• Markforged Inc. v. Continuous Composites, Inc.Institution denied
  PTAB · Sep 9, 2022 · IPR2022-00548 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 and 17–41 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “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 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelOther

    “(“POSITA”) would have had “a master’s degree in mechanical engineering, materials science, or a related degree, and at least 3–5 years of experience in composite materials or additive manufacturing,” or a bachelor’s degree in the same fields and at least 5–6 years of experience. Pet. 9–10 (citing Ex. 1002 ¶ 36). Patent Owner states that it “does not agree that Petitioner’s proposed level of skill in the art accurately reflects the level of ordinary skill in the art as of the priority date . . . . But regardless of what level of skill is applied, the Petition does not show a reasonable likelihood to prevail.” Prelim. Resp. 10. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to propose a level of ordinary skill in the art in this proceeding should it be instituted, or in other proceedings.”).” slip op. at 6

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

    “customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 7

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

    “Thus, as we understand it, Petitioner is arguing that a POSITA would have understood Wohrl’s teaching of laying fiber strands on a core and precuring the fibers so that the fibers dry and stick to the core is “coupling a portion of the at least one path to an anchor point” as recited in claims 1 and 38. Petitioner’s argument appears to be premised on the understanding that any point at which the path contacts a “surface suitable for anchoring the part” is the claimed “anchor point.” The ’543 patent, however, describes an “anchor point” as something more than just any point to which a part of the path is affixed.” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,511,543
• Markforged Inc. v. Continuous Composites, Inc.Institution denied
  PTAB · Sep 9, 2022 · IPR2022-00732 · APJ Sheldon M Mcgee · IPR · Institution

  The Board denied institution for claims 1–9 because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

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

    “III. ANALYSIS We have authority to institute an inter partes review only where “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Our findings and conclusions set forth in this Decision are provided for the exclusive purpose of explaining our determination that Petitioner has not met that standard on this record.” slip op. at 5

  • Skill levelSkill level board ownOther

    “On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Petitioner’s proposed definition because, on this record, it is consistent with the disclosures of the asserted prior art references. In any event, for the reasons explained below, even under Petitioner’s definition, Petitioner fails to establish a reasonable likelihood of prevailing at trial with respect to any challenged claim based on the grounds of unpatentability advanced in the Petition.” slip op. at 12

  • Expert testimonyPetitioner expert discountedOther

    “Finally, we determine that Dr. Rosen’s testimony supporting Petitioner’s proffered motivations to combine is entitled to little or no weight. Prelim. Resp. 30 (citing 37 C.F.R. § 42.65(a)). Here, the relied-upon portions of Dr. Rosen’s Declaration simply parrot Petitioner’s conclusory assertions. Compare Pet. 35–36, 86, with Ex. 1002 ¶¶ 169–174, 280.” slip op. at 20

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

    “The question of whether the prior art references are in the same field of endeavor is merely a threshold issue that must be satisfied before an obviousness determination can be made. See K-Tec, Inc. v. Vita-Mix, Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either in the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). In other words, once it is determined that the prior art is analogous to the claimed invention, it is then necessary to show that it would have been obvious for the skilled artisan to select and combine the teachings of the prior art in the manner claimed. Thus, we agree with Patent Owner that the Petition needs to set forth specific reasoning as to why an ordinarily skilled artisan would have been motivated to combine these references even if they are in the same or similar fields. Prelim. Resp. 31. Petitioner fails to do so on this record. The absence of such reasoning is particularly noteworthy here in view of Ma’s numerous teachings against the “passive” method of pulling the composite strand from the extruder as claimed. Patent Owner identifies no fewer than eight disclosures within Ma that seemingly disparage the passive “pulling” method and discuss benefits of the active “pushing” method. Prelim. Resp. 17–19 (citing Ex. 1007, 53, 95–96, 98–107, 143–147, 149, 167–168). In the absence of any explanation from Petitioner on this point, we are not persuaded that the skilled artisan would have ignored those teachings and selected Ma’s pulling method. Petitioner’s second reason to combine these references fares no better than the first because it lacks an explanation as to what specific disclosures in Lipsker and Ma would have been combined and for what reason(s). Instead, Petitioner provides little more than a conclusory assertion that Ma contains complementary teachings that would illuminate the skilled artisan’s understanding of Lipsker. Pet. 36. Petitioner, however, fails to provide a single citation to Ma in support of its position, much less an explanation regarding how Ma’s teachings would have enlightened the skilled artisan’s understanding of Lipsker such that it would have been obvious to arrive at the claimed subject matter. Bare assertions such as these fall far short of providing the requisite rationale sufficient to support a conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 US at 418). Petitioner’s third reason to combine is similarly deficient because it fails to address the teachings of Lipsker and Ma with any degree of specificity and again does not elaborate on how or why the ordinarily skilled artisan would have combined the teachings of these references to arrive at the claimed subject matter.” slip op. at 18

  § 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,759,109
• Google LLC / Samsung Electronics Co., Ltd. et al. v. Parus Holdings, Inc.All claims unpatentable
  PTAB · Oct 19, 2021 · IPR2020-00846 · APJ David C Mckone · IPR · Final written decision

  Claims 1, 2, 4–7, 9, 10, 13, and 14 are unpatentable as obvious over the stated prior-art combinations.

