• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Nov 30, 2020 · IPR2019-01044 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–8 were not shown unpatentable under § 103 over Hedderwick, Koning, and Benac because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedPetitioner expert discountedDecided for patent owner

    “have had either (1) a bachelor’s degree plus four years of experience in mechanical engineering, agricultural engineering, or a related field or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 42 (citing Ex. 1002 ¶¶ 19– 20). In the testimony the Petition cites in support of that proposal, Mr. Prairie lists factors that are typically considered in assessing the level of ordinary skill in the art, and then states “[b]ased on these factors together with my experience and expertise,” his opinion of the level of ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–20. This conclusory testimony is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12

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

    “construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).6 That standard “includ[es] construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). V. OBVIOUSNESS OVER HEDDERWICK, KONING, AND BENAC” slip op. at 14

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Patent Owner’s expert, Dr. Glancey, explains that [i]f a wheel is used to load and place seeds within a moving belt with brush hairs, the wheel must be able to disengage from seeds while the seeds remain in between brush hairs. If the wheel maintains contact with the seed after the seed has moved into the brush hairs, the wheel will continue to apply force to the seed and eject or remove the seed from the profile of the brush hairs . . . . Ex. 2200 ¶ 223. Dr. Glancey testifies, credibly, that in Petitioner’s combination, seeds would have been rejected from the belt because, as the paddle wheel rotates, seeds “would be scooped through the belt.” Id. ¶ 225.” slip op. at 31

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

    “way the references use endless members in the form of brush belts and paddle wheels, versus the way Petitioner uses those components in the proposed combination. Contrary to Petitioner’s and Mr. Prairie’s assertions, the proposed combination does not merely apply known techniques to a known device, because none of the cited references use brush belts and paddle wheels in the manner Petitioner proposes. As discussed in greater detail below, Benac teaches that a paddle wheel can be used to ensure that seeds jammed in vacuum holes are released reliably, and then dropped to the ground. Benac does not address brush belts as an endless member and, therefore, does not teach that paddle wheels can be used to guide seeds into the bristles of a brush belt, as Petitioner proposes. See Pet. 64. And Koning does not teach a brush belt that captures seeds released from above, as Petitioner and Mr. Prairie propose. See Pet. 61–62; Ex. 1002 ¶ 104; Ex. 2193, 190:10–191:3; Ex. 2263, 167:21–170:9. Rather, Koning’s brush belt maintains the relative position of potatoes lying on a conveying surface by holding them from above while the conveyor moves them to the furrow. Ex. 1004, 3:16–24, 5:3–14, Fig. 4. Petitioner’s arguments do not adequately account for these differences between the references’ use of a brush belt as an endless member and paddle wheels versus the proposed combination. Moreover, Patent Owner points out problems ordinarily skilled artisans would have encountered in attempting to combine the references as Petitioner proposes. Petitioner does not persuasively explain how those issues could have been overcome, and instead simply asserts, essentially, that ordinarily skilled artisans could have figured it out. See, e.g., Ex. 1135 ¶ 80. It is Petitioner’s burden to establish that ordinarily skilled artisans would have been motivated to combine the success in doing so. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that burden.” slip op. at 28

  Patent outcomesUS 8,813,663 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,813,663
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Nov 30, 2020 · IPR2019-01046 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1 and 3 were not shown unpatentable over Hedderwick, Koning, and Yamahata under § 103 because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on the evidence and arguments of record, we determine that the evidence favors Patent Owner’s proposed level of skill. Our determination is primarily based on Dr. Glancey’s analysis and reasons summarized above, as well as the prior art of record and the sophistication of the technology of the ’199 patent. We have considered Mr. Prairie’s opinion, but we give that testimony minimal weight due to the lack of supporting explanation. Accordingly, we adopt Patent Owner’s proposed level of ordinary skill in the art. Specifically, we determine that a person of ordinary skill in agricultural engineering, or a similar field, and two years of experience designing agricultural products or related machinery. Alternatively, a person of ordinary skill in the art would have had five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree.” slip op. at 13

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

    “IV. CLAIM CONSTRUCTION “In an inter partes review proceeding, a claim of a patent . . . shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).7 That standard “includ[es] construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent” slip op. at 14

  • BurdenNot shown unpatentable

    “Ex. 1135 ¶ 51. Yet it is Petitioner’s burden to show motivation and reasonable expectation of success for the proposed combination, not Patent Owner’s burden to show that the prior art demonstrates the futility of the proposed combination. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Here, Petitioner’s affirmative showing on motivation and reasonable expectation of success for using Koning’s brush belt in the proposed combination is unpersuasive for the reasons discussed above. And Patent Owner’s evidence of difficulties an ordinarily skilled artisan would have expected to encounter in that proposal serves to highlight the issues that Petitioner’s showing ignores. Petitioner additionally contends that Patent Owner’s arguments are based on the erroneous premise that an ordinarily skilled artisan must be able to physically combine the references. See Pet. Reply 7 (citing In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012)). We disagree. Patent Owner’s arguments, summarized above, simply point out that an ordinarily skilled artisan would not have expected success in combining the references’ teachings in the way Petitioner proposes. Motivation to combine and reasonable expectation of success are properly assessed with reference to the combination as Petitioner has framed it. The Federal Circuit has explained that doing so is not inconsistent with Mouttet. See Samsung, 925 F.3d at 1382–83 (“We will not fault the Board for analyzing Petitioners’ obviousness grounds in the way presented in the Petition.”).” slip op. at 34

