• SAP America, Inc. v. Lakshmi ArunachalamAll claims unpatentable
  PTAB · Dec 21, 2017 · CBM2016-00081 · APJ Kevin F Turner · CBM · Final written decision

  Claims 20 and 21 are unpatentable under § 101 and § 103; the motion to amend proposing claims 22–49 is denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner argues that “[b]ased on the technologies disclosed in the ’506 patent, one of ordinary skill in the art at the time of the alleged invention would have had the equivalent of a Bachelor’s degree or higher in computer science or computer engineering, as well as at least 3–5 years of academic or industry experience in the relevant field.” Pet. 10 (citing Ex. 1002 ¶ 22). Although Patent Owner does not address the level of ordinary skill in its Patent Owner’s Response, Patent Owner does opine about the same in its Motion to Amend. Therein, Patent Owner argues that: a person of ordinary skill in the art in 1995 would have been a person who had a degree in computer science, or the equivalent of that degree, and some substantive experience with Web technologies then being developed and considered by persons then working on internet systems. [Ex. 2006, 23] It would have been very rare to find anyone to have had a computer degree and as much as three to five years of experience in the area of Web technology as of November 1995. (Id.) Mot. Amend 5–6. Based on the positions of Petitioner and Patent Owner, we find mostly agreement as to the level of skill of such ordinarily skilled artisans and we are persuaded that one of ordinary skill in the art at the time of the invention would have had the equivalent of a degree in computer science or computer engineering, as well as some substantive experience 29 with Web technologies then being developed and considered by persons then working on Internet systems. This level of skill is considered and applied in the grounds below.” slip op. at 29

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

    “networked object,” and that we “willfully left out ‘Individual’ and only construed ‘Network Object.’” PO Resp. 36. Patent Owner is correct that we did not construe “individual networked object.” The reason is that it is not a term recited in the challenged claims, nor claim 14, from which the challenged claims depend. We construed “networked object,” i.e., without “individual,” because it is a term recited in the claims. Patent Owner also argues that the proper construction of “networked object” is “the information entries and attributes in a DOLSIB [distributed on-line service information base].” Id. (citing Ex. 1001, 8:50–54). We do not agree. Although the specification of the ’506 Patent details that “[t]he networked object identity 11 identifies the information entries and attributes in the DOLSIB as individual networked objects,” that is not a definition of “network objects.” We continue to find that the broadest reasonable construction, in view of the specification, of “networked object” is “an object that operates within a network or transmitted over a network.” We are not persuaded that “individual networked object” need be construed because it is not a claim term, and we are not persuaded that every recitation of “networked object” must refer to an “individual networked object.” Patent Owner argues that we did not construe the claim term “attributes,” which should be understood as “characteristics of an object.” Id. at 36–37 (citing Ex. 1001, 4:45–58, 23:19–25). Petitioner counters that the passages cited by Patent Owner do not support the proffered definition, because those passages do not contain the word “attribute.” Pet. Reply 4. Although Patent Owner’s construction is not unreasonable, claim 14 already recites that the step of “associating an object identity with information entries and attributes,” so that “attributes” need not be referred to as “characteristics of an object,” since such an association is already directly recited in the claims. As such, we are not persuaded that the claim term “attributes” needs explicit construction. Similarly, Patent Owner argues that “information entries” should be construed as “values of the characteristics of an object.” PO Resp. 37 (citing Ex. 1001, 4:45–58, 23:19–25). Again, we find it unnecessary to tie “information entries” to an object, since the association is already provided 12 in claim 14. Therefore, we are not persuaded that the claim term “information entries” needs explicit construction. With respect to the claim term “virtual information store,” we construed that term as “an information store in which information entries and attributes are associated with a networked object identity,” as discussed above. Patent Owner argues that we have not given proper effect to the word “virtual,” arguing that the proper construction is “a transient information store that is temporarily created and which contains information entries and attributes associated with a networked object identity.” PO Resp. 39–41. Patent Owner cites to the specification of the ’506 Patent (Ex. 1001, 3:1–5, 8:47–54), and “[t]he IBM Computer Dictionary” (id.), but, as Petitioner points out, Patent Owner has not “submitted this dictionary as an exhibit or provided any further information to locate the dictionary.” Further, the sections of the ’506 Patent cited by Patent Owner are not explicit about the store being “transient” or “temporarily created;” this is an inference drawn by Patent Owner. See PO Resp. 40. The introduction of the terms “transient” and “temporarily” to the construction adds more ambiguity to the claim term because the specification of the ’506 Patent does not discuss how long any “virtual information store” would be stored or maintained. In addition, we are not persuaded that Patent Owner’s provision of affirmatively containing the information entries and attributes is necessary because having a store in which the information entries and attributes are associated with a networked object identity would have been understood by ordinarily skilled artisans as being a store containing those elements. 13 Therefore, we are not persuaded that the claim term “virtual information store” requires a different construction and we maintain the construction provided in the Institution Decision, which is reproduced above.” slip op. at 11

