• Commscope Technologies, LLC v. Communications Components Antenna Inc.Institution denied
  PTAB · Nov 3, 2016 · IPR2016-00999 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–28 unpatentable, principally because Yea did not establish the claimed asymmetrical coverage areas.

  RulingsInstitution decision

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

    “partes review of claims 1–28 of U.S. Patent No. 8,311,582 B2 (Ex. 1001, “the ’582 patent”). Paper 1 (“Pet.”). Patent Owner, Communications Components Antenna Inc., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1–28 of the ’582 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “Petitioner’s proposed construction of this limitation is supported by the specification of the ’582 patent. The ’582 patent discloses replacing a single sector coverage area with sub-sector coverage areas, at least one of which is an asymmetrical coverage area. Ex. 1001, 3:16–18. The ’582 patent discloses that the use of asymmetrical coverage areas permits the total coverage area to closely approximate the symmetrical sector coverage area being replaced, without creating excessively large sub-sector handover zones or introducing sever degradation in network performance. Id. at 3:18–24. The ’582 patent discloses creating the asymmetrical coverage areas by replacing an existing antenna with an antenna that has substantially the same coverage area, but divides the coverage area into a plurality of separate asymmetrical beams or sub-sectors. Id. at 4:32–38. As disclosed by the ’582 patent, the replacement antenna produces a plurality of separate beams, each defining a new sub-sector with only a small overlapping area between them and which together provide substantially identical coverage to the sector supported by the original antenna, to upgrade the single sector to a plurality of sub-sectors without significantly affecting neighboring sites. Id. at 4:51–57. The replacement antenna introduces asymmetry into the generated beam pattern. Id. at 4:58–60. The introduction of asymmetrical beams by the replacement antenna allows close approximation of the coverage area of the conventional sector antenna being replaced. Id. at 5:61–64. For purposes of this Decision, we adopt Petitioner’s proposed construction of “a plurality of sub-sector coverage areas extending therefrom, at least one of which is asymmetrical,” as a plurality of replacement sub-sector beams, at least one of which has an asymmetrical shape, where asymmetry includes deliberate or inherent asymmetry as the broadest reasonable construction consistent with the specification.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “49 (Fed. Cir. 2005). There, the district court invalidated claims of the patent in suit on summary judgment based on the measured dimensions of a prior art patent figure. Id. at 1148. The Federal Circuit reversed, warning “that arguments based on drawings not explicitly made to scale in issued patents are unavailing.” Id. at 1149. Petitioner here does not identify any portion of Yea disclosing that Figures 4 and 8 are drawn accurately enough to determine an asymmetrical nature of the radiation patterns. Petitioner also fails to cite to any disclosure in Yea that identifies or describes an asymmetrical nature of the radiation patterns. Furthermore, Petitioner also has not explained why the shapes shown in the linear scale drawings of Figure 4 would show similar shapes when converted to a logarithmic scale. Additionally, Petitioner does not explain why the carrier to interference ratio shown in Figure 8 can be used to accurately measure antenna radiation beam patterns. We find Petitioner does not sufficiently establish that the plots shown in Figures 4 and 8 of Yea can be used to determine whether the antenna radiation beam pattern is asymmetrical. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that Petitioner would prevail in showing that Yea anticipates independent claims 1, 13, and 20. b. Dependent Claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27 Petitioner argues that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27. Pet. 47–53. In so arguing, Petitioner relies on Yea as disclosing the claimed asymmetrical coverage area. Id. Because we are not persuaded that Yea discloses this limitation, we are not persuaded that Petitioner establishes a reasonable likelihood of prevailing in showing that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27.” slip op. at 14

