- Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00764 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding no abuse of discretion in denying institution on the Briffod and Takano anticipation grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Petitioner, as the party challenging the Decision, has the burden of showing the decision should be modified. Id. When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 200 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“evidence presented, that Petitioner established sufficiently that Briffod discloses voids or cracks that are formed in the alloy layer. Dec. 19–20. Specifically, we stated that Briffod describes the surface of thin film 3 as shown in Figure 1b (the claimed “coating layer,” according to Petitioner) as “very rough,” with “many holes of 1 to 2µ which confirms the sponge-like structure suggested by the appearance of the surface.” [Ex. 1003, 4:8–15.] Briffod does not, however, describe the characteristics of film 2, which Petitioner contends is the “alloy layer” required by the claims. See Pet. 29 (quoting Ex. 1003, 2:55–56); id. at 30 (same). Petitioner does not provide any other evidence that shows sufficiently that Briffod discloses voids or cracks that are formed in the alloy layer. Id. Therefore, we considered Petitioner’s arguments and evidence that cracks or voids are formed in Briffod film 2, and deemed it insufficiently persuasive. Moreover, with respect to Petitioner’s argument that Briffod Figure 1b “illustrates the Kirkendall voids as small circles in the film 2,” we note that Briffod describes Figure 1b as illustrating the Briffod invention “in a schematic manner” (Ex. 1003, 2:51–55), and does not explain what, if anything, the “small circles” drawn in film 2 signify. It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees. As a result, we did not abuse our discretion in denying institution of inter partes review of claims 2, 5, 7, 8, and 10 on the asserted ground of unpatentability based on Briffod.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“to show anticipation because Comparative Example 2, alone, shows all of the features of claims 1 and 6 of the ’036 patent.” Req. Reh’g 13. Petitioner does not point us to where this argument was made in the Petition; instead, Petitioner directs us to page 19 of the Petition, which is an overview of Takano. Id. at 12. In contrast, in the claim charts, which “show features of Takano that correspond to the claims of the ‘036 patent,” Petitioner identifies Example 1 as disclosing some limitations of the claims, and Comparative Example 2 as disclosing others. See, e.g., Pet. 33–34 (claim chart for claim 1). Per 37 C.F.R. § 42.71(d), Petitioner must point out where the matter was previously addressed in its Petition. We could not have overlooked argument or evidence that was not presented in the Petition. A request for rehearing is not an opportunity to supplement a petition.” slip op. at 5
§ 102 anticipationPatents in suitUS 6,492,036 - Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00763 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the refusal to institute on Takano anticipation of claims 1–4, 6, and 14–18.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). However, we will grant a request for rehearing only if it also “specifically identif[ies] . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering the Request for Rehearing, the Decision, and the evidence currently of record, we determine that Petitioner has not demonstrated an abuse of discretion. Accordingly, we deny the Request for Rehearing.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)
“arguments in support of the asserted anticipation of claims 1–4, 6, and 14–18 by Takano. Req. 1. In refusing to institute on this ground, we concluded that Petitioner had not shown sufficiently that Takano anticipates claims 1– 4, 6, and 14–18 because Petitioner’s argument required combining disclosures from multiple embodiments disclosed in Takano. Dec. 18. Petitioner now presents two arguments that this determination was an abuse of discretion. Req. 5–8.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“arguments in support of the asserted anticipation of claims 1–4, 6, and 14–18 by Takano. Req. 1. In refusing to institute on this ground, we concluded that Petitioner had not shown sufficiently that Takano anticipates claims 1– 4, 6, and 14–18 because Petitioner’s argument required combining disclosures from multiple embodiments disclosed in Takano. Dec. 18. Petitioner now presents two arguments that this determination was an abuse of discretion. Req. 5–8.” slip op. at 3
§ 102 anticipationPatents in suitUS 6,306,523 - Midwest Industrial Supply, Inc. v. Soilworks, LLCInstitution deniedPTAB · May 9, 2016 · PGR2016-00004 · APJ Christopher M Kaiser · PGR · Institution