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner’s and Mr. Prairie’s analysis does not acknowledge, much less bridge, the gap between Koning’s use of a brush belt to hold potatoes from above as they lie on a conveying surface, versus the brush belt’s use in above.10 During his deposition, Mr. Prairie resisted agreeing that the potatoes are lying on the conveyor in Koning, testifying that he takes from Koning’s description that “they are captured within the belt with brush hairs. And that there is some weight that’s along the conveying member 23.” Ex. 2193, 96:24–99:25. Mr. Prairie testified that he “do[es]n’t believe the brush hairs support the full weight of the potatoes,” but that Koning did not provide him sufficient information to answer whether the conveying member supports the majority of the weight of the potatoes. Id. at 106:22–107:21. In our view, it is clear from Koning’s description that the potatoes lie on the conveyor and the purpose of the brush belt is to maintain their position relative to each other while they are moved by the conveyor. Ex. 1004, 3:16–24, 5:3–14, Fig. 4; see also Ex. 2205 ¶¶ 140–141 (Patent Owner’s expert, Dr. Glancey, testifying that a simple mechanical analysis shows that in Koning, about 87% of the potatoes’ weight is supported by the conveying member). Mr. Prairie’s refusal to acknowledge the differences between the brush belt’s function in Koning versus the proposed combination undermines the credibility of his testimony that the proposed combination would have been a simple application of a known technique to a known device. 10 See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (noting expert testimony that supported the absence of a motivation to combine: “[I]f I can equate this one to kind of a simple analogy, if you’re trying to build a piece of furniture. What’s a typical thing? You put on a piece of wood. You take a nail, and you hit the nail with a hammer. In control terms, what Mr. Phipps is suggesting is that you put the hammer on the workbench, pick up the piece of furniture and bash the piece of furniture onto the hammer. It’s totally backwards from what I believe one of skill in the art would even attempt . . . .”). have been simple for an ordinarily skilled artisan to adapt Koning’s brush belt for use in the proposed combination, where seeds are deposited onto the brush belt from above—is further undermined by his testimony that he “can’t recall a time where I’ve seen a seed being dropped into a brush belt.” Ex. 2193, 113:5–9; see also Ex. 2263, 81:2–12 (“Q. And you never attempted to drop a seed onto a moving brush belt to see whether that would be inserted into the brush belt, correct? A. As I stated, for the purposes of this case, I did not do any physical experimentation with a moving brush belt as I didn’t feel it was necessary. The prior art discloses sufficient information.”) (objection omitted). Mr. Prairie has “had some industrial design projects where we’ve had to utilize brushes for various applications,” but he “ha[s] not used a brush belt to convey seed.” Ex. 2194, 297:6–16. Mr. Prairie testified that “prior to writing this declaration, brush belt technology was not a specific area that I study, that I was researching.” Ex. 2263, 79:6–9. Indeed, during his initial deposition in this case, the only specific example of a moving brush belt Mr. Prairie could recall seeing was Patent Owner’s ExactEmerge product. Ex. 2193, 108:6–110:10. The basis for Mr. Prairie’s opinion, that a seed would be expected to enter a moving brush belt in the proposed combination, appears to only be Koning itself. Ex. 1002 ¶¶ 79–81; Ex. 2193, 116:12–19, 118:7–23; Ex. 2263, 159:5–160:2. When asked at his deposition, Mr. Prairie did not explain any other engineering analysis he performed to make that determination. Ex. 2193, 114:23–117:12. Mr. Prairie testified that he “did not operate a brush belt for this declaration because [he] didn’t feel it was necessary to make my assessments” and he “did not do study or experimentation on a brush belt as I did not feel it was necessary.” unpersuasive because, as discussed above, Koning does not teach using a brush belt to receive and convey seeds that have been dropped onto it from above. Mr. Prairie does not account for that difference by explaining why an ordinarily skilled artisan would expect Koning’s brush belt to effectively capture and carry seeds dropped from above, as in the proposed combination.” slip op. at 26

  Patent outcomesUS 9,480,199 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,480,199
• Intel Corporation v. Qualcomm, Inc.Some claims unpatentable
  PTAB · Feb 20, 2020 · IPR2018-01240 · APJ Trevor M Jefferson · IPR · Final written decision

  Claim 11 is unpatentable as obvious over Chu, Choi 2010, Hanington, and Myers; claim 10 was not shown unpatentable over Chu, Choi 2010, and Hanington.

  RulingsFinal written decision

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

    “The ’558 specification and the context of claims 6, 8, and 13 and the related language of claim 10 support that the “source” must be able to receive both the boosted supply voltage and the first supply voltage (a selective boost). PO Resp. 35–38; Ex. 1201, 1:42–50, 5:31–49, 8:55–62, 8:62–9:17, 9:21–36, 10:19–29, Figs. 3 and 5. Accordingly, we do not agree with Petitioner that the use of a conditional “or” in claim 10 indicates that only one voltage is necessary to meet the claims. Pet. Reply 3–9. We credit Patent Owner’s evidence and arguments that the language of claims 10 and 11 and the ’558 patent specification support that claim 10, like dependent claim 11, require a selective boost. See PO Resp. 26–29. Petitioner’s arguments assert both that Patent Owner improperly limits the construction to one disclosed embodiment and that the Patent Owner’s construction improperly excludes a disclosed embodiment. Pet Reply 6–8. We are not persuaded by Petitioner’s argument that Patent Owner’s construction should be rejected because it excludes an embodiment. Pet. Reply 6 (citing EPOS Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014); Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed. Cir. 2003); Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1378 (Fed. Cir. 2001)). The cases Petitioner cites refer to constructions that read out preferred embodiments. See EPOS Techs., 766 F.3d at 1347; Dow Chem. Co., 257 F.3d, at 1378; Anchor Wall Sys., 340 F.3d at 1308. Petitioner provides no persuasive evidence that the embodiment they identify as being excluded is the preferred embodiment of the ’558 patent. Further, Petitioner cites no support that claims 10 or 11 must be construed to cover all embodiments. See Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010). The Federal Circuit has stated that the broadest reasonable construction is not required to cover the most embodiments in a patent specification, but “must be reasonable in light of the claims and specification. The fact that one construction may cover more embodiments than another does not categorically render that construction reasonable.” PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016). We are not persuaded by Petitioner’s argument that exclusion of a single embodiment renders Patent Owner’s claim construction improper.” slip op. at 12

