• Apple Inc. v. Virnetx Inc.All claims unpatentable
  PTAB · Jun 22, 2017 · IPR2016-00331 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–11, 14–25, and 28–30 are unpatentable as obvious over Beser and RFC 2401.

  RulingsFinal written decision

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

    “Patent Owner’s contentions are not persuasive. Patent Owner fails to explain sufficiently why the notion of “performing an additional evaluation” constitutes an implicit part of the claimed intercept clause. Addressing similar arguments by Patent Owner, a Board panel made a similar determination in the ’237 FWD relied upon by Petitioner. ’237 FWD 11 (“the record show[s] that the additional functionality urged by Patent Owner should not be imported into the intercepting phrase”).” slip op. at 8

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

    “broadest reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard under 37 C.F.R. § 42.100(b)). Under this standard, absent any special definitions, claim terms or phrases are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For the purposes of this Decision, only the claim terms or clauses below need express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms in controversy need to be construed and only to the extent necessary to resolve the controversy).” slip op. at 7

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

    “We find Dr. Tamassia’s testimony as to public accessibility of RFCs in general to be credible, especially given the independent support of RFC 2026 (Ex. 1036), the contents of which Patent Owner does not challenge.7 As part of routine discovery, see 37 C.F.R. § 42.51(b)(1)(ii), Patent Owner had the opportunity to cross-examine Dr. Tamassia, but does not point us to any discussion of this issue. Moreover, RFC 2401’s contents are consistent with the publication process described by RFC 2026 and Dr. Tamassia, including the inclusion of a date “November 1998” on the top right corner of the first page of the document. Ex. 1008, 1. In addition, this document—a request for suggestions and improvements for an Internet standards protocol, 7 As addressed below, Patent Owner objects and moves to dismiss a number of Exhibits based on hearsay and relevancy. See Paper 20 (Motion to Exclude). having no indication of being a mere draft or internal paper—is precisely the type of document whose very purpose is public disclosure, including on the Internet. Both of the magazine articles, Exhibits 1064 and 1065, further corroborate the indicia of availability on the face of RFC 2401, although they are not necessary to our finding of public accessibility. We do not rely on the testimony of Sandy Ginoza, Exhibits 1060 and 1063, which Patent Owner seeks to exclude as discussed further below.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner does not articulate a persuasive reason for giving Dr. Tamassia’s declaration, as a whole, little or no weight in our analysis. We agree with Petitioner that experts are not required to opine on every relevant factual and legal issue in order to be accorded substantial weight. The cases upon which Patent Owner relies do not show otherwise. For example, Patent Owner cites Schumer v. Laboratory Computer Systems, Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002), for the proposition that “[expert] testimony . . . ‘must identify each claim element, state the witnesses’ interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference.’” PO Resp. 52–53. Patent Owner’s quotation, however, mischaracterizes Schumer by omitting introductory words necessary to the meaning of the quoted sentence. In its entirety, the quoted portion of Schumer states the following: Typically, testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses’ interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference. The testimony is insufficient if it is merely conclusory. Schumer, 308 F.3d at 1315–16. The Federal Circuit then adds that it is not the task of the courts to “attempt to interpret confusing or general testimony to determine whether a case of invalidity has been made out” and “if the testimony relates to prior invention and is from an interested party, as here, it must be corroborated.” Id. at 1316. So, instead of laying out a specific, required format for the content of all testimony regarding invalidity, as asserted by Patent Owner, this portion of Schumer confirms the unremarkable proposition that conclusory, overly general, confusing, and self-interested testimony should not be relied upon. Id.; see also Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004) (“General and conclusory testimony, such as that provided by Dr. Kazmer in this case, does not suffice as substantial evidence of invalidity.”). Patent Owner does not show that the whole of Dr. Tamassia’s testimony suffers from any of these failings. Under 35 U.S.C. § 316(e), the preponderance of the evidence standard governs in determining whether Petitioner establishes unpatentability. We exercise discretion to determine the appropriate weight to accord the evidence presented, including expert opinions, based on the underlying facts supporting the opinion. We accord relevant portions of Dr. Tamassia’s testimony the appropriate weight based on that particular testimony and supporting evidence.” slip op. at 14

  Patent outcomesUS 8,504,696 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,504,696
• Black Swamp IP, LLC v. Virnetx Inc.All claims unpatentable
  PTAB · Jun 12, 2017 · IPR2016-00693 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1, 2, 5, 6, 15, 16, 27, 33, 36, 37, 39, 40, 51, 57, and 60 are unpatentable as anticipated by Kiuchi under § 102.

