- Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Rehearing deniedPTAB · Mar 6, 2017 · IPR2016-00586 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Xactware’s rehearing request, leaving in place the denial of institution on all challenged claims because the petition did not sufficiently explain how Verma taught the pitch determination marker.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner’s argument regarding what is taught to a POSITA, however, was not explained sufficiently in the Petition and was not tied to any explanation of how and if handles and operations work together. In the Decision, we noted that “Petitioner cites both Verma’s handles and operations without explaining sufficiently how these elements would interact.” Dec. 11 (citing Pet. 13, 19–20). We are not persuaded that this determination was in error.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“incorporate Verma’s handles and operations. Req. Reh’g 4. This argument, however, misstates our analysis. In the Decision, we stated that it was “not sufficient for Petitioner to point out different teachings that were available in the prior art; instead, Petitioner must sufficiently articulate a rationale for the combination.” Dec. 11 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The interaction or integration of these various teachings does not require that the disparate elements of Verma be integrated physically. We, instead, were looking for a discussion of how one of ordinary skill in the art would view these teachings and what one of ordinary skill would learn from the combination. Petitioner has not supplied us with a sufficient explanation as to how one of ordinary skill would combine the knowledge gleaned from these passages and, as such, we were not persuaded that Petitioner had put forth a sufficient showing.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner
“combine teachings found in a single reference. Req. Reh’g 13–15. Petitioner argues that “[b]y restricting the teachings of Verma to individual embodiments, the Board failed to evaluate Verma in its entirety and as a whole for all that it teaches and suggests to a POSITA.” Id. at 14 (citing Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 1093–94 (Fed. Cir. 1985). Panduit, however, does not support Petitioner’s proposition. In that case, the Federal Circuit spoke to the dangers of “disregard[ing] the decisional parameters governing the proper evaluation of prior art.” Panduit, 774 F.2d at 1094. As described in that case, the first “fundamental error[]” is the “picking and choosing of [elements] either absent from the prior art references or there disclosed in entirely distinct form, characteristics, and relationships” without considering the portions of the art that would argue against obviousness. Id. Thus, Panduit, does not support the blurring together of various embodiments and techniques disclosed in a reference in order to support a claim of obviousness. It instead cautions against the dangers of overlooking important differences between the cited art and the challenged claims. The Federal Circuit has long cautioned that “[o]ne cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention.” SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1360 (Fed. Cir. 2000) (quoting In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988)). The Supreme Court has noted that “in most, if not all, instances [inventions] rely upon building blocks long since uncovered.” KSR, 550 U.S. at 418. Thus, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. Thus, the Supreme Court and Federal Circuit precedents instruct us to avoid hindsight reasoning by seeking articulated reasoning with rational underpinnings to explain why the cited teachings should be combined. See id. at 418–19. Petitioner’s papers, however, lacked an explanation as to how and why the various teachings of Verma would come together to teach one of ordinary skill in the art the recited pitch determination marker. Thus, for all of the foregoing reasons, we are not persuaded of error in the Decision.” slip op. at 8
§ 103 obviousnesscites KSRPatents in suitUS 8,170,840 - Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 30, 2016 · IPR2015-01509 · APJ Jason J Chung · IPR · Final written decision
Claims 26, 29, 30, 33, 42, 43, 48, 60, and 68 are unpatentable as anticipated by Frossard or Pagliaroli, or obvious over the stated combinations.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for petitioner
“In that 2007 filing, the term “signal” was defined as “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Ex. 2002, 11. We are persuaded that this definition is instructive to understanding the proper scope of these claim terms. Thus, a first signal, for example, is an “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information that is sent by a first device.” We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third device.” For convenience, this claim construction is reproduced in the table below.