- NHK Seating Of America, Inc. v. Lear CorporationSome claims unpatentablePTAB · Dec 30, 2015 · IPR2014-01026 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 11, 14, and 17–21 are unpatentable; claim 15 was not shown unpatentable because Wiklund does not disclose its required sequential contact portions.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Ex. 1001, 5:9–22 (emphasis added). This passage is consistent with interpreting “first manner and second manner” as meaning “any two different ways.” As described in this quoted passage, if either the forward velocity or the trajectory of the headrest, or both changes, then movement in a first and second manner has occurred. For example, if the headrest were to move forward at one velocity and then merely slow down (or speed up) on the same trajectory, then movement would occur in a first and second manner.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. at 8:58–9:5 (emphasis added). The emphasized portion of the quotation establishes that Kage’s headrest moves differently at the beginning and end of its path S2'. Namely, Kage’s headrest moves quickly toward the occupant’s head at the beginning of path S2' and more slowly toward the occupant’s head at the end of path S2'.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“claims 12, 17, 18, and 21 obvious and sets forth the evidence from Wiklund and Humer to support its contentions in detailed claim charts. Pet. 43–46. NHK also proffers Dr. Kent’s testimony to explain the manner in which Wiklund describes the requirements recited in these claims. Ex. 1010¶¶ 60– 69. Claims 12 and 21 depend from claims 10 and 20, respectively, and further recite a “damper connected between the headrest arrangement and the seatback.” Ex. 1001, 13:15–16 (claim 12), 14:26–27 (claim 21). NHK relies upon Humer for its disclosure of a damper as recited in these claims. Pet. 44–46. More specifically, NHK contends that Humer teaches using a damper 118 to improve “energy absorptions” of the Saab SAHR headrest. Pet. 43 (citing Ex. 1007, 7:27–8:4). NHK also contends that Wiklund is directed to the same Saab SAHR headrest. Pet. 43 (citing Ex. 1010 ¶ 60). NHK therefore concludes that an ordinary artisan would have found it obvious to improve Wiklund by adding Humer’s damper between the headrest arrangement and the seatback. Pet. 43–44. NHK contends that an ordinary artisan would have found it obvious to add a damper to Wiklund to “provide ‘some energy absorption to cause more even and controlled contact with the head during impact’ because without the damper 118 ‘the head tends to oscillate after impacting a headrest cushion.’” Id. at 44 (citing Ex. 1007, page 8:1–4; Ex. 1010 ¶¶ 60, 61, and 63).” slip op. at 34
- ExcludeMotion to exclude, deniedDenied
“IV. LEAR’S MOTION TO EXCLUDE We have reviewed Lear’s Motion to Exclude, NHK’s Opposition to the Motion, and Lear’s Reply in support of the Motion. Based on our review, we deny the Motion in all respects for one or both of the following reasons: (1) the Motion is moot because it seeks to exclude evidence not considered or relied upon in rendering this Decision or (2) the Motion addresses issues more appropriate to determining the weight ascribed to the evidence rather than the admissibility of evidence. In rendering this Decision, we determine and ascribe the appropriate weight to all proffered evidence and, when appropriate, comment upon the weight ascribed.” slip op. at 39
Patent outcomesUS 6,655,733 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,655,733 - Emnos USA Corp. v. Dunnhumby LimitedInstitution deniedPTAB · Dec 30, 2015 · CBM2015-00162 · APJ Timothy J Goodson · CBM · Institution
The Board denied institution on all challenged claims because the Petition did not establish that the ’246 patent qualifies as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have jurisdiction under 35 U.S.C. § 324. Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a covered business method patent review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” As explained below, we do not institute a covered business method patent review because the Petition does not establish that the ’246 patent qualifies as a covered business method patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“remains deficient. The Petition relies on the Oracle Pro*C reference as disclosing the script template limitations of the independent claims, but as Patent Owner points out, the Petition does not present evidence establishing that Oracle Pro*C qualifies as a prior art printed publication. See Pet. 32– 34; Prelim. Resp. 50–53. Petitioner asserts that Oracle Pro*C “was published in 2002” but does not point to any specific evidence of its publication or public availability in 2002. Id. at 33. If Petitioner’s assertion is based on the “March 2002” statement that appears on the cover of the Oracle Pro*C reference, that statement is hearsay, and Petitioner does not argue that any hearsay exception or exclusion applies. See Ex. 1041, 1; see also ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, slip op. at 16 (PTAB Aug. 26, 2015) (Paper 13) (“To the extent that Petitioner relies on the date on the face of each exhibit and the indications of availability