- Duration Media LLC v. Rich Media Club LLCNo claims unpatentablePTAB · Aug 19, 2024 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1–10 were not proven unpatentable under either §103 ground because the evidence did not show the claimed viewability determination.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s argument persuasive. Indeed, it is unclear how Petitioner’s proposal accounts for the types of problems encountered in the art or prior art solutions to those problems. See Daiichi Sankyo, 501 F.3d at 1256 (identifying these factors, among others, as “a guide to determining the level of ordinary skill in the art”). Nor does Petitioner, in its Reply, address, let alone rebut, Patent Owner’s arguments that a person of ordinary skill in the art would have had some experience and/or knowledge in internet advertising. See generally Pet. Reply. Patent Owner proposes that a “person of ordinary skill in the art would have a bachelor’s degree in computer science or a similar major involving computer programming (or at least four years of practical computer programming experience) and at least two years of experience (in or out of college) in the field of internet advertising.” PO Resp. 12 (citing Ex. 2045 ¶54). We agree that a person of ordinary skill in the art would have some experience in internet advertising, although we fail to see why one year would not be enough to familiarize sufficiently a computer scientist and/or programmer with the types of problems encountered in the art or prior art solutions to those problems. Based on the competing proposals, arguments, and evidence before us, we adopt and apply the following level of skill in assessing Petitioner’s challenges to the patentability of the claims of the ’329 patent: a person that would have had a bachelor’s degree in computer science, computer engineering, or electrical (or similar) engineering with about three years of experience being in the field of internet advertising.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Petitioner’s resurrected argument is based on a fundamental misunderstanding of § 311(b). Section 311(b) provides: “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 cancel the claims of the ’329 patent on the basis of Badros, Harkins, and Krassner. Pet. 11. Petitioner did not base its request, in whole or in part, on the Krassner publication. Id. Krassner clearly is a patent. It issued on August 13, 2019, far too late to be § 102(b) prior art. Even if we assume Krassner is also a “printed publication” withing the meaning of § 311(b), the same date would apply: August 13, 2019. Petitioner has not presented any evidence that the document that is Krassner was published prior to when it issued on August 13, 2019. That another document (the Krassner publication), which published much earlier, may contain the same or similar disclosure is not relevant to when Krassner was patented or published. In sum, Krassner is not prior art under 35 U.S.C. § 102(b). b) Whether Krassner is Prior Art Under 35 U.S.C. § 102(e) Although Krassner is not prior under 35 U.S.C.§ 102(b), we” slip op. at 13
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Petitioner responds that, contrary to Patent Owner’s argument, “Harkins teaches that its invention can be used in web pages.” Pet. Reply 18 (citing Ex. 1004 ¶30). Although Petitioner’s citation is off by one paragraph, Petitioner’s response about what Harkins teaches is correct. See Ex. 1004 ¶29 (“The present invention may be implemented for provision of virtually any type of advertising (e.g., print, radio, television, Internet, billboard, etc.) via any type of advertising medium (e.g., newspaper, magazine, radio broadcast, Web pages, billboards, etc.) without departing from the scope of the present invention.”). We find that Harkins is from the same field based on its express statement that it is applicable to “virtually any type of advertising” and “any type of advertising medium,” including “Web pages.” Ex. 1004 ¶29. Further, even if this were insufficient to place Harkins in the same field as the ’329 patent, we find that Harkins is reasonably pertinent to the particular problems with which the ’329 patent inventors were involved. In sum, we find that Harkins is analogous art to the ’329 patent.” slip op. at 19
- Strike new argumentNew argument disregardedGranted
“Paper 60 (“PO Mot. To Exclude”), 9–10.6 Patent Owner is correct in this regard and, thus, we grant Patent Owner’s Motion to Exclude with respect to the testimony in the second Smedley Declaration and the Madansky Declaration opining that Badros teaches the determination limitation. Paper 60, 9–12. Petitioner, in its Opposition to the Motion to Exclude, argues that Patent Owner’s arguments about the “viewability test” were “surprising.” Paper 62, 8. We are not persuaded by Petitioner’s argument. The “viewability test” is a claim limitation. Petitioner should have anticipated that Patent Owner would argue that limitation. See In re Gardner, 449 F. App’x 914, 916 (Fed. Cir. 2011) (“This court has held that when evaluating claims for obviousness under 35 U.S.C. § 103, all the limitations of the claims must be considered and given