• Intel Corporation v. Acqis LLCInstitution denied
  PTAB · Jan 5, 2022 · IPR2021-01105 · APJ Scott A Daniels · IPR · Institution

  The Board denied institution for claims 1–3, 7–13, and 18–20 under § 325(d), finding the arguments previously presented and no material Examiner error.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “Under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented 8 to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. If the petitioner fails to show that the Office erred, the Director may exercise his or her discretion not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8 at 24 (exercising discretion where “Petitioner has not pointed to error by the Examiner”). 1. Part I – whether the same or substantially the same arguments previously were presented to the Office slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “The Examiner in each of these cases did not object to the amendments as new matter or issue a rejection under 35 U.S.C. § 112, ¶ 1 for lack of written description support for the claims. NTP, 654 F.3d at 1277. Instead, the Examiner entered the amendments and subsequently allowed the ’912 application with the subject matter added from Chu ’886. Ex. 1009, 419 (Notice of Allowance and Fee(s) Due). The incorporation by reference statement in the transmittal form also was never objected to by any Examiner during prosecution of the ’882 application (Chu ’330), the ’758 application (initial parent application), and all eight continuation applications in the priority chain of the ’797 patent, as well as Chu ’777 and all six reissue applications in the priority chain of Chu ’777, as noted in our Decision Denying Institution in IPR2021-00607, Paper 7 at 20. Moreover, none of the Examiners required the applicant to change its benefit claims from “continuation” to “continuation-in-part” in those continuation applications. 20 For the foregoing reasons, the ’882 application identified Chu ’886 with particularity and would have directly led an ordinarily skilled artisan to the document intended to be incorporated. Accordingly, we determine that Petitioner fails to show that the Examiner erred in determining that the ’882 application (Chu ’330) properly incorporated Chu ’886 by reference. In addition, as discussed above, Petitioner admits that the ’758 application (the initial parent application) incorporated by reference the ’882 application. Pet. 28; see also Ex. 1013, 4:50−53. It also is undisputed that each subsequent application in the priority chain identified each preceding application as required by 35 U.S.C. § 120 and incorporated by reference the prior applications and the ’882 application. See, e.g., Ex. 1001, 1:10−28, 9:36–39; Ex. 1008, 1:12−27, 9:27−29. As such, we also find that Petitioner has failed to show (1) the ’797 patent is not entitled to a priority date before April 15, 2011, (2) the ’436 patent’s parent applications did not properly incorporate by reference Chu ’886, (3) the amendments adding the subject matter from Chu ’886 improperly introduced new matter, and (4) that there is no support for the added written description in the ’436 patent, and hence the ’797 patent, in the respective parent applications. Pet. 23−39.” slip op. at 20

  § 112 disclosureDiscretionary denial
  Patents in suitUS 8,977,797
• Intel Corporation v. Acqis LLCInstitution denied
  PTAB · Dec 6, 2021 · IPR2021-01108 · APJ Thu A Dang · IPR · Institution

  The Board denied institution for claims 1–3, 7–9, 13–17, 19, 20, 25, and 33–35 under § 325(d), finding the same arguments were previously presented and no material examiner error was shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10

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

    “review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “II. ANALYSIS 35 U.S.C. § 325(d) Petitioner relies upon Chu ’330 in both of the asserted grounds.” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Decided for patent owner

    “As such, we find that Petitioner has failed to show (1) the ’768 patent is not entitled to a priority date before April 15, 2011, (2) the ’436 patent’s parent applications in the’768 patent family did not properly incorporate by reference the ’886 provisional, and (3) the amendments adding the subject matter from the ’886 provisional improperly introduced new matter. Pet. 18−30.” slip op. at 23

  § 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 9,529,768
• LKQ Corporation / Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLCNo claims unpatentable
  PTAB · Oct 8, 2021 · PGR2020-00054 · APJ Robert L Kinder · PGR · Final written decision

  The sole claim was not shown unpatentable: it is definite, and neither asserted obviousness combination renders the design unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Designer of Ordinary Skill in the Art (“DOSA”) LKQ contends that: a designer of ordinary skill would be an individual who has at least an undergraduate degree in transportation or automotive design experience in the field of transportation design, or someone who has several years’ work experience in transportation or automotive design. Pet. 51 (citing Ex. 1003 ¶ 42; Ex. 1004 ¶ 41). Based on the final record, which includes testimony by LKQ’s witnesses, we adopt LKQ’s proposed definition of the ordinary designer.” slip op. at 19

