• Adobe Systems Incorporated v. William GreciaRehearing denied
  PTAB · 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 anticipation
  Patents in suitUS 8,402,555
• Duncan Parking Technologies, Inc. v. Ips Group Inc.Rehearing granted
  PTAB · Aug 18, 2017 · IPR2016-00067 · APJ Josiah C Cocks · IPR · Rehearing

  The Board granted IPS’s rehearing request and held claims 1–5 and 7–10 not shown unpatentable as anticipated by King ’054 under § 102(e).

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “without prior authorization from the Board.” 37 C.F.R. § 42.71(d). The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” Id.” slip op. at 3

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

    “communicated to the inventors of King ’054 by Mr. King. In that respect, we observe the following: (1) it is undisputed that Mr. King and the D+I inventors invented the substantive content that became claims 8 and 10 of the ’310 patent; (2) Mr. King is a common inventor as between each of the ’310 patent and King ’054; (3) the record reflects that there was frequent and numerous collaborative exchanges between Mr. King and the other inventors of King ’310 (i.e., the D+I inventors); and (4) those exchanges occurred prior to the filing of the application that became King ’054. See, e.g., Exs. 2018–31, 2034–42.” slip op. at 6

  • Strike new argumentNew argument disregardedOther

    “Response to IPS’s Request for Rehearing, provides little, if any, basis undermining the above-noted inference. DPT’s attempt, as a part of its Response, to belatedly seek rehearing of our Final Written Decision as to claims 1–5, 7, and 9 of the ’310 patent is both untimely and inadequately supported on the present record.4 Indeed, all the Response does is inappropriately seek rehearing of our Final Written Decision as to claims 1– 5, 7, and 9 of the ’310 patent, and does not follow our instruction of being responsive to the subject of the Request for Rehearing, i.e., the anticipation of dependent claims 8 and 10. See Paper 32, 2 (“The panel would like to hear from DPT as to the content of IPS’s Request for Rehearing. Accordingly, the panel authorizes . . . DPT to file a reply to IPS’s Request for Rehearing.”).” slip op. at 6

  § 102 anticipation
  Patents in suitUS 7,854,310
• Amazon.Com, Inc. / Amazon.Com, LLC et al. v. Zitovault, LLCNo claims unpatentable
  PTAB · Apr 11, 2017 · IPR2016-00021 · APJ Daniel N Fishman · IPR · Final written decision

  Petitioner did not prove claims 1, 3, 5–8, and 10 unpatentable: the asserted grounds did not adequately identify sessions with recognizable beginnings and ends.

  RulingsFinal written decision

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

    “We are persuaded that our preliminary interpretation of “session” in our Decision on Institution is, at least in some respect, overly broad. Independent claims 1, 6, 7, and 10 each refer to “sessions” in plural, and independent claim 7 refers to “simultaneous” sessions. Thus, the term “session” must be understood, at least, in such a manner as to allow multiple sessions to be distinguished from one another. Although independent claim 5 does not recite “sessions” in plural, the same term should be construed consistently across all claims. Accordingly, we conclude that there must be sufficient delineation within a proper construction of “session” that separates a “session” between one client and one server and a different “session” when one of the client and server are replaced, and that separates multiple sessions from each other even between the same pair of client and server. During Oral Hearing there were extensive discussions regarding proper construction of “session.” See Tr. 7:9–22:18, 43:11–65:15, 74:21–76:13. At Oral Hearing, counsel for Petitioner agreed that “session” should be understood as communications having a recognizable beginning and a recognizable end. Id. at 10:13–16 (“Of course a session has a beginning and an end. I think that is axiomatic in a session. I think that is how Dr. Rubin defined it in his declaration”); see also id. at 12:21–13:5, Ex. 1005 ¶ 41. Patent Owner also agreed that if the construction of session is made to include a recognizable beginning and a recognizable end, that would be a proper construction for the term:” slip op. at 12

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

    “We agree with Patent Owner that Petitioner has failed to identify what constitutes a “session” in Feinberg in accordance with a proper construction of “session.” That proper construction of “session” is set forth above and has been agreed to by the parties. Tr. 10:13–16, 53:13–54:10. We state it again here: “a set of transmitters and receivers, and the data streams that flow between them wherein each data stream flowing between the transmitters and receivers has a recognizable beginning of the data stream transmission and a recognizable end of the data stream transmission.” Petitioner identifies Feinberg’s disclosure of forwarding (shunting) received requests from the primary server to secondary servers (for purposes of load balancing) teaches the recited “communication between the main server and agent server enlists additional agent servers to support incremental secure sessions in response to maintaining performance at a desired level.” Pet. 21–23 (emphasis added). The analysis is excessively generic for the claim recitation of “incremental secure sessions.” It is uncertain what Petitioner regards as a session in Feinberg much less how it begins and how it ends. It is unexplained by Petitioner whether a request in Feinberg begins a session, or something else in Feinberg begins a session. We decline to speculate in that regard. It is Petitioner who bears the burden of proof, and who must account for all the limitations in a claim. In that regard, we note further that it is insufficient for Petitioner to present only dots that may be connected in some unspecified manner to yield the claimed invention. Instead, Petitioner must make a sufficient connection through the dots to demonstrate a full accounting of the claimed invention. Petitioner had ample notice of the possibility of a narrower interpretation of “session.” See PO Resp. 7–11, 23–24. Indeed, Petitioner responded to that possibility by referring to its own expert’s testimony that the beginning and end of a session may be signified in a variety of forms. Pet. Reply 2. See Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016) (“The critical question for compliance with the APA and due process is whether [the parties] received ‘adequate notice of the issues that would be considered, and ultimately resolved, at [the] hearing’”) (internal citation omitted). Nevertheless, Petitioner’s Reply still does not specifically identify a “session” within Feinberg that accounts for what constitutes a session in Feinberg, including when it begins and ends. Claim 10 recites, in pertinent part, “sharing spare CPU cycles of the computer network for encrypting and decrypting communication to provide N simultaneous secure session[s] among said network of computers.” Petitioner’s analysis with respect to the recitation of “N simultaneous secure session[s]” is deficient for the same reasons we discussed above with respect to the recitation of “incremental secure sessions” in claim 6. For the above reasons, we are not persuaded Petitioner has established, by a preponderance of the evidence, that claims 6 and 10 are anticipated by Feinberg.” slip op. at 22