weight.” (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983)); Univ. of Strathclyde v. 6 Patent Owner’s Motion to Exclude seeks to exclude, in part or in whole, Exhibits 1020–1022, 1025–1030, and 1034–1040, which were submitted with Petitioner’s Reply, of which Exhibits 1026 and 1027 are the declaration by Dr. Madansky and the second declaration by Dr. Smedley, respectively. Mot. To Exclude. The Motion to Exclude also seeks to exclude “Exhibits” 1017 and 1018, which are not filed or of record in this case but which are referenced in the Reply. Id. For example, Exhibit 1017 is the Krassner publication, which Petitioner unsuccessfully moved to add to the record as supplemental information. See Paper 21, 3 n.1 (expunging the Krassner publication and stating that it “need not -- and indeed may not -- be re-filed under a new exhibit number”). Apart from the portions of Dr. Smedley’s second declaration and Dr. Madansky’s declaration opining that Badros teaches the “determination” limitation, we dismiss the Motion to Exclude as moot. obviousness determination generally requires a finding that “all claimed limitations are disclosed in the prior art’.” (citing PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014)). Petitioner argues that “[v]iewability tests were well known for well over a decade prior to the ’329 patent’s priority date.” Reply 9. If that were the case, then Petitioner should have made its argument in the Petition. Section 312(a) of Title 35 is titled “Requirements of Petition,” and it specifies that a petition must identify, among other things, “the evidence that supports the grounds for the challenge to each claim, including . . . (B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions.” 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.104(b)(4)–(5) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon; and . . . the supporting evidence relied upon to support the challenge.”). Thus, “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Board’s Consolidated Trial Practice Guide, 73 (Nov. 21, 2019).7 Dr. Smedley’s testimony in his second declaration, that “Badros discloses Patent Owner’s ‘viewability test’” (Ex. 1027 ¶11), is clearly evidence to make out a prima facie case of unpatentability. The same is true of Dr. Madansky’s testimony that she agrees with Dr. Smedley in this regard. Ex. 1026 ¶4.” slip op. at 25
Patent outcomesUS 11,443,329 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,443,329 - ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentNo claims unpatentablePTAB · Oct 14, 2022 · IPR2021-00698 · APJ John A Hudalla · IPR · Final written decision
Claims 1–45 were not shown unpatentable because the cited references did not establish the claimed limitations arranged as required or cure that deficiency.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art (or “POSITA”) “would at least have [had] a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and two or more years of industry experience in the field of telecommunications, or equivalent experience, education, or both” and “knowledge or familiarity with telecommunication.” Pet. 13 (citing, inter alia, Ex. 1003 ¶ 41). Patent Owner does not propose an alternative definition. See PO Resp. 4. We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifiers “at least” and “or more,” which introduce ambiguity. Based on the full trial record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’505 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“In our Decision on Institution, we determined that 35 U.S.C. § 112 ¶ 6 did not apply to the limitation in claim 14 that recites “a formatter to format the received data into at least one SMS (Short Message Service) message.” Dec. on Inst. 11 (citing Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298 (Fed. Cir. 2018); Ex. 1001, 1:66–2:1, 4:26–27, 4:46–51). Neither party addressed this determination after institution. We maintain our determination that § 112 ¶ 6 does not apply to this limitation, and we instead apply the plain and ordinary meaning. Thus, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Thus, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“c. Analysis At the outset, we note that Petitioner relies solely on an express anticipation theory for this ground. Petitioner did not put forth any contentions based on inherent anticipation, and Petitioner did not put forth any arguments or evidence like those in Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015), to show that “a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Thus, we must decide whether Haller discloses “all elements of [the] claimed invention arranged as in the claim.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).” slip op. at 19
Patent outcomesUS 7,203,505 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,203,505 - Corning Optical Communications LLC v. Dali Wireless, Inc.No claims unpatentablePTAB · Oct 11, 2022 · IPR2021-00762 · APJ Sharon Fenick · IPR · Final written decision
