• Kinetic Technologies, Inc. v. Skyworks Solutions, Inc.No claims unpatentable
  PTAB · Oct 19, 2015 · IPR2014-00690 · APJ Scott A Daniels · IPR · Final written decision

  The Board held claims 4–6, 8–20, and 23–29 not shown unpatentable because LT1932 was not proven publicly accessible before the priority date.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Reimund “[t]he documents were made publicly available shortly after the footer dates were applied.” Id. A “printing date” is not, however, without more, sufficient evidence of public accessibility as of that particularly date. See e.g., LG Elecs., Case IPR2015-00329 (Paper 13, 13) (Declarant’s “unsupported opinion that EIFUFAL501 ‘was more than likely published on or about March 24, 1998’ (id.) is insufficient to demonstrate a reasonable likelihood that EIFUFAL501 was published before June 1, 1998.”) The bare testimony of Mr. Reimund that the printing date “‘1201’ indicates that the datasheet was made public, and Linear customers and members of the public were able to access the datasheet no later than December 2001” (Ex. 1012 ¶ 6) is not persuasive evidence that the “printing date” can be equated to the publication date. In his Declaration, Mr. Reimund stated that such documents “were made publicly available shortly after the footer dates were applied.” Ex. 1012 ¶ 5 (emphasis added). Mr. Reimund’s testimony, however, provides no further explanation as to what time period, hours, days or months etc., is encompassed by the term “shortly after.” Giving some weight to Mr. Reimund’s testimony that it was common business practice for documents to bear a printing date such as “1201” indicative of a printing date of December 2001, his opinion that LT1932 was publicly available “shortly after” that date is vague and insufficient by itself to demonstrate that LT1932 was accessible to the public prior to the filing of the ’474 provisional application on March 28, 2002. Mr. Reimund further states that “Linear maintains and I have reviewed a database reflecting the dates that such documents were made publicly available.” Id. ¶ 5. The database referred to by Mr. Reimund is not part of the record in these proceedings and this explicit reference to purported important corroborating evidence is ambiguous without the specific database and dates he reviewed. Overall, Mr. Reimund’s testimony does not state any facts or circumstances relating to specific dates, or even a general time frame, after December 2001 that LT1932 was in fact publicly accessible. Mr. Reimund’s testimony alleging that LT1932 was publicly available “shortly after” December 2001, does not sufficiently temporally link the December 2001 printing date to the alleged public availability of the reference prior to March 28, 2002. Consequently, on this record we are not persuaded that Petitioner has demonstrated by a preponderance of the evidence that LT1932 is a printed publication available before the priority date.” slip op. at 19

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “We determine that the priority date, for purposes of this Decision, is March 28, 2002, the filing date of the ’474 provisional application that became the ’275 patent.10 Patent Owner provides persuasive evidence that 10 Patent Owner provides evidence of conception and reduction to practice of the invention claimed in the ’275 patent prior to December 31, 2001, and also evidence of diligence leading to the filing of the ’474 provisional application on March 28, 2002. See PO Resp. 35–57. Based on this the 60/368,474 (“’474”) provisional application contains essentially identical disclosure to that of the ’275 patent and that each of the claims at issue is supported by disclosure in the ’474 provisional application. PO Resp. 54– 57, compare Ex. 2016, with Ex. 1001; Ex. 2030 ¶¶ 54–55; Ex. 2028 ¶ 90.” slip op. at 17

  • ExcludeMotion to exclude, deniedDenied

    “to exclude is properly related to the admissibility of evidence (e.g., authenticity or hearsay). See Bloomberg Inc. v. Markets-Alert Pty Ltd., CBM2013-00005, slip op. at 5 (PTAB Nov. 15, 2013) (Paper 56). Patent Owner’s Motion to Exclude Evidence is directed, however, to the sufficiency of evidence concerning whether or not LT1932 is prior art to the claimed subject matter in the ’275 patent. Patent Owner argues in its Motion that “[t]he Petition asserted, without evidentiary support, that Exhibit 1004 ‘was published at least as early as 2001.’” Mot. 2 (citing Pet. 5). Although Patent Owner states that Petitioner does not establish the necessary “foundation,” the arguments presented by Patent Owner are directed specifically to the sufficiency of the copyright date of 2001 as evidence of a publication date, and hence public accessibility, of LT1932. See id. at 2–4. Arguments related to whether a copyright date is sufficient evidence of public accessibility so that LT1932 is, or is not, a “printed publication” under 35 U.S.C. § 102 are properly presented in a reply rather than in a motion to exclude. With respect to Patent Owner’s argument that Mr. Reimund’s Declaration should be excluded as irrelevant under Fed. R. Evid. 402, this admissibility objection is based on Patent Owner’s assertion that Petitioner’s evidence is insufficient to establish LT1932 as prior art where Patent Owner has provided evidence of conception prior to December 31, 2001. Mot. 5. For example, Patent Owner argues in its Motion that “Petitioner cannot carry its burden to show that the claims of the patent are invalid unless it presents sufficient evidence in the Petition itself that a relied upon reference is prior art to the ’275 Patent.” Id. (emphasis added) (original emphasis omitted). Such an argument addressing the sufficiency of Petitioner’s temporal evidence is misplaced in a motion to exclude. Accordingly, Patent Owner’s Motion to Exclude Evidence is denied.” slip op. at 15

  • PTAB / AIA Trials › Motions to amend / substitute claimsDenied

    “Renewed Joint Motion to Terminate Proceedings under 35 U.S.C. § 317(a) on June 12, 2015. Accompanying the Motion, the parties filed a true copy of a settlement agreement (Ex. 2040) along with a joint request to treat the settlement agreement as business confidential (Paper 40), to be kept separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Based on the facts of this case and because the settlement was not concluded until after the oral hearing and we had substantially decided the merits of the proceeding, we exercise our discretion not to terminate this proceeding. The Renewed Joint Motion to Terminate Proceedings is denied.” slip op. at 20

  Patent outcomesUS 8,539,275 not shown unpatentable
  § 102 anticipationcites Phillips
  Patents in suitUS 8,539,275
• Webasto Roof Systems, Inc. v. Uusi, LLCAll claims unpatentable
  PTAB · Oct 13, 2015 · IPR2014-00649 · APJ Hyun J Jung · IPR · Final written decision

  Claims 7 and 13 are unpatentable as anticipated by Bernard; claim 1 is unpatentable as obvious over Bernard and Chikaraishi.

