• ROKU, Inc. v. Flexiworld Technologies, Inc.Instituted
  PTAB · Mar 24, 2022 · PGR2021-00112 · APJ Bryan F Moore · PGR · Institution

  Instituted PGR on claims 1–20 because Petitioner showed a reasonable likelihood that claim 1 lacks written description support; all petition grounds were included.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “content for output.” Id. at 89. We determine, however, that Petitioner’s argument under Step 2A Prong One that claim 1 is directed to the “obtaining content for output” is not substantially different from the Examiner’s determination that claims 1‒20 recite “collecting information, analyzing it, and displaying certain results of the collection and analysis.” Compare Pet. 37–88 (citing e.g. Electric Power), with Ex. 2001, 193–194 (also citing Electric Power). In both cases, the argument is the same or substantially the same, i.e., that similarly identified subject matter of the claim is obtaining (collecting) data and displaying (outputting) it. Nevertheless, as to Step 2A Prong Two, we determine that the claims at issue in the ’096 prosecution differ in material ways from the ’903 patent claims at issue in this PGR. Specifically, the ’096 patent claims recite a touchscreen interface not recited in the ’903 patent claims. Additionally, the ’903 claims focus on the “output device” as performing the patented steps but in the ’096 prosecution history the “‘information apparatus performs the patented steps and “is integral to the claims” (as the Applicant argued). See Ex. 2008 [comparison of ’096 prosecution claims and ’903 claims]; Ex. 2001, 150; see also Pet. 89 (“the claims at issue in the ’067 application were different than the claims of the ’903 patent addressed here.”). rejection and arguments in the ’096 prosecution history turns on whether the claims in this PGR recite different elements that must be determined to integrate the judicial exception into a practical application (i.e., Prong Two of Step 2A). Petitioner argues that an essential element different than the ’096 claims, i.e. the output device, does not integrate the judicial exception into a practical application because the claims do not amount to an improvement to computer functionality. Pet. 37–72. We find this a close case. Nevertheless, due to the differences in the claims, we determine that the Examiner’s withdrawal of the § 101 rejection in light of the applicant’s arguments regarding the claim being directed to a specific technical solution is not substantially the same argument that Petitioner’s presents in the Petition as to Prong Two of Step 2A.” slip op. at 22

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

    “C. Lack of Written Description Support Petitioner contends that the challenged claims are unpatentable for lack of written description for the same reasons it contends the ’903 patent is PGR eligible. Pet. 13–36. The Specification of the ’903 patent has substantially the same disclosures as the Specification of the ’413 application relied on by Patent Owner (see Prelim. Resp. 20) to which the ’903 patent claims priority. Having determined that the disclosures in the ’903 patent Specification and the ’413 application is insufficient to provide written description support for the at least claim 1, we also determine that Petitioner has demonstrated a reasonable likelihood that at least claim 1 is unpatentable for the same reasons. Thus, we exercise our discretion and institute post grant review of claims 1–20 challenged under this ground. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1369–60 (2018).” slip op. at 33

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateInstituted

    “in the art at the time of the invention] would have understood that an output system/device could be (or include) an information apparatus. Prelim. Resp. 24. We determine that Patent Owner’s argument has a logical flaw––i.e., the fact that a particular device could be used alternately as an information apparatus or an output device does not necessarily mean that it was known by one of ordinary skill in the art to use a combined information apparatus/output device and have the new combined device perform all the additional functions required by the claims. “The knowledge of ordinary artisans may be used to inform what is actually in the specification, but not to teach limitations that are not in the specification, even if those limitations would be rendered obvious by the disclosure in the specification.” Rivera v. Int’l Trade Comm’n, 857 F.3d 1315, 1322 (Fed. Cir. 2017) (“Rivera”). “The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification . . . . It extends only to that which is 1997). Patent Owner has not pointed to any disclosure in the ’413 application teaching that an “output device” can perform the functions of the “information apparatus” including its interactions with the “output device.” For example, claim 1 recites “wirelessly receiving, by the output system . . . output data from at least one server of the one or more servers over the Internet.” Ex. 1001, 37:28–32. At this stage, we find sufficiently persuasive Petitioner’s argument, which we discuss above, that the only written description support for an “output device” that performs the claimed functions by accessing the Internet provided by Patent Owner is not an “output device” but an “information apparatus.” Prelim. Resp. at 27–29.” slip op. at 29

