- Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentablePTAB · Jan 26, 2023 · IPR2017-01928 · APJ Mitchell G Weatherly · IPR · Remand
Claims 1, 2, 9, 11–17, and 21–24 are unpatentable over Burns with Uy or AlphaGrip; claim 10 was not shown unpatentable because Burns does not teach detachable paddles.
RulingsRemand decision- RemandOther
“rendered claims 3–8 and 18–20 unpatentable. Valve, 8 F.4th at 1381. The Federal Circuit reversed our determination that Burns was not prior art. Id. at 1381. The Federal Circuit also vacated our determination that Valve had failed to prove that collectively claims 1, 2, 9–17, and 21–24 were unpatentable as obvious in view of Burns in combination with either Uy or AlphaGrip. Id. Accordingly, the Federal Circuit remanded the case to us to consider Valve’s challenges to the patentability of claims 1, 2, 9–17, and 21–24 of the ’229 patent as obvious based on the combinations of prior art listed in the table below. Claims6 35 U.S.C. § References 1, 2, 9, 10, 14–17, 21–24 103 Burns, Uy 1, 2, 9–17, 21, 22 103 Burns, AlphaGrip Id. C. Remand Background On remand, we authorized the parties to concurrently file an opening brief and then concurrently file responsive reply briefs. Paper 44, 4. The parties agreed, and we concurred, that no new evidence would be submitted during the remand proceeding. Id. at 3. Accordingly, we decide the issues on remand based on the record that was submitted during the original trial.” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Valve contends that the ordinarily skilled artisan would have: a bachelor’s degree in an industrial design or engineering field, and approximately two years of relevant experience, for example. Alternatively, the same or an equivalent level of skill in the art could be obtained by end users or hobbyists who have substantial experience modifying or creating customized game controllers that include features to better suit their needs, even without any college education. Pet. 10 (citing Ex. 1009 ¶ 11). Ironburg, without expressly defining the level of ordinary skill, contends that a college degree of the type identified by Valve is not required. See Supp. PO Resp. 4–6. Ironburg notes that the level of ordinary skill is “relatively low” and the technology involved “is simple and straightforward.” Id. at 4 (citing Ex. 2016 ¶ 21). Ironburg’s contentions regarding the level of ordinary skill are consistent with Valve’s position, id. at 6, which we apply in our analysis. D. Whether AlphaGrip Is a Prior Art Printed Publication” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We find Ironburg’s critique of Mr. Willner’s testimony unavailing. Valve persuasively responds that Mr. Willner testifies that he personally recalls reviewing AlphaGrip on the internet during 2006, which significantly predates the filing of the oldest application in the priority chain of the ’229 patent, May 22, 2013, by at least six years. Compare Ex. 1009 ¶ 3 (testifying that online publication of AlphaGrip happened in 2006), with Ex. 1001, code (60) (identifying provisional application filed May 22, 2013, as earliest-filed priority application). Mr. Willner testifies that he is the inventor and designer of the controller that is reviewed in AlphaGrip, which we find to qualify him as an ordinarily skilled artisan. Ex. 1009 ¶¶ 1–3. Besides expressly testifying that he viewed AlphaGrip online during 2006, Mr. Willner also testifies in some detail about his recollection of his interactions with the author of AlphaGrip, Ryan Paul, and the events surrounding the publication of Mr. Paul’s review on Arstechnica’s website. Id. ¶¶ 4–5. Mr. Willner also reviews the version of AlphaGrip that Valve submitted as prior art and testifies that it is a true and correct copy of the review that he remembers seeing online during 2006. Id. ¶¶ 6–7. We find Mr. Willner’s testimony to be reliable in part because he recalls being “delighted” by the praise Mr. Paul lavished on the AlphaGrip controller. Id. ¶ 8. The publication of AlphaGrip marked an important event for Mr. Willner’s company. Mr. Willner states that he immediately posted a link on his own company’s website to Arstechnica’s AlphaGrip review in 2006, and his company maintains the link to Arstechnica’s review of AlphaGrip “to this day.” Id. We find that all these facts increase the probative value of Mr. Willner’s testimony on the issue of whether AlphaGrip was published and could easily have been found by interested persons during 2006. Although Mr. Willner may not have been a webpage manager for Arstechnica or be able to testify about precisely how many people accessed AlphaGrip in 2006, we find his testimony, as one of skill in the art himself to be compelling. Not only has Ironburg failed to refute any of Mr. Willner’s testimony with countervailing evidence, Ironburg did not cross-examine Mr. Willner to test his memory of the specific events set forth in his testimony. See PO Resp. 16–18 (failing to provide countervailing evidence or cite cross examination testimony).” slip op. at 12
- ExcludeMotion to exclude, deniedMixed
“We also disagree with Ironburg that we should exclude as hearsay or irrelevant Dr. Rempel’s testimony on how flexible the Burns’ paddles were or the extensive body of objective evidence cited and relied upon by him to support his testimony.9 Mot. 12–13. To the contrary, we agree with Valve that Dr. Rempel may properly rely upon the cited exhibits even if they would otherwise be inadmissible hearsay because they constitute the types of information upon which an expert would reasonably rely under Fed. R. Evid. 703. Opp. 10. Accordingly, we deny-in-part the Motion to the extent that it seeks to strike or exclude testimony in Dr. Rempel’s second declaration or Exhibits 1020, 1025, 1026, 1031, 1036, 1042 cited by Dr. Rempel in support of his analysis.” slip op. at 18