  RulingsFinal written decision

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

    “configured to “comprise an indication that the domain name service system supports establishing a secure communication link.” Patent Owner argues that “it is improper to equate establishing a secure communication link with indicating whether the domain name service system supports establishing a secure communication link” because claim 1 “separately recit[es] ‘establishing a secure communication link,’ . . . and ‘an indication that the domain name service system supports establishing a secure communication link.’” PO Resp. 22, 30 (citing Ex. 2015 ¶ 34, 46). Patent Owner does not explain sufficiently how a system that establishes a secure link somehow does not “indicate” that it supports doing so if the system establishes the secure link. One of skill in the art would have understood a system that establishes a secure link would support doing so at least as a matter of common sense. If the system did not support establishing a secure link, one of skill in the art would have expected such a system not to actually establish a secure link (the system not supporting such an action). This is contrary to Kiuchi’s system, for example, in which a secure link is established (thereby “indicating” that it supports doing so). For example, the “domain name service system” is recited in claim 1 as “establishing a secure communication link,” and comprising “an indication that the . . . system” may support the recited function of “establishing a secure communication link.” We do not observe, nor does Patent Owner point out in a meaningful way, any conflicts between a recited system comprising an “indication” that the system supports a recited function by performing the function that it supports and a recitation that the system is designed to perform that function.” slip op. at 6

  • Strike new argumentNew argument consideredDecided for petitioner

    “(“New Issue #1” and “New Issue #2”) in Petitioner’s Reply Brief. PO Identification 1–5. After careful consideration of Patent Owner’s arguments and for reasons set forth below, we determine that Patent Owner’s arguments regarding alleged New Issue #1 are moot because we do not rely upon Petitioner’s arguments regarding that issue in this opinion. We also determine that alleged New Issue #2 was responsive to arguments raised by Patent Owner.” slip op. at 14

  Patent outcomesUS 7,418,504 unpatentable
  § 102 anticipation
  Patents in suitUS 7,418,504
• Black Swamp IP, LLC v. Virnetx Inc.All claims unpatentable
  PTAB · Jun 12, 2017 · IPR2016-00957 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1, 2, 5, 6, 15, 16, 23, 27, 36, 37, 39, 40, 47, 51, and 60 are unpatentable as anticipated by Kiuchi under § 102.

  RulingsFinal written decision

  • Strike new argumentNew argument consideredDecided for petitioner

    “Given that Patent Owner raises this issue (that the claim terms “indicating” and “establishing” are separate and distinct) for the first time in Patent Owner’s Response, even assuming that Patent Owner is correct that Petitioner argues in the Reply Brief “that ‘the ‘indicate’/’indicating’ claim elements and the alleged ‘establishing’ claim elements are not separate claim elements’” (PO Identification 4 (citing Pet. Reply 14, 17)), such an argument by Petitioner would merely be responsive to Patent Owner’s arguments presented in Patent Owner’s Response and, therefore, would not “go beyond properly responding to VirnetX’s Patent Owner Response,” as Patent Owner alleges. PO Identification 1.” slip op. at 17

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

    “communication link.” Patent Owner argues that “it is improper to equate establishing a secure communication link with indicating whether the domain name service system supports establishing a secure communication link” because claim 1 “separately recit[es] ‘establishing a secure communication link,’ . . . and ‘an indication that the domain name service system supports establishing a secure communication link.’” PO Resp. 22, 30 (citing Ex. 2015 ¶¶ 34, 46). Patent Owner does not explain sufficiently how a system that establishes a secure link somehow does not “indicate” that it supports doing so if the system establishes the secure link. One of skill in the art would have understood a system that establishes a secure link would support doing so at least as a matter of common sense. If the system did not support establishing a secure link, one of skill in the art would have expected such a system not to actually establish a secure link (the system not supporting such an action). This is contrary to Kiuchi’s system, for example, in which a secure link is established (thereby “indicating” that it supports doing so).” slip op. at 6

