• Renesas Electronics Corporation / Renesas Electronics America, Inc. v. Lone Star Silicon Innovations, LLCSome claims unpatentable
  PTAB · Mar 25, 2019 · IPR2017-01869 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 4–6, 9, and 10 are unpatentable as obvious over Igarashi and Tanaka (1999); claims 2 and 7 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “For purposes of our Institution Decision, we accepted the definition of a POSA provided by Dr. Bottoms. Dec. 10–11 (citing Ex. 2001 ¶ 31). Dr. Bottoms provides a “clarification” of the Board’s description, testifying that “[t]he specific industry experience would require process design experience—which is experience beyond managing fabrication equipment.” Ex. 2011 ¶ 36. Dr. Bottoms’ clarification is consistent with the level of skill reflected by the ’330 patent, which discloses process design options for making a low dielectric constant silicon nitride etch stop. Ex. 1001, 5:66-6:24. Dr. Neikirk testifies that, under Dr. Bottoms’ definition, a POSA has a higher degree of skill than under Dr. Neikirk’s definition, and the Board’s adoption of Dr. Bottoms’ definition would not change his opinions regarding obviousness. Ex. 1028 ¶ 14. We find there is little difference between the declarants’ definitions of a POSA, and the outcome of our patentability determinations would be the same, regardless of which definition we accept. For the sake of clarity, we adopt Dr. Bottoms’ definition of a POSA, including the recent clarification. Ex. 2011 ¶¶ 35, 36. We also rely on the cited prior art references as reflecting the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedOther

    “After reviewing the qualifications of Dr. Neikirk and Dr. Bottoms, as set forth in each witness’s declaration and curriculum vitae, we find that each of these declarants has sufficient education and experience related to the subject matter of the ’330 patent to testify regarding the perspective of a POSA at the time of the invention. Ex. 1011 ¶¶ 2, 3; Ex. 1012; Ex. 2002; Ex. 2011 ¶¶ 8–20. See Trial Practice Guide Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018), available at https://go.usa.gov/xU7GP (“TPG Update”), 3 (“A person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’” (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008))). D.” slip op. at 12

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

    “In the Institution Decision, we determined that it was not necessary to resolve the parties’ claim construction dispute. Dec. 9–10. Neither party challenges that determination. Petitioner contends that the asserted grounds of unpatentability apply under either party’s construction for the phrase “etch stop layer of silicon nitride.” Pet. 25 n.3. Patent Owner argues that this phrase is not limited to a layer of pure silicon nitride and allows for the presence of dopants and/or impurities. PO Resp. 8–10. Patent Owner does not, however, rely on its proposed claim construction for any patentability argument. In fact, Patent Owner acknowledges that the silicon nitride materials disclosed in the Low-K References satisfy Patent Owner’s proposed construction. PO Resp. 10. Under these circumstances, we agree with Petitioner that we do not need to resolve the parties’ claim construction dispute. Pet. Reply 2. Accordingly, consistent with the Institution Decision, we determine that we do not need to provide an express construction for any claim term for purposes of resolving 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))). B.” slip op. at 10

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

    “copper interconnects need silicon nitride films as an etch stop, but that such films have a high dielectric constant, which causes an undesirable increase in the effective dielectric constant of the interconnect structure and increased parasitic capacitance, as compared with aluminum interconnects. Ex. 1021, 829-1, 829-2; see Pet. 18; Ex. 1011 ¶¶ 92, 93. As Petitioner correctly points out (Pet. 53–54), Tanaka (1999) cites Igarashi as an example of a copper interconnect system that is degraded by parasitic capacitance due to the high permittivity (dielectric constant) of silicon nitride etch stop films. Ex. 1017, 47-1 n.1. Tanaka (1999) discloses a low dielectric constant silicon nitride etch stop film as a solution to the problem of parasitic capacitance in copper damascene interconnect structures, such as Igarashi’s. Id. at 47-1, 47-2 (“New low-k SiN film, with a permittivity of 5.4 . . . should be the solution to realize Cu damascene interconnects . . . .”). Consistent with these express disclosures, Dr. Neikirk persuasively testifies that “Igarashi identifies a need for a low-k dielectric etch stop layer” and “Tanaka (1999) meets this need.” Ex. 1011 ¶ 94; see Pet. 18 (citing Ex. 1011, § VIII.C., which contains paragraph 94 of Dr. Neikirk’s testimony). Accordingly, we find Petitioner has shown by a preponderance of the evidence that a POSA would have been motivated to use the low dielectric constant silicon nitride etch stop film of Tanaka (1999) as the etch stop layer in the interconnect system of Igarashi. Patent Owner disputes whether Petitioner has established a reasonable expectation of success for the combination of Tanaka (1999)’s low dielectric constant silicon nitride etch stop film and Igarashi’s interconnect structure. PO Resp. 65. Although the Petition does not expressly discuss whether one of ordinary skill in the art would have had a reasonable expectation of success in combining Tanaka and Igarashi to arrive at the claimed invention, Petitioner shows a very close relationship between the teachings of Tanaka (1999) and Igarashi. Pet. 12–13, 17–18, 53–62. As discussed above and argued by Petitioner, Tanaka (1999): (1) cites Igarashi as an example of a copper interconnect system that suffers from parasitic capacitance due to the high dielectric constant of silicon nitride etch stop films, and (2) discloses a low dielectric constant silicon nitride etch stop film as a solution to the parasitic capacitance problem exemplified by Igarashi. Pet. 13, 18, 53–54; Ex. 1011 ¶¶ 74–79, 88–94; Ex. 1017, 47-1 & n.1; Ex. 1021, 829-1, 829-2. Petitioner establishes a reasonable expectation of success for the combination of Tanaka (1999) and Igarashi by demonstrating a strong correlation between the problem discussed by Igarashi—the high dielectric constant of silicon nitride films when used as etch stops for copper interconnects—and the solution disclosed by Tanaka (1999)—a low dielectric constant silicon nitride film for use as an etch stop layer in copper damascene interconnect structures. In re Inland Steel Co., 265 F.3d 1354, 1364 (Fed. Cir. 2001) (“[T]he strength of the correlation between the references gives rise to a reasonable expectation of success from combining them.”).” slip op. at 27

  Patent outcomesUS 6,388,330 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,388,330
• Power Integrations, Inc. v. Semiconductor Components Industries, LLCAll claims unpatentable
  PTAB · Nov 7, 2018 · IPR2017-01329 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 16–18 and 21 are unpatentable as obvious over the combination of Yang ’089 and Yang ’824.

