• Sandisk Corp. v. Netlist, Inc.All claims unpatentable
  PTAB · Sep 28, 2016 · IPR2015-01021 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 16, 17, 24, 30, and 31 are unpatentable as obvious over Takeda, JEDEC, and Connolly.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “1. “Rank” In the Decision to Institute, we construed the term “rank” as “a block or area that is created using some or all of the memory chips on a memory module.” Dec. to Inst. 8–9. In their papers, neither party challenged our constructions of these claim terms. Thus, for the term “rank,” we see no reason to alter the construction of this claim term as set forth in the Decision to Institute as recited above, and we incorporate our previous analysis for purposes of this decision.” slip op. at 8

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

    “2. All Other Claim Terms We determine that no explicit construction is necessary for any other terms in the challenged claims. B.” slip op. at 8

  • Skill levelSkill level board ownOther

    “would understand basic memory and data communication concepts, with a bachelor’s degree in any of electrical engineering, computer engineering, computer science, or related field. Course work for one of ordinary skill in the art would have included a course on computer organization, principles of digital design, or computer architecture. One of ordinary skill in the art would also have around one year of experience related to computer memory systems. For example, such experience may include experience in DRAM memory technology and related industry standards such as JEDEC standards for DRAM memories and memory modules. Ex. 1002 ¶ 53. Patent Owner’s Declarant, Carl Sechen, Ph.D. (“Dr. Sechen”), testifies that one of ordinary skill in the art at the time of the ’536 Patent would have had an undergraduate degree in electrical engineering or computer engineering, at least two years of professional experience in the design of memory systems, familiarity with the latest JEDEC standard specifications for memory devices and modules, and familiarity with the latest DRAM (dynamic random access memory) memory devices widely available in the market. Ex. 2001 ¶ 14. Dr. Sechen further testifies that a person of ordinary skill in the art would have design proficiency in memory modules comprising DDR memory technology, such as memory modules with JEDEC standard DDR SDRAM (synchronous DRAM) devices. Id. ¶ 15. Based on our review of the ’536 Patent and the types of problems and solutions described in the ’536 Patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’536 Patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that Dr. Jagannathan is qualified sufficiently to testify about memory systems and memory modules. E.” slip op. at 12

  Patent outcomesUS 8,081,536 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,081,536
• Sandisk Corp. v. Netlist, Inc.Some claims unpatentable
  PTAB · Sep 28, 2016 · IPR2015-01020 · APJ Peter P Chen · IPR · Final written decision

  Claims 17, 22, 24, 26, and 33 are unpatentable as obvious over Takeda, JEDEC, and Connolly; claims 15, 16, 31, and 32 were not shown unpatentable over Takeda and JEDEC.

  RulingsFinal written decision

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

    “We are unpersuaded by Patent Owner’s position. First, the claim language does not recite any physical or structural connection, rather, only “electrically coupling.” Pet. Reply 3, 8–9. In addition, the specification of the ’150 patent does not define explicitly the term “selectively electrically coupling.” Therefore, as in IPR2014-00882 and IPR2014-01011, we refer to its ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Translogic Tech., 504 F.3d at 1257. A technical dictionary, the IEEE Dictionary,4 defines “electrical coupling” as “[e]lectrical charges in conductors of a disturbed circuit formed by electrical induction.” Ex. 3001. The IEEE Dictionary explains that “[s]ince the ratio of a conductor’s electrostatic charge to the potential difference between conductors (required to maintain that charge) is the general definition of capacitance, electrical coupling is also called capacitive coupling.” Id. The IEEE Dictionary defines” slip op. at 9

  • Skill levelSkill level board ownOther

    “Based on our review of the ’150 patent and the types of problems and solutions described in the ’150 patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’150 patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D. Declarant Testimony” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that, although Dr. Jagannathan may be less experienced than Dr. Sechen in the area of memory module design, he is nonetheless qualified sufficiently to testify about memory systems and memory modules. E. Asserted Obviousness of Claims 15, 16, 31, and 32 in view of Takeda” slip op. at 14

  • ExcludeMotion to exclude, deniedDenied

    “We have reviewed the parties’ contentions on this issue, and exercise our discretion to determine that Petitioner’s Reply and the Jagannathan Supplemental Declaration will not be excluded. We find that, although they may be “inartfully” drafted, the first Jagannathan declaration and Petition sufficiently outlined Petitioner’s position on the function of the chip select signal, namely, that the chip select signal was not itself the logic signal enabling operation of bit-switches. We further find that Petitioner’s Reply and the Supplemental Jagannathan Declaration did not present an entirely new rationale of unpatentability based on Takeda, JEDEC, and Connolly. Cf. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (affirming Board’s exclusion of reply brief and declaration that changed unpatentability theory to “an entirely new rationale”). Moreover, there is no dispute that Patent Owner was aware of Petitioner’s position by no later than the Jagannathan deposition, which preceded Patent Owner’s Response by ten days. Patent Owner could have addressed Petitioner’s chip select signal contention, procedurally or substantively, in its Response, but chose to raise the issue only after Petitioner filed its Reply and Supplemental Jagannathan Declaration. Accordingly, Patent Owner had notice of Petitioner’s position and an opportunity to refute that position in its Response.” slip op. at 24

  Patent outcomesUS 7,881,150 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,881,150
• Deere & Company v. Richard GrammAll claims unpatentable
  PTAB · Sep 22, 2016 · IPR2015-00899 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 and 27–34 are unpatentable as obvious over the three combinations of prior art identified by the Board.

