• Apple Inc. v. Sightsound Technologies, LLCAll claims unpatentable
  PTAB · Oct 7, 2014 · CBM2013-00023 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1, 64, and 95 were not shown anticipated by the CompuSonics system but were held unpatentable as obvious over the CompuSonics publications.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner

    “memory” to a hard disk. The Specification describes the use of a hard disk in the context of describing a preferred embodiment, not defining the “second memory” recited in the claims. See, e.g., id. at col. 3, l. 55–col. 4, l. 28 (describing hard disk 60 of the user in a section titled “Description of the Preferred Embodiment”); col. 6, ll. 10–16 (stating that the description and drawings “shall be interpreted as illustrative, and not in a limiting sense”). We do not see anything in the Specification indicating that the disclosed method requires a hard disk, as opposed to merely treating it as a preferred type of memory. Nor are we persuaded that the Specification limits “second memory” to only non-removable devices. The Specification does not use the term “removable” or state that any memory must be incapable of being removed. Indeed, hard disks, which are the preferred embodiment disclosed in the Specification, were available at the time of the ’440 patent as removable and non-removable devices, as SightSound’s declarant, Mr. Snell, acknowledges. See Ex. 4366 at 107:20–108:2. Further, the Specification’s description of disadvantages of certain types of removable storage media (i.e., records, tapes, and CDs) does not mean necessarily that the term “second memory” excludes such devices. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“Mere criticism of a particular embodiment encompassed in the plain meaning of a claim term is not sufficient to rise to the level of clear disavowal.”). The Specification does not indicate that the identified disadvantages extend to all removable media or that the disadvantages occur specifically because the devices are removable. See Ex. 4301, col. 1, l. 24–col. 2, l. 21. To the contrary, some of the identified disadvantages, like limited capacity and playback capability, have nothing to do with whether the device can be removed. See id. at col. 1, ll. 27–44. Thus, we do not see any basis in the Specification for limiting “second memory” to only non-removable devices.” slip op. at 12

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

    “persuaded that they disclose a single, publicly known system that anticipates the challenged claims. Anticipation requires that every limitation of the claim at issue be disclosed in a prior art disclosure and “arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. 4 Section 18(a)(1)(C) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), provides that a covered business method patent review may be based on “prior art that is described by section 102(a)” as in effect before March 16, 2013. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id.; see also Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1351–52 (Fed. Cir. 2008) (concluding that a set of eleven specifications pertaining to the same telecommunication standard did not constitute a “single prior art reference”). Apple does not argue that a single prior art reference discloses all limitations of the challenged claims, instead relying on different materials as allegedly disclosing different limitations. See Pet. 50–64. The cited materials undoubtedly are similar, as they all describe technology developed by CompuSonics and pertain generally to the recording of digital audio or video. There are differences, however. For example, the materials describe different models of DSPs with slightly different features and capabilities. Certain materials discuss the recording of digital audio on DSP-1000 series devices with floppy disks, e.g., Ex. 4316, whereas others disclose storage on DSP-2000 series devices with a hard disk, e.g., Ex. 4324. Given that the prior art teachings and suggestions are found in references describing a family of device models, as opposed to a single device model, we find that one skilled in the art would not have at once envisaged the claimed arrangement of known components in a manner consistent with anticipation under 35 U.S.C. § 102(a). Apple has not demonstrated, by a preponderance of the evidence, that claims 1, 64, and 95 of the ’440 patent are anticipated by the CompuSonics system.” slip op. at 22

  • BurdenDecided for patent owner

    “persuaded that they disclose a single, publicly known system that anticipates the challenged claims. Anticipation requires that every limitation of the claim at issue be disclosed in a prior art disclosure and “arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. 4 Section 18(a)(1)(C) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), provides that a covered business method patent review may be based on “prior art that is described by section 102(a)” as in effect before March 16, 2013. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id.; see also Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1351–52 (Fed. Cir. 2008) (concluding that a set of eleven specifications pertaining to the same telecommunication standard did not constitute a “single prior art reference”). Apple does not argue that a single prior art reference discloses all limitations of the challenged claims, instead relying on different materials as allegedly disclosing different limitations. See Pet. 50–64. The cited materials undoubtedly are similar, as they all describe technology developed by CompuSonics and pertain generally to the recording of digital audio or video. There are differences, however. For example, the materials describe different models of DSPs with slightly different features and capabilities. Certain materials discuss the recording of digital audio on DSP-1000 series devices with floppy disks, e.g., Ex. 4316, whereas others disclose storage on DSP-2000 series devices with a hard disk, e.g., Ex. 4324. Given that the prior art teachings and suggestions are found in references describing a family of device models, as opposed to a single device model, we find that one skilled in the art would not have at once envisaged the claimed arrangement of known components in a manner consistent with anticipation under 35 U.S.C. § 102(a). Apple has not demonstrated, by a preponderance of the evidence, that claims 1, 64, and 95 of the ’440 patent are anticipated by the CompuSonics system.” slip op. at 22

