- Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonNo claims unpatentablePTAB · May 29, 2026 · IPR2025-00349 · APJ Jason M Repko · IPR · Final written decision
Claims 1–21 were not shown unpatentable because Avellan did not disclose the claimed sequence of screen captures used to assemble a media stream.
RulingsFinal written decision- Skill levelOther
“Patent Owner submits a similar definition and does not dispute the Petition’s characterization of the level of ordinary skill in the art. PO Resp. 22. No express finding is necessary. The level of ordinary skill in the art is reflected by the prior art of record. Any perceived difference in how each party characterizes a POSITA does not change our analysis or conclusions.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“on ordinary and customary meaning. Pet. 14–15; PO Resp. 22. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“c. Analysis “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). We are persuaded by Patent Owner’s argument that Avellan does not anticipate claim 1 because it does not assemble a media stream of multimedia items using the recited screen captures. See PO Resp. 26–29. We agree with Patent Owner that the plain language of the claim requires more than transmitting individual media items. Sur-reply 21. To the extent that Avellan captures images, those images do not meet the claimed requirements for a “temporal sequence of screen captures” in the independent claims, which must (1) be of the web page rendered by a browser, (2) “define all the content of the web page at a given time,” (3) “illustrate a dynamic change of at least a portion of the content over time” when two of them are compared, and (4) used to assemble “the at least one media stream.” Rather, the record better supports Patent Owner’s argument that Avellan transmits the multimedia items separate from any media stream assembled from screen captures. PO Resp. 26–29; Sur-reply 21.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“All other challenged claims require the “generating” and “assembling” operations because they depend from claims 1, 12, or 17. Petitioner does not allege that the additional references—Durante, Ma, Suzuki, Wanamaker, Heikens, Matthews, or Wilsher—teach or suggest the “temporal sequence of screen captures” recited in claim 1. Rather, Petitioner’s reasoning in the challenges to the dependent claims pertaining to the screen captures mirror the rationale presented in the independent claim. See, e.g., Pet. 25 (arguing that Avellan’s screen captures correspond to the video content in the challenge to claim 2), 26–27 (arguing that Avellan obtains screen captures from a playback of a video on the webpage in the challenge to claim 4). Petitioner’s argument that Avellan teaches or suggests these operations in the grounds based on obviousness under 35 U.S.C. § 103 depend on the reasoning and insufficiently supported characterizations of Avellan in the challenges based on 35 U.S.C. § 102, as discussed above. See Pet. 40–60. grounds based on anticipation under 35 U.S.C. § 102 or teaches or suggests these operations in the grounds based on obviousness under 35 U.S.C. § 103, Petitioner has not met its burden to show that any challenged claim is unpatentable as anticipated by Avellan or obvious over any of the combinations of Avellan and the other cited references.” slip op. at 15
Patent outcomesUS 10,123,074 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,123,074 - CQV Co., Ltd. v. Merck Patent GmbHNo claims unpatentablePTAB · Oct 14, 2025 · PGR2021-00054 · APJ Kristina M Kalan · PGR · Remand
Claims 1–22 were not shown unpatentable because Sample C was not proven publicly available as prior art, and the original decision found the remaining grounds insufficient.
RulingsRemand decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“We agree with Patent Owner that Petitioner’s evidence in Kuntz (Ex. 1026), the Annual Report (Ex. 1028), Masuko (Ex. 1029), and Pfaff (Ex. 1034) is insufficient to show that Xirallic® Sample C was available to the public before the effective filing date of the ’861 patent. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26. Kuntz, the Annual Report, Masuko, and Pfaff may support a finding that the Xirallic® line of products was available to the public, but these documents do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public. We also agree with Patent Owner that the Technical Data Sheets (Exs. 1005–1010), Certificates of Analysis (Exs. 1011–1017), and Material Safety Data Sheet (Ex. 1025) are insufficient to show that Xirallic® Sample C was available to the public. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26–27. Regardless of how the Technical Data Sheets were used in the Opposition against the European counterpart of the ’861 patent (Exs. 1040, 1041) and during the prosecution of the application from which the ’861 patent issued (Ex. 1003, 102–104), the Technical Data Sheets do not refer to or describe the lot of Xirallic® from which Sample C was taken. Moreover, as noted by Patent Owner, the Technical Data Sheets (Exs. 1005–1010) indicate that they are “preliminary” and Petitioner has not provided any evidence that the Technical Data Sheets were ever issued to the public, as opposed to just issued internally. See PO Resp. 18–19. We also find persuasive Patent Owner’s argument that the Technical Data Sheets are preliminary because other, later-dated technical data sheets (Exs. 2012, 2013) lack the “preliminary” label and list characteristics that are different from those in Exhibits 1005–1010. See PO Resp. 19 (comparing, e.g., Ex. 1009 and Ex. 2013; Ex. 1005 and Ex. 2012). The Technical Data Sheets may support a finding that the Xirallic® products they describe existed as of the dates on the documents, but they do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public.” slip op. at 20
- Expert testimonyPetitioner expert discountedPatent owner expert creditedOther
“witnesses. See Elbit Systems of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1358 (Fed. Cir. 2018) (citing Trs. of Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 922 (Fed. Cir. 2015); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 856 (1982)). We have reviewed the witness testimony in the record and, more particularly, Mr. Choi’s deposition answers regarding Petitioner’s purchase of the lot of Xirallic® from which Sample C came. We find that Mr. Choi’s responses cast doubt on the credibility of his declaration testimony, namely with regard to the public availability of Sample C. Mr. Choi represented that he was involved in the purchase of the lot of Xirallic® from which Sample C was taken. Ex. 2011, 48:1–23. Mr. Choi stated that he instructed Petitioner’s marketing team manager to buy the sample from a distributor of Patent Owner’s products located in Europe. Id. at 48:24–49:4. Mr. Choi stated that he has evidence of the transaction, but refused to reveal the name of the company from which Petitioner purportedly purchased the lot of Xirallic® (id. at 49:5–50:3) and refused to produce an email in his possession that would