- Platform Science, Inc. v. Omnitracs, LLCNo claims unpatentablePTAB · Aug 29, 2022 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–4, 6–9, 11, 12, and 15 were not shown unpatentable because Coffee did not disclose the claimed copying, and Coffee combined with Heijden did not cure that deficiency.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“In our Initial and Rehearing Decisions, we noted that Patent Owner did not contest Petitioner’s proffered level of ordinary skill in the art at that stage of the proceeding and we found “Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’308 patent and the prior art of record.” Initial Dec. 13 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)); Rehearing Dec. 16 (same). Therefore, we adopted Petitioner’s unopposed position as to the level of ordinary skill in the art. Initial Dec. 13; Rehearing Dec. 16. In its Patent Owner Response, Patent Owner states that “[f]or purposes of this proceeding, Patent Owner does not dispute Petitioner’s offered level of ordinary skill in the art.” PO Resp. 7. Accordingly, we maintain our preliminary finding by adopting Petitioner’s proposed level of ordinary skill in the art, as set forth above.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“received message 7102 and the header of the response message 7202 are not the same. PO Resp. 25 (citations omitted); Pet. Reply 14. In the Petition, Petitioner argued that “header information” was the same in each message (received and response). Pet. 32 (citations omitted), 36–37. Petitioner relies on Tables 58 and 63, which show “Header.” Id. at 32–33, 37. Petitioner also relies on paragraphs 102 and 118 of Mr. Andrews’s Declaration. Neither the Petition nor Mr. Andrews’s Declaration, however, provide any sufficient basis to find that even a portion of the header or header information is copied from the received message to the response message. Mr. Andrews states his opinion as though it were fact without providing the underlying factual support for his opinion. See Ex. 1003 ¶¶ 102, 118; see 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 cross-examination, Mr. Andrews provided additional information explaining which portion of the headers he believes are the same, but he still does not provide any explanation as to why he believes the information is copied. See, e.g., Ex. 2007 at 111:3–25. The same is true of Petitioner’s Reply, which reiterates Mr. Andrews’s deposition testimony, but still fails to provide any reason as to why Coffee’s charts or Mr. Andrews’ testimony necessarily means that Coffee copies a portion of the header from the received message to the response message. See Continental Can Co. U.S.A., Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency . . . 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.”). And, despite Petitioner’s identification of a “Header” listed in Tables 58 and 63, Coffee does not expressly describe the header or part of the header as being copied from the received message to the response message. The Petition and Mr. Andrews also state that “if Coffee did not employ such copying, the response message would not automatically include information extracted from the received message.” Pet. 38 (citing Ex. 1003 ¶ 118). But, Coffee does not expressly describe the header as being “extracted from the received message” or describe automatically including the header in a response message to make the leap argued by Petitioner and Mr. Andrews. Accordingly, on the full record before us, we find that Petitioner has not established that Coffee explicitly or inherently discloses copying the header or header information and we do not credit Mr. Andrews’ testimony, discussed above, because he fails to provide the underlying factual basis for the opinions offered.” slip op. at 43
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“proceeding and on the full record before us, we do not find that Coffee’s silence is sufficient to support Petitioner’s argument. See Campbell Soup Co. v. Gamon Plus, Inc., 787 Fed. Appx. 731, 739 (Fed. Cir. 2019) (“We do not find any error in the Board changing its understanding of the teachings of [a prior art reference] from the institution decision to the final written decision. ‘The Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced that its inclinations were wrong.’” (quoting Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016))). Coffee does not explain the process by which the IOD of the received message is included in the response message; rather, Coffee just states that the response message “contains the IOD of the message being answered.” See, e.g., Ex. 1005, 56:63–67 (see full text quoted above). In particular, although Coffee attributes certain actions to the operator, the lack of attribution to the operator does not necessitate that the only viable possibility remaining is that Coffee copies the IOD from the received message to the response message. Even if it may be said that Coffee probably (or possibly) copies the IOD, that probability is not sufficient to find that Coffee necessarily copies the IOD. See Continental Can, 948 F.2d at 1269 (“Inherency . . . 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.”).7 Additionally, on the full record before us, we determine that Mr. Andrews’s testimony, as with his testimony as to copying of the header and selected response, fails to provide any factual or underlying support for his opinions expressed therein. See Ex. 1003 ¶¶ 100–102. In particular, the leap occurs in paragraph 102, where Mr. Andrews takes the fact that some information (at least the IOD) from the received formatted message is included with the response message to opine that this means the information is “copied over.” Id. ¶ 102. But, again, Coffee is silent. And because Mr. Andrews did not provide any underlying factual basis for his opinion, we do not credit his testimony as to copying the IOD. 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.”).” slip op. at 48
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“generally, including the alleged benefits of such and reasons why one of ordinary skill in the art would have been prompted to include field-mapping information in Coffee’s MDT. See id. at 62–70. None of Petitioner’s discussion, however, explains how the combination of Coffee and Heijden remedies the deficiencies that we identified regarding Petitioner’s challenge based on Coffee. In particular, Petitioner does not assert or explain how the teachings of Heijden would be applied to Coffee such that Coffee would then copy or fill in the specific information from Coffee’s received message to Coffee’s response message, particularly as pertains to the header, Response, and IOD fields (which Petitioner relied on in the first ground), or any other information field from Coffee. The same is true of Mr. Andrews’s testimony. See Ex. 1003 ¶¶ 214–231. Additionally, it appears that Petitioner’s analysis of the combination of Heijden and Coffee maintains the position that Coffee copies information fields. See Pet. 70 (“Given that Coffee’s system already implements field mapping to copy information fields . . . .”). And, Mr. Andrews’s testimony similarly maintains that Coffee copies information fields. See Ex. 1003 ¶ 229 (“Coffee also discloses (at least inherently) field mapping by describing that data is copied from fields in request messages into corresponding fields in response message.”). But, as we explain in detail in the context of Petitioner’s challenge based on Coffee, Petitioner has not shown sufficiently that Coffee copies or fills in information from a received message to a response message. Thus, we do not find and Petitioner does not allege that Ground “1B” fills the gaps identified in Petitioner’s Ground “1A.”10 Accordingly, we determine that Petitioner has not established, by a preponderance of the evidence, that the combination of Coffee and Heijden would have rendered the subject matter of claims 1–4, 7–9, and 12 unpatentable.” slip op. at 60
