• Foursquare Labs, Inc. v. Mimzi, LLCRehearing denied
  PTAB · May 19, 2020 · IPR2019-01287 · APJ J John Lee · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution on claims 1–19 in place because the challenged prior-art and priority arguments did not show an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. Id. The Board applies an abuse of discretion standard when reviewing a decision on a petition for rehearing. 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “As an initial matter, we first note that we determined in the Institution Decision that Petitioner had shown a reasonable likelihood of prevailing on its contention that all of the challenged claims are unpatentable as obvious over Ramer3 and Hayashi.4 Inst. Dec. 28–32. Patent Owner does not seek rehearing of that determination. Thus, even were we to agree with Patent Owner that Yoo is not prior art, we conclude that Patent Owner has not shown that the Institution Decision should be modified because we still would have instituted an inter partes review based on the Ramer/Hayashi ground. See 35 U.S.C. § 314(a) (prohibiting institution “unless the Director determines that . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (emphasis added)); cf. Chevron Oronite Co. v. Infineum USA L.P., IPR2018- 00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two dependent claims out of twenty challenged claims); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 42–43 (PTAB Jan. 3 Ramer, US 2007/0061302 A1, published Mar. 15, 2007 (Ex. 1004, “Ramer”). 4 Hayashi, US 2007/0255831 A1, filed Apr. 28, 2006, published Nov. 1, 2007 (Ex. 1005, “Hayashi”). 24, 2019) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two claims out of twenty-three challenged claims).” slip op. at 4

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportOther

    “governing statute was 35 U.S.C. § 102(a)(2) (2013), as amended by the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). Inst. Dec. 13–19. On the record available at the time, we agreed with Petitioner that the ’981 Patent included claims with an effective filing date on or after March 16, 2013, the effective date of the AIA amendment to § 102. See id.; Reply 1–2; AIA § 3(n)(1). Specifically, we determined (preliminarily) that the challenged claims are not adequately supported by the written description of U.S. Patent Application No. 12/181,956 (“the ’956 Application”), and, thus, could not claim priority to the ’956 Application, the only application in the priority chain that was filed before the AIA’s relevant effective date. Inst. Dec. 17–19. Under post-AIA § 102(a)(2), a published patent application of another inventor (like Yoo) is prior art if it “was effectively filed before the effective filing date of the claimed invention.” Yoo was filed on May 6, 2008. Ex. 1003, code (22). Consequently, under post-AIA § 102(a)(2), Yoo would qualify as prior art because its filing date is before the effective filing date of the claimed invention.2 Ex. 1001, code (60). 2 We note that Yoo’s effective filing date precedes all of the possible effective filing dates listed on the face of the ’981 Patent, including the July 29, 2008 filing date of the ’956 Application. See Ex. 1001, code (60). As noted above and discussed further below, however, whether the claims are supported by the ’956 Application relates to the threshold issue of whether post-AIA § 102(a)(2) applies to Yoo.” slip op. at 3

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “As an initial matter, we first note that we determined in the Institution Decision that Petitioner had shown a reasonable likelihood of prevailing on its contention that all of the challenged claims are unpatentable as obvious over Ramer3 and Hayashi.4 Inst. Dec. 28–32. Patent Owner does not seek rehearing of that determination. Thus, even were we to agree with Patent Owner that Yoo is not prior art, we conclude that Patent Owner has not shown that the Institution Decision should be modified because we still would have instituted an inter partes review based on the Ramer/Hayashi ground. See 35 U.S.C. § 314(a) (prohibiting institution “unless the Director determines that . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (emphasis added)); cf. Chevron Oronite Co. v. Infineum USA L.P., IPR2018- 00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two dependent claims out of twenty challenged claims); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 42–43 (PTAB Jan. 3 Ramer, US 2007/0061302 A1, published Mar. 15, 2007 (Ex. 1004, “Ramer”). 4 Hayashi, US 2007/0255831 A1, filed Apr. 28, 2006, published Nov. 1, 2007 (Ex. 1005, “Hayashi”). 24, 2019) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two claims out of twenty-three challenged claims).” slip op. at 4

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,128,981
• Cisco Systems, Inc. v. Centripetal Networks, Inc.Some claims unpatentable
  PTAB · May 18, 2020 · IPR2018-01760 · APJ J John Lee · IPR · Final written decision