  • ExcludeMotion to exclude, deniedMixed

    “Apple argues that Mr. Snell is not qualified to offer opinions on the alleged commercial success of the iTMS, and does not provide a sufficient factual “basis” for his opinions. Pet. Mot. to Exclude 3–5. For instance, Apple contends that Mr. Snell applied an erroneous interpretation of “second memory” in the claims, and gave opinions that contradict the prosecution history of the application that issued as the parent ’573 patent. Id. at 12–15. We have reviewed the cited portions of Mr. Snell’s testimony and see no basis on which they would warrant the extreme remedy of exclusion. Apple’s arguments indicate a mere disagreement with Mr. Snell’s testimony and pertain to the weight to be given to that testimony, which we are able to assess without excluding it, as explained above. Apple’s Motion to Exclude is denied.” slip op. at 59

  Patent outcomesUS 5,966,440 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,966,440
• Rackspace Hosting, Inc. v. Rotatable Technologies LLCAll claims unpatentable
  PTAB · Sep 19, 2014 · IPR2013-00248 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–18 are unpatentable under § 103 over Martinez and Capps, with Adobe added for claims 5, 10, 15, and 17; the contingent motion to amend is denied.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “In my opinion, the level of ordinary skill in the art needed to have the capability of understanding the scientific and engineering principles applicable to the ’978 Patent is a bachelor’s degree in computer engineering or computer science; or equivalent industry or trade school experience as one programming software applications. Ex. 1009 ¶ 12; see also Ex. 2003, 32:1-33:7. According to Patent Owner, a person possessing this level of skill at the time of the invention would have been unable to make the then-considered-complicated technical programming modifications necessary to combine the rotating window system of Martinez with the crank rotating system of Capps. We are not persuaded for several reasons. First, it is undisputable that both Martinez and Capps are directed to rotating objects. Accordingly, we are not persuaded that one of ordinary skill, even at the time of the invention, would not have known, given Martinez and Capps, that objects could be rotated using different techniques. Second, Patent Owner does not explain, or provide sufficient evidence, as to what was deficient about the level of ordinary skill at the time of the invention that would have rendered incapable the implementation of the proffered modifications. In particular, Patent Owner does not explain persuasively, or provide any supporting evidence, as to why the cited technical level would have been sufficient for one of ordinary skill to practice each of Martinez and Capps individually, but insufficient to practice the combination. Finally, Capps, in it is introductory paragraph, notes that it is directed to “methods of rotating, scaling and otherwise altering the image of an object on the screen using an icon-based tool.” Ex. 1007, 1:8-10. With this explicit reference to the rotation of a generic “object” made known to one of ordinary skill, we are not persuaded that there would be any reason to exclude the windows of Martinez from the class of objects to be rotated.” slip op. at 33

  • Skill levelOther

    “In my opinion, the level of ordinary skill in the art needed to have the capability of understanding the scientific and engineering principles applicable to the ’978 Patent is a bachelor’s degree in computer engineering or computer science; or equivalent industry or trade school experience as one programming software applications. Ex. 1009 ¶ 12; see also Ex. 2003, 32:1-33:7. According to Patent Owner, a person possessing this level of skill at the time of the invention would have been unable to make the then-considered-complicated technical programming modifications necessary to combine the rotating window system of Martinez with the crank rotating system of Capps. We are not persuaded for several reasons. First, it is undisputable that both Martinez and Capps are directed to rotating objects. Accordingly, we are not persuaded that one of ordinary skill, even at the time of the invention, would not have known, given Martinez and Capps, that objects could be rotated using different techniques. Second, Patent Owner does not explain, or provide sufficient evidence, as to what was deficient about the level of ordinary skill at the time of the invention that would have rendered incapable the implementation of the proffered modifications. In particular, Patent Owner does not explain persuasively, or provide any supporting evidence, as to why the cited technical level would have been sufficient for one of ordinary skill to practice each of Martinez and Capps individually, but insufficient to practice the combination. Finally, Capps, in it is introductory paragraph, notes that it is directed to “methods of rotating, scaling and otherwise altering the image of an object on the screen using an icon-based tool.” Ex. 1007, 1:8-10. With this explicit reference to the rotation of a generic “object” made known to one of ordinary skill, we are not persuaded that there would be any reason to exclude the windows of Martinez from the class of objects to be rotated.” slip op. at 33

