• Duncan Parking Technologies, Inc. v. Ips Group Inc.Rehearing granted
  PTAB · Aug 18, 2017 · IPR2016-00067 · APJ Josiah C Cocks · IPR · Rehearing

  The Board granted IPS’s rehearing request and held claims 1–5 and 7–10 not shown unpatentable as anticipated by King ’054 under § 102(e).

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “without prior authorization from the Board.” 37 C.F.R. § 42.71(d). The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” Id.” slip op. at 3

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

    “communicated to the inventors of King ’054 by Mr. King. In that respect, we observe the following: (1) it is undisputed that Mr. King and the D+I inventors invented the substantive content that became claims 8 and 10 of the ’310 patent; (2) Mr. King is a common inventor as between each of the ’310 patent and King ’054; (3) the record reflects that there was frequent and numerous collaborative exchanges between Mr. King and the other inventors of King ’310 (i.e., the D+I inventors); and (4) those exchanges occurred prior to the filing of the application that became King ’054. See, e.g., Exs. 2018–31, 2034–42.” slip op. at 6

  • Strike new argumentNew argument disregardedOther

    “Response to IPS’s Request for Rehearing, provides little, if any, basis undermining the above-noted inference. DPT’s attempt, as a part of its Response, to belatedly seek rehearing of our Final Written Decision as to claims 1–5, 7, and 9 of the ’310 patent is both untimely and inadequately supported on the present record.4 Indeed, all the Response does is inappropriately seek rehearing of our Final Written Decision as to claims 1– 5, 7, and 9 of the ’310 patent, and does not follow our instruction of being responsive to the subject of the Request for Rehearing, i.e., the anticipation of dependent claims 8 and 10. See Paper 32, 2 (“The panel would like to hear from DPT as to the content of IPS’s Request for Rehearing. Accordingly, the panel authorizes . . . DPT to file a reply to IPS’s Request for Rehearing.”).” slip op. at 6

  § 102 anticipation
  Patents in suitUS 7,854,310
• Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentable
  PTAB · May 23, 2017 · IPR2016-00263 · APJ William V Saindon · IPR · Final written decision

  Claims 1–10 and 12–49 are unpatentable as obvious over the Dietzen-led grounds; claim 11 was not shown unpatentable.

  RulingsFinal written decision

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

    “1. “adapted to” This term appears in claims 11, 17–19, and 30–49. Petitioner proposes “adapted to” means “capable of.” Pet. ’262, 10; Pet. ’263, 10. We agree, insofar as these limitations require structure to have qualities or features allowing it to meet the claim language. For example, claim 17 would require a vessel that actually can “withstand a pressure of about 4 bar to about 8 bar.” In other words, the “adapted to” language distinguishes from those structures that are not physically capable of meeting the limitation. Patent Owner argues that Petitioner’s construction is overly broad. PO Resp. ’262, 17–19; PO Resp. ’263, 16–19. Reviewing Patent Owner’s arguments, however, is not clear to us what Patent Owner disputes to be the effective difference. We determine that no explicit construction of “adapted to” is necessary.” slip op. at 10

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

    “Reviewing the arguments and evidence before us, we agree with Patent Owner that Petitioner’s initial construction, now abandoned, was too broad. Specifically, Petitioner’s abandoned construction did not account for the fact that the mixture comes from a particular origin (drilling of an oil well) and that the “some resistance to flow” aspect was also too broad given the particular materials involved. However, Patent Owner’s proposed construction, which would require a gravity test, is not supported by the ’062 patent. Instead, we effectively adopt a combination of Patent Owner’s proposed construction and Petitioner’s, for the reasons explained below.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed patent owner constructionDecided for patent owner

    “3. “means for transporting” This term appears in claims 39, 40, 46, and 47. Petitioner proposes the term is a means-plus-function limitation having a function of “transporting [the] pressure vessel to a discharge station” and corresponding structure of “a ship, crane, and road vehicle.” Pet. ’263, 12 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction. PO Resp. ’263, 20 (using the term “boat” instead of “ship”). The constructions are effectively identical. Our Decision does not turn on which proposed construction we choose; we adopt the Patent Owner’s proposed construction. 4. “means for transferring” This term appears in claims 44 and 45. Petitioner proposes the term is a means-plus-function limitation having a function of “transferring the nonfree flowing drill cuttings from a second vessel to a third vessel” and corresponding structure of “a conduit, pipe, or flexible hose.” Pet. ’263, 12– 13 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction, but with more exemplary corresponding structures. PO Resp. ’263, 21 (also including “compressed gas[/air],” “a connector,” and “a hose”). Petitioner’s Reply does not discuss the construction of “means for transferring.” Our Decision does not turn on which proposed construction we choose; we adopt Patent Owner’s proposed construction because it is a slightly broader reasonable interpretation.” slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “The original claims of the ’217 patent were rejected as anticipated by Curtis, which had pulsed-jet aerators in the cone of the pressure vessel. Ex. 2017, 232, 3:7–11, 6:59–64. After a telephone interview, during which the Examiner and Patent Owner “[d]iscussed [a] proposed amendment” (id. at 284), the Examiner proposed an Examiner’s Amendment adding that the conveyance gas was “the sole means for inducing movement [of the material]” (see, e.g., id. at 322). The Examiner set forth the scope of the “sole means” limitation: “heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent are precluded. The conveyance gas is not a fluidizing agent.” Id. Amending the claims to include the “sole means” limitation, along with the Examiner’s accompanying explanation of its scope, are clearly and unmistakably the reasons for issuance of the ’217 patent. See Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1327 (Fed. Cir. 2009) (prosecution history “provides evidence of how the [PTO] and the inventor understood the patent” (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (alteration in original)).” slip op. at 19

  Patent outcomesUS 7,186,062 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,186,062
• Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentable
  PTAB · May 23, 2017 · IPR2016-00262 · APJ William V Saindon · IPR · Final written decision

  Claims 1–10 and 12–49 are unpatentable as obvious; claim 11 is not unpatentable because the obviousness grounds did not establish its ISO-frame limitation.

