- Intel Corporation v. Alacritech, Inc.Rehearing grantedPTAB · Jan 25, 2018 · IPR2017-01395 · APJ Daniel N Fishman · IPR · Rehearing
The Board partly granted Intel’s rehearing request to recognize the Stansbury Declaration as a compliant sworn affidavit, but otherwise denied rehearing and left institution denied.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). In the Decision, the Board determined that the record before it was insufficient to show that Stevens21 is a prior art printed publication under 35 U.S.C. §§ 102, 311(b) with respect to the ’948 patent. Stevens2 is one of the references relied upon in the sole asserted ground of unpatentability in the Petition. Accordingly, the Board concluded that Petitioner did not slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Stevens2 was published no later than April 7, 1995 and is prior art under 102(b).” Pet. 45 n.9 (citing Ex. 1063 in support thereof (the “Stansbury Declaration”)). The Petition, per se, provides no other evidence or argument to establish a threshold showing that Stevens2 is a printed publication— publicly accessible by an interested person of ordinary skill in the art before the critical date. slip op. at 3
- Expert testimonyOther
“attested that Stevens2 was ‘standard reference book on TCP/IP’ that was ‘widely cited and relied upon,’ ‘well known resources to a [person of ordinary skill in the art]’ (Petition at 15 (citing Ex.1003 at ¶¶21-88, including ¶¶27, 60, and FN3), 45 (citing Ex.1003 at ¶1212), FN9).” Req. 12. Initially we observe the Petition cites these paragraphs of Dr. Horst’s Declaration as part of the “Background Of Technology” discussion rather than as support for public accessibility of Stevens2. See Pet. 15–24. Furthermore, incorporating by reference such a substantial portion of Dr. Horst’s Declaration (paragraphs 21–88) is improper under our rules. See 37 C.F.R. § 42.6(a)(3). Regardless, even if we consider Dr. Horst’s description of well-known background material (including Stevens2) as support for public accessibility of Stevens2, his testimony does not indicate” slip op. at 5
§ 102 anticipationPatents in suitUS 8,805,948 - Talari Networks, Inc. v. Fatpipe Networks India LimitedAll claims unpatentablePTAB · Nov 1, 2017 · IPR2016-00977 · APJ Stacey G White · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1, 3, 4, 6, 7, 9, 10, 12, 13, 15, 16, 18, 19, 21, 22, and 24 are anticipated by Karol; all claims are obvious over Karol.
RulingsFinal written decision- Skill levelOther
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownGranted in part
“information to be gleaned by construing the words selecting/selects to mean “make a choice.” We also are not persuaded that there is a basis for inserting the word “discrete” into this construction. Therefore, based on the disputes before us, we see no reason to provide an express construction for the common terms select/selection.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Figure 5 of Karol depicts the packet forwarding process. Ex. 1006, 3:6–8. In step 501, a packet arrives at Karol’s CL router/switch 420. Id. 8:56–58. Step 503, then inquires as to whether the received packet is “a packet from a flow that needs CO Service.” Id. at Fig. 5, element 503 (emphasis added). Thus, we determine that Karol’s routing decisions are made for a flow of packets and not for an individual packet. As discussed above, we construed “selecting/selects, . . . within the controller on a per-packet basis” to require “selecting a network path for each packet.” See supra § II. Thus, we find that Karol does not disclose the per-packet selection required in claims 7 and 19. Therefore, we determine that Petitioner has not met its burden to establish that claims 7 and 19 are anticipated by Karol.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Path First) to determine routing prior to a packet being received at the gateway. PO Resp. 22. Patent Owner further contends that “[t]he OSPF routing protocol expressly excludes the possibility of making packet routing decisions on a per-packet basis.” Id. at 24. We find this to be an overly narrow view of Karol’s disclosures because Karol is not limited to OSPF. See Ex. 1006, 14:20–22 (“the description below assumes the OSPF routing protocol, the concept is readily applicable to other IP routing protocols”). We determine that Petitioner has shown that it would have been obvious to modify Karol to select networks on a per-packet basis. Petitioner has proposed a modification to Karol that is “much simpler” and, therefore, we find that one of ordinary skill in the art would have been motivated to make this modification in order to reduce system complexity. See Ex. 1005 ¶ 335. Petitioner has provided arguments and evidence sufficient to show that this modification would be within the abilities of one of ordinary skill in the art and that there would have been a reasonable expectation of success. See id. Thus, we find that Petitioner has put forth sufficient evidence to demonstrate that it would have been obvious to modify Karol in a manner that would have taught this limitation.” slip op. at 24
Patent outcomesUS 7,406,048 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,406,048 - Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Aug 28, 2017 · IPR2016-00593 · APJ Garth D Baer · IPR · Final written decision