  RulingsFinal written decision

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

    “a “header” or a “combine” per se; rather, it is a header height control apparatus—an “apparatus for detecting and controlling the height above the soil of an agricultural machine as it traverses a field.” Ex. 1001, 1:11–13. Nonetheless, there is no prohibition on a patentee drafting his or her claim in a manner that further limits the invention if additional structure is recited in the claim. As argued by Patent Owner, the recitation of “a non-cut crop header” and “a combine” in the preamble of claim 1, provide antecedent basis for at least two terms recited in the body of the claim—“the header” and “said combine.” The body of the claim reflects that the patentee chose to claim the header control apparatus in terms not limited to said apparatus standing alone, but rather the apparatus as attached (coupled) to the header of a combine. See, e.g., Ex. 1001, 7:33–34 (“a pre-loaded, generally linear flexible arm coupled to a forward portion of the header” (emphasis added)); 7:44–45 (“control means coupled to said header” (emphasis added)); 7:48– 51 (“wherein said flexible arm and angular deflection sensing means are attached to a head housing disposed on a forward portion of said combine” (emphases added)); 7:54–56 (“wherein said mounting bracket further couples said flexible arm to a forward end of said head housing” (emphasis added)). The prosecution history reflects that the patentee at first desired the recitation of “header” in the claim to be limited to “non-cut crop” headers, in an attempt to distinguish cut crop headers. Ex. 1002, 142 (Amendment filed June 19, 2000). The examiner, however, did not accept such argument (id. at 152–53 (Office Action mailed Aug. 24, 2000)), and the patentee did not reiterate or maintain the argument in amending the claims following the August 24, 2000, final rejection. Id. at 158–63 (Amendment filed Nov. 22, 2000). Nonetheless, the prosecution history is informative on this issue. In light of our discussion above regarding the claim language, specification, and the prosecution history, we do not construe the entire preamble as limiting. In particular, the preamble recites an apparatus for maintaining, and is presented clearly as reciting an intended use. That being said, we agree with the Patent Owner that the phrase “non-cut crop header” limits the terms “the header” and “said header” recited in the body of claim 1 such that “the header” and “said header” recited in the body of claim 1 are the same “non-cut crop header” recited in the preamble of the claim.11” slip op. at 24

  • Skill levelSkill level board ownOther

    “The parties’ statements of the level of ordinary skill are not significantly different, and the differences between their proposed levels of ordinary skill would not affect the outcome of this proceeding.5 In light of our review of the record, including the ’395 patent, the competing expert testimony, and the issues discussed during the oral argument, we agree with different aspects of the parties’ proposals. First, as Petitioner notes in its Reply, a mechanical engineer having familiarity with hydraulic systems and sensors, as Patent Owner proposes, does not have experience necessarily with agricultural equipment or combines. Reply 2, n.1. Thus, Patent Owner’s educational prong is overly broad. Second, Petitioner’s educational prong, on the other hand, is too narrow, requiring “design” of combines or 5 Indeed, neither party argues that any difference between the proposed levels of ordinary skill would affect the outcome of this proceeding. agricultural equipment. Third, we find that Petitioner’s experience prong also is too narrow, because it requires experience specifically in the “design” of agricultural equipment or combines. Accordingly, we find that the level of ordinary skill in the art is “a mechanical engineer having familiarity6 with agricultural equipment, such as combines, and hydraulic systems and sensors” or “a person having 10 or more years of experience7 working with combines.”8” slip op. at 11

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

  Patent outcomesUS 6,202,395 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,202,395
• Deere & Company v. Richard GrammAll claims unpatentable
  PTAB · Sep 22, 2016 · IPR2015-00898 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 and 27–34 are unpatentable as obvious over the three instituted combinations of prior art.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “significantly different, and the differences between their proposed levels of ordinary skill would not affect the outcome of this proceeding.5 In light of our review of the record, including the ’395 patent, the competing expert testimony, and the issues discussed during the oral argument, we agree with different aspects of the parties’ proposals. First, as Petitioner notes in its Reply, a mechanical engineer having familiarity with hydraulic systems and sensors, as Patent Owner proposes, does not have experience necessarily with agricultural equipment or combines. Reply 2, n.1. Thus, Patent Owner’s educational prong is overly broad. Second, Petitioner’s educational prong, on the other hand, is too narrow, requiring “design” of combines or agricultural equipment. Third, we find that Petitioner’s experience prong also is too narrow, because it requires experience specifically in the “design” of agricultural equipment or combines. Accordingly, we find that the level of ordinary skill in the art is “a mechanical engineer having familiarity6 with agricultural equipment, such as combines, and hydraulic systems and 5 Indeed, neither party argues that any difference between the proposed levels of ordinary skill would affect the outcome of this proceeding. 6 The familiarity may have been gained, as proposed by Petitioner, by “approximately three years of experience in combine or agricultural equipment design, including components thereof, such as headers and header height control systems” (Pet. 5 (citation omitted)), but also may have been gained through other experience. sensors” or “a person having 10 or more years of experience7 working with combines.”8” slip op. at 11

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

    “We agree with Petitioner that under either party’s proposed construction, Cleveland’s sensor arm, including spring 38, is flexible. See infra pages 41–42 (Section III.B.5.a.ii.b)2.b.). Accordingly, we need not choose between either party’s proposed constructions. 2. Other Claim Terms The parties propose constructions for several additional claim terms, including “pre-loaded,” “angular deflection sensing means,” “control means,” “biasing means,” “first stop means,” “second stop means,” “guard means,” and “flange.” Pet. 11–15; Resp. 19–23. Although the parties have some disagreement as to the meaning of several of these terms, there is no dispute that the references upon which we instituted review disclose these elements of the claims.4 Accordingly, there is no controversy as to these terms that requires our resolution in order to ascertain whether the claims would have been obvious to one of ordinary skill in the art as of the time of the invention in light of the references and arguments before us.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingMixed

    “a “header” or a “combine” per se; rather, it is a header height control apparatus—an “apparatus for detecting and controlling the height above the soil of an agricultural machine as it traverses a field.” Ex. 1001, 1:11–13. Nonetheless, there is no prohibition on a patentee drafting his or her claim in a manner that further limits the invention if additional structure is recited in the claim. As argued by Patent Owner, the recitation of “a non-cut crop header” and “a combine” in the preamble of claim 1, provide antecedent basis for at least two terms recited in the body of the claim—“the header” and “said combine.” The body of the claim reflects that the patentee chose to claim the header control apparatus in terms not limited to said apparatus standing alone, but rather the apparatus as attached (coupled) to the header of a combine. See, e.g., Ex. 1001, 7:33–34 (“a pre-loaded, generally linear flexible arm coupled to a forward portion of the header” (emphasis added)); 7:44–45 (“control means coupled to said header” (emphasis added)); 7:48– 51 (“wherein said flexible arm and angular deflection sensing means are attached to a head housing disposed on a forward portion of said combine” (emphases added)); 7:54–56 (“wherein said mounting bracket further couples said flexible arm to a forward end of said head housing” (emphasis added)). The prosecution history reflects that the patentee at first desired the recitation of “header” in the claim to be limited to “non-cut crop” headers, in an attempt to distinguish cut crop headers. Ex. 1002, 142 (Amendment filed June 19, 2000). The examiner, however, did not accept such argument (id. at 152–53 (Office Action mailed Aug. 24, 2000)), and the patentee did not reiterate or maintain the argument in amending the claims following the August 24, 2000, final rejection. Id. at 158–63 (Amendment filed Nov. 22, 2000). Nonetheless, the prosecution history is informative on this issue. In light of our discussion above regarding the claim language, specification, and the prosecution history, we do not construe the entire preamble as limiting. In particular, the preamble recites an apparatus for maintaining, and is presented clearly as reciting an intended use. That being said, we agree with the Patent Owner that the phrase “non-cut crop header” limits the terms “the header” and “said header” recited in the body of claim 1 such that “the header” and “said header” recited in the body of claim 1 are the same “non-cut crop header” recited in the preamble of the claim.13” slip op. at 23

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

    “e. Conclusion of Obviousness We have considered Petitioner’s evidence and argument and determine that the combination of DPC, Chmielewski, Cleveland, and DA meets the limitations of claims 1–7, 10, 27, 28, and 34, and that one of ordinary skill in the art would have had reason, with rational underpinning, for combining the teachings of these references. We have considered Patent Owner’s arguments to the contrary and determine that they are unpersuasive. The parties do not introduce or rely on objective indicia of nonobviousness. After weighing the evidence, we conclude that Petitioner has shown, by a preponderance of the evidence, that claims 1–7, 10, 27, 28, and 34 would have been obvious over DPC, Chmielewski, Cleveland, and DA.” slip op. at 61

  Patent outcomesUS 6,202,395 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,202,395
• Jackel International Limited / Mayborn USA, Inc. v. Admar International, Inc.No claims unpatentable
  PTAB · Sep 21, 2016 · IPR2015-00979 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–5, 7–12, and 14 were not shown unpatentable under § 103 because the cited references did not teach or suggest the claimed spout.

  RulingsFinal written decision

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

    “In summary, we find that the extrinsic evidence cited by Patent Owner indicates that the ordinary and customary meaning of “spout,” as would have been understood by one of ordinary skill in the art in the context of the entire disclosure of the ’841 patent, is “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” (see Ex. 1001 at 2:6–11, 5:11–13, 5:60–67, 6:2–7, 6:17–23, 10:5–8, Figs. 1, 2, 5, 11–14, claims 1, 8; Ex. 2011, 1688) and does not include a nipple (see Ex. 2022 at 5–8, Figs. 1–3; Valderrama Decl. ¶¶ 91–94). Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2011) (“Even under the broadest reasonable interpretation, the Board’s construction ‘cannot be divorced from the specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.’”). Accordingly, based on the complete record before us, we interpret “spout” to mean “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” and does not encompass a nipple.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “For the reasons discussed above in Section II.A, we determine that the broadest reasonable interpretation in view of the ’841 patent’s specification of “spout” to be “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” and does not encompass a nipple. We agree with Patent Owner that liquid cannot be poured through a nipple. PO Resp. 10 (“Spouts are intended for a stream of liquid, while nipples are intended for liquid to seep.”); see also Tr. 24:2– 26:3, 29:12–16 (arguing liquids are poured through a spout); Ex. 1022 at 140:1–12 (Mr. Valderrama testifying that Raymond and Mutti do not have a spout); Ex. 2026, 34:20–35:15, 50:23–51:7 (Dr. Brown testifying that Raymond does not refer to a spout). We find that liquid cannot be poured through Petitioners’ asserted spout (Pet. 18 (citing Ex. 1002 ¶ 32; Ex. 1003 at 5:17–20, Fig. 2)). The full record persuades us that Petitioners’ asserted spout in Raymond and similar structure in Mutti do not teach or suggest the spout of claim 1. See PO Resp. at 28–30 (citing Valderrama Decl. ¶¶ 135– 138; Ex. 1005, Fig. 2–4; Ex. 2026, 27:24–25:16, 86:10–25). Therefore, we find that Raymond fails to teach or suggest the spout of claim 1, as argued by Petitioners. Petitioners rely on Mutti to teach slits that would be understood to be self-sealing. Pet. 19–20 (citing Ex. 1002 ¶ 69; Ex. 1004, Figs. 10–11). Petitioners’ reliance on Mutti does not remedy the deficiency discussed above regarding the “spout” of claim 1.” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “Declaration of Stuart Brown (Ex. 1002)” because Patent Owner contends that “Dr. Brown admittedly has no experience in the design or development of the no-spill cups at issue in the ’841 patent” and “thus no basis to render an opinion of a person ordinarily skilled in the art.” Paper 31, 1. Petitioners respond that Patent Owner “failed to make a timely objection within ten business days of the institution of trial in this matter as required by 37 C.F.R. 42.64(b)(1)” and that Dr. Brown “is more than qualified to opine as a technical expert witness in the relevant art.” Paper 30, 1. Patent Owner filed a Reply (Paper 34). We agree with Petitioners that Patent Owner’s Motion to Exclude is not in compliance with 37 C.F.R. § 42.64(b). Even if Patent Owner’s Motion complied with our rules, however, as discussed above, we considered the Brown Declaration against the full record and gave it appropriate weight. And even having considered the relevant portions of the Brown Declaration, we are persuaded by Patent Owner’s arguments regarding whether the relied upon references teach or suggest “spout.” We, thus, deny Patent Owner’s Motion to Exclude.” slip op. at 26