  Claims 1–7, 10–12, 14–21, 24, and 25 are unpatentable as obvious over Sourcefire; claims 8, 9, 13, 22, and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In its Response, Patent Owner does not dispute Petitioner’s definition of the level of skill in the art.3 Based on the complete trial record, we find 3 Dr. Orso testified to a slightly different description of the level of skill in the art (Ex. 2002 ¶ 36), but Patent Owner did not argue during trial that Dr. Orso’s description should be adopted instead of Petitioner’s description and waived any such argument as a result. See In re NuVasive, Inc., 842 Dr. Staniford’s testimony credible and persuasive (Ex. 1003 ¶¶ 21–24), and we adopt Petitioner’s definition as a result. B.” slip op. at 7

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

    “an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). In the Decision on Institution, we preliminarily construed the term “network-threat indicator” as an “indicator that represents the identity of a resource associated with a network threat.” Inst. Dec. 8. During trial, neither party disputed this preliminary construction. See PO Resp. 25; Pet. Reply 7–8; Tr. 10:22–11:9. We do not discern any evidence in the full record after trial indicating that this construction is incorrect or should be modified. Moreover, the Specification supports this construction, indicating that “network addresses, ports, fully qualified domain names (FQDNs), uniform resource locators (URLs), uniform resource identifiers (URIs), or the like” are examples of “network-threat indicators.” Ex. 1001, 3:18–26. Thus, we apply this construction in this Decision.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Based on the above facts and case law, we conclude that Sourcefire was publicly accessible. The evidence of record indicates that the Sourcefire 3D System was publicly marketed and sold, and that the Sourcefire reference was actually distributed to over 500 customers of the Sourcefire 3D System. Ex. 1005 ¶¶ 11, 19; Ex. 1042 ¶¶ 5–9. This vastly exceeds the distribution to six people in MIT and distribution of 80 copies in Garrett. Record evidence also supports Petitioner’s contention that the customers who received Sourcefire included entities interested in network security products, including persons of ordinary skill in the art. See Ex. 1042 ¶ 9; see also Ex. 1004, 1, 32–33 (identifying Sourcefire as a “User Guide” and indicating Sourcefire provides information for network administrators); Ex. 1005 ¶ 5 (indicating Sourcefire was drafted in consultation with, and reviewed by, engineers who designed the Sourcefire system). Moreover, similar to MIT and as discussed in Medtronic, the record indicates that the recipients of Sourcefire were not subject to confidentiality requirements restricting use or further distribution. See Ex. 1004, 2 (Sourcefire copyright page stating, “You may use . . . and otherwise copy and distribute [Sourcefire] solely for non-commercial use”).5 Although Patent Owner asserts that MIT and Klopfenstein are distinguishable because they involved “the free distribution of academic documents to conference and meeting attendees” (PO Sur-reply 7), case law indicates that distribution to commercial entities also may be sufficient. See Garrett, 422 F.2d at 878; Pet. Reply 3.6” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Id. at 65. These largely conclusory arguments, however, fail to explain how refreshing an event view or event summary page, whether at a regular interval or otherwise, teaches generating different types of log entries at the same time for different portions of packets in the manner claimed. The cited testimony of Dr. Staniford does not provide any further illumination, instead repeating essentially the same conclusory statements made in the Petition. See Ex. 1003 ¶¶ 162, 173; 37 C.F.R. § 42.65(a). Petitioner’s Reply also fails to supply the necessary explanation or supporting evidence. Petitioner notes that “flow-log entries are generated from the packet-logs”—thus, flow-log entries must be generated after the corresponding packet-log entries and would reflect any changes made to those entries. Pet. Reply 19–21. Although true, these facts pertain only to a single portion of packets, i.e., that their packet-log entries are generated first, and that the related flow-log entries are generated afterward. The same is true even considering that this process can occur at a predetermined “refresh interval.” Petitioner does not identify any specific teaching or suggestion in Sourcefire that indicates how the generation of log entries for two different portions of packets would operate. Instead, Petitioner relies on a bare assertion—without any specific basis in Sourcefire—that “the processing of the packet-logs and the flow-logs are continually being updated or refreshed.” Without sufficient supporting evidence, that bare assertion and the conclusory testimony of Dr. Staniford are inadequate to meet Petitioner’s burden to prove the unpatentability of these claims by a preponderance of the evidence.” slip op. at 35

