• Zhongshan Broad Ocean Motor Co., Ltd. / Broad Ocean Motor LLC et al. v. Nidec Motor CorporationAll claims unpatentable
  PTAB · May 9, 2016 · IPR2014-01121 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–3, 8, 9, 12, 16, and 19 are unpatentable as obvious over Bessler and Kocybik and anticipated by Hideji; the motion to amend is denied.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “Generally, . . . the preamble does not limit the claims.” DeGeorge v. Bernier, 768 F.2d 1318, 1322 n.3 (Fed. Cir. 1985). In particular, “[t]he preamble of a claim does not limit the scope of the claim when it merely states a purpose or intended use of the invention.” In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994) (citing DeGeorge, 768 F.2d at 1322 n.3). In this instance, the “HVAC system” portions of the preambles of the challenged claims provide no antecedents for ensuing claim terms, with the bodies of the claims neither repeating nor referencing HVAC systems. Because the language in the bodies of the claims, standing alone, is sufficient to set forth the invention, the “HVAC system” portions merely provide a stated purpose for the invention. Accordingly, we find no slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “2. “using independent values of Q and d axis currents” In the Institution Decisions, the Board construed “using independent values of Q and d axis currents,” which is recited in independent claims 1, 16, and 19, as requiring the use of Q and d axis current values that are developed independently of each other, without relying on one to derive the other. Paper 20, 7–8; IPR2015-00762, Paper 12, 6–7. Patent Owner does not explicitly contest this construction, and advocated for this construction in its Preliminary Responses. Paper 14, 9–10; IPR2015-00762, Paper 10, 19. But Patent Owner presents arguments that implicitly construe the phrase as requiring the use of independent demand Q and d axis currents, rather than the use of independent actual Q and d axis currents. See Paper 72, 6, 8.” slip op. at 11

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

    “3. “back-emf . . . motor” In the Institution Decisions, the Board construed “back-emf . . . motor,” which is recited in claim 9, as coterminous with “permanent magnet motor.” Paper 20, 7–8; IPR2015-00762, Paper 12, 6–7. Neither party contests that construction and we adopt it for this Final Written Decision.” slip op. at 12

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

    “survey of electric motor control schemes for permanent magnet motors,8 for disclosure of sinewave commutation using vector control with independent Q and d axes to produce continuous phase currents. Id. at 43–46 (citing Ex. 1007, 11–12, 17, 37, 40, 80, 86, 140, 144, Fig. 6.3, Fig. 6.10, Figs. 7.13– 7.14, Fig. 9.1). We agree with Petitioner’s analysis as to how Bessler and Kocybik teach the limitations of claims 1, 16, and 19, which is supported by the testimony of Dr. Ehsani. See Ex. 1009 ¶¶ 47–55. Indeed, Patent Owner does not dispute that Kocybik teaches sinewave commutation using vector control with independent Q and d axes to produce continuous phase currents. Furthermore, Petitioner has provided adequate reasoning why a person of ordinary skill in the art would have effected the combination proposed (i.e., configuring the system of Bessler to perform sinewave commutation in the manner described in Kocybik), namely that the use of sinewave commutation and independent Q and d axis currents would have provided predictable results to address known problems associated with other types of motors. Pet. 1121, 36–37 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 415–421 (2007)). In particular, Petitioner reasons persuasively that “using 8 Patent Owner does not dispute Petitioner’s assertion that Kocybik qualifies as a prior art printed publication under 35 U.S.C. § 102(b). See Pet. 1121, 4; Paper 30, 3 (“Kocybik describes high end applications at the time of its publication”), 25 (“Kocybik references higher end applications at the time of its publication”); Paper 21, 3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”); Paper 70, 3 (same). 18 rectangular currents creates unwanted torque, and the use of sinusoidal currents can reduce unwanted torque and create smoother and quieter motor operation.” Id. at 37 (citing Ex. 1007, 25; Ex. 1009 ¶ 52). We are not persuaded by Patent Owner’s counterarguments. First, Patent Owner contends that Bessler teaches away from the claimed combinations because “one of the principal objects of Bessler is to eliminate the need for a system controller in an HVAC system,” and that a benefit of such elimination is a reduction in the number of microprocessors used. Paper 30, 15–16 (citing Ex. 1006, col. 1, ll. 22–34, col. 2, ll. 3–5). Patent Owner observes that Bessler “provides an integral microprocessor in its motor controller that can interpret, for example, the cycling of the on/off signal of the thermostat and directly create motor control signals without the need of a system controller developing interim system demand signals.” Id. at 19–20 (citing Ex. 1006, col. 5, l. 66–col. 6, l. 22). Like Bessler, the Specification of the ’349 patent describes that the “system controller” may be a thermostat or a separate controller : “the system controller 402 may be a thermostat, an additional control module in communication with a thermostat, or a standalone controller for the HVAC system 400.” Ex. 1001, col. 4, ll. 35–38 (emphasis added). Thus, the claims do not require a separate standalone system controller. For these reasons, Patent Owner’s teaching away arguments are not commensurate in scope with the claim language. 19 Second, Patent Owner contends that Kocybik is applied too expansively by Petitioner because Kocybik limits its disclosure to “higher end applications” like hybrid car engines, the aerospace industry, and high-accuracy machine tooling applications: “To be sure, Kocybik discusses motor control schemes including that sine wave commutation may be used with a [brushless permanent magnet] motor, but Kocybik does not discuss HVAC systems or the motors used in them.” Paper 30, 25–27. Patent Owner argues that only through hindsight reconstruction would one apply the teachings of Kocybik to Bessler because common sense in the industry cautioned against using more complex technology in HVAC systems.9 Id. at 27. But Patent Owner’s argument does not effectively rebut the testimony of Dr. Ehsani that a person of ordinary skill in the art “would have recognized that a permanent magnet motor using sinusoidal commutation, such as is disclosed in Kocybik, could result in a motor that exhibits less unwanted ripple torque and, in turn, smoother output torque.” Ex. 1009 ¶ 52 (citing Ex. 1007, 25.” slip op. at 18