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

    “that the system supports “incremental secure sessions.” The Petition relies on Feinberg for disclosing such sessions, presenting the same arguments as those it presents for claim 6. See Pet. 33–34. Patent Owner argues Feinberg fails to disclose sessions for the same reasons as those that Patent Owner presented with respect to claim 6. See PO Resp. 36–37. Petitioner’s Reply asserts essentially the same arguments for claim 1 as it does for claim 6 regarding “incremental secure sessions.” Pet. Reply 17. Petitioner does not rely on Bhaskaran to alleviate the above-identified deficiency in the analysis of Feinberg with respect to claim 6. The standard for obviousness under 35 U.S.C. § 103(a) is what would have been taught or suggested to the ordinarily skilled artisan with based on the references. The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious and, the Court has noted that, the analysis supporting an obviousness assertion should be made explicit. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). A “legal determinations of obviousness, as with such determinations generally, should be based on evidence rather than on mere speculation or conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006). As discussed supra, Petitioner failed to account adequately for the recited “sessions.” Therefore, Petitioner has failed to establish by a preponderance of the evidence that independent claims 1, 6, and 10 would have been obvious over Feinberg and Bhaskaran and, for the same reasons, has failed to establish claim 3, dependent from claim 1, would have been obvious over Feinberg and Bhaskaran.” slip op. at 24

  • ExcludeMotion to exclude, deniedDenied

    “Initially, we note Patent Owner’s Motion to Exclude fails to identify the portions of Dr. Rubin’s Declaration that allegedly fail to be based upon sufficient facts or data, that allegedly are the product of unreliable principles and methods, or that allegedly fail to reliably apply sound principles and methods to the facts of the case. There is no requirement for an exact or perfect match between the expert’s experience and the field of the patent. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010). Thus, Patent Owner fails to meet its burden with respect to this Motion to Exclude. See 37 C.F.R. § 42.20(c). Furthermore, regarding the objections under FRE 702, we note that under 37 C.F.R. § 42.65(a), “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” Consequently, this objection more properly goes to the weight to be given Dr. Rubin’s testimony, and not to its admissibility. In any event, Patent Owner’s argument, that Petitioner did not explain the evidentiary weight or standard that was applied by Dr. Rubin, is misplaced. We note that Dr. Rubin is an expert witness, not a fact finder or a tribunal making fact findings. Dr. Rubin need only provide his opinion and, preferably, also provide the underlying reasoning, inclusive of data and facts, in support of his opinion. For the above reasons, Patent Owner’s Motion to Exclude is denied.” slip op. at 27

  Patent outcomesUS 6,484,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,484,257
• Karl Storz Endoscopy-America, Inc. v. Novadaq Technologies, Inc.All claims unpatentable
  PTAB · Mar 8, 2017 · IPR2015-01847 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 1–17 are unpatentable: all are obvious over Yabe; claims 10, 12, and 14 are also anticipated by Krauter.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “1. Level of Ordinary Skill Mr. Gunday testified, In my opinion, a person having ordinary skill in the relevant art at the time of the alleged invention is a person with a Bachelor of Science degree in Physics, Computer Engineering, Computer Science, or other similar degree, and two ([2]) to three (3) years of work experience relating to medical endoscopic imaging. Such a person would have had an understanding of, or experience in, designing, implementing, and using endoscopic imaging systems, including light sources and endoscopic video and image processing. Ex. 1011 ¶ 76. Mr. Jaggi agrees with Mr. Gunday’s opinion in this regard, adding only that degrees in “Electrical engineering or Engineering Physics” would each qualify as Mr. Gunday’s “other similar degree.” Ex. 2001 ¶¶ 53–54. We agree with and adopt the view of the parties regarding the level of ordinary skill in the art.” slip op. at 22

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “Initially, we note bodily incorporation of the features of the embodiments is not the test of obviousness; rather, the test lies in what is taught or suggested to the ordinarily skilled artisan by the proposed combination of embodiments of Yabe. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Furthermore, “the [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. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Yabe discloses multiple embodiments and expressly discloses interchangeability of rotary (“surface-sequential-type”) filters as disclosed in Yabe’s second embodiment (Figure 2) and mosaic (“built-in”) filters as disclosed in Yabe’s first and third embodiments (Figures 1a and 10). Ex. 1007, 18:17–21. Yabe’s express disclosures outweigh the unsupported assertions of Patent Owner’s expert regarding the complexity of constructing the proposed combination of embodiments. “Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Therefore, we are persuaded, by a preponderance of the evidence, that the ordinarily skilled artisan would have had reason to combine the embodiments of Yabe, as proposed by Petitioner, “because it would serve the same purpose as the existing rotary filter/CCD arrangement and lead to predictable results.” See Pet. 20; see also KSR, 550 U.S. at 417.” slip op. at 28

