• Avx Corporation v. Greatbatch LtdAll claims unpatentable
  PTAB · Dec 30, 2015 · IPR2014-01361 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–43 are unpatentable under § 103; proposed substitute claims 44 and 45 are not shown patentable, and the Second Motion to Amend is denied.

  RulingsFinal written decision

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

    “In our Decision on Institution, we discussed the meaning of the transitional phrase “consisting essentially of,” but otherwise found that no claim terms required express construction. Dec. on Inst. 4. In its Second Motion to Amend, Patent Owner does not dispute our interpretation of “consisting essentially of,” or propose constructions for any additional claim terms. Upon review of Patent Owner’s evidence and arguments, we conclude that no explicit constructions are required in order to resolve the issues pending before the Board.” slip op. at 6

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

    “establishing that it is entitled to add proposed substitute claims 44 and 45. 37 C.F.R. § 42.20(c). As part of this showing, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. 37 C.F.R. § 42.121. Upon review of the Second Motion to Amend, we are persuaded that the requirements of 37 C.F.R. § 42.121 have been met. For example, Patent Owner seeks to add only two substitute claims, each of which serves to narrow the scope of original claim 18. Mot. 17–18. Patent Owner also identifies exemplary electrolytes disclosed in the originally-filed application that fall within the scope of proposed substitute claims 44 and 45. Id. at 9 (citing Ex. 1010, 33, 35–36 (disclosing an electrolyte containing ethylene glycol, water, isobutyric acid, and ammonium hydroxide (which results in an ammonium salt of the organic acid) with a pH of 4.9, a conductivity of 7.1 mS/cm, and an anode breakdown voltage of 395 volts)). Thus, we focus on whether Patent Owner has met its burden of proof to show that proposed substitute claims 44 and 45 are patentable over the prior art of record.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentable

    “Clark, however, discloses successfully substituting acetic acid in an electrolyte solution with “other low molecular weight paraffin acids,” including butyric, propionic, and lactic acids, as well as forming corresponding ammonium salts of these organic acids. Ex. 1003, 2:40–46, 3:46–61. Likewise, GB 466,193 broadly discloses that acetic acid may be replaced in an electrolyte solution with organic acids of the aliphatic series, including butyric acid and isobutyric acid. Ex. 1015, 3:73–79. In its Second Motion to Amend, Patent Owner does not point to any persuasive evidence to support or explain why a person of ordinary skill in the art would not have considered isobutyric acid, as implied in Clark and expressly identified in GB 466,193, to be a suitable substitute for acetic acid in the electrolyte of Shah. Indeed, similar to the disclosures of Clark and GB 466,193, the ’117 patent discloses that “other relatively weak organic acids of the general formula cnH2+nO2 (where n=2 to 7) are acceptable.”9 Thus, we are not persuaded that Shah, Clark, and GB 466,193 fail to teach or suggest every limitation of proposed substitute claim 44.” slip op. at 10

  • Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsObjective indicia no nexusNot shown unpatentable

    “1 of Shah is ten times higher than electrolyte 2 of the ’117 patent, and the resulting conductivity (47.5 mS/cm) is 6.7 times higher than that of electrolyte 2 of the ’117 patent (7.1 mS/cm). First Mot. to Amend 9 (Table 3); Ex. 1001, 2:14–16 (confirming that the ammonium salt “provides electrical conductivity” in the electrolyte). Given the disclosure of Evans that anode breakdown voltage decreases with increasing conductivity (conductivity being the inverse of resistivity), Patent Owner does not explain persuasively why the 150 volt difference in anode breakdown voltage between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is “contrary to” the teachings of Evans. First Mot. to Amend 9 (Table 3),11; Ex. 2004, 3 (Figure 4). Nor does Patent Owner explain why a person of ordinary skill in the art could not use the disclosure of Evans to modify the resistivity of the electrolyte of Shah, Clark, and GB 466,193 to obtain an anode breakdown voltage within the 370 to 400 volt range of proposed substitute claim 45. Thus, we are not persuaded that the 150 volt difference between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is nonobvious or surprising. Patent Owner also contends that if acetic acid was equivalent to isobutyric acid, such that it could be replaced interchangeably, “a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 Patent electrolyte, both of which have almost identical pH~4.9.” First Mot. to Amend 11. We note, however, that, as set forth in Table 3 above, electrolyte 1 of Shah has a conductivity that is 6.7 times higher than electrolyte 2 of the ’117 patent, as well as ten times the ammonium constituent, two and a half times the acid constituent, half the ethylene glycol, and five times the phosphoric acid as compared to electrolyte 2 of the ’117 patent. In view of the wide difference in constituents and resulting conductivity levels between the two electrolytes, and in view of the teaching of Evans that anode breakdown voltage depends on the resistivity of the electrolyte, Patent Owner provides insufficient argument or evidence to explain why one of ordinary skill in the art would expect that “[i]f acetic acid were equivalent to isobutyric acid . . . a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 patent electrolyte . . . .” First Mot. to Amend 11. Accordingly, even if arguments made in the First Motion to Amend were considered, we would still not be persuaded that proposed substitute claim 45 is patentable over the prior art. Thus, we are not persuaded that Patent Owner has carried its burden to demonstrate, by a preponderance of the evidence, that proposed substitute claim 45 is patentable over the prior art of record.” slip op. at 16