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “1. Computer Display Window Independent claims 1, 9, and 14 each recite “computer display window.” The term “computer display window” is cited only in the preamble of these claims, but it is given patentable weight as it provides an antecedent basis for “the window” recited in the body of each of these claims. C.W. Zumbiel Co., Inc. v. Kappos, 702 F.3d 1371, 1385 (Fed. Cir. 2012) (citing Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)) (the preamble constitutes a limitation when the claim(s) depend on it for antecedent basis).” slip op. at 7

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

    “To be sure, the proposed construction is broad. As Petitioner notes, however, the Specification recites explicitly that “[o]ne of ordinary skill in the art will realize that the window 10 may take any one of a number of configurations containing any one of a number of elements.” Ex. 1001, 2:60-64. Accordingly, Petitioner’s proposed construction comports with the Specification, in that the Specification itself indicates that “window” is to be construed broadly, and thus is the broadest reasonable construction in light of the Specification. Patent Owner asserts that no construction is necessary for a well- understood term such as “window.” PO Resp. 5-6. We disagree. Petitioner and Patent Owner disagree as to whether the “deformable window” identified in Bruder corresponds properly to the recited “computer display window.” Pet. 35; PO Resp. 35-38. Such a disagreement indicates that “window” is not a well-understood term, and, thus, that an express construction is warranted.” slip op. at 8

  Patent outcomesUS 6,326,978 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,326,978
• The Scotts Company LLC v. Encap, LLCAll claims unpatentable
  PTAB · Jun 24, 2014 · IPR2013-00110 · APJ Michael P Tierney · IPR · Final written decision

  Claims 1–5, 7–11, 13, and 14 are unpatentable over Roth and Lowe; the motion to amend is denied.

  RulingsFinal written decision

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We find that Scotts Company’s Reply, and in particular, the supporting Declarations of Mr. Fredrick Sundstrom (Ex. 1039) and Mr. Krishna Pagilla (Ex. 1040) contain material outside the proper scope of a reply. 37 C.F.R. § 42.23(b) (reply is limited to arguments raised in Patent Owner’s Response). Specifically, both Declarations contain materials in support of Scotts Company’s Petition, and therefore, untimely filed. For example, Mr. Sundstrom includes analyses of claim construction (e.g., Ex. 1039 ¶¶ 7-9), as well as analyses of the Schreiber (e.g., id. at ¶¶ 10-13), Matthews (e.g., id. at ¶¶ 28, 29), Roth (e.g., id. at ¶ 34), Simmons (id. at ¶¶ 36, 38), and Evans (id. at ¶¶ 43, 44, 46, 48) references. Likewise, Mr. Pagilla addresses claim construction, as well as the references upon which Scotts Company sought institution. See, e.g., Ex. 1040 ¶¶ 9-13, 23-27, 32, 33, 36-38. Specifically, we hold that the new evidence could have been included with the motion. By waiting to serve this evidence on Encap in Scotts Company’s Reply, Encap was denied the opportunity to file responsive evidence. Thus, we have not considered the untimely Declarations of Mr. Sundstrom and Mr. Pagilla, nor the arguments based thereon.3” slip op. at 5

  • ExcludeMotion to exclude, grantedGranted in part

    “Reading Mr. Krysiak’s Second Declaration, it is clear that the majority of the Declaration is in support of Encap’s Motion to Amend rather than in rebuttal to Scotts Company’s Opposition to Encap’s Motion to Amnd or the Declarations and deposition testimony4 of Mr. Sundstrom and Mr. Pagilla, and is thus, untimely. For example, paragraphs 2-3 relate to written description and claim construction, which Encap has the burden of proving in its Motion to Amend. Additionally, paragraphs 6-12 describe the background of the technology, which could have been submitted with Encap’s Motion to Amend opening brief, and thus, are not in rebuttal to testimony from Mr. Sundstrom or Mr. Pagilla. Likewise, paragraphs 25-53 and Schedule A attempt to distinguish over Matthews and Schreiber, which Encap should have done in Patent Owner’s Motion to Amend. Furthermore, to the extent that portions of Mr. Krysiak’s Second Declaration are in response to the 4 While not addressed, we do not suggest that filing a declaration in rebuttal to deposition testimony is appropriate. Declarations of Mr. Sundstrom and Mr. Pagilla, which were excluded, they should likewise be excluded. Those errors were not corrected in the Supplemental Evidence (i.e., Ex. 2016) submitted by Encap. In addition, Encap attempts to incorporate Mr. Krysiak’s Second Declaration into its Reply to Scott’s Opposition to the Motion to Amend by merely stating, “The proposed claims define over the prior art succinctly. Id. [Mr. Krysiak’s Second Declaration] at ¶¶ 14-53.” Reply Mot. Amend 5. In our Order of August 27, 2013, we admonished Encap to refrain from attempting to use an expert declaration in such fashion. We stated, “Encap’s motion to amend may be supported by an expert declaration, but that the motion itself should set forth the arguments and explanations with appropriate pinpoint citations to the expert declaration, rather than incorporating by reference the expert declaration.” Paper 17, 2-3. Thus, Scotts Company’s Motion to Exclude Mr. Krysiak’s Second Declaration (Ex. 2012) is granted, as Mr. Krysiak’s Corrected Second Declaration (Ex. 2016) did not remedy the issues, it is not considered.” slip op. at 7

