• Unified Patents Inc. v. Velos Media, LLCNo claims unpatentable
  PTAB · May 12, 2020 · IPR2019-00194 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–3, 5, 13–15, and 17 were not shown unpatentable because the asserted grounds failed to establish the claimed scan passes or scan order.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts a person of ordinary skill in the art at the time of the application resulting in the ’449 patent “would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, or a related subject and two or more years of experience in the field of video coding.” Pet. 23–24. Patent Owner does not contest that definition of a skilled artisan or offer a different one. Petitioner’s definition is consistent with the descriptions in the ’449 patent and the asserted art, and we adopt it.” slip op. at 5

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

    “Although Petitioner proposes a construction for “information indicating levels of significant coefficients” (Pet. 27), we determined in the Institution Decision that there was no need to construe the phrase. Inst. 5. Absent any indication from the parties why such a construction would impact our analysis, we reach that same conclusion here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

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

    “the phrase “in a first scan pass” and shows the proper grammatical relationship. That limitation recites “coding information indicating levels . . . according to the scan order used for coding the information indicating significant coefficients in a second scan pass.” The phrase “in a second scan pass” serves not to frame the scan order—the scan order for coding level information must be the same as the scan order for coding significance information. Rather, “in a second scan pass” relates to the phrase “coding information”—no other understanding of “in a second scan pass” would make sense. For internal consistency, that same understanding must apply to the first limitation such that “in a first scan pass” frames the step of “coding information.” Thus, the claim language requires coding significance information in a first scan pass, and then coding level information in a second scan pass, where each scan pass uses the same scan order.” slip op. at 8

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

    “We find Cheon’s disclosure regarding a purported second scan is insufficient to carry Petitioner’s burden. The primary disclosure Petitioner relies on states only that “[l]evel information of an effective coefficient . . . is encoded after the significance map is encoded.” Ex. 1003 ¶ 175. That does not expressly state that a second scan is performed to encode the level information. Petitioner is left relying on a statement by its declarant that a person of skill would have understood to perform a second scan pass when encoding the level information. Pet. 61. But Petitioner’s declarant provides no explanation and instead simply makes the conclusion. Ex. 1002 ¶ 127. We do not afford significant weight to such a conclusory statement. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We are left with the possibility that Cheon’s paragraph 175 discloses a second scan, but that does not persuade us that Cheon makes an adequate disclosure to teach a second scan. In this regard, we credit the testimony of Patent Owner’s declarant that skilled artisans would have understood Cheon’s paragraph 175 to teach a single scan pass. Ex. 2034 ¶¶ 158–159.” slip op. at 11

  Patent outcomesUS 9,338,449 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,338,449
• Ralph Lauren Corporation v. Lexos Media IP, LLCSome claims unpatentable
  PTAB · Mar 25, 2020 · IPR2018-01755 · APJ Sharon Fenick · IPR · Final written decision

  Claims 27, 33, 40, 41, 72, 81, and 82 are unpatentable under § 103; the remaining challenged claims are not determined unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Decision issues under 35 U.S.C. § 318(a). Having considered the evidence of record, and for the reasons discussed below, Petitioner has demonstrated by a preponderance of the evidence that claims 27, 33, 40, 41, 72, 81 and 82 of the ’449 patent are unpatentable under 35 U.S.C. § 103(a), but has not demonstrated by a preponderance of the evidence that claims 1–3, 5–7, 12– 15, 28, 29, 31, 32, 38, 39, 53–56, 58–63, 73–75, and 77–80 of the ’449 patent are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art would have had “at least a master’s degree in Computer Science, Computer Engineering, or a related field, or hold a bachelor’s degree in Computer 4 The record contains no evidence relating to secondary considerations. Science, Computer Engineering, or equivalent and have at least two years of relevant work experience in the fields of UI [(user interface)] design and OSs.” Pet. 10–11. In the Institution Decision, we preliminary adopted Petitioner’s proposed definition, noting that the prior art in this case demonstrated the level of ordinary skill in the art at the time of the invention. Inst. Dec. 10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Patent Owner does not comment on or dispute Petitioner’s proposal, and instead cites Okajima’s holding regarding the level of skill in the prior art without raising any issues regarding whether the prior art here reflects a level of ordinary skill different from that proposed by Petitioner. PO Resp. 10 (citing Okajima, 261 F.3d at 1355). We adopt Petitioner’s definition as consistent with the ’449 patent and the asserted prior art.” slip op. at 10