  Patent outcomesUS 6,687,117 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,687,117
• NHK Seating Of America, Inc. v. Lear CorporationSome claims unpatentable
  PTAB · Dec 30, 2015 · IPR2014-01026 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 11, 14, and 17–21 are unpatentable; claim 15 was not shown unpatentable because Wiklund does not disclose its required sequential contact portions.

  RulingsFinal written decision

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

    “Ex. 1001, 5:9–22 (emphasis added). This passage is consistent with interpreting “first manner and second manner” as meaning “any two different ways.” As described in this quoted passage, if either the forward velocity or the trajectory of the headrest, or both changes, then movement in a first and second manner has occurred. For example, if the headrest were to move forward at one velocity and then merely slow down (or speed up) on the same trajectory, then movement would occur in a first and second manner.” slip op. at 8

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

    “Id. at 8:58–9:5 (emphasis added). The emphasized portion of the quotation establishes that Kage’s headrest moves differently at the beginning and end of its path S2'. Namely, Kage’s headrest moves quickly toward the occupant’s head at the beginning of path S2' and more slowly toward the occupant’s head at the end of path S2'.” slip op. at 14

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

    “claims 12, 17, 18, and 21 obvious and sets forth the evidence from Wiklund and Humer to support its contentions in detailed claim charts. Pet. 43–46. NHK also proffers Dr. Kent’s testimony to explain the manner in which Wiklund describes the requirements recited in these claims. Ex. 1010¶¶ 60– 69. Claims 12 and 21 depend from claims 10 and 20, respectively, and further recite a “damper connected between the headrest arrangement and the seatback.” Ex. 1001, 13:15–16 (claim 12), 14:26–27 (claim 21). NHK relies upon Humer for its disclosure of a damper as recited in these claims. Pet. 44–46. More specifically, NHK contends that Humer teaches using a damper 118 to improve “energy absorptions” of the Saab SAHR headrest. Pet. 43 (citing Ex. 1007, 7:27–8:4). NHK also contends that Wiklund is directed to the same Saab SAHR headrest. Pet. 43 (citing Ex. 1010 ¶ 60). NHK therefore concludes that an ordinary artisan would have found it obvious to improve Wiklund by adding Humer’s damper between the headrest arrangement and the seatback. Pet. 43–44. NHK contends that an ordinary artisan would have found it obvious to add a damper to Wiklund to “provide ‘some energy absorption to cause more even and controlled contact with the head during impact’ because without the damper 118 ‘the head tends to oscillate after impacting a headrest cushion.’” Id. at 44 (citing Ex. 1007, page 8:1–4; Ex. 1010 ¶¶ 60, 61, and 63).” slip op. at 34

  • ExcludeMotion to exclude, deniedDenied

    “IV. LEAR’S MOTION TO EXCLUDE We have reviewed Lear’s Motion to Exclude, NHK’s Opposition to the Motion, and Lear’s Reply in support of the Motion. Based on our review, we deny the Motion in all respects for one or both of the following reasons: (1) the Motion is moot because it seeks to exclude evidence not considered or relied upon in rendering this Decision or (2) the Motion addresses issues more appropriate to determining the weight ascribed to the evidence rather than the admissibility of evidence. In rendering this Decision, we determine and ascribe the appropriate weight to all proffered evidence and, when appropriate, comment upon the weight ascribed.” slip op. at 39

  Patent outcomesUS 6,655,733 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,655,733
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Ixi IP, LLCInstitution denied
  PTAB · Dec 30, 2015 · IPR2015-01442 · APJ Kristina M Kalan · IPR · Institution

  The Board denied institution on all challenged claims because the asserted combinations did not disclose the claimed hand-held device.

