- Lavelle Industries, Inc. v. Danco, Inc.Institution deniedPTAB · May 4, 2017 · IPR2017-00159 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 6, 11, or 14 unpatentable on any asserted ground.
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. § 314, which provides that inter partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review of any claim.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id. Petitioner does not propose a level of ordinary skill in the art. Relying on the testimony of Mr. Jones, Patent Owner, asserts that a person of ordinary skill in the art “typically would have had (a) a bachelor’s degree in mechanical engineering, or a related field, and at least two years of experience in the design of plumbing components; or (b) a high school degree and at least four years of experience in the design of plumbing components.” Prelim. Resp. 19 (citing Ex. 2003 ¶ 24). Mr. Jones testifies that his opinion is based on his “experiences working in the field of product design in the plumbing industry in addition to the specification and claims of the ‘455 Patent in light of the state of the art in the 2012 time frame.” Ex. 2003 ¶ 24. We determine that the level of ordinary skill proposed by Mr. Jones is consistent with the challenged patent and the asserted prior art, and we therefore adopt this definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 10
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We are not persuaded by Petitioner’s arguments and evidence that Turner’s sleeves 20, 52 are collapsible. We agree with Patent Owner and Mr. Jones that “flexibility is not the same as collapsibility,” and that Turner thus does not disclose that flexible sleeves 20, 52 necessarily are collapsible. Furthermore, Mr. Jones testifies that one of ordinary skill in the art would not find Turner’s sleeves to be collapsible and “a cylindrical polyethylene wall that is 1/16 or 5/32 of an inch [as disclosed in Turner] would actually be relatively rigid (although still capable of flexing).” Ex. 2003 ¶¶ 65–66. We find this testimony, which is based on Mr. Jones’ “experiences with polyethylene and similar materials and how they have been used in the plumbing industry,” credible and persuasive. See Ex. 2003 ¶ 66. Petitioner, on the other hand, offers no objective evidence supporting its assertion that Turner’s sleeves are collapsible.” slip op. at 28
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Having considered Petitioner’s argument and evidence, we are not persuaded that Schwartz’s intermediate portion 24 is collapsible. Instead, we agree with Patent Owner that the passage of Schwartz cited by Petitioner as disclosing collapsibility (line 21 of column 2), fails to suggest that intermediate portion 24 is collapsible. Indeed, this passage merely discloses that ferrule 12 is shaped with radial flange 18. Ex. 1002, 2:21. As such, we are not directed to any disclosure in Schwartz that suggests intermediate portion 24—or any part of ferrule 12—is collapsible. Schwartz discloses that ferrule 12 is made of “chemically inert plastic material” (Ex. 1002, 2:13–14), but insufficient reasoning is given to establish that this material necessarily would be collapsible. Regarding Petitioner’s argument noted above that intermediate portion 24 “must” be collapsible, we agree with Patent Owner that this argument is not persuasive. The assertion that the intermediate portion must at least partially collapse to provide a sealing force against the soil pipe and to take up any variable space present above the pipe is not supported sufficiently by objective evidence or analysis. Furthermore, this assertion is contradicted by Mr. Jones’ testimony, which we credit. See Ex. 2003 ¶ 51.” slip op. at 14
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 9,273,455 - PTAB · Apr 3, 2017 · IPR2016-01516 · APJ John A Hudalla · IPR · Rehearing
The Board denied LG’s rehearing request and left in place the denial of institution on claims 1–12 and 58–67 because neither four-reference obviousness ground established each challenged reference’s prior-art status.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 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
“we denied institution on both grounds presented in the Petition. Dec. 13. In particular, we found that LG had failed to make a threshold showing that one reference from each of its two obviousness grounds—namely, Callaghan Book and Microsoft SMB—qualified as prior art under 35 U.S.C. § 102(b). See id. at 11, 13. Accordingly, we determined that LG had not established a reasonable likelihood that it would prevail in asserting that claims 1–12 and 58–67 would have been obvious over the cited references. Id. LG filed a Request for Rehearing asking that we reconsider our decision not to institute a trial on these obviousness grounds. Paper 24 (“Req. Reh’g”).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“requirements are met.1 Specifically, we may not institute inter partes review unless “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) (emphasis added). LG did not meet this threshold requirement in its Petition, because LG merely asserts that Callaghan Book and Microsoft SMB are printed publications under 35 U.S.C. § 102(b) with no supporting analysis whatsoever. See Pet. 5. In the absence of any showing that these references qualify as printed publications, and based on the relevant dates for Callaghan Book, we found that LG had not met the threshold showing for institution under § 314(a). See Dec. 10–13. Thus, we are not persuaded by LG’s arguments. III. CONCLUSION For the reasons above, we conclude that LG has not met its burden of showing an abuse of discretion, or that we misapprehended or overlooked any of LG’s arguments, in our determinations (1) that LG put forth two fourreference obviousness grounds, and (2) that LG failed to establish the prior art status of one reference in each of the grounds, namely, Callaghan Book and Microsoft SMB. See Dec. 4–5, 10–13. We, therefore, deny LG’s request to modify our determinations and institute an inter partes review of the challenged claims in the ’511 patent.” slip op. at 7