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

    “We are disinclined to adopt Patent Owner’s proposed construction of this phrase, as recited in claim 1, to require mathematical manipulation. Claim 1 recites “calculates” in a self-defining manner, specifically reciting calculating the image signals “by minimizing the contribution from signals produced by the image sensor in response to red illumination light.” Thus, claim 1 is clear on its face that the calculation to be performed is by minimizing the contribution from red light. Therefore, our analysis shifts to determining the meaning of “minimizing” as recited in claim 1. The ’151 patent discloses a variety of embodiments for “minimizing” the contribution of red light.5 For example, in support of the Patent Owner’s 5 Additionally we observe that “minimizing” appears only once in the ’151 patent—in claim 1 (and, thereby, also in its dependent claims 2–9). construction, the ’151 patent does disclose exemplary embodiments that minimize red light contribution utilizing mathematical manipulations including, for example, CMYG filter computations that are “considered to be well known to those of ordinary skill in the art” (Ex. 1001, 4:66–7:59) and averaging blue and green signals to “compute” a cyan signal (id. at 4:21–24). The ’151 patent, however, also specifically recites, Because the passbands of the red mosaic filters do not significantly overlap with the pass bands of the other filters for a short wavelength imaging mode, the contribution of the image signals due to red illumination light can be reduced or largely eliminated by not assigning the image signals produced by image sensor pixels that are sensitive to red light to their corresponding display pixels. Id. at 4:5–12 (emphasis added). The ’151 patent further states “a short wave-length image (or the color components of such an image) can be computed from a subset of image sensor signals (i.e. excluding the signal data from red light).” Id. at 8:29–32 (emphasis added). Thus, the ’151 patent also encompasses the contribution of red light in the image being” slip op. at 12

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

    “Although the ’151 patent does not address “analog” or “digital” in reference to “memory,” we agree with Patent Owner, based primarily on the cross-examination testimony of Petitioner’s expert, Mr. Gunday, that the ordinarily skilled artisan at the time of the ’151 patent filing would have understood “memory,” in the context of the ’151 patent, to be referring to digital memory rather than analog buffers. The signals stored in Krauter’s analog buffers are transitory, analog signals propagating from circuits that calculate a value, through the analog buffer, to an analog input of a display monitor. We are persuaded that an ordinarily skilled artisan would not have considered such analog buffers to be a memory in the context of the ’151 patent. Thus, we determine “memory,” as recited in claim 1, means any digital memory capable of storing image signals that minimize the contribution of red light.” slip op. at 17

  Patent outcomesUS 7,420,151 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,420,151
• Black & Decker (U.S.) Inc. / Stanley Black & Decker, Inc. v. Christy, Inc.All claims unpatentable
  PTAB · Jun 17, 2016 · IPR2015-00472 · APJ Donna M Praiss · IPR · Final written decision

  Claims 1 and 10 are anticipated by Eiben; claims 1, 4–6, 10, and 13–15 are obvious over Eiben and Wellan; claims 7–9 and 16–18 are obvious over Eiben, DE219, and Howeth.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “knowledge by equivalent experience), and experience developing vacuum machines that filter air.” Pet. 25 (citing Ex. 1001, 1:6–9; Ex. 1010 ¶ 8). Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art or provide an alternative definition in response. However, Patent Owner characterizes the field of art for the invention as “the art of portable vacuums” while characterizing the field of art for Eiben as “bag house art.” PO Resp. 29. For purposes of this Decision, we consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). To the extent that we need to consider the parties’ positions on the issue, we adopt Petitioner’s position. We find Patent Owner does not indicate why the field of art should be limited to portable vacuums other than by reference to casters 28 in Figure 2 of the ’640 patent which are said to “allow the cannister 10 to be freely rolled in any direction.” Id. at 28 (citing Ex. 1001, Fig. 2, 4:22–23).4 We also find the ’640 patent describes the invention as broadly relating “generally to vacuum cleaning equipment and more particularly concerns a vacuum cleaner having filters backflushed with ambient air.” Ex. 1001, 1:6– 9; Pet. 25.” slip op. at 7

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

    “The district court found the meaning of “ambient air” was not limited by clear and unmistakable evidence to either (1) air surrounding the outside of the vacuum cleaning machine or (2) air that is not forced or compressed. Opinion and Order, Ex. 2004, 6–14. In our Decision on Institution, we agreed with the district court’s construction and analysis, which is broader than Petitioner’s proposed construction, and found it consistent with the Specification. Dec. on Inst. 7–8. Specifically, Figure 2 of the ’640 patent shows cover 25 “seated on” plate 19 to protect the valves, the operating mechanisms, the controller, and the vacuum source, which are all “mounted above” plate 19. Ex. 1001, 4:22–25. Thus, ambient air coming through the valves may come from the vacuum head under the cover; it need not come exclusively from outside the vacuum machine as Petitioner asserts. There is no evidence in the record whether the ambient air under the cover necessarily would have a particular pressure, including whether it is under atmospheric pressure. See Tr. 43:13–44:2 (Patent Owner describing ambient air as being “in comparison to what is inside of the cannister”). During prosecution, Patent Owner distinguished a pulse back cleaning system for multiple reasons, including the reason that the claimed invention “does not flip-flop between vacuuming and blowing.” File Wrapper of U.S. Patent No. 7,082,640 B2, Ex. 1002, 36. Patent Owner also distinguished other prior art for the reason that it “cannot function without a second centrifugal fan and associated components and limitation (e.g., transverse duct and array of parallel ducts)” whereas the invention was described as “valve 31 and filter 21 are not connected to any other fan, compressor or vacuum source.” Id. at 59. We agree with the district court that the intrinsic evidence does not present a clear and unmistakable disavowal of the source of ambient air. Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (the standard for disavowal of claim scope is “exacting”). Figures 2–5 of the ’640 patent show three ambient air ducts 36 under cover 25. Ex. 1001, Figs. 2–5, 3:1–9, 4:22–27, 5:15–17. As the district court found, “[i]t is not clear from the drawing where that duct terminates, and the detailed description states only that ‘[t]he ambient air duct 36 extends from the ambient air port 31b into the source of ambient air 16.’” Ex. 2004, 12. Similarly, the district court found that the statements in the prosecution history regarding the ambient air also “do not exclude the possibility that ‘ambient air’ could come from inside––or both inside and outside––the vacuum head during backflushing.” Id. at 13. Moreover, the distinctions over the prior art included “differences unrelated to the source of the air used for backflushing.” Id. Based on the complete trial record, including the prosecution history, we agree with the district court’s construction of “air surrounding the canister” as the broadest reasonable interpretation of the term “ambient air.” See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (“The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.”). Accordingly, we maintain our construction of “ambient air” to mean “air surrounding the canister.”” slip op. at 10