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

    “modify the soil in some way, other than directly providing plant nutrients. The second sentence is an observation of benefits provided by “this invention;” it does not require the invention provide the observed benefits; much less require just the soil conditioning material of the invention provide such benefits. Encap relies upon its experts, Mr. John Katers, Mr. Daniel Madigan, and Mr. Michael Krysiak, all of whom provide identical claim constructions, in support of its position. Ex. 2007 ¶ 11; Ex. 1020 ¶ 10; Ex. 1022 ¶ 13. The experts provide, however, no credible analysis in support of their claim constructions, and thus, are unpersuasive. Encap asserts also that the examples included in the Board’s preliminary claim construction should be omitted, because not all municipal or other sewage sludge, paper mill sludge, fly ash, or dust, necessarily modify the soil in a beneficial manner. PO Resp. 9. The Board’s preliminary construction, however, requires the soil conditioning materials “modify soil to which they are applied, in some way other than direct provision of nitrogen, phosphorous, and/or potassium or other plant nutrients.” The inclusion of the examples is intended to clarify, not modify, this requirement. Accordingly, the Board maintains its construction of “soil conditioning materials” as: Materials that beneficially modify soil to which they are applied, in some way other than direct provision of nitrogen, phosphorous, and/or potassium or other plant nutrients, including for example, municipal or other sewage sludge, paper mill sludge, fly ash, and dust.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingNo construction neededDecided for petitioner

    “First, the Abstract does not provide a definition for a “combination seed capsule,” but rather observes the benefits of the combination seed capsule. Second, the preamble term “combination seed capsule” is not limiting because the claim body describes a structurally complete invention. Catalina Mktg. Int’l v. Coolsavings.com Inc., 62 USPQ2d 1781, 1785 (Fed. Cir. 2002). Thus, we need not construe “combination seed capsule,” as it does not limit the claim.” slip op. at 13

  Patent outcomesUS 6,209,259 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 6,209,259
• Motorola Mobility LLC v. Arnouse Digital Devices Corporation And Michael Arnouse Exclusive Licensee And Patent OwnerAll claims unpatentable
  PTAB · Feb 11, 2014 · IPR2013-00010 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1, 3, 7, 15, 16, 18, and 20 are unpatentable as anticipated by Kobayashi and, separately, by Nelson.