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

    “as well as testimony of both Mr. Collins and Mr. Cosgrove. Under Rule 37 C.F.R. § 42.108, any genuine issues of material fact created by the testimonial evidence should be viewed in light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review. Even reviewing the testimony of Mr. Collins in the light most favorable to Petitioner, we determine Petitioner has established only that asymmetrical beams may be used in a planar array antenna, but not that a person of ordinary skill in the art would have understood steered beams of a planar array antenna are necessarily asymmetrical. Mr. Collins cites to Litva (Ex. 1009) and Wästberg (Ex. 1018) in stating that prior art steered beams of a planar array antenna can be asymmetrical beams. Ex. 1024 ¶ 179. We credit Patent Owner’s arguments and the testimony of Mr. Cosgrove to determine Petitioner does not sufficiently establish the likelihood that a person of ordinary skill in the art would have understood that steered beams of a planar array antenna are necessarily asymmetrical. Further, Petitioner fails to set forth a sufficient rationale for why a person of ordinary skill in the art would use the asymmetrical beams of the prior art with the disclosure of Yea. Pet. 39–40. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that using asymmetrical beams in Yea would have been obvious. We therefore conclude that the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the subject matter of claims 1, 2, 6, 7, 9, 11–15, 18–22, 24, and 27 would have been obvious over Yea, Metawave Website, Litva, and Wästberg.” slip op. at 22

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,311,582
• Sandisk Corp. v. Netlist, Inc.All claims unpatentable
  PTAB · Sep 28, 2016 · IPR2015-01021 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 16, 17, 24, 30, and 31 are unpatentable as obvious over Takeda, JEDEC, and Connolly.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “1. “Rank” In the Decision to Institute, we construed the term “rank” as “a block or area that is created using some or all of the memory chips on a memory module.” Dec. to Inst. 8–9. In their papers, neither party challenged our constructions of these claim terms. Thus, for the term “rank,” we see no reason to alter the construction of this claim term as set forth in the Decision to Institute as recited above, and we incorporate our previous analysis for purposes of this decision.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “2. All Other Claim Terms We determine that no explicit construction is necessary for any other terms in the challenged claims. B.” slip op. at 8

  • Skill levelSkill level board ownOther

    “would understand basic memory and data communication concepts, with a bachelor’s degree in any of electrical engineering, computer engineering, computer science, or related field. Course work for one of ordinary skill in the art would have included a course on computer organization, principles of digital design, or computer architecture. One of ordinary skill in the art would also have around one year of experience related to computer memory systems. For example, such experience may include experience in DRAM memory technology and related industry standards such as JEDEC standards for DRAM memories and memory modules. Ex. 1002 ¶ 53. Patent Owner’s Declarant, Carl Sechen, Ph.D. (“Dr. Sechen”), testifies that one of ordinary skill in the art at the time of the ’536 Patent would have had an undergraduate degree in electrical engineering or computer engineering, at least two years of professional experience in the design of memory systems, familiarity with the latest JEDEC standard specifications for memory devices and modules, and familiarity with the latest DRAM (dynamic random access memory) memory devices widely available in the market. Ex. 2001 ¶ 14. Dr. Sechen further testifies that a person of ordinary skill in the art would have design proficiency in memory modules comprising DDR memory technology, such as memory modules with JEDEC standard DDR SDRAM (synchronous DRAM) devices. Id. ¶ 15. Based on our review of the ’536 Patent and the types of problems and solutions described in the ’536 Patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’536 Patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that Dr. Jagannathan is qualified sufficiently to testify about memory systems and memory modules. E.” slip op. at 12

  Patent outcomesUS 8,081,536 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,081,536
• Sandisk Corp. v. Netlist, Inc.Some claims unpatentable
  PTAB · Sep 28, 2016 · IPR2015-01020 · APJ Peter P Chen · IPR · Final written decision

  Claims 17, 22, 24, 26, and 33 are unpatentable as obvious over Takeda, JEDEC, and Connolly; claims 15, 16, 31, and 32 were not shown unpatentable over Takeda and JEDEC.

