- Allscripts Healthcare Solutions, Inc. v. Mymedicalrecords, Inc.All claims unpatentablePTAB · Aug 26, 2015 · CBM2015-00022 · APJ Barbara A Parvis · CBM · Final written decision
Claims 8–12 are unpatentable under § 101 as directed to nonstatutory subject matter; the Board did not reach the anticipation or obviousness grounds.
RulingsFinal written decision- BurdenUnpatentable
“Second, we consider the challenged claims as an ordered combination. Id. at 2359. On this record, when viewed as a whole, the challenged claims 8–12 simply recite the concept of user management performed by a generic computer. The challenged claims, for example, do not purport to improve the functioning of the computer itself. Nor do they improve another technology or technical field. Petitioner additionally relies on the Declaration of Dr. Bysinger (Pet. 20–28), who testifies that the recited elements including “server,” “storing files . . . in a computer readable storage medium,” and “user interface on a computing device” were well-known conventional concepts in 2005. Ex. 1008 ¶¶ 30–32. Dr. Bysinger additionally states “the abstract idea of privately accessing and managing patient medical records . . . [has] existed since at least the promulgation of HIPAA.” Id. ¶ 33. We credit Dr. Bysinger’s statements because they are consistent with the challenged claims. Challenged dependent claims 9–12 add nothing that alters the above analysis under § 101. Claims 9, 10, 11, and 12 recite additional limitations, such as wherein the access information comprises a password, receiving files from a second provider, wherein the files comprise image format files including wills and powers of attorney, respectively. Based on the present record, these comprise either generic limitations, such as using a password for access or sending a file in a known image format, or they relate to organizing human activities, such as user management of legal and financial documents, in addition to health records. Accordingly, we determine that Petitioner has shown by a preponderance of the evidence that claims 8–12 of the ’466 Patent are unpatentable under 35 U.S.C. § 101, because they are directed to non-statutory subject matter.” slip op. at 11
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Petitioner asserts that claims 8–12 of the ’466 Patent are unpatentable under 35 U.S.C. § 101, because they are directed to the abstract concept of allowing individuals to manage and access their health records and other medical or legal files privately. Pet. 19. We agree with Petitioner that the claimed invention is directed to an abstract idea: privately managing files by the user. The preamble and all claim limitations of the challenged claims support this view of the claims, and the ’466 Patent consistently describes the invention as allowing an individual to control access to their medical records. See, e.g., Ex. 1001, 5:21–23. Management or control by the user or patient rather than by the health care provider is a method of organizing a human activity. On this record, the concept is an abstract idea, just like the basic hedging concept at issue in Bilski and the abstract idea of intermediated settlement in Alice.3” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We conclude that receiving and sending data is a routine and conventional computer function. As explained in Alice, “use of a computer to obtain data . . . and issue automated instructions . . . are ‘well-understood, routine, conventional actitiv[ies]’ previously known to the industry.” Alice, 134 S. Ct. 2359; see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”). Restricting access by password also is routine and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 712–13, 717 (Fed. Cir. 2014) (determining that representative claim 1 is patent ineligible although it recites “a fourth step of restricting general public access.”). Similarly, providing a user interface is an insignificant activity. See Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1342–43 (Fed. Cir. 2013) (determining that claim 1 is patent ineligible although it recites a “claim folder,” which “manages claim information . . . by providing a structured and easy to use interface.”). Claim 8 includes additional recitations relating to how data is stored and managed on the server. We determine that these limitations recite generic functions performed by a generic server and computing device. Storing files is a basic computer function. See Alice, 134 S. Ct. at 2359 (“Using a computer to create and maintain ‘shadow’ accounts amounts to electronic recordkeeping—one of the most basic functions of a computer.”). Additionally, regarding the recitation in challenged claim 8 of “wherein the files are maintained on the server independently from any files maintained by the health care provider” (Ex. 1001, 17:18–19 (emphasis added)), we note the representative claim in Alice had a similar recitation. See Alice, 134 S. Ct. at 2352. In particular, in Alice, the representative claim included the following:” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Petitioner additionally relies on the Declaration of Dr. Bysinger (Pet. 20–28), who testifies that the recited elements including “server,” “storing files . . . in a computer readable storage medium,” and “user interface on a computing device” were well-known conventional concepts in 2005. Ex. 1008 ¶¶ 30–32. Dr. Bysinger additionally states “the abstract idea of privately accessing and managing patient medical records . . . [has] existed since at least the promulgation of HIPAA.” Id. ¶ 33. We credit Dr. Bysinger’s statements because they are consistent with the challenged claims.” slip op. at 11
Patent outcomesUS 8,301,466 unpatentableClaim construction§ 101 eligibilitycites Alice · BilskiPatents in suitUS 8,301,466 - Skyhawke Technologies, LLC v. L&H Concepts, LLCAll claims unpatentablePTAB · Jul 10, 2015 · IPR2014-00437 · APJ James T Moore · IPR · Final written decision
Claims 8–11, 14, and 18 are unpatentable as obvious over Palmer, Osamu, and Vanden Heuvel under § 103(a).