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

    “Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The Petitioner proposed construction of several claim terms in the Petition. Pet. 12–18. However, none of these claim terms require construction to resolve the controversy. Petitioner also argued for a construction of an additional term (“wherein said specified content information further comprises information to be displayed on said display of said user’s terminal”) in its Reply. Pet. Reply 13. Patent Owner contends that this argument is a new argument raised improperly for the first time in the Reply. PO Sur-Reply 10–11. We agree. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding ... patent owner response.” See also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not abuse its discretion in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369–1370 (Fed. Cir. 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)). Therefore, we will not address the new construction proposed for this claim term.” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “A petitioner must choose which grounds of invalidity to assert in the petition and “the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Intelligent Bio- Sys., 821 F.3d at 1369 (Fed. Cir. 2016); Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Circ. 2017) (a petitioner is foreclosed from “shifting” in post-petition arguments to a new theory of prima facie obviousness based on a different passage of a prior art reference than was used in the petition); see PTAB Consolidated Trial Practice Guide November 2019,5 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie 5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated case of unpatentability.”); Trial Practice Guide Update August 2018,6 14 (same). Therefore, we evaluate Petitioner’s arguments with respect to limitation [c.i] relying upon Malamud’s message relating to a preview cursor in Malamud to teach the “specified content information.” Patent Owner does not make any arguments relating to whether Malamud’s message, in view of the teachings of Anthias, teaches limitation [c.i] of claim 1. See, e.g., PO Resp. 9–18.” slip op. at 19

  Patent outcomesUS 6,118,449 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,118,449
• Kingston Technology Company, Inc. v. Memory Technologies, LLCInstitution denied
  PTAB · Jul 8, 2019 · IPR2019-00638 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–3, 5–7, 12–15, 19, or 25 were unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine that the information presented in the Petition shows “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered all submissions of both parties, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1–3, 5–7, 12–15, 19, and 25. The Petition is denied, and no inter partes review is instituted.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “result in permanent write protection to result in permanent write protection—lacks sufficient clarity. It is unclear whether a single instance of permanent write protection is sufficient to meet the limitation, or whether all future executions of the redefined command must result in permanent write protection until another redefinition occurs. We determine that, in the context of the Specification of the ’370 patent, the redefinition, when accomplished, applies to all future executions of the command until it is redefined again. It is insufficient to meet the limitation if, after the redefinition, the redefined command still may function the way it used to function prior to the redefinition.” slip op. at 10

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

    “respect to the requirements of “to redefine the command to allow permanent write protection” as we have construed and discussed above. Nothing in Chevallier as identified by Petitioner indicates that setting the secure function bit to some value changes the meaning of the write protect command in the sense that it can no longer be used to provide temporary write protection, and can be used thereafter, until the next redefinition, solely to provide permanent write protection. The secure function bit of Chevallier, identified by Petitioner, serves only to enable the secure function (Ex. 1003 ¶¶ 37, 38, 40) and is nowhere described in Chevallier as changing the meaning of the locking command such that it no longer can be used to cause write protection of a memory block temporarily.” slip op. at 16

