• Apple Inc. v. Masa LLCAll claims unpatentable
  PTAB · Sep 11, 2017 · IPR2016-00748 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 6–14 are unpatentable: Acharya anticipates them, and Sweeney combined with Acharya renders them obvious.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “1. “Selector Option Switch” Petitioner contends a person of ordinary skill in the art would construe the claim term “selector option switch” as excluding touch screen input devices, because the Specification of the ’834 patent describes a touch screen selector as a substitute for the selector option switch. Pet. 13–14. Patent Owner does not propose further construction of this term. PO Resp. 16. We agree with Petitioner that the broadest reasonable construction of the “selector option switch,” when read in light of the Specification of the ’834 patent, excludes touch screen input devices, because the Specification describes the touch screen selector as a substitute, not as an alternative, for the selector option switch. Ex. 1001, 4:7–9 (“Alternatively, the selector option switch 56 and confirming option switch 62 may be substituted with touch screen selector and confirming options respectively.”). We construe “selector option switch” to exclude touch screen input devices.” slip op. at 6

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

    “2. “Coupled” Patent Owner contends a person of ordinary skill in the art would construe the claim term “coupled” as “connected, directly or indirectly.” PO Resp. 18. Petitioner agrees. Reply 2. Accordingly, we construe the claim term “coupled” to encompass at least a direct connection or an indirect connection.” slip op. at 7

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

    “until the called party is available does not constitute storing an incoming call or text is not commensurate with the scope of the claim. Claim 6 does not limit the first electronic signal to an incoming call or text message. Rather, claim 6 recites a “memory unit further configured to store said first electronic signal.” Column 2 of Acharya discloses that “the portable control device processes the invitation . . . [by] holding the invitation for a specified period of time” (Ex. 1007, 2:48–59), which describes a “memory unit further configured to store said first electronic signal” as recited in claim 6.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable

    “Patent Owner contends Petitioner or its expert did not provide any reason why a person of ordinary skill would have sought to combine particular available elements to reach the claimed invention. PO Resp. 52– 54. According to Patent Owner, Acharya does not suggest a need for transmitting date and time information, or for transmitting, inter alia, a current local weather signal or a current stock ticker signal. PO Resp. 54– 55. Petitioner contends that Acharya discusses the feasibility and motivation to personalize a device to receive different kinds of signals and informational content. Reply 23 (citing Pet. 25–27). Specifically, Petitioner contends that Acharya teaches providing personalized information such as weather conditions or updates on stock prices. Pet. 26–27 (citing Ex. 1007, 15:51–57, 17:39–58, 18:65–19:38). Petitioner contends that a person of ordinary skill in the art would include information such as weather conditions or updates on stock prices as taught by Acharya in the electronic signals received and displayed by the portable device to achieve the predictable benefit of allowing users to receive personalized information as taught by Acharya. Pet. 27. Petitioner’s showing is persuasive. Petitioner provides several reasons, as outlined above, for modifying Acharya. For example, providing different types of information obviously would have appealed to different users, and would have allowed users to personalize their device. See Pet. 26–27. Based on the foregoing discussion and the record, Petitioner has shown by a preponderance of the evidence that the teachings of Acharya render claims 9 and 13 obvious. For independent claims 10 and 14, Petitioner contends persuasively that adding a strap with a buckle fastener to the portable wrist watch device of Acharya would have been obvious because wrist watches commonly have a strap secured to a wearer’s wrist by a buckle in order to secure the device to the wrist. See Pet. 28–29 (citing Ex. 1007, 4:7–13). Based on the foregoing discussion and the record, Petitioner has shown by a preponderance of the evidence that the teachings of Acharya render claims 10 and 14 obvious.” slip op. at 29

  Patent outcomesUS 8,519,834 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,519,834
• Avx Corporation v. Samsung Electro-Mechanics Co., Ltd.Rehearing denied
  PTAB · Aug 16, 2017 · PGR2017-00010 · APJ Sally C Medley · PGR · Rehearing

  The Board denied AVX’s rehearing request, leaving institution on claims 1–4, 6–11, and 13–19 unchanged because AVX showed no abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • Strike new argumentNew argument disregardedDecided for patent owner

    “with “dielectric grains.” Req. Reh’g 3–4. This is a new argument. We could not have overlooked or misapprehended an argument that was never presented by Petitioner in the first place. A request for rehearing is not an opportunity to submit new arguments. See 37 C.F.R. § 42.71(d).1 Petitioner’s rehearing request in this regard is telling, because it never directs us to places in the Petition that we overlooked, but rather takes various disjunctive statements from Patent Owner’s Preliminary Response and Patent Owner’s evidence to contend that we overlooked Patent Owner’s alleged admission of this issue. Req. Reh’g 3–4. The request for rehearing is misplaced because the burden to show the claims are unpatentable is on Petitioner, not Patent Owner. 37 C.F.R. § 42.20(c). Petitioner must put forth its case in its Petition. 1 Petitioner argues that it requested leave to respond to Patent Owner’s arguments made in Patent Owner’s Preliminary Response in a sur-reply, but that we denied that request. Req. Reh’g 3; Paper 9. Petitioner’s implicit due process argument is misplaced. It is incumbent upon Petitioner to make its case in its Petition. Petitioner cannot rely on a sur-reply to fix what should have been in the Petition.” slip op. at 3