  RulingsFinal written decision

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

    “We are unpersuaded by Patent Owner’s position. First, the claim language does not recite any physical or structural connection, rather, only “electrically coupling.” Pet. Reply 3, 8–9. In addition, the specification of the ’150 patent does not define explicitly the term “selectively electrically coupling.” Therefore, as in IPR2014-00882 and IPR2014-01011, we refer to its ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Translogic Tech., 504 F.3d at 1257. A technical dictionary, the IEEE Dictionary,4 defines “electrical coupling” as “[e]lectrical charges in conductors of a disturbed circuit formed by electrical induction.” Ex. 3001. The IEEE Dictionary explains that “[s]ince the ratio of a conductor’s electrostatic charge to the potential difference between conductors (required to maintain that charge) is the general definition of capacitance, electrical coupling is also called capacitive coupling.” Id. The IEEE Dictionary defines” slip op. at 9

  • Skill levelSkill level board ownOther

    “Based on our review of the ’150 patent and the types of problems and solutions described in the ’150 patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’150 patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D. Declarant Testimony” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that, although Dr. Jagannathan may be less experienced than Dr. Sechen in the area of memory module design, he is nonetheless qualified sufficiently to testify about memory systems and memory modules. E. Asserted Obviousness of Claims 15, 16, 31, and 32 in view of Takeda” slip op. at 14

  • ExcludeMotion to exclude, deniedDenied

    “We have reviewed the parties’ contentions on this issue, and exercise our discretion to determine that Petitioner’s Reply and the Jagannathan Supplemental Declaration will not be excluded. We find that, although they may be “inartfully” drafted, the first Jagannathan declaration and Petition sufficiently outlined Petitioner’s position on the function of the chip select signal, namely, that the chip select signal was not itself the logic signal enabling operation of bit-switches. We further find that Petitioner’s Reply and the Supplemental Jagannathan Declaration did not present an entirely new rationale of unpatentability based on Takeda, JEDEC, and Connolly. Cf. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (affirming Board’s exclusion of reply brief and declaration that changed unpatentability theory to “an entirely new rationale”). Moreover, there is no dispute that Patent Owner was aware of Petitioner’s position by no later than the Jagannathan deposition, which preceded Patent Owner’s Response by ten days. Patent Owner could have addressed Petitioner’s chip select signal contention, procedurally or substantively, in its Response, but chose to raise the issue only after Petitioner filed its Reply and Supplemental Jagannathan Declaration. Accordingly, Patent Owner had notice of Petitioner’s position and an opportunity to refute that position in its Response.” slip op. at 24

  Patent outcomesUS 7,881,150 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,881,150
• Sure-Fire Electrical Corporation v. Yongjiang Yin And Shenzhen El Lighting Co. Ltd.Rehearing denied
  PTAB · Aug 30, 2016 · IPR2014-01448 · APJ Debra K Stephens · IPR · Rehearing

  The Board denied rehearing of its final written decision, leaving claims 1 and 7 unpatentable over He and Korodi under § 103.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision should be modified, and “[t]he 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.” 37 C.F.R. § 42.71(d).” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, concluding Petitioner had shown by a preponderance of the evidence that the challenged claims are unpatentable. Specifically, we determined Petitioner had established by a preponderance of the evidence claims 1 and 7 are unpatentable under 35 U.S.C. § 103(a) over He and Korodi (Final Dec. 11–25). In light of our determination that Petitioner had established by a preponderance of the evidence that claims 1 and 7 of the ’279 Patent are unpatentable under 35 U.S.C. § 103(a) as obvious over He and Korodi, we took no position on whether the same claims are also obvious over the combination of the teachings and suggestions of Gustafsson and He (id. at 25).” slip op. at 3

  § 103 obviousness
  Patents in suitUS 7,671,279
• Mastercard International Inc. v. Leon StamblerAll claims unpatentable
  PTAB · Jul 6, 2016 · CBM2015-00044 · APJ Peter P Chen · CBM · Final written decision

  Claims 51 and 53 are unpatentable as anticipated by Davies; claims 51, 53, 55, and 56 are unpatentable as obvious over Davies and Meyer; claim 55 over Davies and Nechvatal; and claim 56 over Davies, …

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “F. Level of Ordinary Skill in the Art Petitioner’s proposal for the level of ordinary skill in the art is “at least a bachelors degree in computer programming and two years’ experience as a programmer or developer in the field of computer science, with a working understanding of cryptographic operations for transforming original input into a coded output using a known algorithm.” Pet. 14–15. Patent Owner has proposed similarly, that one of ordinary skill in the art would possess “(1) undergraduate education in mathematics, physics, computer science, electrical engineering or similar technical subject; and (2) either postgraduate education in networking, cryptography, or other discipline encompassing information theory, or equivalent experience with applications involving communication of financial, military, medical or similarly sensitive data over secure and non-secure networks.” Prelim. Resp. 30–31. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 16

