- PTAB · Dec 19, 2023 · IPR2023-01036 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR on claims 1–34 and all petitioned grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner will prevail with respect to at least one of the claims challenged in the petition. Considering the parties’ arguments and evidence, for reasons explained below, we conclude that Petitioner shows a reasonable likelihood that it will prevail with respect to at least one of the ’555 patent’s challenged claims. We decline to deny the Petition on the basis of discretion under § 325(d). We institute an inter partes review on all challenged claims. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“proposal could have been more specific, but it is not so lacking that the institution burden is unmet. It is reasonably clear that, in indicating that a POSA would have an advanced degree (like a Ph.D.) and years of experience in a “relevant discipline,” Petitioner is referring to the technical areas it cited previously, such as protein/enzyme biochemistry. Pet. 17–18. Petitioner’s definition does not ignore subject matter like “transgenic plants” because it states that the POSA would be able to apply key scientific concepts here (e.g., protein biochemistry, enzyme activity, and substrate selectivity) to such plants. Moreover, although Patent Owner complains about Petitioner’s POSA definition, it does not offer its own or explain why Petitioner’s challenge fails under any alternative definition. At this stage, Patent Owner’s suggestion that Dr. Hausinger lacks relevant expertise or qualifications of at least a POSA is unpersuasive. The ’555 patent relies on Dr. Hausinger’s own prior work. See, e.g., 1001, 18:2– 7 (citing Hogan (Ex. 1027)), 51:6–12 (citing Fukumori (Ex. 2001)) (both references co-authored by Dr. Hausinger). Patent Owner also cites Dr. Hausinger’s work as evidencing what “skilled artisans” understood about the claimed and prior art technology, including αKGD dioxygenases, which is a focus of the parties’ arguments. See, e.g., Prelim. Resp. 7–8 (“Thus, as reflected in Hogan and Hotopp [(co-authored by Dr. Hausinger)], skilled artisans understood the structure-function relationships of Group II αKG-dependent dioxygenases . . . .”); Ex. 1029 (Hotopp 2002)). During prosecution, Dr. Wright’s declaration relied on Dr. Hausinger’s research. See, e.g., Ex. 1008, 462 (Wright I ¶ 13 (citing Hotopp)), 658 (Wright II ¶¶ 10–13 (describing the research in Hogan and Hotopp as that of “skilled artisans”)). And, Applicant’s other declarant, Dr. Nair, who testified about academic and prior work history focused on chemistry, biochemistry, and enzymology without significant background in subjects like “controlling weeds” about which Patent Owner questions Dr. Hausinger’s qualifications. See, e.g., Ex. 1008, 590–591.17 Patent Owner will have the chance to cross-examine Dr. Hausinger in this proceeding. If Patent Owner feels we should discount Dr. Hausinger’s testimony due to lack of qualifications, it may raise such argument in trial. For now, we apply Petitioner’s proposed POSA level, with the clarifications noted above, which appears consistent with the level of skill shown in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 22
- Expert testimonyPetitioner expert creditedDecided for petitioner
“At this stage, Patent Owner’s suggestion that Dr. Hausinger lacks relevant expertise or qualifications of at least a POSA is unpersuasive. The ’555 patent relies on Dr. Hausinger’s own prior work. See, e.g., 1001, 18:2– 7 (citing Hogan (Ex. 1027)), 51:6–12 (citing Fukumori (Ex. 2001)) (both references co-authored by Dr. Hausinger). Patent Owner also cites Dr. Hausinger’s work as evidencing what “skilled artisans” understood about the claimed and prior art technology, including αKGD dioxygenases, which is a focus of the parties’ arguments. See, e.g., Prelim. Resp. 7–8 (“Thus, as reflected in Hogan and Hotopp [(co-authored by Dr. Hausinger)], skilled artisans understood the structure-function relationships of Group II αKG-dependent dioxygenases . . . .”); Ex. 1029 (Hotopp 2002)). During prosecution, Dr. Wright’s declaration relied on Dr. Hausinger’s research. See, e.g., Ex. 1008, 462 (Wright I ¶ 13 (citing Hotopp)), 658 (Wright II ¶¶ 10–13 (describing the research in Hogan and Hotopp as that of “skilled artisans”)). And, Applicant’s other declarant, Dr. Nair, who testified about academic and prior work history focused on chemistry, biochemistry, and enzymology without significant background in subjects like “controlling weeds” about which Patent Owner questions Dr. Hausinger’s qualifications. See, e.g., Ex. 1008, 590–591.17 Patent Owner will have the chance to cross-examine Dr. Hausinger in this proceeding. If Patent Owner feels we should discount Dr. Hausinger’s testimony due to lack of qualifications, it may raise such