Patent outcomesUS 6,925,308 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,925,308 - Intel Corporation v. Parkervision, Inc.No claims unpatentablePTAB · Jan 21, 2022 · IPR2020-01302 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1, 3, 4, 7, and 9–11 were not determined unpatentable because the asserted Larson and Larson–Butler grounds did not teach sampling.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Neither party contends that the differences in proposals affect the outcome of this proceeding and we do not find that they do. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art from the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’474 patent, and the opinions of Drs. Subramanian and Steer (which, as discussed above, recognize that additional work experience can compensate for the lack of a formal degree). Accordingly, we modify our preliminary finding to include the specifics from option (b) of Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because the parties agree that the claims remaining in the trial require “sampling” and also agree that the prior art asserted in this case does not teach “sampling” (as discussed further below), we need not construe these terms expressly to resolve the controversy before us. See Vivid Techs., 200 F.3d at 803. sampling Although claim 1 does not recite “sampling” expressly, the post- institution briefs make clear that the parties agree that claim 1 and its dependent claims require sampling. In particular, Patent Owner contends, (1) “the ’474 patent pertains to a technique called sampling, which involves the use of a ‘switch’” (PO Resp. 2); (2) “all of the challenged claims are directed to a sampling system and, in particular, an energy sampling system (also known as an energy transfer system)” (id.); and (3) “[t]he challenged claims only cover energy sampling and the use of switches” (id. at 20). In its Reply, although Petitioner disagrees with Patent Owner’s interpretation of the claims as limited to energy sampling (i.e., energy transfer systems) (Pet. Reply 3–7), Petitioner contends that based on its “subsequent analysis of [Patent Owner’s] foundational ’551 patent—one of the multiple patents which the ’474 patent incorporates by reference—[Petitioner] now agrees with [Patent Owner] that the claims cover only systems that down-convert by sampling.” Pet. Reply 2. Thus, at a minimum, the parties agree that the claims at issue in this proceeding require sampling.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19
Patent outcomesUS 7,539,474 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,539,474 - Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.No claims unpatentablePTAB · Feb 2, 2018 · IPR2016-01452 · APJ James A Tartal · IPR · Final written decision
Claims 22, 27, 46–52, 54, and 55 were not shown unpatentable over Myers, Myers and Bostock, or Anderson because the references did not disclose the claimed fluid-flow limitations.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“to determine whether it further supports the contention that Myers discloses the “flowing a fluid” step. Mr. Shale’s declaration discusses the operation of Myers in a manner that is virtually identical in substance to the content of the Petition. Compare Ex. 1010 ¶¶ 49–53, with Pet. 21–24. Mr. Shale does not address directly the “flowing a fluid” step or otherwise explain how Myers discloses “flowing a fluid though an axial flowbore extending through the downhole tool.”7 Accordingly, we find Mr. Shale’s declaration fails to provide persuasive support for Petitioner’s contention that Myers discloses “flowing a fluid though an axial flowbore extending through the downhole tool while preventing the fluid from communicating with a different flowpath of the downhole tool,” as required by claim 22, beyond what Myers, itself, discloses.” slip op. at 17
- BurdenNot shown unpatentable
“Ex. 1021, 75:25 – 76:7. Mr. Underwood’s testimony does not support Petitioner’s contention that Myers discloses the “flowing a fluid” step. Mr. Underwood was asked whether there is “a fluid flowing within the Myers tool,” not whether Myers discloses “flowing a fluid though an axial flowbore extending through the downhole tool,” as required by claim 22. Id. Moreover, Mr. Underwood testified that “fluid doesn’t flow through the tool,” but rather just flows “into the tool.” Id. (emphases added)” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“claims 22, 27, 46, 47, 50–52, 54, and 55 of the ’099 patent. Inst. Dec. 22; see also Pet. 21–29. Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Specifically, “[f]or a claim to be anticipated, each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference.” Id. at 1332–33. Inherent disclosure is established where the reference “must necessarily include the unstated limitation.” Id. (emphasis omitted); see Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) (holding that inherency can be established by extrinsic evidence that “make[s] 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”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“C. ASSERTED OBVIOUSNESS OVER MYERS AND BOSTOCK Petitioner contends claim 22, and claims 48 and 49, which depend from claim 22, would have been obvious over Myers and Bostock. Pet. 29– 32. With regard to the “flowing a fluid” step of claim 22, Petitioner relies only on the contentions it set forth under its anticipation analysis with respect to claim 22. Pet. 31. Because Petitioner does not rely on Bostock to teach the recited “flowing a fluid” step, does not argue the step would have been obvious over the combination, and, for the reasons provided above, has not shown by a preponderance of the evidence that Myers discloses the step, Petitioner has not shown by a preponderance of the evidence that claims 22, 48, and 49 would have been obvious over Myers and Bostock.” slip op. at 25
Patent outcomesUS 7,314,099 not shown unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,314,099 - Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.No claims unpatentablePTAB · Feb 1, 2018 · IPR2016-01440 · APJ James A Tartal · IPR · Final written decision
