- Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Rehearing deniedPTAB · Aug 22, 2018 · IPR2018-00376 · APJ Stephen C Siu · IPR · Rehearing
The Board denied rehearing and upheld denial of institution on the Slemmer and Vu obviousness ground because the petition did not show a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co.,, 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A 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.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Director may not authorize an inter partes review to be instituted unless the Director determines that 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. 35 U.S.C. § 314(a). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“supporting Petitioner’s position that it would have been obvious to one of ordinary skill in the art to have combined the cited references. Req. Reh’g. 8–10. In particular, Petitioner reiterates previous arguments presented in the Petition such as “Vu is one of the first prior art references to teach the handshake” but that “other prior art references also teach it.” Req. Reh’g 9. These arguments were previously addressed. Decision 7–8. Although Petitioner may disagree with our resolution of the arguments that Petitioner presented in its Petition, such arguments were considered fully in our Decision.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“construction for the term ‘TCP connection hand shake completion data,’ which resulted in an incorrect determination.” Req. Reh’g. 5. In particular, Petitioner now proposes a broadest reasonable construction of the term “TCP connection hand shake completion data” to mean “two devices initiating a communication session by the first device sending information to a second device, and the second device then responding to the first device.” Req. Reh’g. 7. Based on this newly proposed construction of the term “TCP connection hand shake completion data,” Petitioner argues that Vu discloses this feature. Req. Reh’g. 6–8. Under 37 C.F.R. § 42.71(d), Petitioner must “identify all matters [Petitioner] believes the Board misapprehended or overlooked.” Petitioner did not present this proposed construction in the Petition. See generally Req. Reh’g.; see generally Pet. We could not have “misapprehended or overlooked” what was not presented.” slip op. at 4
Claim construction§ 103 obviousnessPatents in suitUS 8,266,266 - Apple Inc. v. Virnetx Inc.All claims unpatentablePTAB · Jul 29, 2015 · IPR2014-00483 · APJ Karl D Easthom · IPR · Final written decision
Claims 1, 7, 8, 10, 12, 13, 15, and 17 are unpatentable as anticipated by Provino; claims 2–5 and 18 are unpatentable as obvious over Provino with Kosiur and Xu, respectively.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Apple Incorporated (“Petitioner”) also filed a Petition (Paper 2) seeking an inter partes review of claims 1–5, 7, 8, 10, 12, 13, 15, 17, and 18 of the ’274 patent pursuant to 35 U.S.C. §§ 311–319 in Case IPR2014- 00483 (“’483 IPR”). Noting that Microsoft Corporation’s Petition and Apple Incorporated’s Petition were substantially identical in material aspects, the Board instituted an inter partes review of claims 1–5, 7, 8, 10, 12, 13, 15, 17, and 18, and joined IPR2014-00483 with IPR2014-00403 pursuant to 35 U.S.C. § 315(c). See ’483IPR, Paper 11, 6–9.2 Thereafter, pursuant to a settlement agreement, the present proceeding was terminated with respect to Microsoft Corporation only. Paper 38.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDisclaimer not foundDecided for petitioner
“proceeding somehow limits the claims here that Patent Owner otherwise could have moved to amend under a broadest reasonable construction, Patent Owner’s arguments were not “unambiguous,” and do not “call for the application of prosecution history disclaimer.” See PO Resp. 17–18. There was no “express disclaimer,” Bigio, 381 F.3d at 1325, or “unambiguous disavowal[],” Grober, 686 F.3d at 1341.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“As the latter two sentences show, the ’274 patent Specification describes placing field hopping data (i.e., an address hopping technique, see id. at 46:64–47:11), into a payload portion of a data packet. The Specification does not tie “tunneled” packets into a specific requirement that requires a change in formatting––above and apart from any protocol formatting or structural change that may happen to, or does, occur by placing one type of data field (header) into another type of data field (payload). After discussing the insertion of the field hopping data into the payload portion, the Specification then describes that these “modified message packets preferably conform to the UDP protocol,” or “[a]lternatively . . . can conform to the TCP/IP protocol or the ICPM protocol.” Id. at 50:30–35. In other words, if there is a change in a protocol in these disclosed examples––for example, from one protocol format to a UDP protocol format––any change appears to come in preferred embodiments and after the packets have been modified (i.e., tunneled). Accordingly, based on the foregoing discussion, we modify our construction as set forth in the Institution Decision, such that “tunnel packeting” means “placing data or information from one field, such as a header, into another packet field, such as a payload, wherein the two fields normally have different structures or formats, or placing data structured in one format within the format of another protocol.”” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In any event, to the extent it is material, the ’274 patent Specification employs the term “user’s computer” in a “conventional scheme . . . shown in FIG 25. A user’s computer 2501 includes a client application 2504 (for example a web browser) . . . .” Ex. 1001, 38:61–63. Although Patent Owner refers to this “conventional” computer as “another embodiment,” the ’274 patent Specification disparages the “conventional architecture” that employs a user’s computer, because it is not secure enough. See Ex. 1001, 39:4–13; PO Resp. 21. In general, the ’274 patent Specification states that “[t]he present invention” involves a “client computer” with a “client application” that “communicates with a server.” See Ex. 1001, 7:40–44. This description of “[t]he present invention” does not mention a “user’s computer.” Therefore, the ’274 patent Specification does not repeatedly treat a “client computer” and a “user’s computer” as the same. The broadest reasonable construction of a client computer is a computer associated with a client.” slip op. at 23
Patent outcomesUS 7,987,274 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,987,274 - Medtronic, Inc. v. Nuvasive, Inc.All claims unpatentablePTAB · Feb 11, 2015 · IPR2013-00506 · APJ Lora M Green · IPR · Final written decision
Claims 1–14, 19, 20, and 23–27 are unpatentable under § 103(a) over the identified combinations of SVS, Baccelli, Michelson, and Telamon.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim terms also are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If an inventor acts as his or her own lexicographer, the definition must be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). In the Institution Decision, we “interpret[ed] the claim language consistently with its plain and ordinary meaning, when read in view of the Specification.” See, e.g., Dec. Inst. 6. The parties appear to agree on the interpretation of the claim terms, and we see no reason to depart from our interpretation in the Institution Decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“be inappropriate or at least unnecessary in the medial plane for PLIF [posterior lumbar interbody fusion] implants.” Id. at 34 (citing Ex. 2020 ¶¶ 45, 98–99, and 102). We are not persuaded by Patent Owner’s argument, because the question is whether it would have been obvious to one of ordinary skill in the art to combine the cited references, and not whether any specific implants on the market contain a radiopaque marker in a central region.” slip op. at 10
- Obviousness (§103) › KSR rationalesDecided for petitioner
“not find Patent Owner’s contentions persuasive SVS discloses that “[t]he Vertebral Spacer is a vertebral body replacement device intended for use in the thoracolumbar spine (T1-L5) to replace a collapsed, damaged, or unstable vertebral body due to tumor or trauma (i.e., fracture).” Ex. 1106, 1. Hence, the “intended purpose” of the implant of SVS is to replace components within vertebrae. Telamon discloses a process of inserting an implant into an intervertebral space to achieve “decompression of the neural elements” and “satisfactory immobilization of the grafted interspace.” Ex. 1108, 9. Hence, the “intended purpose” of the implant of Telamon is to achieve immobilization of the grafted interspace (and/or decompression of neural elements). We disagree with Patent Owner that Michelson, which discloses an implant that “engage[s] more of the adjacent vertebrae,” and, thus, “permits greater stability” (Ex. 1105, 3:49–51) would have “fully eliminated” the purpose of the SVS or Telamon implants of replacing collapsed, damaged, or unstable intervertebral components or immobilizing the interspace. Instead, the intended purpose of Michelson (a spinal fusion implant) appears to be the same as the intended purpose of either of SVS or Telamon, i.e., to achieve immobilization of the grafted interspace.” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“Evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). “For objective evidence to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). In order to establish a proper nexus, the patent owner must offer proof that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter. See Microsoft v. Proxyconn, Inc., Case IPR2012-00026, slip op. at 4 (PTAB Mar. 8, 2013) (Paper 32). slip op. at 20
Patent outcomesUS 8,361,156 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,361,156 - Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentablePTAB · Jan 15, 2015 · IPR2013-00451 · APJ Miriam L Quinn · IPR · Final written decision