The Board held that claims 12–15, 21–23, 25–27, 33–38, 44, and 45 were not shown unpatentable because Pictometry was not established as a publicly accessible printed publication.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Version 2.7 (“EFS 2.7 User Guide,” “Pictometry,” or “User Guide”) and, as the name suggests, is a user guide for the Pictometry software product. See Ex. 1004, xiii. Patent Owner argues that Petitioner does not demonstrate that Pictometry is prior art. PO Resp. 5–10. In our Final Written Decision in IPR2016-00594, we considered substantively the same arguments and evidence Patent Owner and Petitioner raise in this case. See IPR2016-00594 FWD 17–29; compare IPR2016-00594 Paper 31, 13–20 with PO Resp. 6– 13; and compare IPR2016-00594 Paper 33, 3–9 with Reply 4–11. In IPR2016-00594, we found Pictometry’s limited dissemination to some governmental entities subject to licensing restrictions was not sufficient to show public dissemination or public accessibility. IPR2016-00594 FWD 17–29. We adopt that same finding here. For the reasons explained in IPR2016-00594, we find that Petitioner has not established by a preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. §§ 102(b) and 311(b).” slip op. at 6
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“substantively the same as the arguments made in IPR2016-00594. In IPR2016-00594, we denied Patent Owner’s motion to exclude Exhibit 1004 (Pictometry), Exhibit 1011 (a Merriam-Webster Dictionary Definition “database” copied from a web page), Exhibit 2010 (Cohasset Town Report 2008), 2011 (LARIAC1 Pictometry Training), Exhibit 2012 (LAR-IAC2 Product Guide), Exhibit 2020 (“GIS: Pictometry: Oblique Imagery training), Exhibit 2021 (“Pictometry License Guidelines”), and Exhibit 2022 (“Pictometry – April 19, 2007”). IPR2016-00594 FWD 5–17. We granted Patent Owner’s motion to exclude Exhibit 2013 (article titled “Los Angeles County Extends its License Agreement with Pictometry for New Oblique Aerial Photos”), Exhibit 2014 (“Pictometry Administrative Training”), Exhibit 2015 (“Information about TXWILM Administrative Training”), Exhibit 2016 (“Pictometry Administrative Training”), Exhibit 2019 (“GIS Working Group Meeting Minutes”), Exhibit 2023 (“Welcome to Your End User Training”), Exhibit 2024 (“Electronic Field Study Getting Started Guide”), Exhibit 2025 (“Pictometry Announces Technical Advancements for GIS Professionals1”), and Exhibit 2026 (“Pictometry Announces Technical Advancements for GIS Professionals2”). Id. We adopt the same findings and conclusions here. For the reasons explained in IPR2016-00594, we deny the motion to exclude Exhibits 1004, 1011, 2010, 2011, 2020, 2021, and 2022, but grant the motion to exclude Exhibits 2013, 2014, 2015, 2016, 2019, 2023, 2024, 2025, and 2026. See id.” slip op. at 5
Patent outcomesUS 8,823,732 not shown unpatentable§ 102 anticipationPatents in suitUS 8,823,732 - Hamamatsu Corporation v. Sionyx, LLCRehearing grantedPTAB · May 26, 2017 · IPR2016-01910 · APJ Monica S Ullagaddi · IPR · Rehearing
Rehearing was granted for claims 9, 24, and 25 because Petitioner did not show their process limitations lacked patentable weight; it was denied for claims 1, 4, 5, 7, 8, and 13.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The relevant inquiry is not whether the Specification has support for an “enhanced response,” but whether the Specification supports construing the claim term “interact with” to mean an “enhanced response and/or filtering.” Even assuming, without deciding, for the purposes of this decision, that diffusing, redirecting, and absorbing electromagnetic radiation results in an increased quantum efficiency that could be considered to provide an enhanced response to electromagnetic radiation, Patent Owner fails to demonstrate persuasively that one of ordinary skill in the art would understand from the description in the ’591 patent Specification that the claim term “interacting with” is defined as “providing an enhanced response and/or filtering.” Furthermore, we are unable to discern a portion of the Specification of the ’591 patent that discloses such an equivalency. Not only does the ’591 patent not define “interact with,” the Abstract of the ’591 patent discloses that “[i]n one aspect, the textured region is operable to facilitate generation of an electrical signal from the detection of infrared electromagnetic radiation” and “[i]n another aspect, interacting with electromagnetic radiation further includes increasing the semiconductor substrate’s effective absorption wavelength as compared to a semiconductor substrate lacking a textured region.” Ex. 1001, Abstract (emphasis added). This passage suggests that, at least in one aspect, “interact[ing] with” electromagnetic radiation includes merely generating electrons from photons, which is not an “enhanced response” and/or “filtering,” as required by Patent Owner’s proffered claim construction.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableMixed
“position with sufficient evidence that demonstrates that the processes recited in claims 9, 24, and 25 do not impart structural and functional differences to the product. Moreover, Petitioner does not point to citations in the ’591 patent, testimonial evidence, or any other record evidence to support its position that the structure or functionality of the textured region resulting from the chemical etching or lasing processes recited in claims 9, 24, and 25 would be the same as the structure or functionality of a roughened surface produced by a mechanical polishing process as disclosed in Nakashiba. Rather, Petitioner provides only conclusory statements regarding its position. Given that Petitioner has not demonstrated sufficiently that the limitations recited in claims 9, 24, and 25 are not entitled to patentable weight, and in light of Petitioner’s concession that “Nakashiba does not disclose that the roughened surface S1 is formed by either lasing (in particular using short duration laser pulses) or chemical etching, as recited in claims 9, 24, and 25 of the ‘591 Patent,” we determine Petitioner has not met its burden of demonstrating a reasonable likelihood of prevailing with respect to showing that claims 9, 24, and 25 are anticipated under 35 U.S.C. § 102 by Nakashiba.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstitution denied meritsMixed