  RulingsFinal written decision

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

    “that the specification discloses other embodiments in which a reader is connected to a portable computer without using a reader slot or hole. For example, in one embodiment, the portable computer connector is attached merely to the housing of the readers. Ex. 1001, 7:60-62. The reader connector is configured to mate with a universal connector on the portable computer. Id. at 6:37-42; 7:66-8:2. In another example, as shown in Figures 4 through 6, the connector includes a wireless connection between the portable computer and reader—the portable computer has a wireless transmitter, and the reader has a receiver, or vice versa. Id. at 6:42-46. As described in the specification, the connection between a portable computer and a reader does not include necessarily a reader slot or hole. Therefore, we do not import the limitation of a reader slot or hole, as urged by ADDC, from the specification into the claims. 7 Even in cases where the specification describes only a single embodiment, we do not construe necessarily the claims as being limited to that embodiment. Thorner v. Sony Computer Entm’t Am. L.L.C., 669 F.3d 1362, 1365 (Fed. Cir. 2012) (It is not enough that the only embodiment, or all of the embodiments, contain a particular limitation.). Moreover, we decline to add limitations into the claims in absence of a special definition set forth in the specification. An inventor may set out a definition and act as its own lexicographer by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Here, ADDC has not alleged that the inventor of the ’484 patent acted as his own lexicographer and provided a special definition in the specification for the claim term “connector” or the claim phrase “connector for connecting” that is different from its recognized meaning to one with ordinary skill in the art. In light of the specification and in the context of the claims, we construe the claim phrase “connector for connecting” broadly, but reasonably, as a device or configuration that establishes a wireless or physical communication connection between a reader and a portable computer.” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “For example, claim 15 recites “wherein the portable computer excludes means for a user to interact directly with the portable computer.” We determine that the “means for interacting” claim limitation is a means- 11 plus-function claim limitation that invokes 35 U.S.C. § 112, ¶ 6.1 We observe that: (1) the limitation uses the term “means for”; (2) the term “means for” is modified by functional language; and (3) the term “means for” is not modified by any structure recited in the claim to perform the claimed function. Personalized Media Commc’ns LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998) (A limitation that uses the term “means for” which creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112, ¶ 6.); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427-28 (Fed. Cir. 1997) (The presumption is not rebutted if the term “means for” is modified by functional language, and it is not modified by any structure recited in the claim to perform the claimed function.). We identify the claimed function for this limitation to be “for a user to interact directly with the portable computer.” Based on the specification of the ’484 patent, the corresponding structure that performs the recited function is a component that allows a user to provide information to, or receive information from, the portable computer, directly—e.g., a keyboard, keypad, display, or voice input device, on the portable computer. See, e.g., Ex. 1001, 5:63-6:31.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “to interact directly with the portable computer” similarly is recited in the preamble of claim 1— “a portable computer without input and output means for interacting directly therewith.” In general, a preamble limits the invention if it recites essential structure or steps, or if it is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, Inc. v. Hewlett- Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Here, the preamble of 13 claim 1 is entitled to patentable weight as it recites additional structure that is not included in the claim body. As the claim construction chart submitted by the parties in the related district court litigation shows, the parties agree that the preamble of claim 1 is limiting. Ex. 1013 at 1, col. 1-3, row 1.” slip op. at 13

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

    “ADDC’s arguments are unavailing, as they are not commensurate with the scope of the claims. Specifically, they are premised on an overly narrow claim construction of the “reader configuration” limitation, requiring matching security protocols (id. at 22). As discussed above, we decline to adopt such an overly narrow construction, because it would import 16 limitations from the specification into the claims, improperly limiting the claims to a preferred embodiment. Rather, we construe the “reader configuration” limitation as the readers each having a non-universal design that limits the types of portable computers that may be used with the reader. In its petition, Motorola asserts that Kobayashi meets the “reader configuration” claim limitation. Pet. 10. Motorola points out that Kobayashi discloses that “[t]he PPM works after being connected to the docking stations through a multi-connector and is capable of being connected to several types of docking stations such as desktop, desk side or portable depending on the task to be undertaken by the user.” Id. (citing Ex. 1003, 3:55-60). We agree with Motorola, as its assertion is supported by a preponderance of the evidence. Indeed, Kobayashi describes a docking station that limits the types of computers that may be used with the docking station. See, e.g., Ex. 1003, 3:55-60. For instance, Kobayashi describes that the PPM and docking station are connected together by a processor independent of connection, such as the PC Peripheral Component Independent (PCI) Bus. Id. at 3:12-15.” slip op. at 16

  Patent outcomesUS 7,516,484 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,516,484
• Interthinx, Inc. v. Corelogic Solutions, LLCAll claims unpatentable
  PTAB · Jan 30, 2014 · CBM2012-00007 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1, 6, 9, and 10 are unpatentable under § 101 and anticipated by or obvious over Jensen-1; the Board did not reach the remaining prior-art challenges.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner

    “determinations are pure questions of law, not subject to the clear and convincing evidence standard, is not supported by the Federal Circuit. “[T]he analysis under [35 U.S.C.] § 101, while ultimately a legal determination, is rife with underlying factual issues.” Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013) (citing, e.g., CLS Bank Int'l v. Alice Corp., 717 F.3d 1269, 1304–05 (Fed. Cir. 2013) (en banc)) (Chief Judge Rader, and Judges Linn, Moore, and O'Malley, concluding that “any attack on an issued patent based on a challenge to the eligibility of the subject matter must be proven by clear and convincing evidence,” and Judges Lourie, Dyk, Prost, Reyna, and Wallach, concluding that a statutory presumption of validity applies when § 101 is raised as a basis for invalidity in district court proceedings.)). In denying Petitioner’s motion for judgment as a matter of law under 35 U.S.C. § 101, the District Court stated only that Petitioner failed to show that claims 1 and 10 of the ’201 Patent do not cover a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Ex. 2039, 2. The District Court’s decision applied the clear and convincing evidence standard to the facts underlying its determination of law when denying Petitioner’s motion for summary judgment and motion for judgment as a matter of law that the claims of the ’201 Patent do not recite eligible subject matter. In contrast, the Board reviews the patentability of a claim, rather than its validity, and applies a preponderance of the evidence standard to the underlying factual determinations, e.g., whether the claims contain limitations that narrow or tie them to specific applications of an otherwise abstract concept. 35 U.S.C. § 326(e); Ultramercial, 722 F.3d at 1339. Because the Board applies to the underlying facts an evidentiary standard that is different from the standard applied by the courts, the issue decided by the Board is not identical to the one decided or litigated in the first action and could not have been essential to the final judgment in the first action. See In re Freeman, 30 F.3d, 1459, 1465 (Fed. Cir. 1994). Petitioner did not have an opportunity to litigate the issue in the first action. Id. Therefore, we conclude that Petitioner’s challenge under 35 U.S.C. § 101 is not barred by res judicata or collateral estoppel.” slip op. at 5

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “abstract idea, the claim instead is drawn to the abstract idea itself. Ultramercial, 722 F.3d at 1343. Inventor, Dr. Jost considers his invention to be the process for predicting the selling price of a home (a point estimate) using statistical analysis to develop the point estimate, and a co-inventor’s error model, which was also developed using statistical analysis. Ex. 1022, 72-73, 81-82. Dr. Jost’s testimony is consistent with claims 1 and 10, which recite appraising real estate by developing and storing a predictive model and generating a signal indicative of the appraised (predicted) value, and developing and storing an error model and generating a signal indicative of the error range for the appraised (predicted) value. Patent Owner’s expert Dr. Lipscomb characterizes the invention as “a way to determine the sales price of a property that may not have a recent sales transaction” and that predictive models “have been around a long time.” Ex. 1024, 42-43. Determining a price has been found to be abstract as a method of calculating. See, SAP America, Inc. v. Versata Dev. Group, Inc., CBM2012- 00001, 2013 WL 3167735, at *16 (PTAB, June 11 2013). Dr. Jost testified that it was common in statistics to provide a confidence interval around estimates. Ex. 1022, 102. The testimony of Dr. Jost and Dr. Lipscomb indicates that determining an error can be accomplished using the same well known techniques as those applied to the predictive model and that bounding a price estimate by an error range is an abstract concept. Therefore, we find the claimed development of a model to predict a value and an error model to assess the error range around the predicted value, as recited in claims 1 and 10, is an abstract concept. Similarly, claims 6 and 9 recite limitations that bound the geographic area from which data is obtained to develop the model. The limitations in claims 6 and 9 recite the abstract and well known concept of examining the geographic area around the subject property so that relevant samples can be obtained to predict the price of the property.” slip op. at 10

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptIneligibleUnpatentable
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “54-55. Patent Owner’s argument is similar to its underlying theme that CAMA prior art does not apply to the claimed AVM system. As discussed above, we do not find this argument persuasive because the ultimate objective of each system is to determine a value for each individual parcel. The same sentence in Jensen-1 that refers to a model estimating the sales price of all the properties also refers to adjustments necessary to correct the actual sales prices of selected recent comparable sales for the property characteristic differences between the subject property being valued and each comparable sale, in order to ascertain what each comparable property would have sold for had it been identical to the subject property in a physical descriptive sense on the valuation date. Ex. 1014, p. 194. (Emphasis added). Thus, as recited in claims 1, 6, 9 and 10, Jensen-1 obtains individual property data and recognizes a relationship between individual property data and the training data. Jensen-1 also discloses using the training data to predict the individual property value, as recited in claims 1, 6, 9 and 10. Jensen-1 discusses a model in which the value of a property is based on the land value qualified by a set of adjustments. Ex. 1014, p. 198. The adjustments reflect specific property characteristics. For example, up to a point, the value of a property can be expected to increase with increasing frontage. Id. Thus, specific properties with different frontage are valued differently. Jensen-1 discloses other modeling approaches that determine various per unit rates within a market model using regression analysis, Longini and Carbone’s adaptive estimation, and Carlson’s iterative correlative estimation procedure. Id. at 200. Jensen-1’s discussion of interactive correlative estimation specifically states that, within each iteration, “the model estimate and then the residual error (the actual sale price minus the model estimate) are computed on a per parcel basis.” Ex. 1014, p. 220. Thus, Jensen-1 discloses generating an appraised value responsive to the application of individual property data to the predictive error model. Jensen-1 specifically states that “[o]nce meaningful market models have been developed from the available sales, they can be used to estimate the fair market values of all of the parcels in the jurisdiction whether recently sold or not.” Ex. 2014, p. 224. As discussed above, the reference to all parcels in the jurisdiction does not imply that all the parcels are evaluated the same. Jensen discloses that the market models take into account the various characteristics of each parcel and determine a value for each parcel. Jensen-1 notes that the model estimate, i.e., the fair market value of each parcel as determined by the market models, is an abstract number and its reliability as an approximation of true market value depends on the quality of the individual estimates. Ex. 1014, p. 224. Jensen-1 specifically notes that when an actual sale price falls below the value estimate, it may or may not indicate a problem with the appraisal. Id. Thus, Jensen-1 applies to individual appraisals and attempts to assess an error in the appraisal of each parcel.” slip op. at 13