The Board denied institution for claims 1–26 because the petition did not show they were more likely than not unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a). The standard for instituting a post-grant review is set forth in 35 U.S.C. § 324(a), which provides that a post-grant review may not be instituted “unless the Director determines . . . it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated that it is more likely than not that at least one of the claims it challenges is unpatentable. Accordingly, we do not institute post-grant review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“alkane with a methyl substituent,” that a “dimethyl-branched alkane” be construed as “an alkane with two methyl substituents,” and that “trimethyl-branched alkane” be construed as “an alkane with three methyl substituents.” Pet. 6. Patent Owner does not oppose these constructions, but, given that the precise construction of these terms does not appear to be important to the resolution of issues presented in the present Decision, we conclude that “methyl-branched alkane,” “dimethyl-branched alkane,” and “trimethyl-branched alkane” need not be construed expressly at this time. 3. “Binder” Petitioner suggests that the term “binder” should be construed. Pet. 5–6. Petitioner does not, however, offer a proposed construction for this term. Id. Given this, and given that the precise construction of “binder” does not appear to be important to the resolution of issues presented in the present Decision, we conclude that “binder” need not be construed expressly at this time.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“We agree with Patent Owner. Petitioner has not directed us to evidence of record sufficient to establish that any of Hawkins ’266, Hawkins ’270, EK35, and EnviroKleen discloses the limitations requiring the acyclic and cyclic compounds in the synthetic fluid to be at least 65 weight percent compounds with carbon chain lengths in the range of C24 to C36. Petitioner’s argument with respect to these limitations is that Hawkins ’266 and Hawkins ’270 disclose the use of DSF-65, that the ’592 patent describes the use of Risella X 420, and that, according to Dr. Fetzer, DSF-65, Risella X 420, EK35, and EnviroKleen all have similar compositions. Pet. 14, 28– 29; Ex. 1002 ¶¶ 33–34. But the ’592 patent does not mandate the use of Risella X 420 in its claimed invention; instead, this product is only one of several commercial products that can be included “[i]n certain embodiments” of the disclosed invention. Ex. 1003, 4:15–21. It does not necessarily follow that Risella X 420, or a similar composition, falls within the scope of any of the claims of the ’592 patent.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“§ 103(a) as obvious over the combination of Hawkins ’266, Hawkins ’270, EK35, and EnviroKleen. Pet. 42–69. Relying on the testimony of Dr. Fetzer, Petitioner explains how these references teach each of the limitations of these claims. Id. Neither Petitioner nor Dr. Fetzer explains why a person of ordinary skill in the art would have combined these references. Id.; Ex. 1002 ¶¶ 35–36. Moreover, Petitioner’s obviousness arguments are identical to Petitioner’s anticipation arguments. Pet. 10–38, 42–69. The only exception is that the Fetzer Declaration includes the following language with 10 Even if we were to assume that compositional similarity to Risella X 420 was indicative of whether a compound fell within the scope of the claims, as Petitioner argues, it is not clear on the present record that the evidence of record is more likely than not to support a finding that the DSF-65, EK35, and EnviroKleen products have compositions similar to that of Risella X 420. Although Petitioner argues that they do, e.g., Pet. 14, and Dr. Fetzer testifies that they do, Ex. 1002 ¶ 33, neither Petitioner nor Dr. Fetzer explains how to interpret the data presented at pages 32–202 of Dr. Fetzer’s Declaration in order to reach this conclusion. respect to obviousness: “even if the claims are found not to be anticipated, all the claims would be obvious in view of [Hawkins ’266, Hawkins ’270, EK35, and EnviroKleen].” Ex. 1002 ¶ 36. This conclusory statement is not sufficient to satisfy Petitioner’s burden under 37 C.F.R. § 42.204(b). As discussed above, at most, Petitioner has demonstrated that the DSF-65 product disclosed in Hawkins ’266 and Hawkins ’270 and the EK35 and EnviroKleen products all have compositions similar to the Risella X 420 described in the Specification of the ’592 patent, without demonstrating that those products have the compositions of the fluids claimed in the ’592 patent. Based on the evidence before us, we cannot conclude that it is more likely than not that Petitioner will be able to demonstrate that Hawkins ’266, Hawkins ’270, EK35, and EnviroKleen render obvious claims 1–26.