  RulingsFinal written decision

  • BurdenNew argument disregardedDecided for petitioner

    “According to our rules, “[a]rguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). For example, the Board has explained that “parties that incorporate expert testimony by reference in their petitions, motions, or replies without providing explanation of such testimony risk having the testimony not considered by the Board.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 35–36 (November 2019) (“TPG”)3 (citing Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (informative)).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, relying on the testimony of Mr. Lipoff, contends that a person of ordinary skill in the art “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing,” and that “[m]ore education could substitute for less experience, and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 41–48). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On the complete record, we are persuaded that Petitioner’s proposal is consistent with the technology 7 The complete record does not include allegations or evidence of objective indicia of nonobviousness. described in the Specification and the cited prior art and adopt Petitioner’s proposed level of skill.” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “proposed combination with Kovatch. PO Resp. 37. According to the Federal Circuit, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Mouttet, 686 F.3d 1322, 1333–34 (Fed. Cir. 2012) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)) (alteration in original). However, “the ‘mere disclosure of alternative designs does not teach away.’” Id. at 1334 (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Indeed, “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” Id. (citing Gurley, 27 F.3d at 553). Specifically, Patent Owner (PO Resp. 37), points to disclosure in Neal describing disadvantages of a keyword search strategy (e.g., “users must be familiar with the appropriate key word terms that are likely to yield the desired data records”) and disadvantages of a classification search strategy (e.g., “users may not always anticipate the proper classification of certain records, and may search the wrong categories for their desired database record”). Ex. 1007, 2:16–65. Neal then describes a “preferred embodiment” in which “the system manager will expand the scope of the search strategies from ‘exact’ string matches, along a continuum of search methodologies, including perhaps fuzzy logic strategies.” Id. at 7:14–17. According to Neal, “[t]he purpose of expanding the search strategies is to avoid the situation wherein the search fails to identify the desired item from any data set, and thereby drops into logical block 222 a negative search result is reported to the user.” Id. at 7:28–32. Patent Owner argues that “Neal advocates for employing a sequence of search algorithms from the narrowest to the most broad.” PO Resp. 38 (citing Ex. 1007, 7:56–58; Ex. 2059 ¶ 124). Patent Owner contends that Neal teaches away from a combination “that employs a single keyword matching search strategy.” Id. Patent Owner argues that Petitioner’s combination of Kovatch and Neal results in a system that only sequentially searches datasets using a single keyword matching search strategy, and not the cascading sequence of search methodologies described by Neal. Id. at 37–39. We do not agree with Patent Owner that Neal teaches away from a system that employs a single keyword matching search strategy. Indeed, Neal’s preferred embodiment expressly contemplates such a system. For example, Neal describes employing a first “exact string search” methodology to search a first data set (Figure 2, block 206). Ex. 1007, 6:34– 46. This appears to be what Patent Owner considers a “single keyword matching search strategy.” PO Resp. 37–38. Neal describes that if this search of the first data set does not yield a match, the system searches a second data set using a second search methodology (Figure 2, block 210). Ex. 1007, 6:47–52. However, in the preferred embodiment there is no requirement that the second search methodology in 210 must be different from the first search methodology in 206. For example, if the first preferred supplier did not yield an exact string match to the input search term, the same search methodology could be applied to a second preferred supplier’s catalog. Id. at 6:59–65. Thus, Neal expressly teaches using a single keyword search strategy on a first dataset and the same keyword search strategy on a second dataset, without necessarily employing a cascading sequence of different search methodologies. See Reply 19.” slip op. at 39

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

    “advertisements while waiting for information to be retrieved; rather, it first retrieves the requested information and then generates an audio stream with both the commercials and retrieved information. Reply 22–23 (citing Ex. 1005, 14:1–8, 18:1–15; Ex. 1057 ¶ 18). Petitioner’s characterization of Kovatch is correct (and Patent Owner’s incorrect). Kovatch’s system first navigates to a destination and retrieves requested information (step 6), then generates commercials (step 8), then intermixes the commercials and information (step 9), and finally returns speech to the user (step 10). Ex. 1005, 14:1–8. We find unavailing Patent Owner’s argument that, when combined, Neal’s teachings would have an adverse impact on Kovatch’s generation and presentation of advertisements.” slip op. at 45

  Patent outcomesUS 7,076,431 unpatentable
  § 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 7,076,431
• Google LLC / Samsung Electronics Co., Ltd. et al. v. Parus Holdings, Inc.Other
  PTAB · Oct 19, 2021 · IPR2020-00847 · APJ Sheldon M Mcgee · IPR · Final written decision