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We think neither witness is persuasive on this point, and the inventor’s original disclosure is closer to the actual state of the art at the time the invention was made. We thus turn to the Patent Specification, at Ex. 1001, 2:27–40, as representative of a more objective form of evidence. In its most basic form the inventive apparatus is a comfortably handheld, self-contained computer unit having a non-volatile memory, a power source, a general output display for selectively displaying a plurality of informational screens stored in the memory, and a program that determines logical screen and information sequence and processes the data entered. The unit is provided with key entry means for retrieving and selectively displaying various screens from the memory on the display and for entering game data into each screen to be stored in the memory. The provision of a general output display, the variety of specialized screens for organization of data, and the handheld portability of the invention result in a device with nearly unlimited potential. We believe this passage reflects most fairly the field of the invention. Therefore, we find the field to be that of portable computing devices for the entry, organization, and analysis of data, including, but not limited to, sports data.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We find that the preamble is non-limiting. A claim preamble has the import that the claim as a whole suggests for it. When the claim preamble recites structural limitations of the claimed invention, the PTO and courts give limiting effect to that usage. Conversely, when the claim body defines a structurally complete invention and the preamble only states a purpose or intended use for the invention, the preamble is not limiting. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). While the preambles in the challenged claims may give some overall context for the claim limitations, we find that they are not necessary to give life to the claim terms or breathe meaning into the claims. The claims and the Specification indicate that the challenged claims may be used in the field of golf or similar sporting events, without necessarily limiting their application only to golf.4 We observe that claims 9–11 and 18 each contain specific references to golf in the body of the claim. Ex. 1001, 18:31– 65, 21:10–34. Claims 8 and 14 do not. Id. at 18:5–30, 19:34–62. In any event, as Palmer describes a handheld golf device, for purposes of this decision we see no practical difference in whether the “golf” portion of the preamble applies to the challenged claims, as handheld golf devices were well known.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“asserts multiple errors with the Petitioner’s construction, and that the claim language “is clear on its face and needs no additional construction.” Prelim. Resp. 9. In its Response, the Patent Owner effectively asserts that “pre-game,” to have a meaning distinct from game interactive, must not include game play or practice. PO Resp. 20. While the claims are lengthy, they are easily understood without reference to additional sources. We observe that no particular order of steps is recited or required except where expressly temporally limited in the claim (e.g., pre-game, game interactive, and post-game). We determine that pre-game means at any time prior to a game. Likewise, game-interactive means during a game, and post-game means after a game.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do think this additional testimony undercuts at least one portion of the motivation rationale put forth by the Petitioner. Based on the preponderance of the evidence, we are not persuaded that one of ordinary skill in the art at the time the invention was made would have made the combination for one reason advanced by Dr. Gutwin — increasing the display size.” slip op. at 16
Patent outcomesUS 5,779,566 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 5,779,566 - Skyhawke Technologies, LLC v. L&H Concepts, LLCAll claims unpatentablePTAB · Jul 10, 2015 · IPR2014-00438 · APJ James T Moore · IPR · Final written decision