Patent outcomesUS 9,352,229 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,352,229 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Nov 18, 2020 · PGR2020-00041 · APJ Lynne H Browne · PGR · Rehearing
The Board denied Supercell’s rehearing request, upholding denial of institution based on the Fintiv factors and the risk of duplicated efforts and inconsistent results.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“this factor or that we misapprehended the trial date. At the time of our Decision, trial was scheduled in the parallel proceeding for December 7, 2020, approximately nine months before our final written decision would have been due, if we were to institute trial. Dec. 10–11. As such, this gap in timing created a cognizable risk of inconsistent results and duplication of efforts, which weighed toward denying institution. Id. at 7, 11. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 4. However, the Decision goes on to determine that even if trial in the parallel proceeding was delayed by two months, consistent with Petitioner’s prior requested delay, the proximity of the trial date to our final written decision would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown that the Board misapprehended the trial date.” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was” slip op. at 8
- BurdenDecided for patent owner
“Petitioner was provided an opportunity to respond to this evidence to address any “time-based distinctions in Dr. Claypool’s testimony,” however, Petitioner declined to address this testimony in its Preliminary Reply, despite having the opportunity to do so. Prelim. Reply 5–7. We decline to consider now, on rehearing, arguments that Petitioner failed to make in its pre-institution papers. It is Petitioner’s burden to demonstrate that Mastermind was publicly accessible. As we stated in our Decision, this prior testimony casts serious doubt on Petitioner’s ability to satisfy that burden. Dec. 25. We also decline to consider new testimonial evidence submitted on rehearing on this issue, as Petitioner does not show good cause for admitting this new evidence. See Huawei Device Co. v. Optics Cellular Tech., LLC, IPR2018-00816, Paper 19 (PTAB Jan. 8, 2019) (precedential) (showing of “good cause” required prior to filing a rehearing request or in the request itself for new exhibits to be admitted). We could not have misapprehended or overlooked evidence and arguments that were not made before our Decision.” slip op. at 9
§ 102 anticipationDiscretionary denialPatents in suitUS 10,307,677 - Vizio, Inc. v. Polaris Powerled Technologies, LLCRehearing grantedPTAB · Sep 15, 2020 · IPR2020-00043 · APJ Kara L Szpondowski · IPR · Rehearing
The Board granted rehearing but denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“We have considered Petitioner’s Request for Rehearing and, for the reasons set forth below, we grant Petitioner’s Request for Rehearing, but we are not persuaded to change our ultimate conclusion to deny institution of inter partes review. II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.” slip op. at 3
- Other 314aInstitution denied discretionary otherDenied
“III. DISCUSSION OF THE REQUEST FOR REHEARING On May 4, 2020, we issued our Decision denying institution of inter partes review based upon: (1) the advanced stage of the California District Court proceeding; (2) the investment of time and resources by the District Court and the parties in the California District Court proceeding; (3) overlap in the invalidity theories that Petitioner is pursuing here and in the California District Court proceeding; and (4) overlap in the claims challenged in the California District Court proceeding. Inst. Dec. 6–12. In the Decision, we did not reach any of the ten substantive grounds for patentability. See generally Inst. Dec. Rather, the denial of institution was solely based on our findings under 35 U.S.C. § 314(a). Id.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review under 35 U.S.C. §314(a) and 37 C.F.R. §42.4. Institution of an inter partes review is authorized 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) (2012); see also 37 C.F.R. § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”) For the reasons set forth below, upon considering the arguments and evidence of record, we are not persuaded to change our ultimate conclusion to deny institution of inter partes review.7” slip op. at 5
- BurdenDenied
“The petition must identify with particularity each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim. 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.22(a) (content of petitions); 37 C.F.R. 42.104 (content of petition). Petitioner’s conclusory statements, without more, are irreparably lacking in detail. Petitioner does not provide any analysis to support the assertion of obviousness over Oki. In fact, Petitioner instead asserts that Oki discloses all of the limitations in each of claims 1, 2, 4–7, 9, 15, 16, and 18, so it is unclear what modification, if any, is required to Oki, or even the basis of Petitioner’s obviousness grounds. E.g., Pet. 28– 33. Petitioner does not clearly point out the differences between the claimed invention and Oki. Nor does Petitioner explain why a person of ordinary skill in the art would have found the claimed subject matter obvious in spite of those differences. Petitioner has not provided sufficient reasoning or facts on which to base a conclusion that a person of ordinary skill in the art would have found it obvious, in light of Oki’s disclosure, to modify Oki to meet the claim limitations. Accordingly, Petitioner fails to demonstrate a reasonable likelihood that it would prevail on this ground of unpatentability.