  RulingsInstitution decision

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

    “Figure 18 illustrates use of the PCS device within the communications web of Snelling. Id. at 41:29–30. The PCS device “may be coupled to NCU 100 via an adapter 1905 that interfaces with the cellular phone 1800.” Id. at 41:30– 32. NCU 100 itself, however, is not described as being “hand-held.” Patent Owner highlights a number of factors supporting the allegation that one of ordinary skill in the art would not view NCU 100 as a device that is hand-held or even mobile in operation: its ability to be “rapidly installed in any location” (citing Ex. 1001, 54:30–32 (emphasis added)); the examples of situations in which NCU 100 could be used—trade show, construction site, emergency aid organization providing assistance after a disaster (id. at 55:4– 8); and power sources including “a dedicated battery, an electric power generator, automobile cigarette adapter, solar cells, any electro-mechanical converter” (id. at 55:13–16). Prelim. Resp. 31. Although the NCU can harness the functionality of a hand-held device to access a wireless network, we are persuaded by Patent Owner’s evidence that Snelling does not identify NCU 100 as a hand-held device. Petitioner relies on certain sections of Snelling discussing the ability of NCU 100 to be made mobile, in that NCU 100 may be moved from location to location, but does not point to any evidence persuading us that NCU 100 is a hand-held device. Accordingly, Petitioner has not established that NCU 100 itself is a hand-held device including the components and functionality of the hand-held device set forth in the challenged claims. Taking into account our construction of “hand-held device,” we are unpersuaded that a “hand-held device” is disclosed by the combination of Snelling and Router Plugins. Thus, we are not persuaded that Petitioner would prevail on its contention that claims 1, 4, 5, 8, 10, 12, 14, and 23 would have been obvious over the combination of Snelling and Router Plugins.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “appearance in the preamble renders it limiting. “A claim’s preamble may limit the claim when the claim drafter uses the preamble to define the subject matter of the claim.” August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284 (Fed. Cir. 2011). “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett- Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Whether to treat a preamble as a limitation is a determination ‘resolved only on review of the entire[ ] . . . patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.’” Id. at 808 (quoting Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)). “Where a patentee uses the claim preamble to recite structural limitations of his claimed invention, the PTO and courts give effect to that usage.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (when limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble may act as a necessary component of the claimed invention). Our consideration of the evidence leads us to the conclusion that the preamble is limiting. The term “hand-held device” appears prominently in the specification. In the “Summary of the Invention” section, the specification states: “A hand-held device for providing communication between a wide area network and a wireless local area network is provided . . . .” Ex. 1001, 1:61–64 (emphasis added). This section also states: “According to an embodiment of the present invention, the hand-held wireless device is a cellular telephone . . . .” Ex. 1001, 4:1–2 (emphasis added). The specification uses the term “hand-held device” as the heading for Detailed Description Section II, which describes device 106 and terminals 107: “II. Hand-held Device/Terminal Hardware” in which “FIG. 2 illustrates embodiments of terminals 107 and device 106.” Id. at 6:36–38. Rather than glossing over the role of the hand-held device in the overall invention, other portions of the specification provide additional details about the hand-held nature of the claimed device. See, e.g., id. at Abstract (identifying a cellular telephone), 6:16–19 (identifying different embodiments of the present invention), 6:37–59 (discussing the hand-held device with reference to Fig. 2), 14:23–15:38 (discussing usage scenarios including a cellular telephone as the hand-held device). The term “hand-held device” appears prominently in the claims as well. The challenged claims all are directed to a device, rather than a method or a system; in each case, the device is a hand-held device. The term “handheld device” recites a structural limitation of the claim, in that the “hand-held” aspect of the device is a dimensional, physical restriction on the size of the device. The limitations in all of the claims rely upon or derive essential structure from the preamble, in that they are housed within a hand-held device, which limits the size and adaptations required of the remaining limitations in the claims. Every claim depending from claim 1 recites “[t]he hand-held device of claim 1.” Ex. 1001, 17:8–18:47. Thus, we determine the use of “hand-held device” in the preamble of the challenged claims is limiting, in that it denotes a structural limitation of the claimed device.” slip op. at 7

