- Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Rehearing deniedPTAB · Aug 22, 2018 · IPR2018-00392 · APJ Stephen C Siu · IPR · Rehearing
The Board denied rehearing of its denial of institution on the obviousness ground over Slemmer and Vu, finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Director may not authorize an inter partes review to be instituted unless the Director determines 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). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3
- BurdenDecided for patent owner
“35 U.S.C. § 314(a). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“supporting Petitioner’s position that it would have been obvious to one of ordinary skill in the art to have combined the cited references. Req. Reh’g. 8–10. In particular, Petitioner reiterates previous arguments presented in the Petition such as “Vu is one of the first prior art references to teach the handshake” but that “other prior art references also teach it.” Req. Reh’g 8. These arguments were previously addressed. Decision 6–7. Although Petitioner may disagree with our resolution of the arguments that Petitioner presented in its Petition, such arguments were considered fully in our Decision.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,725,899 - Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Rehearing deniedPTAB · Aug 22, 2018 · IPR2018-00376 · APJ Stephen C Siu · IPR · Rehearing
The Board denied rehearing and upheld denial of institution on the Slemmer and Vu obviousness ground because the petition did not show a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co.,, 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Director may not authorize an inter partes review to be instituted unless the Director determines 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). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“supporting Petitioner’s position that it would have been obvious to one of ordinary skill in the art to have combined the cited references. Req. Reh’g. 8–10. In particular, Petitioner reiterates previous arguments presented in the Petition such as “Vu is one of the first prior art references to teach the handshake” but that “other prior art references also teach it.” Req. Reh’g 9. These arguments were previously addressed. Decision 7–8. Although Petitioner may disagree with our resolution of the arguments that Petitioner presented in its Petition, such arguments were considered fully in our Decision.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“construction for the term ‘TCP connection hand shake completion data,’ which resulted in an incorrect determination.” Req. Reh’g. 5. In particular, Petitioner now proposes a broadest reasonable construction of the term “TCP connection hand shake completion data” to mean “two devices initiating a communication session by the first device sending information to a second device, and the second device then responding to the first device.” Req. Reh’g. 7. Based on this newly proposed construction of the term “TCP connection hand shake completion data,” Petitioner argues that Vu discloses this feature. Req. Reh’g. 6–8. Under 37 C.F.R. § 42.71(d), Petitioner must “identify all matters [Petitioner] believes the Board misapprehended or overlooked.” Petitioner did not present this proposed construction in the Petition. See generally Req. Reh’g.; see generally Pet. We could not have “misapprehended or overlooked” what was not presented.” slip op. at 4
Claim construction§ 103 obviousnessPatents in suitUS 8,266,266 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.Rehearing deniedPTAB · Oct 30, 2017 · IPR2017-00730 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of institution on claims 1–5, 12–14, and 19–20 over Saito and Swain, and claims 3 and 13–14 over Saito, Swain, and Kim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW 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 specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“Ex. 1005 ¶ 101. Paragraph 101 describes Figure 7. See id. ¶¶ 100, 101. Recognizing that the timing of signals DQ-Pre (between memory controller and data buffer 300 on connectors 120) and the timing of signals DQ-Post (between data buffer 300 and memory chips 200 on data lines L1 or L2) is “off” because “data DQ is buffered by the data register buffer 300,” Saito teaches that “it is required to perform a timing adjustment between the memory chips 200 and the data register buffer 300 and a timing adjustment between the data register buffer 300 and the memory controller in a separate manner.” Ex. 1005 ¶ 101. This paragraph, therefore, does not teach that retiming from CL=5 to CL=6 is based on “time intervals from the leveling operations,” as Petitioner contends. Req. Reh’g 7. To the contrary, it explicitly teaches the necessity of a “separate manner” for adjusting timing between a data buffer and memory chip (i.e., for “signals received by the each respective buffer circuit during a memory write operation,” as recited in claim 1) and adjusting timing between a data buffer and a memory controller (i.e., for “transmission of a respective set of read data signals received from the respective group of memory devices,” as recited in claim 1).