  • Strike new argumentNew argument consideredDecided for petitioner

    “We agree with Petitioners that the portions of Petitioners’ Reply identified by Patent Owner are properly responsive to arguments presented by Patent Owner in its briefs. Also, to the extent any of the identified portions can be deemed new arguments, even when those new arguments are considered, as discussed above, we are nevertheless persuaded by Patent Owner’s arguments regarding whether the relied upon references teach or suggest “spout,” and so the objection is overruled.” slip op. at 25

  Patent outcomesUS 8,695,841 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,695,841
• Zepp Labs, Inc. v. Blast Motion, Inc.Institution denied
  PTAB · Aug 29, 2016 · IPR2016-00672 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4-7, 9, 11, 14-16, and 19 were unpatentable over the asserted § 103 grounds.

  RulingsInstitution decision

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

    “inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, we determine that the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in showing that claims 1, 47, 9, 11, 1416, and 19 are unpatentable.” slip op. at 2

  • BurdenInstitution denied

    “artisan would have had reason to modify Mahajan’s microcontroller such that these functions would be performed by the microcontroller. Petitioner argues that a person of ordinary skill would have been able to program these functions in either the microcontroller of Mahajan’s iClub or the mobile device. See, e.g., Pet. 28. In support, Petitioner contends “whether specific functionality is implemented in the software running on the iClub or software running on the mobile device is a matter of design choice.” Pet. 2728 (citing Ex. 1003 ¶ 123, Ex. 1005 ¶ 62). The argument that implementing the software in the iClub would be a matter of design choice is conclusory, and lacks sufficient factual support. See Prelim. Resp. 2627. Although the Petition mentions power consumption, cost, and speed as possible considerations affecting the purported design choice, the Petition does not explain sufficiently how these factors affect or motivated the alleged design choice advanced by Petitioner. Cutsforth, Inc. v. Motivepower, Inc., No. 20151316, slip. Op. 78 (Fed. Cir. Jan. 22, 2016) (“Merely stating that a particular placement of an element is a design choice does not make it obvious. The Board must offer a reason for why a person of ordinary skill in the art would have made the specific design choice” alleged by Petitioner.).” slip op. at 13

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

    “under the broadest reasonable interpretation standard, the proper construction includes ‘data that comprises sensor values.’” Pet. 8 (citing Ex. 1003 ¶ 47). Patent Owner disagrees that “said data” is indefinite, and instead asserts that “said data” should be construed as “data that comprises sensor values.” Prelim. Rep. 6. Aside from the indefiniteness issue, Petitioner and Patent Owner appear to agree as to the proper construction of “said data.” That would appear to weigh in favor of Patent Owner’s position that “said data” is not indefinite. Notwithstanding the apparent disagreement concerning this term, we do not opine further on this issue at this time, as construction of the term is not necessary to any determination made herein. 2. Other Claim Terms We determine that no express construction of any other claim terms is necessary.” slip op. at 7

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

    “is deficient in articulating a reasonable reason to combine the teachings of Mahajan, Edis, and Su. See Prelim. Resp. 35–36. Specifically, Petitioner has not shown sufficiently why a skilled artisan would have modified Mahajan to incorporate the recited functions, allegedly taught by Edis and/or Su. For example, Petitioner asserts that “[u]sing thresholding techniques of Edis and Su within the microcontroller of Mahajan, to for example distinguish ‘real swing versus your warm up’ motion, would have been obvious because thresholding sensed data against pre-specified values is common to microprocessor controller DAS.” Pet. 30 (citing Ex. 1003 ¶ 127). As another example, Petitioner baldly states that for “signifying a prospective event,” “it would have been obvious to a person of ordinary skill at the time of the invention to combine Edis with Mahajan, for example, as the way to distinguish a real swing from warm up motion, as is used for signifying a prospective event.” Pet. 32. Similarly, Petitioner states that the “false-positive detection methodology of Su and the variable detection strategy of Edis could have been obviously programmed in the microcontroller of Mahajan.” Pet. 34. Stating only that the functions “could have been obviously programmed” or that the combinations would yield the claim limitation is insufficient rationale. The Petition fatally omits the express articulation of a reason why a person of ordinary skill in the art would have combined the teachings as Petitioner asserts. See KSR Int’l Co., v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions”). The omission of a rationale is particularly troublesome in light of Patent Owner’s argument that there is a lack of showing of why it would have been obvious to modify Mahajan’s teachings “so that its microcontroller—with its limited resources and processing power—was responsible for swing identification, rather than the receiving computer.” Prelim. Resp. 27.9 And Petitioner’s reliance on Mr. Nesbit’s 9 We also are persuaded by Patent Owner’s arguments, and the proffered analysis, regarding the deficiencies in the portions Dr. Nesbit’s Declaration identified by Patent Owner, as they amount to conclusory opinions of a rationale for the alleged combinations and lacking factual support or objective evidence supporting those opinions. Prelim. Resp. 2729. Declaration is unavailing as the Declaration repeats the conclusory statement included in the Petition with no further rationale or explanation.” slip op. at 16

