• Google LLC v. Ipa Technologies Inc.All claims unpatentable
  PTAB · Jun 1, 2023 · IPR2019-00731 · APJ Trevor M Jefferson · IPR · Remand

  Claim 28 is unpatentable under § 103(a) over Martin and Farley; Martin qualifies as prior art because Dr. Moran’s contribution made him a joint inventor of the relied-on disclosure.

  RulingsRemand decision

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

    “we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’560 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 19:14–19:62. In addition, Patent Owner admits that “large portions of the ’560 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id.” slip op. at 21

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “With respect to Dr. Moran’s contribution to the Martin reference, we find Dr. Moran’s testimony credible over that of Mr. Cheyer and Mr. Martin, because, as the Federal Circuit noted, because the latter testimony conflicts with other evidence of record. Google, 34 F.4th at 1088. Cheyer’s and Martin’s testimony that Dr. Moran’s role was administrative and non-technical with respect to the core infrastructure of OAA is belied by a separate article describing OAA that includes the facilitator and lists Dr. Moran as the lead author. Ex. 1174, 1–2, 4. Indeed, the OAA article lists Dr. Moran and Mr. Cheyer as authors but excludes Mr. Martin. Id. Although Mr. Cheyer disagrees with the article’s description of the origins of OAA and the facilitator (Ex. 2037, 78:23–79:12 (Mr. Cheyer asserting that he “would not agree in the characterization of Open Agent Architecture grew out of [earlier] works” as described in the article)), Mr. Cheyer admits patent]” (id. at 1088), “which is a continuation-in-part of the application that resulted in the ’115 patent” (id. at 1086). in his deposition that Dr. Moran was extremely technical, and probably made technical contributions to OAA (id. at 34:1–20, 64:16–20, 102:2–4). Similarly, Mr. Martin’s testimony also supports that Dr. Moran “may have made contributions to the technological development of either interfaces for use with OAA, agents used with OAA, or systems based on OAA.” Ex. 2038, 116:2–8, 117:7–119:10. When viewed in light of Dr. Moran’s status as a joint inventor on the closely related ’931 patent (Ex. 2002, code (75)) and as a lead author of the substantive paper that discusses OAA’s early development, we find Mr. Martin’s and Mr. Cheyer’s admissions—that Dr. Moran made technical contributions to OAA—undermine their testimony that Dr. Moran’s inclusion as an author on the Martin reference was a matter of administrative respect and not a result of a technical contribution. See PO Remand 11; PO Resp. 50–51. Indeed, we find Cheyer and Martin’s general description of Dr. Moran—as an administrator without technical contributions to the Martin reference—is not supported by the full record, which instead supports Dr. Moran’s contributions to technical work that involves the Martin reference, such as contemporary papers and the ’931 patent. See, e.g., Ex. 1174, 2002. In sum, the testimony and contemporary evidence supports Dr. Moran’s testimony that his conception and contribution to the Martin reference, the facilitator, was technical and not merely administrative. Ex. 1007 ¶ 39.” slip op. at 23

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

    “We disagree with Patent Owner’s contention. Rather, we find that the Petition persuasively explains how Martin discloses a facilitator agent arranged to coordinate cooperative task completion within a distributed computing environment having autonomous service-providing electronic agents. Pet. 39; Ex. 1002 ¶ 100. Further, Petitioner persuasively demonstrates that Farley discloses how agent functionality can be distributed across multiple processes. Pet. 39–40; Ex. 1002 ¶¶ 101–102. Finally, Petitioner also provides persuasive reasons as to why one of ordinary skill in the art would have been motivated to combine Martin and Farley, including reasons expressly provided by Farley. Pet. 40; Ex. 1002 ¶¶ 103–104.” slip op. at 28

  • ExcludeMotion to exclude, deniedMixed

    “III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 26–30. We maintain these determinations on remand.” slip op. at 29

  Patent outcomesUS 7,069,560 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,069,560
• Google LLC v. Ipa Technologies Inc.All claims unpatentable
  PTAB · Jun 1, 2023 · IPR2019-00728 · APJ Trevor M Jefferson · IPR · Remand

  On remand, the Board held claim 63 unpatentable under § 103(a) over Martin and Kohn, finding Martin was prior art because Moran was a joint inventor.