  RulingsFinal written decision

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

    “1. “adapted to” This term appears in claims 11, 17–19, and 30–49. Petitioner proposes “adapted to” means “capable of.” Pet. ’262, 10; Pet. ’263, 10. We agree, insofar as these limitations require structure to have qualities or features allowing it to meet the claim language. For example, claim 17 would require a vessel that actually can “withstand a pressure of about 4 bar to about 8 bar.” In other words, the “adapted to” language distinguishes from those structures that are not physically capable of meeting the limitation. Patent Owner argues that Petitioner’s construction is overly broad. PO Resp. ’262, 17–19; PO Resp. ’263, 16–19. Reviewing Patent Owner’s arguments, however, is not clear to us what Patent Owner disputes to be the effective difference. We determine that no explicit construction of “adapted to” is necessary.” slip op. at 10

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

    “Reviewing the arguments and evidence before us, we agree with Patent Owner that Petitioner’s initial construction, now abandoned, was too broad. Specifically, Petitioner’s abandoned construction did not account for the fact that the mixture comes from a particular origin (drilling of an oil well) and that the “some resistance to flow” aspect was also too broad given the particular materials involved. However, Patent Owner’s proposed construction, which would require a gravity test, is not supported by the ’062 patent. Instead, we effectively adopt a combination of Patent Owner’s proposed construction and Petitioner’s, for the reasons explained below. The ’062 patent describes the material conveyed therein in several different ways, but it is always referring to the same material. The labels that the ’062 patent gives to this material are: “thick heavy paste” (Ex. 1004, 1:29, 1:46–47, 1:64, 2:1, 3:11), “drill cuttings” (id. at 1:65, 2:12; see also id. at 1:45 (simply, “cuttings”)), “non-free flowing paste” (id. at 2:7–8, 11), and “thick and/or heavy paste or clay like material” (id. at 2:11–12). These labels are often equated to one another: “cuttings . . . in the form of a very thick heavy paste” (id. at 1:45–47), “thick heavy paste . . . e.g. drill cuttings” (id. at 1:64–65), “non-free flowing paste . . . e.g. oil rig drill cuttings” (id. at 2:11–12). As such, the ’062 patent considers screened drill cuttings to be a thick heavy paste as well as a non-free flowing paste and, thus, considers a thick heavy paste to be a non-free flowing paste. The ’062 patent does not discuss “non-free flowing drill cuttings,” or relate it to gravity. However, given that the ’062 patent considers “drill cuttings” to be “non-free flowing paste,” the “drill cuttings” are already “non-free flowing” according to the ’062 patent. Thus, when the claims add “non-free flowing” to “drill cuttings,” we find that they do not provide a further limitation, but rather just provide an extra description that a person of ordinary skill in the art would already understand is present if they were to read the specification. The ’062 patent is simply providing many ways to describe the same thing. There is no persuasive evidence that a person of ordinary skill in the art would understand “non-free flowing” to otherwise be a term of art. Indeed, Patent Owner’s expert, Dr. Brown, points to the exact same physical material samples to provide examples of “drill cuttings,” “non-free flowing paste,” and “non-free flowing drill cuttings.” Compare Ex. 2014 ¶ 53 with Ex. 2056 ¶ 53 with Ex. 2059 ¶ 53 with Ex. 2060 ¶ 53 (each using the same picture to describe the material).18” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other

