digital media content” as claimed because it processes an image on a client terminal and creates a new image, which is a modified version of the original image. Id. at 50, 52–55. Based on the current record, we determine that Petitioner has” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“because it “allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Because the [district] court decided an issue that does not overlap with those presented in this proceeding, and the [district] court is not likely to address the obviousness issues before our final written decision (if it addresses the issues at all), the [district] court’s ruling has allayed any concerns about inefficiency and duplication of efforts between us and the [district] court. Wyze, Paper 14 at 10. The same reasoning applies here. The district court’s judgment of invalidity under § 101 and Patent Owner’s appeal of that judgment virtually assures that the district court will not be considering the same obviousness issues presented in this Petition during the course of this proceeding.” slip op. at 13
- Parallel petitionsDecided for petitioner
“We are satisfied that Petitioner has provided an adequate justification for filing two petitions to challenge the ’986 patent. The Board’s Practice Guide notes that a need to address a large number of claims is one example of a circumstance where more than one petition may be necessary. See Patent Trial and Appeal Board, Consolidated Trial Practice Guide, at 59 (Nov. 2019). Beyond the number of challenged claims, it is reasonable for Petitioner to question how it could effectively challenge in a single petition a claim set that, by itself, fills out 10% of the permissible word count. Finally, Petitioner shows that the two petitions have been structured in a way to minimize the burden on the Board and Patent Owner, by presenting a small number of grounds with consistent arguments that rely on the same art. See, e.g., Google LLC v. Jenam Tech, LLC, IPR2021-00629, Paper 11 at 9 (PTAB Sept. 20, 2021) (finding that Petitioner had provided a satisfactory explanation for filing two petitions against a single patent because “[e]ach petition challenges different claims and presents only one ground against each claim,” as opposed to “a situation where a petitioner is using two petitions to lodge multiple parallel challenges to the same claims”).” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Based on our review of the current record, we find that Petitioner has shown that the Examiner erred in failing to reject the claims based on Hogeg. As noted previously, the prosecution history of the ’986 patent includes no analysis or discussion of Hogeg. “[I]f the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive.” Advanced Bionics, Paper 6 at 10. The Examiner’s explanation of why the claims were allowable over the prior art of record focused on “the combination of distribution rule defining a sensor data condition and sensor data.” Ex. 1002, 498. However, Petitioner provides a detailed discussion of why Hogeg discloses those features. See Pet. 28–42, 44–46. In its Preliminary Response, Patent Owner does not contest Petition’s contentions regarding these limitations (or any other aspect of the merits of Petitioner’s challenges). See Prelim. Resp. 1–16. As discussed below, we determine on the current record that Petitioner establishes a reasonable likelihood that Petitioner would prevail in demonstrating that the challenged claims would have been obvious based on Hogeg. We also find Petitioner’s showing sufficient to establish that the Examiner erred. The parties’ reliance on the prosecution of related patents involving allegedly similar claims does not impact the outcome of our analysis. See Pet. 17 (mentioning, without elaboration or citation, the EPO rejection of claims); Prelim. Resp. 14–15 (addressing allowance of claims over Hogeg and other material). Because we find that Petitioner made a sufficient showing of Examiner error without relying on the EPO rejection of allegedly similar claims, we need not assess the probative value of the EPO’s rejection, the details of which are not discussed in this Petition. As to Patent Owner’s reliance on the prosecution history of related claims before different Examiners that considered Hogeg and related materials, those arguments do not undermine Petitioner’s showing of Examiner error. First, Patent Owner acknowledges that although the Examiners considered Hogeg, “neither Examiner specifically discussed Hogeg in allowing claims” that were at issue. Prelim. Resp. 15. Second, even if the claims in the related applications are “similar” to the challenged claims, Patent Owner’s briefing does not provide any detailed analysis of the related claims sufficient to determine how the claims in later applications differ from the challenged claims here, and whether those differences are material. See id. at 14–15. Based on the foregoing, we cannot conclude that the Examiners’ allowance of the claims in other applications over Hogeg amounted to a finding that Hogeg fails to disclose one of the limitations in the challenged claims here. Further, even if we agreed that such an implicit finding was made during later prosecution, Petitioner’s challenge based on Hogeg in the Petition provides more compelling evidence of Examiner error than the prosecution of related claims that lack any direct discussion of Hogeg. 