  Patent outcomesUS 7,626,349 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,626,349
• Securus Technologies, Inc. v. Global Tel*link CorporationAll claims unpatentable
  PTAB · Apr 29, 2016 · IPR2015-00156 · APJ Beverly M Bunting · IPR · Final written decision

  Claims 1–8 and 11–27 are unpatentable as anticipated by Rae under pre-AIA 35 U.S.C. § 102(e).

  RulingsFinal written decision

  • Skill levelOther

    “considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Petitioner’s expert witness, Dr. Akl, attests that a person with ordinary skill in the art in the relevant time frame would be an individual who possesses a combination of experience and education in the field of telecommunications, including “data storage, data transmission and analog/digital signal processing.” Ex. 1003 ¶ 46. According to Dr. Akl, this would consist of the following: (1) a minimum of a Bachelor’s Degree in electrical engineering, computer engineering or the equivalent; and (2) 2 or more years of industry or academic experience in the relevant field. Id. Petitioner’s rebuttal witness, Dr. Forys, offers testimony as to the knowledge level of a person with ordinary skill in the art at the relevant time frame that is essentially the same as Dr. Akl’s assessment. Ex. 2010 ¶ 29. Additionally, we note that the prior art of record in this proceeding— namely, Rae—is indicative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7

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

    “arguments and evidence concerning the construction of “streaming converter.” We first look to the full phrase that includes this claim term, namely, “a streaming converter coupled to said storage device.” The claim language informs us of the connection between the “streaming converter” and the storage device, i.e., “coupled,” and is not concerned necessarily with the format of the data, i.e. compressed. Patent Owner’s arguments, however, seemingly interpret “streaming converter” in the context of the data, without consideration of the entire claim phrase. Patent Owner does not direct us to, nor do we discern, language in the claim itself requiring the data be compressed. As for the portions of the specification identified by Patent Owner, all refer to the function performed by the streaming converter, namely to convert the compressed conversation data into a streaming format. Although the cited passages describe the voice data themselves as “compressed,” Patent Owner does not direct us to, nor can we find, disclosure in the specification necessarily limiting the voice data to a particular format for transmission, such as a compressed format. Indeed, our review of the specification reveals that: the present technology provides an Integrated Access Device (IAD) 30 wherein voice signals are converted to a digital format and routed by way of a wide area network (WAN) transport mechanism to the central data center 110 for storage. IAD 30 may be embodied as a device more commonly known as a Voice over Internet Protocol (VoIP) Gateway. It is to be specifically understood, however, that the present technology does not require specific devices or systems for implementation but rather is more broadly directed to the inclusion of devices and systems designed to convert analog voice signals into a digital format suitable for transmission over a digital network.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededDecided for petitioner

    “dictionary definition of “Boolean search” does not support Patent Owner’s assertion that one of skill in the art would understand “logical search” to mean “Boolean search.” Reply 5–6. We agree. The proffered extrinsic evidence does not inform us sufficiently that one of skill in the art in the relevant time frame would equate a logical search with a Boolean search. Moreover, Patent Owner does not direct us to, nor can we find, any disclosure in the specification that supports Patent Owner’s proposed definition. Indeed, “logical search” is recited only in claims 16 and 17. We are not persuaded by Patent Owner’s arguments and evidence that the plain and ordinary meaning of “logical search” is a Boolean search. Nevertheless, the parties seemingly agree that a “logical search” is understood by one of skill in the communications field. PO Resp. 9; Reply 5; See Tr. 119:21–23 (“logical search was a well-known term”). Therefore, based on the record before us, we conclude the claim term “logical search” need not be construed expressly for purposes of this decision. 4. “file”” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed

    “We have reviewed the expert testimony from both sides, and find that both experts have, at times, taken liberties in proffering conclusory statements without real analysis.4 As such, it is within our discretion to assign the appropriate weight to the testimony of both Dr. Akl and Dr. Forys. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) 4 Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). We are not persuaded by Patent Owner’s contentions that Dr. Akl’s testimony be disregarded. Thus, we accord the testimony of both Dr. Akl and Dr. Forys the appropriate weight in view of the arguments and evidence of record in this trial. 2. Overview of Rae (Ex. 1002)” slip op. at 16

  Patent outcomesUS 7,551,732 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,551,732
• Palo Alto Networks, Inc. v. Finjan, Inc.Institution denied
  PTAB · Mar 23, 2016 · IPR2015-02000 · APJ Thomas L Giannetti · IPR · Institution

  Institution was denied for claims 1–22 because the claims were entitled to the November 6, 1997 priority date, so the asserted references were not prior art.

  RulingsInstitution decision

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

    “B. The Applicable Legal Standard Under 35 U.S.C. § 120 Under 35 U.S.C § 120, to claim the benefit of the filing date from an earlier application, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112. Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007); see also In re Hogan, 559 F.2d 595, 609 (CCPA 1977) (“[T]here has to be a continuous chain of co-pending applications each of which satisfies the requirements of § 112 with respect to the subject matter presently claimed.”). If any application in the priority chain fails to include the requisite disclosure, the later-filed application is not entitled to the benefit of the filing date of applications preceding the break in the priority chain. Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997).” slip op. at 10

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “the ʼ194 or ʼ780 patents. Pet. 12. However, as Patent Owner points out, that is not the proper test. Prelim. Resp. 13–14. The claimed subject matter need not be described “in haec verba” in the original specification in order to satisfy the written description requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989). Rather, “the test . . . is whether a person of ordinary skill in the art would recognize that the applicant possessed what is claimed in the later filed application as of the filing date of the earlier filed application.” Noelle v. Lederman, 355 F.3d 1343, 1348 (Fed. Cir. 2004). We are persuaded that, on the record presented, this test has been met. We are persuaded that the disclosure in the ʼ194 patent of a security database storing “known Downloadables” provides written description support for the file cache recitation in the ʼ731 patent claims. Prelim. Resp. 17–19. Petitioner does not dispute that known Downloadables are files. Pet. 26 (“Touboul discloses generating and using a Downloadable ID (file identifier) to identify each Downloadable (file).”). Moreover, Petitioner specifically refers to components of the security database as caches: “Claim 1 [of the ʼ731 patent] is the obvious combination of a cache such as the cache taught by Tso with the scanner, security profile cache, and security policy cache in Touboul’s gateway as detailed below.” Pet. 20 (emphasis added). We see no basis to distinguish these descriptions of caches from the storage of Downloadables in the security database. Moreover, we are persuaded that a security database providing temporary storage of known Downloadables meets the requirements of a cache as “a memory for holding a file, at least temporarily.” See supra.” slip op. at 11

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “E. Conclusion We agree with Patent Owner that the ʼ731 patent claims are entitled to the benefit of the grandparent application filed on November 6, 1997. Accordingly, Touboul and the other art asserted by Petitioner does not qualify as prior art to the ʼ731 patent under 35 U.S.C. § 102(b), as asserted by Petitioner.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded, either, by Petitioner’s position, unsupported by any citation of authority, that Patent Owner’s decision not to claim the benefit of the earlier filing date during prosecution of the ʼ731 patent is an admission. Nor are we persuaded by the conclusory testimony of Petitioner’s expert on the filing date issue. See Rubin Decl. ¶ 69. Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a).” slip op. at 13

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 7,418,731
• Broad Ocean Technologies, LLC v. Nidec Motor CorporationRehearing denied
  PTAB · Mar 7, 2016 · IPR2015-01617 · APJ Patrick M Boucher · IPR · Rehearing

  The Board denied rehearing, leaving claims 1–6 uninstituted because Beifus did not disclose adjusting all motor torque settings with the adjustment factor.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

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

    “diamonds and squares) of an induction-motor speed-torque curve that may be stored within the memory of an electrically commutated motor (“ECM”) circuit, including breakdown speed, no-load or synchronous speed, and a “shape description number” used in calculating new torque demands. Ex. 1007 ¶ 36. The drawing illustrates scaling of the torque by a factor less than one between a breakdown speed of 1050 RPM and a no-load speed of 1200 RPM, with no scaling at speeds less than the breakdown speed. Id. That is, when Beifus adjusts torque settings at any particular operating speed that is between the breakdown speed and the no-load speed, the same adjustment factor is applied; consequently, torque settings of the motor are adjusted “with the adjustment factor to obtain proportionally reduced torque settings,” as recited in independent claim 1.” slip op. at 4