of these references for download . . . for the truth of that information, and considering that Petitioner has not established that any hearsay exception or exclusion applies, we agree [that the statements are inadmissible hearsay].”). Petitioner also argues, with citation to the testimony of Dr. Smyth, that Oracle Pro*C is a reference used by programmers who develop applications in Oracle database environments. Pet. 33 (citing Ex. 1030 ¶ 57). However, neither the Petition nor Dr. Smyth explains how or when the specific Programmer’s Guide, Release 9.2 that Petitioner relies on as the Oracle Pro*C reference (Ex. 1041) was made available to skilled artisans. Because the Petition does not establish that Oracle Pro*C qualifies as prior art, Section VIII.B. of the Petition does not remedy the deficient showing in Section III.D. of the Petition on the first consideration of the technological” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 8,214,246 - Washington Inventory Services D/B/A Wis International v. Rgis, LLCAll claims unpatentablePTAB · Dec 30, 2015 · CBM2014-00158 · APJ James T Moore · CBM · Final written decision
Claims 1–19 are unpatentable under § 101 as directed to abstract inventory verification implemented with conventional technology, and under § 103 over Whitehouse and ordinary skill in the art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We must not import unrecited elements into the claim from the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1319–20 (Fed. Cir. 2005) (en banc). The specification observes its own exemplary nature—“[i]t should be understood that the description and specific examples are intended for purposes of illustration only and are not intended to limit the scope of the present disclosure.” Ex. 1001, 2:16–19.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for petitioner
“During prosecution, in a responsive amendment, Patent Owner proffered that “mode” implied a device: Amended claim 1 recites “selecting a verification mode, which includes a set of rules that define a methodology for verifying the inventory dataset, from a plurality of verification modes” and “acquiring verification data in the completed area with the remote verification device based on the selected verification mode.” The McGraw-Hill Dictionary of Scientific and Technical Terms, 6th Edition, defines the word “mode” as “one of several alternative conditions or methods of operation of a device.” The portion regarding the “set of rules that define a methodology for verifying the inventory dataset” further clarifies what is meant by verification mode. Ex. 1002, 180–81. Claim 1, however, broadly interpreted, can reasonably refer to either “mode”—the verification mode, or the device mode. Moreover, the specification itself, in describing manual processing of prior art printed inventory sheets, also refers to that method of inventory verification as a “mode.” Ex. 1001, 1:31–38 (see in particular line 35). We, therefore, decline to limit the term “mode” to only “on a device” when inventory checking alone can have different “modes” of being” slip op. at 17
- Skill levelSkill level board ownDecided for petitioner
“Mr. Melucci opines that a person of ordinary skill in the art relevant to the ’658 patent “would have at least two years [of] experience related to collecting and verifying inventory data.” Ex. 1006 ¶ 27. Dr. Jagannathan testifies that “a person of ordinary skill in the art of the [’]658 Patent would have had: (1) a Bachelor’s degree in computer science, computer engineering, or related field; (2) one year of related professional experience; and (3) a basic understanding of inventory processes and the use of UPCs and other product identifiers. The professional experience may include, for example, work related to use of bar codes, stock keeping units, and the like. It is further my opinion that relevant professional or practical experience with computer systems and software may substitute for academic credentials.” Ex. 2001 ¶ 40. Based on our review of the ’658 patent, the types of problems and solutions described in the ’658 patent and cited prior art, and the testimony of the parties’ Declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least two years of experience in computerized inventory management. 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).” slip op. at 18
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“imports limitations into the claims from the specification. See, e.g., PO Resp. 35 (discussing the claims jointly). For example, Patent Owner asserts that Petitioner “ignores the actual claim language that requires the verification mode selection to be made on and with the device.” PO Resp. 37. The defect in this argument is that the language of “selecting a particular verification mode on the verification device” is absent from claim 1. See Ex. 1001, 6:2–14. Furthermore, the broadest reasonable interpretation of the term “mode” does not limit the step to a device. Claim 1 positively recites the device in the downloading, deploying, acquiring, computing, and displaying steps, but the term “device” is specifically omitted from the selecting step. Accordingly, we do not interpret claim 1 as requiring the step