  Patent outcomesUS 9,413,722 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,413,722
• Amazon.Com, Inc. v. Customplay, LLCAll claims unpatentable
  PTAB · Mar 11, 2020 · IPR2018-01498 · APJ J John Lee · IPR · Final written decision

  Claims 4, 7–9, 12, 14, 16, 18, and 19 are unpatentable as obvious over the Bergen/Reimer and Armstrong grounds, with Abecassis for specified claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, or computer science, as well as three years of experience in the design of digital video systems. Pet. 9 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does 2 U.S. Patent Application Publication No. 2007/0250901 A1, published Oct. 25, 2007 (Ex. 1004, “McIntire”). 3 U.S. Patent No. 6,965,890 B1, issued Nov. 15, 2005 (Ex. 1023, “Dey”). 4 U.S. Patent No. 6,038,367, issued Mar. 14, 2000 (Ex. 1024, “Abecassis”). 5 U.S. Patent No. 6,956,573 B1, issued Oct. 18, 2005 (Ex. 1028, “Bergen”). 6 U.S. Patent No. 5,696,905, issued Dec. 9, 1997 (Ex. 1005, “Reimer”). 7 U.S. Patent Application Publication No. 2007/0003223 A1, published Jan. 4, 2007 (Ex. 1021, “Armstrong”). not dispute Petitioner’s formulation of the level of skill in the art. Based on the information and testimony presented with the Petition, we adopt Petitioner’s formulation. B.” slip op. at 6

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

    “Claim Construction For petitions filed before November 13, 2018, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Petitioner contends no express claim constructions are necessary to resolve the issues presented in the Petition. Pet. 10. Patent Owner contends the inventor acted as his own lexicographer in presenting a number of definitions in the Specification of the ’282 Patent, and asserts that these definitions should be used in this proceeding. PO Resp. 7–8. We determine that no claim terms of the challenged claims in the ’282 Patent require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy require express construction, and only to the extent necessary to resolve the controversy). To the extent any interpretation of claim language is necessary, we address those issues in the context of our unpatentability analysis below. C.” slip op. at 7

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

    “playing in response to the request for information.” Petitioner argues that a person of ordinary skill would have recognized that presenting results of a request/query could interfere with viewing the video, and, thus, pausing the video would have been obvious given that it would have been “trivial” for the artisan to implement such a “ubiquitous” feature. Pet. 51–52 (citing Ex. 1002 ¶ 148). Additionally, the Petition cites Reimer as teaching this limitation. Id. at 52. Specifically, Petitioner notes that Reimer teaches using the “Pause” button of a remote control to initiate a query. Id. (citing Ex. 1005, 16:7–14). According to Petitioner, a skilled artisan would have been motivated to combine this feature of Reimer with Bergen because the two references are directed to similar systems, and doing so would constitute the use of a known technique (pausing) to improve Bergen’s system in the same way it improves Reimer’s system. Id. (citing Ex. 1002 ¶¶ 151–152; KSR, 550 U.S. at 417). We agree with Petitioner’s analysis and find that the combination of Bergen and Reimer teaches each limitation of claim 12. Also, we find that Petitioner has articulated a sufficient rationale that would have motivated a person of ordinary skill to combine those teachings. Thus, Petitioner has established by a preponderance of the evidence that claim 12 is unpatentable as obvious over Bergen and Reimer.” slip op. at 20

