• Google LLC / Samsung Electronics Co., Ltd. et al. v. Parus Holdings, Inc.All claims unpatentable
  PTAB · Oct 19, 2021 · IPR2020-00846 · APJ David C Mckone · IPR · Final written decision

  Claims 1, 2, 4–7, 9, 10, 13, and 14 are unpatentable as obvious over the stated prior-art combinations.

  RulingsFinal written decision

  • BurdenNew argument disregardedDecided for petitioner

    “According to our rules, “[a]rguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). For example, the Board has explained that “parties that incorporate expert testimony by reference in their petitions, motions, or replies without providing explanation of such testimony risk having the testimony not considered by the Board.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 35–36 (November 2019) (“TPG”)3 (citing Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (informative)).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, relying on the testimony of Mr. Lipoff, contends that a person of ordinary skill in the art “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing,” and that “[m]ore education could substitute for less experience, and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 41–48). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On the complete record, we are persuaded that Petitioner’s proposal is consistent with the technology 7 The complete record does not include allegations or evidence of objective indicia of nonobviousness. described in the Specification and the cited prior art and adopt Petitioner’s proposed level of skill.” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “proposed combination with Kovatch. PO Resp. 37. According to the Federal Circuit, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Mouttet, 686 F.3d 1322, 1333–34 (Fed. Cir. 2012) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)) (alteration in original). However, “the ‘mere disclosure of alternative designs does not teach away.’” Id. at 1334 (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Indeed, “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” Id. (citing Gurley, 27 F.3d at 553). Specifically, Patent Owner (PO Resp. 37), points to disclosure in Neal describing disadvantages of a keyword search strategy (e.g., “users must be familiar with the appropriate key word terms that are likely to yield the desired data records”) and disadvantages of a classification search strategy (e.g., “users may not always anticipate the proper classification of certain records, and may search the wrong categories for their desired database record”). Ex. 1007, 2:16–65. Neal then describes a “preferred embodiment” in which “the system manager will expand the scope of the search strategies from ‘exact’ string matches, along a continuum of search methodologies, including perhaps fuzzy logic strategies.” Id. at 7:14–17. According to Neal, “[t]he purpose of expanding the search strategies is to avoid the situation wherein the search fails to identify the desired item from any data set, and thereby drops into logical block 222 a negative search result is reported to the user.” Id. at 7:28–32. Patent Owner argues that “Neal advocates for employing a sequence of search algorithms from the narrowest to the most broad.” PO Resp. 38 (citing Ex. 1007, 7:56–58; Ex. 2059 ¶ 124). Patent Owner contends that Neal teaches away from a combination “that employs a single keyword matching search strategy.” Id. Patent Owner argues that Petitioner’s combination of Kovatch and Neal results in a system that only sequentially searches datasets using a single keyword matching search strategy, and not the cascading sequence of search methodologies described by Neal. Id. at 37–39. We do not agree with Patent Owner that Neal teaches away from a system that employs a single keyword matching search strategy. Indeed, Neal’s preferred embodiment expressly contemplates such a system. For example, Neal describes employing a first “exact string search” methodology to search a first data set (Figure 2, block 206). Ex. 1007, 6:34– 46. This appears to be what Patent Owner considers a “single keyword matching search strategy.” PO Resp. 37–38. Neal describes that if this search of the first data set does not yield a match, the system searches a second data set using a second search methodology (Figure 2, block 210). Ex. 1007, 6:47–52. However, in the preferred embodiment there is no requirement that the second search methodology in 210 must be different from the first search methodology in 206. For example, if the first preferred supplier did not yield an exact string match to the input search term, the same search methodology could be applied to a second preferred supplier’s catalog. Id. at 6:59–65. Thus, Neal expressly teaches using a single keyword search strategy on a first dataset and the same keyword search strategy on a second dataset, without necessarily employing a cascading sequence of different search methodologies. See Reply 19.” slip op. at 39

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

    “advertisements while waiting for information to be retrieved; rather, it first retrieves the requested information and then generates an audio stream with both the commercials and retrieved information. Reply 22–23 (citing Ex. 1005, 14:1–8, 18:1–15; Ex. 1057 ¶ 18). Petitioner’s characterization of Kovatch is correct (and Patent Owner’s incorrect). Kovatch’s system first navigates to a destination and retrieves requested information (step 6), then generates commercials (step 8), then intermixes the commercials and information (step 9), and finally returns speech to the user (step 10). Ex. 1005, 14:1–8. We find unavailing Patent Owner’s argument that, when combined, Neal’s teachings would have an adverse impact on Kovatch’s generation and presentation of advertisements.” slip op. at 45