- BurdenDecided for patent owner
“numbered grounds in LG’s chart really represents eight distinct challenges, meaning the Petition includes sixteen grounds of unpatentability. Under this logic, eight grounds would remain even if LG failed to establish the prior art status of Callaghan Book in “Ground 1” or Microsoft SMB in “Ground 2.” See Req. Reh’g 4–5. LG’s argument belies its requirement to “[p]rovide a statement of the precise relief requested for each claim challenged” in the Petition, including identifying “[t]he specific statutory grounds . . . on which the challenge to the claim is based and the patents or printed publications relied upon for each ground.” 37 C.F.R. § 42.104(b) (emphases added); see also 35 U.S.C. § 312(a)(3) (a petition is required to “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim”). LG’s failure to identify specifically and clearly its alleged sixteen grounds is further illustrated by its color-coded Exhibit 1037, wherein LG invites us to parse the discussion of “Ground 1” and “Ground 2” in the Petition by color to construct the eight permutations of grouped references that do not include Callaghan Book or Microsoft SMB. We decline to comb through the Petition to determine the strongest arguments or particular combinations of references that might survive LG’s failure to establish the prior art status of certain references. Instead, we fairly read LG’s “Ground 1” and “Ground 2” to be two grounds. We also stated that each of these two grounds relied on the secondary references throughout the analysis (see Dec. 4–5), which is supported by LG’s color-coded Exhibit 1037. Accordingly, we properly interpreted the Petition as including two four-reference obviousness grounds. Id. at 5. Under these circumstances, LG’s arguments do not persuade us that we misapprehended or overlooked additional grounds in our Decision on Institution.” slip op. at 4
§ 102 anticipationPatents in suitUS 7,149,511 - Asustek Computer, Inc. / Asus Computer International v. Avago Technologies General IP (Singapore) Pte. LtdRehearing grantedPTAB · Mar 8, 2017 · IPR2016-00647 · APJ Glenn J Perry · IPR · Rehearing
Granted petitioner’s request for reconsideration and added institution of the §102 Cioffi challenge to claims 8, 11, 12, 14, 15, 18, and 19.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. CONCLUSIONS For the foregoing reasons, we are persuaded that our Decision to Institute overlooked or misapprehended the matters discussed in this Decision, and that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to its challenge as to the patentability of claims 8, 11, 12, 14, 15, 18, and 19 as being anticipated by Cioffi. The Board has not made a final determination on the patentability of any challenged claims or the construction of any claim terms. Our final decision will be based on the record as fully developed during trial.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4
§ 102 anticipationPatents in suitUS 6,430,148 - TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget L. M. EricssonAll claims unpatentablePTAB · Jan 31, 2017 · IPR2015-01650 · APJ Stacy B Margolies · IPR · Final written decision
Claims 1–3, 8, 9, 11, 12, and 15–19 are unpatentable as anticipated by King; claim 10 is unpatentable as obvious over King and Gilbert.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not challenge Dr. Goldberg’s testimony regarding the level of skill in the art. See generally PO Resp. However, Mr. Blackburn, Patent Owner’s declarant, opines that a person of ordinary skill in the art would probably have had a graduate degree in computer engineering, electrical engineering, applied physics, or a related field, and at least three years’ experience in the design and development of GPS or cellular location services, systems, and/or devices or (2) a Bachelor’s degree in computer engineering, electrical engineering, applied physics, or a related field, and at least five years’ experience in the design, analysis, and/or development of GPS, cellular and PSTN location services, systems, and/or devices. Ex. 2004 ¶ 11 (emphases added). As illustrated by the emphasized words above, Mr. Blackburn’s proposed level of ordinary skill differs slightly from Dr. Goldberg’s. Patent Owner, however, does not cite the above testimony in its Patent Owner Response. Nor does Patent Owner or Mr. Blackburn explain the reason for including cellular and PSTN location services, or for adding analysis as an alternative in the description of experience in the field. See generally PO Resp. We determine that the level of ordinary skill proposed by Petitioners’ declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt Dr. Goldberg’s definition of the level of ordinary skill in the art for the purposes of the analysis below. However, our analysis would not differ if we were to adopt Mr. Blackburn’s definition.