  • BurdenDecided for patent owner

    “On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  § 102 anticipation
  Patents in suitUS 7,990,092
• Mitchell International, Inc. v. Audatex North America, Inc.All claims unpatentable
  PTAB · Feb 19, 2016 · CBM2014-00174 · APJ Lora M Green · CBM · Final written decision

  Claims 1–31 are unpatentable under § 101 and anticipated by or obvious over Reimel; the motion to amend with substitute claims 32–62 is denied.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We have carefully considered Patent Owner’s arguments, but we do not agree that the broadest reasonable interpretation of “insurance claim,” when read in light of the Specification, is a “request to recover market value or repair cost in association with an insurance policy.” The portion of the Specification Petitioner is relying upon is only describing the state of the art at the time of invention. Moreover, it uses terms such as “may” and “typically,” and, thus, does not explicitly define “insurance claim” as Patent Owner would have us do. Thus, we see no reason to deviate from the construction of the claim term “data relating to an insurance claim for a damaged vehicle” that we adopted in the Decision on Institution; that is, as encompassing, but not being limited to, any data that would be used in making an insurance claim. Dec. 12. Moreover, even if we were to adopt Patent Owner’s more limited construction of “insurance claim,” Patent Owner does not explain how that would further limit the data that would be entered, and in fact, Patent Owner notes (PO Resp. 1) that it does not disagree with the interpretation of “data” we adopted in the Decision on Institution.” slip op. at 10

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “Here, we observe that each challenged claim is directed to the fundamental concept of providing a vehicle valuation using information about the vehicle. Patent Owner contends that, unlike the claims in Parker v. Flook, 437 U.S. 584 (1978), the claims at issue in the instant proceeding are not drawn to an algorithm. PO Resp. 12–14. When the claims are analyzed as a whole, as urged by Patent Owner (PO Resp. 10), however, the claims recite nothing more than the collection of information to generate a valuation report for a damaged vehicle. Moreover, all the steps could be performed without the use of a computer. Specifically, the steps and calculations covered by the claims essentially require determining the value of a damaged vehicle by entering data related to an insurance claim, such as mileage and vehicle condition, and processing the data to generate a valuation report for the damaged vehicle; a calculation that can be performed by the human mind, or with the aid of pencil and paper. See, e.g., Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., No. 2015-1415, 2016 WL 362415, at *7 (Fed. Cir. Jan. 20, 2016) (noting that the steps of the claims could be performed by a human without the use of a computer in concluding that the claims at issue were drawn to an abstract idea). The fact that the claims at issue are not per se drawn to an algorithm does not insulate them from being found an abstract idea. The claims in Alice were drawn to “a computer-implemented scheme for mitigating ‘settlement risk’ . . . by using a third-party intermediary.” Alice, 134 S. Ct. at 2351–52. The claims at issue in Mortgage Grader were drawn to a computer-implemented system that allowed borrowers to shop anonymously for loan packages from a plurality of lenders. Mortgage Grader, 2016 WL 362415, at *1. Thus, the fact that the claims in those cases were not specifically drawn to an algorithm did not prevent them from being drawn to an abstract idea. We are persuaded that, similar to the concept of intermediated settlement in Alice, the concept of risk hedging in Bilski, and the concept of shopping anonymously for loan packages in Mortgage Grader¸ the concept at issue here—obtaining a vehicle valuation report for a damaged vehicle— is “a fundamental economic practice long prevalent in our system of commerce,” and “squarely within the realm of ‘abstract ideas.’” Alice, 134 S. Ct. at 2356–57; Bilski, 130 S. Ct. 3231. Accordingly, we determine that Petitioner has demonstrated that the challenged claims are directed to a patent-ineligible abstract idea.” slip op. at 16

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

  Patent outcomesUS 8,200,513 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Phillips · KSR · Graham
  Patents in suitUS 8,200,513
• Mitchell International, Inc. v. Audatex North America, Inc.All claims unpatentable
  PTAB · Feb 19, 2016 · CBM2014-00173 · APJ Lora M Green · CBM · Final written decision

  Claims 1–31 are unpatentable under § 101 and §§ 102(b)/103(a) over Reimel; the motion to amend with substitute claims 32–62 is denied.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “not agree that the broadest reasonable interpretation of “insurance claim,” when read in light of the Specification, is a “request to recover market value or repair cost in association with an insurance policy.” The portion of the Specification Petitioner is relying upon is only describing the state of the art at the time of invention. Moreover, it uses terms such as “may” and “typically,” and, thus, does not explicitly define “insurance claim” as Patent Owner would have us do. Thus, we see no reason to deviate from the construction of the claim term “data relating to an insurance claim for a damaged vehicle” that we adopted in the Decision on Institution; that is, as encompassing, but not being limited to, any data that would be used in making an insurance claim, so long as the data includes a vehicle year, model, and geographic location. Dec. 12–13. Moreover, even if we were to adopt Patent Owner’s more limited construction of “insurance claim,” Patent Owner does not explain how that would further limit the data that would be entered, and in fact, Patent Owner notes (PO Resp. 1) that it does not disagree with the interpretation of “data” we adopted in the Decision on Institution.” slip op. at 11