argument in trial. For now, we apply Petitioner’s proposed POSA level, with the clarifications noted above, which appears consistent with the level of skill shown in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We agree with Petitioner that the priority applications do not disclose sufficient representative species compared to the breadth of the claims. As Petitioner contends, SEQ ID NO: 9 and the two AAD-1 variants that differ from SEQ ID NO: 9 by just one or two amino acids do not fairly represent the diversity of proteins within genus of at least 2044 variants. Pet. 30–31; Ex. 1054 ¶¶ 81–82 (showing the minimal sequence differences in AAD-1 v2 (alanine substituted for histidine at position 2, and cysteine substituted for arginine at position 212), and v3 (alanine insertion at position 2)); Ex. 1001, Dr. Hausinger testifies persuasively that the > 99% identity shared by these three AAD-1 variants “are simply not representative of proteins having as little as 85% sequence identity to AAD-1 v1 (SEQ ID NO: 9).” Ex. 1054 ¶¶ 83–86 (testifying, e.g., that the specification “does not provide any structural information that might have allowed the POSA to make inferences about the effect of a given change” and that nothing in the disclosure “would have suggested to the POSA that changes at [the positions in which v2 and v3 differ] would be particularly informative.”). Patent Owner provides no argument or evidence to the contrary on the question whether sufficient representative species are disclosed.27” slip op. at 43
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,947,555 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution deniedPTAB · Nov 14, 2023 · IPR2023-01030 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–29 would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to any claim. See 35 U.S.C. § 314(a). Accordingly, we deny the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 15–16. Patent Owner does not dispute Petitioner’s proposal about the POSA’s qualifications. See generally, Prelim. Resp. For this Decision, we adopt and apply Petitioner’s proposal for the level of skill in the art, which does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner proposes constructions of four limitations: “insertional enzyme complex,” “nucleic acid insert element,” “adapter sequence,” “barcode sequence,” and “tagged fragments.” Pet. 20–23. Patent Owner, for its part, states that “[n]o terms require construction for considering institution.” Prelim. Resp. 15. We determine that none of the four limitations identified by Petitioner requires an express construction for purposes of this Decision. It bears” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“express construction of the term “chromatin.” The ’207 patent itself provides a definition, stating: The term “chromatin,” as used herein, refers to a complex of molecules including proteins and polynucleotides (e.g. DNA, RNA), as found in a nucleus of a eukaryotic cell. Chromatin is composed in part of histone proteins that form nucleosomes, genomic DNA, and other DNA binding proteins (e.g., transcription factors) that are generally bound to the genomic DNA. Ex. 1001, 12:58–64. This is the meaning that we apply in this Decision.” slip op. at 8
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,619,207 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution deniedPTAB · Oct 19, 2023 · IPR2023-00878 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Grunenwald anticipates claim 1 or that the asserted combinations cure its failure to disclose contacting chromatin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review requires that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Determining whether to institute has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to any claim. See 35 U.S.C. § 314(a). Accordingly, we deny the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner proposes constructions of four limitations: “insertional enzyme complex,” “nucleic acid insert element,” “adapter sequence,” and “barcode sequence.” Pet. 21–25. Patent Owner, for its part, states that “[n]o terms require construction for considering institution.” Prelim. Resp. 16. We determine that none of the four limitations identified by Petitioner requires an express construction for purposes of this Decision. It bears mentioning, however, that the ’995 patent states that “[t]he insertional enzyme can be a transposase.” Ex. 1001, 3:41–42. There is no dispute that Grunenwald discloses the use of a transposase and, thus, an insertional enzyme complex. See Pet. 27 (citing Ex. 1003 ¶¶98, 161); Prelim. Resp. 34 (“Grunenwald defines ‘transposase’ to include any transposase, thus including those that comprise antibodies that are specific to a protein that is part of said chromatin.” (citing Ex. 1003 ¶93)).