• Corelogic, Inc. v. Boundary Solutions, Inc.Institution denied
  PTAB · May 24, 2016 · CBM2016-00018 · APJ Richard H Marschall · CBM · Institution

  The Board denied institution for claims 1–23 because the petition did not establish that the ’352 patent qualifies as a covered business method patent.

  RulingsInstitution decision

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

    “method patent,” as defined by the AIA. CoreLogic bears the burden of persuasion that the ’352 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 ’352 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

  Discretionary denial
  Patents in suitUS 8,065,352
• Corelogic, Inc. v. Boundary Solutions, Inc.No claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00219 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 12–15 and 17–21 were not shown unpatentable because Oosterom did not disclose searching the database using a jurisdictional identifier.

  RulingsFinal written decision

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

    “In the Institution Decision, we construed “jurisdictional identifier” to mean “a number or other name, code, or description that identifies a jurisdiction.” Dec. 6. We based our construction on the only appearance of “jurisdictional identifier” in the written description of the ’352 patent, which states: FIG. 3 illustrates a USA County Boundary Map (USACM). This is a public domain boundary file of each and every of the 3140 counties within the United States. Each of these polygons is geocoded with its county name and FIPS number, a numerical jurisdictional identifier, as illustrated in the figure. Ex. 1001, 8:48–53 (emphasis added).3 BSI does not challenge our construction of “jurisdictional identifier” in its Patent Owner Response, see PO Resp. 6, nor does CoreLogic challenge the construction in its Reply, see Reply 10. For this Final Written Decision, after considering the complete record, we maintain our construction of “jurisdictional identifier” as “a number or other name, code, or description that identifies a jurisdiction.”” slip op. at 5

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

    “Having reviewed the arguments and evidence, we are not persuaded CoreLogic has demonstrated that Oosterom discloses searching the parcel map database “using a jurisdictional identifier” as recited in claim 12. Among the attributes in Oosterom’s parcel and boundary tables identified by CoreLogic in its analysis, only the municipality codes (i.e., “municip” in the parcel table and “L_municip” and “R_municip” in the boundary table) qualify as “jurisdictional identifiers.” See Ex. 1010, 513–14 (Tables 1, 2). The “object_id” of an object, e.g., a parcel or a boundary, is a nationwide unique identifier, but there is no indication in Oosterom that the object_id of a parcel or boundary identifies a jurisdiction. See id. at 512; see also id. at 513–14 (showing object_id attribute in parcel and boundary tables). As for the “ogroup” attribute in the parcel and boundary tables, Oosterom states only that it “indicates to which group the record belongs.” Id. at 519. Nothing in Oosterom describes the ogroup as identifying a jurisdiction. Although the municipality code attributes in the parcel and boundary tables identify jurisdiction, CoreLogic does not cite any portion of Oosterom that illustrates the use of municipality codes in searching the database for selected parcels as required by claim 12. See Pet. 45. Dr. Goodchild opines that the “municipality code . . . would allow us to search [the] parcel table by that jurisdiction and to identify all the parcels in that jurisdiction.” Ex. 2010, 19:22–24. He further testifies that in his analysis, he “was concerned with the specific kind of query identified in the claim, which is much narrower than Oosterom’s discussion [and] much more specific than the broad range of queries discussed by Oosterom.” Id. at 21:14–25. Ultimately, he states that the “question [he] analyzed is whether [Oosterom’s] database is capable of supporting the type of query identified in the claim.” Id. at 22:14–16 (emphasis added). Dr. Goodchild’s testimony that municipality codes could be used in searching Oosterom’s database, however, is insufficient to establish for anticipation purposes that Oosterom discloses the step of searching a multi-jurisdictional digital parcel map database for a selected parcel boundary polygon “using a jurisdictional identifier.”” slip op. at 10

