• Election Systems & Software, LLC v. Hart Intercivic, Inc.All claims unpatentable
  PTAB · Sep 1, 2021 · PGR2020-00031 · APJ Jason M Repko · PGR · Final written decision

  Claims 1–30 are unpatentable: claims 1–5, 15–19, 25, and 11–14, 28 on obviousness grounds; claims 6, 7, 9, 10, 23, 24, 29, 30 on anticipation; claims 20–22 on obviousness.

  RulingsFinal written decision

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

    “On September 2, 2020, we instituted an inter partes review of all challenged claims based on all grounds in the Petition. Paper 6 (“Inst. Dec.”). Patent Owner filed a Response. Paper 14 (“PO Resp.”). Petitioner filed a Reply. Paper 19 (“Pet. Reply”). Patent Owner filed a Sur-reply. Paper 20 (“Sur-reply”). An oral hearing was held on July 6, 2021. A transcript of that hearing has been entered into the record. Paper 28 (“Tr.”).” slip op. at 2

  • Skill levelDecided for petitioner

    “B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art at the time the ‘966 patent was filed (“POSITA”) would have had at least a Bachelor’s degree in electrical engineering or computer science or an equivalent field, or equivalent work experience and, in addition, at least two years’ experience with electronic voting machines, including familiarity with ballot marking devices (“BMDs”), optical character recognition, bar codes and hash functions. Pet. 24 (citing Shamos Decl. ¶¶ 50–51). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 6. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. (PO Resp. 3). We continue to find that the level of ordinary skill identified by Petitioner (Pet. 24) is consistent with the record. See Inst. Dec. 6. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 6

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

    “testimony also support Petitioner’s conclusion that the accuracy of Brockhouse’s OCR could be improved. Pet. 56; Ex. 1005, 1:20–21 (disclosing that OCR is error prone); Shamos Decl. ¶ 231. On this record, Petitioner provides sufficient “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).” slip op. at 19

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

    “4. Claims 7, 9, 10, 24, and 30, Anticipation The Petition states that the statutory basis for challenging claims 7, 9, 10, 24, and 30 is “35 U.S.C. §§ 102 and/or 103.” Pet. 3. In this section, we consider anticipation under Section 102. Patent Owner does not contest Petitioner’s analysis. See generally PO Resp.; PO Sur-reply. Upon review of the entirety of the record, we credit the undisputed testimony of Dr. Shamos and are persuaded by Petitioner’s uncontested analysis. In particular, claims 7 and 24 depend from claims 6 and 23, respectively. Both claims 7 and 24 add “wherein the bar code is utilized to confirm the printed vote record is valid.” Ex. 1001, 9:30–31 (claim 7), 11:18–19 (claim 24). For claims 7 and 24, Petitioner asserts that Nadaf counts the vote only after confirming that the PVR is valid. Pet. 70 (citing Ex. 1007, 6:2–10). In the cited passages, Nadaf refers to the process as “confirming the institutional provenance and integrity of the content of the printed vote.” Ex. 1007, 6:2–6. According to Nadaf, “Only after being audited will the printed vote be validated for counting.” Id. at 6:7–10. On this record, Petitioner supports the assertion that Nadaf confirms the printed vote’s validity with the bar code, as recited. See Pet. 69–70. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 7 and 24 are anticipated by Nadaf. Claim 9 recites a “two dimensional bar code.” Ex. 1001, 9:35–36. Claims 10 and 30 recite “a QR code bar code” Id. at 12:34–35. As for claims 9, 10, and 30, Petitioner asserts that Nadaf’s PVR contains both voter-readable text and a bar code encoded with voter selections. Pet. 71 (citing Ex. 1006, Fig. 4). Petitioner asserts that (1) Nadaf’s Figure 4 shows an example QR code and (2) a QR code is a two-dimensional bar code. Id. (citing Ex. 1007, 18:9; Ex. 1003 ¶ 296). On this record, Petitioner shows that Nadaf discloses the two-dimensional bar code that is a QR code, as recited in claims 9, 10, and 30. Thus, we determine that Petitioner has shown by a preponderance of the evidence that claims 9, 10, and 30 are anticipated by Nadaf.” slip op. at 56