  Patent outcomesUS 7,076,431 unpatentable
  § 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 7,076,431
• Google LLC / Samsung Electronics Co., Ltd. et al. v. Parus Holdings, Inc.Other
  PTAB · Oct 19, 2021 · IPR2020-00847 · APJ Sheldon M Mcgee · IPR · Final written decision

  Claims 1, 2, 4–7, 10, and 14 are unpatentable as obvious over Kurganov-262 and Chakrabarti; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “Turning now to obviousness, Petitioner identified disclosure within Kurgonov-262 and Chakrabarti which teaches or suggests the limitations of claim 1. Pet. 11–21. Furthermore, Petitioner identified multiple reasons that would have prompted the skilled artisan to combine the teachings of Kurganov-262 and Chakrabarti to arrive at the subject matter of claim 1. Id. at 21–22. Because Patent Owner focused its arguments solely on the issue of whether Kurganov-262 is prior art, Petitioner’s assertions regarding the substantive teachings of Kurganov-262 and Chakrabarti remain unrebutted on the complete record. PO Resp. 31–34; Sur-reply 1–3. Patent Owner likewise failed to substantively address Petitioner’s proffered reasons why the skilled artisan would have been motivated to combine these teachings. PO Resp. 31–34; Sur-reply 1–3. We have reviewed the disclosures of Kurganov-262 and Chakrabarti relied on by Petitioner, as well as the explanations provided by Mr. Lipoff, and are persuaded that the limitations of claim 1 are disclosed in the prior art. Pet. 11–21; Ex. 1002 ¶¶ 103–109; Ex. 1004; Ex. 1008. Petitioner also persuades us that the skilled artisan would have been motivated to apply Chakrabarti’s techniques for web crawling to Kurganov-262’s system, and would have had a reasonable expectation of successfully doing so, thus arriving at the subject matter of claim 1 of the ʼ084 patent. Pet. 21–23; Ex. 1002 ¶¶ 110–114. Therefore, Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 of the ʼ084 patent would have been obvious over the combined disclosures of Kurganov-262 and Chakrabarti.” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner describes a person having ordinary skill in the art as having “a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing. More education could substitute for less experience, and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 41–47). Patent Owner does not contest Petitioner’s definition of the skilled artisan. See generally, PO Resp. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Moreover, the level of ordinary skill in the art is also reflected by the references themselves. 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.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Thus, on the complete record, we accept Petitioner’s assessment of the level of one of ordinary skill in the art. C. Asserted Obviousness based on Kurganov-262 and Chakrabarti” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “Rather, on the complete record, Patent Owner makes inadequately supported assertions regarding what the skilled artisan “would understand” based on the ʼ084 patent’s disclosure. See PO Resp. 33–34. For example, Patent Owner asserts that “[a] POSITA would understand that” polling or pinging “describes a process where by existing and new devices and/or websites are discovered,” and that “‘polling’ includes asking for information from a website, including a listing of URLs or asking a website of a search engine to provide new website information.” Id. at 34 (citing Ex. 2059 ¶¶ 154–155). We reject this line of argument because we afford minimal weight to Patent Owner’s reliance on paragraphs 153–155 of Exhibit 2059. PO Resp. 33–34. These declaration paragraphs provide little detail beyond what is argued in the Patent Owner Response. See 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 22

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “We are persuaded by Petitioner’s arguments that sufficient written description support does not exist in the ʼ996 application for “limitation 1.i” which requires the computing device to be “configured to periodically search via the one or more networks to identify new web sites and to add the new web sites to the plurality of web sites.” Pet. 6–11. Thus, we determine that Kurganov-262 is available as prior art against the challenged claims. On the complete record, Patent Owner fails to direct us to specific disclosure within the ʼ996 application that evinces written description for limitation 1.i. Rather, Patent Owner’s citations to the ʼ084 patent fail to describe with adequate precision a computing device configured to periodically search the network(s) to identify new web sites and add such new web sites to the plurality of web sites that are accessed. See PO Resp. 31–34.” slip op. at 20

  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,451,084
• Apple Inc. v. Parus Holdings, Inc.No claims unpatentable
  PTAB · Sep 9, 2021 · IPR2020-00687 · APJ Sheldon M Mcgee · IPR · Final written decision

  Claims 1–7, 10, and 14 were not shown unpatentable because Petitioner did not establish that Ladd’s speech-recognition device recognizes speech without predefined voice patterns.