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Based on the final record, the purported issues related to a double line on the convex crease and the length of the single line do not create internally inconsistent drawings that would preclude the overall understanding of the drawing as a whole. We have considered the testimony of each witness and we find Mr. Peters’ explanation most convincing that “the claimed design describes the convex band consistently because each of the figures presents at least one of the ways that a convex band can be represented. . . . Figure 1 illustrates the two intersecting lines of the convex band, while Figures 2-4 illustrate the single max height line of the convex band.” Ex. 2004 ¶ 58. Thus, we agree with GM that these figures are not inconsistent, but rather complementary because both connecting lines (as shown in Figure 1) and the max height line (as shown in Figure 2) are accurate depictions of the convex band of the claimed design. Further, GM has presented persuasive evidence that the varied length of the line between figures is also understandable depending on the point of reference of a particular figure. Ex. 2004 ¶¶ 55, 56; Ex. 2006, 143:11–16, 144:4–7.” slip op. at 27

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “7. Overall Indefiniteness Analysis The figures of the ’065 patent are not perfect and the issues discussed above demonstrate that attention to detail matters when conveying the scope of a three-dimensional object in two dimensions. The proper standard for indefiniteness does not, however, require perfection, but instead requires that an invention is shown with “reasonable certainty.” Nautilus, Inc., 572 U.S. at 910. The purpose of the definiteness standard is “to ensure that the disclosure is clear enough to give potential competitors (who are skilled in the art) notice of what design is claimed – and therefore what would be infringed.” Maatita, 900 F.3d at 1376. Based on the totality of the evidence before us, we determine that the claimed design of the ’065 patent is reasonably understandable and gives potential competitors, and the public, notice of the scope of the claim. As analyzed above, LKQ has not shown that most of the alleged inconsistencies are, in fact, inconsistent features within the claim. Further, we determine that the inconsistencies argued by LKQ do not in the aggregate “preclude the overall understanding of the drawing as a whole.” Id. at 1375–76.” slip op. at 45

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “The Petition fails to adequately address the differences between the claimed ornamental fender design and the Fiat Toro in several important areas, including: the distinct upper portions of each design, the claimed design’s inwardly folded (L-shaped) top edge, and the rear lateral edge. Based on the final record, these differences combined with the other differences noted by LKQ (Pet. 81) are substantial and prevent the Fiat Toro from having design characteristics that are basically the same as that claimed in the ’065 patent – as required for a Rosen reference.” slip op. at 67

  Patent outcomesUS D864,065 not shown unpatentable
  § 103 obviousness§ 112 disclosurecites Nautilus
• Lippert Components, Inc. v. Days CorporationAll claims unpatentable
  PTAB · Sep 24, 2019 · IPR2018-00777 · APJ George R Hoskins · IPR · Final written decision

  Claims 12 and 13 are unpatentable as anticipated by Uriarte and obvious over Uriarte and Fukumoto; the motion to amend claims 15 and 16 is denied.

  RulingsFinal written decision

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

    “nothing in the claim language itself that requires the sensor to be aligned directly along the vehicle’s longitudinal and lateral axes. Rather, the Sensor Limitations more broadly require that the sensor “sense[s] pitch and roll of the vehicle relative to a reference level plane” to produce a signal “representing the vehicle pitch and roll.” Ex. 1001, 12:61–64 (claim 12), 13:16–19 (claim 13). Any sensor that determines the relative positioning of the vehicle’s longitudinal-lateral plane with respect to the reference level plane will thereby “sense” the pitch and roll of the vehicle, to produce a signal “representing” the pitch and roll.” slip op. at 12

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

    “3. Remaining Claim Terms No further explicit construction of any claim term is needed to resolve the issues presented here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only 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 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’693 patent “would have either a bachelor’s degree in engineering, preferably mechanical or electrical, or at least five years of work experience in the field of vehicle leveling systems and related equipment.” Pet. 10; Ex. 1006 ¶ 18. “Patent Owner accepts this level,” despite the slightly different formulation offered by Dr. Sturges. PO Resp. 11; Ex. 2004, 5. We determine that the level of ordinary skill proposed by Petitioner, and accepted by Patent Owner, is consistent with the ’693 patent and the prior art of record. We, therefore, adopt that level in the present Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We determine it would not require undue experimentation to find the proper leveling condition to use in Uriarte for stopping an automatic leveling operation, because Uriarte itself provides the answer: it is when Clr = Crf and Crr = Clf. Ex. 1004, 7:67–8:16; Ex. 1006 ¶¶ 41–43; Ex. 1015 ¶ 21. Given that disclosure, a person of ordinary skill in the art would resolve the later nonsensical disclosure as intending to state the vehicle is level when Clr/Crf = 1 and Crr/Clf = 1, without any experimentation at all, much less undue experimentation. Ex. 1015 ¶ 21. Dr. Sturges’s failure to address the first disclosure in Uriarte in his Declaration, when reaching his conclusion that “[t]here are no other disclosures in Uriarte indicating a level condition, except by manual ‘feel’ and control,” renders that conclusion unreliable. Ex. 2004, 8 (emphasis added). Moreover, when pressed during deposition, Dr. Sturges testified a person of ordinary skill in the art would understand Uriarte’s vehicle 10 is “at least near level” “when the capacitors show equal value.” Ex. 1013, 71:9–72:3. Thus, we determine Petitioner has met its burden to establish, by a preponderance of the evidence, that a person of ordinary skill in the art would be able to carry out an automatic leveling operation based on the Uriarte disclosure. In particular, the stopping condition indicating the vehicle is level occurs when Clr = Crf and Crr = Clf, or equivalently when Clr/Crf = 1 and Crr/Clf = 1.” slip op. at 23