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

    “Having determined that the term “hand-held device” is limiting, we turn to the construction of the term. Petitioner urges that the term be construed “broadly enough to encompass a mobile device for enabling communication between one or more devices connected to one or more cellular networks and one or more devices connected to a wireless local area network.” Pet. 12. Patent Owner, although urging that no additional construction is needed, states the plain meaning of the term “hand-held device” is “a device that is hand-held, i.e., a device that that is designed to be held and operated in a person’s hand.” Prelim. Resp. 11–12. We adopt Patent Owner’s construction, namely, “a device that is designed to be held and operated in a person’s hand.”” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Figure 18 illustrates use of the PCS device within the communications web of Snelling. Id. at 41:29–30. The PCS device “may be coupled to NCU 100 via an adapter 1905 that interfaces with the cellular phone 1800.” Id. at 41:30– 32. NCU 100 itself, however, is not described as being “hand-held.” Patent Owner highlights a number of factors supporting the allegation that one of ordinary skill in the art would not view NCU 100 as a device that is hand-held or even mobile in operation: its ability to be “rapidly installed in any location” (citing Ex. 1001, 54:30–32 (emphasis added)); the examples of situations in which NCU 100 could be used—trade show, construction site, emergency aid organization providing assistance after a disaster (id. at 55:4– 8); and power sources including “a dedicated battery, an electric power generator, automobile cigarette adapter, solar cells, any electro-mechanical converter” (id. at 55:13–16). Prelim. Resp. 31. Although the NCU can harness the functionality of a hand-held device to access a wireless network, we are persuaded by Patent Owner’s evidence that Snelling does not identify NCU 100 as a hand-held device. Petitioner relies on certain sections of Snelling discussing the ability of NCU 100 to be made mobile, in that NCU 100 may be moved from location to location, but does not point to any evidence persuading us that NCU 100 is a hand-held device. Accordingly, Petitioner has not established that NCU 100 itself is a hand-held device including the components and functionality of the hand-held device set forth in the challenged claims. Taking into account our construction of “hand-held device,” we are unpersuaded that a “hand-held device” is disclosed by the combination of Snelling and Router Plugins. Thus, we are not persuaded that Petitioner would prevail on its contention that claims 1, 4, 5, 8, 10, 12, 14, and 23 would have been obvious over the combination of Snelling and Router Plugins.” slip op. at 15

  Claim construction§ 103 obviousness
  Patents in suitUS 7,295,532
• Emnos USA Corp. v. Dunnhumby LimitedInstitution denied
  PTAB · Dec 30, 2015 · CBM2015-00162 · APJ Timothy J Goodson · CBM · Institution

  The Board denied institution on all challenged claims because the Petition did not establish that the ’246 patent qualifies as a covered business method patent.

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 324. Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a covered business method patent review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” As explained below, we do not institute a covered business method patent review because the Petition does not establish that the ’246 patent qualifies as a covered business method patent.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “remains deficient. The Petition relies on the Oracle Pro*C reference as disclosing the script template limitations of the independent claims, but as Patent Owner points out, the Petition does not present evidence establishing that Oracle Pro*C qualifies as a prior art printed publication. See Pet. 32– 34; Prelim. Resp. 50–53. Petitioner asserts that Oracle Pro*C “was published in 2002” but does not point to any specific evidence of its publication or public availability in 2002. Id. at 33. If Petitioner’s assertion is based on the “March 2002” statement that appears on the cover of the Oracle Pro*C reference, that statement is hearsay, and Petitioner does not argue that any hearsay exception or exclusion applies. See Ex. 1041, 1; see also ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, slip op. at 16 (PTAB Aug. 26, 2015) (Paper 13) (“To the extent that Petitioner relies on the date on the face of each exhibit and the indications of availability of these references for download . . . for the truth of that information, and considering that Petitioner has not established that any hearsay exception or exclusion applies, we agree [that the statements are inadmissible hearsay].”). Petitioner also argues, with citation to the testimony of Dr. Smyth, that Oracle Pro*C is a reference used by programmers who develop applications in Oracle database environments. Pet. 33 (citing Ex. 1030 ¶ 57). However, neither the Petition nor Dr. Smyth explains how or when the specific Programmer’s Guide, Release 9.2 that Petitioner relies on as the Oracle Pro*C reference (Ex. 1041) was made available to skilled artisans. Because the Petition does not establish that Oracle Pro*C qualifies as prior art, Section VIII.B. of the Petition does not remedy the deficient showing in Section III.D. of the Petition on the first consideration of the technological” slip op. at 11