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

    “ordinary skill in the art would have found ambiguity in Chevallier’s embodiment in which the same command is used both for “locking” and for “securing.” In that regard, Petitioner refers to “any” ambiguity. The same is true with respect to Dr. Baker, who testifies: “a person having ordinary skill in the art would have been particularly motivated to use the secure function bit in that circumstance because doing so would eliminate any ambiguity as to whether the command meant ‘lock’ or ‘secure.’” Ex. 1006 ¶¶ 259, 270, 276 (emphasis added). Also, neither Petitioner nor Dr. Baker in the cited paragraphs of his Declaration addresses the specific disclosure in Chevallier that implements using one command to cause “locking” and the same command to cause “securing.” Chevallier describes: “The secure command used in the present invention, in one embodiment, is also used for another function within the memory device. However, in such an embodiment, the command is written to a different register that is assigned to that particular function.” Ex. 1003 ¶ 18 (emphasis added). Thus, there is no “ambiguity” as to whether the command means “lock” or “secure” in any instance because Chevallier uses different registers to distinguish between them. We are not sufficiently persuaded that there is ambiguity in Chevallier’s disclosure to be resolved. Petitioner’s assertion of a motivation that lies in resolving an ambiguity is not sufficiently supported by the record. Petitioner also argues, assuming that there is ambiguity: “A POSA [person of ordinary skill in the art] would understand that Chevallier’s secure function bit, which enables and disables the secure function, could provide the beneficial specificity—if the secure function is not enabled, then the command results in the lock function; if the bit is enabled, then the command results in the secure function.” Pet. 42 (emphasis added). This argument also is not persuasive. The issue is not whether one with ordinary skill in the art “could” perform an operation but whether one with ordinary skill in the art, without application of improper hindsight, would have reason and want to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009). Here, whether one with ordinary skill in the art would want to do in Chevallier what Petitioner proposes is not sufficiently explained. Chevallier expressly states that the secure function it provides is an added feature relative to the locking function. Ex. 1003 ¶ 29. Thus, the two functions are concurrently supported in Chevallier, not mutually exclusively at any one time. The limitation “to redefine the command to allow permanent write protection” as we have construed it above, is contrary to Chevallier’s concept and implementation. Petitioner has not adequately explained why one with ordinary skill in the art would have wanted to modify Chevallier to eliminate concurrent support for both functions. For determining obviousness, the benefits, both lost and gained, in making a modification, should be weighed against each other. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1348 (Fed. Cir. 2000).” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,827,370
• Qiagen Inc. v. Oxford Immunotec Ltd.Institution denied
  PTAB · Feb 22, 2017 · IPR2016-01575 · APJ J John Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–9 unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “We have authority to institute an inter partes review only if the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; 37 C.F.R. §§ 42.4(a), 42.108. Upon consideration of the Petition and Preliminary Response, we determine that the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims. Accordingly, pursuant to § 314, we do not institute an inter partes review of the challenged claims of the ’821 Patent, and the Petition is denied. A.” slip op. at 2

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

    “structurally related to the physical substrate holding the printed matter, may not be given patentable weight. In re DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015). “[A] limitation is printed matter only if it claims the content of information.” Id. If determined to claim printed matter, the limitation is nonetheless given patentable weight “if the claimed informational content has a functional or structural relation to the substrate.” Id. at 851. According to Petitioner, the “CD8+ epitope” limitation claims printed matter because it is merely the content of information, namely “the string of amino acids in a subfragment of ESAT-6 that includes the amino acids that constitute a CD8+ epitope.” Pet. 15. Petitioner likens the “CD8+ epitope” to an “instruction limitation” that merely “informs” about the epitope in ESAT-6. Id. (citing In re Kao, 639 F.3d 1057, 1072–73 (Fed. Cir. 2011)). We disagree. In Kao, the relevant limitation claimed “providing information” regarding a particular biological correlation, which the Federal Circuit concluded had no functional relationship to the following step of “providing” a particular drug treatment. Kao, 639 F.3d at 1072–73. Here, the relevant limitation is “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope.” The epitope is not “printed” onto a physical substrate (i.e., the peptide); it is part of the substrate—the epitope is a sequence of amino acids that is recognized by a CD8+ T cell, and those amino acids are part of the amino acids that make up the peptide itself. Moreover, the epitope does not merely inform someone of purely informational content. Rather, the epitope has a structural and functional relationship to the claims and to the substrate (i.e., the peptide subfragments). For example, claim 1 recites, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope” (emphasis added). The claim further recites, “measuring secretion of a cytokine from said T cells” to determine “whether said T cells are activated by said peptide subfragment.” The specification describes the activation of CD8+ T cells by peptide subfragments that are CD8+ epitopes. See Ex. 1001, 2:30–45. Thus, the CD8+ epitopes are involved in the activation of T cells, which yields immunogenicity (i.e., generation of an immune system response) in the form of cytokine secretion, which is measured as part of the claimed method. The CD8+ epitope limitation is more akin to the attribute data object (ADO) limitations in In re Lowry, 32 F.3d 1579, 1583–84 (Fed. Cir. 1994), where the recited ADOs were processed by a computer and affected how data was stored and organized in a memory. Thus, the CD8+ epitope limitation does not constitute printed matter with no patentable weight. See DiStefano, 808 F.3d at 851. B.” slip op. at 6

