- Apple Inc. v. Masa LLCAll claims unpatentablePTAB · Sep 11, 2017 · IPR2016-00748 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 6–14 are unpatentable: Acharya anticipates them, and Sweeney combined with Acharya renders them obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“1. “Selector Option Switch” Petitioner contends a person of ordinary skill in the art would construe the claim term “selector option switch” as excluding touch screen input devices, because the Specification of the ’834 patent describes a touch screen selector as a substitute for the selector option switch. Pet. 13–14. Patent Owner does not propose further construction of this term. PO Resp. 16. We agree with Petitioner that the broadest reasonable construction of the “selector option switch,” when read in light of the Specification of the ’834 patent, excludes touch screen input devices, because the Specification describes the touch screen selector as a substitute, not as an alternative, for the selector option switch. Ex. 1001, 4:7–9 (“Alternatively, the selector option switch 56 and confirming option switch 62 may be substituted with touch screen selector and confirming options respectively.”). We construe “selector option switch” to exclude touch screen input devices.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“2. “Coupled” Patent Owner contends a person of ordinary skill in the art would construe the claim term “coupled” as “connected, directly or indirectly.” PO Resp. 18. Petitioner agrees. Reply 2. Accordingly, we construe the claim term “coupled” to encompass at least a direct connection or an indirect connection.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“until the called party is available does not constitute storing an incoming call or text is not commensurate with the scope of the claim. Claim 6 does not limit the first electronic signal to an incoming call or text message. Rather, claim 6 recites a “memory unit further configured to store said first electronic signal.” Column 2 of Acharya discloses that “the portable control device processes the invitation . . . [by] holding the invitation for a specified period of time” (Ex. 1007, 2:48–59), which describes a “memory unit further configured to store said first electronic signal” as recited in claim 6.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“Patent Owner contends Petitioner or its expert did not provide any reason why a person of ordinary skill would have sought to combine particular available elements to reach the claimed invention. PO Resp. 52– 54. According to Patent Owner, Acharya does not suggest a need for transmitting date and time information, or for transmitting, inter alia, a current local weather signal or a current stock ticker signal. PO Resp. 54– 55. Petitioner contends that Acharya discusses the feasibility and motivation to personalize a device to receive different kinds of signals and informational content. Reply 23 (citing Pet. 25–27). Specifically, Petitioner contends that Acharya teaches providing personalized information such as weather conditions or updates on stock prices. Pet. 26–27 (citing Ex. 1007, 15:51–57, 17:39–58, 18:65–19:38). Petitioner contends that a person of ordinary skill in the art would include information such as weather conditions or updates on stock prices as taught by Acharya in the electronic signals received and displayed by the portable device to achieve the predictable benefit of allowing users to receive personalized information as taught by Acharya. Pet. 27. Petitioner’s showing is persuasive. Petitioner provides several reasons, as outlined above, for modifying Acharya. For example, providing different types of information obviously would have appealed to different users, and would have allowed users to personalize their device. See Pet. 26–27. Based on the foregoing discussion and the record, Petitioner has shown by a preponderance of the evidence that the teachings of Acharya render claims 9 and 13 obvious. For independent claims 10 and 14, Petitioner contends persuasively that adding a strap with a buckle fastener to the portable wrist watch device of Acharya would have been obvious because wrist watches commonly have a strap secured to a wearer’s wrist by a buckle in order to secure the device to the wrist. See Pet. 28–29 (citing Ex. 1007, 4:7–13). Based on the foregoing discussion and the record, Petitioner has shown by a preponderance of the evidence that the teachings of Acharya render claims 10 and 14 obvious.” slip op. at 29