  • ExcludeOther

    “C. CoreLogic’s Motion to Exclude Evidence CoreLogic moves to exclude the redirect testimony of BSI’s expert, Mr. William Huxhold, on the ground that it was provided in response to leading questions. Mot. Excl. 1 (citing Ex. 1034, 150:6–153:8). The redirect testimony relates to a portion of Mr. Huxhold’s cross-examination testimony. Id. at 1–2 (citing Ex. 1034, 72:5–22). Because we do not rely on Mr. Huxhold’s testimony, CoreLogic’s motion is dismissed as moot.” slip op. at 12

  Patent outcomesUS 8,065,352 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,065,352
• Corelogic, Inc. v. Boundary Solutions, Inc.All claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00226 · APJ Peter P Chen · IPR · Final written decision

  Claims 1–12, 14, 15, and 19–21 are unpatentable as obvious over the Harder-based grounds; the Kearney and ARC/INFO ground was not proven for claims 1–6 and 20–21.

  RulingsFinal written decision

  • BurdenFwd mixedUnpatentable

    “In summary, we agree with Petitioner’s contentions and find that Harder and Longley, once combined as proposed by Petitioner, teach or suggest the limitations of independent claim 1.” slip op. at 20

  • Skill levelSkill level board ownOther

    “C. 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 geographic information science, survey engineering, geomatics, or similar education, and two years of experience in a relevant field (e.g., land or geographic information science), or six years of experience in the relevant field.” Ex. 1006 (Declaration of Michael Goodchild), ¶ 11. Patent Owner has proposed that one of ordinary skill in the art would possess a “a Bachelor’s degree or higher in, GIS engineering with at least 5 years of academic or industry experience in GIS database design..” Ex. 2005 (Declaration of William Huxhold), ¶ 14. 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 11

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

    “The disclosure of Longley and the knowledge of one skilled in the art would have motivated such a person to modify Harder’s system given that Harder discloses parcel-based searching and display functionalities for a jurisdiction (e.g., Ex. 1003, 21-25) and for multiple states (id., 49-51), and discloses that databases in GIS environments could span multiple jurisdictions (id.,7, 49- 51), and that Longley discloses configuring such databases to include data relating to different states and also discloses parcel based systems. Moreover, one skilled in the art would have been motivated to look to Longley to supplement the features of the systems and processes of Harder given they both describe[] features of ESRI systems. Ex. 1015, 170, 172; Ex. 1003. Thus, modifying Harder’s database in such a way would have been a common sense and predictable modification that was within the realm of knowledge of one skilled in the art at the time of the alleged invention. See KSR, 550 U.S. at 417; Ex. 1006, ¶¶ 35- 39. Pet. 18–19. The Petition continues:” slip op. at 20

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

  Patent outcomesUS 7,499,946 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,499,946
• Corelogic, Inc. v. Boundary Solutions, Inc.All claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00222 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–23 are unpatentable: claims 9, 10, and 12–22 as obvious over Harder and Du; claims 1–8, 11, and 23 as obvious over Harder, Du, and MacDonald.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “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, 261 F.3d at 1355 (“[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). In this case, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 14

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

    “We remain unpersuaded by BSI’s arguments. As we explained in the Institution Decision, although the ’352 patent describes assembling a national parcel-level map database from data provided by various sponsoring agencies, the claims themselves do not require assembling the multi-jurisdictional database using any specific method or obtaining the information in the database from any particular sources. Dec. 7 (citing Ex. 1001, 1:41–48, 4:8–11). Moreover, BSI’s reliance on the prosecution history of the ’957 patent does not support its position, as the claims at issue there did not recite a “multi-jurisdictional database.” See Ex. 2006, 132–37, 141, 193–200). For these reasons, we maintain our construction of “multi- jurisdictional database” as “a collection of data relating to two or more jurisdictions.”” slip op. at 8