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“express construction of the term “chromatin.” The ’995 patent itself provides a definition, stating: The term “chromatin,” as used herein, refers to a complex of molecules including proteins and polynucleotides (e.g. DNA, RNA), as found in a nucleus of a eukaryotic cell. Chromatin is composed in part of histone proteins that form nucleosomes, genomic DNA, and other DNA binding proteins (e.g., transcription factors) that are generally bound to the genomic DNA. Ex. 1001, 12:54–60. This is the meaning that we apply in this Decision.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“B. Ground 1 Petitioner asserts that Grunenwald anticipates independent claim 1, as well some of the dependent claims. Pet. 25. “Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference.” In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009). Patent Owner argues that Grunenwald fails to anticipate claim 1, which failure undermines the entire Petition. Prelim. Resp. 16–17 (“Petitioner has failed to show that Grunenwald discloses each and every limitation as arranged in the claims, including, e.g., ‘contacting chromatin of a genome region,’ and thus cannot meet its burden as to any claim in Ground 1.” (quoting claim 1)), 38 (“Petitioner cannot meet its burden as to Grounds 2–8 for the same reasons Petitioner cannot meet its burden for Ground 1.”). Accordingly, we turn first to claim 1.” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 10,150,995 - PTAB · Oct 13, 2023 · IPR2023-00876 · APJ Michael J Fitzpatrick · IPR · Institution
Instituted IPR on claims 1–6; the Board found a reasonable likelihood that claim 1 would be unpatentable as obvious over Linnarsson and McCloskey.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In sum, on the record presented, it appears that Petitioner is correct in stating that “no arguments were made during examination with respect to McCloskey or any similar reference disclosing an oligonucleotide with two tags.” Pet. 70 (underlining added).” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion as to Claim 1 There is a reasonable likelihood that Petitioner would prevail in proving that claim 1 is unpatentable on this ground.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petition states that “Petitioner does not believe that any terms require explicit construction in view of the prior art being presented.” Pet. 36. Despite this stated position, Petitioner proposes constructions for “multiplex-identifier (MID)” and “providing a sample.” Id. Patent Owner, for its part, states that it “agrees that at this time, solely for purposes of an institution decision on the Petition, no terms require explicit construction.” Prelim. Resp. 45. On the record before us, and for purposes of institution, we find there is no need to provide an express construction of any claim term.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 21–22 (citations omitted). At this stage of the proceeding, Patent Owner does not dispute the level of skill proposed by Petitioner. Because Petitioner’s formulation of the level of ordinary skill in the art appears consistent with the disclosure of the ’981 patent and the asserted prior art, and because there is no argument to the contrary at this stage of the proceeding, we apply Petitioner’s formulation in our analysis below.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,155,981 - PTAB · Aug 30, 2023 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Institution
The Board instituted inter partes review of claims 1–10 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable as obvious over Badros alone or with Harkins.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review requires that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Determining whether a reasonable likelihood has been met has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition, and for the reasons explained below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one claim. Accordingly, we grant the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“Petitioner proposes the term ‘render’ should be construed as expressly defined by the applicant’s lexicography in the ’329 patent claims and specification to mean ‘the process of requesting and loading content so that it may be viewed, heard or otherwise perceived by a viewer communicating electronically using a browser.’” Id. (quoting Ex. 1001, 7:15–19). The cited portion of the ’329 patent is accurately quoted but it is not clear on the current record whether the ’329 patent defines “render” as requiring both the requesting and loading of content or merely just the loading of content that has been requested. In multiple other instances, including the claims themselves, “render” is used exclusively in reference to the loading of content and not the requesting