  • Expert testimonyPatent owner expert discountedDecided for patent owner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We find Patent Owner’s arguments unpersuasive because the ’640 patent claims are sufficiently broad so as to encompass the distinctions drawn between the figures in the ’640 patent and Eiben. While claims 1 and 10 read on Patent Owner’s embodiment shown in Figures 1–5, the claims also read on Eiben’s embodiment shown in Figures 1 and 3–6. See Ex. 1001, 3:28–4:56 (describing the vacuum shown in Figure 1); Ex. 1003, 3:67–4:57 (describing the vacuum shown in Figures 1, 3–6). Based on the evidence presented, we find nothing in the claim language that precludes Eiben’s “compartment units 10, 12, 14, and 16 [that] are assembled together and mounted atop a hopper 24,” from being a canister with inlet port 28 and at least two outlet ports 30 as required by claims 1 and 10. Pet. 26; id. at 29– 31. Claims 1 and 10 both signal an open-ended structure with the transition term “comprising,” allowing for (1) the inclusion of walls or compartments within the canister, including a hopper compartment at the bottom, and (2) inlet port 28 to include ducts 27. Similarly, we find nothing in claims 1 and 10 that precludes a bag filter as used in Eiben, because the claims do not recite a dirty air/clean air arrangement relative to the outside/inside of the filters. Patent Owner’s arguments regarding the ’640 patent having the dirty air/clean air on the outside/inside of the filters are not tied to claim limitations. See PO Resp. 18–27; Pet. Reply 6–8. Claims 1 and 10 merely require that air be drawn “through” the filters. Ex. 1001, 8:13, 17, 9:2, 5. Eiben describes air passing through the walls of its filter bags. Ex. 1003, 4:30–31 (“the air passes transversely through the bags’ walls”), 4:48 (“reverse air flow through the bags”). Therefore, the type of filter used in the ’640 patent is not a patentable difference over Eiben.” slip op. at 19

  Patent outcomesUS 7,082,640 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,082,640
• American Simmental Association v. Leachman Cattle Of Colorado, LLCAll claims unpatentable
  PTAB · Jun 13, 2016 · PGR2015-00005 · APJ Michael W Kim · PGR · Final written decision

  Claims 1–20 are held unpatentable under § 101; claims 1–4, 8–12, and 14–19 are also obvious over Wang alone. The motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Ultimately, we discern that Petitioner and Patent Owner are not very far apart. On education, we agree with Petitioner that evaluating genetic quality is sufficiently complex that it would require, at a minimum, a Master’s Degree in the field. On work experience, we agree with both parties that several years of experience in the field is necessary, with the optimum for a Master’s Degree being five years, and commensurately less for an individual possessing a PhD. We agree with Patent Owner that some understanding of economics and software is required, but agree with Petitioner that such understanding need only be a basic one that can be readily acquired through work experience in the field, with no formal education in that field being necessary. Finally, we disagree with Patent Owner that formal training or experience specific to the feeder calf market needs to be addressed separately, as, for the reasons set forth below, we are unpersuaded that evaluating feeder calves as a subgroup differs materially from evaluation of cattle overall, and that one of ordinary skill in evaluating of genetic quality of cattle generally would not have been familiar with feeder calves specifically, especially when the overwhelming goal of cattle production is to sell beef, of which the primary type sold is feeder calves. Perhaps more importantly, the significance of the level of ordinary skill in the art here is the role it plays in an obviousness analysis, and Patent Owner has not explained in a sufficiently persuasive manner how the disparate definitions impact dispositively the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Accordingly, unless expressly indicated otherwise, we determine that a specific finding on the level of skill in the art is not required, because the prior art itself reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 6

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

    “3. “genetic merit scorecard” Each of independent claims 1, 8, and 14 recite “genetic merit scorecard.” Petitioner asserts that “genetic merit scorecard” should be construed as “visual display of genetic merit information.” Pet. 17–18 (citing Ex. 1001). Patent Owner does not dispute this construction. PO Resp. 23–26. After considering all evidence and assertions concerning this claim construction, we agree with Petitioner that “genetic merit scorecard” should be construed as “visual display of genetic merit information.”” slip op. at 11