  Patent outcomesUS 5,361,201 unpatentable
  § 101 eligibility§ 102 anticipation§ 103 obviousnesscites Mayo
  Patents in suitUS 5,361,201
• Garmin International, Inc. / Garmin USA, Inc. v. Cuozzo Speed Technologies LLCAll claims unpatentable
  PTAB · Nov 13, 2013 · IPR2012-00001 · APJ Jameson Lee · IPR · Final written decision

  Claims 10, 14, and 17 are unpatentable as obvious over either of two combinations; the motion to amend claims 21–23 is denied.

  RulingsFinal written decision

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

    “integrally attached” stems from the word “attached.” That is because the term “integrally” modifies “attached” by specifying a form of attachment. The general characteristic of two components being “attached” to each other cannot be eliminated whatever is the effect of adding “integrally” to modify “attached.” For a speedometer to be “integrally attached” to a colored display, there must be a speedometer and a colored display that are separately identifiable from each other, or else “attached” effectively would be read out of the claim. Adding the modifier “integrally” does not negate or nullify “attached.” That does not mean the speedometer and the colored display may not share any part. But it does mean that the sharing may not be so substantial, e.g., the entirety of the colored display is subsumed within the speedometer, that the speedometer and the colored display lose their separate identities. It would be illogical to regard one unit as being “attached” to itself. The Board construes “integrally attached” as applied to the colored display and the speedometer in the context of the disclosure of the ’074 Patent as meaning: discrete parts physically joined together as a unit without each part losing its own separate identity. slip op. at 8

  • BurdenFwd all claims unpatentableDecided for petitioner

    “As discussed above, Aumayer describes every feature of claim 10, except for the requirement that the speedometer is “integrally attached” to a colored display that delineates which speed readings are in violation of the speed limit at the vehicle’s present location. The single electronic display screen of Aumayer, showing both the image of a speedometer and a colored scale mark indicating the current speed limit, does not meet the claim recitation of a speedometer that is “integrally attached” to a colored display that delineates which speed readings are in violation of the speed limit at the vehicle’s present location. The speedometer and the colored display are not discrete components joined to each other with each retaining its own separate identity.” slip op. at 29

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

    “To constitute properly a “teaching away,” the teaching must be evaluated from a technological perspective, not merely a comparative perspective. For instance, it is not a “teaching away” of significance unless one with ordinary skill in the art would have understood the teaching as conveying that the method or structural configuration at issue reasonably cannot be expected to achieve what it is required to achieve according to the claimed invention. See, e.g., Syntex (U.S.A) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“Under the proper legal standard, a reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant’s invention.” (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994))).” slip op. at 35

  Patent outcomesUS 6,778,074 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,778,074
• SAP America, Inc. v. Versata Development Group, Inc.All claims unpatentable
  PTAB · Jun 11, 2013 · CBM2012-00001 · APJ Michael P Tierney · CBM · Final written decision

  Claims 17 and 26–29 are unpatentable under § 101 because they claim abstract pricing and hierarchy concepts without meaningful limitations.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “SAP, as petitioner, bears the ultimate burden of proof that Versata’s claims are unpatentable under § 101. To place SAP’s and Versata’s contentions in context, we begin our analysis by first discussing our construction of the challenged claims. Bancorp Serv., LLC v. Sun Life Assurance Co. of Canada, 687 F.3d 1266, 1273-74 (Fed. Cir. 2012) (“[I]t will ordinarily be desirable—and often necessary— to resolve claim construction disputes prior to a § 101 analysis, for the determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter.”).” slip op. at 6