  • BurdenDecided for petitioner

    “communication link.” Patent Owner argues that “it is improper to equate establishing a secure communication link with indicating whether the domain name service system supports establishing a secure communication link” because claim 1 “separately recit[es] ‘establishing a secure communication link,’ . . . and ‘an indication that the domain name service system supports establishing a secure communication link.’” PO Resp. 22, 30 (citing Ex. 2015 ¶¶ 34, 46). Patent Owner does not explain sufficiently how a system that establishes a secure link somehow does not “indicate” that it supports doing so if the system establishes the secure link. One of skill in the art would have understood a system that establishes a secure link would support doing so at least as a matter of common sense. If the system did not support establishing a secure link, one of skill in the art would have expected such a system not to actually establish a secure link (the system not supporting such an action). This is contrary to Kiuchi’s system, for example, in which a secure link is established (thereby “indicating” that it supports doing so).” slip op. at 6

  Patent outcomesUS 7,921,211 unpatentable
  § 102 anticipation
  Patents in suitUS 7,921,211
• Guangdong Alison Hi-Tech Co., Ltd. v. Aspen Aerogels, Inc.Institution denied
  PTAB · Jun 8, 2017 · IPR2017-00413 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–3, 5–7, 9, or 49 unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “model of glass wool, Corning model 3950, is resilient. Ex. 1003 ¶¶ 95–101 (testing a sample of Corning model 3950 for compressibility and resilience). This does not support Dr. Scherer’s or Petitioner’s conclusion, however, that all types of glass wool are resilient. Nor does it, at least on this record, support the conclusion that the glass wool disclosed in Ramamurthi is resilient. Ramamurthi’s glass wool is described as “pyrex glass wool (Corning SiO2 fibers, 8 μm diameter).” Ex. 1004, 7:20–21. Much of this description matches the description of Corning model 3950. Ex. 1018, 1 (describing Corning model 3950 as “Glass Wool, PYREX” and having a “[f]iber diameter” of “0.008 mm”). But Ramamurthi describes its glass as constituting individual fibers laid down “in a thin layer,” which does not match the product tested by Dr. Scherer. Ex. 1004, 7:34–36. The fact that it would be possible to rearrange Ramamurthi’s glass wool fibers into a configuration or arrangement similar to that represented by Corning model 3950, which is resilient, is not sufficient to demonstrate the inherency of such resiliency in the material disclosed by Ramamurthi. “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.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)).” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable

    “obvious to a person of ordinary skill in the art given the teachings of Sonoda and either Ramamurthi or Ryu. Pet. 53–55. Claim 7 depends from claim 1. Ex. 1001, 14:63–64. Accordingly, claim 7 incorporates all the limitations of claim 1. 37 C.F.R. § 1.75(c). Petitioner’s obviousness argument rests on the assertion that “Sonoda discloses all the limitations of claim 1.” Pet. 53. As discussed above, however, we determine that Petitioner has not shown sufficiently that Sonoda discloses the “lofty fibrous batting sheet” that is recited in claim 1. Petitioner does not argue that Ramamurthi or Ryu remedies this deficiency. Even if Petitioner had so argued, as discussed above, we determine that Petitioner has not shown sufficiently that either Ramamurthi or Ryu discloses the “lofty fibrous batting sheet” that is recited in claim 1. Because Petitioner’s argument for the obviousness of claim 7 relies on Sonoda anticipating claim 1, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing the obviousness of claim 7 over the combination of Sonoda and either Ramamurthi or Ryu.” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “the determination that Ramamurthi’s glass wool inherently possesses both bulk and resilience. First, Dr. Scherer testifies that all glass wool shows these properties. Ex. 1003 ¶ 94 (“Glass wool (and materials like it) are compressible and resilient enough to re-expand back to their original shape. Glass wool may also have low thermal conductivity and low density, qualities that contribute to the ‘loftiness’ of the fibrous material.”). Dr. Scherer does not provide an explanation supporting this conclusion for all types of glass wool or all “materials like it.” Id. Accordingly, this testimony “is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,078,359
• Bubbletight, LLC v. Baker Hughes Oilfield Operations, Inc.Institution denied
  PTAB · May 15, 2017 · IPR2017-00326 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 7, 8, 10, 13–16, and 24–27 were unpatentable over Baker, Baker and Xie, or Baker and Toth.

