• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Some claims unpatentable
  PTAB · Jul 16, 2020 · IPR2019-00152 · APJ Neil T Powell · IPR · Final written decision

  Claims 15 and 20 are unpatentable as anticipated by Picard; claims 1–14 and 16–19 were not shown unpatentable on the asserted grounds.

  RulingsFinal written decision

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

    “In view of our analysis below, we need not construe expressly any claim language to resolve the parties’ patentability dispute. The Petition’s first challenge asserts obviousness of claims 1, 2, 7, 8, 9, and 14 over Picard and Ishihara. Pet. 18–39. As explained in greater detail below in Section III.B.3, this challenge rests on a contention that it would have been obvious to modify Picard to use telecentric optics like those taught in Ishihara. Id. at 32–38. With respect to the challenge of claims 1, 2, 7, 8, 9, and 14 over Picard and Ishihara, the Petition does not explain any theory of unpatentability that does not rely on the assertion that it would have been obvious to modify Picard with telecentric optics based on Ishihara. Id. at 18–39. Thus, the merits of this challenge inextricably depend on whether Petitioner has demonstrated adequately that it would have been obvious to modify Picard with telecentic optics based on Ishihara. For the reasons explained below in Section III.B.3, Petitioner has not done so. Therefore, Petitioner’s challenge of claims 1, 2, 7, 8, 9, and 14 over Picard and Ishihara fails for reasons unrelated to claim construction.” slip op. at 9

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

    “We agree that the law does not require Petitioner to show a person of ordinary skill in the art would have viewed the proposed modification as the most preferred or desirable approach. The law does, however, require Petitioner to show not only that a person of ordinary skill in the art could have combined the references in the proposed manner, but that a person of ordinary skill in the art would have had a reason to combine the references’ teachings in the proposed manner. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis added) (citation omitted) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Here, Petitioner does not do so.” slip op. at 25

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Thus, Picard expressly discloses that the embodiment discussed in connection with Figure 8 includes the components and features shown and discussed in connection with Figure 3, plus all of the components and features shown and discussed in connection with Figure 8. Accordingly, the Petition cites to Picard’s discussions of Figures 3 as providing details regarding certain components and features that Picard discloses are also included in the embodiment of Figure 8. Pet. 20–23, 26–30, 39–41. In view of Picard’s express teaching to combine the features of Figures 3 and 8 and explanation of how they should be combined (Ex. 1003, 24:9–17) and Petitioner’s reliance on these same features to show anticipation (Pet. 20–23, 26–30, 39–41), we find no merit in Patent Owner’s argument that Petitioner does not identify any motivation to combine Picard’s discussions of Figures 3 and 8.11 See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016) (“[A] reference need not always include an express discussion of the actual combination to anticipate. . . . Instead, a reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.”) (citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F. 3d 1376, 1383 (Fed. Cir. 2015)). In sum, Petitioner demonstrates by a preponderance of the evidence that Picard anticipates claims 15 and 20.” slip op. at 32

  • Strike new argumentNew argument disregardedDecided for patent owner

    “have foreseen Patent Owner’s argument does not justify its insufficient explanation and lack of evidence in the Petition. As Patent Owner argues, its ITC brief, filed approximately a month before the Petition was filed, provided effective notice of Patent Owner’s position that there would have been issues using Gmitro’s fiber-optic bundle to carry the plurality of light beams used in Tiziani. Id. Moreover, even without such express notice, Petitioner should have recognized the requirement that its Petition must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). The Petition was also required to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). The Petition fails to meet these requirements with respect to its assertion that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Gmitro’s fiber-optic bundle with Tiziani’s confocal imaging system and microlens array. It is “improper for a reply to present new evidence (including new expert testimony) that could have been presented in a prior filing.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 74– 75 (citing Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1365–69 (Fed. Cir. 2016)). Petitioner does not provide any persuasive reason that the evidence it presented with its Reply to bolster its assertion of a reasonable expectation of success could not have been provided with the Petition. Accordingly, we find that Petitioner exceeded the proper scope of a reply with its newly presented arguments on pages 24– 27 of the Reply and with the its new citations of portions of the ’901 Patent (Ex. 1001, 5:46–48, 5:52–58, 6:2–6, 7:62–8:13, Fig. 1A), Picard (Ex. 1003, 25–26), Gmitro’s title (Ex. 1005, title), Dr. Sergienko’s new testimony (Ex. 1037 ¶¶ 23–28), and Exhibits 1038 and 1039. For all of the foregoing reasons, Petitioner has not carried its burden of showing that claims 1, 2, 7–9, 14, 15, and 20 would have been obvious over Tiziani, Gmitro, and Ishihara.” slip op. at 47

  Patent outcomesUS 9,615,901 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,615,901
• Polycom, Inc. v. Fullview, Inc.Institution denied
  PTAB · Jul 10, 2019 · IPR2019-00647 · APJ Donna M Praiss · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, chiefly because the references did not show the claimed support member intersecting the reflective element’s inner volume.