  § 112 disclosureDiscretionary denialcites Mayo · Bilski · Electric Power
  Patents in suitUS 11,029,903
• ROKU, Inc. v. Flexiworld Technologies, Inc.Institution denied
  PTAB · Mar 14, 2022 · PGR2021-00111 · APJ Bryan F Moore · PGR · Institution

  The Board denied institution because the challenged patent was not eligible for post-grant review; it found the priority applications supported claims 6 and 19 and did not reach the § 101 ground.

  RulingsInstitution decision

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

    “For the above reasons, we are persuaded that the ’031 patent’s priority applications (pre-AIA applications) provide written description support for the claim limitation that “that the “output system” (claim 6) or “output device” (claim 19) can be an “Internet appliance.” Thus, we are not persuaded by Petitioner that claims 6 and 19 have an effective filing date after March 16, 2013. Accordingly, claims 6 and 19 do not render the ’031 patent eligible for post-grant review under AIA § 6(f)(2)(A). Accordingly, the information presented in the Petition does not establish that the ’031 patent is eligible for post-grant review.” slip op. at 16

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

    “Finally, the definition of output device in the priority ’765 Application (as in the Specification of the ’031 patent) is that an “[o]utput device [] is an electronic system capable of outputting digital content … Any device capable of playing or reading digital content in voice (e.g., music, speech) or data (e.g., text, document) is also a possible output device.” Prelim. Resp. 15 (alterations in original) (quoting Ex. 1011 (’765 application) ¶ 89, Ex. 1001, 16:29–41). An Internet appliance does fall within that definition. The ’765 Application also contemplates that an output device is a network device accessible through an IP address. See Ex. 1011, 14 (referring to “[i]dentification of an output device” by “IP address”). Put another way, the priority application adequately describes a device fitting the description of” slip op. at 14

  § 112 disclosure
  Patents in suitUS 10,846,031
• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution denied
  PTAB · Feb 22, 2022 · PGR2021-00108 · APJ Aaron W Moore · PGR · Institution

  Institution was denied because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable, including because the asserted combination did not link rule generation to the packet correlation.

  RulingsInstitution decision

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

    “Obviousness Analysis A 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 the subject matter pertains. See 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, primarily: (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 ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham, 383 U.S. at 17–18.6 Petitioner asserts that claims 1–2, 7–8, 10, 12–13, and 17–18 are unpatentable under § 103 as obvious in view of Paxton and Sutton. See Pet. 6, 18–64. For the reasons described below, we are not persuaded by Petitioner’s argument and evidence.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2-3 years of experience in the design or development of telecommunication systems, or the equivalent” and that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 13–15 (citing Ex. 1003 ¶¶ 18–20). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’797 patent and the prior art, we adopt it for purposes of this analysis. C.” slip op. at 9

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

    “Patent Owner argues that “[t]he plain and ordinary meaning of the terms “determining . . . a first plurality of log entries” and “determining . . . a second plurality of log entries” is “identifying” or “ascertaining” log entries.” Prelim. Resp. 16. Patent Owner also argues that “[t]he terms “provisioning, . . . based on the determined correlation, . . . rules configured to identify the first plurality of packets received by the network device,” and “provisioning, . . . based on the determined correlation, . . . rules configured to identify the second plurality of packets transmitted by the network device” (“provisioning rules”) . . . should be given their plain and ordinary meaning—rules configured to identify packets.” Prelim. Resp. 20. Neither party, however, argues that the prior art arguments presented in the Petition turn on the construction of these terms. Instead, it appears that they are raised as claim construction issues only because Petitioner is challenging the language under Section 112. We will discuss the Section 112 arguments below, but do not see a dispute about the constructions offered by the parties above the makes a difference in the prior art analysis and, therefore, do not construe these terms at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10