  Patent outcomesUS 6,619,693 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 6,619,693
• Propel Orthodontics, LLC v. Orthoaccel Technologies, Inc.All claims unpatentable
  PTAB · Jun 10, 2019 · IPR2018-00296 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–27 are unpatentable: claims 1–8, 10–16, and 19–26 are anticipated by Lowe; claims 9, 17, 18, 26, and 27 are obvious over Lowe and Ting.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “the orthodontic device for the range 1 to 20 minutes daily in either the ’807 Provisional Application or the ’849 Parent Application to Lowe. Compare Ex. 1004, 7, with Ex. 1006, 7. Consequently, the question is whether one of ordinary skill in the art would have derived, i.e., recognized, the claimed range of “1 to 20 minutes” from the context of the disclosure in these prior applications. See Lockwood, at 1572 (“[A] prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.”). As discussed below, we determine that one of ordinary skill in the art would not have concluded that the inventor was in possession of the claimed “1 to 20 minute daily” range based on the disclosure in the prior provisional and parent applications.” slip op. at 19

  • Skill levelSkill level board ownOther

    “We determined in our Decision on Institution that the level of ordinary skill in the art includes a person with a degree in orthodontics and several years of experience as a working orthodontist, and also a person with an education and several years of experience in osteogenesis and bone remodeling, or an equivalent field, in the context of tooth movement. Inst. Dec. 8. On the complete record now before us we find this level of ordinary skill in the art to be consistent with our review of the evidence before us, including the prior art. Neither party proposes any further changes or objects to such a level of skill.9 See generally PO Resp.; Pet. Reply. Therefore, we determine that the level of ordinary skill in the art includes a person with a degree in orthodontics and several years of experience as a working orthodontist, and also a person with an education and several years of experience in osteogenesis and bone remodeling, or an equivalent field, in the context of tooth movement.” slip op. at 12

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “procedures, such as for teeth cleaning, are used for periods of time shorter than 20 minutes is not persuasive because no evidence or explanation is provided of any functional or temporal relationship between the objectives of teeth cleaning and teeth realignment through bone remodeling. PO Resp. 23–24 (citing Ex. 2010 ¶ 28). Dr. Ricupito testifies that because the recommended time for tooth brushing is 2 minutes, “one of ordinary skill would have read the disclosure of a range of times for use of a vibratory device to include times similar to those for other devices in the field at the time (e.g., 30 seconds to 2 minutes).”10 Ex. 2010 ¶ 28. Dr. Ricupito, however, does not support this comparison with any evidence that a person of ordinary skill in the art would have understood a causal relationship between teeth cleaning and teeth realignment from the orthodontic and dental fields. See id. Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 42.65(a). Dr. Ricupito’s testimony does not provide any facts, data, or analysis to support the opinion stated. Merely repeating an argument from the Petition in the declaration of a proposed expert does not 10 If we were to give Dr. Ricupito’s statement weight, then we would also have to consider giving weight to evidence of other times; for instance, there are certainly orthodontic devices, such as conventional braces, that require significantly more than 20 minutes of application. Ex. 1001, 1:41–43 (the ’184 patent explains that “this widely accepted approach takes about twenty four months on average to achieve success”). give that argument enhanced probative value. Accordingly, we give the cited evidence on this point in Dr. Ricupito’s declaration little, if any, probative weight.” slip op. at 22