  RulingsInstitution decision

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

    “information presented in the petition . . . and any 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; see 37 C.F.R. § 42.4. After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Accordingly, we deny the Petition, and do not institute an inter partes review for the reasons discussed below.” slip op. at 2

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

    “element” which is recited in claims 10 and 11. Pet. 15. Petitioner provides citations to the Specification to support the proposed meaning of “an element with three or more sides, excluding the base.” Id. (citing Ex. 1001, 5:30–31, 5:36–38). Patent Owner does not dispute Petitioner’s proposed construction for the term “pyramid shaped element,” but, rather, contends that the term “a support member intersecting an inner volume of the reflective element” (claim 1) or “a support member intersecting an inner volume of the pyramid shaped element” (claim 10) is the “crux of the disagreement” between the parties. Prelim. Resp. 7. According to Patent Owner, the words “inner volume” were emphasized during prosecution and would be construed by a person having ordinary skill in the art as “a ‘non-peripheral volume’ of the ‘reflective element.’” Id. at 8–9 (quoting Ex. 2002 ¶ 35). Patent Owner argues that “[e]very ‘inner volume’ of a ‘reflective element’ is within the volume bounded by all [of] its reflective facets, as in Figure 17 of the ’143 [patent]” such that the “support member” is above a plane touching all of the “reflective” facets and “reach[es] in” to the interior of these reflective facets. Id. at 10–11 (quoting Ex. 2002 ¶ 36). Stated another way, Patent Owner contends that the term “requires more than, and is not satisfied by, the mere showing of ‘a support member making contact with a reflective element.’” Id. at 9 (quoting Ex. 1003, 301–302). After reviewing the parties’ arguments and evidence, we determine that only the term “a support member intersecting an inner volume of a reflective [or pyramid shaped] element” of the ’143 patent requires express construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). On the present record, including considering the prosecution history, we agree with Patent Owner that the disputed claim term is not satisfied by a support member making peripheral contact with a reflective or pyramid shaped element because “intersecting an inner volume” requires an intersection of the support member through a volume of space defined and bounded by the reflective element. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc), (“The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review”); Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (citations omitted) (A patent’s prosecution history “consists of the complete record of the proceedings before the [US]PTO,” and “provides evidence of how the [US]PTO and the inventor understood the patent.”).” slip op. at 9

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

    “Owner that Yamazawa does not describe the element highlighted in red by Petitioner as intersecting the pyramidal mirror elements highlighted in yellow by Petitioner. In particular, Petitioner does not adequately explain why a person having ordinary skill in the art would understand the vertical lines highlighted in red to intersect an inner volume of Yamazawa’s reflective pyramidal mirror. Yamazawa does not describe such an arrangement in its text, and Yamazawa’s “cross-sectional view” in annotated Figure 1 above does not disclose the presence of the alleged support internal to the reflective element with either continued lines or dotted lines through the pyramidal mirrors highlighted in yellow by Petitioner. Therefore, Yamazawa is ambiguous as to how it is supported. See Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (“Ambiguous references do not anticipate a claim.”).” slip op. at 12