  RulingsFinal written decision

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

    “In consideration of the above, we recognize a programmable signal can be selected to be constant or variable over time. Therefore, in this Decision, we apply the same construction applied in the Decision to Institute, i.e., we construe “programmable signal” to mean a selectable or potentially variable voltage or current signal. We address whether the combination of the references discloses a correlation between the claimed “programmable signal” and the claimed “input of the LED drive circuit” in our analysis of the combination of Yang ’089 and Yang ’824 that appears later in this Decision.” slip op. at 12

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

    “motivated to combine the programmable LED driver of Yang ’089 with the current loop disclosed in Yang ’824 to generate the signal that switches the transistor switch. Pet. 40–41. Yang ’089 controls the current on the primary side on the magnetic device and uses that controlled primary side current to drive the LEDs. Ex. 1004, Fig. 3. Yang ’824 also controls the current on the primary side of the magnetic device (i.e., transformer 10), but provides the output current to the LEDs on the secondary side of the magnetic device. Ex. 1003, Fig. 1. Specifically, “[t]he secondary side switching current IS is determined by the primary side switching current IP and the winding turns of the transformer 10.” Id. at 3:28–30. Petitioner argues that the primary side regulator of Yang ’824 provides safety enhancing galvanic isolation and that Yang ’824 states “it is desirable to provide a control circuit for controlling output current of the power converter at the primary side of the power converter.” Id. at 40 (citing Ex. 1003, 1:18–20). Thus, Petitioner asserts that it would have been desirable to make a primary side controller for controlling LEDs with a programmable input by combining the teachings of Yang ’824 and Yang ’089. Id. (citing Bohannon Decl., Ex. 1008 ¶¶ 101, 105). According to Petitioner, using a programmable input such as that disclosed in Yang ’089 to modulate the output current of the switching signal of the controller, as shown in Yang ’824, uses a known technique to modify a known controller and yields predictable results. Id. at 41.” slip op. at 16

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

    “of the LED by programming delay time T D. PO Resp. 44 (citing Pet. 48– 49). In Yang ’089, there is no clear correlation between the value of VCNT and the input of the LED drive circuit. Although delay T D is a function of the value of VCNT, VCNT in Yang ’089 appears to be a function of the desired LED brightness, independent of an input of the LED drive circuit. Although Petitioner explains that VCNT is programmable and that claim 16 does not recite how the programmable signal is generated, as is the case with all but the embodiment of Figure 2 of the ’764 patent, it remains unclear how VCNT in Yang ’089 is correlated to an input of the LED drive circuit. Pet. Reply 22–24.” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “Mr. Bohannon’s testimony. There need not be a perfect match between the expert’s qualifications and the patent at issue. See SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). It is not necessary for Mr. Bohannon to demonstrate that he spent the bulk of his career designing power supplies. Indeed, to testify as an expert under FRE 702, a person need not be one of ordinary skill, but may be “‘qualified in the pertinent art.’” See B/E Aerospace, Inc. v. MAG Aerospace Indus. LLC, Case IPR2014-01513 (PTAB March 18, 2016) slip op. at 13–14 (Final Written Decision) (sustaining consideration of testimony of expert witness that lacked hands-on experience with the claimed subject matter). We agree with Petitioner that Mr. Bohannon’s experience over 25 years, including his work on “buck and boost” converters and flyback power supplies provides him sufficient experience and knowledge of the claimed subject matter for his opinion to remain of record. Indeed, although the academic background of Patent Owner’s expert, Dr. Holberg, is extensive, his CV and declaration state only that he has “experience with the technology described in the ’764 Patent” including various electrical components and circuits involved (resistors, transformers, switching circuit). Ex. 2001 ¶ 8. Patent Owner’s expert, Dr. Holberg, states that he has designed high frequency synthesizers for hard-disk read-channel applications and started a company where he designed A/D converters, and other circuits, but does not state explicitly that he designed power supplies. Id. ¶ 11. We further note that neither expert’s testimony has been a significant factor in determining the outcome of this proceeding. Our citations to Mr. Bohannon’s testimony mostly concern Patent Owner’s criticism of Mr. Bohannon’s testimony in the Patent Owner Response. For example, Petitioner points out that Patent Owner’s discussion of the “input circuit” limitation in claim 16, alleging that Mr. Bohannon did not appreciate the difference between a wire and a circuit with buffers and other circuit elements, takes Mr. Bohannon’s testimony out of the context of the combination of the references. Opp. To Mot. To Exclude 4–5. Policy considerations for excluding expert testimony, such as those implemented by the gatekeeping framework established by the Supreme Court in Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993), are less compelling in bench proceedings such as inter partes reviews than in jury trials. See, e.g., Volk v. United States, 57 F. Supp. 2d 888, 896 n.5 (N.D. Cal. 1999); In re Bay Area Material Handling, Inc., No. C 95-1163 VRW, 1995 WL 729300, at *6 (N.D. Cal. Dec. 4, 1995). In the context of this proceeding, we can assess adequately each expert’s testimony and assign it appropriate weight.” slip op. at 34