corroborate his testimony regarding Petitioner’s acquisition of the product (id. at 50:8–16, 51:10–23). Mr. Choi represented that he does not remember how much Petitioner paid for Sample B. Id. at 56:4–5. Mr. Choi admitted that the entity from which Petitioner acquired the lot of Xirallic® from which Sample C was taken is “not currently a Merck distributor” (Ex. 2011, 50:4–7) and was not “a Merck distributor at the time” that “samples B and C were purchased” (id. at 51:25–52:2). According to Mr. Choi, the company is a “former distributor” of Patent Owner’s products. Id. at 52:3–6. Mr. Choi did not know, according to his testimony, when that unnamed entity first obtained the lot of Xirallic® (id. at 52:7–10) and he stated that he did not have personal knowledge of how the entity obtained the lot of Xirallic® (id. at 52:12–19). Instead, Mr. Choi assumed the entity was “able to obtain the sample through the routine course or process” the entity uses “to take samples or get samples.” Id. at 52:12–19. Mr. Choi believed the sample of Xirallic® from which Sample C was taken was sealed when Petitioner received it because samples from dealers are sealed, and he remembered observing that the package was from a dealer. Id. at 52:24– 54:25. However, Mr. Choi admitted that he did not obtain a technical data sheet or certificate of analysis for the lot of Xirallic® from which Samples B and C were taken. Id. at 59:6–11. Mr. Choi also answered questions regarding Petitioner’s purchase of Samples D and H. Ex. 2011, 62:20–66:8, 67:7–9, 73:12–13, 73:17–22. Similar to his testimony regarding Samples B and C, Mr. Choi admitted withholding an email regarding the purchase of the lot of Xirallic® from which Sample D was taken. Id. at 62:20–63:9. Mr. Choi also admitted that he did not know how Akzo USA or Axalta obtained the Xirallic® the companies sold to him, and admitted that Akzo USA was not a distributor of Patent Owner’s products at the time Petitioner purchased the product. Id. at 63:10–66:8, 73:17–22. Mr. Choi also admitted that Petitioner did not pay Akzo USA for the lot of Xirallic® from which Sample D was taken, and did not pay Axalta for the lot of Xirallic® from which Sample H was taken. Id. at 67:7–9, 73:12–13. Although Petitioner presents declaration testimony from Mr. Choi representing that he purchased the lot of Xirallic® from which Samples B and C were taken in October 2011 (Ex. 1004 ¶ 16), Mr. Choi’s declaration testimony lacks corroborating evidence, and his deposition testimony does not support that the product was available to the public, as we found in our Final Written Decision. See Final Dec. 27–28. Notably, Petitioner produced corroborating evidence for Mr. Choi’s acquisition of Samples A, H, and I. See Ex. 1004 ¶¶ 13 (citing Ex. 1047), 18 (citing Exs. 1024, 1025). However, Mr. Choi withheld similar evidence for the Xirallic® lots from which Samples B, C, and D were taken. See Ex. 2011, 50:8–16, 51:10–23, 62:20– 63:9; Final Dec. 28. As Patent Owner argues, there is “no information to determine when a contract was established, that there was consideration for the exchange, that the product was available to be delivered when the alleged transaction took place, or even when the product was delivered. Choi has no memory of what was paid for the product.” Sur-Reply 24–25; see also PO Resp. 13–14; PO Br. Rem. 2–4.” slip op. at 34
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the evidence discussed above, we are not persuaded that Petitioner has shown by a preponderance of the evidence that Sample C was available to the public. Regardless of whether a company avoids wasting shelf life of its products (Ex. 1004 ¶¶ 15–16), there is no persuasive evidence in the record showing that the lot of Xirallic® from which Sample C was taken was released from quality control and then made available to the public by Patent Owner. Mr. Choi’s testimony shows that Petitioner obtained the lot of Xirallic® from which Sample C was taken in an atypical manner (i.e., not from Patent Owner or one of Patent Owner’s current distributors) (Ex. 2011, 49:5–50:7, 50:8–16, 51:10–23, 51:25–52:6, 52:12– 19), and there is no evidence in the record to show that the lot of Xirallic® was intended for sale, rather than for experimental use only or for some other restricted use. Accordingly, we determine Petitioner has not demonstrated by a preponderance of the evidence that Sample C qualifies as prior art against the ’861 patent, and we determine that Petitioner has not shown by a preponderance of the evidence that the ’861 patent is unpatentable over the grounds relying on Sample C.” slip op. at 38
Patent outcomesUS 10,647,861 not shown unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,647,861 - Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.No claims unpatentablePTAB · Apr 14, 2025 · IPR2023-01416 · APJ Ken B Barrett · IPR · Final written decision
The Board held claims 1–15 and 18 not unpatentable; the petition failed to prove the asserted anticipation and obviousness grounds, including failure to establish WiMAX as prior art.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“filed with the Office a statutory disclaimer disclaiming method claims 16, 17, 19, and 20. See Ex. 2007; see also Tr. 33, 21:1–12 (Patent Owner’s counsel informing the Board that the disclaimer had been filed in the USPTO Patent Center, and Petitioner’s counsel having no objection to the filing of the disclaimer as an exhibit in this inter partes review); Tr. 34:19 1 Petitioner identifies Nokia of America Corporation, Ericsson Inc., and T-Mobile USA, Inc. as real parties in interest. Pet. 72. 2 Patent Owner identifies General Access Solutions, Ltd. as the real party in interest. Paper 6, 1. (Patent Owner’s counsel stating, “General Access has disclaimed method Claims 16, 17, 19, and 20.”). We treat disclaimed claims as if they never existed. See Facebook, Inc. v. SKKY, LLC, CBM2016-00091, Paper 12 at 8 (PTAB Sept. 28, 2017) (expanded panel) (precedential) (“The Federal Circuit has held consistently that claims disclaimed under § 253(a) should be treated as though they never existed.”) (citing, inter alia, Vectra Fitness, Inc. v. TWNK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”)). Accordingly, the remaining claims challenged in this proceeding are apparatus claims 1–15 and method claim 18.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Id. “[A] work is not publicly accessible if the only people who know how to find it are the ones who created it.” Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1372 (Fed. Cir. 2019) (citing SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1196 (Fed. Cir. 2008) Application of Bayer, 568 F.2d 1357 (CCPA 1978)). Accordingly, in this case, Petitioner must demonstrate by a preponderance of the evidence that the WiMAX exhibit was disseminated or otherwise made available to interested ordinary artisans outside of the group that created the document. Petitioner has failed to satisfy that burden.” slip op. at 48
