- Telebrands Corp. v. Tinnus Enterprises, LLCAll claims unpatentablePTAB · Dec 30, 2016 · PGR2015-00018 · APJ Richard E Rice · PGR · Final written decision
Claims 1–6, 8, and 10–14 are unpatentable as indefinite under § 112(b); the Board did not reach the § 103(a) grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“II. ANALYSIS A. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art (“POSA”) “would have been a person having a general knowledge about and experience with expandable containers, including without limitation balloons, and at least an associate’s degree in science or engineering.” Pet. 15–16 (citing Ex. 1015 ¶¶ 10–13; Ex. 1016 ¶¶ 10–13). Patent Owner responds that “the Board should limit Petitioner’s overly broad definition of a POSA from having an associate’s degree in any science or engineering to having an associate’s degree in mechanical engineering.” See, e.g., PO Resp. 12. According to Patent Owner, “Petitioner’s proposed definition should be limited because the inclusion of persons with an associate’s degree in any science or engineering fails to take into account the scope of the relevant art, which indisputably utilizes mechanical engineering principles.” Id. Upon consideration of the parties’ contentions, we determine that a POSA would have been a person having a general knowledge about and experience with expandable containers, including without limitation balloons, and at least an associate’s degree in mechanical engineering, or the equivalent.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “elastic fastener” In our Institution Decision, we preliminarily determined that the broadest reasonable interpretation consistent with the Specification of the claim term “elastic fastener” is an elastic element for attaching things together. Inst. Dec. 7–8. As neither party proposes any change to our interpretation, and our review of the evidence does not indicate that any change is necessary, we maintain that interpretation.” slip op. at 8
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“We determine that the test for indefiniteness that is applied in patent examination and reexamination matters, approved in Packard, should be applied in this post-grant review AIA proceeding, rather than the Nautilus requirement. The different approaches to indefiniteness before the PTO and the courts stem from the distinct roles that the PTO and the courts play in the patent system.12 In AIA proceedings, as in patent examination and reexamination matters, applying the broadest reasonable interpretation standard, coupled with an opportunity to amend the claims, is an approach that is fair to the patent holder and protects the public. See Cuozzo, 136 S. Ct. at 2145–46; Packard, 751 F.3d at 1312–14. This approach serves to ensure precision in patent claims, thereby helping the public to understand the limits of the claims and keeping the rights afforded by patents within their legitimate scope. See Cuozzo, 136 S. Ct. at 2144–45; Packard, 751 F.3d at 1313. Accordingly, among the reasons supporting application of the Packard-approved indefiniteness test in this AIA proceeding are those recognized by the Supreme Court in Cuozzo as supporting use of the broadest reasonable interpretation standard in inter partes review AIA proceedings. See Cuozzo, 136 S. Ct. at 2143–2146. Of these, the most important is the opportunity to amend the claims to correct any ambiguity. See id. at 2145 (“The patent holder may, at least once in the process, make a motion to do just what he would do in the examination process, namely, necessary) that a person of ordinary skill in the art would not consider the claim language unclear.” 12 See Packard, 751 F.3d at 1325 (Plager, J., concurring) (stating that “unlike courts which have a full prosecution record to consider, the prosecution record before the USPTO is in development and not fixed during examination”). amend or narrow the claim.”) (citation omitted); 35 U.S.C. § 326(d); 37 C.F.R. § 42.221. An applicant’s ability to clarify claim language through amendment was a significant reason why the Federal Circuit in Packard approved of the indefiniteness test recited in the MPEP (i.e., a “claim is indefinite when it contains words or phrases whose meaning is unclear”). Packard, 751 F.3d at 1313–14.” slip op. at 18
- ExcludeMotion to exclude, deniedDenied
“III. MOTIONS TO EXCUDE In its Motion to Exclude (Paper 57), Patent Owner seeks to exclude Petitioner’s Exhibits 1031 and 1032. Paper 57, 1–3. We deny Patent Owner’s motion, as moot, because we did not consider the referenced exhibits in reaching our decision in this case. In its Motion to Exclude (Paper 59), Petitioner seeks to exclude Patent Owner’s Exhibits 2016–2018, 2020 (¶ 84), 2024, 2025 (¶ 39), 2026 (¶ 39), 2027–2070, 2073, 2074, 2078, and 2085. Paper 59, 1–8. We deny Petitioner’s motion, as moot, because we did not consider the referenced exhibits and paragraphs in reaching our decision in this case.” slip op. at 34
Patent outcomesUS 9,051,066 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites NautilusPatents in suitUS 9,051,066 - Viasat, Inc. v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00795 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving in place denial of institution on claims 1–9, 13–21, 29–50, 67–82, 104, 105, 107, and 110 because it had not shown motivation to combine Norand with the Eng …