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

    “1. “variable authentication number (VAN)” In the Decision to Institute, we construed the term “variable authentication number” or “VAN” as “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.” Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 8–9 (PTAB Oct. 31, 2014) (Paper 10). Patent Owner “does not challenge this construction.” PO Resp. 16–17. Patent Owner asserts additional construction of the term is necessary for CBM standing issues, but does not elaborate further. PO Resp. 1. Patent Owner also argues we incorrectly applied the broadest reasonable interpretation to the term in the Decision to Institute. PO Resp. 9. The Decision to Institute noted that our review of the claims of the expired ’302 patent is similar to that of a district court’s review, In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005), but inadvertently mentioned the broadest reasonable interpretation standard in construing this term. Dec. to Inst. 7–8. We reaffirm our agreement with Patent Owner that the Phillips framework is applied to the expired ’302 patent. Our construction of “VAN” is the same under either claim construction standard. We reject Patent Owner’s undeveloped argument regarding standing, and maintain the construction of VAN from the Decision to Institute, as the ordinary and customary meaning of the term: “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.”” slip op. at 10

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

    “2. Sequence of method steps: receiving, generating In the Decision to Institute, we agreed with Patent Owner and construed the sequence of method steps in independent claim 51 to mean that at least a portion of the receiving step must precede the generating step. Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 11–14 (PTAB Oct. 31, 2014) (Paper 10). We maintain that construction as the ordinary and customary meaning of the sequence of the receiving and generating method steps.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “intended use of an invention is generally not treated as limiting the scope of the claim. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). However, “a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). “The effect preamble language should be given can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). When the limitations in the body of the claim rely upon or derive essential structure from the preamble elements, e.g., the preamble serves as an antecedent basis for limitations in the claim, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). In this case, the preamble of independent claim 51 recites “a credential being previously issued,” and the limitations of the claim include “determining whether the at least a portion of the received funds transfer information is authentic by using the VAN and the credential information.” Ex. 1001, 33:18–19, 33:29–31. Thus, the preamble’s recitation of “a credential” is an antecedent basis for the recited “the credential information” in the “determining” step, and we determine that the preamble limits the scope of the challenged independent claim 51 and dependent claims 53, 55, and 56.” slip op. at 11

  Patent outcomesUS 5,793,302 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,793,302
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Jun 11, 2016 · IPR2016-00301 · APJ Matthew R Clements · IPR · Institution

  The Board denied institution of inter partes review of claims 1-5, 7-10, 12-22, and 25-31 under § 325(d), finding substantially the same art or arguments had been presented before.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “In determining whether to exercise our discretion to deny institution under § 325(d), we have reviewed the timeline of the Petition’s filings. Petitioner filed the instant Petition on December 9, 2015, approximately two months after the Board issued the decisions denying institution in the ’973 IPR. The reliance on Radia in the instant Petition appears, therefore, to be an attempt to bolster the unsuccessful challenge previously presented regarding Hendel’s alleged disclosure of the limitations of claim 1. See Prelim. Resp. 16–18 (arguing Petitioner used prior Institution Decisions as a roadmap); see also id. at 14–16 (arguing Petitioner fails to explain why Radia could not have been presented in an earlier petition). Under § 325(d), our determination here rests on whether the same or substantially the same prior art was presented previously. Finding that Hendel was presented previously in the ’973 IPR, and that the instant Petition relies on bolstering Hendel guided by our Decision in the ’973 IPR, we exercise our discretion under § 325(d) and deny institution of inter partes review. III. CONCLUSION For the foregoing reasons, we conclude that the instant Petition raises the same or substantially the same prior art or arguments as those previously presented to the Office. In light of the circumstances of the present case, we exercise our discretion not to institute inter partes review of the ’577 patent.” slip op. at 8

  Discretionary denial
  Patents in suitUS 6,377,577
• Toyota Motor Corporation v. Signal IP, Inc.Institution denied
  PTAB · Jun 9, 2016 · IPR2016-00293 · APJ Jason J Chung · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 2, and 6 obvious over either asserted combination.