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,903,521
• Mastercard International Inc. v. Leon StamblerAll claims unpatentable
  PTAB · Jul 6, 2016 · CBM2015-00044 · APJ Peter P Chen · CBM · Final written decision

  Claims 51 and 53 are unpatentable as anticipated by Davies; claims 51, 53, 55, and 56 are unpatentable as obvious over Davies and Meyer; claim 55 over Davies and Nechvatal; and claim 56 over Davies, …

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “F. Level of Ordinary Skill in the Art Petitioner’s proposal for the level of ordinary skill in the art is “at least a bachelors degree in computer programming and two years’ experience as a programmer or developer in the field of computer science, with a working understanding of cryptographic operations for transforming original input into a coded output using a known algorithm.” Pet. 14–15. Patent Owner has proposed similarly, that one of ordinary skill in the art would possess “(1) undergraduate education in mathematics, physics, computer science, electrical engineering or similar technical subject; and (2) either postgraduate education in networking, cryptography, or other discipline encompassing information theory, or equivalent experience with applications involving communication of financial, military, medical or similarly sensitive data over secure and non-secure networks.” Prelim. Resp. 30–31. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 16

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

    “1. “variable authentication number (VAN)” In the Decision to Institute, we construed the term “variable authentication number” or “VAN” as “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.” Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 8–9 (PTAB Oct. 31, 2014) (Paper 10). Patent Owner “does not challenge this construction.” PO Resp. 16–17. Patent Owner asserts additional construction of the term is necessary for CBM standing issues, but does not elaborate further. PO Resp. 1. Patent Owner also argues we incorrectly applied the broadest reasonable interpretation to the term in the Decision to Institute. PO Resp. 9. The Decision to Institute noted that our review of the claims of the expired ’302 patent is similar to that of a district court’s review, In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005), but inadvertently mentioned the broadest reasonable interpretation standard in construing this term. Dec. to Inst. 7–8. We reaffirm our agreement with Patent Owner that the Phillips framework is applied to the expired ’302 patent. Our construction of “VAN” is the same under either claim construction standard. We reject Patent Owner’s undeveloped argument regarding standing, and maintain the construction of VAN from the Decision to Institute, as the ordinary and customary meaning of the term: “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.”” slip op. at 10

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

    “2. Sequence of method steps: receiving, generating In the Decision to Institute, we agreed with Patent Owner and construed the sequence of method steps in independent claim 51 to mean that at least a portion of the receiving step must precede the generating step. Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 11–14 (PTAB Oct. 31, 2014) (Paper 10). We maintain that construction as the ordinary and customary meaning of the sequence of the receiving and generating method steps.” slip op. at 11

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

    “intended use of an invention is generally not treated as limiting the scope of the claim. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). However, “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.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). “The effect preamble language should be given can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). When the limitations in the body of the claim rely upon or derive essential structure from the preamble elements, e.g., the preamble serves as an antecedent basis for limitations in the claim, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). In this case, the preamble of independent claim 51 recites “a credential being previously issued,” and the limitations of the claim include “determining whether the at least a portion of the received funds transfer information is authentic by using the VAN and the credential information.” Ex. 1001, 33:18–19, 33:29–31. Thus, the preamble’s recitation of “a credential” is an antecedent basis for the recited “the credential information” in the “determining” step, and we determine that the preamble limits the scope of the challenged independent claim 51 and dependent claims 53, 55, and 56.” slip op. at 11

  Patent outcomesUS 5,793,302 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,793,302
• Black & Decker (U.S.) Inc. / Stanley Black & Decker, Inc. v. Christy, Inc.All claims unpatentable
  PTAB · Jun 17, 2016 · IPR2015-00468 · APJ Donna M Praiss · IPR · Final written decision

  Claims 1 and 10 are anticipated by Hayden; claims 1–18 are unpatentable on the instituted anticipation and obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “machines” and “[t]he ordinary artisan in the field would typically have a bachelor’s level degree in mechanical engineering (or gained such knowledge by equivalent experience), and experience developing vacuum machines that filter air.” Pet. 26 (citing Ex. 1001, 1:6–9; Ex. 1013 ¶ 8). Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art or provide an alternative definition in response. For purposes of this Decision, we consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). To the extent that we need to consider the parties’ positions on the issue, we adopt Petitioner’s position.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for patent owner

