- Baker Hughes Incorporated / Baker Hughes Oilfield Operations, Inc. v. Packers Plus Energy Services, Inc.All claims unpatentablePTAB · 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 disclosurePatents in suitUS 9,074,451 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-01376 · APJ Kerry Begley · IPR · Final written decision
Claims 1–3, 8, and 15–25 are unpatentable: Pong anticipates claims 1–3, 8, 15, 16, and 25; Pong and Smith render claims 17–24 obvious. Claim 11 is not shown unpatentable.
RulingsFinal written decision- BurdenOther
“and 37 C.F.R. § 42.73. Having considered the record before us, we determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 8, and 15–25 of the ’121 patent are unpatentable. See 35 U.S.C. § 316(e). Petitioner, however, has not demonstrated by a preponderance of the evidence that claim 11 is unpatentable.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Communications AB, Sony Mobile Communications (USA) Inc., LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics Mobilecomm USA, Inc. (collectively, “Subsequent Petitioners”; and with Initial Petitioners, “Petitioner”) filed a Petition in IPR2015-01376, requesting inter partes review of claims 1–3, 8, 11, 12,3 and 15–25 of the 2 The Petition also lists Samsung Telecommunications America, LLC (“STA”) as a petitioner. Paper 6 (“Pet.”), 1. After the filing of the Petition, however, STA merged with and into Samsung Electronics America, Inc. Paper 10. Thus, STA no longer exists as a separate corporate entity. Id. 3 Subsequent Petitioners represented that they included claim 12 “merely to conform” to the Petition and motion for rehearing of the Institution Decision, regarding claim 12, that was pending before the Board and that if the motion was denied, they requested joinder on “all claims except claim 12.” IPR2015-01376, Paper 3 (“IPR2015-01376 Pet.”), 1 n.1, 33 n.5. Because we denied the motion, we understood Subsequent Petitioners to no longer maintain their challenge of claim 12 and to the extent they did, we determined they had not shown the IPR2015-01376 Petition warranted institution of review of the claim. IPR2015-01376, Paper 12, at 12–15. IPR2015-01376 Pet. Subsequent Petitioners also filed a motion for joinder with this proceeding, which we granted. IPR2015-01376, Papers 4, 12.” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“addresses Koster—a prior art U.S. patent of record as Exhibit 1009 that was filed on July 13, 2004 and issued on April 13, 2004—Patent Owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims over the prior art of record. When arguing how the limitations of the proposed substitute claims distinguish them from the disclosures of the references of record, Patent Owner’s Motion addresses Koster only by asserting that “[a]s to . . . Koster . . . , because, as discussed above, all of the substitute claims find support in the [’]347 Application, . . . Koster . . . is not prior art to any of the proposed substitute claims.” Mot. 22. Because Patent Owner does not persuade us that the proposed substitute claims are enabled by the disclosure in the ’347 Application, we find unpersuasive Patent Owner’s suggestion that the proposed substitute claims are entitled to the filing date of the ’347 Application. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“For a patent to claim priority from the filing date of its provisional application, . . . the specification of the provisional must . . . enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”) (internal citation and quotations omitted); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement.”); see also Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (“[If] the 1983 PCT application was . . . not enabled, Novo would not be able to rely upon the application’s priority date to overcome the Brewer patent.”). Accordingly, we also find unpersuasive Patent Owner’s assertion basis for asserting that the proposed substitute claims are patentable over Koster (by itself or in combination with other references of record), we conclude that Patent Owner has not met its burden of demonstrating patentability of the proposed substitute claims over the references of record. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307 (Fed. Cir. 2015) (upholding Board’s requirement that patent owner “show patentable distinction [of the substitute claims] over the prior art of record”); Opp. 1–4. Thus, Patent Owner has not met its burden for proposed substitute claims 26–34.” slip op. at 84
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Decision and maintain in this Decision—in which “states” is not limited to cache coherency states—we determine that Pong’s presence bit vector discloses the recited “probe filtering information” “representative of states associated with selected ones of the cache memories,” where either the write update or the write invalidate protocol is implemented. See Inst. Dec. 7–10; supra § II.B.1.a. First, under this construction, there is no dispute that “states associated with selected ones of the cache memories” includes presence. See Inst. Dec. 9–10; PO Resp. 25 (arguing that Petitioner’s argument that the presence bit vector represents the “state” of presence allegedly is foreclosed only by Patent Owner’s proposed “construction of state as a cache coherence protocol state”); id. at 1–11, 25–27; Reply 15; Ex. 3001, 497–48 (definition of “state”); Ex. 2016 ¶ 87. Nor is there any dispute that the bits in Pong’s presence bit vector represent this state of presence. Pong discloses that when a bit in the presence bit vector is set, the processor that corresponds to the bit “has a copy of the data block,” i.e., a copy of the data block is present. Ex. 1003 ¶ 51. Accordingly, we agree with Petitioner that in both the write update and write invalidate protocols, a set bit represents the state of presence of a cached copy of the data block in a” slip op. at 42