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,223,117 - Valve Corporation v. Ironburg Inventions Ltd.Rehearing deniedPTAB · Oct 30, 2019 · IPR2017-01928 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied Valve’s rehearing request, leaving claims 1–24 not shown unpatentable because Valve did not establish that Burns was a prior art printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). Therefore, Valve must demonstrate that we misapprehended or overlooked matters previously argued and specifically identify the location in its papers at which it made the argument that we misapprehended or overlooked in order to justify modifying our Final Decision. It has failed to do so. Instead, Valve asks us to reconsider and reweigh evidence and” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As explained in detail, in our Final Decision, we do not consider Exhibit 1003 to be the same as the document accessible using the 1 The cited pages of Exhibit 1040 (pp. 171–179) refer to a copy of the Burns article provided by the Examiner during prosecution of an unrelated but commonly owned patent that appears to have been retrieved from the “Wayback Machine” web archive. See Ex. 1040, 172 (referring to “WAYBACK MACHINE”). However, neither the cited pages nor the Examiner’s Notice of References Cited lists the Webarchive URL. See id. at 165, 171–179 (listing only URL to xboxer360.com domain as source of Burns article). Webarchive URL. Final Dec. 17–29. The URL listed on Exhibit 1003 refers to a URL on the xboxer360.com domain, not the Webarchive URL on the web.archive.org domain. Ex. 1003, 1–10. Contrary to Valve’s contentions otherwise, URLs are not prior art materials themselves, but merely addresses that might permit a user to access information via the internet. Valve also wholly fails to identify any specific argument or evidence that it advanced during the trial that we misapprehended or overlooked in reaching our decision on the issue of whether Valve had proven that Exhibit 1003 was a prior art printed publication.” slip op. at 4
- ExcludeNot reached
“Ironburg filed a Motion to Exclude Evidence (Paper 30, “Mot.” or “Motion”). Valve opposed the Motion (Paper 31, “Opp.” or “Opposition”). Ironburg filed a Reply in support of the Motion (Paper 32, “Mot. Reply”).” slip op. at 3
§ 102 anticipationPatents in suitUS 9,352,229 - Kranos Corporation v. Riddell, Inc.No claims unpatentablePTAB · Jul 11, 2019 · IPR2016-01646 · APJ James J Mayberry · IPR · Remand
On remand, the Board found claims 1–7, 11, 13, 25–28, 30, 32–37 not shown unpatentable on the added grounds; it also denied Riddell’s motion to exclude as moot.
RulingsRemand decision- RemandOther
“motion to terminate the appeal in IPR2016-01646 and remand the proceeding, in light of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), and the Director’s Guidance on the Impact of SAS on AIA Trial Proceedings, for us to address claims and grounds that we had not instituted.3 In response, we modified our Decision on Institution to institute trial for all challenged claims and all grounds. Paper 32, 3 (the “November 9, 2018, Order”). We ordered briefing on those claims and grounds added to the trial in the November 9, 2018, Order. See Paper 32, 3–7.” slip op. at 3
- PTAB / AIA Trials › Motions to amend / substitute claimsAdverse judgmentGranted
“certain claims and grounds added to the trial in our November 9, 2018, Order. Paper 33. In the motion, Kranos “requests adverse judgment as to . . . [c]laims 3, 4, 7, 13, and 36.” Id. at 2. The motion continues that claims 6 and 26 remain in this proceeding for the grounds of “[o]bviousness over each of Sears or Rappleyea in combination with Ispas.” Id. As to claims 3, 4, 7, 13, and 36, Kranos’s motion is granted. Accordingly, we will enter the following judgment as to those claims: (1) claim 13 is not proven unpatentable as anticipated by Sears; (2) claim 13 is not proven unpatentable as anticipated by Rappleyea; (3) claim 13 is not proven unpatentable as anticipated by Zeller; (4) claim 36 is not proven unpatentable as obvious over Sears, Rappleyea, or Monica and Halstead; and (5) claims 3, 4, and 7 are not proven unpatentable over Sears or Rappleyea and Ispas.” slip op. at 9
- Skill levelSkill level board ownDecided for petitioner
“record before us, and ultimately found that a person having ordinary skill in the art to which the ’118 patent pertains would have at least a Bachelor’s degree in engineering or physics and at least one year of experience in designing protective equipment, protective helmets, or plastic parts including the design of protective or structural plastic elements. Final Wrtn. Dec. 9–10. We also found that additional experience (at least three years) may be substituted for a formal engineering degree. Id. at 10. We found that the prior art of record reflects this level of ordinary skill in the art. Id. at 10–11. We noted that our patentability analysis presented below would reach the same findings and determinations under Kranos’s or Mr. Shewchenko’s definition of the level of ordinary skill in the art. Id. at 11. In the supplemental briefing, neither party argued for a different definition of the level of ordinary skill than the definition adopted in our Final Written Decision, nor do we discern any reason, based on the supplemental record, to change this definition.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The term “aligned along” does not appear in any claim addressed in this Supplemental Final Written Decision. See, e.g., Final Wrtn. Dec. 11 (indicating that the term “aligned along” appears in independent claim 34). In the Final Written Decision, we determined that we did not need to expressly construe the term “integrally formed” to resolve the parties’ dispute. See id. at 16. As will be apparent from our analysis below, we need not address this term further here.” slip op. at 13
