• Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCAll claims unpatentable
  PTAB · Jan 22, 2016 · IPR2014-01556 · APJ Fred E Mckelvey · IPR · Final written decision

  Claims 1–4, 6–7, and 9–16 are unpatentable under § 103(a) over the combined prior art; the anticipation grounds do not establish unpatentability.

  RulingsFinal written decision

  • Strike new argumentNew argument disregardedDecided for patent owner

    “(a) A party may request oral argument on an issue raised in a paper at a time set by the Board. The Trial Practice Guidelines advise as follows: A party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted. No new evidence or arguments may be presented at the oral argument. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (col. 2) (Aug. 14, 2012) (italics added). The rationale in support of the Rule and Guideline is fundamental fairness to an opponent. 37 C.F.R. § 42.1(b) (Part 42 “shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”) It is not just to an opponent for a party to raise an argument not based on the Petition, Opposition, or Reply, or to discuss evidence not in the record. Why? There is no meaningful opportunity for the opponent to rebut the argument or address the evidence. Likewise, the Board is at a disadvantage because judges do not prepare for oral argument based on arguments and evidence not present in the record. To the extent that arguments and discussions took place at oral argument in this case contrary to the principles set out above, those arguments and discussions have not been considered in rendering a decision on the merits.” slip op. at 5

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

    “We disagree with Petitioner’s “comprising” position. While the regeneration gas can “comprise” elements not set out in parts [A1] and [A2] of claim 1, as reproduced above, part [A2] is restricted to an inert carrier gas. According to the ʼ911 patent, the regeneration gas is substantially oxygen free, albeit the regeneration gas can contain up to one percent oxygen. Ex. 1001A, col. 3:27–29. A regeneration gas containing more than one percent oxygen would cease to be a regeneration gas within the meaning of claim 1. Any reasonable interpretation of “regeneration gas,” consistent with the Specification, would require that the regeneration gas have no more than up to one percent oxygen. In reaching our conclusion, we have not added a limitation from the Specification into claim 1 of the ʼ911 patent; rather, we interpret the meanings of “regeneration gas” and “inert carrier gas” as set out in the claim.” slip op. at 16

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

    “to doubt that the NOx released by the [Hirota] absorbent . . . [would] be reduced . . . by . . . [the Hirota] process” “provid[ed] there is sufficient reductant present.” Ex. 1056, page 89:18–21. However, Dr. Crocker’s cross-examination testimony does not establish that the Hirota process anticipates the process of claim 1 of the ʼ911 patent. The issue here is not whether Hirota is operative; rather, it is whether Hirota operates with “an inert carrier gas” within the meaning of claim 1 of the ʼ911 patent. During oral argument, Petitioner called attention to the wording of Hirota, with emphasis on the fact Hirota does not use the word “shall” or “must” but rather uses the word “is.” Transcript of Oral Argument, Paper 56, page 4:7 through page 5:15. According to Petitioner, under a broadest reasonable interpretation standard, the regeneration gas of claim 1 should be interpreted broadly. Id. at page 5:12–15. But, Petitioner previously had agreed that it makes no “difference what the claim construction is here,” (id. at page 3:20–23). We view the “shall,” “must,” and “is” discussion as a formalistic wordsmithing side-show given that the meaning of the regeneration gas is clear from its description in the Specification. We find that Hirota does not describe the subject matter of claim 1 of the ʼ911 patent. Accordingly, Petitioner has failed to prove that Hirota anticipates claim 1 of the ʼ911 patent.” slip op. at 22

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Likewise, Land justifies a holding that joint inventors Guth and Campbell (Ex. 1004A) are separate entities vis-à-vis joint inventors of the Guth, Campbell, and Wagner ʼ911 patent (Ex. 1001A). Patent Owner maintains that Guth ʼ758 and Campbell’s “work may not be used against [them] unless there is a time bar under 35 U.S.C. 102(b).” Paper 28, page 19 (quoting MPEP § 2136.05 (7th ed. July 1998)). However, Guth and Campbell’s work is not being used against them; it is being used against the inventive entity of the ʼ911 patent: Guth, Campbell, and Wagner. At oral argument, counsel for Patent Owner stated “[s]o what I’m saying is I agree that Land probably applies.” Transcript of Oral Argument, Paper 56, page 14:19–20. On the record before us, there is insufficient evidence that Wagner contributed to, or is a joint inventor of, the subject matter described and/or claimed in the ʼ911 patent.” slip op. at 39

  Patent outcomesUS 5,953,911 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 5,953,911
• Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCAll claims unpatentable
  PTAB · Jan 22, 2016 · IPR2014-01555 · APJ Fred E Mckelvey · IPR · Final written decision

  Claims 1–2, 7–12, 14–17, 19, 21–24, and 31–42 are unpatentable based on the grounds sustained in the final written decision.

  RulingsFinal written decision

  • Strike new argumentNew argument consideredDecided for petitioner

    “Unlike Corning, the inherency theory matured during cross- examination of Patent Owner’s witness, Dr. Crocker. Ultimately, in our view, Dr. Crocker agreed that no platinum migrated to the alkali metal layer—based on an analysis with a correct “0.018” number. The Reply evidence, consistent with Dr. Crocker’s testimony, agreed that a correct number is “0.018” and on that basis, Petitioner’s witness agreed with Dr. Crocker. Further, unlike Corning, a whole new theory of anticipation did not arise in the first instance with the Reply; rather, it was essentially developed during cross-examination of Patent Owner’s witness.” slip op. at 74