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

    “persuasive. We credit Petitioner’s argument and evidence regarding the Chu and Choi 2010 concerns with power degradation and efficiency, which Patent Owner’s declarant testified were common concerns known before the ’558 patent. Pet. Reply 11–12 (citing Ex. 1330, 13:12–20, 13:21–14:2, 259:7–18); Ex. 1027 ¶ 18. We find that Petitioner presents persuasive evidence and argument that the issues of power degradation and efficiency were known in the art and within the knowledge and skill of a person of ordinary skill in the art. See id.; see also PO Resp. 32–33 (noting that “Patent Owner does not contest that efficiency and output distortion/robustness problems were generally known in the art.”). We also find that Petitioner identifies persuasive motivations to combine from the references themselves, identifying specific teachings in Choi 2010 in reference to boost converter systems like those in Chu. Pet. 57–58 (citing Ex. 1306, 1074, 1077). Indeed, Patent Owner’s declarant, Dr. Kelley, agreed that Choi 2010 teaches the use of boost converters to address battery degradation. Ex. 1030, 105:20–106:4, 156:3–6. Finally, Petitioner provides evidence that degrading battery performance affecting operation further motivates the combination of Chu and Choi 2010. Ex. 1030, 165:17–22; Pet. 57–61. We are also persuaded by Petitioner’s citation to secondary references of examples that use a boost converter to prevent distortion provides further support that a person of ordinary skill in the art would have been motivated to combine Chu with Choi 2010 and Hanington. See Pet. 58–60 (citing Ex. 1318, code (57); Ex. 1315, 8); Ex. 1303 ¶¶ 109–111. Patent Owner’s arguments regarding the secondary references attempts to bodily incorporate the teachings from these references into Chu and Choi 2010. Patent Owner also fails to address persuasively the support for the teachings these secondary references provide for modifying Chu’s supply modulator to incorporate a boost converter as disclosed in Choi 2010 and Hanington. Pet. 58–60 (citing Ex. 1318, code (57); Ex. 1315, 8); Ex. 1303 ¶¶ 109–111. Indeed, Patent Owner’s declarant agrees extending battery life, which is discussed in Exhibit 1315 and cited by Petitioner as a motivation to combine Chu and Choi 2010 (Pet. 58–60), would be achieved by the combination of Chu and Choi 2010 and was within the ordinary skill of an artisan. Ex. 1330, 281:6–282:2, 284:6–12. We also disagree with Patent Owner that the Petition fails to show how to combine the references to solve the conflicting problems that Petitioner alleges as motivation—efficiency and degradation. PO Resp. 33– 35. First, we credit Dr. Kelley’s testimony that the result of the combination was within the knowledge and skill of an artisan. Ex. 1330, 105:20–106:4, 156:3–6, 281:6–282:2, 284:6–12. Second, we find that the evidence and argument in the Petition explain sufficiently how Chu would have been modified to incorporate the boost supply voltage of Choi 2010 and Hanington and that such modifications involve typical and well known components widely used in boost converters. See Pet. 68–70; Ex. 1303 ¶¶ 112–113, 126–127; Ex. 1329 ¶ 24.” slip op. at 21

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

    “Owner argues “Choi 2010’s boost is a constant boost applied to the linear amplifier, and thus teaches away from a selective boost.” PO Resp. 39. Patent Owner further argues combining Myers’ selective boost with Choi 2010’s constant boost would destroy the purpose and benefits of Choi 2010’s design. Id. at 43. We do not find that Choi 2010’s use of a constant boost teaches away from selective boost in Myers. Patent Owner’s evidence and argument do not persuade us that Choi 2010’s teachings of boost exclude or discourage the use of selective boost. The portion of Choi 2010 Patent Owner cites does not criticize or discourage the use of selective boost, but applies boost generally to achieve its goals. See Ex. 1306, 1333–1334. We do not find that the teachings in Choi 2010 discourage a person of ordinary skill in the art from working with boosted voltage to achieve battery efficiencies. See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Choi 2010 does not discredit or criticize selective boost to improve efficiency.” slip op. at 23

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

    “the ITC investigation (see Ex. 2001, 36–37), Petitioner does not assert the direct incorporation of Myers technology into the combination of Chu and Choi 2010/Hanington. Instead, Petitioner asserts that Myers teaches a method of choosing a power source to improve operation efficiency. Pet. Reply 22–23; Pet. 72–76; Ex. 1312, 9:18–21, 1:19–23. Furthermore, Patent Owner’s declarant, Dr. Kelley, acknowledges this teaching. Ex. 1330, 270:13–271:5. Petitioner’s arguments and evidence differ materially from those cited in the ITC investigation. See Ex. 2001, 36–37. In the case before us, Petitioner does not directly incorporate Myers hardware into Chu or Choi 2010 and Hanington, but asserts that Myers— particularly Figure 7 that discloses the technique of switching between two different power sources—teaches a technique that would have been within the level of skill of an artisan at the time of patenting. Pet. Reply 23; see Pet. 72–76; Ex. 1330, 283:16–284:1; see also Ex. 1330, 152:21–153:4 (agreeing that a person of ordinary skill would have known how to select between two power sources). Contrary to the combination of the envelope elimination and restoration (EER) circuits of Myers into the linear amplifiers of Chu and Choi 2010 argued at the ITC, Petitioner has provided testimony and citations to the record that Myers’s selection functionality is applicable to the combination of Chu and Choi 2010. We credit Petitioner’s argument and evidence that a person of ordinary skill in the art would have been motivated to combine Chu, Choi 2010, and Hanington with the technique from Myers and would have had a reasonable expectation of success in doing so. Pet. 79–81 (providing supporting argument and testimony regarding battery and boosted voltage efficiency as taught by Myers). We find that Petitioner’s argument and evidence provide sufficient rationales with articulated reasoning to support the application of the Myers selection technique with the amplifiers of Chu and Choi 2010 to achieve battery efficiency during described operating modes. Pet. 57–61 77–82. Indeed, Dr. Kelley’s testimony supports the applicability of the techniques in Myers. See Ex. 1330, 270:13–271:5, 281:6–282:2, 284:6–12; Ex. 1312, 9:18–21 (discussing Myers’ teaching of choosing power source for operation efficiency). Based on our review of the full record, Petitioner demonstrates by a preponderance of the evidence an articulated rationale with articulated reasons to combine Chu, Choi 2010, Hanington, and Myers. In addition, Petitioner demonstrated by a preponderance of the evidence that Chu, Choi 2010, Hanington, and Myers teach the limitations of dependent claim 11.” slip op. at 24

  Patent outcomesUS 8,698,558 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,698,558
• DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentable
  PTAB · Jul 25, 2018 · IPR2017-00724 · APJ Michael W Kim · IPR · Final written decision

  Claims 19 and 26 are unpatentable: claim 19 as anticipated by Hite and claim 26 as obvious over Hite and Baji; claims 32–36 and 41 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “Petitioner, with supporting testimony from Dr. Negus, argues that a person of ordinary skill in the art would have combined Hite’s system with Hill’s teaching of a high access partition in order to increase storage efficiency and address Hite’s goal of providing “advertisers with less waste and greater cost effectiveness.” Pet. 60; Ex. 1008 ¶ 599 (quoting Ex. 1009, 3:21–35; citing Ex. 1010, 4:54–57). According to Petitioner and Dr. Negus, one of ordinary skill would have had reason to combine Hite and Hill— using Hill’s “high access partition allocated for high access data storage” to “store the high access advertisement data of Hite”—to “yield[] the completely predictable and desirable result” of “decrease[d] read and write times of advertisement data stored in Hite’s” storage devices, including optional video storage device 456. Pet. 60, 65; Ex. 1008 ¶ 599; see also Tr. 107:10–15 (asserting the same). Patent Owner argues Dr. Negus’ assertion that advertising data is” slip op. at 26

