- Alcon Inc. / Alcon Vision, LLC et al. v. Amo Development, LLCAll claims unpatentablePTAB · Nov 4, 2022 · IPR2021-00845 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–17 and 20–26 are unpatentable, including as obvious over Kurtz, Swinger, and Weikert and, for specified claims, over Blumenkranz, Kurtz, Weikert, and Benedikt.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Both parties present compelling evidence that those of skill in the art would include individuals with experience in ophthalmology, as well as in the research, manufacture, and design of medical optics or medical lasers. Pet. 24–25; PO Resp. 10. The evidence of record also demonstrates that few individuals actually had such experience. Rather, teams of individuals with different expertise and various academic degrees would work together to design laser surgery systems intended to make incisions in the cornea, limbus, sclera, or lens of the eye. Thus, we find that the person of ordinary skill in the art would have been an ophthalmic surgeon or someone with a Ph.D., M.S., or B.S. degree in physics, biomedical engineering, or a related science, such as optical engineering, and having experience in researching, manufacturing, or designing medical optics or medical lasers (e.g., 5 years of experience for a Ph.D. or more to compensate for lesser degrees). We further find that such persons would have worked in collaboration with one another to fill any necessary gaps in knowledge (e.g., the engineer would consult the medical doctor on clinical issues or physiology and the medical doctor would consult” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mkt’g Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808–09 (Fed. Cir. 2002). Here, and as discussed in further detail below, the Examiner expressly allowed the claims, in part, due to an Examiner’s Amendment changing “[a] method” to “[a] cataract surgery method.” Ex. 1009, 16. This reliance on the preamble to define the claimed invention transforms this portion of the preamble into a limitation. See Catalina Mkt’g, 289 F.3d. at 808. slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In view of the foregoing, we understand that the addition of the term “cataract surgery method” was intended to make clear that the claimed method is used to make specific incisions related to cataract surgery, and not merely incisions “whose purpose is to reshape the cornea,” as disclosed for example in Bille. Id. at 64. We do not find that the prosecution history suggests that the term “cataract surgery method” requires that the method be used to form the claimed incisions in the cornea, limbus, or sclera, as well as unclaimed incisions in the lens or lens capsule. d) Analysis As discussed above, the intrinsic record of the ’024 patent, that is, the claims, written description, and prosecution history, suggests that a “cataract surgery method” is one that is used to create at least one incision related to cataract surgery. This may include cataract and relaxation incisions in the cornea, limbus, or sclera, or incision in the lens or lens capsule. require that the method be used to perform at least one incision related to cataract surgery, such as the expressly claimed cataract and relaxation incisions. Pet. 18–19 (Petitioner describing the steps of a “typical cataract surgery”).” slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“A petition must “identify with particularity the grounds for institution and evidence supporting such grounds,” including “the prior art relied upon and evidence that it qualifies as such.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (citing 35 U.S.C. § 312(a)). The Petition identifies the grounds for institution and the evidence supporting such grounds, and presents evidence that Weikert qualifies as prior art under 35 U.S.C. § 102(b). Pet. 5, 26. For example, Petitioner and Dr. Lubatschowski assert that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists,” and that Weikert was included in the 2005 edition of CATARACT AND REFRACTIVE SURGERY as Chapter 14: Refractive Keratotomy: Does it Have a Future Role in Refractive Surgery? Ex. 1001 ¶ 73. In addition, Hulu contemplates additional evidence being admitted in a reply to a patent owner preliminary response, as long as that evidence is responsive to the prior briefing. Hulu, Paper 29 at 14. In this case, Petitioner’s evidence submitted in its Reply is responsive to arguments made in prior briefs (i.e., Patent Owner’s Preliminary Response and Response), and simply confirms what was asserted in the Petition and Dr. Lubatschowski’s declaration, i.e., that Weikert is Chapter 14 of CATARACT AND REFRACTIVE SURGERY and the document bears a copyright date of 2005 (or, as asserted by Dr. Lubatschowski, is a “2005 edition”). Ex. 1060, 5, 12; Pet. 5, 26–27; Ex. 1001 ¶ 73. In addition, this evidence indicates that CATARACT AND REFRACTIVE SURGERY was published by document that would be expected to be made publicly accessible. See Ex. 1001 ¶ 73 (asserting that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists”); Ex. 1019, 220, 224, 227, 228, 230, 232 (providing a “Summary for the Clinician” at the end of several sub-chapters); Ex. 1060, 4–5. The information presented in the Petition, as confirmed by the Preliminary Reply evidence submitted by Petitioner, sufficiently demonstrates that Weikert is prior art to the ’024 patent.” slip op. at 22
Patent outcomesUS 9,233,024 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,233,024 - ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentNo claims unpatentablePTAB · Oct 14, 2022 · IPR2021-00698 · APJ John A Hudalla · IPR · Final written decision
