- PTAB · Jun 17, 2015 · IPR2015-00371 · APJ Howard B Blankenship · IPR · Institution
The Board denied institution on all challenged claims because Cardinale was not shown to be a printed publication, defeating each proposed obviousness ground.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“In this case, Petitioner provides insufficient evidence by declaration or documentation tending to show the public accessibility of Cardinale prior to the filing date of the parent application of the ’907 patent. Cf. Hall, 781 F.2d at 899 (examining affidavit in support of public availability of dissertation). We acknowledge that Cardinale contains the notation “[a]pproved for public release; distribution unlimited.” Ex. 1008, 3; see also id. at 243 (“Distribution Availability Statement”). Petitioner, however, has not provided evidence extrinsic to Exhibit 1008 tending to show when the thesis actually may have been released or distributed to the public. We observe also that Cardinale includes an Abstract and a list of subject terms (Ex. 1008, 243) that appear suited for facilitating an electronic-database search. The Petition points to no evidence, however, that the thesis was entered into an electronic database prior to the critical date, much less into a publicly accessible database prior to the critical date. Nor has Petitioner shown, for that matter, that the thesis was otherwise “sufficiently accessible to the public interested in the art.” Lister, 583 F.3d at 1311. “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). We conclude that, on this record, Petitioner has failed to meet its burden of at least a preliminary showing that Cardinale is a printed publication as contemplated by 35 U.S.C. §§ 102 and 311(b).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). We conclude that, on this record, Petitioner has failed to meet its burden of at least a preliminary showing that Cardinale is a printed publication as contemplated by 35 U.S.C. §§ 102 and 311(b). III. CONCLUSION Because each proposed ground of rejection against the claims relies on a combination that includes Cardinale, the Petition fails to demonstrate a reasonable likelihood of prevailing on the grounds that the challenged claims are obvious over the prior art. slip op. at 9
§ 102 anticipationPatents in suitUS 7,979,907 - QSC Audio Products, LLC v. Crest Audio, Inc.All claims unpatentablePTAB · Apr 29, 2015 · IPR2014-00127 · APJ Glenn J Perry · IPR · Final written decision
Claims 1–22 are unpatentable under § 103(a) as obvious over APA and Hancock, and independently over APA and Gordon.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“within the meaning of the patent law. The touchstone of whether a particular document is a publication under the patent law is whether it was available to those of ordinary skill in the art to which it pertains. The evidence, including the Cordell deposition testimony, strongly suggests that it is the custom and practice of the AES to prepare and distribute preprints of its convention presentations at a facility at the convention.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“presents sufficient evidence that, at the time of the ’153 patent invention, it would have been obvious to a person of ordinary skill in the relevant art to use a known power factor correction circuit in combination with a known switching power supply in an audio amplifier. The preponderance of the evidence presented leads us to that conclusion. Neither Hancock nor Gordon were before the Examiner during prosecution of the ’153 patent. We are persuaded that both these references provide sufficient rationale for using power factor correction in an audio amplifier having a switching power supply. Pet. 13–16. In fact, both are technical papers presented at respective conferences directed to audio engineers and describe audio amplifiers. Pet. 13, 40. Further, because both address the problem of distortion caused by waveform mismatch, and teach the solution of providing power factor correction in the context of an audio amplifier, these papers are evidence that a person of ordinary skill in the art would have been motivated to apply a power factor correction solution to the audio amplifiers known in the art at the time of the invention, and as disclosed in the Background of the Invention of the ’153 patent.” slip op. at 21
- Obviousness (§103) › KSR rationalesUnpatentableUnpatentable
“We have reviewed the ’153 patent and find that the range of about 400–500 volts is stated without any explanation as to why it might be critical. The only explanation about the intermediate voltage is that it be substantially higher than the input voltage in order for the power factor correction circuit to provide the desired benefit. Ex. 1001, 3:1–3. No data or explanation specific to the range of about 400–500 volts is provided. One of ordinary skill in the art would have considered the specific intermediate voltage to be a result-effective variable that can be optimized. In re Antonie, 559 F.2d 618, 620 (CCPA 1977) (holding that a determination that the discovery of optimum values of a variable in a known process would have been within the level of ordinary skill in the art must be supported by a showing that the variable is result-effective); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“‘[I]t is not inventive to discover the optimum or workable ranges by routine experimentation.’ Only if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range.” (internal citations omitted)). Patent Owner has not demonstrated that the results are unexpectedly good at 400–500 volts.” We find that the voltages described by Gordon and Hancock are encompassed by the claimed range as both 382 and 360 volts are rounded to “about” 400 volts, the lower voltage in the claimed range. We also are not persuaded as to the patentable distinction based on the claimed voltage range, and, therefore, find that the claimed intermediate range of about 400500 volts would have been obvious to a person of ordinary skill in the art in view of the disclosed voltages in Gordon and Hancock. Based on the evidence and the record before us, we are persuaded that Petitioner has established by a preponderance of evidence that claims 4, 8, 18, and 22 would have been obvious as of the critical date based on the combination of either APA and Hancock or APA and Gordon.” slip op. at 26