  RulingsRemand decision

  • RemandDecided for petitioner

    “Petitioner relies upon is sufficient to establish the degree to which the reliedon portions of the Martin reference were conceived by Dr. Moran, and the significance of those contributions to the overall anticipating disclosure of the Martin reference. See Google, 34 F.4th at 1086–88; Duncan Parking, 914 F.3d at 1358. Contrary to Patent Owner’s contentions, Petitioner is not merely relying on Dr. Moran’s authorship to establish inventorship. PO Remand 8 (citing In re Katz, 687 F.2d 450, 455 (C.C.P.A. 1982)). Instead, Dr. Moran’s testimony establishes how his background led to his contributions to the multiple facilitator architectures disclosed in Martin and in the ’115 patent specification. Google, 34 F.4th at 1087; Ex. 1007 ¶¶ 23– 34 (OAA project), 35–39 (OAA paper). In view of Dr. Moran’s testimony, we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’115 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 18:56–19:36. In addition, Patent Owner admits that “large portions of the ’115 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id. Based on the record, the Federal Circuit’s remand squarely asks whether Dr. Moran’s stated contributions to the conception of the facilitator should be credited over Cheyer and Martin’s conflicting testimony regarding his lack of technical contribution. Google, 34 F.4th at 1088 (stating that “[t]he testimony of Dr. Moran, if credited, might well establish that he was a co-inventor of the particular portions of the Martin reference relied on by Google in, and relevant to, the challenge to particular claims”). When Dr. Moran’s testimony is viewed in combination with the supporting evidence,7 we find that incorporation of the facilitator in general, which is also found in the specification and claims, persuasively supports Dr. Moran’s testimony regarding his inventive contribution to the Martin reference. Specifically, we find Dr. Moran’s testimony persuasively supported and credible over the conflicting testimony and evidence offered by Mr. Cheyer and Mr. Martin. See Pet. Reply 12–13; Ex. 2038, 116:2–8, 117:7–119:10 (Cheyer admission that Dr. Moran made technical contributions to OAA); Ex. 2037, 34:1–20, 64:16–20, 102:2–4.” slip op. at 21

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

    “Upon weighing the parties’ testimony and evidence, we agree with Petitioner that sufficient evidence supports the technical contributions of Dr. Moran to OAA, including admissions by Mr. Martin that Dr. Moran made such contributions (see Ex. 2038, 116:2–116:8, 117:7–119:10; see also id. at 73:3–73:15); contemporaneous papers showing Dr. Moran’s contribution to the OAA including a facilitator (see Ex. 1170; Ex. 1174, 1– 2), and the ’931 patent (Ex. 2002). See Pet. Reply 5–7, 8, 12–13; Pet. Remand 11. In particular, Dr. Moran’s testimony establishes that he contributed to Section 4.5, the facilitator that plays an essential role in the OAA, that differs from prior art agents, and that is found in the ’115 specification. We find Dr. Moran’s contributions to be significant when measured against the full anticipating Martin reference, and to render him a joint inventor of the Martin reference. Google, 34 F.4th at 1085 (quoting Duncan Parking, 914 F.3d at 1358). 5. Conclusion Based on the full record, we find that Petitioner has provided persuasive evidence by a preponderance of the evidence that Dr. Moran is an inventive entity to the Martin reference. Accordingly, we find that Petitioner has established that Martin is “by another” and is prior art under § 102(a) to the ’115 patent. We next turn to the sole remaining ground based on the Martin reference to determine the patentability of the remaining challenged claim.” slip op. at 26

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

    “combination of Martin and Kohn. Petitioner’s expert, Dr. Olsen, provides persuasive testimony and evidence that Martin teaches compound goals and a skilled artisan would have been motivated in view of Kohn to modify Martin’s facilitator agent to interpret a compound goal that includes both local and global constraints. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. Dr. Olsen’s testimony does not evince hindsight, but instead supports the finding that an ordinarily skilled artisan could use compound goals required in Martin and apply the type of constraints (global and local) disclosed in Kohn. Ex. 2024, 159:4–160:16. In addition, Dr. Olsen testified, the proposed implementation “would have been a mere combination of known components and technologies . . . , according to known methods, to produce predictable results.” Ex. 1002 ¶ 87. We do not agree that this case presents the same technical issues raised in G.B.T. Inc. v. Walletex Microelectronics Ltd., IPR2018-00326, Paper 60 at 16–17 (PTAB June 25, 2019), where the petitioner’s declarant failed to show how the combination would have achieved desired results and features from the combination of the circuits. Here, Dr. Olsen identified known compound goals in Martin to which Kohn’s local and global constraints are applicable. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. In view of the level of skill in the art and the testimony of Dr. Olsen (Ex. 1002 ¶¶ 49, 77–88; Ex. 2024, 159:4–160:16), we find that Petitioner establishes persuasive motivation to combine the software teachings of Kohn’s constraints into the goals of Martin and how the references would have been combined by a preponderance of the evidence.” slip op. at 29

  • ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed

    “III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 25–28. We maintain these determinations on remand.” slip op. at 30

  Patent outcomesUS 6,851,115 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,851,115
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Feb 6, 2020 · IPR2018-01033 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 17 is anticipated by Bednar, and claims 1 and 17 are obvious over Bednar and Gunther; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

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

    “requesting institution of inter partes review of claims 1, 4–6, and 17–19 of U.S. Patent No. 8,004,922 B2 (Ex. 1001, “the ’922 patent”). VLSI Technology LLC (“Patent Owner”) filed a Preliminary Response (Paper 12). Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims. Paper 17 (“Inst. Dec.”).” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8–9; see Pet. 36 (citing Ex. 1002 ¶¶ 26–27).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 45

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “preponderance of the evidence, that (1) claim 17 is anticipated by Bednar, and (2) claims 1 and 17 would have been obvious over the combination of Bednar and Gunther. For the reasons discussed above, Petitioner has not demonstrated, by a preponderance of the evidence, that (1) claim 1 is anticipated by Bednar or (2) claims 4–6, 18, and 19 would have been obvious over the combination of Bednar, Gunther, and Willingham. The chart below summarizes our conclusions.” slip op. at 91

  Patent outcomesUS 8,004,922 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,004,922
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Feb 6, 2020 · IPR2018-01144 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 2, 7, and 8 are unpatentable as obvious over Bednar and Gunther; claim 3 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8; see Pet. 29 (citing Ex. 1102 ¶¶ 26–27).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “construction is erroneous. Accordingly, because the ’922 patent defines “power island,” we maintain and reaffirm that “power island” means a “group of components with similar power requirements.”” slip op. at 12

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

    “not to expressly construe “conversion controller” was erroneous or that an express construction is required to resolve any dispute between the parties. Accordingly, we maintain and reaffirm that because the construction of “conversion controller” does not resolve a controversy in the matter before us, we decline to construe it expressly.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 86

  Patent outcomesUS 8,004,922 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,004,922
• Wabco Holdings Inc. / Laydon Composites Ltd. v. Transtex Composites Inc.Some claims unpatentable
  PTAB · Jan 10, 2020 · IPR2018-01319 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1, 5–11, and 15–19 are unpatentable as obvious over Layfield and Rinard; claims 2–4, 12–14, and 20 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Micklow does not explain how or why he proposes a different level of ordinary skill in the art as compared to the level proposed by Petitioner and preliminarily adopted in our Decision on Institution. See generally id. ¶¶ 28–31. Additionally, neither Patent Owner nor Dr. Micklow argues that the difference in the proposed level of ordinary skill in the art affects the outcome of this proceeding; Dr. Micklow, in fact, states the contrary—that his opinions are the same under either level of skill. See Ex. 2001 ¶ 31.7 Nothing in the full record is sufficient to persuade us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm our preliminary finding that the level of ordinary skill in the art at the time of the invention would have been “a bachelor’s degree in mechanics, aeronautics, materials, or a related field of study, or equivalent experience, and at least two years of experience in the development of components of vehicles, or an equivalent amount of relevant work or research experience.” Inst. Dec. 10–11; see Pet. 10.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Turning to Petitioner’s video (Ex. 1018), Petitioner asserts testing of commercial versions of the Layfield fairing illustrates what one skilled in the art would have understood from Layfield itself, namely that the Layfield strut is adapted to sustain an elastic deformation when a load is applied to the resilient strut when the skirt panel moves away from the configuration reducing air drag about the trailer and to self-recover the resilient strut original shape when the load is removed. Pet. 29 (citing Ex. 1010 ¶¶ 102–103).16 We afford this evidence little weight for several reasons. First, the video does not show the strut or the bending of a strut. See Ex. 1018. In fact, the only feature shown is a skirt panel attached to a trailer. that because thermoplastic material is more resilient than aluminum, we should adopt Petitioner’s argument. Pet. Reply 15–16 (citing Ex. 1058, 1– 12; Ex. 1010 ¶¶ 77–82). We must base our decision in this case on the arguments and evidence presented. As explained above, the record before us has contradictory evidence in the form of Dr. Micklow’s testimony that was not before the examiner. 16 Petitioner does not cite Exhibit 1018 in the Petition, but instead cites to Mr. Tres’s testimony regarding the exhibit. Id. Thus, from the video, it is unknown whether the skirt panel is attached to the trailer by one strut, multiple struts, or additional features. Second, Petitioner does not identify clearly how the tested system precisely corresponds to the teachings of Layfield. For example, Patent Owner raises a number of issues with the struts and panels in the video to which Petitioner provides either no response or an unconvincing response. For example, Patent Owner argues that each embodiment of Layfield uses trusses 36 to “interconnect each skirt panel and reinforce the panel assembly,” while it is asserted that the skirt panels in the video do not have trusses and are not interconnected. PO Resp. 26. Petitioner argues that the skirt panels in the video were made according to the teachings of Layfield and did include “integral vertical lateral side edges as the connecting mechanism for adjacent panels.” Pet. Reply 19 (citing Exs. 1018, 2003, 2005; Ex. 1004, 18:36–39; Ex. 1010 ¶¶ 63–64; Ex. 1055 ¶¶ 37–38). Other than stating that the skirt panels have connecting mechanisms, Petitioner does not address the fact that the panels are not interconnected according to the teachings of Layfield, as Patent Owner correctly pointed out. See generally id. at 19–21.” slip op. at 28