Claims 1–45 were not shown unpatentable because the cited references did not establish the claimed limitations arranged as required or cure that deficiency.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art (or “POSITA”) “would at least have [had] a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and two or more years of industry experience in the field of telecommunications, or equivalent experience, education, or both” and “knowledge or familiarity with telecommunication.” Pet. 13 (citing, inter alia, Ex. 1003 ¶ 41). Patent Owner does not propose an alternative definition. See PO Resp. 4. We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifiers “at least” and “or more,” which introduce ambiguity. Based on the full trial record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’505 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“In our Decision on Institution, we determined that 35 U.S.C. § 112 ¶ 6 did not apply to the limitation in claim 14 that recites “a formatter to format the received data into at least one SMS (Short Message Service) message.” Dec. on Inst. 11 (citing Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298 (Fed. Cir. 2018); Ex. 1001, 1:66–2:1, 4:26–27, 4:46–51). Neither party addressed this determination after institution. We maintain our determination that § 112 ¶ 6 does not apply to this limitation, and we instead apply the plain and ordinary meaning. Thus, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Thus, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“c. Analysis At the outset, we note that Petitioner relies solely on an express anticipation theory for this ground. Petitioner did not put forth any contentions based on inherent anticipation, and Petitioner did not put forth any arguments or evidence like those in Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015), to show that “a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Thus, we must decide whether Haller discloses “all elements of [the] claimed invention arranged as in the claim.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).” slip op. at 19
Patent outcomesUS 7,203,505 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,203,505 - ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Sep 1, 2022 · IPR2021-00695 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–14 are unpatentable: claims 1–5, 7–11, 13, and 14 as anticipated and obvious over Huebner, and claims 1–14 as anticipated and obvious over de Haan.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “a Bachelor of Science degree in Electrical Engineering or an equivalent field, with two years of academic or industry experience in computer systems or comparable industry experience.” Pet. 6 (citing Ex. 1003 ¶ 38). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Mr. Stephen Gray. Ex. 1003 ¶ 38. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. PO Resp. 3. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“wherein the movement signalling provides an indication of one or more movement criterion of the projector” means “includes.” See, e.g., PO Resp. 5 (“the movement signaling providing (in other words, included in the movement signaling)”); PO Sur-reply 1 (“the ‘movement signaling provid[ing]’ (in other words, included in the movement signaling)”). As discussed below, even if we were to assume that the term “provides” means “includes,” the asserted prior art nonetheless teaches the disputed claim limitation. See Sections II.D.2, II.F.2. As a result, we need not resolve this particular claim construction issue in order to resolve the parties’ disputes about the asserted grounds of unpatentability. slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree. The claims of the ’071 patent indicate that the movement signaling and movement criterion need not be separate signals. Claim 1, for example, recites “wherein the movement signalling provides an indication of one or more movement criterion of the projector.” Ex. 1001, 11:21–23 (emphasis added). Patent Owner acknowledges that the claim term “provides” indicates that the movement signaling includes the movement criterion, and, thus, the movement criterion is not a separate signal. Id.; PO Resp. 5; PO Sur-reply 1; see Retractable Techs., Inc. v. Becton, Dickson & Co., 653 F.3d 1296, 1303 (Fed. Cir. 2011) (holding that the claim language indicates that the “needle holder” and “retainer member” need not be separate components). The written description of the ’071 patent confirms that the movement signaling and movement criterion need not be separate signals. Specifically, the ’071 patent states that “[b]y providing these movement criterion in the movement signalling, the processor is capable of recognising one or more of different types of movement/combinations.” Ex. 1001, 2:18–21 (emphasis added). Thus, the ’071 patent describes the movement criterion as provided “in” the movement signaling, not as a separate signal. Id.; see Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–32 (Fed. Cir. 2011) (holding that the specification discloses that the “cutting box” may also function as a “dust collection structure,” and, thus, the claim terms do not require separate components). Because Patent Owner’s interpretation is not consistent with the scope of the claim language and the written description, we decline to adopt it. No further construction of the phrase “wherein the movement signalling provides an indication of one or more movement criterion of the projector” is necessary to resolve the parties’ disputes about the asserted grounds of unpatentability. See Sections II.D.2, II.F.2.