The Board held claims 1–12 not unpatentable because Petitioner did not show that FlexWave Prism Manual was publicly accessible before the critical date.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Our determination regards obviousness to an ordinarily skilled person rather than “to the judge, or to a layman, or to those skilled in remote arts, or to geniuses in the art at hand.” Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 697 (Fed. Cir. 1983)). We therefore remove the open-ended term “a minimum of” from Petitioner’s proposal, and adopt for this decision the following definition: “a person of ordinary skill in the art at the time of the claimed invention would have had: (1) a bachelor’s degree in electrical engineering; and (2) 3–4 years of industry experience in wireless communications networks and engineering. However, an individual with an advanced degree in electrical engineering would require less industry experience (e.g., 1–2 years).” This level of skill comports with the teachings of the ’508 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp., 868 F.3d at 1017 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). No claim terms require construction to resolve the controversy before us. See Nidec, 868 F.3d at 1017.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“c) Conclusion After considering this record evidence, Petitioner has not shown that one of ordinary skill would have performed the searches Mr. Stravitz performed on the EAS database. Mr. Stravitz’s searches appear to have been performed at the direction of counsel to discover whether and how FlexWave Prism Manual could be retrieved from the EAS database by someone who knew about FlexWave Prism Manual, without consideration of whether one of ordinary skill would have performed the searches absent a search directed towards FlexWave Prism Manual or would have known about the EAS database. Thus, Petitioner has not shown that one interested in and ordinarily skilled in the art relating to the ’508 patent would have found FlexWave Prism Manual using the EAS database.” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“For these reasons, our determination is that FlexWave Prism Manual has not been shown to be publicly available. E. Conclusion For the reasons given above, Petitioner has not met its burden to show that FlexWave Prism Manual was disseminated or otherwise made available to the extent that persons of ordinary skill in the art, exercising reasonable diligence, could have located it. All instituted grounds of unpatentability rely on FlexWave Prism Manual. Pet. 23–77; see Dec. on Inst. 17–29. Therefore, Petitioner fails to demonstrate by a preponderance of the evidence that any of the challenged claims are unpatentable based on the instituted grounds.” slip op. at 27
Patent outcomesUS 9,826,508 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,826,508 - Corning Optical Communications LLC v. Dali Wireless, Inc.No claims unpatentablePTAB · Jul 19, 2022 · IPR2021-00408 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are not unpatentable because Petitioner did not show that Kummetz-464 discloses the claimed QoS of network traffic used to reconfigure sectors.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“In the Decision on Institution, we concluded that one of ordinary skill would have had (1) a bachelor’s degree in electrical engineering; and (2) a minimum of 3-4 years of industry experience in wireless communications networks and engineering. Dec. on Inst. 9–10 (citing Ex. 1003 ¶ 28). We additionally concluded that “an individual with an advanced degree in electrical engineering would require less industry experience (e.g., 1-2 years),” and that “the person of ordinary skill at the time of the invention would additionally possess some experience with or knowledge of DAS.” 6 The record does not include any evidence of secondary considerations of nonobviousness. court action), 100:15–102:8). Patent Owner notes its agreement with this conclusion, and its expert adopted it. PO Resp. 22; Ex. 2023 ¶ 5. Petitioner provides no further comment in its post-institution briefing. After considering the record, we conclude that the same level of skill we adopted in the Decision on Institution should apply. This level of skill comports with the disclosures of the ’454 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As noted in the Decision on Institution, a claim construction order issued in the related district court action in the final week of the period set forth for institution. Id. at 16 n.11. This claim construction order adopts Petitioner’s proposed definition. Ex. 1017, 14–21. has not established that Kummetz-464 teaches the determination of a QoS of network traffic. Thus, we need not resolve the parties’ claim construction dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Petitioner that the relative concentration of devices is a function of the number of users, which is a KPI. See Pet. 31; Ex. 1003 ¶ 95. But we determine Petitioner fails to establish the relative concentration of devices is a quality of service of a network traffic. Petitioner’s declarant describes QoS as a function of KPIs without more, and asserts that the relative concentration of devices between coverage zones would be a QoS. Ex. 1003 ¶¶ 93–103 (concluding that “Kummetz[-464] discloses that the controller 108 can determine one or more traffic indicators (i.e., KPIs) and a