  • BurdenUnpatentable

    “not have been obvious to make any changes to Lawlor’s system,” and that “the whole purpose of Lawlor is to establish a system built upon an existing software and infrastructure that would require no changes.” PO Resp. 80–81 (emphasis in original). We do not agree. We agree with Petitioner that Patent Owner misinterprets Lawlor’s teachings, “improperly concluding that Lawlor teaches away from any combination or modification.” Pet. Reply 24 (emphasis in original). Lawlor explains that “[b]ecause the central computer interacts with the user's bank as a standard POS or ATM network node, no significant software changes are required at the banks’ computers,” demonstrating that Lawlor makes use of a standard ATM network and existing external systems without significant modification. Ex. 1004, Abstr. As explained by Dr. Sirbu, incorporation of techniques described in CORBA into Lawlor’s system would not require modification to the external systems of Lawlor or additional processing at the central computer of Lawlor. Ex. 1002 ¶ 72. Lawlor system does not restrict or disparage modification, and Patent Owner has not pointed out any portion that purportedly restricts or disparages modification. Patent Owner also argues that Lawlor does not disclose “an OSI Layer 7 application layer switch as is the VAN Switch in FIG. 5B.” PO Resp. 79. As discussed above, however, challenged claims 20 and 21 do not recite a VAN switch, and the only consideration of such a switch comes from Patent Owner’s claims constructions that we do not adopt. As such, we are persuaded that Petitioner has shown by a 45 preponderance of the evidence that claim 20 is unpatentable over the combination of Lawlor and CORBA, and that the subject matter of claim 21 is unpatentable over the combination of Lawlor, CORBA and Billings.” slip op. at 45

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “2. 37 C.F.R. § 42.221(a)(2)(i) Rule 221(a)(2)(i) requires that the amendments in a motion to amend must respond to a ground of unpatentability involved in the trial. Patent Owner’s new claims do not respond to any ground of unpatentability in the trial. Those grounds are based on 35 U.S.C. §§ 101, 103 and directed at claims 20 and 21. Pet. 28–73. Both claims 20 and 21 depend on claim 14 and the grounds of unpatentability consider all of the elements of claim 14. Thus, for example, new claim 25, which recites “[t]he apparatus of claim 14, wherein the user device is a multi-media device,” does not purport to demonstrate that such a claim brings the subject matter into the scope of § 101, nor that such a multi-media device would not be obvious over Lawlor, CORBA, and Billings. See Mot. Amend 9–17. Patent Owner’s analysis addresses claims 22–49 as a group and does not address all of the elements of the new claims. Id. Patent Owner also fails to indicate if any of the new claims include any feature of the challenged claims. For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(a)(2)(i). 3. 37 C.F.R. § 42.221(a)(2)(ii) and 35 U.S.C. § 326(d)(3) Rule 221(a)(2)(i) requires that the amendment may not seek to enlarge the scope of the claims of the patent. We also note that this rule is fully supported by 35 U.S.C. § 326(d)(3), which details that “[a]n amendment under this subsection may not enlarge the scope of the claims of the patent.” Patent Owner appears to take this rule as merely requiring that “the new claims do not enlarge the scope of any of the old claims.” Mot. Amend 3. 52 The “old claims,” however, are the only two claims existing in the ’506 Patent, namely claims 20 and 21. They are the “scope of the claims of the patent,” and the scope cannot refer to any claim that might have existed during the prosecution of the ’506 Patent. See Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1329–30 (Fed. Cir. 2003). Therefore, we look to the scope of claims 20 and 21 to determine the scope of the claims of a patent. Proposed new claims in the Motion to Amend improperly enlarge the scope of claims 20 and 21. For example, new claim 27 recites “[t]he apparatus of claim 14, wherein the service is configurable specific to the context of a Web merchant.” This proposed claim is broader, in at least one aspect, than claims 20 and 21, which also depend from claim 14, because it contains none of the elements of claims 20 and 21, although it adds an additional element, i.e., “the service is configurable specific to the context of a Web merchant.” For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(a)(2)(ii) or 35 U.S.C. § 326(d)(3). 4. § 42.221(a)(3) and 35 U.S.C. § 326(d)(1)(B) Section (a)(3) of Rule 221 discusses that a patent owner must propose a reasonable number of substitute claims, and goes on to discuss that “[t]he presumption is that only one substitute claim would be needed to replace each challenged claim, and it may be rebutted by a demonstration of need.” The claims subject to the instant proceeding are claims 20 and 21, such that the normal presumption would be for the inclusion of two substitute claims. 53 Patent Owner does not address why the proposed 28 claims are a reasonable number of substitutes for the 2 challenged claims, so Patent Owner cannot be said to have rebutted the one for one presumption by any demonstration of need. We also note that this rule is fully supported by 35 U.S.C. § 326(d)(1)(B), which details that for the amendment of a patent, for each challenged claim, “a reasonable number of substitute claims” must be proposed. Petitioner points out that the meaning of “reasonable number of substitute claims” has been previously addressed by the Board, providing “in the absence of special circumstance, a challenged claim can be replaced by only one claim, and a motion to amend should, for each proposed substitute claim, specifically identify the challenged claim which it is intended to replace.” Opp. 1–2 (citing Idle Free at 5). Furthermore, as Petitioner addresses, Patent Owner has failed to identify which of the challenged claims are intended to be replaced by the new claims. Id. Patent Owner’s response appears to be that “PO does not propose a reasonable number of substitute claims, because it is not necessary.” PO Reply 2. This, however, is not responsive. For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(a)(3) or the statutory requirements of § 326(d)(1)(B). 5. 37 C.F.R. § 42.221(b)(1) Rule 221(b)(1) requires that a motion to amend must show the changes clearly and set for the support in the original disclosure of the patent for claim that is added. In the case of new claims 22–49, Patent Owner does 54 not indicate any changes from the claims subject to the present proceeding. The claims are indicated as being new, so that no changes from the pending claims are discussed at all. See Claim App’x. In addition, Patent Owner argues that written description support for the new claims can be found in a chart provided in a reexamination of the patent. Mot. Amend 3 (citing inter partes Reexamination Control No. 95/001,129). We note that such incorporation by reference is not permitted under our rules. 37 C.F.R. § 42.6(a)(3). As well, as Petitioner points out, Patent Owner has not demonstrated that the claims provided in the chart are the same as the new claims. Opp. 4. Given this deficit, Patent Owner cannot successfully meet the regulatory requirements under 37 C.F.R. § 42.221(a) or (b)(1) regarding written description support, based on the present record. Additionally, Patent Owner has failed to provide any mapping of the new claims to those old claims, and, as Petitioner points out, the Board determined during the cited inter partes reexamination that no written description support was provided for a number of limitations identical to those recited in the new claims. Id. (citing Ex. 1007, 32–36). For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(b)(1). 6. Conclusion As discussed above, Patent Owner has not demonstrated compliance with 37 C.F.R. §§ 42.221(a), 42.221(a)(2)(i), 42.221(a)(2)(i), 42.221(a)(3), or 42.221(b)(1) or 35 U.S.C. § 326(d)(1)(B) and (3). As such, Patent Owner has failed to meet the substantive requirements for a motion to amend.” slip op. at 52