    “During prosecution, Patent Owner distinguished a pulse back cleaning system for multiple reasons, including the reason that the claimed invention “does not flip-flop between vacuuming and blowing.” File Wrapper of U.S. Patent No. 7,082,640 B2, Ex. 1002, 36. Patent Owner also distinguished other prior art for the reason that it “cannot function without a second centrifugal fan and associated components and limitation (e.g., transverse duct and array of parallel ducts)” whereas the invention was described as “valve 31 and filter 21 are not connected to any other fan, compressor or vacuum source.” Id. at 59. We agree with the district court that the intrinsic evidence does not present a clear and unmistakable disavowal of the source of ambient air. Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (the standard for disavowal of claim scope is “exacting”). Figures 2–5 of the ’640 patent show three ambient air ducts 36 under cover 25. Ex. 1001, Figs. 2–5, 3:1–9, 4:22–27, 5:15–17. As the district court found, “[i]t is not clear from the drawing where that duct terminates, and the detailed description states only that ‘[t]he ambient air duct 36 extends from the ambient air port 31b into the source of ambient air 16.’” Ex. 2004, 12. Similarly, the district court found that the statements in the prosecution history regarding the ambient air also “do not exclude the possibility that ‘ambient air’ could come from inside––or both inside and outside––the vacuum head during backflushing.” Id. at 13. Moreover, the distinctions over the prior art included “differences unrelated to the source of the air used for backflushing.” Id. Based on the complete trial record, including the prosecution history, we agree with the district court’s construction of “air surrounding the canister” as the broadest reasonable interpretation of the term “ambient air.” See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (“The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.”). Accordingly, we maintain our construction of “ambient air” to mean “air surrounding the canister.”” slip op. at 11

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

    “(2d ed. 1951) (Ex. 3001). The canister component of the vacuum cleaning machine described in the ’640 patent holds filters and particles filtered by the filters that may settle to the bottom of the canister. Ex. 1001, 3:30–31, 4:50–54. At oral hearing, Patent Owner stated “I believe we chose the word cannister because we are talking about a small unit,” but added “[a]nd I’m not saying this is a distinction.” Tr. 42:12–13, 16. According to Patent Owner, the term is “a common word for this now” as opposed to being uniquely defined by the Specification. Id. at 42:24–25. Patent Owner summarized the generic manner in which the term is used in the ’640 patent as: “We are saying, okay, it doesn’t matter. It’s cannister, a cabinet, a compartment. They are all some form of container.” Tr. 42:25–43:2. Petitioner implicitly construes this term as a “chamber” and not limited to a particular configuration. Pet. Reply 2–5. Petitioner asserts that there is no disavowal in the Specification of configurations for the canister. Id. at 3. In further support of its position, Petitioner quotes the testimony of Mr. Grant describing the prior art wherein he states “[t]he canister of the vacuum is the part where the filters reside and dust is separated from the incoming vacuumed air and collected.” Id. (quoting Ex. 1013 ¶ 10). Based on the entire record, we determine that the ordinary and customary meaning of the term “canister,” as would be understood by one of ordinary skill in the art in the context of the entire disclosure, is “a container.” See Translogic, 504 F.3d at 1257.” slip op. at 13

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

    “We are not persuaded by Patent Owner’s arguments because neither the ’640 patent claims nor the teachings of Hayden preclude reading the term “canister,” as construed herein, on Hayden’s “dirty air chamber below plate 8 in which the filters 7 are located.” See Pet. 26 (citing Ex. 1003, Fig. 1). The ’640 patent itself describes such an embodiment in which the canister component is located under a plate. Ex. 1001, 4:59–61 (“A central housing 44 is preferably concentrically located on top of the circular plate 19 covering the cannister 10.”). In other words, Patent Owner’s plate 19 covers canister 10 just as Hayden’s plate 8 covers Hayden’s canister. As such, we find that Hayden discloses “at least two valves disposed outside of said cannister” and “three valves disposed outside of said cannister” as recited in claims 1 and 10, respectively. We also find no limitation in the ’640 patent claims that would preclude a common chamber between the valves and the vacuum source. No specific connective structure between the valves and the vacuum source is required by “each said valve being in pneumatic communication between said vacuum source and a corresponding one of each of said outlet ports and permitting air to be drawn by said vacuum source from said inlet port simultaneously through corresponding ones of said filters,” as recited in claims 1 and 10. Referring to Figure 1 of Hayden, correspondence exists between each valve 11, outlet port 9, and filter 7. Ex. 1003, Fig. 1, 3:40–45. In addition, there is pneumatic communication between these elements of Hayden due to an “air flow path between the dirty air chamber and clean air chamber 10” in which valve chamber 31 lies. Id. at 4:26–31. Furthermore, independent claims 1 and 10 each use the term “comprising,” signaling an open-ended structure, allowing for the inclusion of a common chamber.” slip op. at 20

  Patent outcomesUS 7,082,640 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,082,640
• Black & Decker (U.S.) Inc. / Stanley Black & Decker, Inc. v. Christy, Inc.All claims unpatentable
  PTAB · Jun 17, 2016 · IPR2015-00472 · APJ Donna M Praiss · IPR · Final written decision