Claims 1–3 are unpatentable as obvious over Palmer and Vanden Heuvel; claims 4, 5, 13, and 17 are unpatentable over Palmer, Vanden Heuvel, and Osamu.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We have determined that Mr. Ball’s testimony as to the level of ordinary skill in the art is most credible and accurate – while the level of skill in the pertinent time period was somewhat low, that “an ordinary artisan would have at least some experience working in the field” either “designing or building” portable computing devices. Ex. 2014 ¶ 18. In other words, the skilled artisan would have a grasp as to what was practicable to do back in the time the invention was made.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We find that the preamble is non-limiting. A claim preamble has the import that the claim as a whole suggests for it. When the claim preamble recites structural limitations of the claimed invention, the PTO and courts give limiting effect to that usage. Conversely, when the claim body defines a structurally complete invention and the preamble only states a purpose or intended use for the invention, the preamble is not claim limiting. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). While the preambles in the challenged claims may give some overall context for the claim limitations, we find that they are not necessary to give life to the claim terms or breathe meaning into the claims. The claims and the Specification indicate that the challenged claims may be used in the field of golf or similar sporting events, without necessarily limiting their application only to golf.4 We observe that claims 1–5 and 17 each contain specific references to golf in the preamble of the claim. Ex. 1001, 16:65– 17:41, 20:50–21:9. Claim 13 does not discuss golf in either the body or the preamble. Id. at 19:3–33. In any event, as Palmer describes a handheld golf device, for the purposes of this decision, we see no practical difference in whether the “golf” portion of the preamble applies to the challenged claims, as handheld golf devices were well-known.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyMixed
“To invoke § 112, paragraph six, the alleged means-plus-function claim element must not recite a definite structure that performs the described function. Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996). As in Cole, the drafter of the instant claims was “enamored of the word ‘means,’” id., utilizing it seven times in the final paragraph of claim 1 to include a piece of structure which essentially was completely recited within the claim. Stripped of the excessive “means” verbiage, claim 1 recites: key entry . . . wherein the key entry . . . includes first key . . . comprising one entry key for selectively displaying information screens, second screen-dependent field select key . . . the second screen-dependent field select key . . . comprising two bi-directional tab keys for scrolling in opposite directions through the data input fields on a displayed information screen, and third screen-dependent value select key . . . the third screen-dependent value select key . . . comprising two bi-directional scroll keys for scrolling in opposite directions through the predefined data associated with the data input field on the displayed information screen. Ex. 1001, 17:7–26 (“means” language deleted). We are persuaded that such detailed recitation of structure (including three particular types of keys with particular functions) removes these limitations of claim 1 from the ambit of § 112, sixth paragraph. As a consequence, we conclude the final paragraph of claim 1 describes a user 5 Because the ’566 patent has an effective filing date before September 16, 2012, we refer to the pre–AIA version of 35 U.S.C. § 112. key interface which requires three types of keys, each having the particular function recited — an entry key for selecting a display screen, two bi-directional tab keys for scrolling through entry fields in a display screen, and two bi-directional scroll keys for scrolling through data to input in a display screen.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We believe the Patent Owner is misinterpreting the guidance of the Supreme Court in its argument. As the Supreme Court noted: A person of ordinary skill is also a person of ordinary creativity, not an automaton. . . . When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. . . . [We] must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417–21 (2007). While the Petitioner’s proposed screen size motivation is no longer persuasive (or necessary) to this panel and this decision, we conclude that a preponderance of evidence in this trial supports a conclusion that replacing an alphanumeric keyboard with a set of tab and scroll keys was a substitution of one known data entry method with an equivalent data entry mechanism. We expressly reject the screen washout argument made, and the underlying testimony in Mr. Ball’s Declaration.” slip op. at 19
Patent outcomesUS 5,779,566 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 5,779,566 - Clariant Corporation v. CSP Technologies, Inc.All claims unpatentablePTAB · Jun 10, 2015 · IPR2014-00375 · APJ Phillip J Kauffman · IPR · Final written decision