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

    “success”9 in combining Harder and Du because Du would not be used to maintain data for jurisdictions with a large number of parcels, and the visibility of parcels would be diminished in a map with so many parcels. PO Resp. 38. We do not find this argument to be persuasive because, as CoreLogic notes, Du discloses that cells can correspond to different types of jurisdictions and that any geographic areas can be searched and displayed. See Reply 14 (citing Ex. 1018, Fig. 3, 3:21–32, 4:38–40, 6:31–38, 9:5–6, 9:16–44). BSI also argues that a county identified as a cell in Du would include a huge amount of parcel data, and data for the entire cell would be transmitted to a client computer in the system described in Du, thereby defeating a purpose of Du’s system—the speedy display of maps. PO Resp. 38–39. CoreLogic, however, relies on Du for teaching an index of 9 We understand BSI’s use of the phrase “reasonable likelihood of success” to be an argument that there would be no “reasonable expectation of success” in the combination of references, rather than a reference to the reasonable likelihood standard for instituting an inter partes review. jurisdictional identifiers used to search a portion of a multi-jurisdictional database, not the transmission of parcel data, and has shown sufficiently that a person of ordinary skill in the art would have combined Du’s teaching of an index with Harder’s system for retrieving and transmitting parcel boundary polygon map data. See Reply 15. We have reviewed the parties’ arguments and evidence on this issue, and we agree with and adopt CoreLogic’s reasoning for modifying Harder’s single-county example in view of Du to retrieve a jurisdictional identifier from an index and use it to search a portion of a multi-jurisdictional database for a selected parcel. In sum, we find that the combination of Harder and Du teaches or suggests the limitations of claim 9 and that CoreLogic has provided articulated reasoning supported by rational underpinnings for combining the references in the manner asserted. Therefore, we conclude CoreLogic has shown by a preponderance of the evidence that claim 9 would have been obvious over Harder and Du.” slip op. at 22

  • ExcludeMotion to exclude, deniedDenied

    “G. CoreLogic’s Motion to Exclude Evidence CoreLogic moves to exclude the redirect testimony of BSI’s expert, Mr. William Huxhold, on the ground that it was provided in response to leading questions. Mot. Excl. 1 (citing Ex. 1034, 150:6–153:8). The redirect testimony relates to a portion of Mr. Huxhold’s cross-examination testimony. Id. at 1–2 (citing Ex. 1034, 72:5–22). Because we do not rely on the cited redirect testimony or the cited cross-examination testimony, CoreLogic’s motion is dismissed as moot.” slip op. at 40

  Patent outcomesUS 8,065,352 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,065,352
• Corelogic, Inc. v. Boundary Solutions, Inc.All claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00228 · APJ Peter P Chen · IPR · Final written decision

  Claims 1–12, 14, 15, and 19 are unpatentable: claims 1–10, 12, 14, 15, and 19 as obvious over Harder and Longley, and claim 11 over Harder, Longley, and Roy.

  RulingsFinal written decision

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

    “In our Decision to Institute, we construed “numerical jurisdictional identifier” to mean “a number that identifies a jurisdiction.” Dec. to Inst. 7– 8. We based our construction on the only appearance of “jurisdictional identifier” in the written description of the ’957 patent: FIG. 3 illustrates a USA County Boundary Map (USACM). This is a public domain boundary file of each and every of the 3140 counties within the United States. Each of these polygons is 8 geocoded with its county name and FIPS number, a numerical jurisdictional identifier, as illustrated in the figure. Ex. 1001, 8:48–53 (emphasis added).1 Patent Owner does not challenge our construction of “jurisdictional identifier” in its Patent Owner Response, see PO Resp. 7, nor does Petitioner challenge the construction in its Reply, see Reply 7. For this Final Written Decision, after considering the complete record, we maintain our construction of “numerical jurisdictional identifier” as “a number that identifies a jurisdiction.”” slip op. at 8