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “The parties’ experts disagree as to whether the appended steps are merely routine, conventional steps or reflect meaningful limitations. Dr. Siegel, SAP’s expert, testifies that besides the abstract ideas, the claims merely recite routine, conventional activities. Ex. 1005, ¶ 49.19 In contrast, Dr. Liebich, Versata’s expert, testifies that the SAP R/3 pricing technology available at the time of the invention did not practice the combination of steps (storing, retrieving, sorting, eliminating, and determining) recited in the claims. Ex. 2091, ¶ 62. Dr. Liebich further testifies that he was not aware of any pricing technology in the marketplace at that time that performed the combination of steps. Id. Patent eligibility is distinct from the question of whether or not the claims recite subject matter that was not in the marketplace at the time of the invention. Flook, 437 U.S. at 593 (“[Section 101] does not involve the familiar issues of novelty and obviousness that routinely arise under §§ 102 and 103.”).20 We agree with SAP that Versata and Dr. Liebich fail to establish that the additional “specific” steps that are appended to the abstract idea provide meaningful limitations. The contention that the combination of the abstract idea and the specific steps represents an improvement in marketplace technology does not demonstrate that the additional steps are anything other than conventional, routine steps that are a consequence of implementing the abstract idea. Specifically, the Court in Flook held that a claim for an “improved” method is” slip op. at 31

  • Skill levelOther

    “after retrieval. PO Resp. 55-57. We agree with Versata that Figure 15B of the ’350 patent describes the use of the method where the sorting step occurs after 17 The field of the invention is computerized financial systems. See, e.g., Ex. 1005, ¶ 16. A person of ordinary skill in the art would have at least a bachelor’s degree in computer science and experience developing computerized financial systems. Id., ¶ 18. retrieving all pricing adjustments. Id., and Ex. 1001, Fig. 15b, 4:62, 18:53-54 and 19:4-43. Yet, the ’350 patent states explicitly that numerous specific details are set forth in the description, but that it would be apparent to one of ordinary skill in the art that the present invention could be practiced without the specific details. Ex. 1001, 4:67-5:5. SAP’s expert, Dr. Siegel, testifies that one of ordinary skill in the art would have understood that claim 17 “does not imply or require a temporal limitation forcing the sorting to occur after the retrieving.” Ex. 1005, ¶ 98. Versata’s expert, Dr. Liebich, testifies that “it is generally the case that data stored in a data source must first be retrieved from the data source before the data can be sorted.” Ex. 2091, ¶ 126 (emphasis added). Based upon the record presented, we find that one of ordinary skill in the art reading the ’350 specification would have understood that retrieving then sorting was the preferred, but not the only, method of carrying out the invention. Accordingly, we hold that the ’350 patent specification does not require retrieving then sorting.” slip op. at 21

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

    “We agree with SAP that claim 17 does not itself impose a temporal limitation on when the pricing information is sorted. As SAP contends, Versata’s arguments and expert testimony as to what is “generally” the case do not demonstrate that Versata sought to limit claim 17 in the way that claim 1 expressly was limited. Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1314 (Fed. Cir. 2003) (holding that similar language did not require separate and consecutive performance of various steps). Versata contends that the specification demonstrates that sorting must occur after retrieval. PO Resp. 55-57. We agree with Versata that Figure 15B of the ’350 patent describes the use of the method where the sorting step occurs after 17 The field of the invention is computerized financial systems. See, e.g., Ex. 1005, ¶ 16. A person of ordinary skill in the art would have at least a bachelor’s degree in computer science and experience developing computerized financial systems. Id., ¶ 18. retrieving all pricing adjustments. Id., and Ex. 1001, Fig. 15b, 4:62, 18:53-54 and 19:4-43. Yet, the ’350 patent states explicitly that numerous specific details are set forth in the description, but that it would be apparent to one of ordinary skill in the art that the present invention could be practiced without the specific details. Ex. 1001, 4:67-5:5. SAP’s expert, Dr. Siegel, testifies that one of ordinary skill in the art would have understood that claim 17 “does not imply or require a temporal limitation forcing the sorting to occur after the retrieving.” Ex. 1005, ¶ 98. Versata’s expert, Dr. Liebich, testifies that “it is generally the case that data stored in a data source must first be retrieved from the data source before the data can be sorted.” Ex. 2091, ¶ 126 (emphasis added). Based upon the record presented, we find that one of ordinary skill in the art reading the ’350 specification would have understood that retrieving then sorting was the preferred, but not the only, method of carrying out the invention. Accordingly, we hold that the ’350 patent specification does not require retrieving then sorting.” slip op. at 21

  Patent outcomesUS 6,553,350 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Phillips
  Patents in suitUS 6,553,350

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.