  • ExcludeMotion to exclude, deniedDenied

    “R. Evid. 702.7 Mot. Exclude, 1. We disagree. Dr. Ricupito’s declaration may have some deficiencies, which we discuss in the following sections of this Decision in our substantive discussion of the evidence. The Board, however, acts as both the gatekeeper of evidence and as the weigher of evidence. Rather than excluding evidence that is allegedly confusing, misleading, untimely, and/or irrelevant, we will simply not rely on it or give it little or no probative weight, as appropriate, in our analysis. Similar to a district court in a bench trial, the Board, sitting as a non-jury tribunal with administrative expertise, is well positioned to determine and assign appropriate weight to evidence presented, including giving it no weight. See, e.g., 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 . . . .”). Thus, in this inter partes review, the better course is to have a complete record of the evidence to facilitate public access as well as appellate review. Accordingly, we deny Petitioner’s Motion to Exclude Exhibit 2010.” slip op. at 8

  Patent outcomesUS 9,662,184 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,662,184
• Baker Hughes Incorporated / Baker Hughes Oilfield Operations, Inc. v. Packers Plus Energy Services, Inc.All claims unpatentable
  PTAB · Aug 29, 2017 · IPR2016-00656 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–13 are unpatentable: anticipated by Themig and Flores; claims 4, 8, 9, and 13 also are obvious over Flores and over Flores with Whiteley.

  RulingsFinal written decision

  • Skill levelOther

    “ordinary skill in the art would have recognized the possibility of making various design changes. See PO Resp. 13–16. Patent Owner rests this argument on the testimony on page 12 of Mr. McGowen’s declaration, where he opines about various design changes that could be made. See id. We afford this particular testimony little weight because Mr. McGowen does not cite any underpinning evidence for his assertions about the possible variations. See Ex. 2006, 12; 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also note that this testimony discusses a number of possible variations, but does not discuss omitting the port-opening sleeve as a possible variation. See id. Thus, even if we credit Mr. McGowen’s testimony, it provides limited support for the proposition that the ’807 application demonstrates possession of a system without a portopening sleeve. Moreover, as Petitioner notes, Mr. McGowen indicated the variations he discussed would have been “obvious,” which is not enough to establish written description support. See ICU Medical, 558 F.3d at 1378– 1379.” slip op. at 14

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “Although the Specifications of the ’009 patent and the ’807 patent do not use the word “necessary,” we are persuaded that, just as a person of ordinary skill in the art would have understood that the spike was necessary in ICU Medical, a person of ordinary skill in the art would have understood that the port opening sleeve (i.e., sleeve 322) is necessary here. See ICU Medical, 558 F.3d at 1378; see also LizardTech. Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344–45 (Fed. Cir. 2005) (The disclosure of only one way to create a seamless DWT—by maintaining updated sums—did not provide written description support for claims that did not recite maintaining updated sums.). As Petitioner explains, the original claims of the ’807 application all require a “port-opening sleeve,” as recited in independent claims 1 and 15. Ex. 1019, 39–42; Pet. 22. Similarly, the Abstract of the ’807 application describes a tubing string assembly that includes closures, in which “[t]he closures are openable by a sleeve drivable through the tubing string inner bore.” Ex. 1019, 43. These disclosures would have strongly suggested to a person of ordinary skill in the art that a port-opening sleeve was a necessary component in the invention. See ICU Medical, 558 F.3d at 1378 (noting claims omitting spike recitation not filed with original application, but added years later during prosecution). Consistent with this, Petitioner persuades us that the only way the ’807 application teaches the claimed requirement of allowing a plug to open and then pass through a sleeve or sleeves is by using a port-opening sleeve, such as sleeve 322. Pet. 24; Reply 7. Petitioner argues that the Figure 6 embodiment cannot function without the port-opening sleeve. Pet. 24. Petitioner explains that port-closure sleeves 325a, 325b “have an inner diameter that ‘is generally equal’ to the inner diameter of the tubing string, meaning that any ball or plug that can traverse the tubing string will—in the absence of an intermediate port-opening sleeve—necessarily also pass through the port-closure sleeves [without opening them].” Id. (citing Ex. 1001, 10:1–6, Fig. 6); see also Ex. 1019, 34 (Disclosing that “sleeve 325a is selected to have an inner diameter that is generally equal to the tubing string inner diameter.”).” slip op. at 12

