• Cisco Systems, Inc. v. Centripetal Networks, Inc.Some claims unpatentable
  PTAB · May 18, 2020 · IPR2018-01760 · APJ J John Lee · IPR · Final written decision

  Claims 1–7, 10–12, 14–21, 24, and 25 are unpatentable as obvious over Sourcefire; claims 8, 9, 13, 22, and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In its Response, Patent Owner does not dispute Petitioner’s definition of the level of skill in the art.3 Based on the complete trial record, we find 3 Dr. Orso testified to a slightly different description of the level of skill in the art (Ex. 2002 ¶ 36), but Patent Owner did not argue during trial that Dr. Orso’s description should be adopted instead of Petitioner’s description and waived any such argument as a result. See In re NuVasive, Inc., 842 Dr. Staniford’s testimony credible and persuasive (Ex. 1003 ¶¶ 21–24), and we adopt Petitioner’s definition as a result. B.” slip op. at 7

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

    “an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). In the Decision on Institution, we preliminarily construed the term “network-threat indicator” as an “indicator that represents the identity of a resource associated with a network threat.” Inst. Dec. 8. During trial, neither party disputed this preliminary construction. See PO Resp. 25; Pet. Reply 7–8; Tr. 10:22–11:9. We do not discern any evidence in the full record after trial indicating that this construction is incorrect or should be modified. Moreover, the Specification supports this construction, indicating that “network addresses, ports, fully qualified domain names (FQDNs), uniform resource locators (URLs), uniform resource identifiers (URIs), or the like” are examples of “network-threat indicators.” Ex. 1001, 3:18–26. Thus, we apply this construction in this Decision.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Based on the above facts and case law, we conclude that Sourcefire was publicly accessible. The evidence of record indicates that the Sourcefire 3D System was publicly marketed and sold, and that the Sourcefire reference was actually distributed to over 500 customers of the Sourcefire 3D System. Ex. 1005 ¶¶ 11, 19; Ex. 1042 ¶¶ 5–9. This vastly exceeds the distribution to six people in MIT and distribution of 80 copies in Garrett. Record evidence also supports Petitioner’s contention that the customers who received Sourcefire included entities interested in network security products, including persons of ordinary skill in the art. See Ex. 1042 ¶ 9; see also Ex. 1004, 1, 32–33 (identifying Sourcefire as a “User Guide” and indicating Sourcefire provides information for network administrators); Ex. 1005 ¶ 5 (indicating Sourcefire was drafted in consultation with, and reviewed by, engineers who designed the Sourcefire system). Moreover, similar to MIT and as discussed in Medtronic, the record indicates that the recipients of Sourcefire were not subject to confidentiality requirements restricting use or further distribution. See Ex. 1004, 2 (Sourcefire copyright page stating, “You may use . . . and otherwise copy and distribute [Sourcefire] solely for non-commercial use”).5 Although Patent Owner asserts that MIT and Klopfenstein are distinguishable because they involved “the free distribution of academic documents to conference and meeting attendees” (PO Sur-reply 7), case law indicates that distribution to commercial entities also may be sufficient. See Garrett, 422 F.2d at 878; Pet. Reply 3.6” slip op. at 15

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

    “Id. at 65. These largely conclusory arguments, however, fail to explain how refreshing an event view or event summary page, whether at a regular interval or otherwise, teaches generating different types of log entries at the same time for different portions of packets in the manner claimed. The cited testimony of Dr. Staniford does not provide any further illumination, instead repeating essentially the same conclusory statements made in the Petition. See Ex. 1003 ¶¶ 162, 173; 37 C.F.R. § 42.65(a). Petitioner’s Reply also fails to supply the necessary explanation or supporting evidence. Petitioner notes that “flow-log entries are generated from the packet-logs”—thus, flow-log entries must be generated after the corresponding packet-log entries and would reflect any changes made to those entries. Pet. Reply 19–21. Although true, these facts pertain only to a single portion of packets, i.e., that their packet-log entries are generated first, and that the related flow-log entries are generated afterward. The same is true even considering that this process can occur at a predetermined “refresh interval.” Petitioner does not identify any specific teaching or suggestion in Sourcefire that indicates how the generation of log entries for two different portions of packets would operate. Instead, Petitioner relies on a bare assertion—without any specific basis in Sourcefire—that “the processing of the packet-logs and the flow-logs are continually being updated or refreshed.” Without sufficient supporting evidence, that bare assertion and the conclusory testimony of Dr. Staniford are inadequate to meet Petitioner’s burden to prove the unpatentability of these claims by a preponderance of the evidence.” slip op. at 35

  Patent outcomesUS 9,413,722 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,413,722
• Ralph Lauren Corporation v. Lexos Media IP, LLCSome claims unpatentable
  PTAB · Mar 25, 2020 · IPR2018-01755 · APJ Sharon Fenick · IPR · Final written decision

  Claims 27, 33, 40, 41, 72, 81, and 82 are unpatentable under § 103; the remaining challenged claims are not determined unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Decision issues under 35 U.S.C. § 318(a). Having considered the evidence of record, and for the reasons discussed below, Petitioner has demonstrated by a preponderance of the evidence that claims 27, 33, 40, 41, 72, 81 and 82 of the ’449 patent are unpatentable under 35 U.S.C. § 103(a), but has not demonstrated by a preponderance of the evidence that claims 1–3, 5–7, 12– 15, 28, 29, 31, 32, 38, 39, 53–56, 58–63, 73–75, and 77–80 of the ’449 patent are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art would have had “at least a master’s degree in Computer Science, Computer Engineering, or a related field, or hold a bachelor’s degree in Computer 4 The record contains no evidence relating to secondary considerations. Science, Computer Engineering, or equivalent and have at least two years of relevant work experience in the fields of UI [(user interface)] design and OSs.” Pet. 10–11. In the Institution Decision, we preliminary adopted Petitioner’s proposed definition, noting that the prior art in this case demonstrated the level of ordinary skill in the art at the time of the invention. Inst. Dec. 10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Patent Owner does not comment on or dispute Petitioner’s proposal, and instead cites Okajima’s holding regarding the level of skill in the prior art without raising any issues regarding whether the prior art here reflects a level of ordinary skill different from that proposed by Petitioner. PO Resp. 10 (citing Okajima, 261 F.3d at 1355). We adopt Petitioner’s definition as consistent with the ’449 patent and the asserted prior art.” slip op. at 10