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

    “3. Other Claim Terms We determine that we need not interpret expressly other claim limitations for purposes of this decision. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (internal citations omitted).” slip op. at 14

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “Here, we observe that each challenged claim is directed to the fundamental concept of providing a vehicle valuation using information about the vehicle. Patent Owner contends that, unlike the claims in Parker v. Flook, 437 U.S. 584 (1978), the claims at issue in the instant proceeding are not drawn to an algorithm. PO Resp. 12–14. When the claims are analyzed as a whole, as urged by Patent Owner (id. at 10), however, the claims recite nothing more than the collection of information to generate a valuation report for a damaged vehicle. Moreover, all the steps could be performed without the use of a computer. Specifically, the steps and calculations covered by the claims essentially require determining the value of a damaged vehicle by entering data related to an insurance claim, such as mileage and vehicle condition, and processing the data to generate a valuation report for the damaged vehicle; a calculation that can be performed by the human mind, or with the aid of pencil and paper. See, e.g., Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., No. 2015-1415, 2016 WL 362415, at *7 (Fed. Cir. Jan. 20, 2016) (noting that the steps of the claims could be performed by a human without the use of a computer in concluding that the claims at issue were drawn to an abstract idea). The fact that the claims at issue are not per se drawn to an algorithm does not insulate them from being found an abstract idea. The claims in Alice were drawn to “a computer-implemented scheme for mitigating ‘settlement risk’ . . . by using a third-party intermediary.” Alice, 134 S. Ct. at 2351–52. The claims at issue in Mortgage Grader were drawn to a computer-implemented system that allowed borrowers to shop anonymously for loan packages from a plurality of lenders. Mortgage Grader, 2016 WL 362415, at *1. Thus, the fact that the claims in those cases were not specifically drawn to an algorithm did not prevent them from being drawn to an abstract idea. We are persuaded that, similar to the concept of intermediated settlement in Alice, the concept of risk hedging in Bilski, and the concept of shopping anonymously for loan packages in Mortgage Grader, the concept at issue here—obtaining a vehicle valuation report for a damaged vehicle— is “a fundamental economic practice long prevalent in our system of commerce,” and “squarely within the realm of ‘abstract ideas.’” Alice, 134 S. Ct. at 2356–57; Bilski, 130 S. Ct. 3231. Accordingly, we determine that Petitioner has demonstrated that the challenged claims are directed to a patent-ineligible abstract idea.” slip op. at 17

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “We agree with Petitioner’s analysis that the claims do not add additional substantive limitations that transform their nature into a patent-eligible application of an abstract idea. The only technological features recited in the claims at issue in this proceeding are generic computer implementation systems performing generic computer functions. As acknowledged by Patent Owner’s expert, the claims do not improve the function of the computer, they do not solve a problem unique to the internet, nor are they tied to a particular machine or apparatus. Ex. 1015, 223:4–20; 231:9–232:1. Simply utilizing a generic computer system to generate a vehicle valuation report is not enough to transform a patent-ineligible claim into a patent-eligible invention. See Bancorp Servs. LLC v. Sun Life Assurance Co. of Canada, 687 F.3d 1266, 1279 (Fed. Cir. 2012) (finding a claim not patent-eligible when “the computer simply performs more efficiently what could otherwise be accomplished manually”); SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly.”). Nearly every computer has the capability of performing basic calculation, storage, and transmission functions. See Alice, 134 S. Ct. at 2360. At most, the computer implementation involved in the claims at issue here is an attempt to limit use of the abstract concept to a particular technological environment. Claims that simply instruct the practitioner to implement the abstract idea with routine, conventional activity do not transform an abstract idea into patent eligible subject matter. Ultramercial, 772 F.3d at 716. The claims simply instruct the practitioner to use the internet to obtain a vehicle valuation, without reciting further unconventional features of that system.” slip op. at 20

  Patent outcomesUS 8,468,038 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Phillips · KSR · Graham
  Patents in suitUS 8,468,038
• Mitchell International, Inc. v. Audatex North America, Inc.All claims unpatentable
  PTAB · Feb 19, 2016 · CBM2014-00171 · APJ Lora M Green · CBM · Final written decision