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

    “respect to this limitation for several reasons, including that Petitioner’s “alleged rule generation and provisioning” is responsive to detecting malicious activity, not “based on the determined correlation.” Prelim. Resp. 38. On this record, we agree with Patent Owner. The claims require “generating, by the computing system and based on the determined correlation, one or more rules configured to identify packets received from the first host.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” the determined correlation.” slip op. at 16

  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham · Nautilus
  Patents in suitUS 10,931,797
• Flex Logix Technologies, Inc. v. Venkat KondaRehearing denied
  PTAB · Sep 16, 2020 · IPR2020-00261 · APJ Jo-Anne M Kokoski · IPR · Rehearing

  The Board denied Patent Owner’s rehearing requests, leaving institution of review of claims 1–7, 11, 15–18, 20–22, 32, and 47 in place.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “in our Decision on Institution. In the Decision, we directly addressed Patent Owner’s arguments that Dr. Baker is not qualified to testify in this proceeding because he is neither a person of ordinary skill in the art, nor an expert in the relevant art. See Dec. 7–8. In particular, we explained that there is no requirement “that the expert’s experience perfectly match the relevant field, or that the expert is a person of ordinary skill in the art.” Id. at 7. We also explained that Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot reached

    “Moreover, in the Decision, we directly addressed Patent Owner’s argument with respect to whether the ’394 provisional and ’605 PCT provided support for the claim limitation “said routing network comprising a plurality of stages y, in each sub-integrated circuit block, starting from the lowest stage of 1 to the highest stage of y, where y≧1” when y=1. Dec. 14. In particular, we found that Patent Owner’s arguments, as we understand them, are directed only to the disclosure of a network with only one stage (y=1). [Prelim. Resp.] at 15–39. Patent Owner does not address the other limitations of claim 1, and does not point to any disclosures in the priority applications that describe a sub-integrated circuit block with only one stage that also comprises pluralities of forward connecting links and backward connecting links as required by claim 1. Id. Thus, we did not overlook Patent Owner’s arguments, but rather evaluated the disclosures in the ’394 provisional and ’605 PCT and determined, on the record at this stage of the proceeding, that they do not provide sufficient written description support for the challenged claims. The parties will have the opportunity to further develop the record on these issues during trial, and the Board will evaluate the fully-developed record at the close of the evidence. D. Public Availability of the ’394 provisional” slip op. at 9

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 8,269,523
• Flex Logix Technologies, Inc. v. Venkat KondaRehearing denied
  PTAB · Sep 16, 2020 · IPR2020-00260 · APJ Jo-Anne M Kokoski · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing requests, leaving institution in place for claims 1–7, 11, 15–18, 20–22, 32, and 47.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • Strike new argumentNew argument disregardedOther

    “Consolidated Trial Practice Guide, 90. The Consolidated Trial Practice Guide goes on to state that “[a]bsent a showing of ‘good cause’ prior to filing the request for rehearing or in the request for rehearing itself, new evidence will not be admitted.” Id. (citing Huawei, Paper 19 at 4).” slip op. at 4

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6

  • Skill levelOther

    “(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 8,269,523
• Nikon Corporation v. Carl Zeiss AG And ASML Netherlands B.V.Rehearing denied
  PTAB · Feb 1, 2019 · IPR2018-00686 · APJ Bryan F Moore · IPR · Rehearing

  The Board denied Nikon’s rehearing request, leaving institution denied for claims 1–5, 7–10, 16, 24, and 30–33 based on § 325(d) and the priority-date analysis.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically 1 The Petition, in an apparent typographic error, omits claim 5 from its listing of challenged claims on page 1. identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2