  • ExcludeMotion to exclude, deniedMixed

    “The fact that evidence is filed with a reply does not mean the evidence is per se inadmissible. The exhibits relate to the issue of whether there is a typographical error in Example 1 of Hoekstra, i.e., is “2.018” a typographical error which should be “0.018.” In presenting the Petition, Petitioner’s witness Dr. Farrauto explained why he felt Hoekstra’s Example 1 anticipates claim 1 of the ʼ558 patent. Dr. Crocker, Patent Owner’s witness, disagreed with Dr. Farrauto’s explanation.” slip op. at 73

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed

    “While the matter of assigning the weight to be given to the testimony of the two witnesses in this case is a close call, based on the direct and crossexamination testimony with respect to Kinoshita and its Example 3, and to the extent that there is a conflict between Dr. Crocker’s testimony and that of Dr. Farrauto, we credit the testimony of Dr. Crocker over that of Dr. Farrauto. However, even if one were to find the testimony of Dr. Crocker and Dr. Farrauto evenly balanced, then a preponderance of the evidence on inherency does not emerge. Under those circumstances, the party with the burden of proof cannot be said to have proved its case. See Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1580 n.11 (Fed. Cir. 1988) (where a party is under a burden to establish a fact by a preponderance of the evidence and where the evidence is so evenly balanced that no preponderance emerges, the party having the burden of persuasion necessarily loses). We are also concerned that Example 3 does not describe enough detail to indicate clearly whether there is enough potassium to cover the platinumimpregnated alumina. Ex. 2002 ¶ 32.” slip op. at 51

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

    “We hold that “intimately and entirely coated” mean exactly what it says. In other words, it means the embodiment shown in Figs. 1a through 1c of the ʼ558 patent drawings and associated discussion in the written description portion of the specification. We appreciate why both parties would prefer a broader construction, i.e., “intimately and entirely coated” means (1) coated with a monolayer where catalytic action would occur through diffusion (our construction) as well as (2) direct contact with the combustion gas without diffusion. Petitioner would favor a broader construction because Takeshima anticipates a direct contact embodiment. Patent Owner would favor a broader construction because more “material” might infringe claim 1. Takeshima Figs. 5(A) and 5(B) describe an embodiment where the exhaust gas directly contacts the catalyst. A direct contact embodiment does not fall within the scope of claim 1 of the ʼ558 patent. Accordingly, Takeshima does not describe the “intimately and entirely coated” limitation of claim 1.” slip op. at 23

  Patent outcomesUS 5,451,558 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,451,558
• Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCAll claims unpatentable
  PTAB · Jan 22, 2016 · IPR2014-01558 · APJ Fred E Mckelvey · IPR · Final written decision

  Claims 1–14 and 16–20 are unpatentable as obvious over Campbell, Saito, and Stiles; the Board found the Hirota, Takeshima, and Saito anticipation grounds insufficient.

  RulingsFinal written decision

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

    “We see no need to repeat that discussion here, and adopt it as written therein. Petitioner has failed to establish that Hirota describes a regeneration gas falling within the scope of the regeneration gas of claim 1 of the ʼ758 patent. Accordingly, Petitioner has failed to satisfy its burden of proving by a preponderance of the evidence that the subject matter of claim 1 of the ʼ758 patent is anticipated by Hirota.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableDecided for petitioner

    “Whenever a ground based on obviousness is involved, the preferred manner of setting out differences is to state “the subject matter of claim x differs from the reference in that (1) …, (2) …., and (n) ….” Vague statements or hints of differences not only burdens the Board, but puts a patent owner at somewhat of a disadvantage with having to guess what any differences a petitioner believes may exit. Reluctance on the part of counsel to “admit” to and identify a difference is hard to understand, given the fact that a difference does not mean the subject matter claimed is non-obvious. Dann v. Johnston, 425 U.S. 219, 230 (1976) (mere existence of differences between the prior art and an invention does not establish the invention’s non-obviousness).4 Campbell appears to differ from the subject matter of claim 1 of the ʼ758 patent in that Campbell does not describe an in situ regeneration.” slip op. at 40

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “4. Discussion While Campbell does not describe in situ regeneration, and assuming arguendo that claim 1 of the ʼ758 patent requires in situ regeneration, in situ regeneration is a well-known technique described by Saito and Stiles. An in situ regeneration in Campbell makes sense because it eliminates a need to discard spent catalyst and permits one skilled in the art to reuse catalytic material. The reuse of catalytic material would have been recognized as significant due to the expense of platinum. Ex. 1056, page 13:20–23. Patent Owner maintains that the catalytic material of Saito and Stiles “is very different from that of the ʼ758 patent.” Paper 29, 4 Petitioner’s failure to clearly identify differences is not consistent with 37 C.F.R. § 42.104(b)(4) and 42.104(b)(5), as well as 35 U.S.C. § 312(a)(3), which require identifying the grounds “with particularity.” The Petition must specify where each element of a challenged claim is found in the prior art patents or printed publications. 37 C.F.R. § 42.104(b)(2). page 29. “There is nothing in either Saito or Stiles to suggest . . . that the regeneration methods of these two references might be succesfully used for regenerating the catalyst/absorber of Campbell.” Id. at page 30.” slip op. at 41