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

    “Patent Owner also proposes a construction for “national parcel map database comprising multiple jurisdictional databases which have been normalized to a common data protocol.” PO Resp. 7–15. Patent Owner’s proposal is 60 words long, and reads, “a database covering more than one state including multiple jurisdictional databases, wherein a jurisdictional database is a collection of data representing the boundaries of parcels from the jurisdiction, each of the jurisdictional databases having been received from a jurisdiction, and modified, transformed, amended or converted by a common set of one or more processes applied to all data and updates.” PO Resp. 8. Patent Owner had in its Preliminary Response proposed a different construction (“the database of individual land parcels having been 1 According to the ’957 patent, the Federal Information Processing Standards (“FIPS”) number “is used nationally to numerically identify specific county jurisdictions.” Ex. 1001, 7:27–30. 9 transformed by a set of one or more automated and/or semiautomated processes applied to data and data updates supplied by sponsoring jurisdictions using a set of rules or procedures”) for nearly the identical phrase (“multiple jurisdictional databases which have been normalized to a common data protocol”). Prelim. Resp. 15–17. We did not adopt Patent Owner’s proposed construction in our Decision to Institute, and we do not adopt its revised (and lengthier) construction in this Final Written Decision, for the reasons argued by Petitioner in its Reply (Reply 2–5) and also because the Patent Owner’s prolix proposed construction does not add clarity to the term. We decline to provide an express construction for this term or for any other terms in the claims other than discussed above.” slip op. at 9

  • Skill levelSkill level board ownOther

    “C. 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 geographic information science, survey engineering, geomatics, or similar education, and two years of experience in a relevant field (e.g., land or geographic information science), or six years of experience in the relevant field.” Ex. 1006 (Declaration of Michael Goodchild), ¶ 11. Patent Owner has proposed that one of ordinary skill in the art would possess a “a Bachelor’s degree or higher in, GIS engineering with at least 5 years of academic or industry experience in GIS database design.” Ex. 2004 (Declaration of William Huxhold), ¶ 13. 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 11

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

    “universal spatial protocol using SHP files (shapefiles) (Ex. 1001, 7:31–41), and Harder’s description of how its system’s datasets are “stored in the industry-standard shapefile (.shp) format” and how the system “converts the data into shapefiles.” Pet. Reply 9–11; Ex. 1003, 24, 106. Petitioner also notes that Patent Owner’s declarant acknowledged that assembling databases according to a standard protocol was in the prior art. Pet. Reply 11; Ex. 1034, 29:15–32:17, 32:18–40:22. We agree with Petitioner and find that Harder teaches or suggests databases that have been normalized to a common data protocol. Second, Patent Owner argues about the lack of disclosure of multiple jurisdictional databases. PO Resp. 28–29. Petitioner contends multiple jurisdictional databases are taught by both Harder and Longley, which explicitly discloses a “STATES table” that is a multi-state database. Pet. Reply 13; Ex. 1015, 229, Fig. 11.2. We agree with Petitioner and find that Harder and Longley teach or suggest multiple jurisdictional databases.” slip op. at 17

  Patent outcomesUS 7,092,957 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,092,957
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · May 17, 2016 · IPR2016-00119 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution for claims 1–26 because Martinez-Guerra did not teach or suggest the claimed command action value in each parse-tree element.

  RulingsInstitution decision

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

    “value” has an ordinary meaning in the context of the invention. When a claim term “does not have an ordinary meaning, and its meaning is not clear from a plain reading of the claim, we turn to the remaining intrinsic evidence, including the written description, to aid in our construction of that term.” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1326 (Fed. Cir. 2001) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582–83, 39 USPQ2d 1573, 1576–77 (Fed. Cir. 1996); Hockerson– Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 955, 55 USPQ2d 1487, 1490 (Fed. Cir. 2000).) If the applicants for a patent desire to be their own lexicographer, the purported definition must be set forth in either the specification or prosecution history. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Such a definition must be set forth with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).” slip op. at 10

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

    “Prelim. Resp. 27–28. We find that the error reporting aspect of Martinez- Guerra is not a value used to identify a prescribed command, as required by our claim construction. The error does not indicate a prescribed command. Additionally, the error is not contained in each element of the parse tree; rather, it is only at the particular branch of the tree that causes an error.” slip op. at 15

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “To the extent that Petitioner relies on a sequence in which an error occurs and then a correct translation is made, as shown on page 19 of the 15 Petition, that sequence is not described in the Specification and appears only in the Petitioner’s declarant’s testimony, without citation to the record, at paragraphs 38 and 39. We give such testimony little weight. See 37 C.F.R. § 42.65(a) (“[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). It is within our discretion to assign the appropriate weight to the testimony offered by a declarant. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). Thus, Petitioner has not provided sufficient evidence that in the case in which an error occurs there is a command action value at each element of the parse tree.” slip op. at 15