  Patent outcomesUS 7,340,506 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish · KSR · Graham
  Patents in suitUS 7,340,506
• Taiwan Semiconductor Manufacturing Company Limited / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1All claims unpatentable
  PTAB · Dec 20, 2017 · IPR2016-01249 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–3, 5–7, and 9 and proposed claims 11–12 are unpatentable as obvious over Ding and Zhang; proposed claim 13 is patentable and allowed by amendment.

  RulingsFinal written decision

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

    “essentially of” for “being composed of.” PO Resp. 11 (citing AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001)). In AFG, the Court noted that, “[i]n 1942, the Court of Customs and Patent Appeals [had] stated that ‘“composed of” should be regarded as synonymous with “consisting of.”’” AFG, 239 F.3d at 1245 (quoting In re Bertsch, 132 F.2d 1014, 1019 (CCPA 1942)). However, as further explained in AFG, the Court of Customs and Patent Appeals had “qualified this statement . . . by remarking that ‘the words “composed of” may under certain circumstances be given, in patent law, a broader meaning than “consisting of.”’” Id. (quoting In re Bertsch, 132 F.2d at 1020). The Court in AFG ultimately construed “composed of” to mean “consisting essentially of.” Id. (“[W]e do agree based on the specification and other evidence before us that the term ‘composed of’ in this case is not completely closed. Rather, we think that ‘composed of’ in this case should be interpreted in the same manner as ‘consisting essentially of.’”). Thus, “composed of” means either “consisting of” or “consisting essentially of.” Id. The term “consisting of” prohibits any 4 <111> and <002> are indices that pertain to an orientation or direction of crystals. Ex. 1003 ¶51. unspecified components. Id. (citing PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998)). The term “consisting essentially of” prohibits only unspecified components that materially affect the basic and novel characteristic(s) of a claimed invention. Id. (citing Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1574 (Fed. Cir. 1984)). By arguing that “being composed of” means “consisting essentially of” as opposed to “consisting of,” Patent Owner argues for broader claim scope. For purposes of this Decision, we construe “being composed of” to mean “consisting essentially of,” as Patent Owner argues.5 In conclusion, we construe “first film being composed of crystalline metal containing nitrogen therein,” as recited in independent claims 1 and 5, to mean “first film consisting essentially of crystalline metal containing nitrogen therein.”6” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of Ordinary Skill in the Art The parties propose similar definitions of the level of ordinary skill in the art. Petitioner argues that a person of ordinary skill in the art would have had “an equivalent of a Master of Science degree from an accredited institution in electrical engineering, materials science, or physics, or the equivalent, a working knowledge of semiconductor processing technologies for integrated circuits, and at least two years of experience in semiconductor processing analysis, design, and development.” Pet. 10–11 (citing Ex. 1003 ¶64). Patent Owner argues that such an individual would have had “at least a Bachelor’s degree in Electrical, Materials, Mechanical, or Chemical Engineering, or a related degree, and at least two years of experience working in semiconductor processing and fabrication, semiconductor equipment manufacturing, or semiconductor materials.” PO Resp. 18 (citing Ex. 2011 ¶24). Neither party explains in detail why its proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we adopt Petitioner’s definition.” slip op. at 16