Claims 1, 2, and 5–10 are unpatentable under §103 over Cohen and Wahlquist, and over Cohen, Wahlquist, and Jacobs.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“The Board interprets claims using the “broadest reasonable construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b). We presume that claim terms have their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.”) (citation and internal quotation marks omitted).” slip op. at 6
- Skill levelSkill level board ownOther
“Petitioner asserts that the level of ordinary skill in the art has the following education and experience: Bachelor’s degree in Electrical Engineering or Computer Science, or its equivalent, and at least 2 years of experience with the design and programming of patient monitoring systems and at least 1 year of experience with the design or programming of networked systems. Ex. 1008 ¶ 22. Patent Owner’s declarant, Dr. David, disagrees with the above assertion in that a person of ordinary skill in the art would not have the 1 year of experience with the design and programming of networked systems. Ex. 2009 ¶ 26. The disagreement appears to be immaterial to the arguments presented by Patent Owner, however, because Dr. David declares that this additional experience would not affect his opinions. Id. Accordingly, we need not determine which of the alleged education and experience proffered by the parties is correct. We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima, 261 F.3d at 1355. From the Cohen reference, which Patent Owner agrees is in the field of endeavor of the invention in question (Tr. 29:2130:2), we understand that the level of ordinary skill in the art, at a minimum, requires some amount of experience with the configuration of telecommunications hardware systems, such as telephone and personal computer systems, for communicating with a central monitoring system, which is computer-implemented technology. See Ex. 1002, 3:1724; see also 3:4357 (describing the features of the computer-implemented technology at-issue in Cohen: computer processor and software, telecommunication lines, voice signal interpretation, database and report generation, voice generation, speech recognition, speech and digit recognizer, printer, and local area network (LAN)). With this level of ordinary skill in mind, we now turn to the analysis of the differences between the asserted prior art references and the subject matter recited in the claims-at-issue.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“endeavor nor reasonably pertinent to the problems addressed by the ’469 patent. PO Resp. 21. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“First, an obviousness “analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. It is, therefore, unpersuasive for Patent Owner to argue that Petitioner’s proffered rationales for the combination fail because neither Cohen nor Wahlquist teaches explicitly that they could be combined with other teachings. See PO Resp. 31, 3738 (arguing the lack of evidence that Cohen is “incomplete” and that nothing in Wahlquist would teach the combination).6 Further, Patent Owner narrowly focuses on Wahlquist being directed solely to eliminating slow and unsatisfactory communications with users. PO Resp. 31. As stated above in the analogous art analysis, Wahlquist is directed to more than just eliminating communications with users. The alleged “elimination” is not supported by a thorough reading of Wahlquist. We find, instead, that Wahlquist teaches prompting users with keystrokes during the diagnosis of their computer, a process that, from the standpoint of the user, is greatly simplified compared to the prior art systems described by Wahlquist, and consistent with the problems described in Cohen and the ’469 patent of simplifying user interactions with user devices.” slip op. at 19
Patent outcomesUS 7,587,469 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,587,469 - Hayward Industries, Inc. v. Pentair Water Pool And SpA, Inc.All claims unpatentablePTAB · Nov 19, 2014 · IPR2013-00287 · APJ James B Arpin · IPR · Final written decision
Claim 1 is unpatentable under § 103(a) over Struthers and the TI DSP Motor Solutions Guide; Petitioner’s motion to exclude evidence is denied.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“1001, col. 17, ll. 36–39, 44–45). Accordingly, Patent Owner argues that the patentee has given a specific definition to the phrase “minimum non-zero flow speed of the motor” in the Specification and that phrase means a “minimum motor speed capable of producing positive water flow in the water distribution system.” Id. For the reasons set forth below, we are not persuaded that the patentee acted as a lexicographer and set forth this definition for the claim phrase. First, we note that the Specification states that controller 24 “can take into account the motor speed required for the pump 10 to open any check valves and produce a positive water flow in the water distribution system” and that this required motor speed “can be referred to as . . . the minimum non-zero flow speed.” Ex. 1001, col. 17, ll. 36–39, 44–45 (emphasis added). We are not persuaded that the Specification sets forth, with “reasonable clarity, deliberateness, and precision,” the definition for the phrase proposed by Patent Owner. Paulsen, 30 F.3d at 1480. Thus, we determine that the Specification only describes a particular embodiment, but does not establish a clear, deliberate, and precise definition of the phrase.