  § 102 anticipationDiscretionary denial
  Patents in suitUS 8,214,246
• Washington Inventory Services D/B/A Wis International v. Rgis, LLCAll claims unpatentable
  PTAB · Dec 30, 2015 · CBM2014-00158 · APJ James T Moore · CBM · Final written decision

  Claims 1–19 are unpatentable under § 101 as directed to abstract inventory verification implemented with conventional technology, and under § 103 over Whitehouse and ordinary skill in the art.

  RulingsFinal written decision

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

    “We must not import unrecited elements into the claim from the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1319–20 (Fed. Cir. 2005) (en banc). The specification observes its own exemplary nature—“[i]t should be understood that the description and specific examples are intended for purposes of illustration only and are not intended to limit the scope of the present disclosure.” Ex. 1001, 2:16–19.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for petitioner

    “During prosecution, in a responsive amendment, Patent Owner proffered that “mode” implied a device: Amended claim 1 recites “selecting a verification mode, which includes a set of rules that define a methodology for verifying the inventory dataset, from a plurality of verification modes” and “acquiring verification data in the completed area with the remote verification device based on the selected verification mode.” The McGraw-Hill Dictionary of Scientific and Technical Terms, 6th Edition, defines the word “mode” as “one of several alternative conditions or methods of operation of a device.” The portion regarding the “set of rules that define a methodology for verifying the inventory dataset” further clarifies what is meant by verification mode. Ex. 1002, 180–81. Claim 1, however, broadly interpreted, can reasonably refer to either “mode”—the verification mode, or the device mode. Moreover, the specification itself, in describing manual processing of prior art printed inventory sheets, also refers to that method of inventory verification as a “mode.” Ex. 1001, 1:31–38 (see in particular line 35). We, therefore, decline to limit the term “mode” to only “on a device” when inventory checking alone can have different “modes” of being” slip op. at 17

  • Skill levelSkill level board ownDecided for petitioner

    “Mr. Melucci opines that a person of ordinary skill in the art relevant to the ’658 patent “would have at least two years [of] experience related to collecting and verifying inventory data.” Ex. 1006 ¶ 27. Dr. Jagannathan testifies that “a person of ordinary skill in the art of the [’]658 Patent would have had: (1) a Bachelor’s degree in computer science, computer engineering, or related field; (2) one year of related professional experience; and (3) a basic understanding of inventory processes and the use of UPCs and other product identifiers. The professional experience may include, for example, work related to use of bar codes, stock keeping units, and the like. It is further my opinion that relevant professional or practical experience with computer systems and software may substitute for academic credentials.” Ex. 2001 ¶ 40. Based on our review of the ’658 patent, the types of problems and solutions described in the ’658 patent and cited prior art, and the testimony of the parties’ Declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least two years of experience in computerized inventory management. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18

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

    “imports limitations into the claims from the specification. See, e.g., PO Resp. 35 (discussing the claims jointly). For example, Patent Owner asserts that Petitioner “ignores the actual claim language that requires the verification mode selection to be made on and with the device.” PO Resp. 37. The defect in this argument is that the language of “selecting a particular verification mode on the verification device” is absent from claim 1. See Ex. 1001, 6:2–14. Furthermore, the broadest reasonable interpretation of the term “mode” does not limit the step to a device. Claim 1 positively recites the device in the downloading, deploying, acquiring, computing, and displaying steps, but the term “device” is specifically omitted from the selecting step. Accordingly, we do not interpret claim 1 as requiring the step of selecting a verification mode on the device. Contrary to Patent Owner’s position, we are persuaded by Petitioner that each of challenged claims 1–14, and 18, as a whole, is directed to the fundamental concept of providing inventory verification. Pet. 23. In the Abstract, the ’658 patent states: “[a] system and method of verifying the completeness and accuracy of inventory records is disclosed.” Ex. 1001, Abst. Additionally, in the Background section, the ’658 patent states: Prior methods of verification require that the inventory records be printed out in a predetermined format which is then taken to a specific area in the facility for comparison to the inventory physically located there. These methods are inflexible, tedious and time consuming because the mode of verification is strictly depend[e]nt on the predetermined format of the printed reports and requires a repeated reference to the report and comparison with the actual inventory. Ex. 1001, 1:31–38. The only technological features recited in claims 1–14 and 18 are a computer performing conventional computer functions. Ex. 1001, 6:2–22. Specifically, those include downloading data from a computer to a device, deploying the device, acquiring data with the device, computing, and displaying.” slip op. at 23