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

    “balance in favor of non-obviousness, both in the courts and the PTO. Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403 (1902); The Barbed Wire Patent, 143 U.S. 275 (1892); Webster Loom v. Higgins, 105 U.S. 580 (1881); Ex parte Artsana USA, Inc., Appeal 2014-004116, 2014 WL 4090808 (PTAB Aug. 18, 2014); Murata Mfg. Co. v. Synqor, Inc., Appeal 2014-001167, 2014 WL 1397381 (PTAB Apr. 10, 2014); Ex parte Whirlpool Corp., Appeal 2013-008232, 2013 WL 5866602 (PTAB Oct. 30, 2013). However, in this case, we are unable to credit much, if any, weight, to Patent Owner’s evidence of long-felt need and commercial success. For long-felt need and commercial success to be convincing, there must be a “nexus” between (1) the long-felt need/commercial success and (2) the claimed subject matter. In re Fielder, 471 F.2d 640, 646 (CCPA 1973). Patent Owner’s evidence is bottomed on Patent Owner’s experience with what is referred to as a “SCONOx catalytic absorption system.” Ex. 2006A ¶ 4 (direct Declaration testimony of Thomas Girdlestone). Patent Owner characterizes the claimed method as embodying a SCONOx system. Paper 29, page 37:3–4. According to Mr. Girdlestone, the effectiveness of reducing NOx in a SCONOx system was tested at a turbine facility run at EmeraChem’s then-affiliate Sunlaw Energy in California. Ex. 2006A, ¶ 5. Further according to Mr. Girdlestone, both the EPA and the Cal EPA” slip op. at 46

  Patent outcomesUS 5,599,758 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 5,599,758
• Johns Manville Corporation v. Knauf Insulation, Inc.Institution denied
  PTAB · Jan 4, 2016 · IPR2015-01633 · APJ Fred E Mckelvey · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4–15, 23–26, 28–31, 35–41, 50, 57, 62, 64–67, and 70–72 were anticipated by Gogek.

  RulingsInstitution decision

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

    “C. Anticipation—Inherency The applicable principles are set out in In re Robertson, 169 F.3d 743 (Fed. Cir. 1999): If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is “inherent” in its disclosure. To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. at 1269 . . . (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Id. at 745 (italics, except for case citations, added; USPQ citations omitted) The standard of proof is a preponderance of the evidence.” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “However, Dr. Hirsekorn does not explain what one skilled in the art would have understood “fines” to mean in the phrase “asbestos fines” as of the filing date (1 April 1958) or issue date (20 December 1960) of Gogek. Dr. Hirsekorn states that “Superwool 607 was designed to replace asbestos and is equivalent to asbestos for purposes of the insulating blocks made according to Example 3 of Gogek.” No prior art was offered by Petitioner in support of Dr. Hirsekorn’s statement. For example, no literature supporting Dr. Hirsekorn’s belief that Superwool 607 was designed to replace asbestos has been called to our attention. No literature is cited to show that Superwool 607 would have been considered by those skilled in the art to be “equivalent to asbestos” for making insulating blocks or that it would have been obvious to use Superwool 607 in place of asbestos fines to practice the Gogek invention. Certainly nothing in Gogek confirms the “equivalency” alleged by Petitioner. Nor is there any testimony that Superwool 607 is “fines” having particles sizes consistent with the meaning of “fines” as described in the Gogek patent. Dr. Hirsekorn also states that “[u]sing Superwool 607 instead of asbestos [fines] would not materially alter the physical properties of the insulating block and would not affect the amounts of residual ionic species of sulfates, phosphates, nitrates, carbonates, and combinations thereof that are assessed in a leach test.” Ex. 1004, page 20, last sentence of ¶ 48. No explanation is given as to why Dr. Hirsekorn is able to state his opinion, particularly since Dr. Hirsekorn does not address the differences, if any, between Gogek’s “asbestos fines” and Superwool 607. We have broad discretion to assign weight to be accorded witness testimony. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); In re American Academy of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); Velander v. Garner, 348 F.3d 1359, 1370–71 (Fed. Cir. 2003); Bronshtein v. Roser, 61 USPQ2d 1745, 1756 (BPAI 2002) (opinion testimony given little weight where underlying basis has not been provided). Section 42.62(a) is applicable at any stage, including during a “preliminary proceeding” which (1) begins with the filing of a petition and (2) ends with a written decision as to whether a trial will be instituted.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “C. Anticipation—Inherency The applicable principles are set out in In re Robertson, 169 F.3d 743 (Fed. Cir. 1999): If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is “inherent” in its disclosure. To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. at 1269 . . . (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Id. at 745 (italics, except for case citations, added; USPQ citations omitted) The standard of proof is a preponderance of the evidence.” slip op. at 9

  § 102 anticipation
  Patents in suitUS 9,039,827
• Johns Manville Corporation v. Knauf Insulation, Inc.Institution denied
  PTAB · Dec 17, 2015 · IPR2015-01527 · APJ Fred E Mckelvey · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Gogek inherently disclosed claim 1’s subject matter or that it would prevail on the dependent challenged claims.

