- PTAB · Nov 6, 2018 · IPR2017-01328 · APJ Kamran Jivani · IPR · Final written decision
The Board canceled claims 14 and 15 and denied entry of substitute claims 16 and 17 because their feedback-signal limitation introduced unsupported new matter.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“must determine whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. A motion to amend “may not enlarge the scope of the claims of the patent or introduce new matter.” 35 U.S.C. § 316(d)(3). Further, our rules provide that “[a] motion to amend may be denied where . . . [t]he amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.” 37 C.F.R. § 41.121(a)(2)(ii). In the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), the lead plurality opinion explains that “the patent owner must satisfy the Board that the statutory criteria in § 316(d)(1)(a)–(b) and § 316(d)(3) are met and that any reasonable procedural obligations imposed by the Director are satisfied.” Id. at 1305– 06; see also id. at 1341 (“There is no disagreement that the patent owner bears a burden of production in accordance [with] 35 U.S.C. § 316(d).” (Reyna, J., writing for a majority)). We, therefore, must determine whether Patent Owner has made a showing sufficient to establish that its Motion to Amend complies with Section 316(d)(3).” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
“V. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Petitioner’s Exhibits 1015 and 1017, which are declarations of Mr. Bohannon, “on the basis that Mr. Bohannon is not qualified to testify as an expert with respect to the technology in this [proceeding].” Paper 29, 2. We dismiss as moot Patent Owner’s motion because we did not rely on Exhibits 1015 and 1017 in our determination above that Patent Owner did not show adequate support for proposed substitute claims 16 and 17. See supra Section III.B.” slip op. at 15
NonePatents in suitUS 6,845,019 - PTAB · Feb 14, 2018 · IPR2016-01600 · APJ Lynne E Pettigrew · IPR · Final written decision
The Board granted cancellation of claims 1, 2, 5, and 9 but denied substitute claims 13–16 because the application lacked written description support for the added limitation.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“Under the correct test for compliance with the written description requirement, Patent Owner’s arguments and evidence do not establish that the ’642 application provides written description support for a variable current limit threshold increasing “during at least a portion of the first state.” The only embodiment disclosed in the ’642 application shows a current limit threshold that increases during the entire on time of the switch (i.e., the entire first state), and the ’642 application never describes a current limit threshold that increases during only a portion of the on time of the switch. Patent Owner’s Motion to Amend and Dr. Kelley’s declaration testimony in support thereof rely exclusively on portions of the ’642 application describing a threshold that increases throughout the on time of the switch. See Mot. 10–13; Ex. 2010 ¶¶ 62–65. Patent Owner and Dr. Kelley do not specifically address the “at least a portion of” claim language and thus fail to explain adequately how the disclosure of a threshold that increases throughout the on time of the switch would reasonably convey to a person having ordinary skill in the art that the inventor had possession of a current limit threshold that increases for “at least a portion of” the first state. Therefore, Patent Owner’s arguments and submitted testimony are unsupported and conclusory with regard to written description support for the “at least a portion” language, and indeed are inconsistent with the disclosure in the ’642 application, which provides support only for a current limit threshold that increases during the entire first state.” slip op. at 22
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Owner asserts that a person of ordinary skill in the art at the time of the invention of the ’605 patent “would have had a bachelor’s degree in electrical engineering, physics, or a related discipline, and at least two to three years of relevant experience in the field of power electronics or similar circuitry.” Mot. 3 (citing Ex. 2010 ¶ 22). Patent Owner further asserts that “[a]dditional education, such as an advanced degree in electrical engineering or a related field, might substitute for some of the experience, and substantial experience might substitute for some of the educational background.” Id. (citing Ex. 2010 ¶ 22). Petitioner’s declarant, Dr. Douglas Holberg, has a similar view, opining that a person of ordinary skill in the art at the time of the invention would have had “a B.S. in Electrical Engineering or a related field with at least two years of experience in designing power electronics,” or “an M.S. in Electrical Engineering or a related field.” Ex. 1003 ¶ 38. The two formulations do not differ in any material way. Based on our review of the record, we agree with the parties as to the level of ordinary skill in the art. For purposes of analyzing the Motion to Amend, we specifically adopt Patent Owner’s definition of a person of ordinary skill in the art. See Mot. 3; Ex. 2010 ¶ 22.” slip op. at 14
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We disagree for two reasons. First, under Aqua Products, as explained further in the Office’s post-Aqua Products guidance document, a patent owner must still meet the statutory and regulatory requirements for a motion to amend, including setting forth written description support for amended claims, which must not introduce new matter. Aqua Prods., 872 F.3d at 1305–06; Guidance 2. Second, Dr. Kelley’s conclusion that the ’642 application provides written description support for “the variable current limit threshold increases during at least a portion of the first state of each control signal cycle” is conclusory and inconsistent with the intrinsic evidence (i.e., the ’642 application itself), and we therefore give his testimony on this point little weight.” slip op. at 23
- BurdenDecided for petitioner