  Patent outcomesUS 8,606,658 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · Graham
  Patents in suitUS 8,606,658
• HTC Corporation / HTC America, Inc. v. Advanced Audio Devices, LLCAll claims unpatentable
  PTAB · Dec 29, 2015 · IPR2014-01155 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1, 3, 6, 7, 9, 11, 25, 30, 59, 77, 82, 85, and 117–122 are unpatentable under § 103 over the stated prior-art combinations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedOther

    “Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1009 ¶ 240 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio 30 management capabilities of Sound Blaster”); id. at ¶ 242 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1009 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2007 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. It would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, and Ozawa, and would have had a reasonable expectation of success in doing so.” slip op. at 30

  • ExcludeMotion to exclude, deniedDenied

    “Exclude 1. Pursuant to our Rules, a motion to exclude evidence must be filed to preserve any previously-made objections to evidence. 37 C.F.R. § 42.64(c). The motion must identify where in the record the objections were made, and must explain the objections. Id. We note that AAD does not identify where in the record its objections to evidence were made prior to their being the basis of the Motion to Exclude, in violation of Rule 42.64(c). Indeed, the Board is aware of AAD’s prior objections only because they were quoted in HTC’s opposition to the Motion to Exclude. For this reason, AAD’s Motion is procedurally deficient, and may be denied on this basis alone.” slip op. at 25

  • Skill levelSkill level board ownDecided for petitioner

    “management capabilities of Sound Blaster”); id. at ¶ 242 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1009 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2007 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. It would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, and Ozawa, and would have had a reasonable expectation of success in doing so.” slip op. at 31

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

    “In our view, HTC’s proposed analysis better comports with the “expansive and flexible approach” to obviousness set forth by the Supreme Court in KSR. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Our inquiry is, therefore, not “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1009 ¶ 240 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio 30 management capabilities of Sound Blaster”); id. at ¶ 242 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1009 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2007 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. It would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, and Ozawa, and would have had a reasonable expectation of success in doing so.” slip op. at 30

  Patent outcomesUS 7,289,393 unpatentable
  § 103 obviousnesscites Graham
  Patents in suitUS 7,289,393
• Fujitsu Network Communications, Inc. v. Capella Photonics, Inc.Rehearing denied
  PTAB · Dec 29, 2015 · IPR2015-00727 · APJ Josiah C Cocks · IPR · Rehearing

  The Board denied Capella’s rehearing request, leaving in place its decision granting Fujitsu’s motion to submit supplemental information.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “2. Discussion When rehearing a decision on a motion, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(b). The party requesting rehearing has the burden of showing that the decision from which rehearing is sought 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). Here, Capella contends the following in its Request for Rehearing:” slip op. at 2

  • Expert testimonyDecided for petitioner

    “it made in its Opposition to Fujitsu’s Motion. In our Decision, we were cognizant that paragraph 166 of Dr. Ford’s Declaration (Ex. 1037) was not identical to paragraph 166 of Dr. Drabik’s Declaration (Ex. 1016). In viewing the differences, however, we concluded that the changes were not substantive in nature, and instead simply encompassed expression of content that previously had been incorporated by reference. That Capella may disagree with our conclusion in that respect, does not show that we misapprehended or overlooked any matter in so reaching that conclusion. Moreover, although Capella generally contends that the expression of the material in paragraph 166 of Dr. Ford’s Declaration presents a new “rationale” applied to the combination of Bouevitch and Sparks that is an “attempt to remedy a deficiency in Dr. Drabik’s original declaration,” Cappela does not explain what the new rationale is or what deficiency allegedly now has been remedied. See Req. Reh’g 3–4.” slip op. at 3

  None
• HTC Corporation / HTC America, Inc. v. Advanced Audio Devices, LLCAll claims unpatentable
  PTAB · Dec 29, 2015 · IPR2014-01154 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1, 3, 6, 7, 11, 12, 16, 22, 24, 27, 29, 30, 35–37, 43, and 45–47 are unpatentable under § 103; proposed substitute claims 49–65 were denied.

