• Ericsson Inc. v. Koninklijke KPN N.V.Some claims unpatentable
  PTAB · Oct 4, 2023 · IPR2022-00557 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1, 10–12, 21, 22, 24, and 25 are unpatentable as obvious; claims 2, 3, 6, and 8 were not shown unpatentable; the contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a person of ordinary skill in the art at the time of the invention “would be a person with a B.S. degree in electrical engineering, computer engineering, or equivalent training or job experience, with two years of experience in computer networking technology, or a Master’s degree in electrical engineering, computer engineering, or other equivalent degree.” Pet. 13 (citing Ex. 1003 ¶ 47). Patent Owner indicates that it does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. PO Resp. 14. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we continue to adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 7

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

    “associated sessions” With respect to the limitation “associated sessions,” Patent Owner asserted that the ’669 Patent defines those sessions as those that “should not be managed independent from each another,” and continues to assert the same in its Response. PO Resp. 14–15 (quoting Ex. 1001, 7:37–38). Based on the recitations of the Specification, we construe “associated sessions” as “sessions that should not be managed independent from each other,” as proffered by Patent Owner. Ex. 1001, 7:37–38. slip op. at 8

  • Prior constructionTerm construed board ownDecided for petitioner

    “Patent Owner asserts that the United States District Court for the Eastern District of Texas rejected Petitioner’s proposed construction in the District Court Case, and following briefing and oral argument in that proceeding, the District Court concluded that “composition session” means “a signaling session that is separate from the associated sessions and that is for facilitating management of the associated sessions.” PO Resp. 16. Having reviewed the District Court’s determination, we do not discern a significant difference in scope between it and Petitioner’s formulation, and we, thus, adopt its construction of “composition session” in the analysis below.” slip op. at 9

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

    “As such, we continue to determine that Petitioner has sufficiently established that an ordinarily skilled artisan would have had a rationale to combine the teachings of Foti with RFC 3261, RFC 4566, RFC 2326, Wright, and Lloyd, and would have had a reasonable expectation of success in achieving that combination, as we determined in the Institution Decision. See Inst. Dec. 17–18. We continue to be persuaded that one of ordinary skill in the art would have consulted and utilized disclosures in the RFC references to understand and implement the protocols disclosed by Foti. We are further persuaded by Petitioner’s arguments that such skilled artisans would have had a rationale to combine the teachings of Wright and Lloyd with those of Foti for the reasons provided. Petitioner has asserted that each of the supporting references would have been used by persons of ordinary skill in the art to modify or enhance the system described in Foti for the benefits described for the proposed changes. Absent reasons the references should not be combined, we determine that the motivation proffered by the Petition is sufficient to support the combination, under the preponderance of the evidence standard.” slip op. at 16

  Patent outcomesUS 9,667,669 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,667,669
• Walmart Inc. / Current Lighting Solutions, LLC v. Power Concepts, LLCAll claims unpatentable
  PTAB · Sep 15, 2023 · IPR2022-00569 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–14 are unpatentable; the contingent motion to amend proposing claims 15–28 and the motion to exclude are denied.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “of the claimed “light emitting diode.” Looking at the intrinsic evidence, neither the claim nor the specification defines the light emitting diode as including an integrated lens. With respect to Dr. Bretschneider’s analysis of Dowling’s lens described in paragraph 24, we disagree with Dr. Bretschneider’s conclusion that Dowling’s lens does not teach a lens as claimed. Ex. 2076 ¶ 431 (citing Ex. 1007 ¶ 24).” slip op. at 31

  • 112 supportMotion to amend, deniedDenied

    “electriciaan” and not a “licensed electrician.” Opp. 3–4 (citing Ex. 1002, 25 ¶¶ 6–7, 32 ¶¶ 46, 48). Instead, Petitioner argues that “the disclosure lacks the term ‘licensed electrician,’ lacks a definition of ‘licensed electrician,’ and lacks an explanation of what type of electrical connection would be allowed without the assistance of a licensed electrician.” Id.; Ex. 1035 ¶¶ 76–79) (emphasis omitted). Accordingly, Petitioner argues that the original application does not support proposed substitute claims 23 and 28. See id. We are persuaded by Petitioner’s argument. The ’295 and ’447 applications describe a “skilled” electrician, not a “licensed” electrician. Patent Owner does not show that one of ordinary skill in the art would interpret these to be equivalent. Accordingly, we find that proposed substitute claims 23 and 28 adds new matter. Proposed substitute claim 24 depends from claim 23 and thus includes the same new matter.” slip op. at 63

  • Disclosure Requirements (§112) › Definiteness (Nautilus)Indefinite

    “electrician. See id. (citing Ex. 1002, 25 ¶¶ 6–7). Petitioner’s declarant, Dr. Ducharme, attests that a “licensed electrician is an individual who has obtained a license from a regulatory authority such as a state or local government.” Ex. 1035 ¶ 85. The licensing standards set forth “differ depending upon a given industry” and “change over time.” Id. Accordingly, Petitioner asserts that “one skilled in the art is left to speculate as to what type of electrical wirings require a licensed electrician and which do not — there is no reasonable certainty of the scope of the claimed invention, as the standard requires.” Opp. 5–6 (citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014)). We are persuaded by Petitioner’s argument that proposed substitute claims 23 and 28 are indefinite. Specifically, we agree that there is no reasonable certainty as to the definition of a licensed electrician, nor how to adapt wiring for series connection without the required assistance of a licensed electrician. Accordingly, we find that proposed substitute claims 23 and 28 are indefinite. Proposed substitute claim 24 depends from claim 23 and thus includes the same indefinite limitation.” slip op. at 64

  Patent outcomesUS 10,429,041 unpatentable
  § 112 disclosurecites Phillips · Nautilus
  Patents in suitUS 10,429,041
• Penumbra, Inc. v. Rapidpulse, Inc.All claims unpatentable
  PTAB · Sep 6, 2023 · IPR2022-00608 · APJ Jamie T Wisz · IPR · Final written decision