  • BurdenDecided for patent owner

    “with “dielectric grains.” Req. Reh’g 3–4. This is a new argument. We could not have overlooked or misapprehended an argument that was never presented by Petitioner in the first place. A request for rehearing is not an opportunity to submit new arguments. See 37 C.F.R. § 42.71(d).1 Petitioner’s rehearing request in this regard is telling, because it never directs us to places in the Petition that we overlooked, but rather takes various disjunctive statements from Patent Owner’s Preliminary Response and Patent Owner’s evidence to contend that we overlooked Patent Owner’s alleged admission of this issue. Req. Reh’g 3–4. The request for rehearing is misplaced because the burden to show the claims are unpatentable is on Petitioner, not Patent Owner. 37 C.F.R. § 42.20(c). Petitioner must put forth its case in its Petition.” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached

    “capacitors be proven to be prior art. Req. Reh’g 7–9. Rather, Petitioner argues, “it was not necessary to prove that the Group 39 capacitors themselves were prior art, only that they faithfully represent products made, offered for sale, and/or sold before the priority date.” Id. at 7. Petitioner’s argument is misplaced because we considered the Group 39 capacitors and representations made by Petitioner with respect to the Group 39 capacitors. Indeed, it was Petitioner that asserted in its Petition that “the Group 39 capacitors that were in on sale, sold, and in public use before the effective filing date of the ’381 patent.” Pet. 65. Thus, we did not err in addressing Petitioner’s own argument when we explained that Petitioner had failed to show that the Group 39 capacitors, purchased four years after the effective filing date of the ’381 patent, was prior art. Dec. 28–30.” slip op. at 4

  § 102 anticipation
  Patents in suitUS 9,326,381
• Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.All claims unpatentable
  PTAB · Feb 7, 2017 · IPR2015-01658 · APJ William M Fink · IPR · Final written decision

  Claims 1–4, 7, 13, 14, 18–20, 22, and 26 are unpatentable on at least one ground; Sandell anticipation of claims 1–3 and Sandell-Hall obviousness of claim 7 were not proven.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find these “definitions” to be substantially similar. For example, both require at least a mechanical engineering degree and experience varying between “some,” in Dr. Brown’s opinion, and “one to three years,” in Dr. Delson’s opinion. Given this apparent lack of disagreement, we adopt 7 U.S. Patent No. 782,156, issued Feb. 7, 1905 (Ex. 1009) (“Meeker”). 8 U.S. Patent No. 4,551,794, issued Nov. 5, 1985 (Ex. 1010) (“Sandell”). 9 U.S. Patent No. 1,842,167, issued Jan. 19, 1932 (Ex. 1011) (“Hall”). Dr. Delson’s statement of the level of ordinary skill for purposes of this Decision, but we note that our analysis would be the same under either formulation.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “1. “flame silhouette element” In the Decision to Institute, we construed the term “flame silhouette element,” recited in at least claims 1 and 26, as “a body of material having a shape that is suitable to generate a flame flickering effect.” Inst. Dec. 9. In their respective Response and Reply, neither party disputes the preliminary construction of this term. Accordingly, we see no reason to change our construction, which we based on the broadest reasonable interpretation, consistent with the Specification.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundPlain and ordinary meaningDecided for petitioner

    “We determine that the Federal Circuit’s statement of the disclaimer of “non-chaotic pivoting” and devices “driven by rhythmic and metronomic patterns,” Luminara, 814 F.3d at 1353–54, is sufficiently specific to determine the scope of the term “pivot” in claim 1 and “pivotally supported” in claim 13.13 Accordingly, we apply the Federal Circuit’s construction that the plain and ordinary meaning of “pivot” and “pivotally supported” applies, 13 We have also considered Patent Owner’s Motion for Observations (Paper 37), which are substantially directed at obtaining admissions from Petitioner’s declarant in support of its proposed construction of chaotic pivoting (or that Schnuckle ’455 does not disclose chaotic pivoting based on this construction). See id. at 6–13. Although we have considered Patent Owner’s observations, we do not find them persuasive for the reasons explained herein. except that non-chaotic pivoting and devices driven by rhythmic and metronomic patterns are disclaimed.” slip op. at 17

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

    “consider whether Schnuckle ’455 sufficiently discloses the pivot (or pivotally supported) limitation given the disclaimer of non-chaotic pivoting and devices driven by rhythmic and metronomic patterns. As noted above, the Federal Circuit specifically determined, at least as a preliminary matter, that Schnuckle ’455 seemed to meet this claim requirement with its discussion of a two-axis gimbal articulated by “chaotic forces” that can articulate the flame element to “randomly simulate blowing in the wind. ’455 patent, col. 6, ll. 53–62.” Luminara, 814 F.3d at 1354. We agree with the Federal Circuit’s preliminary determination. Although Patent Owner observes that “‘chaotic’ describes the ‘external or internal force’––i.e., the force entering the system, not the resulting motion” (PO Resp. 20–21), Patent Owner does not address the fact that this driving force is coupled to resulting motion “simulating blowing in the wind” (Ex. 1003, 6:62) and “provid[ing] a realistic flame effect” (id. at 1:54–58). As such, we agree that this excerpt of Schnuckle ’455 satisfies the chaotic pivoting requirement and is not driven by a “rhythmic or metronomic” driving force. Pet. Reply 4 n.1. Petitioner also cites the discussion of “programmable movement patterns” as additional evidence of this fact. Id. (citing Ex. 1003, 5:52–67 (“The desired movement pattern of the flame shaped surface 326 may be encoded and stored in the memory module 408 of the control board 302 in the form of digital data or control signals.”)). We agree that the column 5 description in Schnuckle ’455 of programmable movement patterns, when viewed against column 6’s description relied upon by the Federal Circuit (Ex. 1003, 6:53–62), suggests the programmed pattern is not rhythmic or metronomic but natural and chaotic.14 Accordingly, we find that Schnuckle ’455 discloses chaotic pivoting as required by claims 1 and 13. Accordingly, for the foregoing reasons, we determine Petitioner has satisfied its burden of proving anticipation based on Schnuckle ’455 against claims 1 and 13 by a preponderance of the evidence.” slip op. at 21