Claims 1, 2, 4–20, and 28–42 were not shown unpatentable because Myers did not establish axial translation, and Myers with Bostock did not cure that deficiency.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“radially” in the Petition. In its Reply, Petitioner equates “radially” to “outwardly” and “axially” to “downwardly.” Pet. Reply 7. Patent Owner contends that “axially and radially” would have been understood by a person of ordinary skill in the art “to refer to movement relative the body and oriented relative to the axis of the body.” PO Resp. 19 (citing Ex. 2018 ¶ 82). In particular, Patent Owner contends that “axial” refers to “movement along or parallel to the axis of the body, and that “radial” refers to “the direction perpendicular to the axis of the body.” PO Resp. 20. Patent Owner contends its interpretation is consistent with the Specification of the ’099 patent and is supported by both its expert, Mr. Underwood, and Petitioner’s expert, Mr. Shale. Id. at 18–21 (citations omitted). For example, Mr. Shale testified that “‘[r]adially’ basically means left to right within the tubular body,” and “‘axially’ means up and down within the tubular body.” Ex. 2021, 189:5–7. Patent Owner further notes that Figures 4, 5, 11, and 12 of the ’099 patent illustrate arms 520 moving axially and radially relative to body 510. PO Resp. 20. In its Reply, Petitioner argues that “[c]ontrary to Patent Owner’s assertion, claim 1 of the ’099 [p]atent does not require that the body 10 be the frame of reference for the axial and radial movement.” Pet. Reply 13 n.3. Petitioner, however, cites no persuasive evidence to counter Patent Owner’s proposed construction. Contrary to Petitioner’s assertion, Mr. Shale agreed that “radially” corresponds to “outward from the body,” and that “axially” corresponds to “up and down of the body.” Ex. 2021 190:4–19. Consistent with Mr. Shale’s testimony, Petitioner’s analysis purports to show that Myers discloses movement of moveable arms (slips 30) “both axially and radially relative to the body 10 [of Myers].” Pet. 19– 20. Petitioner is not alleging movement of the slips of Myers relative to a feature other than the body of Myers or in some other frame of reference. See Tr. 10:1–21. Thus, based on the evidence discussed above, we determine “translates axially and radially,” as recited in claim 1, means “moves parallel to and perpendicular to the body” and does not encompass movement consisting of only rotation about a pivot point. slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“The steps discussed above address how slips 30 of Myers are deployed, but do not explain expressly whether slips 30 move axially relative to body 10 during deployment. With regard to the slips, Myers further provides that: [Slips 30] are positively movable laterally relative to the expander upon relative longitudinal movement between the expander and slips by inclined spline connections between the slips and expander, provided by oppositely directed side tongues 32 on each slip sliding in companion grooves 33 in the expander on opposite sides of slots 34 in the expander in which the slips are disposed. The lower ends of the slips 30 are coupled for movement longitudinally with one another by being connected to a slip ring 35 having generally T-shaped slots 36 therein receiving companion T-shaped heads 37 on the lower portions of the slips. Thus, the slips 30 move longitudinally jointly with the slip ring 35, although they are still permitted to move radially or laterally inwardly and outwardly of the slip ring, upon relative longitudinal movement between the slips 30 and expander 26. Ex. 1004, 3:2–17. In this passage, the movement of the slips includes “longitudinal movement,” which we understand generally corresponds to a vertical direction, as opposed to lateral movement in a horizontal direction. However, the movement is described relative to expander 26, not relative to body 10. See Pet. 13 (using “lateral” consistent with the horizontal extent and “longitudinal” consistent with the vertical extent). Thus, this passage also does not explain expressly whether slips 30 move axially relative to the body during deployment.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“C. ASSERTED OBVIOUSNESS OVER MYERS AND BOSTOCK Petitioner contends claims 4, 33, and 34, each of which depends from claim 1, would have been obvious over Myers and Bostock. Pet. 24–26. According to Petitioner, “[e]ach of claims 4, 33, and 34 recites biasing either a sleeve or a movable arm to a collapsed position.” Id. at 24. Petitioner relies on Bostock as disclosing a spring for biasing. Id. As to the limitations of claim 1 from which claims 4, 33, and 34 depend, including the requirement of “one moveable arm translates axially and radially,” Petitioner relies only on the contentions it set forth under its anticipation analysis with respect to claim 1. Because Petitioner does not rely on Bostock to teach the recited feature “one moveable arm translates axially and radially,” does not argue the feature would have been obvious over the combination, and, for the reasons provided above, has not shown by a preponderance of the evidence that Myers teaches the feature, Petitioner has not shown by a preponderance of the evidence that claims 4, 33, and 34 of the ’099 patent would have been obvious over Myers and Bostock.” slip op. at 25
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Mr. Shale expresses the opinion that “slips 30 move both axially and radially relative to the body 10, along ‘generally T-shaped slots 36’ that are linear and angled relative to the axial direction,” we find that testimony to be conclusory and entitled to little weight, in part because this testimony does not account for the upward movement of setting sleeve 40. See Ex. 1010 ¶ 53 (quoting Ex. 1004, 3:11); see also In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); 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.”). Accordingly, we find Mr. Shale’s declaration fails to provide persuasive support for Petitioner’s contention that Myers discloses “one moveable arm translates axially and radially,” as required by claim 1, beyond what Myers, itself, discloses. We find more persuasive Mr. Underwood’s testimony, on behalf of Patent Owner, that Myers fails to disclose axial movement of slips 30. Ex. 2018 ¶¶ 90–107. According to Mr. Underwood: slots [36 of Myers] are shown as angled relative to the slip ring 35. However, though the slips may move downward (axially) relative to the slip ring 35 as the slips move outward (radially), the slip ring 35 at the same time moves upward (axially) relative to the body. As such, the angle of the slots 36 within the slip ring 35 is not, itself, indicative of the overall movement of the slips. Id. ¶ 91. Mr. Underwood further reasons that “as the slip ring moves upwardly, the movement of the slips relative to the body in the axial direction is zero due to the slips sliding downward in the slots 36 relative to the slip ring 35 in equal proportion.” Id. ¶ 94. Mr. Underwood also” slip op. at 20