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are not persuaded that Mr. McNamara’s statements on cross examination are sufficient reason to accord his testimony little or no weight. The prosecution history is an important element in understanding the claims of a patent. We are persuaded that the statements made during cross examination appear to misstatements as to Mr. McNamara’s review of the patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury and he has made other statements consistent with his testimony under oath stating that he reviewed the prosecution history. See Ex. 1003 ¶ 14; Ex. 2003, 154:11–20. Mr. McNamara signed his declaration on June 24, 2015, which states that he read the ’130 patent and its prosecution history. Ex. 1003 ¶ 14. Although Mr. McNamara testified that he did not read the prosecution history (Ex. 2003, 153:11–15), Patent Owner ignores Mr. McNamara’s other statements that demonstrate that he reviewed the prosecution history (id. at 154:11–20). In addition, Mr. McNamara’s statement was during a lengthy deposition approximately nine months after Mr. McNamara signed his declaration. Mr. McNamara’s inconsistent testimony appears to illustrate a momentary lapse in memory. Compare e.g., id. at 153:11–15, with id. at 154:11–20. Moreover, the only claim terms Mr. McNamara defined in view of the prosecution history of the ’130 patent were “automatically” and “automatically received,” which neither party contests. Compare PO Resp. 10–16; Reply 1; Pet. 8–9, with Ex. 1020, 26. In addition, we are not persuaded that Mr. McNamara’s statement that he did not review the prosecution history of the ’130 patent displays a lack of understanding of the prosecution history because Patent Owner did not define any claim terms at issue in this proceeding that overlap with claim terms defined during the prosecution of the ’130 patent. Compare PO Resp. 10–16, with Ex. 1020, 26.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Patent Owner attempts to limit “control device” improperly in a way that contradicts Patent Owner’s proposed claim construction. As discussed supra, “control device” is construed as “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” We agree with Petitioner that Frossard’s server 1 and resource 2 discloses the claimed “second control device” because Patent Owner’s proposed definition of “control device” can comprise “part of a device”; it follows that a device can comprise multiple parts. Also, because a “control device” is a type of device, a “control device” can include necessarily multiple parts. We also determine that because Patent Owner acknowledged, in its own definition, that “control device” means “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions” (emphases added), it necessarily follows that the “or” implies that a control device can include multiple parts. Tr. 32:15–19. For example, a “control device” can be “[1] a device or [2] a computer”; in other words, logic dictates that the “or” can be interpreted as an “and” such that a “control device” can be “[1] a device and [2] a computer.” Id. Moreover, during oral hearing, Patent Owner acknowledged Frossard’s server 1 is a “computer” and Frossard’s resource 2 is a “device.” Id. at 34:14–35:11 (In response to the question, “[s]o you are saying that a server can’t be a device,” Patent Owner acknowledged “[a] server is a computer, and broadly, if you consider a computer a device, a server is a device.”) (In response to the question “resource 2 or indicating a network number 2, is that a device as well?” Patent Owner acknowledged “resource 2 has a coder and has a transmitter. I would say it is a computer, but in a broad sense it can be considered a device.”). Using Patent Owner’s acknowledgement during the oral hearing, it follows that Frossard’s server 1 and Frossard’s resource 2, together, discloses a “control device” under Patent Owner’s proposed definition of “control device.” Furthermore, Figure 1 illustrates that Frossard’s server 1 and resource 2, together, form a control device generating and transmitting a signal. Ex. 1005, Fig. 1. Frossard’s server 1 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of generating the message order M (i.e., the claimed “second signal”). Id. at 4– 5. In addition, Frossard’s resource 2 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of transmitting the order message M (i.e., the claimed “second signal”). Id.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Petitioner and Mr. McNamara that it would have been obvious to a person having ordinary skill in the art to combine Frossard’s system with Pagliaroli’s theft sensor 12 to provide a system for remotely disabling or enabling a vehicle that also provides a notification when it detects tampering or theft. Patent Owner fails to proffer any rationale or evidence for why the combination of Frossard and Pagliaroli would destroy the functionality of Frossard. Further, Patent Owner fails to proffer its own expert testimony refuting Petitioner’s arguments and Mr. McNamara’s opinion. Patent Owner’s arguments are conclusory attorney argument. Patent Owner’s argument that Pagliaroli does not provide a teaching or suggestion that its theft sensor 12 can function as Frossard’s receiver-decoder circuits 4 is improper because Petitioner argues for combining (rather than replacing) Pagliaroli’s theft sensor 12 and Frossard’s receiver-decoder circuits 4. In addition, Patent Owner is incorrect because any teaching or suggestion need not be found in the reference itself.” slip op. at 37
Patent outcomesUS 6,549,130 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,549,130 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 29, 2016 · IPR2015-01466 · APJ Stacey G White · IPR · Final written decision