Patent outcomesUS 6,947,477 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,947,477 - Cellco Partnership D/B/A Verizon Wireless v. General Access Solutions, Ltd.No claims unpatentablePTAB · Dec 23, 2024 · IPR2023-01147 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–6 were not shown unpatentable because the asserted references did not establish that the claimed second transceiver routes information based on monitored signal characteristics.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) at the time of the purported invention would have had either: (1) a Bachelor of Science degree in computer science, electrical or computer engineering, or a related field, and at least 2 years of work or research experience in digital communications systems, such as wireless communications systems and networks, or equivalent, or a Master’s degree in electrical engineering, computer engineering, computer science or similar field. Additional education could compensate for less practical experience and vice versa. Ex. 1002, ¶¶1-46. Pet. 10. Patent Owner does not address the level of ordinary skill in the art. Cf. Ex. 2007 ¶19 (Patent Owner’s declarant, after acknowledging Petitioner’s definition, stating: “Patent Owner has not offered a different understanding of a POSITA, and the PTAB accepted Petitioner’s submission. I accept and use Petitioner’s and the PTAB’s definition of a POSITA.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“During oral argument, both parties confirmed their respective positions that the claim term “route” needs no construction. See, e.g., Tr. 11:7–9 (Petitioner’s counsel: “Frankly, it doesn’t make any difference to the analysis of the prior art. And so, we don’t believe that the PTAB needs to construe the term route, and so we have not proposed a construction.”); id. at 58:25–59:2 (Patent Owner’s counsel: “You know, I don’t think that you have to define routing in order to decide the case. I think you can do it, you know, just apply whatever plain and ordinary meaning is.”); cf. Tr. 40:14–18 (Patent Owner’s counsel at oral argument: “For the routing itself, you know, there is a District Court construction and that’s a construction that the other—the Petitioner did not ask for determination whether that’s appropriate or not appropriate here. We did not address that as well, so the parties aren’t arguing that that construction should be applied here.”). For the reasons discussed below, we determine that Petitioner has not proven by a preponderance of the evidence that the prior art discloses or teaches, under Petitioner’s articulated theories, that a second transceiver routes information based on monitored characteristics. This is dispositive of the inter partes review. Accordingly, we determine that no claim terms require express construction for purposes of deciding the dispositive issues.” slip op. at 13
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Ex. 1004, 5:25–36 (emphasis added). Thus, Palmer discloses that the determination to roam to another cell may be done by the mobile worker’s wireless communication device 20 having a specifically-programmed processor or may be done centrally, with examples being the “network” or central host processor. We disagree that this constitutes a disclosure of the access point 40 performing the roaming determinations. Rather, we find to be persuasive and credible Dr. Chrissan’s testimony that “a POSITA recognizes that an access point does not qualify as ‘centrally, for example, by the network or a central host processor,’” and, “[i]nstead, this phrase refers to one of the centrally located devices such as network 14 or central host processor 12 (in Fig. 1), or a device in administration building 33 (in Fig. 2).” Ex. 2007 ¶ 71 (citing Ex. 1004, Figs. 1, 2). Dr. Chrissan’s opinion is consistent with Palmer’s disclosure, as we will now discuss.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We determine that Petitioner has not established by a preponderance of the evidence its foundational assertion that Palmer discloses that “access point 40 determines whether roaming by a portable terminal 20 should take place and routes data packets accordingly.” Pet. 26–27; see Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (“Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.”). As such, Petitioner has not met its burden to show that Palmer discloses, as recited in independent claim 1, a second transceiver that, “based on the first signal characteristics and the second characteristics, routes information to the first mobile station and the second mobile station, respectively,” or, as recited in independent claim 6, “based on the first signal characteristics and the second characteristics, routing, using the second transceiver, information to the first mobile station and the second mobile station, respectively.” Ex. 1001, 10:38–44, 11:19–22. The Petition does not contain a contention that this “route” aspect of the claims would have been obvious. Compare Pet. 25–26 (offering an alternative argument for the monitoring aspect; contending that, “to the extent the Board disagrees that Palmer’s access point 40 performs the monitoring, it would have nonetheless been obvious to a POSA to select the access point 40 to perform the monitoring since it directly communicates with the portable terminals 20.”), with id. at 26–27 (making the anticipationtype contention that “[t]he access point 40 routes information” without an alternative obviousness contention); see also Pet. Reply 12–13 (arguing, under the monitoring-and-routing heading, that monitoring by the access point would have been obvious, but not arguing the same for routing). Petitioner has not shown by a preponderance of the evidence that independent claims 1 and 6 and dependent claims 2–4 are anticipated by or would have been obvious over Palmer.” slip op. at 28
Patent outcomesUS 9,426,794 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,426,794 - Unified Patents, LLC v. Flexiworld Technologies, Inc.No claims unpatentablePTAB · Nov 1, 2023 · IPR2022-00775 · APJ Christopher L Ogden · IPR · Final written decision
Claims 27 and 28 were not shown unpatentable under either § 103 ground because the petitioner did not establish that Olgaard or Acharya was prior art; the revised contingent motion to amend was dismissed as …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Relying on Dr. Freedman’s testimony, Unified argues that a person of ordinary skill in the art would have had “(1) an undergraduate degree in electrical and computing engineering or a closely related field; and (2) two or more years of experience in wireless content transmission,” where “[m]ore relevant experience could compensate for less education, and vice versa.” Pet. 7 (citing Ex. 1003 ¶¶ 36–38). Flexiworld does not contest Unified’s description of the level of ordinary skill for this proceeding. See PO Resp. 8 (citing Ex. 2010 ¶ 67). Because Unified’s description is supported by uncontroverted testimonial evidence and appears consistent with the types of problems and solutions in the ’257 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:20–5:35 (“Technical Field” and “Background” sections of the ’257 patent, describing background knowledge relating to wireless content transmission between electronic devices).