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “Owner are rooted sufficiently in the express claim language, and in any case, are peripheral to the above-identified fundamental concept, in that while they may represent variations of the fundamental concept, we are unpersuaded that they alter materially the fundamental concept itself. For example, being “dynamic,” while perhaps placing some temporal aspects on “determining an animal’s relative economic value based on its genetic and physical traits,” does not alter the fact that independent claim 1 is fundamentally directed to “determining an animal’s relative economic value based on its genetic and physical traits.” A similar analysis is applicable to “sale group of feeder calves,” “disparate sources,” and “transforming.” The Specification further supports Petitioner’s argument. The “Field of the Invention” section set forth in the ’557 patent reads as follows: Embodiments of the present invention relate generally to the field of genetic quality and relative market value of livestock. More specifically, embodiments of the present invention facilitate an owner or potential buyer of one or more sale groups of livestock to evaluate the relative market value of the sale groups based on predictions derived from genetic merit estimates of the herd. Ex. 1001, 1:23–29. The “Description of Related Art” section that follows delves heavily into problems associated with determining what the actual value of the livestock is, and more specifically what premium or discount the livestock should command based on these desired genetic merits. Ex. 1001, 1:47–49. The first three sentences of the “Summary” section then read as follows: The Applicants recognize the importance of determining relative market value of a sale group or a group of animals offered for sale from a livestock operation. Various embodiments of methods and apparatus for determining relative market value of a sale group are provided herein. Exemplary embodiments of the present invention include an online genetic merit scorecard system. Ex. 1001, 2:6–12. Based on the above cited portions of the ’557 patent, we determine that the Specification supports heavily Petitioner’s proposed fundamental concept. The unambiguous disclosure in the Specification as to the nature of the invention indicates to us that Petitioner has not over-generalized here.” slip op. at 16

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “PO Resp. 66. However, we are unpersuaded that (a) valuing a group of animals is “significantly more” than valuing a single animal, (b) tailoring a price to a user is “significantly more,” and (c) comparison shopping is “significantly more,” whether taken in succession or as a whole. Indeed, these requirements appear to be routine parts of commerce involving the fundamental concept of “determining an animal’s relative economic value based on its genetic and physical traits.” Patent Owner asserts additionally that the claimed invention does not merely recite the alleged abstract idea and say “apply it” on computer components, because the recited computer components are an integral part of rooting the invention in computer technology. Specifically, Patent Owner asserts that the claimed invention involves novel technical software that “transforms genetic and performance information associated with the sale group into a dynamically-generated scorecard available to users on-demand.” PO Resp. 67. We disagree, as the recitation of software in the claim, if any at all, is at a highly abstract level, in that the claims recite no more than taking in and outputting data, with no detail as to how that data is manipulated between input and output.5 Absent such detail, we are unpersuaded that the claims are reciting any more than “applying to software” the fundamental concept of “determining an animal’s relative economic value based on its genetic and physical traits,” which is not “significantly more.” As for “dynamically-generated scorecard available to users on-demand,” our analysis of the same in the abstract idea prong of Alice is equally applicable here, namely, that 5 “MR. COHN: Your Honor, the little calculator that’s in Windows is a dynamic calculator. It’s been there for 25, 30 years. You pull it up. You type in five times two and you hit equals and it spits the answer back to you on demand right there.” Tr. 85:24–86:2. we are unpersuaded that “dynamic” and “on-demand” are sufficiently related to the claims. Patent Owner cites DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) in support of their position, but it is precisely because of the instructive nature of the problem-solution approach in that case that we arrive at our conclusion here. Specifically, DDR Holdings held that the “problem of retaining website visitors” involves a “claimed solution [that] is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR Holdings, LLC, 773 F.3d at 1257. Such is not the case here, where the problem, as clearly articulated above in the aforementioned portions of the Specification, is “determining an animal’s relative economic value based on its genetic and physical traits.” We are unpersuaded that this problem, or its solution, involves or requires anything computer-related. 4. Conclusion For the foregoing reasons, we conclude that Petitioner has shown, by a” slip op. at 20

  Patent outcomesUS 8,725,557 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo
  Patents in suitUS 8,725,557
• Microsoft Corporation v. Iplearn-Focus, LLCSome claims unpatentable
  PTAB · Apr 11, 2016 · IPR2015-00095 · APJ Richard E Rice · IPR · Final written decision

  Claims 1, 2, 18, 22, 37, and 39 are unpatentable; claims 38, 40–42, 48, 55, and 56 are patentable, based on anticipation and obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “in the art (“POSITA”). According to Petitioner’s expert, Dr. David Forsyth, a POSITA would have had a combination of experience and education in computer vision and the design of human-computer interfaces. This typically would consist of a minimum of a bachelor of science in Computer Science or Electrical Engineering (or a related engineering field) plus either a year of graduate training or 2-4 years of relevant experience. The POSITA also would have been familiar with the design of, theory behind, principles of operation of, intended use of, and the underlying technology used in computer vision and human-computer interfaces. Ex. 1003 ¶ 27. In contrast, Patent Owner’s expert, Mr. David Crane, testifies that a POSITA “would have had a bachelor’s degree or equivalent in the field of computer engineering, computer science or electrical engineering and at least two to three years of experience relating to humanmachine interface design.” Ex. 2009 ¶ 15. Based on the competing arguments and evidence of record, we largely accept Patent Owner’s proposed definition. The definition proposed by Petitioner appears to be overly narrow because of its focus on “computer vision.” We have made minor modifications to Patent Owner’s definition to clarify the educational requirement, and to broaden the experience requirement to include at least a year of graduate training as an alternative to work experience, consistent with the background of researchers in the field as indicated by prior art references such as Hutchinson. See Ex. 1004, 1533–1534. We determine that a POSITA would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or an equivalent field, and at least a year of graduate training, or two years of work experience, relating to human-machine interfaces.” slip op. at 8

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

    “(emphasis added). In the Institution Decision, we determined that the broadest reasonable interpretation consistent with the Specification of the term “window” is a bounded sub-region of a computer display that is capable of displaying a distinctly different type of information than one or more other sub-regions of the computer display. Inst. Dec. 8 (citing Ex. 1001, 8:20–42). Neither of the parties proposes any change to that interpretation, and our review of the evidence does not indicate that any change is necessary. Consequently, we maintain our previous interpretation.” slip op. at 10