  Claims 1 and 10 are anticipated by Eiben; claims 1, 4–6, 10, and 13–15 are obvious over Eiben and Wellan; claims 7–9 and 16–18 are obvious over Eiben, DE219, and Howeth.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “knowledge by equivalent experience), and experience developing vacuum machines that filter air.” Pet. 25 (citing Ex. 1001, 1:6–9; Ex. 1010 ¶ 8). Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art or provide an alternative definition in response. However, Patent Owner characterizes the field of art for the invention as “the art of portable vacuums” while characterizing the field of art for Eiben as “bag house art.” PO Resp. 29. For purposes of this Decision, we consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). To the extent that we need to consider the parties’ positions on the issue, we adopt Petitioner’s position. We find Patent Owner does not indicate why the field of art should be limited to portable vacuums other than by reference to casters 28 in Figure 2 of the ’640 patent which are said to “allow the cannister 10 to be freely rolled in any direction.” Id. at 28 (citing Ex. 1001, Fig. 2, 4:22–23).4 We also find the ’640 patent describes the invention as broadly relating “generally to vacuum cleaning equipment and more particularly concerns a vacuum cleaner having filters backflushed with ambient air.” Ex. 1001, 1:6– 9; Pet. 25.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “The district court found the meaning of “ambient air” was not limited by clear and unmistakable evidence to either (1) air surrounding the outside of the vacuum cleaning machine or (2) air that is not forced or compressed. Opinion and Order, Ex. 2004, 6–14. In our Decision on Institution, we agreed with the district court’s construction and analysis, which is broader than Petitioner’s proposed construction, and found it consistent with the Specification. Dec. on Inst. 7–8. Specifically, Figure 2 of the ’640 patent shows cover 25 “seated on” plate 19 to protect the valves, the operating mechanisms, the controller, and the vacuum source, which are all “mounted above” plate 19. Ex. 1001, 4:22–25. Thus, ambient air coming through the valves may come from the vacuum head under the cover; it need not come exclusively from outside the vacuum machine as Petitioner asserts. There is no evidence in the record whether the ambient air under the cover necessarily would have a particular pressure, including whether it is under atmospheric pressure. See Tr. 43:13–44:2 (Patent Owner describing ambient air as being “in comparison to what is inside of the cannister”). During prosecution, Patent Owner distinguished a pulse back cleaning system for multiple reasons, including the reason that the claimed invention “does not flip-flop between vacuuming and blowing.” File Wrapper of U.S. Patent No. 7,082,640 B2, Ex. 1002, 36. Patent Owner also distinguished other prior art for the reason that it “cannot function without a second centrifugal fan and associated components and limitation (e.g., transverse duct and array of parallel ducts)” whereas the invention was described as “valve 31 and filter 21 are not connected to any other fan, compressor or vacuum source.” Id. at 59. We agree with the district court that the intrinsic evidence does not present a clear and unmistakable disavowal of the source of ambient air. Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (the standard for disavowal of claim scope is “exacting”). Figures 2–5 of the ’640 patent show three ambient air ducts 36 under cover 25. Ex. 1001, Figs. 2–5, 3:1–9, 4:22–27, 5:15–17. As the district court found, “[i]t is not clear from the drawing where that duct terminates, and the detailed description states only that ‘[t]he ambient air duct 36 extends from the ambient air port 31b into the source of ambient air 16.’” Ex. 2004, 12. Similarly, the district court found that the statements in the prosecution history regarding the ambient air also “do not exclude the possibility that ‘ambient air’ could come from inside––or both inside and outside––the vacuum head during backflushing.” Id. at 13. Moreover, the distinctions over the prior art included “differences unrelated to the source of the air used for backflushing.” Id. Based on the complete trial record, including the prosecution history, we agree with the district court’s construction of “air surrounding the canister” as the broadest reasonable interpretation of the term “ambient air.” See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (“The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.”). Accordingly, we maintain our construction of “ambient air” to mean “air surrounding the canister.”” slip op. at 10

  • Expert testimonyPatent owner expert discountedDecided for patent owner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We find Patent Owner’s arguments unpersuasive because the ’640 patent claims are sufficiently broad so as to encompass the distinctions drawn between the figures in the ’640 patent and Eiben. While claims 1 and 10 read on Patent Owner’s embodiment shown in Figures 1–5, the claims also read on Eiben’s embodiment shown in Figures 1 and 3–6. See Ex. 1001, 3:28–4:56 (describing the vacuum shown in Figure 1); Ex. 1003, 3:67–4:57 (describing the vacuum shown in Figures 1, 3–6). Based on the evidence presented, we find nothing in the claim language that precludes Eiben’s “compartment units 10, 12, 14, and 16 [that] are assembled together and mounted atop a hopper 24,” from being a canister with inlet port 28 and at least two outlet ports 30 as required by claims 1 and 10. Pet. 26; id. at 29– 31. Claims 1 and 10 both signal an open-ended structure with the transition term “comprising,” allowing for (1) the inclusion of walls or compartments within the canister, including a hopper compartment at the bottom, and (2) inlet port 28 to include ducts 27. Similarly, we find nothing in claims 1 and 10 that precludes a bag filter as used in Eiben, because the claims do not recite a dirty air/clean air arrangement relative to the outside/inside of the filters. Patent Owner’s arguments regarding the ’640 patent having the dirty air/clean air on the outside/inside of the filters are not tied to claim limitations. See PO Resp. 18–27; Pet. Reply 6–8. Claims 1 and 10 merely require that air be drawn “through” the filters. Ex. 1001, 8:13, 17, 9:2, 5. Eiben describes air passing through the walls of its filter bags. Ex. 1003, 4:30–31 (“the air passes transversely through the bags’ walls”), 4:48 (“reverse air flow through the bags”). Therefore, the type of filter used in the ’640 patent is not a patentable difference over Eiben.” slip op. at 19

  Patent outcomesUS 7,082,640 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,082,640
• American Simmental Association v. Leachman Cattle Of Colorado, LLCAll claims unpatentable
  PTAB · Jun 13, 2016 · PGR2015-00005 · APJ Michael W Kim · PGR · Final written decision