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioners’ proposed construction of “quality of service,” on the other hand, is consistent with the ’815 patent specification. The specification, for example, describes evaluating criteria such as “accuracy,” “time-to-first-fix” and “sensitivity.” Ex. 1001, 6:9–24. The specification also gives the following examples of quality of service: “Most accurate,” “Fastest,” and “Least Expensive.” Id. at 5:33–36. Moreover, Petitioners’ declarant, Dr. Goldberg, persuasively testifies that the attributes of accuracy, time-to-first-fix (TTFF), sensitivity, speed, and cost are all indications of a grade or level of performance that is to be associated with the computed position estimate. Ex. 1051 ¶ 155. Petitioners’ proposed construction also is supported by the applicant’s statements during prosecution of the ’815 patent and a description of quality of service in a prior art reference as referring to, for example, accuracy, periodicity, and response time. See Pet. 19–20 (citing Ex. 1002, 50; Ex. 1005, 5; Ex. 1051 ¶¶ 155–157). Patent Owner does not challenge Petitioners’ proposed construction of the shorter phrase “quality of service.” See PO Resp. 10–20. We determine that the common term “desired”—for which there is no special definition or disavowal in the specification—need not be expressly construed. See Pet. Reply 3–4. For the foregoing reasons, the broadest reasonable interpretation of “determining a desired quality of service,” as recited in claim 1, and “determine a desired quality of service,” as recited in claim 17, is not limited to “ascertaining a quality of service associated with a computed position estimate as a function of any user- or position application-selectable input related to quality of service,” as proposed by Patent Owner. We also determine that, contrary to Patent Owner’s unsupported argument, the desired QoS may be received from the cellular network. Moreover, for the reasons explained above, we determine that the broadest reasonable interpretation of “quality of service” is “an indication of grade or level of performance associated with a computed position estimate.”” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“mobile terminal “determining” a “desired” quality of service because, in King, the mobile station receives a QoS parameter from the network are based on Patent Owner’s proposed construction, which we do not adopt. See supra Section II.C. As explained in the claim construction section above, Patent Owner’s proposal to limit “determining a desired quality of service” to “ascertaining a quality of service associated with a computed position estimate as a function of any user- or position application-selectable input related to quality of service” unreasonably limits the claim to one embodiment in the specification. See supra Section II.C. Moreover, as explained above, Patent Owner’s claim construction argument that the desired QoS is not sent from the cellular network to the mobile terminal is unreasonably narrow in light of express disclosures in the ’815 patent specification that determining a desired quality of service includes receiving a specified quality of service from a source external to the mobile terminal. See id. Thus, Patent Owner’s arguments distinguishing King because King’s mobile terminal receives a QoS from the cellular network, and that King’s mobile terminal does not determine the desired QoS, rest on a proposed claim construction which we do not adopt. Patent Owner’s remaining arguments distinguishing King are based on requirements not recited in the claim—that the quality of service be chosen by a user or a positioning application, and that the quality of service be an input which can prioritize criteria according the user or positioning application’s preference. The disputed limitation merely recites “determining a desired quality of service” without specifying the source of desired quality of service or requiring multiple options for prioritizing criteria (such as the options of most accurate, fastest, or least expensive). Although one embodiment in the ’815 patent specification is providing a user with the ability to select from a number of options, claim 1 is not specific to that embodiment. Indeed, as explained above, claim 1 at least encompasses the subject matter of dependent claims 8, 9, and 10, and only claim 10 is directed to prompting a user to input the desired quality of service. And, claim 10 is not limited to a “selectable input” and does not require input which can prioritize criteria according the user or positioning application’s preference. In sum, Patent Owner’s arguments that King does not disclose “determining a desired quality of service” are based on an unreasonably narrow reading of this claim limitation. Accordingly, for the above reasons, we determine that Petitioners have shown that King discloses “determining a desired quality of service,” as recited in claim 1.” slip op. at 31
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We also credit and find persuasive, as supported by King, Dr. Goldberg’s testimony (i) that the features on which Petitioners rely are all applicable to assisted GPS; (ii) that the use of DGPS data does not exclude the use of other aiding data such as ephemeris data; and (iii) that an ordinarily skilled artisan would have recognized that King’s embedded algorithm could be used with the steps illustrated in Figures 5, 9A, and 9B of King. Ex. 1056 ¶¶ 32–34. Indeed, the final point is corroborated by the claims of King, which illustrate that the embedded algorithm is one way of computing the predicted accuracy per step 608 of Figure 9A. Specifically, claim 1 of King recites a method for determining a location of the mobile radio handset that includes receiving a point-to-point ephemeris message that includes ephemeris data, receiving a point-to-point differential correction message that includes differential correction data, and determining a prediction of an accuracy of the computed location. Ex. 1026, 28:17–46. According to King, Figures 9A and 9B “are a flowchart of the operation of the handset . . . for request/receive and point-to-point delivery of ephemeris and differential correction data in accordance with the preferred embodiment of the present invention.” Id. at 4:20–24. Claim 3 of King depends from claim 1 and recites that the step of determining a prediction of the accuracy comprises determining a prediction based on covariance information derived by a Weighted Least Square fixing method. Id. at 28:53–58. King discloses a Weighted Least Square fixing method only in connection with the embedded algorithm. See id. at 22:53–24:35.” slip op. at 39