  Patent outcomesUS 8,696,166 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,696,166
• Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.All claims unpatentable
  PTAB · Feb 6, 2017 · IPR2015-01656 · APJ William M Fink · IPR · Final written decision

  Claims 1 and 5 are anticipated by Schnuckle ’455, and claims 1–5 are unpatentable as obvious over Schnuckle ’455.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “30, 2013) (Paper 26) (precedential as to Section III.A) squarely address Patent Owner’s argument. In LG, the Board determined that a proceeding was time-barred even though the prior case (in which a complaint was served more than one year prior to the Petition) was dismissed with prejudice in part and without prejudice in part. Id. at 6. Because even a partial dismissal with prejudice did not leave the parties in the position that they would have been in had the prior complaint never been brought, the Board found the exception to § 315(b) for prior complaints dismissed without prejudice did not apply. Id. In Oracle, by contrast, the facts are similar to those alleged here. Specifically, a petitioner was served with a complaint alleging infringement of the challenged patent more than one year before the petition the proceeding was filed. Id. at 15. That suit was dismissed without prejudice. Id. at 16–17. Applying the Federal Circuit decisions in Graves and Bonneville, the Board determined that “the dismissal of the infringement suit . . . nullifies the effect of the service of the complaint and, as a consequence, does not bar [Petitioner] or any of the other Petitioners from pursuing an inter partes review.” Id. at 17. As with Oracle, Patent Owner here concedes the 2012 case was dismissed without prejudice and does not allege any circumstances that would tend to show the parties are not in the position they were in had the complaint never been served. Accordingly, we find Oracle is controlling under the circumstances alleged in this proceeding.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find these “definitions” to be substantially similar. For example, both require at least a mechanical engineering degree and experience varying between “some,” in Dr. Brown’s opinion, and “one to three years,” in Dr. Delson’s opinion. Given this apparent lack of disagreement, we adopt Dr. Delson’s statement of the level of ordinary skill for purposes of this Decision, but we note that our analysis would be the same under either formulation.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “based interpretation of the disclaimer addressed by the Federal Circuit, we also consider whether Patent Owner’s construction of “pivotally mounted” (i.e., requiring three, independent, non-linear types of motions that must not be controlled or modulated) is appropriate. See PO Resp. 12–13. We conclude it is not. Though preliminary, the Federal Circuit specifically rejected this reading both before and after determining that non-chaotic pivoting is disclaimed. Luminara, 814 F.3d at 1352–53 (rejecting the district court’s construction that “free to pivot” requires “movement that is more than rotation around two axes”; “Pivoting includes rotation around a single axis.”), 1354 (finding that “[t]he [Schnuckle] ’455 patent undisputedly teaches pivoting in two axes” and the “final limitation in claim 1 of the ’166 patent—chaotic movement—seems to be met . . . in the prior art [Schnuckle] ’455 patent.”). We agree with the Federal Circuit’s analysis, because it is consistent with the intrinsic evidence. Conversely, Patent Owner’s proposed construction contradicts the intrinsic evidence in other respects. For example, claim 17 has a limitation directed to both pivoting (i.e. “allowing the pendulum to pivot about the hole on the support wire”) and “chaotic motion at the coupling member in at least two dimensions.” Ex. 1001, 23:28–30 (emphasis added). By requiring chaotic motion in at least two dimensions (as on a single-axis), the claims suggest chaotic motion nominally includes motion in even one dimension, as in up or down or side to side. On the other hand, interpreting the specification disclaimer of “chaotic pivoting” for purposes of claim 1 to require three, independent nonlinear types of motion, as Patent Owner argues, would lead to the incompatible result that claim 17, which requires movement in only two dimensions, would cover devices that are disclaimed by the specification.” slip op. at 17

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

    “consider whether Schnuckle ’455 sufficiently discloses the pivotally mounted limitation given the disclaimer of non-chaotic pivoting and devices driven by rhythmic and metronomic patterns. As noted above, the Federal Circuit specifically determined, at least as a preliminary matter, that Schnuckle ’455 seemed to meet this claim requirement with its discussion of a two-axis gimbal articulated by “chaotic forces” that can articulate the flame element to “randomly simulat[e] blowing in the wind. ’455 patent, col. 6, ll. 53–62.” Luminara, 814 F.3d at 1354. We agree with the Federal Circuit’s preliminary determination. Petitioner, relying on Dr. Delson’s testimony, also states the disclosure of driving with “natural and chaotic forces” “simulating blowing in the wind” is not a “rhythmic or metronomic” driving force in accordance with the disclaimer. Pet. Reply 20 (citing Ex. 1019 ¶¶ 19–27). Petitioner cites the discussion of “programmable movement patterns” as additional evidence of this fact. Id. (citing Ex. 1003, 5:52–67 (“The desired movement pattern of the flame shaped surface 326 may be encoded and stored in the memory module 408 of the control board 302 in the form of digital data or control signals.”); Ex. 1019 ¶¶ 25–26 (explaining that exciting electromagnets according to digital data can produce chaotic motion)). Patent Owner interprets this excerpt differently, arguing that because “the movement pattern of the flame shaped surface 326 may be encoded and stored in the memory module 408 of the control board 302 in the form of digital data or control signals,” Schnuckle ’455 admits the gimbal of Figure 7 does not move naturally. PO Resp. 21 (quoting Ex. 1003, 5:53–56; Ex. 2010 ¶ 141). We disagree. Nothing in the column 5 excerpt of Schnuckle ’455 suggests memory is programmed with rhythmic or metronomic patterns. Rather, column 5 explains how the electromagnets 316 are excited according to the data programmed into the memory module. See Ex. 1003, 5:54–63. This column 5 description is informed by column 6’s explanation that magnetism articulates the light pipe (i.e., pendulum) with a “natural and chaotic external . . . force (such as . . . magnetism)” resulting in “simulating blowing in the wind.” See id. at 6:56–63. From these descriptions, the programmed pattern is not rhythmic or metronomic, but is natural and chaotic. We, therefore, find the column 5 description consistent with the column 6 description relied upon by the Federal Circuit (Ex. 1003, 6:53–62).5 This is consistent with Dr. Delson’s testimony (Ex. 1002 ¶¶ 57–58; Ex. 1019 ¶ 26), which we credit. Accordingly, we find Schnuckle ’455 discloses chaotic pivoting.” slip op. at 24