  Patent outcomesUS 9,049,764 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,049,764
• Stingray Digital Group Inc. v. Music ChoiceSome claims unpatentable
  PTAB · Oct 11, 2018 · IPR2017-01191 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1–4 and 6–9 are unpatentable as obvious over Hudson and Dwek; claims 5 and 10–20 were not shown unpatentable because the references do not disclose the genre channel limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner contends a person of ordinary skill in the art pertaining to the ’045 patent, at the time of invention, “would have had at least an undergraduate degree in computer science or electrical engineering, or equivalent experience and, in addition, two years of experience in distribution of digital audio and video via networks.” Pet. 5 (citing Ex. 1003 ¶¶ 11–17). Patent Owner agrees. PO Resp. 6. In considering the issues presently before us, we have adopted and applied Petitioner’s proposed identification of the level of ordinary skill in the art, which is consistent with the ’045 patent and the asserted prior art.” slip op. at 8

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

    “B. CLAIM INTERPRETATION “A claim in an unexpired patent that will not expire before a final written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to Rule 42.100(b)). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification, and absent any special definition, we give claim terms their ordinary and customary meaning. See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.” (internal quotation marks omitted)). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In the Decision on Institution, we instructed the parties to brief the meaning of “a message comprising information indicating that the user desires to view the video identified by the video identifier” as recited in claims 1 and 6; and “in response to receiving the message” as recited in claims 1 and 6. Dec. 24. The parties agreed upon the express meaning of both phrases, PO Resp. 6–7; Reply 2, which we adopt for the purposes of this Final Written Decision. We discern no need to interpret any other phrase expressly for the purposes of this Final Written Decision.” slip op. at 8

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

    “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.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting Ricoh Co., Ltd. v. Quanta Comput. Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008)). Moreover, a reference “must [be] considered for all it taught, disclosures that diverged and taught away from the invention at hand as well as disclosures that pointed towards and taught the invention at hand.” Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 296 (Fed. Cir. 1985) (citation omitted). A reference does not teach away “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy, 567 F.3d at 1327 (quoting In re Fulton, 391 F.3d at 1201). But even if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference. See Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1051 n.15 (Fed. Cir. 2016) (en banc) (noting that, even if a reference “does not teach away, its statements regarding users preferring other forms of switches are relevant to a finding regarding whether a skilled artisan would be motivated to combine the slider toggle in” that reference with the invention of a second reference). Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018). Against this background, we determine that Hudson does not teach away from incorporating the ability to customize playlists as described by Dwek. Hudson never expressly mentions permitting a user to customize its storyboards much less disparages doing so. Dr. Shamos testifies that an ordinarily skilled artisan would have recognized that Hudson’s advantages of providing links to ancillary content along with primary content would be further enhanced if users also had Dwek’s ability to customize the primary content they were viewing. Ex. 1003 ¶¶ 43–46. Dr. Russ’s conclusions otherwise fail to consider each of Hudson and Dwek as a whole, but instead focus narrowly upon specific implementations of delivering media in each reference. Ex. 2109 ¶¶ 49–52. When Hudson and Dwek are considered as a whole, the similarities in their goals suggests their combination. For example, Hudson, by incorporating Headings by reference,3 recognizes that its system is compatible with streaming a wide variety of content including “movies, music videos, educational content, television shows, games, live events, and advertising.” Ex. 1005 ¶ 27. Similarly, Dwek recognizes that its system may deliver more than music; it may also “deliver video or other streaming multimedia content.” Ex. 1006, 4:10:12. Patent Owner argues that because Dwek describes joining a customized, shared channel “in progress,” Dwek’s system only broadcasts streams in a manner akin to live radio. PO Resp. 17. However, Dwek also contemplates starting playback of its user-defined shared channels at the beginning of the user-defined playlist. Id. at 11:27– 33. Based on our review of Hudson and Dwek, we determine that they both describe systems in which users have some degree of control over what content they consume and when they consume it. Ex. 1004 ¶¶ 37–40, Figure 4; Ex. 1006, 1:31–50. We also determine that both systems are designed to facilitate commerce related to the content. Ex. 1004 ¶ 41, 44; Ex. 1006, 3:28–57. Based upon our consideration of Hudson and Dwek as a a whole, we credit the testimony of Dr. Shamos over that of Dr. Russ and conclude that Hudson does not teach away from permitting a user to slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “storyboards much less disparages doing so. Dr. Shamos testifies that an ordinarily skilled artisan would have recognized that Hudson’s advantages of providing links to ancillary content along with primary content would be further enhanced if users also had Dwek’s ability to customize the primary content they were viewing. Ex. 1003 ¶¶ 43–46. Dr. Russ’s conclusions otherwise fail to consider each of Hudson and Dwek as a whole, but instead focus narrowly upon specific implementations of delivering media in each reference. Ex. 2109 ¶¶ 49–52. When Hudson and Dwek are considered as a whole, the similarities in their goals suggests their combination. For example, Hudson, by incorporating Headings by reference,3 recognizes that its system is compatible with streaming a wide variety of content including “movies, music videos, educational content, television shows, games, live events, and advertising.” Ex. 1005 ¶ 27. Similarly, Dwek recognizes that its system may deliver more than music; it may also “deliver video or other streaming multimedia content.” Ex. 1006, 4:10:12. Patent Owner argues that because Dwek describes joining a customized, shared channel “in progress,” Dwek’s system only broadcasts streams in a manner akin to live radio. PO Resp. 17. However, Dwek also contemplates starting playback of its user-defined shared channels at the beginning of the user-defined playlist. Id. at 11:27– 33. Based on our review of Hudson and Dwek, we determine that they both describe systems in which users have some degree of control over what content they consume and when they consume it. Ex. 1004 ¶¶ 37–40, Figure 4; Ex. 1006, 1:31–50. We also determine that both systems are designed to facilitate commerce related to the content. Ex. 1004 ¶ 41, 44; Ex. 1006, 3:28–57. Based upon our consideration of Hudson and Dwek as a a whole, we credit the testimony of Dr. Shamos over that of Dr. Russ and conclude that Hudson does not teach away from permitting a user to 3 Ex. 1004 ¶ 27. customize its content storyboards in a manner akin to Dwek’s customization of musical playlists.” slip op. at 18