  Claims 1–21 are unpatentable: claims 1–14, 17–19, and 21 as obvious over Teigen and Grey; claims 15–16 over Teigen, Grey, and Yang; and claim 20 over Teigen, Grey, and Matteo.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. PERSON OF ORDINARY SKILL IN THE ART In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). The level of ordinary skill in the art is “a prism or lens through which . . . the Board views the prior art and claimed invention” to prevent hindsight bias. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “as adopted by the Board in the Institution Decision. The ’253 patent explicitly defines this term, stating: The term “forward flow” is used herein to define an amount of liquid in the lumen 662 that exits the distal end 664 in a distal direction. Forward flow is defined as greater than 6 microliters of fluid (approximately 1 mm of catheter length of ID 0.071″=5.7 μL). Ex. 1001, 38:18–23 (emphasis added). Moreover, in discussing problems with the prior art systems, the ’253 patent states that “[w]hen positive pressure exists at the distal end of the lumen, liquid from inside the lumen exits out from the distal end of the catheter in a distal direction. This is referred to as forward flow.” Id. at 3:8–11. In the ’253 patent, the patentee acted as its own lexicographer as evidenced by usage of language such as “is used herein to define,” “is defined,” and “is referred to as,” to discuss “forward flow.” We find that the definition of “forward flow” in the ’253 patent specification would provide a person of ordinary skill with “reasonable clarity, deliberateness, and precision” as to the meaning of the term. See Paulsen, 30 F.3d at 1480; see also Ex. 1034 ¶¶ 13–14. Thus, we construe the term, “forward flow,” to mean “an amount of liquid in the lumen that exits the distal end in the distal direction that is greater than 6 microliters.” We disagree with Patent Owner’s contention that our construction imports limitations from a single embodiment into the claims. As explained above, the ’253 patent clearly defines the term “forward flow” and this definition is not limited to a single embodiment. In fact, the ’253 patent indicates that, while “[f]orward flow is defined as greater than 6 microliters of fluid . . . [l]ess forward flow is also included in this definition.” Ex. 1001, 38:21–24. The ’253 patent specifies that “the amount of forward flow can be restricted to no greater than 2 microliters or, in a particularly beneficial embodiment, forward flow is approximately zero microliters.” Id. at 38:24– 29. This language indicates that our construction encompasses multiple embodiments from the ’253 patent. We also disagree with Patent’s Owner’s proposed construction of “forward flow” because it is not supported by the ’253 patent specification. Patent Owner contends that “there is ‘no forward flow’ until the full extent of the distal portion” exits the distal end and thus forward flow is prevented when only less than “the full extent of the distal portion” exits the distal end. PO Resp. 9 (emphasis omitted). To adopt Patent Owner’s proposed construction, we would have to essentially ignore the ’253 patent’s express definition of this term. Further, there is no support in the ’253 patent specification for “full extent” or “fully exiting.” We also agree with Petitioner that Patent Owner’s construction effectively eliminates the concept of preventing forward flow because, as Patent Owner acknowledges, it could allow, for example, 20 milliliters of fluid to exit the catheter, which could displace the thrombus into the patient’s vasculature, a problem that the ’253 patent seeks to avoid. See PO Resp. 10–12 (citing Ex. 2014 ¶¶ 48–51); Pet. Reply 8–9 (citing Ex. 1034 ¶¶ 14–15).” slip op. at 13

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

    “As discussed above, we construe “forward flow” to mean “an amount of liquid in the lumen that exits the distal end in the distal direction that is greater than 6 microliters.” Thus, for the ’011 provisional to provide support for this limitation, the provisional must demonstrate that the inventors had possession of preventing greater than 6 microliters of fluid out of the distal end of the catheter. While Patent Owner points to disclosures from the ’011 provisional application that describe the desire to have “a minimal amount of momentum transfer from the fluid column to the stuck clot to unstick the clot sufficiently” and “[t]he exiting movement of fluid [being] limited to a specific volume and/or pressure and is automatically and precisely controlled” to prevent the “possibility of overshooting,” these disclosures would not convey to one of ordinary skill in the art that the inventors were in possession of a device that limited forward flow to no greater than 6 microliters of fluid. PO Resp. 35 (citing Ex. 1003 ¶¶ 15, 16, 138). Patent Owner also contends that the ’011 provisional application provides “multiple examples of liquid flow exiting the distal end of the catheter such that no forward flow occurs, such as 1 microliter or 0.5 mm of column shift.” PO Resp. 36–37 (citing Ex. 1003 ¶ 91). However, the disclosure cited by Patent Owner provides ranges of liquid flow of “approximately 0.001 ml to approximately 1.0 ml, in particular, approximately 0.1 ml to approximately 0.5 ml” and exemplary length of shift distances of “approximately 0.5 mm to approximately 30 mm, in particular, approximately 0.5 mm to approximately 15 mm.” Ex. 1003 ¶ 91. There is nothing in the ’011 provisional application that specifically directs the person of ordinary skill to the portions of these ranges that fall within the ’253 patent’s definition of “forward flow” (i.e., no greater than 6 microliters of fluid). In fact, the majority of the cited ranges are greater than 6 microliters, going all the way up to 1,000 microliters, such that there would be forward flow in these examples. See Ex. 1034 ¶ 25; Purdue Pharma, 230 F.3d at 1326–27 (“[O]ne cannot disclose a forest in the original application, and then later pick a tree out of the forest and say here is my invention. In order to satisfy the written description requirement, the blaze marks directing the skilled artisan to that tree must be in the originally filed disclosure.”); Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996). Further, we note that the ’253 patent differentiates between embodiments that allow forward flow and embodiments in which no forward flow occurs. See Ex. 1001, 32:58–60, 37:19–22; Pet. Reply 10–11. For example, the ’253 patent describes an embodiment in which the “momentum causes a small amount of fluid to move through the distal portion of the catheter [] and create a small distal movement of the clot.” Ex. 1001, 32:47– 51. This same embodiment is disclosed in the ’011 provisional application. Compare Ex. 1003 ¶ 126 with Ex. 1001, 32:16–60. The ’253 patent describes this disclosure as an “exemplary embodiment” in which the “flow of fluid forward . . . is intentional, which is in contrast to other exemplary embodiments herein where substantially no forward flow occurs.” Ex. 1001, 32:57–60; see also, id. at 37:19–22 (“Turning now to embodiments . . . without the forward flow”).8 The ’011 provisional application does not include the subsequent embodiments from the ’253 patent that are described as being “without the forward flow.” See Ex. 1005 ¶ 68; Ex. 1034 ¶¶ 22–23. This further demonstrates that the ’011 provisional application does not support the limitation of “prevent[ing] forward flow.” We also note that the ’011 provisional application does not contain adequate support for the limitation of “substantially prevent[ing] forward flow” even under Patent Owner’s proposed construction. While the ’011 provisional discloses “controlling the distal movement of the fluid column” (Ex. 1003 ¶¶ 15, 16), this does not support Patent Owner’s assertion that the ’011 provisional teaches that “the distal portion of the fluid column is substantially prevented from fully exiting the distal end.” PO Resp. 35–36. For example, as discussed above, the ’011 provisional application discloses permitting distal flow of up to 1,000 microliters, which would likely exceed the amount that could be characterized as the full distal portion. Ex. 1003 ¶ 91; Ex. 1034 ¶ 25. Thus, we find that the ’011 provisional application does not “clearly allow persons of ordinary skill in the art to recognize that [the inventors] invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989); Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 8 Patent Owner contends that the statement in the ’253 patent regarding the “exemplary embodiment” of “forward flow” is referring to an embodiment in which the volume of the liquid drawn out from the lumen of the catheter is “approximately 0.2 ml.” PO Resp. 40–41 (citing Ex. 1001, 32:35–36; Ex. 1003 ¶ 126; Ex. 2014 ¶ 99). Even if this is correct, the ’011 provisional application does not include the embodiments that the ’253 patent specifically characterizes as being “without the forward flow.” Pet. Reply 10–11; Ex. 1005 ¶ 68; Ex. 1034 ¶ 22–25.” slip op. at 20