Patent outcomesUS 6,535,815 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,535,815 - TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonAll claims unpatentablePTAB · Jan 24, 2017 · IPR2015-01584 · APJ Barbara A Benoit · IPR · Final written decision
Claims 13, 15, 16, and 18 are unpatentable as obvious over Jentschel and JP947; additional obviousness grounds also establish unpatentability.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“2. Analysis A central issue is whether Petitioner has met its burden to show by a preponderance of the evidence that Lawton discloses, either expressly or inherently, the recited step of “low pass filtering the in-phase received signal and the quadrature received signal in a low pass in-phase filter and a low pass quadrature filter, respectively,” as arranged in claim 13. Verdegaal Bros., 814 F.2d at 631. After introducing the claim limitation and repeating Dr. Razavi’s conclusion that Lawton discloses the limitation, Petitioner presents another annotation of Lawton’s Figure 9 (shown below on left)” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“2. Reason to Combine Jentschel and JP947 Our inquiry, however, continues because “[a] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. In other words, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In addition, “[c]are 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.’” Grain Processing” slip op. at 55
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”)). Furthermore, Patent Owner’s assertion regarding the teaching of Thomas does not negate JP947’s unambiguous teaching that the order of the bandpass filter and amplifier may be reversed. Thus, for these reasons, we do not agree with Patent Owner’s position that “the teachings of JP947 are nonanalogous because Jentschel performs band selection at RF, whereas JP947 performs channel selection at RF.” PO Resp. 61 (heading VIII.A.1); id. at 61–64.” slip op. at 61
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Petitioner fails to provide the requisite articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. PO Resp. 65–76 (citing Ex. 2022 ¶¶ 98, 128); see KSR, 500 U.S. at 418. More specifically, Patent Owner contends that (i) the benefits of Jentschel identified by Dr. Razavi do not apply to JP947’s direct conversion receiver, (ii) JP947’s architecture is incompatible with, and therefore, teaches away from, using a frequency divider, and (iii) Jentschel itself teaches away from the use of a frequency divider. PO Resp. 65–66; see id. at 65–76.” slip op. at 83
Patent outcomesUS 6,029,052 unpatentable§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,029,052 - TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonAll claims unpatentablePTAB · Jan 24, 2017 · IPR2015-01600 · APJ Barbara A Benoit · IPR · Final written decision
Claims 13, 15, 16, and 18 are unpatentable as obvious over Jentschel and JP947; claims 13, 15, and 16 over JP947 and JP755; and claim 18 over JP947, JP755, and Jentschel.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“preponderance of the evidence that Lawton discloses, either expressly or inherently, the recited step of “low pass filtering the in-phase received signal and the quadrature received signal in a low pass in-phase filter and a low pass quadrature filter, respectively,” as arranged in claim 13. Verdegaal Bros., 814 F.2d at 631. After introducing the claim limitation and repeating Dr. Razavi’s conclusion that Lawton discloses the limitation, Petitioner presents another annotation of Lawton’s Figure 9 (shown below on left) 40” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. In other words, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In addition, “[c]are 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.’” Grain Processing” slip op. at 55
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”)). Furthermore, Patent Owner’s assertion regarding the teaching of Thomas does not negate JP947’s unambiguous teaching that the order of the bandpass filter and amplifier may be reversed. Thus, for these reasons, we do not agree with Patent Owner’s position that “the teachings of JP947 are nonanalogous because Jentschel performs band selection at RF, whereas JP947 performs channel selection at RF.” PO Resp. 61 (heading VIII.A.1); id. at 61–64.” slip op. at 61
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“determine that Jentschel’s discussion of advantages and disadvantages of using a frequency divider and Jentschel’s indication that another component is “suitable” does not rise to the level of teaching away from the use of frequency dividers. Nor does Jentschel’s indication that “high power demand [of frequency dividers] is disadvantageous” amount to a teaching away. Accordingly, we agree with Dr. Razavi that, although Jentschel 87 identifies advantages and disadvantages of using a frequency divider, Jentschel does not criticize, discredit or discourage the use of a frequency divider (Ex. 1308 ¶¶ 58–65). For these reasons, we determine that Petitioner provided sufficient articulated reasoning to support a conclusion of obviousness the combination of JP947, JP755, and Jentschel, as proposed by Petitioner.” slip op. at 87