  Patent outcomesUS 9,351,045 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,351,045
• Stingray Digital Group Inc. v. Music ChoiceSome claims unpatentable
  PTAB · Sep 20, 2018 · IPR2017-00888 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1, 3, and 4 are unpatentable as obvious over Mackintosh and Hallier; claim 8 was not shown unpatentable as anticipated by Hudson.

  RulingsFinal written decision

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

    “Here, the step of “creating a playlist” that includes an asset “corresponding to the selected video” logically requires completing the step of “receiving . . . information indicating that a user desires to view a selected video.” The “selected video” that must be included in the playlist created in step 8b is not determined until after step 8a is completed. Therefore, step 8a must be completed before step 8b is started.” slip op. at 10

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

    “For the reasons expressed in Part II.A above, we conclude that claim 8 requires the first two steps of the claimed method to be performed in the order recited, which means that users select at least one video to view before playlists are created containing the selected video. Under such an interpretation, Petitioner argues that Hudson describes the required order because Hudson expressly states that the steps illustrated in its Figures 3 and 4 may be performed in any order. Reply 20 (citing Ex. 1005 ¶ 35 (for Figure 3), ¶ 40 (for Figure 4)). However, Hudson’s indications that steps can be performed in any order apply only to each of Figures 3 and 4 individually, and not to the combination of the two figures collectively. In connection with its description of Figure 3, Hudson states “the aforementioned steps need not be performed in a particular order” followed by examples that apply only to steps mentioned in Figure 3. Ex. 1005 ¶ 35. Similarly, while describing Figure 4, Hudson states “the aforementioned steps need not occur in a particular order, or include all steps” followed by examples that apply only to steps mentioned in Figure 4. Ex. 1005 ¶ 40. Hudson never indicates that steps illustrated in Figure 4 may occur before steps illustrated in Figure 3. In Figure 3, Hudson illustrates how its system creates interactive video content, which necessarily must be completed before the steps for delivering interactive video content in Figure 4 are possible. For all these reasons, we determine that Petitioner has failed to establish that Hudson performs the first two steps of claim 8 in the order recited as required. Accordingly, we conclude that Petitioner has not shown by a preponderance of evidence that Hudson anticipates claim 8.” slip op. at 16

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

    “Petitioner acknowledges that Mackintosh recognizes that server 214 may be overloaded by simultaneous requests for URLs from many user terminals. Pet. 13 (citing Ex. 1004, 14:29–36). Petitioner also acknowledges that Mackintosh proposes solutions to reduce the load on server 214 imposed by user terminals requesting URLs that link to supplemental content. Id. at 13–14. Patent Owner’s expert, Dr. Russ, concedes that Petitioner’s proposed modification of Mackintosh would reduce the load on server 214. Ex. 1009, 68:23–69:3. Accordingly, the evidence establishes that Petitioner’s proposed modification of Mackintosh would address the problem of overloading server 214.” slip op. at 28

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “For all these reasons, we ascribe little weight to Dr. Russ’s testimony on this point. Instead, we credit Dr. Shamos’s testimony explaining why a person skilled in the art would find Dr. Russ’s hypothetical dual-mute button solution was “not an ‘attractive’ solution for users, content providers, or advertisers.” Ex. 1010 ¶25. In particular, because the “user would be left with the undesirable choice of muting portions of a broadcast track . . . or muting the audio of the supplemental material — meaning the user will miss some portion of content that he or she is interested in, which is both undesirable and ill-conceived.” Id. Accordingly, we find Petitioner’s position on this point to be persuasive.” slip op. at 25

  Patent outcomesUS 7,320,025 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,320,025
• One World Technologies, Inc. D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.All claims unpatentable
  PTAB · May 15, 2018 · IPR2017-00214 · APJ Justin T Arbes · IPR · Final written decision

  Claims 18–25 are unpatentable as anticipated by Schindler; claims 23 and 24 are also unpatentable as obvious over Schindler and LiftMaster.