  RulingsInstitution decision

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

    “We have broad discretion to assign weight to be accorded witness testimony. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); In re American Academy of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); Velander v. Garner, 348 F.3d 1359, 1370–71 (Fed. Cir. 2003); Bronshtein v. Roser, 61 USPQ2d 1745, 1756 (BPAI 2002) (opinion testimony given little weight where underlying basis has not been provided). Section 42.62(a) is applicable at any stage, including during a “preliminary proceeding” which (1) begins with the filing of a petition and (2) ends with a written decision as to whether a trial will be instituted. Nothing in the Federal Rules of Evidence, which are applicable to IPRs (37 C.F.R. § 42.62(a)), or Federal Circuit jurisprudence, requires a fact finder to credit unsupported assertions of an expert witness. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). See also Ashland Oil, Inc. v. Delta Resins and Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (lack of factual support for expert opinion may render the testimony of little probative value in a validity determination). Petitioner seems to argue that, at least at this stage, we should not doubt Dr. Hirsekorn’s statement. But, Petitioner’s argument cannot justify a lack of credible underlying support for its expert’s opinions. A lack of credible underlying support is no justification to put a patent owner to the expense of defending an inter partes review trial. 37 C.F.R. § 42.1(b) (“This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”).” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “However, Dr. Hirsekorn does not explain what one skilled in the art would have understood “fines” to mean in the phrase “asbestos fines” as of the filing date (1 April 1958) or issue date (20 December 1960) of Gogek. Dr. Hirsekorn states that “Superwool 607 was designed to replace asbestos and is equivalent to asbestos for purposes of the insulating blocks made according to Example 3 of Gogek.” No contemporaneous documentation was offered by Petitioner in support of Dr. Hirsekorn’s statement. Id. For example, no literature supporting Dr. Hirsekorn’s belief that Superwool 607 was designed to replace asbestos has been called to our attention. No literature is cited to show that Superwool 607 is considered by those skilled in the art to be “equivalent to asbestos” for making insulating blocks. Certainly nothing in Gogek confirms the “equivalency” alleged by Petitioner. Nor is there any testimony that Superwool 607 is “fines” having particles sizes consistent with the meaning of “fines” as described in the Gogek patent. Dr. Hirsekorn also states an opinion that “[u]sing Superwool 607 instead of asbestos [fines] would not materially alter the physical properties of the insulating block and would not affect the amounts of residual ionic species of sulfates, phosphates, nitrates, carbonates, and combinations thereof that are assessed in a leach test.” Ex. 1004 ¶ 48 (last sentence). No explanation is given as to why Dr. Hirsekorn is able to state his opinion, particularly since Dr. Hirsekorn does not address the differences, if any, between Gogek’s “asbestos fines” and Superwool 607. We have broad discretion to assign weight to be accorded witness testimony. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); In re American Academy of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); Velander v. Garner, 348 F.3d 1359, 1370–71 (Fed. Cir. 2003); Bronshtein v. Roser, 61 USPQ2d 1745, 1756 (BPAI 2002) (opinion testimony given little weight where underlying basis has not been provided). Section 42.62(a) is applicable at any stage, including during a “preliminary proceeding” which (1) begins with the filing of a petition and (2) ends with a written decision as to whether a trial will be instituted. Nothing in the Federal Rules of Evidence, which are applicable to IPRs (37 C.F.R. § 42.62(a)), or Federal Circuit jurisprudence, requires a fact finder to credit unsupported assertions of an expert witness. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). See also Ashland Oil, Inc. v. Delta Resins and Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (lack of factual support for expert opinion may render the testimony of little probative value in a validity determination). Petitioner seems to argue that, at least at this stage, we should not doubt Dr. Hirsekorn’s statement. But, Petitioner’s argument cannot justify a lack of credible underlying support for its expert’s opinions. A lack of credible underlying support is no justification to put a patent owner to the expense of defending an inter partes review trial. 37 C.F.R. § 42.1(b) (“This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”).” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is “inherent” in its disclosure. To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 . . . (Fed. Cir. 1991). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. at 1269 . . . (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Id. at 745 (italics, except for case citations, added; USPQ citations omitted). The burden of showing something by a preponderance of the evidence simply requires the trier of fact to believe that the existence of a fact is more probable than its nonexistence before the trier of fact may find in favor of the party who has the burden to persuade the trier of fact of the fact’s existence. Concrete Pipe & Products of California, Inc. v. Construction Laborers Pension Trust for Southern California, 508 U.S. 602, 622 (1993). At first blush one might conclude that there is a tension between Robertson’s probabilities and Concrete Pipe’s probable. The tension is resolved if one considers Robertson’s probabilities to mean “may” and Concrete Pipe’s probable to mean “likely.”” slip op. at 8

  § 102 anticipation
  Patents in suitUS 8,940,089
• Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCAll claims unpatentable
  PTAB · Oct 22, 2015 · IPR2014-01554 · APJ Fred E Mckelvey · IPR · Final written decision

  Claims 1–8 and 11 are unpatentable because Joy, Tauster, and Rieck each anticipate them.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “On the record before us, we find that Dr. Farrauto is qualified to testify on the subject matter involved and to offer scientific opinions concerning that subject matter. Ex. 1007A ¶ 1–6. His testimony is consistent with the disclosures of the three references upon which his scientific opinions are based.” slip op. at 8

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

    “C. Anticipation To establish anticipation, a party must show by a preponderance of the evidence that a prior art reference expressly or inherently describes each claim limitation arranged as in the claim said to be anticipated. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334–35 (Fed. Cir. 2008); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008 ).” slip op. at 7

  Patent outcomesUS 6,037,307 unpatentable
  § 102 anticipation
  Patents in suitUS 6,037,307
• Flir Systems, Inc. v. Leak Surveys, Inc.All claims unpatentable
  PTAB · Sep 3, 2015 · IPR2015-00065 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1–28 and 30–58 of the ’813 patent and claims 1–7 and 9–20 of the ’496 patent are unpatentable as obvious under § 103.

  RulingsFinal written decision

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

    “construction of “leak” deviates from the ordinary meaning of the term. PO Resp. 31–33. LSI relies on extrinsic evidence to supports its contention that the ordinary meaning of “leak” as recited in the ’813 and ’496 patents is limited to unintended or fugitive emissions. PO Resp. 33. LSI’s contention fails to recognize and distinguish the express teaching that chemicals of interest from flares, exhausts, vents or blow off valves are expressly described as uses of the claimed invention. Ex. 1001, 12:17–25. Indeed, one portion of the specification that LSI relies on to distinguish known versus unknown emissions, indicates that the invention is used to survey known emissions of gas from vents. Ex. 1001, 20:28–31; see PO Resp. 34. Although LSI admits that exhaust valves and flares will have known emissions and that the invention is used to survey these structures (PO Resp. 32), LSI argues that the term “leak” does not include the known emissions from these structures, as the ordinary use of the term is limited to fugitive or unknown emissions. We disagree, concluding that a person of ordinary skill in the art would understand that the specification describes a chemical of interest that is present in valves and exhausts that have known emissions. Ex. 1001, 12:22, 20:28–32.15 Under the broadest reasonable interpretation, LSI’s extrinsic evidence does not persuade us that a person of ordinary skill in the art would understand that “leak” as used in the specification and claims is limited to only unknown or fugitive emissions. Accordingly, on the full record, we maintain our construction of “leak” as including both fugitive and non-fugitive emissions.” slip op. at 11