Patent outcomesUS 8,519,834 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,519,834 - PTAB · Sep 8, 2017 · IPR2015-01869 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–8, 10–12, 14–18, 20–23, 25, and 27–29 unpatentable over Shuen and RFC1234, and claim 19 unpatentable over Bellovin.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successDecided for petitioner
“mapping for the network address translation” under the Board’s construction of that phrase, i.e., “a property associated with the mapping in which the mapping expires after it has not been used in the translation of a packet for a period of time associated with the mapping,” the Petition cites the following language from Shuen:” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Disclaimer not foundDecided for petitioner
“from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000) (citations omitted). “To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.” Id. (citations omitted). Whether and to what extent material has been incorporated by reference into a host document is a question of law. Id.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for petitioner
“Id. at 3 (emphasis omitted). Notably, Patent Owner did not raise this argument (i.e., that Shuen’s “time to live” does not satisfy the recited “time out . . .” under the Board’s construction) in its Patent Owner Response. Patent Owner asserts, however, it “noted this deficiency of Petitioner’s proofs in the January 18, 2017 hearing” and “[t]his deficiency of Shuen was first raised in Patent Owner’s Preliminary Response.” Req. Reh’g. 4. However, our rules do not allow Patent Owner to incorporate arguments by reference from its Preliminary Response (see 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference form one document into another document”)), and our Scheduling Order provides that any arguments and evidence not contained in the Patent Owner Response will be “deemed waived” (Paper 9, 3). Petitioner asserted at the oral hearing that the argument was new and, as such, Petitioner did not have a reasonable ability to respond to the argument. Tr. 43:8–14. We determine Patent Owner has waived its argument that Shuen does not disclose the “has not been used” portion of our construction of the phrase “time out of the mapping for the network address translation.”” slip op. at 3
Claim construction§ 103 obviousnessPatents in suitUS 8,544,079 - Avx Corporation v. Samsung Electro-Mechanics Co., Ltd.Rehearing deniedPTAB · Aug 16, 2017 · PGR2017-00010 · APJ Sally C Medley · PGR · Rehearing
The Board denied AVX’s rehearing request, leaving institution on claims 1–4, 6–11, and 13–19 unchanged because AVX showed no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Strike new argumentNew argument disregardedDecided for patent owner
“with “dielectric grains.” Req. Reh’g 3–4. This is a new argument. We could not have overlooked or misapprehended an argument that was never presented by Petitioner in the first place. A request for rehearing is not an opportunity to submit new arguments. See 37 C.F.R. § 42.71(d).1 Petitioner’s rehearing request in this regard is telling, because it never directs us to places in the Petition that we overlooked, but rather takes various disjunctive statements from Patent Owner’s Preliminary Response and Patent Owner’s evidence to contend that we overlooked Patent Owner’s alleged admission of this issue. Req. Reh’g 3–4. The request for rehearing is misplaced because the burden to show the claims are unpatentable is on Petitioner, not Patent Owner. 37 C.F.R. § 42.20(c). Petitioner must put forth its case in its Petition. 1 Petitioner argues that it requested leave to respond to Patent Owner’s arguments made in Patent Owner’s Preliminary Response in a sur-reply, but that we denied that request. Req. Reh’g 3; Paper 9. Petitioner’s implicit due process argument is misplaced. It is incumbent upon Petitioner to make its case in its Petition. Petitioner cannot rely on a sur-reply to fix what should have been in the Petition.” slip op. at 3
- BurdenDecided for patent owner
“with “dielectric grains.” Req. Reh’g 3–4. This is a new argument. We could not have overlooked or misapprehended an argument that was never presented by Petitioner in the first place. A request for rehearing is not an opportunity to submit new arguments. See 37 C.F.R. § 42.71(d).1 Petitioner’s rehearing request in this regard is telling, because it never directs us to places in the Petition that we overlooked, but rather takes various disjunctive statements from Patent Owner’s Preliminary Response and Patent Owner’s evidence to contend that we overlooked Patent Owner’s alleged admission of this issue. Req. Reh’g 3–4. The request for rehearing is misplaced because the burden to show the claims are unpatentable is on Petitioner, not Patent Owner. 37 C.F.R. § 42.20(c). Petitioner must put forth its case in its Petition.