  RulingsFinal written decision

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

    “3–5; Tr. 7:15–18. Thus, there is no dispute between the parties as to whether the claims permit identification of only a single activity. By using the plural terms “activities” and “actions,” they plainly do not. This is consistent with how the “learn mode operation” is described in the Specification of the ’611 patent as well. See, e.g., Ex. 1001, col. 4, ll. 13–19 (“controller 208 determines the user activities or steps needed during the learn process”), 51–52 (“Controller responds by identifying the proper beginning status and steps for the user to perform.”), Fig. 6 (block 253). We also agree with Petitioner that “the activities” in claim 18 finds antecedent basis in the “pre-determined activities” recited earlier in the claim (the only other use of the plural term “activities” in the claim), which Patent Owner does not dispute in its Response. See Pet. 20–21; Reply 4–5; Ex. 1012, 6–7 (U.S. International Trade Commission decision in a related investigation involving the ’611 patent, concluding that “the activities” refers to the earlier-recited “pre-determined activities”). Thus, applying the broadest reasonable interpretation of the claims in light of the Specification, we conclude that claim 18 requires identifying at least two “pre-determined activities” and claim 21 requires determining at least two “actions.” No further interpretation is necessary to resolve the parties’ disputes over the asserted grounds of unpatentability in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citations omitted)). No other terms require interpretation for purposes of this Decision.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Neither party explains in detail why the respective proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. The parties’ declarants agree that an ordinarily skilled artisan would have had an undergraduate degree in electrical or computer engineering (or the equivalent) and some amount of work experience. The difference between the two is the substance of that work experience. Mr. Lipoff opines that it would be in “the fields of access control or automated door control systems,” whereas Dr. Davis opines that it would be in “embedded computer systems or related technologies involving microcontrollers.” See Ex. 1003 ¶ 29; Ex. 2001 ¶ 18. Mr. Lipoff’s proposed definition is consistent with the technology at issue in this proceeding. The ’611 patent is directed to “barrier movement operators,” such as “[g]ate operators and garage door operators,” and “human interface methods and apparatus for such systems.” Ex. 1001, col. 1, ll. 6–14. The ’611 patent does not mention specifically “embedded” computer systems, but does disclose that barrier movement operators were known to include a “motor” and “controller” that “selectively energiz[es] the motor to move the barrier” and is “responsive to stimulus signals to perform various barrier movements.” Id. at col. 1, ll. 9–19; see also Ex. 1004, col. 1, l. 7–col. 2, l. 28 (Schindler similarly disclosing that it is directed to “a microprocessor controlled garage door operator,” and describing prior art systems with a microprocessor unit that controls a motor to move the garage door); Ex. 1009, 1 (LiftMaster describing a “Logic Control (Ver. 2.0) Industrial Duty Door Operator”). Thus, an individual having experience working with barrier movement operators would have been familiar with their constituent parts, including motors and controllers for the devices. Based on the record developed during trial, including our review of the ’611 patent and the types of problems and solutions described in the ’611 patent and cited prior art, we conclude that a person of ordinary skill in the art at the time of the ’611 patent would have had at least an undergraduate degree in electrical or computer engineering, or equivalent education, and two years7 of work experience in the fields of access control or automated door control systems, or equivalent work experience or 7 Mr. Lipoff proposes “one to two years” of work experience in this proceeding, but “two years” in related Case IPR2017-00073. See Ex. 1003 ¶ 29; IPR2017-00073, Paper 32, 13–15. We conclude that two years is the appropriate amount, given the disclosure in the ’611 patent and level of complexity of the technology.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “have been motivated to combine the references’ teachings to achieve the methods recited in claims 23 and 24 and would have had a reasonable expectation of success in doing so, again with supporting testimony from Mr. Lipoff. Id. at 71–77; see Ex. 1003 ¶¶ 160–163, 166–167, 171–172. According to Petitioner and Mr. Lipoff, a person of ordinary skill in the art “would have been motivated to incorporate into Schindler the step required by LiftMaster of establishing whether the status of the operator is correct for performing a particular programming activity and instructing the user to start from a proper beginning status before proceeding with certain programing routines,” such as “setting the maximum run timer.” Pet. 71. Specifically, Schindler’s process would be modified (based on the teachings of LiftMaster) to determine that the status of the garage door operator is correct (e.g., the door is closed) or incorrect (e.g., the door is open) for performance of a “first action” (e.g., setting the up limit) and signal the user to start with the door in the closed position (e.g., by illuminating vacation light 28). Id. at 73–77. With respect to a motivation to combine the references’ teachings, Petitioner argues that an ordinarily skilled artisan would have looked to garage door opener owner’s manuals of the time (such as LiftMaster, which, like Schindler, was created by Patent Owner) for guidance on how to instruct a user during installation, would have understood that Schindler’s system could be “improved” by making the modification described above, and would have recognized that requiring the door to be in a certain position would be “simpler for users as they must follow a predefined series of programming steps from a start position to an end position of the door.” Id. at 71–75. We agree with Petitioner’s analysis, which is supported by Mr. Lipoff’s testimony and consistent with the disclosures of the references and the level of ordinary skill in the art set forth above, and adopt it as our own. See supra Section II.C.” slip op. at 38

  Patent outcomesUS 7,196,611 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,196,611
• One World Technologies, Inc. D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.Some claims unpatentable
  PTAB · Apr 24, 2018 · IPR2017-00073 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1–3, 10, and 11 are anticipated by Crimmins; claims 4–8, 12, and 13 are obvious over Crimmins and Weik; claim 14 was not shown unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “evidence, and we find that Crimmins discloses every limitation of claim 1. Petitioner has proven, by a preponderance of the evidence, that claim 1 is anticipated by Crimmins under 35 U.S.C. § 102(b).” slip op. at 32

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Dec. on Inst. 10–13, 17–19. We also preliminarily interpreted the following limitations as means-plus-function limitations under 35 U.S.C. § 112, sixth paragraph: Limitation Interpretation “apparatus for communicating Functions: communicating the the identities of faults in the identities of faults in the operation of operation of the barrier” slip op. at 10