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Based on the above, we determine that, for prior-art determinations under AIA § 102, “there is no need to evaluate whether any claim of [a reference] patent document is actually entitled to priority or benefit under 35 U.S.C. 119, 120.” MPEP § 2154.01(b) (emphasis added). Rather, under the AIA, a reference patent document need only meet the “ministerial requirements” of §§ 119 and 120, and the provisional or other earlier application(s) to which the reference patent document claims a right of priority must “describe[] the subject matter” relied upon in the reference patent document as prior art. 35 U.S.C. § 102(d)(2). Patent Owner has not contested that Teigen meets the procedural requirements for claiming priority to the ’712 patent or the ’095 PCT application. Teigen also appears to meet the ministerial requirements for claiming priority to the provisional applications because it properly claims the benefit of these applications, the ’095 PCT application was filed co-pending with the provisional applications, and the applications share common inventors. Ex. 1007, codes (22), (60), (63), (72); Ex.1008, 2; Ex. 1009, 2; Ex. 2005, codes (22), (30), (72). Patent Owner does not dispute that Teigen meets the “ministerial requirements” of § 119. Because we find that the Dynamic Drinkware analysis does not apply here, we agree with Petitioner and Patent Owner, that we need not reach the issue of whether a claim from Teigen is supported by either Teigen provisional application. PO Sur-Reply 8; Pet. Reply 12–13.” slip op. at 30

  Patent outcomesUS 10,722,253 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 10,722,253
• Hope Medical Enterprises, Inc. v. Oregon Health & Science UniversityOther
  PTAB · Apr 18, 2023 · IPR2022-00123 · APJ Zhenyu Yang · IPR · Final written decision

  The Board cancelled original claim 1 and denied substitute claim 2 for lack of written-description support; it did not reach the obviousness or enablement grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill is inappropriate because it “requires qualifications that exclude even the sole inventor of the ’190 Patent, Dr. Edward Neuwelt.” MTA Opp. 1. According to Petitioner, Dr. Neuwelt is “a neurosurgeon,” not a pediatric oncologist, and lacks the requisite “at least 2 years” experience in platinum-based therapies. Id. (citing Ex. 1003, 18; Ex. 1038, 98:9–17, 100:15–101, 4). We agree with Petitioner. It is well settled that inventors are typically persons skilled in the field of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Petitioner presents persuasive evidence to show that under Patent Owner’s proposed definition of the level of ordinary skill, Dr. Neuwelt, the sole inventor, would not qualify as an ordinarily skilled artisan, because he is not a pediatric oncologist, even though he is considered “one of the world leading experts on this compound [STS] and otoprotection” and “an expert in the area of [STS] as a . . . drug to use in children with medulloblastoma.” Ex. 1038, 98:9–17, 99:17–18, 101:18–102:13.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Paragraph 102 of Dr. Rassekh’s Declaration, however, does not support Patent Owner’s assertion. Instead, Dr. Rassekh testifies that [t]he stratum of previous craniospinal radiation therapy contained 8 participants: 2 of the 4 (50%) participants receiving STS had hearing loss compared to 4 of the 4 (100%) participants not receiving STS, and none of the hearing loss assessments were changed at the 1 year follow up period. (Ex. 1001 at 20: 28-32, 47-50.) Ex. 2024 ¶ 102. Dr. Rassekh offers no opinion on how many osteosarcoma patients with prior cranial irradiation and how many medulloblastoma patients with prior cranial irradiation had hearing loss.” slip op. at 20

  • 112 supportMotion to amend, deniedDenied

    “In sum, we find the disclosures of the ’243 application that Patent Owner relies on do not provide sufficient written-description support for the ototoxicity efficacy limitation.” slip op. at 21

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

    “F. Petitioner’s Asserted Unpatentability Grounds In light of our determination above that Patent Owner has not shown sufficient written-description support for proposed substitute claim 2 in the ’243 application, we do not reach the grounds of unpatentability set forth in Petitioner’s Opposition. See Revised MTA Opp. 17–25 (alleging non-enablement and obviousness).” slip op. at 26

  § 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,596,190
• Penumbra, Inc. v. Rapidpulse, Inc.All claims unpatentable
  PTAB · Mar 10, 2023 · IPR2021-01466 · APJ Jamie T Wisz · IPR · Final written decision

  Claims 1–18 are unpatentable under §103: claims 1–12, 15, 16, and 18 over Teigen and Grey; claims 13–14 over Teigen, Grey, and Yang; claim 17 over Teigen, Grey, and Matteo.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on our consideration of the full record, we find that, overall, Patent Owner’s definition is more specifically tailored to the claimed subject matter of the ’883 patent. We also find that, a person with a biomedical engineering degree could have the required background in fluid mechanics. See Ex. 1031, 45:21–46:7. Therefore, we find that a person of ordinary skill in the art would have a B.S. in mechanical or biomedical engineering with at least three years of experience in designing systems for minimally invasive intravascular procedures for treating occluded vessels or the equivalent and in consultation with medical professionals such as interventional neurosurgeons. Although we agree with, and have primarily adopted Patent Owner’s definition for an ordinarily skilled artisan in this proceeding, our analysis and conclusions herein would not change even under Petitioner’s definition. The parties also do not indicate that the outcome would differ based on the definition of the person of ordinary skill in the art. See Pet. 15; PO Resp. 6; Pet. Reply 1.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “as adopted by the Board in the Institution Decision. The ’883 patent explicitly defines this term, stating: The term “forward flow” is used herein to define an amount of liquid in the lumen 662 that exits the distal end 664 in a distal direction. Forward flow is defined as greater than 6 microliters of fluid (approximately 1 mm of catheter length of ID 0.071″=5.7 μL). Ex. 1001, 36:18–23 (emphasis added). Moreover, in discussing problems with the prior art systems, the ’883 patent states that “[w]hen positive pressure exists at the distal end of the lumen, liquid from inside the lumen exits out from the distal end of the catheter in a distal direction. This is referred to as forward flow.” Id. at 2:62–65. In the ’883 patent, the patentee acted as its own lexicographer as evidenced by usage of language such as “is used herein to define,” “is defined,” and “is referred to as,” to discuss “forward flow.” We find that the definition of “forward flow” in the ’883 patent specification would provide a person of ordinary skill with “reasonable clarity, deliberateness, and precision” as to the meaning of the term. See Paulsen, 30 F.3d at 1480; see also Ex. 1030 ¶¶ 13–14; Ex. 2001 ¶¶ 53, 62. Thus, we construe the term, “forward flow,” to mean “an amount of liquid in the lumen that exits the distal end in the distal direction that is greater than 6 microliters.”” slip op. at 14