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are persuaded by Petitioner that the “minimum non-zero flow speed of the motor” is determined by the desired flow of water into the water distribution system. Pet. Reply 1. Consequently, we construe the phrase “minimum non-zero flow speed of the motor” to mean “the minimum speed for achieving a desired flow.” Id.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Struthers to achieve the pump controller of claim 1. PO Resp. 24–26. In particular, Patent Owner argues that “[t]he methods taught by Struthers include reducing the pump’s speed while increasing the pump’s torque, in an attempt to move the clog through the grinder pump.” Id. at 24–25 (citing Ex. 1012, col. 8, ll. 17–39). On the other hand, Patent Owner argues that “[t]he ’051 Patent addresses the problem of how to save time and energy by always starting a pump at a speed that will result in some flow through the pump and into the particular hydraulic system in which the pump is installed.” Id. at 25. As the U.S. Supreme Court explained, however, in performing the obviousness analysis, adjudicative bodies should not look only to the problem that the patentee was trying to solve. KSR, 550 U.S. at 420. “Under the correct analysis, any need or problem known in the field . . . and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. Because we determine that the recited pump controller of claim 1 addresses problems relevant to the teachings of Struthers, those problems may provide a reason to combine the teachings of Struthers and the TI DSP Motor Solutions Guide, in the manner proposed by Petitioner. Patent Owner further argues that “the combination of Struthers and [the TI DSP Motor Solutions Guide] does not teach the claimed division of responsibility between the digital signal processor and the microcontroller, such that any conclusion to the contrary relies, respectfully, on an impermissible hindsight reconstruction [of the pump controller recited in claim 1.]” PO Resp. 24; see id. at 33–38. We note that Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill [in the art] at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper . In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). For the reasons set forth above, we are persuaded that Petitioner has shown that Struthers and the TI DSP Motor Solutions Guide teach or suggest all of the limitations recited in claim 1, including the functions attributed to the digital signal processor and the microcontroller. Moreover, Struthers teaches that “it will be understood that some specific functions may be assigned to either the control board 22 or the microprocessor 24, depending on the specific construction and programming of each of those components in a particular pump unit 10.” Ex. 1012, col. 3, ll. 49–53; see Tr. 7:23–9:18. Thus, we are persuaded that the combination of the teachings of Struthers and the TI DSP Motor Solutions Guide does not rely on impermissible hindsight and that Petitioner has presented adequate reasons for combining the teachings of Struthers and the TI DSP Motor Solutions Guide to achieve the pump controller recited in claim 1 of the ’051 Patent.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill [in the art] at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper . In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). For the reasons set forth above, we are persuaded that Petitioner has shown that Struthers and the TI DSP Motor Solutions Guide teach or suggest all of the limitations recited in claim 1, including the functions attributed to the digital signal processor and the microcontroller. Moreover, Struthers teaches that “it will be understood that some specific functions may be assigned to either the control board 22 or the microprocessor 24, depending on the specific construction and programming of each of those components in a particular pump unit 10.” Ex. 1012, col. 3, ll. 49–53; see Tr. 7:23–9:18. Thus, we are persuaded that the combination of the teachings of Struthers and the TI DSP Motor Solutions Guide does not rely on impermissible hindsight and that Petitioner has presented adequate reasons for combining the teachings of Struthers and the TI DSP Motor Solutions Guide to achieve the pump controller recited in claim 1 of the ’051 Patent.” slip op. at 24
Patent outcomesUS 7,704,051 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,704,051 - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.All claims unpatentablePTAB · Jul 10, 2014 · IPR2013-00208 · APJ Stephen C Siu · IPR · Final written decision
Claims 1–8 were held unpatentable under §103 over Jacobson, Leu, and Brantigan, with Frey for claims 2–7; the Michelson ’247 ground was not proven.