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“capacitors be proven to be prior art. Req. Reh’g 7–9. Rather, Petitioner argues, “it was not necessary to prove that the Group 39 capacitors themselves were prior art, only that they faithfully represent products made, offered for sale, and/or sold before the priority date.” Id. at 7. Petitioner’s argument is misplaced because we considered the Group 39 capacitors and representations made by Petitioner with respect to the Group 39 capacitors. Indeed, it was Petitioner that asserted in its Petition that “the Group 39 capacitors that were in on sale, sold, and in public use before the effective filing date of the ’381 patent.” Pet. 65. Thus, we did not err in addressing Petitioner’s own argument when we explained that Petitioner had failed to show that the Group 39 capacitors, purchased four years after the effective filing date of the ’381 patent, was prior art. Dec. 28–30.” slip op. at 4
§ 102 anticipationPatents in suitUS 9,326,381 - Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jul 6, 2017 · IPR2017-00607 · APJ Trenton A Ward · IPR · Institution
The Board denied institution because Skechers did not show a reasonable likelihood of proving the challenged claim obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Skechers has failed to establish that RCD 0015 is an appropriate primary reference, Skechers has not demonstrated that there is a reasonable likelihood that it would prevail in showing that the challenged claim is obvious over RCD 0015 and the ’256 Application or over RCD 0015 and the ’058 Application. III. CONCLUSION For the foregoing reasons, we determine that the information presented in the Petition fails to establish a reasonable likelihood that Skechers would prevail in showing that the claim in the ’853 patent is obvious over RCD 0015 and the ’256 Application, or over RCD 0015 and the ’058 Application.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“We are not persuaded by Skechers’ arguments because these arguments conflate the two separate steps typical of an obviousness analysis in the context of a design patent. We first must find an appropriate primary reference, “a something in existence,” before moving on to the second step of modifying that primary reference “to create a design that has the same overall visual appearance as the claimed design.” High Point Design, 730 F.3d at 1311. In assessing whether there is an appropriate primary reference, we determine whether the proposed reference “creates basically the same visual impression” as “created by the patented design as a whole.” Id. at 1312 (internal quotation and citations omitted). We find Skechers fails to establish sufficiently that its proffered primary reference, RCD 0015, creates basically the same visual impression as that of the ’853 patent because of several differences in appearance.” slip op. at 14
§ 103 obviousness - David’S Bridal, Inc. v. Jenny Yoo Collection, Inc.Rehearing grantedPTAB · Jun 15, 2017 · PGR2016-00041 · APJ Jennifer S Bisk · PGR · Rehearing
Rehearing was granted to consider David’s Bridal’s acquiescence argument but otherwise denied; institution of review of the patent’s sole claim remained denied.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“DISCUSSION The applicable standard for granting a request for rehearing is abuse of discretion. The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Petitioner argues that the Board: (1) “misapprehended and overlooked” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“SUMMARY Petitioner, David’s Bridal, Inc., requests rehearing of the Board’s decision (Paper 11) (“Institution Decision”), entered February 22, 2017, denying institution of inter partes review of the sole claim of U.S. Patent D744,723 (Ex. 1002) (“the ’723 patent”). Paper 12 (“Reh’g Req.”). For the reasons that follow, Petitioner’s request is granted to the extent that we address Petitioner’s “acquiescence argument,” but denied in all other respects.” slip op. at 2
None - Sony Mobile Communications Inc. v. SSH Communications Security OyjAll claims unpatentablePTAB · Apr 20, 2017 · IPR2015-01869 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–32 are unpatentable: claims 1–3, 5–10, 12–16, 18–20, 22–27, and 29–32 as obvious over Bellovin; claims 1, 3–8, 10–12, 14–18, 20–23, 25, and 27–29 over Shuen and RFC 1234.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard in an inter partes review proceeding). Under the broadest reasonable interpretation standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).” slip op. at 5
- ExcludeMotion to exclude, deniedDenied