  Patent outcomesUS 8,070,319 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,070,319
• Infobionic, Inc. v. Braemar Manufacturing, LLCAll claims unpatentable
  PTAB · Dec 29, 2016 · IPR2015-01679 · APJ Scott C Moore · IPR · Final written decision

  Claims 1, 2, 4, 6, 7, 10, 11, 13–15, and 17 are anticipated by Sellers; claims 3, 5, 8, 9, 12, 16, and 20–22 are obvious over Sellers and Stutman; claims 18–19 are obvious over …

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “location.” See PO Resp. 21–22; Reply 2. On this record, we determine that the claim term “central monitoring device” is not further limited to a device that performs monitoring “during a monitoring session” such that it is able to “respond to patient status . . . when it detects evidence of certain physiologic conditions as they occur.” See PO Resp. 21–22. The Specification uses the term “central monitoring device” in an open-ended manner, and Patent Owner does not identify any lexicographic definition or disclaimer that would limit the claim term “central monitoring device” in the manner it proposes. See PO Resp. 20–22; Tr. 38:1–17. Though Patent Owner cites one dictionary that defines “monitoring” as “constantly checking on a patient’s condition” (Ex. 2021, 930), this definition is overly narrow because the Specification makes clear that monitoring may be performed on a periodic basis. See, e.g., Ex. 1001, 3:2–31, 8:57–64. Moreover, Patent Owner’s other dictionary definition (Ex. 2020, 752) does not reference a patient, or require detecting “physiologic conditions as they occur.” Dr. Fernald’s testimony regarding this claim term (Ex. 2003 ¶¶ 39– 41) is not persuasive because the portions of the Specification he cites do not limit the claim term “central monitoring device” in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:10–16, 6:37–42, 7:13–20, 7:52–59, 8:23–38); Tr. 38:1–17), and because Dr. Fernald does not adequately account for the dictionary evidence indicating that the claim term “monitoring” does not require constantly observing a patient’s status (see Ex. 2020, 752). We find persuasive Dr. Stone’s testimony that one of ordinary skill would have understood the portions of the Specification cited by Patent Owner and Dr. Fernald to be non-limiting examples. Ex. 1011 ¶¶ 19–32. For the foregoing reasons, on this record, and under the applicable broadest reasonable interpretation standard, we construe “central monitoring device” as “a device that watches, keeps track of, or checks from a central location.” 2.” slip op. at 9

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

    “On this record, and under the applicable broadest reasonable interpretation standard, we determine that the claim term “in communication with” encompasses indirect communications (e.g., communication by way of an intermediate component). We further determine that a processor need not generate a message, or respond to a message, in order to be “in communication with” a separate component. The ’901 Patent Specification uses the term “in communication with” in a broad, open-ended manner. See, e.g., Ex. 1001, 2:13–23, 2:38–44. In addition, Patent Owner does not cite any persuasive intrinsic or extrinsic evidence that a person of ordinary skill in the art would have read the claim term “in communication with” to exclude embodiments in which a processor merely receives information. See PO Resp. 40–43. Nor does Patent Owner cite any persuasive intrinsic or extrinsic evidence that the claim term “in communication with” excludes communication between a processor and a component when the processor is acting as an intermediary between that component and some other component. See id. In addition, Dr. Fernald fails to sufficiently support his conclusion that the claim term “in communication with” excludes such forms of communication. See Ex. 2003 ¶¶ 99–103. 4.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, we adopt Petitioner’s formulation concerning the level of ordinary skill in the art because this formulation more accurately describes the subject matter to which the ’901 Patent pertains. Patent Owner’s formulation is unduly narrow because subject matter of the ’901 Patent is not limited to “ECG telemetry devices” or other “remote monitoring and telemetry devices.” The parties do not dispute that Dr. Stone and Dr. Fernald are both qualified to testify about the perspective of one having ordinary skill in the art, regardless of which formulation we adopt. Tr. 24:22–25:3, 62:6–11. The parties also agree that the issues in this case do not turn on the differences between Petitioner’s and Patent Owner’s proposed formulations regarding the level of ordinary skill in the art. Id. at 24:13–19, 62:12–21. On this record, we find that both Dr. Stone and Dr. Fernald are qualified to offer expert opinions in this case. The factual findings and legal conclusions set forth below would not have differed had we adopted Patent Owner’s formulation regarding the level of ordinary skill in the art. 3.” slip op. at 14

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Dr. Fernald’s testimony regarding this claim term (Ex. 2003 ¶¶ 39– 41) is not persuasive because the portions of the Specification he cites do not limit the claim term “central monitoring device” in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:10–16, 6:37–42, 7:13–20, 7:52–59, 8:23–38); Tr. 38:1–17), and because Dr. Fernald does not adequately account for the dictionary evidence indicating that the claim term “monitoring” does not require constantly observing a patient’s status (see Ex. 2020, 752). We find persuasive Dr. Stone’s testimony that one of ordinary skill would have understood the portions of the Specification cited by Patent Owner and Dr. Fernald to be non-limiting examples. Ex. 1011 ¶¶ 19–32.” slip op. at 9