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Unified argues that “all terms should be given their plain meaning,” and does not propose any explicit constructions. See Pet. 8. In the context of this proceeding, Flexiworld agrees. See PO Resp. 29. We do not find it necessary to explicitly construe any terms to resolve the issues in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“2. Conclusion as to Obviousness For the reasons above, we determine that evidence independent of inventor testimony corroborates (1) a conception date no later than October 22, 2000 and (2) reasonably continuous diligence in reducing the claimed invention to practice until January 19, 2001. Having considered the evidence as a whole under a rule-of-reason analysis, we determine that Unified has not shown that the conception date for the claimed invention was on or after October 24, 2000, or that the inventors did not exercise reasonably continuous diligence during the critical period between October 24, 2000 and January 19, 2001. Unified relies on a priority date of October 24, 2000 for Olgaard and a priority date of December 22, 2000 for Acharya. See Pet. 1–2 & n.2; see also Ex. 1005, code (63); Ex. 1007, codes (22), (43). However, the corroborated conception date for claims 27 and 28 antedates the above priority dates for both Olgaard and Acharya. See supra Section III.C.1. Thus, Unified has not shown that either Olgaard or Acharya is prior art under 35 U.S.C. § 102(e) (2006). Unified provides no theory of obviousness that does not depend on either Olgaard or Acharya being prior art. See Pet. 2, 8–80.” slip op. at 20
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“claimed inventions were conceived no later than October 22, 2000, and Unified has not shown to the contrary by a preponderance of the evidence. First, we find credible Mr. Chang’s testimony that Exhibit 2013 and other related drafts, including their filenames and metadata, have not been altered. Ex. 2031 ¶ 1. We regard the metadata as the most reliable indicator of the latest date each draft was completed. Although the filename dates may differ from the metadata dates, these minor differences do not call into question the reliability of the metadata as the last date on which the drafts were modified. Most significantly, the “last modified” date for Exhibit 2013 is October 22, 2000. That the inventors produced at least three other drafts and then filed a provisional application just ten days later on November 1, 2000 further supports a conception date before October 24, 2000. Ex. 2031 ¶ 6; Ex. 2016; Ex. 2040.” slip op. at 16
Patent outcomesUS 9,836,257 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,836,257 - Fujifilm Corporation v. Sony CorporationNo claims unpatentablePTAB · Dec 3, 2018 · IPR2017-01390 · APJ Jeffrey W Abraham · IPR · Final written decision
The Board held that claims 1–18 were not shown unpatentable because the prior art did not establish the claimed volume concentration in the formed magnetic layer.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“define the term “volume concentration.” In the context of the ’331 patent, “volume concentration” refers to the volume concentration of the magnetic particles in the formed magnetic layer.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(1) a bachelor’s degree in materials science, physics, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience in the field of magnetic recording, or (2) a Master’s degree or higher in materials science, physics, electrical engineering, mechanical engineering, chemistry, or a closely related field, with an emphasis in magnetic recording, and at least three years of experience in the field of magnetic recording. Pet. 12; Ex. 1017 ¶ 60. Although Patent Owner does not expressly define the appropriate level of skill in the art in the Patent Owner Response or its Supplemental Response, Patent Owner’s declarant, Dr. Bain, presents a definition of a person of ordinary skill in the art in his declaration that is nearly identical to Petitioner’s definition. Ex. 2001 ¶ 44. In view of this, for purposes of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“information, is not sufficient evidence to establish that Mori discloses the “volume concentration” recited in claim 1. Patent Owner does not dispute that there is some magnetic alloy present “in the magnetic layer” of Mori. The relevant question, however, is how much and how Mori’s disclosed values were determined. Unlike the term “volume concentration,” for which the parties offered undisputed evidence regarding accepted meanings of the term in the art (i.e., packing fraction and pigment volume concentration), we have not been directed to similar evidence regarding the phrase “fill rate”/“filling rate” in Mori. Thus, although Mori states “[t]he filling rate by volume of the strongly magnetic alloy powder in the magnetic layer can be equal to or higher than 30%” (Ex. 1003 ¶ 11 (emphasis added)), Petitioner has not offered sufficient evidence demonstrating that the term “filling rate” in Mori refers to a final product-based value. As a result, we find that this language in Mori does not establish, by a preponderance of evidence, that Mori discloses the “volume concentration” recited in claim 1.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“For all of the foregoing reasons, we find that Petitioner has failed to demonstrate, by a preponderance of evidence, that the combined teachings of Aonuma and Mori disclose or suggest “[a] dual layer magnetic recording medium comprising . . . a magnetic upper recording layer formed over [a] lower support layer, the magnetic upper recording layer comprising a volume concentration of at least about 35% of a primary magnetic particulate pigment,” as recited in independent claims 1 and 16. Ex. 1001, 11:14–20, 12:25–31. Claims 2–15, 17, and 18 depend from claim 1 or claim 16, and, therefore, include the “volume concentration” limitation of claims 1 and 16. As a result, we find that Petitioner has failed to demonstrate that Aonuma and Mori disclose or suggest each limitation of claims 1–18, and, therefore, has not demonstrated by a preponderance of evidence that claims 1–18 are unpatentable as obvious over Aonuma and Mori.” slip op. at 26
Patent outcomesUS 7,115,331 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,115,331 - Daicel Corporation v. Celanese International CorporationNo claims unpatentablePTAB · Jun 23, 2016 · IPR2015-00171 · APJ Linda M Gaudette · IPR · Final written decision