Patent outcomesUS 7,314,099 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 7,314,099 - Freightcar America, Inc. v. National Steel Car, LimitedNo claims unpatentablePTAB · Sep 22, 2017 · IPR2016-00787 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1, 2, 7–10, and 13 were not shown unpatentable over Hitt; claims 7–10 and 13 were not shown unpatentable over White because the floor structure limitation was not established.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“NSC, however, has now taken the opportunity to articulate more thorough reasoning, and provide a more substantive basis, for its position that the proposed meaning of “standing upwardly of” as “standing on and rising in an upward direction” is also the broadest reasonable construction of the term in the context of the ’600 patent. The ’600 patent depicts various embodiments of its disclosed invention. See, e.g., Ex. 1001, Figures 1–10. In reviewing those depictions, and as noted by NSC (see, e.g., PO Resp. 7–9), they consistently show sidewalls of a rail car that stand or rest on the underlying flooring of the car. NSC also relies on the testimony of its declarant, Mr. Jack Long, in discussing the meaning of “standing upwardly of.” See, e.g., PO Resp. 12– 16 (citing Ex. 2018 ¶¶ 160–165, 167–178). Specifically, Mr. Long testifies that a person of ordinary skill in the art would have recognized that in the ’600 patent the term “standing” is used in “its positional sense,” citing, for instance, to a dictionary definition of “standing” as “to rest or remain upright on a base or lower end.” Ex. 2018 ¶ 164 (citing Ex. 2013, 5). Mr. Long’s testimony and the underlying support for that testimony shed favorable light on the meaning of “standing upwardly of” that is urged by NSC.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“exclusively on Hitt’s description of its “30-Ton Metal Wagon.” Pet. 22–23. More particularly, FreightCar takes the position that the above-noted claim requirement concerning sidewalls “standing upwardly of” is shown in the two Figures of Hitt designated Figures 6188 and 6189. Id. Those figures, however, are not a model of clarity when it comes to ascertaining the relationship of the sidewalls and the flooring of a rail car. We observe also that FreightCar seemingly bases its challenge to claims 1 and 2 on the premise that sidewalls that extend on the sides of the flooring are within the scope of those claims. Indeed, FreightCar’s own declarant, Mr. Keith Miller, provides testimony to that effect, i.e., that the sidewalls of the rail car depicted in Hitt’s Figures 6188 and 6189 do not rest or stand on the flooring or the car, but rather, lie to the sides of the flooring. See Ex. 1003 ¶ 124. As discussed above, we now conclude that claims 1 and 2 require a sidewall that stands on the flooring of a rail car. NSC maintains that such a configuration is not shown in the portions of Hitt on which FreightCar relies in its Petition. PO Resp. 22–31. NSC also relies on the testimony of its declarant, Mr. Long, in advocating that Hitt’s 30-Ton Metal Wagon embodiment does not meet the sidewall and flooring configuration required by claims 1 and 2. Id. (citing Ex. 2018 ¶¶ 195–208). We find Mr. Long’s testimony explaining the disclosure of Hitt’s Figures 6188 and 6189 credible. Although FreightCar does contend, as a part of its Reply to NSC’s Patent Owner Response, that Hitt’s 30-Ton Wagon includes “stanchions” as a part of a peripheral sidewall, we are not persuaded on that basis of the unpatentability of claims 1 and 2. It is not apparent readily that such position was taken by FreightCar as a part of its Petition, nor does FreightCar explain adequately why, even if true, such a circumstance constitutes a peripheral sidewall standing upwardly of flooring, as is required by claims 1 and 2 of the ’600 patent. Having thoroughly considered the record that has been developed at trial, we conclude that FreightCar’s Petition does not establish, by a preponderance of the evidence, that claims 1 and 2 are unpatentable over Hitt. More specifically, we are not persuaded that Hitt’s “30-Ton Metal Wagon” embodiment sets forth a “peripheral sidewall standing upwardly of said flooring” as required by claim 1. Accordingly, we are not persuaded that Hitt anticipates that claim, or dependent claim 2, nor does FreightCar offer any adequate explanation as to why the claims would have been obvious in view of Hitt.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“exclusively on Hitt’s description of its “30-Ton Metal Wagon.” Pet. 22–23. More particularly, FreightCar takes the position that the above-noted claim requirement concerning sidewalls “standing upwardly of” is shown in the two Figures of Hitt designated Figures 6188 and 6189. Id. Those figures, however, are not a model of clarity when it comes to ascertaining the relationship of the sidewalls and the flooring of a rail car. We observe also that FreightCar seemingly bases its challenge to claims 1 and 2 on the premise that sidewalls that extend on the sides of the flooring are within the scope of those claims. Indeed, FreightCar’s own declarant, Mr. Keith Miller, provides testimony to that effect, i.e., that the sidewalls of the rail car depicted in Hitt’s Figures 6188 and 6189 do not rest or stand on the flooring or the car, but rather, lie to the sides of the flooring. See Ex. 1003 ¶ 124. As discussed above, we now conclude that claims 1 and 2 require a sidewall that stands on the flooring of a rail car. NSC maintains that such a configuration is not shown in the portions of Hitt on which FreightCar relies in its Petition. PO Resp. 22–31. NSC also relies on the testimony of its declarant, Mr. Long, in advocating that Hitt’s 30-Ton Metal Wagon embodiment does not meet the sidewall and flooring configuration required by claims 1 and 2. Id. (citing Ex. 2018 ¶¶ 195–208). We find Mr. Long’s testimony explaining the disclosure of Hitt’s Figures 6188 and 6189 credible. Although FreightCar does contend, as a part of its Reply to NSC’s Patent Owner Response, that Hitt’s 30-Ton Wagon includes “stanchions” as a part of a peripheral sidewall, we are not persuaded on that basis of the unpatentability of claims 1 and 2. It is not apparent readily that such position was taken by FreightCar as a part of its Petition, nor does FreightCar explain adequately why, even if true, such a circumstance constitutes a peripheral sidewall standing upwardly of flooring, as is required by claims 1 and 2 of the ’600 patent. Having thoroughly considered the record that has been developed at trial, we conclude that FreightCar’s Petition does not establish, by a preponderance of the evidence, that claims 1 and 2 are unpatentable over Hitt. More specifically, we are not persuaded that Hitt’s “30-Ton Metal Wagon” embodiment sets forth a “peripheral sidewall standing upwardly of said flooring” as required by claim 1. Accordingly, we are not persuaded that Hitt anticipates that claim, or dependent claim 2, nor does FreightCar offer any adequate explanation as to why the claims would have been obvious in view of Hitt.” slip op. at 15
- ExcludeOther