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

    “PO Resp. 27. Specifically, LSI argues that “in the context of the full claims, this limitation should be construed to mean that an infringing method must operate to image gas leaks under real-world field conditions, without taking steps to artificially control any variables such as background temperature, wind, etc.” Id. at 25. LSI does not provide any argument or evidence that the patent describes the range of “real-world” versus “artificially controlled” conditions. Instead, LSI’s construction merely seeks to eliminate any conditions obtained in a lab or test setting from ambient conditions in other settings. We are not persuaded that the patent claims’ references to variable ambient conditions are limited to “real-world” conditions. As we previously noted, a person having ordinary skill in the art would understand that the claimed system and method would typically be used outdoors, where environmental conditions change, at the point where a leak may occur. Dec. ’411, 18. For example, in the summer, a chemical of interest may be present at higher temperature than the same chemical of interest in the winter. Id. Similarly, exhaust temperature may vary depending on conditions. LSI admits that “the claim does not specify what the normal operating conditions would be” under given circumstances. Oral Argument Transcript (“Tr.”) 62:23–24. LSI also admits that a smokestack, for example, would have “a different range of normal operating conditions.” Tr. 63:6–8. Because these conditions vary and the ’813 and ’496 patent specifications are silent on the range or limits of normal operating conditions, we are not persuaded by LSI’s attempt to exclude controlled environments from the claimed ambient conditions. See PO Resp. 26–27. We find no support for LSI’s contention that “variable ambient conditions” or “normal operating in variable ambient conditions” is limited to those instances that are not constrained or controlled in some artificial manner. Id. On the full record, we maintain our constructions of “produce a visible image of the chemical emanating from the component under variable ambient conditions of the area around the leak” as meaning “being able to produce a visible image under the ambient conditions of the area around the leak.”” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We are not persuaded by LSI’s arguments. The case LSI relies on, Virginia Innovation, is neither binding authority nor persuasive authority. The facts in Virginia Innovation can be distinguished from the facts of the present case, as the prior art in question in Virginia Innovation was not sufficiently shown to be generally on sale to the interested public, and was instead “restricted” to members of a publishing organization, which required membership dues for access. See 983 F. Supp. 2d at 737–38. Indeed, the district court in Virginia Innovation noted that there was no evidence that the document was available for sale to the general public outside of the publishing organization members. Id. In the present case, no membership fee or organization membership is required for access to the Merlin User’s Guide, which testimony shows was available and sold to the interested public as early as late 2000. See Ex. 1026 ¶¶ 17–19; Ex. 1024 ¶¶ 12–14; Ex. 1016 ¶ 12. Based on the complete record, we find by a preponderance of the evidence that distribution of the Merlin User’s Guide with the sale of the Merlin MID camera shows sufficient public accessibility and distribution. The cost to obtain the camera does not negate the evidence that the camera and accompanying user’s guide was available to the interested public. The testimony evidence shows that the Merlin User’s Guide was available for sale and distribution to the interested as early as 2000. Thus, FLIR has shown by a preponderance of the evidence that the Merlin User’s Guide was a publicly available printed publication.” slip op. at 22

  • Skill levelSkill level board ownOther

    “relevant experience with passive IR (infrared) systems in addition to the requisite engineering or physics education. Paper 2, 10–11 (IPR ’065); Reply 19–20. LSI contends that in addition to the requisite physics or optical science/engineering education a person of ordinary skill the art would have experience developing IR camera systems generally. PO Resp. 22. LSI’s contention is that FLIR’s definition of a person of ordinary skill is too narrowly focused on passive IR systems and is evidence of hindsight bias. PO Resp. 23. LSI’s arguments are contradictory and confusing; asserting not only that FLIR’s person of ordinary skill in art is overly narrow and defined as a “specialist in the [’813 and ’496 patents’] specific solution to the problem being solved,” but also that FLIR’s artisan “would not [] have been familiar with the technical problem being addressed by the invention.” PO Resp. 22 (emphasis omitted). Regardless, FLIR argues that the invention would have been obvious under either FLIR’s or LSI’s proposed person of ordinary skill in the art. Reply 20. Based on the full record, we find that the level of ordinary skill in the art is evidenced by the prior art references and the type of problems and solutions described in the ’813 and ’496 patents (Ex. 1001, 1:25–2:34), and includes experience in imaging of chemical gases using IR camera systems generally in addition to the requisite engineering, physics or optical science education. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Moreover, and apart from any differences of opinion between FLIR and LSI on the precise background and knowledge of one skilled in the art, the prior art itself is highly indicative of the level of skill. See id. (“the level of ordinary skill in the art . . . was best determined by appeal to the references of record”). In any event, we do not find that a person of ordinary skill’s understanding of the teachings of the prior art would differ if an ordinarily skilled artisan possessed knowledge of both active and passive IR systems rather than knowledge of passive IR systems alone. See PO Resp. 22–24.” slip op. at 23

  Patent outcomesUS 8,426,813 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,426,813
• Flir Systems, Inc. v. Leak Surveys, Inc.All claims unpatentable
  PTAB · Sep 3, 2015 · IPR2014-00434 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1–28 and 30–58 of the ’813 patent and claims 1–7 and 9–20 of the ’496 patent are unpatentable as obvious over the instituted prior-art combinations.