Claims 22, 29, 31, 32, 39, and 40 are unpatentable as anticipated by French; claim 27 is unpatentable as obvious over French and Caglayan.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“skill in the art. Id. at 16. Mr. Bennett testified that a person of ordinary skill would have “a bachelor’s degree in engineering or equivalent coursework and at least two years of experience in networked systems.” Id. (quoting Ex. 1002 ¶ 18). Mr. Bennett, however, does not have a degree in engineering and he has limited coursework in the field. Id. at 16–21. Thus, according to Patent Owner his testimony should be accorded little to no weight because he does not meet his own definition of a person of ordinary skill in the art. Id. This argument is not persuasive. Our reviewing court has noted that “[t]he ‘person of ordinary skill in the art’ is a theoretical construct used in determining obviousness under § 103, and is not descriptive of some particular individual.” Endress + Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) (citing Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 963 (Fed. Cir. 1986)). The Federal Circuit has instead examined whether the purported expert has substantial credentials that would allow the judge to permit testimony from the purported expert. Id. Under the Federal Rules of Evidence, the question is whether Mr. Bennett has “scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702; see also Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Rule 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art”). We are persuaded that Mr. Bennett has such credentials. Mr. Bennett has nearly 40 years of experience in networked systems (Reply. 14 (citing Ex. 1019, 210:2–9)) and is a named inventor in four issued patents dealing with networked systems (id. (citing Ex. 1003, 4–5; Ex. 1019, 49:15–50:10)). Patent Owner did not raise any substantive issues with Mr. Bennett’s experience or knowledge; instead, it only argued that Mr. Bennett did not have sufficient classroom education. We find that Mr. Bennett’s work experience, research, and industry participation are sufficient to provide the expertise necessary to assist us in this matter.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We find Petitioner’s argument to be persuasive. We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third (communications) device.” The recited signals all are construed to be “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Finally, we are not persuaded that these terms exclude signals that may pass through an intermediary. Further, we are persuaded that the claims are broad enough to encompass situations in which an intermediary may append additional information to the received signals.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“second processing device because “there is an intermediate device between the local control module 38a and the central control system 20 that receives the ‘first signal’ from the local control module 38a and then subsequently generates and sends a ‘second signal’ to control system 20.” PO Resp. 25– 26 (citing Ex. 2012 ¶ 18); see also id at. 30–31. Dr. DiEuliis testified that “Global Control Module 30a assembles the data from the Local Control Module 38a and other modules, it generates a signal that contains all of this information and transmits it on network 32, where it is received by the Central Control System 20.” Ex. 2012 ¶ 22 (citing Ex. 1005, 6:43–53). As discussed above, we are not persuaded that the claims exclude systems with intermediate devices such as French’s global control module. See § II.B.2. As noted by Dr. DiEuliiss, French’s global control module transmits a signal to the central control module that “contains all of [the information received from the local control module].” Ex. 2012 ¶ 22. Pursuant to our construction, the signal received by the central control module (second control device) is the first signal because it contains all of the information sent by the local control module (first device). Thus, we do not find Patent Owner’s argument to be persuasive and we are persuaded by Petitioner’s arguments regarding the disclosures of French. Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French discloses the limitations of claim 22. See Pet. 19– 28. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of independent claim 22 over the disclosures of French.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Desktop, Internet, and Intranet Agents. Ex. 1006, 1. Caglayan describes how intelligent agents manage tasks such as notifying users of events of significance. Id. at 66. Petitioner argues that it would have been obvious to use Caglayan’s intelligent agents in French’s automation system to further automate the remote monitoring system and more efficiently monitor the data received from the building equipment and systems remotely. Pet. 35– 36 (citing Ex. 1002 ¶¶ 41–44). We find this rationale to be reasonable. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French and Caglayan teach the limitations of claim 27. See Pet. 33–36. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of claim 27 over the combined teachings of French and Caglayan.” slip op. at 19
Patent outcomesUS 6,542,077 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,542,077 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 22, 2016 · IPR2015-01477 · APJ Howard B Blankenship · IPR · Final written decision
Claims 30, 33, 53, and 85–88 are unpatentable by disclaimer; claims 33 and 90 are also unpatentable as obvious over Fuhr, but not anticipated by Goldberg.