“D. Motion to Exclude NSC filed a Motion to Exclude various exhibits offered by FreightCar in support of its Petition. Specifically, NSC seeks to exclude, in part or in total, exhibits 1003, 1007, 1011, 1012, 1014, and 1022. In reaching our determination in this Decision that FreightCar’s Petition does not establish the unpatentability of any of claims 1, 2, 7–10 and 13, we either: (1) did not rely on any of the content that NSC seeks to exclude, or; (2) evaluated that content in NSC’s favor. We conclude that the circumstances here do not require us to consider the substantive merits of NSC’s Motion to Exclude, and, instead, we dismiss that Motion as moot.” slip op. at 23
Patent outcomesUS 7,461,600 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,461,600 - Baker Hughes Incorporated / Baker Hughes Oilfiled Operations, Inc. v. Packers Plus Energy Services, Inc.No claims unpatentablePTAB · Aug 31, 2017 · IPR2016-00650 · APJ Carl M Defranco · IPR · Final written decision
The Board held that claims 14 and 17–26 were not shown unpatentable because Thomson lacked the claimed first sleeve and the combinations lacked a reason to add Echols’s sleeves.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“At the institution stage, we construed the term “engaged” according to its plain and ordinary meaning as defined in the dictionary—“involved in activity.” See Merriam-Webster’s Dictionary, 383 (10th ed. 2000) (Ex. 3001). Thus, in the context of the claims, we found that the first sleeve must be actively involved in moving the sliding sleeve, as distinguished from standing simply in physical contact with the sliding sleeve. In other words, as used in the claims, the term “engaged” connotes some sort of dynamic action on the part of the first sleeve relative to the sliding sleeve. Neither party disputes that construction. Indeed, both parties agree that our construction is consistent with “a process of two events that are temporally linked,” first, “the physical relationship between the first sleeve and the sliding sleeve changes to one of engagement,” and second, “the first sleeve moves the sliding sleeve.” Pet. 19; see also PO Resp. 2 (agreeing that the Board’s construction is consistent with the petitioner’s proposed construction of “engaged and moved”).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As construed above, and agreed to by the parties, the term “engaged and moved” as used in claims 14 and 25 requires that the first sleeve act independently of the sliding sleeve to move the sliding sleeve away from the port. In contrast, the sliding sleeve arrangement of Thomson—shown in figure 5—includes an internal first sleeve (light grey) that acts as a “ball seat” for the sliding sleeve. Ex. 1002, 1, 2, Fig. 5. Rather than actuating sliding sleeve, Thomson’s internal first sleeve is “threaded” permanently within the sliding sleeve, and thus cannot act to engage and move the sliding sleeve away from the port, as required by claims 14 and 25. With that distinction in mind, we are not persuaded that Thomson anticipates claims 14 and 25.6 C.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“According to Packers Plus, because Thomson describes a completion system where the wellbore is cemented and cased, the “the number of sleeves per zone does not dictate the number of injection points into the formation. Rather, the number of perforations in the casing dictates the number of injection points, whether there is a single sleeve per zone or multiple sleeves per zone.” Id. at 4. As such, Packers Plus argues, there is no reason to employ more sleeves in each of Thomson’s perforated zones, when the single sleeve per zone already disclosed by Thomson suffices to do the job. Id. We agree. As shown and described in Thomson, the wellbore is lined with cement, and perforations are made in the cement casing for each zone to be treated. Ex. 1002, 3 (“Before running the completion, each well was perforated with tubing-conveyed perforating (TCP) guns.”); Fig. 3 (showing cement-lined wellbore). The tubing string is then run into the perforated, cased wellbore, “with isolation of each zone being achieved by hydraulic-set packers positioned on each side of an MSAF tool,” which Thomson describes as “a sliding sleeve device” that is “the ‘heart’ of the completion system.” Id. at 1, 2. Fracturing fluid is pumped into the tubing string, and “once the sleeve is moved to an open position,” it is ejected “into the tubing liner annulus” between the tubing string and the cased wellbore. Id. at 2 (emphasis added). But to ultimately reach the formation, the fracturing fluid in the annulus must pass through the perforations in Thomson’s cased wellbore. Given that fracturing fluid can only escape from the annulus and into the formation through the perforations in the cement casing, increasing the number of sleeves in each zone, as Baker Hughes suggests, would not equate to an increase of injection points into the formation. Instead, that is dictated by the number of perforations in the casing, as evidenced by the testimony of Packers Plus’s expert, Mr. McGowen, [i]t would be immediately clear to a POSITA the use of multiple Echols sleeves in a Thomson zone would not provide additional injection points into the formation. The only injection points into the casing are through perforations. If a POSITA wanted to modify Thomson to add additional injection points, he or she could add additional perforations in the casing, but there would be no reason to add additional sliding sleeves in a particular zone. Ex. 2003, 15:4─8 We find this testimony persuasive. With the perforations in the casing dictating the number of points where fluid can enter the formation, we find that a skilled artisan would not have have considered that additional sleeves in a particular zone would translate to a benefit of additional injection points.” slip op. at 14
- Expert testimonyPatent owner expert creditedDecided for patent owner
“to an increase of injection points into the formation. Instead, that is dictated by the number of perforations in the casing, as evidenced by the testimony of Packers Plus’s expert, Mr. McGowen, [i]t would be immediately clear to a POSITA the use of multiple Echols sleeves in a Thomson zone would not provide additional injection points into the formation. The only injection points into the casing are through perforations. If a POSITA wanted to modify Thomson to add additional injection points, he or she could add additional perforations in the casing, but there would be no reason to add additional sliding sleeves in a particular zone. Ex. 2003, 15:4─8 We find this testimony persuasive. With the perforations in the casing dictating the number of points where fluid can enter the formation, we find that a skilled artisan would not have have considered that additional sleeves in a particular zone would translate to a benefit of additional injection points.” slip op. at 15
Patent outcomesUS 6,907,936 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,907,936 - Sipnet Eu S.R.O. v. Straight Path IP Group, Inc.No claims unpatentablePTAB · May 23, 2016 · IPR2013-00246 · APJ Kalyan K Deshpande · IPR · Remand
On remand, the Board held claims 1–7 and 32–42 not shown unpatentable because WINS and NetBIOS do not disclose the claimed current-connection status.