  Patent outcomesUS 10,445,966 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,445,966
• Flex Logix Technologies Inc. v. Venkat KondaAll claims unpatentable
  PTAB · Mar 16, 2021 · PGR2019-00042 · APJ Norman H Beamer · PGR · Final written decision

  Claims 1–7, 9–15, and 17–19 are unpatentable under §§ 102(a)(1) and 103; the revised motion to amend and motion to exclude are denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 16

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

    “Because only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy, we do not expressly construe any claim term for purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 17

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

    “Ex. 1001, 49:9–18. Petitioner argues, and we agree, that this language is non-limiting as reciting optional features that “may or may not” be present, and therefore irrelevant to the issue of anticipation.9 Pet. 54–57.” slip op. at 23

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

    “In light of these and other disclosures in Wong ’308, Petitioner argues that a POSITA would have been motivated to implement the switches of the ’756 PCT application using multiplexers. Pet. 102; Ex. 1002 ¶ 182. Patent Owner does not challenge this fact — the references to multiplexers (also referred to a “muxes”) in the ’342 patent suggest that Patent Owner would concede this point. E.g., Ex. 1001, 9:67, 14:33. Upon review of the record, we are persuaded that Petitioner has proved by a preponderance of the evidence that the combination of the ’724 provisional application and Wong ’308 renders claims 1–7, 9–15, and 17–19 obvious.” slip op. at 29

  Patent outcomesUS 10,003,553 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham · Nautilus
  Patents in suitUS 10,003,553
• Juniper Networks, Inc. v. Finjan, Inc.No claims unpatentable
  PTAB · Apr 7, 2020 · IPR2019-00026 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1, 15, and 41 were not shown unpatentable: Abadi did not identify suspicious code in its annotations, and the Abadi and Gryaznov combination did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelOther

    “differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; 2 Abadi et al., U.S. Patent No. 6,253,370 B1, issued June 26, 2001 (filed Dec. 1, 1997) (Ex. 1008, “Abadi”). 3 Dmitry O. Gryaznov, Scanners of the Year 2000: Heuristics, Virus Bull. Conf. 225 (Sept. 1995) (Ex. 1009, 2–11, “Gryaznov”). (3) the level of skill in the art; and (4) when in evidence, objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds with the principles stated above in mind.” slip op. at 7

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

    “Having considered the parties’ arguments, we see no reason to disturb their agreed construction of “Downloadable” as “an executable application program, which is downloaded from a source computer and run on the destination computer,” with which the parties state their express agreement. We clarify in Section II.D.2. below that we agree with Patent Owner that the executable application program that is to be run on the destination computer must be the same executable application program that is downloaded from the source computer within the agreed construction. Sur-reply 1–2. This interpretation is not a question of the construction of the term “Downloadable” itself, but rather flows from the express language of the challenged claims, in which “the Downloadable” that is “ma[de] . . . available to web clients” in the final step of each of independent claims 1 and 41 has its antecedent basis in the first claim step, “receiving . . . a Downloadable.” Likewise, the antecedent in claim 15 for “the Downloadable” that is made available to web clients is the Downloadable in which suspicious code is identified by the content inspection engine. We also agree with Patent Owner that the claimed “linking” of a DSP “to the Downloadable” does not compel a different understanding because we are not persuaded that the linking contemplated in the ’844 patent requires modification of the code of the Downloadable itself. Sur-reply 2–3.” slip op. at 12

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

    “Having considered the full record developed during trial, we agree with Patent Owner that the replacement of the word “profile” with “information” does not add any clarity to the meaning of this phrase and that the proper construction of “Downloadable security profile that identifies suspicious code in [the received / a] Downloadable” in the context of the ’844 patent is “profile that must at least include, but is not necessarily limited only to, an identification of hostile, potentially hostile, undesirable, or potentially undesirable code in the corresponding Downloadable.” PO Resp. 7–8. Regardless, we do not discern that the difference between the parties’ positions with respect to these phrases is dispositive of any issues in this proceeding.” slip op. at 14