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

    “In the Institution Decision, we denied institution of Ground 1 based on our discretion under 35 U.S.C. § 325(d). Inst. Dec. 17. Specifically, we determined that the Kaifu reference relied on by Petitioner was considered during prosecution. Id. Petitioner asserts that we misapprehended or overlooked its arguments regarding why its contentions as to Kaifu were not considered by the Examiner.” slip op. at 3

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

    “written description. To satisfy the written description requirement of 35 U.S.C. § 112 ¶ 1, the specification must “clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (internal brackets omitted) (en banc) (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). Thus, the specification must reasonably convey to those skilled in the art that the inventor possessed, at the time of filing, the subject matter that he or she has claimed. Id. “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. Whether a specification complies with the written description requirement is a question of fact. Id. at 1351, 1355. Entitlement to a filing date extends only to subject matter that is disclosed, not to that which is obvious. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997).” slip op. at 7

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

    “We determine that because the open ended term “comprising” was used in the original claim reciting “a” signal, the recitation of “a” signal and “one or more” signals would have the same scope. An indefinite article, such as “a,” in patent parlance encompasses “one or more” when used, as here, in open-ended claims containing the transitional phrase “comprising.” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). “Unless the claim is specific as to the number of elements, the article ‘a’ receives a singular interpretation only in rare circumstances when the patentee evinces a clear intent to so limit the article.” Id. Thus, the claim as amended, which removes the open ended preface “comprising” and changes the modifier of “select signals” from “a” to “one or more,” does not change the scope of the claim in that respect. It merely is a different phrasing. Thus, as we stated in the Institution Decision, any description of a system with one signal would necessarily support a claim to one or more signals. Inst. Dec. 28. Additionally, the claim, as amended, does not suggest there is choice between alternatives that would meet this claim. For example, the claim does not require a choice between a first type of signal and a second type of signal. The claim recites “one” signal, which can be optionally accompanied (“or”) by “more” signals.” slip op. at 8

  Claim construction§ 112 disclosureDiscretionary denial
  Patents in suitUS 9,728,574
• Flir Systems, Inc. / Flir Maritime US, Inc. (F/K/A Raymarine, Inc.) v. Garmin Switzerland GmbHSome claims unpatentable
  PTAB · Jul 10, 2018 · IPR2017-00946 · APJ Scott B Howard · IPR · Final written decision

  Claims 28, 29, and 45 were held unpatentable; claims 1–7, 12–23, 25–27, and 41–44 were not shown unpatentable. Substitute claims 73 and 74 were allowed.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “C. Legal Principles 1. Anticipation A patent claim is unpatentable under 35 U.S.C. § 102 if “the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)). Moreover, the reference must also “disclose[] 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.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). We analyze the ground based on anticipation in accordance with the above-stated principles.” slip op. at 22

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

    “and agree with Patent Owner that the terms “re-routing the course” and “re-route the course” mean “to change at least a portion of the route of the course relative to a previous routing.” That is, there must be a first routing of a course and that routing must be changed by performance of the marine route calculation algorithm to avoid preselected conditions by identifying one or more non-user selected waypoints. The construction is consistent with the words of the claims. The claims do not merely require routing a course, but “re-routing the course.” The ordinary meaning of the prefix “re” is that something is being done again. See Tr. 18 (Petitioner agreeing that “if you put R-E in front of a word, normally that means it’s occurring a second time”). Although the claims do not explicitly recite both an original “routing” of a course that is changed by “re-routing the course,” the original “routing” is implicitly required by the use of the prefix “re.” See Tr. 34 (Patent Owner agreeing that although the claims do not explicitly require an initial routing, the initial routing is implicit in the use of “re-routing”), 44–45 (Petitioner agreeing that “re-routing” ordinarily implies an initial routing).” slip op. at 10