5. Conclusion Based on our review of the current record, we determine that Petitioner has demonstrated that the Examiner erred in a manner material to the patentability of challenged claims. Accordingly, we decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,108,986 - Snap Inc. v. Sanderling Management Ltd.InstitutedPTAB · Nov 9, 2021 · IPR2021-00779 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–11 on all asserted grounds, finding a reasonable likelihood that Snap would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). 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 briefing thus far, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence (“PTAB Rules”), 85 Fed. Reg. 79,120, 79,120 (Dec. 9, 2020) (to be codified at 37 C.F.R. pt. 42) (“[T]he Board will either institute review on all of the challenged claims and grounds of unpatentability presented in the petition or deny the petition.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We agree with Petitioner that this factor weighs against discretionary denial. As Wyze explained, the reason a stay favors institution is because it “allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Because the [district] court decided an issue that does not overlap with those presented in this proceeding, and the [district] court is not likely to address the obviousness issues before our final written decision (if it addresses the issues at all), the [district] court’s ruling has allayed any concerns about inefficiency and duplication of efforts between us and the [district] court. Wyze, Paper 14 at 10. The same reasoning applies here. The district court’s judgment of invalidity under § 101 and Patent Owner’s appeal of that judgment virtually assures that the district court will not be considering the same obviousness issues presented in this Petition during the course of this proceeding.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Patent Owner that the same or substantially the same art or arguments were previously considered by the Examiner during prosecution of the ’866 patent. There is no dispute that Hogeg was at least considered by the Examiner, even if the Examiner never discussed Hogeg or relied on it in any manner. See Ex. 1002 at 132. Although Petitioner correctly points out that neither Svendsen nor Arujunan was of record during prosecution of the ’866 patent, Petitioner only relies on those references for its challenges to dependent claims 3 and 11. See Pet. 63–77. Petitioner relies on Hogeg alone for its challenge to claims 1, 2, and 4–10. See Pet. 27–63. Under these circumstances, we find the first part of the Advanced Bionics satisfied because the prior art before the Examiner was substantially the same as the prior art relied on in the Petition.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “at the time of the alleged invention would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 23–24. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Pet. 24 (citing Parulski Decl. ¶¶ 186–187). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 27
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,639,866 - PTAB · Oct 15, 2020 · IPR2019-00995 · APJ Timothy J Goodson · IPR · Final written decision
The Board granted the non-contingent motion to amend, canceling claims 2, 8, 10, 18, 19, 28–30, 32–34, 37, 38, 40–42, 45, and 47 and substituting claims 48–62, which were not shown obvious.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“minimal probative value because Patent Owner has not adequately demonstrated a nexus between the asserted objective indicia and the merits of the claimed invention. Mot. to Exclude 3–4; Reply Mot. to Exclude 1–2. This argument attacks the merits of Patent Owner’s substantive arguments on objective indicia and does not establish an evidentiary basis for excluding Mr. Van Vliet’s testimony. We agree with Patent Owner that Mr. Van Vliet’s testimony is relevant to the issue of objective indicia of nonobviousness. See Opp. Mot. to Exclude 1–2. Petitioner also argues that Mr. Van Vliet’s declaration should be excluded because it contains hearsay. Mot. to Exclude 4–6; Reply Mot. to Exclude 2. Petitioner states that it “is not moving to exclude based on the fact that the Declaration itself [is] hearsay, but rather that it contains a multitude of statements therein that are themselves hearsay, made by persons other than Van Vliet . . . .” Mot. to Exclude 5. However, as Patent Owner points out, Petitioner does not identify any specific statements in the declaration that constitute hearsay. Opp. Mot. to Exclude 4. Even after Patent Owner pointed out this lack of specificity, Petitioner’s Reply still does not clarify which specific statements in the declaration are alleged to be hearsay and instead simply repeats the assertion there are “a multitude of statements therein that are themselves hearsay.” Reply Mot. to Exclude 2.” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“however, we first consider whether Patent Owner’s Revised Motion to Amend meets the statutory and regulatory requirements of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4. To satisfy those requirements, Patent Owner must demonstrate that: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; and (4) the proposed claims are supported in the original disclosure (and any earlier filed disclosure for which the benefit of filing date is sought). See 35 U.S.C. § 316(d) (2018); 37 C.F.R. § 42.121 (2018).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We determine that the plain language of the claim, which requires that the fuel delivery connections “compris[e]” the fuel level sensor, shows that the fuel level sensor is structurally connected to the fuel level sensor. As Petitioner agrees, this claim language requires that the fuel delivery connection includes the fuel level sensor. Tr. 34:17–20. Both the fuel delivery connections and the fuel level sensor are structures, so for one to include the other, they must be physically connected. Petitioner’s argument give effect to the word “comprising.” Because a fuel delivery connection and a fuel level sensor would be operationally connected in any system that has both items, Petitioner’s interpretation essentially reads out the word “comprising” and treats the claim phrase as if it recited “fuel delivery connections and a fuel level sensor.” Our interpretation that the fuel delivery connections must be physically connected to the fuel level sensor is more faithful to the claim’s recitation that the fuel delivery connections “compris[e]” the fuel level sensor. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”) (quoting Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005)).” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“a low and high fuel level in the tanks to which the fuel delivery connection is connected.” RMTA A1. Patent Owner proposes that “low” fuel level means “empty or nearly empty” and “high” means “full or nearly full.” Id. at 5 nn.16–17 (citing Ex. 1001, 4:1–4, 6:7–12; Ex. 2002, 10). Petitioner does not contest Patent Owner’s proposed constructions or offer competing constructions for these terms. See generally Opp. RMTA; Tr. 13:17–15:14. Although Patent Owner’s argument in support of these constructions is truncated, we determine that Patent Owner’s proposals are supported by the evidence of record. The ’906 patent describes that operators can be provided with “visual representations or displays showing the fuel level in each of the tanks 12. Any visual representation or display may be used that shows at least a high level condition (tank full) and a low level condition (tank empty or nearly empty) and preferably also shows actual fuel level.” Ex. 1001, 3:66–4:4; see also id. at 6:7–10 (explaining that “[t]he control station 56 may be provided with a full readout or display for each fuel tank 12 being filled that shows the level of fuel in the fuel tank 12 including when the fuel tank 12 is near empty and near full. An alternative is to provide only fuel empty (low sensor dry) or fuel full (high sensor wet) signals.”). These descriptions equate a high fuel level with the tank being full or nearly full and a low fuel level with the tank being empty or nearly empty. Patent” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,029,906 - Weber, Inc. v. Provisur Technologies, Inc.Rehearing deniedPTAB · Aug 5, 2020 · IPR2019-01463 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied Weber’s rehearing request, finding no error or abuse of discretion in denying institution on claims 1–22.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“First, the plain language of claim 1 unambiguously recites a causal link between the roller and the movement of the end of the conveying surface of the belt. Specifically, claim 1 recites: “an endless circulating belt having an upper conveying surface.” Ex. 1001, 6:33–34. The claim requires that the belt is “circulated to move [articles] . . . to an end of said conveying surface.” Id. at 6:40–41. The claim recites a “roller” that controls “a belt accumulation region” of the belt. Id. at 6:35–36. The claimed roller must also cause the end of the conveying surface of the belt to move because the “position of said end is moveable . . . by longitudinal positioning of said roller.” Id. at 6:45–49 (emphasis added). The phrase that “end is moveable by longitudinal positioning of said roller” unambiguously requires longitudinally positioning the roller to cause the end of the conveying surface to move. The Specification bolsters our plain reading of claim 1 where it states: “Movement of the pulley 42 controls the extension or retraction of the top region 34, and the position of an end 50 of the top region 34.” Ex. 1001, 4:13–15. Figure 3 (reproduced below) illustrates the manner in which the movement of pulley 42 controls the longitudinal movement of the end 50 of the conveying surface (i.e., top region 34). In the embodiment illustrated below, roller 42 constitutes the claimed roller, top region 34 constitutes the claimed conveying surface, and end 50 constitutes the claimed end of the conveying surface.