RulingsFinal written decision- Adverse judgmentAdverse judgmentUnpatentable
“Patent Owner states that it “hereby disclaims claims 30, 53, and 85‒ 88.” PO Resp. 21. Patent Owner does not present any arguments in its Patent Owner Response directed to those claims. A review of the USPTO electronic file of the ʼ046 patent indicated that Patent Owner had not filed a statutory disclaimer. In an Order entered December 7, 2016, we notified Patent Owner that if it failed to file a notice in this proceeding indicating that it has filed a statutory disclaimer for claims 30, 53, and 85‒88 in the patent, the claims will be held unpatentable. Paper 28. The period provided for filing of such notice has passed without response from Patent Owner. See id. at 2. Accordingly, we determine that claims 30, 53, and 85‒88 are 1 Time Warner Cable Inc. and iControl Networks, Inc. also were named as petitioners. We granted a joint motion to terminate the inter partes review with respect to those parties. Paper 22. unpatentable. The patentability of claims 33 and 90 remain for consideration in this Final Written Decision.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“objections with respect to Mr. Bennett’s testimony, nor sought to preclude him from testifying as an expert witness. In any event, to testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). We give appropriate weight to the testimony of Mr. Bennett as an individual with more than 30 years of industry experience in computers and networking, including the development of real-time video collaboration tools (Ex. 1003, 2) and software for a video-on-demand server (Ex. 1002 ¶ 12). See generally Ex. 1002 ¶¶ 5‒12; Ex. 1003 (CV).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We construe “video information” to mean “data or information containing, pertaining to or representing, an image or images or a photograph.” PO Resp. 12; see also Prelim. Resp. 25. Patent Owner submits that “real-time video information” should be construed as synonymous with “live video information,” with each meaning “video information” that is broadcast or transmitted as the video information event occurs. PO Resp. 13‒14. Patent Owner refers to a Memorandum and Order from the U.S. District Court for the Southern District of New York, which construes those terms in the ʼ046 patent. Id. (citing Ex. 2013, 17). We adopt the construction set forth by the District Court and as advocated by Patent Owner. Petitioner does not oppose that construction. See Pet. Reply 2 (“Petitioners have no issue with the wording of this construction, provided it is understood that the construction does not require instantaneous transmission of video information.”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Anticipation is established only when a single prior art reference discloses, expressly or under principles of inherency, each and every element of a claimed invention.” RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). “The identical invention must be shown in as complete detail as is contained in the patent claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The expert testimony upon which the Petition relies does not provide sufficient support for anticipation. Mr. Bennett submits that the camera disclosed in Goldberg “is capable of capturing and transmitting individual images, as well as live video.” Ex. 1002 ¶ 38 (emphasis added). His Declaration does not allege that the artisan would understand that Goldberg discloses a system that includes live video. Further, Goldberg’s description of “two possible fixes” for a live video feed (Ex. 1006, 210 n.1) is in the form of an invitation for the artisan to investigate possible ways to supply a live video feed, as opposed to describing an invention in terms such that the ordinary artisan would be placed in possession of it. See In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention ‘such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.’” (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA 1962))). Goldberg, however, describes a system having “a limited level of teleoperation.” Ex. 1006, 210 (§ 2). slip op. at 11
Patent outcomesUS 6,587,046 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 6,587,046 - Finjan Holdings, Inc. v. Sophos LimitedAll claims unpatentablePTAB · Nov 30, 2016 · IPR2015-01405 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1, 11, and 12 are unpatentable under § 103 over Lee and Cooley (claims 1 and 12), and Lee, Cooley, and Tuvell (claim 11); also over Farley and Cooley (claims 1 and 12), and …