  RulingsFinal written decision

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

    “The record before us does not present a clear disavowal in the prosecution history that would limit the plain and ordinary meaning of the disputed term. Patent Owner cites to portions of the prosecution history of the ’037 patent that argues how the as-filed application provides support for the claimed subject matter. PO Resp. 25–28; Ex. 1004 at 384, 388, 484– 498, 585–779. These cited portions do not discuss the scope of the claim language and do not indicate that Applicants intended to limit the claim language to the cited embodiments. See Ex. 1004 at 384, 388, 484–498, 585–779. Also, we decline to import into the claims a limitation based on specific embodiments in the Specification. See, e.g., SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). Accordingly, based on the complete record before us, we construe “different parameter values” in accordance with its plain meaning. Our construction includes parameter values that are either values of a parameter measured at different times or values of two or more different kinds of parameters. Ex. 1003, 18:29–44.” slip op. at 9

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

    “Petitioner replies, and we agree, that “‘frame,’ ‘closure,’ and ‘drive motor’ are separately recited in claims 1 and 7, so it would be redundant to read them into the ‘power system.’” Reply 4. We also agree with Petitioner that “the additional requirement of ‘a modularized or preassembled’ has no basis in the intrinsic record; it is not mentioned in the ’037 patent.” Id. (citing Reply Decl. ¶ 17). Petitioner argues that “‘power system’ only appears in the claims,” that the “’037 patent ‘concerns motor driven actuator control systems” and references a standard “that ‘establishes requirements for power window control systems,’” and that the “disclosure indicates that . . . ‘power system’ refers to a ‘motor driven system,’ e.g., for use in a power window.” Id. (citing Ex. 1003, 1:24–26, 1:30–33; Reply Decl. ¶ 15), 16 (citing Reply Decl. ¶¶ 14–15). Accordingly, based on the complete record before us, we construe “power system” in accordance with its plain meaning. Our construction does not require that power system be a modularized or preassembled power unit.” slip op. at 10

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

    “As explained above in Part III.A.1, our construction of “different parameter values” includes values of a parameter measured at different times and is not limited to values of two or more different kinds of parameters. Also, as discussed in Part III.A.2, our construction of “power system” does not require that it be a modularized or preassembled power unit or further include frame, closure, and drive motor, which are recited separately in claim 7. Accordingly, based on the complete record before us, we determine that Petitioner, by a preponderance of the evidence, has shown that claim 7 is anticipated by Bernard.” slip op. at 18

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

    “As discussed above in Parts III.A.1 and III.A.2, our construction of “different parameter values” includes values of a parameter measured at different times and our construction of “power system” does not require that it be a modularized or preassembled power unit or further include frame, closure, and drive motor, which are recited separately in claim 1. Accordingly, based on the complete record before us, we determine that Petitioner, by a preponderance of the evidence, has shown that claim 1 is unpatentable over Bernard and Chikaraishi.” slip op. at 22

  Patent outcomesUS 7,548,037 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,548,037
• Webasto Roof Systems, Inc. v. Uusi, LLCAll claims unpatentable
  PTAB · Oct 13, 2015 · IPR2014-00648 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1, 2, and 5–8 were held unpatentable: claims 6–8 as anticipated by Bernard, and claims 1, 2, and 5–8 as obvious over Lamm, Itoh, and Bernard.

  RulingsFinal written decision

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

    “Reading claim 1 as a whole, we do not adopt a construction requiring separate and distinct algorithms. Claim 1, written in outline format, includes a limitation “d” that requires a controller to sense a collision. Limitation “d” ends with the word “by” followed by a colon. What follows is a list of limitations that are enumerated “i,” “ii,” “iii” and “iv,” which are further indented than limitations “a,” “b,” “c,” and “d.” Limitation “d” tells us that the limitations following the colon explain how the sensing is accomplished. The “sensing a collision” (step “d”) is accomplished by i) monitoring movement of the window, ii) adjusting a threshold, and iii) identifying a collision by comparing a signal value to the threshold. The final claim limitation (“iv”) tells us that a control signal deactivates the motor in response to “a sensing of a collision.” Even though “a sensing of a collision” is introduced by the indefinite article “a” (rather than “the”), we do not view this as requiring a separate and distinct “algorithm.” Rather, we read limitations “i” through “iv” as explaining how limitation “d” is carried out. As for UUSI’s “concurrent” argument, the claim does not explicitly or implicitly set forth performing the “identifying” and “sensing” limitations concurrently. Nor does the claim say anything about how the various described activities are to be implemented in code.” slip op. at 7

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

    “We decline to adopt UUSI’s dictionary definition because the Specification of the ’612 patent disparages immediately reversing (without first deactivating) the motor in response to detecting an obstacle (Ex. 1001, 3:42–55), which may result in “motor plugging,” described as “unnecessary” and “undesirable” as causing “undesired motor heating,” is “detrimental to the life and reliability” and because it “can also cause undesirable transients, trip breakers, and blow fuses in a power supply system.” Pet. 8. According to Webasto, at least one of UUSI’s earlier patents includes claim language that is broader with respect to motor control. Id. (citing Ex. 1019, Claims). Thus, as Webasto argues, the choice of the word “deactivate” in the challenged claims was a conscious decision that should be given effect. Id. We construe the claim term “deactivate” to embrace any of turning off, removing power from, and stopping the motor. Our construction excludes immediate reversing of the motor without first turning off, removing power from, or stopping the motor.” slip op. at 8

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

    “As stated supra in Part III.A.3, claim 6 does not require an “abrupt” stoppage. Thus, UUSI’s argument does not apply. Furthermore, UUSI appears to conflate abrupt stoppage of the window panel with how rapidly stoppage is detected. Arguments that Bernard requires an additional 0.1 second or 0.4 second miss the point. Bernard reacts (albeit with a small delay) to stoppage of the window as claim 6 requires. C. Challenges relying on Lamm (Ex. 1008), Itoh (Ex. 1006), and Bernard” slip op. at 11