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

    “components (see, e.g., id. at 17:1–10), Layfield does not contain any express disclosure concerning the flexibility of the struts. Nor does Layfield include any discussion about the desirability of strut flexibility. The closest Layfield comes to discussing flexibility of the struts is by frequently referring to the struts as “support struts” (see, e.g., id. at 18:40) and discussing the use of a “bracket means,” which is on the struts, to “rigidly secure” the skirt panels to the trailer (id. at 6:48–49). Further, Layfield’s detailed discussion of the embodiment of support strut 58 shown in Figure 10, reproduced below, highlights the bracing and reinforcement features. Figure 10, above, shows the construction detail of a support strut 58. Ex. 1004, 15:45. Specifically, Layfield discloses that strut 58 includes “a pair of spaced-apart vertical members 160, which are braced by horizontal cross-members 162” and “reinforcing rectangular lattice 170.” Id. at 15:46– 54. Thus, we agree with Patent Owner’s argument that “Layfield does not expressly teach that the ‘support struts 58’ are ‘resilient.’” PO Resp. 42 (citing Ex. 2001 ¶¶ 148–149). We reiterate that Petitioner’s first challenge is based on anticipation. Thus, Petitioner must show that resilient struts are “either expressly or inherently described, in” Layfield. Verdegaal Bros. Inc., 814 F.2d at 631; see also PO Resp. 42. In its Reply Brief and at the oral hearing, Petitioner contends that its challenge is based on express disclosure, not inherency. See Pet. Reply 17–18; Tr. 9:21–11:4 (arguing that “this is not a case of inherency”). Petitioner contends one of ordinary skill in the art “would have understood, based upon Layfield’s express disclosures concerning the material, structure, and connection of the strut, that the Layfield strut is resilient and can sustain significant and substantial elastic deformation.” Pet. Reply 18 (citing REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954, 960–61 (Fed. Cir. 2016)). Whether we analyze Petitioner’s argument based on express disclosure or inherency, we reach the same result. To begin, although we agree with Petitioner that a prior art reference “need not satisfy an ipsissimis verbis test” (Pet. Reply 17 (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), there is no express statement that Layfield’s strut is resilient or otherwise exhibits a characteristic synonymous with resiliency. Additionally, we do not agree that Petitioner’s reliance on the thermoplastic materials, disclosed by Layfield for construction of the strut, establishes whether the strut is resilient and capable of elastic deformation. The evidence submitted by the parties is contradictory as to whether one of ordinary skill in the art would have understood Layfield’s struts to be resilient based on the material alone.15 Compare Ex. 1010 ¶¶ 74–82 15 Petitioner also points to a finding by the examiner, during prosecution of the ’017 patent application, that an aluminum strut was resilient, and argues (Mr. Tres opining as to the materials disclosed by Layfield), with Ex. 2001 ¶¶ 160–164 (Dr. Micklow contradicting Mr. Tres’s testimony regarding the materials disclosed by Layfield). Further, the evidence is contradictory as to whether one of ordinary skill in the art would have understood from the design of Layfield’s strut, specifically the taper design and mechanism by which the strut connects to the trailer I-beam, that the strut is resilient. Compare Ex. 1010 ¶¶ 83–90 (Mr. Tres’s testimony regarding the design and connection mechanism), with Ex. 2001 ¶¶ 165–175 (Dr. Micklow’s contradictory testimony). Turning to Petitioner’s video (Ex. 1018), Petitioner asserts testing of commercial versions of the Layfield fairing illustrates what one skilled in the art would have understood from Layfield itself, namely that the Layfield strut is adapted to sustain an elastic deformation when a load is applied to the resilient strut when the skirt panel moves away from the configuration reducing air drag about the trailer and to self-recover the resilient strut original shape when the load is removed. Pet. 29 (citing Ex. 1010 ¶¶ 102–103).16 We afford this evidence little weight for several reasons. First, the video does not show the strut or the bending of a strut. See Ex. 1018. In fact, the only feature shown is a skirt panel attached to a trailer.” slip op. at 26