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

    “As to Petitioner’s predictable-results assertion, Petitioner persuasively argues that a person of ordinary skill in the art would have added nitrogen to the crystalline tantalum layer of Ding for three independent reasons. First, Petitioner argues that the presence of nitrogen in Ding’s crystalline tantalum layer would make it more easily removable by chemical mechanical polishing (“CMP”), which removal by polishing both Zhang and Ding teach to do. Pet. 24–26 (citing Ex. 1003 ¶¶140, 142, 143; Ex. 1004, 1:30–34, 4:34–37; Ex. 1005, 7:56–65; Ex. 1019, 12–13; Ex. 1021, 354–63). Second, Petitioner argues that the presence of nitrogen in Ding’s crystalline tantalum layer would inhibit, to some additional extent, copper diffusion. Id. at 26–29 (citing Ex. 1003 ¶¶144–146; Ex. 1023, 8). Third, Petitioner argues that adding a small amount of nitrogen to Ding’s crystalline tantalum layer would reduce its resistivity, which was known to help reduce a device’s power consumption and RC delays. Id. at 29–30 (citing Ex. 1003 ¶147; Ex. 1015, 81 (Table 1)). Patent Owner counters that none of these purportedly predictable results are realistic. PO Resp. 46–52. With respect to the first reason offered by Petitioner (to make the first film more susceptible to CMP), Patent Owner argues that: (A) adding only “[a] small amount of nitrogen” to Ding’s crystalline tantalum layer would not change its CMP characteristics; and (B) “[a]dding significant amounts of nitrogen” would result in Ding’s previously crystalline layer becoming amorphous. Id. at 48. Patent Owner does not disclose what it considers “small” and “significant” amounts of nitrogen. Id. As a result, we cannot apply Patent Owner’s argument (even if it were persuasive) to the facts before us. Also, Patent Owner’s argument is based exclusively on declaration testimony that does not cite to any underlying evidence, let alone documentary evidence. See id. at 47–49 (citing Ex. 2011 ¶¶190–98). In contrast, Petitioner’s argument is supported by declaration testimony, which, in turn, is based on underlying evidence, including documentary evidence. See Pet. 24–26 (citing Ex. 1003 ¶¶140, 142, 143; Ex. 1004, 1:30–34, 4:34– 37; Ex. 1005, 7:56–65; Ex. 1019, 12–13; Ex. 1021, 354–63); see also Ex. 1003 ¶139. With respect to the second reason offered by Petitioner (to inhibit, to some additional extent, copper diffusion), Patent Owner argues that, in Petitioner’s asserted combination, “there would be no nitrogen to provide any copper diffusion benefit.” PO Resp. 49. Patent Owner’s argument is premised on Zhang teaching exclusively an upper surface of pure tantalum. Id. But, Zhang explicitly teaches that the upper surface may have a nitrogen content of, for example, 1%, 2%, 3%, or 4%. See Ex. 1004, 3:59–62 (“At the upper surface, the atomic percent tantalum may be at least 95% and the atomic percent nitrogen may be less than 5% if copper adhesion is particularly problematic.”). With respect to the third reason offered by Petitioner (to reduce resistivity), Patent Owner argues that adding nitrogen would actually increase resistivity. As pointed out by Petitioner, however, Patent Owner’s declarant, Harlan R. Harris, Ph.D., conceded that adding nitrogen does lower resistivity. Reply 17–18 (quoting Ex. 1036, 125:3–20). Dr. Harris testified as follows: Q. When the nitrogen flow ratio is zero in the ’324 patent, and the power is kept constant, wouldn’t that result in a film that could be pure tantalum? A. All three of those data points are at the exact same position on the graph. The N2 concentration, which is the numerator of the ratio, is set at zero. And in this particular position, the nitrogen concentration would be assumed to be zero in the film. Q. So is it within the scope of what’s taught in the ’324 patent to have a film that would have no nitrogen at all? A. It’s also apparent to anyone who is examining this of skill in the art that you can decrease from that number, which is favorable in terms of the value of resistivity by adding flow rate in the data points for all of the positions greater than zero. So you decrease resistivity by the addition of any amount of nitrogen, therefore, a person skilled in the art would not be motivated to not have nitrogen, based on this data. Q. You’re referring to the decrease in resistivity as nitrogen is added? A. Yes. Q. Which is desirable? A. You want the resistivity to go down. Ex. 1036, 124:15–125:20. We are satisfied by each of Petitioner’s proffered reasons for why a person of ordinary skill in the art would have added nitrogen to Ding’s crystalline tantalum layer, as taught by Zhang. Petitioner has shown, by a preponderance of the evidence, that claims 1 and 5 would have been obvious over Ding and Zhang.” slip op. at 24

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “obvious over Ding in view of Zhang. Patent Owner’s proposed claims 11 and 12 are unpatentable because they introduce limitations—nitrogen throughout the first film (claim 11) and nitrogen at the upper surface of the first film (claim 12)—that are met by the very references asserted in the ground of unpatentability involved in this inter partes review. Patent Owner’s Motion to substitute claims 11 and 12 is premised, incorrectly, on Zhang requiring pure tantalum (and, thus, no nitrogen) at the upper surface of its tantalum-rich tantalum nitride film. In fact, Zhang does not require any portion of the tantalum-rich tantalum nitride film to be pure tantalum. Ex. 1004, 3:53–54 (“The tantalum-rich tantalum nitride film has a range of approximately 0-30 atomic percent nitrogen.”). And, Zhang explicitly teaches that the upper surface may include nitrogen. Id. at 3:57– 62 (“A lower atomic percent nitrogen at the upper surface typically gives better adhesion to copper films. At the upper surface, the atomic percent tantalum may be at least 95% and the atomic percent nitrogen may be less than 5% if copper adhesion is particularly problematic.”); Ex. 1036, 40:1–6, 42:2–9, 42:15–21, 54:14–20 (Dr. Harris acknowledging that the upper surface of the film would contain some nitrogen). Accordingly, a preponderance of the evidence establishes that Patent Owner’s proposed claims 11 and 12 are not patentable over the art of record in this inter partes review. Put another way, and as Petitioner argues, claims 11 and 12 (like challenged claim 5) are unpatentable as they claim subject matter that would have been obvious over Ding in view of Zhang. See 35 U.S.C. § 103(a); Amend Opp. 6–7 (“The instituted obviousness ground[] based on Zhang and Ding already include[s] the newly-added limitations Patent Owner seeks to add in its Substitute Claims 11–13. Thus, the Substitute Claims 11–13 remain unpatentable over each of the instituted grounds.”).14 Patent Owner’s Motion to Amend is denied with respect to claims 11 and 12.” slip op. at 33

  Patent outcomesUS 6,538,324 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 6,538,324
• Telebrands Corp. v. Tinnus Enterprises, LLCInstitution denied
  PTAB · Nov 30, 2017 · PGR2017-00024 · APJ Frances L Ippolito · PGR · Institution

  The Board denied institution on all challenged claims, finding the § 103 and written-description challenges previously considered under § 325(d), and the remaining written-description and indefiniteness challenges insufficient.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “We agree with Patent Owner that we should exercise our discretion in denying institution of review based on Petitioner’s § 103 challenges because the same art and arguments were considered by the Examiner during the original prosecution. There is no dispute that Saggio and Lee were expressly considered by the Examiner and discussed in the Examiner’s Reasons for Allowance in the May 24, 2016 Notice for Allowance. See Ex. 1008, 86–88. In the Notice of Allowance, the Examiner considered expressly the teachings of Saggio and Lee, and explained in detail that neither one of these disclosed the claimed “elastic fastener.” Id. Moreover, the Examiner expressly also considered Donaldson and found that it was “cumulative with Lee [ ] in that both references disclose that moving mechanical components must be used to detach the balloons.” Id. at 17.” slip op. at 10