“Upon review of the record, we determine Petitioner did not support its position with sufficient evidence that demonstrates that the processes recited in claims 9, 24, and 25 do not impart structural and functional differences to the product. Moreover, Petitioner does not point to citations in the ’591 patent, testimonial evidence, or any other record evidence to support its position that the structure or functionality of the textured region resulting from the chemical etching or lasing processes recited in claims 9, 24, and 25 would be the same as the structure or functionality of a roughened surface produced by a mechanical polishing process as disclosed in Nakashiba. Rather, Petitioner provides only conclusory statements regarding its position. Given that Petitioner has not demonstrated sufficiently that the limitations recited in claims 9, 24, and 25 are not entitled to patentable weight, and in light of Petitioner’s concession that “Nakashiba does not disclose that the roughened surface S1 is formed by either lasing (in particular using short duration laser pulses) or chemical etching, as recited in claims 9, 24, and 25 of the ‘591 Patent,” we determine Petitioner has not met its burden of demonstrating a reasonable likelihood of prevailing with respect to showing that claims 9, 24, and 25 are anticipated under 35 U.S.C. § 102 by Nakashiba.” slip op. at 6
Claim construction§ 102 anticipationPatents in suitUS 8,680,591 - Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCSome claims unpatentablePTAB · Apr 19, 2017 · IPR2015-01996 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–9 are unpatentable as obvious over Shoubridge; claims 10–18 were not shown unpatentable. Substitute claim 25 is allowed, claim 26 is denied, and claim 27 is moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The levels of ordinary skill proposed by the parties do not differ significantly, as suggested by Dr. Karger’s testimony that his opinions would be the same under either party’s proposal. See id. Both parties’ proposed descriptions require at least an undergraduate degree in computer science or related technical field, and both require at least two years of industry experience (although Petitioner proposes four years), but both agree that an advanced degree could substitute for work experience. For purposes of this Decision, we adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “m-regular” Petitioner proposes the term “m-regular,” recited in at least independent claims 1 and 10, means “each node is connected to exactly m other nodes.” Pet. 13 (citing Ex. 1101, 4:64–65, 15:32–41). Patent Owner does not offer a construction of this term. Prelim. Resp. 12; PO Resp. 13– 16. For purposes of institution, we agreed that Petitioner’s proposed construction accords with the broadest reasonable construction consistent with the specification, which, for example, describes a graph in which each node is connected to four other nodes as a 4-regular graph. Ex. 1101, 4:64– 65. We see no need to alter that construction here. Accordingly, we construe “m-regular” to mean “each node is connected to exactly m other nodes.” 2. “m-connected” Petitioner proposes the term “m-connected,” recited in at least independent claims 1 and 10, means “dividing the network into two or more separate parts would require the removal of at least m nodes.” Pet. 14 (citing Ex. 1101, 5:1–5). Patent Owner does not offer a construction of this term. Prelim. Resp. 13; PO Resp. 13–16. The portion of the specification cited by Petitioner describes the 4-connected graph as having the property that it would take the failure of at least 4 nodes to divide the graph into disjoint subgraphs. Ex. 1101, 5:1–5. Because Petitioner’s construction accords with the specification description, we see no reason to alter that construction here. Accordingly, we construe “m-connected” to mean “dividing the network into two or more separate parts would require the removal of at least m nodes.”” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We find that Petitioner has satisfied its burden of proving that Shoubridge was a printed publication that was publicly available as of June 1997. At the outset, we observe that Dr. Shoubridge is a third-party witness with no alleged interest in the outcome of these proceedings. See Ex. 2031, 7:9–16, 90:25–91:7. In his first declaration, he testified that the attached Exhibit B10 was the paper he presented at the 1997 conference. Ex. 1120 ¶¶ 6–7. Although Patent Owner is correct that the pages of Exhibit B were not the actual pages from the conference proceeding (as in physically obtained at the conference), but a reproduction, Patent Owner does not address Dr. Shoubridge’s repeated testimony that the content of the paper was identical in every respect to what was presented and distributed in bound conference volumes. Ex. 2031, 77:24–78:7 (“So I can confirm that that [Exhibit B] paper was the paper I presented at the conference and it was put in the proceeding. That was what was published in the -- that content of 9 We have considered Patent Owner’s contention that this portion of Petitioner’s Reply exceeds the proper scope of reply (see Paper 65), but we disagree. We determine that this portion of the Reply, as well as the others cited herein, is properly responsive to evidence and arguments raised by Patent Owner in its Response and Preliminary Response (see also Paper 67) and, therefore, does not raise a new issue or belatedly present evidence. See Patent Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). 