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We disagree. Neither paragraph teaches that the re-timing from CL=5 to CL=6 is “based on signals received by the each respective buffer circuit during a memory” read or write “operation,” as required by the claims. Paragraph 101 of Saito is reproduced below. Although the data DQ-Pre and the data DQ-Post have the same content, because the data DQ is buffered by the data register buffer 300, the timing is off between the data DQ-Pre and the data DQ-Post. The same is true for a relationship between the data strobe signal DQS-Pre and the data strobe signal DQS-Post. Therefore, in the present embodiment, it is required to perform a timing adjustment between the memory chips 200 and the data register buffer 300 and a timing adjustment between the data register buffer 300 and the memory controller in a separate manner. Details on the timing adjustments will be described later. Ex. 1005 ¶ 101. Paragraph 101 describes Figure 7. See id. ¶¶ 100, 101. Recognizing that the timing of signals DQ-Pre (between memory controller and data buffer 300 on connectors 120) and the timing of signals DQ-Post (between data buffer 300 and memory chips 200 on data lines L1 or L2) is “off” because “data DQ is buffered by the data register buffer 300,” Saito teaches that “it is required to perform a timing adjustment between the memory chips 200 and the data register buffer 300 and a timing adjustment between the data register buffer 300 and the memory controller in a separate manner.” Ex. 1005 ¶ 101. This paragraph, therefore, does not teach that retiming from CL=5 to CL=6 is based on “time intervals from the leveling operations,” as Petitioner contends. Req. Reh’g 7. To the contrary, it explicitly teaches the necessity of a “separate manner” for adjusting timing between a data buffer and memory chip (i.e., for “signals received by the each respective buffer circuit during a memory write operation,” as recited in claim 1) and adjusting timing between a data buffer and a memory controller (i.e., for “transmission of a respective set of read data signals received from the respective group of memory devices,” as recited in claim 1).” slip op. at 3
- Strike new argumentNew argument disregardedDenied
“These arguments were not in the Petition so we could not have misapprehended or overlooked them. To the extent that Petitioner is arguing that these paragraphs of our Decision indicate a misapprehension of what was argued in the Petition, we disagree. Specifically, we are unpersuaded by Petitioner’s contention that Saito’s teaching to use time A to time reception of read data by “input buffer circuit INB and the like” (Ex. 1005 ¶ 149) teaches using that same interval “to time transmission” of read data, as claimed, merely because data is received by that input buffer circuit before, at some later point, being transmitted to the memory controller. Req. Reh’g. 8–9. We also are not persuaded that Saito’s use of “and the like” extends to the timing of the output of read data from buffer 300 in the manner argued. Req. Reh’g 9–11. This argument is particularly unpersuasive because, as our Decision points out (Dec. 13–14), Saito discloses an alternative to timing the output of read data from data buffer 300, which is a read leveling operation by the memory controller. Thus, although “Petitioner does not rely on those data buffer-memory controller operations for any of its arguments” (Req. Reh’g 13), they are nevertheless relevant because they corroborate that Saito does not teach its data buffer 300 using a time interval “based on signals received by [it]” for the purpose of “tim[ing] transmission of a respective set of read data signals.”” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,128,632 - Apple Inc. v. Virnetx Inc.All claims unpatentablePTAB · Jul 29, 2015 · IPR2014-00483 · APJ Karl D Easthom · IPR · Final written decision
Claims 1, 7, 8, 10, 12, 13, 15, and 17 are unpatentable as anticipated by Provino; claims 2–5 and 18 are unpatentable as obvious over Provino with Kosiur and Xu, respectively.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Apple Incorporated (“Petitioner”) also filed a Petition (Paper 2) seeking an inter partes review of claims 1–5, 7, 8, 10, 12, 13, 15, 17, and 18 of the ’274 patent pursuant to 35 U.S.C. §§ 311–319 in Case IPR2014- 00483 (“’483 IPR”). Noting that Microsoft Corporation’s Petition and Apple Incorporated’s Petition were substantially identical in material aspects, the Board instituted an inter partes review of claims 1–5, 7, 8, 10, 12, 13, 15, 17, and 18, and joined IPR2014-00483 with IPR2014-00403 pursuant to 35 U.S.C. § 315(c). See ’483IPR, Paper 11, 6–9.2 Thereafter, pursuant to a settlement agreement, the present proceeding was terminated with respect to Microsoft Corporation only. Paper 38.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDisclaimer not foundDecided for petitioner