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

    “generate an ID for the Downloadable.” PO Resp. 21 (emphasis added) (quoting Ex. 2015, 15), 23 (emphasis added) (citing Ex. 2015, 20). Based on Patent Owner’s arguments, we are not persuaded that the ’639 provisional demonstrates possession by the inventors of linking a DSP to the Downloadable “before a web server makes the Downloadable available to web clients.” Rather, by the time that the DSP has been linked to the Downloadable (e.g., by code scanner 325, in Patent Owner’s mapping), we understand that the Downloadable has already been received—and hence “made available”—by the web server. Notably, this conclusion does not depend on where the “linking” occurs—particularly, whether it may occur at a network gateway, a focus of the parties’ claim construction arguments (see, e.g., Pet. 25–27; PO Resp. 10–12; Section II.B.5, supra)—but instead on when it occurs relative to the Downloadable being made available to clients. Further, having considered the alleged Appendix to the ’639 provisional (Ex. 2015, 37–45), including portions cited by Dr. Butler in related litigation (see Ex. 2047), we are not persuaded that anything in the Appendix demonstrates possession of linking “before a web server makes the Downloadable available to web clients.” In conclusion, therefore, we are not persuaded that the inventors were in possession of the subject matter of the challenged claims at any time prior to the December 22, 1997, filing date of the ’648 application.” slip op. at 35

  Patent outcomesUS 6,154,844 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 6,154,844
• Palo Alto Networks, Inc. v. Finjan, Inc.Institution denied
  PTAB · May 9, 2016 · IPR2016-00145 · APJ Zhenyu Yang · IPR · Institution

  Institution was denied for claims 1–5, 8–12, 15–19, 22–26, 29, and 30 because the asserted combinations relied on references published after the claims’ November 6, 1997 priority date.

  RulingsInstitution decision

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

    “publication, and Ji renders the challenged claims obvious. Pet. 25–60. As explained above, the challenged claims are entitled to the benefit of the November 6, 1997 filing date. Touboul was published on May 22, 1998 (Ex. 1003 (43)), while the ’583 publication was published on July 15, 1999 (Ex. 1005 (43)). Thus, neither qualifies as prior art. We conclude, therefore, that Petitioner has not demonstrated that the combination of Touboul and the ’583 publication, or the combination of Touboul, the ’583 publication, and Ji, renders the challenged claims obvious. CONCLUSION On this record, Petitioner has not shown that Touboul and the ’583 publication are prior art to the challenged claims of the ’926 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of at least one of those claims on the grounds asserted in the Petition.” slip op. at 8

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

    “The ’194 patent describes the code scanner sending the Downloadable and the DSP data to the ACL comparator for comparison with the security policy. Ex. 1007, 6:9–12. Petitioner does not argue that the Downloadable and the DSP data must be transmitted independently. In other words, the Downloadable and the DSP data may be transmitted together, that is, with the DSP data attached to the Downloadable. As stated above, we accept Petitioner’s proposed construction of “append/appending” to mean “attach/attaching.” See supra at 5. Thus, we are persuaded by Patent Owner that the ’194 patent provides written description support for both the appending and the transmitting limitations.” slip op. at 7

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

    “publication, and Ji renders the challenged claims obvious. Pet. 25–60. As explained above, the challenged claims are entitled to the benefit of the November 6, 1997 filing date. Touboul was published on May 22, 1998 (Ex. 1003 (43)), while the ’583 publication was published on July 15, 1999 (Ex. 1005 (43)). Thus, neither qualifies as prior art. We conclude, therefore, that Petitioner has not demonstrated that the combination of Touboul and the ’583 publication, or the combination of Touboul, the ’583 publication, and Ji, renders the challenged claims obvious. CONCLUSION On this record, Petitioner has not shown that Touboul and the ’583 publication are prior art to the challenged claims of the ’926 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of at least one of those claims on the grounds asserted in the Petition.” slip op. at 8

  § 103 obviousness§ 112 disclosure
  Patents in suitUS 7,613,926
• Symantec Corp. v. Finjan, Inc.Institution denied
  PTAB · Feb 26, 2016 · IPR2015-01897 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution because Symantec did not show a reasonable likelihood of prevailing: the challenged claims were entitled to the 1997 priority date, making Touboul I and II not prior art.