  Claims 1, 2, 4–7, 10, and 14 are unpatentable as obvious over Kurganov-262 and Chakrabarti; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “Turning now to obviousness, Petitioner identified disclosure within Kurgonov-262 and Chakrabarti which teaches or suggests the limitations of claim 1. Pet. 11–21. Furthermore, Petitioner identified multiple reasons that would have prompted the skilled artisan to combine the teachings of Kurganov-262 and Chakrabarti to arrive at the subject matter of claim 1. Id. at 21–22. Because Patent Owner focused its arguments solely on the issue of whether Kurganov-262 is prior art, Petitioner’s assertions regarding the substantive teachings of Kurganov-262 and Chakrabarti remain unrebutted on the complete record. PO Resp. 31–34; Sur-reply 1–3. Patent Owner likewise failed to substantively address Petitioner’s proffered reasons why the skilled artisan would have been motivated to combine these teachings. PO Resp. 31–34; Sur-reply 1–3. We have reviewed the disclosures of Kurganov-262 and Chakrabarti relied on by Petitioner, as well as the explanations provided by Mr. Lipoff, and are persuaded that the limitations of claim 1 are disclosed in the prior art. Pet. 11–21; Ex. 1002 ¶¶ 103–109; Ex. 1004; Ex. 1008. Petitioner also persuades us that the skilled artisan would have been motivated to apply Chakrabarti’s techniques for web crawling to Kurganov-262’s system, and would have had a reasonable expectation of successfully doing so, thus arriving at the subject matter of claim 1 of the ʼ084 patent. Pet. 21–23; Ex. 1002 ¶¶ 110–114. Therefore, Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 of the ʼ084 patent would have been obvious over the combined disclosures of Kurganov-262 and Chakrabarti.” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner describes a person having ordinary skill in the art as having “a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing. More education could substitute for less experience, and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 41–47). Patent Owner does not contest Petitioner’s definition of the skilled artisan. See generally, PO Resp. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Moreover, the level of ordinary skill in the art is also reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Thus, on the complete record, we accept Petitioner’s assessment of the level of one of ordinary skill in the art. C. Asserted Obviousness based on Kurganov-262 and Chakrabarti” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “Rather, on the complete record, Patent Owner makes inadequately supported assertions regarding what the skilled artisan “would understand” based on the ʼ084 patent’s disclosure. See PO Resp. 33–34. For example, Patent Owner asserts that “[a] POSITA would understand that” polling or pinging “describes a process where by existing and new devices and/or websites are discovered,” and that “‘polling’ includes asking for information from a website, including a listing of URLs or asking a website of a search engine to provide new website information.” Id. at 34 (citing Ex. 2059 ¶¶ 154–155). We reject this line of argument because we afford minimal weight to Patent Owner’s reliance on paragraphs 153–155 of Exhibit 2059. PO Resp. 33–34. These declaration paragraphs provide little detail beyond what is argued in the Patent Owner Response. See 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 22

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “We are persuaded by Petitioner’s arguments that sufficient written description support does not exist in the ʼ996 application for “limitation 1.i” which requires the computing device to be “configured to periodically search via the one or more networks to identify new web sites and to add the new web sites to the plurality of web sites.” Pet. 6–11. Thus, we determine that Kurganov-262 is available as prior art against the challenged claims. On the complete record, Patent Owner fails to direct us to specific disclosure within the ʼ996 application that evinces written description for limitation 1.i. Rather, Patent Owner’s citations to the ʼ084 patent fail to describe with adequate precision a computing device configured to periodically search the network(s) to identify new web sites and add such new web sites to the plurality of web sites that are accessed. See PO Resp. 31–34.” slip op. at 20

  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,451,084
• Apple Inc. v. Parus Holdings, Inc.No claims unpatentable
  PTAB · Sep 9, 2021 · IPR2020-00687 · APJ Sheldon M Mcgee · IPR · Final written decision

  Claims 1–7, 10, and 14 were not shown unpatentable because Petitioner did not establish that Ladd’s speech-recognition device recognizes speech without predefined voice patterns.

  RulingsFinal written decision

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

    “The parties agree that this term at least requires a “speech recognition device that recognizes spoken words without . . . using predefined voice patterns,” but disagree as to whether it should require a device that recognizes spoken words “without adapting to individual speakers.” PO Resp. 21 (“The proper construction of ‘speaker-independent speech recognition device’ is consistent with the construction issued by the Western District of Texas, though it does not include all of that court’s construction, and requires at least ‘speech recognition device that recognizes spoken words without using predefined voice patterns.’”); Reply 2 (“For purposes of this IPR, Apple submits the Court’s construction should be applied.”). The dispute regarding whether the term should preclude adapting to individual speakers does not impact any issue in this proceeding, and Petitioner has agreed to Patent Owner’s construction in this proceeding, so long as we do not resolve the dispute over adapting to individual speakers. Tr. 12:24–13:4 (“JUDGE McKONE: So you’d be happy if we essentially adopted Parus’s construction with a footnote or some kind of note that we’re not resolving the issue of adapting to individual speakers? MS. BAILEY: That would be fine for purposes of this IPR, Your Honor.”). We adopt the parties’ agreed approach. For purposes of this proceeding, “speaker-independent speech recognition device” means “speech recognition device that recognizes spoken words without using predefined voice patterns.” This is consistent with the ’084 patent’s statement (relied on by both parties) that “[t]he voice browsing system recognizes naturally spoken voice commands and is speaker-independent; it does not have to be trained to recognize the” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “least a Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science, or an equivalent degree, with at least two years of experience in interactive voice response systems, automated information retrieval systems, or related technologies. Pet. 7 (citing Ex. 1003 ¶ 28). On the complete record, we adopt Petitioner’s definition of one of ordinary skill in the art for essentially three reasons. First, Patent Owner does not contest Petitioner’s assertion. See generally PO Resp. Also, neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Moreover, the level of ordinary skill in the art is also reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). C. Asserted Obviousness of Claims 1–7, 10, and 14 (Grounds 1–3)” slip op. at 13