  Patent outcomesUS 6,225,901 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,225,901
• Infobionic, Inc. v. Braemar Manufacturing, LLCSome claims unpatentable
  PTAB · Dec 29, 2016 · IPR2015-01688 · APJ Scott C Moore · IPR · Final written decision

  Claims 1, 2, 4, 6, 7, 11–16, and 19–23 are anticipated by Sellers; claims 3, 5, 8, 9, 17, and 18 are obvious over Sellers and Stutman; claim 10 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, we adopt Petitioner’s formulation concerning the level of ordinary skill in the art because this formulation more accurately describes the subject matter to which the ’403 Patent pertains. Patent Owner’s formulation is unduly narrow because subject matter of the ’403 Patent is not limited to “ECG telemetry devices” or other “remote monitoring and telemetry devices.” The parties do not dispute that Dr. Stone and Dr. Fernald are both qualified to testify about the perspective of one having ordinary skill in the art, regardless of which formulation we adopt. Tr. 24:22–25:3, 62:6–11. The parties also agree that the issues in this case do not turn on the differences between Petitioner’s and Patent Owner’s proposed formulations regarding the level of ordinary skill in the art. Id. at 24:13–19, 62:12–21. On this record, we find that both Dr. Stone and Dr. Fernald are qualified to offer expert opinions in this case. The factual findings and legal conclusions set forth below would not have differed had we adopted Patent Owner’s formulation regarding the level of ordinary skill in the art.” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “The parties agree that a central monitoring device/service is a device/service that “watch[es], keep[s] track of, or check[s]” on something “from a central location.” See PO Resp. 21; Reply 2. On this record, we determine that the claim term central monitoring device/service is not further limited to a device/service that performs monitoring “during a monitoring session” such that it is able to “respond to patient status . . . when it detects evidence of certain physiologic conditions as they occur.” See PO Resp. 20– 22. The Specification uses the term “central monitoring device” in an openended manner, and Patent Owner does not identify any lexicographic definition or disclaimer that would limit this claim term in the manner it proposes. See PO Resp. 19–22; Tr. 38:1–17. The term “central monitoring service” does not appear in the Specification. Though Patent Owner cites a dictionary that defines “monitoring” as “constant checking on a patient’s condition” (Ex. 2021, 930), this definition is overly narrow because the Specification makes clear monitoring may be performed on a periodic basis. See, e.g., Ex. 1001, 3:6–35, 8:63–9:2. Moreover, Patent Owner’s other dictionary definition (Ex. 2020, 752) does not reference a patient, or require detecting “physiologic conditions as they occur.” Dr. Fernald’s testimony regarding this claim term (Ex. 2003 ¶¶ 39– 41) is not persuasive because the portions of the Specification he cites do not limit the term central monitoring device/service in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:14–20, 6:42–47, 7:17–25, 7:57–64, 8:28–42); Tr. 38:1–17), and because Dr. Fernald does not adequately account for the dictionary evidence indicating that the claim term “monitoring” does not require constantly observing a patient’s status (see Ex. 2020, 752). We find persuasive Dr. Stone’s testimony that one of ordinary skill would have understood the portions of the Specification cited by Patent Owner and Dr. Fernald to be non-limiting examples. Ex. 1011 ¶¶ 21–34. For the foregoing reasons, on this record, and under the applicable broadest reasonable interpretation standard, we construe central monitoring device/service as a device or service “that watches, keeps track of, or checks from a central location.” 2.” slip op. at 9

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

    “On this record, and under the applicable broadest reasonable interpretation standard, we determine that the claim term “in communication with” encompasses indirect communications (e.g., communication by way of an intermediate component). We further determine that a processor need not generate a message, or respond to a message, in order to be “in communication with” a separate component. The ’403 Patent Specification uses the term “in communication with” in a broad, open-ended manner. See, e.g., Ex. 1001, 2:17–27, 2:42–48. In addition, Patent Owner does not cite any persuasive intrinsic or extrinsic evidence that a person of ordinary skill in the art would have read the claim term “in communication with” to exclude embodiments in which a processor merely receives information. See PO Resp. 40–44. Nor does Patent Owner cite any persuasive intrinsic or extrinsic evidence that the claim term “in communication with” excludes communication between a processor and a component when the processor is acting as an intermediary between that component and some other component. See id. In addition, Dr. Fernald fails to sufficiently support his conclusion that the claim term “in communication with” excludes such forms of communication. See Ex. 2003 ¶¶ 99–103. 4.” slip op. at 12

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

    “Based on the arguments and evidence presented in the Petition and having considered the arguments and evidence presented by both parties during the trial, we are persuaded that Petitioner has established by a preponderance of the evidence that claims 1, 2, 4, 6, 7, 11–16, and 19–23 are anticipated by Sellers. 4.” slip op. at 26

  Patent outcomesUS 6,940,403 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 6,940,403
• Inguran, LLC D/B/A Sexing Technologies v. Premium Genetics (UK) Ltd.All claims unpatentable
  PTAB · Dec 20, 2016 · PGR2015-00017 · APJ Kristen L Droesch · PGR · Final written decision

  Claim 1 is unpatentable under § 102(a)(1) as anticipated by Durack, Mueth, and Frontin-Rollet.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “On September 16, 2016, Patent Owner filed a disclaimer for claims 2–14 of the ’395 Patent, pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2007. Therefore, only claim 1 (“the remaining challenged claim”) is at issue.” slip op. at 2