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

    “the parties, we determine that Petitioner has shown by a preponderance of the evidence that Hutchinson anticipates claim 1. See Pet. 14–15, 29–32; Pet. Reply 3–6; Ex. 1003 ¶¶ 46–51. As set forth in Petitioner’s claim chart, Hutchinson discloses each limitation of claim 1, including the “acquiring,” “analyzing,” “determining,” and “adjusting” steps. See Pet. 29–32. For example, the “adjusting” step requires “adjusting, by the computing device, materials for presenting to the user if the determining determines that the volitional input suggests the user not paying attention to materials in the first window.” Corresponding to that step, Hutchinson discloses that, after the user gazes for a period of time at a menu option in a display window, a tone sounds and an icon (cursor) appears in the display window in line with the gaze, but the enabled option is aborted if the user does not continue to gaze at the menu option for an additional period of time. Ex. 1004, 1530; see Pet. 31–32; Pet. Reply 3–6; Ex. 1003 ¶¶ 49–50. The abort mechanism of Hutchinson’s computing device discloses the “adjusting” step by aborting the enabled option (“adjusting . . . materials for presenting to the user”) if the computing device determines, itself, that the user is not directing his or her gaze at the menu option in the window (“if the determining determines that the volitional input suggests the user not paying attention to materials in the first window”). See Ex. 1004, 1530; supra Section II.A.5.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “claim 2. Pet. 20, 41–42; Pet. Reply 5–6; Ex. 1003 ¶¶ 52–55. We agree, for example, that Hutchinson discloses “waiting for a period of time before adjusting,” as required by claim 2, “so that the user has a moment to alter his or her gaze before the system adjusts what is being presented.” Pet. 20, 41 (citing Ex. 1004, 1530; Ex. 1003 ¶ 52). With respect to the “network” requirement, we also agree that a person of ordinary skill in the art would have known to retrieve materials from another computing device over a network. Id. at 20, 42 (citing Ex. 1003 ¶¶ 9, 15, 55). There is evidence of record that Black, for example, discloses such retrieval. Ex. 1003 ¶ 97. Further, we agree that Hutchinson discloses “adjusting comprises switching to alternative materials that are different from materials that would have been presented,” and that including “materials on a product” would have been obvious, as Petitioner contends. Pet. 20, 41–42 (citing Ex. 1004, 1530– 1531; Ex. 1003 ¶¶ 52–55). Patent Owner responds that: “the ‘waiting before adjusting’ step must be performed after the ‘determining’ step and, additionally, be a distinct step from the ‘determining step’”; and that “Hutchinson . . . does not disclose a ‘waiting before adjusting step’ that is either separate and distinct from the ‘determining’ step or subsequent to it.” PO Resp. 29. Patent Owner argues that, “[a]t most, Hutchinson discloses waiting as part of the determining step.” Id. at 30. Patent Owner’s argument is not consistent with our interpretation that claim 2 encompasses “waiting for a period of time” as part of the “determining” step. See supra Section II.A.4. Hutchinson’s system satisfies the “waiting for a period of time before adjusting” step by allowing the user “a moment” to change or abort an enabled option before the system performs it. Ex. 1004, 1530 (emphasis added). The system performs the option only if the user continues to stare at the enabled option for a period of time (“a moment”) after a tone sounds and an icon appears. Id. For the reasons given, we conclude that Petitioner has shown by a preponderance of the evidence that Hutchinson renders obvious claim 2.” slip op. at 27

  Patent outcomesUS 8,475,174 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,475,174
• Microsoft Corporation v. Iplearn-Focus, LLCSome claims unpatentable
  PTAB · Mar 23, 2016 · IPR2015-00097 · APJ Richard E Rice · IPR · Final written decision

  Claims 13, 34, and 35 are unpatentable as anticipated by Hutchinson; claims 39 and 44 are unpatentable as obvious over Hutchinson and Krueger; claims 36 and 37 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Ex. 1003 ¶ 27. In contrast, Patent Owner’s expert, Mr. Crane, testifies that a POSITA “would have had a bachelor’s degree or equivalent in the field of computer engineering, computer science or electrical engineering and at least two to three years of experience relating to human-machine interface design.” Ex. 2007 ¶ 15. Based on the competing arguments and evidence of record, we largely accept Patent Owner’s proposed definition. The definition proposed by Petitioner appears to be overly narrow because of its focus on “computer vision.” We have made minor modifications to Patent Owner’s definition to clarify the educational requirement, and to broaden the experience requirement to include at least a year of graduate training as an alternative to work experience, consistent with the background of researchers in the field as indicated by prior art references such as Hutchinson. See Ex. 1004, 1533–1534. We determine that a POSITA would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or an equivalent field, and at least a year of graduate training, or two years of work experience, relating to human-machine interfaces.” slip op. at 8

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

    “We find that the ordinary meanings of “content” are “[s]omething contained, as in a receptacle: the contents of my desk drawer; the contents of an aerosol can,”2 and “[i]nformation, such as text, video, and sound, usually as contrasted with its format of presentation: a television producer looking for content that was more entertaining.”3 Although the Specification does not define or use the term “content,” it sheds light on the meaning of the term, by describing a calibration technique utilizing the text and graphics (the content) of a message box to direct the user’s attention and to take a reference image. See Ex. 1001, 8:55–60 (describing a preferred embodiment 1 Exhibit 1033 does not contain Petitioner’s asserted definition, although, as referenced below, we found essentially the same definition on-line. 2 Ex. 1033. 3 http://search.credoreference.com/content/entry/hmdictenglang/content_ 1/0?searchId=4da7a984-e49d-11e5-9bca-0e58d2201a4d&result=5 (last visited March 8, 2016). in which a reference image of the student’s face is taken when the student is looking at a message box containing the message “LOOK AT ME” and a picture of two eyes staring at the student; “the digital camera 180 takes a reference image of the student’s face, who typically looks at the two eyes”). Accordingly, we determine that the broadest reasonable construction consistent with the Specification of “content presented by the display” is “something contained within a portion of the display,” including, but not limited to, what is advocated for by Petitioner, i.e., “information, such as text, video, and sound.”” slip op. at 9