Claims 42–44, 47–51, 53, and 55–57 were not shown unpatentable: the ’095 patent did not establish the required amount of DME, and JP ’712 did not cure that deficiency.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Based on our analysis of the intrinsic and extrinsic evidence, we agree with Patent Owner that a person of ordinary skill in the art would understand the ’507 patent to speak in terms of effects, not molecules. See PO Resp. 4– 5; Tr. 41:8–16. We, therefore, construe the recitation “distilling [a mixture comprising water, acetic acid, methyl iodide, methyl acetate, methanol, and at least one PRC] to separate the mixture into a plurality of streams, at least one of said streams being a PRC enriched overhead stream comprising dimethyl ether” in step (a) of claim 42 as requiring the presence of dimethyl ether in the PRC enriched overhead stream in an amount that one of ordinary skill in the art would recognize as being more than trace or insubstantial. Such amount would be, for example, more than the amount produced in a conventional, prior art, low water carbonylation process that used the same initial reactor contents and conditions, and the same processing equipment. We further interpret this language as requiring the presence of DME in the PRC enriched overhead stream in an amount sufficient to cause (1) a reduction in the solubility of methyl iodide in water during the extraction of the PRC enriched overhead stream (claim 42, step (b)) and (2) an increase in the amount of methyl iodide recoverable during a subsequent extraction of the raffinate stream, which increase in recoverable methyl iodide would be recognized as more than insubstantial by the ordinary artisan.” slip op. at 42
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Mr. Jones and Dr. Porcelli agree the description in the ’507 patent implies that the inventive process is a low water process. Ex. 1039 ¶ 52; Ex. 2029 ¶ 26. As discussed in Section VI. B., below, these experts further agree that there are differences in the reactants and reaction products produced in high and low water processes. We find both Mr. Jones and Dr. Porcelli are qualified to give an opinion as to the level of ordinary skill in the art. Accordingly, for purposes of this proceeding we adopt Mr. Jones’s definition of the level of ordinary skill in the art, and add that the ordinary artisan also would have had a specific understanding of the low water carbonylation process for production of acetic acid and its implementation on an industrial scale.” slip op. at 27
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“We are not persuaded that Mr. Jones’s calculations provide a reliable method of determining the amount of DME present in a methanol carbonylation process. Mr. Miura and Dr. Porcelli agreed that it is extremely difficult to anticipate the presence or amount of a component such as DME in a methanol carbonylation system such as the one described in the ’095 patent. See Ex. 1046, 281:14–22; Ex. 2029 ¶ 112. Dr. Porcelli testified that Mr. Jones’s estimates of DME content in the ’095 patent Example were based on numerous assumptions that rendered his estimations of reactor and distillation overhead DME concentrations meaningless. See Ex. 2029 ¶¶ 137, 140, 151. Dr. Porcelli testified, for example, that it was “improper and incorrect” for Mr. Jones “to fail to account for DME lost with the vent stream in the reactor, especially because of the high volatility of DME.” Id. ¶ 148. Mr. Miura’s measured amount of DME present in the first overhead in Experiment 1 was less than half the amount Mr. Jones calculated would be present, supporting Dr. Porcelli’s testimony that the loss of DME via the vents would have had a marked impact on the actual amount of DME sent to distillation column 40 (from which the second overhead stream is produced) in the ’095 patent Example. See Ex. 1060 ¶ 153 (“(103 ppm (calc.) vs. 48 ppm (actual)) is likely to due to loss of DME with the vent gas from the splitter condenser, due to the very low boiling point of DME”); see also Ex. 1039 ¶ 99; Ex. 1060 ¶ 121 (wherein Mr. Jones agreed that the loss of DME from the vent stream in the separator (or decanter) after splitter column 14 in the ’095 patent process would be substantial).” slip op. at 56
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“In sum, we determine Petitioner has failed to meet its burden to show, by a preponderance of the evidence, that the ’095 patent describes a process that inherently results in dimethyl ether in a PRC enriched overhead stream (produced by distilling a mixture comprising water, acetic acid, methyl iodide, methyl acetate, methanol, and at least one PRC) in an amount that is (1) more than trace or insubstantial, and (2) sufficient to cause (a) a reduction in the solubility of methyl iodide in water during extraction of the PRC enriched overhead stream and (b) an increase in the amount of methyl iodide recoverable during a subsequent extraction of the raffinate stream, as required by the broadest reasonable interpretation of claim 42. Absent from the record is any evidence that DME is present in the second overhead in the ’095 patent Example in the amount required by independent claim 42 and its dependent claims 43, 44, 47–51, 53, and 55–57. Petitioner’s challenge with respect to claim 57 is based on obviousness over the combination of the ’095 patent and JP ’712. Petitioner relies on JP ’712 for a teaching that “methyl iodide concentration can be controlled by extraction temperature, . . . and that the concentration[] recited in [claim 57 is] well known in the art.” Pet. 55. Petitioner has not explained how JP ’712 cures the deficiency in the ’095 patent’s failure to describe step (a) of claim 42. Accordingly, we likewise determine Petitioner has failed to meet its burden to show unpatentability of claim 57 by a preponderance of the evidence. We conclude Petitioner has failed to meet its burden to show unpatentability of claims 42–44, 47–51, 53, and 55–57 of the ’507 patent.” slip op. at 59
Patent outcomesUS 8,076,507 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,076,507 - Daicel Corporation v. Celanese International CorporationNo claims unpatentablePTAB · Jun 23, 2016 · IPR2015-00173 · APJ Linda M Gaudette · IPR · Final written decision
Claims 58–60, 67, 69, and 71–72 were not shown unpatentable over the ’095 patent; claim 73 was not shown unpatentable over the ’095 patent and JP ’712 because the required amount of DME was not …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner relies on Mr. Jones’s testimony to establish the level of ordinary skill in the art. See Pet. 17. Mr. Jones testified that the person of ordinary skill in the art “as of March 2, 2004, the effective filing date of the ’507 Patent” (Ex. 1039 ¶ 15) would have been a chemist or chemical engineer with an advanced degree, or a Bachelor of Science degree and equivalent work experience (e.g., five years in an industrial setting producing acetic acid, acetic anhydride, or related chemicals), and would have generally understood acetic acid production on an industrial scale including the distillation processes and extraction processes that are used in acetic acid or acetic anhydride production. The person of ordinary skill in the art would have understood chemical reactions in general, and, particularly, the primary reactions and the side-reactions associated with acetic acid production (id. ¶ 16). Mr. Jones further testified that a person of ordinary skill in the art would have had separations experience, an understanding of industrial-scale processes, and experience in the production of acetic acid, acetic anhydride, or related chemicals. Id. ¶ 17. Dr. Porcelli, testified that he “generally agree[s]” with Mr. Jones’s opinion as to the level of ordinary skill in the art” (Ex. 2029 ¶ 15; see also Ex. 1065, 65:9–66:5). During cross-examination, however, Dr. Porcelli testified that one of ordinary skill in the art would require, more specifically, an understanding of the low water acetic process and its implementation on an industrial scale. See, e.g., Ex. 1065, 126:18–127:1.