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

    “proposed construction of “course” as “the path of intended travel of a craft with respect to the earth.” Instead, we need only focus on the words recited in the claim. Claim 1, which is representative, recites that performing the marine route calculation algorithm to “route a course between a first location and the potential waypoint avoiding the preselected conditions,” where such performance includes “identifying one or more non-user selected waypoints.” Ex. 1001, claim 1. The other independent claims recite similar limitations. See Ex. 1001, claims 12, 20, 27. Based on the limitation recited in the claim, the broadest reasonable interpretation of routing a “course” encompasses the identification of one or more non-user selected waypoints between a first location and a potential waypoint. No further construction is necessary for purposes of this Decision.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We are persuaded by Petitioner’s argument that the person of ordinary skill in the art need not have first-hand experience with marine navigation devices and systems. Pet. Reply 25–26. The ’703 patent explicitly defines “marine navigation” broadly, noting that “the use of the word ‘marine’ in the embodiments of the present invention (including the claims) could be replaced with the phrase ‘non-street based.’” Ex. 1001, 1:57–67 (emphasis added). Such non-street based navigation is broad enough to encompass avionic navigation. See Pet. Reply 25–26; cf. Ex. 1003, 4–7 (demonstrating Dr. Braasch’s experience in avionic navigation). We find that Petitioner’s definition is supported by the testimony of its expert, Dr. Braasch, and, for the reasons stated above, we are not persuaded that the person of ordinary skill in the art necessarily would have had first-hand experience in marine—as opposed to non-street based— navigation. We, therefore, determine, based on the complete record, that Petitioner’s proposed definition correctly states the level of ordinary skill in the art, and we apply it for purposes of this Decision.7, 8” slip op. at 24

  Patent outcomesUS 7,268,703 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,268,703
• Texas Association Of Realtors v. Uber Technologies, Inc.All claims unpatentable
  PTAB · Aug 4, 2017 · IPR2016-00615 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–28 are unpatentable under § 103(a); the contingent motion to amend is denied because substitute claims are obvious and lack written-description support.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “II. ANALYSIS Petitioner bears the burden of proving unpatentability of the challenged claims, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish the facts supporting its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Petitioner relies on the Declaration of Michael Goodchild, Ph.D. (Ex. 1010) and the Reply Declaration of Dr. Goodchild (Ex. 1020). Patent Owner does not rely on any supporting declaration or cross-examination testimony. Below, we discuss whether Petitioner has met its burden with respect to claims 1–28. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Obviousness is resolved based on 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 ordinary skill in the art; and (4) objective evidence of nonobviousness,2 i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7

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

    “First, Petitioner argues that based on the dictionary definition of “demarcate,” the broadest reasonable interpretation of “demarcating” is “‘to determine or mark off the boundaries or limits of’ something.” Id. (quoting Ex. 1013, RANDOM HOUSE WEBSTER’S UNABRIDGED DICTIONARY, (2d ed. 2001), 5); Ex. 1010 ¶¶ 35, 36. Next, Petitioner contends that the broadest reasonable interpretation of “delimiting” is “determining or marking off the boundaries or limits of something, such as by providing a perimeter line or highlighting.” Pet. 7; Ex. 1013, 4; Ex. 1010 ¶¶ 37–39. Petitioner reasons that the Specification provides examples of delimiting “via a perimeter line in any graphical way” and by highlighting. Pet. 7 (citing Ex. 1001, 6:34–39, 8:13–19). Patent Owner does not address these interpretations in its Response, but at oral hearing Patent Owner agrees that Petitioner’s interpretations were “a fair assessment.” Tr. 92:19–94:3. Patent Owner also responds that there was no substantive difference between the two terms – “demarcating” and “delimiting.” Id. at 93:19–29. Petitioner’s proposed interpretations for “demarcating” and “delimiting” are consistent with the claim language, written description of the ’045 patent, and the plain meaning of each term. We therefore interpret “demarcating” to mean “determining or marking off the boundaries or limits of something,” and interpret “delimiting” to mean “determining or marking off the boundaries or limits of something, such as by providing a perimeter line or highlighting.”” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The parties do not argue in the Petition or Patent Owner Response that we should adopt a specific formulation regarding the level of ordinary skill in the art. Dr. Goodchild, however, testifies that a person of ordinary skill in the art at the time of the ’045 patent “would have had a Bachelor of Science degree (or its equivalent), and three years’ experience in the development, management, and use of geographic information systems and related geospatial technologies.” Ex. 1010 ¶ 14. Based on the record presented, including our review of the ’045 patent and the types of problems and solutions described in the ’045 patent and cited prior art, we agree with Dr. Goodchild’s assessment of the level of ordinary skill in the art and therefore adopt it for purposes of this Decision. As noted, we have also considered the cited references as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 10