Patent outcomesUS 8,528,118 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,528,118 - Marker Volkl USA, Inc. v. Kneebinding, Inc.All claims unpatentablePTAB · Oct 15, 2018 · IPR2017-01265 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1 and 4–9 are unpatentable as anticipated by DE ’298 and obvious over Boussemart and DE ’298.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Id. at 14.3 Petitioner disagrees with Patent Owner’s assertions, arguing that the ’867 patent’s claim language and Specification establish that the two elements “are inextricably linked.” Pet. Reply 1–9. Although we are not in complete agreement with either parties’ construction, we, nevertheless, agree generally with Petitioner, for the reasons set forth below, that the “lateral release assembly” and “upper heel housing” recited by claim 1 should not be construed as being separate functional parts of the upper heel assembly that separate and isolate lateral and vertical release forces, respectively. We begin our analysis with the express claim language. Specifically, claim 1 recites in part “a lower heel assembly attached to the ski” and “an upper heel assembly coupled to the lower heel assembly and having a lateral release assembly for applying lateral securing pressure to the ski boot, the upper heel assembly comprising an upper heel housing that is configured to compress the heel portion of the ski boot downward.” Ex. 1001, 11:36– 12:2. Thus, from the claim itself, we know that (1) the “upper heel assembly” is coupled to the “lower heel assembly” and, thus, attached to the ski; (2) this associated upper/lower heel assembly has a “lateral release assembly”; (3) the lateral release assembly is for “applying lateral securing pressure to the ski boot”; and (4) the upper heel assembly “is configured to compress the heel portion of the ski boot downward.” However, none of this claim language requires that the “lateral release assembly” and “upper heel housing” must be treated as separate functional parts of the upper heel assembly that separate and isolate lateral and vertical release forces,” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Regarding the level of skill in the art, Petitioner asserts: a POSA in the February 18, 2003 timeframe would be an individual with a Bachelor’s degree in mechanical engineering or related technology and three to five years of experience in either the design, fabrication, or manufacture of ski bindings and related equipment, research concerning ski bindings and related equipment, or the development of standards concerning ski bindings or related equipment, in addition to ten years or more of personal experience using ski bindings. Pet. 14–15 (citing Ex. 1006 ¶ 32). In response, “Patent Owner agrees with Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’) for purposes of the ’867 patent.” PO Resp. 3 (citing Pet. 14–15). Having considered the evidence, we find that Petitioner’s articulation of the level of ordinary skill is correct. We also note that the cited references often reflect the appropriate level of skill at the time of the claimed invention, and that the references cited here appear to reflect the level agreed to by the parties. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [can] reflect the appropriate level of skill in the art”).” slip op. at 11
- BurdenUnpatentable
“Patent Owner responds that DE ’298 does not disclose an “upper heel assembly” that compresses the heel portion of the ski boot downward. PO Resp. 25–30. Patent Owner argues that “the disclosure of DE ’298 makes clear that the hold-down member 13 and heel holder 25 only resist upward motion by the ski boot heel – they do not ‘compress the heel portion of the ski boot downward’ by providing downward force on the heel.” PO Resp. 26. To support its position, Patent Owner provides an annotated copy of the annotated copy of Figure 2, provided by Petitioner and designated “Fig. Q” in the Petition. See Pet. 41. More particularly, Patent Owner annotated Petitioner’s “Fig. Q,” to show “a gap (circled in purple) between the top edge of the ski boot sole (which Petitioner added; the original figure in DE ’298 does not show the boot) and the bottom edge of arms 26 of heel holder 25.” PO Resp. 27–30 (citing Ex. 2001 ¶ 62). Figure 2, annotated, depicts the DE ’298 releasing/retaining device of a releasing ski binding. And, because there is a “gap” between the ski boot, superimposed by Petitioner in Fig. Q (see, e.g., Pet. 41), and arms 26 of heel holder 25, Patent Owner argues that DE ’298 “cannot provide downward force as the arms 26 do not touch the ski boot heel.” PO Resp. 28 (citing Ex. 2001 ¶ 63).4 Therefore, although Patent Owner acknowledges that DE ’298 discloses that its hold-down member “hold[s] the shoe down ‘against upwardly pivoting’” (PO Resp. 26–27 (citing Ex. 1004, 4), Patent Owner argues that merely “[o]pposing upward motion does not compress the ski boot downward as required by the challenged claims.” 5 PO Resp. 28. 4 The cited portions of Dr. Dodge’s Declaration largely mirror the language set forth in the corresponding portion of the Patent Owner Response. 5 Patent Owner submits that “[t]he plain and ordinary meaning of the term ‘compress’ means ‘to squeeze or press together’, or ‘to make smaller as if by squeezing.’” PO Resp. 28 (citing Ex. 2003). Petitioner responds that Patent Owner’s reading of DE ’298 is strained, that other portions of the reference make clear that DE ’298 discloses an “upper heel assembly” that does in fact compress the heel downward, and that any purported “gap” in the drawing is a red herring that does not comport with basic physics. Pet. Reply 15–18.