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 8,968,592 - Nelson Products, Inc. v. Bal Seal Engineering, Inc.Rehearing deniedPTAB · Apr 8, 2016 · IPR2014-00572 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter in its due-process, Poon prior-art, or Guertin anticipation arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“of our procedures. Our footnote, cited by Patent Owner as the basis for its argument, was limited: “At oral hearing, Patent Owner argued that Petitioner applied an incorrect ‘collaboration’ standard to its analysis (citing In re DeBaun).” Dec. 8–9 n.2. We stated further that this particular argument – regarding the collaboration standard – was not raised in the Patent Owner Response. Id. at 9. Simply because we included a footnote in the Final Written Decision noting that Patent Owner raised a particular argument relating to collaboration during oral hearing does not mean that we discounted all of Patent Owner’s arguments or the relevant case law, i.e., In re DeBaun. On the contrary, we stated in the footnote that we are “cognizant of the cited case law,” referring back to In re DeBaun. Id. Patent Owner had the opportunity and the available pages to develop arguments and present case law as to whether Poon is prior art in its Patent Owner Response. Patent Owner, however, presented merely two-and-a-half pages of arguments, citing no case law, in its Patent Owner Response. Paper 17 (“PO Resp.”) 11–13. Patent Owner’s argument that it raised In re DeBaun in its Motion for Observations is unavailing. The Motion for Observations is not a proper vehicle in which to present new arguments. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“An observation should be a concise statement of the relevance of identified testimony . . . . An observation (or response) is not an opportunity to raise new issues, re-argue issues, or pursue objections.”). In any event, Patent Owner’s arguments also are misplaced because the Board did consider In re DeBaun and its teachings, along with the teachings of other relevant case law. See Dec. 6–7. We note that the parties briefed the issue of whether Poon is prior art in the pre-institution papers, and we discussed it in our Decision on Institution. Paper 10 (“DI”) 9–12 (citing In re DeBaun). We also reviewed, considered, and cited to In re DeBaun and other relevant case law in the Final Written Decision. Id. at 6– 11. Thus, contrary to Patent Owner’s arguments, In re DeBaun was applied, and Patent Owner’s argument that it was denied due process is not persuasive.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artDecided for petitioner
“our Final Written Decision, after considering the arguments, evidence, and case law, we stated that we were “persuaded that the record as a whole supports Petitioner’s argument that Poon is prior art under 35 U.S.C. § 102(e).” Dec. 11. In doing so, we evaluated the parties’ arguments, including Petitioner’s argument that “Poon and Balsells are joint inventors of the Poon reference, and thus, the Poon reference is presumptively ‘by another.’ Pet. Reply 1 (citing MPEP 2136.04(I)).” Id. at 9. Petitioner met its burden of persuasion on this issue, and Patent Owner did not meet its “burden of production on the issue of whether the Poon reference is ‘by another.’” Id. at 8. Patent Owner in its Request for Rehearing attempts to frame “joint inventorship” and “by another” as separate issues governed by different case law, but fails to make its case persuasively. As we discussed in our Final Written Decision, we found that the Poon reference is a work of joint inventorship, particularly with respect to the subject matter of Figures 11–20, and therefore is “by another” and available as prior art under 35 U.S.C. § 102(e). Patent Owner relies on a prefatory sentence in our Final Written Decision stating that “[w]e are not persuaded that the subject matter of Figures 11–20 of the Poon reference are ‘by another’” to argue that we applied an incorrect legal standard. Req. 5–6 (citing Dec. 11). We note that this sentence contains an error, and should have stated that we were not persuaded that the relevant subject matter was not “by another.” That the sentence was intended to contain this second “not” is reflected in the remainder of the analysis in the Final Written Decision, including our conclusion that the Poon reference is “by another” and available as prior art under 35 U.S.C. § 102(e). See, e.g., Dec. 11 (“Patent Owner presented evidence in support of its arguments that Poon and Balsells were not joint inventors of the Poon reference. Weighing all the evidence before us, however, we are persuaded that the record as a whole supports Petitioner’s argument that Poon is prior art under 35 U.S.C. § 102(e).”) (emphasis added). Additionally, in its Request, Patent Owner presents numerous” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Decided for petitioner