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “Although the Specifications of the ’009 patent and the ’807 patent do not use the word “necessary,” we are persuaded that, just as a person of ordinary skill in the art would have understood that the spike was necessary in ICU Medical, a person of ordinary skill in the art would have understood that the port opening sleeve (i.e., sleeve 322) is necessary here. See ICU Medical, 558 F.3d at 1378; see also LizardTech. Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344–45 (Fed. Cir. 2005) (The disclosure of only one way to create a seamless DWT—by maintaining updated sums—did not provide written description support for claims that did not recite maintaining updated sums.). As Petitioner explains, the original claims of the ’807 application all require a “port-opening sleeve,” as recited in independent claims 1 and 15. Ex. 1019, 39–42; Pet. 22. Similarly, the Abstract of the ’807 application describes a tubing string assembly that includes closures, in which “[t]he closures are openable by a sleeve drivable through the tubing string inner bore.” Ex. 1019, 43. These disclosures would have strongly suggested to a person of ordinary skill in the art that a port-opening sleeve was a necessary component in the invention. See ICU Medical, 558 F.3d at 1378 (noting claims omitting spike recitation not filed with original application, but added years later during prosecution). Consistent with this, Petitioner persuades us that the only way the ’807 application teaches the claimed requirement of allowing a plug to open and then pass through a sleeve or sleeves is by using a port-opening sleeve, such as sleeve 322. Pet. 24; Reply 7. Petitioner argues that the Figure 6 embodiment cannot function without the port-opening sleeve. Pet. 24. Petitioner explains that port-closure sleeves 325a, 325b “have an inner diameter that ‘is generally equal’ to the inner diameter of the tubing string, meaning that any ball or plug that can traverse the tubing string will—in the absence of an intermediate port-opening sleeve—necessarily also pass through the port-closure sleeves [without opening them].” Id. (citing Ex. 1001, 10:1–6, Fig. 6); see also Ex. 1019, 34 (Disclosing that “sleeve 325a is selected to have an inner diameter that is generally equal to the tubing string inner diameter.”).” slip op. at 12

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

    “Petitioner’s assertions and evidence persuade us that Themig anticipates each of claims 1–13. Pet. 24–33. Patent Owner’s sole argument that Themig does not anticipate claims 1–13 is that the claims are entitled to the filing date of the ’807 application, such that Themig is not prior art to claims 1–13. PO Resp. 21. For the reasons, explained above in Section III.B, we find this argument unpersuasive.” slip op. at 16

  Patent outcomesUS 8,657,009 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 8,657,009
• Baker Hughes Incorporated / Baker Hughes Oilfield Operations, Inc. v. Packers Plus Energy Services, Inc.All claims unpatentable
  PTAB · Aug 29, 2017 · IPR2016-00657 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–8 are unpatentable as anticipated by Themig and Flores, and obvious over Flores and Flores with Whiteley; obviousness over Echols with Thomson, with or without Whiteley, was not shown.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “Petitioner persuades us that the ’807 application does not provide written description support for the challenged claims of the ’451 patent. Aside from the Figure 6 embodiment of the ’451 patent and ’807 application, no other disclosed embodiment falls within the scope of the challenged claims. As noted in our Institution Decision and in Section III.A above, each of the challenged claims requires an apparatus or method with a sleeve (or multiple sleeves) actuatable or opened by a plug, where the sleeve (or multiple sleeves) allows the plug to pass through the sleeve in the open position. Inst. Dec. 5–6. Aside from the Figure 6 embodiment, we do not find (and Patent Owner does not argue) that any of the other embodiments teaches a sleeve or sleeves that allow a plug to pass through in the open position of the sleeve or sleeves. In view of this, Petitioner persuades us that none of the disclosed embodiments other than Figure 6 of the ’807 application could potentially provide written description support for the challenged claims of the ’451 patent.” slip op. at 11

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “Petitioner persuades us that the ’807 application does not provide written description support for the challenged claims of the ’451 patent. Aside from the Figure 6 embodiment of the ’451 patent and ’807 application, no other disclosed embodiment falls within the scope of the challenged claims. As noted in our Institution Decision and in Section III.A above, each of the challenged claims requires an apparatus or method with a sleeve (or multiple sleeves) actuatable or opened by a plug, where the sleeve (or multiple sleeves) allows the plug to pass through the sleeve in the open position. Inst. Dec. 5–6. Aside from the Figure 6 embodiment, we do not find (and Patent Owner does not argue) that any of the other embodiments teaches a sleeve or sleeves that allow a plug to pass through in the open position of the sleeve or sleeves. In view of this, Petitioner persuades us that none of the disclosed embodiments other than Figure 6 of the ’807 application could potentially provide written description support for the challenged claims of the ’451 patent.” slip op. at 11