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “(id.)—in other words, the user sees the depicted item in Frame A but, due to reaction time, does not transmit the request for supplemental content about the item until Frame B, which is later in time and which may not depict that item any longer. See id. ¶ 272. In McIntire’s system, the supplemental content would be mapped to both Frame A and Frame B so that when the system receives the request at Frame B, it nonetheless retrieves the supplemental content for the item depicted in Frame A because it was also mapped to Frame B. See id. ¶ 140. This enables the system to identify “one or more articles appearing in the media stream at or around the point in time at which” the user request was received, because the articles are mapped to identifiers representing multiple frames at or around the time the articles appeared. See id. ¶ 310 (emphasis added). But though Frame A and Frame B may be different segments with different segment identifiers, they are both mapped to the same supplemental content. See id. Thus, displaying that content may be considered displaying information associated with both identifiers, but it is the same information, whereas the challenged claims require the information to be different. Petitioner argues that McIntire teaches displaying different information by virtue of the fact that the two segment identifiers it relies on represent two different segments. Pet. Reply 5–6. As discussed above, however, McIntire describes mapping the identifiers to the same content, even when they represent different segments/frames. Next, Petitioner notes that the items depicted in the video change from segment to segment, which creates the user delay problem. Id. at 6. According to Petitioner, “the purpose of identifying additional frame identifiers ‘around’ the current location and retrieving supplemental content for multiple [identifiers] is to display different information associated with previously depicted items that are not depicted in later locations.” Id. Petitioner is correct that McIntire discloses displaying information associated with previously depicted items, which may be different than information associated with items depicted in the current segment (because the items are different). Still, Petitioner has not addressed how McIntire teaches also displaying the information associated with items depicted in the current segment contemporaneously. McIntire’s discussion of the user delay problem teaches that the user is requesting information regarding the previously depicted items, not both the previous items and the current items contemporaneously, due to reaction time. See Ex. 1004 ¶ 272. That is why McIntire describes mapping both the previous and current segment identifiers to the information about the previously depicted items, not the currently depicted items. See id. ¶ 140. Petitioner also contends that a person of ordinary skill in the art would have known about the user delay problem, and that artisans “were motivated to solve it by providing different supplemental content associated with video frames before the request location,” which was within an ordinary artisan’s skill. Pet. Reply 6–7. Essentially, Petitioner’s argument amounts to a contention that the background knowledge of a person of ordinary skill would have supplied this limitation even if it was not taught by McIntire. Such a theory is untimely and will not be considered because it was not advanced in the Petition. See Pet. 28–29; Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016).” slip op. at 44

  Patent outcomesUS 9,380,282 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,380,282
• Amazon.Com, Inc. v. Customplay, LLC.All claims unpatentable
  PTAB · Mar 5, 2020 · IPR2018-01497 · APJ John R Kenny · IPR · Final written decision

  Claims 2, 4, 6, 14, 16, and 19 are unpatentable on at least one §103 ground; claim 4 was not shown unpatentable over Rakib and Livesey.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Computer Engineering, or Computer Science, and at least three years of experience in the design of digital video systems. Pet. 11 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does not dispute Petitioner’s formulation of the level of ordinary skill in the art. Based on the information and testimony presented in the Petition, we adopt Petitioner’s formulation.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “constructions for the terms “retrieve” and “item” for its showing of the asserted obviousness of claims 14 and 19. Inst. Dec. 11–12; see also Pet. 17, 26. Therefore, we construed “retrieve” and “item” as they are defined in the Specification. Specifically, we construed “retrieve” as comprising “obtain, acquire, procure, download, transfer, extract, and to come into possession by any means or methodology.” Inst. Dec. 12; see also 2 The Petition in this proceeding was filed on August 1, 2018. Ex. 1001, 15:4–8. And we construed “item” as “(i) items, products, objects, properties, acts, or information, whether or not they offer a commercial or purchase opportunity; (ii) items, products, objects, properties, acts, or information that constitute actual or potential product placements, whether prior to or after production of the video; (iii) product placements; and (iv) items, products, objects, properties, acts, or information, that offer informational or entertainment opportunities.” Inst. Dec. 12; see also Ex. 1001, 4:48–55. For our construction for “item,” we included the Specification’s definition of “product placement,” which is “(i) items, products, objects, properties, acts, or information that offer a commercial or purchase opportunity; (ii) items, products, objects, properties, acts, or information that constitute actual or potential product placements, whether prior to or after production of the video; and (iii) product placements.” Inst. Dec. 13; see also Ex. 1001, 4:55–61. Neither party objected to our preliminary constructions of these terms. PO Resp. 6; Pet. Reply, generally. We maintain these constructions and determine that we do not need to expressly construe any other claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “trial, we agree with Patent Owner and do not find that Rakib and Livesey teach or suggest the above limitation. Petitioner’s obviousness theory for this limitation rests on its arguments about what an ordinarily skilled artisan could have done. According to Petitioner, an ordinarily skilled artisan would have understood that a partial overlay could be used to display information. Then Petitioner argues what an ordinarily skilled artisan would have been motivated to do if the artisan decided to use a partial overlay. But Petitioner provides no persuasive evidence that an ordinarily skilled artisan would have been motivated to choose the partial overlay— the predicate act in Petitioner’s analysis. And obviousness cannot be established by merely proving what an ordinarily skilled artisan could have done. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Further, Petitioner’s argument and Dr. Bovik’s testimony that the above limitation simply arranges old elements (requests for information and pausing control instructions), with each performing the same function it had been known to perform, and yields no more than predictable results, are conclusory. Pet. 80–81; Ex. 1002 ¶¶ 202–203. For that reason, we are not persuaded by that argument or that testimony.” slip op. at 69