function of the traffic indicators (i.e., QoS = function of the one or more KPI” and “network performance is expressed by a number of KPIs which leads to the QoS”). While Petitioner’s declarant describes this as consistent with the teachings of the ’454 patent relating to adjusting traffic loads, no explanation is provided as to how capacity (as in Kummetz-464’s example) would meet the requirement of a QoS of network traffic, and no further testimony or evidence was adduced regarding what one of ordinary skill in the art would have thought QoS to mean. See id. We credit the testimony of Patent Owner’s expert that the plain meaning of “QoS” requires that the QoS be a value that indicates network performance.7 Ex. 2023 ¶ 55. We agree with Patent Owner that Petitioner does not establish Kummetz-464 discloses that a concentration of wireless devices is indicates network performance. See PO Resp. 43. As noted by Patent Owner during oral argument, “[y]ou can have perfect information of relative concentration of devices and still not know anything about network traffic.” Tr. 36. Patent Owner provides an example of a church service in which there are a large number of users (large concentration of user devices), but no traffic. Tr. 38. Conversely, we observe that a small concentration of user devices may have a large impact on network performance if engaged in activities requiring heavy network traffic usage. 7 We respectfully disagree with the dissent that the specification requires a different interpretation. The ’454 patent describes a QoS as a weighted combination of three KPIs (cost factors) that indicates network performance. See Ex. 1001 11:48–50, 14:41–51. This supports Patent Owner’s position that the plain and ordinary meaning of quality of service (QoS) indicates network performance. Although the KPIs discussed are exemplary, to fall within the bounds of claim 1, the plain meaning of quality of service of a network traffic requires the function to indicate network performance (i.e., the “quality” of the network). be a function of KPIs, but it is not a QoS according to the plain meaning of that term, and is not “of a network traffic” because it may be unrelated to network traffic. Thus, Petitioner fails to persuade us that Kummetz-464’s description of a concentration of wireless devices discloses a quality of service of a network traffic. We further determine that Petitioner fails to establish Kummetz-464’s” slip op. at 23
Patent outcomesUS 10,506,454 not shown unpatentableClaim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 10,506,454 - Ebay Inc. v. Masterobjects, Inc.No claims unpatentablePTAB · Jul 25, 2018 · IPR2017-00740 · APJ Christa P Zado · IPR · Final written decision
Claims 1–3, 6, 7, 9, 12, 15–17, 21, 24–26, and 32–37 were not shown unpatentable because the petition did not establish the claimed usability test.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“interpreted according to their “broadest reasonable construction in light of the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC, v. Lee, 136 S. Ct. 2131, 2141–46 (2016). We interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“1. Overview of Kravets (Ex. 1003) Petitioner asserts Kravets is prior art under 35 U.S.C. § 102(e). Pet. 15. Patent Owner does not dispute Petitioner’s assertion that Kravets is prior art. Kravets issued from a patent application filed January 31, 2000. Ex. 1003, [22]. Based on the earliest possible priority date of the ’024 patent (see supra Section I.C), for purposes of this Final Written Decision, we conclude that Kravets is prior art to the ’024 patent under 35 U.S.C. § 102(e).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“display to the user includes 1) PSS 40 identifying a first set of search terms, which preferably comprises 500 search terms, where the first n characters of each search term matches the n-character input string in the request (Ex. 1003, 6:17–36); and 2) PSS 40 selecting a second set of search terms, such as 6 terms, from the first set of search terms by selecting the 6 terms that have the highest value scores (Ex. 1003, 7:26–40). This disclosure does not describe a client object testing for usability by checking that a return message corresponds to the latest query. First, this disclosure relates to actions performed by the server, rather than the client. Id. at 6:17–36, 7:26–40 (describing PSS 40 performing this technique). But claim 1 requires the client object perform the test for usability. Ex. 1001, 32:2–3 (“the client object tests the usability of the results in the return message”) (emphasis added).” slip op. at 20
Patent outcomesUS 8,539,024 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,539,024 - Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentablePTAB · Nov 25, 2015 · IPR2014-00788 · APJ Benjamin D M Wood · IPR · Final written decision