  RulingsFinal written decision

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

    “The parties agree that this term at least requires a “speech recognition device that recognizes spoken words without . . . using predefined voice patterns,” but disagree as to whether it should require a device that recognizes spoken words “without adapting to individual speakers.” PO Resp. 21 (“The proper construction of ‘speaker-independent speech recognition device’ is consistent with the construction issued by the Western District of Texas, though it does not include all of that court’s construction, and requires at least ‘speech recognition device that recognizes spoken words without using predefined voice patterns.’”); Reply 2 (“For purposes of this IPR, Apple submits the Court’s construction should be applied.”). The dispute regarding whether the term should preclude adapting to individual speakers does not impact any issue in this proceeding, and Petitioner has agreed to Patent Owner’s construction in this proceeding, so long as we do not resolve the dispute over adapting to individual speakers. Tr. 12:24–13:4 (“JUDGE McKONE: So you’d be happy if we essentially adopted Parus’s construction with a footnote or some kind of note that we’re not resolving the issue of adapting to individual speakers? MS. BAILEY: That would be fine for purposes of this IPR, Your Honor.”). We adopt the parties’ agreed approach. For purposes of this proceeding, “speaker-independent speech recognition device” means “speech recognition device that recognizes spoken words without using predefined voice patterns.” This is consistent with the ’084 patent’s statement (relied on by both parties) that “[t]he voice browsing system recognizes naturally spoken voice commands and is speaker-independent; it does not have to be trained to recognize the” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “least a Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science, or an equivalent degree, with at least two years of experience in interactive voice response systems, automated information retrieval systems, or related technologies. Pet. 7 (citing Ex. 1003 ¶ 28). On the complete record, we adopt Petitioner’s definition of one of ordinary skill in the art for essentially three reasons. First, Patent Owner does not contest Petitioner’s assertion. See generally PO Resp. Also, neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Moreover, the level of ordinary skill in the art is also reflected by the references themselves. 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.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). C. Asserted Obviousness of Claims 1–7, 10, and 14 (Grounds 1–3)” slip op. at 13

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

    “speech-recognition device” discussed supra, this limitation requires a “speech recognition device that recognizes spoken words without using predefined voice patterns.” A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner must demonstrate obviousness by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “A motion to exclude should be directed to the admissibility of evidence. See 37 C.F.R. § 42.64; Patent Trial and Appeal Board Consolidated Trial Practice Guide 79 (November 2019) (“TPG”) (“A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay) but may not be used to challenge the sufficiency of the evidence to prove a particular fact.”). According to the Trial Practice Guide, a motion to exclude is not a vehicle to “address arguments or evidence that a party believes exceeds the proper scope of reply or sur-reply.” TPG 79. Rather, “[i]f a party believes that a brief filed by the opposing party raises new issues, is accompanied by belatedly presented evidence, or otherwise exceeds the proper scope of reply or sur-reply, it may request authorization to file a motion to strike.” Id. at 80. Patent Owner did not file a motion to strike. Patent Owner’s Motion to Exclude does not address the admissibility of Dr. Terveen’s testimony. Rather, it argues that the testimony exceeds the proper scope of reply evidence, either because it does not respond to the Patent Owner Response or because Petitioner did not follow our rules in seeking to submit supplemental information. See generally Mot. Excl. Thus, we agree with Petitioner that Patent Owner’s Motion to Exclude does not state a proper basis for excluding evidence and, therefore, we deny the motion for that reason.” slip op. at 34

  Patent outcomesUS 9,451,084 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,451,084
• Apple Inc. v. Parus Holdings, Inc.No claims unpatentable
  PTAB · Sep 9, 2021 · IPR2020-00686 · APJ David C Mckone · IPR · Final written decision

  Claims 1–7, 9, 10, 13, 14, 18–21, and 25–30 were not shown unpatentable because the asserted combinations did not establish the claimed speaker-independent speech recognition device.

