- PTAB · Mar 19, 2024 · PGR2022-00052 · APJ Sheila F Mcshane · PGR · Final written decision
The Board cancelled claims 1–27 and denied substitute claims 28–51 because the original disclosure lacked written-description support for the claimed CSP limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s proposed level of ordinary skill in the art, with the exclusion of “at least” because it introduces ambiguity. Inst. Dec. 8. Patent Owner “does not dispute the Board’s findings on the qualifications of a POSA [person of ordinary skill in the art] for purposes of this proceeding.” See RMTA 13. We determine that Petitioner’s definition, with the exclusion of “at least,” is consistent with the prior art of record and the skill reflected in the Specification of the ’034 patent and we use this level of skill here in the evaluation of the Revised Motion to Amend.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues that “claim construction is not necessary” and that “the meaning of the claims would be easily understood by a POSA.” RMTA 13. In the Petition, Petitioner proposed constructions for the terms “client device” and “first server,” and the original claims were rendered obvious under this construction. Pet. 23–27. Petitioner does not assert that the substitute claims of the Revised Motion to Amend are anticipated or rendered obvious by prior art or are patent ineligible. See generally RMTA Opp. Nor does Petitioner’s patentability challenge of the substitute claims contend that express construction is needed. See generally id. For purposes of this Decision, we determine that express claim construction is unnecessary. We need only construe terms that are necessary to resolve disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“written description requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989); All Dental Prodx LLC v. Advantage Dental Prods., 309 F.3d 774, 779 (Fed. Cir. 2002). The issue here, however, is whether the disclosure of the ’034 patent would have reasonably conveyed to a person of ordinary skill that the inventors had possession of the CSP Limitations. Ariad, 598” slip op. at 14
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“to cancelling claims 1–27; and deny-in-part the Motion to Amend as to proposed substitute claims 28–51. In summary: Motion to Amend Outcome Claim(s) Original Claims Cancelled by Amendment 1–27 Substitute Claims Proposed in the Amendment 28–51 Substitute Claims: Motion to Amend Granted Substitute Claims: Motion to Amend Denied” slip op. at 20
Claim construction§ 112 disclosurePatents in suitUS 11,272,034 - PTAB · Mar 14, 2024 · PGR2022-00061 · APJ Thomas L Giannetti · PGR · Final written decision
The Board granted Patent Owner’s non-contingent motion to amend, cancelling claims 1–34 and replacing them with substitute claims 35–66 supported by the written description.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“complies with the legal requirements set forth in 35 U.S.C. § 326(d) and 37 C.F.R. § 42.221. Lectrosonics, Paper 15 at 4, 7–8. Specifically, Patent Owner must show that the amendments do not enlarge the scope of the claims or introduce “new matter.” See 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii)). Lectrosonics describes “new matter” as follows:” slip op. at 4
- 112 supportGranted
“description support for the proposed substitute claims. See 35 U.S.C. § 326(a)(9); 37 C.F.R. § 42.221; Lectrosonics, Paper 15 at 7–8. The written description test is met when the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We disagree with this argument because it is not consistent with the ’953 patent specification or the plain meaning of “replace.” Neither party requested a special construction of the term “replace.” We see no merit in Petitioner’s contention that the plain meaning of “replace” in Figure 32 does not require removal of the device being replaced. The contention that the plain meaning of “replace” does not require “removing” was explored with Petitioner’s counsel at the oral argument: THE BOARD: If you replace a player in a football game or baseball game, a new player goes in and replaces that player. You don't add a 12th, a 12th player or a 10th player to a baseball team. You replace the player that’s there with a different player. Isn’t that what replacement is all about? COUNSEL FOR PETITIONER: Your Honor, in that context, it absolutely is. Because there’s no other way to understand that. You know, but we’re not talking about baseball or people here obviously. Hearing Tr. 18:23–19:3 (emphasis added).” slip op. at 15
Claim constructionPatents in suitUS 11,349,953 - PTAB · Sep 19, 2023 · IPR2018-00767 · APJ Sheila F Mcshane · IPR · Remand
The Board held that judicial estoppel and waiver preclude reliance on the inventorship certificates, leaving the prior final written decisions finding claims 1–3, 8, 11, and 17 unpatentable unchanged.