Patent outcomesUS 6,029,052 unpatentable§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,029,052 - Snap-On Inc. v. Milwaukee Electric Tool CorporationNo claims unpatentablePTAB · Nov 14, 2016 · IPR2015-01244 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–8, 10, and 11 of the ’290 patent, claims 1–8 and 10–13 of the ’173 patent, and claims 1–6 and 8–19 of the ’510 patent were not shown unpatentable under § 103 over Fohr, …
RulingsFinal written decision- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art We hold that the prior art references asserted in the Petition are representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). To the extent that a more specific definition is required, we hold that an ordinary artisan would include one holding a Bachelor’s Degree in Electrical Engineering with two or three years of experience in battery design. That definition comports with the very similar definitions advanced by the parties. In that regard, Petitioner asserts that an ordinary artisan would encompass a person holding a Bachelor’s Degree in Electrical Engineering with three years of experience in battery design. Pet. 8; Ex. 1007 ¶ 9. Patent Owner similarly asserts that an ordinary artisan would include a person holding a Bachelor’s Degree in Electrical Engineering with two years of battery design experience. Resp. 8; Ex. 2105 ¶ 24.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under the broadest reasonable construction standard, claim terms 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. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In our Decisions to Institute, we construed the 20 Amp Limitation to require that “the battery cells, when configured together in a battery pack, are capable of producing reasonably close to 20 amps of discharge current or greater over the course of delivering their entire rated capacity.” Dec. 5. Neither party disputes that construction, which we adopt for the purposes of this Final Written Decision. To the extent that any other claim term requires express construction, we discuss the construction in our analysis below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need be construed, and then only to the extent necessary to resolve the controversy). The following facts are supported by a preponderance of the evidence.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached
“D. Fohr as Prior Art As an initial matter, the parties dispute whether Fohr qualifies as prior art. Resp. 10–15; Reply 2–8; Sur-Reply 1–5. Specifically, Patent Owner seeks to antedate Fohr based on inventor testimony. Resp. 10–15; Sur- Reply 1–5. Petitioner responds that the named inventors are not true inventors with standing to establish facts sufficient to antedate Fohr. Reply 2–8. We decline to reach the antedating issue because it is not necessary to our ultimate conclusion on the question of obviousness. Specifically, even if we accept Petitioner’s view that Fohr qualifies as prior art, we ultimately hold that Petitioner fails to establish by a preponderance of the evidence that any challenged claim would have been obvious over the combined disclosures of Fohr, Sato, and Hallaj. That is so because, as explained below, Petitioner fails to establish that one of ordinary skill in the art would have been led to combine Fohr with Sato and Hallaj in the manner claimed.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“We recognize that it may be necessary “to look to interrelated teachings of multiple patents . . . in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l, 550 U.S. at 418. Petitioner in these proceedings, however, directs us to no persuasive reason why an ordinary artisan would have turned to the heat-retaining battery module of Hallaj when working to implement a plurality of Sato’s cells in a pack to replace the capacitors in Fohr. Pet. 36–38 (nowhere addressing that critical point); Reply 13 (devoting four sentences to rebuttal of Patent Owner’s persuasive evidence that one would not have combined the disclosures of Hallaj, Fohr, and Sato in the manner claimed); see Ex. 1033, 15 (Examiner’s observation, in confirming the patentability of the challenged claims during reexamination, that Sato contains “no information as to how Sato’s cells would be implemented in a pack”). We view Petitioner’s unexplained leap from the single battery cell of Sato to the heat-retaining battery module of Hallaj as a classic example of impermissible hindsight reconstruction driven not by any teaching in the prior art, but by the claim requirement of a “plurality” of cells implemented in a battery pack. Pet. 36–38; Reply 13. Patent Owner, by contrast, comes forward with persuasive evidence, which we credit, showing that one of ordinary skill in the art would not have been led to arrange a plurality of Sato’s cells in the heat-retaining battery module of Hallaj because such a modified battery pack would have been unsuitable for use as a replacement for the capacitors in Fohr. Specifically, we credit the testimony of Dr. Blomgren, who cogently explains why a person of ordinary skill in the art would not have been led to the proposed modification. Ex. 2147 ¶¶ 79–85. Dr. Blomgren explains that the proposed modified battery pack “would not have adequate heat dissipation and the Joule heating naturally occurring during operation” of such a pack “would lead to overheating and cell failure” in a power tool application. Resp. 24 (citing Ex. 2147 ¶ 84). That testimony is consistent