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

    “Based on the record before us, Petitioner does not show sufficiently that a skilled artisan would have had reason to intersect an inner volume of Nalwa’s panoramic viewer with Horn’s support shaft. Neither the Petition nor the Fantone Declaration adequately explains why a skilled artisan would have arranged the combined teachings of Nalwa and Horn such that Horn’s support intersects an inner volume of Nalwa’s reflective element rather than connect Nalwa’s viewer to Horn’s support at the top of the support as shown in Horn’s Figure 1. Petitioner’s rationale that it would have been obvious to secure Nalwa’s panoramic viewer to Horn’s shaft in a manner that would not interfere with the field of view does not explain why it would have been obvious to position the reflective element in the claimed manner relative to Horn’s support rather than on the top surface of the support. In addition, both Horn and Herndon illustrate connecting devices to the top surface of a support. Ex. 1007, Fig. 1; Ex. 2003, Fig. 10. For this reason, Petitioner’s challenge to the patentability of claim 1 over the combination of Nalwa and Horn is cumulative to the rejection over Herndon based on the connection between the reflective element and the support. Accordingly, Petitioner has not demonstrated a reasonable likelihood that claim 1 of the ’143 patent would have been obvious over the combination of Nalwa and Horn. Petitioner relies on the same arguments and evidence for this claim element in connection with independent claim 10 and dependent claims 2, 3, 11, and 12 as well. Pet. 62–72 (citing Ex. 1007, Abstract, 1:5–7, 3:10–31, Figs. 1–3; Ex. 1006, 1:53–2:10; Ex. 1002 ¶ 148). Therefore, Petitioner has not demonstrated a reasonable likelihood that any of claims 2, 3, 10, 11, and 12 would have been obvious over the combination of Nalwa and Horn for the same reasons discussed above for claim 1.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,128,143
• Riot Games, Inc. v. Paltalk Holdings, Inc.All claims unpatentable
  PTAB · May 14, 2019 · IPR2018-00132 · APJ Thu A Dang · IPR · Final written decision

  Claims 1, 3, 7, 12, 18, 22–27, 36, 41–46, 55, and 58–63 are unpatentable as obvious over the stated combinations of Aldred and RFC 1692 with Ulrich or Denzer.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “On this record, the ’686 Specification supports Petitioner’s argument that the claim term “aggregated message” or “server message,” consistent with its ordinary and plain meaning, includes a message having an aggregated payload and at least one header in addition to any additional headers that may happen to be within the aggregated payload. Here, Patent Owner’s past claim construction positions support this determination by showing, at the least, prior to this inter partes trial, how Patent Owner viewed the meaning of this claim term. See Ex. 1005, 396–97; Ex. 1006, 234–36; Ex. 1052, 108:8–24; Ex. 1054, and Ex. B, 1.13” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Relying on the declaration of Dr. White, Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have to be an individual with “at least a master’s degree (or equivalent course work) in computer science, computer engineering, or physics, and at least two years of experience related to networked interactive applications,” or a person with “at least a bachelor’s degree in computer science, computer engineering, or physics” who has “approximately four years’ experience in network[ing] interactive applications, or the equivalent, which would include experience in network programming.” Pet. 4 (citing Ex. 1007 ¶¶ 42–43). Patent Owner does not assess the level of ordinary skill in the art. We adopt the Petitioner’s, and Dr. White’s assessment of the level of ordinary skill in the art because it is consistent with the ’686 patent and the asserted prior art, and apply it to our obviousness evaluation below. We also observe that the prior art of record reflects the level of ordinary skill in the art. 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).” slip op. at 24

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “7. Prior Art Printed Publication Status of RFC 1692 Patent Owner does not challenge our initial determination in the Institution Decision that RFC 1692 (dated August 1994) was available to persons of ordinary skill interested in computer networking and security sufficiently to be deemed “publicly accessible” at the relevant time. See Inst. Dec. 25–30; SRI Int’l, Inc. v. Internet Security Sys., Inc., 511 F.3d 1186, 1194 (Fed. 21 Cir. 2008). For the reasons discussed in the Institution Decision, we maintain our preliminary determination that RFC 1692 qualifies as prior art printed publications.” slip op. at 32