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We do not find UUSI’s argument persuasive. Obviousness does not require direct substitution. Both Lamm and Itoh are reasonably pertinent to the particular problem with which the inventor is involved — preventing pinching. They both would have commended themselves to an inventor’s attention in considering the problem addressed by claims 1, 2 and 5–8 of the ’612 patent. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).” slip op. at 17

  Patent outcomesUS 8,217,612 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,217,612
• Webasto Roof Systems, Inc. v. Uusi, LLCAll claims unpatentable
  PTAB · Oct 13, 2015 · IPR2014-00650 · APJ Jason J Chung · IPR · Final written decision

  Claims 1, 6–9, 11, 15, and 16 are unpatentable under § 103(a) over the five stated combinations of prior art.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “experience with the state of the art in 1992 at the time of filing and is not an expert in automotive vehicle window or sunroof movement mechanisms or their control systems. PO Resp. 4–8. We are persuaded, however, that Dr. Toliyat is an expert in the field of electrical and computer engineering since before 1992. Ex. 1004. Dr. Toliyat’s specific expertise is in industrial drives, electrical machines, power electronics, power systems and control, which are all in the field of automotive engineering. Ex. 1003 ¶ 7. Accordingly, we conclude that Dr. Toliyat is an expert familiar with the State of the Art of automotive engineering in 1992.” slip op. at 34

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

    “parameter of a motor . . . that varies in response to a resistance to motion” (claim 1) to “a sensor that measures a magnitude of motor current.” PO Resp. 12. We disagree. Patent Owner notes a supposedly claim-limiting prosecution history in which Applicant argued that the sensor includes an “operational amplifier that amplifies a voltage across a current-measuring resistor.” PO Resp. 9– 10. However, we do not find any clear disavowal in the prosecution history that would limit the plain and ordinary meaning of the disputed term. Patent Owner also finds support for its proposed narrow construction in the Specification, which states “motor current is the primary measured parameter of immediate importance for both hard and soft obstacle detection” (emphasis added) and “motor current” denotes magnitude. Id. at 11 (citing Ex. 1001, 15:66–16:3, 18:35–37). The Specification of the ’802 patent states: “obstacle detection via motor current sensing or current sensing and speed sensing means becomes the remaining reliable backup method of detecting an obstacle” (emphasis added). Ex. 1001, 4:12–14. We are not persuaded to import this narrowing limitation from the Specification based on the examples argued.” slip op. at 6

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

    “Although the doctrine of claim differentiation suggests claims 7 and 15 do not require “all or part of a range of motion” because claim 1 recites “all or part of a range of motion” and claims 7 and 15 merely recite “a travel path,” this suggestion is not a hard and fast rule and will be overcome by a contrary construction dictated by the written description or prosecution history. See Seachange Int’l, 413 F.3d at 1369. The Specification and prosecution history of the ’802 patent do not provide a special definition nor provide a clear disavowal of the plain meaning of the “travel path” limitation, and Patent Owner does not argue otherwise. Rather, the Specification of the ’802 patent indicates during and immediately after the startup phase, obstacle detection will not occur. The Specification of the ’802 patent refers to variable I as motor current and to variable PP as pulse period in discussing obstacle detection along a travel path. Ex. 1001, 15:57–67. In particular, the Specification of the ’802 patent states “after allowing some small initial amount of time for the motor rotor to begin rotation, I is immediately measured and compared against a fixed maximum threshold value and PP is immediately measured and compared against some maximum threshold number of clock cycles” (emphasis added). Id. at 16:31–36. Thus, in this embodiment, obstacle detection is not performed along the entire travel path. Because the Specification of the ’802 patent indicates obstacle detection is not performed along the entire travel path and the prosecution history does not include a special definition nor a clear disavowal of the plain meaning (Ex 1001, 16:31–36), we conclude from the totality of the evidence that the “travel path” recited in claims 7 and 15 is not limited to the “entire travel path.” Rather, it can refer to a portion of the entire travel path.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “At the same time, 35 U.S.C. § 112, sixth paragraph, does not apply if persons of ordinary skill in the art reading the specification understand the term to be the name for the structure that performs the function, even when the term covers a broad class of structures or identifies the structures by their function. Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1372–73 (Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002); Watts v. XL Sys. Inc., 232 F.3d 877, 880–81 (Fed. Cir. 2000); Personalized Media, 161 F.3d at 704; Greenberg v. Ethicon Endo- Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many devices take their names from the functions they perform.”). The term is not required to denote a specific structure or a precise physical structure to avoid the application of pre-AIA 35 U.S.C. § 112, sixth paragraph. See Watts, 232 F.3d at 880. In this case, the Specification of the ’802 patent states “[t]he circuitry of FIGS. 2A–2D includes a number of operational amplifiers which require higher voltage than the five volt VCC logic circuitry power signal” (emphasis added). Ex. 1001, 6:30–32. As a result, one of ordinary skill in the art reading the Specification of the ’802 patent would understand the term “logic” to be the name of a type of circuitry (e.g., structure) that performs the function. Moreover, “circuit” has been found to be a structural term that does not invoke pre-AIA 35 U.S.C. § 112, sixth paragraph. Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1321, (Fed. Cir. 2004); Apex, 325 F.3d at 1373; Greenberg, 91 F.3d at 1583–84; Personalized Media, 161 F.3d at 704–05; CCS Fitness, 288 F.3d at 1369–70; Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996); Watts, 232 F.3d at 881; Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1318–19 (Fed. Cir. 1999). Because one of ordinary skill in the art reading the Specification of the ’802 patent would understand the term “logic” to be the name of a type of circuitry and “circuit” has been found not to invoke pre-AIA 35 U.S.C. § 112, sixth paragraph, we conclude from the totality of the evidence that claim 15 does not invoke pre-AIA 35 U.S.C. § 112, paragraph six.” slip op. at 11