  RulingsInstitution decision

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

    “inter partes review of claims 1, 2, and 6 of U.S. Patent No. 5,714,927 (Ex. 1001, “the ’927 patent”). Paper 2 (“Pet.”). In response, Patent Owner, Signal IP, Inc., filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we deny institution of inter partes review of the ’927 patent.” slip op. at 2

  • Prior constructionPrior construction adoptedDecided for petitioner

    “(1) a related inter partes review (Pet. 8), and (2) a related matter before the U.S. District Court for the Central District of California (id. at 6–8). Regarding the related inter partes review, the Board previously construed the term “alert command” as raw alert data that is used to generate an alert signal, and the term “alert signal” as a signal that provides a visual or audio alert to a driver. Volkswagen Grp. of Am., Inc. v. Signal IP, Inc., Case IPR2015-00968, slip op. at 6–7 (PTAB Aug. 25, 2015), Paper 6. In order to reach our decision below, we need only construe the terms “alert command” and “alert signal.” We, therefore, decline to specifically construe any other claim terms at this time. We agree with Petitioner’s construction of the terms “alert command” and “alert signal,” consistent with our prior construction in IPR2015-00968. (See id. for our prior construction of the terms.) Thus, we construe the term “alert command” as raw alert data that is used to generate an alert signal, and the term “alert signal” as a signal that provides a visual or audio alert to a driver. Id. As explained below, even using Petitioner’s construction of these terms, Petitioner’s challenge fails to establish a reasonable likelihood that Petitioner would prevail in establishing unpatentability.” slip op. at 6

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

    “Petitioner asserts that it would have been obvious “to modify Pakett’s system such that it determines whether the ‘alert signal,’ as opposed to the ‘alert command,’ was active for a ‘threshold time’ as the claim requires.” Pet. 47. Petitioner asserts that this could be accomplished by activating a warning (alert signal) as soon as Pakett recognizes that an obstacle is present, and then applying the processing method previously applied to the persistence period instead to determine whether to sustain the warning. Id. at 47–48 (citing Ex. 1010 ¶¶ 101–04). Petitioner asserts that “one of ordinary skill in the art would consider Pakett’s delay of a warning until after the end of the persistence period to be nothing more than an optional redundancy,” and, thus, that this modification would have been obvious as “nothing more than a routine, obvious design choice.” Id. at 48 (citing Ex. 1010 ¶ 104). We disagree with Petitioner that the cited portions of Pakett’s teaching to delay the warning until after the persistence period is “nothing more than an optional redundancy,” at least because the cited portions of Packett do not indicate, either explicitly or implicitly, the 17 function of waiting for the persistence period before sending a warning to the driver indicators as optional or redundant. See id. Pakett clearly states that during the persistence period, “no warnings are sent to the driver indicators.” Ex. 1002, 6:50–51 (emphasis added). Pakett explains that waiting through the persistence period before sending warnings to the driver indicators prevents the system from incorrectly identifying stationary obstacles that were identified by the square wave generator 29 as valid obstacles in the blind spot. Id. at 7:56–63. Pakett thus explains that waiting through the persistence period before sending warnings to the driver indicators filters out false positives of objects in the blind spot of the vehicle. Id.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,714,927
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCInstitution denied
  PTAB · Jun 9, 2016 · IPR2016-00453 · APJ Michael W Kim · IPR · Institution

  The Board denied institution on claims 11–20, exercising discretion under § 314(a) because this was an unjustified serial petition and separately rejecting it under § 325(d).