  RulingsFinal written decision

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

    “construction of “leak” deviates from the ordinary meaning of the term. PO Resp. 31–33. LSI relies on extrinsic evidence to supports its contention that the ordinary meaning of “leak” as recited in the ’813 and ’496 patents is limited to unintended or fugitive emissions. PO Resp. 33. LSI’s contention fails to recognize and distinguish the express teaching that chemicals of interest from flares, exhausts, vents or blow off valves are expressly described as uses of the claimed invention. Ex. 1001, 12:17–25. Indeed, one portion of the specification that LSI relies on to distinguish known versus unknown emissions, indicates that the invention is used to survey known emissions of gas from vents. Ex. 1001, 20:28–31; see PO Resp. 34. Although LSI admits that exhaust valves and flares will have known emissions and that the invention is used to survey these structures (PO Resp. 32), LSI argues that the term “leak” does not include the known emissions from these structures, as the ordinary use of the term is limited to fugitive or unknown emissions. We disagree, concluding that a person of ordinary skill in the art would understand that the specification describes a chemical of interest that is present in valves and exhausts that have known emissions. Ex. 1001, 12:22, 20:28–32.15 Under the broadest reasonable interpretation, LSI’s extrinsic evidence does not persuade us that a person of ordinary skill in the art would understand that “leak” as used in the specification and claims is limited to only unknown or fugitive emissions. Accordingly, on the full record, we maintain our construction of “leak” as including both fugitive and non-fugitive emissions.” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We are not persuaded by LSI’s arguments. The case LSI relies on, Virginia Innovation, is neither binding authority nor persuasive authority. The facts in Virginia Innovation can be distinguished from the facts of the present case, as the prior art in question in Virginia Innovation was not sufficiently shown to be generally on sale to the interested public, and was instead “restricted” to members of a publishing organization, which required membership dues for access. See 983 F. Supp. 2d at 737–38. Indeed, the district court in Virginia Innovation noted that there was no evidence that the document was available for sale to the general public outside of the publishing organization members. Id. In the present case, no membership fee or organization membership is required for access to the Merlin User’s Guide, which testimony shows was available and sold to the interested public as early as late 2000. See Ex. 1026 ¶¶ 17–19; Ex. 1024 ¶¶ 12–14; Ex. 1016 ¶ 12. Based on the complete record, we find by a preponderance of the evidence that distribution of the Merlin User’s Guide with the sale of the Merlin MID camera shows sufficient public accessibility and distribution. The cost to obtain the camera does not negate the evidence that the camera and accompanying user’s guide was available to the interested public. The testimony evidence shows that the Merlin User’s Guide was available for sale and distribution to the interested as early as 2000. Thus, FLIR has shown by a preponderance of the evidence that the Merlin User’s Guide was a publicly available printed publication.” slip op. at 22

  • Skill levelSkill level board ownOther

    “relevant experience with passive IR (infrared) systems in addition to the requisite engineering or physics education. Paper 2, 10–11 (IPR ’065); Reply 19–20. LSI contends that in addition to the requisite physics or optical science/engineering education a person of ordinary skill the art would have experience developing IR camera systems generally. PO Resp. 22. LSI’s contention is that FLIR’s definition of a person of ordinary skill is too narrowly focused on passive IR systems and is evidence of hindsight bias. PO Resp. 23. LSI’s arguments are contradictory and confusing; asserting not only that FLIR’s person of ordinary skill in art is overly narrow and defined as a “specialist in the [’813 and ’496 patents’] specific solution to the problem being solved,” but also that FLIR’s artisan “would not [] have been familiar with the technical problem being addressed by the invention.” PO Resp. 22 (emphasis omitted). Regardless, FLIR argues that the invention would have been obvious under either FLIR’s or LSI’s proposed person of ordinary skill in the art. Reply 20. Based on the full record, we find that the level of ordinary skill in the art is evidenced by the prior art references and the type of problems and solutions described in the ’813 and ’496 patents (Ex. 1001, 1:25–2:34), and includes experience in imaging of chemical gases using IR camera systems generally in addition to the requisite engineering, physics or optical science education. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Moreover, and apart from any differences of opinion between FLIR and LSI on the precise background and knowledge of one skilled in the art, the prior art itself is highly indicative of the level of skill. See id. (“the level of ordinary skill in the art . . . was best determined by appeal to the references of record”). In any event, we do not find that a person of ordinary skill’s understanding of the teachings of the prior art would differ if an ordinarily skilled artisan possessed knowledge of both active and passive IR systems rather than knowledge of passive IR systems alone. See PO Resp. 22–24.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the [inventor].” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We will not, however, “read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). LSI’s evidence that the Merlin references disclose an emission based instrument and that Kulp and Strachan disclose an absorption based instrument, does not show that the references teach away from their combination. Indeed, LSI’s citation to the testimony of Dr. Martini does not demonstrate that the Merlin references discourage their combination with Strachan or Kulp. To the contrary, the record shows that a person of ordinary skill in the art would have combined the filter teachings of Strachan with the camera disclosed in the Merlin references. Ex. 1030, 50:1–16, 84:14–85:19, 87:16–88:19, 160:4–14; see Ex. 1036 ¶ 22. Although LSI’s witness, Dr. Hossack, disputes where the filter would have been placed on a Merlin camera, he does not dispute that Strachan discloses modifying a similar camera to detect gas. Ex. 1030, 50:1–16, 84:14–85:19, 87:16–88:19; 160:4–14. LSI’s argument that the combinations of the Merlin camera disclosed in the Merlin references would destroy the intended functionality of the camera and fundamentally alter its principle of operation is equally unpersuasive. See PO Resp. 49–52. LSI has not shown that modification of the Merlin camera as disclosed in the Merlin User’s Guide or Brochure would no longer be useful for imaging gas as described. We credit the testimony of Dr. Sandsten in finding that the Merlin MID operates on the principles of thermography before and after modification as disclosed in Kulp and Strachan. Ex. 1036 ¶ 74. In addition, modification of such a camera is expressly taught by Strachan and Kulp. Therefore, regardless of whether the possibility of modifying the Merlin MID camera was disclosed in the Merlin references, the combination of Kulp and/or Strachan with the Merlin references teaches one of ordinary skill in the art that the standard filter could be replaced in a passive IR camera, such as the Merlin MID, to improve imaging. See, e.g., Ex. 1030, 50:1–16, 84:14–85:19, 87:16–88:19; 160:4–14; Reply 15. Indeed, Strachan and Kulp both disclose that gas can be successfully imaged by optimizing the spectral selectivity of a passive IR system using a narrow bandpass filter tuned to the gases of interest. Kulp specifically discloses that a cold filter and Strachan includes a Dewar flask for cooling. Ex. 1008, 493; Ex. 1012, 270. LSI’s arguments regarding the modifications of the camera disclosed in the Merlin references fail to address the teachings of the Merlin references in combination with Kulp and/or Strachan. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (attacking references individually cannot demonstrate nonobviousness; rather, the test is what the combined teachings of the references would have suggested to one of ordinary skill in the art). slip op. at 35