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

    “In its Response, Patent Owner states that Petitioner’s proposed interpretations “introduce concepts that have no basis in the claim’s plain language.” PO Resp. 3–4. Patent Owner, however, does not offer any alternative interpretations or take a position as to whether any of the limitations identified above are means-plus-function limitations under 35 U.S.C. § 112, sixth paragraph. Instead, Patent Owner argues that the claims should be interpreted according to their “plain language” and that “no construction is necessary for any claim term.” Id. at 4. Petitioner adopts our preliminary interpretations. Reply 3. Upon review of the full record from trial, we do not perceive any reason or evidence that compels any deviation from our earlier interpretations. See Dec. on Inst. 7–19. We adopt the previous analysis and conclude that no other terms require interpretation.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Neither party explains in detail why the respective proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. The parties’ declarants agree that an ordinarily skilled artisan would have had an undergraduate degree in electrical or computer engineering (or the equivalent) and two years of work experience. The difference between the two is the substance of that work experience. Mr. Lipoff opines that it would be in “the fields of access control or automated door control systems,” whereas Dr. Davis opines that it would be in “embedded computer systems or related technologies involving microcontrollers.” See Ex. 1003 ¶ 29; Ex. 2006 ¶ 18. Mr. Lipoff’s proposed definition is consistent with the technology at issue in this proceeding. The ’611 patent is directed to “barrier movement operators,” such as “[g]ate operators and garage door operators,” and “human interface methods and apparatus for such systems.” Ex. 1001, col. 1, ll. 6–14. The ’611 patent does not mention specifically “embedded” computer systems, but does disclose that barrier movement operators were known to include a “motor” and “controller” that “selectively energiz[es] the motor to move the barrier” and is “responsive to stimulus signals to perform various barrier movements.” Id. at col. 1, ll. 9–19; see also Ex. 1004, col. 1, ll. 9–13 (Crimmins similarly disclosing that it is directed to “a controller for controlling the motor, interface, safety systems and other functions of a commercial door or barrier operator”); Ex. 1007 ¶¶ 2–5 (Weik similarly disclosing that it is directed to “[a]utomated, motor-driven barriers”). Thus, an individual having experience working with barrier movement operators would have been familiar with their constituent parts, including motors and controllers for the devices. Based on the record developed during trial, including our review of the ’611 patent and the types of problems and solutions described in the ’611 patent and cited prior art, we agree with Mr. Lipoff’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 14

  Patent outcomesUS 7,196,611 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,196,611
• F5 Networks, Inc. v. Radware, Ltd.Some claims unpatentable
  PTAB · Apr 23, 2018 · IPR2017-00124 · APJ David C Mckone · IPR · Final written decision

  Claims 1, 2, 4, 6–15, 17, and 19–24 are unpatentable; claims 5 and 18 are not. Substitute claim 29 is allowed, while claims 25–28 are denied for lack of written-description support.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “V.CONCLUSION Petitioner has proved by a preponderance of the evidence that claims 1, 2, 4, 6–15, 17, and 19–24 are unpatentable, but not claims 5 and 18. We grant Patent Owner’s Motion to Amend to replace claim 13 with substitute claim 29, and deny the motion to replace claims 7, 8, 19, and 20 with substitute claims 25–28. Patent Owner’s Motion to Exclude is denied. VI. ORDER For the reasons given, it is: ORDERED, based on a preponderance of the evidence, that claims 1, 2, 4, 6–15, 17, and 19–24 are unpatentable; FURTHER ORDERED, based on a preponderance of the evidence,” slip op. at 69

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “were associated with ranges of IP addresses and, thus, “[o]ne of ordinary skill would have understood that modifying the source IP address of an outgoing packet to match an external IP address corresponding to the selected ISP WAN link necessarily entailed selecting an IP address from a range of IP addresses associated with that ISP.” Pet. 33 (citing Ex. 1012 ¶¶ 167–173). Dr. A. Rubin, however, only testified that “[o]ne of ordinary skill in the art at the time of the invention would have understood that ISPs were typically associated with a range of IP addresses.” Ex. 1012 ¶ 172 (emphasis added). Although this might be sufficient to establish that an ISP in Veerina probably would have been associated with a range of IP addresses, it is not sufficient to show that such an ISP necessarily would have been associated with a range of IP addresses. Additional testimony of Dr. A. Rubin makes clear that he is speculating as to how Veerina’s system could have operated rather than how it necessarily must have operated: one of ordinary skill in the art at the time of the invention would have understood that modifying the source IP address of an outgoing packet to reflect an external IP address corresponding to the selected WAN Link for an ISP could involve selecting from a range of IP addresses associated with that ISP.” slip op. at 29

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner’s Declarant, Dr. Guerin, defines a person of ordinary skill in the art to have “at least a Bachelor of Science degree in computer science or computer engineer[ing] (or equivalent experience) with several years of experience in design and deployment of Internet networking technology,” and “several years of experience with the operation and management of Internet networking technology and systems as well.” Ex. 2010 ¶ 16. In the Institution Decision, we adopted Patent Owner’s definition of a skilled artisan. Dec. 12–13. Neither party challenges that determination, and we maintain it on the complete record.” slip op. at 37

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

    “Patent Owner contends that “weighted function of at least one of,” recited in claims 6, 9, and 21, means a “function in which one or more attributes is given a weight.” PO Resp. 9–10. Patent Owner argues that this is the construction given by a district court to “weighed function of at least one of,” a similar term appearing in a claim of a related patent. Id. at 9 (quoting Ex. 1011, 14–15). Petitioner contends that this term need not be construed, but does not oppose the district court construction or offer an alternative. Reply 2. For purposes of this decision, we adopt the district court construction. B. Anticipation by Veerina Petitioner argues that claims 1, 2, 4–9, 13–15, and 17–21 are” slip op. at 10

  Patent outcomesUS 9,231,853 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,231,853
• Fedex Corp. v. Human Sciences HC Ltd.Rehearing denied
  PTAB · Mar 30, 2018 · IPR2017-01761 · APJ Christa P Zado · IPR · Rehearing