  RulingsFinal written decision

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

    “predefined voice patterns,” but disagree as to whether it should require a device that recognizes spoken words “without adapting to individual speakers.” PO Resp. 21 (“The proper construction of ‘speaker-independent speech recognition device’ is consistent with the construction issued by the Western District of Texas, though it does not include all of that court’s construction, and requires at least ‘speech recognition device that recognizes spoken words without using predefined voice patterns.’”); Reply 2 (“For purposes of this IPR, Apple submits the Court’s construction should be applied.”). The dispute as to whether the term should preclude adapting to individual speakers does not impact any issue in this proceeding, and Petitioner has agreed to Patent Owner’s construction in this proceeding, so long as we do not resolve the dispute over adapting to individual speakers. Tr. 12:24–13:4 (“JUDGE McKONE: So you’d be happy if we essentially adopted Parus’s construction with a footnote or some kind of note that we’re not resolving the issue of adapting to individual speakers? MS. BAILEY: That would be fine for purposes of this IPR, Your Honor.”). We adopt the parties’ agreed approach. For purposes of this proceeding, “speaker-independent speech recognition device” means “speech recognition device that recognizes spoken words without using predefined voice patterns.” This is consistent with the ’431 patent’s statement (relied on by both parties) that “[t]he voice browsing system recognizes naturally spoken voice commands and is speaker-independent; it does not have to be trained to recognize the voice patterns of each individual user. Such speech recognition systems use phonemes to recognize spoken words and not predefined voice patterns.” Ex. 1001, 4:38–43; see also PO Resp. 21–22 (citing Ex. 1001, 4:34–43);” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Skill in the Art Petitioner, relying on the testimony of Dr. Terveen, contends that a person of ordinary skill in the art “would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science, or equivalent degree, with at least two years of experience in interactive voice response systems, automated information retrieval systems, or related technologies, such as web-based information retrieval systems.” Pet. 6 (citing Ex. 1003 ¶ 28). Patent Owner does not contest Petitioner’s proposal or offer an alternative. Also, neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt Petitioner’s proposed level of skill.” slip op. at 12

  • ExcludeMotion to exclude, deniedDenied

    “A motion to exclude should be directed to the admissibility of evidence. See 37 C.F.R. § 42.64; TPG 79 (“A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay) but may not be used to challenge the sufficiency of the evidence to prove a particular fact.”). According to the Trial Practice Guide, a motion to exclude is not a vehicle to “address arguments or evidence that a party believes exceeds the proper scope of reply or sur-reply.” TPG 79. Rather, “[i]f a party believes that a brief filed by the opposing party raises new issues, is accompanied by belatedly presented evidence, or otherwise exceeds the” slip op. at 41

  • Strike new argumentNew argument disregardedDecided for patent owner

    “corresponding to an unclaimed second step not part of speech recognition would be an impermissible new argument presented for the first time in the Reply. As explained in the Board’s Trial Practice Guide, Petitioner’s change in direction exceeds the proper scope of a reply: Generally, a reply or sur-reply may only respond to arguments raised in the preceding brief. 37 C.F.R. § 42.23, except as noted above. “Respond,” in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing. While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered. The Board is not required to attempt to sort proper from improper portions of the reply or sur-reply. Patent Trial and Appeal Board Consolidated Trial Practice Guide 74 (November 2019) (“TPG”).7 If Petitioner is arguing that Ladd’s description of voice patterns and speech patterns is not describing speaker-independent speech recognition, then Petitioner’s Reply does not simply respond to the Patent Owner Response or attempt to crystalize the issues in dispute. Rather, the Petition expressly relied on certain disclosure in Ladd to show the functionality claimed in limitation 1[c], while the Reply attempts to re-cast that same disclosure as describing functionality separate from that of limitation 1[c]. This would be a new theory.” slip op. at 29

  Patent outcomesUS 7,076,431 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,076,431
• Favored Tech Corporation v. P2i LtdNo claims unpatentable
  PTAB · Aug 23, 2021 · IPR2020-00478 · APJ Jeffrey W Abraham · IPR · Final written decision

  Favored Tech did not prove claims 1–17 unpatentable: Baalmann did not anticipate the asserted claims, and the obviousness grounds lacked adequate disclosure or motivation with a reasonable expectation of success.