“proceeding somehow limits the claims here that Patent Owner otherwise could have moved to amend under a broadest reasonable construction, Patent Owner’s arguments were not “unambiguous,” and do not “call for the application of prosecution history disclaimer.” See PO Resp. 17–18. There was no “express disclaimer,” Bigio, 381 F.3d at 1325, or “unambiguous disavowal[],” Grober, 686 F.3d at 1341.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“As the latter two sentences show, the ’274 patent Specification describes placing field hopping data (i.e., an address hopping technique, see id. at 46:64–47:11), into a payload portion of a data packet. The Specification does not tie “tunneled” packets into a specific requirement that requires a change in formatting––above and apart from any protocol formatting or structural change that may happen to, or does, occur by placing one type of data field (header) into another type of data field (payload). After discussing the insertion of the field hopping data into the payload portion, the Specification then describes that these “modified message packets preferably conform to the UDP protocol,” or “[a]lternatively . . . can conform to the TCP/IP protocol or the ICPM protocol.” Id. at 50:30–35. In other words, if there is a change in a protocol in these disclosed examples––for example, from one protocol format to a UDP protocol format––any change appears to come in preferred embodiments and after the packets have been modified (i.e., tunneled). Accordingly, based on the foregoing discussion, we modify our construction as set forth in the Institution Decision, such that “tunnel packeting” means “placing data or information from one field, such as a header, into another packet field, such as a payload, wherein the two fields normally have different structures or formats, or placing data structured in one format within the format of another protocol.”” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In any event, to the extent it is material, the ’274 patent Specification employs the term “user’s computer” in a “conventional scheme . . . shown in FIG 25. A user’s computer 2501 includes a client application 2504 (for example a web browser) . . . .” Ex. 1001, 38:61–63. Although Patent Owner refers to this “conventional” computer as “another embodiment,” the ’274 patent Specification disparages the “conventional architecture” that employs a user’s computer, because it is not secure enough. See Ex. 1001, 39:4–13; PO Resp. 21. In general, the ’274 patent Specification states that “[t]he present invention” involves a “client computer” with a “client application” that “communicates with a server.” See Ex. 1001, 7:40–44. This description of “[t]he present invention” does not mention a “user’s computer.” Therefore, the ’274 patent Specification does not repeatedly treat a “client computer” and a “user’s computer” as the same. The broadest reasonable construction of a client computer is a computer associated with a client.” slip op. at 23
Patent outcomesUS 7,987,274 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,987,274 - Medtronic, Inc. v. Nuvasive, Inc.All claims unpatentablePTAB · Feb 11, 2015 · IPR2013-00506 · APJ Lora M Green · IPR · Final written decision
Claims 1–14, 19, 20, and 23–27 are unpatentable under § 103(a) over the identified combinations of SVS, Baccelli, Michelson, and Telamon.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim terms also are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If an inventor acts as his or her own lexicographer, the definition must be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). In the Institution Decision, we “interpret[ed] the claim language consistently with its plain and ordinary meaning, when read in view of the Specification.” See, e.g., Dec. Inst. 6. The parties appear to agree on the interpretation of the claim terms, and we see no reason to depart from our interpretation in the Institution Decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“be inappropriate or at least unnecessary in the medial plane for PLIF [posterior lumbar interbody fusion] implants.” Id. at 34 (citing Ex. 2020 ¶¶ 45, 98–99, and 102). We are not persuaded by Patent Owner’s argument, because the question is whether it would have been obvious to one of ordinary skill in the art to combine the cited references, and not whether any specific implants on the market contain a radiopaque marker in a central region.” slip op. at 10
- Obviousness (§103) › KSR rationalesDecided for petitioner
“not find Patent Owner’s contentions persuasive SVS discloses that “[t]he Vertebral Spacer is a vertebral body replacement device intended for use in the thoracolumbar spine (T1-L5) to replace a collapsed, damaged, or unstable vertebral body due to tumor or trauma (i.e., fracture).” Ex. 1106, 1. Hence, the “intended purpose” of the implant of SVS is to replace components within vertebrae. Telamon discloses a process of inserting an implant into an intervertebral space to achieve “decompression of the neural elements” and “satisfactory immobilization of the grafted interspace.” Ex. 1108, 9. Hence, the “intended purpose” of the implant of Telamon is to achieve immobilization of the grafted interspace (and/or decompression of neural elements). We disagree with Patent Owner that Michelson, which discloses an implant that “engage[s] more of the adjacent vertebrae,” and, thus, “permits greater stability” (Ex. 1105, 3:49–51) would have “fully eliminated” the purpose of the SVS or Telamon implants of replacing collapsed, damaged, or unstable intervertebral components or immobilizing the interspace. Instead, the intended purpose of Michelson (a spinal fusion implant) appears to be the same as the intended purpose of either of SVS or Telamon, i.e., to achieve immobilization of the grafted interspace.” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“Evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). “For objective evidence to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). In order to establish a proper nexus, the patent owner must offer proof that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter. See Microsoft v. Proxyconn, Inc., Case IPR2012-00026, slip op. at 4 (PTAB Mar. 8, 2013) (Paper 32). slip op. at 20
Patent outcomesUS 8,361,156 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,361,156 - Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentablePTAB · Jan 15, 2015 · IPR2013-00431 · APJ Stephen C Siu · IPR · Final written decision
Claims 1–6 and 8–15 are unpatentable over Goodman and Wahlquist; claims 7 and 16 are unpatentable over Goodman, Wahlquist, and Lyons under § 103(a).
RulingsFinal written decision- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“of the ’186 patent.” PO Resp. 33. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“the combination of the known system of Goodman and the known system of Wahlquist would have entailed [no] more than a combination of known systems to perform their known functions to achieve a predictable result. . . . “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Dec. on Inst. 13 (quoting KSR, 550 U.S. at 416). Patent Owner does not demonstrate persuasively that the combination of Goodman and Wahlquist would have entailed any more than combining familiar elements to achieve a predictable result. Therefore, we are not persuaded by Patent Owner’s argument.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner does not demonstrate persuasively that “Wahlquist’s system is a computer diagnosis system in which a help desk representative seeks to eliminate communications with a user.” Id. at 34 (citing Ex. 1003, 3:14–20; Ex. 2006 ¶¶ 122–123). Rather, Wahlquist discloses a system and method in which “a user calls the customer service help desk” who “is then asked to identify the general nature of the problem.” Ex. 1003, 2:7–16. The representative then “instructs the user” as to what actions to take. Id. at 2:6– 7, 15–16, 26. One of ordinary skill in the art would have understood that a user calling a help desk and identifying a problem to the representative, as well as the representative instructing the user, would have constituted “communication” between the user and the representative. The system of Wahlquist depends on “communications with a user” because without such “communication,” the representative would not be apprised of the user’s issues and would be unable to instruct the user as to the proper action to take. In addition, in Wahlquist, an application “created by the representative” “establishes communications with the user’s system” and “downloads the case and script files to the user’s computer.” Ex. 1003, 2:32, 36–40. One of ordinary skill in the art would have understood that establishing a “communication” with a user’s system and downloading script files to the user’s computer via the “communication” would have constituted a “communication” between devices. While Patent Owner argues that Wahlquist “eliminates communication with the user,” Patent Owner does not explain sufficiently how such a system that relies on “communication” actually “eliminates communication with the user.” PO Resp. 35.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Stone) performed an obviousness analysis improperly by “us[ing] the claims of the Bosch patents as a template to try and fit combinations of references into the claims” and “improperly used the teachings of the Bosch specifications to identify the goals and motivations for combining the prior art.” PO Resp. 18 (citing Ex. 2061, 314:5–20; 256:25–257:11; 313:1–20). Hence, Patent Owner argues that Dr. Stone’s analysis is based improperly on hindsight reasoning. However, “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Patent Owner does not indicate how Dr. Stone’s analysis relies on knowledge that was beyond the level of ordinary skill in the art at the time the claimed invention was made. For example, Dr. Stone relies on Goodman’s disclosure of “a personal health network comprising a host computer which is in communication with one or more patient nodes over a communication link” and on Wahlquist’s disclosure of “an application on the help desk computer that is used to select” tests for a user’s computer. Ex. 1007 ¶ 121. We do not see, and Patent Owner does not assert or demonstrate persuasively, how either of these disclosures (neither of which was gleaned only from the ’186 patent specification) would have been beyond the level of ordinary skill in the art.” slip op. at 29