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

    “Based on our review of the record, including the claim language and the Specification of the ’779 patent, we agree with Patent Owner’s position. Here, the restriction of the claimed elastic ring is limited such that the balloon, if filled with a sufficient amount of water, is detachable by (1) gravity or (2) by gravity combined with a manually applied acceleration of the tube. Further, we agree with Patent Owner’s explanation that a person of ordinary skill in the art would know when the amount of water has reached a “sufficient amount,” because the elastic rings would allow detachment by gravity or by gravity and manually applied acceleration of the tube. See Prelim. Resp. 42. Indeed, the claim language itself provides the conditions” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the effective filing date of the ’779 patent (“POSA”) was a person having general knowledge about, and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in a technical science or engineering. Pet. 19 (citing Ex. 1020 ¶¶ 10–14). For purposes of this Decision, we agree with Petitioner and determine that a POSA would have been a person having a general knowledge about, 2 Claims 38, 46, 54, and 60 issued as claims 4, 7, 10, and 13. and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in mechanical engineering, or the equivalent. This level of skill is consistent with the types of problems and solutions described in the ’779 patent and cited prior art.” slip op. at 14

  • Expert testimonyOther

    “Petitioner argues that the present record is different than the one before the Examiner. Pet. 80. In particular, Petitioner asserts that the testimony of Dr. Kamrin was not before the Examiner. Id. Petitioner contends that “one of the issues in this petition is inherency of the prior art references, which benefits from the consideration of expert testimony.” Id. at 81. Nonetheless, having reviewed the record, we disagree with Petitioner’s position. The technology here does not appear to be particularly complex, and the Examiner’s explanation shows that he expressly considered the issues of inherency, and offered detailed findings why the functional limitations related to the elastic fastener were not necessarily present in the art at issue. See Ex. 1008, 87–88. Although not referred to expressly in the Examiner’s explanation, the Information Disclosure Sheet considered by the Examiner includes the Petitions in PGR2016-00030 and PGR2016-00031, which contain similar explanations of inherency to those at issue in this case. See PGR2016-00031, Paper 2, 43–45 (Petition discussing inherency issue with respect to Lee). Although the Examiner’s explanation does not refer to those papers expressly, the fact that those papers were listed on an IDS is, nevertheless, circumstantial evidence that Petitioner’s inherency arguments were considered when the Examiner provided his explanation concerning inherency. See Ex. 1008, 87 (“Because it is not true that all elastic bands have the same elastic force as an inherent property, it cannot be presumed that all elastic bands would function the same way.”). Moreover, as Patent Owner notes, Dr. Kamrin fails to even address Donaldson’s use of a mechanical means, i.e., a spring, to release the balloon. Prelim. Resp. 32. Thus, we are not persuaded that Dr. Kamrin’s testimony meaningfully distinguishes the record that is before us from the record that was before the Examiner.” slip op. at 12

  § 112 disclosureDiscretionary denial
  Patents in suitUS 9,533,779
• Microsoft Corporation v. Smart Skins LLCRehearing denied
  PTAB · Nov 21, 2017 · IPR2016-00404 · APJ Robert J Weinschenk · IPR · Rehearing

  The Board denied Microsoft's rehearing request, maintaining that claims 1, 12, 13, 15, 23, and 24 are entitled to the July 17, 2001 priority date and that Janik and Kehoe are not prior art.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “part of U.S. Patent Application No. 10/087,098 (Ex. 1014, “the ’098 application”), which was filed on March 1, 2002, and that the ’864 patent and the ’098 application claim priority to U.S. Provisional Patent Application No. 60/306,326 (Ex. 1015, “the ’326 provisional”), which was filed on July 17, 2001. Dec. 14–15 (citing Paper 1 (“Pet.”), 10; Paper 14 (“PO Resp.”), 8; Ex. 1001; Ex. 1014, 2). We determined that Smart Skins LLC (“Patent Owner”) had shown sufficiently that the challenged claims of the ’864 patent are entitled to a filing date of July 17, 2001, because the disclosures of the ’098 application and the ’326 provisional (collectively, “the priority applications”) provide written description support for the challenged claims of the ’864 patent. Dec. 14–21.” slip op. at 3

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artPriority date awardedDecided for patent owner

    “established by Patent Owner for the challenged claims (July 17, 2001) predates the earliest filing dates of Janik and Kehoe established by Petitioner (September 4, 2001, and October 24, 2001, respectively). Dec. 22. We determined that, as a result, Petitioner had not shown sufficiently that either Janik or Kehoe qualifies as prior art to the challenged claims under 35 U.S.C. § 102(e). Dec. 22. Therefore, we concluded that Petitioner had not shown by a preponderance of the evidence that claims 1, 12, 13, 15, 23, and 24 would have been obvious over Janik and Kehoe. Id. at 23. Petitioner argues that, because we erred in determining that the challenged claims of the ’864 patent are entitled to the benefit of the filing date of the priority applications, we should reconsider our determination that Janik and Kehoe are not prior art. Req. Reh’g 15. For the reasons discussed above, we maintain our determination that the challenged claims are entitled to the benefit of the filing date of the priority applications. Thus, we also maintain our determination that Petitioner had not shown sufficiently that either Janik or Kehoe qualifies as prior art to the challenged claims under 35 U.S.C. § 102(e).” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “challenged claims of the ’864 patent are entitled to the benefit of the filing date of the priority applications, we should reconsider our determination that Janik and Kehoe are not prior art. Req. Reh’g 15. For the reasons discussed above, we maintain our determination that the challenged claims are entitled to the benefit of the filing date of the priority applications. Thus, we also maintain our determination that Petitioner had not shown sufficiently that either Janik or Kehoe qualifies as prior art to the challenged claims under 35 U.S.C. § 102(e). Petitioner requests that we address the asserted ground of unpatentability based on Janik and Kehoe “conditionally,” even if we do not change our determination regarding the priority date of the challenged claims. Req. Reh’g 15. We are not persuaded, though, that it would be an efficient use of resources to address all of the parties’ arguments and evidence regarding the asserted ground of unpatentability based on Janik and Kehoe when Petitioner has not met its burden to show that Janik and Kehoe are prior art to the challenged claims. Therefore, we decline to “conditionally” address any remaining issues regarding the asserted ground of unpatentability based on Janik and Kehoe.” slip op. at 15