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “at least one addressable and reserved storage space is a partitioned area of a hard disk drive.” Ex. 1003, 49:55–58. Petitioner refers to Hite’s disclosures that its storage devices “can be . . . disks.” Pet. 27–28 (quoting Ex. 1009, 12:6–11; citing Ex. 1009, 10:44–49). Dr. Negus testifies that “‘disks’ at the alleged time of the invention of the ’494 patent were commonly known as ‘hard disk drives.’” Ex. 1008 ¶ 680 (emphases omitted). Petitioner and Dr. Negus represent that a person of ordinary skill in the art would, therefore, “have understood Hite to disclose the use of an entire ‘disk’ (or ‘hard disk’) as the ‘Video Storage Device’” or the RD. Pet. 28 (citing Ex. 1008 ¶ 680). Petitioner, with supporting testimony from Dr. Negus, further contends that “[w]hen the entire ‘hard disk’ storage space is undivided, it is within the broadest reasonable interpretation of the claimed ‘partitioned area of a hard disk drive.’” Pet. 28; Ex. 1008 ¶¶ 680, 683. We disagree. Based on Hite’s explanation that “[t]he storage devices used to implement” its system “can be . . . disks” as well as the evidence before us that “disks” or “hard disks” were known as “hard disks drives” at the relevant time, we agree with Petitioner that an ordinarily skilled artisan would have understood Hite to use an entire disk, hard disk, or hard disk drive for OVS Device 456 and for the RD. Ex. 1009, 10:44–49, 12:6–11; Ex. 1008 ¶ 680; see Ex. 3002 (MICROSOFT COMPUTER DICTIONARY (5th ed. 2002)), 246 (explaining, within definition of “hard disk,” that a “hard disk” is “[a]lso called: hard disk drive” and defining “hard disk drive” as “See hard disk” (emphases omitted)). We part ways with Petitioner, however, in its proffered conclusion that such an “entire,” “undivided” hard disk or hard disk drive falls within the ordinary meaning of “partitioned area of a hard disk drive.” Pet. 28; Ex. 1008 ¶¶ 680, 683; see Ex. 3001, 1087 (defining “partition” as “divide into parts”). The claim language expressly requires a “partitioned area of”—not a whole, entire, or undivided—hard disk drive. Thus, we disagree that an entire hard disk or hard disk drive constitutes the “partitioned area of a hard disk drive” required by claim 32. Accordingly, we are unpersuaded that Hite discloses “wherein said at least one addressable and reserved storage space is a partitioned area of a hard disk drive,” as recited in dependent claim 32. Thus, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 32 is anticipated by Hite.” slip op. at 20

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “e. Conclusion Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is anticipated by Hite. 4. Dependent Claim 26 Claim 26 depends from independent claim 19 and recites, in relevant part, “processing circuitry configured to dynamically merge the particular advertising data with digital media content that is pre-stored in said at least one storage device.” Ex. 1003, 49:6–9. The plain claim language unambiguously and expressly requires that it is the “digital media content” that must be “pre-stored.” Yet in addressing the limitation, the Petition represents, and Dr. Negus testifies, that Hite discloses “‘particular advertising data’ that is ‘pre-stored in said at least one storage device’ (prior to the ‘dynamic merging’ with ‘digital media content’),” because commercials targeted for a display site or consumer according to CID codes are stored in the RD or video storage device. Pet. 26 (emphasis added); Ex. 1008 ¶ 646 (emphasis added). These assertions that Hite’s system pre-stores what Petitioner identifies as the “particular advertising data,” targeted commercials selected using CID codes, fail to address or show adequately that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as claim 26 explicitly requires. Thus, we are unpersuaded that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as recited in dependent claim 26. Accordingly, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 26 is anticipated by Hite.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed

    “We agree with Patent Owner that Petitioner’s proffered rationale for combining Hite with Hill is not adequately supported by the record. Specifically, we agree with Patent Owner that Petitioner’s assertion that advertising data is “high access” data is a conclusory statement that fails to “articulate specific reasoning, based on evidence of record” to support an obviousness determination. In re: Magnum Oil Tools Int’l, Ltd., 829 F.3d at 1380. Although Hite discusses preempting broadcast commercials with stored commercials at broadcast breaks (see Ex. 1009, 7:24–30), Petitioner does not cite any portion of Hite, or provide any evidence at all, that explains how frequently the advertising data would have been accessed. Accordingly, because Petitioner has not shown adequately that it would have been obvious to one of ordinary skill in the art to combine Hite and Hill to arrive at “addressable and reserved storage space for storing the particular advertising data,” as recited in independent claim 19, we are unpersuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is obvious over Hite and Hill.” slip op. at 27

  Patent outcomesUS 9,053,494 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,053,494
• DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentable
  PTAB · Jul 25, 2018 · IPR2017-00717 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–4, 6, 7, 19, 23, 24, and 27 are unpatentable as anticipated by Hite or obvious over Hite; claims 16–18 and 28 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “preponderance of the evidence that the specified claims are unpatentable over the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent Owner that “any arguments for patentability not raised in the [Patent Owner Response] will be deemed waived.” Paper 10, 6; see also 37 C.F.R. § 42.23(a) (“Any material fact not specifically denied may be considered admitted.”).5 Additionally, the Board’s Trial Practice Guide states that the Patent Owner Response “should identify all the involved claims that are believed to be patentable and state the basis for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There are arguments and evidence advanced by Petitioner to support its positions, though, that Patent Owner chose not to address in either its Preliminary Response (Paper 7) or Response (Paper 22), or that was not addressed in the Decision on Institution (Paper 9). We have evaluated those unrebutted arguments and the evidence in support, and we find the Petitioner persuasively established, with sufficient evidence, the manner in which the asserted prior art teaches corresponding elements of the claims. Pet. 18–66 (citing Exs. 1008–1010) (unchallenged portions only). Based on the preponderance of the evidence before us, we conclude that the prior art identified by Petitioner describes all limitations of the reviewed claims that were not contested by the Patent Owner in either its Preliminary Response 5 For the reasons noted in our Order (Paper 43, 2–3), however, for this proceeding, we will also consider the arguments set forth in Patent Owner’s Preliminary Response. (Paper 7) or Response (Paper 22). In re NuVasive, 841 F.3d 966, 974 (2016). We address only the contested limitations below.” slip op. at 7