“III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Ex. 1040 cited by Petitioner in its Petitioner’s Reply as hearsay and as irrelevant. Mot. to Exclude 1. Petitioner relies on Ex. 1040 to support its obviousness case by stating “[i]n a co-pending action in the United Kingdom, the Patents Court found similar claims of related EP(UK) 2 254 311 invalid.” Pet. Reply 1 n.1. This issue is moot because this Final Written Decision does not cite to or rely upon Ex. 1040 or the Petitioner’s statement quoted above regarding Ex. 1040. For that reason, we do not address the matter on the merits and dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 48
- Skill levelOther
“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 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). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“specification and prosecution history. Cuozzo, 136 S. Ct. at 2144–46. There are, however, two distinct exceptions. The first is the circumstance in which a patentee sets forth a definition by acting as his own lexicographer. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.Cir.2012) (citation omitted). The second is the circumstance in which a patentee disavows the full scope of a claim term either in the specification or during prosecution. Id.; see also PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734, 745 (Fed. Cir. 2016) (citing disavowal as an exception to the broadest reasonable interpretation standard). Here, Patent Owner relies on several embodiments in the Specification and the knowledge of its Declarant, but does not cite to sufficient evidence: 1) of the patentee becoming a lexicographer defining a NAT as bidirectional between two “realms,” or 2) of a clear disavowal of a NAT which translates addresses in a single direction or operates in a single “realm.”” slip op. at 9
Patent outcomesUS 8,544,079 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,544,079 - Cme Group, Inc. v. Volatility Partners, LLCInstitution deniedPTAB · Mar 28, 2017 · CBM2016-00024 · APJ Trenton A Ward · CBM · Institution
The Board denied institution of CBM review of claims 1–50 because CME Group failed to establish standing to file the petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied
“In accordance with 37 C.F.R. § 42.302(a), the Petitioner bears the burden of establishing “petitioner has been sued for infringement of the patent or has been charged with infringement under that patent.” Based on the record before us, and for purposes of this Decision, we determine the information presented in the Petition and supporting evidence does not establish that Petitioner had standing to file the Petition.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityDenied
“Here, we determine that Petitioner fails to sufficiently establish an “adverse legal interest” by failing to identify an underlying cause of action that Patent Owner could have brought or threatened to bring. First, Petitioner has not sufficiently established that the License Agreement covers the ’RE435 patent. The License Agreement licenses “the inventions claimed in the [’184 patent]” (Ex. 1004, 2). None of the claims in the original ’184 patent was confirmed during the prosecution of the reissue application, as only claim 1 from the ’184 patent was maintained in the reissue application, and this claim was amended during the prosecution of the reissue application. See Ex. 1003, 26–40, 176–182, 189–203. Therefore, Petitioner fails to establish sufficiently how any of “the inventions claimed in the ’184 patent” are currently claimed in the ’RE435 patent.” slip op. at 8
Discretionary denial - PTAB · Mar 15, 2017 · IPR2016-00999 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 1–28 because Petitioner did not show a reasonable likelihood that steered planar-array beams are necessarily asymmetrical.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d). Section 42.71(d) further provides that the request must identify where each matter was previously addressed.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Lastly, Petitioner contends the Decision overlooked or “misapprehended the facts showing that all steered planar array antennas inherently result in radiation patterns having at least one asymmetrical beam.” Req. 13–15. According to Petitioner, Figure 4 of U.S. Patent No. 5,929,823 (Exhibit 2010) and Figure 3 of U.S. Patent No. 6,198,434 (Exhibit 2011), relied upon in Patent Owner’s Preliminary Response as describing remedies for distortion effects due to asymmetrical beams (Prelim. Resp. 47–48), do not eliminate the inherent asymmetry of the main beam. Req. 14. However, our Decision relies on Paragraphs 151 to 156 of Mr. Cosgrove’s testimony (Ex. 2001), which cite additional sections of Exhibits 2010 and 2011, to determine that