    “3. “means for transporting” This term appears in claims 39, 40, 46, and 47. Petitioner proposes the term is a means-plus-function limitation having a function of “transporting [the] pressure vessel to a discharge station” and corresponding structure of “a ship, crane, and road vehicle.” Pet. ’263, 12 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction. PO Resp. ’263, 20 (using the term “boat” instead of “ship”). The constructions are effectively identical. Our Decision does not turn on which proposed construction we choose; we adopt the Patent Owner’s proposed construction. 4. “means for transferring” This term appears in claims 44 and 45. Petitioner proposes the term is a means-plus-function limitation having a function of “transferring the nonfree flowing drill cuttings from a second vessel to a third vessel” and corresponding structure of “a conduit, pipe, or flexible hose.” Pet. ’263, 12– 13 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction, but with more exemplary corresponding structures. PO Resp. ’263, 21 (also including “compressed gas[/air],” “a connector,” and “a hose”). Petitioner’s Reply does not discuss the construction of “means for transferring.” Our Decision does not turn on which proposed construction we choose; we adopt Patent Owner’s proposed construction because it is a slightly broader reasonable interpretation.” slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “The original claims of the ’217 patent were rejected as anticipated by Curtis, which had pulsed-jet aerators in the cone of the pressure vessel. Ex. 2017, 232, 3:7–11, 6:59–64. After a telephone interview, during which the Examiner and Patent Owner “[d]iscussed [a] proposed amendment” (id. at 284), the Examiner proposed an Examiner’s Amendment adding that the conveyance gas was “the sole means for inducing movement [of the material]” (see, e.g., id. at 322). The Examiner set forth the scope of the “sole means” limitation: “heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent are precluded. The conveyance gas is not a fluidizing agent.” Id. Amending the claims to include the “sole means” limitation, along with the Examiner’s accompanying explanation of its scope, are clearly and unmistakably the reasons for issuance of the ’217 patent. See Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1327 (Fed. Cir. 2009) (prosecution history “provides evidence of how the [PTO] and the inventor understood the patent” (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (alteration in original)). The application that was issued as the ’062 patent is a direct continuation of the application that issued as the ’217 patent. The claims in the ’062 patent application did not have the “sole means” limitation required by the Examiner for allowance of the ’217 patent. Instead, the claims included the “without employing non-pneumatic means” limitation. The ’062 patent application received an obviousness-type double patenting rejection in the first Office Action, where the Examiner stated “[a]lthough the [claims in the ’217 patent and the present application] are not identical, they are not patently distinct from each other because the instant apparatus claim(s) are too close in scope with the patented method claim(s).” Ex. 2019, 629. Patent Owner did not traverse that rejection and filed a terminal disclaimer; the claims were thereafter allowed. Our understanding of the prosecution history of the ’062 patent is that the Examiner did not consider the “without employing” limitation to be meaningfully broader than the “sole means” limitation, or the Examiner would have re-instated the Curtis rejection. Instead, the Examiner stated the claims were “not patently distinct.” Ex. 2019, 629. In other words, the Examiner considered the claims in the ’062 patent to also have “precluded” “heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent.” Ex. 2017, 322. Patent Owner acquiesced to the Examiner’s statement that the claims are not patentably distinct by not traversing the double patenting rejection and filing a terminal disclaimer to secure allowance of the claims. Ex. 2019, 651 (“please find enclosed a TERMINAL DISCLAIMER in response to the double patenting rejection”). See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1097 n.6 (Fed. Cir. 2013) (disclaimer arose where the applicants “let[ ] stand an examiner’s narrow characterization of a claim term” and “adopt[ed] ... that characterization to overcome the examiner’s ... rejection”); TorPharm Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1330 (Fed.Cir.2003) (“Whether the patentee chooses to dispute the examiner’s view of matters is relevant to claim interpretation, for there a court may need to ascertain exactly what subject matter was actually examined and allowed by the PTO.”). Thus, the prosecution history of the ’062 patent simply continues the prosecution history of the ’217 patent, and leaves intact the Examiner’s and Patent Owner’s understanding regarding the scope of the amendment responsible for allowance. Accordingly, we construe the “without employing” limitation the same as the “sole means” limitation of the ’217 patent: heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent are precluded. The conveyance gas is not a fluidizing agent.” slip op. at 19

  Patent outcomesUS 7,186,062 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,186,062
• Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.All claims unpatentable
  PTAB · May 23, 2017 · IPR2016-00260 · APJ Richard E Rice · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Dietzen I, Dietzen II, Ciaffone, Laster, and Pneumatic Conveying.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not agree with Patent Owner that Petitioner’s definition of the person of ordinary skill in the art is unreasonably high, and we adopt Petitioner’s definition for purposes of our Final Written Decision. While Petitioner’s definition requires five years of design experience at the bachelor’s degree level of education, Patent Owner’s definition does not require any design experience at all. We agree with Petitioner that a person of ordinary skill in the art designs devices, and, thus, actively monitors the relevant technical literature, rather than is merely familiar with devices (e.g., an operator or a manufacturer), as proposed by Patent Owner. See Ex. 1032 ¶ 28; Ex. 1003, 2:59–61 (indicating that those skilled in the art would understand “that the critical cone angle will vary depending upon the material being conveyed”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 16

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

    “1. Claim Preambles The preambles of independent claims 1 and 12 recite, respectively, “[a]n apparatus adapted for use on an oil well drilling rig for conveying nonfree flowing drill cuttings” and “[a] system for conveying non-free flowing oil well drill cuttings.” In the Institution Decision, we determined preliminarily that the preambles are limiting. Inst. Dec. 8. As neither party proposes any change to our interpretation, and our review of the full record developed at trial does not indicate that any change is necessary, we maintain that interpretation.” slip op. at 9

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

    “We agree with aspects of both parties’ proposed claim constructions. We agree with Petitioner that the term “non-free flowing drill cuttings” refers to the resultant mixture of cuttings and drilling mud after screening (which we understand to include similar processing to separate drill cuttings from drilling mud, such as centrifuging). See Ex. 1003, 1:42–46, 62–64; 6:15–16; cf. Ex. 2053 ¶10; Ex. 2058 ¶ 86. We agree with Patent Owner that the source of the resultant mixture is the drilling of an oil well, and that the mixture includes earth (drill cuttings) and drilling fluid or oil.12 See Ex. 1003, 1:31–46; Ex. 2058 ¶¶ 85–88. We do not agree with Patent Owner’s proposal to construe “non-free flowing drill cuttings” as drill cuttings that do not generally flow freely by gravitational force. There is insufficient support in the Specification for that proposal. The Specification does not distinguish between different types of screened drill cuttings, for example, screened drill cuttings that generally flow freely by gravitational force and those that do not. While the Specification describes screened drill cuttings in various ways, it is always referring to the same material. For example, the Specification refers explicitly to “thick, heavy pastes which are normally difficult to move and handle” (Ex. 1003, 1:28–29), “[screened] cuttings . . . transported ashore in the form of a very thick heavy paste” (id. at 1:42–46), “thick heavy paste material (e.g., drill cuttings)” (id. at 1:63–64), “a thick heavy paste” (id. at 1:67), “a non-free flowing paste” (id. at 2:6–7), “[t]he non-free flowing 12 See Ex 1003, 1:35–38 (calling drilling fluid a special type of oil used as a lubricant”). paste may be a thick and/or heavy paste or clay like material, e.g. oil rig drill cuttings” (id. at 2:10–11), and “a thick heavy paste” (id. at 3:9–10). As such, the Specification characterizes screened drill cuttings as a thick heavy paste as well as a non-free flowing paste and, thus, considers a thick heavy paste to be a non-free flowing paste. We determine that the broadest reasonable interpretation consistent with the Specification of “non-free flowing drill cuttings” is “screened drill cuttings, i.e., screened material, generated by the drilling of an oil well, including a mixture of earth and drilling fluid or oil.”” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Conventional terms ('about', 'substantially', 'a'/'an', 'configured to')Term construed board ownDecided for patent owner