RulingsFinal written decision- BurdenOther
“For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–8 of the ’997 patent are unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues that an “axis lying in a coronal plane” should be construed as an axis that is lying in “a plane at right angles to a sagittal plane.” PO Resp. 10–11. Petitioner does not contest Patent Owner’s assertion that one of ordinary skill in the art would understand that a “coronal plane” would be oriented “at right angles to a sagittal plane.” Pet. Reply 1. Thus, no further construction of this term is necessary.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“implant” should be construed such that “the composition of the implant does not include any bone” because “the prefix ‘non’ is commonly understood to exclude the thing specified after the word.” PO Resp. 12–13, citing Ex. 2038 ¶ 63. We agree that one of ordinary skill in the art would have understood that the prefix “non” indicates that the implant contains material that is not bone. Patent Owner does not show persuasively, however, that, under a broad but reasonable construction, one of ordinary skill in the art would have understood that it cannot contain any component derived from bone. Hence, we broadly, but reasonably, construe a “non-bone interbody instraspinal implant” as an implant that contains at least one component that does not contain bone.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“what it says (i.e., to mean “lateral”), at least because it would have been reasonable for one of ordinary skill in the art to have construed a term (i.e., “lateral”) with a plain and common definition. Patent Owner’s observation that a construction of the term “lateral” that was in use at the time of the invention included a “direct lateral” approach (as understood in this proceeding) further supports Dr. Jacobson’s testimony that one of ordinary skill in the art would have understood the term “lateral” to mean “direct lateral,” as that term is presently construed in the instant proceedings. Also, we note that claim 1 does not recite the term “direct lateral,” and Patent Owner does not assert that the ’997 patent specification discloses the term “direct lateral.” The absence of the term “direct lateral” in the ’997 patent further supports that one of ordinary skill in the art at the time of the invention would not have used (or understood) the term “direct lateral.” In addition to Jacobson’s explicit disclosure of, for example, “laterally inserting a cannula,” Jacobson discloses figures that illustrate what Patent Owner now refers to as a “direct lateral” approach (i.e., lateral insertion along a path having an axis lying in a coronal plane). Ex. 1004, 2:26–27, Figs. 3–8. We note that in each of the figures of Jacobson, the outer side periphery of the instrument(s) inserted “laterally” into the intervertebral space, as illustrated, are depicted by parallel lines that are oriented at 90 degrees from a horizontal surface. Based on the depiction of the outer side contours of the instrument(s) as being oriented 90 degrees from a horizontal surface, one of ordinary skill in the art would have understood that the instrument(s) are perpendicular to an underlying horizontal surface in the superior-inferior perspective (with respect to the orientation of the patient). More importantly, as the outer side contours of the instruments are parallel in these perspectives, one of ordinary skill in the art would have understood the instruments, as illustrated by Jacobson, to be perpendicular to an underlying horizontal surface in the medial-lateral perspective (with respect to the orientation of the patient – i.e., that the orientation of the instrument(s) is “direct lateral,” as Patent Owner uses that phrase, and not “posterolateral” or “anterolateral”). That is true because, assuming the instrument(s) illustrated in Jacobson are cylindrical, if the instrument(s) were angled away from the viewer, the outer side contours of the instrument(s) at the point of insertion into the intervertebral space would appear farther away from each other as compared to the outer side contours of the instrument(s) at the point farthest from the point of insertion into the intervertebral space (i.e., the proximal end of the instrument(s), which would be located farther away from the viewer). Likewise, if the instrument(s) were angled toward the viewer, the outer side contours of the instrument(s) at the point of insertion into the intervertebral