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

    “processor coupled to the imaging sensor and the display, the processor to analyze, relative to the display, at least the first set of measurements to identify whether the user is not paying attention to content presented by the display.” Specifically, as disclosed in Hutchinson, after the user gazes for a period of time at a menu box on the display, a tone sounds and an icon (cursor) appears in the menu box in line with the gaze, but the option associated with the menu box is aborted if the user does not continue to gaze at the box for an additional period of time. Ex. 1004, 1530; see Pet. 36 (citing Ex. 1003 ¶ 71). Hutchinson’s processor meets the claim requirement for “a processor . . . to identify whether the user is not paying attention to content presented by the display” because, to implement the abort mechanism, the processor determines, itself, whether the user is not directing his or her gaze at the icon contained in the menu box, in accordance with our claim interpretation. See Ex. 1004, 1530; supra Section II.A.3.” slip op. at 19

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

    “We agree with Petitioner and Dr. Forsyth that a POSITA would have been motivated to combine the teachings of Hutchinson and Krueger. As Petitioner argues, Hutchinson expressly contemplates using Erica with 7 Richard Epworth, Eye Movements, for a Bidirectional Human Interface, ICL TECHNICAL JOURNAL 384–411 (1990) (Ex. 1026). “hardware alternatives . . . such as head-tracking systems.” Ex. 1004, 1532 (emphasis added); see Pet. Reply 13 (citing Ex. 1004, 1532 and Ex. 2008, 108:21–109:7). Krueger not only discloses head-tracking, but touts its VIDEOTOUCH system as an improvement that identifies human-body features such as the head in real time, and without use of intrusive markers. Ex. 1008, 2:44–3:44, 4:5–10. We credit Dr. Forsyth’s deposition testimony explaining how Hutchinson’s eye-gaze system would have worked in combination with a head-tracking system. Ex. 2008, 93:16–102:1, 108:21– 109:7, 109:22–128:17. For example, we credit the following testimony:” slip op. at 29

  Patent outcomesUS 8,538,321 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,538,321
• EMC Corporation / EMC International US. Holdings, Inc. et al. v. Clouding Corp.Institution denied
  PTAB · Mar 16, 2016 · IPR2015-01922 · APJ Rama G Elluru · IPR · Institution

  Review of claims 1, 15, and 17 was denied because Petitioner did not show a reasonable likelihood that Douik anticipates them.

  RulingsInstitution decision

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

    “For all of the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in demonstrating that claims 1, 15, and 17 are unpatentable under 35 U.S.C. § 102(e) as anticipated by Douik. III.” slip op. at 16

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “Although the arguments in the present Petition are similar to those asserted in IPR2014-01309, the present challenge relies upon a reference not relied upon in IPR2014-01309. We are cognizant of the concerns regarding harassment of patent owners by the filing of serial petitions. The instant case, however, involves only a single ground, and Patent Owner has not demonstrated persuasively that the Petition constitutes harassment or is part of a pattern of filing serial petitions against the ’839 patent. Moreover, we are unpersuaded that we should exercise our discretion to deny institution based on 325(d) because we determine that the instant petition relies on a reference that was not asserted in IPR2014-01309, and determine also that the Petition does not present the same or substantially the same prior art or arguments presented in IPR2014-01309. In sum, considering the totality of the circumstances, we decline to exercise our discretion to deny the Petition.” slip op. at 6

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

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b), see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1277–78 (Fed. Cir. 2015) (“We conclude that Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA.”), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 2016 WL 205946 (U.S. Jan. 15, 2016) (No. 15-446). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning in view of the specification, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). For purposes of this decision, we determine that no term of the ’839 patent needs express interpretation.” slip op. at 7