of it. See, e.g., Ex. 1001, 7:9– 10 (referring to “a pre-defined area of the ad content display page where the content is to be rendered”), 8:19 (referring to “content that was already rendered on the page”), 9:11–15 (“Content is only rendered on an ad content display page to a viewer when and/or to the extent that the pre-defined ad content display page triggering area is within, or within a pre-defined distance outside of, the viewer’s browser screen dimensions and scrolling position.”), 69:3–4 (claim 1 reciting “wherein the browser is further configured to render the replacement advertisement in the predefined area”). For purposes of this Decision, we apply the following construction for render: loading content so that it may be viewed, heard or otherwise perceived by a viewer communicating electronically using a browser. slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner proposes “[t]he term ‘replacement advertisement’ should be construed to mean ‘a new ad/content rendered in place of a previous ad/content’ as used in the context of the ’329 patent claims and specification.” Pet. 10. Petitioner supports its proposed construction with the following disclosure by the ’329 patent: “The billboard module may also cease rendering or send additional requests to the ad dispatcher server to select a new ad/content to render in the billboard module, say if the billboard was in view for a pre-determined period of time, or has been scrolled outside the viewer’s browser window dimensions.” Pet. 10 (quoting Ex. 1001, 12:65–13:3). For purposes of this Decision, we apply Petitioner’s proposed construction for replacement advertisement.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“discussed limitations, Petitioner also proposes that we construe “th[e] ‘in response to’ limitation [of claim 1 as] non-limiting because it requires a condition precedent that need not ever occur.” Pet. 34–35 (same). We are not persuaded and reject this proposed construction. The full limitation at issue recites: (b) in response to a determination that the predefined area that is used to display the advertisement has been in view within the visible area of the browser window for a predefined period of time, causing a communication to be sent to one or more dispatcher servers. Ex. 1001, 68:59–63. As properly construed on the present record, the “in response to” language modifies the recited step of “causing a communication to be sent to one or more dispatcher servers” such that the step must be “in response to a determination that the predefined area that is used to display the advertisement has been in view within the visible area of the browser window for a predefined period of time.” In short, “causing a communication” is a required step of the method of claim 1.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,443,329 - Ademco Inc. v. Ecofactor, Inc.Institution deniedPTAB · Jul 21, 2023 · IPR2023-00409 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“under the statutory ground advanced. 37 C.F.R. § 42.104(b)(4). Thus, the Petition must identify how “the claimed invention [of each challenged claim] as a whole would have been obvious . . . to a person having ordinary skill in the art” in view of Leen, Trundle, and Ehlers. 35 U.S.C. § 103. The Petition does not do this. In particular, and as Patent Owner argues and as we explain below, the Petition fails to show what it maps to the recited “thermostat system”/“thermostat” includes, or would have been modified to include, a processor configured to “receive geo-positioning data from the location-aware mobile device and automatically adjust a temperature value based on the geo-positioning data,” as recited in claim 1. Prelim. Resp. 11–19.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person having ordinary skill in the art “would have had at least (1) an undergraduate degree in electrical engineering, computer engineering, computer science, or a comparable field of study and (2) at least two years of experience with (i) process control, (ii) automation systems, (iii) or a comparable field of work.” Pet. 8 (citing Ex. 1002 ¶12). Patent Owner does not dispute Petitioner’s definition. Prelim. Resp. 7–8. Because Petitioner’s formulation of the level of ordinary skill in the art appears consistent with the ’890 patent and the asserted prior art and is not challenged by Patent Owner, we apply it in our analysis below.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“(Ex. 1021 at 2) in a related civil action, but neither party offers an express construction of the preamble. Pet. 3; Prelim. Resp. 8. In fact, both parties state that Petitioner’s grounds of unpatentability do not turn on whether the preamble is limiting. Pet. 3; Prelim. Resp. 8. We do not explicitly construe any limitations, as it unnecessary to decide the Petition. However, we agree with the court and the parties that the preamble of claim 1 is limiting. “When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). This is the case here as the body of claim 1 twice refers to “the thermostat” for which the only antecedent basis could be “A thermostat system.” Ex. 1001, at claim 1.” slip op. at 7