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . 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 in a motion, and opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that “[t]he disclosed communication protocols of the Eng Patent could be readily applied to the communications systems disclosed by Norand.” Pet. 25. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 20–21.” slip op. at 3
§ 103 obviousnessPatents in suitUS 6,445,777 - Viasat, Inc v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00796 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving in place the denial of institution because the petition did not show that combining Norand with the Eng references would have been obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . 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 in a motion, and opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that “[t]he disclosed communication protocols of the Eng Patent could be readily applied to the communications systems disclosed by Norand.” Pet. 26–27. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 21–22.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“that a benefit of TCP/IP networks is that ‘there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Req. Reh’g. 14 (citing Ex. 1004, 3:52–54). Petitioner does not identify where in the Petition it made such an argument. See 37 C.F.R. § 42.71(d) (“The request must specifically identify . . . where each matter was previously addressed in a motion”). Petitioner did not explain in the Petition how the cited portion of the Eng patent describes a “benefit” of “TCP/IP networks.” Indeed, this is a new argument improperly raised for the first time in the Request. See id. When read with its surrounding context, the Eng patent discloses that in “TCP/IP networks, there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Ex. 1004, 3:52–54. Petitioner did not explain sufficiently how this teaches any “benefits” of using TCP/IP, or how this demonstrates motivation to combine the Eng references with Norand.” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,445,777 - Viasat, Inc v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00629 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving in place the denial of institution because ViaSat did not show that combining Norand with the Eng references would have been obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . 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 in a motion, and opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Petition, Petitioner’s arguments that Norand and the Eng references disclose similar networks and share common goals were in support of its assertion that a skilled artisan “would have recognized that the disclosed communication protocols of the Eng references could be readily applied to the communications system disclosed by Norand.” Pet. 25. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 22–23.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that a skilled artisan “would have recognized that the disclosed communication protocols of the Eng references could be readily applied to the communications system disclosed by Norand.” Pet. 25. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 22–23.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner also contends that the Eng patent “clearly teaches that a benefit of TCP/IP networks is that ‘there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Req. Reh’g. 14 (citing Ex. 1004, 3:52–54). Petitioner does not identify where in the Petition it made such an argument. See 37 C.F.R. § 42.71(d) (“The request must specifically identify . . . where each matter was previously addressed in a motion”). Indeed, this is a new argument improperly raised for the first time in the Request. See id. Petitioner did not explain in the Petition how the cited portion of the Eng patent describes a “benefit” of TCP/IP newtowrks.” When read with its surrounding context, the Eng patent discloses that in “TCP/IP networks, there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Ex. 1004, 3:52–54. Petitioner did not explain sufficiently how this teaches any “benefits” of using TCP/IP, or how this demonstrates motivation to combine the Eng references with Norand.” slip op. at 6
§ 103 obviousnessPatents in suitUS 5,960,074 - Viasat, Inc v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00628 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving the denial of institution on claims 1–13, 28–37, 41–61, 91–107, 123, 126, 128–157, 160–167, 169, and 171 unchanged because the petition did not show motivation to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . 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 in a motion, and opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that a skilled artisan “would have recognized that the disclosed communication protocols of the Eng references could be readily applied to the communications system disclosed by Norand.” Pet. 24. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 21–22.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“explain[ed] sufficiently why a person of skill in the art would have used the TCP/IP protocols with the network architecture taught in Norand” overlooks “the prior art and evidence of record which provides ample explanation as to ‘why’ a POSITA would find incorporating TCP/IP into Norand desirable.” Req. Reh’g. 14. With respect to this assertion, Petitioner does not identify the place in the Petition where Petitioner previously addressed such matters pursuant to 37 C.F.R. § 42.71(d), other than the matter we addressed above, namely that Norand and Eng share a common goal of linking together mobile users. Id. at 14–15. slip op. at 6