  Patent outcomesUS 8,193,496 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,193,496
• Flir Systems, Inc. v. Leak Surveys, Inc.All claims unpatentable
  PTAB · Sep 3, 2015 · IPR2014-00411 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1–28 and 30–58 of the ’813 patent and claims 1–7 and 9–20 of the ’496 patent are unpatentable as obvious over the listed prior-art combinations.

  RulingsFinal written decision

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

    “construction of “leak” deviates from the ordinary meaning of the term. PO Resp. 31–33. LSI relies on extrinsic evidence to supports its contention that the ordinary meaning of “leak” as recited in the ’813 and ’496 patents is limited to unintended or fugitive emissions. PO Resp. 33. LSI’s contention fails to recognize and distinguish the express teaching that chemicals of interest from flares, exhausts, vents or blow off valves are expressly described as uses of the claimed invention. Ex. 1001, 12:17–25. Indeed, one portion of the specification that LSI relies on to distinguish known versus unknown emissions, indicates that the invention is used to survey known emissions of gas from vents. Ex. 1001, 20:28–31; see PO Resp. 34.” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We are not persuaded by LSI’s arguments. The case LSI relies on, Virginia Innovation, is neither binding authority nor persuasive authority. The facts in Virginia Innovation can be distinguished from the facts of the present case, as the prior art in question in Virginia Innovation was not sufficiently shown to be generally on sale to the interested public, and was instead “restricted” to members of a publishing organization, which required membership dues for access. See 983 F. Supp. 2d at 737–38. Indeed, the district court in Virginia Innovation noted that there was no evidence that the document was available for sale to the general public outside of the publishing organization members. Id. In the present case, no membership fee or organization membership is required for access to the Merlin User’s Guide, which testimony shows was available and sold to the interested public as early as late 2000. See Ex. 1026 ¶¶ 17–19; Ex. 1024 ¶¶ 12–14; Ex. 1016 ¶ 12. Based on the complete record, we find by a preponderance of the evidence that distribution of the Merlin User’s Guide with the sale of the Merlin MID camera shows sufficient public accessibility and distribution. The cost to obtain the camera does not negate the evidence that the camera and accompanying user’s guide was available to the interested public. The testimony evidence shows that the Merlin User’s Guide was available for sale and distribution to the interested as early as 2000. Thus, FLIR has shown by a preponderance of the evidence that the Merlin User’s Guide was a publicly available printed publication.” slip op. at 22

  • Skill levelSkill level board ownDecided for patent owner

    “relevant experience with passive IR (infrared) systems in addition to the requisite engineering or physics education. Paper 2, 10–11 (IPR ’065); Reply 19–20. LSI contends that in addition to the requisite physics or optical science/engineering education a person of ordinary skill the art would have experience developing IR camera systems generally. PO Resp. 22. LSI’s contention is that FLIR’s definition of a person of ordinary skill is too narrowly focused on passive IR systems and is evidence of hindsight bias. PO Resp. 23. LSI’s arguments are contradictory and confusing; asserting not only that FLIR’s person of ordinary skill in art is overly narrow and defined as a “specialist in the [’813 and ’496 patents’] specific solution to the problem being solved,” but also that FLIR’s artisan “would not [] have been familiar with the technical problem being addressed by the invention.” PO Resp. 22 (emphasis omitted). Regardless, FLIR argues that the invention would have been obvious under either FLIR’s or LSI’s proposed person of ordinary skill in the art. Reply 20. Based on the full record, we find that the level of ordinary skill in the art is evidenced by the prior art references and the type of problems and solutions described in the ’813 and ’496 patents (Ex. 1001, 1:25–2:34), and includes experience in imaging of chemical gases using IR camera systems generally in addition to the requisite engineering, physics or optical science education. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Moreover, and apart from any differences of opinion between FLIR and LSI on the precise background and knowledge of one skilled in the art, the prior art itself is highly indicative of the level of skill. See id. (“the level of ordinary skill in the art . . . was best determined by appeal to the references of record”). In any event, we do not find that a person of ordinary skill’s understanding of the teachings of the prior art would differ if an ordinarily skilled artisan possessed knowledge of both active and passive IR systems rather than knowledge of passive IR systems alone. See PO Resp. 22–24.” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Based on the full record, we find, by a preponderance of the evidence, that FLIR has provided articulated reasons with rational underpinnings for the proposed combinations of prior art. FLIR’s evidence shows that combinations of the Merlin Brochure with Strachan or the Merlin User’s Guide with Kulp is the combination of known elements that yield predictable results. See Paper 2, 17–18 (citing Ex. 1006 ¶ 55), 20–21 (citing Ex. 1006 ¶ 60) (IPR ’065); Paper 2, 37–38 (citing Ex. 1006 ¶ 81) (IPR ’411). In addition, we find by a preponderance of the evidence that the prior art demonstrates that it would have been an obvious design choice to one skilled in the art to replace the filters disclosed in Strachan and Kulp to target hydrocarbon gases of interest using the camera disclosed in the Merlin Brochure and Merlin User’s Guide. Paper 2, 38–39 (citing Ex. 1006 ¶¶ 81– 82) (IPR ’411). Accordingly, we do not agree with LSI that FLIR’s expert testimony is conclusory. PO Resp. 23, 61, 67–68.” slip op. at 39