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner responds that DE ’298 does not disclose an “upper heel assembly” that compresses the heel portion of the ski boot downward. PO Resp. 25–30. Patent Owner argues that “the disclosure of DE ’298 makes clear that the hold-down member 13 and heel holder 25 only resist upward motion by the ski boot heel – they do not ‘compress the heel portion of the ski boot downward’ by providing downward force on the heel.” PO Resp. 26. To support its position, Patent Owner provides an annotated copy of the annotated copy of Figure 2, provided by Petitioner and designated “Fig. Q” in the Petition. See Pet. 41. More particularly, Patent Owner annotated Petitioner’s “Fig. Q,” to show “a gap (circled in purple) between the top edge of the ski boot sole (which Petitioner added; the original figure in DE ’298 does not show the boot) and the bottom edge of arms 26 of heel holder 25.” PO Resp. 27–30 (citing Ex. 2001 ¶ 62). Figure 2, annotated, depicts the DE ’298 releasing/retaining device of a releasing ski binding. And, because there is a “gap” between the ski boot, superimposed by Petitioner in Fig. Q (see, e.g., Pet. 41), and arms 26 of heel holder 25, Patent Owner argues that DE ’298 “cannot provide downward force as the arms 26 do not touch the ski boot heel.” PO Resp. 28 (citing Ex. 2001 ¶ 63).4 Therefore, although Patent Owner acknowledges that DE ’298 discloses that its hold-down member “hold[s] the shoe down ‘against upwardly pivoting’” (PO Resp. 26–27 (citing Ex. 1004, 4), Patent Owner argues that merely “[o]pposing upward motion does not compress the ski boot downward as required by the challenged claims.” 5 PO Resp. 28. 4 The cited portions of Dr. Dodge’s Declaration largely mirror the language set forth in the corresponding portion of the Patent Owner Response. 5 Patent Owner submits that “[t]he plain and ordinary meaning of the term ‘compress’ means ‘to squeeze or press together’, or ‘to make smaller as if by squeezing.’” PO Resp. 28 (citing Ex. 2003). Petitioner responds that Patent Owner’s reading of DE ’298 is strained, that other portions of the reference make clear that DE ’298 discloses an “upper heel assembly” that does in fact compress the heel downward, and that any purported “gap” in the drawing is a red herring that does not comport with basic physics. Pet. Reply 15–18.” slip op. at 16
Patent outcomesUS 8,955,867 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,955,867 - Adobe Systems Incorporated v. William GreciaRehearing deniedPTAB · Sep 7, 2018 · IPR2018-00418 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Adobe’s rehearing request, leaving institution denied on all three § 103 grounds because Petitioner did not show Venkataramu was a publicly accessible printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We are not persuaded that the textbook including a citation to Venkataramu was a research aid that is sufficient, without further explanation, to establish the public accessibility of Venkataramu prior to the earliest possible effective filing date for the ’555 patent, namely, March 21, 2010. Although a research aid may establish the public accessibility of a potentially invalidating reference, the research aid itself must have been publicly accessible in order to do so. See Blue Calypso, 815 F.3d at 1350 (agreeing with the Board, where it “acknowledged that the published article was publicly accessible and that it related to the same research presented in [the potentially invalidating reference]” but “nevertheless found the article insufficient because it did not include any citation to [the potentially invalidating reference]”). Here, Petitioner has not adequately shown that the textbook including a citation to Venkataramu was publicly accessible before March 21, 2010.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“accessibility, we note that the Federal Circuit in Blue Calypso, which was decided after these Board decisions, explains that “[j]ust as indexing plays a significant role in evaluating whether a reference in a library is publicly accessible, . . . indexing, ‘[w]hether . . . through search engines or otherwise,’ is also an important question for determining if a reference stored on a given webpage in cyberspace is publicly accessible.” 815 F.3d at 1349 (internal citations omitted). The Federal Circuit further explains that the “absence of evidence demonstrating that the website at which the article was located was indexed and thereby findable by an internet search engine” can be overcome, however, by a showing that an ordinarily skilled artisan “would have been independently aware of the [website] as a prominent forum for discussing [the pertinent] technologies.” Id.” slip op. at 8
- BurdenDecided for patent owner
“We are not persuaded that the textbook including a citation to Venkataramu was a research aid that is sufficient, without further explanation, to establish the public accessibility of Venkataramu prior to the earliest possible effective filing date for the ’555 patent, namely, March 21, 2010. Although a research aid may establish the public accessibility of a potentially invalidating reference, the research aid itself must have been publicly accessible in order to do so. See Blue Calypso, 815 F.3d at 1350 (agreeing with the Board, where it “acknowledged that the published article was publicly accessible and that it related to the same research presented in [the potentially invalidating reference]” but “nevertheless found the article insufficient because it did not include any citation to [the potentially invalidating reference]”). Here, Petitioner has not adequately shown that the textbook including a citation to Venkataramu was publicly accessible before March 21, 2010.” slip op. at 12
- Strike new argumentNew argument disregardedOther