Patent outcomesUS 7,921,186 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,921,186 - Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentablePTAB · Jan 15, 2015 · IPR2013-00451 · APJ Miriam L Quinn · IPR · Final written decision
Claims 1, 2, and 5–10 are unpatentable under §103 over Cohen and Wahlquist, and over Cohen, Wahlquist, and Jacobs.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“The Board interprets claims using the “broadest reasonable construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b). We presume that claim terms have their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.”) (citation and internal quotation marks omitted).” slip op. at 6
- Skill levelSkill level board ownOther
“Petitioner asserts that the level of ordinary skill in the art has the following education and experience: Bachelor’s degree in Electrical Engineering or Computer Science, or its equivalent, and at least 2 years of experience with the design and programming of patient monitoring systems and at least 1 year of experience with the design or programming of networked systems. Ex. 1008 ¶ 22. Patent Owner’s declarant, Dr. David, disagrees with the above assertion in that a person of ordinary skill in the art would not have the 1 year of experience with the design and programming of networked systems. Ex. 2009 ¶ 26. The disagreement appears to be immaterial to the arguments presented by Patent Owner, however, because Dr. David declares that this additional experience would not affect his opinions. Id. Accordingly, we need not determine which of the alleged education and experience proffered by the parties is correct. We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima, 261 F.3d at 1355. From the Cohen reference, which Patent Owner agrees is in the field of endeavor of the invention in question (Tr. 29:2130:2), we understand that the level of ordinary skill in the art, at a minimum, requires some amount of experience with the configuration of telecommunications hardware systems, such as telephone and personal computer systems, for communicating with a central monitoring system, which is computer-implemented technology. See Ex. 1002, 3:1724; see also 3:4357 (describing the features of the computer-implemented technology at-issue in Cohen: computer processor and software, telecommunication lines, voice signal interpretation, database and report generation, voice generation, speech recognition, speech and digit recognizer, printer, and local area network (LAN)). With this level of ordinary skill in mind, we now turn to the analysis of the differences between the asserted prior art references and the subject matter recited in the claims-at-issue.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“endeavor nor reasonably pertinent to the problems addressed by the ’469 patent. PO Resp. 21. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“First, an obviousness “analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. It is, therefore, unpersuasive for Patent Owner to argue that Petitioner’s proffered rationales for the combination fail because neither Cohen nor Wahlquist teaches explicitly that they could be combined with other teachings. See PO Resp. 31, 3738 (arguing the lack of evidence that Cohen is “incomplete” and that nothing in Wahlquist would teach the combination).6 Further, Patent Owner narrowly focuses on Wahlquist being directed solely to eliminating slow and unsatisfactory communications with users. PO Resp. 31. As stated above in the analogous art analysis, Wahlquist is directed to more than just eliminating communications with users. The alleged “elimination” is not supported by a thorough reading of Wahlquist. We find, instead, that Wahlquist teaches prompting users with keystrokes during the diagnosis of their computer, a process that, from the standpoint of the user, is greatly simplified compared to the prior art systems described by Wahlquist, and consistent with the problems described in Cohen and the ’469 patent of simplifying user interactions with user devices.” slip op. at 19
Patent outcomesUS 7,587,469 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,587,469 - Hayward Industries, Inc. v. Pentair Water Pool And SpA, Inc.All claims unpatentablePTAB · Nov 19, 2014 · IPR2013-00287 · APJ James B Arpin · IPR · Final written decision
Claim 1 is unpatentable under § 103(a) over Struthers and the TI DSP Motor Solutions Guide; Petitioner’s motion to exclude evidence is denied.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“1001, col. 17, ll. 36–39, 44–45). Accordingly, Patent Owner argues that the patentee has given a specific definition to the phrase “minimum non-zero flow speed of the motor” in the Specification and that phrase means a “minimum motor speed capable of producing positive water flow in the water distribution system.” Id. For the reasons set forth below, we are not persuaded that the patentee acted as a lexicographer and set forth this definition for the claim phrase. First, we note that the Specification states that controller 24 “can take into account the motor speed required for the pump 10 to open any check valves and produce a positive water flow in the water distribution system” and that this required motor speed “can be referred to as . . . the minimum non-zero flow speed.” Ex. 1001, col. 17, ll. 36–39, 44–45 (emphasis added). We are not persuaded that the Specification sets forth, with “reasonable clarity, deliberateness, and precision,” the definition for the phrase proposed by Patent Owner. Paulsen, 30 F.3d at 1480. Thus, we determine that the Specification only describes a particular embodiment, but does not establish a clear, deliberate, and precise definition of the phrase.