RulingsRemand decision- RemandOther
“For the foregoing reasons, we determine that judicial estoppel and waiver apply. Accordingly, the certificates of correction for inventorship have no impact on the Final Written Decisions in these cases. We also note that if judicial estoppel and waiver had been found not to apply and these proceedings were recommenced under changed inventorship, Petitioner should be permitted the opportunity to respond to Patent Owner’s new inventorship of the patents-at-issue at least by being allowed additional briefing in order to comply with due process and the Administrative Procedure Act (APA). See Pet. Remand Br. 1. Additionally, if judicial estoppel and waiver had been found not to apply, we also would likely have to determine whether the source code evidence, in view of the related testimonial evidence and argument that is already in the trial record, supports the actual reduction to practice prior to Janevski’s effective date, as Patent Owner argues it does. See Paper 13, 28–31; Paper 22, 12–22. Amongst other things, this determination would likely entail resolving a claim construction dispute between the parties that may affect the determination of whether the source code practices the claimed invention. See Paper 22, 15–16. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s certificates of correction of inventorship have no impact on the Final Written Decisions.” slip op. at 25
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“Here, unlike Egenera, Patent Owner represented and provided evidence on its asserted correct inventorship directly to the Board. As discussed, Patent Owner asserted and provided evidence that Messrs. Balassanian and Bradley were the inventors of the patents and Mr. Carpenter implemented the invention. Paper 13, 19–20; Ex. 2001 ¶¶ 6, 33, 42, 46; see also Ex. 1019, 59:9–18. Patent Owner’s representations were not contested by Petitioner during trial, and Patent Owner’s representations were further consistent with the argument and evidence developed and considered by the Board during trial. Now, Patent Owner’s position on inventorship is inconsistent with its earlier position and Petitioner would be prejudiced absent estoppel. Accordingly, in this particular circumstance, judicial estoppel applies. Judicial estoppel is an equitable doctrine that prohibits a party from taking inconsistent positions in the same or related proceedings and its purpose is “to protect the integrity of the judicial process.”” slip op. at 20
- BurdenDecided for petitioner
“We agree with Petitioner that after Patent Owner was unsuccessful at trial due to the failure of its own evidence, Patent Owner now seeks to have the evidence reconsidered under changed inventorship. Pet. Remand Br. 8– 9. Patent Owner had in its sole possession the evidence of inventorship, and we believe that under these circumstances, Patent Owner should be held to the consequences of its choices as to the representations and evidence of antedating that it presented at trial. To hold otherwise would result in prejudice to Petitioner. We consider the potential prejudice to be significant; as discussed, redoing these proceedings would require Petitioner to expend additional resources. Further, under these specific circumstances where Patent Owner has made the inventorship change under its volition, Patent Owner would be afforded the unfair advantage of a “do-over,” absent the application of judicial estoppel. Accordingly, under these specific circumstances, we determine that judicial estoppel applies precluding Patent Owner from relying on the certificates of correction of inventorship in these proceedings.” slip op. at 21
NonePatents in suitUS 8,942,252 - PTAB · Sep 19, 2023 · IPR2018-00766 · APJ Sheila F Mcshane · IPR · Remand
On remand, the Board held that judicial estoppel and waiver bar reliance on the inventorship certificates, which have no impact on the final written decisions.
RulingsRemand decision- RemandDecided for petitioner
“For the foregoing reasons, we determine that judicial estoppel and waiver apply. Accordingly, the certificates of correction for inventorship have no impact on the Final Written Decisions in these cases.” slip op. at 25
- PTAB / AIA Trials › Discretionary denialNot reached
“review on the grounds presented in the Petition as to whether claims 1–3, 6– 9, 12, 16, 19, and 23–25 of the ’791 patent are anticipated by Janevski2 or would have been obvious over Janevski alone and in combination with other prior art. IPR766, Paper 10. On September 19, 2018, in IPR767, we also instituted inter partes review on the grounds presented in the Petition as to whether claims 1–3, 8, 11, and 17 of the ’252 patent would have been obvious in view of Janevski alone and in combination with other prior art. IPR767, Paper 8.” slip op. at 3
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“B. Judicial Estoppel Petitioner argues that judicial estoppel applies here to preclude the retroactive effect of § 256. Pet. Remand Br. 6–9. Petitioner asserts that judicial estoppel applies against a party when: (1) the party takes a later position that is “clearly inconsistent” with an earlier position; (2) the party succeeds in persuading a court to adopt the earlier position (which thus poses a “risk of inconsistent court determinations”); and (3) the party seeking to assert an inconsistent position would derive an unfair advantage or impose an unfair detriment on the opposing party if not estopped. Id. at 7 (citing Transclean Corp. v. Jiffy Lube Intern., Inc., 474 F.3d 1298, 1307 (Fed. Cir. 2007)). Petitioner contends that all three factors are met because Patent Owner asserted that Mr. Balassanian and Mr. Bradley were inventors and communicated the invention to Carpenter for his subsequent reduction to practice, the Board accepted the premise for the purposes of making findings of fact and rulings of law, and Patent Owner now seeks to derive the unfair advantage of revisiting the Final Written Decisions. Id. at 7–9.” slip op. at 11
Discretionary denialPatents in suitUS 7,391,791 - PTAB · Dec 26, 2017 · IPR2017-02201 · APJ Daniel J Galligan · IPR · Order
The Board dismissed the petition and terminated the proceeding as to all parties because the parties had settled their dispute.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“and 37 C.F.R. § 42.72, these sections relate, respectively, to termination of “[a]n inter partes review instituted under this chapter” and to termination of “trial,” which “means a contested case instituted by the Board based upon a petition.” 35 U.S.C. § 317; 37 C.F.R. §§ 42.2, 42.72. This proceeding is in the preliminary stage, and no decision whether to institute a trial has been made. As such, we treat the parties’ request as seeking dismissal of the Petition to thereby terminate the proceeding.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“U.S. Patent No. 6,684,060 B1. Mot. 3–4. The parties represent that “there are no other agreements or understandings, oral or written, between DTS and Avago, including any collateral agreements, made in connection with, or in contemplation of, the termination of the present proceeding.” Mot. 3. Under these circumstances, we determine that it is appropriate to dismiss the Petition (Paper 1) and terminate this proceeding. See 37 C.F.R. §§ 42.71(a), 42.74(a). We also determine that it is appropriate to treat the Agreements as business confidential information to be kept separate from the patent file. See 37 C.F.R. § 42.74(c).” slip op. at 2
NonePatents in suitUS 6,684,060
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.