- PTAB · Dec 22, 2021 · IPR2021-01055 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR of claims 1–5 and 9–19 on five § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’766 Patent. Accordingly, we institute an inter partes review of claims 1–5 and 9–19 of the ’766 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“For a reference to qualify as a printed publication, “before the critical date the reference must have been sufficiently accessible to the public interested in the art.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988). “When there is an established publisher there is a presumption of public accessibility as of the publication date.” VidStream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020); see also Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential) (determining that, based on the totality of the evidence, a reference bearing a copyright date, a printing date, and an ISBN date all earlier than the critical date of the challenged patent, and the reference was a “textbook from an established publisher” provided sufficient indicia at the institution state).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“configuration error” With respect to the limitation “configuration error,” Patent Owner asserts that configuration error means “either (1) the condition that occurs when ‘a rule or series of rules is not properly defined and produces an undesired effect’ or (2) ‘a series of improperly defined rules causes a part to be in more than one state at the same time.’” Prelim. Resp. 10 (citing Ex. 1001, 1:54–61; Ex. 2001 ¶ 40). At this stage of the proceeding, we find that Patent Owner’s proposed construction is supported by the ’766 Patent specification, and adopt Patent Owner’s proposed meaning of “configuration error,” with the following remarks with respect to Patent Owner’s additional arguments regarding the claim construction. Patent Owner, however, also argues that “the specification concerns errors internal to the configuration engine and not ‘errors’ that prevent product configurator users from making their desired but impermissible selections.” Prelim. Resp. 10. We do not agree with Patent Owner’s argument because the first part of the construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify anything about an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. We are not persuaded, based on our review of the Specification of the ’766 Patent that “an undesired effect” should be limited to the exclusion of a part. Thus, although Patent Owner argues that “a configuration error is not a condition that occurs when a user attempts to make a choice that is prohibited by a rule” (Prelim. Resp. 11 (citing Ex. 2001 ¶ 43)), at this juncture, we are not persuaded that such a condition would not be an undesired effect, according to the adopted construction. Therefore, we do not further limit the construction of “configuration error.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS Level of Ordinary Skill in the Art Petitioner, supported by Dr. Wood’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Computer Science, Computer or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. Prelim. Resp. 10 (citing Ex. 2001 ¶¶ 35–37). At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,836,766
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.