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

    “Additionally, Patent Owner similarly contends that the modifications proposed are redundant of Layfield’s “flexible lower panel 20,” which already “allow[s] flexing when impacting a road object.” PO Resp. 59 (citing Ex. 1004, 14:13–18); see PO Sur-reply 26–27. We disagree. Again, the proposed modifications here are to Layfield’s struts. In the context of Petitioner’s anticipation challenge, we agreed with Patent Owner and found that Petitioner had not established sufficiently on the record that Layfield’s struts were resilient. See supra, § II.D.a.i., ii. Therefore, the proposed modification addressed here, to make Layfield’s struts resilient, does not duplicate the objective of Layfield’s flexible lower panel 20 at least because (a) Layfield’s struts are a different structure than lower panel 20 and (b) modification of Layfield’s struts would provide greater impact protection to other panels aside from just lower panel 20. See Pet. Reply 26–27 (One of ordinary skill in the art “would have been motivated to do so because Rinard and Layfield both seek to provide fairing panels with ‘sufficient flexibility’ to bend when encountering objects.” (citing Ex. 1004, 12:67– 13:4; Ex. 1006, 10:43–50; Ex. 1055 ¶ 47)). We determine that Petitioner has shown that one of ordinary skill in the art would have had a reason with rational underpinning to look to other similar types of trailer components that are flexible to make further improvements to Layfield’s design. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Third, Patent Owner contends one of ordinary skill in the art “would not have a reasonable expectation of success at achieving the claimed technology by looking to the vertical supports of Rinard’s air scoops to modify the Layfield skirt panels 10 and support struts 58.” PO Resp. 61 (citing Ex. 2001 ¶¶ 237–240). Patent Owner asserts that because Layfield’s upper skirt panels are rigid and non-moving one of ordinary skill in the art “would not reasonably expect the hypothetical modified panels (with their reinforcing trusses 36) to move.” Id. Patent Owner also argues that Rinard teaches “an upper skirt panel that is rigid and non-moving” and so it is not reasonable to expect modifying Layfield as proposed would somehow cause Layfield’s fixed skirt panels to be able to move as claimed. PO Sur-reply 27–28 (citations omitted). We disagree for the same reasons discussed above—namely, we find Layfield’s upper skirt panels to be resilient. Therefore, one of ordinary skill in the art would have a reasonable expectation of success in achieving a resilient strut adapted as claimed by modifying Layfield’s strut in light of Rinard, for the reasons proposed by Petitioner. See Pet. Reply 27 (“Applying this solution to the Layfield skirt panel and struts would yield the predictable result of allowing the Layfield skirt panel 10 and struts 58 to absorb greater impacts without having to be repaired or replaced.” (citing Ex. 1021, 7–8, 11–12)).” slip op. at 42

  Patent outcomesUS 8,449,017 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,449,017
• Fredman Bros. Furniture Company, Inc. v. Bedgear, LLCSome claims unpatentable
  PTAB · Jun 12, 2018 · IPR2017-00350 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–11, 13, 15–22, 24, 25, and 27–34 are unpatentable; claim 23 was not shown unpatentable, because the Rasmussen anticipation challenge failed.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Accordingly, Petitioner has not persuaded us that claim 23 is” slip op. at 62

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Accordingly, Petitioner has not persuaded us that claim 23 is” slip op. at 62

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

  Patent outcomesUS 8,887,332 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,887,332
• Department Of Justice v. Discovery Patents, LLCSome claims unpatentable
  PTAB · Nov 9, 2017 · IPR2016-01041 · APJ Matthew R Clements · IPR · Final written decision