of selecting a verification mode on the device. Contrary to Patent Owner’s position, we are persuaded by Petitioner that each of challenged claims 1–14, and 18, as a whole, is directed to the fundamental concept of providing inventory verification. Pet. 23. In the Abstract, the ’658 patent states: “[a] system and method of verifying the completeness and accuracy of inventory records is disclosed.” Ex. 1001, Abst. Additionally, in the Background section, the ’658 patent states: Prior methods of verification require that the inventory records be printed out in a predetermined format which is then taken to a specific area in the facility for comparison to the inventory physically located there. These methods are inflexible, tedious and time consuming because the mode of verification is strictly depend[e]nt on the predetermined format of the printed reports and requires a repeated reference to the report and comparison with the actual inventory. Ex. 1001, 1:31–38. The only technological features recited in claims 1–14 and 18 are a computer performing conventional computer functions. Ex. 1001, 6:2–22. Specifically, those include downloading data from a computer to a device, deploying the device, acquiring data with the device, computing, and displaying.” slip op. at 23
Patent outcomesUS 8,606,658 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · GrahamPatents in suitUS 8,606,658 - HTC Corporation / HTC America, Inc. v. Advanced Audio Devices, LLCAll claims unpatentablePTAB · Dec 29, 2015 · IPR2014-01154 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1, 3, 6, 7, 11, 12, 16, 22, 24, 27, 29, 30, 35–37, 43, and 45–47 are unpatentable under § 103; proposed substitute claims 49–65 were denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“AAD misunderstands our prior claim construction ruling. We cited the above-quoted portions of the specification to demonstrate that, when the ’403 patentee wished to refer to ordering sound tracks, the terms rearranging or customizing were used—as opposed to the term organizable. Dec. 9. By contrast, we noted that the specification of the ’403 patent does not use the word organizable outside the claims. Id. The claim language itself, therefore, is the best guide to the meaning of the term. As we noted in our Decision, claim 1 requires that the music library is “organizable into a 10 master song list and at least one group of sound tracks.” Ex. 1001, 21:32–33 (emphasis added); Dec. 9. This usage implies that the user must be able to, at the very least, add songs from the music library into groups such as the master song list and the group of sound tracks. We note that AAD’s expert, Mr. McAlexander, agreed with our construction of the term, with a minor caveat discussed below. Ex. 1016, 31:6–32:16 (“The actual context of an arrangement ordering and grouping, I have no problem with that. I think they’re right.”). AAD’s proposed construction, which limits organizable to only the ordering of songs, is not the broadest reasonable interpretation of the claim term.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“b. Analysis of Anticipation by Nathan ’259 Anticipation requires not only that all elements of a claim are disclosed within the four corners of a single prior art reference, but that the elements are “arranged as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). For the following reasons, we determine that Petitioner has not proven by a preponderance of the evidence that Nathan ’259 teaches all elements of claim 1, and by extension, any of the challenged dependent claims.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“In our view, HTC’s proposed analysis better comports with the “expansive and flexible approach” to obviousness set forth by the Supreme Court in KSR. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Our inquiry is, therefore, not “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the 37 teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1007 ¶ 168 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio management capabilities of Sound Blaster”); id. at ¶ 170 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1007 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2003 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of 38 ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.” slip op. at 37
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“In cases in which the proffered evidence of commercial success is licenses, rather than sales of products embodying the invention, there is a danger that the licenses may have been taken only because they were cheaper than defending an infringement suit. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed. Cir. 1985). In such situations, nexus between the commercial success and the patent cannot be inferred; rather, “affirmative evidence of nexus” is required. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). In other words, a patent owner must demonstrate “a nexus between the merits of the invention and the licenses of record”; otherwise, the licenses are to be accorded little weight. In re GPAC Inc., 57 F.3d at 1580 (emphasis added). HTC notes that each of the licenses listed by Mr. Keller includes at least two patents that explicitly claim a compact disc recorder, an element not present in the claims of the ’403 patent. Pet. Reply 24. HTC also contends that AAD fails to demonstrate any link between the invention of the ’403 patent and the taking of the license; for example, AAD provides no 27 apportionment of revenues to show the amount attributable to the ’403 patent, as opposed to the other members of the licensed family. Id. We agree with HTC that the evidence provided by AAD does not establish a sufficient link between the merits of the invention claimed in the ’403 patent and the taking of the licenses. Although Mr. Keller notes that some of the provided licenses were taken in situations where there was no pending litigation against the licensee (Ex. 2004 ¶ 9), he does not address whether litigation had been threatened against those parties. We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’403 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, AAD’s evidence of licensing fails to establish commercial success. We conclude that the evidence of objective indicia of nonobviousness is insufficient to overcome the evidence of obviousness over the combined Nathan references.” slip op. at 27
Patent outcomesUS 6,587,403 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,587,403 - PTAB · Dec 28, 2015 · IPR2015-01479 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that “[t]he use of the term ‘backlight’ rather than simply ‘light’ indicates that something is being illuminated from behind.” Id. at 28. Petitioner’s proposed constructions (Pet. 13–16) are unreasonably broad insofar as they do not account for the use of the term “backlight.” We also agree with Patent Owner (see id.) that it is clear in the context of the ’833 patent that the recited backlights are in a liquid crystal display apparatus. See Toro Co. v. White Consol. Indus. Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999) (words used in a claim are not construed in a “lexicographic vacuum, but in the context of the specification and drawings”); In re Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983) (“[C]laims are not to be read in a vacuum, and limitations therein are to be interpreted in light of the specification in giving them their ‘broadest reasonable interpretation.’” (emphasis omitted) (quoting In re Okuzawa, 537 F.2d 545, 548 (CCPA 1976)). Petitioner, and its expert Dr. Silzars, recognize in their statements regarding the level of ordinary skill in the art that the relevant art here is “display technologies.” See Pet. 12; Ex. 1002 ¶ 13. Notably, however, despite Petitioner’s assertions and Dr. Silzars’ opinions that “[t]he alleged invention boils down to a method for minimizing the electrical noise generated when simultaneously driving multiple lights,” that the “‘liquid crystal display’ modifier” in the preambles of the challenged claims “merely states a purpose or intended use of the invention” (Pet. 20–22; Ex. 1002 ¶¶ 58–59), and that “there is no structure that is specific to LCDs recited in the body of any of the claims,” neither Petitioner nor Dr. Silzars identifies any context in which backlights would be employed by those of ordinary skill in the art of display technologies, other than in an LCD. Accordingly, on this record and for purposes of this Decision, we determine that the broadest reasonable interpretation of the term “backlight” is “a lamp or set of lamps that illuminates a liquid crystal display from behind.” Because the claims already explicitly define the relationship between the “first backlight” and the “second backlight”—for example, claim 1 recites, in relevant part, that the second backlight is “driven simultaneously with said first backlight” and “ha[s] an oscillation wave whose phase is inverted with respect to an oscillation wave of the first backlight”—we discern no need to provide separate interpretations of “first backlight” and “second backlight.” We also decline to adopt Patent Owner’s proposal to limit the “second backlight” to include “all remaining lamps of the . . . apparatus that are not in the first backlight.” Because independent claims 1 and 16 use the open-ended transitional phrase “comprising,” those claims do not exclude additional, unrecited elements and method steps, respectively. See Manual of Patent Examining Procedure § 2111.03 (9th ed., Rev. 07.2015 Nov. 2015). 2. Other Claim Terms For purposes of this Decision, no other claim terms require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“B. Anticipation and Obviousness “A claim is anticipated only if each and every element as set forth in the 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). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed[,] and thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); accord In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)
“A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter[,] as a whole[,] would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze the asserted grounds with the principles identified above in mind.” slip op. at 13
- PTAB / AIA Trials › Real party in interest / privityNot reached