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

    “Third, an ordinarily skilled artisan would have been motivated to modify Rangan’s apparatus to permit requests for additional information as taught by Rakib for the following reasons: (i) Rangan discloses providing a unique customized experience for numerous users, and an ordinarily skilled artisan would recognize this goal would be best accomplished by providing a portion of the related information and then allowing each user to decide what additional information should be disclosed; (ii) disclosing all information that users may be interested in would be onerous; (iii) Rangan suggests that the user would be able to branch to additional information after selecting the hotspot; and (iv) this modification would be a simple substitution of one known element for another known element to obtain predictable results. Ex. 1002 ¶¶ 71–80. We also find that an ordinarily skilled artisan would have a reasonable expectation of making such a modification. Id. ¶ 80. Fourth, we do not agree with Patent Owner that this modification would impermissibly change Rangan’s principle of operation. PO Resp. 24. The proposed combination would not require that any change in the basic operation of Rangan’s system because Rangan’s system already requests information. See supra Section III.A.2.f.; Ex. 1102 ¶¶ 39–40. The modification would simply involve making another request. Ex. 1102 ¶ 40. We also credit Dr. Bovik’s testimony that Rangan and Rakib do not have incompatible operating structures. Id.” slip op. at 35

  Patent outcomesUS 9,124,950 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,124,950
• Amazon.Com, Inc. v. Customplay, LLCAll claims unpatentable
  PTAB · Mar 4, 2020 · IPR2018-01496 · APJ J John Lee · IPR · Final written decision

  Claims 4–6 and 10–20 are unpatentable as obvious under the stated § 103(a) grounds; Patent Owner’s motion to exclude is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, or computer science, as well as three years of experience in the design of digital video systems. Pet. 10–11 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does not dispute Petitioner’s formulation of the level of ordinary skill in the art. Based on the information and testimony presented in the Petition, we adopt Petitioner’s formulation. B.” slip op. at 6

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

    “Claim Construction For petitions filed before November 13, 2018, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Petitioner contends no express claim constructions are necessary to resolve the issues presented in the Petition. Pet. 11. Patent Owner contends the inventor acted as his own lexicographer in presenting a number of definitions in the Specification of the ’346 Patent, and asserts that these definitions should be used in this proceeding. PO Resp. 16. We determine that no claim terms of the challenged claims in the ’346 Patent require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy require express construction, and only to the extent necessary to resolve the controversy). C.” slip op. at 6

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

    “retrieving supplemental content, including “an image of the actress” (visual depiction of the performer), based on a mapping (reference) that associated that content to the segment depicting that actress. See Ex. 1004 ¶ 278; Pet. 28–29. Petitioner asserts inter alia that a skilled artisan would have been motivated to combine these teachings with the system in Thomas because displaying an actor’s image, as taught in McIntire, would have been a well-known technique applied in a conventional fashion to the similar device taught in Thomas to yield predictable results. See Pet. 29–30 (citing Ex. 1002 ¶ 68; KSR, 550 U.S. at 417). In addition, the Petition notes that Thomas teaches displaying “actor information” such as “biographical information” and “[a]ny other suitable information relating to . . . the actor,” which would have suggested to a skilled artisan to include images of the actor. Id. at 30 (quoting Ex. 1003 ¶ 106); Ex. 1002 ¶ 68. This analysis is persuasive, and its supporting evidence is credible and convincing.” slip op. at 19

