- Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedNo claims unpatentablePTAB · Sep 6, 2022 · IPR2021-00542 · APJ Kristen L Droesch · IPR · Final written decision
Claims 11, 12, 14, 22, and 24 were not shown unpatentable under § 103 over Khandekar, Le, and Matthews because the petition did not establish a required image-instance limitation.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“in this case (see Dec. 10–11) or in the Institution Decision or Final Written Decision in related IPR2020-01582 (see IPR2020-01582, Paper 9 at 9–10 (PTAB Mar. 15, 2021); ’1582 Final Written Decision at 10–12). Consistent with the ’1582 Final Written Decision, we agree with Patent Owner that Petitioner’s proposed interpretation, namely, that the limitation is satisfied by “a plurality of virtual disk image files,” reads “that are executable on the plurality of virtual machines” out of the claim language. See Pet. 15; PO Resp. 31–32. Dependent claim 2, on which Petitioner’s argument relies, makes clear that “virtual disk image files” can be “image instances of the plurality of software applications”—but claim 2 does not refer to the additional language “that are executable on the plurality of virtual machines” recited in claim 1 as well as claim 19. Ex. 1001, 36:35–37, 36:50–52, 38:9–11, 39:4–6. Accordingly, we do not adopt Petitioner’s proposed interpretation of the limitation. We again need not expressly construe “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines,” but we note that “[a] claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co., Inc., v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); see also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim.”). In this Decision, the words of the entire limitation, including “that are executable on the plurality of virtual machines,” are given their ordinary and customary meaning.” slip op. at 13
- Skill levelSkill level board ownOther
“We determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, or a similar field with two years of experience in distributed computing systems, or a master’s degree in electrical engineering, computer science, or a similar field with a specialization in distributed computing systems. Our adopted level of ordinary skill is consistent with the level of skill advocated by the parties and the level of skill reflected by the ’138 Patent Specification and the asserted prior art.” slip op. at 18
- Strike new argumentNew argument disregardedDecided for patent owner
“new theory distinct from the first and second theories offered in the Petition. Although the Petition included a citation to Khandekar’s disclosure of applications installed and loaded for running on the VM (see Pet. 41 (citing Ex. 1004, 6:42–56; Ex. 1003 ¶ 137)), the arguments presented in the Petition do not explain Petitioner’s third theory, elucidated for the first time in the Reply. It is improper for Petitioner on Reply to point to vague, isolated arguments and citations to the prior art from the Petition and advance a new theory that was not explicitly offered or explained in the Petition. Permitting a petitioner to advance a new theory on reply in this manner would put the burden on a patent owner to deduce and respond to all possible theories that could have been, but were not, explicitly raised in a petition. But this would be an unfair burden to place on a patent owner—and one that governing law and Board regulations and guidelines make clear the patent owner does not bear. See, e.g., 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)‒(5); Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)10 73–75. Rather, it is a petitioner’s burden to explain with particularity, at the outset in the petition, why the patent it challenges is unpatentable. Harmonic, 815 F.3d at 1363; 35 U.S.C. § 312(a)(3). As the Federal Circuit has explained,” slip op. at 36
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner makes an inadequate showing for this limitation. Petitioner does not present argument or evidence sufficient to demonstrate that Khandekar’s disclosures of virtual disk image files for pre-built, custom-built, and instantly deployable VMs teach or suggest “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines.” In particular, giving the words of the entire limitation their ordinary and customary meaning, Petitioner does not present argument or evidence sufficient to demonstrate that Khandekar’s VM images or virtual disk image files for pre-built, custom-built, and instantly deployable VMs are “executable on the plurality of virtual machines” (i.e., capable of execution on the plurality of virtual machines). At best, Petitioner cites Khandekar’s teachings that it is the operating system and applications of Khandekar’s virtual disk image files—not Khandekar’s virtual disk image files themselves—that are executable on the virtual machines. See Pet. 41 (citing Ex. 1004, 6:42–56 (disclosing applications installed and loaded for running on the VM); Ex. 1003 ¶ 137). But this is inconsistent with Petitioner’s position that it is Khandekar’s virtual disk image files themselves that teach “a plurality of image instances of a plurality of software applications.” See id. at 36–37; see also Pet. Reply 12 (confirming Petitioner’s position (citing Pet. 36–41)). For the foregoing reasons, Petitioner does not demonstrate that Khandekar teaches, suggests, or renders obvious “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines,” as recited in claim 1, under Petitioner’s first theory.” slip op. at 30
Patent outcomesUS 8,572,138 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,572,138 - Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedNo claims unpatentablePTAB · Mar 11, 2022 · IPR2020-01582 · APJ Kristen L Droesch · IPR · Final written decision