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner’s argument is unavailing. As discussed above, we decline to adopt Patent Owner’s interpretation that requires the movement signaling and movement criterion to be separate signals. See Section II.C.1. Further, Huebner discloses both the movement signaling and movement criterion. Huebner discloses a position sensor “that provides movement signals to the control unit 24.” Ex. 1005 ¶ 64. Huebner also discloses that the movement signals “provide[] information to the control unit regarding movement of the entire image projecting device 10 along x, y and z axes.” Id. In other words, Huebner discloses movement signals that include information indicative of the movement of the projector. Id. Thus, as Petitioner explains, Huebner’s movement signals disclose the recited “movement signalling” and the information included in Huebner’s movement signals disclose the recited “movement criterion.”4 Pet. 13, 18– 19; Pet. Reply 4–5.” slip op. at 11
Patent outcomesUS 8,147,071 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,147,071 - Juniper Networks, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Aug 16, 2022 · IPR2021-00538 · APJ Thu A Dang · IPR · Final written decision
Claims 1–7, 13, 15–19, 21–25, 31, and 33–38 were held unpatentable as anticipated by or obvious over Lewis; claims 3, 4, 6, 23, and 24 were also obvious over Lewis and Shankar.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Relying on the declaration of Dr. Weissman, Petitioner contends that A [person of ordinary skill] in the art related to the ’140 patent would possess a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field (or its equivalent), plus at least two years of experience working in networking environments, including at least some 1 U.S. Patent Application Publication No. 2004/0004955 A1, published January 8, 2004, filed March 18, 2003 (Ex. 1004, “Lewis”). 2 U.S. Patent Application Publication No. 2003/0174706 A1, published September 18, 2003, filed March 4, 2003 (Ex. 1005, “Shankar”). experience with networking protocols and network routing. Additional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education. Pet. 18 (citing Ex. 1003 ¶33). Patent Owner replies that it “does not offer a competing definition,” because “Petitioner would still not meet its burden to prove unpatentability of any challenged claim.” PO Resp. 4. We adopt and apply Petitioner’s definition of a person of ordinary” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner points out that “neither party has proposed claim constructions for the ’140 patent in the co-pending district court litigation,” and thus contends that “no construction for these terms is necessary because the claims encompass the prior-art mappings under any construction consistent with Phillips.” Pet. 19. Patent Owner does not propose any claim construction. See PO Resp. 4–5. We determine that it is unnecessary to construe any claim term expressly to resolve the disputed issues before us. To the extent the parties’ arguments about whether the prior art teaches the claimed subject implicate issues of claim interpretation, those matters are addressed in our merits analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
- BurdenUnpatentable
“1. Principles of Law Petitioner bears the burden of establishing the unpatentability of any claim by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This burden of persuasion never shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). There is no requirement that the prior art must use the same words to describe a claim element in order to teach or disclose that claim element. Identity of terminology is not required for a claim element to be anticipated by the prior art without resort to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Even in a nonobviousness setting, it is proper to take into account not only the literal and specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). For anticipation, the dispositive question is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference. Eli Lilly and Co. v. Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). There is no requirement that the prior art must use the same words to describe a claim element in order to teach or disclose that claim element. Identity of terminology is not required for a claim element to be anticipated by the prior art without resort to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Even in a nonobviousness setting, it is proper to take into account not only the literal and specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). For anticipation, the dispositive question is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference. Eli Lilly and Co. v. Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 7
Patent outcomesUS 7,596,140 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,596,140 - PTAB · Jul 18, 2022 · IPR2022-00405 · APJ John D Hamann · IPR · Institution