  RulingsInstitution decision

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

    “requesting inter partes review pursuant to 35 U.S.C. § 311 of claims 1, 2, 5, 6, 10, 11, 14, and 15 of U.S. Patent No. 8,677,494 B2 to Edery et al. (Ex. 1001, “the ’494 patent”). Pet. 1. Finjan, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We review the Petition under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow and on this record, we are not persuaded that Petitioner demonstrates a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims on the asserted grounds. Accordingly, we deny Petitioner’s request to institute an inter partes review.” slip op. at 2

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

    “necessary to provide a written description of a claimed invention as required by 35 U.S.C. § 112 may be incorporated into a patent application by reference, provided that the incorporated reference is a U.S. patent or U.S. patent application publication that does not itself incorporate such “essential material” by reference, by “[e]xpress[ing] a clear intent to incorporate by reference by using the words ‘incorporat(e)’ and ‘reference’” and “[c]learly identify[ing] the referenced patent [or] application.” 37 C.F.R. § 1.57(c), (d). Moreover, the Federal Circuit has explained that “incorporated patents are ‘effectively part of the host [patents] as if [they] were explicitly contained therein.’” X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in original) (quoting Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001)). Contrary to Petitioner’s contentions (Pet. 11–15), the “boilerplate language” used in the ’822, ’926, ’086, and ’494 patents, broadly stating without further qualification that the earlier-filed patents are “incorporated by reference,” is sufficient in view of Federal Circuit precedent to incorporate the disclosure of at least the ’780 patent2 into each later-filed patent. See, e.g., Harari v. Lee, 656 F.3d 1331, 1335 (Fed. Cir. 2011) (finding “entire . . . application disclosure was incorporated by the broad and unequivocal language: ‘The disclosures of the two applications are hereby incorporate[d] by reference’”). We agree with Patent Owner that the facts here are distinguishable from those in cases on which Petitioner relies. Prelim. Resp. 23–24. For example, in Zenon, as Patent Owner asserts, there was a lack of continuity of disclosure in a priority chain because the priority references were not incorporated in their entirety, but only with respect to specific portions. Id. On this record, and particularly in view of Petitioner’s statement that the specification of the ’780 patent, among others, describes the “claim elements and features” not otherwise included in the specifications of the ’822, ’926, ’086, and ’494 patents (Pet. 10)—and, thus, does not itself incorporate such “essential material” by reference (see 37 C.F.R. §1.57(d))—we agree with Patent Owner’s conclusion that “each application in the priority chain contains written description support for the challenged claims, and continuity of disclosure exists up to and including the ’494 [p]atent without interruption.” Prelim. Resp. 16.3” slip op. at 11

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

    “among others, it contains or is amended to contain a specific reference to the earlier filed application. 35 U.S.C. § 120. Contrary to Petitioner’s assertion that “neither the ’086 patent, nor the ’926 patent, include a priority claim or any reference whatsoever to a number of earlier-filed applications (i.e., the ’194 patent, ’520 patent and ’639 provisional) that are included in the priority chain of the ’494 patent” (Pet. 6), the ’086 and ’926 patents both include priority claims to the ’194 patent and incorporate the ’194 patent by reference in its entirety. Ex. 1002, [63], 1:26–30; Ex. 1003, [63], 1:23–27. Moreover, as Patent Owner points out, the ’520 patent and ’639 provisional are not within the priority chain from the ’494 patent to the ’194 patent, and the failure of the ’926 and ’086 patents to include a priority claim or reference to the ’520 patent and ’639 provisional does not affect the ’494 patent’s entitlement to the benefit of the November 6, 1997 filing date of the ’388 application that matured into the ’194 patent (i.e., Touboul I). Petitioner also argues that the failure of the ’926 and ’086 patents to include a priority claim or any reference to the ’520 patent and ’639 provisional constitutes a break in the priority chain of the ’494 patent. Pet. 17. For purposes of this Decision, however, we need not reach this issue.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “C. Anticipation by and Obviousness over Touboul I and Touboul II On this record and for the reasons stated in Section II.B. above, we are persuaded that claims 1, 2, 5, 6, 10, 11, 14, and 15 of the ’494 patent are entitled at least to the benefit of the November 6, 1997 filing date of the ’388 patent that matured into the ’194 patent, and, accordingly, that neither Touboul I (i.e., the ’194 patent) nor Touboul II, which issued on November 28, 2000, from an application filed December 22, 1997, constitutes prior art to those claims. We conclude, therefore, that Petitioner has not demonstrated a reasonable likelihood that it would prevail at trial on any of the asserted grounds. III. CONCLUSION On this record, Petitioner has not shown that Touboul I and Touboul II are prior art to the challenged claims of the ’494 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of those claims on the grounds asserted in the Petition.” slip op. at 15