  Claim constructioncites KSR · Graham
  Patents in suitUS 7,047,526
• Mylan Pharmaceuticals Inc. v. Astrazeneca ABRehearing granted
  PTAB · May 2, 2016 · IPR2015-01340 · APJ Rama G Elluru · IPR · Rehearing

  The Board granted Mylan’s rehearing request and instituted IPR of claims 1, 2, 4, 6-22, 25-30, 32-37, and 39-42.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “II. ANALYSIS When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The applicable standard for a request for rehearing is 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. We grant Petitioner’s request for rehearing and institute an inter partes review of claims 1, 2, 4, 6–22, 25–30, 32–37, and 39–42 of the ’186 patent for the reasons provided in the concurrently issued Decision on Institution. Paper 16.” slip op. at 2

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

    “References Basis Claims challenged Ashworth I, Villhauer, Raag and, 1, 2, 4, 6–11, 25–28, § 103(a) Hanessian 32–35, 39, and 40 Ashworth I, Villhauer, Raag, 12–16, 29, 30, 36, 37, Hanessian, Bachovchin, and § 103(a) 41, and 42 GLUCOPHAGE Label Ashworth I, Villhauer, Raag, Hanessian, Bachovchin and, § 103(a) 12, 17, 18, and 22 XENICAL Label Ashworth I, Villhauer, Raag, Hanessian, Bachovchin, and § 103(a) 12, 19, 20, and 21” slip op. at 2

  None
• Sandisk Corporation v. Netlist, Inc.Rehearing denied
  PTAB · Apr 27, 2016 · IPR2014-00970 · APJ Linda M Gaudette · IPR · Rehearing

  Denied SanDisk’s rehearing request; the Board maintained its findings that claims 2, 5, and 6 were not shown obvious over Huang and claims 17–19 and 35 were not shown anticipated by Averbuj.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The party requesting rehearing has the burden of showing the 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 3

  • BurdenNot shown unpatentable

    “20–21 (“Averbuj discloses that in BIST mode, the multiplexer 46 shown in Fig. 6 selectively inputs signals BIST_ADDR/CTRL (i.e., address and control signals from the control module) to the address and control port of the corresponding memory device 12.” (emphasis added)). In other words, the Petition is devoid of any discussion of BIST_EN in connection with the limitations of claims 17–19 and 35. See Pet. 19–21. Likewise, the Reply fails to contain any discussion of how the claim limitations are met by Averbuj’s use of the BIST_EN signal. See Reply 17. 37 C.F.R. § 42.22(a)(2) requires each petition to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” Our discussion in the Final Decision of the patentability challenge as to claims 17–19 and 35 based on anticipation by Averbuj addresses Petitioner’s arguments in the Petition and Reply, which are limited to a contention that Averbuj’s multiplexer 46 is required to meet the “configured to selectively input” and “selectively inputs” limitations recited in claims 17–19 and 35. See Final Dec. 44–46 (citing Pet. 19–21; Reply 17). In arguing that we should have considered Dr. Alpert’s testimony that Averbuj’s sequencer, by generating a BIST_EN signal, is “configured to selectively input”/“selectively inputs” address and control signals to the memory modules, Petitioner attempts to improperly incorporate arguments into its Petition and Reply by reference to Dr. Alpert’s declaration testimony. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, we find the declaration testimony relied on by Petitioner in support of this Request (see Req. Reh’g 13) supports our determination that Petitioner failed to show, by a preponderance of the evidence, that Averbuj anticipates claims 17–19 and 35. Dr. Alpert testified that if the “configuration [to selectively input to the address and control ports] is determined to require the structure that performs the selection itself, then the disclosed control module also includes multiplexer 46 of memory interface 41.” Ex. 1007 ¶ 78 (emphasis added); see also id. ¶ 81 (identifying multiplexer 46 as the “DRAM controller which performs the selective inputting” as recited in claim 18). Petitioner did not explain (see Pet. 19–21; Reply 17) how Averbuj describes multiplexer 46 as being part of sequencer 8 (the alleged control module). See Final Dec. 45–46 (explaining that Petitioner has not addressed Patent Owner’s argument that the device that selectively inputs address and control signals to memory modules 12 is multiplexer 46 of memory interface 41 (the alleged data handler), not sequencer 8 (the alleged control module)). In sum, for the above reasons, we are not persuaded of error in our determination that Petitioner did not meet its burden to establish unpatentability of claims 17–19 and 35 under 35 U.S.C. § 102(b) based on Averbuj.” slip op. at 11