  RulingsFinal written decision

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

    “After considering Petitioner’s arguments regarding claim 9, Patent Owner’s silence regarding claim 9, and the language in the ’070 patent itself (e.g., Ex. 1001, 11:45–52, 12:60–61), we agree with Petitioner that the term “1H, 1H, 2H, 3H-heptadecafluorodecylacylate” in claim 9 should be construed to correctly recite HDFDA (1H, 1H, 2H, 2H-heptadecafluorodecylacrylate). The error Petitioner identifies is conspicuous and undisputed, and the intrinsic record does not suggest a different interpretation. Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1119–20 (Fed. Cir. 2020); Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). Additionally, after reviewing the parties’ remaining claim construction arguments and evidence, we determine that we do not need to expressly construe any other terms for purposes of this Decision because, as addressed in detail below, we find Petitioner’s showings deficient for reasons that do not depend on the construction of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art in the field of the ’070 patent would have had “at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 14 (citing Ex. 1002 ¶¶ 26–31). Patent Owner agrees with this proposed definition “with the understanding that ‘experience with plasma-polymerization techniques’ includes plasma-enhanced chemical vapor deposition (PECVD) techniques.” PO Resp. 9 (citing Ex. 2010 ¶ 20; Ex. 1002 ¶¶ 12, 63). In light of the record before us, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. As Patent Owner points out, Dr. Gleason states that PECVD is a form of plasma polymerization, and thus the parties agree that experience with plasma-polymerization techniques would include PECVD. PO Resp. 9; Ex. 1002 ¶ 63. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “We agree with Patent Owner. Petitioner has failed to demonstrate adequately that each and every element in claim 1, arranged as recited in the claim, is found in a single prior art reference. NetMoneyIN, 545 F.3d at 1369; Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Here, Petitioner combines several different teachings from Baalmann to support its anticipation argument. For example, Petitioner relies on the “evacuable chamber with a volume of 1 m3” from Baalmann’s Example 1, but not the power (2kW) expressly disclosed as being used with that reactor of Example 1. Ex. 1004 ¶ 47. With regard to power density, Petitioner relies on Baalmann’s general disclosure that “[t]he electrical power input per chamber volume is set between 0.5 kilowatt/m3 and 5 kilowatt/m3.” Ex. 1004 ¶ 20. As Patent Owner points out, however, that power density range is not tied to any particular reactor volume or plasma zone volume. PO Resp. 19. Baalmann also fails to expressly disclose the plasma zone volume of the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. To attempt to overcome this absence of an express disclosure, Petitioner argues that, for the reactor used in Example 1, the plasma zone volume and reactor volume are the same based on the configuration of the electrodes in the reactor. Pet. 24–25. Baalmann, however, does not expressly disclose the electrode configuration of the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. Instead, Petitioner relies on Baalmann’s general disclosure of an embodiment wherein one electrode is formed by the chamber wall itself. Pet. 24–25; Ex. 1004 ¶¶ 35, 61. In so doing, Petitioner ignores the fact that Baalmann also states that “[t]wo opposite rod-shaped electrodes may also be used.” Ex. 1004 ¶ 35. In view of this, we disagree with Petitioner’s conclusion that a person of ordinary skill in the art “would have understood that chamber to be configured as described throughout the rest of the specification: with the chamber wall serving as one of the electrodes.” Pet. 24. Even if we were persuaded by Petitioner’s argument, the fact remains that Petitioner’s anticipation challenge is based on the combination of different features disclosed in separate portions of Baalmann. “Such picking and choosing . . . has no place in the making of a 102, anticipation rejection.” In re Arkley, 455 F.2d 586, 587–88 (CCPA 1972) (cited with approval in Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008)); see also Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017) (stating that anticipation is not proven by multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention).” slip op. at 12