  Claims 11, 12, 14, 16–18, and 20–31 are unpatentable over Monroe ’183; claims 15 and 19 were not shown unpatentable over Monroe ’183.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “A petition for inter partes review may be considered only if, inter alia, “the petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party in interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations may include whether a non-party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760. Additional relevant factors include: the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. Whether a party who is not a named participant in a given proceeding is a real party in interest to that proceeding “is a highly fact-dependent question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term real party in interest to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Id. A non-party’s participation with a petitioner may be overt or covert, and the evidence may be direct or circumstantial, but the evidence as a whole must show that the non-party possessed effective control over the petitioner relating to the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). We have considered Patent Owner’s and Petitioner’s arguments and evidence, and we determine that Petitioner was not required to identify the Third Parties as real parties in interest because there is insufficient evidence that any of these companies exercised, or could exercise, control over Petitioner with respect to this proceeding. Patent Owner’s arguments regarding the motion practice before the Court of Federal Claims and notification of that action to the Third Parties does not reflect otherwise. Although we acknowledge that the existence of the above-identified indemnification clauses supports Patent Owner’s argument, we are unaware of any inter partes review decision in which a real party in interest finding was based solely on evidence of an indemnification clause, and we decline to do so here.” slip op. at 7

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “We decline to consider Patent Owner’s constitutional challenge as, generally, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments.” See Riggin v. Office of Senate Fair Employment Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”); Amanda Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003); but see Am. Express Co. v. Lunenfeld, Case CBM2014- 00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“for the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment”).” slip op. at 8

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

    “We agree with Petitioner. The ’980 patent states that “the term ‘secured location’ may refer to residences, commercial properties, public venues, such as hospitals and sports arenas, government facilities, military installations and any other location, outside or inside, which is protected by a security alarm system.” Ex. 1003, 3:20–24. This definition is non-limiting and does not exclude a changeable area or region. Based on the record developed during this proceeding, we maintain that the broadest reasonable construction in light of the ’980 patent of “secured location” is “any location, outside or inside, which is protected by a security alarm system.”” slip op. at 10

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

    “We agree with Petitioner. Although the Specification of the ’980 patent gives examples of “response agency,” e.g., Ex. 1003, 1:41–43 (“an emergency response agency (e.g., the police department, the fire department or an emergency medical team)”), Patent Owner does not identify, and we do not find, a definition in the specification limiting “response agency” to 911, police, or fire departments. Patent Owner also does not identify, and we do not find, anything in the entire disclosure of the ’980 patent requiring a “response agency” to be distinct from the “surveillance system infrastructure.” Accordingly, we decline to limit “response agency” to 911, police, or fire departments, or construe it to be distinct from surveillance system infrastructure.” slip op. at 11

  Patent outcomesUS 7,323,980 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,323,980
• Qualcomm Inc. v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-01577 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, 4, 13, 14, 16, 25, 26, 28, and 29 are unpatentable; claims 3, 15, and 27 were not shown unpatentable, with the specified-vote limitation not established.

  RulingsFinal written decision

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

    “sequence.” Petitioner’s declarant, Dr. Zhi Ding, attests that the phrase is “a well-understood term of art.” Ding Decl. ¶ 35 (citing Ex. 1016, 127–33). Consistent with Dr. Ding’s testimony, we applied a preliminary construction of “hopping sequence” in the Institution Decision as “the order in which the communications network hops among the set of frequencies.” Dec. 7. That construction is not contested by Patent Owner, and we adopt it for this Final Written Decision.” slip op. at 8