  RulingsInstitution decision

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

    “III. CONCLUSION Based on the arguments in the Petition and the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood that it would prevail on its challenge that claims 1–3, 7, 8, 10, 13–16, and 24–27 of the ’978 patent are unpatentable. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied.” slip op. at 22

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

    “[t]he use of the term substantially-continuous, cellular nanomatrix is intended to describe the extensive, regular, continuous and interconnected nature of the distribution of nanomatrix material 220 within powder compact 200. As used herein, “substantially-continuous” describes the extension of the nanomatrix material throughout powder compact 200 such that it extends between and envelopes substantially all of the dispersed particles 214. Substantially-continuous is used to indicate that complete continuity and regular order of the nanomatrix around each dispersed particle 214 is not required.” slip op. at 9

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

    “with one another. One embodiment discloses using a powder substrate to form a matrix between the dispersed particulates (see, e.g., Ex. 1006, 9:3– 19), and the other discloses forging, consolidating, or sintering the dispersed particulates to form a composite without the use of a powder substrate (id. at 14:16–24). Accordingly, Petitioner’s anticipation argument with respect to Baker requires combining disclosures from separate embodiments. This is not a permissible way to argue anticipation. “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed” and, therefore, “cannot anticipate under 35 U.S.C. § 102.” Id. Instead, Petitioner appears to be arguing that a person of ordinary skill in the art would somehow combine the separate disclosures in Baker’s two embodiments, which cannot support a case of anticipation. If Petitioner is arguing, however, that Baker’s alternate, powderless embodiment would inherently produce a substantially-continuous, cellular nanomatrix, that argument also fails. Inherent anticipation applies when the missing element is necessarily present in the recited reference. See In re Montgomery, 677 F.3d 1375, 1379–80 (Fed. Cir. 2012) (“A reference may anticipate inherently if a claim limitation that is not expressly disclosed ‘is necessarily present, or inherent, in the single anticipating reference.’” (quoting Verizon Servs. Corp. v. Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010))). Thus, based on our construction of “substantially-continuous, cellular nanomatrix” set forth above, Petitioner must show that a nanoscale-thick network of generally repeating, interconnected compartments or cells that encompass and interconnect the dispersed particles by extending between and enveloping substantially all of the dispersed particles is necessarily present in Baker. Neither Petitioner nor Dr. Hartwig sufficiently demonstrates that Baker’s powderless, alternate embodiment would invariably include “a substantially-continuous, cellular nanomatrix” as required by claims 1 and 25 of the ’978 patent.” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “If Petitioner is arguing, however, that Baker’s alternate, powderless embodiment would inherently produce a substantially-continuous, cellular nanomatrix, that argument also fails. Inherent anticipation applies when the missing element is necessarily present in the recited reference. See In re Montgomery, 677 F.3d 1375, 1379–80 (Fed. Cir. 2012) (“A reference may anticipate inherently if a claim limitation that is not expressly disclosed ‘is necessarily present, or inherent, in the single anticipating reference.’” (quoting Verizon Servs. Corp. v. Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010))). Thus, based on our construction of “substantially-continuous, cellular nanomatrix” set forth above, Petitioner must show that a nanoscale-thick network of generally repeating, interconnected compartments or cells that encompass and interconnect the dispersed particles by extending between and enveloping substantially all of the dispersed particles is necessarily present in Baker. Neither Petitioner nor Dr. Hartwig sufficiently demonstrates that Baker’s powderless, alternate embodiment would invariably include “a substantially-continuous, cellular nanomatrix” as required by claims 1 and 25 of the ’978 patent.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,101,978
• Old Republic General Insurance Group, Inc. / Old Republic Insurance Company et al. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Apr 12, 2017 · IPR2015-01992 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 2, 4–12, 14–24, and 34–48 are unpatentable over the stated grounds; claims 3 and 13 were not shown unpatentable, and claims 25–33 and 49 were disclaimed.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “On February 8, 2017, Patent Owner informed the Board that it had “disclaimed claims 25–33 and 49” of the ’002 patent, thereby “rendering the institution of claims 25–33 and 49 in the subject inter partes review proceeding moot.” Paper 18, 1; Ex. 2005 (disclaimer of claims 25–33 and 49 pursuant to 37 C.F.R. § 1.321(a)).” slip op. at 2