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

    “speech-recognition device” discussed supra, this limitation requires a “speech recognition device that recognizes spoken words without using predefined voice patterns.” A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner must demonstrate obviousness by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “A motion to exclude should be directed to the admissibility of evidence. See 37 C.F.R. § 42.64; Patent Trial and Appeal Board Consolidated Trial Practice Guide 79 (November 2019) (“TPG”) (“A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay) but may not be used to challenge the sufficiency of the evidence to prove a particular fact.”). According to the Trial Practice Guide, a motion to exclude is not a vehicle to “address arguments or evidence that a party believes exceeds the proper scope of reply or sur-reply.” TPG 79. Rather, “[i]f a party believes that a brief filed by the opposing party raises new issues, is accompanied by belatedly presented evidence, or otherwise exceeds the proper scope of reply or sur-reply, it may request authorization to file a motion to strike.” Id. at 80. Patent Owner did not file a motion to strike. Patent Owner’s Motion to Exclude does not address the admissibility of Dr. Terveen’s testimony. Rather, it argues that the testimony exceeds the proper scope of reply evidence, either because it does not respond to the Patent Owner Response or because Petitioner did not follow our rules in seeking to submit supplemental information. See generally Mot. Excl. Thus, we agree with Petitioner that Patent Owner’s Motion to Exclude does not state a proper basis for excluding evidence and, therefore, we deny the motion for that reason.” slip op. at 34

  Patent outcomesUS 9,451,084 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,451,084
• Apple Inc. v. Parus Holdings, Inc.No claims unpatentable
  PTAB · Sep 9, 2021 · IPR2020-00686 · APJ David C Mckone · IPR · Final written decision

  Claims 1–7, 9, 10, 13, 14, 18–21, and 25–30 were not shown unpatentable because the asserted combinations did not establish the claimed speaker-independent speech recognition device.

  RulingsFinal written decision

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

    “predefined voice patterns,” but disagree as to whether it should require a device that recognizes spoken words “without adapting to individual speakers.” PO Resp. 21 (“The proper construction of ‘speaker-independent speech recognition device’ is consistent with the construction issued by the Western District of Texas, though it does not include all of that court’s construction, and requires at least ‘speech recognition device that recognizes spoken words without using predefined voice patterns.’”); Reply 2 (“For purposes of this IPR, Apple submits the Court’s construction should be applied.”). The dispute as to whether the term should preclude adapting to individual speakers does not impact any issue in this proceeding, and Petitioner has agreed to Patent Owner’s construction in this proceeding, so long as we do not resolve the dispute over adapting to individual speakers. Tr. 12:24–13:4 (“JUDGE McKONE: So you’d be happy if we essentially adopted Parus’s construction with a footnote or some kind of note that we’re not resolving the issue of adapting to individual speakers? MS. BAILEY: That would be fine for purposes of this IPR, Your Honor.”). We adopt the parties’ agreed approach. For purposes of this proceeding, “speaker-independent speech recognition device” means “speech recognition device that recognizes spoken words without using predefined voice patterns.” This is consistent with the ’431 patent’s statement (relied on by both parties) that “[t]he voice browsing system recognizes naturally spoken voice commands and is speaker-independent; it does not have to be trained to recognize the voice patterns of each individual user. Such speech recognition systems use phonemes to recognize spoken words and not predefined voice patterns.” Ex. 1001, 4:38–43; see also PO Resp. 21–22 (citing Ex. 1001, 4:34–43);” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Skill in the Art Petitioner, relying on the testimony of Dr. Terveen, contends that a person of ordinary skill in the art “would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science, or equivalent degree, with at least two years of experience in interactive voice response systems, automated information retrieval systems, or related technologies, such as web-based information retrieval systems.” Pet. 6 (citing Ex. 1003 ¶ 28). Patent Owner does not contest Petitioner’s proposal or offer an alternative. Also, neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt Petitioner’s proposed level of skill.” slip op. at 12

  • ExcludeMotion to exclude, deniedDenied

    “A motion to exclude should be directed to the admissibility of evidence. See 37 C.F.R. § 42.64; TPG 79 (“A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay) but may not be used to challenge the sufficiency of the evidence to prove a particular fact.”). According to the Trial Practice Guide, a motion to exclude is not a vehicle to “address arguments or evidence that a party believes exceeds the proper scope of reply or sur-reply.” TPG 79. Rather, “[i]f a party believes that a brief filed by the opposing party raises new issues, is accompanied by belatedly presented evidence, or otherwise exceeds the” slip op. at 41