The Board instituted inter partes review of claims 1–21 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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) (2018); see 37 C.F.R. § 42.108 (2021). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’364 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We thus turn to the second part of the framework for these four grounds, and evaluate whether Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, Paper 6 at 8, 10. More specifically, we evaluate whether the Examiner erred by overlooking express teachings in Bird and Ishii, as Petitioner argues. See Pet. 23–24. In doing so, we look to Becton, Dickinson “factors (c), (e), and (f)[, which] relate to whether the petitioner has demonstrated a material error by the Office.” Id. at 10.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field[,] and at least two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶ 32). Patent Owner does not identify a proposed level of skill in the art that one would have had at the time of the invention of the ’364 patent or identify any specific shortcoming in Petitioner’s formulation. See generally Prelim. Resp. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least” as that language is vague and open-ended. Pet. 6. This assessment is consistent with the ’364 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“We disagree with Patent Owner that Petitioner fails to provide how the challenged claims are to be construed, as required by 37 C.F.R. § 42.104(b)(3). Rather, we find that Petitioner’s statement that no claim terms require express construction is sufficient. Pet. 14; CTPG 44 (“[A] petitioner may include a statement that the claim terms require no express construction.”). Moreover, as we discuss below, we find, at this stage of the proceeding, that Petitioner’s showing for unpatentability of the challenged claims uses the plain and ordinary meaning of the claim terms, rather than using an implicit construction, as Patent Owner argues. See infra Section VI(C)(6). At this stage of the proceeding, we do not provide any express constructions, and we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,547,364 - PTAB · Jul 18, 2022 · IPR2022-00334 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 6–9 under all asserted grounds, finding a reasonable likelihood that claims 6, 8, and 9 would have been obvious over Bird and Ishii.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under § 325(d), we use a two-part framework, (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2018); see 37 C.F.R. § 42.108. Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’994 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 32, 53–63). Patent Owner does not identify a proposed level of skill in the art that one would have had at the time of the invention of the ’994 patent or identify any specific shortcoming in Petitioner’s formulation. See generally Prelim. Resp. adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least” as that language is vague and open-ended. Pet. 5. This assessment is consistent with the ’994 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We also credit the testimony of Petitioner’s expert, Dr. Bederson, that one of ordinary skill in the art “would have understood that Ishii’s photosensors (red) are at the end of each optical waveguides (orange) and the optical waveguides define the extent of the input area,” as we find this testimony consistent with Ishii’s teachings. Compare Ex. 1002 ¶¶ 92, with Ex. 1010 ¶¶ 45, 51, Fig. 9. Dr. Bederson testifies that Ishii’s photosensors “are thus positioned both ‘at least partially circumscribing and immediately proximate’ and ‘outside’ the input area.” Id. In sum, we agree with Petitioner that Bird and Ishii teach a sensor array (i.e., “an X (or Y)-sensor portion 34” slip op. at 26
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,816,994 - Dell Technologies Inc. / Dell Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Jun 27, 2022 · IPR2021-00272 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–3, 5–9, 11–17, 19, and 20 are anticipated by Narayanan; all claims are also held obvious on the grounds stated.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“Patent Owner acknowledges that Narayanan discloses executing a spanning tree protocol, but contends that “there is no disclosure in Narayanan of the required initiating a spanning tree protocol in one or more of the first set of port interfaces.” PO Resp. 11–12 (emphasis omitted in part). Patent Owner’s argument is unavailing. We agree with Petitioner that, when taking over the active role, Narayanan’s Slave Chassis initializes and begins running bridging and routing protocols, such as the STP. See Reply 10 (citing Ex. 1005, 7:48–59, 5:12–15). Here, Petitioner cites its expert’s unrebutted testimony that the STP would be initiated specifically for the port interfaces that were reconfigured. Id. (citing Ex. 1004, Bambos Decl. ¶ 101). Petitioner also notes the similarity between the Narayanan’s teachings and the disclosure in the ’489 patent that, when an aggregation switch recognizes a connection failure of the VFL, it reconfigures its set of member ports into at least one link aggregate coupled to the edge node and enables a spanning tree protocol or other similar network protocol for alleviating packet loops on the link aggregate. Id. (citing Ex. 1001, 19:11–18).” slip op. at 23
- Skill levelOther
“1. Introduction The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016).” slip op. at 28