§ 103 obviousnessPatents in suitUS 5,960,074 - Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 30, 2016 · IPR2015-01509 · APJ Jason J Chung · IPR · Final written decision
Claims 26, 29, 30, 33, 42, 43, 48, 60, and 68 are unpatentable as anticipated by Frossard or Pagliaroli, or obvious over the stated combinations.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for petitioner
“In that 2007 filing, the term “signal” was defined as “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Ex. 2002, 11. We are persuaded that this definition is instructive to understanding the proper scope of these claim terms. Thus, a first signal, for example, is an “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information that is sent by a first device.” We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third device.” For convenience, this claim construction is reproduced in the table below.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are not persuaded that Mr. McNamara’s statements on cross examination are sufficient reason to accord his testimony little or no weight. The prosecution history is an important element in understanding the claims of a patent. We are persuaded that the statements made during cross examination appear to misstatements as to Mr. McNamara’s review of the patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury and he has made other statements consistent with his testimony under oath stating that he reviewed the prosecution history. See Ex. 1003 ¶ 14; Ex. 2003, 154:11–20. Mr. McNamara signed his declaration on June 24, 2015, which states that he read the ’130 patent and its prosecution history. Ex. 1003 ¶ 14. Although Mr. McNamara testified that he did not read the prosecution history (Ex. 2003, 153:11–15), Patent Owner ignores Mr. McNamara’s other statements that demonstrate that he reviewed the prosecution history (id. at 154:11–20). In addition, Mr. McNamara’s statement was during a lengthy deposition approximately nine months after Mr. McNamara signed his declaration. Mr. McNamara’s inconsistent testimony appears to illustrate a momentary lapse in memory. Compare e.g., id. at 153:11–15, with id. at 154:11–20. Moreover, the only claim terms Mr. McNamara defined in view of the prosecution history of the ’130 patent were “automatically” and “automatically received,” which neither party contests. Compare PO Resp. 10–16; Reply 1; Pet. 8–9, with Ex. 1020, 26. In addition, we are not persuaded that Mr. McNamara’s statement that he did not review the prosecution history of the ’130 patent displays a lack of understanding of the prosecution history because Patent Owner did not define any claim terms at issue in this proceeding that overlap with claim terms defined during the prosecution of the ’130 patent. Compare PO Resp. 10–16, with Ex. 1020, 26.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Patent Owner attempts to limit “control device” improperly in a way that contradicts Patent Owner’s proposed claim construction. As discussed supra, “control device” is construed as “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” We agree with Petitioner that Frossard’s server 1 and resource 2 discloses the claimed “second control device” because Patent Owner’s proposed definition of “control device” can comprise “part of a device”; it follows that a device can comprise multiple parts. Also, because a “control device” is a type of device, a “control device” can include necessarily multiple parts. We also determine that because Patent Owner acknowledged, in its own definition, that “control device” means “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions” (emphases added), it necessarily follows that the “or” implies that a control device can include multiple parts. Tr. 32:15–19. For example, a “control device” can be “[1] a device or [2] a computer”; in other words, logic dictates that the “or” can be interpreted as an “and” such that a “control device” can be “[1] a device and [2] a computer.” Id. Moreover, during oral hearing, Patent Owner acknowledged Frossard’s server 1 is a “computer” and Frossard’s resource 2 is a “device.” Id. at 34:14–35:11 (In response to the question, “[s]o you are saying that a server can’t be a device,” Patent Owner acknowledged “[a] server is a computer, and broadly, if you consider a computer a device, a server is a device.”) (In response to the question “resource 2 or indicating a network number 2, is that a device as well?” Patent Owner acknowledged “resource 2 has a coder and has a transmitter. I would say it is a computer, but in a broad sense it can be considered a device.”). Using Patent Owner’s acknowledgement during the oral hearing, it follows that Frossard’s server 1 and Frossard’s resource 2, together, discloses a “control device” under Patent Owner’s proposed definition of “control device.” Furthermore, Figure 1 illustrates that Frossard’s server 1 and resource 2, together, form a control device generating and transmitting a signal. Ex. 1005, Fig. 1. Frossard’s server 1 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of generating the message order M (i.e., the claimed “second signal”). Id. at 4– 5. In addition, Frossard’s resource 2 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of transmitting the order message M (i.e., the claimed “second signal”). Id.