  The Board denied FedEx’s rehearing request, leaving its denial of institution unchanged because the Petition did not show that Richards discloses an agent monitoring physical location.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. LEGAL STANDARD A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. “When rehearing on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “construction arguments, they do not persuade us to modify our construction of the term “agent.” Petitioner’s new arguments underestimate the significance of the linguistic conventions employed by the patentee in the ’138 patent specification. When the specification provides a special definition for a claim term that differs from its ordinary meaning, then “the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc); see also Sinorgchem Co v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007); 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1374 (Fed. Cir. 2003). Here, the ’138 patent specification uses linguistic conventions characteristic of patentee lexicography. The claim term is set off by quotation marks, is preceded by the words “the term,” and is followed by the words “refers to.” Ex. 1001, 4:42–48. These linguistic conventions unmistakably identify what follows as an express definition for the term, “agent.” Sinorgchem, 511 F.3d at 1136 (claim term “is set off by quotation marks—often a strong indication that what follows is a definition”); see also Medicines Co. v. Mylan, Inc. 853 F.3d 1296, 1306 (Fed. Cir. 2017) (“in defining terms, the patentees use[d] a similar format: the defined term in quotation marks, followed by the terms ‘refers to’ or ‘as defined herein’”) (internal quotation marks omitted). Petitioner’s arguments in the Request do not persuade us to ignore the patentee’s clear, deliberate, and unambiguous intent to define the term “agent” in the ’138 patent specification. Regarding dependent claim 2, we are not persuaded by Petitioner’s argument that the claim creates a presumption that location monitoring is not a requirement of the term “agent.” Req. Reh’g 12–13. Claim 2’s recitation of a “position guidance system” and “position data” is narrower than the phrase “monitoring a physical location,” and therefore, is not duplicative. Ex. 1001, 11:47–50. Petitioner admits as much in the Request, arguing that “the phrase ‘for monitoring a physical location’ is broad and does not require monitoring a specific type of location, e.g., GPS coordinates, latitude/longitude, street address, home/away status, etc.” . Req. Reh’g 14.” slip op. at 5

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

    “Notwithstanding the ’138 patent specification’s express definition of “agent,” the Petition makes no attempt to show that Richards discloses an “agent” that monitors physical location of a cargo container. See, e.g., id. at 22, 59. Instead, the Petition relies on its argument that the feature “monitoring a physical location” need not be shown because it is “superfluous of claim language and unnecessary in the construction.” Id. at 6. The arguments Petitioner presents in its Request were not presented in the Petition, and therefore, could not have been misapprehended or overlooked by the Board. Accordingly, we are not persuaded to modify our Decision. IV. CONCLUSION After considering Petitioner’s arguments for rehearing, we determine Petitioner has not shown that the Decision denying institution of inter partes review should be modified. V. ORDER Accordingly, it is: ORDERED that the Request for Rehearing is denied.” slip op. at 7

  Claim constructioncites Phillips
  Patents in suitUS 7,046,138
• Fedex Corp. v. Human Sciences HC Ltd.Rehearing denied
  PTAB · Mar 30, 2018 · IPR2017-01830 · APJ Christa P Zado · IPR · Rehearing

  The Board denied FedEx’s rehearing request and left institution in place, finding no overlooked matter on the agent construction or the Richards ground.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. LEGAL STANDARD A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. “When rehearing on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “construction arguments, they do not persuade us to modify our construction of the term “agent.” Petitioner’s new arguments underestimate the significance of the linguistic conventions employed by the patentee in the ’037 patent specification. When the specification provides a special definition for a claim term that differs from its ordinary meaning, then “the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc); see also Sinorgchem Co v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007); 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1374 (Fed. Cir. 2003). Here, the ’037 patent specification uses linguistic conventions characteristic of patentee lexicography. The claim term is set off by quotation marks, is preceded by the words “the term,” and is followed by the words “refers to.” Ex. 1001, 4:47–53. These linguistic conventions unmistakably identify what follows as an express definition for the term, “agent.” Sinorgchem, 511 F.3d at 1136 (claim term “is set off by quotation marks—often a strong indication that what follows is a definition”); see also Medicines Co. v. Mylan, Inc. 853 F.3d 1296, 1306 (Fed. Cir. 2017) (“in defining terms, the patentees use[d] a similar format: the defined term in quotation marks, followed by the terms ‘refers to’ or ‘as defined herein’”) (internal quotation marks omitted). Petitioner’s arguments in the Request do not persuade us to ignore the patentee’s clear, deliberate, and unambiguous intent to define the term “agent” in the ’037 patent specification. Regarding dependent claim 3, we are not persuaded by Petitioner’s argument that the claim creates a presumption that location monitoring is not a requirement of claim 1. Req. Reh’g 11–12. Claim 3’s recitation of a “position guidance system” and “position data” is narrower than the phrase “monitoring a physical location,” and therefore, is not duplicative. Ex. 1001, 11:50–53. Petitioner admits as much in the Request, arguing that “the phrase ‘for monitoring a physical location’ is broad and does not require monitoring a specific type of location information, e.g., GPS coordinates, latitude/longitude, street address, etc.” Req. Reh’g 13.” slip op. at 5

  • BurdenDecided for patent owner

    “The pages of the Petition identified in the Request do not include argument that monitoring the physical presence/absence of assets such as cargo satisfies the “monitoring a physical location” requirement. Req. Reh’g 12–13 (citing Pet. 18, 21, 22, 29, 43, 63, 66, 70). For example, at page 22 of the Petition, Petitioner argues physical presence is a type of physical security of an asset, but nowhere argues monitoring physical presence is a type of monitoring physical location of the asset. Id. at 22. The other cited pages of the Petition also do not argue that the agent’s function of monitoring physical presence/absence satisfies the requirement of “monitoring a physical location.” Id. at 18, 21, 29, 43, 63, 66, 70. To the extent the Petition mentions Richards’ disclosure of monitoring physical presence/absence, Petitioner does not argue Richards discloses an agent that monitors the physical location of an asset by monitoring the asset’s physical presence/absence. See, e.g., id. at 22, 67. Notwithstanding the ’037 patent specification’s express definition of “agent,” the Petition makes no attempt to show that Richards discloses an “agent” that monitors physical location of a cargo container. See, e.g., id. at 21, 50, 52. Instead, the Petition relies on its argument that the feature “monitoring a physical location” need not be shown because it is “superfluous of claim language and unnecessary in the construction.” Id. at 5. The arguments Petitioner presents in its Request were not presented in the Petition, and therefore, could not have been misapprehended or overlooked by the Board. Accordingly, we are not persuaded to modify our Decision.” slip op. at 7