    “We disagree. The disclosure in the Specification that the pressure vessel for conveying non-free flowing drill cuttings may be “similar to” the Clyde vessel indicates that the vessels have characteristics in common, but does not indicate clearly that the Clyde vessel could be used, without modification, to convey non-free flowing drill cuttings. For the reasons given above and in the Institution Decision, we maintain our interpretation that “adapted [for/to]” as used in the claims means “made [for/to]” or “designed [for/to].” See Inst. Dec. 9.” slip op. at 13

  Patent outcomesUS 7,033,124 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,033,124
• Palo Alto Networks, Inc. / Symantec Corp. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 15, 2017 · IPR2016-00919 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–8, 10, and 11 were not shown unpatentable: Khazan did not teach invocation of the second function only if safe, and the asserted three-reference combination lacked a sufficient motivation to combine.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “reference to a “data container” (id. at 13:5152) and “network content” (id. at 4:3737), the concern over scripts embedded in web pages or “other web content” (id. at 1:3739), we conclude that the Specification of the ’154 patent uses the claimed “content” to refer broadly to the data or information, modified for processing, that the client receives from the network, where, in the case of the Internet, it may refer to a web page and its elements. This interpretation is consistent also with the meaning of the term in the art, as evidenced by dictionaries concerning computing and engineering. See content, Microsoft Computer Dictionary, 125 (5th ed. 2002) (Ex. 3002) (defining “content” as (1) “the data that appears between the starting and ending tags of an element in an SGML, XML, or HTML document. The content of an element may consist of plain text or other elements,” (2) “The message body of a newsgroup article or e-mail message;” and (3) “The ‘meat’ of a document, as opposed to its format or appearance.”); see also content, WILEY ELECTRICAL AND ELECTRONICS ENGINEERING DICTIONARY, 142 (2004) (Ex. 3001) (“Information, especially that which is available online, which may be any combination of text, audio, video, files, or the like.”). Accordingly, under the broadest reasonable interpretation in the context of the Specification and the surrounding claim language, we conclude that “content” is data or information, which has been modified and is received over a network.” slip op. at 13

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

    “first function.” The Specification, however, does use the phrase “function call” to state that “before the client computer invokes a function call that may potentially dynamically generate malicious code, the client computer passes the input to the function to the security computer for inspection.” Ex. 1001, 4:3743 (emphasis added). The Specification also states that “the present invention operates by replacing original function calls with substitute function calls within the content, at a gateway computer, prior to the content being received at the client computer.” Id. at 4:5760. Therefore, we understand the Specification to use the phrase “function call” in the same sense as the phrase “call to a [] function.” That is, a program instruction specifies the function name and its parameters, where execution of the instruction results in the function providing a service. Thus, we find the dictionary definition of the term “function call” applicable here and indicative of the meaning of the term to a person of ordinary skill in the art.” slip op. at 14

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

    “Id. (displaying a stamp labeled “Engineering Periodicals, University of Washington, Jan 31, 2000”). Additionally, the cover page includes a label stating “Engineering Library Display Periodical Noncirculating until: Mar 08 2000.” Id. The stamps and labels are described by Mr. Melvin (“Mel”) DeSart, Head of the University of Washington Engineering Library, as evidence that the Library’s process was to stamp a received periodical and to affix a label when the periodical was chosen for display at the Engineering Library Display Periodicals area. Ex. 1036 ¶ 2. According to DeSart, the stamp and label convey that the article was received (and, therefore, stamped) at the University of Washington Libraries, on January 31, 2000, and was redirected to the Engineering Library, where it was added to the display and made “publicly available” from February 8, 2000 until March 8, 2000. Id. ¶ 3. We credit DeSart’s testimony regarding the normal business practices of the Library at which he is employed since March 2000. Id. ¶ 1. His opinion is based on personal knowledge of these business practices and his familiarity with the Library’s business records. Id.; Ex. 2006, 14:515:20. The copy of the article, with the first page we discuss above, is a copy of the periodical maintained by the Library in its ordinary course of business, and is authenticated as such. Id. ¶ 3. Further indicia of publication supports our determination that Sirer is a printed publication. The copyright page of the Library copy provides for limited rights to copy and “republish” with permission and/or a fee by contacting the publications department of ACM. Id., 5. That page also includes an ACM ISBN number (1-58113-140-2) and instructions on how to order additional copies, information which is also included in the footer of Exhibit 1004, indicating that copies of the periodical were available from ACM without restriction. Id. Therefore, based on the foregoing, we conclude that Sirer is a printed publication. Moreover, considering the dates on the face of the article, the circumstances surrounding the receipt of the periodical at the library, and the business practice of circulating periodicals at the Engineering Library, we determine that Sirer’s date of publication is evident as of February 8, 2000, when the Library would have displayed the periodical, and as early as January 2000, when a subscriber to the periodical, such as the Library of Washington, would have received the periodical.12 See Ex. 2006, 17:615 (DeSart testifying that journals published by ACM were received directly from the publisher under a subscription); 21:2222:8.” slip op. at 25