“We disagree for two reasons. First, under Aqua Products, as explained further in the Office’s post-Aqua Products guidance document, a patent owner must still meet the statutory and regulatory requirements for a motion to amend, including setting forth written description support for amended claims, which must not introduce new matter. Aqua Prods., 872 F.3d at 1305–06; Guidance 2. Second, Dr. Kelley’s conclusion that the ’642 application provides written description support for “the variable current limit threshold increases during at least a portion of the first state of each control signal cycle” is conclusory and inconsistent with the intrinsic evidence (i.e., the ’642 application itself), and we therefore give his testimony on this point little weight.” slip op. at 23
NonePatents in suitUS 7,834,605 - PTAB · Nov 26, 2014 · IPR2014-01438 · APJ Robert J Weinschenk · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding as to all parties before deciding whether to institute review.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Preliminary Response has not been filed, and a decision whether to institute a trial has not been rendered. Patent Owner represents that there is no currently pending district court litigation or ITC proceeding regarding the ’990 patent, and no decision has been made regarding future litigation. Mot. 1–2. Patent Owner also represents that there is no other related proceeding regarding the ’990 patent in the Office. Id. at 2. Based on the facts of this case, we determine it is appropriate to enter judgment terminating this proceeding with respect to all parties. We further find sufficient cause to treat the settlement agreement as business confidential information. Therefore, we grant the joint motion to terminate and the joint request to treat the settlement agreement as business confidential information. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that the joint motion to terminate is granted, and this proceeding is terminated as to all parties; and” slip op. at 2
NonePatents in suitUS 6,844,990 - PTAB · Oct 31, 2014 · IPR2014-00323 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding under their settlement without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Paper 10. Patent Owner has not yet filed a Patent Owner Response and the parties have not taken any discovery. Paper 20, 1. In a telephone conference on October 23, 2014, the parties confirmed that there are no other written or verbal agreements between them concerning the patent that is the subject of this proceeding. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated; FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 2
NonePatents in suitUS 8,220,959 - PTAB · Aug 4, 2014 · IPR2014-00457 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, before institution and without a final written decision.
RulingsOther- Adverse judgmentAdverse judgmentGranted
“A decision whether to institute a trial has not been entered.. Thus, this matter was in the preliminary stages at the time the parties moved to terminate this proceeding. The parties have represented that they have settled the litigation between them. Although U.S. Patent 7,737,842 B2 is one of four patents asserted in another lawsuit that is active at this time, no other petitions for inter partes review have been identified. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated;” slip op. at 2
NonePatents in suitUS 7,737,843 - PTAB · Aug 4, 2014 · CBM2014-00089 · APJ Brian J Mcnamara · CBM · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, before institution and without a final written decision.
RulingsOther- Adverse judgmentAdverse judgmentGranted
“The parties have moved to terminate this proceeding in view of their settlement of their underlying litigation. A decision by the Board to institute a trial has not yet been entered. Thus, this matter was in the preliminary stages at the time the parties moved to terminate. U.S. Patent 8,346,894 B2, which is the subject of this proceeding, is also the subject of CBM2014-00097, CBM2014- 00101, IPR2014-00413 and IPR2014-00414. Those proceedings will not be affected by the termination of this covered business method patent review. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated;” slip op. at 2
NonePatents in suitUS 8,346,894 - PTAB · Apr 4, 2014 · IPR2014-00015 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion to terminate the proceeding and their request to keep the settlement agreement confidential.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“A decision by the Board to institute a trial has not yet been reached. Therefore, this matter was in the preliminary stages at the time the parties moved to terminate. The parties have represented that the co-pending litigation, styled Yama Capital, LLC v. Canon, Inc. and Canon USA, Inc. 1:12-cv-07159, SDNY has been dismissed with prejudice. Joint Mandatory Notice (Paper 15). The parties have not identified any other related matters and have represented that they do not contemplate any further litigation concerning the’982 Patent in the foreseeable future. Paper 14. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 6,069,982 - PTAB · Mar 31, 2014 · IPR2013-00241 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding by settlement without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under these circumstances, we determine that it is appropriate to enter judgment1 and to terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 3
NonePatents in suitUS 6,370,954 - PTAB · Mar 31, 2014 · IPR2013-00254 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion to terminate the proceeding and their request to keep the settlement confidential, without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED, and the proceeding is hereby terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 3
NonePatents in suitUS 6,034,419 - PTAB · Mar 26, 2014 · IPR2013-00173 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion, terminated the proceeding under 37 C.F.R. § 42.72 without a final written decision, and granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated; FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept 1 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. § 42.2. separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 2
NonePatents in suitUS 8,152,788
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.