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

    “Nevertheless, as to Patent Owner’s contention that Petitioner has failed to consider “the effect of larger packets on the packet order of the CSP of Aldred if the TMux protocol is included” (PO Resp. 23), we are persuaded by Petitioner’s argument that “RFC 1692 discusses adding segments to a multiplexed message in the order they are received.” Pet. Reply 4 (citing 1010 ¶¶ 6–7). In particular, Petitioner argues that “RFC 1692 expressly discloses that large TCP segments can be added to the end of any pending multiplexed packet, such that all segments would be sent in the order received.” Pet. Reply 3. According to Petitioner, “RFC 1692 explains that when a segment that would not normally be multiplexed – such as a large segment – is received and a multiplexed message is under construction, ‘the extra segment can be added to the TMux message under construction, and this complete message should be sent immediately . . . .’” Id. (citing Ex. 1010, 8–9). That is, RFC 1692 discloses that “large and small TCP segments can be sent in-order by the multiplexing process.” Id. at 4 (citing Ex. 1053 ¶¶ 19–23). In its Sur-Reply, Patent Owner does not dispute Petitioner’s point and its declarant’s, Dr. White’s, testimony that the logical channels in Aldred guarantee order. See generally Sur-Reply; Reply 5; Ex.1053 ¶ 25. Rather, Patent Owner summarizes its position by, again, relying on its large packet argument. Sur-Reply 3 (arguing “smaller items would be removed from the serialization queue and added to the TMux buffer, and larger segments would be transmitted immediately”); see also id. at 3–4 (similar large packet arguments). However, in Aldred, after demultiplexing, to the extent TMux does not maintain packet order, the higher level channel logical channel layer maintains packet order. See Ex. 1009, 6 (defining a channel “by the sending application” and “with application specified transmission characteristics,” and stating “a receiving port . . . receives data packets from the channel in the order in which they were sent”). Furthermore, as Petitioner points out, by contending that combining” slip op. at 37

  Patent outcomesUS 6,226,686 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,226,686
• Riot Games, Inc. v. Paltalk Holdings, Inc.All claims unpatentable
  PTAB · May 14, 2019 · IPR2018-00131 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–4, 7–21, 28–35, 39, 40, 47–54, 56, 57, and 64–70 are unpatentable under § 103 over Aldred and RFC 1692, with RFC 1459 for certain claims.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “On this record, the ’686 Specification supports Petitioner’s argument that the claim term “aggregated message” or “server message,” consistent with its ordinary and plain meaning, includes a message having an aggregated payload and at least one header in addition to any additional headers that may happen to be within the aggregated payload. Here, Patent Owner’s past claim construction positions support this determination by showing, at the least, prior to this inter partes trial, how Patent Owner viewed the meaning of this claim term. See Ex. 1005, 396–97; Ex. 1006, 234–36; Ex. 1052, 108:8–24; Ex. 1054, and Ex. B, 1.12” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Relying on the declaration of Dr. White, Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have had at least a master’s degree (or equivalent course work) in computer science, computer engineering, or physics, and at least two years’ experience related to networked interactive applications,” or “at least a bachelor’s degree in computer science, computer engineering, or physics, and approximately four years’ experience in networking interactive applications, or the equivalent, which would include experience in network programming.” Pet. 4 (citing Ex. 1007 ¶¶ 42–43). Patent Owner does not assess the level of ordinary skill in the art. We adopt the Petitioner’s, and Dr. White’s assessment of the level of ordinary skill in the art because it is consistent with the ’686 patent and the asserted prior art, and apply it to our obviousness evaluation below. We also observe that the prior art of record reflects the level of ordinary skill in the art. 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).” slip op. at 24

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “6. Prior Art Printed Publication Status of RFC 1459, and RFC 1692 Patent Owner does not challenge our initial determination in the Institution Decision that RFC 1692 (dated August 1994) and RFC 1459 (dated May 1993) were available to persons of ordinary skill interested in computer networking and security sufficiently to be deemed “publicly accessible” at the relevant time. See Inst. Dec. 25–30; SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. 21 Cir. 2008). For the reasons discussed in the Institution Decision, we maintain our preliminary determination that RFC 1692 and RFC 1459 qualify as prior art printed publications.” slip op. at 31

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

    “Based on the record before us, we are unpersuaded by Patent Owner’s contention that “Petitioner’s analysis has provided an insufficient bases for the combination of Aldred and RFC 1692.” PO Resp. 15. As an initial matter, we agree with Petitioner that Patent Owner “unjustifiably assumes that every embodiment of Aldred would require the use of ‘large’ TCP segments,” but “neither the challenged claims nor Aldred require ‘large’ packets,” wherein “both encompass scenarios where only small packets are generated.” Pet. Reply 7. According to Petitioner, Patent Owner’s “‘large’ packet scenario does not show nonobviousness when the claim and Aldred’s disclosure encompass systems that use only small packets.” Id. at 8 (citing Apple Inc. v VirnetX Inc., IPR2014-00237, paper 41, 40 (PTAB May 11, 2015)). That is, although Patent Owner contends that “Petitioner’s alleged motivation for this combination is based on its small packet centric argument that RFC 1692 provides benefits for systems generating a number of small packets” (PO Resp. 17 (citing Pet. 33)), nothing in the challenged claims preclude a scenario in which small packets are generated. We agree with Petitioner’s contention, to which Patent Owner does not contest, that, in scenarios where only small packets are generated, “[a]n Ordinary Artisan would have understood that Aldred’s system could likewise produce small packets that would benefit from RFC 1692’s multiplexing” (Pet. 33 (citing Ex. 1007 ¶146)) because the Ordinary Artisan would have realized that “[a]s combined with RFC 1692, Aldred’s messages would be multiplexed via TMux (‘aggregat[ed]’) into a single packet (‘aggregated payload’) prior to transmission from the CSP to each member of the serialising channel set associated with the Sharing Set.” Pet. 35 (citing Ex. 1007 ¶¶ 150–151).” slip op. at 34