The Board held claims 1–5, 9, 10, 17, 19–21, and 26 not unpatentable because the prior-art combinations did not teach the claimed application image instances executable on the virtual machines.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Decision. See Dec. 9. We agree with Patent Owner that Petitioner’s proposed interpretation, namely, that the claim phrase is satisfied by “a plurality of virtual disk image files,” reads “that are executable on the plurality of virtual machines” out of the claim language. See Pet. 13; PO Resp. 43–44. Dependent claim 2, on which Petitioner’s argument relies, makes clear that “virtual disk image files” can be “image instances of the plurality of software applications”—but claim 2 does not refer to the additional language “that are executable on the plurality of virtual machines” recited in claim 1 as well as claims 19 and 26. Ex. 1001, 36:35–37, 36:50– 52, 38:9–11, 39:4–6. Accordingly, we do not adopt Petitioner’s proposed interpretation of the claim phrase. As in the Institution Decision, we need not expressly construe “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines,” but we note that “[a] claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co., Inc., v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); see also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim.”). In this Decision, the words of the entire claim phrase, including “that are executable on the plurality of virtual machines,” are given their ordinary and customary meaning.” slip op. at 11
- Prior constructionNot reached
“Pet. 13; PO Resp. 8–42; Pet. Reply 5–17; PO Sur-Reply 5–17. Nonetheless, we note that both parties apply the construction of “image instance” to which they agreed in the related district court proceeding—specifically, “a snapshot, or copy, of installed and configured software.” Ex. 2003 (Joint Claim Construction and Prehearing Statement in the related district court proceeding), 1–2 (identifying this construction of “image instance” as a stipulated claim construction); PO Resp. 52–53 (citing Ex. 2001 ¶ 134; Ex. 2003, 2) (arguing that Petitioner “admits” to this construction and applying it to dispute Petitioner’s unpatentability showing); Pet. Reply 29– 30 (citations omitted) (characterizing this as “the agreed-upon construction of image instances” and applying it within the unpatentability analysis). Because there is no dispute about the proper construction of “image instance” on the record before us, we need not construe this claim term. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (emphasis added) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, or a similar field with two years of experience in distributed computing systems, or a master’s degree in electrical engineering, computer science, or a similar field with a specialization in distributed computing systems. Our adopted level of ordinary skill is consistent with the level of skill advocated by the parties in Khandekar and Le. See, e.g., Pet. 6; Ex. 1003 ¶ 12; PO Resp. 48–49, 51, 57–64; Ex. 1004, 4:67–5:1; Ex. 1005, 12:38. Patent Owner also uses the acronym VMM to refer to the claimed virtual machine manager. See, e.g., PO Resp. 34. To avoid confusion, throughout the Decision, we use VMM to refer only to a virtual machine monitor and use the full term for the claimed virtual machine manager. and the level of skill reflected by the ’138 Patent Specification and the asserted prior art.” slip op. at 15
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Patent Owner’s arguments that Khandekar’s disclosure of application installation files does not teach or suggest “a plurality of image instances of a plurality of software applications,” in accordance with Petitioner’s construction of “image instance.” See PO Resp. 52–53; Pet. Reply 29 (“Khandekar’s three types of VM images satisfy the agreed-upon construction of image instances: ‘a snapshot, or copy, of installed and configured software.’”). We agree with and credit Dr. Rosenblum’s persuasive testimony distinguishing Khandekar’s “executable installation file” from the recited “image instances of software applications.” See Ex. 2001 ¶ 137. Accordingly, Petitioner does not present sufficient argument or evidence to demonstrate that Khandekar’s application installation files teach or suggest “a plurality of image instances of a plurality of software applications,” in accordance with Petitioner’s construction of an “image instance” as “a snapshot, or copy, of installed and configured software.”” slip op. at 25
Patent outcomesUS 8,572,138 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,572,138 - PTAB · Sep 7, 2021 · IPR2021-00542 · APJ Kristen L Droesch · IPR · Institution
Instituted review of claims 11, 12, 14, 22, and 24 on the § 103 ground over Khandekar, Le, and Matthews, despite insufficient preliminary showing for claims 11 and 14.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“the fact that the Petition in this proceeding is Petitioner’s second petition to challenge claims of the ’138 Patent. Paper 1; see also Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated Practice Guide”),1 59–60. Petitioner asserts that this second-filed Petition challenges a new set of claims that Patent Owner asserted in the parties’ district-court litigation after Petitioner filed its petition in IPR2020-01582. Paper 1, 1–2. Petitioner contends that two petitions are necessary given the number of claims and the length of the claims challenged across the two petitions. See id. at 2; see also Consolidated Practice Guide, 59 (explaining that there may be circumstances in which more than one petition may be necessary, including when patent owner has asserted a large number of claims in litigation). Petitioner also asserts the factors relevant to multiple petitions set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.ii), favors institution on both the first-filed petition and this second-filed Petition. See id. at 4–5. Patent Owner does not address Petitioner’s arguments regarding multiple petitions (see generally Prelim. Resp.), and we agree with Petitioner that the circumstances before us warrant this second-filed Petition.