with the Examiner’s observation, made during reexamination, that “the discharge rates described in Sato are abnormally high” for a power tool cell and “would lead to overheating of the cells.” Ex. 1033, 14. That testimony also is consistent with information provided by Petitioner’s own witness, Dr. Riley, who acknowledged on cross-examination that the battery pack of Fohr, as modified by Sato and Hallaj, would provide “the heat back to the system after a discharge” and, accordingly, would have no “practical applicability” in a power tool application. Resp. 24 (quoting Ex. 2169, 127:13–18, 131:12–24); see Ex. 2169, 127:9–128:2 (Petitioner’s own witness, Dr. Riley, further explaining that Hallaj is concerned with finding “a way of managing heat generation” in a power supply so that “heat can be used, pulled back into the batteries”). We credit Dr. Blomgren’s testimony that the “storing of heat” in Hallaj would have been “antithetical to” Sato’s lithium-based chemistry cells for use as the energy store in Fohr’s hand held power tool. Ex. 2147 ¶ 83. Petitioner’s own witness, Dr. Riley, provides testimony consistent with that view. Resp. 24 (citing Ex. 2169, 12713–18, 131:12–24) (Dr. Riley’s testimony on cross-examination); see Ex. 2147 ¶¶ 81–85 (Dr. Blomgren’s declaration testimony). That view is reinforced by evidence that the discharge rates supported by Hallaj are orders of magnitude lower than what would have been expected for a battery cell meeting the 20 Amp Limitation. Resp. 25; Pet. 38; Ex. 1015, 5:41-44; Ex. 2147 ¶¶ 79–80; see Ex. 1015, 5:41–44 (Hallaj, describing temperature profiles for discharge rates). We are persuaded that the heat-retaining battery module of Hallaj was not designed to handle, in a power tool application, the discharge currents disclosed for Sato’s individual lithium-based battery cell—much less the discharge currents that would be supplied by a plurality of Sato’s cells. Resp. 25 (citing Ex. 2147 ¶¶ 81, 84); see also Ex. 2147 ¶¶ 62–85 (testimony explaining why one of ordinary skill in the art would not have applied a plurality of Sato’s cells in the battery pack configuration of Hallaj to power Fohr’s hand held power tool). We further find that one of ordinary skill in the art would not have been led to replace the capacitors in Fohr’s power tool with Hallaj’s battery module, modified to include a plurality of Sato’s lithium-based cells. Ex. 2147 ¶¶ 62–85. That combination would have presented a serious risk of overheating and, in light of that risk, an ordinary artisan would not have expected the modified battery pack of Hallaj to successfully power Fohr’s hand held power tool. Id.” slip op. at 17
Patent outcomesUS 7,999,510 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,999,510 - Snap-On Inc. v. Milwaukee Electric Tool CorporationNo claims unpatentablePTAB · Nov 14, 2016 · IPR2015-01242 · APJ Grace Karaffa Obermann · IPR · Final written decision
Petitioner did not prove claims 1–8, 10, and 11 of the ’290 patent, claims 1–8 and 10–13 of the ’173 patent, or claims 1–6 and 8–19 of the ’510 patent obvious over Fohr, Sato, and …
RulingsFinal written decision- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art We hold that the prior art references asserted in the Petition are representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). To the extent that a more specific definition is required, we hold that an ordinary artisan would include one holding a Bachelor’s Degree in Electrical Engineering with two or three years of experience in battery design. That definition comports with the very similar definitions advanced by the parties. In that regard, Petitioner asserts that an ordinary artisan would encompass a person holding a Bachelor’s Degree in Electrical Engineering with three years of experience in battery design. Pet. 8; Ex. 1007 ¶ 9. Patent Owner similarly asserts that an ordinary artisan would include a person holding a Bachelor’s Degree in Electrical Engineering with two years of battery design experience. Resp. 8; Ex. 2105 ¶ 24.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“In our Decisions to Institute, we construed the 20 Amp Limitation to require that “the battery cells, when configured together in a battery pack, are capable of producing reasonably close to 20 amps of discharge current or greater over the course of delivering their entire rated capacity.” Dec. 5. Neither party disputes that construction, which we adopt for the purposes of this Final Written Decision. To the extent that any other claim term requires express construction, we discuss the construction in our analysis below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need be construed, and then only to the extent necessary to resolve the controversy). The following facts are supported by a preponderance of the evidence.” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“D. Fohr as Prior Art As an initial matter, the parties dispute whether Fohr qualifies as prior art. Resp. 10–15; Reply 2–8; Sur-Reply 1–5. Specifically, Patent Owner seeks to antedate Fohr based on inventor testimony. Resp. 10–15; Sur- Reply 1–5. Petitioner responds that the named inventors are not true inventors with standing to establish facts sufficient to antedate Fohr. Reply 2–8. We decline to reach the antedating issue because it is not necessary to our ultimate conclusion on the question of obviousness. Specifically, even if we accept Petitioner’s view that Fohr qualifies as prior art, we ultimately hold that Petitioner fails to establish by a preponderance of the evidence that any challenged claim would have been obvious over the combined disclosures of Fohr, Sato, and Hallaj. That is so because, as explained below, Petitioner fails to establish that one of ordinary skill in the art would have been led to combine Fohr with Sato and Hallaj in the manner claimed.