  Patent outcomesUS 6,226,686 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,226,686
• Wilson Electronics, LLC v. Cellphone-Mate, Inc.Institution denied
  PTAB · Apr 18, 2019 · IPR2018-01776 · APJ Neil T Powell · IPR · Institution

  The Board denied institution on all challenged claims, finding no reasonable likelihood of success on the asserted obviousness grounds and citing petition clarity, prior art accessibility, and objective evidence.

  RulingsInstitution decision

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

    “in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent. 37 C.F.R. § 42.100(b) (2016).9 Consistent with that standard, we assign claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, in the context of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

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

    “disclosure teaches identity between the engineering concepts for amplify uplink channels and amplifying downlink channels. Additionally, assuming the cited disclosure does demonstrate some similarity between amplifying uplink and downlink channels, Petitioner again fails to provide persuasive evidence or reasoning as to why a person of ordinary skill in the art would have modified Aida or Kenington, even if they could have. Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. 2016); Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”).” slip op. at 17

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

    “ordinary skill in the art could have modified Aida or Kenington. See Pet. 30. Petitioner also cites paragraph 110 of McKay, which discloses an example in which “[w]ith the exception of the frequency band, each of the elements of the uplink F1 signal path 274 is functionally identical to the corresponding element previously described with respect to the downlink signal F2 path 236.” Ex. 1107 ¶ 110; Pet. 30. Specifically, Petitioner contends that McKay’s disclosure tends to demonstrate that the paths for uplink and downlink channels could be similar. Pet. 30 (citing Ex. 1107 ¶ 110). But even if McKay demonstrates that a person of ordinary skill in the art could have made paths for uplink channels and downlink channels similar, Petitioner does not explain why a person of ordinary skill in the art would have so modified Aida or Kenington.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundDecided for patent owner

    “Moreover, we agree with Patent Owner that Petitioner’s reliance on the cited portion of the ’190 patent is impermissible hindsight. See Prelim. Resp. 20. Indeed, Petitioner alleges that disclosure of the ’190 patent demonstrates what “the [person of ordinary skill in the art] would understand.” Pet. 30. “It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Thus, we find that Petitioner’s allegation of what a person of ordinary skill in the art would understand now (after seeing the disclosure of the ’190 patent) does not support an assertion of unpatentability under 35 U.S.C. § 103, which precludes patentability “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention” (emphasis added).” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,402,190
• Wilson Electronics, LLC v. Cellphone-Mate, Inc.Institution denied
  PTAB · Apr 18, 2019 · IPR2018-01774 · APJ Neil T Powell · IPR · Institution

  The Board denied institution on all challenges because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.

  RulingsInstitution decision

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

    “On the whole, Petitioner’s arguments and evidence demonstrate no more than the possibility that a person of ordinary skill in the art could have modified Layne, without providing sufficient reasoning or evidence as to why a person of ordinary skill in the art would have modified Layne to meet the claimed invention. Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would combine the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). Consequently, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that independent claim 1 would have been obvious over Layne, Sahota, and “alternatively” McKay. See Metalcraft, 848 F.3d at 1366 (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”). We understand that a person of ordinary skill is a person of ordinary creativity, not an automaton, but “[w]ithout any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.” Id. at 1367 (“‘[T]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,’ we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” (quoting KSR, 550 U.S. at 420–21)). Petitioner’s arguments and evidence regarding independent claim 19 suffer from the same problems. See Pet. 38. And Petitioner’s treatment of dependent claims 2–4, 6, 8, 20, and 24 does not cure the deficiencies in the challenges of claims 1 and 19. See Pet. 29–36, 42–44.” slip op. at 19

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

    “in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent. 37 C.F.R. § 42.100(b) (2016).8 Consistent with that standard, we assign claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, in the context of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