“1016, 2). Relying on FanDuel, Inc. v. CG Tech. Dev., LLC, Case IPR2017- 00902, slip op. at 15 (PTAB Oct. 18, 2017) (Paper 14), Petitioner contends that such evidence is “separate evidence of the public dissemination and availability of [the textbook].” Req. Reh’g 6. This is a new argument, which does not address what we overlooked or misapprehended in our Institution Decision. Petitioner does not indicate where in the Petition or Ms. Manek’s Declaration this argument was raised. In any event, we are not persuaded by Petitioner’s new argument. The panel in FanDuel explained that “[t]he statutory phrase ‘printed publication’ has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was ‘published.’” FanDuel, slip op. at 14 (emphasis added). Here, evidence that the textbook was published in the United States and that unauthorized copying of the textbook was prohibited does not establish when the textbook became publicly accessible.” slip op. at 14
§ 102 anticipationPatents in suitUS 8,402,555 - Adobe Systems Incorporated v. William GreciaRehearing deniedPTAB · Sep 7, 2018 · IPR2018-00419 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Adobe’s rehearing request and left in place the denial of institution because the petition did not sufficiently show Venkataramu was publicly accessible before the patent’s earliest possible effective filing date.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a 2 Ameerally, U.S. Publ’n No. 2006/0212401 A1, published Sept. 21, 2006 (Ex. 1004). 3 Gautier, U.S. Publ’n No. 2005/0021478 A1, published Jan. 27, 2005 (Ex. 1005). 4 Dan Frakes, First Look: iTunes Digital Copy, Macworld, http://www.macworld.com/article/131751/2008/01/digitalcopy.html, last visited Jan. 10, 2017 (Ex. 1006). 5 Zweig, U.S. Publ’n No. 2007/0233606 A1, published Oct. 4, 2007 (Ex. 1008). 6 Suitts, U.S. Publ’n No. 2008/0040379 A1, published Feb. 14, 2008 (Ex. 1009). 7 Kondrk, U.S. Publ’n No. 2004/0254883 A1, published Dec. 16, 2004 (Ex. 1010). clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked,” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“accessibility, we note that the Federal Circuit in Blue Calypso, which was decided after these Board decisions, explains that “[j]ust as indexing plays a significant role in evaluating whether a reference in a library is publicly accessible, . . . indexing, ‘[w]hether . . . through search engines or otherwise,’ is also an important question for determining if a reference stored on a given webpage in cyberspace is publicly accessible.” 815 F.3d at 1349 (internal citations omitted). The Federal Circuit further explains that the “absence of evidence demonstrating that the website at which the article was located was indexed and thereby findable by an internet search engine” can be overcome, however, by a showing that an ordinarily skilled artisan “would have been independently aware of the website as a prominent forum for discussing [the pertinent] technologies.” Id. In this case, that the Internet Archive electronically archived a copy of Venkataramu does not, by itself, mean that Venkataramu was sufficiently indexed on the San Jose State University (SJSU) website or the Internet Archive. Nor does it reveal anything about the search capabilities of the SJSU website or the Internet Archive, or why one with ordinary skill in the art would have even visited either website to find anything. With respect to the SJSU website, Mr. Christopher Butler does not claim to have personal knowledge of the general practices regarding the university website, or the search capabilities of the website. For example, he does not testify as to the procedures, if any, the university uses to index project reports, or the manner, if at all, in which project reports are indexed (e.g., by author, title, subject). He also does not testify as to the search capabilities of the SJSU website, or why an ordinarily skilled artisan would have visited the website to locate Venkataramu. We note Petitioner’s assertion in its Petition that Venkataramu was “indexed as a Masters’ Thesis,” (Pet. 30), which, of course, bears no relationship to the subject of Venkataramu. See In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989). As for the Internet Archive, we note that Mr. Butler testifies that “[v]istors to the Wayback Machine can search archives by URL (i.e., a website address),” (Ex. 1024 ¶ 3), which, similarly, bears no relationship to the subject of Venkataramu. Mr. Butler does not testify as to any other way to locate Venkataramu on the Wayback Machine, or as to why a visitor would have visited the Wayback Machine to locate Venkataramu.” slip op. at 9
§ 102 anticipationPatents in suitUS 8,533,860 - DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentablePTAB · Jul 25, 2018 · IPR2017-00724 · APJ Michael W Kim · IPR · Final written decision
Claims 19 and 26 are unpatentable: claim 19 as anticipated by Hite and claim 26 as obvious over Hite and Baji; claims 32–36 and 41 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for patent owner