Patent outcomesUS 7,296,121 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-00163 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 4–6 and 19–24 are unpatentable over Koster and Koster with Smith, respectively; claims 11 and 12 were not shown unpatentable, and the motion to amend was denied.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner
“evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“reasonable likelihood of prevailing on this proposed ground of unpatentability. Inst. Dec. 19–24. We have reviewed Petitioner’s anticipation arguments and supporting evidence, including Koster’s disclosure, the detailed arguments appearing on pages 31–38 of the Petition, and the testimony of Dr. Horst. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, which we also have considered, Petitioner has shown, by a preponderance of the evidence, that each of claims 4–6 is unpatentable under 35 U.S.C. § 102 as anticipated by Koster. Petitioner, however, has not shown, by a preponderance of the evidence that Koster anticipates claims 11 and 12.” slip op. at 27
Patent outcomesUS 7,296,121 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-00159 · APJ Kerry Begley · IPR · Final written decision
Claims 1–3, 8, and 15–25 are unpatentable: Pong anticipates claims 1–3, 8, 15, 16, and 25, and Pong and Smith render claims 17–24 obvious; claim 11 was not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Electronics Co. Ltd., Samsung Electronics America, Inc.,2 and Amazon.com, Inc. (collectively, “Initial Petitioners”) filed a Petition requesting inter partes review of claims 1–3, 8, and 11–25 of U.S. Patent No. 7,296,121 B2 (Ex. 1001, “the ’121 patent”). Pet. Pursuant to 35 U.S.C. § 314(a), we determined the Petition showed a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of claims 1–3, 8, 11, and 15–25, and instituted an inter partes review of these claims. Paper 12 (“Inst. Dec.”). We, however, did not institute review of claims 12–14, because we determined the Petition did not show a reasonable likelihood that Petitioner would prevail with respect to these claims. Id. at 23–30.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Dr. Horst’s testimony that as a result, from the perspective of the presence bit vector, “every processor indicated as storing a copy of the memory line in its cache is storing a valid copy.” Ex. 1014 ¶ A-11; see Pet. 26–27. In other words, as Dr. Horst testifies, “because a write update protocol always updates caches to keep them valid,” “when a cache line is present[,] it is necessarily valid.” Ex. 1025 ¶ 23; see Reply 17–18. Indeed, Dr. Oklobdzija agrees that because the write update protocol “force[s the caches] to update their value for a cache line every time it changes”—as Pong discloses— “every processor that has the cache line will have the line in a valid state.” Ex. 2016 ¶ 90 (emphasis added); Ex. 1003 ¶ 48; see also Tr. 115:1–23 (Patent Owner conceding that in a write update protocol, any cached copies could be “considered . . . to be valid” because they are “kept usable” and “updated”). Accordingly, based on Pong’s disclosures, as well as the explanatory testimony of Dr. Horst in addition to Dr. Oklobdzija, we determine that in the write update protocol, a set bit in Pong’s presence bit vector represents that the corresponding cached copy is present and valid.” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“2. OBVIOUSNESS OVER PONG AND SMITH We turn to the instituted obviousness ground alleging that claims 17–” slip op. at 73
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“addresses Koster—a prior art U.S. patent of record as Exhibit 1009 that was filed on July 13, 2004 and issued on April 13, 2004—Patent Owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims over the prior art of record. When arguing how the limitations of the proposed substitute claims distinguish them from the disclosures of the references of record, Patent Owner’s Motion addresses Koster only by asserting that “[a]s to . . . Koster . . . , because, as discussed above, all of the substitute claims find support in the [’]347 Application, . . . Koster . . . is not prior art to any of the proposed substitute claims.” Mot. 22. Because Patent Owner does not persuade us that the proposed substitute claims are enabled by the disclosure in the ’347 Application, we find unpersuasive Patent Owner’s suggestion that the proposed substitute claims are entitled to the filing date of the ’347 Application. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“For a patent to claim priority from the filing date of its provisional application, . . . the specification of the provisional must . . . enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”) (internal citation and quotations omitted); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement.”); see also Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (“[If] the 1983 PCT application was . . . not enabled, Novo would not be able to rely upon the application’s priority date to overcome the Brewer patent.”). Accordingly, we also find unpersuasive Patent Owner’s assertion basis for asserting that the proposed substitute claims are patentable over Koster (by itself or in combination with other references of record), we conclude that Patent Owner has not met its burden of demonstrating patentability of the proposed substitute claims over the references of record. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307 (Fed. Cir. 2015) (upholding Board’s requirement that patent owner “show patentable distinction [of the substitute claims] over the prior art of record”); Opp. 1–4. Thus, Patent Owner has not met its burden for proposed substitute claims 26–34.” slip op. at 84
Patent outcomesUS 7,296,121 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-01353 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 4–6 are unpatentable as anticipated by Koster, claims 19–24 are unpatentable as obvious over Koster and Smith, and claims 11–12 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownOther
“ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“For the reasons discussed below, however, despite the arguments and evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner fails to proffer evidence sufficient to rebut Patent Owner’s evidence that Koster’s disclosure of a microprocessor does not necessarily disclose that the microprocessor is programmed. Dr. Horst, in his original declaration, asserts that “a requesting microprocessor must be programmed to complete a memory transaction after receiving a first number of responses to a first data request.” Ex. 1014 ¶¶ D-17–D-18. This assertion, however, is conclusory, and does not sufficiently explain why the microprocessor must be programmed or exclude possibilities other than programming. See id.; PO Resp. 27. In particular, Dr. Horst’s original declaration testimony provides no discussion or explanation as to whether a microprocessor composed solely of hardwired logic would necessarily be programmed and whether the functionality described in Koster could not be implemented using hardwired logic. See Ex. 1014 ¶¶ D-17–D-18; PO Resp. 27.” slip op. at 34
Patent outcomesUS 7,296,121 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - Sony Corporation, Sony Electronics Inc., Sony Mobile Communications AB, And Sony Mobile Communications (USA) Inc. v. Memory Integrity, LLCAll claims unpatentablePTAB · May 19, 2016 · IPR2015-00158 · APJ Neil T Powell · IPR · Final written decision
Claims 19–24 are unpatentable: claim 24 as obvious over Koster, and claims 19–23 as obvious over Koster and Kuskin; the motion to amend is denied.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner
“evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Petition, Patent Owner’s Response, and Petitioner’s Reply. Based on that review, we determine that Petitioner has demonstrated, by a preponderance of the evidence, that all of the limitations of claim 24 are taught by, or rendered obvious in view of the teachings of Koster, and that claim 24, considered as a whole, would have been obvious over Koster. Pet. 19–20, 25; PO Resp. 1–16; Pet. Reply 1–8. We find Petitioner’s citations and arguments persuasive, and we adopt them as the basis for our decision. Pet. 19–20, 25; Pet. Reply 1–8. We are persuaded that Koster’s tags and shadow tag memory teach the claim language “probe filtering information representative of states associated with selected ones of the cache memories.” For the reasons explained in Section II.A.1.a supra, we do not agree with Patent Owner’s argument that the broadest reasonable interpretation of this claim language requires cache coherency states. Additionally, as discussed in Section II.A.1.a supra, Patent Owner does not persuade us that the examples of tags and state information discussed in the ’121 patent constitute a clear disavowal of tags as necessarily excluded from state information. See PO Resp. 14–15 (citing Ex. 1001, 7:67–8:4; 13:44–14:47; Fig. 7). Furthermore, Patent Owner’s argument that tags are not state information fails to recognize that the claimed probe filtering information does not have to be states, it need only be “representative of states associated with selected ones of the cache memories.” Ex. 1001, 31:5–6 (emphasis added); see Tr. 74:11– 15, 77:2–9. Patent Owner does not dispute that Koster’s shadow tag memory and its tags indicate where specific data is cached. See PO Resp. 15; Ex. 1001, at [57], 6:9–38, 6:61–7:16, 7:25–33, Figs. 9, 10; Pet. 20; Pet. Reply 5–6; Ex. 1013 ¶ 19; Ex. 1015 ¶ 20; Ex. 1016, 186:17–24. Additionally, Koster uses the information provided by the shadow tag memory and its tags in controlling where to send data requests. See, e.g., Ex. 1001, 6:18–32; Pet. 20; Ex. 1013 ¶ 19. Accordingly, we are persuaded that Koster’s shadow tag memory and its tags are representative of whether selected ones of the cache memories contain specific data, which is representative of the states of those cache memories. See, e.g., Ex. 3001, 497–498 (setting forth definition of “state” as “[t]he condition at a particular time of any of numerous elements of computing—a device, a communication channel, a network station, a program, a bit, or other element—used to report on or to control computer operations.”); Pet. 20; Pet. Reply 1–8; Ex. 1013 ¶ 19; Ex. 1015 ¶ 20; Ex. 1016, 186:17–24.” slip op. at 25