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“1. Fohr Does Not Disclose or Suggest the 20 Amp Limitation We find that Fohr suggests a plurality of capacitors or battery cells as the energy store. Ex. 1014 ¶¶ 9, 17. Fohr discloses that a plurality of capacitors would have been capable of achieving a continuous current capacity from 20 to 30 amps. Id. at ¶¶ 8, 19. Although Fohr teaches that the capacitors “can advantageously alternatively be replaced by an energy store comprising rechargeable cells,” such as “Li rechargeable batteries,” Fohr does not disclose or suggest an energy store capacity for such batteries, much less establish that lithium batteries, available at the time of the invention, would have been suitable for use in a hand held power tool, or capable of achieving the 20 Amp Limitation of the challenged claims. Id. at ¶ 9. Critical to our analysis, Fohr never states what discharge currents can be achieved when lithium battery cells are used instead of capacitors as the energy source in a hand held power tool. Ex. 2147 ¶¶ 42, 58; see generally Ex. 1014 (Fohr). The Examiner, during reexamination, came to that exact same conclusion regarding Fohr’s disclosure, remarking that “there is nothing whatsoever in the reference that indicates the current produced by any lithium-based cells.” Ex. 1033, 11;5 Resp. 17.” slip op. at 12
Patent outcomesUS 7,554,290 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,554,290 - Actifio, Inc. v. Delphix Corp.All claims unpatentablePTAB · May 11, 2016 · IPR2015-00100 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–6, 8, 14, 16–19, 24, and 25 are unpatentable as obvious over Sanders, Edwards, and Chapman.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“and Petitioner’s Response (Paper 45), insofar as they relate to public accessibility of Sanders and Chapman. We acknowledge the potential for bias in Mr. Hernandez’s testimony as a present employee of Petitioner. We find, however, the testimony in Mr. Hernandez’s Declarations as to public accessibility of Sanders and Chapman to be credible. As an earlier panel of the Board has found, in a proceeding involving a different patent and different parties, documents such as Sanders and Chapman are dated technical documents or whitepapers, having no indication of being mere drafts or internal papers, each of which is “a type of document whose very purpose is public disclosure.” Veeam Software Corp. v. Symantec Corp., Case IPR2014- 00089, slip op. at 14 (PTAB Apr. 25, 2014) (Paper 9).” slip op. at 10
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“1032, 1034–1037, 1040–1044, 1046, 1047, 1049, 1053, 1054, 1056, 1058, 1059, 1063, 1065, 1066, and 1069. Paper 37 (“Mot. to Exclude”), 1. In inter partes reviews, documents are admitted into evidence subject to an opposing party asserting objections to the evidence and moving to exclude the evidence. 37 C.F.R. § 42.64. As movant, Patent Owner has the burden of showing that an Exhibit is not admissible. 37 C.F.R. § 42.20(c).” slip op. at 54
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We begin our analysis by considering the language of the claims themselves. Phillips v. AWH Corp., 415 F.3d 1303, 1314, 1315 (Fed. Cir. 2005) (en banc). The term “metadata” is not recited in any of the claims of” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“A database block is a unit of data used by a database and comprises a specific number of bytes stored in the storage. A database block can also be referred to as a page. A portion of the database block stores metadata associated with the database block. PO Resp. 18 (quoting Ex. 2002, 2:7–12). The first phrase in the cited passage above explicitly defines the term, by stating “[a] database block is a unit of data used by a database.”4 Ex. 2002, 2:7–8. Although the sentence following shortly thereafter states that a database block “stores metadata,” that sentence by itself is insufficient to limit the disputed term by requiring the unclaimed “metadata” feature because it 3 Patent Owner describes the ’808 patent as being related to the ’361 patent. Prelim. Resp. 28. 4 The first sentence also states a database block comprises “a specific number of bytes stored in the storage.” For the reasons discussed below, we find this addition is not part of the explicit definition but, rather, represents embodiments within the defined term. Patent Owner also fails to explain how to interpret this particular phrase or how it presents a material issue related to the prior art. does not state unambiguously that all “database blocks” must include metadata. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (construing a claim term broadly because “[n]o statement in the written description [ ] constitute[d] a limitation on the scope of the invention”) (alterations in original) (quoting Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1301 (Fed. Cir. 2003)). Further, the cited passage also does not exclude the possibility of some database blocks not having any metadata. See id. at 908 (passages in the Summary of the Invention section of a patent did not limit the scope of the invention because the passages, “although focusing on the use of the invention in conjunction with pressure jackets, do not disclaim the use of the invention in the absence of a pressure jacket”). More importantly, the rest of the ’361 patent is consistent with a definition of database blocks that does not require metadata in all database blocks.” slip op. at 13