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“an interpretation of “roller.” Patent Owner argued that the roller of claim 1 must both control the accumulation region of the belt and move longitudinally to cause movement of the end of the conveying portion of the belt. Prelim. Resp. 11. Patent Owner conceded that Rheon’s roller 11 met the first requirement of the claimed roller, namely, controlling the accumulation region of the belt. Id. at 23, n.6. However, Patent Owner also argued, id. at 24–26, and we agreed, that movement of Rheon’s roller 11 did not cause movement of the end of the conveying surface, Dec. 8–11. We need not repeat our analysis here because Petitioner identifies no error in our understanding of the manner in which Rheon operates. See Reh’g Req. 11–14 (arguing only errors in our claim interpretation). III. CONCLUSION For the reasons expressed above, we determine that Petitioner has failed to demonstrate error or an abuse of discretion in our Institution Decision. Accordingly, we deny Petitioner’s Request for Rehearing.” slip op. at 6
Claim constructionPatents in suitUS 6,669,005 - SZ Dji Technology Co., Ltd. v. Drone-Control, LLCAll claims unpatentablePTAB · May 29, 2019 · IPR2018-00206 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–18 are unpatentable, principally because Thornberg ’983 anticipates them or renders them obvious; the contingent motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have an equivalent of a Bachelor’s degree from an accredited institution in electrical engineering, mechanical engineering, aeronautical or astronautical engineering, robotics, computer science, or any other discipline covering principles of design, operation, and/or control of unmanned aerial vehicles, including remote-controlled vehicles, and would have a working knowledge of the design, development, implementation, or deployment of such technologies. Additional education could substitute for experience, and significant experience could substitute for formal education. Pet. 12 (citing Ex. 1003 ¶ 28). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Tr. 77:1–6; see also Ex. 2005 ¶ 48 (Patent Owner’s declarant adopting this definition of the person of ordinary skill in the art for purposes of declaration testimony).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“The only question, then, is whether orientation data can suffice by itself to qualify as “motion data,” as Petitioner contends, or whether data indicating a change in the vehicle’s position is essential, as Patent Owner argues. On that question, we agree with Petitioner that orientation data is sufficient. The Specification describes that motion sensing module 122 generates motion data 124 based on the motion of the aircraft and that motion sensing module 122 includes one or more axes of accelerometers or gyroscopes or other devices that alone, or with further processing by processing module 126, can generate data that represents θ, φ3, and/or other motion parameters such as R, Z, etc., that can be used in transforming the command data 104 to control data 128. Ex. 1001, 5:6–11 (emphases added). This disclosure supports a broad understanding of “motion data” as any data generated by the sensing module that represents a position, orientation, or motion parameter.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the complete record, we are persuaded by Petitioner’s contention. Although Thornberg ’983 does not state explicitly that the signals transmitted from the control panel to the vehicle are RF signals, we agree that a skilled artisan, considering the context of Thornberg ’983’s disclosure, would have recognized that the transmitted signals could comprise RF signals. “What a reference teaches or suggests must be examined in the context of the knowledge, skill, and reasoning ability of a skilled artisan,” and “is not . . . limited to what a reference specifically ‘talks about’ or what is specifically ‘mentioned’ or ‘written’ in the reference.