space would appear closer to each other as compared to the outer side contours of the instrument(s) at the point farthest from the point of insertion into the intervertebral space (i.e., the proximal end of the instrument(s), which is located closer to the viewer). Moreover, as Petitioner’s declarant (Dr. Paul McAfee) points out, an anterior cross sectional view of the instrument(s) in-situ (i.e., Ex. 1004, Fig. 6) shows an even and symmetrical view of the instruments throughout the length of the instrument(s). See, e.g., Ex. 1029 ¶ 38. Dr. McAfee’s testimony further supports that Jacobson discloses that the instruments are inserted along a path having an axis lying in a coronal plane passing through a lateral aspect and a medial aspect of the two adjacent vertebrae, as recited in claim 1 (i.e., the “direct lateral” approach as presently understood in the instant proceedings).” slip op. at 8
Patent outcomesUS 8,251,997 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,251,997 - Bae Systems Information And Electronic Systems Integration, Inc. v. Cheetah Omni, LLCAll claims unpatentablePTAB · Jun 19, 2014 · IPR2013-00175 · APJ Rama G Elluru · IPR · Final written decision
Claims 1, 4, 13, 15, 17, and 19 were held anticipated by Sanders; claim 14 was held obvious over Sanders; Cheetah’s motion to amend was denied.
RulingsFinal written decision- BurdenUnpatentable
“B. Anticipation by Sanders (Ex. 1010) With respect to our review of BAE’s contention that claims 1, 4, 13, 15, 17, and 19 are anticipated by Sanders, we have reviewed BAE’s Petition, Cheetah’s Patent Owner Response, and BAE’s Reply, as well as the evidence discussed in each of those papers. We are persuaded by a preponderance of the evidence that claims 1, 4, 13, 15, 17, and 19 are anticipated by Sanders. See Pet. 15–27, 28–30, 32–44 (claim charts).” slip op. at 8
- 112 supportMotion to amend, deniedDenied
“In its motion, Cheetah contends that the subject matter of its proposed substitute claims have written description support in the specification of the ’673 patent. Mot. 7. Rules 42.121(b)(1) and (2), however, require that a motion to amend set forth the support in the original disclosure of the patent for each claim that is added and the support in an earlier-filed disclosure for each claim for which the benefit of the filing date of the earlier filed disclosure is sought. 37 C.F.R. § 42.121(b)(1), (2). For written description support for the proposed substitute claims, Cheetah refers to portions of the ’673 patent Specification only for the added limitations in its proposed substitute claims. Specifically, Cheetah refers to Figure 8D, and column 19, lines 20–39 of the ’673 patent Specification. Mot. 7. Such reference does not satisfy the requirements of Rule 42.121(b)(1) because the specification is not the original disclosure. Moreover, Cheetah cites alleged support in the specification for only the added Q-switcher limitations. Cheetah does not identify support in the original disclosure “for each claim” in its motion to amend, as a whole and including the Q-switcher limitations, as required by Rule 42.121(b)(1). Cheetah, therefore, has not made a sufficient showing that its proposed substitute claims, as a whole, have written description support in the original disclosure of the ’673 patent, and we deny the motion on that basis.” slip op. at 18
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Analysis We are persuaded by BAE’s arguments (Opp. 11) that it would have been obvious to a person of ordinary skill in the art to modify Sanders to couple a Q-switcher with fiber laser 82 shown in Figure 16 based on the teachings of Lees. See Ex. 1017 ¶¶ 8–11. As Cheetah acknowledges (Mot. 8), Q-switchers were known in the art and used to obtain high peak power laser pulses. Lees teaches a Q-switcher, the AOM, within the laser cavity of the Er:Yb fiber laser. Ex. 1018, Fig. 1; p. 1836 (right hand column, first full paragraph); Ex. 1017 ¶ 9. Sanders explains that high peak power laser pulses are advantageous for pumping a QPM OPO device, such as Sanders’s NFM device 84. Ex. 1010, 1:40–44, 3:21–27, 17:42–49. We, thus, are persuaded by Dr. Smith’s testimony that it would have been obvious to a person of ordinary skill to provide high peak power pulses to NFM device 84 by arranging Lees’s AOM (i.e., a Q-switcher) within Sanders’s fiber laser 82 in a manner described by Lees. Ex. 1017 ¶¶ 9–10. As BAE asserts, the reason to combine would have been to provide high peak power laser pulses from fiber laser 82 to NFM device 84. See id. ¶¶ 9–11. We further are persuaded that there would have been a reasonable expectation of success for modifying Sanders based on Lees, in view of the similarities between the fiber laser 82 of Sanders and the Q-switched fiber laser of Lees. See id. ¶¶ 10–11.” slip op. at 21