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

    “correspond properly to the claimed storage device, because it is not capable of recording programming content selected by a user for later playback. PO Resp. 14. We are not persuaded by this argument because, as discussed above, we are persuaded that a proper construction of “storage device” does not require recording programming content for later playback. We are persuaded that Petitioner has shown sufficiently that Hite’s OVS Device 456 corresponds properly to the “at least one storage device,” as recited in each of independent claims 1 and 19.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner. Petitioner does not explain sufficiently, and the cited portions of Hite do not disclose, how the method by which the progression is made from “children’s aspirin” to “children’s chewable vitamins.” Dr. Negus’s testimony is similarly unavailing, as the only cited paragraph that plausibly supports their position, paragraph 484, is conclusory and unsupported. Absent such explanation or cited disclosure, we are unpersuaded that Petitioner has shown adequately that the recited “key word” is a part of the progression, as required to meet the claim. 8 At least a portion of Dr. Negus’s testimony aligns with this testimony of Dr. Kesan. Ex. 1008 ¶ 669 (“An exemplary targeting characteristic to optimize advertising format scenarios within Hite is the ‘context code’ that ‘could be appended to the commercial’s CID code’ to be ‘compared with program identification codes appended to the program signals’ such that a ‘commercial is displayed if it is in a specific channel or network or show’ as in the example of ‘skiing equipment commercials would be shown during a skiing down hill racing competition’ (emphasis added, see, for example, Ex. 1009 at 4:34–40).”. Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 4 is anticipated by Hite.” slip op. at 22

  • Obviousness (§103) › KSR rationalesUnpatentableDecided for petitioner

    “Essentially, Patent Owner assertions are the same as those advanced for the anticipation ground for the same claim. We agree with Patent Owner’s assertions for the same reasons as set forth above. Having said that, the assertions are misplaced, because this is an obviousness ground, and Patent Owner does not address the modification to Hite proposed by the Examiner. To that end, we are persuaded by Petitioner that it would have been obvious to code Hite’s viewer responses using keywords, as we agree that such a technique was common and well known at the time of the invention, and that it would have been an obvious design choice. Ex. 1008 ¶ 486. Indeed, Patent Owner acknowledges this possibility, as they do not assert that using key words would not have been known, just that it may not have been preferable under certain circumstances. PO Resp. 53 (citing Ex. 2003 ¶ 92). Insofar as Patent Owner may be asserting that such a preference teaches away from a modification, we have considered it, but determine that it is outweighed by the evidence of the ubiquity of key word searches at the time of the invention. Indeed, we are unclear as to how, other than using numbers or key words, such searches could have been performed. KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”).” slip op. at 39

  Patent outcomesUS 9,053,494 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,053,494
• Fox Factory, Inc. v. Sram, LLCNo claims unpatentable
  PTAB · Apr 2, 2018 · IPR2016-01876 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 7–12 and 20–26 were not proven unpatentable over Hattan and JP-Shimano because the weak motivation to combine was outweighed by objective evidence of non-obviousness.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “benefit of improved durability, see Pet. 63, neither the Petition nor JP- Shimano ever tie improved durability to improved chain retention, and the Petition never contends that durability was the rationale to modify Hattan in view of JP-Shimano. See Pet. 62–66. Dr. Neptune admitted that these arguments were not contained in his original declaration. Ex. 2129, 96:16– 97:5. A reply is not the place to raise an almost entirely new motivation to combine. See 37 C.F.R. § 42.23(b). While we will consider this argument, nevertheless, we find that Dr. Neptune’s shifting basis for the rationale to combine the references suggests that his reasoning is motivated heavily by hindsight, and not by what a person of ordinary skill at the time of the invention would have understood. See InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1349 (Fed. Cir. 2014) (holding it is improper to combine references “like separate pieces of a simple jigsaw puzzle” without “explain[ing] what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place these pieces together”). Accordingly, we give little weight to Dr. Neptune’s testimony on rationale to combine. Patent Owner also argues that there is no rationale to combine,” slip op. at 18

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “of the effective filing date of the ’027 patent, “would have a skill level of at least a bachelor’s degree in mechanical engineering and/or at least three to five years’ experience in the development and design of chain drive systems and components thereof.” Pet. 1 n.1 (citing Ex. 1002 ¶ 14). Patent Owner contends that a person of ordinary skill would have a bachelor’s degree in mechanical engineering and at least one year of design experience with chainrings or related technologies. PO Resp. 12 n.3 (citing Ex. 2074 ¶ 25). Any difference between these two definitions is insignificant to this analysis. On this record, however, we find Patent Owner’s definition of a person of ordinary skill in the art to be more persuasive given the well-developed, relatively simple nature of the art, and apply it for our analysis.” slip op. at 7

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

    “on an assumption that the chain retention techniques of Hattan and JP- Shimano are additive, and would “improve chain retention to the maximum extent possible.” Pet. 63, see also Tr. 8:6–9; Ex. 2074 ¶ 50. The Petition and Dr. Neptune’s opening declaration, however, contain no explanation to support or explain this underlying assumption. Ex. 2074 ¶ 50. This gap in Petitioner’s reasoning is problematic, at least in part, because, as Dr. Sturges explains, Hattan discloses that its device prevents the chain from jumping off the forward oblong sprocket under “any operating conditions,” Ex. 1004, 1:63–66, and that it will “compensate for any out of line condition” of the chain line and will “prevent the chain from ever jumping off of the sprocket wheel,” id. at 2:26–27, 2:34–35. Ex. 2074 ¶ 46. In view of Hattan’s disclosure, Dr. Sturges testifies that a person of ordinary skill in the art would have understood that JP-Shimano would not have improved chain retention and engagement in Hattan, because both are directed to solving the same kind of problems that result in chain drop. Ex. 2074 ¶¶ 45–47. For example, Dr. Sturges testifies that Hattan specifically states that its solution prevents chain line displacement chain drops. Id. ¶ 47. Dr. Sturges also testifies that JP-Shimano seeks to address chain drop resulting from chain line displacement. Id. ¶ 45.” slip op. at 16