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005); see also Manual of Patent Examining Procedure (“MPEP”) § 2144.01 (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”) (quoting In re Preda, 401 F.2d 825, 826 (CCPA 1968)). Furthermore, we credit Dr. Hansman’s testimony that an ordinarily skilled artisan would understand Thornberg ’983’s disclosure to mean that the transmitted control signals “are radio frequency (RF) signals, as antennas are most commonly used for.” Ex. 1003 ¶ 295.” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We are persuaded by Petitioner’s assertion that Thornberg ’983’s flight control computer 38 corresponds to the claimed processing module. As discussed above (see supra § III.D.1), flight control computer 38 is provided with transformation function 400. Ex. 1006, 5:9–12. Transformation function 400 receives an input of command data (the pitch command and the roll command) from the control panel through antenna 42 and an input of the transformation angle, θ, which is based on the true heading of the vehicle provided by navigation system 36. Id. at 5:19–31, Fig. 6. Transformation function 400 (via pitch axis transformation function 410 and roll axis transformation function 412) transforms the pitch command and the roll command into a transformed pitch stick signal (TPSS) and a transformed roll stick signal (TRSS) using equations that are based on the transformation angle. Id. at 6:17–28. When the system is in the operator reference mode, the TPSS and TRSS (i.e., control data) are in accordance with a second coordinate system that is from a perspective of the vehicle. Id. at 6:8–11 (“In an operator reference mode, the orientation of the operator upon activation of the operator mode is used as the reference axis.”). Patent Owner argues that Thornberg ’983 does not disclose transforming command data into control data based on motion data. PO Resp. 8–13; Sur-Reply 6–8. Patent Owner agrees that, in Thornberg ’983, transformation uses transformation angle θ, which is determined based on the vehicle’s true heading. PO Resp. 8. But Patent Owner contends that transformation angle θ is not “motion data” because it is solely an indication of orientation. Id. (citing Ex. 2005 ¶¶ 74–75). The distinction Patent Owner urges between Thornberg ’983 and the claimed subject matter is based on Patent Owner’s proposed construction of “motion data” as requiring data indicative of a change in position. See id. at 8–9; see also Tr. 103:1–8. For the reasons discussed in Section III.C., we decline to adopt Patent Owner’s proposed construction. Under the construction we have adopted, Thornberg ’983’s transformation angle θ is motion data because, as both parties agree, it indicates the vehicle’s orientation.” slip op. at 28
Patent outcomesUS 8,649,918 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,649,918 - SZ Dji Technology Co., Ltd. v. Synergy Drone LLCAll claims unpatentablePTAB · May 23, 2019 · IPR2018-00205 · APJ Timothy J Goodson · IPR · Final written decision
Claims 1–18 are unpatentable, principally because Thornberg-983 anticipates or renders them obvious; the contingent motion to amend is denied for lack of written-description support.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“itself to qualify as “motion data,” as Petitioner contends, or whether data indicating a change in the vehicle’s position is essential, as Patent Owner argues. On that question, we agree with Petitioner that orientation data is sufficient. The Specification describes that motion sensing module 122 generates motion data 124 based on the motion of the aircraft and that motion sensing module 122 includes one or more axes of accelerometers or gyroscopes or other devices that alone, or with further processing by processing module 126, can generate data that represents θ, φ3, and/or other motion parameters such as R, Z, etc., that can be used in transforming the command data 104 to control data 128. Ex. 1001, 4:66–5:4 (emphasis added). This disclosure supports a broad understanding of “motion data” as any data generated by the sensing module that represents a position, orientation, or motion parameter.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For the purposes of our Decision on Institution, and based on the record at that preliminary stage, we adopted Petitioner’s proposal that an ordinarily skilled artisan at the time of the invention of the ’368 patent would have had the following education and experience: [A] Bachelor’s degree from an accredited institution in electrical engineering, mechanical engineering, aeronautical or astronautical engineering, robotics, computer science, or any other discipline covering principles of design, operation, and/or control of unmanned aerial vehicles, including remote-controlled vehicles, and would have a working knowledge of the design, development, implementation, or deployment of such technologies. Additional education could substitute for experience, and significant experience could substitute for formal education. Dec. on Inst. 9 (citing Pet. 12; Ex. 1003 ¶ 28). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Tr. 77:3– 6. Based on our review of the complete record, we find that the evidence supports the level of ordinary skill in the art set forth above. Thus, we adopt Petitioner’s proposed level of ordinary skill in the art and apply it in our analysis below.” slip op. at 15