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Petitioner and Mr. McNamara that it would have been obvious to a person having ordinary skill in the art to combine Frossard’s system with Pagliaroli’s theft sensor 12 to provide a system for remotely disabling or enabling a vehicle that also provides a notification when it detects tampering or theft. Patent Owner fails to proffer any rationale or evidence for why the combination of Frossard and Pagliaroli would destroy the functionality of Frossard. Further, Patent Owner fails to proffer its own expert testimony refuting Petitioner’s arguments and Mr. McNamara’s opinion. Patent Owner’s arguments are conclusory attorney argument. Patent Owner’s argument that Pagliaroli does not provide a teaching or suggestion that its theft sensor 12 can function as Frossard’s receiver-decoder circuits 4 is improper because Petitioner argues for combining (rather than replacing) Pagliaroli’s theft sensor 12 and Frossard’s receiver-decoder circuits 4. In addition, Patent Owner is incorrect because any teaching or suggestion need not be found in the reference itself.” slip op. at 37
Patent outcomesUS 6,549,130 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,549,130 - Infobionic, Inc. v. Braemar Manufacturing, LLCAll claims unpatentablePTAB · Dec 29, 2016 · IPR2015-01679 · APJ Scott C Moore · IPR · Final written decision
Claims 1, 2, 4, 6, 7, 10, 11, 13–15, and 17 are anticipated by Sellers; claims 3, 5, 8, 9, 12, 16, and 20–22 are obvious over Sellers and Stutman; claims 18–19 are obvious over …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“location.” See PO Resp. 21–22; Reply 2. On this record, we determine that the claim term “central monitoring device” is not further limited to a device that performs monitoring “during a monitoring session” such that it is able to “respond to patient status . . . when it detects evidence of certain physiologic conditions as they occur.” See PO Resp. 21–22. The Specification uses the term “central monitoring device” in an open-ended manner, and Patent Owner does not identify any lexicographic definition or disclaimer that would limit the claim term “central monitoring device” in the manner it proposes. See PO Resp. 20–22; Tr. 38:1–17. Though Patent Owner cites one dictionary that defines “monitoring” as “constantly checking on a patient’s condition” (Ex. 2021, 930), this definition is overly narrow because the Specification makes clear that monitoring may be performed on a periodic basis. See, e.g., Ex. 1001, 3:2–31, 8:57–64. Moreover, Patent Owner’s other dictionary definition (Ex. 2020, 752) does not reference a patient, or require detecting “physiologic conditions as they occur.” Dr. Fernald’s testimony regarding this claim term (Ex. 2003 ¶¶ 39– 41) is not persuasive because the portions of the Specification he cites do not limit the claim term “central monitoring device” in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:10–16, 6:37–42, 7:13–20, 7:52–59, 8:23–38); Tr. 38:1–17), and because Dr. Fernald does not adequately account for the dictionary evidence indicating that the claim term “monitoring” does not require constantly observing a patient’s status (see Ex. 2020, 752). We find persuasive Dr. Stone’s testimony that one of ordinary skill would have understood the portions of the Specification cited by Patent Owner and Dr. Fernald to be non-limiting examples. Ex. 1011 ¶¶ 19–32. For the foregoing reasons, on this record, and under the applicable broadest reasonable interpretation standard, we construe “central monitoring device” as “a device that watches, keeps track of, or checks from a central location.” 2.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this record, and under the applicable broadest reasonable interpretation standard, we determine that the claim term “in communication with” encompasses indirect communications (e.g., communication by way of an intermediate component). We further determine that a processor need not generate a message, or respond to a message, in order to be “in communication with” a separate component. The ’901 Patent Specification uses the term “in communication with” in a broad, open-ended manner. See, e.g., Ex. 1001, 2:13–23, 2:38–44. In addition, Patent Owner does not cite any persuasive intrinsic or extrinsic evidence that a person of ordinary skill in the art would have read the claim term “in communication with” to exclude embodiments in which a processor merely receives information. See PO Resp. 40–43. Nor does Patent Owner cite any persuasive intrinsic or extrinsic evidence that the claim term “in communication with” excludes communication between a processor and a component when the processor is acting as an intermediary between that component and some other component. See id. In addition, Dr. Fernald fails to sufficiently support his conclusion that the claim term “in communication with” excludes such forms of communication. See Ex. 2003 ¶¶ 99–103. 