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

    “Only terms that are in controversy 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). The Petitioner proposed construction of several claim terms in the Petition. Pet. 12–18. However, none of these claim terms require construction to resolve the controversy. Petitioner also argued for a construction of an additional term (“wherein said specified content information further comprises information to be displayed on said display of said user’s terminal”) in its Reply. Pet. Reply 13. Patent Owner contends that this argument is a new argument raised improperly for the first time in the Reply. PO Sur-Reply 10–11. We agree. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding ... patent owner response.” See also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not abuse its discretion in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369–1370 (Fed. Cir. 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)). Therefore, we will not address the new construction proposed for this claim term.” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “A petitioner must choose which grounds of invalidity to assert in the petition and “the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Intelligent Bio- Sys., 821 F.3d at 1369 (Fed. Cir. 2016); Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Circ. 2017) (a petitioner is foreclosed from “shifting” in post-petition arguments to a new theory of prima facie obviousness based on a different passage of a prior art reference than was used in the petition); see PTAB Consolidated Trial Practice Guide November 2019,5 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie 5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated case of unpatentability.”); Trial Practice Guide Update August 2018,6 14 (same). Therefore, we evaluate Petitioner’s arguments with respect to limitation [c.i] relying upon Malamud’s message relating to a preview cursor in Malamud to teach the “specified content information.” Patent Owner does not make any arguments relating to whether Malamud’s message, in view of the teachings of Anthias, teaches limitation [c.i] of claim 1. See, e.g., PO Resp. 9–18.” slip op. at 19

  Patent outcomesUS 6,118,449 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,118,449
• Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.All claims unpatentable
  PTAB · Feb 7, 2017 · IPR2015-01658 · APJ William M Fink · IPR · Final written decision

  Claims 1–4, 7, 13, 14, 18–20, 22, and 26 are unpatentable on at least one ground; Sandell anticipation of claims 1–3 and Sandell-Hall obviousness of claim 7 were not proven.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find these “definitions” to be substantially similar. For example, both require at least a mechanical engineering degree and experience varying between “some,” in Dr. Brown’s opinion, and “one to three years,” in Dr. Delson’s opinion. Given this apparent lack of disagreement, we adopt 7 U.S. Patent No. 782,156, issued Feb. 7, 1905 (Ex. 1009) (“Meeker”). 8 U.S. Patent No. 4,551,794, issued Nov. 5, 1985 (Ex. 1010) (“Sandell”). 9 U.S. Patent No. 1,842,167, issued Jan. 19, 1932 (Ex. 1011) (“Hall”). Dr. Delson’s statement of the level of ordinary skill for purposes of this Decision, but we note that our analysis would be the same under either formulation.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “1. “flame silhouette element” In the Decision to Institute, we construed the term “flame silhouette element,” recited in at least claims 1 and 26, as “a body of material having a shape that is suitable to generate a flame flickering effect.” Inst. Dec. 9. In their respective Response and Reply, neither party disputes the preliminary construction of this term. Accordingly, we see no reason to change our construction, which we based on the broadest reasonable interpretation, consistent with the Specification.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundPlain and ordinary meaningDecided for petitioner

    “We determine that the Federal Circuit’s statement of the disclaimer of “non-chaotic pivoting” and devices “driven by rhythmic and metronomic patterns,” Luminara, 814 F.3d at 1353–54, is sufficiently specific to determine the scope of the term “pivot” in claim 1 and “pivotally supported” in claim 13.13 Accordingly, we apply the Federal Circuit’s construction that the plain and ordinary meaning of “pivot” and “pivotally supported” applies, 13 We have also considered Patent Owner’s Motion for Observations (Paper 37), which are substantially directed at obtaining admissions from Petitioner’s declarant in support of its proposed construction of chaotic pivoting (or that Schnuckle ’455 does not disclose chaotic pivoting based on this construction). See id. at 6–13. Although we have considered Patent Owner’s observations, we do not find them persuasive for the reasons explained herein. except that non-chaotic pivoting and devices driven by rhythmic and metronomic patterns are disclaimed.” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “consider whether Schnuckle ’455 sufficiently discloses the pivot (or pivotally supported) limitation given the disclaimer of non-chaotic pivoting and devices driven by rhythmic and metronomic patterns. As noted above, the Federal Circuit specifically determined, at least as a preliminary matter, that Schnuckle ’455 seemed to meet this claim requirement with its discussion of a two-axis gimbal articulated by “chaotic forces” that can articulate the flame element to “randomly simulate blowing in the wind. ’455 patent, col. 6, ll. 53–62.” Luminara, 814 F.3d at 1354. We agree with the Federal Circuit’s preliminary determination. Although Patent Owner observes that “‘chaotic’ describes the ‘external or internal force’––i.e., the force entering the system, not the resulting motion” (PO Resp. 20–21), Patent Owner does not address the fact that this driving force is coupled to resulting motion “simulating blowing in the wind” (Ex. 1003, 6:62) and “provid[ing] a realistic flame effect” (id. at 1:54–58). As such, we agree that this excerpt of Schnuckle ’455 satisfies the chaotic pivoting requirement and is not driven by a “rhythmic or metronomic” driving force. Pet. Reply 4 n.1. Petitioner also cites the discussion of “programmable movement patterns” as additional evidence of this fact. Id. (citing Ex. 1003, 5:52–67 (“The desired movement pattern of the flame shaped surface 326 may be encoded and stored in the memory module 408 of the control board 302 in the form of digital data or control signals.”)). We agree that the column 5 description in Schnuckle ’455 of programmable movement patterns, when viewed against column 6’s description relied upon by the Federal Circuit (Ex. 1003, 6:53–62), suggests the programmed pattern is not rhythmic or metronomic but natural and chaotic.14 Accordingly, we find that Schnuckle ’455 discloses chaotic pivoting as required by claims 1 and 13. Accordingly, for the foregoing reasons, we determine Petitioner has satisfied its burden of proving anticipation based on Schnuckle ’455 against claims 1 and 13 by a preponderance of the evidence.” slip op. at 21