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

    “Petitioner’s assertions and evidence persuade us that Themig anticipates each of claims 1–8. Patent Owner’s sole argument that Themig does not anticipate claims 1–8 is that the claims are entitled to the filing date of the ’807 application, such that Themig is not prior art to claims 1–8. PO Resp. 21. For the reasons, explained above in Section II.B, we find this argument unpersuasive.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Patent Owner persuades us that Petitioner has not provided rational underpinning for its contention that it would have been obvious to add multiple examples of Echols’ sleeve to each interval of Thomson’s system. We find unpersuasive Petitioner’s argument that neither the claims nor the challenge requires a cement casing in the well. Regardless of what the claims require, Petitioner chose Thomson and Echols as the prior art to support its obviousness contention. On this record, we are persuaded that Thomson discloses using its tubing string in a well lined with a cement casing. Thomson discloses that “[b]efore running the completion, each well was perforated with tubing-conveyed perforating (TCP) guns.” Ex. 1005, 3. Thomson also discusses “installation into the horizontal section of the liner,” and admonishes that “[t]he well in general and liner in particular needs to be properly cleaned and conditioned. This is essential for running ten packers in a horizontal liner.” Id. at 3–4. These disclosures indicate that Thomson’s system includes a cement liner in the wellbore. Consistent with this, Figure 3 of Thomson, reproduced below, appears to show a liner at the periphery of the wellbore.” slip op. at 26

  Patent outcomesUS 9,074,451 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 9,074,451
• Google Inc. v. Patrick ZuiliAll claims unpatentable
  PTAB · Apr 24, 2017 · CBM2016-00008 · APJ Stacey G White · CBM · Final written decision

  Claims 1, 5, 9, and 11 are unpatentable under § 101 and obvious over IAB 1 and IAB 2; claims 5 and 11 are also obvious over IAB 1, IAB 2, and Laurent.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “a first code on the server side computing device . . . sending said first code to said at least one device over a communication network. PO Resp. 144. According to Patent Owner, Petitioner “inconsistently pointed [] to cookies as constituting a first code,” and Patent Owner alleges that this is insufficient because claim 1 does not discuss cookies. Id. at 146. Patent Owner contends that Petitioner has equated code generation with cookies and that is improper because cookies are used only to store the code after it has been generated. Id. We do not agree with Patent Owner’s analysis. Petitioner’s declarant, Stephen Gray, asserts that “[c]ookies are set by servers that store the cookie in the client. That cookie is then transmitted back from the client to the server upon subsequent accesses by the user to the origin server that set the cookie.” Ex. 1006 ¶ 60. Gray opines that one of ordinary skill in the art would have known that “when a user clicks a cookie-enabled website, a cookie is generated on the server and this cookie is stored on the client computer along with all of the information.” Ex. 1006 ¶ 105. We find that this comports with IAB 1’s description of measuring the number of visits to a web site by using a “Unique Cookie with Heuristic.” Ex. 1004, 5. IAB 1’s server stores “a small piece of information with a browser.” Id. IAB 2 notes that “[t]he web server responds to the user browser by checking for an existing cookie and creating one if one does not exist.” Ex. 1005, 27 (emphasis added). As described in the IAB references, cookies are designed to be unique to each browser, or if possible, the cookies should be unique to each user. Ex. 1004, 5, Ex. 1005, 21–22, 27. We find that these disclosures from IAB 1 and IAB 2 would have taught one of ordinary skill in the art the claimed first code.” slip op. at 32

  • Skill levelOther
  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “analyze patentability using the broadest reasonable construction of the claims in light of the specification. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard under 37 C.F.R. § 42.100(b)). Neither party makes an explicit claim construction argument in the proceeding. See generally PO Resp., Reply. For purposes of this Final Written Decision, we determine that no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 17

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

    “Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1325 (Fed. Cir. 2017) (citation omitted). Thus, we must determine whether the claims are directed to “longstanding conduct that existed well before the advent of computers and the Internet.” Id. at 1327. What we are presented with is a system for marking the occurrence of two events and making a determination about the validity of the second occurrence based on the time elapsed between occurrences. We find that this is a longstanding business practice as exemplified by Petitioner’s pharmacy example. See Pet. 47. Patent Owner asserts that the ’057 patent is different from the sort of fraud detection that may be performed by a pharmacist because the challenged claims are “able to handle millions of clicks in real time whether from the same or different users.” PO Resp. 90. We do not agree. The claims recite only two data points, a time associated with click one and a time associated with click two. Thus, a pharmacist comparing the dates or times for two prescription requests is performing the same comparison as the one recited in the claims. There is no requirement in the claims that the system be able to handle millions of data points. Further, there is no discussion of the determination being made in real time and to the contrary the specification states that “by observing a metric like the number of clicks for a given period of time, be it a short time or a longer period, such as a day or a week, the system can automatically determine if certain clicks are illegitimate.” Ex. 1001, 2:64‒3:2. In addition, while the claims recite the creation of codes and encoded codes none of this is used by the claimed method to perform its determination. That data merely is sent from one place to another while the system marks the time associated with a click. The only information used in the determination is the time of the two clicks. The claims are not directed to improving the function of the computer or its associated software; instead, they are directed to using a computer to perform a well-known business task. See Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”). Therefore, we are persuaded that the challenged claims are directed to a longstanding economic task and not to an improvement to the computer functionality itself. Cf. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). For all of the foregoing reasons, we find that Petitioner has established that claims 1, 5, 9, and 11 are directed to an abstract idea.” slip op. at 23