- BurdenDecided for patent owner
“E. Analysis of Ground I (Petition Ground “1A”) A Petition must “identify” how a challenged claim is unpatentable under the statutory ground advanced. 37 C.F.R. § 42.104(b)(4). Thus, the Petition must identify how “the claimed invention [of each challenged claim] as a whole would have been obvious . . . to a person having ordinary skill in the art” in view of Leen, Trundle, and Ehlers. 35 U.S.C. § 103. The Petition does not do this. In particular, and as Patent Owner argues and as we explain below, the Petition fails to show what it maps to the recited “thermostat system”/“thermostat” includes, or would have been modified to include, a processor configured to “receive geo-positioning data from the location-aware mobile device and automatically adjust a temperature value based on the geo-positioning data,” as recited in claim 1. Prelim. Resp. 11–19.” slip op. at 11
Claim constructioncites GrahamPatents in suitUS 10,584,890 - Emerson Electric Co. v. Sipco, LLCAll claims unpatentablePTAB · Mar 21, 2018 · IPR2016-01895 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–3, 6, 8–11, 13–21, and 25 are unpatentable as obvious over Johnson, Mason/EIA-709.1/Shuey/C12.18, and anticipated by Johnson.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 2002 ¶ 76. Patent Owner asserts using its lower level of skill in the art “would diminish the motivation of a POSITA would have for combining references identified in the instituted grounds.” Id. at ¶ 82. We disagree that an understanding of how to design and build a wireless, multi-hop communications systems is a leap in knowledge that would create a motivation to combine that would not be there under Patent Owner’s articulation of the level of skill. See Ex. 1027 ¶¶ 9–11. Thus, we do not discern a difference between the two proposed levels of skill that affects the analysis in this IPR. However, for clarity we adopt Petitioner’s articulation of the level of skill, which 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 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Here, the intrinsic evidence does not support limiting the challenged claims to sending “original” messages. Thus, sending sensed data acquired from another device is within the ambit of the challenged claims. In fact, dependent claims 2, 11, 15, 17, 21 specifically recite a sensor and/or actuator which suggests that the independent claims can be broader and may not require a remote device “including” a sensor and/or actuator. Additionally, the court in the related Amazon litigation did not construe “remote devices” to require actuators. Id. at 16, 74. For the reasons above, the broadest reasonable construction of the remote device terms does not require a sensor and/or actuator. Based on the 4 Sipco, LLC v. Amazon.com, Inc., No. 2-08-cv-00359 (E.D. Tex.) (“the related Amazon litigation”). 8 record before us, it is unnecessary to expressly construe the remote device terms further.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on Petitioner’s citations to specific prior art disclosures and supporting evidence, we are persuaded that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the legal conclusion that it also would have been obvious to modify the teachings of Mason, with EIA-709.1’s teachings, to include an address that varies in size. Pet. 50. For example, Petitioner contends: A [person of ordinary skill in the art] would have been motivated to use the scalable destination address of EIA-709.1 in Mason’s system. The ‘492 patent uses scalable addresses in order to accommodate systems of different sizes and complexity. Ex. 1001 at 9:59-61. The scalable addresses of EIA-709.1 would also accommodate systems of different sizes and complexity in a more flexible manner. Mason expresses a desire to implement a large scale AMR system. Mason at 1:46-48, 5:25-57. Mason also recognizes the importance of uniquely identifying a large number of destination meters. Mason at 10:43-56. Using the scalable addresses of EIA-709.1 in Mason’s system would allow a [person of ordinary skill in the art] to effectively identify message destinations in networks with increasing sizes and complexity. Kinney, ¶¶116-117. Moreover, Mason explicitly discloses that the LonTalk protocol can be used with its system. Mason at 17:4-9. The LonTalk protocol ultimately was adopted as EIA-709.1. Exs. 1022, 1023, 1024. Indeed, the LonTalk protocol specification includes the same scalable addresses disclosed in EIA-709.1. Ex. 1020 at 14-16. A [person of ordinary skill in the art] would thus be motivated to combine Mason and EIA-709.1, with a reasonable expectation of success in doing so. Kinney, ¶118.” slip op. at 44