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

    “such metadata from a service. Ex. 1006, 6:44–50. The Petition sets forth several reasons why a person of ordinary skill would have been motivated to combine these teachings, including that it constitutes a simple substitution of one known technique (Reimer’s request for actor information) for another similar technique (Clarke’s request for metadata) to obtain predictable results. Pet. 73–75 (citing KSR, 550 U.S. at 417). Although Patent Owner argues Clarke “teaches away” from the claimed user request and that the combination of Clarke and Reimer is based on impermissible hindsight, its positions are unpersuasive because they are conclusory and unsupported. PO Resp. 54–55. In particular, with regard to teaching away, Patent Owner fails to identify evidence indicating that a skilled artisan would have understood Clarke to “criticize, discredit, or otherwise discourage the solution claimed” in the ’346 Patent. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Based on the complete record, we find that this limitation is taught by the combination of Clarke and Reimer, and that an ordinary artisan would have been motivated to combine their teachings.” slip op. at 50

  Patent outcomesUS 8,494,346 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,494,346
• Roland Corporation v. Inmusic Brands, Inc.Rehearing denied
  PTAB · Dec 20, 2018 · IPR2018-00335 · APJ Debra K Stephens · IPR · Rehearing

  The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended basis to show the claimed acoustic noise reducing cavity in the cited references or their combination.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply” (37 C.F.R. § 42.71(d)). The party challenging a decision bears the burden of showing the decision should be modified (id.).” slip op. at 3

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates” (In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted)). “[A]nticipation by inherent disclosure is appropriate only when the [single prior art] reference discloses prior art that must necessarily include the unstated limitation.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (internal quotation marks and citations omitted). Rather, “[t]he inherent result must inevitably result from the disclosed steps....” In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012) slip op. at 3

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

    “As set forth above, we were not persuaded by Petitioner’s arguments that Puschner anticipated an acoustic noise reducing cavity. Moreover, as we stated in our Decision, Petitioner did not “identify where Yoshino ’117, directed to an ‘electronic percussion instrument and vibration detection apparatus,’ teaches or suggests the claimed ‘acoustic noise reducing cavity’” (Dec. 21). Petitioner provided no cites to Yoshino ’117 to support its assertion that Yoshino ’117 teaches “an acoustic noise reducing cavity in an electronic drum” in either the Petition or the Declaration of Dr. Paradiso with respect to this asserted ground (Pet. 19–20; Ex. 1002 ¶ 74). We also determined Petitioner had not proffered persuasive argument as to why an ordinarily skilled artisan would have found it obvious to combined the teachings (Dec. 21). Rather, Petitioner merely proffered the conclusory statement that “it would have been obvious” because of “a desire to reduce acoustic sound . . .” (Pet. 19–20) –– i.e., it would have been obvious to have the recited feature. Moreover, we determined Petitioner had not “explained how the teachings of Puschner’s and Yoshino ’117’s different structures would have been combined to teach the invention,” as recited in claim 15 (Dec. 21). Petitioner has not identified any matter that the Board misapprehended or overlooked, or identified where each matter was previously addressed, in the relevant portions of the Petition or cited evidence. Petitioner did not fully address how the references taught the limitation or the reasons for combining the teachings.” slip op. at 6

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,424,827
• Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.All claims unpatentable
  PTAB · Feb 7, 2017 · IPR2015-01657 · APJ William M Fink · IPR · Final written decision

  Claims 1, 5–8, 19, 26, 27, and 31–36 are unpatentable as obvious over Schnuckle ’455 with Meeker or Physics Lab.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find these “definitions” to be substantially similar. For example, both require at least a mechanical engineering degree and experience varying between “some,” in Dr. Brown’s opinion, and “one to three years,” in Dr. Delson’s opinion. Given this apparent lack of disagreement, we adopt Dr. Delson’s statement of the level of ordinary skill for purposes of this Decision, but we note that our analysis would be the same under either formulation.” slip op. at 6