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

    “Huang and Tsern, Petitioner relied on the declaration testimony of its expert, Dr. Donald Alpert (Ex. 1007). See, e.g., id. at 44 (citing Ex. 1007 ¶ 222 in support of its challenge as to claim 2). In concluding Petitioner had not demonstrated a reasonable likelihood it would prevail in showing that claims 2, 5, and 6 would have been obvious over Huang in view of Tsern, we said the following: Dr. Alpert’s opinion that a person of ordinary skill in the art would have been motivated to combine Huang and Tsern . . . is either unsupported or relies on disclosure in the ’434 patent Detailed Description. See, e.g., Ex. 1007 ¶¶ 193, 199, and 206. . . . [T]here is no evidence on this record that the cited portions of the ’434 patent are a description of prior art. Moreover, Dr. Alpert’s statements lack sufficient articulated reasoning with rational underpinning as to why an ordinary artisan at the time of the invention would have had a reason to combine the prior art elements in the manner required by the challenged claims.” slip op. at 4

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

    “statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” Our discussion in the Final Decision of the patentability challenge as to claims 17–19 and 35 based on anticipation by Averbuj addresses Petitioner’s arguments in the Petition and Reply, which are limited to a contention that Averbuj’s multiplexer 46 is required to meet the “configured to selectively input” and “selectively inputs” limitations recited in claims 17–19 and 35. See Final Dec. 44–46 (citing Pet. 19–21; Reply 17). In arguing that we should have considered Dr. Alpert’s testimony that Averbuj’s sequencer, by generating a BIST_EN signal, is “configured to selectively input”/“selectively inputs” address and control signals to the memory modules, Petitioner attempts to improperly incorporate arguments into its Petition and Reply by reference to Dr. Alpert’s declaration testimony. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, we find the declaration testimony relied on by Petitioner in support of this Request (see Req. Reh’g 13) supports our determination that Petitioner failed to show, by a preponderance of the evidence, that Averbuj anticipates claims 17–19 and 35. Dr. Alpert testified that if the “configuration [to selectively input to the address and control ports] is determined to require the structure that performs the selection itself, then the disclosed control module also includes multiplexer 46 of memory interface 41.” Ex. 1007 ¶ 78 (emphasis added); see also id. ¶ 81 (identifying multiplexer 46 as the “DRAM controller which performs the selective inputting” as recited in claim 18). Petitioner did not explain (see Pet. 19–21; Reply 17) how Averbuj describes multiplexer 46 as being part of sequencer 8 (the alleged control module). See Final Dec. 45–46 (explaining that Petitioner has not addressed Patent Owner’s argument that the device that selectively inputs address and control signals to memory modules 12 is multiplexer 46 of memory interface 41 (the alleged data handler), not sequencer 8 (the alleged control module)). In sum, for the above reasons, we are not persuaded of error in our determination that Petitioner did not meet its burden to establish unpatentability of claims 17–19 and 35 under 35 U.S.C. § 102(b) based on Averbuj.” slip op. at 11