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“based on the record before us, we determine there is a reasonable likelihood Petitioner would prevail in showing that claims 12, 22, and 24 are unpatentable under 35 U.S.C. § 103(a) over Khandekar, Le, and Matthews. We also determine, however, for the purpose of institution and based on the record before us, there is not a reasonable likelihood Petitioner would prevail in showing that claims 11 and 14 are unpatentable under 35 U.S.C. § 103(a) over Khandekar, Le, and Matthews. Notwithstanding the foregoing comments addressing Petitioner’s patentability challenge to claim 11 and 14, we include Petitioner’s patentability challenges to these claims within this inter partes review proceeding. In accordance with 37 C.F.R. § 42.108(a) (2021)12, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and all grounds of unpatentability asserted for each claim.”” slip op. at 44
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s assertions addressing the skill level of a person of ordinary skill in the art. See generally Prelim. Resp. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it appears to be consistent with the level of skill reflected by the ’138 Patent Specification and the asserted prior art.” slip op. at 13
- BurdenMixed
“On the current record, we agree with Patent Owner’s arguments. Petitioner does not adequately explain how the Khandekar-Le-Matthews combination teachings of monitoring information, updating information in a database or repository, and obtaining updated information from the repository or database teaches or suggests updating a rules engine, instead of updating the information that is input to the rules engine. At this stage of the proceeding and based on the record before us, we determine Petitioner does not show sufficiently that the subject matter of claims 11 and 14 would have been obvious over Khandekar, Le, and Matthews.” slip op. at 32
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,572,138 - Apple Inc. v. Uniloc 2017 LLCNo claims unpatentablePTAB · Mar 6, 2019 · IPR2017-01993 · APJ Miriam L Quinn · IPR · Final written decision
Claims 1–5 were not shown unpatentable because the asserted combinations failed to teach the claimed now-starting predetermined time period.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In sum, the claimed predicting requires that there be an amount of time during which locations of the user device can be determined. The claim undeniably specifies the end of that time period: at the end of the “predetermined maximum amount of time.” But such ending is relative to a beginning, which has been the source of dispute in this trial. As discussed above, the plain reading of the claim urges a beginning coincident with the start of the predicting step. We have found that the specification consistently supports this reading of the claim. And we have also found that time windows disclosed in the specification that start at a specified time in the future do not pertain to the “predetermined maximum amount of time.” Rather, they further modify other unclaimed features, such as whether an action (e.g., sending a promotional code) is performed during operation hours of an establishment, or whether certain predetermined locations are relevant to the predicting step only on week days during a lunch period. Consequently, we are persuaded that the claimed “within the predetermined maximum amount of time” is not as broad as Petitioner argues—to include a future-starting window. The plain and ordinary meaning of the claim language “within” relative to the predicting step dictates otherwise, and the specification provides the context and confirms that this reading aligns with what the inventor described as the invention. For the reasons stated above, we determine that “within the predetermined maximum amount of time,” as recited in the predicting step of claim 1, means that the duration of time or time period starts when the predicting takes place.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Per our analysis of the “within” phrase, discussed above in Section III.A, the “predetermined maximum amount of time” is a period of time with a start time coincident with the predicting step. In contrast, Blegen’s specified time period is some period of time that starts in the future. We do not credit Dr. Robins’s testimony that an “afternoon” on a future date is a “predetermined maximum amount of time,” as that testimony is not based on the proper construction of the claim. Blegen’s future-starting window is not coincident with the prediction action, and no other alleged time window in Blegen has been shown to have the requisite start time. Rather, Blegen looks to future locations during a future-starting window. See Ex. 1004 ¶ 68. Consequently, we determine that Blegen does not teach the “within the predetermined maximum amount of time” limitation.