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are persuaded by Petitioner that the “minimum non-zero flow speed of the motor” is determined by the desired flow of water into the water distribution system. Pet. Reply 1. Consequently, we construe the phrase “minimum non-zero flow speed of the motor” to mean “the minimum speed for achieving a desired flow.” Id.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Struthers to achieve the pump controller of claim 1. PO Resp. 24–26. In particular, Patent Owner argues that “[t]he methods taught by Struthers include reducing the pump’s speed while increasing the pump’s torque, in an attempt to move the clog through the grinder pump.” Id. at 24–25 (citing Ex. 1012, col. 8, ll. 17–39). On the other hand, Patent Owner argues that “[t]he ’051 Patent addresses the problem of how to save time and energy by always starting a pump at a speed that will result in some flow through the pump and into the particular hydraulic system in which the pump is installed.” Id. at 25. As the U.S. Supreme Court explained, however, in performing the obviousness analysis, adjudicative bodies should not look only to the problem that the patentee was trying to solve. KSR, 550 U.S. at 420. “Under the correct analysis, any need or problem known in the field . . . and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. Because we determine that the recited pump controller of claim 1 addresses problems relevant to the teachings of Struthers, those problems may provide a reason to combine the teachings of Struthers and the TI DSP Motor Solutions Guide, in the manner proposed by Petitioner. Patent Owner further argues that “the combination of Struthers and [the TI DSP Motor Solutions Guide] does not teach the claimed division of responsibility between the digital signal processor and the microcontroller, such that any conclusion to the contrary relies, respectfully, on an impermissible hindsight reconstruction [of the pump controller recited in claim 1.]” PO Resp. 24; see id. at 33–38. We note that Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill [in the art] at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper . In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). For the reasons set forth above, we are persuaded that Petitioner has shown that Struthers and the TI DSP Motor Solutions Guide teach or suggest all of the limitations recited in claim 1, including the functions attributed to the digital signal processor and the microcontroller. Moreover, Struthers teaches that “it will be understood that some specific functions may be assigned to either the control board 22 or the microprocessor 24, depending on the specific construction and programming of each of those components in a particular pump unit 10.” Ex. 1012, col. 3, ll. 49–53; see Tr. 7:23–9:18. Thus, we are persuaded that the combination of the teachings of Struthers and the TI DSP Motor Solutions Guide does not rely on impermissible hindsight and that Petitioner has presented adequate reasons for combining the teachings of Struthers and the TI DSP Motor Solutions Guide to achieve the pump controller recited in claim 1 of the ’051 Patent.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill [in the art] at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper . In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). For the reasons set forth above, we are persuaded that Petitioner has shown that Struthers and the TI DSP Motor Solutions Guide teach or suggest all of the limitations recited in claim 1, including the functions attributed to the digital signal processor and the microcontroller. Moreover, Struthers teaches that “it will be understood that some specific functions may be assigned to either the control board 22 or the microprocessor 24, depending on the specific construction and programming of each of those components in a particular pump unit 10.” Ex. 1012, col. 3, ll. 49–53; see Tr. 7:23–9:18. Thus, we are persuaded that the combination of the teachings of Struthers and the TI DSP Motor Solutions Guide does not rely on impermissible hindsight and that Petitioner has presented adequate reasons for combining the teachings of Struthers and the TI DSP Motor Solutions Guide to achieve the pump controller recited in claim 1 of the ’051 Patent.” slip op. at 24
Patent outcomesUS 7,704,051 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,704,051 - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.All claims unpatentablePTAB · Jul 10, 2014 · IPR2013-00208 · APJ Stephen C Siu · IPR · Final written decision
Claims 1–8 were held unpatentable under §103 over Jacobson, Leu, and Brantigan, with Frey for claims 2–7; the Michelson ’247 ground was not proven.