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Having reviewed the evidence and arguments of record, we agree with Petitioner that “a connection failure of the virtual fiber link to the remote aggregation switch,” as recited claim limitation [1.D], is not limited solely to failures of the VFL itself. We find that Petitioner has demonstrated that Narayanan discloses this limitation because in Narayanan processing module 216 is configurable to determine VSL 136 fails when it stops receiving communications from switch 110.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“2. Apparatus Claims 1–3, 5–9, and 11–14 Petitioner notes that Narayanan incorporates Smith and Chin by reference. Pet. 43 (citing Ex. 10056, 4:12–15, 5:33–37). Petitioner argues that, to the extent we do not consider Smith and Chin to be part of Narayanan’s disclosure, in view of Narayanan’s explicit reference to Smith and Chin, a person of ordinary skill would have had reason to combine their teachings with those of Narayanan. Id. Petitioner notes that Narayanan cites Smith as providing details for a suitable design of switch 132, including components such as forwarding engines, filtering databases, and spanning tree engines. Id. (citing Ex. 10057, 4:17–18). Petitioner also notes Narayanan’s explanation that Chin discloses details of an illustrative embodiment of PAgP as run by link aggregations engines 222 and 310 disposed in virtual switch 132 and access switches 105, 106. Id. (citing Ex. 10058, 5:32–39). Having reviewed the evidence and arguments of record, we are persuaded that Petitioner has demonstrated a person of 6 The Petition cites Ex. 1004, but it is clear from the context Petitioner means tocite Ex. 1005. 7 Ibid. 8 Ibid. ordinary skill would have had reason to combine the teachings of Smith and Chin with those of Narayanan.” slip op. at 29
Patent outcomesUS 8,913,489 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,913,489 - PTAB · Jun 7, 2022 · IPR2022-00052 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on all asserted grounds for claims 2–5, 7, 11–13, 21, and 23, finding a reasonable likelihood that Petitioner would show them unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution 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.” For the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to the remaining challenged claims— claims 2–5, 7, 11–13, 21, and 23 of the ’251 patent. Accordingly, we institute an inter partes review with respect to these claims on all grounds asserted in the Petition. See SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018).” slip op. at 2
- Parallel petitionsDecided for petitioner
“Typically, “one petition should be sufficient to challenge the claims of a patent,” but “there may be circumstances in which more than one petition may be necessary.” CTPG 59. For example, more than one petition may be necessary “when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Given the priority date dispute addressed only in the -00051 Petition, and in light of Patent Owner’s decision not to challenge Petitioner’s filing of parallel petitions, we decline to exercise our discretion to deny either petition. See CTPG 61 (“The Board will consider the parties’ submissions in determining whether to exercise its discretion to institute inter partes review under 35 U.S.C. § 314(a).”).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have had to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party asserts that any claim terms of the ’251 patent require construction. Pet. 6–7; Prelim. Resp. 13. And, upon review of the parties’ arguments and supporting evidence, we find that no terms require construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“In view of the foregoing, and after reviewing the parties’ arguments and supporting evidence, we determine that Petitioner demonstrates a reasonable likelihood that Birrell and Schultz teach or suggest “at least one LED circuit having a plurality of LEDs . . . wherein the at least one LED circuit is mounted on a reflective substrate,” as recited in claim 1 of the ’251 patent. Petitioner also provides a sufficient rationale, supported by record evidence, explaining why one of ordinary skill in the art would have combined Birrell and Schultz. b) Reasonable Expectation of Success Patent Owner contends the Petition does not support institution because incorporating Schultz’s flexible, multilayer optical film in Birrell would present substantial challenges “for reconciling the build characteristics of the multi-layer rigid frame construction of Birrell with the flexible construction of Schultz.” Prelim. Resp. 22. And, given the differences in construction between the two lighting devices, Patent Owner contends the combination of Schultz’s reflective surface materials with Birrell’s circuit board 58 is not a “predictable use of known lighting design techniques and components according to their established functions,” as asserted by Petitioner. Id. at 21–22. Contrary to Patent Owner’s argument, Petitioner does not contend that one of ordinary skill in the art would have used Schultz’s specific reflective material in Birrell. Rather, Petitioner argues that the use of reflective substrates to provide mechanical support for an array of LEDs was well known in the art and, given Schultz’s disclosure of the benefits of such a reflective coating, one of ordinary skill in the art would have sought to apply a reflective coating in Birrell. Pet. 13–16. In addition, Dr. Baker, citing to multiple disclosures in the prior art, testifies that one of ordinary skill in the art would have reasonably expected success in implementing a reflective substrate in Birrell. Ex. 1002 ¶¶ 82–85. Patent Owner’s bare attorney argument is not sufficient to call this testimony into question at this stage of the proceeding. c) Conclusion with Respect to Claim 1 For the reasons set forth above, Petitioner demonstrates sufficiently” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,492,251 - Gaf Materials LLC v. Kirsch Research And Development, LLCAll claims unpatentablePTAB · May 24, 2022 · IPR2021-00192 