  RulingsFinal written decision

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

    “AAD misunderstands our prior claim construction ruling. We cited the above-quoted portions of the specification to demonstrate that, when the ’403 patentee wished to refer to ordering sound tracks, the terms rearranging or customizing were used—as opposed to the term organizable. Dec. 9. By contrast, we noted that the specification of the ’403 patent does not use the word organizable outside the claims. Id. The claim language itself, therefore, is the best guide to the meaning of the term. As we noted in our Decision, claim 1 requires that the music library is “organizable into a 10 master song list and at least one group of sound tracks.” Ex. 1001, 21:32–33 (emphasis added); Dec. 9. This usage implies that the user must be able to, at the very least, add songs from the music library into groups such as the master song list and the group of sound tracks. We note that AAD’s expert, Mr. McAlexander, agreed with our construction of the term, with a minor caveat discussed below. Ex. 1016, 31:6–32:16 (“The actual context of an arrangement ordering and grouping, I have no problem with that. I think they’re right.”). AAD’s proposed construction, which limits organizable to only the ordering of songs, is not the broadest reasonable interpretation of the claim term.” slip op. at 10

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

    “b. Analysis of Anticipation by Nathan ’259 Anticipation requires not only that all elements of a claim are disclosed within the four corners of a single prior art reference, but that the elements are “arranged as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). For the following reasons, we determine that Petitioner has not proven by a preponderance of the evidence that Nathan ’259 teaches all elements of claim 1, and by extension, any of the challenged dependent claims.” slip op. at 17

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

    “In our view, HTC’s proposed analysis better comports with the “expansive and flexible approach” to obviousness set forth by the Supreme Court in KSR. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Our inquiry is, therefore, not “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the 37 teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1007 ¶ 168 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio management capabilities of Sound Blaster”); id. at ¶ 170 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1007 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2003 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of 38 ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.” slip op. at 37

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “In cases in which the proffered evidence of commercial success is licenses, rather than sales of products embodying the invention, there is a danger that the licenses may have been taken only because they were cheaper than defending an infringement suit. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed. Cir. 1985). In such situations, nexus between the commercial success and the patent cannot be inferred; rather, “affirmative evidence of nexus” is required. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). In other words, a patent owner must demonstrate “a nexus between the merits of the invention and the licenses of record”; otherwise, the licenses are to be accorded little weight. In re GPAC Inc., 57 F.3d at 1580 (emphasis added). HTC notes that each of the licenses listed by Mr. Keller includes at least two patents that explicitly claim a compact disc recorder, an element not present in the claims of the ’403 patent. Pet. Reply 24. HTC also contends that AAD fails to demonstrate any link between the invention of the ’403 patent and the taking of the license; for example, AAD provides no 27 apportionment of revenues to show the amount attributable to the ’403 patent, as opposed to the other members of the licensed family. Id. We agree with HTC that the evidence provided by AAD does not establish a sufficient link between the merits of the invention claimed in the ’403 patent and the taking of the licenses. Although Mr. Keller notes that some of the provided licenses were taken in situations where there was no pending litigation against the licensee (Ex. 2004 ¶ 9), he does not address whether litigation had been threatened against those parties. We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’403 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, AAD’s evidence of licensing fails to establish commercial success. We conclude that the evidence of objective indicia of nonobviousness is insufficient to overcome the evidence of obviousness over the combined Nathan references.” slip op. at 27

  Patent outcomesUS 6,587,403 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 6,587,403
• Fujitsu Network Communications, Inc. v. Capella Photonics, Inc.Rehearing denied
  PTAB · Dec 29, 2015 · IPR2015-00726 · APJ Josiah C Cocks · IPR · Rehearing

  The Board denied Capella’s request for rehearing of its decision allowing Fujitsu to submit supplemental information.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “for an abuse of discretion. 37 C.F.R. § 42.71(b). The party requesting rehearing has the burden of showing that the decision from which rehearing is sought 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). Here, Capella contends the following in its Request for Rehearing:” slip op. at 2