  Claim construction§ 102 anticipation§ 112 disclosure
  Patents in suitUS 8,677,494
• Symantec Corp. v. Finjan, Inc.Institution denied
  PTAB · Feb 26, 2016 · IPR2015-01895 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution because the challenged claims were entitled to the November 6, 1997 filing date, making the asserted references unavailable as prior art.

  RulingsInstitution decision

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

    “or the combination of Touboul I and Dan, renders the challenged claims obvious. Pet. 32–52. As explained above, the challenged claims are entitled to the benefit of the November 6, 1997 filing date. Thus, neither Touboul I (the ’194 patent) nor Touboul II (issued on November 28, 2000, from an application filed December 22, 1997) constitutes prior art to those claims. We conclude, therefore, that Petitioner has not demonstrated that the 14 combination of Touboul I and Touboul II, or the combination of Touboul I and Dan, renders the challenged claims obvious. CONCLUSION On this record, Petitioner has not shown that Touboul I and Touboul II are prior art to the challenged claims of the ’926 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of at least one of those claims on the grounds asserted in the Petition. ORDER Accordingly, it is ORDERED that Petitioner’s request for an inter partes review of claims 15, 18–20, 22, 25–27, and 30 of the ’926 patent is denied.” slip op. at 14

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

    “Incorporation by reference “provides a method for integrating material from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Zenon, 506 F.3d at 1378 (quotation marks omitted). Incorporation by reference must be set forth in the specification and must (1) express a clear intent to incorporate by reference by using the root words “incorporate” and “reference” (e.g., “incorporate by reference”); and (2) clearly identify the referenced patent, application, or publication. 37 C.F.R. § 1.57(c). “Essential material,” such as material necessary to provide a written description of a claimed invention, may be incorporated by reference by reference to a U.S. patent or U.S. patent application publication, as long as the referenced patent or patent application publication does not itself incorporate such essential material by reference. Id. § 1.57(d). In Harari v. Lee, 656 F.3d 1331 (Fed. Cir. 2011), the Federal Circuit concluded that the broad and unequivocal language “[t]he disclosures of the two applications are hereby incorporated by reference” incorporates the entire disclosures of the two applications. Id. at 1335. The incorporation statement in the ’822 patent is similar: 9 This application is also a Continuation-In-Part of and hereby incorporates by reference patent application Ser. No. 09/539,667, now U.S. Pat. No. 6,804,780 . . . . This application is also a Continuation-In-Part of and hereby incorporates by reference patent application Ser. No. 09/551,302, now U.S. Pat. No. 6,480,962 . . . . Ex. 1002, 1:11–19. Petitioner acknowledges that the ’780 patent provides written support for the limitations of the challenged claims. Pet. 10. In other words, the ’780 patent does not itself incorporate such “essential material” by reference. See 37 C.F.R. § 1.57(d). Thus, the holding of Harari informs our conclusion that the ’822 patent incorporates by reference the ’780 patent in its entirety. Because the ’194 and ’780 patents share essentially the same disclosure (compare Ex. 1004 with Ex. 1005), we agree with Patent Owner that continuity of disclosure exists between the ’194 and ’926 patents.” slip op. at 9