the steered beams of a planar array are not necessarily asymmetrical. Dec. 21–23 (citing Ex. 2001 ¶¶ 151–156). For example, Mr. Cosgrove addresses the asymmetric bulge shown in Figure 4 of Exhibit 2010 by citing to a description of Figure 6, which describes a lobe symmetry of main lobe 610 that presents a more slender beam mid-section than that of main lobe 410 of Figure 4. Ex. 2001 ¶ 152 (citing Ex. 2010, 7:65–8:6). Mr. Cosgrove also addresses the asymmetric bulge shown in Figure 3 of Exhibit 2011 by citing to a description of Figure 6, which describes main lobe 610 as substantially symmetric, and more suited than lobe 310 of Figure 3 to provide communications within a defined subsection of an area to be served. Ex. 2001 ¶ 156 (citing Ex. 2011, 10:13–16). Accordingly, the Decision did not misapprehend or overlook any arguments or evidence presented by Petitioner. We did not abuse our discretion in determining that the Petitioner did not adequately establish a reasonable likelihood that a steered beam of a planar array is necessarily asymmetrical.” slip op. at 5
NonePatents in suitUS 8,311,582 - Apple Inc. v. Fastvdo LLCRehearing deniedPTAB · Mar 15, 2017 · IPR2016-01203 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied FastVDO’s rehearing request, leaving institution of review of claims 7–11 and 22–26 in place because no overlooked or misapprehended matter was shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“argue that Petitioner provided a “sole theory” for the claimed “error protection means” based on indefiniteness. Rather, Patent Owner argued generally that “Petitioner does not describe the structure, materials, or acts corresponding to the terms that Petitioner contends are in means-plus-function format.” Prelim. Resp. 11. Because Patent Owner did not present its “sole theory” argument in the Preliminary Response, the Board could not have misapprehended or overlooked this argument. Even considering this argument, we are not persuaded. In our Decision, we disagreed with Petitioner’s indefiniteness arguments, but nonetheless found that the Petition identifies sufficient structure to support constructions of the means-plus-function limitations. Dec. 10–16. Rather than misapprehend or overlook Patent Owner’s arguments, we found that the Specification of the ’482 patent “discloses enough of an algorithm to allow a person of ordinary skill to discern the necessary structure for performing the claimed function of the ‘error protecting means.’” Dec. 12.” slip op. at 4
NonePatents in suitUS 5,850,482 - Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.No claims unpatentablePTAB · Mar 6, 2017 · IPR2015-01801 · APJ Peter P Chen · IPR · Final written decision
Claims 30, 31, 33, and 40–46 were not shown unpatentable because Rabinovich required prior client access before replication, and Carter did not cure that limitation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner’s declarant, Dr. Ratner, testifies that a person of ordinary skill in the art at the time of the alleged invention “would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 14. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 21–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 20. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. at 21. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“whether to replicate data object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating/migrating object xs only if the ratio of cnt(s,xs) over aff(xs) is greater than m, and the ratio can be greater than m only if cnt(s,xs) is greater than zero. PO Resp. 19; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication or migration step. This means that Rabinovich will not replicate or migrate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independent of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“30, for use with a computer game (claim 45) and with an interactive computer game accessed by at least two users (claim 46). Ex. 1001, 30:47– 54. In connection with its obviousness contentions, Petitioner makes no separate arguments why Rabinovich teaches or suggests shifting redundantly stored data based upon data transmission parameters between the servers independent of an access of the client. Pet. 45–47; Reply 17–18. Because claims 45 and 46 depend from claim 30, we find that Petitioner has failed to demonstrate by a preponderance of the evidence that Rabinovich teaches or suggests the limitations in these two dependent claims for the same reasons discussed above with respect to claim 30.” slip op. at 21
Patent outcomesUS RE40,521 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · Graham
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.