  Patent outcomesUS 8,671,057 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish
  Patents in suitUS 8,671,057
• Tech 21 UK Ltd. v. Zagg Intellectual Property Holding Co., Inc.All claims unpatentable
  PTAB · Jan 27, 2016 · IPR2014-01262 · APJ Meredith C Petravick · IPR · Final written decision

  Claims 1, 3, and 4 are unpatentable over Mason I and Thomas; claim 1 is also anticipated by PALM. The motion to amend is denied as to substitute claims 19–32.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “The test for written description is an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Using this test, the invention must be described in a manner sufficient to demonstrate that the inventor actually invented the claimed invention. Ariad, 598 F.3d at 1351. “One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Written description is a question of fact judged as of the relevant filing date. Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006).” slip op. at 9

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1276–78 (Fed. Cir. 2015). Claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes a construction for the claim term “application element.” Pet. 18–20. Patent Owner does not propose a construction for any claim terms. PO Resp. 4. Based on our review of the record before us, however, no explicit construction of any claim term is needed.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “protective film sheets have a dry adhesive instead of a wet adhesive covered by a peel-away film. Pet. 28, 45–47. Petitioner cites to Thomas’s shield assembly to teach that use of protective overlay sheets having a wet adhesive covered by a removable backing was known. Id. at 29. Petitioner argues that substituting Thomas’s shield assembly with wet adhesive for Mason I’s film sheet with dry adhesive would have been obvious because it avoids the necessity and mess of using a liquid to activate the dry adhesive. Id. at 27. Upon review of Petitioner’s evidence and analysis, we determine that Petitioner has established by a preponderance of the evidence that claims 1, 3, and 4 are unpatentable over a combination of Mason I and Thomas. As discussed above, Mason I discloses a package that includes: a screen protector, which has an adhesive layer; a peel-away cover film; a cloth; an application card; and a liquid cleaning solution. As also discussed above, Thomas discloses a similar protective transparent overlay sheet that is secured to a display screen by a wet-adhesive, after a removable backing sheet is peeled away. We agree with Petitioner that it would have been obvious to one of ordinary skill in the art to use the wet-adhesive with removable backing sheet disclosed in Thomas with the screen protector of Mason I to avoid the necessity and mess of using a liquid to activate a dry adhesive.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “The determination of whether a given reference qualifies as a prior art “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 Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “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.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted).” slip op. at 18

  Patent outcomesUS 8,567,596 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 8,567,596
• HTC Corporation / HTC America, Inc. v. Advanced Audio Devices, LLCAll claims unpatentable
  PTAB · Jan 22, 2016 · IPR2014-01158 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1–15 are unpatentable as obvious over Nathan ’259 and Nathan ’255, and over Sound Blaster, Lucente, and Ozawa; the Keller and Martin ground was not proven.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “The Federal Circuit recently addressed written description support for negative limitations, and what constitutes a “reason to exclude,” in Inphi Corp. v. Netlist, Inc., 805 F.3d 1350 (Fed. Cir. 2015). Specifically, the court asked whether “describing alternative features—without articulating advantages or disadvantages of each feature—can constitute a ‘reason to exclude’ under the standard articulated in Santarus.” Id. at 1355. Rejecting the appellant’s argument that a specification must state the advantage of excluding a particular feature, the court held that “Santarus simply reflects the fact that the specification need only satisfy the requirements of § 112, paragraph 1 as described in this court’s existing jurisprudence.” Id. at 1356. The “reason to exclude,” therefore, may be provided by properly describing alternative features of the patented invention. Id. The court proceeded to analyze whether there was sufficient evidence that the patentee possessed the negative claim limitation as of the filing date. Id. at 1357. In view of Inphi, we reject HTC’s argument that claims 1–15 are not entitled to an earlier priority date because AAD allegedly “fails to identify any teaching in the specification of any of its applications . . . that excludes a connection to a ‘network service center containing the names,’ fails to identify any disadvantages of such a network service center, and fails to otherwise provide a reason to exclude a network service center.” Pet. Reply 12 5 (emphasis added). We need not find a recitation in the originally-filed specification of any disadvantage of a network service center; rather, the proper inquiry is whether the priority application reasonably conveys that the inventor was in possession of an apparatus that could—without connecting to a network service center—display a list of names of sound tracks. We conclude that it does. As AAD points out, the device disclosed in the priority applications includes a number of inputs, but as Mr. McAlexander testifies, none of these inputs could be used to connect to a network service center. PO Resp. 12; Ex. 2011 ¶ 65. Furthermore, the applications disclose displaying a list of names of sound tracks, which are entered into the memory of the device by the user (as opposed to being obtained from a network service center). PO Resp. 12–13. Mr. McAlexander testifies that the specifications reasonably convey to a person of ordinary skill in the art that the described apparatus could display a list of names of sound tracks without being connected to a network service center. Ex. 2011 ¶ 65. After evaluating the specifications and the expert testimony, we agree. We, therefore, conclude that HTC has not met its burden to prove, by a preponderance of the evidence, that claims 1–15 of the ’888 patent are not entitled to a priority date before the effective date of Keller. As such, HTC has not established that Keller is prior art to the ’888 patent, and has not proven that claims 1–15 are unpatentable as having been obvious over Keller and Martin.” slip op. at 12