- Expert testimonyPetitioner expert creditedDecided for petitioner
“configured to detect a condition and output a signal to the controller,” as recited in claim 15. In that regard, Petitioner contends each meter 12 of Mason includes a metering board for performing the metering function. Pet. 44; Ex. 1006, 5:59–63. Each meter also includes a set of analog transducers. Id.; Ex. 1006, 5:59–64. Thus, according to Petitioner a person of ordinary skill in the art “would appreciate that a sensor is a type of transducer, and that Mason’s transducers are sensors. Mason’s metering board and/or analog transducers correspond to the claimed ‘sensor.’” We agree and credit Petitioner’s declarant’s supporting testimony. Pet. 44; Ex. 1002 ¶ 101. Petitioner also asserts the metering board and/or analog transducers are operable to detect a condition related to, for example, electricity, gas, or water, and output meter information corresponding to the condition to the meter’s controller. Pet. 44; Ex. 1006, 5:32–41, 9:56–65, 15:37–47, 49–53; Ex. 1002 ¶ 101. c. Claims 17 Petitioner persuades us that Mason teaches “at least one actuator configured to implement an action corresponding to the command code,” as recited in claim 17. In that regard, Petitioner contends Mason discloses that each meter 12 includes a disconnect switch drive circuit. Pet. 45; Ex. 1006, 5:59–64. Thus, according to Petitioner a person of ordinary skill in the art 48 “would appreciate that a disconnect drive circuit implements an action, such as a disconnect function, in response to receiving a command to do so using the C12.18 protocol. This operation corresponds to the claimed actuator configured to implement an action corresponding to the command code.” Pet. 45; Ex. 1002 ¶ 101. We agree and credit Petitioner’s declarant’s supporting testimony. Ex. 1002 ¶ 101.” slip op. at 48
Patent outcomesUS 7,697,492 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,697,492 - Unified Patents Inc. v. Digital Stream IP, LLCSome claims unpatentablePTAB · Mar 9, 2018 · IPR2016-01749 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1, 4, 6–13, 20, and 22 are unpatentable as obvious; claims 2 and 3 were not shown unpatentable because the cited art did not establish portability or handheld use.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We agree with Petitioner. Although Petitioner bears the burden of correctly identifying the real parties-in-interest, “[w]e generally accept the petitioner’s identification of real parties-in-interest at the time of filing the petition.” See Zerto, Inc. v. EMC Corp., Case IPR2014-01254, at 6 (PTAB Mar. 3, 2015) (Paper 35) (citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012)). Here, Petitioner identifies in its Petition the real party-in-interest: “Pursuant to 37 C.F.R. § 42.8(b)(1), Unified Patents Inc. (‘Unified’ or ‘Petitioner’) certifies that Unified is the real party-in-interest.” Pet. 1. Such identification gives rise to a rebuttable presumption that Petitioner has complied with its obligation to identify all real parties-in-interest. See Zerto at 6–7. Patent Owner recognizes that “it [is] incumbent on the patent owner to come forward with some rebuttal evidence.” PO Resp. 52. In response to Petitioner’s identification of the real party-in-interest, Patent Owner contends that “this is not an instance where a petitioner’s certification in a petition can be taken at face value” because “evidence proffered by [Petitioner] in support of its position was withdrawn deliberately.” Id. at 53. We do not, however, require evidence beyond a petitioner’s identification of real parties-in-interest in the absence of rebuttal evidence that such identification is erroneous or incomplete. Petitioner’s withdrawal of Exhibit 1012 from the record does not constitute such rebuttal evidence. In view of the foregoing, we find that the circumstances here do not raise sufficient doubt about whether Petitioner has satisfied its obligation to name all real parties-in-interest. Therefore, we determine that the Petition should not be dismissed on this basis.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“by applying the broadest reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under that standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer,” however, and clearly set forth a definition of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Petitioner proposes an express construction for the claim term “transceiver.” Pet. 10. Patent Owner does not propose an express construction for any claim term. See generally PO Resp. In light of the parties’ arguments, we determine that no term requires express interpretation to resolve any controversy in this proceeding.