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

    “paths have the same configuration of circuitry. Pet. 24. We find this unavailing. Patent Owner persuades us that Layne discloses separate paths for its two downlink channels, and that the circuits for the uplink paths have significantly different configurations from the circuit for the uplink paths. Prelim. Resp. 16–18. Thus, not all uplink and downlink paths have the same configuration of circuitry. Without addressing the different circuit configurations of Layne’s uplink and downlink paths, Petitioner and Dr. Ralston cite McKay as disclosing an example with uplink and downlink paths having similar or the same configuration. Pet. 24 (citing Ex. 1007 ¶ 110); Ex. 1002 ¶ 50 (citing Ex. 1007 ¶ 110). In view of Layne, Dr. Ralston’s testimony and McKay demonstrate, at most, that the circuit configurations of uplink and downlink paths could be the same. Demonstrating that uplink and downlink paths could be the same does not demonstrate why a person of ordinary skill in the art would have modified Layne. Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis added) (citation omitted) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Petitioner’s citation of the ’190 patent as evidence of obviousness is” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “Contrary to Petitioner’s assertion, it is not clear to us that the cited disclosure teaches identity between the circuitry of uplink and downlink paths. Additionally, assuming the cited disclosure does demonstrate some similarity between amplifying uplink and downlink channels, Petitioner again fails to provide sufficient persuasive evidence or reasoning as to why a person of ordinary skill in the art would have modified Layne. Moreover, we agree with Patent Owner that Petitioner’s reliance on the cited portion of the ’190 patent is impermissible hindsight. See Prelim. Resp. 20–21. Pet. 30. “It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” In re Fritch, 972 F.2 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Thus, we find that Petitioner’s allegation of what is allegedly known now (after seeing the disclosure of the ’190 patent) does not support an assertion of unpatentability under 35 U.S.C. § 103, which precludes patentability “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention” (emphasis added).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 9,402,190
• Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · Oct 31, 2018 · IPR2017-01281 · APJ James A Tartal · IPR · Final written decision

  Claims 5, 6, 8–12, 14, 16, and 17 are unpatentable: claim 5 is anticipated by Dlugos; the remaining claims are obvious over the specified combinations.

  RulingsFinal written decision

  • BurdenMixed

    “evidence discussed in the Petition, including the declaration of Mr. Trotta. For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claim 5 is anticipated by Dlugos and would have been obvious over Dlugos and Eskaros; that claim 8 would have been obvious over Dlugos, Eskaros, and Hijlkema; that claims 6, 14, and 16 would have been obvious over Dlugos, Eskaros, and Forman; that claims 9, 10, and 12 would have been obvious over Dlugos, Eskaros, and Traxler; that claim 11 would have been obvious over Dlugos, Eskaros, Traxler, and Forman; and that claim 17 would have been obvious over Dlugos, Eskaros, Forman, and Becker.” slip op. at 24

  • Expert testimonyPetitioner expert discountedOther

    “shown that Dlugos necessarily teaches first and second cone regions of the balloon having at least one fold in the fully inflated state. Moreover, we find Mr. Trotta’s testimony in support of Petitioner’s contention insufficient. According to Mr. Trotta: When folds are welded down, as shown in the figure 3, it would necessarily result in folds remaining in the transition/cone regions of the balloon when the balloon is inflated, and even when fully inflated to the specifications on the label. Because the folds are captured within the welded region, even when the balloon is fully inflated, the pressure will distribute such that there is more pressure in the working region and less pressure at the transition regions. Thus, there is insufficient pressure in the transition cone regions for the folds to be completely removed. Ex. 1005 ¶ 119. Mr. Trotta cites no support for his opinions and offers no plausible explanation for why “pressure will distribute such that there is more pressure in the working region and less pressure at the transition regions,” rather than equal pressure throughout the interior space of a balloon. Nor are we persuaded that statements by the Examiner during prosecution identified by Petitioner, which Patent Owner contends were later abandoned by the Examiner, are sufficient to establish the inherency of the claimed feature. See Pet. 39–40; Prelim. Resp. 14–15. Petitioner has not shown by a preponderance of the evidence that Dlugos teaches “first and second cone regions of the balloon having at least one fold in the fully inflated state” because Petitioner has not shown that Dlugos necessarily teaches any cone region having at least one fold in the fully inflated state, much less both a first and a second cone region, in the absence of a persuasive showing that Dlugos teaches welding both ends of the balloon to the shaft.” slip op. at 40