  § 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 7,079,864
• Tradestation Technologies, Inc. v. Trading Technologies International, Inc.All claims unpatentable
  PTAB · Nov 17, 2017 · CBM2016-00086 · APJ Sally C Medley · CBM · Final written decision

  Claims 1–21 are unpatentable under § 101 because they claim an abstract economic practice without an inventive concept.

  RulingsFinal written decision

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

    “I. INTRODUCTION TradeStation Technologies, Inc., (“Petitioner”)1 filed a Petition requesting a covered business method patent review of claims 1–21 of U.S. Patent No. 7,818,247 B2 (Ex. 1001, “the ’247 patent”) under the transitional program for covered business method patents.2 Paper 2 (“Pet.”). Trading Technologies International, Inc. (“Patent Owner”) did not file a Patent Owner Preliminary Response. Upon consideration of the Petition, we instituted a covered business method patent review of claims 1–21 of the ’247 patent (Paper 8 (“Dec.”)).” slip op. at 2

  • BurdenFwd all claims unpatentableUnpatentable

    “We have considered Petitioner’s showing and all of Patent Owner’s arguments, and determine, for all of the above reasons, Petitioner has shown sufficiently that claims 1–21 of the ’247 patent are not directed to patent eligible subject matter under 35 U.S.C. § 101. III. CONCLUSION For the foregoing reasons, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1–21 of the ’247 patent are patent-ineligible under 35 U.S.C. § 101. IV. ORDER It is: ORDERED that claims 1–21 of the ’247 patent are patent-ineligible under 35 U.S.C. § 101; and” slip op. at 28

  • Skill levelSkill level board ownOther

    “B. The Level of Ordinary Skill in the Art Notwithstanding the parties’ submissions of the level of ordinary skill in the art, we find that the level of ordinary skill in the art is 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).” slip op. at 15

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

    “we determine that Petitioner has shown4 that claim 1 is directed to the abstract idea of receiving market information, color-coding graphical areas based on market information, and then updating the display based on newly received market information to assist a trader to make an order, which is a fundamental economic practice. Claim 1, the sole independent claim, recites in the preamble a method for displaying market information corresponding to a commodity being traded at an electronic exchange. The method steps include receiving market data including a quantity of an order at a first price level, displaying a first and second graphical area corresponding to a first and second price level in an axial direction, color-coding the first and second graphical areas with a first and second color respectively, and updating the first and second graphical area such that the first graphical area is color-coded with the second color and the second graphical area is color-coded with the first color. We agree with Petitioner that claim 1 encompasses the abstract idea of displaying financial information in a manner that makes it easier to understand and facilitate trades on an exchange, steps that can be performed using pen and paper, or even in a trader’s mind. Pet. 31–38 (citing CyberSource Corp. v. Retail Decisions, 654 F.3d 1366, 1372 (Fed. Cir. 2011) (unpatentable mental process performed with aid of pen and paper)); Ex.” slip op. at 18

  Patent outcomesUS 7,818,247 unpatentable
  § 101 eligibilitycites Alice · Mayo · Enfish · Electric Power
  Patents in suitUS 7,818,247
• Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentable
  PTAB · Nov 17, 2017 · CBM2016-00087 · APJ Sally C Medley · CBM · Final written decision

  Claims 1–24 are unpatentable under § 101, and claims 2 and 15 are also unpatentable under § 112 ¶ 4.

  RulingsFinal written decision

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

    “Tradestation Securities, Inc., (“Petitioner”)1 filed a Petition requesting a review of claims 1–24 of U.S. Patent No. 7,412,416 B2 (Ex. 1001, “the ’416 patent”) under the transitional program for covered business method patents.2 Paper 3 (“Pet.”). Trading Technologies International, Inc. (“Patent Owner”) did not file a Patent Owner Preliminary Response. Upon consideration of the Petition, we instituted a covered business method patent review of claims 1– 24 of the ’416 patent (Paper 11 (“Dec.”)).” slip op. at 2

  • Skill levelSkill level board ownOther

    “B. The Level of Ordinary Skill in the Art Notwithstanding the parties’ submissions of the level of ordinary skill in the art, we find that the level of ordinary skill in the art is 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).” slip op. at 16

  • ExcludeDenied

    “Kawashima’s deposition (Ex. 1018), and portions of Exhibit 1060 (the cross examination testimony of Mr. Thomas). PO Mot. to Exclude 1. Patent Owner seeks to exclude Exhibits 1015 and 1016 as not relevant under Rules 401 and 402 of the Federal Rules of Evidence (FRE) and because the exhibits have not been authenticated under FRE 901. Id. at 1–4. Patent Owner also seeks to exclude Exhibit 1018 as hearsay, and pages 248, and 263–269 of Exhibit 1060 (the cross examination testimony of Mr. Thomas) as prejudicial and confusing. Id. at 4–13. In rendering our Final Decision, we did not and need not consider Exhibits 1015, 1016, 1018 or pages 248, and 263–269 of Exhibit 1060. We have determined that Petitioner has demonstrated, by a preponderance of the evidence, that the challenged claims are unpatentable, without considering Exhibits 1015, 1016, 1018 or pages 248, and 263–269 of Exhibit 1060. Accordingly, Patent Owner’s Motion to Exclude is dismissed.” slip op. at 32