  • Strike new argumentNew argument disregardedDecided for patent owner

    “corresponding to an unclaimed second step not part of speech recognition would be an impermissible new argument presented for the first time in the Reply. As explained in the Board’s Trial Practice Guide, Petitioner’s change in direction exceeds the proper scope of a reply: Generally, a reply or sur-reply may only respond to arguments raised in the preceding brief. 37 C.F.R. § 42.23, except as noted above. “Respond,” in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing. While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered. The Board is not required to attempt to sort proper from improper portions of the reply or sur-reply. Patent Trial and Appeal Board Consolidated Trial Practice Guide 74 (November 2019) (“TPG”).7 If Petitioner is arguing that Ladd’s description of voice patterns and speech patterns is not describing speaker-independent speech recognition, then Petitioner’s Reply does not simply respond to the Patent Owner Response or attempt to crystalize the issues in dispute. Rather, the Petition expressly relied on certain disclosure in Ladd to show the functionality claimed in limitation 1[c], while the Reply attempts to re-cast that same disclosure as describing functionality separate from that of limitation 1[c]. This would be a new theory.” slip op. at 29

  Patent outcomesUS 7,076,431 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,076,431
• Favored Tech Corporation v. P2i LtdNo claims unpatentable
  PTAB · Aug 23, 2021 · IPR2020-00478 · APJ Jeffrey W Abraham · IPR · Final written decision

  Favored Tech did not prove claims 1–17 unpatentable: Baalmann did not anticipate the asserted claims, and the obviousness grounds lacked adequate disclosure or motivation with a reasonable expectation of success.

  RulingsFinal written decision

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

    “After considering Petitioner’s arguments regarding claim 9, Patent Owner’s silence regarding claim 9, and the language in the ’070 patent itself (e.g., Ex. 1001, 11:45–52, 12:60–61), we agree with Petitioner that the term “1H, 1H, 2H, 3H-heptadecafluorodecylacylate” in claim 9 should be construed to correctly recite HDFDA (1H, 1H, 2H, 2H-heptadecafluorodecylacrylate). The error Petitioner identifies is conspicuous and undisputed, and the intrinsic record does not suggest a different interpretation. Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1119–20 (Fed. Cir. 2020); Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). Additionally, after reviewing the parties’ remaining claim construction arguments and evidence, we determine that we do not need to expressly construe any other terms for purposes of this Decision because, as addressed in detail below, we find Petitioner’s showings deficient for reasons that do not depend on the construction of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art in the field of the ’070 patent would have had “at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 14 (citing Ex. 1002 ¶¶ 26–31). Patent Owner agrees with this proposed definition “with the understanding that ‘experience with plasma-polymerization techniques’ includes plasma-enhanced chemical vapor deposition (PECVD) techniques.” PO Resp. 9 (citing Ex. 2010 ¶ 20; Ex. 1002 ¶¶ 12, 63). In light of the record before us, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. As Patent Owner points out, Dr. Gleason states that PECVD is a form of plasma polymerization, and thus the parties agree that experience with plasma-polymerization techniques would include PECVD. PO Resp. 9; Ex. 1002 ¶ 63. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “We agree with Patent Owner. Petitioner has failed to demonstrate adequately that each and every element in claim 1, arranged as recited in the claim, is found in a single prior art reference. NetMoneyIN, 545 F.3d at 1369; Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Here, Petitioner combines several different teachings from Baalmann to support its anticipation argument. For example, Petitioner relies on the “evacuable chamber with a volume of 1 m3” from Baalmann’s Example 1, but not the power (2kW) expressly disclosed as being used with that reactor of Example 1. Ex. 1004 ¶ 47. With regard to power density, Petitioner relies on Baalmann’s general disclosure that “[t]he electrical power input per chamber volume is set between 0.5 kilowatt/m3 and 5 kilowatt/m3.” Ex. 1004 ¶ 20. As Patent Owner points out, however, that power density range is not tied to any particular reactor volume or plasma zone volume. PO Resp. 19. Baalmann also fails to expressly disclose the plasma zone volume of the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. To attempt to overcome this absence of an express disclosure, Petitioner argues that, for the reactor used in Example 1, the plasma zone volume and reactor volume are the same based on the configuration of the electrodes in the reactor. Pet. 24–25. Baalmann, however, does not expressly disclose the electrode configuration of the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. Instead, Petitioner relies on Baalmann’s general disclosure of an embodiment wherein one electrode is formed by the chamber wall itself. Pet. 24–25; Ex. 1004 ¶¶ 35, 61. In so doing, Petitioner ignores the fact that Baalmann also states that “[t]wo opposite rod-shaped electrodes may also be used.” Ex. 1004 ¶ 35. In view of this, we disagree with Petitioner’s conclusion that a person of ordinary skill in the art “would have understood that chamber to be configured as described throughout the rest of the specification: with the chamber wall serving as one of the electrodes.” Pet. 24. Even if we were persuaded by Petitioner’s argument, the fact remains that Petitioner’s anticipation challenge is based on the combination of different features disclosed in separate portions of Baalmann. “Such picking and choosing . . . has no place in the making of a 102, anticipation rejection.” In re Arkley, 455 F.2d 586, 587–88 (CCPA 1972) (cited with approval in Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008)); see also Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017) (stating that anticipation is not proven by multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention).” slip op. at 12