10 Exhibit B is identical to the Shoubridge reference, Exhibit 1105. that paper is what was published in the proceedings.”), 81:19–82:4 (“[P]ages 1381 to 1386 will correlate 100 percent with what was submitted as Exhibit [B]. So it’s an accurate reproduction, but it is not an actual bound – you know, it’s not pages out of the bound volume.”). Patent Owner does not direct us to any authority that requires the same physical paper to be in evidence for a reference to qualify as prior art. We have considered the fact that Dr. Shoubridge was, at first, unable to confirm that the $10 price indicated on the first page of the paper (see Ex. 1105, 1) was on the version of the paper presented in the conference and contained in the bound conference proceedings. Ex. 2031, 80:15–19 (“Maybe they do, but this one doesn’t.”). However, Dr. Shoubridge addressed this perceived discrepancy in his second declaration, where he stated that he was not looking at the first page of his article when asked about the price indication. See Ex. 1136 ¶¶ 4–8; Pet. Reply 4–5. We find this explanation credible. With its Reply, Petitioner submitted Exhibit 1137, which appears to be a scan of the bound version of Dr. Shoubridge’s article. Pages 31 to 36 of Exhibit 1137 appear to be identical to the Shoubridge reference in every respect including formatting, pagination, and the $10.00 indication on the first page.11 Consequently, Exhibit 1137 confirms Dr. Shoubridge’s deposition testimony as well as his second declaration that 11 The issue of whether the bound conference proceeding contained the $10 indication, therefore, is resolved by Exhibit 1137, which contains the $10 indication on its first page. As Petitioner represents, and Dr. Shoubridge states in his second declaration, Dr. Shoubridge may not have been looking at the first page of the paper when being cross-examined about the price indication. Pet. Reply 4–5; Ex. 1136 ¶¶ 4–8.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Applying this ordinary meaning, however, we are not persuaded that Petitioner has met its burden to show Shoubridge’s description of a broadcast network in which every node is connected to four neighboring nodes discloses a broadcast channel with an “indication” of neighbor participants for each participant. An “indication” requires more than the existence of neighbors, as Dr. Karger appears to acknowledge when he opines that a participant must know the identities of its neighbors in order to send messages to them. See Ex. 1119 ¶ 164. The Petition, however, merely relies on the fact that each computer in Shoubridge’s network is connected to four neighbors. Pet. 47. For support, the Petition cites paragraph 164 of Dr. Karger’s declaration, but does not quote or otherwise convey the substance of his testimony, i.e., that a participant must know the identities of its neighbors. Id. Furthermore, not only does Dr. Karger fail to explain how a participant knows the identities of its neighbors, but also how, even if true with respect to Shoubridge’s network, such a fact discloses a broadcast channel comprising an indication of (i.e., something that serves to indicate) neighbors for each participant connected to the broadcast channel. See Ex. 1119 ¶ 164; Ex. 1125 ¶¶ 197–98. Anticipation requires every limitation to be disclosed either expressly or inherently in a single prior art reference. Orion IP, 605 F.3d at 975. Here, Petitioner does not argue Shoubridge inherently discloses the “indication” limitation, nor does Petitioner sufficiently establish that Shoubridge expressly discloses the limitation. See Pet. 46–47; Pet. Reply 19–20. Moreover, we agree with Patent Owner that the citation in the Petition to the prosecution history of the ’634 patent does not support Petitioner’s position. See PO Resp. 49–50; Pet. 47–48. It was unnecessary for the applicants to argue during prosecution that the cited prior art figure showing a participant connected to other participants did not disclose an “indication” as recited in the claim because the applicants overcame the allegedly anticipatory reference by arguing that it did not disclose other limitations of the claim. See Ex. 1102, 260–62, 268, 273. For these reasons, Petitioner has not shown that Shoubridge discloses “a broadcast channel for participants, comprising . . . for each participant connected to the broadcast channel, an indication of four neighbor participants of that participant.” Accordingly, Petitioner has not shown by a preponderance of the evidence that Shoubridge anticipates independent claim 10 or dependent claims 11, 15, and 18.” slip op. at 23
Patent outcomesUS 6,829,634 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,829,634 - Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCAll claims unpatentablePTAB · Apr 19, 2017 · IPR2015-01972 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–11 and 16–19 are unpatentable as obvious over Shoubridge; substitute claims 20 and 22 are unpatentable, while substitute claim 21 is patentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s expert, Dr. Michael Goodrich, opines that a person of ordinary skill in the art would have had (1) a bachelor’s degree in computer science or related field, and (2) two or more years of industry experience and/or an advanced degree in computer science or related field. Ex. 2022 ¶ 25. Dr. Goodrich also states that his opinions would be the same if rendered from the perspective of a person of ordinary skill in the art as set out by Dr. Karger. Id. ¶ 28. The levels of ordinary skill proposed by the parties do not