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

    “For all of the foregoing reasons, we are not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have inferred the volume of the plasma zone10 in Coulson is 470 cm3 based on Coulson’s disclosure of a “glow discharge reactor” having a volume of 470 cm3. Pet. 38; Reply 15–16. In view of this, we are likewise not persuaded that Coulson discloses a power density of 85.1 W/m3, because Petitioner’s 9 Dr. Gleason confirmed that she did not perform any experiments to verify her opinions regarding Coulson’s plasma zone. Ex. 2017, 80:10–18. 10 As noted above, Petitioner presented its argument in the context of its proposed construction of plasma zone. Petitioner did not present an alternative argument supported by sufficient evidence addressing the volume of Coulson’s plasma zone based on Patent Owner’s proposed construction of plasma zone. Accordingly, we agree with Patent Owner’s assertion that we do not need to expressly construe the term plasma zone to resolve this issue. Sur-reply 1. argument that Coulson discloses this power density is based on its assertion that Coulson has a plasma zone volume of 470 cm3. Pet. 38. This finding is fatal to Petitioner’s obviousness challenge of claim 1 based on the combined teachings of Baalmann and Coulson because Coulson’s purported disclosure of using a power density of 85.1 W/m3 is an essential component of Petitioner’s obviousness challenge. An obviousness determination requires finding both “that a skilled artisan would have been motivated to combine the teachings of the prior art . . . and that the skilled artisan would have had a reasonable expectation of success in doing so.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367-68 (Fed. Cir. 2016). In attempting to establish a person of ordinary skill in the art would have had reason to combine the teachings of Baalmann and Coulson, and would have had a reasonable expectation of success in doing so, Petitioner repeatedly refers to using Coulson’s optimized reaction conditions, including power density, in Baalmann’s larger reactor. Pet. 48 (stating that a person of ordinary skill in the art “would have been motivated to maintain the same or similar reaction conditions within a larger reaction chamber that were present in Coulson’s chamber during Coulson’s reported plasma polymerization reactions, including power density and pressure, to preserve the same effective results.”), 48–49 (“That would have included motivation to maintain Coulson’s disclosed power density when scaling up to a larger reaction volume to preserve the beneficial results Coulson reported at that optimized power density.”); Reply 23 (referring to the “straightforward, compelling obviousness case set forth in the petition” that a person of ordinary skill in the art “would have expected to succeed performing Coulson’s reactions on a larger scale in view of Baalmann”); 23 (“The petition explained why a POSA would have modified Baalmann to use Coulson’s HDFDA monomer and reaction conditions to produce coatings with a reasonable expectation of success” ), 24 (stating the Petition “explained why a POSA would have expected success using known parameters from Coulson in an established large-scale apparatus”). During the oral hearing, counsel for Petitioner confirmed its obviousness positions depend on using Coulson’s power density. Tr. 20:10–21:16. Accordingly, Petitioner’s failure to demonstrate adequately that Coulson discloses or suggests a power density of 85.1 W/m3 undermines its reason to combine and reasonable expectation of success arguments. Petitioner’s argument that Baalmann discloses the claimed power” slip op. at 26

  Patent outcomesUS 8,389,070 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,389,070
• Solvay USA Inc. v. Worldsource Enterprises, LLC, Eco Agro Resources LLC, And Eco World Group LLCRehearing denied
  PTAB · Aug 10, 2020 · PGR2019-00046 · APJ Sheldon M Mcgee · PGR · Rehearing

  The Board held claims 1–20 unpatentable as obvious over the stated combinations and denied Patent Owner’s rehearing request.

  RulingsRehearing decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In light of the complete record now before us, we adopt Petitioner’s definition of one of ordinary skill in the art. In addition to the academic requirements associated with obtaining a bachelor’s degree in chemistry or chemical engineering, Petitioner’s definition includes at least two years of experience specific to chemical formulations used in the agricultural industry. Pet. 8. Patent Owner’s “definition” is generic to “formulation chemistry.” Sur-Reply 4. Patent Owner does not explain, nor do we discern, why the skilled artisan would not have had at least some work experience in developing chemical formulations in the relevant field, i.e., the agrochemical industry. Indeed, some of Patent Owner’s arguments are directed to solvent delivery systems used in the agricultural market. PO Resp. 57–78.” slip op. at 7

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

    “filing date, we apply the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Id. at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Neither party offers a construction for any claim term. Pet. 11; see also PO Resp., generally. On the complete record, we determine that no claim limitations need an express construction to resolve the controversy.” slip op. at 6