- 112 supportMotion to amend, deniedDenied
“although Patent Owner points to several lines and one figure as describing the limitation, these disclosures simply identify the existence of a cache coherency controller with both a coherent and non-coherent protocol interface without providing any detail of how such a cache coherency controller would be implemented. See Ex. 2020, 12:20–23, 13:11–17; Ex. 2006, 12:12–15, 13:4–10; Ex. 1001, 7:44–48, 8:5–14. Figure 3 represents a concept of a cache coherence interface with two interfaces—but lacks any details that would show one skilled in the art how to make or use a cache coherence interface with two interfaces. See Ex. 2020, Fig. 3; Ex. 2006, Fig. 3. The specification describes Figure 3 as a “diagrammatic representation” of a cache coherence controller, and does not purport to show details of how the two interfaces would be implemented together in such a controller. See Ex. 2020, 5:17, 12:28–13:21, Ex. 2006, 6:16, 12:20– 13:14; Ex. 1001, 3:32–33, 7:53–8:19. This is supported by the testimony of Dr. Oklobdzija, who testified that Figure 3 (along with Figures 2 and 17 of the ’121 patent) “point[] . . . to a non-coherent interface and the interconnections,” but do not provide details regarding how to implement a coherent and non-coherent interface and instead “le[ave] someone . . . with ordinary skill in the art to . . . figure it out.” Ex. 1016, 90:5–93:1, 95:14– 96:10. Dr. Oklobdzija also agreed that “one of ordinary skill would not have already had in their knowledge how to build a system with [both] interface[s].” Id. at 90:5–17.” slip op. at 37
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledDecided for petitioner
“Ex. 2020, 12:22–14:21; Ex. 2006, 11:14–12:14; Ex. 1001, 7:44–8:19. This general description fails to provide a structure or description of how a person having ordinary skill in the art would make or use a cache coherence controller with both types of interfaces. The most detailed language— “[i]n one embodiment, the cache coherence controller 230 is a specially configured programmable chip such as a programmable logic device or a field programmable gate array” and “[a]ccording to various embodiments, each interface 307 and 311 is implemented either as a full crossbar or as separate receive and transmit units using components such as multiplexers and buffers”—does not specifically describe how to implement the system. Instead, as confirmed by Dr. Oklobzjia, the sentence related to the cache coherence controller 230 “gives kind of [a] suggestion to – that this can be implemented as a programmable chip” and the sentence describing implementation of the interfaces is simply an “implementation hint.” Ex. 1016, 100:18–102:20. According to Dr. Oklobzjia, the implementation details are “up to the engineers to – to figure out further.” Id. at 101:10–20. Indeed, Dr. Oklobdzija testified that prior to the filing date of the ’121 patent, a person of ordinary skill in the art would not have known to use both a coherent interface and a non-coherent interface at once. Ex. 2019 ¶¶ 11–12. Specifically, Dr. Oklobdzija testifies that, a reference that “reflects the state of the art of coherent and non-coherent interfaces” as of the alleged effective filing date of the ’121 patent indicated that a system could use only one or the other of a coherent or non-coherent interface, but not both. Id. ¶ 12. Noticeably absent in Patent Owner’s Motion is reference to any detailed discussion in the ’121 patent of the how the cache coherence controller would operate with both interfaces at once, let alone such full, clear, concise, and exact terms as to enable any person skilled in the art, to make and use the system. Given the testimony of Dr. Oklobdzija, we cannot determine that Figure 3 and the few corresponding lines of description apprise one of ordinary skill how to make and use a cache coherence controller with both a coherent and non-coherent protocol interface. See Automotive Techs. Int’l v. BMW of N. Am., Inc., 501 F.3d 1274, 1281–85 (Fed. Cir. 2007) (holding that electronic sensors were not enabled because the specification’s general description failed to provide a structure or description of how a person having ordinary skill in the art would make or use the sensor). This is true despite Dr. Oklobdzija’s conclusory statement to the contrary. Ex. 2042 (Reply Declaration) ¶ 7 (“As I noted in my deposition, based simply on my review during the deposition itself, I believed, and I continue to believe, that the specification of the ’121 Patent contains a number of ‘implementation hint[s]’ which would enable one of skill in the art to practice the coherent protocol interface’ and ‘non-coherent protocol interface’ limitations without undue experimentation.”). “It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.” Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997). Although the knowledge of one skilled in the art is relevant, the novel aspect of an invention must be enabled in the patent. As noted above, according to Dr. Oklobdzija, prior to filing of the ’121 patent, it was suggested that a system could use only one or the other of a coherent or non-coherent interface, but not both. Ex. 2019 ¶¶ 11–12. Given that the allegedly novel aspect of the invention is a cache coherence controller that uses both interfaces, which was unknown to a person of ordinary skill at the time, it is insufficient to merely provide “implementation hints” using known technologies to create that novel cache coherence controller. As was the case in Genentech, the portions of the specification relied upon by Patent Owner here provide “only a starting point, a direction for further research” on using a probe filtering unit with both protocol interfaces; it does not provide guidance to a person of ordinary skill in the art on how to make or use such system. 108 F.3d at 1366. Patent Owner, thus, fails to show that the specification provides “reasonable detail” sufficient to enable use of a probe filtering unit is coupled to a coherent protocol interface and a non-coherent protocol interface. We conclude that Patent Owner has not met its burden of showing that the protocol interface limitation is properly enabled under 35 U.S.C. § 112 ¶ 1.” slip op. at 39
Patent outcomesUS 7,296,121 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - PTAB · Jul 23, 2015 · IPR2015-00158 · APJ Neil T Powell · IPR · Rehearing
The Board denied Sony’s rehearing request, leaving institution denied for all challenged claims because the petition failed to establish the asserted priority-date and Luick limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“persuaded that the probe filtering information disclosed in the ’347 application does relate to the probe filtering information in the challenged claims. Dec. 17. Specifically, we held that we were persuaded that the “probe filtering information” disclosed in the ’347 application constitutes “probe filtering information” under the broadest reasonable interpretation of that language in the challenged claims. Id. The Petition did not argue, as the request now suggests, that the challenged claims are not entitled to the filing date of the ’347 application because the ’347 application does not provide written description support for the full scope of the challenged claims. Accordingly, we are not persuaded that the request identifies a matter in the Petition that we overlooked or misapprehended.” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Table (“GCT”) constitutes “probe filtering information,” as recited in independent claims 1, 16, and 25. See Pet. 34–35. Our Decision denied the claim challenges based on Luick, holding that Petitioner had not addressed adequately the limitation in the independent claims that the “probe filtering information” is “representative of states associated with selected ones of the cache memories.” Dec. 32–33. Specifically, our Decision explained that the Petition did not persuade us that Luick or any of the other cited references teach this limitation. Id. at 33–34. Our Decision noted that we were persuaded that Luick’s GCT contains information about which nodes contain shared data blocks, but does not contain information about whether those nodes have the data blocks in memory 105 or cache 107. Id. at 33. Our Decision further explained that it was “not facially apparent that the information in Luick’s GCT is ‘representative of states associated with selected ones of the cache memories.’” Id. Additionally, our Decision noted, the Petition neither provided any explanation showing that Luick’s GCT contained information “representative of states associated with selected ones of the cache memories,” nor asserted that any of the other cited references teach this limitation. Id. at 33–34.” slip op. at 6
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“Petition’s argument that the definition of “probe filtering information” changed between the ’347 application and the ’161 application. See, e.g., Dec. 15–16. The Petition suggested that the effect of the alleged definition change is that the probe filtering information disclosed in the ’347 application bears no relationship to the claims of the ’121 patent. See Pet. 6 (“the definition of ‘probe filtering information’ changed between the [’347 application] and the ’121 Patent such that the definition in the [’347 application] is admittedly unrelated to the claims of the ’121 Patent”). In our Decision, we held that, contrary to the Petition’s argument, we were persuaded that the probe filtering information disclosed in the ’347 application does relate to the probe filtering information in the challenged claims. Dec. 17. Specifically, we held that we were persuaded that the “probe filtering information” disclosed in the ’347 application constitutes “probe filtering information” under the broadest reasonable interpretation of that language in the challenged claims. Id. The Petition did not argue, as the request now suggests, that the challenged claims are not entitled to the filing date of the ’347 application because the ’347 application does not provide written description support for the full scope of the challenged claims. Accordingly, we are not persuaded that the request identifies a matter in the Petition that we overlooked or misapprehended.” slip op. at 4
§ 103 obviousness§ 112 disclosurePatents in suitUS 7,296,121
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.