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“opportunity in its Reply to brief the instant ground vis-à-vis the determination that the Petition provides insufficient explanation of the asserted combination. Reply 23−25. Petitioner again refers to Froloff’s “time radius” as a “maximum time period . . . between the present time and the estimated time of arrival,” and states that the Petition offered the operation of the modified system: “By sending the advertisement a period of time before the user is expected to arrive at a predetermined location, the advertisement’s relevance and value are enhanced.” Id. at 24 (citing Pet. 69; Robins Decl. ¶ 212). This explanation, however, is presented in the Petition under the heading “Reasons to Combine” and is substantially the same reason to combine provided for the combination of Charlebois and Gillies: “By targeting the advertisement to users who are likely to be at the predetermined location within the ‘time period’ associated with the “event,” the advertisement’s relevance and value are enhanced.” Pet. 45. Relying on this vague and conclusory rationale to combine as an explanation of how the proposed teachings are combined is insufficient. We are not persuaded that this explanation adequately provides the “operation” of the modified system. At best, the explanation informs us that sending an advertisement beforehand provides an advantage: relevance and value of the advertisement are enhanced. The explanation provides no detail of how Petitioner contends the Froloff “time radius” fits with the teachings of either Charlebois or Gillies. Further, asserting that the combination of Charlebois/Gillies/Froloff sends advertisements before the user arrives at a predetermined location does not factually distinguish this combination from the Charlebois/Gillies combination, which Petitioner asserts also performs the operation of sending beforehand advertisements to users likely to be at the sales event. In sum, Petitioner’s attempt in the Reply to explain the Petition as providing detail sufficient to show its obviousness contentions based on Froloff does not remedy the insufficiencies we noted in our Decision on Institution.” slip op. at 49
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner further urges us to consider the impact of Dr. Robins’s “unrebutted” opinion regarding the predicting step. Reply 12−13. We recognize that Petitioner filed a declaration in support of its Petition, while Patent Owner did not. However, we do not discount Patent Owner’s arguments on claim construction merely because no expert testimony supports those arguments, particularly when the arguments are based on the intrinsic record. We also do not credit expert testimony that is at odds with the claim language or the specification—as is Dr. Robins’s relevant testimony. See Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008) (“A court may look to extrinsic evidence so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” (citation omitted)). For instance, Dr. Robins opines that the “predetermined maximum amount of time is ‘lunch time on weekdays’ from 11:30 am to 2:00 pm,” as disclosed in the “restaurant” example. Robins Decl. ¶ 45. Dr. Robins explains that this time window “specifies the maximum amount of time during which a lunch offer will be sent to the user device.” Id. (citing Ex. 1001, 2:17−27). But as we explained above, this time period serves to limit the applicability of the predetermined locations in the prediction, but does not refer to the “predetermined maximum amount of time.” Dr. Robins does not explain how the specification’s description of limiting applicability of the predetermined locations in any way also implicates the “predetermined maximum amount of time.” And just because Dr. Robins’s testimony in this regard is unrebutted does not mean that we should give it weight, especially when we find that it is not consistent with the ’199 patent disclosure. Accordingly, we are not persuaded by Petitioner’s arguments that we should construe the phrase as Petitioner proposes merely because its proffered expert’s testimony is unrebutted and Patent Owner has no expert.” slip op. at 18
Patent outcomesUS 9,414,199 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 9,414,199 - PTAB · Jan 22, 2018 · IPR2017-01047 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution because Petitioner did not show an abuse of discretion in finding the obviousness showing insufficient for claims 7, 9, 10, 13, and 19.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“physical substitution or bodily incorporation of Hieda’s contacts with Inaba’s source/drain regions, as Petitioner contends in the Request. See Req. 9; cf. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“[A] determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). Instead, the Decision properly determined that the Petition falls short in explaining how and why the references would have been combined to produce the claimed invention. TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). For example, the Decision states: Petitioner does not explain sufficiently how or why a POSA would have combined an optional feature of Inaba’s Figure 6 embodiment (source/drain regions formed in the top surface of the projection) with a feature of Inaba’s Figure 8 embodiment (thick insulating film 22) that prevents a channel from being formed in the top surface of the substrate projection. Nor does Petitioner explain sufficiently how or why a POSA would have formed contacts to the top surface of a projection or fence, such as contact plug 28 shown in Hieda Figures 2A and 11B, in an embodiment like Inaba’s Figure 8, which does not have a source or drain region formed in the top surface of the projection and includes thick insulating film 22 on that surface. Ex. 1005, Fig. 8. Petitioner nowhere clearly explains, nor cites evidence showing, how the combination of Inaba’s Figure 8 embodiment and Hieda’s source/drain contacts is supposed to work. For example, Petitioner does not explain how Hieda’s top surface contact plugs 28 would have provided an electrical connection to Inaba’s side surface source and drain regions 15 and 16. Nor does Petitioner present argument or evidence sufficient to show that a POSA would have had a reasonable expectation of success in making the proposed combination.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“physical substitution or bodily incorporation of Hieda’s contacts with Inaba’s source/drain regions, as Petitioner contends in the Request. See Req. 9; cf. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“[A] determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). Instead, the Decision properly determined that the Petition falls short in explaining how and why the references would have been combined to produce the claimed invention. TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). For example, the Decision states: Petitioner does not explain sufficiently how or why a POSA would have combined an optional feature of Inaba’s Figure 6 embodiment (source/drain regions formed in the top surface of the projection) with a feature of Inaba’s Figure 8 embodiment (thick insulating film 22) that prevents a channel from being formed in the top surface of the substrate projection. Nor does Petitioner explain sufficiently how or why a POSA would have formed contacts to the top surface of a projection or fence, such as contact plug 28 shown in Hieda Figures 2A and 11B, in an embodiment like Inaba’s Figure 8, which does not have a source or drain region formed in the top surface of the projection and includes thick insulating film 22 on that surface. Ex. 1005, Fig. 8. Petitioner nowhere clearly explains, nor cites evidence showing, how the combination of Inaba’s Figure 8 embodiment and Hieda’s source/drain contacts is supposed to work. For example, Petitioner does not explain how Hieda’s top surface contact plugs 28 would have provided an electrical connection to Inaba’s side surface source and drain regions 15 and 16. Nor does Petitioner present argument or evidence sufficient to show that a POSA would have had a reasonable expectation of success in making the proposed combination.” slip op. at 6
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Our governing statutes and regulations do not provide for parties to request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. Our standard operating procedures, however, provide the Chief Judge with discretion to expand a panel to include more than three judges. PTAB SOP 1, 2–5 (§§ II, III) (Rev. 14); see id. at 2 (introductory language explaining that the Director has delegated to the Chief Judge the authority to designate panels under 35 U.S.C. § 6); see also In re Alappat, 33 F.3d 1526, 1532 (Fed. Cir. 1994) (providing that Congress “expressly granted the [Director] the authority to designate expanded Board panels made up of more than three Board members.”). The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1, 3–4; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 3 (§ III.A). For example, an expanded panel may be appropriate when “[t]he proceeding or AIA Review involves an issue of exceptional importance” or when “[c]onsideration by an expanded panel is necessary to secure and maintain uniformity of the Board’s decisions.” Id. (§ III.A.2, 3). In this case, the Chief Judge has considered Petitioner’s request for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 9
§ 103 obviousnessPatents in suitUS 6,885,055 - PTAB · Jan 22, 2018 · IPR2017-01046 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner failed to show a reasonable likelihood that claims 1–6, 11, 12, and 14–17 were obvious over Inaba and Hieda.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“physical substitution or bodily incorporation of Hieda’s contacts with Inaba’s source/drain regions, as Petitioner contends in the Request. See Req. 9; cf. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“[A] determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). Instead, the Decision properly determined that the Petition falls short in explaining how and why the references would have been combined to produce the claimed invention. TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). For example, the Decision states: Petitioner does not explain sufficiently how or why a POSA would have combined an optional feature of Inaba’s Figure 6 embodiment (source/drain regions formed in the top surface of the projection) with a feature of Inaba’s Figure 8 embodiment (thick insulating film 22) that prevents a channel from being formed in the top surface of the substrate projection. Nor does Petitioner explain sufficiently how or why a POSA would have formed contacts to the top surface of a projection or fence, such as contact plug 28 shown in Hieda Figures 2A and 11B, in an embodiment like Inaba’s Figure 8, which does not have a source or drain region formed in the top surface of the projection and includes thick insulating film 22 on that surface. Ex. 1005, Fig. 8. Petitioner nowhere clearly explains, nor cites evidence showing, how the combination of Inaba’s Figure 8 embodiment and Hieda’s source/drain contacts is supposed to work. For example, Petitioner does not explain how Hieda’s top surface contact plugs 28 would have provided an electrical connection to Inaba’s side surface source and drain regions 15 and 16. Nor does Petitioner present argument or evidence sufficient to show that a POSA would have had a reasonable expectation of success in making the proposed combination.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“physical substitution or bodily incorporation of Hieda’s contacts with Inaba’s source/drain regions, as Petitioner contends in the Request. See Req. 9; cf. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“[A] determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). Instead, the Decision properly determined that the Petition falls short in explaining how and why the references would have been combined to produce the claimed invention. TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). For example, the Decision states: Petitioner does not explain sufficiently how or why a POSA would have combined an optional feature of Inaba’s Figure 6 embodiment (source/drain regions formed in the top surface of the projection) with a feature of Inaba’s Figure 8 embodiment (thick insulating film 22) that prevents a channel from being formed in the top surface of the substrate projection. Nor does Petitioner explain sufficiently how or why a POSA would have formed contacts to the top surface of a projection or fence, such as contact plug 28 shown in Hieda Figures 2A and 11B, in an embodiment like Inaba’s Figure 8, which does not have a source or drain region formed in the top surface of the projection and includes thick insulating film 22 on that surface. Ex. 1005, Fig. 8. Petitioner nowhere clearly explains, nor cites evidence showing, how the combination of Inaba’s Figure 8 embodiment and Hieda’s source/drain contacts is supposed to work. For example, Petitioner does not explain how Hieda’s top surface contact plugs 28 would have provided an electrical connection to Inaba’s side surface source and drain regions 15 and 16. Nor does Petitioner present argument or evidence sufficient to show that a POSA would have had a reasonable expectation of success in making the proposed combination.” slip op. at 6