differ significantly, as suggested by Dr. Karger’s testimony that his opinions would be the same under either party’s proposal. See id. Both parties’ proposed descriptions require at least an undergraduate degree in computer science or related technical field, and both require at least two years of industry experience (although Petitioner proposes four years), but both agree that an advanced degree could substitute for work experience. For purposes of this Decision, we adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“than in Schreiber. Patent Owner is correct that the terms “network” and “participant,” used in the body of the claims, find their antecedent basis in the opening term that includes the disputed game environment (i.e., “[a] computer network for providing a game environment for a plurality of participants”). However, although this suggests “computer network” and “plurality of participants” are essential structure within the claim, the suggestion does not extend to “game environment,” which, we determine, is not essential to understanding the structurally complete invention otherwise recited in the claims. See Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 810 (Fed. Cir. 2002) (holding the phrase “located at predesignated sites such as consumer stores” not essential to understand limitations or terms in the claim). In making this determination, we have also considered the specification. See id. at 808 (noting that the specification may underscore certain structure or steps as important). The abstract of the ’344 patent describes the invention as a “broadcast technique” used in a communications network without any reference to a “game environment.” Ex. 1101, at [57]. When the specification does refer to a “game environment,” it explains that “a game environment is implemented using broadcast channels” in one embodiment of the disclosed invention. Id. at 16:30–31 (emphasis added). It further provides: Each player joins a game (e.g., a first person shooter game) by connecting to the broadcast channel on which the game is played. Each time a player takes an action in the game a message representing that action is broadcast on the game’s broadcast channel. In addition, a player may send messages (e.g., strategy information) to one or more other players by broadcasting a message. Id. at 16:34–40 (emphasis added). Thus, the ’344 patent describes a “game environment” as a use of a broadcast channel on a communications network. The specification consistently describes a broadcast channel in terms of the structural elements recited in claim 1. For example, similar to claim 1, Figure 1 is described as “a graph that is 4-regular and 4-connected which represents a broadcast channel.” Ex. 1101, 2:45–46 (emphasis added); see id. at 2:47–61 (referring to the interconnected computers in the networks of Figures 2–5B as broadcast channels); id. at 4:23–26 (describing the broadcast channel as “a graph of point-to-point connections (i.e., edges) between host computers (i.e., nodes)”). In view of these descriptions, we conclude that claim 1 recites a structurally complete invention (i.e., “a broadcast channel”), which may be used to provide a “game environment.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “m-regular” Petitioner proposes the term “m-regular,” recited in at least independent claim 1, means “each node is connected to exactly m other nodes.” Pet. 14 (citing Ex. 1101, 4:38–39, 14:65-15:7). Patent Owner does not offer a construction of this term. Prelim. Resp. 13; PO Resp. 17–23. For purposes of institution, we agreed that Petitioner’s proposed construction accords with the broadest reasonable construction consistent with the specification, which, for example, describes a graph in which each node is connected to four other nodes as a 4-regular graph. Ex. 1101, 4:38–39. We see no need to alter that construction here. Accordingly, we construe “m-regular” to mean “each node is connected to exactly m other nodes.” 2. “m-connected” Petitioner proposes the term “m-connected,” recited in at least dependent claims 4 and 5, means “dividing the network into two or more separate parts would require the removal of at least m nodes.” Pet. 14 (citing Ex. 1101, 4:42–46). Patent Owner does not offer a construction of this term. Prelim. Resp. 13; PO Resp. 17–23. The portion of the specification cited by Petitioner describes the 4-connected graph as having the property that it would take the failure of at least 4 nodes to divide the graph into disjoint subgraphs. Ex. 1101, 4:42–46. Because Petitioner’s construction accords with the specification description, we see no reason to alter that construction here. Accordingly, we construe “m-connected” to mean “dividing the network into two or more separate parts would require the removal of at least m nodes.”” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“construction, “a game application program that interacts with a logical broadcast channel which overlays an underlying network,” builds on its proposed construction of “game environment” by requiring a participant to be a “game application program” that interacts with a logical broadcast channel. However, as set forth above, “game environment” is an intended use of the computer network recited in the claims. Thus, adding an application program requirement to “participant” is an attempt to add a further limitation (i.e., “application program”) to the intended use that, we determine, is not a claim limitation. On the other hand, claim 9, which depends from claim 1, recites that “each participant is a process executing on a computer.” Ex. 1101, 29:54– 55. The ’344 patent uses the term “process” in describing both application programs