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

    “By teaching that the “present description” solves the problems associated with the prior art candle devices because it is driven by “real but chaotic movements,” the patentee disclaims devices driven by rhythmic or metronomic patterns. Id. at 1354. Thus, the Federal Circuit started the paragraph by stating that the specification disclaimed non-chaotic pivoting, and then, after reviewing the ’166 patent specification evidence, concluded that this meant the patentee disclaims devices driven by rhythmic or metronomic patterns. We discern no suggestion by the Federal Circuit that it believed the disclaimer of chaotic pivoting to require more than not being driven by rhythmic or metronomic patterns such that Patent Owner’s mathematical definition of chaos is required.” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Although unsupported, we have considered whether replacing the entire gimbal would destroy the principle of operation, and we find that it would not. As discussed above, replacing the two-axis gimbal in Figure 12 with Meeker’s support wire would eliminate one of the two axes of rotation. Thus, the replacement would involve trade-offs, but, in this case, the trade-offs would be similar to those already contemplated by Schnuckle ’455. See also In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016) (agreeing that a person of ordinary skill in the art would have been motivated to pursue the desirable qualities taught by one reference at the expense of foregoing the benefit taught by another reference). For example, at a high level, all embodiments of Schnuckle ’455, even the single-axis embodiment of Figure 7, are designed to provide a realistic flame effect. See Ex. 1003, 2:1–3 (“[R]otation of the at least one channel about at least one axis of the mount creates an artificial flickering flame on the flame shaped surface.”). Given these teachings, and Patent Owner’s failure to explain why Meeker’s structure would have undermined or destroyed the principle of operation of Schnuckle ’455, we do not find that the proposed combination would have destroyed Schnuckle ’455’s principle of operation. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). As to the rationale for combining, Schnuckle ’455 and Meeker, based on reducing the number of components and reducing the possibility of the wire support slipping off the ring, Patent Owner’s arguments are again based on keeping parts of the gimbal structure, which is not the proposal. See PO Resp. 24 (“If Schnuckle’s gimbal is kept even partially intact, modification of the gimbal would be even more costly and require the same number of parts. (Ex. 2010, Brown Decl. ¶¶ 99, 129.)”). Dr. Brown makes similar statements in his Declaration. See Ex. 2010 ¶¶ 99, 129. Petitioner’s cost and reliability rationales, based on replacing the entire gimbal, remain unrebutted. We find Petitioner’s reasons for combining Schnuckle ’455 and Meeker to be based on rational underpinnings. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” slip op. at 28

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

    “Although unsupported, we have considered whether replacing the entire gimbal would destroy the principle of operation, and we find that it would not. As discussed above, replacing the two-axis gimbal in Figure 12 with Meeker’s support wire would eliminate one of the two axes of rotation. Thus, the replacement would involve trade-offs, but, in this case, the trade-offs would be similar to those already contemplated by Schnuckle ’455. See also In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016) (agreeing that a person of ordinary skill in the art would have been motivated to pursue the desirable qualities taught by one reference at the expense of foregoing the benefit taught by another reference). For example, at a high level, all embodiments of Schnuckle ’455, even the single-axis embodiment of Figure 7, are designed to provide a realistic flame effect. See Ex. 1003, 2:1–3 (“[R]otation of the at least one channel about at least one axis of the mount creates an artificial flickering flame on the flame shaped surface.”). Given these teachings, and Patent Owner’s failure to explain why Meeker’s structure would have undermined or destroyed the principle of operation of Schnuckle ’455, we do not find that the proposed combination would have destroyed Schnuckle ’455’s principle of operation. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). As to the rationale for combining, Schnuckle ’455 and Meeker, based on reducing the number of components and reducing the possibility of the wire support slipping off the ring, Patent Owner’s arguments are again based on keeping parts of the gimbal structure, which is not the proposal. See PO Resp. 24 (“If Schnuckle’s gimbal is kept even partially intact, modification of the gimbal would be even more costly and require the same number of parts. (Ex. 2010, Brown Decl. ¶¶ 99, 129.)”). Dr. Brown makes similar statements in his Declaration. See Ex. 2010 ¶¶ 99, 129. Petitioner’s cost and reliability rationales, based on replacing the entire gimbal, remain unrebutted. We find Petitioner’s reasons for combining Schnuckle ’455 and Meeker to be based on rational underpinnings. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” slip op. at 28

  Patent outcomesUS 8,534,869 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,534,869
• Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.All claims unpatentable
  PTAB · Feb 6, 2017 · IPR2015-01656 · APJ William M Fink · IPR · Final written decision

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

  RulingsFinal written decision

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

  Patent outcomesUS 8,070,319 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,070,319
• Oracle America, Inc. v. Realtime Data LLCInstitution denied
  PTAB · Jul 1, 2016 · IPR2016-00377 · APJ Jason J Chung · IPR · Institution

  The Board denied institution on claims 1, 2, 4–6, 9, 11, 21, 22, 24, and 25 because the petition did not adequately show the same memory device met claim 1’s limitations.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms.” slip op. at 14