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“On this record, we determine that Petitioner’s construction is consistent with the plain and ordinary meaning of “ranked” and requires no construction.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“party is definitive because the way the evidence is presented is contradictory. We begin our analysis with the words used in the claims. “The usage of the disputed claim terms in the context of the claims as a whole also informs the proper construction of the terms.” Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1351 (Fed. Cir. 2003) (citations omitted). Claims 1 and 12 recite that “malicious behavior indications” are compared to “phenotypes,” as construed above. As a result of the comparison, the phenotypes “are ranked to create increasing levels of confidence that a runtime object is executing a behavior pattern comparable to a known family of malware.” It is only in the context of the comparison that the ranking occurs. There is no explanation in the specification or otherwise as to why the phenotypes would be ranked apart from and prior to the comparison being made. The reason for the comparison between the “malicious behavior indications” and the “phenotypes” is to identify the most problematic phenotype, which is “ranked” according to how similar it is to the “executing computer program.” To the extent there is a grammar issue raised, we agree with Petitioner’s evidence that “the past participle form of a verb merely ‘signifies ‘perfectiveness’ or completion, but is not restricted to past time.’” Pet. Reply 4 (citing Ex. 1023, 282, 286–87; Ex. 1024, 409). This is consistent with our plain and ordinary meaning analysis immediately above.” slip op. at 11
- Skill levelSkill level board ownOther
“substantially similar. Petitioner asserts a person of ordinary skill would have an undergraduate degree “in Computer Science or a comparable subject and at least five years of work experience in either the field of intrusion detection or in malware detection; or (ii) an advanced degree (or equivalent) in Computer Science or a comparable subject and at least one year of post-graduate research or work experience in either the field of intrusion detection or in malware detection.” Pet. 17–18 (citing Ex. 1020 ¶ 33). Patent Owner’s proposed level of ordinary skill is a “bachelor’s degree or the equivalent in computer science, computer engineering, or a related degree, and three to four years of experience in the field of Internet software, including anti-virus and other malware, or equivalent work experience.” PO Resp. 8–9 (citing Ex. 2001 ¶¶ 17–20). Both proposals are similar in requiring at least an undergraduate degree and between three to five years of experience. Accordingly, we find that the person of ordinary skill has an undergraduate degree in computer science, computer engineering, or a related or comparable degree and at least four years of work experience in the field of Internet software, including anti-virus or intrusion or malware, detection, or equivalent work experience.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We are not persuaded by Dr. Sauer’s testimony that substituting Lee’s behavior analysis for Cooley’s would not have been obvious to a person of ordinary skill in the art. Ex. 2001 ¶ 58. Dr. Sauer’s opinion is based on the length of time difference between Lee and Cooley and the related “worst of all” problem that occurs “long after startup.” Ex. 2001 ¶¶ 56–58; see PO Resp. 19–20. Neither Patent Owner nor Dr. Sauer persuades us that the length of time differences between Lee and Cooley would have been of any significant consequence to the motivation of the person seeking to solve the problem of detecting malware. Thus, we determine that Dr. Sauer’s conclusion is entitled to little weight. We find the motivation for the combination is based on the undisputed fact that Lee and Cooley both use behavioral analysis to solve the same problem. This overlap between the problem and its solution is “a reason that would have prompted a person of ordinary skill in the art to combine the elements as the new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Both Lee and Cooley use behavioral analysis to address that problem and are interrelated. Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. (internal citation omitted). Based on our findings concerning the interrelated teachings of Lee and Cooley, we determine that one of ordinary skill in the art would have had reason to combine Lee and Cooley or to substitute one technique for the technique used in the other.” slip op. at 28