RulingsRemand decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“party-in-interest. Whether a non-party is a “real party-in-interest” or “privy” for purposes of an inter partes review proceeding is a “highly fact-dependent question” that takes into account how courts generally have used the terms to “describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion.” Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,759. Whether parties are real parties-in-interest or in privity, for instance, depends on whether the relationship between the party and its alleged real party-in-interest or privy is “sufficiently close such that both should be bound by the trial outcome and related estoppels.” Id. A number of factors may be relevant to the analysis, including whether the non-party “exercised or could have exercised control over a party’s participation in a proceeding,” and whether the non-party is responsible for funding and directing the proceeding. Id. “The concept of control generally means that ‘it should be enough that the nonparty has the actual measure of control or opportunity to control that might reasonably be expected between two formal coparties.’” Id. (quoting 18A C. Wright, A. Miller & E. Cooper, Federal Practice & Procedure § 4451 (2d ed. 2011)). Patent Owner has not demonstrated that Stalker Software exercised or could have exercised control over Petitioner’s participation in this proceeding. The evidence of record establishes only that Stalker Software provided the WINS reference, at the request of Petitioner. Pet. Reply 1; Tr. 28:3–9. This alone is insufficient to demonstrate that Stalker Software exercised, or could have exercised, control over Petitioner’s participation in this proceeding. Patent Owner’s evidence of the existence of a vendor-reseller relationship between Stalker Software does not demonstrate Stalker Software exercised, or could have exercised, any control. When a patent holder sues a dealer, seller, or distributor of an accused product, the mere payment of counsel fees and minor participation by the vendor in the trial are insufficient to establish privity between the vendor and reseller. Bros, Inc. v. W.E. Grace Mfg. Co., 261 F.2d 428, 430 (5th Cir. 1958); see generally Broadcom Corp. v. Telefonaktiebolaget LM Ericsson, Case IPR2013-00601, slip op. at 7, 8 (PTAB Jan. 24, 2014) (Paper 23). Patent Owner’s assertions regarding witnesses with connections to both Stalker Software and Petitioner, and Petitioner’s alleged lack of presence in the U.S. market, are statements of counsel unsupported by any record evidence, and, in any event, are not indicative of any control of this proceeding by Stalker Software. Considering the lack of probative evidence submitted by Patent Owner, we disagree that Stalker Software is a real partyin-interest. Accordingly, we are not persuaded that Petitioner is barred from initiating this proceeding, or that sanctions should be imposed on Petitioner.” slip op. at 10
- BurdenNot shown unpatentable
“fail to determine whether a computer or process is connected to the computer network. PO Resp. 31–46. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1004, 62–63, 75, 84, 130. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 73. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 148. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. See id. at 73, 148. Accordingly, a query as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1004, 84, 166. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” “currently connected to the Internet,” and “connected to the computer network,” as construed herein.” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner provides the testimony of Mr. Kolesnikov that WINS was publically available and a CD version (Ex. 1019) was received by Mr. Kolesnikov in 1994. Pet. Reply 13–14; Tr. 19:5–19; see Ex. 1017. Mr. Kolesnikov testifies that he saw several Microsoft Windows NT 3.5 Server packages that included a print copy of WINS. Ex. 1017 ¶ 7. Petitioner further provides the testimony of Ms. Ehrlich to establish that the differences between WINS and the CD version are differences mostly as to formatting. Pet. Reply 13–14; see Ex. 1018. Ms. Ehrlich testifies that WINS and the CD version are substantially similar, noting differences in the glossaries and formatting. Ex. 1018 ¶ 6; Ex. 2044, 16:17–24. We are persuaded that Petitioner has established WINS as prior art. We are persuaded that WINS was publically available in 1994. Mr. Kolesnikov testifies to seeing printed copies of WINS and the CD version in 1994. Ex. 1017 ¶ 7. Mr. Kolesnikov further testifies he recalls seeing printed copies of WINS during installations he did for clients in 1994, and is certain that it was 1994 because he switched jobs in 1995. Ex. 2043, 29:1–10, 32:21–22. Additionally, we are persuaded that the portions of WINS relied upon by Petitioner are different from the CD version due to formatting only. Tr. 23:1–25:8. Patent Owner’s argument consists of alleging that Petitioner has failed to establish that WINS was publically available and does not offer any evidence contrary to that presented by Petitioner. Based on the evidence discussed above, we are persuaded that Petitioner has established that WINS was publicly available in 1994, and, therefore, qualifies as prior art under 35 U.S.C. § 102(a).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“fail to determine whether a computer or process is connected to the computer network. PO Resp. 31–46. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1004, 62–63, 75, 84, 130. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 73. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 148. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. See id. at 73, 148. Accordingly, a query as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1004, 84, 166. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” “currently connected to the Internet,” and “connected to the computer network,” as construed herein.” slip op. at 15
Patent outcomesUS 6,108,704 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 6,108,704 - Masterimage 3d, Inc. / Masterimage 3d Asia, LLC v. Reald Inc.No claims unpatentablePTAB · Apr 20, 2016 · IPR2015-00035 · APJ Bart A Gerstenblith · IPR · Final written decision
The Board denied cancellation of claims 1–23 because Petitioner did not show Schuck was entitled to the provisional filing date, so it was not prior art.