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“Rovira teaches each of the recited claim limitations, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In that regard, Petitioner directs us to Rovira’s teaching that “it is highly desirable to communicate program content information” because “having such information as music title, composer, artist and record label is vital” to music lovers. Pet. 16 (citing Ex. 1003, 1:30–32, 2:5–10); see also Ex. 1003, 1:32–35 (“Frustration of customers, and possible loss of revenue due to subscription cancellation can occur if a subscriber has no method of knowing the title, composer or artist of the particular selection of music.”). Petitioner argues it, thus, would have been obvious to modify Schotz’s system to incorporate a signal that includes both audio data and program data, as taught by Rovira. Pet. 17; see also, e.g., id. at 21 (“[O]ne would have been motivated to (1) modify Schotz’s transmitter 4 to transmit the digital audio signal of Rovira . . . and (2) modify Schotz’s receiver 6 to receive this digital audio signal.”); id. at 23 (“[T]his modification would result in Schotz’s user interface switch 18 selecting the digital audio data . . . within the digital audio signal [of Rovira].”); id. at 25 (“It would have been obvious to utilize the tuner 110 of Rovira in Schotz for [tuning] to frequencies that Schotz is receiving based on its use of Rovira’s digital audio signal. . . . Schotz is essentially doing this already, i.e., tuning to a frequency associated with audio data.”); id. at 27 (“[I]t would have been obvious to modify Schotz to utilize Rovira’s disclosed demodulator 125 to extract the selected digital audio data and the audio program information from the carrier wave, as taught by Rovira.”); id. at 28–29 (“It would have been obvious to modify Schotz to include the digital to analog converter 160 disclosed in Rovira. . . . The receiver 6 of Schotz would necessarily need a digital to analog converter when using the digital signals disclosed in Rovira so that the user can hear the selected music.”). We are persuaded by Petitioner’s reasoning, including specifically the quoted material in the preceding string citation to the Petition, for modifying Schotz’s system to include Rovira’s signal as well as various components for processing such a signal. See Kahn, 441 F.3d at 988. We note that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and, in modifying Schotz’s system to include Rovira’s signal, would have made any necessary additional modifications such that Schotz’s system could process appropriately Rovira’s signal. See KSR, 550 U.S. at 421.” slip op. at 13
Patent outcomesUS 6,757,913 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,757,913 - C&D Zodiac, Inc. v. B/E Aerospace, Inc.Rehearing deniedPTAB · Mar 9, 2018 · IPR2017-01274 · APJ Scott A Daniels · IPR · Rehearing
The Board denied C&D Zodiac’s rehearing request and left in place its denial of institution because the hypothetical forward wall limitation did not provide ascertainable claim scope.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3
Claim constructioncites MarkmanPatents in suitUS 9,365,292 - C&D Zodiac, Inc. v. B/E Aerospace, Inc.Rehearing deniedPTAB · Mar 8, 2018 · IPR2017-01273 · APJ Jennifer S Bisk · IPR · Rehearing
The Board denied rehearing of its decision denying institution because Petitioner did not show an abuse of discretion in finding claims 1–6 indefinite in scope.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “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.” 37 C.F.R. § 42.71(d). slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–9. Specifically, we found that the claim language “leaves us to compare the claimed enclosure unit with a configuration that we know nothing about, except that it has an alternative hypothetical enclosure unit with ‘a substantially flat front wall located in the substantially the same position in the cabin as the forward wall.’” Inst. Dec. 8. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of the hypothetical enclosure unit limitation and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 9.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–9. Specifically, we found that the claim language “leaves us to compare the claimed enclosure unit with a configuration that we know nothing about, except that it has an alternative hypothetical enclosure unit with ‘a substantially flat front wall located in the substantially the same position in the cabin as the forward wall.’” Inst. Dec. 8. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of the hypothetical enclosure unit limitation and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 9.” slip op. at 3
Claim constructionPatents in suitUS 9,434,476
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.