“evaluated the evidence of record, including the evidence from both parties’ experts, in determining that Guertin anticipates claims 1–3, 5–11, 13–16, and 19. We noted Petitioner’s discussion of expert testimony from its own experts and those of Patent Owner, and cited evidence presented by Mr. Imler in determining how to interpret Figures 1 and 6, taking into account the proper weight to be given to the submitted evidence and testimony concerning commercial couplings. Dec. 20–23 (citing In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991), for the proposition that “extrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference”). As our Final Written Decision makes clear, we did not rely solely on any single piece of evidence with respect to the disclosure of Figures 1 and 6. Dec. 16–23. Indeed, we considered Patent Owner’s arguments concerning the Figure 1 and Figure 6 embodiments in view of the drawings and the specification, but we were not persuaded that “the pin grooves of Figure 1 and Figure 6 are separate and unrelated embodiments.” Id. at 22. We noted, instead, that the specification of Guertin states that “coupling 150 in Figure 6 is ‘constructed substantially the same as the coupling 10 [in Figure 1] except with a shorter length. Accordingly, the same reference numbers are used to identify the same corresponding parts or components.’” Id. at 20 (citing Ex. 1002, 5:12–15). This passage clearly conveys that with respect to the disclosures in Figures 1 and 6, the embodiments are intended to be the same but for the length. In other words, Patent Owner’s arguments regarding the teachings of Figures 1 and 6 are unpersuasive because they attempt to reason around the description of Figure 1 and Figure 6 as substantially the same. We determined that this attempt was unsuccessful.” slip op. at 7
§ 102 anticipationPatents in suitUS 8,297,662 - Parrot S.A. / Parrot, Inc. v. Drone Technologies, Inc.Some claims unpatentablePTAB · Oct 20, 2015 · IPR2014-00730 · APJ Howard B Blankenship · IPR · Final written decision
Claims 1–3, 5–14 are unpatentable: claims 1–3, 5, 10–14 anticipated by Smith; claims 6–7 and 8–9 obvious over Smith with Barr and Fouche, respectively. Claims 4 and 15 were not shown unpatentable.
RulingsFinal written decision- BurdenMixed
“construe “difference of motion” in claim 4 as relative motion. Pet. Reply 5– 6. Petitioner in its Reply does not, however, provide a persuasive explanation with respect to how the signal sent by the remote controller in Smith, or its “target motion signal” in the terms of claim 4, may contribute to getting the relative motion between the remote controller and the remotecontrolled device.2 Petitioner submits that “[i]t bears noting, moreover, that the ‘target motion signal’ (STAR3) of Fig. 5 of the ’071 Patent, also is a combination of the remote-controller’s measured orientation and the angle of the joystick, just as in Smith. Ex. 1001, 6:39-51. In that embodiment, it is ‘STAR3’ that is used to calculate the ‘difference of motion.’” Pet. Reply. 7. Petitioner refers to no evidence of record, however, to establish that this “third operation mode” described by the ’071 patent necessarily sends, as in Smith, a target motion signal that is the summation of the terrestrial magnetism signal and the orientation of the joystick relative to the remote 2 Although we did not institute trial on the alternative ground that claim 4 would have been obvious over Smith and Fouche (or the knowledge of a person of ordinary skill in the art) (Pet. 29), the alternative ground for obviousness would suffer from the same deficiency as the anticipation ground. controller. Although attorney arguments are helpful when directing us to evidence in the record, the arguments themselves do not constitute evidence. Arguments of counsel cannot take the place of evidence in the record. See, e.g., Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). In consideration of the foregoing, we conclude that Petitioner has not demonstrated, by a preponderance of the evidence, that claim 4 is unpatentable as anticipated by Smith.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“The ’071 patent, thus, makes clear that, in the preferred embodiment of the invention, “detecting” the remote controller’s motion is detecting the change in terrestrial magnetism relative to the horizontal ground surface as the controller is moved or rotated, with the resulting terrestrial magnetism sensing signal SG changing accordingly. The “terrestrial magnetism” of the Earth “directs to a fixed direction parallel to the horizontal ground surface.” Id. at col. 3, ll. 63–65. Detecting the orientation of a remote controller with respect to magnetic North is, at the least, within the scope of “detect[ing] the remote controller’s motion” as claimed. “A claim construction that excludes the preferred embodiment ‘is rarely, if ever, correct and would require highly persuasive evidentiary support.’” Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583–84 (Fed. Cir. 1996)).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“in orientation.” Pet. 17. As Petitioner indicates (id.), the ’071 patent does not provide a definition of the relevant terms different from the ordinary meaning of the words. At the preliminary proceeding stage, we interpreted “difference of motion” simply to mean, under the required broadest reasonable interpretation, relative motion. Dec. on Inst. 10. That interpretation is consistent with the language of claim 4. Claim 4 recites that the “calculated result” — the calculated current motion of the remote-controlled device — is compared with the target motion signal to get the “difference of motion” (relative motion) between the remote-controlled device and the remote controller. In relation to Petitioner’s proffered interpretation, because a change in orientation is a type of motion, relative orientation would be a type (or species) of “difference of motion.”” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Thus, “detecting” the remote controller’s motion is detecting the change in terrestrial magnetism relative to the horizontal ground surface as the controller is moved or rotated, with the resulting terrestrial magnetism sensing signal SG changing accordingly. Patent Owner has not pointed to any disclosure in the ’071 patent of the remote controller storing a previous orientation for comparison with a present orientation to effect “detect[ing] the remote controller’s motion” as claimed. We, therefore, remain convinced that detecting the orientation of a remote controller with respect to magnetic North — which Patent Owner admits Smith to disclose — is, at the least, within the scope of “detect[ing] the remote controller’s motion” as claimed.” slip op. at 13
Patent outcomesUS 7,584,071 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 7,584,071 - Nelson Products, Inc. v. Bal Seal Engineering, Inc.All claims unpatentablePTAB · Sep 24, 2015 · IPR2014-00572 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–16 and 19 are unpatentable: claims 1–3, 5–11, 13–16, and 19 as anticipated by Guertin; claims 4 and 12 as obvious over Guertin and Poon; and all challenged claims under separate Poon grounds.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We are not persuaded that the subject matter of Figures 11–20 of the Poon reference are “by another.” Mr. Poon and Mr. Balsells were joint inventors under the standards highlighted by the court in Kimberly-Clark. They exhibited elements of joint behavior: they worked at the same company, under common direction, at the same physical location. Mr. Poon and Mr. Balsells exchanged notes and drafts leading to the final invention described in the Poon reference. The inventors worked on the same subject matter and made contributions to the inventive thought and to the final result. Monsanto Co. v. Kamp, 269 F.Supp. 818, 824 (D.D.C. 1967). The collaborative nature of the invention is apparent in the evidence presented by Petitioner, in which Mr. Poon and Mr. Balsells could not avoid acknowledging the elements of their common contributions to the invention claimed in the Poon reference. To the extent that the burden of production shifted to Patent Owner, Patent Owner presented evidence in support of its arguments that Poon and Balsells were not joint inventors of the Poon reference. Weighing all the evidence before us, however, we are persuaded that the record as a whole supports Petitioner’s argument that Poon is prior art under 35 U.S.C. § 102(e).” slip op. at 11
- Expert testimonyPetitioner expert creditedOther
“groove. Figure 1 shows that the pin groove has tapered sidewalls. Figure 2, in which pin groove 43 is called out, also shows that pin groove 43 has tapered sidewalls. Figure 6 is not as clear as Figure 1 in its depiction of the sidewalls of pin groove 43, but pin groove 43 also is partially obscured by spring 76. Figure 1 is in a different position (fully engaged) than Figure 6 (not completely engaged), which Patent Owner agrees is the case. PO Resp. 32. Petitioner’s expert Mr. Imler further testified that, based on his experience in manufacturing the breakaway couplings described in Guertin, any variations among Figure 1, 2, and 6 “are the product of inaccuracies in the drawings.” Imler Decl. ¶ 27 (cited in Pet. Reply 7–8); see In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (“[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.”).” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed, and thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). slip op. at 18
- Obviousness (§103) › KSR rationalesUnpatentableUnpatentable
“combine the features of Figures 13 and 16 of Poon. Pet. 36–38. Petitioner argues that Figure 16 of Poon is an embodiment with a housing groove having a groove bottom surface, a tapered release surface, a side wall extending from the tapered release surface, and a side wall extending from the groove bottom surface. Id. at 37. As such, Petitioner argues that the embodiments found in claims 7, 15, and 16 merely combine known elements, such as the tapered surface extending from a groove bottom surface in Figure 13, and perpendicular sidewalls shown in Figure 16. Id. at 38. Patent Owner did not contest whether combining Poon’s embodiments would be a mere design choice. Poon discloses a wide range of designs for the housing groove, including designs containing and combining the various elements identified by Petitioner, which supports the argument that the elements could be combined as a matter of design choice.” slip op. at 14
Patent outcomesUS 8,297,662 unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,297,662 - Salesforce.Com, Inc. v. Virtualagility, Inc.All claims unpatentablePTAB · Sep 16, 2014 · CBM2013-00024 · APJ Georgianna W Braden · CBM · Final written decision
Claims 1–21 are unpatentable under §§ 101 and 102 over Ito; the contingent motion to amend with substitute claims 22–30 is denied.