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

    “As discussed above, we construed “forward flow” to mean “an amount of liquid in the lumen that exits the distal end in the distal direction that is greater than 6 microliters.” Thus, for the ’011 provisional to provide support for this limitation, the provisional must demonstrate that the inventors had possession of preventing greater than 6 microliters of fluid out of the distal end of the catheter. While Patent Owner points to disclosure from the ’011 provisional application which describes “a minimal amount of momentum transfer from the fluid column to the stuck clot to unstick the clot sufficiently” and “[t]he exiting movement of fluid [being] limited to a specific volume and/or pressure and is automatically and precisely controlled” to prevent the “possibility of overshooting,” it would not convey to one of ordinary skill in the art that the inventors were in possession of a device that limited forward flow to no greater than 6 microliters of fluid. PO Resp. 33 (citing Ex. 1003 ¶¶ 16, 138). Patent Owner also contends that the ’011 provisional application provides “multiple examples of liquid flow exiting the distal end of the catheter such that no forward flow occurs, such as 1 microliter or 0.5 mm of column shift.” PO Resp. 34 (citing Ex. 1003 ¶ 91). However, the disclosure cited by Patent Owner provides ranges of liquid flow of “approximately 0.001 ml to approximately 1.0 ml, in particular, approximately 0.1 ml to approximately 0.5 ml” and exemplary length of shift distances of “approximately 0.5 mm to approximately 30 mm, in particular, approximately 0.5 mm to approximately 15 mm.” Ex. 1003 ¶ 91. There is nothing in the disclosure of the ’011 provisional application that specifically directs the person of ordinary skill to the portions of these ranges which fall within the ’883 patent’s definition of no “forward flow” (i.e., no greater than 6 microliters of fluid). In fact, the majority of the cited ranges are greater than 6 microliters, going all the way up to 1,000 microliters, such that there would be forward flow in these examples. See Ex. 1030 ¶ 29; Purdue Pharma, 230 F.3d at 1326–27 (“[O]ne cannot disclose a forest in the original application, and then later pick a tree out of the forest and say here is my invention. In order to satisfy the written description requirement, the blaze marks directing the skilled artisan to that tree must be in the originally filed disclosure.”); Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996).” slip op. at 21

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “AIA § 102 draws a distinction between actually being entitled to a right of priority to, or the benefit of, a prior-filed application according to the definition of “effective filing date” of a claimed invention in AIA 35 U.S.C. § 100(i)(1)(B), and merely being entitled to claim a right of priority to, or the benefit of, a prior-filed application for prior-art purposes according to the use of “effectively filed” in AIA 35 U.S.C. § 102(d). See 35 U.S.C. §§ 100(i)(1)(B), 102(a)(2), 102(d)(2); MPEP § 2154.01(b). USPTO guidance also indicates that AIA § 102 prior-art reference effective-filing-date determinations differ from pre-AIA law. For example, a 2018 Memorandum to the Patent Examining Corps states, in the context of prior-art determinations, that “[t]he requirement that one of the claims in the patent [document] . . . be supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. § 112, first paragraph (or AIA 35 U.S.C. § 112(a)), is not applicable when examining an application subject to the first inventor to file provisions of the AIA.” Robert W. Bahr, Memorandum re: Critical Reference Date Under pre-AIA 35 U.S.C. §102(e) (Apr. 5, 2018), available at http://www.uspto.gov/sites/ default/files/documents/dynamic_memo_05apr2018_0.pdf (emphasis added) (citing Dynamic Drinkware, 800 F.3d at 1381 n.2; 157 Cong. Rec. 3423 (2011) (explaining the distinction between being entitled to claim priority or benefit in AIA 35 U.S.C. § 102(d) and actually being entitled to priority or benefit under 35 U.S.C. § 119, 120, or 365)). This Memorandum further indicates: The date subject matter was “effectively filed” under AIA 35 U.S.C. § 102(d) for purposes of considering a U.S. patent, a U.S. patent application publication, or an international application publication as prior art under AIA 35 U.S.C. § 102(a)(2) is discussed in MPEP § 2154.01(b), and is not affected by Dynamic Drinkware or [Amgen v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017)] and is not being modified by this memorandum. Id. at 2. MPEP § 2154.01(b) explicitly states, as a result of the distinction discussed above, in application of the AIA version of § 102, “the question of whether a patent or published application is actually entitled to priority or benefit with respect to any of its claims is not at issue in determining the date the patent or published application was ‘effectively filed’ for prior art purposes.” MPEP § 2154.01(b) (emphases added).” slip op. at 31

  Patent outcomesUS 10,531,883 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 10,531,883
• Marvell Semiconductor, Inc. v. Uniloc 2017 LLCSome claims unpatentable
  PTAB · Feb 1, 2021 · IPR2019-01350 · APJ Jameson Lee · IPR · Final written decision

  Claims 3 and 9 are unpatentable as obvious over Shellhammer; claim 8 was not reached on the merits.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteDecided for patent owner

    “Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1353 (Fed. Cir. 2020) (footnote omitted). This is such a situation. We cannot reach a decision on the merits with respect to whether Petitioner has established the unpatentability of claim 8 under any ground of unpatentability asserted by Petitioner, i.e., (1) obvious over Sherman and Trompower, (2) obvious over Shellhammer and Trompower, and (3) obvious over Shellhammer and Panasik.” slip op. at 77

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

    “challenged claims indeed do satisfy the requirements of 35 U.S.C. § 119 with respect to the foreign application the priority of which it claims.5 Cf. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379– 1380 (Fed. Cir. 2015). Dynamic Drinkware stated that because the USPTO does not examine priority claims unless necessary, the Board has no basis to presume that a patent is necessarily entitled to the filing date of its provisional application. Id. at 1380. Under the reasoning of Dynamic Drinkware, the same would be true for a foreign application the priority of which has been claimed. Patent Owner has made no substantive showing in this proceeding of actual entitlement to the filing date of the German Application, by satisfaction of all pertinent requirements of 35 U.S.C. § 119. Accordingly, the effective filing date of the ’676 patent is August 8, 2001, not the earlier filing date of German Application No. 100 39 532.5.” slip op. at 13