and parts of programs. See, e.g., id. at 15:29–36 (“Computer 600 includes multiple application programs 601 executing as separate processes. . . . Alternatively, the broadcaster component may execute as a separate process or thread from the application program.”), Fig. 9 (“Contact process”). Thus, as used in claim 9, participant encompasses more than application programs—the limitation Patent Owner seeks to impose on “participant” in claim 1. By imposing a narrower limitation on “participant,” for purposes of claim 1, than the limitation imposed by claim 9, Patent Owner’s proposed claim construction is inconsistent with the specification.6 Petitioner proposes that “participant” be construed to have its “plain meaning.” Pet. Reply 3 (“participant in the network”). For reasons discussed below, we agree that the plain meaning of the term “participant,” including the various constraints placed on it by the claims themselves, would be sufficiently clear to a person of ordinary skill in the art for purposes of the analysis.” slip op. at 14
Patent outcomesUS 6,701,344 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,701,344 - Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCAll claims unpatentablePTAB · Apr 19, 2017 · IPR2015-01953 · APJ William M Fink · IPR · Final written decision
Claims 1–11 and 16 are unpatentable: claims 1–7, 11, and 16 are anticipated by Shoubridge, and claims 6–10 and 17 are obvious over Shoubridge; substitute claims 18 and 20 are unpatentable, while claim 19 is …
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“as directed to obvious subject matter over Shoubridge. Patent Owner has shown that its proposed substitute claim 19 is patentable over the prior art, but we determine that Petitioner has shown that proposed substitute claims 18 and 20 are unpatentable. IV. ORDER In consideration of the foregoing, it is ORDERED that claims 1–11 and 16 of the ’966 patent have been shown to be unpatentable; FURTHER ORDERED that Patent Owner’s Contingent Motion to Amend is denied with respect to substitute claims 18 and 20 and granted with respect to substitute claim 19;” slip op. at 76
- ExcludeMotion to exclude, deniedMixed
“weight (see supra § II.A). Accordingly, they are not inadmissible under FRE 401–402, and we, therefore, deny the motion. 4. Mr. Grenier’s Declarations Patent Owner contends Exhibit 1141, 1144, and 1132 (Mr. Grenier’s Declarations regarding Shoubridge, McCanne, and Gautier, respectively) should be excluded because he failed to authenticate the respective references (FRE 901) and had no personal knowledge of the facts stated in his declarations (FRE 602). PO Mot. Exc. 9. Patent Owner also states that “Mr. Grenier testified that IEEE was not available until the mid-2000’s, which is after the relevant time frame at issue here.” Id. (citing Ex. 2110, 14:15–20). As to Exhibit 1141, we dismiss the motion as moot because we did not rely on Mr. Grenier’s testimony in support of the availability of Shoubridge. Regarding Exhibits 1132 and 1144, we have reviewed these declarations and we disagree that he failed to authenticate the references, which are attached as exhibits to the respective declarations. Rather, as a custodian of records for IEEE, we find that Mr. Grenier provided testimony sufficient to show that the publications (i.e., Gautier and McCanne, respectively) are what they purport to be, IEEE publications.29 See FRE 901(a). We also find that Mr. Grenier’s testimony sufficiently demonstrates 29 Patent Owner does not provide support for its contention that Gautier is not an IEEE article (PO Mot. Exc. 9). Mr. Grenier provided credible, unrebutted testimony that the article attached to his declaration (Exhibit 1132, Exhibit A), which is the same as Exhibit 1149, was a proceeding presented at the 1998 IEEE International Conference on Multimedia Computing and Systems, July 1, 1998. Id. ¶ 8. his personal knowledge of the business practices of IEEE for him to testify regarding these practices. See FRE 602. Finally, regarding Patent Owner’s contention that “IEEE was not” slip op. at 72
- Skill levelOther
“B. Level of Ordinary Skill in the Art Citing its declarant, Dr. Karger, Petitioner opines that a person of” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“8 Patent Owner contends that its construction is “unrebutted” and that Petitioner’s declarant, Dr. Karger, testified that he had no understanding of the terms Patent Owner seeks to construe. PO Resp. 23 (citing, e.g., Ex. 2033, 100:23–101:8, 51:14–52:9). We disagree. Petitioner “interpreted [terms] for purposes of this review with their plain and ordinary meaning consistent with the specification of the ’966 patent.” Pet. 13; Pet. Reply 3. Moreover, we have reviewed portions of Dr. Karger’s testimony cited by Patent Owner (see PO Resp. 26–27; Paper 77 (“Motion for Observations”)), and do not agree that he had no understanding of the terms. Although Dr. Karger did not attempt to provide an explicit definition of terms Patent Owner seeks to construe (see, e.g., Ex. 2032, 52:8–9 (“I haven’t tried to scope out exactly what the boundaries of that meaning are.”), Ex. 2034, 120:20–21 (same)), Dr. Karger did apply his understanding of the meaning of these terms to the art. For these reasons, we reject Patent Owner’s suggestion that his testimony be given no weight.” slip op. at 19
Patent outcomesUS 6,714,966 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,714,966 - PTAB · Mar 29, 2017 · IPR2016-01492 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board granted rehearing in part to explain institution on Eizenhöfer and Miller anticipation grounds for claims 13–15 and require claim-interpretation briefing; it denied rehearing on § 325(d).