  Claims 1–29 are unpatentable under § 101 and anticipated or obvious over Reimel; the motion to amend with substitute claims 30–58 is denied.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “Here, we observe that each challenged claim is directed to the fundamental concept of providing a vehicle valuation using information about the vehicle. Patent Owner contends that, unlike the claims in Parker v. Flook, 437 U.S. 584 (1978), the claims at issue in the instant proceeding are not drawn to an algorithm. PO Resp. 13–14. When the claims are analyzed as a whole, as urged by Patent Owner (id. at 10), however, the claims recite nothing more than the collection of information to generate a valuation report for a damaged vehicle. Moreover, all the steps could be performed without the use of a computer. Specifically, the steps and calculations covered by the claims essentially require determining the value of a damaged vehicle by entering data related to an insurance claim, such as mileage and vehicle condition, and processing the data to generate a valuation report for the damaged vehicle; a calculation that can be performed by the human mind, or with the aid of pencil and paper. See, e.g., Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., No. 2015-1415, 2016 WL 362415, at *7 (Fed. Cir. Jan. 20, 2016) (noting that the steps of the claims could be performed by a human without the use of a computer in concluding that the claims at issue were drawn to an abstract idea). The fact that the claims at issue are not per se drawn to an algorithm does not insulate them from being found an abstract idea. The claims in Alice were drawn to “a computer-implemented scheme for mitigating ‘settlement risk’ . . . by using a third-party intermediary.” Alice, 134 S. Ct. at 2351–52. The claims at issue in Mortgage Grader were drawn to a computer-implemented system that allowed borrowers to shop anonymously for loan packages from a plurality of lenders. Mortgage Grader, 2016 WL 362415, at *1. Thus, the fact that the claims in those cases were not specifically drawn to an algorithm did not prevent them from being drawn to an abstract idea. We are persuaded that, similar to the concept of intermediated settlement in Alice, the concept of risk hedging in Bilski, and the concept of shopping anonymously for loan packages in Mortgage Grader, the concept at issue here—obtaining a vehicle valuation report for a damaged vehicle— is “a fundamental economic practice long prevalent in our system of commerce,” and “squarely within the realm of ‘abstract ideas.’” Alice, 134 S. Ct. at 2356–57; Bilski, 130 S. Ct. 3231. Accordingly, we determine that Petitioner has demonstrated that the challenged claims are directed to a patent-ineligible abstract idea.” slip op. at 17

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “We agree with Petitioner’s analysis that the claims do not add additional substantive limitations that transform their nature into a patent-eligible application of an abstract idea. The only technological features recited in the claims at issue in this proceeding are generic computer implementation systems performing generic computer functions. As acknowledged by Patent Owner’s expert, the claims do not improve the function of the computer, they do not solve a problem unique to the internet, nor are they tied to a particular machine or apparatus. Ex. 1015, 223:4–20; 231:9–232:1. Simply utilizing a generic computer system to generate a vehicle valuation report is not enough to transform a patent-ineligible claim into a patent-eligible invention. See Bancorp Servs. LLC v. Sun Life Assurance Co. of Canada, 687 F.3d 1266, 1279 (Fed. Cir. 2012) (finding a claim not patent-eligible when “the computer simply performs more efficiently what could otherwise be accomplished manually”); SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly”). Nearly every computer has the capability of performing basic calculation, storage, and transmission functions. See Alice, 134 S. Ct. at 2360. At most, the computer implementation involved in the claims at issue here is an attempt to limit use of the abstract concept to a particular technological environment. Claims that simply instruct the practitioner to implement the abstract idea with routine, conventional activity do not transform an abstract idea into patent eligible subject matter. Ultramercial, 772 F.3d at 716. The claims simply instruct the practitioner to use the internet to obtain a vehicle valuation, without reciting further unconventional features of that system.” slip op. at 20

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We have carefully considered Patent Owner’s arguments, but we do not agree that the broadest reasonable interpretation of “insurance claim,” when read in light of the Specification, is a “request to recover market value or repair cost in association with an insurance policy.” The portion of the Specification Petitioner is relying upon is only describing the state of the art at the time of invention. Moreover, it uses terms such as “may” and “typically,” and, thus, does not explicitly define “insurance claim” as Patent Owner would have us do. Thus, we see no reason to deviate from the construction of the claim term “data relating to an insurance claim for a damaged vehicle” that we adopted in the Decision on Institution; that is, as encompassing, but not being limited to, any data that would be used in making an insurance claim. Dec. 12–13. Moreover, even if we were to adopt Patent Owner’s more limited construction of “insurance claim,” Patent Owner does not explain how that would further limit the data that would be entered, and in fact, Patent Owner notes (PO Resp. 1) that it does not disagree with the interpretation of “data” we adopted in the Decision on Institution.” slip op. at 11