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “Having reviewed Patent Owner’s evidence, we agree with Patent Owner that it has shown that it is entitled to a presumption of a nexus between the evidence secondary considerations tied to the X-Sync chainring and the invention recited in the challenged claims. In particular, we find that 5 Petitioner contends that there are “possibly” other patents that cover Patent Owner’s commercial product (Pet. Reply 22), but does not identify them. Petitioner’s allegations of other patents are too insubstantial to be entitled to any weight. Patent Owner has shown that the various X-Sync chainrings are covered by the challenged claims and are coextensive with them. See Ex. 2074 ¶¶ 63, 64 (testimony of Dr. Sturges that the products practice the claims); Ex. 2078–2089 (claim charts); Ex. 2076 ¶ 11 (explaining the families of products Patent Owner sells); Ex. 2073 ¶ 10 (explaining the families of products Patent Owner sells). Here, the claims are directed to chainrings, as well as cranksets and drivetrains that include chainrings. Thus, there is a presumption of a nexus between the evidence of secondary considerations tied to the X-Sync chainring, as well as to cranksets and drive trains that include the X-Sync chainring, and the challenged claims that recite these bicycle components. See Polaris Indus., 882 F.3d at 1073 (“[The challenged claims] broadly cover the entire vehicle, rather than ‘only a component of a commercially successful machine.’ . . . Moreover, the Board did not point to any limitation it found missing in the RZR vehicles. On these undisputed facts, we hold that the Board erred in failing to find that Polaris’s eight RZR vehicles are the inventions disclosed in [the claims].” (citation omitted)). Petitioner tries to rebut this presumption of a nexus by attempting to shift the burden of proof to Patent Owner to prove that the objective indicia is tied to certain claimed features rather than unclaimed features present in the commercial embodiments. Pet. Reply 26–27. We agree with Patent Owner that this argument improperly attempts to shift the burden to Patent Owner. Sur-Reply 8–9. Here, because Patent Owner has shown that it is entitled to a presumption of a nexus between the X-Sync chainring and the challenged claims, the burden is on Petitioner to rebut that nexus. Demaco, 851 F.2d at 1392. With respect to the improved chain retention of the X-Sync chainring, Petitioner argues that there are numerous unclaimed features, many of which are touted in advertising materials, but Petitioner asserts that none of the claimed features are touted. Pet. Reply 32–33. Petitioner argues that “[i]n light of the unclaimed features touted by [Patent Owner] and the press, and in the absence of any touting/recognition for the claimed combination,” Patent Owner cannot establish a nexus between the claimed invention and the objective indicia. Id. at 33 (citing Ethicon Endo Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1035 (Fed. Cir. 2016)). Although Petitioner points to some evidence touting other features, see id. at 33 (citing Ex. 1055), 42 (citing Exs. 2005, 2008, 2027), we find that this evidence is insufficient to overcome the presumption of a nexus that Patent Owner has established. Moreover, much of the evidence is clearly broader than Petitioner acknowledges. In addition to pointing out unclaimed features, there is also praise pointing generally to the “unique tooth profile,” Ex. 2006, “tooth profile,” Ex. 2008, Patent Owner’s “adaptation of the narrow-wide chainring tooth profile,” Ex. 2019, and the “cleverly profiled chainring,” Ex. 2023.” slip op. at 26

  Patent outcomesUS 9,182,027 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 9,182,027
• Fox Factory, Inc. v. Sram, LLCNo claims unpatentable
  PTAB · Apr 2, 2018 · IPR2017-00118 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 7–12 and 20–26 were not proven unpatentable under either § 103 ground because the objective evidence of non-obviousness outweighed the case for obviousness.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “of the effective filing date of the ’027 patent, “would have a skill level of at least a bachelor’s degree in mechanical engineering and/or at least three to five years’ experience in the development and design of chain drive systems and components thereof.” Pet. 1 n.1 (citing Ex. 1023 ¶ 16). Patent Owner contends that a person of ordinary skill would have a bachelor’s degree in mechanical engineering and at least one year of design experience with chainrings or related technologies. PO Resp. 12 n.3 (citing Ex. 2074 ¶ 25). Any difference between these two definitions is insignificant to this analysis. On this record, however, we find Patent Owner’s definition of a person of ordinary skill in the art to be more persuasive given the well-developed, relatively simple nature of the art, and apply it for our analysis.” slip op. at 7

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

    “We find that Petitioner has shown a sufficient rationale to combine the teachings of the references. Petitioner has offered evidence that Thompson would have been improved by adding the wide-narrow teeth of JP-Shimano in certain situations when the chain approaches the chairing from the rear gears at an angle. Ex. 1050 ¶¶ 12–14; Ex. 1006, 15:73–75. We find this evidence persuasive and give it significant weight. We do note that we also give some weight to Patent Owner’s evidence that Thompson and JP- Shimano do largely overlap in their solutions, and that the benefits of the combination would be limited. Ex. 2074 ¶¶ 45–50. We find that even though Patent Owner’s arguments do not amount to a teaching away, they do slightly weaken the factual basis of Petitioner’s combination. See Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018) (“But even if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference.”).” slip op. at 15

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusObjective indicia no nexusDecided for patent owner

    “Unclaimed features do not prevent the presumption of a nexus, but they may be the basis for rebutting the presumption. Id. To do so, a person challenging patent validity must show that the commercial success, or other objective evidence of non-obviousness, was due to “extraneous factors” including “additional unclaimed features.” Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018). Merely pointing out unclaimed features in the X-Sync chainring is not enough. Id. (“However, a patent challenger cannot successfully rebut the presumption with argument alone— it must present evidence.”).” slip op. at 20

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia outweighedDecided for patent owner

    “We have reviewed Patent Owner’s evidence of sales and market share, and find that it demonstrates substantial commercial success within the single chainring market. Ex. 2076 ¶¶ 16–29. In particular, we find the large growth in market share and sales volume, and resulting large market share in the single chainring market, to be indicative of commercial success. Id. ¶¶ 20–29. We find this evidence compelling and entitled to substantial weight. We do not agree with Petitioner’s argument that Patent Owner’s growth in the single-chainring market was primarily due to cannibalization of its multi-chainring market share, and that Patent Owner’s lack of achieved growth in the overall chainring market (single- and multi-) indicates that there was no commercial success. As Patent Owner notes, cannibalization does not preclude commercial success. See Medtronic, Inc. v. Daig Corp., 789 F.2d 903, 907 (Fed. Cir. 1986). Moreover, Patent Owner presented evidence that it has achieved this large market share, in the single-chainring market, while charging between two and eight times the prices of its competitors in the single chainring market. Ex. 2076 ¶ 13 (stating that Patent Owner’s X-Sync chainrings are sold for more than $90, which is at least twice as expensive as the Race Face chainrings, and in some cases eight times more expensive). Patent Owner also noted that this large market share does not include the sales of its competitors who are licensees. Id. ¶¶ 26–29; see also Tr. 16:12–15 (agreeing that Patent Owner’s drivetrain as a whole was a commercial success). Thus, we find that Patent Owner has presented substantial evidence of commercial success. As we noted above, Petitioner points to evidence that the sales information presented is primarily directed to sales of X-Sync chainrings as parts of cranksets and drivetrain groupsets. See Pet. Reply 21–24. We found above that, for data related to cranksets and groupsets, Patent Owner has only established a nexus for claims 11, 12, 25, and 26. Thus, we find that a strong demonstration of a nexus that exists between claims 11, 12, 25, and 26 and this commercial success information. Accordingly, we find that commercial success weighs significantly in favor of non-obviousness of claims 11, 12, 25, and 26.” slip op. at 30

  Patent outcomesUS 9,182,027 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 9,182,027
• Oracle America Inc. / Oracle Corporation et al. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Jan 8, 2018 · IPR2016-01434 · APJ Michael W Kim · IPR · Final written decision

  Claims 11–13 and 15–20 are unpatentable as obvious; claim 14 was not shown unpatentable because the cited personal notes were not “content contributed.”