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

    “For all of the foregoing reasons, we are not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have inferred the volume of the plasma zone10 in Coulson is 470 cm3 based on Coulson’s disclosure of a “glow discharge reactor” having a volume of 470 cm3. Pet. 38; Reply 15–16. In view of this, we are likewise not persuaded that Coulson discloses a power density of 85.1 W/m3, because Petitioner’s 9 Dr. Gleason confirmed that she did not perform any experiments to verify her opinions regarding Coulson’s plasma zone. Ex. 2017, 80:10–18. 10 As noted above, Petitioner presented its argument in the context of its proposed construction of plasma zone. Petitioner did not present an alternative argument supported by sufficient evidence addressing the volume of Coulson’s plasma zone based on Patent Owner’s proposed construction of plasma zone. Accordingly, we agree with Patent Owner’s assertion that we do not need to expressly construe the term plasma zone to resolve this issue. Sur-reply 1. argument that Coulson discloses this power density is based on its assertion that Coulson has a plasma zone volume of 470 cm3. Pet. 38. This finding is fatal to Petitioner’s obviousness challenge of claim 1 based on the combined teachings of Baalmann and Coulson because Coulson’s purported disclosure of using a power density of 85.1 W/m3 is an essential component of Petitioner’s obviousness challenge. An obviousness determination requires finding both “that a skilled artisan would have been motivated to combine the teachings of the prior art . . . and that the skilled artisan would have had a reasonable expectation of success in doing so.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367-68 (Fed. Cir. 2016). In attempting to establish a person of ordinary skill in the art would have had reason to combine the teachings of Baalmann and Coulson, and would have had a reasonable expectation of success in doing so, Petitioner repeatedly refers to using Coulson’s optimized reaction conditions, including power density, in Baalmann’s larger reactor. Pet. 48 (stating that a person of ordinary skill in the art “would have been motivated to maintain the same or similar reaction conditions within a larger reaction chamber that were present in Coulson’s chamber during Coulson’s reported plasma polymerization reactions, including power density and pressure, to preserve the same effective results.”), 48–49 (“That would have included motivation to maintain Coulson’s disclosed power density when scaling up to a larger reaction volume to preserve the beneficial results Coulson reported at that optimized power density.”); Reply 23 (referring to the “straightforward, compelling obviousness case set forth in the petition” that a person of ordinary skill in the art “would have expected to succeed performing Coulson’s reactions on a larger scale in view of Baalmann”); 23 (“The petition explained why a POSA would have modified Baalmann to use Coulson’s HDFDA monomer and reaction conditions to produce coatings with a reasonable expectation of success” ), 24 (stating the Petition “explained why a POSA would have expected success using known parameters from Coulson in an established large-scale apparatus”). During the oral hearing, counsel for Petitioner confirmed its obviousness positions depend on using Coulson’s power density. Tr. 20:10–21:16. Accordingly, Petitioner’s failure to demonstrate adequately that Coulson discloses or suggests a power density of 85.1 W/m3 undermines its reason to combine and reasonable expectation of success arguments. Petitioner’s argument that Baalmann discloses the claimed power” slip op. at 26

  Patent outcomesUS 8,389,070 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,389,070
• Solvay USA Inc. v. Worldsource Enterprises, LLC, Eco Agro Resources LLC, And Eco World Group LLCRehearing denied
  PTAB · Mar 1, 2021 · IPR2020-00768 · APJ Jeffrey W Abraham · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution of IPR on claims 1–17 in place because it found no abuse of discretion under § 325(d).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a 1 Patent Owner originally filed a Preliminary Response (Paper 7) that violated the word count limit in our rules. After conferring with Petitioner and the Board, Patent Owner filed a truncated version of Paper 7 that deletes the text that exceeded the word count limit at the end of the document to comply with 37 C.F.R. § 42.24(b)(1). Paper 9. For purposes of this Decision, any references or citations to the Preliminary Response refer to the truncated document filed as Paper 9. decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “Owner does not clearly identify what matters we misapprehended or overlooked, and where those matters were previously addressed. Instead, it simply repeats arguments and information we have already considered and which we used to form the basis for our determination in the Institution Decision. To the extent Patent Owner believes we did not assign the appropriate weight to events that occurred during prosecution of the parent application of the ’231 patent, we note that Patent Owner’s own arguments derived from that information are based on speculation about what is a “more probable” explanation for the Examiner’s conduct. Rather than rely on speculation about the Examiner’s conduct during prosecution of the parent application, we based our determination on facts derived from the prosecution history of the ’231 patent itself. In that regard, we maintain that “[t]he record does not reflect any substantive consideration of CN400 during prosecution of the ’231 patent, including any consideration of CN400 in combination with Iannotta or Kolc, as presented in the Petition.” Dec. 9 (emphasis added). Nothing in Patent Owner’s recitation of undisputed facts persuasively contradicts this determination. Req. Reh’g 8.” slip op. at 6

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Nevertheless, even if we were to give weight to Patent Owner’s argument that “it is more probable that the Examiner believed CN400 could not be properly combined” with Kolc and Iannotta, the outcome here would not change. As set forth in our Institution Decision, we disagree with Patent Owner’s assertions that CN400 is non-analogous art that would not be combinable with Kolc and Iannotta. Dec. 19, 24–25. Thus, to the extent Patent Owner contends the Examiner believed CN400 could not be combined with Kolc and Iannotta for the same reasons Patent Owner presented in its Preliminary Response, we would consider such hypothetical reasoning by the Examiner to involve a misapprehension of the specific teachings of the relevant prior art, which would constitute material error. See Advanced Bionics, 8.” slip op. at 7