RulingsFinal written decision- BurdenOther
“For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–8 of the ’997 patent are unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues that an “axis lying in a coronal plane” should be construed as an axis that is lying in “a plane at right angles to a sagittal plane.” PO Resp. 10–11. Petitioner does not contest Patent Owner’s assertion that one of ordinary skill in the art would understand that a “coronal plane” would be oriented “at right angles to a sagittal plane.” Pet. Reply 1. Thus, no further construction of this term is necessary.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“implant” should be construed such that “the composition of the implant does not include any bone” because “the prefix ‘non’ is commonly understood to exclude the thing specified after the word.” PO Resp. 12–13, citing Ex. 2038 ¶ 63. We agree that one of ordinary skill in the art would have understood that the prefix “non” indicates that the implant contains material that is not bone. Patent Owner does not show persuasively, however, that, under a broad but reasonable construction, one of ordinary skill in the art would have understood that it cannot contain any component derived from bone. Hence, we broadly, but reasonably, construe a “non-bone interbody instraspinal implant” as an implant that contains at least one component that does not contain bone.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“what it says (i.e., to mean “lateral”), at least because it would have been reasonable for one of ordinary skill in the art to have construed a term (i.e., “lateral”) with a plain and common definition. Patent Owner’s observation that a construction of the term “lateral” that was in use at the time of the invention included a “direct lateral” approach (as understood in this proceeding) further supports Dr. Jacobson’s testimony that one of ordinary skill in the art would have understood the term “lateral” to mean “direct lateral,” as that term is presently construed in the instant proceedings. Also, we note that claim 1 does not recite the term “direct lateral,” and Patent Owner does not assert that the ’997 patent specification discloses the term “direct lateral.” The absence of the term “direct lateral” in the ’997 patent further supports that one of ordinary skill in the art at the time of the invention would not have used (or understood) the term “direct lateral.” In addition to Jacobson’s explicit disclosure of, for example, “laterally inserting a cannula,” Jacobson discloses figures that illustrate what Patent Owner now refers to as a “direct lateral” approach (i.e., lateral insertion along a path having an axis lying in a coronal plane). Ex. 1004, 2:26–27, Figs. 3–8. We note that in each of the figures of Jacobson, the outer side periphery of the instrument(s) inserted “laterally” into the intervertebral space, as illustrated, are depicted by parallel lines that are oriented at 90 degrees from a horizontal surface. Based on the depiction of the outer side contours of the instrument(s) as being oriented 90 degrees from a horizontal surface, one of ordinary skill in the art would have understood that the instrument(s) are perpendicular to an underlying horizontal surface in the superior-inferior perspective (with respect to the orientation of the patient). More importantly, as the outer side contours of the instruments are parallel in these perspectives, one of ordinary skill in the art would have understood the instruments, as illustrated by Jacobson, to be perpendicular to an underlying horizontal surface in the medial-lateral perspective (with respect to the orientation of the patient – i.e., that the orientation of the instrument(s) is “direct lateral,” as Patent Owner uses that phrase, and not “posterolateral” or “anterolateral”). That is true because, assuming the instrument(s) illustrated in Jacobson are cylindrical, if the instrument(s) were angled away from the viewer, the outer side contours of the instrument(s) at the point of insertion into the intervertebral space would appear farther away from each other as compared to the outer side contours of the instrument(s) at the point farthest from the point of insertion into the intervertebral space (i.e., the proximal end of the instrument(s), which would be located farther away from the viewer). Likewise, if the instrument(s) were angled toward the viewer, the outer side contours of the instrument(s) at the point of insertion into the intervertebral space would appear closer to each other as compared to the outer side contours of the instrument(s) at the point farthest from the point of insertion into the intervertebral space (i.e., the proximal end of the instrument(s), which is located closer to the viewer). Moreover, as Petitioner’s declarant (Dr. Paul McAfee) points out, an anterior cross sectional view of the instrument(s) in-situ (i.e., Ex. 1004, Fig. 6) shows an even and symmetrical view of the instruments throughout the length of the instrument(s). See, e.g., Ex. 1029 ¶ 38. Dr. McAfee’s testimony further supports that Jacobson discloses that the instruments are inserted along a path having an axis lying in a coronal plane passing through a lateral aspect and a medial aspect of the two adjacent vertebrae, as recited in claim 1 (i.e., the “direct lateral” approach as presently understood in the instant proceedings).” slip op. at 8