Claims 1–7 are unpatentable as anticipated by Hekal ’108 and as obvious over Wheeler with one of Hekal ’108, Hekal ’937, or Sacherer.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“wherein the flexible lip seal member is designed to be sufficiently deflective so as to provide a sealing position, when the skirt of the lid is closed over the top container, which results in a substantially moisture proof seal between the lid and the container. Claim 1 does not state explicitly that the flexible lip seal member is deflected when in the closed position, nor does claim 1 specify a minimum amount of deflection in the form of a quantitative amount of deflection. Rather, claim 1 states that the flexible lip seal member has the characteristic of being “sufficiently deflective” so as to provide a sealing position (when closed) that is substantially moisture proof. In doing so, claim 1 defines sufficiently deflective as the characteristic of being deflective enough to provide a substantially moisture proof seal. That is, the flexible lip seal member is “sufficiently deflective” as claimed so long as it provides a substantially moisture proof seal between the lid and the container, even if it is not deflected.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“deflection of a flexible lip seal member (annular seal 74). PO Resp. 24˗29. Specifically, Patent Owner contends that a person of ordinary skill would not understand that seal 74 is thicker than gap 81 because the reference uses the terms “about” and “ranging from” to describe the dimensions, and because Petitioner has “cobbled together” dimensions from different parts of the reference. PO Resp. 24˗25. Further, Patent Owner contends that a container having the dimensions provided by Petitioner would not be closeable or resealable, and the force required for closing would deform and damage the container. Id. at 25˗29 (citing to and explaining finite element analysis performed by Dr. Oswald on a container having the dimensions provided by Petitioner). Patent Owner asks us to interpret Hekal ’108 to disclose a container that cannot be closed or resealed, and when closed, would be deformed and damaged to the extent that the container is rendered unusable. This contention not supported by the references. Neither Hekal ’108 nor Abrams describes the container as disposable or otherwise suitable for only a single use. Exs. 1015, 1016, passim. Abrams explicitly indicates that the container may be closed by describing that the vial provides a substantially hermetic seal when closed. Ex. 1016, 1:12˗15. Hekal ’108 describes the container as” slip op. at 19
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Dr. Oswald’s finite element analysis suffers from several shortcomings. First, the analysis assumes the container and lid are made of polypropylene, although the reference discloses that the container is preferably made of polypropylene and the lid is made from polyethylene (a more flexible material). See Ex. 2001 ¶ 53–54 (relying on polypropylene for the container and lid); Ex. 1015, 2:29˗34; 4:28˗3013 (stating that the container is polypropylene and the optional lid is preferably polyethylene); 13 At oral hearing, Patent Owner was asked to identify support for the assertion that the container and lid are both formed of polypropylene as used by Dr. Oswald’s analysis. Tr. 68. Patent Owner identified the sections of Exhibit 1015 cited here, neither of which supports Patent Owner’s contention. Id. Pet. Reply 5; Ex. 1027, 154:8–9 (conceding that polyethylene is more flexible than polypropylene). Second, Patent Owner takes the somewhat inconsistent position of contending that the dimensions are not accurate and then asks that we consider test results based upon a container having such dimensions. Third, Dr. Oswald presumed the lid was closed straight down, while the reference discloses that the hinge angles the cap to permit a progressive closing rather than straight down. See Pet. Reply 6; Ex. 1029 ¶¶ 8˗10.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“measurement of Wheeler’s Figure 7. Rather, Mr. Sheehan illustrated with a dotted line that, when closed, sealing bead 20' of flange 19' interferes with neck 2' of container 1', causing flange 19' to deflect inward and it seal the inside surface of neck 2'. See Ex. 1008 ¶ 82 (at pages 71˗72); Pet. 52 (citing to this portion of Ex. 1008); Pet. Reply 11. Mr. Sheehan’s analysis of Figure 7 is proper because drawings may be used to establish relative sizes and relationships between the various components which are clearly depicted therein, such as the relationship between flange 19 and the interior of neck 2 of container 1. See Vas-Cath Inc. v. Mahurkar, 935 F2d 1555, 1565 (Fed. Cir 1991); see also In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (things that patent drawings show clearly are not disregarded); In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (citation omitted) (“[drawings are evaluated] ‘on the basis of what they reasonably disclose and suggest to one skilled in the art”’). Further, Petitioner’s assertion that flange 