“Petitioner, with supporting testimony from Dr. Negus, argues that a person of ordinary skill in the art would have combined Hite’s system with Hill’s teaching of a high access partition in order to increase storage efficiency and address Hite’s goal of providing “advertisers with less waste and greater cost effectiveness.” Pet. 60; Ex. 1008 ¶ 599 (quoting Ex. 1009, 3:21–35; citing Ex. 1010, 4:54–57). According to Petitioner and Dr. Negus, one of ordinary skill would have had reason to combine Hite and Hill— using Hill’s “high access partition allocated for high access data storage” to “store the high access advertisement data of Hite”—to “yield[] the completely predictable and desirable result” of “decrease[d] read and write times of advertisement data stored in Hite’s” storage devices, including optional video storage device 456. Pet. 60, 65; Ex. 1008 ¶ 599; see also Tr. 107:10–15 (asserting the same). Patent Owner argues Dr. Negus’ assertion that advertising data is” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“at least one addressable and reserved storage space is a partitioned area of a hard disk drive.” Ex. 1003, 49:55–58. Petitioner refers to Hite’s disclosures that its storage devices “can be . . . disks.” Pet. 27–28 (quoting Ex. 1009, 12:6–11; citing Ex. 1009, 10:44–49). Dr. Negus testifies that “‘disks’ at the alleged time of the invention of the ’494 patent were commonly known as ‘hard disk drives.’” Ex. 1008 ¶ 680 (emphases omitted). Petitioner and Dr. Negus represent that a person of ordinary skill in the art would, therefore, “have understood Hite to disclose the use of an entire ‘disk’ (or ‘hard disk’) as the ‘Video Storage Device’” or the RD. Pet. 28 (citing Ex. 1008 ¶ 680). Petitioner, with supporting testimony from Dr. Negus, further contends that “[w]hen the entire ‘hard disk’ storage space is undivided, it is within the broadest reasonable interpretation of the claimed ‘partitioned area of a hard disk drive.’” Pet. 28; Ex. 1008 ¶¶ 680, 683. We disagree. Based on Hite’s explanation that “[t]he storage devices used to implement” its system “can be . . . disks” as well as the evidence before us that “disks” or “hard disks” were known as “hard disks drives” at the relevant time, we agree with Petitioner that an ordinarily skilled artisan would have understood Hite to use an entire disk, hard disk, or hard disk drive for OVS Device 456 and for the RD. Ex. 1009, 10:44–49, 12:6–11; Ex. 1008 ¶ 680; see Ex. 3002 (MICROSOFT COMPUTER DICTIONARY (5th ed. 2002)), 246 (explaining, within definition of “hard disk,” that a “hard disk” is “[a]lso called: hard disk drive” and defining “hard disk drive” as “See hard disk” (emphases omitted)). We part ways with Petitioner, however, in its proffered conclusion that such an “entire,” “undivided” hard disk or hard disk drive falls within the ordinary meaning of “partitioned area of a hard disk drive.” Pet. 28; Ex. 1008 ¶¶ 680, 683; see Ex. 3001, 1087 (defining “partition” as “divide into parts”). The claim language expressly requires a “partitioned area of”—not a whole, entire, or undivided—hard disk drive. Thus, we disagree that an entire hard disk or hard disk drive constitutes the “partitioned area of a hard disk drive” required by claim 32. Accordingly, we are unpersuaded that Hite discloses “wherein said at least one addressable and reserved storage space is a partitioned area of a hard disk drive,” as recited in dependent claim 32. Thus, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 32 is anticipated by Hite.” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“e. Conclusion Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is anticipated by Hite. 4. Dependent Claim 26 Claim 26 depends from independent claim 19 and recites, in relevant part, “processing circuitry configured to dynamically merge the particular advertising data with digital media content that is pre-stored in said at least one storage device.” Ex. 1003, 49:6–9. The plain claim language unambiguously and expressly requires that it is the “digital media content” that must be “pre-stored.” Yet in addressing the limitation, the Petition represents, and Dr. Negus testifies, that Hite discloses “‘particular advertising data’ that is ‘pre-stored in said at least one storage device’ (prior to the ‘dynamic merging’ with ‘digital media content’),” because commercials targeted for a display site or consumer according to CID codes are stored in the RD or video storage device. Pet. 26 (emphasis added); Ex. 1008 ¶ 646 (emphasis added). These assertions that Hite’s system pre-stores what Petitioner identifies as the “particular advertising data,” targeted commercials selected using CID codes, fail to address or show adequately that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as claim 26 explicitly requires. Thus, we are unpersuaded that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as recited in dependent claim 26. Accordingly, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 26 is anticipated by Hite.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“We agree with Patent Owner that Petitioner’s proffered rationale for combining Hite with Hill is not adequately supported by the record. Specifically, we agree with Patent Owner that Petitioner’s assertion that advertising data is “high access” data is a conclusory statement that fails to “articulate specific reasoning, based on evidence of record” to support an obviousness determination. In re: Magnum Oil Tools Int’l, Ltd., 829 F.3d at 1380. Although Hite discusses preempting broadcast commercials with stored commercials at broadcast breaks (see Ex. 1009, 7:24–30), Petitioner does not cite any portion of Hite, or provide any evidence at all, that explains how frequently the advertising data would have been accessed. Accordingly, because Petitioner has not shown adequately that it would have been obvious to one of ordinary skill in the art to combine Hite and Hill to arrive at “addressable and reserved storage space for storing the particular advertising data,” as recited in independent claim 19, we are unpersuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is obvious over Hite and Hill.” slip op. at 27
Patent outcomesUS 9,053,494 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,053,494 - DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentablePTAB · Jul 25, 2018 · IPR2017-00717 · APJ Michael W Kim · IPR · Final written decision
Claims 1–4, 6, 7, 19, 23, 24, and 27 are unpatentable as anticipated by Hite or obvious over Hite; claims 16–18 and 28 were not shown unpatentable.