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–33 are unpatentable: claims 1, 8–12, and 19 are anticipated by Lou; the remaining claims are obvious over the stated Lou-based combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“patent. See Phillips, 415 F.3d at 1315–17. The term “extrusion lamination” does not appear anywhere in the ’482 patent outside of issued claim 1, but our understanding is supported by the prosecution history of the ’482 patent. Claim 1 as originally filed in the application that issued as the ’482 patent recited, in relevant part, “a reinforcing scrim of interwoven strands for supporting tensile forces in multiple directions; and at least one layer of thermoplastic material affixed to a side of the reinforcing scrim for providing a weather-resistant barrier.” Ex. 1002 (’482 patent prosecution history), 33. In response to a rejection of the claims as anticipated by U.S. Patent No. 5,523,357 to Peterson, describing a rubber mill calendering process, the applicant amended claim 1 to add the phrase “by extrusion lamination.” Id. at 71, 76. We find nothing to suggest that a person of ordinary skill in the art would have understood that amendment to add a requirement of an additional layer of thermoplastic material, separate and apart from the “at least one layer of thermoplastic material” already recited in the original claim, to serve as a binder between the scrim and the original layer of thermoplastic material. The applicant explained in remarks accompanying the amendment, “Peterson fails to disclose forming a thermoplastic layer over the reinforcing scrim by an extrusion lamination process.” Id. at 71 (italics, underlining, and capitalization omitted). We, thus, find that the added phrase specifies how the recited “thermoplastic material” must be “affixed” to “the side of the reinforcing scrim,” but does not alter the recited function of the thermoplastic material, namely, “for providing a weather-resistant barrier.” Although the applicant’s remarks further state that “[c]ontrarily [to the rubber mill calendering process of Peterson], the roofing underlayment of the present invention is formed by an extrusion lamination process which bonds the various layers together, including the pre-formed films, reinforcement scrim, and slip-resistant material” (id.), claim 1 does not recite “pre-formed films” or “slip-resistant material”; such additional layers are recited in dependent claims 5 (“metallized film”) and 2 (“layer of slip-resistant material”), respectively (Ex. 1001, 6:29, 6:37). Looking finally to the extrinsic evidence of record, including the testimony of the parties’ experts and other exhibits filed by the parties, we find no persuasive evidence to show that the recitation of extrusion lamination requires an additional layer in addition to the recited scrim and the at least one layer of thermoplastic material affixed to a side of the scrim. In that regard, notwithstanding Patent Owner’s contentions, we are not persuaded that “extrusion lamination” and “extrusion coating” are mutually exclusive. Rather, we credit Mr. Kaczkowski’s testimony that extrusion coating would also be considered “extrusion lamination” if, for example, it “results in the extrudate being permanently bonded to the substrate.” Ex. 2020, 28:17–20. While Patent Owner argues that Mr. Kaczkowski’s statement “is nothing more than restatement of the extrusion coating process,” and “[t]o think otherwise would require believing that ‘extrusion coating’ involves a thermoplastic layer that is extruded, and thus coated, onto a substrate with the result being that it is not permanently bonded, i.e., it will delaminate from the substrate” (PO Sur-reply 5), we disagree with Patent Owner’s further contentions that “[s]uch a product makes no sense” and “[u]nder Petitioner’s theories, the [prior art] would not work” (id.). Although there could indeed be extrusion coating processes that would result in coatings that are not permanently bonded, it does not follow that the cited prior art used such processes. Further, although a laminate may be affixed to substrate by an adhesive or other binder, we find no persuasive evidence in the record that the binder must be a separate layer from the laminate.” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“the “reinforcing scrim of interwoven strands” recited in claim 1 and Lou’s polypropylene polymer 2 to the recited “thermoplastic material.” Id. at 22– 23. Petitioner further contends that Lou discloses “affixing the thermoplastic material by extrusion lamination,” citing Lou’s disclosures that “[e]xtruder 20 supplies polypropylene polymer 2 through a slit orifice to deposit a thin continuous coating on the surface of sheet 1” and that coated sheet 3 is pressed by a calendaring nip formed by heated and unheated rolls. Id. at 23 (quoting Ex. 1005, 2:34–44) (citing Ex. 1003 ¶ 19; Ex. 1005, 2:45– 49).” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Having considered the parties’ respective arguments, we find that Petitioner’s contentions are supported by the evidence of record, and we find that Petitioner has articulated sufficient reasoning with rational underpinnings (including support both from the cited prior art and from Mr. Kaczkowski’s testimony) to combine the relevant teachings of Lou and Goodacre. We disagree with Patent Owner’s suggestion it is insufficient that Mr. Kaczkowski opined that a person of ordinary skill would have evaluated the proposed combination based on the combined teachings of the asserted references. As the Supreme Court has explained, When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103. KSR, 550 U.S. at 421. Patent Owner does not dispute Goodacre’s teachings or that combining those teachings with Lou would increase the tensile strength of Lou’s underlayment, but appears instead only to fault Mr. Kaczkowski for not determining whether those solutions would be less expensive than other alternatives. Such arguments are not persuasive. Although, as cited above, Petitioner alleges in the Petition that a skilled artisan would have recognized cross-lamination as “a simpler, less costly way to manufacture a nonwoven reinforcing scrim . . . consistent with Lou” (Pet. 37), we find that is only one among several reasons identified by Petitioner and Mr. Kaczkowski for the combination (see, e.g., id. at 34–35 (additionally identifying increased tensile strength as a well-known benefit of orienting polyolefin fabric)), each of which is independently persuasive.” slip op. at 53
- ExcludeMotion to exclude, grantedGranted
“Motion to Exclude. Federal Rule of Evidence 801 defines “hearsay” as a “a statement that: (1) the declarant does not make while testifying in the current trial or hearing; and (2) a party offers in evidence to prove the truth of the matter asserted in the statement.” Fed. R. Evid. 801(c). We agree with Petitioner that Patent Owner is offering Dr. Reitman’s testimony for its truth. As Petitioner points out, Dr. Reitman’s testimony is presented in the Patent Owner Response in alleged support of Patent Owner’s argument. See Reply Mot. Excl. 1 (citing PO Resp. 22 (“Maureen Reitman recognized that ‘extrusion coating’ and ‘extrusion lamination’ were two different processes”; “[A]s Ds. [sic] Reitman recognized, a POSITA would understand ‘extrusion coating’ to be different than ‘extrusion lamination.’”)). Further, Rule 802 provides that hearsay is not admissible unless a federal statute, the Federal Rules of Evidence, or other rules prescribed by the Supreme Court provide otherwise. Fed. R. Evid. 802. We agree with Petitioner that no exception or exclusion applies in this case. Mot. Excl. 1. Although, as Patent Owner contends, Federal Rule of Evidence 703 provides that “[a]n expert may base an opinion on facts or data in the case that the expert has been made aware of or personally observed,” and that “[i]f experts in the particular field would reasonably rely on those kinds of facts or data in forming an opinion on the subject, they need not be admissible for the opinion to be admitted,” we are not persuaded that opinions of others offered in litigation are the sort of “facts or data” that experts in the field of roofing underlayments would reasonably rely on in forming their own opinions.” slip op. at 64
Patent outcomesUS 6,308,482 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,308,482 - Triller, Inc. v. Tiktok Pte. Ltd.Institution deniedPTAB · May 16, 2022 · IPR2022-00181 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 19, 23, 24, or 28 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“An inter partes review may not be instituted unless “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). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“Petitioner contends that the PCT application does not include “anything that could reasonably be characterized” as disclosing the metadata limitation. Pet. 12–13 (citing Ex. 1025 ¶ 81). Petitioner, however, does not elaborate or address any aspect of the PCT application’s disclosure. See id. Patent Owner argues that the PCT application discloses the metadata limitation. Prelim. Resp. 6–12. According to Patent Owner, the PCT application describes a mobile device receiving and displaying “descriptive information” about a track (such as the song title, artist, and duration) without downloading the track itself, and this “descriptive information” discloses the “track meta-data” recited in the claim. Id. at 8–11 (citing Ex. 1008, 4:27–5:9, 11:6–16, 13:14–21, 51:7–13, 91:7–10, 105:16–18, 116:1–10, 133:2–3, 134:10–15, 149:21–23, 149:25–150:3, 150:12–26, 152:1–9, 153, 156). In support, Patent Owner notes that the PCT application describes “[m]etadata” as “[i]ndividual items of data or collections of data, of,” among other things, mobile content such as “full music downloads.” Id. at 7 (citing Ex. 1008, 13:14–21) (emphasis omitted). Patent Owner further explains by asserting that “[t]he fact that the track metadata is provided as a search result, but not the music file itself, demonstrates” disclosure of the metadata limitation. Id. at 9. In addition, Patent Owner submits that the PCT application discloses “sharing” track information because users can send their playlists and recommendations to other users. Id. at 11–12 (citing Ex. 1008, 5:21–22, 7:2–4, 59:10–14, 61:15–28, 65:1–17, 66:18–9, 67:7–9, 101:17–102:13, 130:8–17, Figs. 84, 97, 106). On this record, we are persuaded that the PCT application discloses the metadata limitation, which (for purposes of this Decision) requires a software application that uses “track meta-data” that (1) exists separately from the music track, (2) exists separately in any way from other forms of metadata, and/or (3) is stored in a separate database. See supra § II.B (claim construction). In particular, Patent Owner persuasively shows that the PCT application discloses a mobile device application that uses “track meta-data” (e.g., attributes of music tracks, such as the song’s title, artist, and duration) stored on the mobile device while the corresponding track and its metadata remain separately stored on a remote server.” slip op. at 13