The Board held claims 10–20 not shown unpatentable because the asserted combinations did not show a reason to produce and provide the plate-ready file from a location remote from the printer.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015). Under this standard, the claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We expressly construe below only those claim terms that require analysis to resolve arguments related to the patentability of the challenged claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those [claim] terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). All other terms will be accorded their ordinary and customary meaning as would be understood by one of ordinary skill at the time of the invention. 1. “A method of providing printing and publishing services to a remote client in real time using a communication network” (claim 10); “A method of providing printing and publishing services to a remote client . . . in real time using a wide area communication network” (claim 16) The preamble for each of independent claims 10 and 16 recites a method of providing printing and publishing services to a remote client “in real time.” In the Decision on Institution, we determined that “the preambles in the claims at issue, including the term ‘real time,’ do not limit the scope of the claims.” Dec. on Inst. 11–13. Neither Patent Owner in its Response nor Petitioner in its Reply disputed this determination. Further, we are not aware of any evidence adduced at trial that calls this determination into question. Therefore, based on our analysis in the Decision on Institution, we determine that the preambles in the claims at issue, including the term “real time,” do not limit the scope of the claims.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“The Specification does not define “plate-ready file” expressly, but its meaning is discernible from the term itself: a file that can be used to produce a printing plate without further modification. See Ex. 1001, 10:7– 14 (equating the term “plate-ready file” with “a single file that is stable, predictable, and ready to image to proof or plate”). Moreover, as Petitioner states, the plate-ready file can be used with a platesetter to create a plate directly, or with an imagesetter to produce film that is then used to create the plate. Pet. 22. Further, we agree with the parties that because the file is “plate-ready,” it represents a page layout file that has gone through the prepress process, including RIPing. That is the purpose of prepress production: transforming “copy” into “a medium that is reproducible for printing,” such as a “computer to plate (CTP) file.” Id. at 1:26–38. Accordingly, in addition to the constructions we applied in the Decision on Institution, we construe “plate-ready file” to mean a file that represents a page layout that has gone through prepress processing, including RIPing, and is ready to image to a plate using either a platesetter or imagesetter.” slip op. at 9
- ExcludeMotion to exclude, deniedDenied
“Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s First Motion to Exclude.” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) 8 Paper 30, 3; Tr. 31:4–8. (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’155 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1024 ¶¶ 10–14, Atts. E–H. Petitioner has also proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1023. Given that Apogee was created to promote the Apogee system to prospective customers, and that a very large number of copies of the reference were printed, it is reasonable to infer that many of these copies made their way into the possession of interested persons. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony further evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the Apogee reference.” slip op. at 20
Patent outcomesUS 6,738,155 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,738,155 - Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentablePTAB · Nov 25, 2015 · IPR2014-00790 · APJ Benjamin D M Wood · IPR · Final written decision
Claims 1–3 were not shown unpatentable because Petitioner did not establish that the proposed combinations would produce the required plate-ready file at the central service facility.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for patent owner
“1. A printing and publishing system which generates a printing plate-ready file from data provided remotely in real time using a communication network The preamble for each of independent claims 1, 2, and 3 recites a “printing and publishing system which generates a printing plate-ready file from data provided remotely in real time.” In the Decision on Institution, we determined that “the preambles in the claims at issue, including the term ‘real time,’ do not limit the scope of the claims.” Dec. on Inst. 14. Neither Patent Owner in its Response nor Petitioner in its Reply disputed this determination. Further, we are not aware of any evidence adduced at trial that calls this determination into question. Therefore, based on our analysis in the Decision on Institution, we determine that the preambles in the claims at issue, including the term “real time,” do not limit the scope of the claims.