  • BurdenMixed

    “2. Analysis To anticipate a claim a “prior art reference must disclose each and every feature of the claimed invention, either explicitly or inherently.” Eli Lilly & Co. v. Zenith Goldline Pharm., 471 F.3d 1369, 1375–76 (Fed. Cir. 2006). An inherent disclosure may be found when an asserted prior art reference “necessarily” includes the unstated limitation. Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002).” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “Upon review of Petitioner’s arguments and supporting evidence, we are persuaded that Petitioner has identified where each limitation of independent claim 1 is disclosed in Huang. Claims 11, 34, and 40 contain limitations similar to claim 1, Petitioner provides detailed arguments as to where each limitation of these claims is disclosed in Huang, and Patent Owner does not present any arguments for these claims separate from those 7 At oral argument, Patent Owner asserted that we should not consider Petitioner’s argument that the icons of Huang contain URL information because this argument was presented for the first time in Petitioner’s Reply. Tr. 32:19–35:5. Patent Owner did not file a motion to exclude this evidence, however, or request a sur-reply to address any allegedly new issues raised for the first time in Petitioner’s Reply. Id. at 34:18–23. Nor is it evident why Petitioner’s arguments are not appropriate rebuttal arguments addressing Patent Owner’s proposed construction of “pointer.” Accordingly, we decline to exclude Petitioner’s URL arguments and evidence.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “be used in conjunction with the mobile interface agent, including “a computer, cable set top box, cellular phone, or other device.” Ex. 1001, 4:44–45. Patent Owner does not explain why the description of a “pointer” in one “context,” i.e., on a computer or PDA, represents a clear and deliberate attempt to define the term in all contexts, such that all pointers must be a “reference” to “a type of menu item” and be “accessible on a computer, PDA, or server.” See In re Paulsen, 30 F.3d at 1480 (noting that an inventor is “free to define the specific terms used to describe his or her invention,” but “this must be done with reasonable clarity, deliberateness, and precision”). The broadest definition of the term “pointer” in the ’002 patent is “a link/shortcut to an item.” Ex. 1001, 10:8–10 (“As discussed above, a pointer is a link/shortcut to an item such as . . . .”); Dec. on Inst. 10. This definition is consistent with the description of “pointers” in the ’002 patent written description and claims. Ex. 1001, 20:4–6 (“wherein the pointers provide links to access the corresponding user specific resources and information.”). Accordingly, we construe “pointer” to mean “a link or shortcut to an item.”” slip op. at 9

  Patent outcomesUS 6,546,002 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,546,002
• Aevoe Corp. v. Racing Optics, Inc.Institution denied
  PTAB · Nov 7, 2016 · IPR2016-01165 · APJ Michelle N Ankenbrand · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 5, or 3–4, 7–9 were unpatentable on the asserted grounds.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 42.4(a). We may not institute an inter partes review “unless . . . 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). Applying that standard, and upon consideration of the information presented in the Petition and the Preliminary Response, we deny the Petition and do not institute an inter partes review.” slip op. at 2

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

    “A. Claim Construction The Board interprets claims in an unexpired patent using the “broadest reasonable construction in light of the specification of the patent.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, claim terms are given their ordinary and customary meaning in view of the specification, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The parties do not direct us to any claim terms that are in controversy. See Pet. 4; see generally Prelim. Resp. Upon review of the parties’ arguments and supporting evidence, we determine that no claim term requires construction for purposes of this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 9

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

    “[I]nherency may supply a missing claim limitation in an obviousness analysis.” See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014). To establish an inherent disclosure, a party must show that the limitation at issue is “necessarily present” or “the natural result of the combination of elements explicitly disclosed by the prior art.” Id. at 1195–96 (citing In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). “Inherency, however, 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 at 581 (citations omitted). Petitioner contends that Wilson “teaches the same structural slip op. at 14

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “When an anticipatory reference “is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence.” Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted). Here, Petitioner does not show sufficiently that the structure and configuration of Kitaguchi’s cover sheet necessarily, or inherently, traps air. Although Petitioner refers to the use of an adhesive along the outer periphery of Kitaguchi’s cover sheet as creating a seal that traps air between the cover sheet and the display, that argument is unsupported by sufficient objective evidence. Indeed, Petitioner directs us only to Dr. Cairns’s bare opinion testimony that the “continuous adhesive layer [illustrated in Kitaguchi’s Figure 1 embodiment] would act as a seal and trap air between the film and the display surface in the same way described in the ’545 Patent.” Ex. 1005 ¶ 20. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”); see Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (a lack of objective support for expert opinion “may render the testimony of little probative value in a validity determination”). Accordingly, based on the record before us, Petitioner is not reasonably likely to prevail in showing that claims 1 and 5 are anticipated by Kitaguchi.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,128,545
• Clark Filter, Inc. v. Camfil USA, Inc., D/B/A Camfil Air Pollution ControlInstitution denied
  PTAB · Oct 3, 2016 · IPR2016-00982 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution on all asserted grounds because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing any of the challenged claims are unpatentable. Accordingly, we do not institute inter partes review.” slip op. at 2