RulingsFinal written decision- BurdenDecided for patent owner
“as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“It is only “confidential information” that may be protected from disclosure, 35 U.S.C. § 316(a)(7), and, even then, there is a public interest in “maintaining a complete and understandable file history” of the proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the burden of proof in showing entitlement to the requested relief. 37 C.F.R. § 42.20(c).” slip op. at 19
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for patent owner
“as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“for multiple reasons. First, Petitioner acknowledges that what it refers to as “the Milburn doctrine” was codified in 35 U.S.C. § 102(e), and Petitioner does not show persuasively that we should read Milburn as requiring anything beyond application of that statutory section in light of the facts presented here. Supp. Reply 6. Second, Milburn did not address directly the question of whether an issued patent is entitled to claim priority to a provisional patent application, and, specifically, what must be shown in order to do so. Third, Schuck claims priority to not one, but three provisional applications, which was not the case in Milburn. Fourth, in Giacomini, the Federal Circuit expressly considered Milburn and stated: “An important limitation [on 35 U.S.C. § 119(e)(1)] is that the provisional application must provide written description support for the claimed invention.” Giacomini, 612 F.2d at 1383 (emphasis added). Although the Federal Circuit did not address the application of the argument—that the reference patent’s provisional application fails to provide written description support for the claimed subject matter—in Giacomini, because the appellant had waived it, the Federal Circuit’s decision acknowledges that there was an argument that could have been raised. Id. Finally, Dynamic Drinkware is directly on point and clearly establishes that Petitioner is required to show that the claimed invention of Schuck finds written description support in the ’657 provisional in order to rely on the ’657 provisional’s filing date. Dynamic Drinkware, 800 F.3d at 1381. It is undisputed that Petitioner has not done so. We find that Petitioner has not shown that claim 1 or any other claim of Schuck is supported by the ’657 provisional, and, thus, Petitioner has not shown that Schuck is entitled to claim priority to the ’657 provisional’s filing date. See Apple, Case IPR2015-00969, slip op. at 12–13. The result of our finding is that Schuck does not qualify as prior art, under § 102(e), to the ’455 patent, and, therefore, is not a reference which may be relied upon to establish the unpatentability of claims in an inter partes review. See 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” (emphasis added)). Accordingly, Petitioner has not demonstrated, by a preponderance of the evidence, that: (1) claims 1–8, 10–14, and 16–22 are unpatentable as anticipated by Schuck and (2) claims 9, 15, and 23 are unpatentable as obvious over Schuck and APA.” slip op. at 16
Patent outcomesUS 7,857,455 not shown unpatentable§ 102 anticipationPatents in suitUS 7,857,455 - Blackberry Corp. / Blackberry Ltd. v. Zipit Wireless, Inc.No claims unpatentablePTAB · Mar 29, 2016 · IPR2014-01507 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 1, 2, 5–12, 17–21, 24–31, and 36–40 were not shown unpatentable because the cited references did not teach or suggest graphical emoticons.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Based on the full record and consideration of the parties’ arguments and evidence, we determine that the broadest reasonable interpretation of the term “graphical symbols,” as would be understood by one of ordinary skill in the art, in the context of the entire disclosure is “graphical emoticon.” See Ex. 1001, 3:26– 36, 4:50–5:3, 7:4–23, 8:27–32, 8:43-46, 16:62–17:5, 18:46–55, 19:17–31, 20:1–14, Figs. 2, 12a, and 12b. We agree with Patent Owner that the Specification of the ’870 patent shows “symbols” being generated by textual characters. PO Resp. 14– 15. Specifically, the ’870 patent refers to characters generating graphical symbols where symbols are pictorial representations, e.g. , indicates to a person of ordinary skill in the art that symbols (and graphical symbols) are distinct from the textual characters used to generate them. Ex. 1001, 3:26–36, 4:50–5:3. Thus, we are not persuaded by Petitioner’s argument or the testimony of their Declarant that the ’870 patent Specification does not distinguish between characters and symbols. Reply 12–13. We find that the Specification of the ’870 patent showing combination of textual characters that are used to generate “graphical symbols” across different messaging services further supports the distinctions between textual characters and graphical symbols. See Ex. 1001, 7:20–23; 8:27–32, 8:43– 46, Tables 1–4.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on the complete record, we agree with Patent Owner that Petitioner has not demonstrated by a preponderance of the evidence that the e740 User’s Manual explicitly or inherently discloses the limitations of independent claims 1 and 20. See PO Resp. 35–37. The Petition applies a construction for “graphical symbol” that includes text emoticons and individual characters themselves as graphical symbols. See Pet. 14–15 (claim 1), 25 (claim 20), 28 n.3 (citing individual characters such as “)” and “-“ as graphical symbols alone). The Petition states that the “combination of characters, each element of the smiley face—‘:’, ‘-‘, ‘)’—is also a graphical symbol” like a “character sequence, such as ‘:-)’ or ‘;-)’, that represents a graphical symbol.” Pet. 28 n.3. Based on the claim construction determined above, “graphical symbols” are “graphical emoticons” that are distinct from “textual emoticons” presented by Petitioner. Petitioner’s evidence and argument do not establish that the cited reference teaches a “device [] configured to generate textual characters and graphical symbols” as recited in independent claims 1 and 20.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner’s argument and evidence rely on the same overly broad construction of “graphical symbols” used in the anticipation grounds based on the e740 User’s Manual. Pet. 35, 38, 43–44, 48, 55–56 (citing e740 User’s Manual for teaching recited claim limitations for graphical symbol). As discussed above, Petitioner’s argument that the combination of Morrison and the e740 User’s Manual teach “graphical symbols” is not supported by the Petition. Although we carefully weighed Patent Owner’s Declarant testimony, we agree with Patent Owner’s argument that the Petition fails to demonstrate that Morrison and the e740 User’s Manual teach or suggest “graphical symbols” or “graphical emoticons” as opposed to textual characters cited by Petitioner. PO Resp. 35–42, 43–46. We have considered the arguments and evidence presented by the Petitioner and Patent Owner. For the reasons discussed above, we conclude that Petitioner has not shown by a preponderance of the evidence that claims 1, 2, 5–8, 11, 12, 17, 18, 20, 21, 24–27, 30, 31, 36, 37, and 40 are obvious in view of the e740 User’s Manual and Symbol; claims 1, 2, 5–8, 11, 12, 17–21, 24–27, 30, 31, and 36–40 are obvious in view of e740 User’s Manual and Morrison; or claims 9, 10, 28, and 29 are obvious in view of e740 User’s Manual and e750 User’s Manual.” slip op. at 20
- ExcludeMotion to exclude, grantedGranted