  • Skill levelSkill level board ownOther

    “level of ordinary skill that is different from Petitioner’s. Ex. 2002 ¶ 35. In Particular, Dr. Medvidovic opines that a person of ordinary skill in the art would have a “bachelor’s degree in computer science or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” Id. In comparison, it appears that the minimum experience under Patent Owner’s proffered level of skill is one year less than Petitioner’s. Also, Patent Owner proffers an alternative to work experience, namely an advanced degree. There is no specific articulation regarding how the difference of one year experience or the proposed alternative of an advanced degree in lieu of experience tangibly affects our obviousness inquiry. Further, there is no evidence in this record that the differences noted above impact in any meaningful way the level of expertise of a person of ordinary skill in the art. Indeed, we note that Dr. Medvidovic’s opinions would not change if he had considered instead the level or ordinary skill in the art proffered by Dr. Rubin. Id. ¶ 38. Accordingly, we determine that in this case no express definition of the level of ordinary skill in the art is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 17

  Patent outcomesUS 8,141,154 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,141,154
• Palo Alto Networks, Inc. / Symantec Corp. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 15, 2017 · IPR2015-01979 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–8, 10, and 11 were not shown unpatentable: Khazan does not teach conditional invocation of the second function, and the proposed three-reference combination lacks adequate motivation.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “Patent Owner’s expert Dr. Medvidovic disagrees with Dr. Rubin’s opinion that instrumentation can occur in many hosts. Ex. 2002 ¶ 71. His testimony is unconvincing, however. Dr. Medvidovic does not address Dr. Rubin’s assessment that Khazan teaches instrumentation on a host that is different from the host that executes the wrapped function. Instead, Dr. Medvidovic asserts that Khazan does not disclose applications received through a network. Id. Further, Dr. Medvidovic opines that Khazan addresses viruses that infect applications resident within a computer’s file rather than in content received over a network. Id. We find that Dr. Medvidovic’s statements do not address Petitioner’s contention and ignore relevant teachings of Khazan. For instance, Khazan teaches that each host accesses information stored in data storage devices using a network (communication medium). Ex. 1003 ¶ 33. And any of Khazan’s components—e.g., static analyzer, dynamic analyzer, libraries, application executable, etc.—may be stored in the data storage system. See id. ¶ 72 (describing Figure 4A, which also lists the various lists 106, 111, 112). Therefore, we do not agree with Patent Owner’s narrow assessment of Khazan, which would limit application of Khazan’s techniques exclusively to a file resident in the host, rather than on content received over a network. Indeed, Khazan expressly discloses an embodiment in which instrumentation is performed “before invocation of the application” allowing for the instrumented library (or application) to be stored on a storage device. Ex. 1003 ¶ 75. That storage device, as discussed above, is accessed via a network. Accordingly, it is reasonable to conclude, and we find that, Khazan teaches or suggests that any host may receive over the network (communication medium 18) instrumented applications or libraries for processing at the host.” slip op. at 36

  • Skill levelSkill level board ownOther

    “level of ordinary skill that is different from Petitioner’s. Ex. 2002 ¶ 35. In Particular, Dr. Medvidovic opines that a person of ordinary skill in the art would have a “bachelor’s degree in computer science or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” Id. In comparison, it appears that the minimum experience under Patent Owner’s proffered level of skill is one year less than Petitioner’s. Also, Patent Owner proffers an alternative to work experience, namely an advanced degree. There is no specific articulation regarding how the difference of one year experience or the proposed alternative of an advanced degree in lieu of experience tangibly affects our obviousness inquiry. Further, there is no evidence in this record that the differences noted above impact in any meaningful way the level of expertise of a person of ordinary skill in the art. Indeed, we note that Dr. Medvidovic’s opinions would not change if he had considered instead the level or ordinary skill in the art proffered by Dr. Rubin. Id. ¶ 38. Accordingly, we determine that in this case no express definition of the level of ordinary skill in the art is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 17

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

    “We credit DeSart’s testimony regarding the normal business practices of the Library at which he is employed since March 2000. Id. ¶ 1. His opinion is based on personal knowledge of these business practices and his familiarity with the Library’s business records. Id.; Ex. 2006, 14:515:20. The copy of the article, with the first page we discuss above, is a copy of the periodical maintained by the Library in its ordinary course of business, and is authenticated as such. Id. ¶ 3. Further indicia of publication supports our determination that Sirer is a printed publication. The copyright page of the Library copy provides for limited rights to copy and “republish” with permission and/or a fee by contacting the publications department of ACM. Id., 5. That page also includes an ACM ISBN number (1-58113-140-2) and instructions on how to order additional copies, information which is also included in the footer of Exhibit 1004, indicating that copies of the periodical were available from ACM without restriction. Id. Therefore, based on the foregoing, we conclude that Sirer is a printed publication. Moreover, considering the dates on the face of the article, the circumstances surrounding the receipt of the periodical at the library, and the business practice of circulating periodicals at the Engineering Library, we determine that Sirer’s date of publication is evident as of February 8, 2000, when the Library would have displayed the periodical, and as early as January 2000, when a subscriber to the periodical, such as the Library of Washington, would have received the periodical.12 See Ex. 2006, 17:615 (DeSart testifying that journals published by ACM were received directly from the publisher under a subscription); 21:2222:8. We also find that skilled artisans exercising reasonable diligence would have been able to locate Sirer. In addition to the accessibility of the article on the library display area and on shelves, DeSart testified that the periodical containing the Sirer, “Operating Systems Review,” was catalogued in the library’s electronic catalog. Ex. 2006, 10:1311:23. The periodical could be searched by the title of the periodical and its keywords. Id.; 30:1431:9.” slip op. at 25

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

    “We find that Petitioner has not explained sufficiently how the reference’s teachings would be combined in order to achieve the claimed limitations. For instance, Petitioner’s assertion that the combination is predictable because the references continue to do what they did prior to the combination (Ex. 1002 ¶ 125) is conclusory and unreasonable in light of the various and necessary, yet unexplained modifications of Khazan’s teachings for combinability with those of Sirer and Ben-Natan.” slip op. at 60