  • Additional discoveryOther

    “for an abuse of discretion. 37 C.F.R. § 42.71(b). The party requesting rehearing has the burden of showing that the decision from which rehearing is sought 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). Here, Capella contends the following in its Request for Rehearing:” slip op. at 2

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “for an abuse of discretion. 37 C.F.R. § 42.71(b). The party requesting rehearing has the burden of showing that the decision from which rehearing is sought 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). Here, Capella contends the following in its Request for Rehearing: First, the Board’s decision granting Fujitsu’s motion to submit supplemental information is not supported by substantial evidence. Second, the Board misapprehended or overlooked that substantive content was added to Dr. Ford’s declaration. Third, the Board’s continued reliance on Dr. Drabik’s declaration, where cross-examination is impossible, violates the rules of discovery, the rules of evidence, and curtails due process.” slip op. at 2

  None
• Samsung Display Co., Ltd. / Toshiba Corporation et al. v. Gold Charm Ltd.Institution denied
  PTAB · Dec 29, 2015 · IPR2015-01499 · APJ Michael R Zecher · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–9 were obvious over Satou and Noguchi.

  RulingsInstitution decision

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

    “5. Summary Based on the record before us, SDC has not demonstrated a reasonable likelihood that it would prevail on its assertion that claims 1–9 would have been obvious over the combination of Satou and Noguchi because SDC does not provide a sufficient rationale to combine the respective teachings of these asserted references. III. CONCLUSION Taking into account the arguments presented in Gold Charm’s Preliminary Response, we conclude that the information presented in the Petition does not demonstrate that there is a reasonable likelihood that SDC would prevail in challenging claims 1–9 of the ’534 patent as unpatentable under § 103(a). IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is DENIED and no trial is instituted.” slip op. at 17

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

    “On the present record, we are not persuaded that SDC has articulated a sufficient rationale to combine the teachings of Satou and Noguchi. With respect to SDC’s assertion that the teachings of Satou and Noguchi are capable of being combined because both of these references solve the same problem using essentially the same structure, this assertion, at best, indicates that Satou and Noguchi are analogous art to each other. Merely asserting that these prior art references are analogous art to each other, however, does not suffice as an articulated reason with a rational underpinning to combine their respective teachings—more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. With respect to SDC’s assertion that one of ordinary skill in the art would have implemented components of Satou’s active matrix substrate in accordance with the configurations taught by Noguchi, this assertion lacks a convincing rationale as to why one of ordinary skill in the art would have looked to Noguchi for guidance as to how these components disclosed in Satou should be re-configured in the manner required by independent claim 1. Based on this assertion, we understand SDC to argue that the components disclosed in Satou’s active matrix substrate account for all the features required by independent claim 1, but these components are not configured in the same manner required by this claim. We further understand SDC to argue that one of ordinary skill in the art would have looked to the configurations taught by Noguchi in order to achieve the particular configuration of features required by independent claim 1. Without engaging in impermissible hindsight reconstruction, it is not clear to us why one of ordinary skill in the art would have looked to the configurations taught by Noguchi, especially given that, according to SDC, Noguchi solves the same problem as Satou using essentially the same structure. See Grain Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.”’).” slip op. at 15

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We also are not persuaded by the supporting testimony of Mr. Credelle regarding SDC’s rationale to combine the teachings of Satou and Noguchi because it essentially repeats the arguments advanced by SDC in its Petition. Compare Pet. 38–40, with Ex. 1006 ¶¶ 76, 77. For instance, Mr. Credelle testifies that one of ordinary skill in the art would have combined the teachings of Satou and Noguchi because they solve the same problem using essentially the same structure. Ex. 1006 ¶ 76 (citing Ex. 1003, 1:52– 56; Ex. 1004, 2:38–41). Similar to our explanation above, simply demonstrating that these prior art references are analogous art to each other does not suffice as an articulated reason with a rational underpinning to combine their respective teachings—more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. Mr. Credelle also testifies that one of ordinary skill in the art would have implemented components of Satou’s active matrix substrate in accordance with the configurations taught by Noguchi. Ex. 1006 ¶ 76. Similar to our explanation above, without engaging in impermissible hindsight reconstruction, it is not clear to us why one of ordinary skill in the art would have looked to the configurations taught by Noguchi, especially given that, according to SDC, Noguchi solves the same problem as Satou using essentially the same structure. See Grain Processing, 840 F.2d at 907.” slip op. at 17

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,211,534

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.