  Patent outcomesUS 8,696,166 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,696,166
• Gordon * Howard Associates, Inc. v. Lunareye, Inc.All claims unpatentable
  PTAB · Feb 2, 2016 · IPR2014-01213 · APJ J John Lee · IPR · Final written decision

  Claims 1–24 are unpatentable under § 103 based on the instituted combinations of Mohan, Oncore, Roach, and Lewis.

  RulingsFinal written decision

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

    “accompanying description requiring that GPS Receiver 48 and Controller 36 be physically distinct components. Even if there was such a requirement, however, “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). LunarEye’s reliance on other figures and descriptions of embodiments in the specification is unpersuasive for the same reason. See PO Resp. 20–21 & n.48; see also Ex. 2031 ¶¶ 14–15 (LunarEye’s proffered expert relying on descriptions of embodiments for opinion that data selecting device is external to GPS receiver). Merely describing a narrower embodiment does not constitute the clear disclaimer required to apply the limitation at issue to the claim. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). In addition, LunarEye also contends the claim language itself indicates the recited GPS receiver (or location-signal generating device) and data selector are physically distinct components. PO Resp. 22. LunarEye asserts claims 1 and 2 recite that the GPS receiver produces “GPS data” first, and that the data selector operates on that output of the GPS receiver to produce “selected GPS data.” Id. at 22–23. According to LunarEye, this claim language requires that the GPS receiver and data selector be “distinct,” i.e., physically separate. See id. at 20–22. The claim language, however, does not support LunarEye’s position. Although claims 1 and 2 recite the GPS receiver and data selector separately and recite distinct functions for each, nothing in those claims indicates these structures must be physically separated or precludes one being housed physically within the other, particularly under their broadest reasonable interpretation. LunarEye does not present any compelling evidence indicating otherwise.” slip op. at 7

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

    “to combine Mohan, Oncore, and Roach. Pet. 12–16. For example, GH argues that both Mohan and Oncore are directed to GPS receiver technology, and that combining them would have involved a simple substitution that would achieve predictable results. Id. at 12. GH also contends that one of ordinary skill in the art would have been motivated by Oncore’s discussion of the advantages of its GPS receiver technology, and that applying that technology in combination with Mohan would have amounted to nothing more than the use of a prior art element for its established function to obtain its stated benefits. Id. at 12–13 (citing Ex. 1007, 1.1). Likewise, GH asserts that combining Roach with Mohan would have involved a simple substitution with predictable results, which would have amounted to the use of Roach’s prior art cellular communications system for its established function to achieve its known benefits. Id. at 13–15 (citing Ex. 1008, 9:6– 30). In addition to the prior art references, GH also relies on the Declaration of Dr. Janky, whose testimony supports GH’s contentions. Ex. 1010 ¶¶ 96– 102. We have considered Dr. Janky’s testimony, including his underlying analysis and reasoning, and find it credible. Based on all of the evidence presented, including Dr. Janky’s testimony, GH has articulated sufficient reasoning with rational underpinning to support the conclusion that one of ordinary skill would have had reason to combine the teachings of Mohan, Oncore, and Roach in the manner advanced by GH. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 25

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

    “are unpersuasive. LunarEye argues that the asserted prior art references teach away from the combinations advanced by GH. PO Resp. 45–57. Specifically, LunarEye contends Mohan states that a device constructed according to its teachings should conform to certain size constraints to achieve adequate miniaturization. Id. at 48–52. The GPS device described in Oncore14 are too large and are, thus, incompatible with Mohan, according to LunarEye. Id. This argument is unpersuasive, however, because none of the claims of the ’035 patent require miniaturization, nor do they include any limitations restricting the size of the claimed apparatus or any recited component device. LunarEye does not identify any portion of Mohan that criticizes, discredits, or otherwise discourages combining Mohan and Oncore in the manner advanced by GH. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Merely describing the benefits of a miniaturized GPS device does not teach away from non-miniaturized devices. See id.; In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994). Moreover, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” Keller, 642 14 LunarEye does not argue that the GPS device of Lewis, or the communications devices of Roach, are incompatible with Mohan’s purported size restrictions. F.2d at 425. Thus, whether the Oncore GPS receiver is too large to be incorporated physically into the Mohan GPS device is inapposite, because the challenged claims do not recite any limitations on size.” slip op. at 27

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “MOTION TO SEAL GH moves to seal Exhibit 1028. Mot. Seal. 2. As this is the Final Written Decision, we consider GH’s Motion to Seal as a motion to expunge Exhibit 1028 from the record pursuant to 37 C.F.R. § 42.56. Exhibit 1028 was not relied on for this Decision. Consequently, GH’s motion is granted, and Exhibit 1028 will be expunged. ORDER Accordingly, it is: ORDERED that claims 1–24 of U.S. Patent No. 6,484,035 B2 are held unpatentable under 35 U.S.C. § 103; and FURTHER ORDERED that Exhibit 1028 is expunged from the record.” slip op. at 29