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

    “As to the anticipation challenge, Patent Owner contends that, if the claim term “valuation report for the damaged vehicle” is construed as “a report that provides a value of the vehicle that was damaged, before the vehicle was damaged, based on factors including mileage, condition, and geographic location,” Reimel cannot anticipate the challenged claims. PO Resp. 7–8. In particular, Patent Owner argues that “Reimel does not explicitly, or inherently, disclose providing a market value for a damaged vehicle before the vehicle was damaged.” Id. That argument is not convincing, because as discussed above, we decline to construe the claim term “valuation report for the damaged vehicle” as “a report that provides a value of the vehicle that was damaged, before the vehicle was damaged, based on factors including mileage, condition, and geographic location.” Thus, Reimel anticipates the challenged claims to the extent they are construed as providing a valuation report for a damaged vehicle for the value of the vehicle after the damage was sustained. Patent Owner contends further that “Reimel does not disclose providing web pages that allow for entry of data related to an insurance claim that request recover[y] of the market value of the vehicle cost or repair cost as required by the claims.” Id. at 7. According to Patent Owner, the only portion of Reimel that relates to use by an insurance company is the following: Insurance companies may use the present invention to evaluate crashed vehicles as well as the damage to stolen vehicles. The present invention will provide a neutral objective standard for assessment of such vehicles by insurance adjusters. Id. (quoting Ex. 1010, 10:13–15). According to Patent Owner, that passage “lacks any disclosure, explicit or inherent, regarding a web page that relates to an insurance claim to request a recovery of market value or repair cost of a damaged vehicle.” Id. (citing Ex. 2006 ¶ 39). That argument by Patent Owner is again not convincing. Claim 1 requires the step of “entering data relating to the insurance claim.” Similarly, the system of claim 10, the server of claim 18, and the computer program storage medium of claim 24 require “web pages [that] allow for receipt of data relating to an insurance claim.” As construed above, data relating to an insurance claim encompasses any data that would be used in making an insurance claim, which encompasses the various characteristics of the vehicle to be valued disclosed by Reimel. We reiterate that there is nothing in the Specification of the ’740 patent that limits the claimed method, system, server, or computer program storage medium to determining a pre-damaged valuation of the vehicle. That is, determining the value of a damaged vehicle as required by the independent claims, as construed above, encompasses determining the value of the vehicle in either” slip op. at 27

  Patent outcomesUS 7,912,740 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Phillips · KSR · Graham
  Patents in suitUS 7,912,740
• Zhongshan Broad Ocean Motor Co., Ltd. / Broad Ocean Motor LLC et al. v. Nidec Motor CorporationAll claims unpatentable
  PTAB · Jan 12, 2016 · IPR2014-01122 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 9 and 21 are unpatentable: claim 9 is anticipated by Chen, and claim 21 is anticipated by Kusaka.

  RulingsFinal written decision

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

    “We agree with Petitioners’ analysis. Pet. 26–30. In particular, the intermediate calculation of [(𝑅2 + (𝜔𝐿𝑠)2)/3𝐾𝑒]𝑇𝑐𝑚𝑑 is a “scaled torque demand,” as we have construed the term, because it is calculated from the received torque demand Tcmd based on at least the machine-specific parameters for winding resistance R and motor inductance Ls. As Petitioners observe, Chen itself makes clear that these are motor specific parameters by specifying the value of the parameters for an “exemplary motor.” Reply 11– 12 (citing Ex. 1006, col. 4, ll. 26–49). The result of the intermediate calculation is also a “function of a speed of the machine” ω, as required by claim 9 through reference to claim 1.” slip op. at 9

  Patent outcomesUS 7,208,895 unpatentable
  § 102 anticipation
  Patents in suitUS 7,208,895
• Sensus USA, Inc. v. Certified Measurement, LLCInstitution denied
  PTAB · Dec 11, 2015 · IPR2015-01439 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 43 unpatentable over any asserted ground.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may be instituted only if “the information presented in the [P]etition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the [P]etition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, we are persuaded that Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’453 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’453 patent.” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Patent Owner contends that Petitioner’s identification of the real parties-in-interest is incomplete, and that the Petition should be denied as failing to comply with 35 U.S.C. § 312(a)(2). Prelim. Resp. 30–31. Patent Owner asserts that in a related litigation involving the ’453 patent, Petitioner identified an insurance company as covering some of the costs of defending the action against Patent Owner. See Ex. 2001. Patent Owner argues: A hallmark of indemnity or insurance agreements that are available to satisfy part or all of a judgment or to reimburse payments of same is an ability for the insurer or indemnitor to control over [sic] aspects of the litigation, including the defense and maintenance of an inter partes review which seek[s] to invalidate the subject patent. Prelim. Resp. 30. Patent Owner’s argument is generic and fails to identify any specific evidence that any parties other than those identified by Petitioner actually is exercising control over or could exercise control over this proceeding.1 Accordingly, we decline to deny the Petition on this basis. D. The References Petitioner relies on the following references: U.S. Patent No. 4,077,005, issued Feb. 28, 1978 (Ex. 1005, “Bishop”); U.S. Patent No. 5,199,068, issued Mar. 30, 1993 (Ex. 1006, “Cox”); U.S. Patent No. 5,689,442, issued Nov. 18, 1997 (Ex. 1007,” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Petitioner does not propose a construction for “augmented measurement” aside from stating that it “is described in the individual claims of the patent.” Pet. 17. Nevertheless, Petitioner’s argument suggests that generating an “augmented measurement” requires effecting some combination of the elements recited in the claim—the first signal, the second signal, and the third signal. See Pet. 27 (asserting that Cox disclosing “combining” the previously recited elements of the claim in arguing that Cox teaches “generating an augmented measurement”). Thus, both Petitioner and Patent Owner recognize that generating an augmented measurement requires combining specified elements of the claim. We agree. The parties’ recognition that an augmented measurement requires combining specified elements of the claim is consistent with the specification of the ’453 patent. The ’453 patent explains that an “augmented measurement comprising the cleartext time plus the physical measurement” is created by adding a physical measurement of any physical parameter or event to a time. Ex. 1001, 7:66–8:2.” slip op. at 13