- ExcludeMotion to exclude, deniedDenied
“Cordell testimony, probative of the AES business practices, is outweighed by being confusing, vague, and speculative. We disagree. This is not a jury trial. The panel is not confused by the testimony and is in a position to appropriately weigh Mr. Cordell’s testimony along with the other evidence of record. The Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. Gnosis S.P.A. v. S. Alabama Medical Science Foundation, Case IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64). See also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received.”). F. Conclusion For reasons stated above, Patent Owner’s Motion to Exclude is denied.” slip op. at 19
Patent outcomesUS 6,023,153 unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,023,153 - QSC Audio Products, LLC v. Crest Audio, Inc.No claims unpatentablePTAB · Apr 29, 2015 · IPR2014-00129 · APJ Glenn J Perry · IPR · Final written decision
Claims 5 and 13 were not shown unpatentable under § 103 because the petitioner did not establish a reason to modify the prior art to calculate impedance or power from detected current and voltage.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“meaning of the patent law. The touchstone of whether a particular document is a publication under the patent law is whether it was available to those of ordinary skill in the art to which it pertains.” slip op. at 12
- ExcludeMotion to exclude, deniedDenied
“Patent Owner’s arguments conflate two separate issues — (1) whether Gittleman is authentic, and (2) whether it constitutes a publication under the patent law. Gittleman includes the AES logo. The cover page further identifies a specific address for AES for the purpose of obtaining additional preprints, and states that reproduction of the article is prohibited without permission from the Audio Engineering Society Journal. Ex. 1009. There is no dispute that this document is a preprint of a paper intended for presentation at their respective AES conventions. Therefore, having considered and weighed the distinctive characteristics of the article and the circumstances surrounding its retrieval from the AES E-Library, we find that Gittleman is what it appears to be — a paper categorized by the Audio Engineering Society as a “preprint.” Petitioner has met its authentication burden under Fed. R. Evid. 901 and 902. Whether the self-authenticated “preprint” qualifies as a “publication” under the patent law is a separate matter.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had the following education and experience: Master of Science degree in Electrical Engineering and at least some practical experience with the design and testing of electronic amplifiers. Ex. 1003 ¶ 15. Patent Owner’s declarant agrees generally with the above assertion, asserting that a person of ordinary skill in the art would have had one year of experience with the design and testing of electronic amplifiers. Ex. 2001 ¶ 27. The disagreement appears to be that the Petitioner asserts that a person of ordinary skill would be aware of amplifier designs useful at frequencies ranging from audio frequencies to radio frequencies (RF) (Ex. 1003 ¶ 16), while Patent Owner asserts that a person of ordinary skill would not have practical experience with amplifier designs useful at frequencies ranging from audio frequencies to radio frequencies (RF) (Ex. 2001 ¶¶ 28–30). We credit Petitioner’s declarant, and agree that a person of ordinary skill would be at least aware of amplifier designs useful at radio frequencies (RF) based at least on that person’s educational background. Ex. 1003 ¶ 16. We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). From the Porambo reference, which Patent Owner does not contest is in the field of endeavor of the invention in question, we understand that the level of ordinary skill in the art, at a minimum, pertains to audio amplifiers and the incorporation of DSPs in audio amplifiers. See Ex. 1005, Abstract (describing the features of the audio amplifiers and DSPs at issue in Porambo).” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“As to his audio amplifier experience, Dr. Ellis completed a Master of Science degree in Electrical Engineering with numerous years of experience as a research assistant researching audio signal processing, sound synthesis and analysis. Ex. 1004, 1. Dr. Ellis stated during his deposition that, although he is an expert in digital signal processing (Ex. 2002, 154:15–16), he has experience in the design of amplifiers from his undergraduate education. Id. at 124:7–20. Dr. Ellis designed and tested microphone amplifiers as a post-doctoral student at the Computer Science Institute at Berkeley, id. at 111:13–113:4, and is currently designing amplifiers that can drive speakers with the goal of incorporating these into his professional work. Id. at 120:4–121:12. We also note, as discussed above, the field of the ’542 patent invention is related to audio amplifiers generally and the incorporation of DSPs. We find that although Dr. Ellis is less qualified than Mr. Cordell in the area of amplifier design, he is qualified sufficiently to testify about audio amplifiers as they relate to DSPs. As to his alleged bias, Patent Owner points to Dr. Ellis’s testimony that “DSP revolution” has occurred, where DSP solutions were preferred over analog solutions. PO Resp. 20–23. We do not agree with Patent Owner that this indicates that he is biased toward believing that “any DSP application that replaces an analog application is obvious.” See PO Resp. 23. As to his alleged use of the wrong standard for obviousness, Patent Owner argues that Dr. Ellis did not evaluate the prior art from the perspective of a person having ordinary skill in the art at the time of invention because apparently he did not use the words “at the time of invention” when discussing the standard in his declaration. PO Resp. 23–24. We are not persuaded by this argument. Patent Owner also argues that Dr. Ellis must himself be a person of ordinary skill in the art. PO Resp. 24. Patent Owner’s arguments are unpersuasive because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “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., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010); 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. Ellis is qualified in the pertinent art.” slip op. at 15
Patent outcomesUS 5,652,542 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 5,652,542 - Microsoft Corporation v. Enfish, LLCSome claims unpatentablePTAB · Mar 3, 2015 · IPR2013-00562 · APJ Scott A Daniels · IPR · Final written decision
Claims 31, 41, and 42 are unpatentable: claim 31 is anticipated by Chang, and claims 41 and 42 are obvious over Chang with Webb and Chang with Horn, respectively.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“implemented function is the algorithm disclosed in the specification.” Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)). Additionally, specific portions of the specification must clearly link or associate a computer program or algorithm to the function corresponding to the claimed means. See Medical Inst. and Diag. Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). For the reasons set forth below, we conclude that the four steps and other ’604 patent specification portions identified by Enfish do not describe an algorithm for the recited function of “configuring memory according to a logical table.” We further conclude that Enfish has not clearly linked or associated the recited function to the four steps or the other portions of the ’604 patent specification that Enfish identifies.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We determine that adopting Enfish’s proposed construction without further context would create ambiguity. Additionally, limitations are not to be read into the claims from embodiments in the specification. See In re Van Geuns, 988 F.2d 1181 at 1184. Furthermore, we agree with Microsoft that Enfish relies on insufficient extrinsic evidence for support, for example, that an OID is “immutable.” We also note that Enfish’s contentions are not commensurate with the scope of the claims because each of the independent claims recites that an OID is included “to identify” each logical row and each logical column, but does not recite using an OID to retrieve data from memory. We, therefore, determine that the construction of “OID” in the Decision to Institute should not be changed.” slip op. at 18
- Expert testimonyPatent owner expert creditedPetitioner expert discountedOther
“We give little weight to Dr. Hosking’s testimony with respect to the limitations in claim 34 because he does not provide an explanation or evidence as to why Dickerson’s synchronization of data in the same column across separate databases teaches reciprocal synchronization between columns in the same table. Dr. Hosking states that a person of skill in the art would be motivated to combine Chang and “the synchronization concept as taught in Dickerson in the case that similar elements were to be reciprocally synchronized.” Ex. 1022 ¶ 225. The premise of this argument is the assumption that Dickerson’s synchronization across separate databases is the same as synchronizing two logical columns reciprocally in the same database table. Dr. Hosking does not provide support for this assumption. This argument, therefore, does not sufficiently explain why mirroring data across separate databases leads to data synchronization between logical columns in the same table. Dr. Hosking’s testimony does not explain why, or how, one of ordinary skill in the art would use the database management disclosed by Chang in cooperation with the linked database elements between separate databases to achieve reciprocal synchronization “to achieve such coordination of the data” between logical columns in the same table. See id. at ¶¶ 283–294.” slip op. at 41
- Skill levelOther
Patent outcomesUS 6,151,604 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,151,604 - Microsoft Corporation v. Enfish, LLCSome claims unpatentablePTAB · Mar 2, 2015 · IPR2013-00561 · APJ Barbara A Parvis · IPR · Final written decision
Claims 46 and 54 were held unpatentable; claims 55, 56, and 60 were not shown unpatentable; claims 16, 24–26, and 30 were terminated because their means-plus-function limitation lacked sufficient disclosed structure.