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the claimed invention would have had either of the following qualifications: (1) “an undergraduate degree in mechanical manufacturing or material science engineering, as well as at least five years of experience in the industry working with catheters and balloons and the manufacturing of those devices; or without an undergraduate degree,” or (2) “ten years of working experience designing, manufacturing and/or overseeing the processes for designing and/or manufacturing the tools and/or the devices.” Pet. 14. Mr. Trotta supports Petitioner’s contention with regard to the level of ordinary skill in the art. Ex. 1005 ¶ 57. Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art. See Prelim. Resp. 6 n.3. Based on the evidence provided, including the prior art of record, we agree with Petitioner’s proposed level of ordinary skill and also find that the prior art of record further reflects the level of ordinary skill in the art. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art of record may reflect the level of ordinary skill in the art).” slip op. at 12

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

    “For the following reasons, we find insufficiently supported and unreasonably broad Petitioner’s contention that “fold” broadly includes all “lobes,” “wraps,” “wrappings,” and “protrusions,” even if those terms appear in some context in patent applications incorporated by reference to the ’767 patent. Petitioner neither identifies precisely where that context can be found in the record of this proceeding nor offers any explanation of that context to demonstrate by a preponderance of the evidence that the term, reasonably construed in light of the Specification of the ’767 patent, defines “fold” as including all “lobes,” “wraps,” “wrappings,” and “protrusions.” The mere incorporation by reference of other applications into the Specification of the ’767, absent further persuasive explanation, does not sufficiently support the proposition that the term “fold” broadly encompasses, for example, any “protrusion.” Moreover, Petitioner provides no explanation for why “examples of methods of balloon folding” that “reference” the terms “lobes,” “wraps,” “wrappings,” and “protrusions” demonstrate that the meaning of “fold” encompasses those terms. Finally, the ’767 patent expressly states that the term “fold”’ includes “pleats, wings, and any similar structure.” Ex. 1001, 3:62–63. Petitioner, however, makes no persuasive showing supported by more than conclusory assertions that all “lobes,” “wraps,” “wrappings,” and “protrusions” constitute “similar structure” to folds, pleats, or wings. Accordingly, we find the term “fold” in the ’767 patent encompasses “pleats, wings, and any similar structure.” Thus, “fold” also encompasses lobes, wraps, wrappings, or protrusions (or any other feature) only to the extent such feature constitutes “similar structure” to folds, pleats, or wings.” slip op. at 14

  Patent outcomesUS 7,828,767 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,828,767
• Riot Games, Inc. v. Paltalk Holdings, Inc.Rehearing denied
  PTAB · Jun 29, 2018 · IPR2018-00129 · APJ Thu A Dang · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 1–10, 16–18, and 31–47 based on the RFCs’ public accessibility.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS When rehearing a decision on petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board 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 establishedDecided for petitioner

    “and slides) disseminated to members of even a somewhat closed group without restriction as to further dissemination may tend to indicate public accessibility of the documents, in light of other factors, even in the absence of indexing for search purposes. See Medtronic, Inc. v. Barry, No. 2017- 1169, 2018 WL 2769092, at **8–9 (Fed. Cir. June 11, 2018) (“Further, even if the Board were correct in its assumption that Medtronic only gave the Video and Slides to the SDSG members, it did not address whether the disclosures would remain confidential.”)4 On this preliminary record, Petitioner’s evidence shows sufficiently that mailing list members would have been apprised of a new RFC’s contents, at least via the Internet Society’s newsletter’s summary, if not via the mailing list (coupled with prior knowledge of the documents via group circulation thereof), with unrestricted access to the newly published RFC documents, and without any further restriction as to dissemination. See Ex. 1026 ¶¶ 18–24. In other words, prior to official publication of RFC documents, “[t]he Area Director . . . circulates the document to the wider IETF community, for comment, and” slip op. at 7