  Patent outcomesUS 6,484,035 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,484,035
• First Quality Baby Products, LLC v. Kimberly-Clark Worldwide, Inc.All claims unpatentable
  PTAB · Dec 14, 2015 · IPR2014-01024 · APJ J John Lee · IPR · Final written decision

  Claims 25–32 are unpatentable under § 103(a) as obvious in view of Brandon, Anderson, and Long.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Patent Owner argues Brandon teaches that training pants should be designed to feel different than diapers to facilitate toilet training, but that replacing its bonded seams by adding refastenable seams such as in Anderson, or adding the containment flaps and surge layer of Long, contradicts that goal by making the training pants resemble diapers. Id. at 36–40. The evidence of record, however, belies that argument. As Petitioner notes (Pet. Reply 13–14), Anderson discloses explicitly that its refastenable seams “approximate the side seams of a normal underpant” (Ex. 1206, 4:27–34), and notes the importance of training pants that “look like a normal panty when first put on by the child” (id. at 2:35–36). Patent Owner’s argument also is unpersuasive with respect to Brandon because it only relies on the conclusory testimony of its declarant. PO Resp. 37–38. On this issue, Mr. Butterworth’s Declaration only states conclusorily that adding a surge layer or containment flaps “would render the garment closer to a conventional disposable diaper.” Ex. 2206 ¶ 79. Compared to the evidence Petitioner cites to support its asserted rationale for combining the references, which we find compelling, we give little weight to this portion of Mr. Butterworth’s testimony because the underlying facts or data on which his opinion is based, if any, were not disclosed. See 37 C.F.R. § 42.65.” slip op. at 20

  • ExcludeMotion to exclude, deniedMixed

    “all related evidence is irrelevant. See id. Rule 401 states that evidence is relevant if “(a) it has any tendency to make a fact more or less probable than it would be without the evidence; and (b) the fact is of consequence in determining the action.” Petitioner does not dispute that the evidence in question pertains to facts underlying Patent Owner’s contentions regarding secondary considerations. Whether Patent Owner failed to provide sufficient evidence or neglected to supply all of the necessary analysis does not negate the relevance of that evidence. In addition, we note that Petitioner’s motion is moot because of our decision above that the challenged claims are unpatentable even considering this evidence. This portion of the Motion is denied.” slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “8 Both parties agree that a person of ordinary skill in the art would have had two to four years of work experience in product design and testing of disposable absorbent articles, such as diapers and training pants. Pet. 13–14; PO Resp. 7. We adopt this characterization and apply it to our analysis.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionTerm construed patent owner constructionMixed

    “claimed training pants “can further include releasable side bonds . . . for improved reliability of maintaining the pant in a prefastened condition particularly when it is being pulled on or off over the hips of the wearer.” Ex. 1201, 20:1–4. In addition, the specification states: “The absorbent articles are desirably pre-fastened to provide a pant-like product for the user. The product can then be pulled on like a conventional training pant . . . .” Id. at 5:31–34. The specification does not describe any manufacturing process for prefastening training pants. Mr. Butterworth’s testimony is based solely on claim language indicating that the recited fastening components and mating fastening components are the elements that are prefastened. Ex. 2206 ¶ 50. His conclusion, however, is not supported by that claim language, which does not reference manufacturing or a timeframe prior to sale. See Ex. 1214, 99:13–16, 102:25–103:9 (Mr. Butterworth indicating at his deposition that the ’379 patent does not discuss a manufacturing process for prefastening the claimed training pant, or when the training pants are prefastened).6 Based on the record presented, the broadest reasonable interpretation of “prefastened” in light of the specification requires that the claimed training pant be fastened prior to wear, but does not require fastening during manufacturing or prior to sale.” slip op. at 8

  Patent outcomesUS 8,747,379 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,747,379
• First Quality Baby Products, LLC v. Kimberly-Clark Worldwide, Inc.All claims unpatentable
  PTAB · Dec 10, 2015 · IPR2014-01023 · APJ J John Lee · IPR · Final written decision

  Claims 33–54 are unpatentable under § 103(a): claims 33–42, 44, 45, 47–49, and 51–53 over Brandon and Anderson; claims 43, 46, 50, and 54 over Brandon, Anderson, and Long.

  RulingsFinal written decision

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

    “As Petitioner asserts, the intrinsic evidence does not support the construction advanced by Patent Owner. The ’379 patent explains that the claimed training pants “can further include releasable side bonds . . . for improved reliability of maintaining the pant in a prefastened condition particularly when it is being pulled on or off over the hips of the wearer.” Ex. 1101, 20:1–4. In addition, the specification states: “The absorbent articles are desirably pre-fastened to provide a pant-like product for the user. The product can then be pulled on like a conventional training pant . . . .” Id. at 5:31–34. The specification does not describe any manufacturing process for prefastening training pants. Mr. Butterworth’s testimony is based solely on claim language indicating that the recited fastening components and mating fastening components are the elements that are prefastened. Ex. 2106 ¶ 48. His conclusion, however, is not supported by that claim language, which does not reference manufacturing or a timeframe prior to sale. See Ex. 1114, 99:13–16, 102:25–103:9 (Mr. Butterworth indicating at his deposition that the ’379 patent does not discuss a manufacturing process for prefastening the claimed training pant, or when the training pants are prefastened).6 Based on the record presented, the broadest reasonable interpretation of “prefastened” in light of the specification requires that the claimed training pant be fastened prior to wear, but does not require fastening during manufacturing or prior to sale.” slip op. at 7