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,001,434
• Tiffany And Company v. Lazare Kaplan International, Inc.All claims unpatentable
  PTAB · Apr 13, 2016 · IPR2015-00024 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1 and 7 are unpatentable as obvious over Fine Diamonds with the ILR Article and over Gresser with the ILR Article.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “motion, lasers, and optics.” Ex. 1003 (“Trumper Declaration”) ¶ 17. Patent Owner and its declarant, Dr. Bokor, adopted the level of ordinary skill in the art advanced by Dr. Trumper. PO Resp. 43–44 and n.4; Ex. 2005 (“Bokor Declaration”) ¶ 22. For purposes of this decision, we credit the testimony provided by the declarants for both parties and hold that one of skill in the art would possess at least a bachelor’s degree in mechanical, electrical, manufacturing, or optical engineering, plus a few years of experience in the design and control of machines involving precision motion, lasers, and optics. 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 7

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

    “For the reasons explained below, we determine that Petitioner has shown by a preponderance of the evidence that claims 1 and 7 are unpatentable under either of the proposed constructions of the “controlling” limitations. Accordingly, we determine that it is unnecessary to resolve the parties’ dispute over the term “controlling.” See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We provide below an analysis of the challenged claims under both constructions.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “patterning and ablations of diamonds with a UV laser source. Ex. 1009, 2. The ILR Article depicts a computer in Figure 2, and refers to the “[i]ntegration of a computer into the direct-write system.” Id. at 3. The ILR Article further discloses that “[v]ideo images generated by the viewing system can be digitized and processed to derive information used for” various “operations that make the laser tool easier and faster to use.” Id. We credit the testimony of Dr. Trumper that “the ILR Article makes clear that the computer digitizes and processes the optical images of a gemstone, and the automated feedback derived from the images is used for controlling the directing of the focused laser energy,” as it is consistent with the ILR Article’s disclosure of integrating a computer into the diamond ablation system. Ex. 1003 ¶ 56. Thus, despite the fact that the ILR Article does not expressly state that the computer is used to digitize and process the video images, it would have been obvious to a person of ordinary skill in the art that integrating the computer into the direct write system would include using the computer (shown in Fig. 2) to digitize the video images generated by the viewing system and process them to conduct the various operations that make the laser tool easier to use. KSR Int’l Co. v. Teleflex Inc., 550 US 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Furthermore, as noted above, the ILR Article teaches that “[c]omputer control of work surfaces allows direct production of CAD-generated shapes” on diamond surfaces. Ex. 1009, 2. Petitioner contends, and Patent Owner does not contest, that the CAD/CAM programs correspond to the required “marking instructions.” Pet. 25–26 (citing Ex. 1009, 2); Ex. 1003 ¶ 56 (Dr. Trumper stating “marking instructions (e.g., motion programming of the CAD/CAM program)”). Additionally, the ILR Article discloses that the “CAD/CAM interface . . . allows electronic control of processing speed, exposure parameters, and other features” of the laser tool that “simplifies set-up [and] accelerates process development.” Ex. 1009, 3. As Petitioner points out, the next sentence in the very same paragraph discusses digitizing and processing the video images. Reply 13. In view of this, we determine that a person of ordinary skill in the art, reviewing the ILR Article, would have understood the ILR Article to disclose or suggest using the computer to control and operate the laser tool to generate shapes based on a combination of two inputs, the CAD/CAM programs (i.e., “marking instructions”) and images fed back to the computer and digitized therein (i.e., electronic image information), which “simplif[y] set-up [and] accelerate[] process development” and “make the laser tool easier to use.”2 Ex. 1009, 3; Reply 13; Ex. 1003 ¶ 55.” slip op. at 19

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

    “contrary to Patent Owner’s arguments, we determine that a person of ordinary skill in the art would have understood that the ILR Article discloses or suggests that images are fed back to a processor and combined with marking instructions for, at the very least, setting up the laser inscription machine. Thus, although Patent Owner also argues that its proposed construction of the controlling limitations “distinguishes over systems that use gemstone images for setup—independent of ‘marking instructions’” (PO Resp. 29 (emphasis added)), the ILR Article discloses or suggests using images for set up in combination with marking instructions. Moreover, as Patent Owner points out, the Federal Circuit stated that the “controlling” limitations include “control based on . . . feedback derived from optical images of a gemstone, before or during the laser burn process.” Ex. 1006, 14 (emphasis added); PO Resp. 31–32. We note that Patent Owner argues that its proposed construction is consistent with the 2010 Federal Circuit opinion. PO Resp. 29–32. For all of the reasons discussed above, we determine that the ILR Article discloses or suggests the “controlling” limitations of claims 1 and 7. Petitioner has identified sufficiently where the additional limitations of claims 1 and 7 are present in Fine Diamonds and the ILR Article, and Patent Owner does not argue otherwise. We, therefore, conclude that Petitioner has shown by a preponderance of the evidence that Fine Diamonds and the ILR article disclose or suggest all elements of claims 1 and 7.” slip op. at 22