  Patent outcomesUS 7,579,802 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,579,802
• Wavemarket Inc. D/B/A Location Labs v. Locationet Systems Ltd.Rehearing denied
  PTAB · Jul 29, 2015 · IPR2014-00199 · APJ Kristen L Droesch · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended evidence supporting a different construction or exclusion of Dr. Rosenberg’s testimony.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “similar arguments in Patent Owner’s Motion to Exclude Evidence, and Patent Owner’s Reply to Petitioner’s Opposition. Final Dec. 18–19; see PO Mot. Exclude 2–5; PO Reply Opp. 1–3. A request for rehearing is not an opportunity to reiterate arguments that were addressed in our Final Written Decision, and merely express disagreement. As explained in the Final Written Decision, Patent Owner does not direct us to binding authority sufficient to support its argument that in order for expert testimony to be admissible, the expert must be a person of ordinary skill in the art. Final Dec. 19. Specifically, Sundance is binding authority; however, Sundance does not support fully Patent Owner’s arguments. The court in Sundance held, in the context of the admissibility of a testimony by a technically unqualified patent attorney, “it was an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art.” Sundance, 550 F.3d at 1363.” slip op. at 7

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

    “that it is improper to import limitations from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). The ’970 Patent does not disclose, explicitly or implicitly, that the map database performs the functions of deriving street names, and correlating between maps and location and/or positioning information. In contrast to Patent Owner’s arguments, the ’970 Patent discloses “[i]t may be linked to an SMS (simple messaging service) server (140) and supply locations as coordinates, street names derived from map databases or other location data available to mobile telephones (141), pagers (142), etc.” Ex. 1001, col. 5, ll. 45–53. The pronoun “it” refers to the subject of the preceding sentence––location determination system 1. Id. at col. 5, ll. 43– 45. The ’970 Patent also discloses the following: (1) “map server (4) is capable of correlating between maps stored in the database (5) and positioning information,” (id. at col. 4, ll. 17–20 (emphasis added)); and (2) “the at least one mobile platform location system being adapted to receive said mobile platform location information and access said map database for correlating map to said location information, so as to obtain correlated location information,” (id. at col. 8, l. 66–col. 9, l. 3 (emphasis added)). In other words, the map server (4) and at least one mobile platform location system are the subjects of the aforementioned sentences that perform the correlating between maps and positioning and/or location information. Lastly, the ’970 Patent discloses “[s]tep (e) may further comprise the step of correlating the location of each remote platform with a map database and transmitting a map having marked said remote platform location(s) to said subscriber.” Id. at col. 3, ll. 21–24. This sentence is written in passive voice; it does not include a subject.” slip op. at 4

  • ExcludeMotion to exclude, deniedDenied

    “We considered and found unpersuasive Patent Owner’s substantially similar arguments in Patent Owner’s Motion to Exclude Evidence, and Patent Owner’s Reply to Petitioner’s Opposition. Final Dec. 18–19; see PO Mot. Exclude 2–5; PO Reply Opp. 1–3. A request for rehearing is not an opportunity to reiterate arguments that were addressed in our Final Written Decision, and merely express disagreement. As explained in the Final Written Decision, Patent Owner does not direct us to binding authority sufficient to support its argument that in order for expert testimony to be admissible, the expert must be a person of ordinary skill in the art. Final Dec. 19. Specifically, Sundance is binding authority; however, Sundance does not support fully Patent Owner’s arguments. The court in Sundance held, in the context of the admissibility of a testimony by a technically unqualified patent attorney, “it was an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art.” Sundance, 550 F.3d at 1363.” slip op. at 7

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1364 (Fed. Cir. 2008), and Morpho Detection, Inc. v. Smiths Detection, Inc., No. 211cv498, 2012 WL 6004085 at *1–2 (E.D. Va. Nov. 30, 2012) cited by Patent Owner to support its argument that Dr. Rosenberg’s testimony should be excluded as not admissible. Req. Reh’g 8–9 (citing PO Mot. to Exclude 2–5; PO Reply Opp. 1–2; Tr. 29, l. 3–30, l. 14). In the Final Written Decision, we determined Dr. Rosenberg was qualified as an expert based at least on Dr. Rosenberg’s experience, in particular, over four years of experience as founder and CEO of WhereWuz, a technology company focusing on location tracking applications for GPS enabled smartphones. Final Dec. 20. Patent Owner asserts, under the Federal Rules of Evidence and Federal Circuit case law, a declarant who is not qualified as a person of ordinary skill in the art cannot testify as to issues of invalidity, the substance and disclosure of the prior art, or how a person of ordinary skill in the art would understand the prior art. Req. Reh’g 8; see id. at 9–11. We considered and found unpersuasive Patent Owner’s substantially similar arguments in Patent Owner’s Motion to Exclude Evidence, and Patent Owner’s Reply to Petitioner’s Opposition. Final Dec. 18–19; see PO Mot. Exclude 2–5; PO Reply Opp. 1–3. A request for rehearing is not an opportunity to reiterate arguments that were addressed in our Final Written Decision, and merely express disagreement. As explained in the Final Written Decision, Patent Owner does not direct us to binding authority sufficient to support its argument that in order for expert testimony to be admissible, the expert must be a person of ordinary skill in the art. Final Dec. 19. Specifically, Sundance is binding authority; however, Sundance does not support fully Patent Owner’s arguments. The court in Sundance held, in the context of the admissibility of a testimony by a technically unqualified patent attorney, “it was an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art.” Sundance, 550 F.3d at 1363.” slip op. at 6

  Claim construction
  Patents in suitUS 6,771,970
• Brose North America, Inc. / Brose Fahrzeugteile GmbH & Co. KG, Hallstadt v. Uusi, LLCAll claims unpatentable
  PTAB · Jul 27, 2015 · IPR2014-00416 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1, 2, and 5–8 are unpatentable: claims 1 and 2 are anticipated and obvious, claim 5 is obvious, and claims 6–8 are anticipated or obvious.