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

    “Patent Owner contends, however, that a person of ordinary skill would not have been motivated to combine Brandon and Anderson in the manner asserted by Petitioner because both Brandon and Anderson teach away from such a combination. PO Resp. 32–40. First, Patent Owner argues Brandon teaches that training pants should be designed to feel different than diapers to facilitate toilet training, but that replacing its bonded seams by adding refastenable seams such as in Anderson contradicts that goal by making the training pants resemble diapers. Id. at 33–35. The evidence of record, however, belies that argument. As Petitioner notes (Pet. Reply 13), Anderson discloses explicitly that its refastenable seams “approximate the side seams of a normal underpant” (Ex. 1106, 4:27–34), and notes the importance of training pants that “look like a normal panty when first put on by the child” (id. at 2:35–36). Next, Patent Owner argues Anderson teaches away from the asserted combination with Brandon because Anderson teaches away from using its releasable fastening system with a liquid impermeable outer cover, as taught by Brandon and required by claim 33. PO Resp. 36–40. Patent Owner is correct that Anderson discloses advantages to constructing training pants to allow some moisture to leak through the outer cover. See, e.g., Ex. 1106, 3:40–49 (explaining that a preferred embodiment of Anderson includes a “moisture permeable outer covering” that facilitates toilet training by alerting the child to a bowel or bladder accident). According to Patent Owner, Anderson discloses the use of refastenable seams because they facilitate removal while minimizing contamination, which is only necessary due to the moisture permeable covering. See PO Resp. 38–39. Patent Owner’s position is unpersuasive, however, because merely describing the benefits of a moisture permeable cover does not teach away from using an impermeable cover. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). At the oral hearing, Patent Owner also admitted that nothing in the record indicates a person of ordinary skill would have been led to avoid training pants that do not allow moisture to leak through the outer cover. See Tr. 61:21–62:6; see also Ex. 1114, 339:10–18 (Mr. Butterworth testifying that Anderson does not disparage the use of refastenable seams with liquid permeable outer covers). Based on the full record after trial, Petitioner has established sufficiently a reason with rational underpinning to combine Brandon and Anderson. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Consequently, a preponderance of the evidence supports Petitioner’s position that claim 33 of the ’379 patent is unpatentable as obvious in view of the combination of Brandon and Anderson.” slip op. at 17

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “Based on Mr. Butterworth’s testimony, which we find credible, the record indicates that the limitations of claim 36 were known and obvious to one of ordinary skill in the art. Additionally, the record supports Petitioner’s argument that the size limitations of claim 36 do not distinguish the claim from the prior art, which ordinary artisans knew to provide the benefit of adjustability, as Mr. Butterworth testified. See Gardner, 725 F.2d at 1349. Petitioner’s contentions are further supported by the evidence indicating this alleged benefit was not a critical aspect of the claimed invention. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (“These cases [including Gardner] have consistently held that in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.”). Consequently, considering the full record after trial, a preponderance of the evidence supports Petitioner’s contention that claim 36 would have been obvious in view of the combination of Brandon and Anderson.” slip op. at 23

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

    “To establish a nexus between alleged commercial success and the challenged claims, Patent Owner must show “that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988); see also In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (holding that a nexus was not demonstrated where “GPAC did not establish which claim(s) of the patent the [allegedly successful] licensing program incorporates”). Patent Owner does not, however, provide an analysis establishing that its PULL-UPS product practices any claim or claims of the ’379 patent. 16 As indicated earlier, we need not reach the issue of whether Patent Owner’s arguments as to secondary considerations are barred due to collateral estoppel because we conclude that a preponderance of the evidence establishes that the challenged claims are unpatentable, even considering Patent Owner’s arguments and evidence. In addition, even assuming arguendo that Patent Owner’s evidence establishes a nexus between the commercial success of its PULL-UPS product and the specific refastenable fastening system recited in the challenged claims, Patent Owner has failed to demonstrate that “the asserted commercial success of the product [is] due to the merits of the claimed invention beyond what was readily available in the prior art.” See J. T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) (emphasis added). As discussed above, the record establishes that the refastenable fastening system recited in the challenged claims was taught in the prior art. Relying on Gillette Co. v. S.C. Johnson & Son, Inc., Patent Owner argues that the “fact that all elements of a claim are in the prior art does not by itself defeat commercial success,” and that “the prior art discloses only individual elements of the patented training pants, but there is no prior art that discloses the unique combination found in the claims of the ’379 Patent.” PO Resp. 59–60 (citing 919 F.2d 720, 725 (Fed.Cir.1990)). In Gillette, although each individual element of the claimed chemical composition was known in the art, it was undisputed that the composition as a whole had “superior properties” that were unique to the composition rather than any individual component. See 919 F.2d at 725. In contrast, Patent Owner’s arguments and evidence focus on a single element of its claimed invention—“refastenable elastomeric sides”—and Patent Owner does not identify any evidence indicating the claimed refastenable sides (or any other claimed feature or combination of features) had unique properties or advantages beyond those found in the prior art training pants relied on by Petitioner.17 See PO Resp. 56–58.” slip op. at 31

  Patent outcomesUS 8,747,379 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,747,379
• First Quality Baby Products, LLC v. Kimberly-Clark Worldwide, Inc.All claims unpatentable
  PTAB · Dec 10, 2015 · IPR2014-01021 · APJ J John Lee · IPR · Final written decision

  Claims 1–24 are unpatentable under § 103: claims 1–10, 12, 13, 15–17, and 19–23 over Brandon and Anderson; claims 11, 14, 18, and 24 over Brandon, Anderson, and Long.