RulingsFinal written decision- Skill levelOther
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notTerm construed board ownPreamble limitingDecided for patent owner
“1. “system being implemented using a processor and a storage device accessible to the processor” The preamble of claim 1 recites a “system being implemented using a processor and a storage device.” Petitioner contends that the recited processor and storage device need not be components of the claimed system because they are not positively recited elements. Pet. 11 (citing Ex. 1002 ¶ 39). We are not persuaded by Petitioner’s reasoning, because the processor and storage device recited in the preamble of each independent claim of the ’413 patent serve as the antecedent basis for “said processor” and “the storage device” recited in the body of each claim. Dec. to Inst. 18– 19 (citing C.W. Zumbiel Co., Inc., v. Kappos & Graphic Packaging Int’l, 702 F.3d 1371, 1385 (Fed. Cir. 2012) (noting that a preamble constitutes a limitation when the elements in the body of a claim depend on it for antecedent basis)). Furthermore, if the plain language of a claim indicates that a system is implemented by certain components, then those components constitute required parts of the system. “Implemented,” in that setting, can mean “constituted” or “formed.” Therefore, we construe the clause as setting forth that the processor and the storage device are both components of the claimed system.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner that the specification of the ’413 patent teaches that “model entity” is a set of assembled computer data or data item that represents fundamental components of a model. See Ex. 1001, col. 2, ll. 37–42. Patent Owner, however, does not (1) point to any disclosure in the specification that requires a data object to provide the capability for a user to perform specified operations on the model in order for the data object to qualify as a “model entity,” or (2) offer any persuasive evidence regarding the meaning of “model entity.” Therefore, we construe the phrase “model entity” as “a set of assembled computer data or data item that represents fundamental components of a model.”” slip op. at 14
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“issue are directed to a patent-ineligible concept, such as an abstract idea. See Alice, 134 S. Ct. at 2355. “[I]t is important at the outset to identify and define whatever fundamental concept appears wrapped up in the claim so that the subsequent analytical steps can proceed on a consistent footing.” CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1282 (Fed. Cir. 2013) (plurality opinion). Here, the challenged claims are directed to a representation of a model for use in processing management information of a collaborative activity. Ex. 1001, col. 2, ll. 37–47. To aid in the management of a collaborative activity (e.g., developing customer relationships), a computer database is created that represents a model of the collaborative activity. Ex. 1004, 116. The model includes model entities (e.g., goals and projects) organized into a plurality of hierarchies (e.g., goals to be done and project hierarchy for doing them, or domain hierarchy of functional areas) having a plurality of types. Id.; see also Ex. 1001, Fig. 3 (hierarchy of goals and projects), Fig. 8 (hierarchy of domains). The model may contain data such as the customer segment, products, needs, etc. Ex. 1001, col. 2, l. 60– col. 3, l. 16. A processor provides a graphical user interface (“GUI”) for interaction with a user. Ex. 1004, p. 0116; see Ex. 1001, Fig. 9 (GUI displaying goals belonging to a domain). Therefore, given this disclosure, we find that the challenged claims are directed to an abstract idea, the creation and use of models to aid in processing management information by organizing and making the information readily accessible by the collaborators of the project. See, e.g., Ex. 1001, col. 2, l. 9–col. 5, l. 8. The model, as described by the specification, is a disembodied concept that is not tied to a specific algorithm or specialized computer. Thus, at the first step of the analysis, we determine the claims at issue here are directed to a patent-ineligible concept: an abstract idea.” slip op. at 21
Patent outcomesUS 8,095,413 unpatentableClaim construction§ 101 eligibility§ 102 anticipationcites Alice · MayoPatents in suitUS 8,095,413
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.