Patent outcomesUS 8,776,218 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,776,218 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Rehearing deniedPTAB · Sep 30, 2016 · IPR2016-00587 · APJ Stacey G White · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 11, 13, 14, 16–20, 22, and 23 because Petitioner did not sufficiently explain how Verma’s teachings rendered the pitch determination marker obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW When rehearing a decision, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“incorporate Verma’s handles and operations. Req. Reh’g 13–14. This argument, however, misstates our analysis. In the Decision, we stated that it was “not sufficient for Petitioner to point out different teachings that were available in the prior art; instead, Petitioner must sufficiently articulate a rationale for the combination.” Dec. 11 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The interaction or integration of these various teachings does not require that the disparate elements of Verma be integrated physically. We, instead, were looking for a discussion of how one of ordinary skill in the art would view these teachings and what one of ordinary skill would learn from the combination. Petitioner has not supplied us with a sufficient explanation as to how one of ordinary skill would combine the knowledge gleaned from these passages and, as such, we were not persuaded that Petitioner had put forth a sufficient showing.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“incorporate Verma’s handles and operations. Req. Reh’g 13–14. This argument, however, misstates our analysis. In the Decision, we stated that it was “not sufficient for Petitioner to point out different teachings that were available in the prior art; instead, Petitioner must sufficiently articulate a rationale for the combination.” Dec. 11 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The interaction or integration of these various teachings does not require that the disparate elements of Verma be integrated physically. We, instead, were looking for a discussion of how one of ordinary skill in the art would view these teachings and what one of ordinary skill would learn from the combination. Petitioner has not supplied us with a sufficient explanation as to how one of ordinary skill would combine the knowledge gleaned from these passages and, as such, we were not persuaded that Petitioner had put forth a sufficient showing.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“the model can adjusted by the user to correct roof slopes (pitches).” Pet. 13 (citing Ex. 1008 ¶ 49). Paragraph 49 of Schuch’s declaration, however, discusses Verma’s planar rotation in conjunction with Verma’s handles. Ex. 1008 ¶ 49 (citing Ex. 1005 ¶¶ 37, 62). There is no mention of Verma’s operations in that portion of Schuch’s declaration. Verma’s operations are mentioned in paragraph 50 of Schuch’s declaration, however, this paragraph is not cited in the Petition. See Ex. 1008 ¶ 50. In paragraph 50, Schuch quotes the passage regarding operations, but does not explain the operations or their relationship to the other passages cited from Verma. Then, in paragraph 51, Schuch concludes without explanation that a person of ordinary skill would understand that Verma’s handles would be used to drag the grab the edges or corners between planes in order to modify the slope of the roof to fit the LIDAR image. Id. ¶ 51. We remain unpersuaded by the Schuch declaration. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing requires a fact finder to credit the inadequately explained testimony of an expert). It does not provide sufficient explanation as to how and why these teachings are integrated and, as such, we do not find the Schuch declaration to be sufficient to tie together these teachings.” slip op. at 7
§ 103 obviousnesscites KSRPatents in suitUS 9,129,376 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Rehearing deniedPTAB · Sep 21, 2016 · IPR2016-00582 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Xactware’s rehearing request, leaving institution denied for claims 1–5, 7–13, 15–23, 25–31, 33–40, 42, 46–52, and 54–56 because Hsieh’s public accessibility was not sufficiently shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“that Hsieh was indexed prior to the critical date. Req. Reh’g 2–5. Petitioner points to indicia on the first few pages of Hsieh showing dates and bar codes, provides an explanation of the import of those indicia, and argues that we should have found a reasonable inference of public accessibility before the critical date. We considered the indicia along with Petitioner’s failure to explain the import of the indicia and found the evidence presented by Petitioner lacking. Dec. 5–6 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)). A request for rehearing is not an opportunity merely to disagree with the Panel’s assessment of the arguments or weighing of the evidence. It is not an abuse of discretion to have performed an analysis or reached a” slip op. at 2
§ 102 anticipationPatents in suitUS 8,078,436 - Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCRehearing deniedPTAB · Sep 21, 2016 · IPR2014-00790 · APJ Benjamin D M Wood · IPR · Rehearing