- Other 314aDenied
“Our governing statutes and regulations do not provide for parties to request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. Our standard operating procedures, however, provide the Chief Judge with discretion to expand a panel to include more than three judges. PTAB SOP 1, 2–5 (§§ II, III) (Rev. 14); see id. at 2 (introductory language explaining that the Director has delegated to the Chief Judge the authority to designate panels under 35 U.S.C. § 6); see also In re Alappat, 33 F.3d 1526, 1532 (Fed. Cir. 1994) (providing that Congress “expressly granted the [Director] the authority to designate expanded Board panels made up of more than three Board members.”). The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1, 3–4; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam).” slip op. at 8
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,885,055 - PTAB · Oct 16, 2017 · IPR2017-01064 · APJ Kerry Begley · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–17, 19–24, 53, and 54 were obvious over Feigen, Flanagan, and Falk.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted unless “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.” Having considered the Petition and the Preliminary Response, we determine that the information presented does not show that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’698 patent. Thus, for the reasons given below, we deny institution of an inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather, to establish obviousness, it is petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotations omitted); see KSR, 550 U.S. at 418. Moreover, a petitioner cannot satisfy this burden by “employ[ing] mere conclusory statements” and “must instead articulate specific reasoning, based on evidence of record,” to support an obviousness determination. Magnum Oil, 829 F.3d at 1380. Stated differently, there must be “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The “factual inquiry” into the reasons for “combin[ing] references must be thorough and searching, and the need for specificity pervades . . . .” In re Nuvasive, Inc., 842 F.3d 1376, 1381–82 (Fed. Cir. 2016) (quotations omitted). A determination of obviousness cannot be reached where the record lacks “explanation as to how or why the references would be combined to produce the claimed invention.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016); see Nuvasive, 842 F.3d at 1382–86 (holding that an obviousness determination cannot be reached where there is no “articulat[ion of] a reason why a [person having ordinary skill in the art] would combine” and “modify” the prior art teachings). This required explanation as to how and why the references would be combined avoids an impermissible “hindsight reconstruction,” using “the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.” TriVascular, 812 F.3d at 1066; In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011).” slip op. at 17
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“as Petitioner, can overcome this presumption by showing that the claim term: (1) “fails to recite sufficiently definite structure,” or (2) “recites function without reciting sufficient structure for performing that function.” Id. at 1348–49 (quotations and citations omitted). The governing standard is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id. Moreover, if § 112(6) applies and the term is a means-plus-function limitation, construction of the term requires: (1) “identif[ication of] the claimed function,” and (2) a determination of “what structure, if any, disclosed in the specification corresponds to,” i.e., is “clearly link[ed]” to or “associate[d]” with, the claimed function. Id. at 1351–52. Our rules make clear that it is Petitioner’s burden to explain, in detail, how the challenged claim is to be construed with supporting factual and legal analysis. Specifically, 37 C.F.R. § 42.104(b)(3) requires the Petition to “set forth . . . [h]ow the challenged claim is to be construed” and for a means-plus-function limitation, to “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” In addition, 37 C.F.R. § 42.22(a)(2) requires the Petition to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” Here, the Petition falls far short of these requirements of our rules by merely stating a bare conclusion that “biometric analyzer” is a mean-plus-function limitation pursuant to 35 U.S.C. § 112(6) and listing the alleged structure and function with one unexplained citation to the ’698 patent specification. Pet. 19. Claims 10 and 11 do not include the word “means,” yet Petitioner provides no analysis directed to rebutting the resulting presumption, under governing Federal Circuit precedent, that § 112(6) is inapplicable. See Williamson, 792 F.3d at 1348–49. Nor does Petitioner provide any evidence, such as expert testimony, regarding whether an ordinarily skilled artisan would have understood “biometric analyzer” to have “sufficiently definite meaning as the name for structure.” See