  RulingsFinal written decision

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

    “Based on the full record after trial, the evidence presented supports Petitioner’s view. It is undisputed that Brandon teaches a seam extending 100% of the distance between the waist and leg openings. See Tr. 44:13–15; Ex. 1014, 82:15–22. The record also indicates it was well known in the art generally to provide 80–100% seams. Ex. 1014, 85:3–8; Ex. 1021 ¶ 99. Although Patent Owner disputes that Anderson teaches an 80–100% seam, such an express disclosure is not required given Brandon’s disclosure of a 100% seam. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Moreover, Petitioner argues persuasively that a person of ordinary skill would have understood Anderson also to teach an 80–100% seam because such a seam was known to be important to prevent undesired tearing or separation, and to best approximate a normal underpant. Pet. Reply 11–13; see Ex. 1006, 2:35–36, 4:32–37, Fig. 2; Ex. 1014, 83:14–23, 85:3–20; Ex. 1021 ¶¶ 99, 101, 102, 104, 106, 107.11 In sum, Petitioner has established sufficiently that the combination of Brandon and Anderson teaches or suggests each limitation of claim 1.” slip op. at 16

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

    “Petitioner asserts that a person of ordinary skill would have been led to combine the training pants of Brandon with the refastenable seam of Anderson because the references identify solutions for the same problem, namely potential contamination on the child when removing soiled training pants. Pet. 22–24 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419– 20 (2007)). The record supports Petitioner’s position. Brandon states that “side seams 20 may be constructed to be manually tearable in order to allow training pant 10 to be disassembled manually by the caregiver, so that it can be easily removed from the child after a bowel movement.” Ex. 1002, 11. Anderson discloses that training pants with tearable seams “facilitate removal of the panty after the child has either a bowel accident or a bladder accident,” which reduces “incidents of contamination on the child and in the area surrounding the child.” Ex. 1006, 1:46–55. Anderson further teaches refastenable side seams, as discussed above, explaining that “in the event of an accident the [refastenable] seams are readily released to facilitate removal of the panty without undue contamination.” Id. at 4:32–37.” slip op. at 17

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

    “not have been motivated to combine Brandon and Anderson in the manner asserted by Petitioner because both Brandon and Anderson teach away from such a combination. PO Resp. 31–39. First, Patent Owner argues Brandon teaches that training pants should be designed to feel different than diapers to facilitate toilet training, but that replacing its bonded seams by adding refastenable seams such as in Anderson contradicts that goal by making the training pants resemble diapers. Id. at 32–35. The evidence of record, however, belies that argument. As Petitioner notes (Pet. Reply 13), Anderson discloses explicitly that its refastenable seams “approximate the side seams of a normal underpant” (Ex. 1006, 4:27–34), and notes the importance of training pants that “look like a normal panty when first put on by the child” (id. at 2:35–36). Next, Patent Owner argues Anderson teaches away from the asserted combination with Brandon because Anderson teaches away from using its releasable fastening system with a liquid impermeable outer cover, as taught by Brandon and required by claim 1. PO Resp. 35–39. Patent Owner is correct that Anderson discloses advantages to constructing training pants to allow some moisture to leak through the outer cover. See, e.g., Ex. 1006, 3:40–49 (explaining that a preferred embodiment of Anderson includes a “moisture permeable outer covering” that facilitates toilet training by alerting the child to a bowel or bladder accident). According to Patent Owner, Anderson discloses the use of refastenable seams because they facilitate removal while minimizing contamination, which is only necessary due to the moisture permeable covering. See PO Resp. 37–38. Patent Owner’s position is unpersuasive, however, because merely describing the benefits of a moisture permeable cover does not teach away from using an impermeable cover. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). At the oral hearing, Patent Owner also admitted that nothing in the record indicates a person of ordinary skill would have been led to avoid training pants that do not allow moisture to leak through the outer cover. See Tr. 61:21–62:6; see also Ex. 1014, 339:10–18 (Mr. Butterworth testifying that Anderson does not disparage the use of refastenable seams with liquid permeable outer covers). Based on the full record after trial, Petitioner has established sufficiently a reason with rational underpinning to combine Brandon and Anderson. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 17