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

    “as disclosed by Gerten’s description of modified frequency hopping schemes. Id. at 14. In doing so, Petitioner notes that Gerten discloses periodic updating of the modified frequency hopping scheme, supporting a conclusion that Gerten discloses selection at different times. Id. at 14, 15– 16. Petitioner highlights this periodic updating to identify distinct “period[s] of time” during which different “set[s] of two or more communications channels [are] used to transmit and receive.” Id. at 15–16 (italics omitted). In addressing independent claim 1’s specific requirement that different sets of channels be used with the second and third communications devices, Petitioner reasons that the process summarized above may be applied by the master device to each of the slave devices separately: “the master device of Gerten performs a service discovery request to determine if each slave device has interference avoidance capabilities.” Id. at 18 (emphasis added) (citing Ding Decl. ¶ 53; Ex. 1003, col. 4, ll. 38–51). Thus, Petitioner argues, if one slave has such interference avoidance capabilities, communications with that slave may take place using a modified frequency hopping scheme; if another (legacy) slave lacks such interference avoidance capabilities, communications take place using a normal mode with default communications channels that are not changed based on channel performance. Id. at 18 (citing Ding Decl. ¶ 55); see id. at 16–17. Thus, Petitioner concludes, the recited transmissions and receptions from the third communications device over default communications channels occur “while” transmitting to and receiving from the second communications device over the first and second sets of communications channels, as we have construed the term “while.” Petitioner supports this reasoning with testimony by Dr. Ding, which we credit. Id. at 18 (citing Ding Decl. ¶¶ 53– 55).” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “Petitioner further provides persuasive reasoning why a person of ordinary skill in the art would have combined the relevant teachings of Gerten and Cuffaro, including that “Cuffaro and Gerten are in the same field of endeavor” of selecting channels to avoid interference in a communications system; that measuring interference signal strength at a slave device such as described by Cuffaro provides a more accurate determination of the impact of the receiver unit from the interference on a given channel, and, therefore, would provide more accurate identification of bad channels in Gerten; and that Gerten suggests such a modification by describing that both a master and a slave can participate in identifying channels to avoid. Pet. 30–31. Petitioner supports this reasoning with declaration testimony by Dr. Ding. Ding Decl. ¶¶ 128, 129.” slip op. at 24

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992) (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)). Patent Owner understates the degree to which Petitioner addresses the analogousness of the art by focusing on Petitioner’s contention that Gerten and Cuffaro are in the same field of endeavor. PO Resp. 40 (citing Pet. 30). Petitioner also addresses the second prong of the Clay test by providing reasons why a person of skill in the art would use the transmitted performance data of Cuffaro in the selection process of Gerten, including improved accuracy in determining the impact on the receiver unit from the interference on a given channel. See Pet. 31. We agree with Petitioner’s reasoning and find that Cuffaro and Gerten are analogous art to the claimed invention at least because they are reasonably pertinent to the particular problem with which the inventor was involved. We conclude that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2, 14, and 26 are unpatentable under 35 U.S.C. § 103(a) over Gerten and Cuffaro.” slip op. at 26

  Patent outcomesUS 7,477,624 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,477,624
• HTC Corporation / HTC America, Inc. v. NFC Technology, LLCAll claims unpatentable
  PTAB · Feb 3, 2016 · IPR2014-01198 · APJ James B Arpin · IPR · Final written decision

  Claims 1–3 and 5 are unpatentable as obvious over Sears and as obvious over Sears and Nguyen.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “A party seeking to establish an actual reduction to practice must satisfy a two-prong test: (1) the party must construct an embodiment or perform a process that satisfies every element of the claim at issue, and (2) the embodiment or process must operate for its intended purpose. See Eaton v. Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000). Moreover, in order to demonstrate an actual reduction to practice, the constructed embodiment must have been tested sufficiently to demonstrate that it will work for its intended purpose, but it need not be in a commercially satisfactory stage of development. See, e.g., Scott, 34 F.3d at 1062; see also Wells v. Fremont, 177 USPQ 22, 24–25 (BPAI 1972) (“[E]ven where tests are conducted under ‘bench’ or laboratory conditions, those conditions must ‘fully duplicate each and every condition of actual use’ or if they do not, then the evidence must establish a relationship between the subject matter, the test condition and the intended functional setting of the invention,” but it is not necessary that all the conditions of actual use are duplicated.). Further, an actual reduction to practice can be done by another on behalf of the inventor. De Solms v. Schoenwald, 15 USPQ2d 1507, 1510 (BPAI 1990). Here, it is undisputed that Concept Electronique, rather than the named inventor, Mr. Charrat, fabricated the prototype, on which Patent Owner relies to establish actual reduction to practice. PO Resp. 17–18. Assuming initially, without deciding, that the prototype embodies the subject matter of the challenged claims, the issue is whether Patent Owner has sufficiently shown that the Concept Electronique-built prototype inures to Patent Owner’s benefit. We determine that Patent Owner has not.” slip op. at 23