- Expert testimonyPetitioner expert creditedOther
“Looking at the first portion of the block quote, as Dr. Hansman observes, “[m]otion sensing module 122 is not limited to any specific technology and can therefore include gyroscopes that measure changes in orientation or accelerometers used to measure change in position.” Ex. 1023 ¶ 32. The Specification’s description that the “motion sensing module 122 includes one or more axes of accelerometers or gyroscopes or other devices” indicates that some embodiments include only gyroscopes, which are devices that provide information about orientation. Ex. 1001, 4:66–67 (emphasis added). Turning to the second portion of the passage block quoted above — i.e., that motion sensing module 122 includes devices that “can generate data that represents θ, φ3, and/or other motion parameters such as R, Z, etc., that can be used in transforming the command data 104 to control data 128” (Ex. 1001, 5:1–4) — we find persuasive Dr. Hansman’s testimony that an ordinarily skilled artisan would understand this passage to signify that “the motion data generated by motion sensing module 122 can be data reflecting any one, or several, or all of the mentioned parameters.” Ex. 1023 ¶ 32. Because φ3, which represents the aircraft’s orientation, is one of the mentioned parameters, this means that motion data can reflect orientation data alone. Ex. 1001, 3:46–47, 3:30–31, 5:2. We also note that Dr. Murphy’s testimony was in accord when he testified during cross-examination that “[m]otion data could be position data, it could be orientation data, or it could be a combination of position and orientation” and that he understands his own declaration to “say[] the same thing.” Ex. 1019, 96:12–15; see also id. at 61:18–19 (“Motion could be a change in only Phi 3. Yes. That’s correct.”).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“d. Limitation [d]: “a processing module, coupled to the motion sensing module and the receiver, that transforms the command data into control data, based on the motion data, and in accordance with a second coordinate system, wherein the second coordinate system is from a perspective of the RC aircraft” We are persuaded by Petitioner’s argument that Thornberg-983’s flight control computer 38 discloses the claimed “processing module.” See Pet. 31–33. Thornberg-983’s flight control computer 38 is coupled to navigation system 36 and communications equipment 40. Ex. 1006, 4:12– 16, Figs. 5–6. Flight control computer 38 receives roll and pitch commands from communications equipment 40 and transforms those commands into transformed pitch stick signal (TPSS) and transformed roll stick signal (TRSS). Id. at 4:44–52, 5:9–12, 5:20–23, 6:17–28. These transformations are “based on the motion data” as claimed because they use the transformation angle θ determined from the true heading measured by navigation system 36. Id. at 5:30–35, 6:22, 6:27. Thornberg-983 also discloses that the control data can be in a coordinate system that is from the aircraft’s perspective, as claimed, because in one mode of operation, “the vehicle reference for purposes of vehicle control is the forward reference position on the aircraft.” Id. at 5:56–59; Ex. 1003 ¶ 201. Patent Owner argues that Thornberg-983 does not disclose transforming command data into control data based on motion data. PO Resp. 8–13; Sur-Reply 6–8. Patent Owner agrees that in Thornberg-983, transformation uses transformation angle θ, which is determined based on the vehicle’s true heading. PO Resp. 8. But Patent Owner contends that transformation angle θ is not “motion data” because it is solely an indication of orientation. Id. (citing Ex. 2005 ¶¶ 74–75). The distinction Patent Owner urges between Thornberg-983 and the claimed subject matter is based on Patent Owner’s proposed construction of “motion data” as requiring data indicative of a change in position. See id. at 8–9; see also Tr. 103:1–8. For the reasons discussed in Section II.A., we decline to adopt Patent Owner’s proposed construction. Under the construction we have adopted, Thornberg- 983’s transformation angle θ is motion data because, as both parties agree, it indicates the vehicle’s orientation. e. Limitation [e]: “a plurality of control devices, coupled to the processing module, that control the motion of the RC aircraft based on the control data” We are persuaded by Petitioner’s argument that Thornberg-983’s pitch flight control system and roll flight control system disclose the claimed “control devices” because they are coupled to flight control computer 38 and they control the pitch and roll motion of the vehicle based on the transformed TPSS and TRSS data. See Pet. 33 (citing Ex. 1006, 6:16–28; Ex. 1003 ¶ 203). f. Conclusion Regarding Claim 1 We determine that Petitioner has proven by a preponderance of the” slip op. at 22