  • Strike new argumentNew argument consideredDecided for petitioner

    “deposition testimony (Tr. 54:1–16), but argued the testimony should be disregarded because neither Mr. Butterworth nor Patent Owner had fair notice of Petitioner’s arguments or an adequate opportunity to present counterevidence—for example, regarding possible teaching away (e.g., Tr. 54:19–55:9). We disagree. As an initial matter, Patent Owner is correct that the Petition does not include specifically an allegation that the size limitation was known generally in the art, and does not present evidence of that fact. Such evidence, however, was introduced into the record through discovery in the form of Mr. Butterworth’s deposition testimony. Patent Owner does not advance persuasively any reason to block Petitioner from relying on this evidence, which could not have been cited in the Petition because Mr. Butterworth’s deposition had not yet occurred.12 In essence, Patent Owner requests that the Board prevent Petitioner from using evidence in the record it admits is inconsistent with its position on patentability, and which its own expert provided to Petitioner during discovery. We decline to do so. Nor are we persuaded by Patent Owner’s protestations of prejudice. Although Patent Owner asserts Mr. Butterworth was not given a fair opportunity to “prepare” for Petitioner’s questions, Patent Owner proffered him as an expert in this field and otherwise relies on his testimony regarding 12 Although Petitioner’s position would have been stronger had it provided similar evidence with the Petition, the fact remains that the record includes Mr. Butterworth’s testimony, which was routine discovery provided in the normal course of this inter partes review. See 37 C.F.R. § 42.51(b)(1)(ii). similar issues. See, e.g., PO Resp. 33–35 (citing Ex. 2006 ¶¶ 74–77 (Mr. Butterworth’s declaration testimony regarding “the conventional wisdom in the industry at the time of the invention”)). The testimony relied on by Petitioner was provided in response to basic questions about the understanding of a person of ordinary skill in the art and whether the recited limitation was known in the art at the time of the invention. Ex. 1014, 151:2–13, 152:10–14. Moreover, the Petition plainly raised the issue of whether any alleged functionality of the limitations of claim 4 already was known to be provided by the prior art. Pet. 25. Petitioner’s questioning of Mr. Butterworth on this issue should not have been unexpected considering he provided testimony on the subject in his Declaration, which Patent Owner submitted with its Response. See Ex. 2006 ¶ 95; PO Resp. 41. Patent Owner does not dispute the veracity of Mr. Butterworth’s testimony. Further, Patent Owner does not argue that he misunderstood the questions (Tr. 53:18–24), and did not move to exclude the testimony.13 Patent Owner had the opportunity to adduce further testimony from Mr. Butterworth at his deposition to clarify or supplement his testimony, but it did not do so with respect to the testimony at issue. See Tr. 57:12–58:8. No attempt was made to seek relief from the Board or to introduce further information into the record (e.g., a supplemental declaration or additional briefing). See Tr. 59:18–60:6. Patent Owner made no request to have Mr. 13 Patent Owner properly raised at the oral hearing the issue of whether Petitioner’s arguments should be disregarded as improper new arguments, rather than raising the issue in a motion to exclude. See Tr. 58:9–59:2. That is a distinct issue, however, from whether Mr. Butterworth’s cross-examination testimony should be excluded as inadmissible because it is allegedly misleading or incomplete. In any event, we also conclude Petitioner’s arguments were not improper.” slip op. at 21

  Patent outcomesUS 8,747,379 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,747,379
• Gordon * Howard Associates, Inc. v. Lunareye, Inc.All claims unpatentable
  PTAB · Sep 28, 2015 · IPR2014-00712 · APJ J John Lee · IPR · Final written decision

  Claim 3 is unpatentable under § 103 over Mohan and Oncore because their combination teaches or suggests each limitation and a person of ordinary skill would have had reason to combine them.

  RulingsFinal written decision

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

    “argument. LunarEye relies on the specification’s descriptions of certain embodiments. For example, Figure 2 of the ’035 patent is a block diagram depicting certain features of an embodiment of the claimed invention, including Global Positioning Satellite System Receiver 48 (“GPS Receiver 48”) and Controller 36. Ex. 1002, Fig. 2, 5:49–6:8. As an initial matter, LunarEye does not identify anything in Figure 2 or its accompanying description requiring that GPS Receiver 48 and Controller 36 be physically distinct components. Even if there was such a requirement, however, “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.” slip op. at 6

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

    “reorders the selected location data” in either the Petition or the Preliminary Response, we construed the term due to its significance in the analysis of GH’s asserted grounds of unpatentability. Inst. Dec. 9. Specifically, we construed the term preliminarily in the Decision on Institution as “arranges the selected location data into the desired order for transmission.” Id. This construction was based on the ’035 patent specification, which describes the reordering function: An example of the data selector function is illustrated in FIGS. 6 and 7. The Motorola® GT Plus OncoreTM GPS family of chips produces an digital output signal 86 containing bits representing the latitude, longitude, height, velocity, and heading of the apparatus 12 and the current time, as shown in FIG. 6. . . . Preferably, only the bits representing latitude, longitude, velocity and heading 88 are included in the data to transmit signal 56, as shown in FIG. 7. . . . Further, it may be desirable to change the order that the various portions of the information are transmitted. For example, it may be desirable to send the heading portion first. The data selector selects the data to be transmitted and arranges it into the desired order. Ex. 1002, 7:4–20 (emphasis added). We concluded, “the specification explains that reordering the selected location data encompasses arranging the data received from the location-signal generating device (e.g., a GPS device) into the order desired for transmission.” Inst. Dec. 9. The ordinary meaning of the term “reorders”—as contrasted with “orders”—indicates a change in order. The specification supports this understanding of the term, stating that “it may be desirable to change the order that the various portions of the information are transmitted.” Ex. 1002, 7:15–17 (emphasis added). Therefore, based on the parties’ arguments and evidence developed since the Decision on Institution, we now determine the broadest reasonable interpretation of “reorders the selected location data” is “changes the order of the selected location data into the desired order for transmission.”7 slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “initial order of the location data received by the GPS receiver. Id.; Tr. 50:23–53:2. LunarEye argues that when Oncore discusses generating multiple different NMEA messages, each message is constructed separately from the original, unordered data; thus, the data is ordered for each output message in the first instance, rather than reordered. PO Resp. 28–29; Tr. 53:3–18. In an obviousness analysis, however, we consider not only the express disclosures of the asserted prior art references, but also the “inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, the record indicates that a person of ordinary skill would have had at least a bachelor’s degree in electrical or computer engineering and familiarity with GPS and communications technology, such as that gained from five years of professional experience in the design and implementation of GPS technology. See Ex. 1010 ¶¶ 38–41 (Dr. Janky’s testimony on level of ordinary skill); Ex. 2024 ¶¶ 8–9 (LunarEye’s proffered expert, Joseph McAlexander, adopting Dr. Janky’s testimony regarding level of ordinary skill). Considering the level of ordinary skill and the evidence of record, we find that Oncore would have taught or suggested to an ordinary artisan a device that changes the order of selected location data from one order (e.g., an NMEA message) to another order (e.g., a different NMEA message).” slip op. at 16