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

    “Notwithstanding Patent Owner’s arguments, which we address below, we determine that Petitioner has shown3 that claim 1 is directed to the abstract idea of displaying a chart with a vertical price axis and a horizontal time axis, displaying indicators representing historical trading data along those axes, placing an order icon at a particular location of a plurality of locations, and generating and sending the order to an electronic trading system to assist a trader to place an order, which is a fundamental economic practice. The preamble of claim 1 recites a method for facilitating trading and displaying information regarding the buying and selling of a good. The method steps of claim 1 include displaying a chart on a graphical user interface having a vertical axis of price values and a horizontal axis of time, placing an order icon for a quantity of a good at a location along the vertical axis of price levels, and generating and sending the order to an electronic trading system. We agree with Petitioner that claim 1 encompasses the abstract idea of the fundamental economic practice of graphing (or displaying) trading data to assist a trader to place an order, steps that can be performed using pen and paper, or even in a trader’s mind. Pet. 22–25” slip op. at 21

  Patent outcomesUS 7,412,416 unpatentable
  § 101 eligibility§ 112 disclosurecites Alice · Mayo · Enfish · Electric Power
  Patents in suitUS 7,412,416
• Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentable
  PTAB · Oct 17, 2017 · CBM2016-00054 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 1–23 are unpatentable under § 101 and § 103; the Board found the claims patent-ineligible and found the challenged obviousness grounds established.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s argument is not persuasive. FRE 106 provides that: If a party introduces all or part of a writing or recorded statement, an adverse party may require the introduction, at that time, of any other part —or any other writing or recorded statement — that in fairness ought to be considered at the same time. As Petitioner points out, “rather than providing a basis for excluding evidence, Fed. R. Evid. 106 is a vehicle for entry of additional evidence.” Here, the two translator’s notes from Patent Owner’s original translation already appear in the record. Ex. 2178, 39–40. FRE 403 provides: The court may exclude relevant evidence if its probative value is substantially outweighed by a danger of one or more of the following: unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting time, or needlessly presenting cumulative evidence. Patent Owner has not met its burden to show Exhibit 1017 should be” slip op. at 75

  • Skill levelOther
  • Expert testimonyPetitioner expert discountedPatent owner expert discountedDecided for patent owner

    “We have considered the evidence to which we are directed, but do not find that evidence (passages from Mr. Kawashima’s original and cross examination) to support Patent Owner’s assertions that Mr. Kawashima is biased. Indeed, when asked if the Tokyo Stock Exchange preferred that vendors like Trading Technologies not have patents on trading screens, Mr. Kawashima testified, that that was “not something I would know.” Ex. 2163, 41:6–12. Lastly, Patent Owner has not demonstrated sufficiently that Mr. Kawashima’s meetings with Petitioner’s attorneys prior to his cross examination is demonstrative of “bias.” PO Resp. 24. Patent Owner has not shown why Mr. Kawashima’s meeting with Petitioner’s counsel prior to his deposition would make him biased. For these reasons, we are not persuaded that Mr. Kawashima is an interested witness.” slip op. at 45

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

    “2. Abstract Idea “The ‘abstract idea’ step of the inquiry calls upon us to look at the” slip op. at 27

  Patent outcomesUS 7,693,768 unpatentable
  § 101 eligibility§ 103 obviousnesscites Mayo · Enfish · Electric Power · KSR
  Patents in suitUS 7,693,768
• Tokyo Electron Limited v. Daniel L. FlammInstitution denied
  PTAB · Oct 4, 2017 · IPR2017-01072 · APJ Kimberly Mcgraw · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 13–26, 64, and 65 unpatentable.

  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 not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in the Petition and Preliminary Response, we conclude that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of claims 13–26, 64, and 65. Accordingly, we do not institute an inter partes review on those claims.” slip op. at 2

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

    “Thus, the ordinary meaning of the claim language itself requires predetermining the temperature change (i.e., the change from the selected first substrate holder temperature to the selected second substrate holder temperature) within a specific interval of time (i.e., the time for changing from the selected first substrate holder temperature to the selected second substrate holder temperature), and based on that predetermination, selecting the thermal mass of the substrate holder. A construction that does not require selecting a thermal mass for a particular temperature change and a specified interval of time, as opposed to selecting a thermal mass that can facilitate or allow a temperature change, is not consistent with the plain and ordinary meaning of the claim. We recognize that the thermal mass of a substrate holder is not the only factor that controls the rate of temperature change of the substrate holder. See, e.g., Ex. 1001, 16:60–67 (stating that the “heat exchanger, fluid flow rate, coolant-side fluid temperature, heater power, chuck, etc. should be designed to bring the fluid to a setpoint temperature and bring the temperature of the chuck and wafer to predetermined temperatures within specified time intervals and within specified uniformity limits”). The plain language of the claim, however, still requires that the thermal mass of the substrate holder be selected for a predetermined temperature change within the specific interval of time.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner

    “We do not construe these limitations as requiring the involvement of a heat transfer fluid. “Heat transfer fluid” is not recited in the claims. Although the claims are interpreted in light of the specification, it is improper to read limitations from the specification into the claims. See, e.g., In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words.”). As such, we are not persuaded that that the phrases “substrate holder,” “heat transfer device,” and “selected thermal mass,” as recited in claim 13, should be construed as requiring the involvement of “heat transfer fluid.”” slip op. at 11

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

    “3. Remaining Claim Terms For purposes of this Decision, based on the record before us, we determine that none of the remaining claim terms require an explicit construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
• Mobile Tech, Inc. v. Invue Security Products Inc.All claims unpatentable
  PTAB · Sep 28, 2017 · IPR2016-00892 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–27 are unpatentable: claims 1, 5–20, 22–25, and 27 as obvious over Rothbaum and Denison; claims 2–4, 21, and 26 as obvious over Rothbaum, Denison, and Ott.