Patent outcomesUS 8,380,368 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,380,368 - Carefusion Corporation v. Baxter International Inc.Rehearing deniedPTAB · Jun 13, 2018 · IPR2016-01463 · APJ Timothy J Goodson · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–3, 6, 7, and 16 unpatentable as obvious over Bollish.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he 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.” Id.” slip op. at 2
- Expert testimonyPetitioner expert discountedDecided for petitioner
“highlighted in Patent Owner’s Request. We weighed the cross-examination testimony from Dr. Bollish with the other evidence and ultimately found that the Bollish reference teaches the limitations in question, notwithstanding Dr. Bollish’s testimony. See Dec. 21–23, 25–26. When parties present competing interpretations of a reference, it is the Board’s function to weigh those arguments and make a finding as to which is more plausible. Idemitsu Kosan Co., Ltd. v. SFC Co. Ltd., 870 F.3d 1376, 1381 (Fed. Cir. 2017).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“[W]e generally accept Petitioner’s arguments regarding the proper construction of this phrase and conclude that the broadest reasonable interpretation of “programming the infusion pump with a medication algorithm” encompasses a clinician entering parameters into the pump for an infusion protocol to govern administration of medication to the patient. Id. at 16.” slip op. at 5
Claim constructionPatents in suitUS 6,231,560 - Westinghouse Air Brake Technologies Corporation (D/B/A Wabtec Corporation) v. Siemens Industry, Inc.Rehearing deniedPTAB · Sep 19, 2017 · IPR2017-00580 · APJ Kristen L Droesch · IPR · Rehearing
The Board denied Siemens’s rehearing request, leaving institution in place for claims 1, 2, 5, 10, 11, 14, 17, and 18, because it found no abuse of discretion or overlooked arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“For the foregoing reasons, we are not persuaded that we misapprehended or overlooked Patent Owner’s arguments in the Preliminary Response. Because we are not persuaded that the Board misapprehended or overlooked Patent Owner’s arguments, we also are not persuaded by Patent Owner’s additional arguments that the Board would have found that the ’494 Patent provides written description support for the challenged claims of the ’698 Patent. See Req. Reh’g. 14. III. DECISION ON REHEARING Patent Owner’s request for rehearing is denied.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“evidence, or is a result of an unreasonable judgment in weighing relevant factors. A request for rehearing is not an opportunity to merely express disagreement with the decision. Nonetheless, Patent Owner does not persuasively argue that the second enumerated definition applies only to “In software design.” It is unclear how “In software design” only limits the second enumerated definition, when the “sequence of instructions treated as a basic unit of work by the supervisory program of an operating system” of the first enumerated definition is also directed to software. We view the enumerated definitions from the IEEE dictionary as variations of the same concept–– a software component or sequence of instructions treated as a basic (i.e., small) unit of work such that the software component or sequence of instructions can operate in parallel with other software components or sequences of instructions. For all of these reasons, we are not persuaded that there was an abuse of discretion in construing the term “task” in the Decision on Institution. Because we are not persuaded of an abuse of discretion, we also are not persuaded by Patent Owner’s additional arguments that the Board would have found that the ’494 Patent provides written description support for the challenged claims of the ’698 Patent. See Req. Reh’g. 2, 8–12. Having determined that Patent Owner has not shown that the construction of “task” in our Decision represents an abuse of discretion, we nevertheless reiterate that the construction in the Decision was for institution purposes and was based on the record at that time. The parties are free to present further arguments and evidence concerning the construction of that term in their briefing during the trial.” slip op. at 8
Claim constructioncites PhillipsPatents in suitUS 9,233,698 - Mcwane, Inc. v. Tom W. WaughAll claims unpatentablePTAB · May 23, 2017 · IPR2016-00266 · APJ Jeffrey W Abraham · IPR · Final written decision