  RulingsFinal written decision

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

    “We do not subscribe to UUSI’s view. Looking at claim 1 as a whole, we do not adopt a construction requiring separate and distinct algorithms. Claim 1, written in outline format, includes a limitation “d” that requires a controller to sense a collision. Limitation “d” ends with the word “by” followed by a colon. What follows is a list of limitations that are enumerated “i,” “ii,” and “iii” and which are written so as to be further indented than limitations “a,” “b,” “c,” and “d.” A reading of the claim as a whole suggests that limitation “d” is telling us that the limitations following the colon explain how the sensing is accomplished. The “sensing a collision” (step “d”) is accomplished by i) monitoring movement of the window, ii) adjusting a threshold, and iii) identifying a collision by comparing a signal value to the threshold. The final claim limitation (“iv”) tells us that a control signal deactivates the motor in response to “a sensing of a collision.” Even though “a sensing of a collision” is introduced by the pronoun “a” (rather than “the”), we do not view this limitation as requiring a separate and distinct “algorithm.” Rather, we read limitations “i” through “iv” as explaining how limitation “d” is carried out. The claim does not specify explicitly a temporal relation among its various recited activities. However, a temporal sequence is implied by the cause and effect relationships expressed by the individual actions described in the claim. The claim says nothing about how the various described activities are to be implemented in code.” slip op. at 8

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

    “We decline to read the limitation “abrupt” into the claim. The meaning of “has stopped moving” in the context of claim 6 simply describes the present state of window movement, namely that it is no longer moving. “Has stopped moving” tells us that the window at some time in the past was moving and now it is not moving. The term does not speak to how rapidly or slowly (rate of deceleration) the window’s velocity slowed to its stopped condition. Claim 6 also recites a “controller programmed with multiple position limits that define an acceptable travel range.” UUSI would have us construe this limitation as requiring that position limits must be stored that define both a fully-opened position and a fully-closed position. Resp. 35. Its reasoning is that such interpretation would be consistent with the Detailed Description of the ’612 patent. Ex. 2001, 75. In support, UUSI points to column 12, lines 5–11 of the ’612 patent. We have reviewed this portion of the specification. It describes calibration and is taken by UUSI out of context. If the claim drafter had meant to describe “fully open” and “fully closed,” there were a number of different ways a claim drafter could have conveyed the desired meaning. For example, claim 6 could have simply stated “entire travel path” instead of “acceptable travel range” or it could have made reference to fully open and fully closed positions.” slip op. at 20

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

    “We are persuaded that Itoh’s disclosure at 3:28–60 indicates Itoh’s Embodiment 3 may operate to either reverse motor 20 or stop motor 20 under differing circumstances. Motor action is triggered based on comparison of Tp/Tm with α and satisfies the claim limitation requiring a control signal to “deactivate said motor in response to a sensing of a collision.” Itoh identifies a collision based on a comparison that is mathematically identical to comparing the most recent speed measurement (Tp) to a threshold that is adjusted in real time based on the average of the immediately prior speed values. Claim 1 requires that the collision be identified by “comparing a value based on a most recent signal form the sensor with the obstacle detection threshold” and “adjusting the obstacle detection threshold in real time based on immediate past measurements of the signal sensed by the sensor.” Thus, we are satisfied that Itoh discloses what is required by claim 1. Pet. 14–15, 31 (citing Ex. 1001 ¶¶ 113–122; Ex. 1007, 3:44–68, 10:33–11:15). UUSI argues that Itoh discloses using only a single algorithm. Based on its proposed construction of claim 1 requiring two separate and distinct algorithms, UUSI argues Itoh would not alone or in combination render claim 1 unpatentable. Resp. 14. UUSI’s expert, Dr. Mark Ehsani, states that Itoh’s use of two different parameters (α and β) are mutually exclusive, and are simply used as a parameter of interest for a single algorithm. Resp. 14 (citing Ex. 2001, 39). However, based on our construction of claim 1, we do not find UUSI’s argument regarding two algorithms to be persuasive. Claim 1 requires (1) an obstacle detection threshold to be established and adjusted in real time based on measurements by a sensor that senses speed of movement of the window or panel; and (2) that a current measurement of window speed satisfies a predetermined relationship to that obstacle detection threshold. As described supra in section III.A.2, we see no requirement of two separate and distinct algorithms. A reference describing both of these claimed activities, such as Itoh, meets these limitations of claim 1. Itoh identifies a collision based on a threshold, which is Tp/Tm > α. Itoh adjusts the threshold by effectively taking a moving average of n immediately prior speed values to be used for each comparison of a current window speed. This moving average constitutes the claimed “adjusting.”” slip op. at 14

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “However, UUSI does not point to any discussion in the ’612 patent specification that supports the 40 ms time window as being significant. Support for the 40 ms time window is set forth in the original 1992 specification (see footnote 4), which is incorporated by reference. Tr. 12. Given no explanation in the ’612 specification and its priority chain as to the significance of the 40 ms time window, we conclude that it is a matter of design choice and would have been obvious to one of ordinary skill in the art. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”) Therefore, based on the evidence and the record before us, we conclude that Brose has established by a preponderance of the evidence that claim 5 is obvious based on Itoh alone, in combination with either Kinzl or Zuckerman, and in combination with both Kinzl and Zuckerman.” slip op. at 18

  Patent outcomesUS 8,217,612 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,217,612
• Unified Patents Inc. v. Custom Media Technologies LLCRehearing denied
  PTAB · Jul 27, 2015 · IPR2015-00516 · APJ Barbara A Parvis · IPR · Rehearing

  The Board expunged Patent Owner’s unauthorized request for rehearing of the denial of authorization to file a sanctions motion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “C.F.R. § 42.20(b), which states “[a] motion will not be entered without Board authorization.” For instance, Patent Owner’s fifteen-page paper includes new contentions regarding Petitioner’s alleged pre-filing conduct in this and other proceedings. Paper 13. We, therefore, determine that Patent Owner’s paper is an unauthorized paper. Under 37 C.F.R. § 42.7(a), we may expunge any paper directed to the proceeding that is not authorized. Accordingly, we expunge Patent Owner’s request because it is an unauthorized motion.” slip op. at 2

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

    “C.F.R. § 42.20(b), which states “[a] motion will not be entered without Board authorization.” For instance, Patent Owner’s fifteen-page paper includes new contentions regarding Petitioner’s alleged pre-filing conduct in this and other proceedings. Paper 13. We, therefore, determine that Patent Owner’s paper is an unauthorized paper. Under 37 C.F.R. § 42.7(a), we may expunge any paper directed to the proceeding that is not authorized. Accordingly, we expunge Patent Owner’s request because it is an unauthorized motion.” slip op. at 2

  None
  Patents in suitUS 6,269,275
• Brose North America, Inc. / Brose Fahrzeugteile GmbH & Co. KG, Hallstadt v. Uusi, LLCAll claims unpatentable
  PTAB · Jul 20, 2015 · IPR2014-00417 · APJ Jason J Chung · IPR · Final written decision

  Claims 1, 6–9, and 14 are unpatentable under the instituted Itoh and Kinzl anticipation and obviousness grounds.