- ScopeMotion to amend, deniedDenied
“We agree with BAE that Cheetah has not demonstrated a need for proposing more than one substitute claim for each of claims 1 and 13. See Opp. 2–3. Substitute claim 22 is identical to substitute claim 21, except for the additional recital of “wherein the Q-switcher produces an output signal having a pulse width in the range of two (2) nanoseconds to one hundred (100) milliseconds.” Mot. 3–4. Cheetah proposes a similar scheme to replace original claim 13. Id. at 5–6. Cheetah, however, has not demonstrated the need for proposing narrower substitute claims than the ones we already have considered. In addition, in order to justify more than one substitute claim for each challenged claim, “a patent owner has to show a special need to justify more than one substitute claim for each challenged claim. In such situations, the patent owner needs to show patentable distinction of the additional substitute claim over all other substitute claims for the same challenged claim.” See Idle Free, Paper 26 at 5, 8–9. With respect to the new limitation of claims 22 and 25, Cheetah states that “[t]he prior art does not read on the Q-switcher output pulse width because it does not read on the Q-switcher itself.” Mot. 12. In its Reply, Cheetah states that “in the manner that the limitations would be read into the claims, the distinction is facially clear without explanation.” PO Reply 3. Cheetah’s conclusory statements have not persuaded us of a patentable distinction of substitute claims 22 and 25 over substitute claims 21 and 24, respectively. See Opp. 4. Cheetah also was required to discuss the “significance and usefulness” of the added features in a proposed substitute claim “from the perspective of one with ordinary skill in the art.” See Idle Free, Paper 26 at 7. This Cheetah failed to do with respect to claims 22 and 25. Therefore, we determine that Cheetah has not met its burden to demonstrate that claims 22 and 25 are patentable.” slip op. at 25
Patent outcomesUS 7,633,673 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,633,673 - Nichia Corporation v. Emcore CorporationAll claims unpatentablePTAB · Feb 11, 2014 · IPR2012-00005 · APJ Joni Y Chang · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Kidoguchi, Nakamura, Fujimoto, Shibata, and the Admitted Prior Art; Emcore’s motion to amend is denied.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“is a “highly fact-dependent question,” taking into account various factors such as whether the non-party “exercised or could have exercised control over a party’s participation in a proceeding” and the degree to which a non-party funds directs and controls the proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48759-60 (Aug. 14, 2012). Upon review of the parties’ arguments and evidence, we determine that Emcore did not demonstrate adequately that Nichia failed to identify all real parties-in-interest. The petition identifies Nichia Corporation as the real party-in-interest. Pet. 1. Nichia’s motion to stay (Ex. 2017) and the Notice Correcting Corporate Names (Ex. 1036) reveal that: (1) the motion to stay used the shorthand “Nichia” to refer to both Nichia Corporation and NAC; (2) the motion to stay inadvertently stated that “Nichia filed a Petition for inter partes review . . .”; and (3) the motion to stay should have used “Nichia Corporation” rather than “Nichia.” Ex. 2017, 1-2; Ex. 1036, 2. The evidence before us clearly shows that the motion to stay filed in the district court contains a clerical error, especially in light of the fact that in the instant proceeding, we use the term “Nichia” to refer only to Nichia Corporation (see, e.g., Decision on Institution, Paper 13 at 2). Therefore, the evidence does not establish that NAC is a real party-in-interest to this proceeding. Moreover, the mere fact that Nichia and NAC, as co-defendants, shared the same counsel and expert witness, and had similar litigation strategy is not sufficient to prove that NAC exercised, or could have exercised, control over Nichia’s action in the instant proceeding. Nor does being a subsidiary of Nichia establish that NAC has the ability to control Nichia’s conduct in this” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“semiconductor (claim 1); “pure nitride semiconductor” or “pure nitride compound semiconductor” (claim 12) In its petition, Nichia notes that the ’215 patent expressly defines these semiconductor claim terms in the specification. Pet. 10-11 (citing Ex. 1001, 5:5-8; 5:14-17; 5:5-12). Upon review of the cited portions of the specification, we observe that the definitions are set forth in the specification with reasonable clarity, deliberateness, and precision. Therefore, we adopt the definitions as the broadest reasonable constructions for the semiconductor claim terms set forth in the table below. Terms Definitions A semiconductor according to the stoichiometric III-V semiconductor formula Ala Inb Gac Nx Asy Pz where (a+b+c) is about 1 and (x+y+z) is also about 1. Ex. 1001, 5:5-8. A semiconductor having n-type conductivity, i.e., a” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We do not agree with Emcore that its proposed construction is the broadest reasonable interpretation of the claim term “annealing,” as it would import improperly a limitation—“sufficiently to form a contact with low resistance”—from the specification into the claims. Gemstar-TV Guide Int’l, Inc. v. ITC, 383 F.3d 1352, 1366 (Fed. Cir. 2004) (rejecting expressly the contention that claims must be construed as limited to an embodiment disclosed in the patent). We also are not persuaded by Emcore’s arguments. They fail to recognize that it is “a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (citations and quotation marks omitted); see also Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc) (“The written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of claims.”). Emcore has not alleged that the inventors of the ’215 patent acted as their own lexicographer and provided a special definition in the specification for the claim term “annealing” that is different from its recognized meaning 10 to one with ordinary skill in the art. The claim language used by Emcore is broad. There is no requirement as to the resistivity of the contact or a specific and beneficial change, as urged by Emcore. One with ordinary skill in the art may use “annealing” to form a contact that does not have a low resistance contact or to form other semiconductor structures.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We are not persuaded by Emcore’s argument, as it narrowly focus on one sentence and fails to consider Kidoguchi’s disclosure as a whole. The alleged translation error also is of no moment. Even based on the English-language translation submitted by Emcore (Ex. 2011), Kidoguchi’s disclosure as a whole discloses an embodiment that includes an Al base layer. Ex. 2011 ¶¶ 32-33 (“As illustrated in Figure 14, Mo (molybdenum) is employed as a contact metal for n-GaN. . . . Other metals, however, can be employed instead. For instance, W, Ta, Ti and Al may be employed [as a contact metal for n-GaN].” Emphasis added.). Therefore, Kidoguchi describes an Al base layer formed on an n-type GaN semiconductor, as required by claims 1 and 11-14. Emcore also argues that Kidoguchi is “a fundamentally flawed lead reference for n-type contacts to GaN and other type III-V semiconductors,” because Kidoguchi’s primary teaching is a Mo base layer, “which was known not to form a low-resistance, ohmic contact,” and Kidoguchi does not explain how other examples of base layer metals could be used to form a low-resistance, ohmic contact. PO Resp. 7-8, 38-39, 41-42. We are not persuaded by that argument, as it is not commensurate with the scope of claims 1 and 11-14. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (It is well established that limitations not appearing in the claims cannot be relied upon for patentability.). As discussed above in the claim construction section, we decline to import the limitation— 23 “a low-resistance, ohmic contact to the semiconductor”—from the specification into the claim term “base layer.” Additionally, Emcore does not identify any limitation of claims 1 and 11-14, that expressly requires “a low-resistance, ohmic contact.” In fact, the preamble of the sole independent claim, claim 1, merely requires “forming a contact on an n-type III-V semiconductor” and not “forming a low-resistance, ohmic contact on an n-type III-V semiconductor,” as urged by Emcore.” slip op. at 23
Patent outcomesUS 6,653,215 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,653,215
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.