4.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we adopt Petitioner’s formulation concerning the level of ordinary skill in the art because this formulation more accurately describes the subject matter to which the ’901 Patent pertains. Patent Owner’s formulation is unduly narrow because subject matter of the ’901 Patent is not limited to “ECG telemetry devices” or other “remote monitoring and telemetry devices.” The parties do not dispute that Dr. Stone and Dr. Fernald are both qualified to testify about the perspective of one having ordinary skill in the art, regardless of which formulation we adopt. Tr. 24:22–25:3, 62:6–11. The parties also agree that the issues in this case do not turn on the differences between Petitioner’s and Patent Owner’s proposed formulations regarding the level of ordinary skill in the art. Id. at 24:13–19, 62:12–21. On this record, we find that both Dr. Stone and Dr. Fernald are qualified to offer expert opinions in this case. The factual findings and legal conclusions set forth below would not have differed had we adopted Patent Owner’s formulation regarding the level of ordinary skill in the art. 3.” slip op. at 14
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Dr. Fernald’s testimony regarding this claim term (Ex. 2003 ¶¶ 39– 41) is not persuasive because the portions of the Specification he cites do not limit the claim term “central monitoring device” in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:10–16, 6:37–42, 7:13–20, 7:52–59, 8:23–38); Tr. 38:1–17), and because Dr. Fernald does not adequately account for the dictionary evidence indicating that the claim term “monitoring” does not require constantly observing a patient’s status (see Ex. 2020, 752). We find persuasive Dr. Stone’s testimony that one of ordinary skill would have understood the portions of the Specification cited by Patent Owner and Dr. Fernald to be non-limiting examples. Ex. 1011 ¶¶ 19–32.” slip op. at 9
Patent outcomesUS 6,225,901 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,225,901 - Infobionic, Inc. v. Braemar Manufacturing, LLCSome claims unpatentablePTAB · Dec 29, 2016 · IPR2015-01688 · APJ Scott C Moore · IPR · Final written decision
Claims 1, 2, 4, 6, 7, 11–16, and 19–23 are anticipated by Sellers; claims 3, 5, 8, 9, 17, and 18 are obvious over Sellers and Stutman; claim 10 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we adopt Petitioner’s formulation concerning the level of ordinary skill in the art because this formulation more accurately describes the subject matter to which the ’403 Patent pertains. Patent Owner’s formulation is unduly narrow because subject matter of the ’403 Patent is not limited to “ECG telemetry devices” or other “remote monitoring and telemetry devices.” The parties do not dispute that Dr. Stone and Dr. Fernald are both qualified to testify about the perspective of one having ordinary skill in the art, regardless of which formulation we adopt. Tr. 24:22–25:3, 62:6–11. The parties also agree that the issues in this case do not turn on the differences between Petitioner’s and Patent Owner’s proposed formulations regarding the level of ordinary skill in the art. Id. at 24:13–19, 62:12–21. On this record, we find that both Dr. Stone and Dr. Fernald are qualified to offer expert opinions in this case. The factual findings and legal conclusions set forth below would not have differed had we adopted Patent Owner’s formulation regarding the level of ordinary skill in the art.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“The parties agree that a central monitoring device/service is a device/service that “watch[es], keep[s] track of, or check[s]” on something “from a central location.” See PO Resp. 21; Reply 2. On this record, we determine that the claim term central monitoring device/service is not further limited to a device/service that performs monitoring “during a monitoring session” such that it is able to “respond to patient status . . . when it detects evidence of certain physiologic conditions as they occur.” See PO Resp. 20– 22. The Specification uses the term “central monitoring device” in an openended manner, and Patent Owner does not identify any lexicographic definition or disclaimer that would limit this claim term in the manner it proposes. See PO Resp. 19–22; Tr. 38:1–17. The term “central monitoring service” does not appear in the Specification. Though Patent Owner cites a dictionary that defines “monitoring” as “constant checking on a patient’s condition” (Ex. 2021, 930), this definition is overly narrow because the Specification makes clear monitoring may be performed on a periodic basis. See, e.g., Ex. 1001, 3:6–35, 8:63–9:2. Moreover, Patent Owner’s other dictionary definition (Ex. 2020, 752) does not reference a patient, or require detecting “physiologic conditions as they occur.” Dr. Fernald’s testimony regarding this claim term (Ex. 2003 ¶¶ 39– 41) is not