“D. Remaining Contentions The above determination makes it unnecessary to resolve any other disputes, including Patent Owner’s assertion that Petitioner failed to list all of the real parties in interest. See Prelim. Resp. 4–14; Petitioners’ Reply to Patent Owner’s Preliminary Response, Paper 9; Patent Owner’s Sur-Reply to Petitioners’ Reply, Paper 10.” slip op. at 33
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,417,833 - Microsoft Corporation v. Bradium Technologies LLCInstitution deniedPTAB · Dec 23, 2015 · IPR2015-01434 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to institute an inter partes review of claims 1–20 (the “challenged claims”) of U.S. Patent No. 7,908,343 B2 (“the ’343 Patent”). 35 U.S.C. § 311. Bradium Technologies LLC (“Patent Owner”) timely filed a Preliminary Response, Paper 12 (“Prelim. Resp.”), contending that the Petition should be denied as to all challenged claims. We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- BurdenOther
“map each claim element to a particular teaching of an asserted reference. In particular, Patent Owner notes that, rather than state the claim language in the Petition, Petitioner provides Exhibit 1013, which breaks the claims into specific phrases and assigns each phrase a designation, e.g., 1.A, 1.B. Prelim. Resp. 32. Patent Owner argues that Petitioner’s approach improperly incorporates the claims by reference and that no relief can be granted unless the arguments in the Petition itself, of which the claims are an essential part, support granting the relief. Id. at 33. We agree that Petitioner’s use of an Exhibit to specify the claim elements and its failure to include the claim language anywhere in the Petition is an improper incorporation by reference. Nevertheless, although the claim language is not repeated in the Petition, the Petition contains a paragraph for most, if not all the claim element designations. Therefore, we do not dismiss the Petition on this basis alone.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“specification, neither “data parcel” nor “update data parcel” is defined explicitly in the ’343 Patent. The ’343 Patent refers to “source image data” being processed to obtain a series of K1-N derivative images of progressively lower image resolution. Ex. 1001, col. 6, ll. 6–6. The ’343 Patent also discloses the source image data corresponding to the series image K0 being subdivided into a regular array such that each resulting “image parcel” of the array has, for example, 64 by 64 pixel resolution, where the “image data” has a color or bit per pixel depth of 16 bits, which represents a “data parcel” size of 8 K bytes. Ex. 1001, col. 6, ll. 6–11. Thus, an image parcel is an element of a source image array that defines a source image and a data parcel is data that corresponds to an image parcel. In view of this disclosure, we construe “data parcel” to mean data that corresponds to an element of a source image array. We agree that no other specific claim construction is required and we accord the claim terms their ordinary meaning as used in the ’343 Patent specification.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artReference not prior artMixed
“REFERENCES ARGUED AS NOT APPLICABLE PRIOR ART Patent Owner contends that Petitioner has failed to demonstrate that Potmesil (Ex. 1002) and Lindstrom (Ex. 1004) constitute applicable prior art references. Prelim. Resp. 3–12. We addressed the same arguments as those advanced by Patent Owner in this proceeding in our Decision to Institute in related proceeding Microsoft Corp. v. Bradium Technologies LLC, Case IPP2015-01432, slip op. at 10–14 (PTAB Dec. 23, 2015)(Decision to Institute)3 and Microsoft corp. v. Bradium Technologies LLC, Case IPR2015-01435, slip op. at 8–16 (PTAB Dec. XX, 2015)4. We arrive at the same result in this proceeding and find that, although Petitioner has established that Potmesil is applicable as prior art, Petitioner has not established Lindstrom is prior art that may be applied in Petitioner’s challenge.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,908,343 - Microsoft Corporation v. Bradium Technologies LLCInstitution deniedPTAB · Dec 23, 2015 · IPR2015-01435 · APJ Minn Chung · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving any claim unpatentable on the asserted grounds.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Whether a reference qualifies as a “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). A reference is considered “publicly accessible” upon a satisfactory showing that the 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.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (citation and internal quotation marks omitted). Often, the determination of public accessibility turns on whether a reference is indexed and catalogued in a meaningful way. For example, an uncatalogued and unshelved thesis in a university library, notwithstanding its accessibility to a graduate committee, was not sufficiently accessible to the public to constitute a printed publication within the meaning of 35 U.S.C. § 102(b) because the “thesis could have been located in the university library only by one having been informed of its existence by the faculty committee, and not by means of the customary research aids available in the library.” In re Bayer, 568 F.2d 1357, 1361–62 (CCPA 1978). In contrast, a dissertation shelved in the stacks and indexed in the catalog at a university library was found to be a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). However, indexing and cataloging must be prepared in a “meaningful” way, e.g., in relationship to the subject matter of the references, to allow an interested researcher exercising reasonable diligence to locate the prior art. See Cronyn, 890 F.2d at 1161.