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied

    “patent, using substantially the same prior art, and filed so long apart that Petitioner received the benefit of having studied Patent Owner’s Preliminary Response in an earlier petition. That is especially so if Petitioner, at the time of filing of the earlier petition was aware of or should have been aware of the prior art references newly cited and applied in the later petition. To that end, Petitioner does not assert that it was unaware of Nazem prior to filing the instant Petition or any earlier petition. The potential inequity based on a petitioner’s filing of serial and similar attacks against the same claims of the same patent, while having the opportunity to adjust litigation positions along the way based on either patent owner’s contentions responding to prior challenges or the Board’s decision on prior challenges, is real and cannot be ignored. This is not to say, however, that multiple petitions against the same claims of the same patent are never permitted. Rather, each case depends on its own facts. We look to and consider, in each case, as we do here, what rationale a petitioner offers for filing multiple petitions and for the time elapsed between those filings. Generally, however, we are unpersuaded that the possibility of an adverse claim construction alone, especially where the possibility of the adverse claim construction was expressly a result of assertions made by a patent owner in the previous proceeding, is sufficient to justify serial petitions.” slip op. at 9

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Emphasis added. As admitted by Petitioner, all of the grounds in the instant Petition and the petition in IPR2015-01706 rely primarily on MyLibrary. Furthermore, the only reference cited additionally in the instant proceeding is Nazem, and Nazem mentions, on multiple occasions, variations of “MyYahoo” or “my.yahoo.com.” Ex. 1047, Figs. 1, 3, 4, 5A, 5B; 2:63-3:2; Appendices A and B. Moreover, Petitioner asserts the following: For example, one such prior art personalized portal, referenced by MyLibrary as an inspiration, was the MyYahoo system, Ex. 1005 at 1, a system described in U.S. Patent No. 5,983,227 to Nazem et al. (issued Nov. 9, 1999) (Ex. 1047). Ex. 1047 at Face, Fig. 5a (“MyYahoo!”). Pet. 21. A person having ordinary skill in the art would have been motivated to add content, such as disclosed in Nazem, to the personalized web pages of MyLibrary because MyYahoo was an inspiration for the system of MyLibrary, thereby suggesting the additional MyYahoo functionality would work well with MyLibrary. Pet. 22. Given these articulated connections between the substance of MyLibrary and Nazem, we have no trouble determining that presenting MyLibrary and Nazem in this proceeding is “the same or substantially the same prior art or arguments” as was presented previously to the Office in IPR2015-01706, with MyLibrary alone.” slip op. at 13

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

    “III. CONCLUSION For the foregoing reasons, we exercise discretion not to institute inter partes review of any of claims 11–20 of the ’177 patent, and also reject the Petition under 35 U.S.C. § 325(d). IV. ORDER It is ORDERED that no trial or inter partes review is instituted for any claim of the ’177 patent on any ground in this proceeding.” slip op. at 14

  Discretionary denial
  Patents in suitUS 7,516,177
• Corelogic, Inc. v. Boundary Solutions, Inc.Institution denied
  PTAB · May 24, 2016 · CBM2016-00016 · APJ Peter P Chen · CBM · Institution

  The Board denied institution for claims 1–19 because the petition did not establish that the ’957 patent qualifies as a covered business method patent.

  RulingsInstitution decision

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

    “method patent,” as defined by the AIA. CoreLogic bears the burden of persuasion that the ’957 patent is a covered business method patent. See 37 C.F.R. § 42.304(a). For the reasons discussed below, we determine CoreLogic has made an insufficient showing that the ’957 patent is a “covered business method patent.” The AIA defines “covered business method patent” as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” AIA § 18(d)(1); see also 37 C.F.R. § 42.301(a). The legislative history of the AIA “explains that the definition of covered business method patent was drafted to encompass patents ‘claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.’” Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed. Reg. 48,374, 48,735 (Aug. 14, 2012) (“CBM Final Rules”) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)); see also Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1338 (Fed. Cir. 2016). To determine whether a patent is eligible for a covered business method patent review, the focus is on the claims. AIA § 18(d)(1) (“a patent that claims . . .” (emphasis added)); 37 C.F.R. § 42.301(a) (same); CBM Final Rules, 77 Fed. Reg. at 48,736 (comment 4) (“[T]he definition set forth in § 42.301(a) . . . is based on what the patent claims.”). A patent need have only one claim directed to a covered business method to be eligible for review. CBM Final Rules, 77 Fed. Reg. at 48,736 (comment 8) (“A patent having one or more claims directed to a covered business method is a covered business method patent for purposes of the review, even if the patent includes additional claims.”).” slip op. at 5