  RulingsFinal written decision

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

    “Patent Owner argues a limiting prosecution history in which Patent Owner argued that the sensor includes an “operational amplifier that amplifies a voltage across a current-measuring resistor.” PO Resp. 13–14. We do not find any clear disavowal in the prosecution history that would limit the plain and ordinary meaning of the disputed term. Patent Owner argues support for its narrow construction in the Specification, which states “motor current is the primary measured parameter of immediate importance for both hard and soft obstacle detection” (emphasis added) and “motor current” denotes magnitude. Id. at 14 (citing Ex. 1005, 15:66–16:3, 18:35–37). The Specification of the ’802 patent states: “obstacle detection via motor current sensing or current sensing and speed sensing means becomes the remaining reliable backup method of detecting an obstacle” (emphasis added). Ex. 1005, 4:12–14. We are not persuaded to import this narrowing limitation from the specification based on the examples argued.” slip op. at 6

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

    “We agree with Patent Owner that claim 13’s recitation of a “current sensor” is consistent with the claim 7 recitation of a “movement sensor.” We disagree, however, with Patent Owner that claim 13 should be treated as having both a “movement sensor” and a “current sensor” because claim 13 recites “the sensor” (emphasis added), which looks to claim 7’s “movement sensor” for antecedent basis. It would make no sense for claim 13 to specify that “the sensor” (emphasis added) of claim 7 is a “current sensor” unless the sensor of claim 7 is sufficiently broad to include a current sensor and other sensors. Moreover, the Specification of the ’802 patent suggests that “movement sensor” is sufficiently broad to include a current sensor, among a broader range of sensors. For example, the Specification of the ’802 patent recites “obstacle detection via motor current sensing or current sensing and speed sensing means becomes the remaining reliable backup method of detecting an obstacle” (emphasis added). Ex. 1005, 4:12–14. Patent Owner’s claim differentiation argument is not persuasive for similar reasons. Claim 13 is narrower in scope than claim 7. It further limits the sensor set forth in claim 7 to be a current sensor, thus differentiating it from claim 7. We do not read the prosecution history as limiting the “movement sensor” so as to exclude a “current sensor.” Id. Accordingly, we construe “a movement sensor for monitoring movement of the object” as “any sensor that directly or indirectly monitors movement of the object.” Our construction embraces a speed sensor and a current sensor that indirectly monitors movement.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “The Federal Circuit held that “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for,” are non-structural generic placeholders that may invoke pre-AIA 35 U.S.C. § 112, sixth paragraph. Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008); Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006); Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696, 704 (Fed. Cir. 1998); Mas- Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1214–15 (Fed. Cir. 1998). Although this list is not exhaustive, and other generic placeholders may invoke pre-AIA 35 U.S.C. § 112, sixth paragraph, “decision making logic for” is not on the list of generic placeholders. As such, a rebuttable presumption applies that the term is not within the purview of 35 U.S.C. § 112, sixth paragraph. See Phillips, 415 F.3d at 1310. Furthermore, pre-AIA 35 U.S.C. § 112, sixth paragraph does not apply if persons of ordinary skill in the art reading the specification understand the term to be the name for the structure that performs the function, even when the term covers a broad class of structures or identifies the structures by their function. Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1372–73 (Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002); Watts v. XL Sys. Inc., 232 F.3d 877, 880–81 (Fed. Cir. 2000); Personalized Media, 161 F.3d at 704; Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many devices take their names from the functions they perform.”). The term is not required to denote a specific structure or a precise physical structure to avoid the application of pre-AIA 35 U.S.C. § 112, sixth paragraph. See Watts, 232 F.3d at 880. In this case, the Specification of the ’802 patent states “[t]he circuitry of FIGS. 2A–2D includes a number of operational amplifiers which require higher voltage than the five volt VCC logic circuitry power signal” (emphasis added). Ex. 1005, 6:30–32. As a result, one of ordinary skill in the art reading the Specification of the ’802 would understand the term “logic” to be the name of a type of circuitry (e.g., structure) that performs the function.” slip op. at 12

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

    “We are not persuaded by Patent Owner’s argument that Itoh fails to disclose, teach, or suggest “a sensor for measuring a parameter of a motor that varies in response to a resistance to motion.” At the outset, we construed the claim 1 limitation “sensor for measuring a parameter of a motor . . . that varies in response to a resistance to motion” as “any sensor that measures any motor parameter that varies as a result of resistance to motion” rather than as “a sensor that measures a magnitude of motor current.” See supra Part III.A. The cited portions of Itoh relied upon by Petitioner disclose circuit 30 detects a ripple current corresponding to the rotational frequency of motor 20, and outputs a motor pulse signal to CPU 34 and counter 36 of controller 32, which discloses “a sensor for measuring a parameter of a motor” as recited in claim 1. Pet. 15, 30; Ex. 1007, 8:33–40. Moreover, the cited portions of Itoh relied upon by Petitioner disclose CPU 34 detects if an obstacle is stuck between the window frame and window and determines whether to descend or interrupt the motion of the window, which discloses “varies in response to a resistance to motion” as recited in claim 1. Pet. 15, 30; Ex. 1007, 8:49–9:62; Figs. 6–7. Based on our claim construction discussed supra in part III.A, Itoh’s disclosure discussed supra, and the record before us, we conclude that Petitioner has established by a preponderance of evidence that claim 1 is anticipated by Itoh.” slip op. at 15

  Patent outcomesUS 7,579,802 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,579,802
• Apple Inc. v. Contentguard Holdings, LLCInstitution denied
  PTAB · Jul 10, 2015 · IPR2015-00446 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 1–18 were obvious over ABYSS and Denning, with or without Hartrick.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “C. Procedural Defects As a threshold matter, the Petition has several significant procedural defects. For instance, a petition for inter partes review must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review “must identify . . . [h]ow the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Rule 42.104(b)(5) requires a petition to “identify[] specific portions of the evidence that support the challenge.” Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus 12 on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). We agree with the Patent Owner that the Petition fails to satisfy at least the rule requirements. See Prelim. Resp. 4–10. The Petition contains vague, nested string citations to broad swaths of the references, the Sherman Declaration, and internal cross-references to whole sections of the Petition. See, e.g., Pet. 48–49 (discussing the preamble of claim 1, and citing inter alia, “[Pet.] § IV.A.1, A.3; Ex. 1016 at 38–40, 43–45; Ex. 1013 at ¶ C18–22 and “Ex. 1016 at 38–40, 42, 49, 50; [Pet.] § IV.A.3–4; Ex. 1013 at ¶ C106– 26”).” slip op. at 12