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

    “claimed location-signal generating device and its related limitations. Id. at 25–26 (citing Ex. 1006, 2:7–12, 3:5–15, Fig. 1). According to GH, the communications transmitter/receiver of Mohan teaches the claimed telemetry transmitter, and the disclosed power management system teaches the claimed enable controller and its related limitations. Id. at 26–30 (citing Ex. 1006, 3:2–15, 4:43–5:49, Figs. 1, 3). LunarEye does not dispute that Mohan teaches these aspects of claim 3 of the ’035 patent. The record supports GH’s contentions regarding Mohan.” slip op. at 14

  Patent outcomesUS 6,484,035 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,484,035
• Stats LLC v. Hockeyline, Inc.All claims unpatentable
  PTAB · Sep 15, 2015 · IPR2014-00510 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1, 2, 8, 10–12, and 30 were held unpatentable as anticipated by Hameen-Anttila and STATS Football, and obvious over STATS Football combined with Reilly.

  RulingsFinal written decision

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

    “1. Means-plus-function Claiming Independent claim 1 of the ’107 patent includes a series of means-plus- function limitations. 35 U.S.C. § 112 ¶ 6.5 A means-plus-function limitation “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Id. The claim limitations in the ’107 patent are drafted using the accepted “means for” construct followed by a specified function, without further recitation of structure to achieve the recited function. Triton Tech of Texas, LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014); see Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). “In exchange for using this form of claiming, the patent specification must disclose with sufficient particularity the corresponding structure for performing the claimed function and clearly link that structure to the function.” Triton Tech, 753 F.3d at 1378 (citation omitted). We construe the following claim limitations for purposes of this decision, in accordance with the principles stated above. 2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6

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

    “2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “c. Claim 1 – “customized by the user to reflect desired data” We are further persuaded that Hameen-Anttila discloses hierarchical menu- based screen displays that may be “customized by the user to reflect desired data,” in accordance with our claim construction. We agree with Petitioner, that the setup menu in Hameen-Anttila (Fig. 4a) allows a user to select desired display menus (e.g., for golf) that will cause other menus not to be displayed (e.g., for hockey, bowling, and baseball) during a user’s input of golf-specific data in real time. Pet. Reply 7–8 (citing Ex. 1002, 5:21–24; Ex. 1014 (Dahbura Dec.) ¶¶ 20–21). As Dr. Dahbura notes, Patent Owner’s expert, Dr. Locke, agrees that choosing not to display a menu screen is a form of user customization. Ex. 1014 ¶ 21 (citing Ex. 1017, 72:19–73:3). We further agree with Petitioner that Patent Owner’s proffered distinction between Hameen-Anttila’s “mere usage” of hierarchical menu-based screen displays and “customizing” such displays is illusory and not consistent with the description of user customization in the ’107 patent. Pet. Reply 8 (citing Ex. 1014 ¶ 22). The individual drop-down arrows in Figure 4b further suggest the ability of a user to change the menu-based screen displays to permit the user to input desired data for the illustrated golf game. Therefore, we determine Hameen- Anttila discloses an action by the user to configure the hierarchical menu-based screen displays to permit desired data to be gathered for one or more sports games. d. Claim 1 – “transferring statistical information based on such inputted data” Patent Owner’s argument asserting Hameen-Anttila does not disclose the transfer of “statistical information based on such inputted data” also is off the mark. As noted above, Hameen-Anttila discloses that sports game event data is input into an electronic scorekeeping device and transmitted via a communications network to a server while the sports game is ongoing. Ex. 1002, 2:40-51, 2:57– 3:13. We are not persuaded by Patent Owner’s argument that the transfer of statistical information “based on” inputted data requires some form of calculation that necessarily excludes inputted data as part of the transferred “statistical information.” PO Resp. 17–19. Patent Owner does not offer a claim construction or request construction of quoted claim phrase at issue, even though Patent Owner’s argument presumes a specific definition of the phrase without explaining why it is consistent with the broadest reasonable interpretation standard. Pet. Reply 2. The language in claim 1 of the ’107 patent recites “a processor,” but it does not recite a calculation function performed by the processor on inputted data. Pet. Reply 11. The claim language also does not exclude inputted data from “statistical information” or limit “statistical information based on such inputted data” only to statistics calculated from the inputted data. Id. The preamble of claim 1, recites “gathering, processing and distributing statistical information.” Ex. 1001, 8:11–12 (emphasis added); see also PO Resp. 19 (citing Ex. 1001, 1:56–60 (“The present invention advantageously provides an electronic scorekeeping device for gathering, calculating and distributing statistical information.”)). Gathering statistical information, when read in light of the ’107 patent specification, refers to inputting sports game event data into the scorekeeping device for transmission to a central database as part of the statistical information transfer. Pet. Reply 11 (citing Ex. 1001, Abstract (“This [inputted] data is transferred in real-time in a system according to the invention via a communications means to a central database.”); Ex. 1014 ¶¶ 25–28). The ’107 patent does not define “statistical information” or “statistical information based on such inputted data.” The ’107 patent also does not exclude inputted data from the description of statistical information. Pet. Reply 12 (citing Ex. 1014 ¶ 27). To the contrary, and consistent with the understanding in the art, the ’107 patent uses the words “data,” “statistics,” “statistical data,” and “statistical information” interchangeably and with significant areas of overlap. Id.; see also id. at 4 (citing Ex. 2002 ¶ 30 (“The terms ‘statistics,’ ‘data,’ and ‘statistical information,’ are widely used in computer systems, but they are often used in very general ways with broad meanings in which their meanings have significant areas of overlap.”)). We further credit Dr. Dahbura’s testimony, that a person of ordinary skill in” slip op. at 18

  Patent outcomesUS 6,725,107 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,725,107

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.