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 1001, col. 12, ll. 47–52; col. 13, ll. 55–60; col. 14, ll. 57–62. For claim 1, Petitioner identifies this limitation as elements 1.H, 1.I, and 1.J.8 Ex. 1012, 1. Petitioner treats these elements separately as if they are three distinct limitations, each describing or capturing a discrete feature or concept. See Pet. 44–45. As discussed below, Petitioner’s analysis is fundamentally flawed because the common limitation set forth above must be considered as a whole. The reason is that the limitation captures a single concept described in the Specification—a concept that can be understood only when the limitation is considered as a whole. Petitioner’s omission of the actual claim language in its analysis and using the labels (e.g., claim elements 1.H, 1.I, or 1.J) in place of the claim language obscures the problem underlying Petitioner’s approach and reinforces the erroneous impression that the Petitioner-identified elements are separate and distinct limitations.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner does not explain adequately the reasons to combine the references to teach elements 1.H, 1.I, and 1.J. An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Petitioner must also show that there was a reason to combine those elements to achieve the claimed invention with a reasonable expectation of success. See PAR Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). First, we note that not all combinations elements 1.H and 1.I satisfy element 1.J, “such that each image parcel being of a fixed byte size.” For example, if the resolution increased by a factor of two while the array subdivision decreased by a factor of two from one image to the next in the series of images, the byte size of the image parcels would increase by a factor of four. In another example, reducing the resolution by a factor of four while reducing the array subdivision by a factor of eight would increase the byte size of the image parcels by a factor of two. In both examples, elements 1.H and 1.I would be satisfied but not element 1.J because each image parcel of the two successive images would not be of a fixed size as required by the claim. Hence, in order to show that the combination of Rutledge, Ligtenberg, and Cooper teaches the claimed feature of elements 1.H, 1.I, and 1.J, Petitioner must show how a person of ordinary skill would be motivated to combine the references to teach varying the resolution and array subdivision in a specific way, e.g., both decreasing by a factor of four, “such that each image parcel [is] of a fixed byte size.”” slip op. at 23
- Expert testimonyPetitioner expert discountedDecided for patent owner
“testifies that “[s]ince each tile in a layer has the same size (‘fTileSize’) . . . it would be obvious that each image parcel could have the same fixed byte size.” Ex. 1009 ¶ 218. However, the cited portion in column 13 of Ligtenberg appears to be a listing of C language source code, which shows that “fTileSize” is a variable for storing 16-bit integer values. See Ex. 1005, col. 13, ll. 30–37 (“UInt16 fTileSize;”). Dr. Michalson does not cite any disclosure in Ligtenberg that requires this value to remain constant for all layers of resolution. Instead, Dr. Michalson asserts that “it would be obvious that each image parcel could have the same fixed byte size” because “using a fixed size . . . could improve predictability of the system” by making “the caching process more straightforward.” Ex. 1009 ¶ 218 (emphases added). However, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. Nov. 5, 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Dr. Michalson justifies his “could have” reasoning by making an analogy to stacking cubic boxes of the same size in a room. Ex. 1009 ¶ 218. We are not persuaded by Dr. Michalson’s testimony because it is conclusory and provides insufficient explanation why a person of ordinary skill would have modified Ligtenberg to teach the claimed feature, i.e., each image parcel having the same byte size for any resolution layer or across all resolution layers. The lack of adequate reasoning in Dr. Michalson’s testimony indicates that Dr. Michalson relies on impermissible hindsight. See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (“Where, as here, the necessary reasoning is absent, we cannot simply assume that ‘an ordinary artisan would be awakened to modify prior art in such a way as to lead to an obviousness rejection.’ It is in such circumstances, moreover, that it is especially important to guard against the dangers of hindsight bias.” (citation omitted)); ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (“[T]he expert’s testimony on obviousness was essentially a conclusory statement that a person of ordinary skill in the art would have known, based on the ‘modular’ nature of the claimed components, how to combine any of a number of references to achieve the claimed inventions. This is not sufficient and is fraught with hindsight bias.”). Therefore, we are not persuaded that Petitioner has demonstrated Ligtenberg teaches element 1.J, “such that each image parcel being of a fixed byte size,” as recited in claim 1.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,924,506 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution deniedPTAB · Dec 21, 2015 · IPR2015-01450 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 5, 23, 25, 26, 28, 29, and 34–36 were unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pet.”) requesting inter partes review of claims 1–3, 5, 23, 25, 26, 28, 29, and 34–36 of U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. An inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 1–3, 5, 23, 25, 26, 28, 29, and 34–36 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“As best understood from FIG. 16B, extension 8513 of header console 8512 extends downwardly behind the upper portion of windshield W (such portion of windshield W which typically includes a shadeband element as known in the art) and includes a forked portion 8513a, such as an inverted V-shaped or U-shaped portion, which straddles a mirror mounting button 8536 that is mounted to windshield W. Optionally, the downwardly extending portion of header/header console 8512 may be mounted to the inner surface of windshield W, such as by an adhesive or may be releasably, mechanically attached such as by being received by and/or supported by one or more attaching members adhered to the inner surface of the windshield, such as by attachment members, including rails, channels, or the like. Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the ’287 patent describes a console that straddles (and thus is local to) a mirror mounting button and is mounted to a vehicle windshield using attachment members, such as rails or channels. Id. As such, the above disclosure in the ’287 patent is sufficient to show that the inventors had possession of the claimed attachment members. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“obvious to combine the cited teachings of Schofield and Klappenbach. Petitioner argues that it would have been obvious to use the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach because the vehicle headlight dimming control in Schofield provides more functionality. Id. at 46–48 (citing Ex. 1113 ¶¶ 56, 59). Petitioner’s argument explains why one of ordinary skill in the art would select the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach, but does not explain why it would have been obvious to mount the vehicle headlight dimming control in Schofield using the fastening device and housing in Klappenbach. Petitioner argues that the housing in Klappenbach would advantageously seal the components of the camera in Schofield to prevent intrusion of elements from the environment. Pet. 47–48 (citing Ex. 1113 ¶ 58). Petitioner’s argument is not persuasive because Schofield teaches that the imaging sensor module disclosed therein already is protected from such intrusions. Ex. 1007, col. 3, l. 67–col. 4, l. 4. Further, the housing in Klappenbach is not just a protective housing for sensor components, but, rather, a structure designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner also argues that the fastening device in Klappenbach can be preinstalled. Pet. 48 (citing Ex. 1113 ¶ 58). Petitioner does not explain, though, why that would have made it obvious to use the fastening device and housing in Klappenbach with the vehicle headlight dimming control in Schofield. Moreover, Petitioner does not provide a specific explanation or identify specific evidence showing that it would have been obvious to one of ordinary skill in the art that the housing in Figures 1 and 2 of Klappenbach is, or can be, configured to accommodate a forward facing camera generally or the vehicle headlight dimming control in Figure 1 of Schofield particularly. Pet. 45–48. Therefore, on this record, Petitioner has not shown sufficiently that it would have been obvious to one of ordinary skill in the art to combine the cited teachings of Blank, Schofield, and Klappenbach in the manner proposed by Petitioner.” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 8,692,659 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution deniedPTAB · Dec 21, 2015 · IPR2015-01426 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 37, 41, 43, and 45–48 were unpatentable under the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pet.”) requesting inter partes review of claims 37, 41, 43, and 45–48 of U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. An inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 37, 41, 43, and 45–48 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner
“written description of an attachment member attached to a vehicle windshield and local to a mirror mounting button, as recited in the challenged claims. Pet. 12–15 (citing Ex. 1213 ¶¶ 31–33, 40, 44–46). Petitioner’s argument is not persuasive. The ’287 patent discloses the” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We also are not persuaded, on this record, that it would have been obvious to combine the cited teachings of Schofield and Klappenbach. Petitioner argues that it would have been obvious to use the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach because the vehicle headlight dimming control in Schofield provides more functionality. Id. at 48 (citing Ex. 1213 ¶ 56). Petitioner’s argument explains why one of ordinary skill in the art would select the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach, but does not explain why it would have been obvious to mount the vehicle headlight dimming control in Schofield using the fastening device and housing in Klappenbach. Petitioner argues that the housing in Klappenbach would advantageously seal the components of the camera in Schofield to prevent intrusion of elements from the environment. Pet. 48 (citing Ex. 1213 ¶ 58). Petitioner’s argument is not persuasive because Schofield teaches that the imaging sensor module disclosed therein already is protected from such intrusions. Ex. 1007, col. 3, l. 67–col. 4, l. 4. Further, the housing in Klappenbach is not just a protective housing for sensor components, but, rather, a structure designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner also argues that the fastening device in Klappenbach can be preinstalled. Pet. 48–49 (citing Ex. 1213 ¶ 58). Petitioner does not explain, though, why that would have made it obvious to use the fastening device and housing in Klappenbach with the vehicle headlight dimming control in Schofield. Moreover, Petitioner does not provide a specific explanation or identify specific evidence showing that it would have been obvious to one of ordinary skill in the art that the housing in Figures 1 and 2 of Klappenbach is, or can be, configured to accommodate a forward facing camera generally or the vehicle headlight dimming control in Figure 1 of Schofield particularly. Pet. 45–49. Therefore, on this record, Petitioner has not shown sufficiently that it would have been obvious to one of ordinary skill in the art to combine the cited teachings of Blank, Schofield, and Klappenbach in the manner proposed by Petitioner.” slip op. at 12
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,692,659 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution deniedPTAB · Dec 21, 2015 · IPR2015-01436 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 78–80 and 83–89 were unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pet.”) requesting inter partes review of claims 78–80 and 83–89 of U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. An inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 78–80 and 83–89 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“written description of an attachment member attached to a vehicle windshield and local to a mirror mounting button, as recited in the challenged claims. Pet. 10–13 (citing Ex. 1913 ¶¶ 31–33, 40, 44–46). Petitioner’s argument is not persuasive. The ’287 patent discloses the following: As best understood from FIG. 16B, extension 8513 of header console 8512 extends downwardly behind the upper portion of windshield W (such portion of windshield W which typically includes a shadeband element as known in the art) and includes a forked portion 8513a, such as an inverted V-shaped or U-shaped portion, which straddles a mirror mounting button 8536 that is mounted to windshield W. Optionally, the downwardly extending portion of header/header console 8512 may be mounted to the inner surface of windshield W, such as by an adhesive or may be releasably, mechanically attached such as by being received by and/or supported by one or more attaching members adhered to the inner surface of the windshield, such as by attachment members, including rails, channels, or the like. Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the ’287 patent describes a console that straddles (and thus is local to) a mirror mounting button and is mounted to a vehicle windshield using attachment members, such as rails or channels. Id. As such, the above disclosure in the ’287 patent is sufficient to show that the inventors had possession of the claimed attachment member. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“camera.” Ex. 1002, col. 53, l. 63–col. 54, l. 2. Petitioner argues that the housing in Klappenbach corresponds to the claimed structure configured to accommodate a forward facing camera, and that the vehicle headlight dimming control in Schofield includes the claimed forward facing camera. Pet. 39–42. The housing in Klappenbach is designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner does not provide a specific explanation or identify specific evidence showing that the housing in Figures 1 and 2 of Klappenbach also is configured to accommodate a forward facing camera. Pet. 39–42. Therefore, on this record, Petitioner has not shown sufficiently that the combined teachings of Blank, Schofield, Klappenbach, and Carter would have taught or suggested the limitation “said structure is configured to accommodate a forward facing camera” to one of ordinary skill in the art.” slip op. at 11
§ 103 obviousness§ 112 disclosurePatents in suitUS 8,692,659
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.