  Patent outcomesUS 6,476,351 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,476,351
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Apr 12, 2016 · IPR2016-00018 · APJ Peter P Chen · IPR · Institution

  The Board denied institution because Arista did not show a reasonable likelihood that claims 1, 2, 6–9, 12, 13, and 17–20 were unpatentable over Chau or Chau and Wils.

  RulingsInstitution decision

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

    “review of claims 1, 2, 6–9, 12, 13, and 17–20 of U.S. Patent No. 8,051,211 B2 (Ex. 1001, “the ’211 patent”). Paper 2 (“Pet.”). Patent Owner, Cisco Systems, 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, 2, 6–9, 12, 13, and 17–20 of the ’211 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • BurdenNot shown unpatentable

    “Petitioner’s only apparent contention for Chau’s disclosure that the first and second LANs are both usable for simultaneous transmission “subsequent to” the aggregation of LANs, is that “the simultaneous transmission occurs as a result of the grouping of the first LAN (channel C2) and second LAN (channel C1).” Pet. 19–20, citing Ex. 1014 ¶ 54. The Lin declaration is similarly worded, and like the Petition, is silent as to whether Chau’s alleged simultaneous transmission occurs “subsequent to,” i.e., after the aggregation of LANs. Petitioner’s argument of simultaneous transmission occurring “as a result of” alleged aggregation of LANs is unavailing, because “subsequent to” means, “after,” not “as a result of.” In fact, in the related ’975 IPR, we expressly rejected the Patent Owner’s proposed construction of “as a result of” for “subsequent to.” See Section II.A. Neither the Petition nor the Lin declaration (Ex. 1014) cite any evidence of simultaneous transmission occurring “after” aggregation of LANs in Chau. Accordingly, we are not persuaded that Petitioner’s showing demonstrates a reasonable likelihood that it would prevail as to claim 1 being anticipated by Chau.” slip op. at 11

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

    “In addition, as we determined in the ’975 IPR, for purposes of this decision, we determine that the broadest reasonable construction of “subsequent to” is its ordinary and customary meaning, namely, “after.” See Case IPR2015-00975, slip op. at 7–8 (PTAB Oct. 6, 2015) (declining to adopt Patent Owner’s proposed construction of “as a result of” for “subsequent to”).” slip op. at 7

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

    “Petitioner’s only apparent contention for Chau’s disclosure that the first and second LANs are both usable for simultaneous transmission “subsequent to” the aggregation of LANs, is that “the simultaneous transmission occurs as a result of the grouping of the first LAN (channel C2) and second LAN (channel C1).” Pet. 19–20, citing Ex. 1014 ¶ 54. The Lin declaration is similarly worded, and like the Petition, is silent as to whether Chau’s alleged simultaneous transmission occurs “subsequent to,” i.e., after the aggregation of LANs. Petitioner’s argument of simultaneous transmission occurring “as a result of” alleged aggregation of LANs is unavailing, because “subsequent to” means, “after,” not “as a result of.” In fact, in the related ’975 IPR, we expressly rejected the Patent Owner’s proposed construction of “as a result of” for “subsequent to.” See Section II.A. Neither the Petition nor the Lin declaration (Ex. 1014) cite any evidence of simultaneous transmission occurring “after” aggregation of LANs in Chau. Accordingly, we are not persuaded that Petitioner’s showing demonstrates a reasonable likelihood that it would prevail as to claim 1 being anticipated by Chau.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,051,211

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.