19' corresponds to a flexible lip seal member as claimed is based upon more than just Wheeler’s Figure 7. Contra PO Resp. 39 (contending that Petitioner’s entire position is based upon Figure 7 of Wheeler). Petitioner correctly notes that Wheeler discloses a substantially moisture proof container that includes a cap 7' formed of a resilient material and having internal flange 19', suggesting flange 19' is flexible and may be deflected. Pet. 49, 52; Ex. 1023, 3:4˗8. Petitioner also correctly explains that Wheeler discloses that internal flange 19' with bead 20' creates a fluid-tight seal inside the mouth of neck 2' of container 1'. Pet. 49, 52 (citing Ex. 1023, 4:27˗31, Figs 7, 8; Ex. 1008 ¶ 82). Similar to the argument against the prior ground of unpatentability, Patent Owner asks us to interpret the reference as disclosing a container that cannot be closed properly and if closed, would be deformed. This contention is not supported by the reference. Wheeler does not describe container 1' as disposable or otherwise suitable for only a single use. Ex. 1023, passim. To the contrary, Wheeler describes a cap and container assembly for medicines that is child-proof, so that once reclosed the cap can only be removed with ease by an adult. Ex. 1023, 1:4˗2:24; see also 3:18˗45 (describing alignment that permits reopening the container). Patent Owner’s contention that Wheeler’s container cannot be closed or is deformed by closing is further undermined by Wheeler’s express disclosure of how cap 7' is positioned when closed. Specifically, Wheeler discloses that shoulder 17' retains anchor band 21 on container 1' by engaging under lower bead 5 to retain anchor band 21 on container 1'. Ex. 1023, 3:65˗ 4:9, Figs. 7, 8. A preponderance of the evidence suggests that flange 19' corresponds” slip op. at 26
Patent outcomesUS 8,528,778 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,528,778 - Merial Limited v. VirbacRehearing deniedPTAB · May 4, 2015 · IPR2014-01279 · APJ Fred E Mckelvey · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request without prejudice to presenting its patentability arguments in the Patent Owner’s Response on the merits.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Upon consideration of a Petition for Rehearing filed by the Patent Owner on 29 April 2015 (Paper 20), it is ORDERED that the Petition for Rehearing is denied without prejudice to Patent Owner presenting patentability arguments made in the Petition for Rehearing as part of its Patent Owner’s Response on the merits.” slip op. at 1
NonePatents in suitUS 8,501,799 - Merial Limited v. VirbacRehearing grantedPTAB · Apr 15, 2015 · IPR2014-01279 · APJ Fred E Mckelvey · IPR · Rehearing
Rehearing was granted and review instituted on claims 1–15 under § 103 over Huet ’333 combined with Saito and over Huet ’333 combined with Sirinyan.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We agree with Petitioner that we overlooked the significance of that portion of Huet ʼ333 indicating that use of a cosolvent is optional. Upon consideration of the Petition for Rehearing1 and the Response, we grant the Petition for Rehearing and order institution of an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“solvent must include any C1-C4 alcohol. The cosolvent, which can be absolute ethanol, isopropanol, or methanol (Ex. 1005, 6:19–20), is optional (Ex. 1005, 10:45).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We recognize in circumstances similar to those present in this case that it often is questioned why one skilled in the art would “pick and choose” particular ingredients (solvents and crystallization inhibitors in this case) where a reference describes several alternatives. There is an answer. First, the entire disclosure of Huet ʼ333 is in the public domain. One skilled in the art should be free to use any combination described by Huet ʼ333 in proportions that Huet ʼ333 characterizes as being within the skill of the art. Claim 1 of the ’799 patent presumptively removes from that public domain a portion of what is described by Huet ʼ333. Absent some unexpected result obtained by the subgenus of claim 1 of the ʼ799 patent vis-à-vis the broader genus described by Huet ʼ333, it is likely that the subject matter of claim 1 of the ʼ799 patent would have been obvious within the meaning of 35 U.S.C. § 103(a). Patent Owner, in responding on the merits, is free to present evidence of unexpected results.” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,501,799 - PTAB · Mar 10, 2015 · IPR2014-00903 · APJ James T Moore · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving institution in place on all challenged claims and five grounds while three grounds remained denied.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW In a request for rehearing, the dissatisfied party must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Other 314aDecided for patent owner