  • Strike new argumentNew argument disregardedDecided for petitioner

    “Iannotta is prior art. Reh’g Req. 10. In presenting its arguments, however, Patent Owner acknowledges “[t]his issue was not argued in the Patent Owner’s Preliminary Response,” and is based on new information Patent Owner became aware of since the filing date of its Sur-reply. Req. Reh’g 9. A request for rehearing is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d). Moreover, Patent Owner has not directed us to any matters that we overlooked or misapprehended, and the place where those matters were previously addressed. 37 C.F.R. § 42.71(d).” slip op. at 8

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 10,301,231
• Smartmatic USA Corp. v. Election Systems & Software, LLCRehearing denied
  PTAB · Nov 30, 2020 · IPR2019-00531 · APJ Sheldon M Mcgee · IPR · Rehearing

  The Board denied Smartmatic’s rehearing request, leaving intact the determination that original claim 16 and substitute claims 21–29 were not shown unpatentable over Johnson and Cummings.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed. 37 C.F.R. § 42.71(d). Specifically, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). Petitioner’s First Argument” slip op. at 2

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

    “As an initial matter, we disagree that we misapprehended Petitioner’s proffered basis for modifying the teachings of Johnson. Req. 1–2, 4–9. Our Decision makes clear that we understood the challenge as it was presented by Petitioner. For example, we expressly stated that “Petitioner asserts that a person of ordinary skill in the art would have been motivated to modify the teachings of Johnson with those of Cummings at the time of the invention to provide options for either depositing the paper ballot or returning it to the voter,” and quoted Petitioner’s proffered rationale for doing so––i.e., because “a voter may wish to receive his or her printed ballot if it were incorrectly marked in order to gain assurance that the ballot will not be mistakenly counted during a recount or audit of the paper ballots.” Dec. 18. We also characterized Petitioner’s obviousness challenge as being “over the combined teachings of Johnson and Cummings” and noted how the Petition “set[s] forth the [asserted] obviousness rationale and expectation of successfully modifying the teachings of Johnson with those of Cummings.” Id. at 14–15; see also id. at 17–18 (summarizing Cummings’ teachings); id. at 19–20 (identifying “Petitioner’s proffered modification” as “adding Cummings’ ‘ballot return’ feature to Johnson’s device”). Ultimately, we determined Petitioner failed to show that “the skilled artisan would have been motivated to make the proffered modification to the teachings of Johnson,” and “[i]n particular,” had not shown such artisan “would have modified Johnson to provide a voter with options for either depositing a physical ballot to a ballot box or returning the ballot to the voter.” Id. at 25. Notably, the language in our Decision (id.) tracks, almost verbatim, Petitioner’s proffered motivation for modifying Johnson’s teachings with those of Cummings to arrive at the subject matter of claim 16 (Pet. 57). Petitioner’s emphasis of our use of the phrase “considering Johnson’s teachings as a whole” (Req. 4) reflects a misunderstanding of the context in which this statement was used. Dec. 25. Specifically, this statement was part of an introductory paragraph summarizing the deficiencies in Petitioner’s case, and does not indicate that we focused solely on the teachings of Johnson in assessing the strength of Petitioner’s challenge. Indeed, as the Decision goes on to explain, a detailed analysis of Johnson’s teachings was necessary to determine how the skilled artisan would have viewed Johnson’s silence on the specifics of processing its segregated paper ballots “that have not been approved by the voter.” Ex. 1002, 6:56–60; see Dec. 26 (“According to Petitioner, ‘Johnson does not teach never providing the voter with a ballot.’ Reply 15. Petitioner thus appears to argue that Johnson’s lack of physical access to the printed ballot does not apply to every step in Johnson’s voting process.”). To discern how the skilled artisan would have viewed Johnson’s teachings, we stressed that we are required to consider Johnson’s teachings as a whole, which we did. Dec. 26 (noting that even though Johnson may be silent on specific teachings regarding how to handle disapproved paper ballots, that fact “does not negate our obligation to consider the teachings of the Johnson reference as a whole.” (citing In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991)); id. at 25–27 (finding “Johnson repeatedly stresses the voter’s inaccessibility to the physical ballot” and that Johnson “when considered as a whole––does not suggest that a voter should be given physical possession of the inaccurate or disapproved ballots after it is segregated”). Only after we undertook this factual inquiry into the full scope and content of Johnson’s teachings were we then able to conclude, as a matter of law, that the claims would not have been obvious over the combined disclosures of Johnson and Cummings. Dec. 34, 41–42; In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009 (“The teachings of a prior art reference are underlying factual questions in the obviousness inquiry.”).” slip op. at 3