  Patent outcomesUS 8,141,154 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,141,154
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Queen’S University At KingstonAll claims unpatentable
  PTAB · Jul 27, 2016 · IPR2015-00583 · APJ Richard E Rice · IPR · Final written decision

  Claims 1–6, 8–13, 15, 16, and 18–20 are unpatentable, including as anticipated by Goldstein and Ho and obvious over Horvitz and Tognazzini.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “A. Level of Skill in the Art The parties do not appear to disagree on the level of skill in the art. See Ex. 1003 ¶ 12; Ex. 1085 ¶¶ 12, 106; Ex. 2007 ¶ 19; Ex. 2008 ¶ 11; Pet. 4; PO Resp. 14. We agree with, and adopt for purposes of this Decision, the level of skill advanced by Dr. Balakrishnan, i.e., that “a person having ordinary skill in the art [‘POSA’ or ‘POSITA’] would have had a bachelor’s degree or higher degree in Computer Science or Computer Engineering or the equivalent, and at least several years of experience in user interface development,” and that “[l]ess education could be compensated by more direct experience and vice versa.” Ex. 2007 ¶ 19. We also agree with, and adopt for purposes of this Decision, Dr. Essa’s observation that “many people were working on eye sensing technology” and “the relative skill of those in the art was relatively high.” Ex. 1085 ¶ 106.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “modulating of an operation is essentially triggered by time (i.e., comparing multiple scans over a predetermined time threshold)—in stark contrast to the claimed features where the modulation of an operation is triggered based on the instant a user’s attention is not directed toward the device or attention is redirected toward the device. PO Resp. 39 (emphasis added) (citing Ex. 2007 ¶¶ 120–126, 130–133). Dr. Balakrishnan explains this asserted instantaneous, or immediate, triggering requirement as follows: Modulating based on attention described by the ’665 patent is only useful when the modulation occurs immediately in response to a determination that the user is either paying attention or not paying attention. For example, in the [’]665 patent’s augmented television device, if the television is configured to pause audiovisual material when the user is not paying attention, the pausing operation should occur immediately when it is determined that the user’s attention is not directed toward the device (e.g., glint, pupil and camera are not aligned on the camera axis). Immediate pausing is necessary so that the user does not miss any portion of the audiovisual material. If the television did not pause immediately, then the ’665 patent’s modulation would prove to be ineffective and indeed not a true modulation based on the user’s attention toward the device, as claimed. The same holds true for the ’665 patent’s attention monitor example, where a user would need immediate re-routing or prioritization of messages/calls, in order for the modulation of the operation based on the user’s attention to prove meaningful to properly appreciate the significant differences between Ho and the claimed invention of the ’665 patent. Ex. 2007 ¶ 126 (emphasis added). We do not agree with Dr. Balakrishnan that modulating based on attention, as described in the ’665 Patent, is useful only when the modulation occurs immediately in response to a determination that the user is or is not paying attention. See id. As Petitioner argues, Dr. Balakrishnan’s analysis fails to consider examples described in the ’665 Patent that require monitoring attention over time. See Pet. Reply 16; Ex. 1001, 12:42–53, 14:35–51, 17:37–49; 18:62–65; Ex. 1068, 187:7–193:22. In one example described in the ’665 Patent, “attentive user interfaces employing eye contact sensors or other related eye tracking technology may be used to initiate the retrieval of information on the basis of progressive disclosure.” Ex. 1001, 17:37–40. “For example, information may initially be shown with limited resolution on the side of a display.” Id. at 17:40–42. If the user looks at that information “for a set amount of time, [however,] more detailed information is retrieved and rendered on the screen using a larger surface.” Id. at 17:42–45. “Examples include stock market tickers that grow and provide more information when users pay attention to it.” Id. at 17:45–46. Accordingly, we are not persuaded by Patent Owner that “modulating” slip op. at 8

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

    “We agree with Petitioner that the signal from processor 46 to text presentation control 48 is “a measure or index of the user’s attention toward the device.” As disclosed in Goldstein, processor 46, which is contained within mobile device 10, performs a geometric calculation to determine the direction of the reader’s point of gaze based on data received from sensor 20. Ex. 1005 ¶ 31, Fig. 3. “If processor 46 determines that the reader’s point of gaze has moved out of the display window 12 since the last computation, processor 46 sends a signal to a text presentation control 48 to pause further presentation of text on the display window.” Id. ¶ 31. “Thereafter, processor 46 will signal control 48 to resume presentation, upon determining that the reader’s point of gaze is again focused upon the text in window 12.” Id. The signal from processor 46 to text presentation control attention toward the device, as determined by measurement or calculation, and thus is a “measure” of the user’s attention under our claim interpretation. See supra Section II.B.1. Patent Owner has not persuaded us that a simple binary control signal cannot be a measure or index of a user’s attention toward a device. Indeed, the ’665 Patent expressly describes using “eye contact sensors,” for example, with “televisions and other audiovisual content delivery systems . . . to determine whether [their] content is being viewed, and to take appropriate action when it is no longer viewed.” Ex. 1001, 15:13–14; see id. at 6:57–61. A binary signal determined by calculation of eye contact/no eye contact accords with our interpretation of “measure,” discussed above, in that it indicates the extent, quantity, amount, or degree of something, as determined by measurement or calculation. See supra Section II.B.1. c) Summary For the reasons given, we conclude that Petitioner has shown by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 102(e) as anticipated by Goldstein.” slip op. at 20