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Based on our analysis of the intrinsic and extrinsic evidence, we agree with Patent Owner that a person of ordinary skill in the art would understand the ’507 patent to speak in terms of effects, not molecules. See PO Resp. 4– 5; Tr. 41:8–16. We, therefore, construe the recitation “distilling [a mixture comprising water, acetic acid, methyl iodide, methyl acetate, methanol, and at least one PRC] to separate the mixture into a plurality of streams, at least one of said streams being a PRC enriched overhead stream comprising dimethyl ether” in step (a) of claim 58 as requiring the presence of dimethyl ether in the PRC enriched overhead stream in an amount that one of ordinary skill in the art would recognize as being more than trace or insubstantial. Such amount would be, for example, more than the amount produced in a conventional, prior art, low water carbonylation process that used the same initial reactor contents and conditions, and the same processing equipment. We further interpret this language as requiring the presence of DME in the PRC enriched overhead stream in an amount sufficient to cause (1) a reduction in the solubility of methyl iodide in water during the extraction of the PRC enriched overhead stream and (2) an increase in the amount of methyl iodide recoverable during the subsequent extraction of the first raffinate stream (claim 58, step (b)), which increase in recoverable methyl iodide would be recognized as more than insubstantial by the ordinary artisan.” slip op. at 42
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We are not persuaded that Mr. Jones’s calculations provide a reliable method of determining the amount of DME present in a methanol carbonylation process. Mr. Miura and Dr. Porcelli agreed that it is extremely difficult to anticipate the presence or amount of a component such as DME in a methanol carbonylation system such as the one described in the ’095 patent. See Ex. 1046, 281:14–22; Ex. 2029 ¶ 112. Dr. Porcelli testified that Mr. Jones’s estimates of DME content in the ’095 patent Example were based on numerous assumptions that rendered his estimations of reactor and distillation overhead DME concentrations meaningless. See Ex. 2029 ¶¶ 137, 140, 151. Dr. Porcelli testified, for example, that it was “improper and incorrect” for Mr. Jones “to fail to account for DME lost with the vent stream in the reactor, especially because of the high volatility of DME.” Id. ¶ 148. Mr. Miura’s measured amount of DME present in the first overhead in Experiment 1 was less than half the amount Mr. Jones calculated would be present, supporting Dr. Porcelli’s testimony that the loss of DME via the vents would have had a marked impact on the actual amount of DME sent to distillation column 40 (from which the second overhead stream is produced) in the ’095 patent Example. See Ex. 1060 ¶ 153 (“(103 ppm (calc.) vs. 48 ppm (actual)) is likely to due to loss of DME with the vent gas from the splitter condenser, due to the very low boiling point of DME”); see also Ex. 1039 ¶ 97; Ex. 1060 ¶ 121 (wherein Mr. Jones agreed that the loss of DME from the vent stream in the separator (or decanter) after splitter column 14 in the ’095 patent process would be substantial). Dr. Porcelli testified that he believed removal of DME by rapid carbonylation would have had a significant effect on the presence of DME in the ’095 patent Example and that this irreversible reaction should have been considered by Mr. Jones in his calculations. Ex. 2029 ¶¶ 130–131. Mr. Jones conceded “some DME will be carbonylated in the reactor” (Ex. 1060 ¶ 45), and that the carbonylation of DME to make acetic acid under low water conditions is an irreversible reaction (Ex. 2026, 227:19–228:1). See also Ex. 1060 ¶ 27 (arguing Exhibits 2032, 2034 evidence DME formation in a batch reactor during methanol carbonylation, but admitting that as the water and methyl acetate start to diminish, DME concentration begins to drop and DME is eventually carbonylated into either acetic acid or acetic anhydride). Mr. Jones disagreed with Dr. Porcelli’s testimony that “carbonylation of DME is . . . known to have a fast reaction rate” and “would be consumed by carbonylation faster than it would be formed by methanol dehydration, especially under low water conditions” (Ex. 2029 ¶ 130). Ex. 1060 ¶ 44. Mr. Jones provided testimony explaining why he believes “the carbonylation of DME is not particularly fast.” Id.; see id. ¶¶ 45–48. Mr. Jones relied on a textbook by Gauthier-Lafaye (Ex. 1062), published in 1987, as evidence that the carbonylation of DME proceeds more slowly than the carbonylation of methyl acetate. Ex. 1060 ¶ 47. Mr. Jones testified that because the reaction liquid in the ’095 patent Example is reported to contain 1.6 wt% methyl acetate, and the carbonylation rate of DME is even slower than that of methyl acetate, then “it stands to reason that the carbonylation rate of DME is not going to be so fast as to ‘immediately’ react away any DME that is formed via the methanol dehydration equilibrium reaction.” Id. ¶ 48. Mr. Jones further testified that consideration of this competing side reaction was “irrelevant to calculating equilibrium concentration” of DME in the reactor in the ’095 patent Example. Id. ¶ 51. The disclosure in Gauthier-Lafaye relied upon by Mr. Jones relates to the carbonylation of methyl acetate into acetic anhydride (Ex. 1062, 9), i.e., a different reaction system than the ’095 and ’507 patents (see Paper 73, 8 (Observation #F.1)). This evidence, therefore, does not support Mr. Jones’s testimony that the carbonylation of DME in the ’095 patent reaction system was irrelevant to his calculation of equilibrium DME concentration. Rather we credit Dr. Porcelli’s testimony that removal of DME by rapid carbonylation would have had an effect on the presence, or at least the quantity, of DME in the ’095 patent Example, and that this factor should have been taken into consideration by Mr. Jones in his calculations. See Ex. 2029 ¶ 130. Mr. Jones testified that in view of the low boiling point of DME (-23.7 ºC), most of the DME will immediately flash from the reactor product . . . and be concentrated in the overhead streams. In view of the relatively low amount of DME in the reactor and overhead, DME’s very low boiling point, and the elevated temperatures in the reactor, special handling techniques would be needed to sample for such a compound in the reaction mixture. It is therefore not surprising that the presence of DME was not measured in the ’095 patent, despite the fact that it was undoubtedly present. Ex. 1060 ¶ 118. Given Mr. Miura’s testimony that he believed DME, if present, would have been detectable (Ex. 1046, 280:9–281:1), and Paulik’s disclosure that insubstantial amounts of DME were measurable as early as 1970 (see, e.g., Ex. 2037, 13:47–49, 15:32–34), Mr. Jones’s testimony (see, e.g., Ex. 1060 ¶ 101 (“It should be clear to someone skilled in the art that very dilute and trace components are frequently not reported in chemical analytical results or in listed process stream compositions.”)) does not show convincingly that DME was present in the second overhead in more than a trace quantity, if at all. See id. ¶ 90 (“[T]he only issue is whether some amount of DME exists (which clearly it does).”).” slip op. at 56