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner to the extent that the claim itself defines “end user facility,” “printing company facility,” and “central service facility” in terms of the particular functions they perform; e.g. the end user facility performs page building operations, the printing company facility provides printing operations, and the central service facility performs file processing and content management operations. But we maintain the view that these facilities must be distinct components of the claimed printing and publishing system. “Where a claim lists elements separately, the ‘clear implication of the claim language’ is that those elements are distinct components of the patented invention.” Becton, Dickenson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal citations and quotation marks omitted); cf. Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 935 (Fed. Cir. 2013) (holding that phrase “first and second occluding disks” means physically separate occluding disks). The Specification supports this conclusion because it consistently describes the three facilities as separate entities, each connected to the same communication network to facilitate the transfer of data between each other. See, e.g., Ex. 1001, 2:54–64, 4:26–33, Figs. 1–5.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts 8 Paper 35, 3; Tr. 31:4–8. and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’349 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1025 ¶¶ 10–14, Atts. E–H. Petitioner also has proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1024. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the earlier version Apogee, which reasonably would have led that person to the updated version. Given that Apogee was created to promote the Apogee system to prospective customers; a very large number of copies of the reference were printed, at least some of which were distributed at conferences and trade shows; and an earlier, substantively identical version was publicly available in electronic form on the internet; we find that Apogee was publicly accessible before the critical date.” slip op. at 21
- ExcludeMotion to exclude, deniedDenied
“Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s first motion to exclude.” slip op. at 18
Patent outcomesUS 6,611,349 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,611,349 - Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentablePTAB · Nov 25, 2015 · IPR2014-00791 · APJ Benjamin D M Wood · IPR · Final written decision
Claims 10–14 were not shown unpatentable over either asserted obviousness combination because the evidence did not show a reason to produce the plate-ready file away from the printing facility.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’155 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1024, Atts. E–H. Petitioner has also proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1023. Given that Apogee was created to promote the Apogee system to prospective customers, and that a very large number of copies of the reference were printed, it is reasonable to infer that many of these copies made their way into the possession of interested persons. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony further evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the Apogee reference.” slip op. at 20
- ExcludeMotion to exclude, deniedDenied
“Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s First Motion to exclude.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“this limitation, either the end user or the host facility must produce the plateready file and provide it to the printer. Petitioner argues that “one of ordinary skill could predictably implement Apogee at a central service facility.” Pet. Reply 4 (emphasis added). But as our reviewing court recently stated, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden, 2015 WL 6756451, at *5 (emphasis in original) (citing InTouch Techs., Inc. v. VGO Commc’n, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Jebens does not teach or suggest generating a “plate-ready file” as we have construed the term above, i.e., a file that “that has gone through prepress processing, including RIPing.” Apogee teaches generating a plateready file from a PDF, but does not teach or suggest providing it to a remote 8 Claim 10 only requires a “client” and a “printer” that are “remote” with respect to each other. printer. Petitioner asserts that “one of ordinary skill in the art would have been motivated to incorporate Apogee into the Jebens printing system to allow for a printing facility to produce a printing plate for offset printing.” Pet. 29. But Petitioner does not point us to any evidence—in Jebens, Apogee, or otherwise—that a person of ordinary skill in the art would have combined Jebens and Apogee in such a way that a plate-ready file would have been produced at Jebens’ host facility or end user facility rather than at its printing facility. In other words, there is no evidence that a person of ordinary skill in the art would have considered generating a plate-ready file anywhere other than where the printing plates are produced: at the printing facility. Evidence that a skilled artisan could have generated the plate-ready file at Jebens’ host facility, without any evidence of a reason why the skilled artisan would have done so, is insufficient to show obviousness. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421–23 (2007) (considering the obviousness of a claim to an adjustable automobile throttle pedal combined with an electronic sensor, holding that “[a] person having ordinary skill in the art could have combined [the adjustable pedal] with a pedal position sensor in a fashion encompassed by [the claim], and would have seen the benefits of doing so” (emphasis added)); InTouch Techs., 751 F.3d at 1352 (holding that expert witness “succumbed to hindsight bias” in basing obviousness opinion on “belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so” (emphasis in original)). For these reasons, Petitioner has not shown by a preponderance of the evidence that claim 10, and its dependent claims 11– 14, would have been obvious over Jebens and Apogee.” slip op. at 25