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

    “1. “Channel” For purposes of the Institution Decision, the Board construed “channel” as “a long gutter, groove, or furrow.” Dec. Inst. 6–7. Patent Owner relies on testimony by Petitioner’s expert, Dr. Vacca, to assert that “channel” should be construed as “a hollow member for conveying fluids.” PO Resp. 14 (citing Ex. 1002, 153; Ex. 2006, 17:17–18:12). In response, Petitioner contends that Patent Owner provides no support for its contention that a channel must convey and not collect. See Pet. Reply 17. We are not persuaded by Patent Owner’s arguments that a “channel” must convey fluid. At deposition, Dr. Vacca explained, “a hollow member for conveying fluids” “is a definition that I have supplied . . . as one of the definitions of channel that I have . . . provided here.” Ex. 2006, 17:22–18:4. Although Patent Owner provides testimony regarding one definition for “channel,” Patent Owner does not provide evidence sufficient to demonstrate that “a hollow member for conveying fluids” is the broadest reasonable interpretation of “channel.” We maintain the construction of the broadest reasonable interpretation of “channel” as “a long gutter, groove, or furrow,” (see Dec. Inst. 6) which encompasses within its scope “a hollow member for conveying fluids.”” slip op. at 5

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

    “In view of the broadest reasonable interpretation of “said plurality of buffer channels which are disposed on either side of said first input channel” discussed above in Section II.A.2, on this record, we disagree with Patent Owner’s arguments. We are persuaded that Petitioner has established by a preponderance of the evidence that Durack discloses this claim limitation based on radial bores 173 and 183 disposed on one side of conduit 157 (i.e., the exterior circumferential bounding surface of conduit 157). See Ex. 1005, Fig. 5.” slip op. at 20

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “In light of Patent Owner’s position that it met its burden of production in the Preliminary Response, we return to the positions advanced by the parties. As discussed briefly above, Petitioner asserted that the at least one channel limitation recited in claim 1 was not disclosed in the manner required by § 112(a) in any of the patent applications filed before March 16, 2013 (i.e., the ’969 Application and the ’957 Application). See Pet. 12–17. Patent Owner, in its Preliminary Response, argued that there was adequate written description support for the at least one channel limitation of claim 1. See Prelim. Resp. 8–13 (citing Ex. 1001, Fig. 1, 13:21–23; Ex. 1004, 11:66–12:4, 16:22–25). Patent Owner, however, does not address the remaining limitations of claim 1 and whether the prior applications disclose those remaining limitations in the manner required by § 112(a). See PO Resp. 3–6; Prelim. Resp. 7–13. Patent Owner, at oral argument, acknowledged that just one limitation of claim 1 was addressed in the Preliminary Response because it was the only limitation disputed by Petitioner. See Tr. 24:16–25:2. Although Petitioner arguments addressing standing for post-grant review only disputed written description support for the at least one channel limitation of claim 1, we are not aware of any obligation on the part of Petitioner to address whether each and every limitation of claim 1 was disclosed in the manner required by § 112(a). In contrast, in order for Patent Owner to show entitlement to an earlier effective filing date, Patent Owner must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, possession of the invention now claimed by describing the invention, with all its claimed limitations. See Lockwood, 107 F.3d at 1572; VasCath, 935 F.2d at 1563–64. Patent Owner’s arguments addressing only the at least one channel limitation of claim 1 (see PO Resp. 3–6; Prelim. Resp. 7–13) are insufficient to meet Patent Owner’s burden of coming forward with evidence or argument to show possession of the invention, with all its claimed limitations, as of the September 3, 2004 filing date. For all of the foregoing reasons, Patent Owner has not shown sufficiently that the ’395 Patent is entitled to an earlier effective filing date of September 3, 2004. Thus, Mueth and Frontin-Rollet remain prior art to the ’395 Patent.” slip op. at 33

  Patent outcomesUS 8,933,395 unpatentable
  Claim construction§ 102 anticipation§ 112 disclosure
  Patents in suitUS 8,933,395
• The Boeing Company v. Seymour LevineAll claims unpatentable
  PTAB · Dec 20, 2016 · IPR2015-01341 · APJ Trenton A Ward · IPR · Final written decision

  Claims 4, 5, 8, 9, 10, 14, and 16 are unpatentable as obvious under § 103 over the combinations listed in the decision.

  RulingsFinal written decision

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

    “The definition of “advice” is “information or notice given.” Ex. 3001 (Webster’s Third New International Dictionary 32 (1971), 3.). Thus, the plain and ordinary meaning of “maintenance advice” is consistent with the aforementioned evidence, in that “maintenance advice” can include maintenance information, but does not require “recommended maintenance actions.” Patent Owner argues that this dictionary definition cited by the Board includes an alternative definition of “advice” as a “recommendation regarding a decision or course of conduct.” PO Resp. 33 (citing Ex. 3001, 3). Patent Owner further argues that this alternative definition of “advice” is most consistent with specification. PO Resp. 33. Patent Owner fails, however, to cite to any portions of the specification to support this argument (see id.) and fails to explain why we should not be guided by the more general statements in the specification, such as the description in the specification that a “preferred maintenance advisory” can be based “on an expert system for fault isolation,” which is in no way “recommended maintenance actions.” Ex. 1001, 3:36–37. We are not persuaded by Patent Owner’s argument that “maintenance advice” must include recommended maintenance actions. Accordingly, we adopt the portion of the proposed definitions on which the parties agree and determine that the term “maintenance advice” means “problem-specific maintenance information.” See also Dec. 7–8.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’618 patent would have a “B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85.” Ex. 1002 ¶ 15. According to Patent Owner’s Declarant, Mr. Grabowsky, a person of ordinary skill in the art relevant to the ’618 patent would have “at least a B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85; as well as either an M.S. or equivalent work experience, such as 3-5 years of experience in avionics.” Ex. 2011 ¶ 8. Thus, both declarants generally agree on the level of skill, although Mr. Grabowsky suggests experience is required in addition to the B.S. degree or the FAA Mechanic Certificate. See id. Based on our review of the ’618 patent, the types of problems and solutions described in the ’618 patent and cited prior art, and the testimony of Petitioner’s Declarant and Patent Owner’s Declarant, we adopt Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We are not persuaded that the additional experience of an M.S. or equivalent work experience, such as 3-5 years of experience in avionics, is required, as suggested by Mr. Grabowsky, as we are unclear as to why the claimed subject matter is beyond the abilities of someone who otherwise meets applicable federal regulatory standards. Based on the stated qualifications of Dr. Helfrick (Ex. 1002 ¶¶ 5–9) and the stated qualifications of Mr. Grabowsky (Ex. 2011 ¶¶ 6–7), Petitioner’s Declarant and Patent Owner’s Declarant both meet the requirements of this definition. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 12