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must specifically” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“terminal demand” in a single sentence supported by citations to portions of the Specification and testimony from Dr. Lomp. Id. at 15–16 (citing Ex. 1001, 7:8–11, 18:50–54, 19:1–4, Figure 15A; Ex. 2001 ¶¶ 7, 16, 19–21). Based on our review of the cited portions of the Specification, it is not apparent how those sections support WPI’s proffered meaning of “subscriber terminal demand.” None of the cited portions explicitly defines “subscriber terminal demand” or uses the term, and WPI does not explain why those cited portions are relevant to the inquiry. The cited testimony from Dr. Lomp reflects his opinion but is not supported by any citations to other evidence, including the Specification itself. To the extent that WPI’s argument regarding the meaning of “subscriber terminal demand” relies upon Dr. Lomp’s testimony, we currently find that argument unpersuasive because it is unsupported by other evidence. TCT has not expressly argued the meaning of “subscriber terminal demand” but instead implies a meaning by identifying specific portions of Eizenhöfer that allegedly teach this limitation. Pet. 31–32 (citing Ex. 1004, 3:7–10, Abstract). Absent briefing with citations to relevant evidence, we decline to offer our own express interpretation of “subscriber terminal demand.” Rather, we determine that TCT’s implied interpretation and its argument based on that interpretation demonstrates a reasonable likelihood of establishing that Eizenhöfer describes the recited limitation. Because resolution of the dispute may require an express interpretation of “subscriber terminal demand,” we also direct the parties to address explicitly the meaning of this phrase at trial and cite relevant evidence from among at least other claims, the Specification, and the prosecution history.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“reasons. First, WPI has failed, as required under Rule 42.71(c), to identify an abuse of discretion stemming from our allegedly “unreasonable” failure to exercise discretion under § 325(d) and deny institution of challenges based on Miller. Second, WPI merely reiterates an argument already considered and rejected, and thus fails to meet its obligation under Rule 42.71(d) to “identify all matters . . . misapprehended or overlooked.” We disagree that WPI offered a “clear comparison” of the entirety of the claims that were allegedly previously considered by the Office during reexamination of the ’326 patent to the claims at issue in this proceeding. Describing claims in the ’326 patent as “closely related” or reciting “similar features” without providing the actual text of those claims fails to provide an adequate basis for comparing those claims to the claims at issue in this proceeding. The paraphrased comparison of claims in the ’326 patent to the claims here is similarly lacking in clarity. Third, even if we were to determine that WPI sufficiently compared the “orthogonal code generator” recited in claims of the ’326 patent to the one recited in the claims at issue, such a comparison fails to demonstrate enough similarity in the claims overall to justify a discretionary denial of TCT’s challenge based on Miller.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“TCT has not expressly argued the meaning of “subscriber terminal demand” but instead implies a meaning by identifying specific portions of Eizenhöfer that allegedly teach this limitation. Pet. 31–32 (citing Ex. 1004, 3:7–10, Abstract). Absent briefing with citations to relevant evidence, we decline to offer our own express interpretation of “subscriber terminal demand.” Rather, we determine that TCT’s implied interpretation and its argument based on that interpretation demonstrates a reasonable likelihood of establishing that Eizenhöfer describes the recited limitation. Because resolution of the dispute may require an express interpretation of “subscriber terminal demand,” we also direct the parties to address explicitly the meaning of this phrase at trial and cite relevant evidence from among at least other claims, the Specification, and the prosecution history.” slip op. at 5
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 6,381,211 - PTAB · Mar 24, 2017 · IPR2016-01223 · APJ Jennifer S Bisk · IPR · Rehearing
The Board reconsidered its analysis but denied institution because Petitioner did not show McNeill disclosed or rendered obvious the claimed analog signal acquisition channel.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). We grant Petitioner’s request insofar as we have reconsidered our analysis of whether Petitioner has shown that the prior art discloses the claimed “analog acquisition channel,” but we decline to modify our previous decision. slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inherency. First, Petitioner’s expert states that “[i]t is implicit and inherent for a scanner to have an analog signal acquisition channel for receiving a signal from analog source.” Reh’g Req. 4 (quoting Ex. 1306 ¶ 98). This sentence is exactly, word for word, the same as the sentence in the Petition it is relied upon to support. Pet. 35. Repetition of this legal conclusion in a declaration signed by a technical expert adds nothing to Petitioner’s attorney argument. It is not persuasive evidence. Second, both the Petition and the expert state that “[a] typical scanner at the priority date of the ’746 patent had a CCD and analog to digital circuitry to produce a digital representation of an image.” Pet. 35; Ex. 1306 ¶ 98. This statement does not adequately support a finding that the scanner discussed in McNeill necessarily discloses an analog signal acquisition channel. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). This evidence goes only to a typical scanner, not all scanners. Petitioner has not directed us to any other evidence supporting a finding of inherency. And as noted in our Institution Decision (Inst. Dec. 11), the Petition does not address why a person of ordinary skill in the art would find the addition of an analog signal acquisition channel obvious based on McNeill’s disclosure. The closest Petitioner gets to addressing this issue is in a statement that says “[a]dding an analog sensor to the ‘exemplary system’ of McNeill is inherent, but if it is not, a POSITA would find it obvious to do so.” Pet. 35. This vague and conclusory statement, part of a section of the brief which does not even reference the term “analog signal acquisition channel,” is insufficient to show that Petitioner is reasonably likely to prevail in showing that a limitation of the claim, not expressly disclosed in the reference, would have been obvious.