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“have been present in the distillation overhead in the ’095 patent Example in an amount sufficient to reduce solubility of methyl iodide in water during subsequent water extraction steps. Mr. Miura testified that 1.2 wt% DME was present in the second overhead in Experiment 1. Ex. 1005 ¶ 13, Table 1. Mr. Jones testified that he would expect the amount of DME in the second overhead in the ’095 patent process to be about three times the amount of DME in the overhead in Miura Experiment 1 (Ex. 2040, 289:10–– 298:7), because Mr. Miura’s experiment was carried out under conditions less favorable to DME formation as compared to the conditions in the ’095 patent Example (see Ex. 1060 ¶¶ 130, 139). A preponderance of the evidence, however, does not support a finding that DME was present, if at all, in more than a trace quantity/insubstantial amount in the second overhead of the ’095 patent Example, for the following reasons: Although Mr. Miura reported that the second overhead in his Experiment 1 contained 1.2% DME (Ex. 1005 ¶ 13, Table 1), he did not testify that this quantity would be present in the ’095 patent Example despite acknowledged differences in quantities of reaction components and operating conditions (see id. ¶ 21). Rather, Mr. Miura testified that Experiment 1 provided evidence that DME simply was present in some amount in the second overhead in the ’095 patent Example. Id. (“[T]he deviations would not affect the outcome with respect to the presence of DME in the first and second overheads.”). Mr. Miura testified that he supervised the ’095 patent Example and believed DME was present and accounted for in the 0.9 wt% reported as “others.” Ex. 1046, 241:17–242:9. Therefore, we are not persuaded by Mr. Jones’s testimony that the amount of DME in the second overhead in the ’095 patent process would be about three times the amount of DME in the overhead in Miura Experiment 1, i.e. 3.6 wt% (Ex. 2040, 289:10––298:7). See Tr. 70:3–8 (wherein Patent Owner’s counsel raises this inconsistency). We are not persuaded by Mr. Jones’s testimony that an amount as high as 3.6 wt% DME could have been present in the ’095 patent Example, but not reported (see Ex. 2040, 301:18–303:2; Paper 73, 5–6 (Observation #C.4)), since the prior art, e.g., Paulik, clearly indicates DME was considered an undesirable reaction byproduct in a carbonylation process. Mr. Miura did not testify as to what portion of the 0.9 wt% reported as “others” in the ’095 patent Example constituted DME, or whether the amount of DME would be considered more than a trace quantity/insubstantial amount. Nor is there any testimony or evidence that 0.9 wt% or less DME in the overhead/feed to the extractor would have been an amount sufficient to cause a reduction in the solubility of methyl iodide in water during extraction of the PRC enriched overhead stream and an increase in the amount of methyl iodide recoverable during the subsequent extraction of the first raffinate stream as required under the broadest reasonable interpretation of claim 58 of the ’507 patent. We are not persuaded that Mr. Jones’s calculations provide a reliable method of determining the amount of DME present in a methanol carbonylation process. Mr. Miura and Dr. Porcelli agreed that it is extremely difficult to anticipate the presence or amount of a component such as DME in a methanol carbonylation system such as the one described in the ’095 patent. See Ex. 1046, 281:14–22; Ex. 2029 ¶ 112. Dr. Porcelli testified that Mr. Jones’s estimates of DME content in the ’095 patent Example were based on numerous assumptions that rendered his estimations of reactor and distillation overhead DME concentrations meaningless. See Ex. 2029 ¶¶ 137, 140, 151. Dr. Porcelli testified, for example, that it was “improper and incorrect” for Mr. Jones “to fail to account for DME lost with the vent stream in the reactor, especially because of the high volatility of DME.” Id. ¶ 148. Mr. Miura’s measured amount of DME present in the first overhead in Experiment 1 was less than half the amount Mr. Jones calculated would be present, supporting Dr. Porcelli’s testimony that the loss of DME via the vents would have had a marked impact on the actual amount of DME sent to distillation column 40 (from which the second overhead stream is produced) in the ’095 patent Example. See Ex. 1060 ¶ 153 (“(103 ppm (calc.) vs. 48 ppm (actual)) is likely to due to loss of DME with the vent gas from the splitter condenser, due to the very low boiling point of DME”); see also Ex. 1039 ¶ 97; Ex. 1060 ¶ 121 (wherein Mr. Jones agreed that the loss of DME from the vent stream in the separator (or decanter) after splitter column 14 in the ’095 patent process would be substantial).” slip op. at 55
Patent outcomesUS 8,076,507 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,076,507 - Google Inc. v. Network-1 Technologies, Inc.No claims unpatentablePTAB · Jun 20, 2016 · IPR2015-00343 · APJ Kevin F Turner · IPR · Final written decision
The Board held claims 1–3, 6–14, 18, 19, 21–27, and 29–37 not shown unpatentable because Conwell did not disclose a non-exhaustive search and Ghias and Philyaw did not teach one.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“exhaustive, as required by independent claims 1, 13, and 25. PO Resp. 23– 32. Patent Owner argues that Conwell teaches identifying a match using a look-up table, but the process is not disclosed to be non-exhaustive. Id. at 24 (citing Ex. 1009, 3:43–44, 5:59–61, Fig. 3; Ex. 2005 ¶¶ 364–366). Patent Owner additionally argues that “[w]hile there are ways to search the lookup table disclosed in Conwell using a non-exhaustive approach, Conwell does not disclose any such non-exhaustive approach.” Id. at 26 (citing Ex. 2005 ¶ 369). We agree that Conwell does not explicitly disclose that the look-up is performed non-exhaustively. Further, Patent Owner argues that Conwell also does not inherently disclose using the look-up table to conduct a non-exhaustive search. Id. at 27–31. Patent Owner continues that “Conwell provides no details as to how the exact-match search between the hashed identifier of the work to be identified and the hashed identifiers in the reference database is actually performed.” Id. at 29 (citing Ex. 1009, 3:43–62). Patent Owner argues that Conwell details how its database is maintained, but does not provide specific disclosures as to how the database is searched. Id. at 31–32. We also agree that Conwell does not inherently disclose that the look-up is performed nonexhaustively.