persuasive because the portions of the Specification he cites do not limit the term central monitoring device/service in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:14–20, 6:42–47, 7:17–25, 7:57–64, 8:28–42); Tr. 38:1–17), and because Dr. Fernald does not adequately account for the dictionary evidence indicating that the claim term “monitoring” does not require constantly observing a patient’s status (see Ex. 2020, 752). We find persuasive Dr. Stone’s testimony that one of ordinary skill would have understood the portions of the Specification cited by Patent Owner and Dr. Fernald to be non-limiting examples. Ex. 1011 ¶¶ 21–34. For the foregoing reasons, on this record, and under the applicable broadest reasonable interpretation standard, we construe central monitoring device/service as a device or service “that watches, keeps track of, or checks from a central location.” 2.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this record, and under the applicable broadest reasonable interpretation standard, we determine that the claim term “in communication with” encompasses indirect communications (e.g., communication by way of an intermediate component). We further determine that a processor need not generate a message, or respond to a message, in order to be “in communication with” a separate component. The ’403 Patent Specification uses the term “in communication with” in a broad, open-ended manner. See, e.g., Ex. 1001, 2:17–27, 2:42–48. In addition, Patent Owner does not cite any persuasive intrinsic or extrinsic evidence that a person of ordinary skill in the art would have read the claim term “in communication with” to exclude embodiments in which a processor merely receives information. See PO Resp. 40–44. Nor does Patent Owner cite any persuasive intrinsic or extrinsic evidence that the claim term “in communication with” excludes communication between a processor and a component when the processor is acting as an intermediary between that component and some other component. See id. In addition, Dr. Fernald fails to sufficiently support his conclusion that the claim term “in communication with” excludes such forms of communication. See Ex. 2003 ¶¶ 99–103. 4.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the arguments and evidence presented in the Petition and having considered the arguments and evidence presented by both parties during the trial, we are persuaded that Petitioner has established by a preponderance of the evidence that claims 1, 2, 4, 6, 7, 11–16, and 19–23 are anticipated by Sellers. 4.” slip op. at 26
Patent outcomesUS 6,940,403 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,940,403 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 29, 2016 · IPR2015-01466 · APJ Stacey G White · IPR · Final written decision
Claims 22, 29, 31, 32, 39, and 40 are unpatentable as anticipated by French; claim 27 is unpatentable as obvious over French and Caglayan.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“skill in the art. Id. at 16. Mr. Bennett testified that a person of ordinary skill would have “a bachelor’s degree in engineering or equivalent coursework and at least two years of experience in networked systems.” Id. (quoting Ex. 1002 ¶ 18). Mr. Bennett, however, does not have a degree in engineering and he has limited coursework in the field. Id. at 16–21. Thus, according to Patent Owner his testimony should be accorded little to no weight because he does not meet his own definition of a person of ordinary skill in the art. Id. This argument is not persuasive. Our reviewing court has noted that “[t]he ‘person of ordinary skill in the art’ is a theoretical construct used in determining obviousness under § 103, and is not descriptive of some particular individual.” Endress + Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) (citing Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 963 (Fed. Cir. 1986)). The Federal Circuit has instead examined whether the purported expert has substantial credentials that would allow the judge to permit testimony from the purported expert. Id. Under the Federal Rules of Evidence, the question is whether Mr. Bennett has “scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702; see also Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Rule 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art”). We are persuaded that Mr. Bennett has such credentials. Mr. Bennett has nearly 40 years of experience in networked systems (Reply. 14 (citing Ex. 1019, 210:2–9)) and is a named inventor in four issued patents dealing with networked systems (id. (citing Ex. 1003, 4–5; Ex. 1019, 49:15–50:10)). Patent Owner did not raise any substantive issues with Mr. Bennett’s experience or knowledge; instead, it only argued that Mr. Bennett did not have sufficient classroom education. We find that Mr. Bennett’s work experience, research, and industry participation are sufficient to provide the expertise necessary to assist us in this matter.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We find Petitioner’s argument to be persuasive. We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third (communications) device.” The recited signals all are construed to be “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Finally, we are not persuaded that these terms exclude signals that may pass through an intermediary. Further, we are persuaded that the claims are broad enough to encompass situations in which an intermediary may append additional information to the received signals.