id. Moreover, even if we were to conclude that “biometric analyzer” should be construed as a means-plus-function limitation, Petitioner’s analysis is insufficient. Petitioner offers no explanation regarding why the claimed function would be “analyzing a monitored parameter of the accessor,” as Petitioner proposes. Pet. 19 (emphasis omitted). Given that claim 10 recites only “receiving in a biometric analyzer the biometric signal,” it is unclear, on this record, how or why Petitioner’s proposed function comports with any claimed function. Ex. 1001, 15:6–7. In addition, as to the alleged corresponding structure, Petitioner’s general reference to the Petition’s entire synopsis of the specification and bald citation, without any analysis or explanation, to five lines of the specification, which do not refer to a “biometric analyzer,” are insufficient to address why or how this passage discloses structure that corresponds to any function recited in claims 10 and 11. See id. at 6:55–59; Pet. 16, 19 (citing Ex. 1001, 6:55–59); see also Pet. 10–15.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Other Claim Terms Petitioner proffers numerous other claim terms for construction. Pet. 16–20. Patent Owner argues that no construction of these terms is necessary and contests Petitioner’s proposed construction for some terms. See Prelim. Resp. 13–24. Based on our review of the record and the dispositive issues in our determination of whether to institute inter partes review, we determine that none of these terms requires an express construction to resolve the issues presented by the patentability challenges. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that “are in controversy” need to be construed and “only to the extent necessary to resolve the controversy”).” slip op. at 10
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,484,698 - On Semiconductor Corporation / Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.All claims unpatentablePTAB · Sep 22, 2017 · IPR2016-00809 · APJ Daniel N Fishman · IPR · Final written decision
Claims 31, 32, 34, 38, 39, and 42 are unpatentable as obvious over Oda and Nakamura because the combination teaches the claimed features, including varying pulse frequency and on-time in the second feedback range.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Panels of the Board have interpreted 315(b) (and our associated rule 37 C.F.R. § 42.101(b)) to mean that “it is only privity relationships up until the time a petition is filed that matter.” Synopsys, Inc. v. Mentor Graphics 5 Patent Owner entered the Merger Agreement into the record as Exhibit 2018. Corp., Case IPR2012-00042, slip op. at 12 (PTAB Feb. 19, 2014) (Paper 60); see also ARRIS Group, Inc. v. TQ Delta LLC, Case IPR2016-00430, slip op. at 6 (PTAB July 1, 2016) (Paper 9). Although not the exclusive factor for establishing privity, control of the requested review procedure is an important factor to establish privity in this context. Our Office Patent Trial Practice Guide explains that “[w]hether a party who is not a named participant in a given proceeding nonetheless constitutes a . . . ‘privy’ to that proceeding is a highly fact-dependent question.” 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). “There are multiple factors relevant to the question of whether a non-party may be recognized as a . . . ‘privy.’” Id. “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. However, it is recognized that there is no definitive test regarding the degree of participation required to establish such control and, hence, to establish a privity relationship. Id.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Similarly, Patent Owner’s arguments regarding the Confidentiality Agreement (Ex. 2026) are insufficient to demonstrate that Fairchild exercised, or could have exercised, any control over this proceeding. PO Resp. 65. The mere exchange of unidentified confidential information and recitations of the Confidentiality Agreement that the parties could be joint defendants in the future, without more, do not provide sufficient evidence that Fairchild has exercised, or could have exercised, any control over this proceeding. Thus, the record lacks sufficient evidence to demonstrate even the opportunity to control this review and, thus, to establish privity between Petitioner and Fairchild.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In our Decision on Institution, we agreed with Petitioner that nothing in the claims or the specification of the ’079 patent limits the term “energy transfer element” to only transformers in a flyback architecture converter and, more specifically, nothing in the claims defines a particular direction of current flow through the terminals of the power switch. Dec. 15–16. Thus, we determined that, in accordance with the broadest reasonable interpretation, “energy transfer element” should not be construed so narrowly as to include only a transformer (flyback topology converter) and to exclude an inductor (buck topology converter). Id. at 16. Instead, we determined “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. Id. After considering all evidence and assertions anew, we discern no persuasive reason to alter our preliminary interpretation and conclude, for the reasons given in our Decision on Institution and this Decision, that “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. See id. at 14–16.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Thus, although we discern no need to expressly construe the phrase “corresponds to” as used in the claims, we determine “corresponds to” as used in the claims is at least as broad as to encompass non-overlapping first 9 Patent Owner’s narrow interpretation demands a one-to-one relationship between the feedback values and the pulse on-time values, i.e., a reversible function in mathematical terms. The ’079 patent Specification does not support such a narrow interpretation. and second ranges of feedback values corresponding to first and second ranges of on-time values regardless of overlap of feedback values in the first and second ranges of feedback values.” slip op. at 25