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

    “and ARINC 624-1 because ARINC 624-1 is a standard directed to the very types of on-board systems discussed in Ward.”)). Additionally, Petitioner contends that ARINC publishes standards for the aviation industry, developed by committees that include aircraft manufacturers, avionics manufacturers, and airlines, and that the ACARS transmitter disclosed in Ward is based on, and, thus, would follow, an ARINC standard. Pet. 30 (citing Ex. 1002 ¶¶ 23, 75). Also, Petitioner contends that both Ward and ARINC 624-1 discuss utilizing (1) onboard maintenance systems including ACMS to collect aircraft performance data and (2) an ACARS transmitter to transmit such data to a ground station. Pet. 30. Petitioner adds that ARINC 624-1 provides an explicit motivation to utilize Ward’s ground based maintenance analysis software in implementing its maintenance system, because ARINC 624-1 states that “if known in advance of an airplane’s arrival at a terminal, selected information held in the OMS central maintenance computer’s memory could be useful to line maintenance personnel in planning timely corrective action.” Pet. 30–31 (quoting Ex. 1014 § 2.2.4). We agree, for the reasons stated by Petitioner, that, given the similarity and overlap in disclosures, and applicability of the ARINC standard to the ACARS transmitter of Ward, a person of skill in the art would have been motivated to improve the system in Ward with the teachings in ARINC 624-1. In view of the foregoing, we determine Petitioner has presented and sufficiently established an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” with respect to claim 4 for this ground, and we adopt its contentions as our own. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 21

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “on an aircraft having a flight data recorder.” Pet. Reply 15.10 Furthermore, Petitioner identifies that claims 8–10 all require “aircraft position data directed to said flight data recorder.” Id. Petitioner argues that Mr. Levine’s October 9, 1996 Invention Disclosure is insufficient, because it does not reflect the conception of the invention that Patent Owner ultimately claimed, which requires two data recorders—one onboard the aircraft and a second, remote recorder on the ground. Id. We do not agree with Petitioner’s argument that claims 4 and 8–10 require a flight data recorder on the ground, as claim 4 merely recites a “central station” “configured to receive and analyze said digital aircraft performance.” We do agree, however, with Petitioner’s argument that the express language of independent claim 4 requires “an aircraft having a flight data recorder.” Furthermore, claim 4 requires that the “digital aircraft performance data,” which the “central station” is configured to receive and analyze, is “data directed to the flight data recorder.” Thus, the invention recited in independent claim 4, and its dependent claims, must include a flight data recorder onboard the aircraft and, separately, a central station configured to receive and analyze data directed to the onboard flight data recorder. 10 The recitation “[a]n aircraft maintenance system for use on an aircraft having a flight data recorder” appears in the preamble of claim 4. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). Here, the body of claim 4 refers to “the flight data recorder” as an active limitation in the claim. Therefore, we determine that the preamble is limiting for claim 4.” slip op. at 31

  Patent outcomesUS RE39,618 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
• Pixart Imaging, Inc. v. Syncpoint Imaging, LLCAll claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01347 · APJ Christa P Zado · IPR · Final written decision

  Claims 1–4, 6–9, 11, 17–19, and 24–26 are unpatentable under § 102(b) as anticipated by one or more of Stove, Platzker, Elrod, and Vogeley.

  RulingsFinal written decision

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)

    “Co-pending Reexamination of the ’214 patent, Reexamination Control No. 90/020,085. Paper 16. Petitioner filed an opposition to Patent Owner’s motion. Paper 17. At the oral hearing, Patent Owner withdrew its motion. Tr. 74:8–24. At the hearing, Petitioner responded that it has no objection to Patent Owner withdrawing its motion. Id. at 75:2–5. Accordingly, Patent Owner’s motion is withdrawn.” slip op. at 7

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

    “interpreted 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); see also Cuozzo Speed Techs., LLC, v, Lee, 136 S. Ct. 2131, 2141–46 (2016). The terms also generally are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We determine that it is unnecessary to construe any claim terms for purposes of this decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 8

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

    “the spot’s detection. Pet. 15 (citing Ex. 1005 6:9–14, 10:11–15). We are not persuaded by Petitioner’s evidence and arguments. Claim 4 recites “filtering the image to detect at least one property,” and therefore requires filtering the image captured by video camera 5 in Stove. The filter Petitioner relies on from Stove is an optical filter placed in front of the lens of video camera 5 (Ex. 1005, 6:8–9, 10:11–15 (“a red filter can be placed in front of the lens of video camera 5”)), and thus, it filters light before it enters the camera, and before an image is captured. We, therefore, are not persuaded by a preponderance of the evidence that Stove discloses “filtering the image to detect at least one property,” as recited in claim 4. We have reviewed the parties’ arguments and the evidence of record. Upon review, we determine Petitioner has not demonstrated by a preponderance of the evidence that Stove discloses every element of either claim 4, or claim 5 due to its dependence on claim 4.” slip op. at 20