  • Adverse judgmentAdverse judgmentOther

    “patent because “[a]t least claim 1 of the ’957 patent claims data processing or other operations that are financial in nature or, at a minimum, incidental or complementary to a financial activity.” Pet. 7. CoreLogic also relies on dependent claims 13 and 16–18, and argues that those claims “explicitly limit the claims to financial applications.” Id. at 9; see also id. at 11 (alleging that claims 16–18 cover “subject matter incidental or complementary to a financial activity”). As noted above, however, BSI disclaimed claims 13 and 16–18 at the same time it filed its Preliminary Response. See Ex. 2003. “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996). We agree with other panels that have considered this issue under similar facts and concluded that the disclaimed claims should not be consulted when determining whether the patent is a covered business method patent under AIA §18(d)(1).1 We are mindful that other Board decisions have evaluated compliance with CBM standing requirements at the time of filing, but those cases are distinguishable2 and not binding here. Any suggestion in those cases that a decision on institution should address the disclaimed claims because they existed at the time the petition was filed is inconsistent with Federal Circuit precedent instructing us to treat the claims as if they never existed, and our Rules forbidding institution “based on disclaimed claims.” Guinn, 96 F.3d at 1422; 37 CFR § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); see also Google Inc. v. SimpleAir, Inc., CBM2015- 00019, slip op. at 5–6 (PTAB Aug. 19, 2015) (Paper 15) (Order Denying Request for Rehearing) (rejecting petitioner’s argument that disclaimed claim should be considered because it existed at the time the petition was 1 See, e.g., AT&T Mobility LLC v. Intellectual Ventures II LLC, CBM2015- 00185, slip op. at 9–10 (PTAB May 4, 2016) (Paper 10); Great West Casualty Co. v. Intellectual Ventures II LLC, CBM2015-00171, slip op. at 7–9 (PTAB Feb. 9, 2016) (Paper 10); Google Inc. v. SimpleAir, Inc., CBM2015-00019, slip op. at 14–15 (PTAB May 19, 2014) (Paper 11). 2 In Travelers Lloyds of Texas Ins. Co. v. Integrated Claims Sys., LLC, CBM2014-00187, slip op. at 7, 8 n.1 (PTAB Mar. 30, 2016) (Paper 31), the Patent Owner attempted to cancel a claim after institution, not disclaim a claim prior to institution. In J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC, CBM2014-00157, slip op. at 9 (PTAB Jan. 12, 2016) (Paper 40), the Patent Owner’s disclaimer occurred after institution, not prior to institution. filed). We therefore do not consider disclaimed claims 13 and 16–18 in our analysis.” slip op. at 6

  • BurdenDecided for patent owner

    “We agree with BSI. CoreLogic does not explain adequately how any of the claims of the ’957 patent recite a method or apparatus “for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” AIA § 18(d)(1); see also 37 C.F.R. § 42.301(a). CoreLogic focuses on claim 1, but fails to identify any limitation in claim 1 or any other claim that relates to a financial activity in any way. Claim 1 claims a “method for retrieving geographic parcel boundary polygon maps and associated parcel attribute data,” which has applicability to retrieving and displaying map data, not financial products and services. CoreLogic suggests that the “transmitting” step of claim 1 “can be used” by various entities in a business context, but does not argue, let alone establish, that the claim terms on their face are financial in nature. See Pet. 1. CoreLogic asserts that the Specification of the ’957 patent describes several methods of generating revenue using the claimed methods, and that numerous businesses may pay for access to map data generated using the claimed method. Pet. 10–16. CoreLogic’s reliance on these portions of the Specification is unavailing. First, CoreLogic fails to address how these disclosures relate directly to, or meaningfully informs our analysis of, the language of the claims. For example, CoreLogic does not direct us to any claims or claim limitations that require users to pay for access to the map database or use of the claimed methods. Second, CoreLogic fails to address portions of the Specification that indicate the claimed invention can be used “for free,” i.e., without any generation of revenue or financial aspect at all. See Ex. 1001, 2:58 (“These end users may access for free . . . .”), 14:11–15 (“Another public-private alliance option is to offer the free use of the NPDP server to such data sponsors in addition to or in lieu of their revenue share.”), 14:41–45 (“[C]ommodity service subscriber end users (customers) can have access to the NPDP at no charge.”), 16:8–12 (“It is also contemplated that other independent public and private data sponsors could be provided with links as part of the NPDP display which end users could access on a free or fee basis.”). Given that the Specification contemplates use of the claimed inventions for free, it is not apparent that the “purpose of the claimed method is to provide data in exchange for money,” as CoreLogic suggests. Pet. 10. At most, CoreLogic has established that the claimed methods could be used to generate revenue in a number of ways, even though the language of the claims does not require any exchange of money or other financially related step. Under these circumstances, we conclude that the “financial prong” has not been met. Numerous Board decisions have taken a similar approach in situations where the Specification refers to potential financial applications for the claimed inventions but the claim language does not expressly indicate a financial context.3 In Qualtrics, LLC v. OpinionLab,” slip op. at 10