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

    “Petitioner’s argument is not persuasive because Petitioner fails to show that Bishop’s position P signal is formed from two separate signals based at least in part on two physical measurements. Petitioner’s cited portions of Bishop fail to disclose how position P is generated aside from stating that “position P of the ship is determined to an accuracy of + 2 nm . . . by the ship’s navigation equipment 48.” Ex. 1005, 2:63–66. Petitioner, however, has not identified where, if at all, Bishop discloses how the navigation equipment generates the position of the ship. Petitioner’s citations to Bishop’s column 3 refer to Bishop’s disclosure of generating a combined message, which Bishop designates as IS + P + T1, and then enciphers. See, e.g., id. at 3:7–23. Additionally, Petitioner’s reliance on paragraph 40 of the Nielson Declaration fares no better. Dr. Nielson’s testimony includes the same statements as the Petition without providing additional explanation or evidentiary support for us to conclude that Bishop expressly or inherently discloses that its position P signal is formed from two separate signals based at least in part on two physical measurements. See 37 C.F.R. § 42.65(a). Accordingly, on this record, we are not persuaded that Petitioner has established a reasonable likelihood of prevailing on the assertion that Bishop discloses each and every element of claim 43 of the ’453 patent.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,289,453
• Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Nov 30, 2015 · IPR2014-00553 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–3, 5–10, 13, 18, and 23 are unpatentable under § 103; claims 4, 11–12, 14–17, and 19–22 were not shown unpatentable.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPrinted publication establishedDecided for petitioner

    “A reference is established to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” In” slip op. at 8

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

    “the art “would have appreciated the benefit of including multi-carrier modulation in the Wu system” because “Wu itself references the 802.11a standard as a multi-carrier OFDM scheme that is able to achieve data rates that are faster than the 802.11b transmission rates used in the Wu system.” Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–68; Ex. 1108, 411). Petitioner contends that [w]ith this motivation in mind a [person of ordinary skill in the art] would have recognized that adding the multi-carrier 802.11a modulation scheme to the modulation schemes already available in the Wu system would have been a simple addition, if a technique was available for using a channel estimate obtained from data modulated according to a single carrier modulation scheme for acquisition of data modulated according to a multi-carrier modulation scheme[,] and supports that contention with testimony by Dr. Almeroth. Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–68). Petitioner identifies such a technique as disclosed by Böhnke. Id. at 49. Böhnke “relates to the mapping of data and pilot symbols in an OFDM-system.” Ex. 1113, col. 1, ll. 4–5. Figure 2 of Böhnke is reproduced below. Figure 2 illustrates a sequence that includes a first OFDM modulated signal S1, a midamble MA that can be OFDM modulated or single-carrier modulated, and a second OFDM symbol S2. Id. at col. 4, ll. 36–41. The midamble can be used for the transmission of pilot symbols, which “are necessary for a channel estimation such as to effect coherent detection of e.g. OFDM-modulated signals,” and such pilot symbols can be created by a single carrier modulation with a known training sequence. Id. col. 1, ll. 7–9, col. 5, ll. 45–49, col. 5, ll. 61–63. Böhnke, thus, uses the channel estimation obtained from the single-carrier training sequence to detect multi-carrier OFDM symbols by matching bandwidth and performing synchronization. Id. at col. 2, ll. 43–45, col. 2, ll. 61–62. Petitioner reasons that the Böhnke channel-estimation techniques “provide a way to combine a high-rate, multicarrier OFDM data transmission scheme with a single carrier training sequence” and that [w]ith this background, a [person of ordinary skill in the art] investigating options for including the multi-carrier 802.11a standard in the Wu system would have appreciated that Bohnke’s channel estimation techniques could be applied to Wu’s single-carrier 802.11b preamble and used for acquisition of data modulated according to multi-carrier 802.11a.” slip op. at 12

  • BurdenMixed

    “We agree with Patent Owner that Petitioner’s analysis of claim 22, which recites separate single-carrier and multi-carrier receivers, as well as a switch coupled to such receivers, is deficient. Petitioner’s assertion that claim 22 is unpatentable for “reasons similar to those explained in regards to claims 1-3 and 5” insufficiently addresses these limitations, which do not appear in claims 1–3 or 5. Pet. 58.” slip op. at 23

  Patent outcomesUS 6,754,195 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,754,195

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.