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

    “analogous art. PO Resp. 47; Sur-Reply 8, 15–16. Patent Owner incorrectly frames the analogous art inquiry by comparing whether the prior art references are analogous to each other. See PO Resp. 47 (“not all three references are in the same field of endeavor”); Sur-Reply 16 (asserting that CN400 “is not analogous art with Iannotta [] and/or Kolc” because CN400’s NBPT is purportedly “not dissolved in any solvent”). Our reviewing court has stated, however, that “[a] reference qualifies as prior art for a determination under § 103 when it is analogous to the claimed invention.” Innovention Toys, LLC v. MGA Entertainment, Inc., 637 F.3d 1314, 1322 (Fed. Cir. 2011) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), the court stated Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Innovention Toys, 637 F.3d at 1322. Regarding whether the CN400 patent is in the same field of endeavor as the ʼ108 patent, we must consider the scope of the ʼ108 patent as a whole and not just the claims. In re Mettke, 570 F.3d 1356 (Fed. Cir. 2009) (rejecting appellant’s attempt to rely on the claimed subject matter to define the relevant “field of endeavor” when the specification described a broader one). Significantly, the ʼ108 patent discloses both solutions and suspensions of NBPT. See Ex. 1001, 5:20–52, 6:5–12, 6:39–40 (disclosing various solutions of NBPT), and 13:24–36 (setting forth an embodiment that formed “a suspension of NBPT in the aqueous mixture” that may “be solved by agitation”). Therefore, regardless of whether CN400’s process set forth in its claim 1 results in a solution or suspension of NBPT, CN400 is from the same field of endeavor as defined by the ʼ108 patent itself––“solvent formulations for the urease inhibitor . . . NBPT.” Ex. 1001, 1:15–18. Even if CN400 was not in the same field of endeavor as the ʼ108 patent, we find it is reasonably pertinent to the particular problem with which the inventor was involved. The ʼ108 patent identifies NBPT formulation toxicity as problematic to the environment, animals, and possibly humans (id. at 2:60–62, 4:8–33), and expressly states “it is desirable to develop formulations/fertilizers that are less toxic to the environment and to animals and humans” (id. at 4:34–36). The skilled artisan would have been aware of this toxicity problem with NBPT-containing formulations (Ex. 1025, 1; Ex. 1007 ¶ 6), and CN400 was also concerned with this problem (Ex. 1006, 1 (Abstract), ¶¶ 2, 5; see also Ex. 2006, 461 (machine translation of CN400 abstract noting how use of its fertilizer formulation will not pollute the environment), 462 ¶ 2, 463 ¶ 5. Notably, Patent Owner does not address this second test in its briefing. Tr. 39:6–11 (Patent Owner’s counsel acknowledging “[w]e did not address the other prong in the briefing”). Thus, on several bases, we find CN400 is analogous art to the ʼ108 patent and may be properly relied on in our obviousness determination.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,221,108
• Mexichem UK Ltd. v. The Chemours Company FC, LLCInstitution denied
  PTAB · Jul 12, 2019 · IPR2019-00529 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of prevailing on claims 1–11, and it declined to institute the remaining grounds under § 314(a).

  RulingsInstitution decision

  • Skill levelSkill level board ownOther

    “Resp. 7–8. Patent Owner contends that “a POSITA is a person with a masters or doctorate degree in chemistry and/or chemical engineering, and having at least 3 years of experience working on the research, development, manufacture and formulations of HFC, HCFC and HFO compounds and mixtures.” Id. at 8 (citing Ex. 2003 ¶ 23). Patent Owner’s declarant Dr. Thrasher testifies, however, that he has “reviewed Dr. Sandford’s definition of a person of ordinary skill in the art” and his opinions “do not change under Dr. Sandford’s definition.” Ex. 2003 ¶ 24. We agree with the parties that a POSITA would have had an advanced degree in chemistry or chemical engineering, and experience in the research, development, and/or manufacture of hydrofluorocarbons (HFC) and hydrofluoroolefins (HFO), which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions, and we note that our conclusions would be the same under either definition.” slip op. at 6

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

    “under 35 U.S.C. § 282(b), which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b); see also Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (applicable to inter partes reviews filed on or after November 13, 2018). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only 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)). Petitioner does not propose a construction for any of the claim terms. Pet. 21–22. For purposes of this Decision, based on the record before us, we determine that no claim term requires explicit construction.” slip op. at 6