Patent outcomesUS 6,611,349 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,611,349 - Ford Motor Company v. TMC Fuel Injection System, LLCNo claims unpatentablePTAB · Jun 22, 2015 · IPR2014-00272 · APJ James A Worth · IPR · Final written decision
Petitioner failed to prove claims 38 and 40 unpatentable over Tuckey alone or in combination with Ford ’479, Chih, or Coleman, because the references did not meet the construed flow-constraint limitation or the combinations were …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundTerm construed board ownDecided for patent owner
“c. Analysis of Prosecution History Disclaimer “Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Thus, for purposes of the broadest reasonable construction, claim terms are interpreted according to their ordinary meaning in light of, and to be consistent with, the intrinsic evidence, which consists of the language of the claims as a whole, the Specification, and the prosecution history. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014) (“In claim construction, this court gives primacy to the language of the claims, followed by the specification. Additionally, the prosecution history, while not literally within the patent document, serves as intrinsic evidence for purposes of claim construction. This remains true in construing patent claims before the PTO.”) (citing In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)). See also Microsoft Corporation v. Proxyconn, Inc., No. 2014-1542, -43 (Fed. Cir. June 16, 2015) (“The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.”). In light of Applicant’s unequivocal statements during prosecution, we determine that there is an express disclaimer of pressure regulators and other forms of incremental regulation as a flow constraint for issued claims 38 and 40.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We find Petitioner’s argument persuasive and decline to adopt Patent Owner’s construction. While the prosecution history disclaimed the use of variable valves, the prosecution history and Specification are consistent with the notion that a binary valve may be used to close, instantaneously, the fuelreturn line in order to give a brief power boost in one mode of operation. Ex. 1001, 4:11–16, 41–44, 9:7–14, Fig. 6. We do not consider such a mode of operation to be inconsistent with the recirculation of fuel set forth in the preamble, which is the “normal” mode of operation. See Fig. 2.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“In light of our revised construction of “a fuel return path with flow constraint,” we agree with Patent Owner that Tuckey does not anticipate claims 38 and 40. Applicant expressly disclaimed pressure regulators and incremental regulation “of any type from the system.” Ex. 1008, 451. Thus, because Tuckey’s system includes demand regulator 12 and pressure relief valve 250 (a ball-spring valve), Tuckey does not meet the limitation “a fuel return path with flow constraint . . . allowing fuel recirculation to stabilize the pump operation, and creating stable fuel pressure,” as recited by claims 38 and 40. We, therefore, conclude that Petitioner has not shown by a preponderance of the evidence that Tuckey anticipates claims 38 and 40.” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Ford ’479 does not teach a “fuel return path with flow constraint” in light of the express disclaimer of pressure regulators and incremental regulation “of any type from the system.” Ex. 1008, 451. Ford ’479’s pressure regulator 22 is therefore inconsistent with this disclaimer. On cross-examination, Petitioner’s declarant, Dr. Davis, affirmed Ford ’479’s need for a pressure regulator, explaining that the orifice does not stabilize the pressure without the assistance of the pressure regulator: “In this system, again, because it’s a real system applied to a vehicle where the demands are changing all the time, fuel flow demands, you need the pressure regulator in order to provide a stable fuel pressure to the system.” Ex. 2002, 283:18–25. Moreover, as we found above, Tuckey’s use of demand regulator 12 and pressure relief valve 250 do not constitute “flow constraints” within the proper construction of the term, either. We, therefore, find that Petitioner has not shown by a preponderance of the evidence that Ford ’479 and Tuckey render obvious claims 38 and 40.” slip op. at 31