RulingsFinal written decision- BurdenMixed
“preponderance of the evidence that the specified claims are unpatentable over the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent Owner that “any arguments for patentability not raised in the [Patent Owner Response] will be deemed waived.” Paper 10, 6; see also 37 C.F.R. § 42.23(a) (“Any material fact not specifically denied may be considered admitted.”).5 Additionally, the Board’s Trial Practice Guide states that the Patent Owner Response “should identify all the involved claims that are believed to be patentable and state the basis for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There are arguments and evidence advanced by Petitioner to support its positions, though, that Patent Owner chose not to address in either its Preliminary Response (Paper 7) or Response (Paper 22), or that was not addressed in the Decision on Institution (Paper 9). We have evaluated those unrebutted arguments and the evidence in support, and we find the Petitioner persuasively established, with sufficient evidence, the manner in which the asserted prior art teaches corresponding elements of the claims. Pet. 18–66 (citing Exs. 1008–1010) (unchallenged portions only). Based on the preponderance of the evidence before us, we conclude that the prior art identified by Petitioner describes all limitations of the reviewed claims that were not contested by the Patent Owner in either its Preliminary Response 5 For the reasons noted in our Order (Paper 43, 2–3), however, for this proceeding, we will also consider the arguments set forth in Patent Owner’s Preliminary Response. (Paper 7) or Response (Paper 22). In re NuVasive, 841 F.3d 966, 974 (2016). We address only the contested limitations below.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner
“correspond properly to the claimed storage device, because it is not capable of recording programming content selected by a user for later playback. PO Resp. 14. We are not persuaded by this argument because, as discussed above, we are persuaded that a proper construction of “storage device” does not require recording programming content for later playback. We are persuaded that Petitioner has shown sufficiently that Hite’s OVS Device 456 corresponds properly to the “at least one storage device,” as recited in each of independent claims 1 and 19.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner. Petitioner does not explain sufficiently, and the cited portions of Hite do not disclose, how the method by which the progression is made from “children’s aspirin” to “children’s chewable vitamins.” Dr. Negus’s testimony is similarly unavailing, as the only cited paragraph that plausibly supports their position, paragraph 484, is conclusory and unsupported. Absent such explanation or cited disclosure, we are unpersuaded that Petitioner has shown adequately that the recited “key word” is a part of the progression, as required to meet the claim. 8 At least a portion of Dr. Negus’s testimony aligns with this testimony of Dr. Kesan. Ex. 1008 ¶ 669 (“An exemplary targeting characteristic to optimize advertising format scenarios within Hite is the ‘context code’ that ‘could be appended to the commercial’s CID code’ to be ‘compared with program identification codes appended to the program signals’ such that a ‘commercial is displayed if it is in a specific channel or network or show’ as in the example of ‘skiing equipment commercials would be shown during a skiing down hill racing competition’ (emphasis added, see, for example, Ex. 1009 at 4:34–40).”. Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 4 is anticipated by Hite.” slip op. at 22
- Obviousness (§103) › KSR rationalesUnpatentableDecided for petitioner
“Essentially, Patent Owner assertions are the same as those advanced for the anticipation ground for the same claim. We agree with Patent Owner’s assertions for the same reasons as set forth above. Having said that, the assertions are misplaced, because this is an obviousness ground, and Patent Owner does not address the modification to Hite proposed by the Examiner. To that end, we are persuaded by Petitioner that it would have been obvious to code Hite’s viewer responses using keywords, as we agree that such a technique was common and well known at the time of the invention, and that it would have been an obvious design choice. Ex. 1008 ¶ 486. Indeed, Patent Owner acknowledges this possibility, as they do not assert that using key words would not have been known, just that it may not have been preferable under certain circumstances. PO Resp. 53 (citing Ex. 2003 ¶ 92). Insofar as Patent Owner may be asserting that such a preference teaches away from a modification, we have considered it, but determine that it is outweighed by the evidence of the ubiquity of key word searches at the time of the invention. Indeed, we are unclear as to how, other than using numbers or key words, such searches could have been performed. KSR, 550 U.S. at 421 (“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.”).” slip op. at 39
Patent outcomesUS 9,053,494 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,053,494
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.