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

    “sufficiently establishes that Rao ’434, Rao ’781, and Rao ’597 disclose compositions comprising HFO-1234yf, 3,3,3-trifluoropropyne, and at least one additional compound, as recited in independent claims 1, and 7 of the ’709 patent, or compositions comprising HFC-245eb, 3,3,3- trifluoropropyne, and at least one additional compound as recited in independent claim 11 of the ’709 patent. The ’709 patent states that the examples present a “general procedure [that] is illustrative of the method used for analyzing the products of fluorination reactions.” Ex. 1001, 12:30– 33. Examples 1, 2, and 3 of the ’709 patent use that procedure to measure the reaction product of (1) vapor phase dehydrofluorination of HFC-245eb to HFO-1234 with fluoride alumina catalyst, (2) pyrolysis of HFC-245eb, and (3) liquid phase dehydrofluorination of HFC-245eb to HFC-1234yf, respectively. Id. at 13:1–14:16. Although the ’709 patent provides the amounts of a number of different reaction products detected in each example, i.e., HFO-1234yf, HFO-1234ze, and HFC-245eb, notably absent is a measurement for 3,3,3-trifluoropropyne. Id. There is no indication, therefore, that the products in the examples of the ’709 patent represent the claimed compositions of the ’709 patent, each of which requires the presence of 3,3,3-trifluoropropyne.” slip op. at 15

  • Burden

    “this result. An experiment reproducing or recreating an example falls within the scope of that example so long as the reproduction is consistent with the teachings of the example, any deviations are immaterial, and the reasons for any deviations are adequately explained. See, e.g., Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345, 1357 (Fed. Cir. 2016) (finding “no clear error” in the district court’s determination that the prior art application’s process was recreated “fairly, accurately, and with no material variation”); Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 n.4 (Fed. Cir. 1995) (finding no error in the district court’s determination that one skilled in the art would have understood that testing departing from the “strict letter” of a prior art example was nonetheless consistent with that example). Based on the current record, we are not persuaded that Petitioner sufficiently establishes that its replication of Rao ’434’s example falls within the scope of the example.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,147,709
• Ditec Solutions, LLC v. Woblleworks, Inc.Rehearing denied
  PTAB · Mar 13, 2019 · IPR2018-01414 · APJ Sheldon M Mcgee · IPR · Rehearing

  The Board denied Ditech’s rehearing request, leaving institution denied because the arguments did not show that the Board misapprehended or overlooked its construction of claims 1 and 13.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: 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. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “held cake decorator extruder” as “a three-dimensional (3D) drawing device” in the ʼ444 patent’s Notice of Allowance. Req. 4; Ex. 1002, 344. When viewed in context, however, we do not share Petitioner’s view that the Examiner’s mere characterization of Young’s extruder as a three-dimensional (3D) drawing device, on its own, rises to the level of a “rejection” of Patent Owner’s arguments distinguishing 3D drawing devices from devices that deposit material in layers over time. Ex. 1002, 317–322.2 In fact, the Examiner provides no discussion whatsoever regarding the “three-dimensional” aspect of Young’s device in the Notice of Allowance, but rather focuses on Young’s internal actuators, motor, and gear train. Id. at 344. Thus, the Examiner’s isolated statement that Young’s device is a three-dimensional (3D) drawing device, without more, is not enough to 2 We disagree with Petitioner’s contention (Req. 5) that Patent Owner’s statements made during prosecution were not sufficiently “clear and unmistakable” to invoke the doctrine of prosecution disclaimer. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003); see also Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378–79 (Fed. Cir. 1998) (explaining how “explicit statements made by a patent applicant during prosecution to distinguish a claimed invention over prior art may serve to narrow the scope of a claim” because “[b]y distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover.”). persuade us that the Examiner was unequivocally rejecting Patent Owner’s construction of “a three-dimensional (3D) drawing device.”” slip op. at 6

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Thus, Petitioner’s Request raises new arguments that could have been raised in its Petition. Specifically, the prosecution histories of both the ʼ444 patent and the ʼ266 application provided ample notice to Petitioner of Patent Owner’s previous claim construction positions. Petitioner could have presented a countervailing claim construction argument in its Petition, but instead raises new arguments here in its Request. These new arguments fail the standard set forth in Rule 42.71(d) at the outset because the Board cannot overlook or misapprehend an argument that was not before it. Nevertheless, we determine that even if these arguments were timely made in the Petition or in a Board-authorized Reply, they do not persuade us that the claim construction for the phrase “three-dimensional (3D) drawing device” as set forth in our Decision was erroneous. Dec. 11.” slip op. at 5

  Claim construction
  Patents in suitUS 9,731,444

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.