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“As Patent Owner points out, the second search of the identified matches is performed exhaustively of Works A, C, D, and E. Tr. 40–43 (citing Ex. 1010 7:4–9; Ex. 2005 ¶ 288; Ex. 2006, 325:12–21, 336:12–22). If viewed as separate and independent searches, both would be exhaustive of the data set being searched, and if viewed as a single search, all of the initially input records of the data set (i.e., Works A–E) would be searched by that single search, making it exhaustive. As such, we agree that Ghias does not teach or suggest a non-exhaustive search, as recited in the independent claims. Petitioner responds that Ghias’s subsequent searches are non- exhaustive (Reply 13–14), but we have addressed the same in the prior paragraph, not finding it to be persuasive. Petitioner also argues that the queries from the “first” and “second” searches need not be the same, and in fact would likely be different, such that the results for the first query could exclude non-matches from the results, where those non-matches would be matches for the second query, so that the subsequent search for the second query would not consider these excluded references. Id. at 14. We are not persuaded, however, as the search would still be exhaustive to the dataset provided to the search algorithm. As discussed above, we construe “non-exhaustive search” as “a search that locates a match without a comparison of all possible matches.” We are not persuaded that simply because a search does not seek matches outside of its input records would make that search non-exhaustive; that would make every search non-exhaustive, because it is, by definition, limited to the records input or available to the search algorithm. Petitioner also argues that Ghias discloses that its string matching algorithms operate faster than a brute force search (Reply 14–15), but we are persuaded, as discussed above, that this disclosure is related to comparing a work with a single record in the database, and not with respect to all of the records in the database. Petitioner also argues that Ghias discloses that performance may be improved by “packing all the songs into one file,” whereby the non-exhaustive searching within a record would apply to all of the concatenated record, making the search of the records non-exhaustive. Id. at 15. With respect to this latter argument, we agree with Patent Owner that this represents a “new theory” of the ground than that established in the Petition. Paper 24, 1–2. Compare Pet. 47–48, with Reply 14–15. We will not consider such new arguments for the purposes of this decision. See 37 C.F.R. § 42.23(b); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 2016 WL 2620512, at *8–9 (Fed. Cir. May 9, 2016) (concluding the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)).” slip op. at 13
- Expert testimonyPatent owner expert creditedDecided for patent owner
“i.e., exhaustive and non-exhaustive, and that “one would have envisaged a ‘non-exhaustive’ search as the predominant form of ‘database query,’” such that Conwell discloses the elements of the claims in substance. Reply 11–12 (citing Ex. 2005 ¶ 371; In re Gleave, 560 F.3d 1331, 1334, 1337–38 (Fed. Cir. 2009)). We do not agree. Instead, we find persuasive the testimony of Dr. Karypis that exhaustive methods may be employed to perform the database lookup in Conwell, and that Conwell does not disclose any non-exhaustive approach. Ex. 2005 ¶¶ 367–369. Although Petitioner alleges that Dr. Karypis’s declaration “is replete with attorney argument presented in the guise of expert testimony,” and thus entitled to little weight (Reply 19), we find no fault with his specific review and interpretation of Conwell, and we are persuaded that it demonstrates that the lookup processes in Conwell need not be non-exhaustive.” slip op. at 9
- Strike new argumentNew argument disregardedDecided for patent owner
“With respect to this latter argument, we agree with Patent Owner that this represents a “new theory” of the ground than that established in the Petition. Paper 24, 1–2. Compare Pet. 47–48, with Reply 14–15. We will not consider such new arguments for the purposes of this decision. See 37 C.F.R. § 42.23(b); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 2016 WL 2620512, at *8–9 (Fed. Cir. May 9, 2016) (concluding the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)).” slip op. at 14
Patent outcomesUS 8,640,179 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,640,179 - Google Inc. v. Network-1 Technologies, Inc.No claims unpatentablePTAB · Jun 20, 2016 · IPR2015-00347 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 15–17, 21–28, 31–33, 38, 51, and 52 were not shown unpatentable because Ghias and Iwamura did not disclose the claimed non-exhaustive search.
RulingsFinal written decision- BurdenNot shown unpatentable
“For these reasons, we are not persuaded that Ghias discloses “a non- exhaustive search identifying a neighbor,” as recited in independent claim 15. Claims 16, 17, 21–23, 28, 31, and 51 depend from claim 15. Therefore, Petitioner has not demonstrated that Ghias discloses each and every limitation of claims 15–17, 21–23, 28, 31, and 51. Accordingly, Petitioner has not shown by a preponderance of the evidence that Ghias anticipates 15–17, 21–23, 28, 31, and 51 of the ’988 patent.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for patent owner
“patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, No. 15–446, slip op. at 13 (U.S. June 20, 2016). In our Institution Decision, we construed “a non-exhaustive search” to mean “a search that locates a match without a comparison of all possible matches.” Dec. 7. We disagreed with Petitioner’s view that a search that conducts a comparison with all possible matches is nevertheless non-” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“For these reasons, we are not persuaded that Ghias discloses “a non- exhaustive search identifying a neighbor,” as recited in independent claim 15. Claims 16, 17, 21–23, 28, 31, and 51 depend from claim 15. Therefore, Petitioner has not demonstrated that Ghias discloses each and every limitation of claims 15–17, 21–23, 28, 31, and 51. Accordingly, Petitioner has not shown by a preponderance of the evidence that Ghias anticipates 15–17, 21–23, 28, 31, and 51 of the ’988 patent.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“With respect to its contention that claims 22, 24–26, and 52 would have been obvious over Ghias, Petitioner does not present any additional analysis of the recited “non-exhaustive search” beyond that addressed above in connection with claim 15. Therefore, for the same reasons, Petitioner has not shown by a preponderance of the evidence that claims 22, 24–26, and 52 are unpatentable for obviousness over Ghias.” slip op. at 13
Patent outcomesUS 8,010,988 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,010,988
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.