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

    “Pet. 22–34. The Petition does not, however, demonstrate sufficiently that Brandt-1996 discloses, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope,” which is recited in both independent claims. Brandt-1996 discloses the results of a study in which murine (i.e., mouse) T cells were exposed to whole ESAT-6 protein, as well as nine subfragments of ESAT-6. Ex. 1010, 3528, Fig. 3. Whole ESAT-6 protein, as well as two of the subfragments, yielded a response from the T cells in the form of significant IFN-γ release. See id. at 3529–31, Figs. 2, 4. Petitioner argues that Brandt-1996 discloses exposing T cells to an immunogenic amount of a peptide subfragment of ESAT-6 because it reports a positive response (i.e., heightened IFN-γ release) to the “p1-20” peptide subfragment of ESAT-6 (also referred to as the “p1” peptide). Pet. 22–23 (citing Ex. 1010, 3531, Table 2). The Petition does not explain, however, why exposing the mice in Brandt-1996 to the “p1-20” peptide subfragment of ESAT-6 necessarily exposed the T cells to an immunogenic amount of peptide containing a CD8+ epitope. Petitioner’s assertion that a CD8+ epitope is not required by the claims is based on its arguments regarding printed matter, which are unpersuasive as discussed above. Alternatively, Petitioner argues that whole ESAT-6 protein contains CD8+ epitopes and, thus, the “ESAT-6 fragments disclosed in Brandt-1996 necessarily constitute ESAT-6 subfragments that contain a CD8+ epitope.” Pet. 23. Only two of the subfragments tested in Brandt-1996 were immunogenic, however, as required by the challenged claims. See Ex. 1010, Fig. 4 (showing responses to the “p1” (amino acids 1-20) and “p6” (amino acids 51-70) subfragments). Petitioner asserts that amino acids 15–29 and 61–82 correspond to murine CD8+ epitopes, but neither of them correspond to the immunogenic subfragments disclosed in Brandt-1996. See Pet. 23 (citing Ex. 1008, 3348 (“Bennekov-2006”)). Although Petitioner also asserts that ESAT-6 contains human and bovine CD8+ epitopes (id.), Brandt-1996 only tested mice and, thus, does not disclose immunogenicity for these epitopes specific to other species. Finally, Petitioner argues Brandt-1996 shows that whole ESAT-6 protein is immunogenic, which inherently discloses an immunogenic amount of subfragments containing CD8+ epitopes because ESAT-6 protein necessarily is processed into subfragments. Pet. 24. As Patent Owner argues, however, the record indicates that exposure to ESAT-6 protein does not necessarily produce a CD8+ response, particularly when a non-viral vector is used. See Prelim. Resp. 55–57. For example, Bennekov-2006 (cited by Petitioner as disclosing murine CD8+ epitopes) reports a response from CD8+ T cells of mice exposed to ESAT-6 protein via an adenovirus vector, but no significant CD8+ response when a liposome vector was used. See Ex. 1008, 3348, Fig. 2. It is undisputed that the Brandt-1996 study did not use a viral vector. Despite citing Bennekov-2006 to support its inherency arguments, Petitioner does not address or explain these aspects of Bennekov-2006, or their bearing on the disclosures of Brandt-1996. For the above reasons, Petitioner has not provided sufficient information showing that Brandt-1996 discloses, explicitly or inherently, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope,” as required by the challenged claims. Thus, Petitioner has not demonstrated a reasonable likelihood of prevailing as to anticipation by Brandt-1996. D.” slip op. at 8