The Board denied rehearing, leaving claims 1–3 not shown unpatentable because the petition did not establish that a plate-ready file was RIPed at the central service facility.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(d) Rehearing. . . . 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.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“contrary, we understood that Petitioner relied on Jebens and Dorfman to teach the separate end user, central service, and printing company facilities. Final Dec. 23–24, 31. We noted, however, that neither Jebens nor Dorfman teaches generating a plate-ready file as we construed the term above, i.e., a file that has gone through prepress processing and that has been RIPed. Id. at 26, 32. We further noted that although Apogee teaches generating a plateready file from a PDF file, “Petitioner does not assert, much less point us to any evidence, that a person of ordinary skill in the art would have been motivated to combine Jebens and Apogee in such a way that a plate-ready file would have been produced at Jebens’ host facility . . . rather than at its printing facility.” Id. at 27–28; see also id. at 32. Recognizing that neither Jebens nor Dorfman discloses teaches generating a plate-ready file, we understand Petitioner’s argument to be that, to meet the claim language, Petitioner only needed to show that its proposed combinations teach generating at a central service facility files of any type. This is incorrect. It is not sufficient that the proposed combination generates any file, e.g., a PDF file that has not been RIPed, at a central service facility. RIPing is the final, and necessary, step in creating a plate-ready file. Thus, Petitioner needed to establish that the file alleged to be the plate-ready file generated at a central service facility had been RIPed at the central service facility. Petitioner relied on Apogee to teach RIPing a file to create a plate-ready file, not to teach that RIPing occurred someplace other than at the printer. That is why we determined that Petitioner’s showing was insufficient. Accordingly, we are not persuaded that we misapprehended Petitioner’s obviousness grounds.” slip op. at 9
§ 103 obviousnessPatents in suitUS 6,611,349 - Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCRehearing deniedPTAB · Sep 21, 2016 · IPR2014-00791 · APJ Benjamin D M Wood · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place its determination that claims 10–14 were not shown unpatentable under either § 103 ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition. 37 C.F.R. § 42.71(d). Petitioner had the burden to identify and explain the specific evidence that supports its arguments in the Petition. 35 U.S.C. § 314(a). Thus, the Petition needed to identify “[h]ow the construed claim is unpatentable,” and identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(4)–(5) (emphasis added). Here, Petitioner’s Rehearing Request relies on evidence—Apogee Excerpt 2—and argument—that Apogee teaches providing a plate-ready file to a remote printer—that were not presented in the Petition. In the Petition, Petitioner consistently relied on Apogee to teach generation of a plate-ready file. Pet. 27‒28, 39, 40‒41, 48‒49, 53, 57. In doing so, it relied on Apogee Excerpt 1. Petitioner did not, however, in either its Petition or Reply, argue that Apogee teaches providing a plate-ready file to a remote printer. Instead, it relied on Jebens or Dorfman to teach this limitation. Id. at 41, 57. Moreover, Petitioner failed to refer us to Apogee Excerpt 2, even after Patent Owner expressly disputed that Apogee teaches generating a plate-ready file anywhere other than “at a printing company facility.” PO Resp. 32. Accordingly, we are not persuaded to grant Petitioner’s Rehearing Request on the basis of this newly cited evidence and new argument.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“example, we expressly characterized Petitioner’s position regarding Jebens and Apogee to be that “one of ordinary skill in the art would have been motivated to incorporate Apogee into the Jebens printing system to allow for a printing facility to produce a printing plate for offset printing.” Final Dec. 26 (citing Pet. 29). We noted, however, that Jebens does not teach generating a plate-ready file as we construed the term above, i.e., a file that has gone through prepress processing and that has been RIPed. Id. at 25.5 We further noted that although Apogee teaches generating a plate-ready file from a PDF file, “Petitioner does not point us to any evidence—in Jebens, Apogee, or otherwise—that a person of ordinary skill in the art would have combined Jebens and Apogee in such a way that a plate-ready file would have been produced at Jebens’ host facilities or end user facility rather than at its printing facility.” Id. at 