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

    “ANALYSIS Claim Construction In an inter partes review, the Board interprets a claim term in an unexpired patent according to its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1278–81 (Fed. Cir. 2015), 1 Shlomo Touboul, U.S. Patent No. 6,092,194, issued July 18, 2000 (Ex. 1005, “Touboul I,” or “the ’194 patent”). 2 Shlomo Touboul and Nachshon Gal, U.S. Patent No. 6,154,844, issued Nov. 28, 2000 (Ex. 1012, “Touboul II”). 3 Asit Dan et al., U.S. Patent No. 5,825,877, issued October 20, 1998 (Ex. 1013, “Dan”). 4 cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 4

  Claim construction§ 112 disclosure
  Patents in suitUS 7,613,926
• Schott Gemtron Corporation v. SSW Holding Company, Inc.No claims unpatentable
  PTAB · May 26, 2015 · IPR2014-00367 · APJ Georgianna W Braden · IPR · Final written decision

  Petitioner did not prove claims 2–4, 7–10, 14–18, 22, 23, 26, 27, 29, 30, 33–40, 42–45, 48–51, 54–59, 63, and 64 unpatentable under either instituted §103 ground.

  RulingsFinal written decision

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable

    “We find that regardless of the construction of the term “spill,” Petitioner has not carried its burden to show that Angros is analogous art, because Petitioner has not shown Angros to be pertinent to the entire problem faced by the inventors of the ’561 patent.” slip op. at 23

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

    “Furthermore, a patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 401. “Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citing KSR, 550 U.S. at 421). For an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 419. In that regard, Mr. Schechter, witness for Petitioner, testified that Angros and Picken were known in the art and that one of ordinary skill in the art would have been motivated to combine the teachings of the prior art so as to make a design that (i) was more simple or clean or aesthetically pleasing and (ii) had a less obtrusive hydrophobic barrier. Ex. 1121, 180:12–183:23; Ex. 1109 ¶ 31; Ex. 1010 ¶ 28. He then concluded that one of ordinary skill would know how to substitute the spill-contain border in Angros for the plastic guard in Picken. Ex. 1109 ¶ 36. Mr. Schechter, however, does not explain sufficiently why a person of ordinary skill in the art would look to the field of microscope slides to find a hydrophobic coating to act as a less obtrusive spill containment border in place of the plastic rim in Picken. Mr. Schechter’s testimony is impermissible hindsight; he opined that all of the elements of the claims disparately existed in the prior art, but fails to provide sufficient reason for why one of ordinary skill in the art at the time of filing would have combined these references. See, e.g., InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (holding expert testimony to be impermissible hindsight for failing to explaining what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place the prior art together). In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then–accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983). Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when no prior art reference or references of record convey or suggest that knowledge. Rather, Petitioner’s argument that Angros is analogous art and that Angros is combinable with Picken appears to be premised on Petitioner’s knowledge of the ’561 patent disclosure. Petitioner bears the burden of showing by a preponderance of evidence that the asserted prior art references are analogous art and otherwise combinable. On the record before us, we find that Petitioner has not shown that Angros qualifies as prior art under 35 U.S.C. § 103 or that, even if it did, it renders the claims unpatentable in combination with Picken. Therefore, we conclude Petitioner has not demonstrated by a preponderance of evidence that claims 2–4, 7–10, 23, 33–40, 42–45, 48–51, and 64 of the ’561 patent would have been obvious in view of Angros and Picken.” slip op. at 27