  None
  Patents in suitUS 7,092,957
• Corelogic, Inc. v. Boundary Solutions, Inc.Institution denied
  PTAB · May 24, 2016 · CBM2016-00017 · APJ Richard H Marschall · CBM · Institution

  The Board denied institution of CBM review because CoreLogic did not show that the patent claims a method or apparatus for a financial product or service.

  RulingsInstitution decision

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

    “We agree with BSI. CoreLogic does not explain adequately how any of the claims of the ’946 patent recite a method or apparatus “for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” AIA § 18(d)(1). CoreLogic focuses on claim 1, but fails to identify any limitation in claim 1 or any other claim that relates to a financial activity in any way. Claim 1 claims a “method for retrieving and displaying geographic parcel boundary polygon maps,” which has applicability to retrieving and displaying map data, not financial products and services. CoreLogic suggests that the method of claim 1 “can be used” by various entities in a business context, but does not argue, let alone establish, that the claim terms on their face are financial in nature. See Pet. 11. CoreLogic asserts that the specification of the ’946 patent describes several methods of generating revenue using the claimed methods, and that numerous businesses may pay for access to map data generated using the claimed method. Pet. 10–16. CoreLogic’s reliance on these portions of the specification is unavailing. First, CoreLogic fails to address how these disclosures relate directly to, or meaningfully informs our analysis of, the language of the claims. For example, CoreLogic does not direct us to any claims or claim limitations that require users to pay for access to the map database or use of the claimed methods. Second, CoreLogic fails to address portions of the specification that indicate the claimed invention can be used “for free,” i.e., without any generation of revenue or financial aspect at all. See Ex. 1001, 2:59 (“These end users may access for free . . . .”), 13:54–56 (“Another public-private alliance option is to offer the free use of the NPDP server to such data sponsors in addition to or in lieu of their revenue share.”), 14:20–21 (“[C]ommodity service subscriber end users (customers) can have access to the NPDP at no charge.”), 15:51–55 (“It is also contemplated that other independent public and private data sponsors could be provided with links as part of the NPDP display which end users could access on a free or fee basis.”). Given that the specification contemplates use of the claimed inventions for free, it is not apparent that the “purpose of the claimed method is to provide data in exchange for money,” as CoreLogic suggests. Pet. 11. At most, CoreLogic has established that the claimed methods could be used to generate revenue in a number of ways, even though the language of the claims does not require any exchange of money or other financially related step. Under these circumstances, we conclude that the “financial prong” has not been met. Numerous Board decisions have taken a similar approach in situations where the specification refers to potential financial applications for the claimed inventions but the claim language does not expressly indicate a financial context.3 In Qualtrics, LLC v. OpinionLab, Inc., CBM2015-00164 (Feb. 3, 2016) (Paper 8), for example, the claims were “devoid of any terms that reasonably could be argued as having any particular relation to a financial product or service,” but the specification” slip op. at 10

  Discretionary denial
  Patents in suitUS 7,499,946

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.