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “While the parties use slightly different language, we are unable to discern any substantive differences between the proffered levels of skill and basic qualifications of a person of ordinary skill in the art. Accordingly, we adopt Dr. Papakonstantinou’s articulation of the level of ordinary skill as our own, if for no other reason then for its conciseness, with the understanding that the differences between the proffered levels of ordinary skill are limited and inconsequential in our analysis.” slip op. at 23

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for patent owner

    “above-identified single statement in the specification, which uses permissible language such as “can be” and “does not need to be,” is sufficient to justify Patent Owner’s assertions, which for all practical purposes, is a disavowal of claim scope. See Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a clear disavowal in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language.”) We also credit the testimony of Dr. Almeroth over that of Dr. Papakonstantinou, because, among other reasons, Dr. Almeroth supports his testimony with relevant citations to the specification, while Dr. Papakonstantinou largely repeats that which is set forth in the Patent Owner Response, without further analysis. graphical fields that allow the input of administrative information without programming” are advantageous over “cumbersome programming performed in the past.” Ex. 2002 ¶¶ 44, 47. We treat this argument as subsumed within Patent Owner’s argument that the specification disparages prior art systems that require HTML programming to perform administrative tasks.” slip op. at 16

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

    “224, 232 encompasses a “link to content.” In application, however, “what is a wireless LAN?” 224, 232 is actually two separate components: (1) the underlying technical set of computer instructions that, upon clicking the link associated with “what is a wireless LAN?” 232, transports a user to a web page associated with “what is a wireless LAN?” 232; and (2) the words “what is a wireless LAN?” 224 itself displayed on the computer display, but separate from the technical set of computer instructions set forth in (1). In this example, (1) is “link to content, but not itself ‘content,’” however, (2) is itself “content.” More precisely, when we now consider “what is a wireless LAN?” 224, 232 in relation to the aforementioned construction of “content” as “electronic data embodying information for an individual or individuals,” it becomes clear that “what is a wireless LAN?” 224, 232 is both “links to content” and “content.” Specifically, component (1) of “what is a wireless LAN?” 232 is “links to content,” but not “content” itself, because the underlying technical set of computer instructions is not “electronic data embodying information for an individual or individuals,” but for a computer. By contrast, component (2) of “what is a wireless LAN?” 224 is “content,” as it is clearly “electronic data embodying information for an individual or individuals,” in that the words “what is a wireless LAN?” are intended to convey information to an individual. So, as a practical matter, we discern that every disclosure of a “link to content” that includes “electronic data embodying information for an individual or individuals” (i.e., any information associated with a “link” that is separate from a generic indication of the “link” itself), is “content.” See also Ex. 3001, 6–16 (providing further analysis concerning construction, which we expressly incorporate herein). Accordingly, we determine that a proper construction of “content” is “electronic data embodying information for an individual or individuals,” and excluding “links to content,” but not excluding “content” associated with the “links to content.”” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner. We are persuaded that “administrative interface” is broader than the “administrative page” mentioned in the specification, in that an “administrative interface” may encompass 9 While discussing “graphical user interface” during oral argument, Patent Owner stated that it was not disclaiming claim scope. Tr. 47:20–22 (“We’re not arguing that the claim terms have been disclaimed in some phrase.”). something other than an “administrative page.” We are also persuaded that the specification’s disclosure of a non-limiting embodiment, that of a highlyautomated and browser-based “administrative page,” does not require that a proper construction of “administrative interface” include “graphical user interface.” As admitted by Patent Owner, these pages are “example[s]” only, and, at best, merely “impl[y]” the presence of a “graphical user interface.” See PO Resp. 8–9 (citing Ex. 1002, 16:39–44; Ex. 2002 ¶ 40). We are persuaded that an “implied example” does not belong in a proper construction of a claim term. Indeed, Petitioner asserts that Patent Owner’s factual premise, concerning the above “implied example,” is flawed, as the specification’s “reference to automation and a browser provides no basis for restricting the claimed ‘administrative interface’ to a graphical user interface.” Pet. Reply 5–6 (citing Ex. 1033 ¶ 15) (Dr. Almeroth testifies that “automation of computer systems does not require a graphical user interface.”). More specifically, Dr. Almeroth identifies other automated “interfaces” in the specification, such as “a networked cash register, bar code scanner or electronic product code reader” (Ex. 1002, 13:8–15, 14:51–52) that do not require a “graphical user interface.” Ex. 1033 ¶ 14. We agree with Dr. Almeroth’s analysis of the specification. Dr. Almeroth asserts further, and we agree, again, that “[o]ne of ordinary skill would understand that that cash register could be connected to a server that is accessible only via a command line interface, and that administrators could use command-line tools . . . to group content on that server.” Ex. 1033 ¶ 14. Patent Owner cites In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1149–1150 (Fed. Cir. 2012) for its finding of an implicit definition of a” slip op. at 13

  Patent outcomesUS 7,516,177 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,516,177
• On Semiconductor Corporation / Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.All claims unpatentable
  PTAB · Sep 22, 2017 · IPR2016-00809 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 31, 32, 34, 38, 39, and 42 are unpatentable as obvious over Oda and Nakamura because the combination teaches the claimed features, including varying pulse frequency and on-time in the second feedback range.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Panels of the Board have interpreted 315(b) (and our associated rule 37 C.F.R. § 42.101(b)) to mean that “it is only privity relationships up until the time a petition is filed that matter.” Synopsys, Inc. v. Mentor Graphics 5 Patent Owner entered the Merger Agreement into the record as Exhibit 2018. Corp., Case IPR2012-00042, slip op. at 12 (PTAB Feb. 19, 2014) (Paper 60); see also ARRIS Group, Inc. v. TQ Delta LLC, Case IPR2016-00430, slip op. at 6 (PTAB July 1, 2016) (Paper 9). Although not the exclusive factor for establishing privity, control of the requested review procedure is an important factor to establish privity in this context. Our Office Patent Trial Practice Guide explains that “[w]hether a party who is not a named participant in a given proceeding nonetheless constitutes a . . . ‘privy’ to that proceeding is a highly fact-dependent question.” 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). “There are multiple factors relevant to the question of whether a non-party may be recognized as a . . . ‘privy.’” Id. “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. However, it is recognized that there is no definitive test regarding the degree of participation required to establish such control and, hence, to establish a privity relationship. Id.” slip op. at 11