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

    “supported by the underlying disclosure of Sherman. Dr. Roy in paragraph 175 of his Declaration (Ex. 1003) cites to column 4, lines 1–8, of Sherman, which states: “The CFP occurs with a regular period, and all 802.11 terminals set their NAV’s during the CFP. To realize such a super frame the following sequence of frames/phases can be used as shown in the graph of FIG. 5.” Ex. 1004, 4:1–5. This disclosure does not indicate, as Dr. Roy concludes, that the control station “relinquish[es]” time to 802.11 CP access if no HIPERLAN/2 transmission requests are pending. Ex. 1003 ¶ 175. We also find unpersuasive Dr. Roy’s testimony that if there is sufficient HIPERLAN/2 traffic, Sherman teaches that the HIPERLAN/2 phase may be extended to very close to the entire superframe. Id. As discussed above, in Sherman, the CFP already is preset, without regard to whether or how many HIPERLAN/2 requests are pending. Ex. 1004, 6:5–6. Dr. Roy’s conclusion is not supported by the disclosure of Sherman and also is not adequately explained.” slip op. at 34

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “III. CONSTITUTIONAL APPOINTMENT Patent Owner argues that Administrative Patent Judges (“APJs”) “are principal officers under the Appointments Clause of the Constitution” “but undisputably are not appointed through the constitutionally-mandated mechanism of appointment for principal officers.” PO Resp. 60. The Federal Circuit, however, addressed this issue and devised a remedy in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1325 (Fed. Cir. 2019) cert. granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13, 2020). Patent Owner argues that the remedy devised by the Federal Circuit “impermissibly rewrites the statutes governing APJs.” Id. at 61. We decline to consider the argument because the Arthrex decision states otherwise. See Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation.”).” slip op. at 77

  Patent outcomesUS 7,016,676 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,016,676
• Marvell Semiconductor, Inc. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Feb 1, 2021 · IPR2019-01349 · APJ Jameson Lee · IPR · Final written decision

  Claims 1 and 2 are unpatentable over Shellhammer; claim 5’s patentability could not be reached because its scope is ambiguous.

  RulingsFinal written decision

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

    “Further, even assuming that the Patent Owner successfully shows that the Examiner erred in not accepting the applicant’s foreign priority claim, that does not mean Patent Owner, in this proceeding, is automatically entitled to the filing date of the foreign application. If Patent Owner wished to challenge the prior art status of a reference, after Petitioner satisfied its initial burden of production by arguing the reference is prior art, Patent Owner would then have to demonstrate, in this proceeding, that the challenged claims indeed do satisfy the requirements of 35 U.S.C. § 119 with respect to the foreign application the priority of which it claims.5 Cf. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379– 1380 (Fed. Cir. 2015). Dynamic Drinkware states that because the USPTO does not examine priority claims unless necessary, the Board has no basis to presume that a patent is necessarily entitled to the filing date of its provisional application. Id. at 1380. Under the reasoning of Dynamic Drinkware, the same would be true for a foreign application, the priority of which has been claimed. Patent Owner has made no substantive showing in this proceeding of actual entitlement to the filing date of the German Application, by satisfaction of all pertinent requirements of 35 U.S.C. § 119. 5 “[I]f the effective filing date of what is claimed in a United States application is at issue, to preserve symmetry of treatment between sections 120 and 119, the foreign priority application must be examined to ascertain if it supports, within the meaning of section 112, ¶ 1, what is claimed in the United States application.” In re Gosteli, 872 F.2d 1008, 1011 (Fed. Cir. 1989). Accordingly, the effective filing date of the ’676 patent is August 8, 2001, not the earlier filing date of German Application No. 100 39 532.5.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, we have no reason to disagree with Petitioner’s articulation of the level of ordinary skill, which is supported by the testimony of Dr. Roy (Ex. 1003 ¶¶ 62–63), except to note that the open-ended qualifier “or more” as applied to years of experience expands the level to encompass that of an expert, which is inappropriate for the level of 7 Patent Owner has not presented any objective evidence of nonobviousness or any argument in that regard. “ordinary skill.” Petitioner’s articulation without the expansive qualifier appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Therefore, we adopt the Petitioner’s articulation of the level of ordinary skill, but without the expansive qualifier “or more” as applied to the amount of experience. C.” slip op. at 13

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

    “stations which operate in accordance with a first radio interface standard and/or a second radio interface standard” Claim 1 recites: “stations which operate in accordance with a first radio interface standard and/or a second radio interface standard.” Ex. 1001, 6:24–26. Although Petitioner asserts that no construction is necessary for this phrase and that the plain and ordinary meaning applies, Petitioner nonetheless proposes that the phrase, according to its plain and ordinary meaning, means “stations, each of which operates in accordance with a first radio interface standard, a second radio interface standard, or both.” Pet. 14. Patent Owner asserts that no construction is necessary. PO Resp. 14. Regarding Petitioner’s articulation of the plain and ordinary meaning of the phrase, Patent Owner has not refuted it in any way, and it appears consistent with what the phrase ostensibly indicates. Thus, on the record before us, we accept and adopt Petitioner’s articulation of the plain and ordinary meaning for this phrase. slip op. at 15

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

    “renders the frequency band available for access by the stations working in accordance with the second radio interface standard if stations working in accordance with the first radio interface standard do not request access to the frequency band” Claim 1 recites: “renders the frequency band available for access by the stations working in accordance with the second radio interface standard if stations working in accordance with the first radio interface standard do not request access to the frequency band.” Ex. 1001, 6:32–36. For this phrase, Petitioner asserts that “claim construction is not necessary.”8 Pet. 15. Patent Owner, likewise, “submits that the Board need not construe this claim term.” PO Resp. 14. We agree with the parties that express claim construction of this claim term or phrase is not necessary. Although no additional discussion is necessary, we point out certain inaccuracies in the Patent Owner Response, to avoid potential confusion. slip op. at 16

  Patent outcomesUS 7,016,676 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,016,676
• U.D. Electronic Corp. v. Pulse Electronics, Inc.All claims unpatentable
  PTAB · Jul 22, 2020 · IPR2019-00511 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1, 3–9, and 11–16 are unpatentable; the motion to amend is denied for substitute claims 17, 20, and 21 as indefinite and granted for claims 18, 19, 22, and 23.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner states that a person of ordinary skill in the relevant art in of the ’302 Patent would have had a bachelor’s degree in electrical engineering, or mechanical engineering, with two or more years of experience designing connectors with EMI shielding. Pet. 24 (citing Ex. 1006 ¶¶ 55–58). Patent Owner’s definition of a person of ordinary skill in the relevant art is largely the same, urging a similar amount of education and experience, detailing “at least one year of experience with electrical connectors having internal electronic components, or at least two years’ experience with designing electrical connectors having internal electronic components.” Prelim. Resp. 18 (citing Ex. 2002 ¶ 27). We determined previously that the proffered definitions were largely the same and we determined them to be appropriate for the technology addressed by this proceeding. Inst. Dec. 7. Patent Owner subsequently agreed that “there are not meaningful differences between the parties’ definitions of a POSITA for purposes of this proceeding.” PO Resp. 9–10. We continue to adopt Petitioner’s definition for purposes of this decision.” slip op. at 10