  • Skill levelSkill level board ownDecided for patent owner

    “Based on our review of the ’561 patent, the types of problems and solutions described in the ’561 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention (i.e., as of June 27, 2008, as discussed above in Section II.C.1) would have had a degree in mechanical engineering or a similar discipline, and at least three years of work experience with refrigerator shelf assemblies. See, e.g., Ex. 1101, 1:16–62 (stating that the ’561 patent relates to “shelving which may be adapted for use with refrigerators,” and describing conventional refrigerator shelf assemblies that use plastic molded parts to encapsulate shelves and silicone sealants to form physical spill containment barriers around the perimeter of the refrigerator shelving); Ex. 1109 ¶¶ 1–3 (describing the background of Mr. Schechter); Ex. 2121 ¶¶ 5–7 (describing the background of Mr. Mills). Given the stated qualifications of Mr. Mills (Ex. 2121 ¶¶ 5–7 and Ex. 1110, 13:9–24:18), Patent Owner’s declarant meets the requirements of this definition. Petitioner’s witness, Mr. Schechter, however, does not qualify as a person of ordinary skill in the art. Although Mr. Schechter now testifies that he has a Master’s of Science degree in Mechanical Engineering and became a Product Development Engineer for Petitioner in December 2010, his prior declaration states that he began in his position in December 2011, compare Ex. 1109 ¶ 1, with IPR2013-00358, Ex. 1010 ¶ 1, thus indicating that Mr. Schechter may have had less than two years of experience when he signed his prior declaration on June 14, 2013, IPR2013-00358, Ex. 1010 ¶ 36.3 Furthermore, Mr. Schechter was not a person of ordinary skill in the art at the time of the invention of the ’561 patent (i.e., June 27, 2008). Indeed, at his deposition, Mr. Schechter testified that he does not qualify as one of ordinary skill in the art under the definition in his declaration. Ex. 1121, 26:2–13. Therefore, for these reasons, we accord the testimony of Mr. Schechter regarding the alleged obviousness of the claims less weight. 3 Petitioner argues that the Board “misapprehended” Mr. Schecter’s qualifications, and “committed four errors” in doing so, in the final written decision in IPR2013-00358. Reply 9–10. These arguments are improper, as they are directed to facts and determinations made in a different proceeding, and a “reply may only respond to arguments raised in the corresponding . . . patent owner response” under 37 C.F.R. § 42.23(b). Regardless, though, we disagree with Petitioner’s assertions for the reasons stated herein.” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Given the stated qualifications of Mr. Mills (Ex. 2121 ¶¶ 5–7 and Ex. 1110, 13:9–24:18), Patent Owner’s declarant meets the requirements of this definition. Petitioner’s witness, Mr. Schechter, however, does not qualify as a person of ordinary skill in the art. Although Mr. Schechter now testifies that he has a Master’s of Science degree in Mechanical Engineering and became a Product Development Engineer for Petitioner in December 2010, his prior declaration states that he began in his position in December 2011, compare Ex. 1109 ¶ 1, with IPR2013-00358, Ex. 1010 ¶ 1, thus indicating that Mr. Schechter may have had less than two years of experience when he signed his prior declaration on June 14, 2013, IPR2013-00358, Ex. 1010 ¶ 36.3 Furthermore, Mr. Schechter was not a person of ordinary skill in the art at the time of the invention of the ’561 patent (i.e., June 27, 2008). Indeed, at his deposition, Mr. Schechter testified that he does not qualify as one of ordinary skill in the art under the definition in his declaration. Ex. 1121, 26:2–13. Therefore, for these reasons, we accord the testimony of Mr. Schechter regarding the alleged obviousness of the claims less weight. 3 Petitioner argues that the Board “misapprehended” Mr. Schecter’s qualifications, and “committed four errors” in doing so, in the final written decision in IPR2013-00358. Reply 9–10. These arguments are improper, as they are directed to facts and determinations made in a different proceeding, and a “reply may only respond to arguments raised in the corresponding . . . patent owner response” under 37 C.F.R. § 42.23(b). Regardless, though, we disagree with Petitioner’s assertions for the reasons stated herein.” slip op. at 13

  Patent outcomesUS 8,286,561 not shown unpatentable
  § 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,286,561
• Schott Gemtron Corporation v. SSW Holding Company, Inc.No claims unpatentable
  PTAB · Aug 20, 2014 · IPR2013-00358 · APJ Georgianna W Braden · IPR · Final written decision

  The Board held claims 1, 13, and 25 not shown unpatentable: Angros was not shown to be analogous art, and the proposed combinations did not establish obviousness.