Patent outcomesUS 8,251,997 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,251,997 - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.Some claims unpatentablePTAB · Jul 10, 2014 · IPR2013-00206 · APJ Stephen C Siu · IPR · Final written decision
Claims 17–23 were held unpatentable as obvious over Jacobson, Leu, and Brantigan; claims 9–16 and 24–30 were not shown unpatentable on the asserted obviousness grounds.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“ordinary skill in the art to have combined the teachings of Jacobson, Leu, and Brantigan. PO Resp. 50–53. Jacobson discloses advancing instruments laterally into the disc space to perform a “fusion” procedure. Ex. 1004, 5:1– 4, 6:11–13. Leu discloses fusion of the lumbar spine by introducing an “interbody graft” into the disc space. Ex. 1005, p. 603. Brantigan, like Leu, discloses “prosthetic implant devices” that are “suitable for . . . lateral placement in any area of the spine.” Ex. 1006, 2:56–58. We agree with Petitioner that the combination of the known element of performing a spinal fusion procedure by laterally advancing instruments into the disc space (Jacobson) with the known element of using an “interbody graft” in a spinal fusion procedure (Leu and Brantigan) would have resulted in no more than the predictable and expected result of performing a spinal fusion procedure (Jacobson) that includes inserting an implant into a disc space (Leu or Brantigan). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Jacobson, Leu, Brantigan - combinability Patent Owner argues that it would not have been obvious to one of ordinary skill in the art to have combined the teachings of Jacobson, Leu, and Brantigan. PO Resp. 50–53. Jacobson discloses advancing instruments laterally into the disc space to perform a “fusion” procedure. Ex. 1004, 5:1– 4, 6:11–13. Leu discloses fusion of the lumbar spine by introducing an “interbody graft” into the disc space. Ex. 1005, p. 603. Brantigan, like Leu, discloses “prosthetic implant devices” that are “suitable for . . . lateral placement in any area of the spine.” Ex. 1006, 2:56–58. We agree with Petitioner that the combination of the known element of performing a spinal fusion procedure by laterally advancing instruments into the disc space (Jacobson) with the known element of using an “interbody graft” in a spinal fusion procedure (Leu and Brantigan) would have resulted in no more than the predictable and expected result of performing a spinal fusion procedure (Jacobson) that includes inserting an implant into a disc space (Leu or Brantigan). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“of ordinary skill in the art to have combined the teachings of Brantigan with any of Jacobson or Leu because, according to Patent Owner, Brantigan “teaches away from sizing an implant to rest on the apophyseal ring or be sized to occupy substantially the full transverse width of adjacent vertebral bodies.” PO Resp. 51–52, 55–56. This issue was discussed previously above. Patent Owner also argues that it would not have been obvious to one of ordinary skill in the art to have combined the teachings of Brantigan with any of Jacobson or Leu because the “cannulae disclosed by Jacobson and Leu are too narrow to accommodate Brantigan’s implant,” that “a person of ordinary skill in the art would not be able to insert [Brantigan’s] implant in Jacobson’s [system],” and that “the shape of the Brantigan implant is not conducive to insertion through a cannula or similar surgical instrument [as disclosed by Jacobson or Leu].” PO Resp. 52–53. In other words, Patent Owner argues that the combination of Jacobson, Brantigan, and Leu would not have been obvious to one of ordinary skill in the art because the prior art systems are not physically combinable (i.e., Brantigan’s implant allegedly cannot be physically combined with the cannula of either Jacobson or Leu). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”). We are thus not persuaded by Patent Owner’s argument.” slip op. at 24
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusDecided for patent owner
“Secondary considerations We recognize that evidence of secondary considerations must always be considered en route to the determination of obviousness, but its existence alone does not control the conclusion of obviousness. Richardson-Vicks v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997). The weight given to evidence of secondary considerations is dependent upon whether there is a nexus between the merits of the claimed invention and the evidence offered. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983).” slip op. at 25
Patent outcomesUS 8,251,997 mixed§ 103 obviousnesscites KSRPatents in suitUS 8,251,997
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.