  • BurdenDenied

    “Petitioner, therefore, fails to explain how Kawashima and Sebastian teach an individual memory device that meets the limitations of claim 1. To the extent Petitioner intended to allege that multiple structures in Kawashima together teach these limitations, the Petition does not explain such an allegation clearly, nor does it explain how or why a person of ordinary skill would have combined those different elements—some from different embodiments of Kawashima—to arrive at the recited memory device and its claimed characteristics. See Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (holding that two embodiments in a single reference could be combined to render a claim obvious where an ordinary artisan would have been motivated to combine them). Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Petitioner, therefore, fails to explain how Kawashima and Sebastian teach an individual memory device that meets the limitations of claim 1. To the extent Petitioner intended to allege that multiple structures in Kawashima together teach these limitations, the Petition does not explain such an allegation clearly, nor does it explain how or why a person of ordinary skill would have combined those different elements—some from different embodiments of Kawashima—to arrive at the recited memory device and its claimed characteristics. See Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (holding that two embodiments in a single reference could be combined to render a claim obvious where an ordinary artisan would have been motivated to combine them).” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “We decline to adopt Petitioner’s proposed claim construction, at least because Petitioner’s proposed claim construction omits the claimed “memory device” and its relationship to the faster storage limitation. See Prelim. Resp. 13. As noted by Patent Owner, “a claim should be constructed so that each word in the claim has meaning.” Id., citing Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) and In re Wilson, 424 F.2d 1382, 1385 (C.C.P.A.1970). Accordingly, no claim terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,116,908
• Avx Corporation v. Wilson Greatbatch Ltd.All claims unpatentable
  PTAB · May 2, 2016 · IPR2015-00101 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–14, 25–32, 35, 36, 47, and 48 are unpatentable: claims 1–4 and 25–27 as anticipated by Burger, claims 5–9 by Hildegard, and the remaining claims as obvious over Evans I and Hildegard; amendment denied.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “As the moving party, it is Patent Owner’s burden to prove that its proposed claims are patentable over the prior art. To meet that burden with respect to Evans I and Hildegard, Patent Owner must prove that the boric acid in Electrolyte B would materially affect the basic and novel properties of Patent Owner’s invention, such that it would be excluded from the electrolytes of proposed claims 49–51. In that regard Patent Owner asserts, without citation to Hildegard or any other evidence, that Hildegard “clearly assert[s]” that boric acid would have a material effect. Reply 8 (quoting Prelim. Resp. 17). We are not persuaded by this attorney argument.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “c. Evans I In View Of Hildegard The Petition asserts, and we determine, that it would have been obvious to modify the capacitor of Evans I to substitute its electrolyte with Hildegard’s Electrolyte B as a mere substitution of a prior art element according to its established function. Pet. 43 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007); Ex. 1011 ¶¶ 26–27). Indeed, Patent Owner conceded that this was an obvious modification. PO Resp. 1.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Petitioner offers declaration testimony from Jan Petrzilek, Ph.D., that some of the acetic acid in Electrolyte B would react with the ammonia to form ammonium acetate. Ex. 1011 ¶ 19. Dr. Petrzilek, implying that some of the phosphoric acid also would react with the ammonia, testifies that not all of either the acetic acid or phosphoric acid would react with the ammonia, and, thus, some amount of those acids remain in Electrolyte B. Ex. 1011 ¶ 19. Dr. Petrzilek explains that this is because the molar amount of ammonia is lower than the molar amounts of those acids. Id. Thus, Dr. Petrzilek concludes that the final mixture of Electrolyte B necessarily includes ammonium acetate, acetic acid, and phosphoric acid. Id. We find Dr. Petrzilek’s testimony to be credible and persuasive. The final mixture of Electrolyte B contains water “up to about 85%” and ethylene glycol “up to about 95%,” which meets element (c)(i) of each of proposed claims 49–51. Ex. 1004, 2:50–52. After the ammonia and acetic acid react, the resulting ammonium acetate would have to constitute less than about 50% of the electrolyte by weight, which meets element (c)(ii) of each of proposed claims 49–51. Ex. 1011 ¶ 19. After the ammonia reacts with both acids, some amount of each acid would remain, and such remaining amounts would be less than the maximum limits recited in element (c)(iii) of each of proposed claims 49–51. Ex. 1011 ¶ 19; Pet. 26– 27.” slip op. at 10

  Patent outcomesUS 6,219,222 unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 6,219,222

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.