Patent outcomesUS 6,212,079 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,212,079 - Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.All claims unpatentablePTAB · Aug 14, 2017 · CBM2016-00034 · APJ Barbara A Benoit · CBM · Final written decision
Claims 1–24 are unpatentable under § 101; claims 1–3 and 5 are also anticipated by Riach, and specified claims are obvious over combinations of Riach, Graf, Gustin, and Anderson.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“For these reasons, we determine that claim 20—its focus and its” slip op. at 37
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“For the foregoing reasons, we conclude that claim 20 is directed to an” slip op. at 52
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“encompasses Riach’s process that copies a portion (but not all) of the original check image data to produce the required modified check image data. Accordingly, we agree that the portion of Riach on which Petitioner relies discloses step (b) of claim 1 that requires, among other limitations, the modified check image data not include at least some visual feature data included in the check image data. Pet. 30 (relying on Ex. 1008, 5:16–30, Figs. 4, 7).” slip op. at 73
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Apple, 839 F.3d at 1058 (quoting KSR, 550 U.S. at 418–19); see also KSR, 550 U.S. at 418 (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 89
Patent outcomesUS 7,314,163 unpatentable§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Bilski · Enfish · Electric Power · Phillips · GrahamPatents in suitUS 7,314,163 - Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.All claims unpatentablePTAB · Aug 10, 2017 · IPR2016-00530 · APJ Georgianna W Braden · IPR · Final written decision
The Board held claims 1–15, 18–20, 22–26, and 28–30 unpatentable as obvious over the five instituted combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the ’010 patent, the types of problems and solutions described in the ’010 patent and cited prior art, and the testimony of Drs. Kaufman and Kurfess, we adopt and apply Dr. Kaufman’s definition of a person of ordinary skill in the art at the time of the claimed invention. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on our review of the evidence, we determine that Swinton and Nobuaki teach these limitations because the cited portions of the references in the claim chart meet the respective limitations of claim 1, as Petitioner contends (Pet. 26–31). We also credit Dr. Kaufman’s declaration testimony regarding how Swinton and Nobuaki would have conveyed the limitations of claim 1 to one of ordinary skill in the art. Ex. 1003 ¶¶ 25–49. Dr. Kaufman’s detailed analysis is based on multiple citations to the references and, therefore, provides sufficient factual corroboration.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Rather, to support the legal conclusion of obviousness “there must be some articulated reasoning with some rational underpinning” for combining the teachings of two prior art references. KSR, 550 U.S. at 418. Specifically, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art teachings. Personal Web Techs. v. Apple, 848 F.3d 987, 991–92 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention . . . .”). Petitioner’s arguments must be supported by a “reasoned explanation.” NuVasive, 842 F.3d at 1383 (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). Here, Petitioner has shown that a person of skill in the art would have had reason to combine Nobuaki’s teachings regarding a specific mechanism for moving currency into different storage compartments with the ATM system in Swinton in order to solve the common problem of transporting currency bills or checks in different compartments. See Pet. 14–15; Ex. 1003 ¶ 53. We agree with Petitioner’s position that a person of ordinary skill in the art would have been motivated to replace the storage bins and sorting mechanism of Swinton’s ATM with the sorting/storage device of Nobuaki. See Pet. 13–14; Reply 2; Ex. 1003 ¶¶ 51–54. Specifically, we credit the testimony of Dr. Kaufman that a person of ordinary skill in the art would have recognized that a goal of Swinton’s ATM was to transport checks or bills into separate compartments and Nobuaki teaches a specific mechanism for achieving that goal. Ex. 1003 ¶ 53 (citing Ex. 1004 ¶¶ 140, 343; Ex. 1012, 12:31–36). Therefore, we determine that one of ordinary skill in the art would have had a reason to combine the teachings of Swinton and Nobuaki and would have been led to do so by the teachings of these references. Accordingly, we find that challenged independent claim 1 would have been obvious under 35 U.S.C. § 103 in view of the disclosures of Swinton and Nobuaki.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes constructions for “a movably mounted plunger member” and “[first/second] wall surfaces bounding the [first/second] storage location and in opposed facing direction of the [first/second] backing plate.” Pet. 7–8. Patent Owner does not contest Petitioner’s proposed constructions and does not offer its own constructions. See generally PO Resp. After analyzing the claims and supporting specification of the ’010 patent, we determine that we need not provide express constructions for the claim terms noted by Petitioner. To the extent it is necessary, however, we discuss certain other claims terms in the context of analyzing whether the prior art renders the challenged claims unpatentable.” slip op. at 8
Patent outcomesUS 7,229,010 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,229,010
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.