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“second processing device because “there is an intermediate device between the local control module 38a and the central control system 20 that receives the ‘first signal’ from the local control module 38a and then subsequently generates and sends a ‘second signal’ to control system 20.” PO Resp. 25– 26 (citing Ex. 2012 ¶ 18); see also id at. 30–31. Dr. DiEuliis testified that “Global Control Module 30a assembles the data from the Local Control Module 38a and other modules, it generates a signal that contains all of this information and transmits it on network 32, where it is received by the Central Control System 20.” Ex. 2012 ¶ 22 (citing Ex. 1005, 6:43–53). As discussed above, we are not persuaded that the claims exclude systems with intermediate devices such as French’s global control module. See § II.B.2. As noted by Dr. DiEuliiss, French’s global control module transmits a signal to the central control module that “contains all of [the information received from the local control module].” Ex. 2012 ¶ 22. Pursuant to our construction, the signal received by the central control module (second control device) is the first signal because it contains all of the information sent by the local control module (first device). Thus, we do not find Patent Owner’s argument to be persuasive and we are persuaded by Petitioner’s arguments regarding the disclosures of French. Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French discloses the limitations of claim 22. See Pet. 19– 28. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of independent claim 22 over the disclosures of French.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Desktop, Internet, and Intranet Agents. Ex. 1006, 1. Caglayan describes how intelligent agents manage tasks such as notifying users of events of significance. Id. at 66. Petitioner argues that it would have been obvious to use Caglayan’s intelligent agents in French’s automation system to further automate the remote monitoring system and more efficiently monitor the data received from the building equipment and systems remotely. Pet. 35– 36 (citing Ex. 1002 ¶¶ 41–44). We find this rationale to be reasonable. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French and Caglayan teach the limitations of claim 27. See Pet. 33–36. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of claim 27 over the combined teachings of French and Caglayan.” slip op. at 19
Patent outcomesUS 6,542,077 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,542,077 - RPX Corporation v. Applications In Internet Time, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01752 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 1, 3–8, and 10–40 are unpatentable under § 102 over Popp or Kovacevic and/or under § 103 over the stated combinations.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“In our Institution Decisions, we determined that Salesforce had not been shown to be a real party-in-interest in these proceedings. See 1751 Inst. Dec. 8–16; 1752 Inst. Dec. 8–16. In its Patent Owner Response, Patent Owner argues: In its decision instituting these . . . trials, the Board stated that there was insufficient evidence to find that the real party in interest is Salesforce.com, Inc. Patent Owner disagrees with the Board’s view of the law and the facts, and in particular believes that the Board misconstrued the law. As explained previously, the AIA was intended to prevent defendants from getting “a second bite at the apple.” Yet, the Board is doing just that by allowing Petitioner to act indirectly for Salesforce. In its decision, the Board set an improperly high burden of proof for the patent owner, and also improperly shifted the burden of proof to the patent owner. As explained in Patent Owner’s Preliminary Response, Salesforce is the real party in interest and Petitioner is acting as its proxy. Because Salesforce is time limited, so is Petitioner and patentability should be confirmed on this basis. PO Resp. 8. To the extent Patent Owner is attempting to incorporate arguments made in the Preliminary Response into the Patent Owner Response, such incorporation is improper under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, Patent Owner has neither presented any new evidence into the record, beyond the evidence we considered previously in rendering our Institution Decisions, nor cited any legal authority to support its positions set forth above. Based on the complete record now before us, we see no reason to change our previous determination, and we are not persuaded that Salesforce should have been identified as a real party-in-interest in these proceedings.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a “person of ordinary skill in the art in the timeframe of the December 1998 priority date of the ’482 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” 1751 Pet. 6 (citing Ex. 1002 ¶ 10); 1752 Pet. 6 (citing the same evidence). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.12 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects 12 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact). 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 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“a term of art. PO Resp. 14; see Ex. 1058, 44:19–45:4, 83:13, 95:16–20. Petitioner agrees. 1751 Pet. 10; 1752 Pet. 10; 1751 Pet. Reply 9; 1752 Pet. Reply 8. We agree with Petitioner that the Specification of the ’482 patent “nowhere refers to changes ‘that arise from changes external to the application,’ and does not limit ‘changes’ in any way” and “[t]here is no disclaimer in the ’482 patent that limits the meaning of ‘changes’ in the manner [Patent Owner] alleges.” 1751 Pet. Reply 6; see 1752 Pet. Reply 5; Ex. 1062 ¶¶ 4–5. While Patent Owner points to several portions of the Specification of the ’482 patent in support of its argument that the claimed changes should be limited to those external to the application and those that impact how the application program operates, we are not persuaded that the discussion in the Specification rises to the level of “reasonable clarity, deliberateness, and precision” necessary to provide a special definition for the claim term. See In re Paulsen, 30 F.3d at 1480. In fact, as noted by Petitioner, the “specification also describes an embodiment in which intelligent agents pursue ‘internal’ as well as ‘external Web activities.’” 1751 Pet. Reply 12 (citing Ex. 1001, 19:66–67); see 1752 Pet. Reply 11 (citing the same evidence). Further, the Specification describes the detected changes, more generally, throughout as changes that may affect operation of a user’s business, rather than as changes that affect operation of the application program. See, e.g., Ex. 1001, Abstract (“The system . . . receives information on regulatory and non-regulatory changes that affect operations of the business.”), 9:34–38 (“[C]hange management layer 11 . . . includes one or more change agents that ‘cruise the Web’ and identify and bring to the user’s attention relevant regulatory and non-regulatory changes found on the Web that may affect a user’s business.”), 22:33–39 (“The system . . . does not require that every employee [of a business] become a programmer in order to continue to respond to regulatory and/or technological and/or social changes affecting business operations and/or information management requirements.”); see also Ex. 1062 ¶ 5 (Dr. Crovella testifying that a person of ordinary skill “would have understood that changes can affect an application without impacting how the application ‘should’ operate, and those types of changes are also included in the plain and ordinary meaning of ‘changes that affect an application,’ [such as] a change to the processing resources available to an application could affect the application (e.g., by causing it to run faster or slower) without impacting how the application ‘should’ operate (e.g., without altering any of the steps that the application attempts to perform)”). Based on the evidence in this record, we determine that the plain meaning of the phrase “change management layer for automatically detecting changes that affect an application” is consistent with the Specification. We are not persuaded that the recited “change management layer for automatically detecting changes that affect an application” is limited to detecting changes external to the application, or that any such changes must impact how the application program should operate, as proposed by Patent Owner. No further express construction of the claim phrase is necessary.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner argues that Popp does not disclose the “change management layer” recited in claim 1. PO Resp. 22–25. In particular, Patent Owner argues that “Popp does not disclose a ‘change management layer’ which ‘automatically detects changes which impact how the application program should operate’ where those ‘changes’ ‘arise from changes external to the application.’” Id. at 24 (citing Ex. 2032 ¶¶ 63–64; Ex. 2033 ¶¶ 46–50). Patent Owner argues that Popp instead discloses “automatically detect[ing] changes from [an application’s] own operation – in this case, user input of text data via a user interface.” Id. at 23 (citing Ex. 2031, 67:10–25). Patent Owner’s arguments rely upon its proposed construction of the “change management layer,” which we do not adopt for the reasons discussed above (see supra Section II.C.1). We are persuaded by Petitioner’s assertion that automatically detecting a change that affects information stored in the database (e.g., an employee name stored in a database), from which the Web page (i.e., the claimed application) is generated, discloses detecting a change that affects the application, as claimed. See, e.g., Ex. 1001, 12:17–28 (describing the business content layer (i.e., “first layer”) as a database that may include data associated with a selected area of business, such as finance or human resources). Based on the evidence of record, we determine Petitioner has shown, by a preponderance of the evidence, that Popp anticipates claim 1.” slip op. at 24
Patent outcomesUS 7,356,482 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,356,482
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.