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

    “The parties agree that the term “central” requires an aperture that is “in, at, or near the center” or “of, at, or forming the center” of a structural element. Pet. 12 (citing Ex. 1017, 1) (Petitioner asserting the definition “in, at, or near the center” applies); Prelim. Resp. 17 (citing Ex. 1017, 1) (Patent Owner asserting a hybrid definition, “of, at, or forming the center,” applies). Petitioner asserts “central” applies to “any portion of the overall claimed structure (e.g., filter flange assembly, filter element, or other structure),” and not just the filter flange assembly. Pet. 12. Patent Owner counters that the term “central aperture” “cannot be divorced from the surrounding claim language giving it context,” which indicates that the “central aperture” is at the center of the “filter flange assembly,” and “not some random ‘other structure,’ as Petitioner argues.” Prelim. Resp. 17 (citing Ex. 1017, 1). In this case, the claims themselves identify the “rectangular filter flange assembly” as the structural element having a central aperture. Thus, we agree with Patent Owner that the term “central aperture” applies to the rectangular filter flange assembly and not “any portion of the overall claim structure,” as asserted by Petitioner. This understanding is consistent with the written description of the ’037 patent, which describes and depicts an” slip op. at 8

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

    “We have construed “central aperture” as “an aperture that is in, at, or near the center of the rectangular filter flange assembly.” Upon review of the parties’ arguments and supporting testimony, we agree with Patent Owner that Petitioner and Mr. Haynam have not explained sufficiently why one of ordinary skill in the art, upon reviewing the ’037 patent as a whole, would conclude that any of openings 25 and 26 of Nostrand constitute a “central aperture.” First, as is evident from Figures 5 and 8 of Nostrand, openings 25 and 26 are not “in” or “at” the center of outlet plate 22 or spider plate 9, respectively. Indeed, spider plate 9 and post 10 physically prevent an aperture from being “in” or “at” the center of either structure. Second, Petitioner has not provided evidence or argument that persuasively demonstrates that one of ordinary skill in the art would consider one or more of Nostrand’s openings to be “near” the center of a rectangular filter flange assembly. Finally, Mr. Haynam does not explain sufficiently why one of ordinary skill in the art would consider four openings surrounding a central location in a solid plate (i.e., openings 26 in spider plate 9) to collectively constitute a “central aperture.” See Ex. 1002 ¶ 58; see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (noting that the “[l]ack of factual support” for an expert opinion “may render the testimony of little probative value”). As we find that Petitioner has not demonstrated that every element of independent claim 1 is disclosed in Nostrand, we need not address Petitioner’s arguments relating to claim 4. Based on the foregoing, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that Nostrand anticipates claims 1–5 of the ’037 patent.” slip op. at 13