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “The Federal Circuit recently addressed written description support for negative limitations, and what constitutes a “reason to exclude,” in Inphi Corp. v. Netlist, Inc., 805 F.3d 1350 (Fed. Cir. 2015). Specifically, the court asked whether “describing alternative features—without articulating advantages or disadvantages of each feature—can constitute a ‘reason to exclude’ under the standard articulated in Santarus.” Id. at 1355. Rejecting the appellant’s argument that a specification must state the advantage of excluding a particular feature, the court held that “Santarus simply reflects the fact that the specification need only satisfy the requirements of § 112, paragraph 1 as described in this court’s existing jurisprudence.” Id. at 1356. The “reason to exclude,” therefore, may be provided by properly describing alternative features of the patented invention. Id. The court proceeded to analyze whether there was sufficient evidence that the patentee possessed the negative claim limitation as of the filing date. Id. at 1357. In view of Inphi, we reject HTC’s argument that claims 1–15 are not entitled to an earlier priority date because AAD allegedly “fails to identify any teaching in the specification of any of its applications . . . that excludes a connection to a ‘network service center containing the names,’ fails to identify any disadvantages of such a network service center, and fails to otherwise provide a reason to exclude a network service center.” Pet. Reply 12 5 (emphasis added). We need not find a recitation in the originally-filed specification of any disadvantage of a network service center; rather, the proper inquiry is whether the priority application reasonably conveys that the inventor was in possession of an apparatus that could—without connecting to a network service center—display a list of names of sound tracks. We conclude that it does. As AAD points out, the device disclosed in the priority applications includes a number of inputs, but as Mr. McAlexander testifies, none of these inputs could be used to connect to a network service center. PO Resp. 12; Ex. 2011 ¶ 65. Furthermore, the applications disclose displaying a list of names of sound tracks, which are entered into the memory of the device by the user (as opposed to being obtained from a network service center). PO Resp. 12–13. Mr. McAlexander testifies that the specifications reasonably convey to a person of ordinary skill in the art that the described apparatus could display a list of names of sound tracks without being connected to a network service center. Ex. 2011 ¶ 65. After evaluating the specifications and the expert testimony, we agree. We, therefore, conclude that HTC has not met its burden to prove, by a preponderance of the evidence, that claims 1–15 of the ’888 patent are not entitled to a priority date before the effective date of Keller. As such, HTC has not established that Keller is prior art to the ’888 patent, and has not proven that claims 1–15 are unpatentable as having been obvious over Keller and Martin.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “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 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. 1009 ¶ 181 (“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 ¶ 183 (“it would be 34 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. 1009 ¶ 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. 2007 ¶ 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 ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Based on the foregoing, we conclude that it would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, and Ozawa, and would have had a reasonable expectation of success in doing so. slip op. at 34

  • 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 23 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, 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 ’888 patent. Pet. Reply 24. HTC also contends that AAD fails to demonstrate any link between the invention of the ’888 patent and the taking of the license; for example, AAD provides no apportionment of revenues to show the amount attributable to the ’888 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 ’888 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 ’888 patent, or whether they were taken merely to 24 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 23

  Patent outcomesUS 8,400,888 unpatentable
  § 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 8,400,888

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.