“discretion in the conduct of its proceedings. We, however, direct Petitioner’s attention to 35 U.S.C. § 316(b), which provides our rules are to take into account the “regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings.” Board trial rule 108 provides that the Board may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). Petitioner’s position does not consider that the Board is charged with securing the just, speedy, and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b). Trials are no exception; 37 C.F.R. § 42.100(c) requires us to administer proceedings such that the final written determination in an inter partes review be issued one year after the date of institution, except that the review may be extended by not more than six months for good cause shown. Our decision to proceed on a streamlined grouping of grounds, as opposed to all eight, yet encompassing all claims, is a meaningful exercise of that discretion in administering the proceeding. That our decision referenced a related portion of our enabling statute as well as the precise Board rule on point, is not error or an abuse of discretion.” slip op. at 3
- PTAB / AIA Trials › §315(e) estoppelNot reached
“The question of estoppel is premature at this point. Petitioner has not established the underlying conditions precedent with any persuasive evidence or argument that the Petitioner will be estopped ultimately. Presently, the trial is moving forward on all claims with the Petitioner having carried the initial burden on institution. Moreover, estoppel is but one of the many issues to be considered in litigation strategy, and we do not presume to make one factor so heavily weighted so as intrude into the province of counsel in making decisions as to how to proceed.” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“We disagree with the conclusion that Petitioner is being deprived of due process rights. Placing reasonable limits upon the trial in order to have the proceedings move forward less expensively and more efficiently does not equate to a denial of a due process right. Indeed, in its current posture, Petitioner could obtain the complete relief it seeks.” slip op. at 5
Discretionary denialPatents in suitUS 5,986,701 - PTAB · Mar 10, 2015 · IPR2014-00902 · APJ James T Moore · IPR · Rehearing
The Board denied HTC’s rehearing request, leaving institution on all challenged claims on five grounds and denial of eight other grounds in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW In a request for rehearing, the dissatisfied party must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Other 314aDecided for patent owner
“Board trial rule 108 provides that the Board may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). Petitioner’s position does not consider that the Board is charged with securing the just, speedy, and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b). Trials are no exception; 37 C.F.R. § 42.100(c) requires us to administer proceedings such that the final written determination in an inter partes review be issued one year after the date of institution, except that the review may be extended by not more than six months for good cause shown. Our decision to proceed on a streamlined grouping of grounds, as opposed to all thirteen, yet encompassing all claims, is a meaningful exercise of that discretion in administering the proceeding. That our decision referenced a related portion of our enabling statute as well as the precise Board rule on point, is not error or an abuse of discretion.” slip op. at 4
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyNot reached
“The question of estoppel is premature at this point. Petitioner has not established the underlying conditions precedent with any persuasive evidence or argument that the Petitioner will be estopped ultimately. Presently, the trial is moving forward on all claims with the Petitioner having carried the initial burden on institution. Moreover, estoppel is but one of the many issues to be considered in litigation strategy, and we do not presume to make one factor so heavily weighted so as intrude into the province of counsel in making decisions as to how to proceed.” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“We disagree with the conclusion that Petitioner is being deprived of due process rights. Placing reasonable limits upon the trial in order to have the proceedings move forward less expensively and more efficiently does not equate to a denial of a due process right. Indeed, in its current posture, Petitioner could obtain the complete relief it seeks.” slip op. at 6
Discretionary denialPatents in suitUS 5,943,093 - PTAB · Mar 10, 2015 · IPR2014-01249 · APJ James T Moore · IPR · Rehearing