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“the claimed “analog signal acquisition channel,” such an element is inherently disclosed by McNeill’s scanner. Reh’g Req. 3–5. Because McNeill’s scanner produces analog signals and then transmits those signals to an analog-to-digital converter, Petitioner asserts the scanner must “necessarily” include a channel connecting the analog sensor. Id. at 5 (citing Ex. 1306 ¶ 98. However, Petitioner’s evidence does not adequately support a finding of inherency. Petitioner relies on expert testimony to support its assertion of inherency. First, Petitioner’s expert states that “[i]t is implicit and inherent for a scanner to have an analog signal acquisition channel for receiving a signal from analog source.” Reh’g Req. 4 (quoting Ex. 1306 ¶ 98). This sentence is exactly, word for word, the same as the sentence in the Petition it is relied upon to support. Pet. 35. Repetition of this legal conclusion in a declaration signed by a technical expert adds nothing to Petitioner’s attorney argument. It is not persuasive evidence. Second, both the Petition and the expert state that “[a] typical scanner at the priority date of the ’746 patent had a CCD and analog to digital circuitry to produce a digital representation of an image.” Pet. 35; Ex. 1306 ¶ 98. This statement does not adequately support a finding that the scanner discussed in McNeill necessarily discloses an analog signal acquisition channel. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). This evidence goes only to a typical scanner, not all scanners. Petitioner has not directed us to any other evidence supporting a finding of inherency.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“And as noted in our Institution Decision (Inst. Dec. 11), the Petition does not address why a person of ordinary skill in the art would find the addition of an analog signal acquisition channel obvious based on McNeill’s disclosure. The closest Petitioner gets to addressing this issue is in a statement that says “[a]dding an analog sensor to the ‘exemplary system’ of McNeill is inherent, but if it is not, a POSITA would find it obvious to do so.” Pet. 35. This vague and conclusory statement, part of a section of the brief which does not even reference the term “analog signal acquisition channel,” is insufficient to show that Petitioner is reasonably likely to prevail in showing that a limitation of the claim, not expressly disclosed in the reference, would have been obvious.” slip op. at 5
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,504,746 - Mylan Pharmaceuticals Inc. / Amneal Pharmaceuticals LLC v. Yeda Research & Development Co. Ltd.Rehearing grantedPTAB · Dec 2, 2016 · IPR2015-01976 · APJ Zhenyu Yang · IPR · Rehearing
On rehearing, the Board modified its decision and held claims 1–20 unpatentable as obvious over Pinchasi with the 1996 SBOA and over Pinchasi with Flechter.
RulingsRehearing decision- RehearingGranted in part
“we entered a Final Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. Patent Owner filed a request for rehearing of our decision. Paper 87. In a concurrently issued Order, we grant-in-part Patent Owner’s request and vacate our original decision. Paper 89. We hereby issue this modified Final Written Decision.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“in the art. Petitioner contends that a person of ordinary skill in the art would have had (1) several years of experience in the pharmaceutical industry or in practicing medicine; (2) experience with the administration or formulation of therapeutic agents, dosing schedules and frequencies, and drug developmental study and design; and (3) a Ph.D. in pharmacology or an M.D. with experience in clinical pharmacology. Pet. 13. In its Preliminary Response, Patent Owner asserted that a skilled artisan would have had knowledge of, and experience with, both MS and GA. Prelim. Resp. 33–34. In the Decision to Institute, we agreed with Patent Owner. Dec. 9. We noted that Dr. Green, one of Petitioner’s declarants, states that a person of ordinary skill in the art would have had “direct experience administering therapeutic agents for the treatment of MS, as well as familiarity with the dosing schedules and frequencies of the different therapeutic agents available for MS treatment.” Id. (citing Ex. 1004 ¶ 27). During trial, neither party contests our findings of the level of a person of ordinary skill in the art. Upon considering the full record, we see no reason to deviate from our prior determination. Thus, we reiterate that in addition to the qualifications specified by Petitioner, a person of ordinary skill in the art would also have experience treating MS with GA.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“As an initial matter, we note that, in its Preliminary Response, Patent Owner challenged the status of the 1996 SBOA as a printed publication under 35 U.S.C. § 102(b). Prelim. Resp. 47–48. In the Decision to Institute, we determined that, based on the record available then, the 1996 SBOA constitutes prior art under § 102(b). Dec. 12–13. In its Response, Patent Owner does not dispute this finding. Having considered the complete record developed at trial, we reiterate that Petitioner has presented sufficient evidence (see Ex. 1007) to show that the 1996 SBOA was publicly accessible at least by July 17, 2007, more than one year before the earliest possible priority date of the ’250 patent (i.e., August 20, 2008). See Dec. 12–13. Thus, the 1996 SBOA constitutes prior art under § 102(b).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Upon considering the evidence as a whole, we also find that an ordinary artisan would have been motivated to administer GA three times over a period of seven days to increase patient compliance. We note again that Pinchasi teaches administering 40 mg GA every other day, which equates to seven doses over two weeks. Ex. 1005, 9. Thus, the difference between the challenged claims (three doses over a period of seven days, or six doses over two weeks) and the prior art is one less injection every two weeks. Dr. Green testifies that it was a well-known principle that decreasing the frequency of injections would have a positive impact on patients to stay on course with treatment. Ex. 1004 ¶ 101. The desirability of less frequent injections is supported by the 1996 SBOA, in which the reviewer recommended that Teva evaluate the necessity of daily injections as opposed to more infrequent intermittent administration of Copaxone®. Ex. 1007, 252.” slip op. at 13
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,232,250
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.