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

    “As an initial matter, Petitioner has not persuaded us sufficiently that Douik contemplates the situation “when a likely solution to the computer problem does not exist,” as recited in claim 15. As described above, in Douik’s reactive mode, for known faults, i.e., faults that have already been experienced, the system includes “experienced knowledge” in its database and provides corrective actions. Ex. 1003, 13:60–63, 13:12–14 (stating the system provides corrective actions to the troubleshooter once the trouble is detected);16:38–41 (stating that the diagnostic process must maintain knowledge such as the Known Faults case base and fault scenarios); 16:54– 62 (explaining that the system includes a knowledge base having knowledge such as the behavior of the managed resources in a given fault scenario or a propagation of a known fault); 33:3–12 (explaining the system includes “knowledge base models such as the fault scenarios, the known faults repository, and the corresponding corrective procedure”). Thus, for known faults, the Software Fault Management process selects an appropriate troubleshooting method from its knowledge base, i.e., a likely solution. Id. at Fig. 1, Fig. 5. However, if the fault is not a known fault, i.e., not a fault that has already been experienced for which “experienced knowledge” exists, the fault situation is recursively analyzed wherein the process performs further fault analyses and diagnostic tests, until a successful diagnosis is obtained, in which case the process performs the fault localization and repair. Ex. 1003, 36:65–37:22; Fig. 5. In other words, for unknown faults, the fault situation is recursively analyzed until a solution is found. Thus, we are not persuaded that Douik contemplates “when a likely solution to the computer problem does not exist,” as recited in claim 154. Moreover, Petitioner has not sufficiently persuaded us that Douik discloses “the AI engine saves the gathered data [about the computer system] in the knowledge database as a new case,” as recited in claim 1, and “saving the sensed information [about the computer system] as a new case of the plurality of cases,” as recited in claim 155. The claims require the saving to occur at a specific time —“when the knowledge database does not describe a likely solution to the computer problem” (claim 1) and “when a likely solution to the computer problem does not exist” (claim 15). For ease of reference, we refer to these limitations collectively as the “when a likely solution does not exist” limitation. In arguing that Douik discloses this limitation, Petitioner cites disclosure from Douik (Pet. 39–40) stating that 4 Unlike claim 15, independent claim 1 requires “when the knowledge database does not describe a likely solution to the computer problem.” (Emphasis added.) Claim 1, thus, requires that the “knowledge database” does not describe a likely solution to the problem. We are persuaded that Douik describes this limitation of claim 1 because Douik explains that the system may detect a fault that it has not previously experienced, for which it has no experienced knowledge in the known faults database, such as corrective actions, as discussed above. 5 For this limitation of claim 15, Petitioner refers to its analysis of the similar limitation in claim 1. Pet. 44 “[f]or unknown faults, the reactive SFM process assists the engineer during the trouble shooting by providing access to relevant information and tools.” (Emphasis added). Ex. 1003, 36:24–26. Douik’s description of “providing access to relevant information and tools” does not anticipate saving the gathered data or the sensed information about the computer system, when a likely solution does not exist, as required by the claims. In particular, Petitioner does not sufficiently persuade us that Douik describes providing access, during trouble shooting, to relevant information that was saved when a likely solution does not exist. Indeed, the above-cited portions of Douik are silent concerning the timing of the saving operation.” slip op. at 10

  Claim construction§ 102 anticipationDiscretionary denial
  Patents in suitUS 5,944,839
• FFF Enterprises, Inc. v. Amerisourcebergen Specialty Group, Inc.All claims unpatentable
  PTAB · Jan 28, 2016 · CBM2014-00154 · APJ Christopher L Crumbley · CBM · Final written decision

  Claims 1 and 2 are unpatentable as anticipated by both Dearing under § 102(b) and Gibb under § 102(a).

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “For the foregoing reasons, FFF has proven by a preponderance of the evidence that Dearing discloses all elements of challenged claims 1 and 2.10 We, therefore, conclude that these claims are anticipated by Dearing, and thus are unpatentable under 35 U.S.C. § 102.” slip op. at 31

  • Skill levelOther

    “term in light of its broadest reasonable interpretation, as understood by one of ordinary skill in the art and as consistent with the specification of the ’607 patent. 37 C.F.R. § 42.300(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 84 U.S.L.W. 3218 (Jan. 15, 2016) (No. 15-446). In the Decision to Institute, we construed the term consignment product unit as “products that are considered sold when removed from the cabinet or the product packaging.” Dec. 13–15. We also held that the server system creates an invoice when the product units are removed from the inventory should be given its ordinary meaning, and manage the inventory needed no explicit construction. Dec. 11–13, 15–16. In its Response, ABSG challenges our treatment of all three claim terms.” slip op. at 13

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

    “While the broadest reasonable interpretation standard does not require us to construe claims to preserve their validity—and indefiniteness of the claims is not before the Board in this proceeding, in any event—we are mindful that adopting ABSG’s construction would mean that a person of ordinary skill in the art would be unable to determine whether a potentially infringing system falls within the scope of the claim unless he or she has access to the contracts governing the sale of the items within the cabinet. See Geneva Pharm., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003) (“A claim is indefinite if its legal scope is not clear enough that a person of ordinary skill in the art could determine whether a particular composition infringes or not.”). Furthermore, legal ownership is a distinction “discernable only to the human mind,” similar to limitations found to have no patentable weight under the printed matter doctrine unless they have a functional or structural relationship to the physical substrate. See In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015); In re Jie Xiao, 462 F. App’x 947, 950 (Fed. Cir. 2011) (nonprecedential). Though the 19 ownership of the products is not printed matter, the logic of those cases is equally applicable here. See King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (“The rationale behind this line of [printed matter] cases is preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations.”); see also Ex parte Graff, Appeal 2012-003941, 2013 WL 3873066, at *3 (PTAB July 23, 2013) (property interests are “legal abstractions” that are given no patentable weight), aff’d by In re Graff, 585 F. App’x 1012 (Fed. Cir. 2014) (nonprecedential). While not controlling on the broadest reasonable interpretation analysis, we nevertheless take into account the fact that ABSG’s proffered construction raises these concerns. For these reasons, we reaffirm our prior claim construction analysis, and interpret consignment product units as “products that are considered sold when removed from the cabinet or the product packaging.”” slip op. at 19

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

    “We declined to adopt ABSG’s construction because we concluded it was overly narrow, and nothing in the specification tied invoicing to the “unique RFID serial number” of an exact product. Dec. 12–13. Rather, the specification merely states that the server “generate[s] billing and invoice data according to the reports from cabinets of product units that are delivered . . . or consumed.” Ex. 1001, 5:57–60. This could be a report of a unique RFID serial number, but that is not the only possibility. Indeed, the specification states that “serial numbers” are not required by the invention at all. Ex. 1001, 4:58–61 (“[T]he term ‘serial number’ will be used herein to refer to the unique identifier, although those of skill in the art will recognize that any other style of unique identifier can be used.”). ABSG’s citations from the specification, that products are tracked by RFID serial number, are 24 not in the context of invoicing. In view of the complete record, our reasoning from the Decision to Institute holds, and ABSG’s arguments in its Response fail to persuade us otherwise.” slip op. at 24

  Patent outcomesUS 8,285,607 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,285,607

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.