The Board denied rehearing, leaving institution in place on the previously instituted claims and grounds; it rejected the challenges to denying claims 8–14 on Grounds 1 and 3 and other proposed grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW In a request for rehearing, the dissatisfied party must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“We disagree with Petitioner’s assertion, and reading of the rules and statute. The appropriate rule, 37 C.F.R. § 42.104(b)(3), is not to be read in isolation, but also in conjunction with other Board rules, including 37 C.F.R. § 42.1(b), which requires the rules to be interpreted for securing the just, speedy, and inexpensive resolution of every proceeding. Requiring identification of the means, and sufficient means, avoids institution of a trial where the scope of the means-plus-function claims cannot be determined with precision. The trial potentially would be delayed and ultimately potentially incapable of decision on the merits of the grounds. Consequently, the panel has the discretion to determine if the trial might stray into grounds outside of the statutory authority provided for inter partes review proceedings.” slip op. at 3
- Other 314aInstitution denied discretionary otherDecided for patent owner
“First, it is a long-standing part of jurisprudence that the tribunal has discretion in the conduct of its proceedings. The language of § 314 provides us with discretion in that it expressly states that review “may not” be authorized in certain situations, but it does not require that a review “shall” be instituted in any situation. 35 U.S.C. § 314(a). In addition, we direct Petitioner’s attention to 35 U.S.C. § 316(b), which provides our rules are to take into account the “regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings.” Board trial rule 108 provides that the Board may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). Petitioner’s position does not consider that the Board is charged with securing the just, speedy, and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b). Trials are no exception; 37 C.F.R. § 42.100(c) requires us to administer proceedings such that the final written determination in an inter partes review be issued one year after the date of institution, except that the review may be extended by not more than six months for good cause shown. Our decision to proceed on a streamlined grouping of grounds, as opposed to all eleven, yet encompassing all claims, is a meaningful exercise of that discretion in administering the proceeding. Thus, we are not persuaded of error or an abuse of discretion in our decision not to institute those additional grounds.” slip op. at 5
- PTAB / AIA Trials › §315(e) estoppelNot reached
“The question of estoppel is premature at this point. Petitioner has not established the underlying conditions precedent with any persuasive evidence or argument that the Petitioner will be estopped ultimately. Presently, the trial is moving forward on all claims with the Petitioner having carried the initial burden on institution. Moreover, estoppel is but one of the many issues to be considered in litigation strategy, and we do not presume to make one factor so heavily weighted so as intrude into the province of counsel in making decisions as to how to proceed.” slip op. at 6
Claim constructionDiscretionary denialPatents in suitUS 6,362,850 - Netflix, Inc. v. Opentv, IncRehearing deniedPTAB · Aug 14, 2014 · IPR2014-00274 · APJ James T Moore · IPR · Rehearing
The Board denied Netflix’s rehearing request, leaving in place its denial of inter partes review of claims 1–20 because the petition did not show it was more likely than not to prevail.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply… We grant the request to reconsider the decision insofar as we have reconsidered the decision, but decline to modify our previous decision.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION Accordingly, we conclude that the Petitioner has not met its burden to show it is more likely than not to prevail. We, therefore, deny the request for reconsideration.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“This argument does not persuade us to alter our earlier decision. The newly proposed interpretation is inconsistent with the plain language of claim 1 reciting that the “browser retrieves the requested Internet information segments under the direction and control of the controller means.” Ex. 1001, col. 13:60-63. An embodiment allowing a user the flexibility to go back to access a list of URLs at the user’s leisure after the presentation does not alter the requirement that the controller means drives the presentation during the audio or video program.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
Claim construction§ 103 obviousnessPatents in suitUS 6,018,768
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.