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“2. Law on Written Description Support “It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quoting In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995)). “To satisfy the written description requirement [in § 112,] the disclosure of the prior application must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.’” Id. (second alteration in original) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)). “[T]he hallmark of written description is disclosure.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The sufficiency of written description support is based on “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. “The level of detail required to satisfy the written description requirement” necessarily “varies predictability of the relevant technology.” Id. The invention need not be described in haec verba, but a disclosure that merely renders obvious the claims does not provide adequate written description support. Id. at 1352.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“connect these dots. For example, it is unclear whether Petitioner proposes a combination of Abrams’s web browser and Khedouri’s music application, or whether it instead proposes that one be replaced with the other. See id. at 53–54. Petitioner also does not address whether a person of ordinary skill in the art would have had a reasonable expectation of success in combining a web browser and a music application. See id. Rather, Petitioner simply refers to combining “Khedouri’s music sharing functions” with “Abrams’ social networking functions” (id. at 54), which does not address the requirement that “a software application” meet these limitations. Moreover, Petitioner does not sufficiently explain why a person of ordinary skill in the art would have combined the functionality of Abrams and Khedouri. See KSR, 550 U.S. at 418 (obviousness requires analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Liberally interpreting the relevant portion of the Petition, Petitioner contends that a motivation to combine is established because: (1) the references themselves provide the motivation to combine, (2) the proposed combination was desirable and predictable, (3) an ordinary artisan would have been motivated to add music to Abrams, and/or (4) an ordinary artisan would have been motivated to add Abrams’s social networking functions to Khedouri. See Pet. 53–54; see also supra § II.E.1 (reproducing relevant portion of Petition with corresponding reference numbers). We are not persuaded. themselves provide the requisite motivation. See Pet. 53. Abrams is directed to “connecting users in an online computer system based on their relationships within social networks.” Ex. 1009 ¶ 1; see also id. ¶ 36 (“What is needed is a system that allows individuals to replicate the process of developing personal relationships through social networks, using a computer system and database.”). Khedouri, on the other hand, is directed to “selecting, requesting, downloading, and playing audio” files on a user’s portable audio player device from a content delivery service. Ex. 1011, Abst., ¶ 3. Petitioner identifies (and we perceive) no disclosure in either reference that suggests their combination. See Pet. 53–54. Petitioner incorrectly implies that Khedouri “expands on [Abrams’s] ‘music theme.’” Id. at 53. Abrams states that a user can identify the user’s interests as well as favorite music, books, tv, and movies (Ex. 1009 ¶ 91, Fig. 2), and each of these are stored as a text field in Abrams’s database (id. ¶¶ 89, 91, Fig. 2). This is a passing reference to music, not a music theme. Petitioner also contends that both Abrams and Khedouri teach most limitations of the claim (Pet. 53 (citing Ex. 1025, 120–123)), but even if that were true, it does not explain why a person of ordinary skill in the art would have combined them. Second, Petitioner’s assertions that the proposed combination would have been “desirable” and “predictable” are conclusory and entitled to little weight. See Pet. 54. Petitioner relies on Dr. Shamos’s testimony in support, but it similarly fails to provide analysis or evidence to support his conclusions. See Ex. 1025 ¶ 170. Accordingly, we assign little weight to that testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also TQ Delta, 942 F.3d at 1358. a desirable feature” and the combination would provide users “the ability to not only identify and publicize information about their favorite music on their profiles (and learn about others’ favorite music from others’ profiles) but to actually search for that music and be able to listen to it.” Pet. 54 (citing Ex. 1025 ¶ 170). Although this identifies vague benefits of a combination (i.e., sharing information and facilitating access to music), it fails to explain why an ordinary artisan would have been motivated to incorporate these benefits in Abrams’s social network. Petitioner also provides no evidence that an ordinary artisan would have had reasonable expectation of success in making this proposed combination. See id. at 53– 54. Given the specific facts and circumstances of this case, we are concerned that this rationale suffers from improper hindsight bias. See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018) (“We have observed that the prejudice of hindsight bias often overlooks that the genius of invention is often a combination of known elements which in hindsight seems preordained.” (internal quotation marks omitted)).” slip op. at 24
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,294,430
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.