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

    “art could rearrange the orientation of Nostrand’s primary filter element into a 4-3-4 or 2-1-2 array, Pet. 58; Ex. 1002 ¶ 136, Petitioner supports this argument by citation to MPEP 2144.04 and, in particular, MPEP 2144.04 § VI, entitled “Reversal, Duplication, or Rearrangement of Parts.” In this section of the MPEP, however, it is noted: The mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness. The prior art must provide a motivation or reason for the worker in the art, without the benefit of appellant’s specification, to make the necessary changes in the reference device. MPEP 2144.04 § VI (citing Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (BPAI 1984)); see also Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008) (noting that “some kind of motivation must be shown” to explain why a person of ordinary skill in the art would have modified a prior art reference to achieve the patented method). Here, Petitioner provides no reasoned explanation as to why one of skill in the art would modify the array of Nostrand to a 4-3-4 or 2-1-2 configuration. See Ex. 1002 ¶ 136 (Mr. Haynam testifying that other configuration are available, but not explaining why these configurations would be chosen in place of the configuration depicted in Nostrand).” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,673,037
• Avx Corporation v. Greatbatch, Ltd.All claims unpatentable
  PTAB · Sep 20, 2016 · IPR2015-00908 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1–9, 11–22, 24–34, and 36–38 are unpatentable, and the motion to amend is denied, because Stevenson anticipates the claims.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contends that the relevant field is more specific and narrower than filter capacitors and requires knowledge of electromagnetic interference (EMI) filtering and implantable medical devices (IMDs) and that Petitioner’s declarant lacks such knowledge. Prelim. Resp. 27–30. On the present record, we determine a person of ordinary skill in the art would have had a Bachelor’s degree in electrical engineering, chemistry, and/or physics, along with several years of relevant applied research or industry work experience in the field of filter capacitors, including electromagnetic interference (EMI) filtering and implantable medical devices (IMDs). Our conclusion is supported by Petitioner’s asserted prior art references, which disclose filter capacitors for electromagnetic interference (EMI) filtering and implantable medical devices (IMDs). Ex. 1002, 1:17–24; Ex. 1003, 1:9–14; Ex. 1004, 1:12–21. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect the level of skill in the art). On the present record and based upon the stated qualifications of Petitioner’s declarant, Ex. 1007 ¶¶ 2–5; Ex. 1008, we consider Petitioner’s declarant qualified to opine from the viewpoint of a person of ordinary skill in the art regarding Petitioner’s asserted grounds of unpatentability.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Wolf’s ground plates 132, 134, and 136 were known alternatives for providing conductive coupling between the interior and peripheral edge of a component in a capacitor assembly. Ex. 1007 ¶ 47; Ex. 1003, 9:17–21, 5:62–6:11, 12:40–61, Figs. 20 and 21; Ex. 1004, 3:64–4:3, 6:66–7:10, 8:38– 42, Fig. 5. We credit the unrebutted testimony of Mr. Galvagni that substituting Wolf’s ground plates for the ground plane of Brendel provides the predictable result of creating a path to ground for the filtering of unwanted signals from the terminal pin of a feedthrough assembly. Ex. 1007 ¶ 48; Ex. 1004, 4:48–56, 7:11–16, 8:28–32; KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976))). A person of ordinary skill in the art would have been motivated to substitute Wolf’s ground plates for Brendel’s ground plane to avoid manufacturing complexity. Ex. 1007 ¶ 46. More particularly, the unrebutted testimony of Mr. Galvagni establishes that ground plates having a flat profile, as disclosed in Wolf, are more readily manufactured than a ground plane that needs to be sputtered or plated into a small hole for receiving a ground pin, as disclosed in Brendel. Ex. 1007 ¶ 49; compare Ex. 1003, 7:22–32, 12:40–61, Fig. 21 (showing ground plane 430 that has been sputtered into counter-bored hole for receiving ground pin), with Ex. 1004, 9:53–65, 10:19–24, 10:35–40 (describing steps S104 and S114 for forming flat conductive layers). Thus, the evidence establishes that a person of ordinary skill in the art “would have seen a benefit” to making the substitution proposed by Petitioner. KSR, 550 U.S. at 424.” slip op. at 24

  • BurdenDecided for petitioner

    “Based on the foregoing, we find that Petitioner has shown by a preponderance of the evidence that Stevenson discloses every element of the challenged claims, arranged as set forth in the claims. See Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (“Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.”). Patent Owner does not present any persuasive argument or objective evidence to refute Petitioner’s showing that claims 1–9, 11–22, 24–34, and 36–38 of the ’076 patent are anticipated by Stevenson. See Paper 13. 3 The identification of this layer by the identifier 282 in Figure 71 appears to be a typographical error. Accordingly, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–9, 11–22, 24–34, and 36–38 of the ’076 patent are anticipated by Stevenson.” slip op. at 16

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

    “Based on the foregoing, we find that Petitioner has shown by a preponderance of the evidence that Stevenson discloses every element of the challenged claims, arranged as set forth in the claims. See Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (“Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.”). Patent Owner does not present any persuasive argument or objective evidence to refute Petitioner’s showing that claims 1–9, 11–22, 24–34, and 36–38 of the ’076 patent are anticipated by Stevenson. See Paper 13. 3 The identification of this layer by the identifier 282 in Figure 71 appears to be a typographical error. Accordingly, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–9, 11–22, 24–34, and 36–38 of the ’076 patent are anticipated by Stevenson.” slip op. at 16

  Patent outcomesUS 7,035,076 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,035,076
• The Mangrove Partners Master Fund, Ltd. / Apple Inc. et al. v. Virnetx Inc.All claims unpatentable
  PTAB · Sep 9, 2016 · IPR2015-01047 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1, 2, 6–8, and 12–14 are unpatentable as anticipated by Kiuchi; the Board also addressed obviousness grounds but did not need to rely on the additional references.