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “(Ex. 1023) and US 2005/0035199 (Ex. 1038), which purportedly “corroborates Dr. Bederson’s testimony as to why a [skilled artisan] would have been motivated to make the proposed modification of Johnson,” we disagree. Req. 6–7. The Decision addresses Chung specifically (Dec. 27–28 (citing Ex. 1023)) and furthermore explains why we ascribed little weight to Dr. Bederson’s testimonial evidence regarding how election audits are carried out (id. at 32–33). Regarding Chung, in the Decision we noted a key difference in how ballots were handled in Chung’s voting system vis-à-vis Johnson’s system–– i.e., “where the paper ballot remains inaccessible to the voter [Johnson], and Chung’s system where the paper ballot is given to a voter in the first instance.” Id. at 27–28. This difference is not to be understated because Petitioner tried to establish similarities between Johnson and Chung to support its argument that Johnson’s disclosure is “consistent with other voting machines that, for some period of time prevent the voter from accessing the ballot, only to later return the ballot to the voter.” Reply 11. Our Decision reflects the reasons we rejected that argument after considering Johnson’s disclosure as a whole. See Dec. 25–31. Specifically, based on the differences between the Johnson and Chung systems, we found Petitioner’s reliance on Chung to lack sufficient probative value. Id. at 27– 28; Ex. 1023, Fig. 4, ¶¶ 86, 99. And while our Decision does not specifically mention US 2005/0035199 (Ex. 1038), we note that Petitioner cited this exhibit in support of Dr. Bederson’s testimonial evidence regarding how election audits are carried out. Reply 24; Ex. 1024 ¶ 47 (citing Ex. 1038 ¶ 35, and opining “there is no reason all of Johnson’s ballots must be collected to conduct an audit of an election.”). Our Decision makes clear, however, that we ascribed little weight to Dr. Bederson’s opinion on such matters and explained our rationale for doing so. Dec. 32–33 (citing Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)); id. at 45 (according this disputed evidence “minimal weight”).” slip op. at 5

  § 103 obviousness
  Patents in suitUS 8,096,471
• Favored Tech Corporation v. P2i LtdRehearing denied
  PTAB · Oct 21, 2020 · IPR2020-00478 · APJ Jeffrey W Abraham · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place institution of review on claims 1–17 based on the Petition’s challenges.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “Petitioner also provides a reason why a person of ordinary skill in the art would have used [Baalmann’s] outer-wall configuration with a 1 m3 chamber such that the plasma zone covers the full chamber volume: “because doing so would have maximized the effective chamber capacity at any given chamber size by allowing the reactive plasma to reach all substrate surfaces, even for large substrates or large batches of smaller substrates extending near the outer limits of the chamber.” Pet. 35; Ex. 1002 ¶ 125. Dec. 20–21. Patent Owner does not address this portion of the Decision or our citation to page 35 of the Petition in the section of its Rehearing Request asserting we incorrectly found the Petition asserts a ground of obviousness based on Baalmann alone. Req. Reh’g 7–11.5 These portions of the record, which address Petitioner’s evidence demonstrating a person of ordinary skill in the art would have had reason to use a particular reactor configuration and plasma zone size, undermine Patent Owner’s assertion that “Petitioner’s obviousness theory fails to provide any reasoning why a POSA would combine Baalmann’s separate and distinct teachings to arrive at the claimed” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “teaching away argument in the Decision, we will do so here. With regard to Patent Owner’s contention that “Baalmann teaches away from the claimed method because . . . Baalmann discloses applying a power of 2kW in its only example using a reactor large enough to potentially satisfy claim 1’s plasma zone volume requirement, which would result in a plasma power density well outside the claimed range” (Req. Reh’g 14), we note that a reference teaches away from a claimed invention if it “criticize[s], discredit[s], or otherwise discourage[s]” modifying the reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent Owner does not direct us to any such evidence in Baalmann, and we will not “read into a reference a teaching away . . . where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Additionally, although the one example of a 1 m3 reactor in Baalmann involved using a power density that did not fall within the claimed range, for purposes of an obviousness analysis, we cannot ignore the broader disclosure of Baalmann regarding the use of power densities in the range of between 0.5 kW/m3 and 5kW/m3, which does overlap the claimed range. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”).” slip op. at 10

  • Strike new argumentNew argument disregardedDecided for petitioner

    “Req. Reh’g 14. Patent Owner cites to pages 54–56 of the Preliminary Response as the source for this argument and evidence. Although these pages do provide a discussion of the use of certain power densities in prior art references, this portion of the Preliminary Response primarily addresses Patent Owner’s arguments regarding whether a person of ordinary skill in the art “would have had a reasonable expectation of success when combining the disparate process of Coulson and Baalmann,” not what a person of ordinary skill in the art would have been “motivated” to do. Prelim. Resp. 56; see Par Pharmaceutical v. Twi Pharmaceuticals, Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (noting the proper analysis under § 103 requires “consideration of two factors: (1) whether the prior art would have suggested to those of ordinary skill in the art that they should make the claimed composition or device, or carry out the claimed process; and (2) whether the prior art would also have revealed that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success”) (quoting Medichem, S.A. v. Rolabo S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006). As such, Patent Owner appears to present a new argument for the first time in the Rehearing Request. Not only is such an argument improper (see 37 C.F.R. § 42.71(d)), but the fact that it was raised for the first time in the rehearing means it is not something we could have overlooked. Even if Patent Owner had presented this “motivation” argument in the Preliminary Response, we remain unpersuaded of any error in our Decision. Patent Owner fails to explain sufficiently why a person of ordinary skill in the art would look to other prior art references for guidance regarding the use of a particular power density in large scale reactors in view of our determination that Baalmann itself discloses the use of a power density in the claimed range in a large scale reactor.” slip op. at 11

  § 103 obviousness
  Patents in suitUS 8,389,070

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.