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

    “Finally, Petitioner argues Brandt-1996 shows that whole ESAT-6 protein is immunogenic, which inherently discloses an immunogenic amount of subfragments containing CD8+ epitopes because ESAT-6 protein necessarily is processed into subfragments. Pet. 24. As Patent Owner argues, however, the record indicates that exposure to ESAT-6 protein does not necessarily produce a CD8+ response, particularly when a non-viral vector is used. See Prelim. Resp. 55–57. For example, Bennekov-2006 (cited by Petitioner as disclosing murine CD8+ epitopes) reports a response from CD8+ T cells of mice exposed to ESAT-6 protein via an adenovirus vector, but no significant CD8+ response when a liposome vector was used. See Ex. 1008, 3348, Fig. 2. It is undisputed that the Brandt-1996 study did not use a viral vector. Despite citing Bennekov-2006 to support its inherency arguments, Petitioner does not address or explain these aspects of Bennekov-2006, or their bearing on the disclosures of Brandt-1996. For the above reasons, Petitioner has not provided sufficient information showing that Brandt-1996 discloses, explicitly or inherently, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope,” as required by the challenged claims. Thus, Petitioner has not demonstrated a reasonable likelihood of prevailing as to anticipation by Brandt-1996. D.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,617,821
• 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
• Unified Patents Inc. v. Dragon Intellectual Property, LLCAll claims unpatentable
  PTAB · Feb 5, 2016 · IPR2014-01252 · APJ Stacey G White · IPR · Final written decision

  Claims 1, 2, 7, 8, 10, 13, and 14 are unpatentable as obvious over Ulmer and Goldwasser.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Ulmer and Goldwasser. Pet. 35–51. We have reviewed Petitioner’s detailed explanation identifying where each limitation allegedly would have been taught by Ulmer and Goldwasser, along with the testimony of Petitioner’s declarant, Dr. Hemani. See id.; Ex. 1013; Reply 12–24. We also have reviewed Patent Owner’s assertions and evidence as to why Petitioner’s explanations and evidence are deficient. PO Resp. 17–49; Ex. 2022 (Declaration of Adam Goldberg). On this record, we are persuaded that Petitioner has shown by a preponderance of the evidence that Ulmer and Goldwasser teach each limitation of claims 1 and 2.” slip op. at 10

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

    “Petitioner proffers constructions for a number of claim terms. Pet. 18–24. No claim terms require express construction for purposes of this Decision. B. Obviousness of Claims 1, 2, 7, 8, 10, 13, and 14 over Ulmer and Goldwasser” slip op. at 6

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

    “there was no motivation to combine Ulmer and Goldwasser. PO Resp. 42– 47. At the Oral Hearing, however, Patent Owner withdrew this argument. Tr. 32:4–11. Regardless, we find that Petitioner has provided sufficient evidence of a motivation to combine. Petitioner explains that a person of ordinary skill in the art would be motivated to combine Goldwasser’s disclosure with Ulmer’s because both references “address the same problem: providing simultaneous recording and playback as a mechanism to allow a viewer to skip commercials.” Pet. 25. Petitioner elaborates that due to extensive overlap between the systems of Ulmer and Goldwasser, a person of ordinary skill in the art would have been led to use various design details from Goldwasser’s teachings in a combination of Ulmer’s and Goldwasser’s systems. Id. at 25–26 We find that Petitioner’s assertions and evidence provide rational underpinning for a conclusion that it would have been obvious to combine the teachings of Ulmer and Goldwasser. And we are persuaded Petitioner’s assertions and evidence show sufficiently that the resulting system would include each of the limitations of independent claim 1 and dependent claim 2. Claim 2 depends from claim 1 and recites that the claimed apparatus “further compris[es] a remote control unit, and wherein said keyboard is housed in said remote control unit.” Petitioner notes that Ulmer explicitly discloses that its system includes a remote control unit. Id. at 28, 37, 51. We agree with Petitioner’s analysis of the recited art’s disclosures as applied to claim 2. Accordingly, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of independent claim 1 and dependent claim 2 over Ulmer and Goldwasser.” slip op. at 17

  • Obviousness (§103) › KSR rationalesDecided for petitioner

    “In addition, we also find persuasive Petitioner’s argument that it would have been an obvious design choice to use play and record buttons on a remote control to control Ulmer’s device. See Pet. 14 (citing Ex. 1013 ¶ 38). Petitioner has provided evidence that such remote controls were well known at the time of the application for the ’444 patent. See Reply 15 (citing Ex. 1013 ¶¶ 25, 27–28; Ex. 1004); Tr. 10–11 (citing Ex. 1013 ¶ 28; Ex. 1004, 2; Ex. 1008, 2:29–34). Based on this evidence, we are persuaded it would have been within the knowledge and abilities of one of ordinary skill in the art to control Ulmer’s device with a remote control that includes play and record buttons.” slip op. at 16

  Patent outcomesUS 5,930,444 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,930,444

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