  • Strike new argumentNew argument disregardedDecided for patent owner

    “A rehearing request is not a supplemental petition. Nor is it an opportunity to present new arguments or evidence that could have been presented and developed in the first instance in the Petition. We could not have misapprehended or overlooked arguments or evidence that were not presented or developed in the Petition. Petitioner offers no explanation as to why its new claim construction arguments were not made in the Petition. The Petition recognizes the ’037 specification expressly defines the term “agent.” Id. The Petition quotes the ’037 specification’s definition and proposes a construction that adopts only a portion of that construction. Id. The Petition asserts that we should disregard the remaining portion of the definition, which requires monitoring a physical location of a cargo container, is superfluous of language appearing elsewhere in the claim. Id. Accordingly, the Petition places at issue whether the term “agent” should be construed to require monitoring a physical location of a cargo container. At the Petition stage, however, Petitioner chose to provide only the single argument noted above, and did not present any of the new arguments raised for the first time in the request for rehearing.” slip op. at 4

  Claim constructioncites Phillips
  Patents in suitUS 7,209,037
• Fedex Corp. v. Human Sciences HC Ltd.Institution denied
  PTAB · Feb 6, 2018 · IPR2017-01761 · APJ Christa P Zado · IPR · Institution

  The Board denied institution because FedEx did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “Petition”) pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of claims 11–13, 15, 22, 26, 27, 33–35, and 44 of U.S. Patent No. 7,046,138 B2 (Ex. 1001, “the ’138 patent”). Human Sciences HC Ltd. (“Patent Owner”)1 did not file a preliminary response to the Petition, and therefore waived its right to do so. 37 C.F.R. § 42.107. Applying the standard set forth in 35 U.S.C. § 314(a), which authorizes institution of an inter partes review when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” we deny the petition for an inter partes review based on our determination that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “Departure from the ordinary and customary meaning of a claim term is appropriate when a patentee acts as its own lexicographer. GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (citing Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). “In order to act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term,’ and ‘clearly express an intent to define the term.’” Id. (quoting Thorner, 669 F.3d at 1365). Here, the ’138 patent specification clearly expresses the patentee’s intent to define the term “agent,” and clearly sets forth a definition: [i]n this disclosure, the term “agent” refers to a self-powered electrical or electromechanical sensing and communicating device for monitoring a physical location and a security status of a cargo container, also referred to as a communicating intelagent® agent (CIA), a pallet trakker® agent, or a fixed intelagent® agent (FIA) depending on the usage of the agent. Ex. 1001, 4:42–48. Petitioner urges us to adopt some, but disregard other, portions of the definition set forth in the ’138 patent specification. Pet. 6. Petitioner argues we should disregard the requirement that an “agent” monitor a physical location and a security status of a cargo container on grounds that the language “for monitoring . . .” is “superfluous of the claim language.” Id. Petitioner does not explain why this language is superfluous, nor cite any legal authority to support its proposition that we should disregard part of the definition provided in the ’138 patent specification. See id. Therefore, in accordance with the express definition set forth in the ’138 patent specification, our preliminary construction of the term “agent” is “a self-powered electrical or electromechanical sensing and communicating device for monitoring a physical location and a security status of a cargo container.” Our claim construction at this stage of the proceeding is not final.” slip op. at 8

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

    “However, Petitioner does not address sufficiently the requirement that the agent must be a device for monitoring a physical location of a cargo. As we discussed above, we reject Petitioner’s proposal to construe the term “agent” in a manner that ignores the express definition set forth in the ’138 patent specification, which recites monitoring a physical location of a cargo. See supra Section II.A.1. Accordingly, Petitioner must show this feature is taught by the asserted prior art references. We note that Petitioner identifies Richards’ disclosure regarding the desirability of monitoring the location and status of cargo, Pet. 12, 18, 37 (citing Ex. 1005 ¶¶ 7, 14), but Petitioner has not explained whether or how the asserted “agent” in Richards (i.e., sensor 1126 and transmitter 1132) monitors location, as required by claim 11. In a petition for inter partes review for a patent related to the ’138 patent, Petitioner acknowledges that determining location in Richards is not performed by Richards’ agent, but instead is performed elsewhere (i.e., in Richards’ asset monitor 1114). FedEx Corp. v. Human Sciences HC Ltd., Case IPR2017-01830, petition for inter partes review at 94 (PTAB July 12, 2017) (Paper 2). In this proceeding, Petitioner has not provided sufficient explanation of how the asserted “agent” of Richards includes location monitoring, or why it would have been obvious to include this feature in Richards. We further note that Petitioner identifies Richards’ disclosure that the transmitter 1132/sensor 1126 (the asserted “agent”) can monitor the “physical presence” of an asset. Pet. 14, 20, 23, 24, 29, 51 (citing Ex. 1005 ¶ 20); see also id. at 52, 68 (quoting Richards’ disclosure of monitoring particular assets, such as crates of chocolate bars, hospital patients and equipment, animals, and prisoners). Petitioner contends, however, that “physical presence is a type of physical security of the asset.” Id. at 23. Petitioner presents no argument that Richards’ disclosure of monitoring “physical presence” of an asset meets the requirement of monitoring a physical location. Instead, Petitioner relies on its argument that this aspect of the definition is “superfluous of claim language and unnecessary in the construction.” Pet. 6.” slip op. at 15

  Claim construction§ 103 obviousness
  Patents in suitUS 7,046,138

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.