  • BurdenDecided for petitioner

    “b) Enablement (1) The Shifting Burdens of Production As Petitioner contends, prior art printed publications are presumptively enabling. Pet. Reply 7 (citing In re Antor Media Corp., 689 F.3d 1282, 1287–88 (Fed. Cir. 2012); Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003)); accord Google, Inc. v. Jongerious Panoramic Techs., LLC, IPR2013-00191, slip op. at 37 (PTAB Aug. 12, 2014) (Paper 70). In view of that presumption, Petitioner satisfied its initial burden of production with respect to its anticipation challenge to claim 11 based on Goldstein by arguing persuasively that Goldstein’s disclosure was anticipating. See Amgen, 314 F.3d at 1355; Impax Labs., Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1316 (Fed. Cir. 2008); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). The burden of production then shifted to Patent Owner to argue or to produce evidence that Goldstein actually does not anticipate, or that its relevant disclosures are not pertinent prior art, for example, as Patent Owner argues in this case, because they are not enabled. See Amgen, 314 F.3d at 1355; Dynamic Drinkware, 800 F.3d at 1380.4 4 As Patent Owner notes, the ultimate burden of persuasion in this inter partes review is on Petitioner to prove “unpatentability by a preponderance” slip op. at 22

  Patent outcomesUS 7,762,665 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,762,665
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Queen’S University At KingstonAll claims unpatentable
  PTAB · Jul 27, 2016 · IPR2015-00584 · APJ Richard E Rice · IPR · Final written decision

  Claims 1–6, 8–16, 18, 19, and 21 are unpatentable, including as anticipated by Goldstein and Ho and as obvious over Horvitz and Tognazzini.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “II. ANALYSIS A. Level of Skill in the Art The parties do not appear to disagree on the level of skill in the art. See Ex. 1003 ¶ 12; Ex. 1085 ¶¶ 12, 106; Ex. 2007 ¶ 19; Ex. 2008 ¶ 11; Pet. 4; PO Resp. 14. We agree with, and adopt for purposes of this Decision, the level of skill advanced by Dr. Balakrishnan, i.e., that “a person having ordinary skill in the art [‘POSA’ or ‘POSITA’] would have had a bachelor’s degree or higher degree in Computer Science or Computer Engineering or the equivalent, and at least several years of experience in user interface development,” and that “[l]ess education could be compensated by more direct experience and vice versa.” Ex. 2007 ¶ 19. We also agree with, and adopt for purposes of this Decision, Dr. Essa’s observation that “many people were working on eye sensing technology” and “the relative skill of those in the art was relatively high.” Ex. 1085 ¶ 106.” slip op. at 6

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

    “1. “measure” In our Institution Decision, we preliminarily determined that the broadest reasonable interpretation consistent with the Specification of the claim term “measure” is “the extent, quantity, amount, or degree of something, as determined by measurement or calculation.” Inst. Dec. 9. As neither party proposes any change to our interpretation, and our review of the evidence does not indicate that any change is necessary, we maintain that interpretation. 2. “a measure or index of the user’s attention toward the device” Claim 1 recites “a processor that . . . outputs to the device a measure or index of the user’s attention toward the device” (emphasis added). In our Institution Decision, we preliminarily determined that the broadest reasonable interpretation consistent with the Specification of “a measure or index of the user’s attention toward the device” is “a measure or index of the user’s attention toward all, or any portion, of the device.” Id. at 7. As neither party proposes any change to our interpretation, and our review of the evidence does not indicate that any change is necessary, we maintain that interpretation.” slip op. at 7

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

    “Ex. 2007 ¶ 126 (emphasis added). We do not agree with Dr. Balakrishnan that the modulation based on attention, as described in the ’660 Patent, is useful only when the modulation occurs immediately in response to a determination that the user is or is not paying attention. See id. As Petitioner argues, Dr. Balakrishnan’s analysis fails to consider examples described in the ’660 Patent that require monitoring attention over time. See Pet. Reply 16; Ex. 1001, 13:9–20, 15:4–21, 18:9–21; 19:34–37; Ex. 1068, 187:7–193:22. In one example described in the ’660 Patent, “attentive user interfaces employing eye contact sensors or other related eye tracking technology may be used to initiate the retrieval of information on the basis of progressive disclosure.” Ex. 1001, 18:9–12. “For example, information may initially be shown with limited resolution on the side of a display.” Id. at 18:12–14. If the user looks at that information “for a set amount of time, [however,] more detailed information is retrieved and rendered on the screen using a larger surface.” Id. at 18:14–17. “Examples include stock market tickers that grow and provide more information when users pay attention to it.” Id. at 18:17– 18. Accordingly, we are not persuaded by Patent Owner that “modulated on the basis of the measure or index of the user’s attention toward the device” requires instantaneous, or immediate, triggering. To the contrary, as described in the ’660 Patent, operation of the device may be modulated on the basis of a measure or index of the user’s attention toward the device over a period of time.” slip op. at 9

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

    “D. Asserted Anticipation by Goldstein To anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claim limitations, it anticipates, even though artisans of ordinary skill may not have recognized the inherent characteristics or functioning of the prior art. MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (citation omitted); In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349–50 (Fed. Cir. 2002).” slip op. at 13

  Patent outcomesUS 8,096,660 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,096,660
• Terumo BCT, Inc. v. Noble House Group Party Ltd.All claims unpatentable
  PTAB · Jun 24, 2016 · IPR2015-00379 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 6, 14, and 16 are unpatentable under § 103(a) over the SSK Pamphlet and Ishida because their combination renders the claimed sampling apparatus obvious.

