• Wombat Security Technologies v. Phishme, Inc.Rehearing denied
  PTAB · Jul 20, 2017 · PGR2017-00009 · APJ Jennifer S Bisk · PGR · Rehearing

  The Board denied Wombat’s rehearing request, leaving institution of PGR denied because the petition did not show the patent was eligible for PGR.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION The applicable standard for granting a request for rehearing is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements of a request for rehearing are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3

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

    “sufficiently shown that the ’038 patent was eligible for post-grant review. Inst. Dec. 8–13. Specifically, we found deficient Petitioner’s contention that the challenged claims were not entitled to the benefit of the filing date of Application No. 13/785,252 (“the ’252 application”) to which the ’038 patent claims priority as a continuation-in-part. Inst. Dec. 8–13. This finding was based on the following deficiencies of the Petition: (1) the Petition did not discuss the relevant disclosure of the application to which the ’038 patent claims priority—Application No. 13/785,282 (“the ’252 application”)—as originally filed, citing instead to the ’940 patent, which issued from the ’252 application; (2) the Petition did not address the Examiner’s statements in the Notice of Allowability that “[t]he present application is being examined under the pre-AIA first to invent provisions”; and (3) Petitioner did not satisfy its burden to show that a person of ordinary skill in the art would not have understood the inventor to have possession of “providing feedback to the individual confirming that the identified email was a simulated phishing attack” (“the feedback limitation”). Id. For the third deficiency, we found the feedback limitation supported by at least paragraphs 5 and 18 of the ’252 application, which discuss training individuals who receive simulated phishing attacks such that users are better able to recognize and thwart a real phishing attack. Id. at 11–12.” slip op. at 2

  • BurdenDecided for patent owner

    “being recited expressly in the ’252 application it “satisf[ied] its burden to establish that it was more likely than not that the ’038 patent was not entitled to the filing date of the [’252 application].” Reh’g Req. 3. In Blue Calypso, LLC v. Groupon, Inc., however, the Federal Circuit explicitly found that identifying a limitation as not being recited expressly in the specification at issue was not enough to support a finding of lack of written description. 815 F.3d 1331, 1345 (Fed. Cir. 2016). The Federal Circuit explained that it was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding,” concluding this placed “undue weight on the absence of the [exact] terms appearing in the specification.” Id. at 1345–46. Petitioner’s burden, therefore, is not established simply by pointing out that the ’252 application does not explicitly state the feedback limitation.” slip op. at 4

  • Disclosure Requirements (§112) › Written description (Ariad)Not reached

    “being recited expressly in the ’252 application it “satisf[ied] its burden to establish that it was more likely than not that the ’038 patent was not entitled to the filing date of the [’252 application].” Reh’g Req. 3. In Blue Calypso, LLC v. Groupon, Inc., however, the Federal Circuit explicitly found that identifying a limitation as not being recited expressly in the specification at issue was not enough to support a finding of lack of written description. 815 F.3d 1331, 1345 (Fed. Cir. 2016). The Federal Circuit explained that it was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding,” concluding this placed “undue weight on the absence of the [exact] terms appearing in the specification.” Id. at 1345–46. Petitioner’s burden, therefore, is not established simply by pointing out that the ’252 application does not explicitly state the feedback limitation.” slip op. at 4

  § 112 disclosure
  Patents in suitUS 9,398,038
• L’Oréal USA, Inc. v. Liqwd, Inc.Institution denied
  PTAB · Jul 19, 2017 · PGR2017-00011 · APJ Christopher M Kaiser · PGR · Institution

  The Board denied institution of PGR on claims 1–10 because Petitioner did not show that any claim was more likely than not unpatentable under § 112.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a). The standard for instituting a post-grant review is set forth in 35 U.S.C. § 324(a), which provides that a post-grant review may not be instituted “unless the Director determines . . . it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner