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

    “Petitioner also provides a persuasive rationale for combining the teachings of O’Clair and Tadman. Id. at 9–10, 14–15. Specifically, Petitioner contends both references are in “similar fields,” with both references referring to the mapping application Google Maps, and [a] person of ordinary skill in the art would have found it obvious and desirable at the time of the ’045 Patent’s filing to combine the features of Tadman into O’Clair to achieve, for example, the ability for a “user to conduct a joint query by using both spatial and non-spatial searches” and the other “advanced features” described by Tadman. Id. at 9–10 (quoting Ex. 1010 ¶¶ 50–51). As further explained by Dr. Goodchild, “[t]he combination of O’Clair’s systems and methods with Tadman’s teachings of polygon-based search would yield the predictable and desirable result of a GIS [geographic information] system which allowed a user to obtain search results located with a polygon-shaped area of interest.” Ex. 1010 ¶ 52; see also Tr. 17:17–19:19. In its Response, Patent Owner does not contest Petitioner’s rationale for combining features of Tadman and O’Clair, nor does Patent Owner challenge Petitioner’s rationale for combining any of the prior art. See Tr. 38:21–39:33 (counsel for Patent Owner agreeing lack of motivation to combine is not argued in the Patent Owner Response). We find persuasive Petitioner’s arguments as to why a person of ordinary skill in the art would have had reason to combine the references’ teachings in the manner asserted.” slip op. at 15

  Patent outcomesUS 8,510,045 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,510,045
• LG Display Co., Ltd. v. Delaware Display Group LLCAll claims unpatentable
  PTAB · Jun 23, 2016 · IPR2015-00506 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1–5 are unpatentable because Shinohara anticipates them.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Following institution, LG Electronics, Inc. filed timely a Petition and Motion for Joinder in Case IPR2015-01666, challenging the same claims of the ’973 patent on the same ground as that on which we instituted review in this proceeding, plus one additional ground. See Paper 24, 2. LG Electronics, Inc. agreed to abandon the additional ground should IPR2015- 01666 be joined with this proceeding. See id. at 2 n.1. To administer the proceedings more efficiently, we granted LG Electronics, Inc.’s Motion for Joinder, joining Case IPR2015-01666 with the instant proceeding. Id. at 5. For purposes of this Decision, we refer to LG Display Co., Ltd. and LG Electronics, Inc., jointly, as “Petitioner.”” slip op. at 2

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

    “Patent Owner repeats its unsuccessful argument that, “[w]ithout offering a construction for this term, the Petitioner has failed to meet the burden of 37 C.F.R. § 42.104(b)(3).” Id. Petitioner responds that this term (1) does not require construction; (2) is limited to a specific embodiment in the specification; (3) and imports a limitation from the specification into the claims. Reply 3–4. Having considered the full record developed during trial, we agree with Petitioner that this term does not require construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim 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)). Patent Owner’s arguments distinguishing the prior art do not rely on a particular construction for this term. See infra.” slip op. at 6

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

    “the ’176 grandparent application is insufficient. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997); see also Reply 5–6. We find that the cited disclosures in the ’176 grandparent application do not describe the density, size, depth, or height of the deformities at approximate midpoints between adjacent pairs of light sources. As discussed above, Patent Owner maintains that a skilled artisan reading the ’176 grandparent application would know that “the approximate midpoint between the two light sources is an area farther away from a light source.” PO Resp. 28 (emphasis added). We are not persuaded by this argument, for it does not establish that the approximate midpoint between adjacent pairs of light sources is the only area farther away from a light source. As Petitioner points out, “the increased distance from the light source is not limited to a distance along the length of the panel member, along the width of the panel member, or along any direction at all.” Reply 11. Thus, Patent Owner fails to meet its burden under Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015) (burden of production shifted to patent owner to prove entitlement to earlier filing date).” slip op. at 10