Patent outcomesUS 7,318,414 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,318,414 - Ford Motor Company v. TMC Fuel Injection System, LLCNo claims unpatentablePTAB · Jun 22, 2015 · IPR2014-00273 · APJ James A Worth · IPR · Final written decision
Petitioner failed to prove claims 38 and 40 unpatentable over Tuckey or the Tuckey combinations with Ford ’479, Chih, or Coleman, because the references did not meet the construed flow-constraint limitation or the combinations lacked …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“those sources expressly disclaim the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Thus, for purposes of the broadest reasonable construction, claim terms are interpreted according to their ordinary meaning in light of, and to be consistent with, the intrinsic evidence, which consists of the language of the claims as a whole, the Specification, and the prosecution history. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014) (“In claim construction, this court gives primacy to the language of the claims, followed by the specification. Additionally, the prosecution history, while not literally within the patent document, serves as intrinsic evidence for purposes of claim construction. This remains true in construing patent claims before the PTO.”) (citing In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)). See also Microsoft Corporation v. Proxyconn, Inc., No. 2014-1542, -43 (Fed. Cir. June 16, 2015) (“The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.”). In light of Applicant’s unequivocal statements during prosecution, we determine that there is an express disclaimer of pressure regulators and other forms of incremental regulation as a flow constraint for issued claims 38 and 40. The disclaimer of pressure regulators in the introduction section of the Appeal Brief is particularly express, i.e., “eliminating pressure regulators and incremental regulation means of any type from the system,” and is applied in the Brief to Configuration 1 (application claim 42). It is clear from the above prosecution history that the stabilization of pressure (e.g., at a high pressure) is based on fuel recirculation through the flow constraint of an open fuel-return line (or fuel by-pass). This fuel-return line may use a binary valve to open and close the fuel-return line and to instantaneously switch between high and low pressure states. However, pressure regulators and incremental regulation devices are incompatible with the invention because they do not allow for instantaneous pressure stabilization in the same manner as binary valves.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We find Petitioner’s argument persuasive and decline to adopt Patent Owner’s construction. While the prosecution history disclaimed the use of variable valves, the prosecution history and Specification are consistent with the notion that a binary valve may be used to close, instantaneously, the fuelreturn line in order to give a brief power boost in one mode of operation. Ex. 1001, 4:11–16, 41–44, 9:7–14, Fig. 6. We do not consider such a mode of operation to be inconsistent with the recirculation of fuel set forth in the preamble, which is the “normal” mode of operation. See Fig. 2.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“In light of our revised construction of “a fuel return path with flow constraint,” we agree with Patent Owner that Tuckey does not anticipate claims 38 and 40. Applicant expressly disclaimed pressure regulators and incremental regulation “of any type from the system.” Ex. 1008, 451. Thus, because Tuckey’s system includes demand regulator 12 and pressure relief valve 250 (a ball-spring valve), Tuckey does not meet the limitation “a fuel return path with flow constraint . . . allowing fuel recirculation to stabilize the pump operation, and creating stable fuel pressure,” as recited by claims 38 and 40. We, therefore, conclude that Petitioner has not shown by a preponderance of the evidence that Tuckey anticipates claims 38 and 40.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner that Ford ’479 does not teach a “fuel return path with flow constraint” in light of the express disclaimer of pressure regulators and incremental regulation “of any type from the system.” Ex. 1008, 451. Ford ’479’s pressure regulator 22 is therefore inconsistent with this disclaimer. On cross-examination, Petitioner’s declarant, Dr. Davis, affirmed Ford ’479’s need for a pressure regulator, explaining that the orifice does not stabilize the pressure without the assistance of the pressure regulator: “In this system, again, because it’s a real system applied to a vehicle where the demands are changing all the time, fuel flow demands, you need the pressure regulator in order to provide a stable fuel pressure to the system.” Ex. 2002, 283:18–25. Moreover, as we found above, Tuckey’s use of demand regulator 12 and pressure relief valve 250 do not constitute “flow constraints” within the proper construction of the term, either. We, therefore, find that Petitioner has not shown by a preponderance of the evidence that Ford ’479 and Tuckey render obvious claims 38 and 40.” slip op. at 31
Patent outcomesUS 7,318,414 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,318,414
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.