  RulingsFinal written decision

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

    “Claim 1 recites a DNS request. The DNS request is “sent by a client,” potentially “corresponds to a secure server,” and may result in any one of a return of an IP address of a nonsecure computer or the initiation of an encrypted channel between the client and the secure server. Claim 1 does not appear to recite any other specific features of the DNS request.” slip op. at 6

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “We are cautioned by the Federal Circuit that, with respect to secondary considerations alleged by Patent Owner in response to a prima facie showing of obviousness, “the obviousness inquiry centers on whether ‘the claimed invention as a whole’ would have been obvious.” WBIP, LLC v. Kohler Co., Appeal Nos. 2015-1038, 2015-1044, slip op. at 15 (Fed. Cir., July 19, 2016). Looking at the “claimed invention as a whole,” we note that claim 1, for example, recites a data processing device that determines whether an intercepted DNS request corresponds to a secure server, forwards the DNS request to a DNS function that returns an IP address of a nonsecure computer (when the intercepted DNS request does not correspond to a secure server), and automatically initiating an encrypted channel between the client and the secure server when the intercepted DNS request corresponds to a secure server. As previously discussed in the record, Kiuchi discloses these features, either taken separately or as a “whole.” Patent Owner does not indicate a portion of the “whole” of the claimed invention that Kiuchi supposedly does not disclose. Not having identified sufficiently a part of the “whole” of the claimed invention that Kiuchi does not disclose, we conclude that Kiuchi discloses the “whole” of the claimed invention. Therefore, Patent Owner fails to show a nexus to its evidence of secondary considerations. While Patent Owner argues that DARPA-sponsored entities were supposedly unable to provide “the ease of use of the solutions provided in the claimed inventions of the ’151 patent,” Patent Owner does not demonstrate persuasively and with credible evidence that Kiuchi, for example, was also unable to provide “the ease of use of the solutions provided in the claimed inventions of the ’151 patent.” As previously discussed, Kiuchi appears to have succeeded in providing such solutions.” slip op. at 18

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

    “preponderance of the evidence that RFC 1034 or [Rescorla] qualifies as a ‘printed publication.’” PO Resp. 40. The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). On its face, RFC 1034 is a dated “Request for Comments” from the “Network Working Group,” discussing generally known methods for responding to a query from a client. Ex. 1005, 4. On its face, Rescorla is a dated “Internet-Draft” from the Internet Engineering Task Force (IETF) and described as a “draft document[] valid for . . . six months.” Ex. 1004, 1. Moreover, RFC 1034 explicitly states that “[d]istribution of this memo is unlimited.” Ex. 1005, 1. These indicia suggest that it is more likely than not that both documents were made available to the public (over the Internet). To bolster its showing, Petitioner provides evidence suggesting that RFC 1034 and Rescorla would have been accessible to the interested public. For example, Petitioner provides testimony of Dr. Roch Guerin who explains that “Request for Comment” documents or “RFCs’ or ‘Internet- Drafts’ are “publications [that] are prepared and distributed” and “can be obtained from a number of Internet hosts using . . . document-retrieval systems.” Ex. 1003, 46. Dr. Guerin also testifies that such documents are “published and widely distributed” for “a period for others to provide comments on the document” and that the “publication date of each RFC is contained in the RFC, . . . in the top right corner of the first page of the document [which is] the date it was released for public distribution on the Internet.” Ex. 1003, 44. Ex. 1003 47–48.” slip op. at 24

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDecided for petitioner

    “Patent Owner argues that “Petitioner Black Swamp was improperly joined to the 01047 proceeding” because “[e]xpert testimony was required in this case given the complexity of the technology at issue” and Black Swamp supposedly failed to file this allegedly “required” expert testimony. This argument was previously raised by Patent Owner and previously addressed. IPR2016-00167 Prelim. Resp. 7–10; IPR2016-00167 Dec. Inst. 4–5; Paper 38, 3–4; Paper 42, 2–3. We remain unpersuaded by Patent Owner’s re-iterated arguments for at least the reasons previously provided. In response to the question of whether Petitioner is required to rely on expert testimony for purposes of institution, Patent Owner now states that “the Federal Circuit” has held that “Petitioner has both the ‘initial burden of production’ and ‘the burden of persuasion to prove unpatentability by a preponderance of the evidence.” PO Resp. 40. Patent Owner, however, does not explain the relevance of this statement, even if assumed to be true, to whether or not a Petitioner is required to rely on expert testimony for purposes of institution. We remain unpersuaded by Patent Owner.” slip op. at 26

  Patent outcomesUS 7,490,151 unpatentable
  § 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 7,490,151

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.