  RulingsFinal written decision

  • Skill levelSkill level board ownPetitioner expert discountedOther

    “Mr. Schechter testified that a person of ordinary skill in the art relevant to the ’561 patent “would have at least a bachelor’s degree in mechanical engineering and at least four years of experience designing and manufacturing shelf assemblies or equivalent education and training.” Ex. 1010 ¶ 4. Patent Owner’s witness, Mr. Richard Bruce Mills, defined a person of ordinary skill in the art relevant to the ’561 patent to be a person with at least an associate’s or bachelor’s degree and three years of experience working with shelf assemblies, and having familiarity with “encapsulated spill containing refrigerator shelves.” Ex. 2022 ¶ 8. Based on our review of the ’561 patent, the types of problems and solutions described in the ’561 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention (i.e., as of June 27, 2008, as discussed above in Section II.B.3.a.) would have had a degree in mechanical engineering or a similar discipline, and at least three years of work experience with refrigerator shelf assemblies. See, e.g., Ex. 1001, col. 1, ll. 16–62 (stating that the ’561 patent relates to “shelving which may be adapted for use with refrigerators,” and describing conventional refrigerator shelf assemblies that use plastic molded parts to encapsulate shelves and silicone sealants to form physical spill containment barriers around the perimeter of the refrigerator shelving); Ex. 1010 ¶¶ 1–2 (describing the background of Mr. Schechter); Ex. 2022 ¶¶ 3–5 (describing the background of Mr. Mills). We note that under this standard, Petitioner’s witness, Mr. Schechter, does not qualify as a person of ordinary skill in the art. Although Mr. Schechter has a Master’s of Science degree in Mechanical Engineering, he has only worked as an engineer designing and manufacturing shelf assemblies since December 2011. Ex. 1010 ¶¶ 1-2. Thus, Mr. Schechter had less than two years of experience when he signed his declaration on June 14, 2013. Id. ¶ 36. Furthermore, Mr. Schechter was not a person of ordinary skill in the art at the time of the invention of the ’561 patent (i.e., June 27, 2008). Indeed, at his deposition, Mr. Schechter testified that he does not qualify as one of ordinary skill in the art under the definition in his declaration. Ex. 1011, 26:2–13. In this case, we accord the testimony of Mr. Schechter regarding the alleged obviousness of the claims less weight because he was not a person of ordinary skill in the art at the time of the invention disclosed in the ’561 patent.” slip op. at 17

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

    “Petitioner’s position is unpersuasive. Contrary to Petitioner’s characterization, Example 1 in the ’561 patent discloses only a demonstration of water retention by a shelf with a hydrophobic border. See Ex. 1001, col. 20, ll. 1–9. The patent recounts, in Example 1, a test to determine the amount of water retainable on a shelf, within a hydrophobic border, without leakage. Id. Thus, Example 1 does not show that the term “spill” merely means liquid placed on a surface. Therefore, we construe “spill,” in accordance with its plain meaning and consistent with the specification of the ’561 patent, to mean “an accidental or unintentional release of liquid.” See Ex. 2003; Ex. 1001, col. 11, ll. 28–49 (describing Figure 3 as illustrating “the concept that the hydrophobic surface 1030 will form a spill containment barrier,” and using soda can 1026 turned on its side as an example for “spilled liquid”).” slip op. at 7

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

    “entions. A As discusse ed in detail l below, we e conclude e that the ’2 273 prov visional app plication, w which is th he earlier fi iled of the two provis sional appl ications, su upports the e claim ele ements reci ited in clai ms 1, 13, a and 25. Ther refore, the ’561 paten nt is entitle ed to the Ju une 27, 200 08 filing da ate of the ’273” slip op. at 12

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable

    “A reference is considered analogous prior art: (1) if the reference is from the same field of endeavor as the claimed subjected matter, regardless of the problem addressed, or (2) if “the reference still is reasonably pertinent to the particular problem with which the inventor is involved,” even though the reference is not within the field of the inventor’s endeavor. Bigio, 381 F.3d at 1325. The “field of endeavor” test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art, because of the similarity to the structure and function of the claimed invention as disclosed in the application. Id. at 1325-27. It is necessary to apply “common sense” in “deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” Id. at 1326 (citations and quotation marks omitted). As to the “reasonably pertinent” test: A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. Thus, the purposes of both the invention and the prior art are important in determining whether the reference is reasonably pertinent to the problem the invention attempts to solve. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. An inventor may well have been motivated to consider the reference when making his invention. If it is directed to a different purpose, the inventor would accordingly have had less motivation or occasion to consider it. In re Clay, 966 F.2d at 659.” slip op. at 19

  Patent outcomesUS 8,286,561 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 8,286,561

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.