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

    “After review of the proffered arguments, we remain persuaded that Petitioner’s construction is consistent with the plain and ordinary meaning in the context of the ’302 Patent. Patent Owner cites to multiple cases regarding the use of embodiments of the invention set forth in the specification to interpret limitations, despite claim language that could be interpreted more broadly. PO Resp. 16–18; PO Sur-reply 8–10 (citing Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1301–02 (Fed. Cir. 1999); Gen. Am. Transp. Corp. v. Cryo–Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996); Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1550–51 (Fed. Cir. 1996)). We determine that the portions of the specification cited by Patent Owner are not express or implied definitions of the term “effectively curved portion.” See Phillips at 1321 (the specification “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication”). Patent Owner continues that “the only embodiments disclosed in the ’302 Patent have the substrates positioned substantially orthogonal and substantially vertical to the face of the housing,” and “the run of the conductors must make an approximately 90° change in direction to provide an electrical interconnection.” Id. at 18. Such arguments and case law would be pertinent if we interpreted claim 1, for example, as requiring substrates to not be orthogonal or if we required the “effectively curved portion” to not result in a 90° change in direction. We do not interpret claim 1 that way, so Patent Owner’s arguments are not persuasive. disclosure into a claim that does not recite such requirements. It is improper to add a limitation appearing in the specification and the drawings, but not appearing in the unambiguous language of a claim. See Gart v. Logitech, Inc., 254 F.3d 1334, 1343 (Fed. Cir. 2001). This is particularly true where the specification does not define the term at issue to include that additional limitation or otherwise include language requiring it. Claims 1–3, 7, 9, and 13–16 recite, in part, that the first conductors include an “effectively curved portion,” and each claim recites that limitation unambiguously. Although we acknowledge the varying embodiments disclosed in the ’302 Patent, we are persuaded that confining the “effectively curved portion” to be “approximately 90º” is overly narrow. We continue to determine that adopting Patent Owner’s construction would unduly limit the cited claims, i.e., claims 1–3, 7, 9, and 13–16, by importing limitations that are not part of the claims. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). As such, we continue to determine that “effectively curved portion” should be construed as any form of bend of the first conductors.” slip op. at 15

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

    “unpersuasive because the unfiltered connector of Hughes does not disclose an internal board, and that any combination of Kan with Hughes would result, at most, in the “second conductors,” but not the “first conductors,” being bent so that the internal conductors mate with the internal substrate. PO Resp. 43 (citing Ex. 2006 ¶¶ 124, 128). Patent Owner additionally asserts that the reorientation envisioned by the combination would add to material costs, reduce performance due to longer conductor runs, necessitate additional alterations, and provide no space savings or advantage. Id. at 43– 44 (citing Ex. 2006 ¶¶ 122, 129). Petitioner responds that the rationale for combining Kan and Hughes merely involves a design choice, and would apply a known technique to a known device to yield predictable results in an improved system. Pet. Reply 19–20 (citing KSR, 550 U.S. at 415–421). We agree with Petitioner. “The test for obviousness is not whether the features primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Any modification of a prior art device will result in changes thereto, as a matter of course; the question, rather, is whether there existed sufficient motivation for a person of ordinary skill to make the proposed modifications in light of the evidence of record. We find that Petitioner’s evidence of the benefits resulting from the combination, i.e., saving space for the connector assembly and reorienting the plug-receiving opening for insertion of a connector plug in accordance with the desired implementation based on where the housing is mounted, provide sufficient motivation to make these changes, and that Patent Owner’s arguments about the materials costs and possible reduced performance are insufficient to defeat the evidence of motivation to combine.” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Kan is the product of impermissible hindsight, and the combination would change the basic principles of operation of the connectors for which they were designed. PO Resp. 45–47. Patent Owner argues that “Hughes was designed to operate by mounting to an external circuit board, and Kan was designed to operate by engaging a circuit board inside of the housing,” and their combination would render Kan unfit for its intended purpose of supporting a compact size. Id. at 46–47. We do not agree. Mr. Baxter has acknowledged that Hughes and Kan are analogous technologies directed to the common problem in the art of incorporating a circuit board with a connector so that it may offer additional functions. See Ex. 2006, ¶¶ 145– 148. We disagree that the combination of Kan and Hughes would change combination of Kan and Hughes would not be the same as the individual connectors, and we are not persuaded that the size of Kan would need to be increased such that it would be unfit for its intended purposes. As such, we do not determine Patent Owner’s argument to be persuasive.” slip op. at 36

  Patent outcomesUS 6,773,302 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 6,773,302
• Emerson Electric Co. v. Sipco, LLCAll claims unpatentable
  PTAB · Jan 16, 2018 · CBM2016-00095 · APJ Joni Y Chang · CBM · Final written decision

  Claims 1, 7, 9, 16, and 17 are unpatentable under § 101 and § 103(a) over Tymes; unpatentability under § 112, ¶ 1 was not shown.

  RulingsFinal written decision

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

    “Upon consideration of the parties’ contentions, we are not persuaded by Patent Owner’s arguments, as they conflate “power” with “transmission range”—the claim term recites “low-power,” not “low-transmission range.” We agree with Petitioner that Patent Owner’s proposed construction would import improperly a limitation into the claims, and we credit Mr. James T. Geier’s testimony (Ex. 1038 ¶¶ 34−39) as it consistent with the other evidence of record before us. We address below each of Patent Owner’s arguments in turn. First, Patent Owner argues that “the claim language itself indicates that the claimed low-power transceiver transmits low-power signals,” citing the language of claim 2, “wherein the low-power signal comprises a logical IP address.” PO Resp. 12 (citing Ex. 1001, 14:60–61). However, “the low-power signal” does not necessarily require a transceiver to transmit signals having a limited transmission range. Patent Owner does not explain meaningfully, or provide persuasive evidence to show, how a “low-power signal” is necessarily related to the transmission range of a transceiver. Consistent with the plain and ordinary meaning of the term, “a low-power transceiver” refers to a transceiver that consumes less power, e.g., by transmitting and receiving low power signals. Ex. 1038 ¶¶ 34−39.” slip op. at 23