RulingsFinal written decision- BurdenMixed
“Microsoft has shown by a preponderance of the evidence that claims 46 and 54 of the ’775 patent are unpatentable. Microsoft has not shown that claims 55, 56, and 60 of the ’775 patent are unpatentable. For the reasons discussed below, we are unable to reach a determination on the alleged grounds of unpatentability over prior art for claims 16, 24–26 and 30. Accordingly, we terminate this proceeding with respect to claims 16, 24–26 and 30 under 37 C.F.R. § 42.72.” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“1249 (Fed. Cir. 2005)). Additionally, specific portions of the specification must clearly link or associate a computer program or algorithm to the function corresponding to the claimed means. See Medical Inst. & Diag. Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). For the reasons set forth below, we conclude that the four steps and other ’775 patent specification portions identified by Enfish do not describe an algorithm for the recited function of “configuring memory according to a logical table.” We further conclude that Enfish has not clearly linked or associated the recited function to the four steps or the portions of the ’775 patent specification that Enfish identifies.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We determine that Enfish’s proposed construction of OID introduces requirements beyond what is needed for an OID to identify data and retrieve data from memory. Enfish, for example, contends that “an OID is unique among all rows and columns of the logical table.” PO Resp. 29. Additionally, claims 46 and 54 recite that an OID is included “to identify” each attribute set and each record, but do not specifically recite using an OID to retrieve data from memory.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“80, PG 453, 471, 481, 482, 484, Ex. 1219 ¶¶ 67–93, 119–131). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 54. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1204, LR 558. The table object comprises “records (rows) and fields (columns).” Id. As an additional example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses each record and each attribute set including an OID, as recited in claim 54. In the cited portions above, Visual Basic describes assigning a primary key and that “[a] table’s primary key is the determining factor when testing to see if the record is unique within the table.” Ex. 1204, PF 39. According to Visual Basic “[Visual Basic] creates an index on the primary key of the table and uses it to find records and to create joins between tables.” Id. Regarding each column including an OID, according to Visual Basic, “[e]ach Field in the Fields collection of a TableDef has a unique value in the OrdinalPosition property.” Id. at LR 425. Furthermore, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses indexing data stored in the table and a cell including a pointer to an index record, as recited in claim 54. In the cited portions above, Visual Basic discloses an index object used for creating indexes to “speed up the process of finding records.” Ex. 1204, LR 276; see also id. at PF 37, 38, PG 482. Visual Basic also discloses a cell pointing to an index object. Id. at LR 280, PG 484.” slip op. at 17
Patent outcomesUS 6,163,775 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,163,775 - Microsoft Corporation v. Enfish, LLCSome claims unpatentablePTAB · Mar 2, 2015 · IPR2013-00560 · APJ Barbara A Parvis · IPR · Final written decision
Claims 47–48 are unpatentable as anticipated by Visual Basic, and claims 49–50 as obvious over Visual Basic and Jensen; claims 51–53 were not shown unpatentable, and claims 17–23 were terminated.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner
“Enfish contends that our construction for “object identification number” is incomplete. PO Resp. 15. We evaluate Enfish’s contention below. Enfish also provides a proposed construction for “anchor,” recited in claims 21 and 51. PO Resp. 22. Because we determine that Microsoft has not met its burden with respect to these claims for other reasons, no construction of this term for the purposes of this Decision is necessary. We discern no reason, based on the complete record now before us, to change our constructions in the Decision to Institute of “logical table,” “object identification number,” and “attribute set.”” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“evidence, and the detailed claim analysis, which reads persuasively all elements of claim 47 onto the disclosure of Visual Basic. Pet. 33–46 (citing Ex. 1104, LR 162, 185, 280, 425, 484, 532, 558, PF 1, 3, 18, 37–39, 40, 47, 76, 80, PG 453, 471, 481, 482 ; Ex. 1119 ¶¶ 67–98). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 47. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1104, LR 558. The table object comprises “records (rows) and fields (columns).” Id.