  RulingsFinal written decision

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

    “We begin with the plain language of the claims. The term “matching” is used as a gerund (i.e., a verb acting as a noun) in claims 1 and 25 and ordinarily means “[t]he action of match.” Ex. 1020, 4, 6. Thus, the use of “upon a matching” suggests some action of a match, as opposed to, for example, “upon a match,” which might be read to require simply the existence of a match. This supports Petitioner’s view that the arming or disarming must be as a result of a “determination of a match” (a particular type of action).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “We do not agree that the recital of various “forms of data communication” (Ex. 1001, 3:4–19) in the ’762 patent broadened the meanings of the term “communicate” and the phrase “configured to communicate” themselves. Rather, the “forms” of communication in the cited portion of the ’762 patent merely represent examples of the media or means by which the communication occurs in various preferred embodiments. Ex. 1001, 3:4–19 (listing at least seven examples). Thus, Petitioner does not persuade us that we need to construe the terms “communicate” and “configured to communicate” expressly to encompass both wireless and wired communications.” slip op. at 15

  • Skill levelSkill level board ownOther

    “Neither party explains in detail why its proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. Although there are slight differences between the proposed levels of ordinary skill in the art, the parties’ declarants agree that an ordinarily skilled artisan would have had a four-year technical degree or the equivalent and some amount of professional experience. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we determine that the skill level of a person of ordinary skill in the art would have been that of a person having a four year technical degree or equivalent experience with a minimum of two years of professional technical experience in the field of theft prevention devices or related security devices. We apply this level of ordinary skill in the art in our obviousness analysis.” slip op. at 17

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “i. Analogousness of Rothbaum and Denison As an initial matter, to be considered for obviousness, a reference must be analogous art. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.”). A prior art reference qualifies as analogous art (1) if it is from the same field of endeavor as the claimed invention, regardless of the problem addressed, or (2) if the reference is not within the field of the inventor’s endeavor, it is nonetheless reasonably pertinent to the particular problem with which the inventor is involved. Id.” slip op. at 27

  Patent outcomesUS 8,884,762 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,884,762
• General Electric Co. v. University Of Virginia Patent FoundationRehearing denied
  PTAB · Sep 19, 2017 · IPR2016-00357 · APJ J John Lee · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing request, leaving in place the final written decision holding all challenged claims unpatentable under § 102(b) and/or § 103(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. Id.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner

    “The Final Written Decision acknowledged the disclosure in the ’182 Application of the objective of lengthening usable echo train durations while achieving desired image contrast characteristics. Final Dec. 22 (citing Ex. 1014, 4). We concluded this disclosure was similar to the disclosure of the key feature in Purdue Pharma. Id. (citing Purdue Pharma, 230 F.3d at 1327). UVAPF disputes that conclusion, arguing that the comparison with Purdue Pharma is not “meaningful,” because we purportedly overlooked the importance of lengthening the usable echo train duration while achieving comparable image contrast, and the relationship between this “primary objective” and the echo time ratio. Req. Reh’g 8–9. The Final Written Decision, however, specifically considered this “primary objective” described in the ’182 Application—including both the echo train duration and image contrast aspects. Final Dec. 22. We further concluded the alleged relationship between that key feature and the echo time ratio, which is not described in the ’182 Application, was insufficient to direct a skilled artisan to the recited echo time ratio limitations. Id. As we explained, the patent in Purdue Pharma similarly described a key feature and claimed a particular ratio related to that feature, but the court held the written description was inadequate because it failed to describe that ratio or ascribe any particular importance to that ratio. Id. at 20–22 (citing Purdue Pharma, 230 F.3d at 1326–28). The same is true of the claimed echo time ratio and the disclosure of the ’182 Application, which does not identify any such ratio much less describe its significance. Id. UVAPF has not identified any argument or evidence we have overlooked, nor has UVAPF shown our application of Purdue Pharma was erroneous.” slip op. at 5

  • Strike new argumentNew argument consideredDecided for petitioner

    “not have been considered because they were untimely. Req. Reh’g 9–11. GE did not cite the Purdue Pharma case until the Petitioner Reply. See Paper 27, 13–14. We disagree that GE’s arguments were untimely, however, because Purdue Pharma was cited to rebut arguments made by UVAPF in its Patent Owner Response. In the Patent Owner Response, UVAPF argued that a person of ordinary skill would have been able to derive the full range recited for the echo time ratio limitations based on an example provided in the ’182 Application. Paper 21, 55–58. GE argued in the Petitioner Reply that UVAPF’s position is precluded by Purdue Pharma, which held that whether a claimed ratio can be derived from the written description is immaterial if the disclosure does not describe the ratio or direct a person of ordinary skill to the ratio as a part of the invention. Paper 27, 13–14 (citing Purdue Pharma, 230 F.3d at 1328). Thus, Purdue Pharma was cited to respond directly to arguments made by UVAPF in its Patent Owner Response, and GE’s arguments based on Purdue Pharma were not untimely. In addition, UVAPF also contends GE untimely raised its arguments that the ’182 Application does not provide sufficient support for the “at least twice” aspect of the echo time ratio limitations. Req. Reh’g 11–13. To the contrary, GE argued in the Petition that the ’182 Application failed to adequately support the “at least twice” limitation. Pet. 11–12 (“[N]owhere does the ’182 application make a comparison of the [effective echo time] of a pulse sequence derived according to the disclosed method, much less delineate a range with a boundary of ‘at least twice’ that of any other echo time.”). Thus, GE’s arguments regarding the “at least twice” limitation were not untimely.” slip op. at 6

  § 112 disclosure

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.