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Similarly, Patent Owner’s arguments regarding the Confidentiality Agreement (Ex. 2026) are insufficient to demonstrate that Fairchild exercised, or could have exercised, any control over this proceeding. PO Resp. 65. The mere exchange of unidentified confidential information and recitations of the Confidentiality Agreement that the parties could be joint defendants in the future, without more, do not provide sufficient evidence that Fairchild has exercised, or could have exercised, any control over this proceeding. Thus, the record lacks sufficient evidence to demonstrate even the opportunity to control this review and, thus, to establish privity between Petitioner and Fairchild.” slip op. at 13

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

    “In our Decision on Institution, we agreed with Petitioner that nothing in the claims or the specification of the ’079 patent limits the term “energy transfer element” to only transformers in a flyback architecture converter and, more specifically, nothing in the claims defines a particular direction of current flow through the terminals of the power switch. Dec. 15–16. Thus, we determined that, in accordance with the broadest reasonable interpretation, “energy transfer element” should not be construed so narrowly as to include only a transformer (flyback topology converter) and to exclude an inductor (buck topology converter). Id. at 16. Instead, we determined “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. Id. After considering all evidence and assertions anew, we discern no persuasive reason to alter our preliminary interpretation and conclude, for the reasons given in our Decision on Institution and this Decision, that “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. See id. at 14–16.” slip op. at 20

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

    “Thus, although we discern no need to expressly construe the phrase “corresponds to” as used in the claims, we determine “corresponds to” as used in the claims is at least as broad as to encompass non-overlapping first 9 Patent Owner’s narrow interpretation demands a one-to-one relationship between the feedback values and the pulse on-time values, i.e., a reversible function in mathematical terms. The ’079 patent Specification does not support such a narrow interpretation. and second ranges of feedback values corresponding to first and second ranges of on-time values regardless of overlap of feedback values in the first and second ranges of feedback values.” slip op. at 25

  Patent outcomesUS 6,212,079 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,212,079
• Zepp Labs, Inc. v. Blast Motion, Inc.Some claims unpatentable
  PTAB · Aug 14, 2017 · IPR2016-00676 · APJ Rama G Elluru · IPR · Final written decision

  Claims 1, 7–9, and 12–15 were held unpatentable as obvious; claims 5 and 6 were not shown unpatentable because the evidence did not establish the claimed database limitation.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “to the ’855 patent is “a person with a Bachelor’s degree in mechanical or electrical engineering or a related field with two to three years of experience working with data acquisition systems.” Pet. 9 (citing Ex. 1003 ¶ 19). According to Petitioner, “[w]ith more education, such as additional graduate degrees and/or study, less experience is needed to attain the ordinary level of skill.” Id.” slip op. at 7

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

    “The Supreme Court has made clear that “[t]hroughout this Court’s engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here.” KSR, 550 U.S. at 415. In direct contrast, Patent Owner’s assertions of law, by use of the terms “unnecessary” and “unneeded,” harkens back to the rigid TSM test, which the Supreme Court held explicitly as being incorrect. The Supreme Court further opined as follows: Neither the enactment of § 103 nor the analysis in [Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)] disturbed this Court’s earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art. For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Id. at 415–416. Contrary to Patent Owner’s assertions of law, there is no use of terms similar to “unnecessary,” “unneeded,” or even “goals” in the obviousness analysis. Instead, the Supreme Court’s inquiry is straightforward: (1) if the elements are found in the prior art, and (2) if the combination results in “no change in respective function” and “does no more than yield predictable results,” i.e., a predictable reason to combine for a predictable advantage, then the resulting combination is “likely to be obvious.” Id.” slip op. at 14

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

    “Patent Owner asserts further that “Mahajan teaches such a person of skill in the art not to include a memory, as its real-time data transmission system is described as preferable to a memory-based system such as Lee’s.” PO Resp. 28 (emphasis omitted). We disagree. While Mahajan does disclose such a general preference in one embodiment, we find that it, at the same time, expressly acknowledges the possibility of the alternative. Ex. 1005 ¶ 42 (“The hardware device need not have an on-board memory for storing the orientation and position information.”). See, e.g., Merck & Co. v. Biocraft Labs, 874 F.2d 804, 807 (Fed. Cir. 1989) (non-preferred embodiments can be the basis for an obviousness analysis). Specifically, we find that the words “need not” actually conveys the following meaning in the context of the Mahajan: “may, but need not.” This understanding is further underscored by the fact that Mahajan expressly incorporates-by-reference Lee, and, in describing Lee, asserts the following: “A distinctive feature of this instrumented golf club is the use of a data storage memory device located within the golf club that eliminates the need for radio transmission hardware.” Ex. 1005 ¶ 6. Indeed, not only does Mahajan acknowledge that an alternative of adding memory was known, it even identifies an advantage for that alternative. The argument that such an advantage may be allegedly contrary to the goals of Mahajan is unpersuasive, for the reasons set forth above. Finally, insofar as Patent Owner is asserting that Mahajan teaches away from the proffered modification, we disagree for the same reasons. See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (a reference that “merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into” the claimed invention does not teach away).” slip op. at 22

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

    “We determine that Petitioner’s evidence and argument is insufficient to demonstrate that Mahajan teaches the limitation of claim 5. As an initial matter, Petitioner does not explain sufficiently how Mahajan’s teaching of storing information informs a skilled artisan that that storage is a “database,” as required by claim 5. See Pet. 32–33; Pet. Reply 14–15. Petitioner does not adequately explain why a storage medium, such a hard drive or a server, sufficiently equates with a “database.” Indeed, in response to the question— “[s]o Mahajan's disclosure of a remote server is not the same thing as disclosing a remote database, correct?”—Dr. Nesbitt testified, “[n]ot exclusively.” Ex. 2011, 123:8–12; see id. at 120:19–21. Dr. Nesbitt further testified that, [a] server would be more of a hardware device, where a database would be more of a software. It would be a place where the data is actually stored within a remote computer or remote server. So it’s the hardware versus what’s in the hardware is the distinction between the two. Id. at 122:17–23; see Ex. 2001 ¶ 63 (Patent Owner’s expert opining that “[d]isclosure of sending data to remote server for storage, without more, is insufficient to convey to a person of ordinary skill in the art that the server contains a database.”). The ’855 patent also distinguishes between a “remote database” and a “remote server.” See Ex. 1001, 8:33–34 57 (“[t]he data uploaded to the Internet, i.e., a remote database or remote server or memory remote to the system”); id. at 26:48–51. At oral argument,” slip op. at 30

  Patent outcomesUS 8,905,855 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,905,855

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