Claims 10–13 are unpatentable under § 103 over Waugh and Ludwig; the contingent motion to amend claims 14–16 is denied as obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After considering the parties’ arguments and evidence presented during the course of this trial, we determine that it is not necessary to construe this phrase for purposes of this Decision. 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.”). As discussed in further detail 7 John F. Wallace, Engineering Aspects of Centrifugal Casting, 61 TRANSACTIONS OF THE AMERICAN FOUNDRYMEN’S SOCIETY, 701–18 (1953) (Ex. 1018). below, whether we treat claim 10 as a product by process claim, as Petitioner suggests, or consider it to be a positive limitation and adopt Patent Owner’s construction, the outcome is the same in view of the disclosure of centrifugal casting in the prior art references.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that Patent Owner’s proposed construction imports limitations into the claims. The claim language itself does not limit a running ring to a flange having a surface that engages a running rail in an annealing oven or allows the pole on which it is formed to be placed in a cylindrical pipe for transport through an annealing oven. If Patent Owner intended for the claim to include these alleged “specific structural requirements” of the running ring, it could have done so by explicitly claiming the subject matter (as it proposes in its Motion to Amend). Not having done so, Patent Owner may not import the various limitations based on desired functions into the single term “running ring” to impart a meaning different from what is indicated by the plain language of the claims and the written description. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F. 3d 898, 904 (Fed. Cir. 2004) (“[I]t is improper to read a limitation from the specification into the claims.”); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (“The problem is to interpret claims ‘in view of the specification’ without unnecessarily importing limitations from the specification into the claims.”); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“Generally speaking, we indulge a ‘heavy presumption’ that a claim term carries its ordinary and customary meaning.”). Furthermore, the intrinsic evidence of record does not present a “clear indication . . . that the patentee intended the claims to be” limited to the embodiments identified by Patent Owner. Liebel-Flarsheim, 358 F.3d at 913. Patent Owner derives its proposed construction from structural features associated with a “post-cast annealing process,” but claim 10 does not mention annealing at all. Instead, it is directed to a centrifugally cast, hollow pole. And, as Petitioner points out, the portions of the Specification upon which Patent Owner relies relate to what the running ring does, not what it is. Reply 6. The Specification does contain a description of what the running ring is, stating that “[t]he flange is simply a larger based circle, or ring, cast at the pole’s large diameter end.” Ex. 1001, 4:7–9. Accordingly, we see no reason to modify our prior determination in light of the record developed at trial. We, therefore, maintain that the broadest reasonable interpretation of “running ring that extends outward from the second end” is a circular or ring-shaped flange extending outwardly from the second end of the pole member.” slip op. at 10
- Skill levelSkill level board ownOther
“skill in the art at the time of the alleged invention would have had “(i) an undergraduate degree in engineering or a technical field (e.g., mechanical engineering or materials science) and (ii) approximately three years of work experience in the design and manufacture of hollow structural members (e.g., ductile iron pipe), including specific experience with centrifugal casting using the de Lavaud process.” Ex. 1004 ¶ 13 (emphasis omitted). Patent Owner’s declarant, Mr. Podbel, testifies that a person of ordinary skill in the art would have “(1) a B.S. degree in mechanical engineering, materials science or equivalent training; and (2) approximately 3 years or more of direct experience in the design and manufacture of centrifugally cast ductile iron hollow members.” Ex. 2003 ¶ 16. We credit the testimony provided by the declarants for both parties and find that one of skill in the art would possess an undergraduate degree in mechanical engineering, materials science, or a related discipline, and at least three years of work experience in the design and manufacture of centrifugally cast, hollow structural members (e.g., ductile iron pipe). This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert creditedOther
“We credit the testimony provided by the declarants for both parties and find that one of skill in the art would possess an undergraduate degree in mechanical engineering, materials science, or a related discipline, and at least three years of work experience in the design and manufacture of centrifugally cast, hollow structural members (e.g., ductile iron pipe). This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 13
Patent outcomesUS RE45,329 unpatentableClaim construction§ 103 obviousnesscites KSR · Graham
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.