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“2007 ¶ 231. In contrast to Dr. Jagadish’s statement, however, Jensen teaches an object-oriented application for managing information retrieved from a structured database, such as a relational database. Ex. 1106, Abstract. Enfish further contends that Microsoft does not explain why one of ordinary skill in the art would have been motivated to apply the pointers of Jensen to the indexing structure in Visual Basic. PO Resp. 35. We, however, are persuaded that Microsoft has shown a sufficiently articulated reason with rational underpinning to support obviousness (Pet. 48–49 (citing Ex. 1119 ¶¶ 387–404)). Microsoft, for example, states “[i]t was well known in the art at the time that indexes such as the index disclosed in [Visual Basic], maintain object identification numbers of the cell for locating data.” Pet. 49 (emphasis added). Microsoft continues, “Jensen discloses containing the address in a pointer, e.g., a physical memory address (i.e., OIDs).” Id. (citing Ex. 1106, 7:29–35). Dr. Hosking testifies “[i]t was well known in the art at the time that Index Objects locate data by maintaining object identification numbers in the internal pointers as disclosed in Jensen.” Ex. 1119 ¶ 403 (emphasis added). Dr. Hosking further testifies “[a] person of ordinary skill in the art would be motivated to combine Jensen’s teaching of maintaining the OIDs in a pointer with [Visual Basic’s] disclosure of identifying the logical columns / rows with the OIDs.” Ex. 1119 ¶ 404. The predictable use of familiar prior art elements according to their established functions renders the recited invention obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).” slip op. at 19
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). However, to accord substantial weight to objective evidence requires the finding of a nexus between the evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention.”). Enfish contends that the claimed invention received industry accolades, including praise from Microsoft, satisfied a long-felt need, resulted in success where others had failed, as well as commercial success. PO Resp. 42–47. Enfish points to features of claim 17, which Enfish contends are the features of the claimed invention that resulted in the objective indicia of success to which Enfish refers. Id. at 43–44. Claim 17 of the ’775 patent, however, is challenged on the basis that it is anticipated by Visual Basic. Secondary considerations do not weigh into determinations regarding anticipation. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008). Because we conclude that Microsoft has not shown that claims 51–53 of the ’775 patent are unpatentable for other reasons, the only claims that we need to evaluate are dependent claims 49 and 50 of the ’775 patent. Microsoft asserts that claims 49 and 50 are obvious over the combination of Visual Basic with a reference that teaches referencing objects through two-way pointers. Pet. 49 (citing Ex. 1106, 7:29–35). Enfish has not shown a nexus between any of the accolades or successes it says occurred and the use of two-way pointers.” slip op. at 24
Patent outcomesUS 6,163,775 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,163,775 - Microsoft Corporation v. Enfish, LLCSome claims unpatentablePTAB · Mar 2, 2015 · IPR2013-00563 · APJ Barbara A Parvis · IPR · Final written decision
Claims 46–50 and 54 are unpatentable: claims 47, 48, and 54 as anticipated by Visual Basic; claim 46 as obvious over SQL-92 and Chawathe; claims 49 and 50 as obvious over Visual Basic and Jensen.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“[T]he corresponding structure for a § 112 ¶ 6 claim for a computer- implemented function is the algorithm disclosed in the specification.” Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)). Additionally, specific portions of the specification must clearly link or associate a computer program or algorithm to the function corresponding to the claimed means. See Medical Inst. & Diag. Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). For the reasons set forth below, we conclude that the four steps and other ’604 patent specification portions identified by Enfish do not describe an algorithm for the recited function of “configuring memory according to a logical table.” We further conclude that Enfish has not clearly linked or associated the recited function to the four steps or the portions of the ’604 patent specification that Enfish identifies. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Enfish contends that our construction for “object identification number” is incomplete. PO Resp. 16. We evaluate Enfish’s contention below. Enfish also provides contentions regarding two other terms: “anchor,” recited in claims 21 and 51, and “external documents,” recited in claims 30 and 60. PO Resp. 23. Because we determine that Microsoft has not met its burden with respect to these claims for other reasons, no construction of these terms for the purposes of this Decision is necessary. We discern no reason, based on the complete record now before us, to change our constructions in the Decision to Institute of “logical table” and “object identification number.”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We determine that Enfish’s proposed construction of OID introduces requirements beyond what is needed for an OID to identify data and retrieve data from memory. Enfish, for example, contends that “an OID is unique among all rows and columns of the logical table.” PO Resp. 32. Additionally, each of the independent claims recites that an OID is included “to identify” each logical row and each logical column, but does not specifically recite using an OID to retrieve data from memory.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Pet. 31–43 (citing Ex. 1104, LR 162, 185, 276, 277, 280, 532, 425, 558, PF 1, 3, 18, 37–40, 47, 76, 80, PG 471, 481, 482, 484; Ex. 1119 ¶¶ 68–93, 119). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claims 47 and 54. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1104, LR 558. The table object comprises “records (rows) and fields (columns).” Id. As an additional example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses each row and each column including an OID, as recited in claims 47 and 54. In the cited portions above, Visual Basic describes assigning a primary key and that “[a] table’s primary key is the determining factor when testing to see if the record is unique within the table.” Ex. 1104, PF 39. According to Visual Basic “[Visual Basic] creates an index on the primary key of the table and uses it to find records and to create joins between tables.” Id. Regarding each column including an OID, according to Visual Basic, “[e]ach Field in the Fields collection of a TableDef has a unique value in the OrdinalPosition property.” Id. at LR 425. Furthermore, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses indexing data stored in the table, as recited in claims 47 and 54, and a cell including a pointer to an index record, as recited in claim 54. In the cited portions above, Visual Basic discloses an index object used for creating indexes to “speed up the process of finding records.” Ex. 1104, LR 276–277; see also” slip op. at 18
Patent outcomesUS 6,151,604 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,151,604 - Respironics, Inc. v. Zoll Medical CorporationSome claims unpatentablePTAB · Sep 17, 2014 · IPR2013-00322 · APJ Scott E Kamholz · IPR · Final written decision
Claim 1 is unpatentable as anticipated by Owen; claims 2, 4, 5, 8, 9, 16, 19, and 20 were not shown unpatentable. The contingent motion to amend was denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“A limitation using the term “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.1 Personalized Media Commc’ns. LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, we first must identify the claimed function, and then we look to the specification to identify the corresponding structure that performs the claimed function. Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). With respect to the second step, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004) (citations and quotation marks omitted).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“cite numerous passages in the ’003 patent, none of these passages serves to define “patient compliance [and use] data” in a manner that justifies disregarding that term. Although the ’003 patent does describe patient compliance data as relating to whether the patient is using the device improperly, or at all (Ex. 1001, 5:49-52), it is used within the context of assessing whether the patient is following (i.e., complying with) instructions. To construe the terms as encompassing any data related to patient use is, therefore, unreasonably broad.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“A limitation using the term “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.1 Personalized Media Commc’ns. LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, we first must identify the claimed function, and then we look to the specification to identify the corresponding structure that performs the claimed function. Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). With respect to the second step, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004) (citations and quotation marks omitted).” slip op. at 6