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

    “However, Patent Owner’s arguments are not commensurate in scope with the claims. The purported problems that arose with the development of networks hosting wireless device—unlawful interruption of that data, interference, and contention—are addressed by using an extremely low-power transmitter. Ex. 1001, 5:65−6:11. As discussed above, the challenged claims recite a generic “low-power transceiver,” not an extremely low-power transmitter. Additionally, the alleged problem of transforming data to a different protocol is addressed by an unclaimed feature, as the ’842 patent itself recognizes that the invention is not necessarily limited to certain protocol or requires a protocol conversion. Id. at 13:55−14:5. Moreover, the challenged claims do not requires a protocol conversion or recite a device for converting data from one protocol to a different protocol. Rather, they recite generically a “network of addressable devices.” Patent Owner’s argument that the claims are “directed to an improvement in communication technology between remote devices that are accessible by wireless communication and a central location via a circuit interface” is unavailing. Significantly, the claims are not directed to a new type of transceiver, interface circuit, or controller to establish a communication link between a remote device and the central location. Instead, the claims are directed to transmitting data between locations using conventional or generic computer components. The challenged claims essentially recite a device for communicating information that comprises: (1) a low-power transceiver for transmitting or receiving data; (2) an interface circuit for communicating with a central 33 location; and (3) a controller for establishing a communication link. The Specification confirms that these features were known in the art. Ex. 1001, 5:23–25, 6:62–64 (“As is well known by those skilled in the art, a variety of transducers can perform this functionality adequately.”), 10:13–15 (“[T]he controller 256 may be a general purpose microprocessor or microcontroller.”), 10:21–23 (“The interface 258 within the transceiver 270 is designed to interface with this typical/standard telephone circuitry 263.”), 10:23–26 (“The specific implementation of the circuitry of [interface] 258 will be appreciated by persons skilled in the art and need not be described in detail herein.”). Indeed, the FCC Bulletin also confirms that low-power wireless transmitters were “used virtually everywhere,” noting that “[c]ordless phones, baby monitors, garage door openers, wireless home security systems, keyless automobile entry systems and hundreds of other types of common electronic equipment rely on such transmitters to function.” Ex. 2001, 1. Moreover, the ’842 patent itself recognizes that the communication link between the remote device and central location can be established by initiating a phone call over a telephone line that is part of the public-switched telephone network. Ex. 1001, 2:34−38. There is no dispute that such a communication link was known in the art. Id. at 10:21−26.” slip op. at 33

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “38 For the foregoing reasons, we are persuaded that Petitioner has demonstrated sufficiently that claims 1, 7, 9, 16, and 17 of the ’842 patent are directed to a patent-ineligible abstract idea. Whether the challenged claims lack a patent-eligible inventive concept Turning to the second step in the analysis, we look for additional elements that can “transform the nature of the claim” into a patent-eligible application of an abstract idea. That is, we determine whether the claims include an “inventive concept,” i.e., an element or combination of elements sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2357. The additional elements must be more than “well-understood, routine, conventional activity.” Mayo, 768 S. Ct. at 1297−98. Here, Petitioner argues that claims 1, 7, 9, 16, and 17 are unpatentable because they are “directed only to an abstract idea with nothing more added than generic computing components and ‘well-understood, routine, conventional activity’ previously performed in the field (both individually and as an ordered combination in the claims).” Pet. 23–24 (citing Mayo, 132 S. Ct. at 1294). According to Petitioner, the challenged claims “recite the concept of establishing a communication route between two points ‘as performed by a generic computer,’ without disclosing any ‘novel or unusual’ improvement to ‘the functioning of the computer itself’ or any ‘advance in computer technology that makes the performance of [routine] functions more effective.” Id. at 24 (citing Alice, 134 S. Ct. at 2358–60). 39” slip op. at 38

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

    “As Petitioner notes (Pet. 66−68; Ex. 1003 ¶¶ 353−366), Tymes discloses “an improved, low-cost, low-power, data communication network in which a number of remote terminal units are able to send packets of data to a central station, and . . . to receive acknowledge signals and data from the central station.” Ex. 1005, 2:36−56 (emphasis added). Tymes describes that the central station includes a number of base stations connected to a central computer. Id. at 3:21−25. As shown in Figure 1, the network includes base stations 12−14, each of which “is coupled by an RF link to a number of remote units.” Id. at 4:61−5:44. The RF link is used for sending “data packets from the remote terminals to the base stations and return.” Id. at 3:48−51 (emphasis added), 6:66–7:2. In fact, Tymes teaches that the “advantage of this type of RF data link is that a band may be used which does not require site licensing by the F.C.C.” Id. at 3:55−59. Contrary to Patent Owner’s assertion that “low-power” refers to only the remote terminals, Tymes describes a low-power network that includes base stations. As Petitioner also notes (Pet. 66–67, n.38), Tymes teaches an “indoor” limited range network and an RF data link “usable without site licensing under F.C.C. regulations, so that the expense and delays incident to such licensing are eliminated or minimized.” Ex. 1005, 2:36–56. Significantly, Tymes discloses that the optimum frequency is in the 902−928 MHz range 54 for the RF transceivers in the base stations. Id. at 6:66–7:2, 13:58–61, 18:1−3. The FCC limits the power for unlicensed transmitters, and the power limit under the FCC regulations is less than or equal to one watt for the disclosed 902–928 MHz range. Ex. 1010, 217; Ex. 1017, 7:9–11, 31–34. Mr. Geier testifies that an ordinarily skilled artisan “would have understood that an indoor communications network as taught by Tymes requires only a limited range (e.g., 1 mile or less (the length of a storage facility)), so that high-powered transceivers would be unnecessary and disfavored,” and that such an artisan “would have considered a transmission of 1 Watt to be a ‘low-power’ transmission, with a limited range of approximately 1 mile.” Ex. 1003 ¶¶ 358−359. Mr. Geier also testifies that such an artisan would have had a reason to use low-power transceivers in the base stations so that they are usable indoors without licensing under the FCC regulations. Id. We credit Mr. Geier’s testimony as it is consistent with Tymes’ teachings and other evidence. Ex. 1005, 2:36–56, 6:66–7:2, 13:58−61, 18:1−3, Figs. 1, 3, 10; Ex. 1010, 21; Ex. 1017, 7:9−11, 29−34 (explaining that “unlicensed systems using conventional modulation techniques attain ranges on the order of 500−1000 feet” (emphasis added)).” slip op. at 54