  § 102 anticipation
  Patents in suitUS 5,822,523
• Riot Games, Inc. v. Paltalk Holdings, Inc.Rehearing denied
  PTAB · Jun 29, 2018 · IPR2018-00130 · APJ Thu A Dang · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting inter partes review of claims 1, 11–15, and 19–30 based on the RFCs’ public accessibility.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Based on the foregoing discussion, Patent Owner fails to show an overlooked or misapprehended material matter amounting to an abuse of discretion in determining Petitioner shows sufficiently that RFC 1692, RFC 1459, and RFC 791 qualify as prior art printed publications. III. CONCLUSION Patent Owner has not carried its burden of demonstrating that we misapprehended or overlooked any material matters in the Decision, and has not shown an abuse of discretion in the Decision to institute an inter partes review of the challenged claims of the ’523 patent. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that Patent Owner’s Request for Rehearing is denied.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Crocker’s testimony that the RFCs were available generally prior to the critical date, wherein a skilled artisan could have determined how to access particular RFCs based on mailing lists and newsletters discussing the RFCs. See Dec. 30–32. In particular, Mr. Crocker’s testimony included the (numbered accordingly), the “situation” regarding RFCs and the IETF, as summarized by the court employing, in part, evidence including a 1997 SEC (Securities Exchange Commission”) filing, would not have changed materially prior to the critical date (February, 1996) involved here. following: 1) “an official summary of published RFCs appeared in each issue of the Internet Society’s newsletter” which “was well-known to members of the Internet technical community as a source for an official summary of published RFCs” (id. at 31 (citing Ex. 1026 ¶ 24)); 2) a well-known mailing list announced RFCs to which anyone could subscribe since the late 1980s (id. (citing Ex. 1026 ¶ 21)); and 3) an RFC Editor publication “summarize[d] the status of all Internet protocol and service specifications” wherein “[t]hese RFCs are made publicly available pursuant to the standard RFC publication process” (id. (citing Ex. 1026 ¶ 23)). Mr. Crocker further testifies as follows: “Since the early 1990s, the RFC Editor repository has been freely accessible to the general public with no login, password, or membership requirement, and was similarly available to the Internet technical community since the 1970s.” Id. (citing Ex. 1026 ¶ 26).” slip op. at 5

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

    “of our Decision (Paper 11, “Dec.”) to institute inter partes review of claims 1, 11–15, and 19–30 of (the “challenged claims”) of U.S. Patent No. 5,822,523 and 5,822,523 C1 (Ex. 1001, the “’523 patent”). In the Decision, we instituted a trial on the following grounds asserted by Petitioner: 1) claims 1, 15, and 19–27 of the ’523 patent for obviousness over Aldred and RFC 1692; and 2) claims 11–15, 23, and 27–30 of the ’523 patent for obviousness over Aldred, RFC 1692, and Ulrich. Dec. 49. For the reasons stated below, Patent Owner’s Request for Rehearing is denied.” slip op. at 2

  § 102 anticipation
  Patents in suitUS 5,822,523
• Askeladden LLC v. Purple Leaf, LLCAll claims unpatentable
  PTAB · Feb 13, 2018 · IPR2016-01722 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 are unpatentable as obvious over four combinations; claims 12–17 are unpatentable as anticipated by Hughes.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Because it is 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), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 6

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

    “II. CLAIM CONSTRUCTION Neither party proposes that we expressly construe any claim terms, and we determine that none of the claims terms require an express construction to resolve the issues before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 5

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

    “It would have been obvious to a person of ordinary skill in the art to combine the disclosures of Carlson and Stilp because Carlson discloses “transferring data . . . via [a] cellular network.” (Ex. 1003, 4:62–64.) As such, Carlson expressly discloses the combination of its payment system with conventional cellular systems, which are described by Stilp. Moreover, Stilp discloses a registration procedure that allows cellular devices to discover each other’s presence. (Ex. 1005, 2:46–64.) It would have been obvious for one skilled in the art to modify the payment processing network (310) or access device (e.g., a POS terminal) (Ex. 1003, 4:61–61[2]) of Carlson to include the process of searching for available wireless devices in a manner similar to the cellular telephone discovery and registration process disclosed by Stilp to enable the Carlson payment processing network or access device to discover mobile phone devices (such as mobile phone 304) to participate in a mobile payment system, as disclosed in Carlson. A person of ordinary skill in the art therefore would have combined Carlson and Stilp to make the” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Anticipation by Hughes A prior art reference anticipates a patent claim if it “discloses each and every element of the claimed invention arranged or combined in the same way as in the claim.” Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1342–43 (Fed. Cir. 2018) (internal quotation and citation omitted). Petitioner contends that Hughes discloses each and every element of claims 12–17. Pet. 23–31.” slip op. at 11

  Patent outcomesUS 8,744,963 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,744,963

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.