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedReference is prior artDecided for petitioner

    “In view of the foregoing, we determine that Patent Owner has not demonstrated that the ’176 grandparent application, as originally filed, provides written description support for the disputed limitation. Therefore, we determine that claims 1–5 are not entitled to the benefit of the filing date of the ’176 grandparent application and Patent Owner is thus entitled only to the effective filing date of the application for the ʼ973 patent, February 9, 2007. As a consequence, we find that Shinohara qualifies as prior art.” slip op. at 11

  Patent outcomesUS 7,434,973 unpatentable
  Claim construction§ 102 anticipation§ 112 disclosure
  Patents in suitUS 7,434,973
• Palo Alto Networks, Inc. v. Finjan, Inc.Institution denied
  PTAB · Mar 23, 2016 · IPR2015-02000 · APJ Thomas L Giannetti · IPR · Institution

  Institution was denied for claims 1–22 because the claims were entitled to the November 6, 1997 priority date, so the asserted references were not prior art.

  RulingsInstitution decision

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

    “B. The Applicable Legal Standard Under 35 U.S.C. § 120 Under 35 U.S.C § 120, to claim the benefit of the filing date from an earlier application, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112. Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007); see also In re Hogan, 559 F.2d 595, 609 (CCPA 1977) (“[T]here has to be a continuous chain of co-pending applications each of which satisfies the requirements of § 112 with respect to the subject matter presently claimed.”). If any application in the priority chain fails to include the requisite disclosure, the later-filed application is not entitled to the benefit of the filing date of applications preceding the break in the priority chain. Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997).” slip op. at 10

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

    “the ʼ194 or ʼ780 patents. Pet. 12. However, as Patent Owner points out, that is not the proper test. Prelim. Resp. 13–14. The claimed subject matter need not be described “in haec verba” in the original specification in order to satisfy the written description requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989). Rather, “the test . . . is whether a person of ordinary skill in the art would recognize that the applicant possessed what is claimed in the later filed application as of the filing date of the earlier filed application.” Noelle v. Lederman, 355 F.3d 1343, 1348 (Fed. Cir. 2004). We are persuaded that, on the record presented, this test has been met. We are persuaded that the disclosure in the ʼ194 patent of a security database storing “known Downloadables” provides written description support for the file cache recitation in the ʼ731 patent claims. Prelim. Resp. 17–19. Petitioner does not dispute that known Downloadables are files. Pet. 26 (“Touboul discloses generating and using a Downloadable ID (file identifier) to identify each Downloadable (file).”). Moreover, Petitioner specifically refers to components of the security database as caches: “Claim 1 [of the ʼ731 patent] is the obvious combination of a cache such as the cache taught by Tso with the scanner, security profile cache, and security policy cache in Touboul’s gateway as detailed below.” Pet. 20 (emphasis added). We see no basis to distinguish these descriptions of caches from the storage of Downloadables in the security database. Moreover, we are persuaded that a security database providing temporary storage of known Downloadables meets the requirements of a cache as “a memory for holding a file, at least temporarily.” See supra.” slip op. at 11

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “E. Conclusion We agree with Patent Owner that the ʼ731 patent claims are entitled to the benefit of the grandparent application filed on November 6, 1997. Accordingly, Touboul and the other art asserted by Petitioner does not qualify as prior art to the ʼ731 patent under 35 U.S.C. § 102(b), as asserted by Petitioner.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded, either, by Petitioner’s position, unsupported by any citation of authority, that Patent Owner’s decision not to claim the benefit of the earlier filing date during prosecution of the ʼ731 patent is an admission. Nor are we persuaded by the conclusory testimony of Petitioner’s expert on the filing date issue. See Rubin Decl. ¶ 69. Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a).” slip op. at 13

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 7,418,731

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.