  Patent outcomesUS 8,908,842 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Phillips · KSR · Graham
  Patents in suitUS 8,908,842
• Square, Inc. v. Protegrity CorporationAll claims unpatentable
  PTAB · Mar 2, 2016 · CBM2014-00182 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 33–60 are unpatentable under § 101; the motion to add substitute claims 61–68 is denied because it broadens claims and lacks written-description support.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “claim, and “it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The written description of the ’281 patent does not contain a definition of “database.” The claimed database for storing a plurality of data portions corresponds to the O-DB database disclosed in the ’281 patent. The O-DB database is part of a larger “database management system” that includes multiple databases. Id. at 5:53–6:22; Fig. 3. Similar to the other databases, the O-DB database is described as containing data and, in particular, data to be protected. Id. at 6:62–67. Contrary to Patent Owner’s argument (PO Resp. 17–18), the ’281 patent does not describe the O-DB database, or any other database, as performing any other data processing or managing functions. In particular, the ’281 patent does not describe that the O-DB database produces the compelling calling to the data protection catalogue. See Ex. 1001, 10:48–60 (“is first collected by the system”); see id. at Abstract, 2:65–3:5, 3:59–4:2, 4:26–31, 7:63–67, 8:53–61 (describing a compelling calling to a data protection catalogue, but failing to describe the compelling calling being produced by the O-DB database).” slip op. at 10

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

    “We are persuaded by Petitioner that the broadest reasonable construction, in light of the specification of the ’281 patent, of “data portion” is “a part or share of the database.” The ’281 patent contains no lexicographic definition of “data portion” and, therefore, “data portion” is given its plain and ordinary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Petitioner’s construction is consistent with the plain and ordinary meaning of “portion,” which is an individual’s part or share of something. See Ex. 3001 (MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 908 (10TH ED. 1998)). Petitioner’s proposed construction is also consistent with the words of independent claims 33 and 47, which require that the data portions are part of a database. E.g., see Ex. 1001, 11:18–19 (claim 1 recites “maintaining a database comprising a plurality of data portions”). Petitioner’s proposed construction is further consistent with dependent claims 37, 38, 51, and 52, which further define the claimed data portions to be “a column of data in the database” or “a field of data in the database.” Patent Owner’s proposed construction is overly narrow and improperly attempts to import the limitations from the specification of the ’281 patent into the claim. Limitations appearing in the specification but not recited in the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the specification” without importing limitations from the specification into the claims unnecessarily) (internal quotations and citation omitted). Although the ’281 patent describes the invention as working on the cell or data element level (see Ex. 1001, 3:52–59), we see nothing in the claims, themselves, that require the data portions to be data element values. Dependent claims 37 and 51 are inconsistent with Patent Owner’s proposed construction, because they define the data portion as a column of data, which is a larger portion of data than a data element value.” slip op. at 15

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Mr. Mattsson’s and Dr. Direen’s testimony is unpersuasive because it is inconsistent with the ’281 patent. As discussed above, the ’281 patent describes the O-DB as one database in a larger database management system. Ex. 1001, 5:52–6:22. The ’281 patent describes the O-DB database as containing data and describes the modules of the larger database management system as performing data processing. Id. at 5:62–67, 6:23–56. The ’281 patent does not describe the O-DB database as producing the compelling calling. See Ex. 1001, 10:48–60 (“is first collected by the system”); see id. at Abstract, 2:65–3:5, 3:59–4:2, 4:26–31; 7:63–67; 8:53–61 (disclosing a compelling calling to a data protection catalogue, but failing to describe the compelling calling being produced by the O-DB database). The assertion that the compelling calling is produced by the O-DB database is only found in Patent Owner’s arguments, Mr. Mattsson’s testimony, and Dr. Direen’s testimony, and not the ’281 patent. E.g., see Ex. 2045 ¶¶ 12–16, 22, 29; Ex. 2046 ¶ 19; Ex. 2078 ¶¶ 11–12; Ex. 2079 ¶¶ 7–8. Extraneous features should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). In that regard, “extrinsic evidence may be used only to assist in the proper understanding of the disputed limitation; it may not be used to vary, contradict, expand, or limit the claim language from how it is defined, even by implication, in the specification or file history.” Bell Atl. Network Servs. v. Covad Commc'ns Grp., 262 F.3d 1258, 1269 (Fed. Cir. 2001); see Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996) (“expert testimony, which was inconsistent with the specification and file history, should have been accorded no weight”). Further, we give little weight to Mr. Mattsson’s testimony because Mr. Mattsson is not a disinterested witness. Mr. Mattsson is Patent Owner’s Chief Technology Officer and Co-founder (Ex. 2019, 2) and has an interest in the outcome of this proceeding. Contrary to Mr. Mattsson’s and Dr. Direen’s testimony, Petitioner’s declarant Dr. Shamos testifies that one of ordinary skill in the art would know, based upon the ’281 patent, that the compelling calling is produced not by the O-DB, but by control module 20, Ex. 1014 ¶¶ 15–21. Dr. Shamos’ testimony is persuasive because it is consistent with the written description of the ’281 patent, discussed above. Patent Owner argues that we should give no weight to Dr. Shamos’ testimony. PO Resp. 61–64. According to Patent Owner, Dr. Shamos is not a person of ordinary skill in the art because Dr. Shamos lacks knowledge and expertise in database administration and security. Id. at 63. Patent Owner’s argument is unpersuasive because Dr. Shamos is testifying as an expert whose knowledge and experience qualify him to opine on what a hypothetical person of ordinary skill in the art would have understood at the time of the invention. See Ex. 1014 ¶¶ 1–2 (testimony concerning his knowledge of encryption and database technology); Ex. 1003 (Resume of Dr. Shamos). We are not persuaded by Patent Owner that Dr. Shamos is not qualified to opine as to the knowledge of person of ordinary skill at the time of the filing. We, thus, are not persuaded by Patent Owner that we should give no weight to Dr. Shamos’ testimony.” slip op. at 12

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

    “Independent claim 33 recites a data processing method that grants access to a requested data portion if the rules associated with a data category that is associated with the requested data portion is satisfied. Ex. 1001, 13:38–54. Claim 33 requires a database that comprises the data portions and requires a separate data protection table comprising data processing rules that must be satisfied before the data portion can be accessed. Id. The data processing rules are associated with the data category. Id. Independent claim 47 recites a corresponding computer system. Id. at 14:47–63. Independent claims 33 and 47, thus, recite a method or system that grants access to a requested data portion if the rules associated with a data category that is associated with the requested data portion are satisfied. Ex. 1001, 13:38–54. Given the above, we are persuaded by Petitioner that the claims are directed to the abstract idea of determining whether access to data should be granted based on whether one or more rules are satisfied. We are not persuaded by Patent Owner that the claims are not directed to an abstract idea, because Patent Owner’s argument is based upon elements not required by the claims. See PO Resp. 21–28, 35–38. Given our construction of “data portion” and “database” in section II (A) above, the claims do not require protection on the data element level based on rules stored in a separate database, where the first database calls out to the second database. Patent Owner’s argument is not commensurate with the scope of the claims.” slip op. at 30

  Patent outcomesUS 8,402,281 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo
  Patents in suitUS 8,402,281

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