  • BurdenDenied

    “defects. For instance, a petition for inter partes review must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review “must identify . . . [h]ow the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Rule 42.104(b)(5) requires a petition to “identify[] specific portions of the evidence that support the challenge.” Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus 12 on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). We agree with the Patent Owner that the Petition fails to satisfy at least the rule requirements. See Prelim. Resp. 4–10. The Petition contains vague, nested string citations to broad swaths of the references, the Sherman Declaration, and internal cross-references to whole sections of the Petition. See, e.g., Pet. 48–49 (discussing the preamble of claim 1, and citing inter alia, “[Pet.] § IV.A.1, A.3; Ex. 1016 at 38–40, 43–45; Ex. 1013 at ¶ C18–22 and “Ex. 1016 at 38–40, 42, 49, 50; [Pet.] § IV.A.3–4; Ex. 1013 at ¶ C106– 26”).” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “1. Insufficient Information for Graham Analysis A patent claim is unpatentable as obvious under 35 U.S.C. § 103(a) if “the differences between” the claimed subject matter and the prior art “are such that the subject matter, as a whole, would have been obvious at the time 17 the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).3 The legal conclusion of obviousness is resolved on the basis of underlying factual determinations, including (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). These underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). As Patent Owner points out, the Petition fails to identify sufficiently the differences between any claim of the ’956 patent and the asserted prior art references, ABYSS, Denning, and Hartrick. See Prelim. Resp. 6–7, 42–44; Pet. 22–60. Rather than address these differences, the Petition creates a hypothetical ABYSS-Denning system—based on how a person of ordinary skill in the art allegedly “would” or “could” do––in an “Operation of the Implemented System” analysis divorced from the language of the ’956 patent claims. See Pet. 39–42 (emphasis omitted). The Petition then argues, 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), revised 35 U.S.C. § 103, effective March 16, 2013. Because the ’956 patent was filed before March 16, 2013, references and citations to § 103 in this Decision are to the pre-AIA version. 18 in conclusory fashion, that this hypothetical system meets each of the limitations of the claims. See id. at 48–60. This analysis—which compares the challenged claims to a hypothetical integrated system that allegedly implements elements of both ABYSS and Denning as well as the knowledge of one of ordinary skill in the art—obscures any comparison of the individual prior art references to the claim limitations. It does not explain with any particularity which claim limitations are absent from ABYSS or Denning. See Prelim. Resp. 6–7, 42–44. Therefore, the Petition fails to provide sufficient information regarding its proffered ground of unpatentability, and fails to present a proper Graham analysis as required to show that the challenged claims are unpatentable. Accordingly, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that the challenged claims would have been obvious over ABYSS and Denning. See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB May 28, 2015) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . .” slip op. at 17

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

    “2. Lack of Rationale to Combine and Improper Hindsight “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The reason for this is that “[w]hile the Supreme Court made clear that a mechanical application of the teaching-suggestion-motivation test, requiring an explicit teaching in the prior art, is inappropriate, ‘[w]e must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.’” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008)); see also KSR , 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against slipping into use of hindsight’” (citation omitted)). Thus, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to 20 achieve the result of the claims in suit.’” Grain Processing Corp. v. Am. Maize–Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). As discussed above, Petitioner reads the claims onto a proposed hypothetical ABYSS-Denning system. See Pet. 38–60. Although Petitioner frames the hypothetical ABYSS-Denning system as created by four main modifications, each of these modifications includes what appear to be additional modifications about what the hypothetical system “could” do, which neither reference discloses, and which the Petition does not support with sufficient reasoning or citation. See Pet. 36–39 (modifications); see, e.g., Pet. 40–41 (reasoning that a “vendor could restrict distribution to processors that had a digital certificate issued by a particular authority,” and “[t]he vendor also could specify as a condition” further changes) (citing Pet. “§ IV.D.1; Ex. 1013 at ¶ C83–89, C113”). Considering the proposed changes together, which are devoid of a clear reference to claim limitations, the Petition lacks adequate reasoning, with rational underpinning, to show sufficiently that a person of ordinary skill would have combined the teachings of ABYSS and Denning to reach the hypothetical ABYSS- Denning system and render the claims obvious. In other words, the Petition fails to explain sufficiently why a person of ordinary skill would simultaneously make all of the particular proposed changes and implementation choices. Moreover, the mere fact that individual changes might have been obvious does not make doing all of the changes at once 21 obvious. See In re Irani, 427 F.2d 806, 809 (CCPA 1970) (“Obviousness, however, must not be judged by hindsight, and a ‘little modification’ can be a most unobvious one.”). The extent of the proposed modifications and the thin reasoning proffered for each modification suggests that the Petition improperly uses Patent Owner’s claims as a guide in constructing a system loosely based on ABYSS and Denning. See Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1355 (Fed. Cir. 2013) (“Where, as here, the necessary reasoning is absent, we cannot simply assume that ‘an ordinary artisan would be awakened to modify prior art in such a way as to lead to an obviousness rejection.’ It is in such circumstances, moreover, that it is especially important to guard against the dangers of hindsight bias.” (citation omitted)); see also W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983) (“The result is that the claims were used as a frame, and individual, naked parts of separate prior art references were employed as a mosaic to recreate a facsimile of the claimed invention. At no point did the district court, nor does Garlock, explain why that mosaic would have been obvious to one skilled in the art . . . .”). The Petition’s analysis, infected with impermissible hindsight, cannot form the basis of a proper obviousness finding. See KSR , 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to 22 read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against slipping into use of hindsight’” (citation omitted)).” slip op. at 20