Patent outcomesUS 8,566,361 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,566,361 - Actifio, Inc. v. Delphix Corp.All claims unpatentablePTAB · Apr 29, 2016 · IPR2015-00108 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 9–13 and 21–23 are unpatentable as obvious under § 103 over Sanders, Edwards, and Patel; claims 13 and 23 also rely on Chapman.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“printed publications” in accordance with 35 U.S.C. §§ 102 and 311(b). PO Resp. 1‒5. We look to the underlying facts to make a legal determination as to whether a document is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102(b) involves a caseby-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-by-case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The first phrase in the cited passage above explicitly defines the term, by stating “[a] database block is a unit of data used by a database.”4 Ex. 2102, 2:7–8. Although the sentence following shortly thereafter states that a database block “stores metadata,” that sentence by itself is insufficient to limit the disputed term by requiring the unclaimed “metadata” feature because it does not state unambiguously that all “database blocks” must include metadata. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (construing a claim term broadly because “[n]o statement in the written description [ ] constitute[d] a limitation on the scope of the invention”) (quoting Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1301 (Fed. Cir. 2003)). Further, the cited passage also does not exclude the possibility of some database blocks not having any metadata. See id. at 908 (passages in the Summary of the Invention section of a patent did not limit the scope of the invention because the passages, “although focusing on the use of the invention in conjunction with pressure jackets, do not disclaim the use of the invention in the absence of a pressure jacket”). More importantly, the rest of the ’361 patent is consistent with a definition of database blocks that does not require metadata in all database blocks.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We are not persuaded by Patent Owner’s arguments. The crux of these arguments appears to be that, because a Snapshot copy allegedly is an exact copy of the current state of the volume, SnapMirror does not utilize database blocks from different points in time to create a Snapshot copy. The claim language, however, does not require database blocks for different point-in-time copies to be utilized in this manner. Rather, the claim language merely requires receiving and storing database blocks for different point-in-time copies. We agree with Petitioner that the combined teachings of Sanders and Edwards disclose receiving and storing database blocks for different point-intime copies. Sanders discloses that “[t]he SnapMirror initialize command creates a Snapshot copy of the source volume and transfers data from the source to the destination volume,” such that the transferred data is received and stored at the destination volume. Ex. 1104, 22. We also credit Dr. Zadok’s testimony that a Snapshot copy is a point-in-time copy. Ex. 1117 ¶¶ 44, 123. Thus, each Snapshot copy would result in transferred data (i.e., database block) for different point-in-time copies being received and stored. Lastly, even if Patent Owner is correct that a given Snapshot copy uses only database blocks from the same point in time, we agree with Petitioner that this does not mean that database blocks for different point-in-time copies are not received and stored. We conclude that a preponderance of the evidence demonstrates that a person of ordinary skill would have found the limitation of loading the first database at multiple points in time, including receiving and storing database blocks for different point-in-time copies, obvious.” slip op. at 47
- ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed
“1132, 1133, 1135, 1136, 1138, 1141–1145, 1147, 1148, 1150, 1154, 1155, 1157, 1159, 1160, 1164, 1166, and 1167. Paper 36 (“Mot. to Exclude”), 1. In inter partes reviews, documents are admitted into evidence subject to an opposing party asserting objections to the evidence and moving to exclude the evidence. 37 C.F.R. § 42.64. As movant, Patent Owner has the burden of showing that an Exhibit is not admissible. 37 C.F.R. § 42.20(c). Patent Owner contends that Petitioner does not rely on Exhibits 1132, 1133, 1135, 1138, 1144, 1148, 1150, 1154, 1157, 1159, 1164, 1166, and 1167. Mot. To Exclude 1 n.1. Petitioner does not dispute this contention. See Paper 46 (“Opp. Mot. to Exclude”). We, therefore, grant Patent Owner’s motion as it pertains to Exhibits 1132, 1133, 1135, 1138, 1144, 1150, 1154, 1157, 1159, 1164, 1166, and 1167. We note, however, that Petitioner does rely on Exhibit 1148. See Reply 11. For reasons discussed below, we deny Patent Owner’s motion as it pertains to Exhibit 1148. Further, Petitioner has moved, unopposed, to expunge Exhibit 1128 (see Paper 34), which motion we hereby grant. Of the remaining objected-to Exhibits, our Final Written Decision discusses and relies on only Exhibits 1106, 1120, 1147, and 1148. We determine, for reasons set forth above, that Petitioner has demonstrated by a preponderance of the evidence that the challenged claims are unpatentable, without need for Petitioner’s additional arguments or evidence in relation to the remaining additional Exhibits. Accordingly, Patent Owner’s motion to exclude Exhibits 1136, 1141–1143, 1145, 1155, and 1160 is dismissed as moot.” slip op. at 57
Patent outcomesUS 8,566,361 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,566,361
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.