  • BurdenDecided for petitioner

    “Petitioner must prove its proposition by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C. § 102 if “the prior art reference discloses every element of the claim.” In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). “[A]bsence from the reference of any claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1571 (Fed. Cir 1986).” slip op. at 8

  Patent outcomesUS 6,275,214 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,275,214
• Commscope Technologies, LLC v. Communications Components Antenna Inc.Institution denied
  PTAB · Nov 3, 2016 · IPR2016-00999 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–28 unpatentable, principally because Yea did not establish the claimed asymmetrical coverage areas.

  RulingsInstitution decision

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

    “partes review of claims 1–28 of U.S. Patent No. 8,311,582 B2 (Ex. 1001, “the ’582 patent”). Paper 1 (“Pet.”). Patent Owner, Communications Components Antenna Inc., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1–28 of the ’582 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “Petitioner’s proposed construction of this limitation is supported by the specification of the ’582 patent. The ’582 patent discloses replacing a single sector coverage area with sub-sector coverage areas, at least one of which is an asymmetrical coverage area. Ex. 1001, 3:16–18. The ’582 patent discloses that the use of asymmetrical coverage areas permits the total coverage area to closely approximate the symmetrical sector coverage area being replaced, without creating excessively large sub-sector handover zones or introducing sever degradation in network performance. Id. at 3:18–24. The ’582 patent discloses creating the asymmetrical coverage areas by replacing an existing antenna with an antenna that has substantially the same coverage area, but divides the coverage area into a plurality of separate asymmetrical beams or sub-sectors. Id. at 4:32–38. As disclosed by the ’582 patent, the replacement antenna produces a plurality of separate beams, each defining a new sub-sector with only a small overlapping area between them and which together provide substantially identical coverage to the sector supported by the original antenna, to upgrade the single sector to a plurality of sub-sectors without significantly affecting neighboring sites. Id. at 4:51–57. The replacement antenna introduces asymmetry into the generated beam pattern. Id. at 4:58–60. The introduction of asymmetrical beams by the replacement antenna allows close approximation of the coverage area of the conventional sector antenna being replaced. Id. at 5:61–64. For purposes of this Decision, we adopt Petitioner’s proposed construction of “a plurality of sub-sector coverage areas extending therefrom, at least one of which is asymmetrical,” as a plurality of replacement sub-sector beams, at least one of which has an asymmetrical shape, where asymmetry includes deliberate or inherent asymmetry as the broadest reasonable construction consistent with the specification.” slip op. at 8

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

    “49 (Fed. Cir. 2005). There, the district court invalidated claims of the patent in suit on summary judgment based on the measured dimensions of a prior art patent figure. Id. at 1148. The Federal Circuit reversed, warning “that arguments based on drawings not explicitly made to scale in issued patents are unavailing.” Id. at 1149. Petitioner here does not identify any portion of Yea disclosing that Figures 4 and 8 are drawn accurately enough to determine an asymmetrical nature of the radiation patterns. Petitioner also fails to cite to any disclosure in Yea that identifies or describes an asymmetrical nature of the radiation patterns. Furthermore, Petitioner also has not explained why the shapes shown in the linear scale drawings of Figure 4 would show similar shapes when converted to a logarithmic scale. Additionally, Petitioner does not explain why the carrier to interference ratio shown in Figure 8 can be used to accurately measure antenna radiation beam patterns. We find Petitioner does not sufficiently establish that the plots shown in Figures 4 and 8 of Yea can be used to determine whether the antenna radiation beam pattern is asymmetrical. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that Petitioner would prevail in showing that Yea anticipates independent claims 1, 13, and 20. b. Dependent Claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27 Petitioner argues that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27. Pet. 47–53. In so arguing, Petitioner relies on Yea as disclosing the claimed asymmetrical coverage area. Id. Because we are not persuaded that Yea discloses this limitation, we are not persuaded that Petitioner establishes a reasonable likelihood of prevailing in showing that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “as well as testimony of both Mr. Collins and Mr. Cosgrove. Under Rule 37 C.F.R. § 42.108, any genuine issues of material fact created by the testimonial evidence should be viewed in light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review. Even reviewing the testimony of Mr. Collins in the light most favorable to Petitioner, we determine Petitioner has established only that asymmetrical beams may be used in a planar array antenna, but not that a person of ordinary skill in the art would have understood steered beams of a planar array antenna are necessarily asymmetrical. Mr. Collins cites to Litva (Ex. 1009) and Wästberg (Ex. 1018) in stating that prior art steered beams of a planar array antenna can be asymmetrical beams. Ex. 1024 ¶ 179. We credit Patent Owner’s arguments and the testimony of Mr. Cosgrove to determine Petitioner does not sufficiently establish the likelihood that a person of ordinary skill in the art would have understood that steered beams of a planar array antenna are necessarily asymmetrical. Further, Petitioner fails to set forth a sufficient rationale for why a person of ordinary skill in the art would use the asymmetrical beams of the prior art with the disclosure of Yea. Pet. 39–40. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that using asymmetrical beams in Yea would have been obvious. We therefore conclude that the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the subject matter of claims 1, 2, 6, 7, 9, 11–15, 18–22, 24, and 27 would have been obvious over Yea, Metawave Website, Litva, and Wästberg.” slip op. at 22

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,311,582

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.