26; see also id. at 30 (“Petitioner has not shown that a person of ordinary skill in the art would have had reason to produce the plate-ready file anywhere other than at Dorfman’s production printing system”). We understand Petitioner’s argument to be that it only needed to show that the proposed combinations provide files of any type to a printer in order to meet the step of “providing a plate-ready file to the 5 We applied the same reasoning to the Dorfman/Apogee ground. Id. at 30. printing company facility.” This is incorrect. It is not sufficient that the proposed combinations provide any file, e.g., a PDF file that has not been RIPed, to a printer. RIPing is the final, and necessary, step in creating a plate-ready file. Thus, Petitioner needed to establish that the file that the proposed combinations provided to the printer had been RIPed before transmission. Neither Jebens nor Dorfman alone teaches this; further Petitioner relied on Apogee to teach RIPing a file to create a plate-ready file, not to teach that RIPing occurred someplace other than at the printer. That is why we determined that Petitioner’s showing was insufficient. Accordingly, we are not persuaded that we misapprehended Petitioner’s obviousness grounds.” slip op. at 8
- BurdenNot shown unpatentable
“A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition. 37 C.F.R. § 42.71(d). Petitioner had the burden to identify and explain the specific evidence that supports its arguments in the Petition. 35 U.S.C. § 314(a). Thus, the Petition needed to identify “[h]ow the construed claim is unpatentable,” and identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(4)–(5) (emphasis added). Here, Petitioner’s Rehearing Request relies on evidence—Apogee Excerpt 2—and argument—that Apogee teaches providing a plate-ready file to a remote printer—that were not presented in the Petition. In the Petition, Petitioner consistently relied on Apogee to teach generation of a plate-ready file. Pet. 27‒28, 39, 40‒41, 48‒49, 53, 57. In doing so, it relied on Apogee Excerpt 1. Petitioner did not, however, in either its Petition or Reply, argue that Apogee teaches providing a plate-ready file to a remote printer. Instead, it relied on Jebens or Dorfman to teach this limitation. Id. at 41, 57. Moreover, Petitioner failed to refer us to Apogee Excerpt 2, even after Patent Owner expressly disputed that Apogee teaches generating a plate-ready file anywhere other than “at a printing company facility.” PO Resp. 32. Accordingly, we are not persuaded to grant Petitioner’s Rehearing Request on the basis of this newly cited evidence and new argument.” slip op. at 7
§ 103 obviousnessPatents in suitUS 6,611,349 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Institution deniedPTAB · Aug 15, 2016 · IPR2016-00587 · APJ Stacey G White · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 11, 13, 14, 16–20, 22, and 23 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under Petitioner’s asserted grounds, the functionality of the pitch determination marker is taught by combining these disparate elements of Verma, but without more explanation we are not persuaded that one of ordinary skill in the art would have combined these teachings and as such been taught the claimed pitch determination marker. The other cited references, Aerowest, Hsieh, and Applicad, are not asserted to provide the user interface and model manipulation elements allegedly found in the various aspects of Verma. Thus, we are not persuaded that Petitioner has put forth sufficient arguments and evidence to meet the threshold of 35 U.S.C. § 314(a), and therefore, we do not institute inter partes review of any of the challenged claims.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“ordinary skill would have been motivated to combine the cited art to achieve the claimed invention and whether there would have been a reasonable expectation of success. DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006). Petitioner cites to several different portions of Verma without sufficiently explaining how these teachings come together. See Pet. 13. It is not enough to say that these disparate teachings could have been combined; instead, Petitioner is charged with demonstrating that they would have been combined by a person of ordinary skill in the art. See Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). As noted above, Verma describes two separate techniques for defining roof structures present in that point cloud. Ex. 1005 ¶¶ 37 (attaching polygons to planes and aligning the planes to form complex roof structures) 38–56, 60–63 (fitting parametric shapes to the point cloud and manipulating those shapes to fit the data).” slip op. at 10
§ 103 obviousnesscites KSRPatents in suitUS 9,129,376
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.