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“We focus our analysis on the “means for monitoring and storing” limitation in claims 4 and 19. Claim 4 recites: “means for monitoring and storing operations information of the medical device and patient compliance and use data.” Claim 19 recites: “means for monitoring and storing patient medical parameters, device performance data and patient compliance data.” Respironics argues that the structures disclosed in the ’003 patent as performing the “monitoring” and “storing” functions are a medical device and a memory. Pet. 8. Zoll does not contest this structural correspondence. We maintain our determination that these limitations invoke 35 U.S.C. § 112 ¶ 6, and that the structures corresponding to each of these limitations are a medical device and a memory. We have considered the parties’ arguments and evidence concerning” slip op. at 8
Patent outcomesUS 6,681,003 mixedClaim construction§ 102 anticipationPatents in suitUS 6,681,003 - Micron Technology, Inc. v. The Board Of Trustees Of The University Of IllinoisAll claims unpatentablePTAB · Mar 10, 2014 · IPR2013-00006 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1, 2, 4, and 5 are anticipated by Lisenker, and all claims are also held obvious under the listed grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“by the process, determination of patentability is based on the product itself.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Thus, for patentability purposes, we look to the product claimed, not the process by which it is made. See id. (“If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a difference process.”); Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1366 (Fed. Cir. 2009) (“It has long been the case that an old product is not patentable even if it is made by a new process.”) (citing General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 373 (1938)). Claim 1 requires retention of deuterium at the interface. A reference teaching retention of deuterium at the interface meets this requirement even if formed by a process different than that which is recited, unless evidence is put forth establishing an unobvious difference between the claimed product and the prior art product. See In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). A limitation is inherently described by a prior art reference if it is necessarily present in the reference. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“the subject matter of claims 1, 2, 4, and 5 would have been obvious over Lisenker. Further, Dr. Reed testified that post-metallization passivation was a standard processing step in the prior art. Ex. 1001 ¶¶ 15, 35. The University does not dispute that testimony. Indeed, it previously conceded the fact during prosecution of the ’204 patent. Ex. 1003, 458 ¶ 15 (declaration of Robert M. Wallace, Ph.D. citing a 1995 article and testifying that “post metal hydrogen annealing had been in widespread use in the semiconductor industry for many years”). Dr. Reed notes Lisenker’s teaching that any hydrogen-containing material used in VLSI fabrication can be replaced with corresponding deuterium-containing material, and concludes that “it would have been apparent to perform Lisenker’s annealing process after the metallization steps have been performed.” Ex. 1001 ¶¶ 35, 36.” slip op. at 17
- Obviousness (§103) › KSR rationalesUnpatentableDecided for petitioner
“and additionally requires a gate insulating/dielectric layer/film “having a thickness not exceeding about 55 Angstroms.” We find that Lisenker, as discussed above and below, teaches the subject matter of these claims except for the thickness limitation. The Supreme Court has held that the obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. In that regard, we credit the testimony of Micron’s witness, Dr. Reed, that, at the time of filing the ’204 patent, it would have been apparent to one of ordinary skill in the art to reduce the thickness of the gate insulating film of Lisenker to about 55 Angstroms or less, consistent with the general, decades-long trend of device miniaturization in the semiconductor industry. Ex. 1001 ¶ 38. We also credit Dr. Reed’s testimony that, at the time of filing the ’204 patent, others already had made gate insulating films having thicknesses of about 55 Angstroms or less. Id. at ¶¶ 39, 43. The combination of familiar elements according to known methods to achieve predictable results, such as reducing the thickness of the gate insulating film of Lisenker to 55 Angstroms or less, is likely to be obvious. See KSR, 550 U.S. at 416. We further note that the University does not argue, or direct us to evidence, to show criticality of the thickness limitation, such that we might conclude that obviousness has not been shown. See generally PO Resp.; see Prelim. Resp. 2. Rather, the University’s prior art-based arguments are directed exclusively to Lisenker.” slip op. at 20
Patent outcomesUS 6,888,204 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,888,204
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.