  Claims 1–20 are held unpatentable under § 101; claims 1–4, 8–12, and 14–19 are also obvious over Wang alone. The motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Ultimately, we discern that Petitioner and Patent Owner are not very far apart. On education, we agree with Petitioner that evaluating genetic quality is sufficiently complex that it would require, at a minimum, a Master’s Degree in the field. On work experience, we agree with both parties that several years of experience in the field is necessary, with the optimum for a Master’s Degree being five years, and commensurately less for an individual possessing a PhD. We agree with Patent Owner that some understanding of economics and software is required, but agree with Petitioner that such understanding need only be a basic one that can be readily acquired through work experience in the field, with no formal education in that field being necessary. Finally, we disagree with Patent Owner that formal training or experience specific to the feeder calf market needs to be addressed separately, as, for the reasons set forth below, we are unpersuaded that evaluating feeder calves as a subgroup differs materially from evaluation of cattle overall, and that one of ordinary skill in evaluating of genetic quality of cattle generally would not have been familiar with feeder calves specifically, especially when the overwhelming goal of cattle production is to sell beef, of which the primary type sold is feeder calves. Perhaps more importantly, the significance of the level of ordinary skill in the art here is the role it plays in an obviousness analysis, and Patent Owner has not explained in a sufficiently persuasive manner how the disparate definitions impact dispositively the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Accordingly, unless expressly indicated otherwise, we determine that a specific finding on the level of skill in the art is not required, because the prior art itself reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 6

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

    “3. “genetic merit scorecard” Each of independent claims 1, 8, and 14 recite “genetic merit scorecard.” Petitioner asserts that “genetic merit scorecard” should be construed as “visual display of genetic merit information.” Pet. 17–18 (citing Ex. 1001). Patent Owner does not dispute this construction. PO Resp. 23–26. After considering all evidence and assertions concerning this claim construction, we agree with Petitioner that “genetic merit scorecard” should be construed as “visual display of genetic merit information.”” slip op. at 11

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

    “Owner are rooted sufficiently in the express claim language, and in any case, are peripheral to the above-identified fundamental concept, in that while they may represent variations of the fundamental concept, we are unpersuaded that they alter materially the fundamental concept itself. For example, being “dynamic,” while perhaps placing some temporal aspects on “determining an animal’s relative economic value based on its genetic and physical traits,” does not alter the fact that independent claim 1 is fundamentally directed to “determining an animal’s relative economic value based on its genetic and physical traits.” A similar analysis is applicable to “sale group of feeder calves,” “disparate sources,” and “transforming.” The Specification further supports Petitioner’s argument. The “Field of the Invention” section set forth in the ’557 patent reads as follows: Embodiments of the present invention relate generally to the field of genetic quality and relative market value of livestock. More specifically, embodiments of the present invention facilitate an owner or potential buyer of one or more sale groups of livestock to evaluate the relative market value of the sale groups based on predictions derived from genetic merit estimates of the herd. Ex. 1001, 1:23–29. The “Description of Related Art” section that follows delves heavily into problems associated with determining what the actual value of the livestock is, and more specifically what premium or discount the livestock should command based on these desired genetic merits. Ex. 1001, 1:47–49. The first three sentences of the “Summary” section then read as follows: The Applicants recognize the importance of determining relative market value of a sale group or a group of animals offered for sale from a livestock operation. Various embodiments of methods and apparatus for determining relative market value of a sale group are provided herein. Exemplary embodiments of the present invention include an online genetic merit scorecard system. Ex. 1001, 2:6–12. Based on the above cited portions of the ’557 patent, we determine that the Specification supports heavily Petitioner’s proposed fundamental concept. The unambiguous disclosure in the Specification as to the nature of the invention indicates to us that Petitioner has not over-generalized here.” slip op. at 16

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “PO Resp. 66. However, we are unpersuaded that (a) valuing a group of animals is “significantly more” than valuing a single animal, (b) tailoring a price to a user is “significantly more,” and (c) comparison shopping is “significantly more,” whether taken in succession or as a whole. Indeed, these requirements appear to be routine parts of commerce involving the fundamental concept of “determining an animal’s relative economic value based on its genetic and physical traits.” Patent Owner asserts additionally that the claimed invention does not merely recite the alleged abstract idea and say “apply it” on computer components, because the recited computer components are an integral part of rooting the invention in computer technology. Specifically, Patent Owner asserts that the claimed invention involves novel technical software that “transforms genetic and performance information associated with the sale group into a dynamically-generated scorecard available to users on-demand.” PO Resp. 67. We disagree, as the recitation of software in the claim, if any at all, is at a highly abstract level, in that the claims recite no more than taking in and outputting data, with no detail as to how that data is manipulated between input and output.5 Absent such detail, we are unpersuaded that the claims are reciting any more than “applying to software” the fundamental concept of “determining an animal’s relative economic value based on its genetic and physical traits,” which is not “significantly more.” As for “dynamically-generated scorecard available to users on-demand,” our analysis of the same in the abstract idea prong of Alice is equally applicable here, namely, that 5 “MR. COHN: Your Honor, the little calculator that’s in Windows is a dynamic calculator. It’s been there for 25, 30 years. You pull it up. You type in five times two and you hit equals and it spits the answer back to you on demand right there.” Tr. 85:24–86:2. we are unpersuaded that “dynamic” and “on-demand” are sufficiently related to the claims. Patent Owner cites DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) in support of their position, but it is precisely because of the instructive nature of the problem-solution approach in that case that we arrive at our conclusion here. Specifically, DDR Holdings held that the “problem of retaining website visitors” involves a “claimed solution [that] is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR Holdings, LLC, 773 F.3d at 1257. Such is not the case here, where the problem, as clearly articulated above in the aforementioned portions of the Specification, is “determining an animal’s relative economic value based on its genetic and physical traits.” We are unpersuaded that this problem, or its solution, involves or requires anything computer-related. 4. Conclusion For the foregoing reasons, we conclude that Petitioner has shown, by a” slip op. at 20

  Patent outcomesUS 8,725,557 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo
  Patents in suitUS 8,725,557

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.