“Although we did not rely on these exhibits or reach secondary consideration issues, Patent Owner’s belated introduction of summary evidence that Patent Owner admits is in the record with the Patent Owner response is cumulative. We grant Petitioner’s motion to exclude Exhibits 2080 and 2081.” slip op. at 21
Patent outcomesUS 7,292,870 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,292,870 - Blackberry Corp. / Blackberry Ltd. v. Zipit Wireless, Inc.No claims unpatentablePTAB · Mar 29, 2016 · IPR2014-01506 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 1–5, 10–17, and 20 were not shown unpatentable because the cited references did not teach or suggest the claimed graphical emoticons.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“We note first that the parties do not dispute that Dr. Konchitsky is qualified to provide his expert opinion on the subject matter of the ’837 patent even without considering his Ph.D. from Bournemouth University. Sur-Reply 13–15; Tr. 4:14– 22, 21:1–15. Petitioner concedes that Dr. Konchitsky “worked at Nokia. He worked at a company that was purchased by Intel. To be able to testify about emoticons and parental controls on devices he meets the low threshold under the federal rules for providing expert testimony.” Tr. 4:21–24. Accordingly, the circumstances surrounding Dr. Konchitsky’s Ph.D. credentials go to the weight of his testimony rather than admissibility. Further, we do not find that Petitioner has demonstrated sufficiently that Dr. Konchitsky’s testimony should be afforded diminished weight because Dr. Konchitsky falsified his Ph.D. from Bournemouth University Extension through Ramat Gan College in Israel. Petitioner concedes that [t]he sur-reply shows that it’s possible that Konchitsky did receive a degree from either Ramat Gan or the extension at Ramat Gan. That was not an authorized diploma, had nothing to do with the Bournemouth University. And whether or not he knew that or was unwittingly duped into believing that he was getting a genuine Bournemouth University diploma, in the time allotted in IPR and our resources, there’s just not enough time and money available to prove that circumstantial case whether he knew that his diploma was not genuine. Tr. 5:14–22. Additionally, Petitioner has withdrawn all its allegations that Dr. Konchitsky himself engaged in any act of forgery or perjury with respect to his Ph.D. Ex. 2106; Tr. 4:11–23, 6:13–8:2. This is not to say that there is sufficient evidence to establish whether Dr. Konchitsky’s Ph.D. is genuine. However, as Petitioner argues, the issue is one of Dr. Konchitsky’s veracity and credibility. Tr. 7:7–17. Thus, while it may be possible Dr. Konchitsky’s Ph.D. is not genuine, Petitioner has not shown that Dr. Konchitsky engaged in any wrongdoing in obtaining his Ph.D. or representing that he obtained a Ph.D. from Bournemouth University Extension in Israel. Thus, we do not diminish the weight of Dr. Konchitsky’s on this basis.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Based on the full record and consideration of the parties’ arguments and evidence, we determine that the broadest reasonable interpretation of the term “graphical symbols,” as would be understood by one of ordinary skill in the art, in the context of the entire disclosure is “graphical emoticon.” See Ex. 1001, 3:37– 39, 4:36–55, 6:49–67, 8:17–20, 16:1–10, 17:47–18:13, Figs. 12a and 12b. We agree with Patent Owner that the Specification of the ’837 patent shows “symbols” being generated by textual characters. PO Resp. 14–15 (citing Ex. 1001 3:34–44, 4:40–55). Specifically, the ’837 patent refers to characters generating graphical symbols where symbols are pictorial representations, e.g. , indicates to a person of ordinary skill in the art that symbols (and graphical symbols) are distinct from the textual characters used to generate them. Ex. 1001 3:34–44, 4:40–55. Thus, we are not persuaded by Petitioner’s argument or the testimony of their Declarant that the ’837 patent Specification does not distinguish between characters and symbols. Reply 12–13. We find that the Specification of the ’837 patent showing combination of textual characters that are used to generate “graphical symbols” across different messaging services further supports the distinctions between textual characters and graphical symbols. See Ex. 1001, 6:64–67; 8:2–7, Tables 1– 4.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“has not demonstrated by a preponderance of the evidence that the e740 User’s Manual explicitly or inherently discloses the limitations of independent claims 1 and 11. See PO Resp. 36–37. The Petition applies a construction for “graphical symbol” that includes text emoticons and individual characters themselves as graphical symbols. See Pet. 23 n.2, 31 n.4 (citing individual characters such as “)” and “-“ as graphical symbols alone). The Petition states that the “combination of characters, each element of the smiley face—‘:’, ‘-‘, ‘)’—is also a graphical symbol” like a “character sequence, such as ‘:-)’ or ‘;-)’, that represents a graphical symbol.” Pet. 23 n.2. Based on the claim construction determined above, “graphical symbols” are “graphical emoticons” that are distinct from “textual emoticons” presented by Petitioner. Petitioner’s evidence and argument do not establish that the cited reference teaches a “device [] configured to generate textual characters and graphical symbols” as recited in independent claim 1 and related limitations in claim 11. Pet. 12–13, 28. Upon review of the complete record, we are not persuaded by Petitioner’s arguments that the e740 User’s Manual and Morrison disclose graphical emoticons. Reply 22; Tr. 38:13–39:10. Petitioner’s efforts to bootstrap MSN Messenger as discussed in the e740 User’s Manual (or Morrison) to the disclosure of graphical emoticons is not supported by the Petitioner’s evidence and argument as presented in the Petition. Pet. 12–13, 28, 42. In sum, Petitioner has not provided persuasive or sufficient evidence that the e740 User’s Manual discloses “graphical symbols” as recited in independent claims 1 and 11. Pet. 11–22 (claim 1), 28–29 (claim 11).” slip op. at 20
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner’s argument and evidence rely on the same overly broad construction of “graphical symbols” used in the anticipation grounds based on the e740 User’s Manual. Pet. 38–39, 42–43, 45, 49 (citing e740 User’s Manual for teaching recited claim limitations). As discussed above, Petitioner’s argument that the combination of Morrison and the e740 User’s Manual teach “graphical symbols” is not supported by the Petition. Id. Although we carefully weighed Patent Owner’s Declarant testimony, we agree with Patent Owner’s argument that the Petition fails to demonstrate that Morrison and the e740 User’s Manual teach or suggest “graphical symbols” or “graphical emoticons” as opposed to textual characters cited by Petitioner. PO Resp. 44–48; Pet. 38–39, 42–43, 45, 49. We have considered the arguments and evidence presented by the Petitioner and Patent Owner. We conclude that Petitioner has not shown by a preponderance of the evidence that each element of claims 1–5, 10–17, and 20 are obvious in view of e740 User’s Manual and Morrison or that claims 5 and 16 are obvious in view of the e740 User’s Manual and the Nokia IM+ Manual.” slip op. at 21
Patent outcomesUS 7,894,837 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,894,837
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.