  RulingsFinal written decision

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

    “review, we determined that no terms of the claims of the ’921 patent acquired any special meaning. Thus, all terms were afforded their broadest reasonable meaning as would be understood by a person of ordinary skill in the art in light of the Specification. Inst. Dec. 6. We made explicit that meaning for a single claim term: “frangible barrier.” Id. In that regard, we determined that the ordinary meaning of “frangible barrier” is a “seal that impedes the flow of a fluid until physically broken.” Id. Neither party offers an alternative construction for the term “frangible barrier,” and based on the record developed during trial, we do not alter the meaning expressed above.” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “TBCT submits that a person having ordinary skill in the relevant art would be: a medical device designer with a Bachelor of Science degree in engineering, such as mechanical, industrial, biomedical engineering, or an equivalent technical degree with at least 5-7 years of experience in the field; or a person with an advanced degree in bio-medical engineering, with fewer years of experience, but at least some years of experience in the field; or a person who has worked in the field for at least 15 years. (Ex. 1007, ¶¶ 13-17.)” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner

    “a. The SSK Pamphlet4 The SSK Pamphlet is a document described as being directed to “Bacterial Detection Ancillaries,” and discloses a “SampLok Sampling Kit (SSK)” and a “Platelet transfer kit.” Ex. 1005. A portion of the SSK Pamphlet is reproduced below: 4 In instituting trial, we were satisfied, on the record that was before us, that the SSK Pamphlet constituted prior art. Inst. Dec. 10–11. Noble does not challenge that determination in its Patent Owner Response. Neither does the record, as developed during trial, give reason to revisit that determination in connection with this Final Written Decision. Accordingly, we regard the SSK Pamphlet as prior art to the ’921 patent.” slip op. at 7

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

    “blood collecting or sampling devices are understood in the art as incorporating a clamp assembly operable to close off an inlet tube during the operation of the device, in conjunction with additional tube sealing components. Indeed, the SSK Pamphlet contemplates two such additional seals, namely: (1) a seal at the tube end formed “at manufacture”; and (2) a heat seal applied at some time at the position designated “heat seal location.” In similar fashion, Ishida conveys that, in addition to clamping components such as clamp 33, sealing member 93 is employed for inhibiting flow within blood collecting apparatus 1. Thus, the prior art unmistakably conveys that clamps operating together with additional types of seals were known in blood collecting/sampling devices. Noble’s contradictory position does not reflect appropriate consideration of how a person of ordinary skill in the art would have viewed the teachings of the prior art. In that respect, Noble does not reconcile its position to the contrary with the clear and unambiguous teachings of the prior art.” slip op. at 10

  Patent outcomesUS 8,777,921 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,777,921
• HM Electronics, Inc. v. 3M Innovative Properties CompanyAll claims unpatentable
  PTAB · Apr 18, 2016 · IPR2015-00482 · APJ James P Calve · IPR · Final written decision

  Claims 1–32 are unpatentable as obvious over the three combinations of prior art references considered by the Board.

  RulingsFinal written decision

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

    “Our interpretation also is consistent with the ’040 patent specification, which discloses that the present invention “allow[s] the intercom system of an establishment to be remotely adjusted by a technician or other user without the need for such technician or other user to be dispatched to the establishment itself, saving both a considerable amount of both time and money.” Ex. 1001, 2:33–37; 6:15–20. A service technician can access the intercom system remotely via a wide area network 20 such as the internet “from great distances” (id. at 2:38–41), but the main advantage of the remote accessibility is that a technician may resolve an issue with intercom system 12 quickly, without traveling to the site of establishment 10 (id. at 6:26–38).” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with HME’s contention and adopt it as the level of ordinary skill. We find persuasive Mr. Hoeptner’s testimony that at least five years of experience was desirable based on his experience designing and developing professional audio and quick service restaurant intercoms. Ex. 1005 ¶¶ 1, 5, 8–10. In contrast, Mr. Gafford lacks experience designing intercom systems and relies on experience as a litigation consultant and patron of quick service restaurants. See Ex. 1016, APP3217:17–APP3220:25; Ex. 2003 ¶¶ 4–10, 12.” slip op. at 27

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

    “We find that the HME Pro850 manual was publicly accessible to persons interested and ordinarily skilled in the art. The principal basis for this finding is Mr. Hoeptner’s testimony that approximately 140 copies of the Pro850 manual (Exhibit 1009), were disseminated to the customers who purchased a Pro850 system, beginning in September 2003 and extending to February 10, 2005. Ex. 1005 ¶¶ 6–7. These copies of the Pro850 Manual (Exhibit 1009) were disseminated sufficiently at the time of its publication and more than one year before the February 10, 2006 critical date of the ’040 patent (id.) to constitute a printed publication under 35 U.S.C. § 102(b).” slip op. at 22

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

    “We agree with HME that a skilled artisan would have been motivated to modify the HME Wireless 6000 quick service restaurant intercom system to include this more “advanced” networking feature of the HME Pro850 to permit review and adjustment of intercom parameters on a computer that provides a better user interface. The improved computer interface allows a technician or other user to access all system parameters from a single screen, as shown above in the top first diagram reproduced above. See Pet. 18. The HME Pro850 itself teaches that “[a] particularly useful feature of the PC850 is the ability to display (and alter) the audio connection matrix. This window shows all possible and active audio connections.” Ex. 1009, APP2850; see Pet. 18, 27–28. The HME Pro850 teaches that a user can make all Pro850 base station and beltpac settings, i.e., parameter settings, on the networked PC and “save the settings to files.” Ex. 1009, APP2849; Pet. 18. A person using the networked PC can “view input and output audio levels” and “edit base and beltpac settings.” Ex. 1009, APP2850; Pet. 28. We also agree with HME that a skilled artisan would have appreciated that adding this feature to the Wireless 6000 would have allowed intercom audio parameters to be set and adjusted more easily and saved in groups/files as a template(s) of parameters as taught by the Pro850. See Pet. 17–19, 23–25. We agree with HME that this modification uses known technology” slip op. at 41

  Patent outcomesUS 8,694,040 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 8,694,040

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.