  Patent outcomesUS 8,426,813 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,426,813
• Allscripts Healthcare Solutions, Inc. v. Mymedicalrecords, Inc.All claims unpatentable
  PTAB · Aug 26, 2015 · CBM2015-00022 · APJ Barbara A Parvis · CBM · Final written decision

  Claims 8–12 are unpatentable under § 101 as directed to nonstatutory subject matter; the Board did not reach the anticipation or obviousness grounds.

  RulingsFinal written decision

  • BurdenUnpatentable

    “Second, we consider the challenged claims as an ordered combination. Id. at 2359. On this record, when viewed as a whole, the challenged claims 8–12 simply recite the concept of user management performed by a generic computer. The challenged claims, for example, do not purport to improve the functioning of the computer itself. Nor do they improve another technology or technical field. Petitioner additionally relies on the Declaration of Dr. Bysinger (Pet. 20–28), who testifies that the recited elements including “server,” “storing files . . . in a computer readable storage medium,” and “user interface on a computing device” were well-known conventional concepts in 2005. Ex. 1008 ¶¶ 30–32. Dr. Bysinger additionally states “the abstract idea of privately accessing and managing patient medical records . . . [has] existed since at least the promulgation of HIPAA.” Id. ¶ 33. We credit Dr. Bysinger’s statements because they are consistent with the challenged claims. Challenged dependent claims 9–12 add nothing that alters the above analysis under § 101. Claims 9, 10, 11, and 12 recite additional limitations, such as wherein the access information comprises a password, receiving files from a second provider, wherein the files comprise image format files including wills and powers of attorney, respectively. Based on the present record, these comprise either generic limitations, such as using a password for access or sending a file in a known image format, or they relate to organizing human activities, such as user management of legal and financial documents, in addition to health records. Accordingly, we determine that Petitioner has shown by a preponderance of the evidence that claims 8–12 of the ’466 Patent are unpatentable under 35 U.S.C. § 101, because they are directed to non-statutory subject matter.” slip op. at 11

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

    “Petitioner asserts that claims 8–12 of the ’466 Patent are unpatentable under 35 U.S.C. § 101, because they are directed to the abstract concept of allowing individuals to manage and access their health records and other medical or legal files privately. Pet. 19. We agree with Petitioner that the claimed invention is directed to an abstract idea: privately managing files by the user. The preamble and all claim limitations of the challenged claims support this view of the claims, and the ’466 Patent consistently describes the invention as allowing an individual to control access to their medical records. See, e.g., Ex. 1001, 5:21–23. Management or control by the user or patient rather than by the health care provider is a method of organizing a human activity. On this record, the concept is an abstract idea, just like the basic hedging concept at issue in Bilski and the abstract idea of intermediated settlement in Alice.3” slip op. at 8

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

    “We conclude that receiving and sending data is a routine and conventional computer function. As explained in Alice, “use of a computer to obtain data . . . and issue automated instructions . . . are ‘well-understood, routine, conventional actitiv[ies]’ previously known to the industry.” Alice, 134 S. Ct. 2359; see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”). Restricting access by password also is routine and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 712–13, 717 (Fed. Cir. 2014) (determining that representative claim 1 is patent ineligible although it recites “a fourth step of restricting general public access.”). Similarly, providing a user interface is an insignificant activity. See Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1342–43 (Fed. Cir. 2013) (determining that claim 1 is patent ineligible although it recites a “claim folder,” which “manages claim information . . . by providing a structured and easy to use interface.”). Claim 8 includes additional recitations relating to how data is stored and managed on the server. We determine that these limitations recite generic functions performed by a generic server and computing device. Storing files is a basic computer function. See Alice, 134 S. Ct. at 2359 (“Using a computer to create and maintain ‘shadow’ accounts amounts to electronic recordkeeping—one of the most basic functions of a computer.”). Additionally, regarding the recitation in challenged claim 8 of “wherein the files are maintained on the server independently from any files maintained by the health care provider” (Ex. 1001, 17:18–19 (emphasis added)), we note the representative claim in Alice had a similar recitation. See Alice, 134 S. Ct. at 2352. In particular, in Alice, the representative claim included the following:” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Petitioner additionally relies on the Declaration of Dr. Bysinger (Pet. 20–28), who testifies that the recited elements including “server,” “storing files . . . in a computer readable storage medium,” and “user interface on a computing device” were well-known conventional concepts in 2005. Ex. 1008 ¶¶ 30–32. Dr. Bysinger additionally states “the abstract idea of privately accessing and managing patient medical records . . . [has] existed since at least the promulgation of HIPAA.” Id. ¶ 33. We credit Dr. Bysinger’s statements because they are consistent with the challenged claims.” slip op. at 11

  Patent outcomesUS 8,301,466 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Bilski
  Patents in suitUS 8,301,466

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.