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,370,956
• Apple Inc. v. Contentguard Holdings, LLCInstitution denied
  PTAB · Jul 10, 2015 · IPR2015-00448 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–18 would have been obvious over Rosen and Hartrick.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “1. Insufficient Information for Graham Analysis A patent claim is unpatentable as obvious under 35 U.S.C. § 103(a) if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Resolving the legal conclusion of obviousness requires resolving the following underlying factual determinations: (1) “the 16 scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). In other words, these underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). As Patent Owner contends, the Petition fails to identify sufficiently the differences between any claim of the ’956 patent and the asserted prior art references, Rosen and Hartrick. See Prelim. Resp. 6–7, 42; Pet. 22–60. Rather than addressing these differences, the Petition creates a hypothetical Rosen-Hartrick system—based on how a person of ordinary skill in the art allegedly “would” or “could” combine the two references to create an integrated system—in an analysis largely divorced from specific claim limitations. See Pet. 38–44. The Petition then argues, in conclusory fashion, that this hypothetical system “would” meet each of the limitations of the claims. See id. at 50–60. This analysis—which compares the challenged claims to a hypothetical integrated system that allegedly implements aspects of Rosen and Hartrick and the knowledge of one of ordinary skill in the art––obscures a meaningful comparison of the claim limitations to the individual prior art references. As Patent Owner contends, the analysis fails to explain with requisite particularity which claim limitations are absent from Rosen or Hartrick. See Prelim. Resp. 6–7, 42. Therefore, the Petition 17 fails to provide sufficient information regarding its proffered ground of unpatentability. Accordingly, for the reasons discussed above, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that the challenged claims would have been obvious over Rosen and Hartrick. See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB May 28, 2015) (Paper 11) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . . . risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.”).” slip op. at 16

  • BurdenInstitution denied

    “procedural defects. A petition for inter partes review must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review “must identify . . . [h]ow the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Rule 42.104(b)(5) adds that the Petition 11 must “identify[] specific portions of the evidence that support the challenge.” Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). We agree with the Patent Owner that the Petition fails to satisfy at least these rule requirements. See Prelim. Resp. 4–10. The Petition comprises vague, nested string citations to broad swaths of the references, the Sherman Declaration, and internal cross-references to whole sections of the Petition. See, e.g., Pet. 50–51 (discussing the preamble of claim 1, and citing inter alia, Pet. §§ IV.A.1–3, A.5, B3; Ex. 1013 ¶¶ E20, E53–E65, E117, E118, E142, E194). Without counting internal cross-citations within the cited sections of the Petition and Sherman Declaration, this citation to the Petition spans 11 pages of the Petition and 18 paragraphs of the Sherman Declaration.” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Resolving the legal conclusion of obviousness requires resolving the following underlying factual determinations: (1) “the 16 scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). In other words, these underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). As Patent Owner contends, the Petition fails to identify sufficiently the differences between any claim of the ’956 patent and the asserted prior art references, Rosen and Hartrick. See Prelim. Resp. 6–7, 42; Pet. 22–60. Rather than addressing these differences, the Petition creates a hypothetical Rosen-Hartrick system—based on how a person of ordinary skill in the art allegedly “would” or “could” combine the two references to create an integrated system—in an analysis largely divorced from specific claim limitations. See Pet. 38–44. The Petition then argues, in conclusory fashion, that this hypothetical system “would” meet each of the limitations of the claims. See id. at 50–60. This analysis—which compares the challenged claims to a hypothetical integrated system that allegedly implements aspects of Rosen and Hartrick and the knowledge of one of ordinary skill in the art––obscures a meaningful comparison of the claim limitations to the individual prior art references. As Patent Owner contends, the analysis fails to explain with requisite particularity which claim limitations are absent from Rosen or Hartrick. See Prelim. Resp. 6–7, 42. Therefore, the Petition 17 fails to provide sufficient information regarding its proffered ground of unpatentability. Accordingly, for the reasons discussed above, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that the challenged claims would have been obvious over Rosen and Hartrick. See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB May 28, 2015) (Paper 11) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . . . risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.”). slip op. at 16

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

    “on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The reason for this is that [w]hile the Supreme Court made clear that a mechanical application of the teaching-suggestion-motivation test, 18 requiring an explicit teaching in the prior art, is inappropriate, “[w]e must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008)); see also KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against slipping into use of hindsight’” (citation omitted)). Thus, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. Am.–Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). As discussed above, Petitioner reads the claims onto a hypothetical Rosen-Hartrick implementation. See Pet. 38–60. Petitioner appears to suggest making four changes to Rosen’s system to achieve this hypothetical implementation. See id. at 38–44 (generally discussing “First,” “Second,” “Third,” and “Finally” modifications). The Petition characterizes the third modification as being “an inconsequential variation” of the disclosed 19 process. Id. at 43. Specifically, the Petition states that “a person of skill would have adjusted Rosen’s cryptographic protocols to accommodate any particular implementation that was desired.” However, the Petition does not set forth a sufficient reason why a person of skill would have “desired” (or implemented) the modification proposed—i.e., configuring Rosen’s “purchase protocol such that the MTA initiated the Establish Session protocol by sending the CTA its digital certificate.” Id. (citing Ex. 1013 ¶¶ E122, E123 (largely restating, word for word, the statements of the brief)). Moreover, although Petitioner frames the hypothetical Rosen-Hartrick scheme as created by four primary modifications, these primary modifications include additional modifications unsupported by sufficient rationale. For example, in the first modification Petitioner proposes, i.e., storing security and royalty markup statements of Hartrick in the “Usage” field of Rosen (Pet. 39), Petitioner asserts that a person of ordinary skill also “would have considered it an obvious implementation choice to have the security tags [of Hartrick] . . . grant affirmative rights—e.g., a ‘Display’ tag (instead of ‘Do Not Copy’), or a ‘Print’ tag and ‘Display’ tag (instead of ‘Do Not Distribute’)” (Pet. 40). Further, according to the Petition, a person of ordinary skill would have recognized that Hartrick could be applied beyond the context of softcopy books, and “[the person would simply] modify the tags accordingly to reflect the actions associated with other types of content.” Id. at 41. Beyond explaining that each of these many changes to Hartrick (made in the process of modifying Rosen) would be a routine 20 change, Petitioner does not provide an adequate rationale as to why a person of ordinary skill would actually make the myriad group of changes.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,370,956

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.