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner

    “To antedate . . . an invention, a party must show either an earlier reduction to practice, or an earlier conception followed by a diligent reduction to practice.” Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (emphasis added, internal citation omitted). Patent Owner’s position is based on the first of these options, i.e., that it was the first actually to reduce the invention to practice, rather than the first to conceive plus diligent reduction to practice. PO Resp. 9; PO Sur-Reply 4–5. A party seeking to establish an actual reduction to practice must satisfy a two-prong test: (1) the party must construct an embodiment or perform a process that satisfies every element of the claim at issue, and (2) the embodiment or process must operate for its intended purpose. See Eaton v. Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000). Moreover, in order to demonstrate an actual reduction to practice, the constructed embodiment must have been tested sufficiently to demonstrate that it will work for its intended purpose, but it need not be in a commercially satisfactory stage of development. See, e.g., Scott, 34 F.3d at 1062; see also Wells v. Fremont, 177 USPQ 22, 24–25 (BPAI 1972) (“[E]ven where tests are conducted under ‘bench’ or laboratory conditions, those conditions must ‘fully duplicate each and every condition of actual use’ or if they do not, then the evidence must establish a relationship between the subject matter, the test condition and the intended functional setting of the invention,” but it is not necessary that all the conditions of actual use are duplicated.). Further, an actual reduction to practice can be done by another on behalf of the inventor. De Solms v. Schoenwald, 15 USPQ2d 1507, 1510 (BPAI 1990). Here, it is undisputed that Concept Electronique, rather than the named inventor, Mr. Charrat, fabricated the prototype, on which Patent Owner relies to establish actual reduction to practice. PO Resp. 17–18. Assuming initially, without deciding, that the prototype embodies the subject matter of the challenged claims, the issue is whether Patent Owner has sufficiently shown that the Concept Electronique-built prototype inures to Patent Owner’s benefit. We determine that Patent Owner has not. slip op. at 23

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “in the art as “a person with at least a master’s degree in electrical engineering (or a substantively equivalent degree), in addition to two years of experience with systems that use short-range wireless communication, such as radio frequency identification (RFID) systems.” Ex. 1003 ¶ 12 (emphasis added); Ex. 1031 ¶ 18; see also Pet. 8 (adopting this definition). Patent Owner’s declarant, Dr. Alyssa B. Apsel, defines a person of ordinary skill in the art as a person having “at least a bachelor’s degree in electrical 7 Patent Owner does not contend in the Patent Owner Response that secondary considerations are present that would render the challenged claims patentable over the applied references. See Paper 11, 2–3. engineering (or an equivalent degree), and two years of experience with short-range wireless communication systems.” Ex. 2027 ¶ 13 (emphasis added); see PO Resp. 9, 45, 47. The proposed definitions differ primarily in level of academic achievement, with Patent Owner’s declarant proposing a lower level. Based on Exhibit 1003 (Attachment A) and Exhibit 2028, both Dr. Tentzeris and Dr. Apsel meet or exceed the requirements for qualification as a person of ordinary skill in the art under either definition. Moreover, neither party challenges the other party’s declarant’s credentials. Therefore, to the extent necessary, we adopt Dr. Apsel’s definition of a person of ordinary skill in the art.” slip op. at 32

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

    “Specifically, Patent Owner contends that “[t]his method of modulating the power does not involve ‘setting’ the buffers to any particular value; it only involves changing the duty cycle of the input they receive.” Id. (citing Ex. 2027 ¶ 58). Nevertheless, because Sears’s Figure 5 depicts a square wave provided by buffers 200A–200F, we are persuaded that Sears teaches a control circuit comprising binary ports or teaching or suggesting binary ports. See Ex. 1003 ¶¶ 30, 31. In addition, Petitioner argues that buffers 200A–200F are “tristatable” because “buffers (200A–200F) are used to yield (1) a high level output, (2) a low level output, or (3) complete disconnection that amounts to a high impedance state.” Pet. 16 (citing Ex. 1004, col. 5, ll. 4–8, col. 6, ll. 39–46; Ex. 1003 ¶¶ 32, 33). Moreover, each buffer 200 may be “constructed from a CMOS hex inverter integrated circuit” that drives a load impedance that is either “a low impedance load, such as the electromagnetic antenna 108B, or a high or infinite impedance load.” Id. at 16 (quoting Ex. 1004, col. 4, ll. 36–42). Petitioner discusses the application of Sears’s disclosure of a CMOS hex inverter circuit and why a person of ordinary skill in the art would understand that this circuit teaches the control circuit recited in the challenged claims. Pet. 15–16; see Ex. 1003 ¶ 33 (“A [person of ordinary skill in the art] would have understood that a tristatable CMOS inverter, as described in Sears, provides output in one of three states: logic 0, logic 1, and high impedance.”). Consequently, we are persuaded that Petitioner has identified sufficiently “the scope and content of the prior art . . . ; differences between the prior art and the claims at issue . . . ; and the level of ordinary skill in the art.” Graham, 383 U.S. at 17.” slip op. at 36

  Patent outcomesUS 6,700,551 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,700,551

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.