    “Moreover, “[a]pplicants can define . . . claim scope during prosecution,” just as they can in a patent specification. Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015). Here, during prosecution of the ’419 patent, the applicant stated that “[t]he term ‘hair coloring agent’ refers to a colorant or pigment that is customarily used in hair care products, which changes the color or tone of the hair it is applied to based on visual inspection.” Ex. 1005, 7. To define specific terms used to describe an invention, the applicant need only set out the definition “with reasonable clarity, deliberateness, and precision,” “so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). On the present record, the definition of the term “hair coloring agent” set out in the prosecution history of the ’419 patent is sufficiently clear, deliberate, and precise to give a person of ordinary skill in the art notice that the term is used in the ’419 patent in a manner that does not include substances other than “colorant[s] or pigment[s] that [are] customarily used in hair care products,” even if those other substances might be described as “hair coloring agents” outside the context of the ’419 patent. Ex. 1005, 7. Accordingly, we should give effect to that definition. Because Patent Owner’s proposed construction of “wherein the mixture does not contain a hair coloring agent” gives effect to the prosecution history’s definition of “hair coloring agent,” we adopt Patent Owner’s proposed construction for purposes of the present decision. Thus, on the present record, and for purposes of the present decision, we construe “wherein the mixture does not contain a hair coloring agent” as “wherein the mixture applied to the hair does not have a colorant or pigment that is customarily used in hair care products, which changes the color or tone of the hair it is applied to based on visual inspection.”” slip op. at 6

  • Disclosure Requirements (§112) › Definiteness (Nautilus)Not shown unpatentable

    “to determine the scope of the claims. As discussed above, however, we interpret “wherein the mixture does not contain a hair coloring agent” as “wherein the mixture applied to the hair does not have a colorant or pigment that is customarily used in hair care products, which changes the color or tone of the hair it is applied to based on visual inspection.” We have not been directed to evidence of record that a person of ordinary skill in the art would have considered a bleaching agent to be “a colorant or pigment.” Pet. 7 (describing bleaching as a “process[] that destroy[s] pigment to change hair color,” as opposed to a “process[] that deposit[s] dyes, pigments, or other substances onto the hair to change hair color”); Ex. 1006 ¶¶ 14–15 (contrasting “dyeing,” meaning “processes that alter or change hair color by depositing dyes, pigments, or other substances onto the hair,” with “bleaching,” meaning “the application of an oxidizing agent to hair to destroy the natural or artificial pigment”). Accordingly, on the present record, we are not persuaded that Petitioner has shown that it is more likely than not that claims 1–10 of the ’419 patent are indefinite.” slip op. at 10

  • Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable

    “wherein the mixture does not contain a hair coloring agent.” Pet. 36–39; Prelim. Resp. 39–40. If “a hair coloring agent” encompasses bleaching agents, then the claims all require a bleaching formulation and simultaneously exclude a bleaching agent, a scope that Petitioner argues is not described in the specification of the ’419 patent. As discussed above, however, we interpret “wherein the mixture does not contain a hair coloring agent” as “wherein the mixture applied to the hair does not have a colorant or pigment that is customarily used in hair care products, which changes the color or tone of the hair it is applied to based on visual inspection.” We have not been directed to evidence of record that a person of ordinary skill in the art would have considered a bleaching agent to be “a colorant or pigment.” Pet. 7 (describing bleaching as a “process[] that destroy[s] pigment to change hair color,” as opposed to a “process[] that deposit[s] dyes, pigments, or other substances onto the hair to change hair color”); Ex. 1006 ¶¶ 14–15 (contrasting “dyeing,” meaning “processes that alter or change hair color by depositing dyes, pigments, or other substances onto the hair,” with “bleaching,” meaning “the application of an oxidizing agent to hair to destroy the natural or artificial pigment”). Accordingly, on the present record, we are not persuaded that Petitioner has shown it is more likely than not that claims 1–10 of the ’419 patent lack written description support. slip op. at 12

  Claim construction§ 112 disclosure
  Patents in suitUS 9,498,419
• Coxcom, LLC v. Joao Control & Monitoring Systems, LLCSome claims unpatentable
  PTAB · Feb 15, 2017 · IPR2015-01762 · APJ Beth Z Shaw · IPR · Final written decision

  Claims 1, 3–5, 8, 13–17, 20, and 84–86 are unpatentable as obvious over Koether and Crater; claim 44 was not shown unpatentable on that ground.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “owner must provide sufficient rebuttal evidence to bring reasonably into question the accuracy of Petitioner’s identification of RPIs.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012). Whether a non-party is a real party in interest is a “highly fact-dependent question” that is addressed on a “case-by-case” basis. See 77 Fed. Reg. 48,759. “A common focus of the inquiry is . . . whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. The concept of control means that “the non-party ‘had the opportunity to present proofs and argument’ . . . or ‘to direct or control the content’ of the filing.” JP Morgan Chase & Co., et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00179, slip op. at 10 (PTAB Feb. 20, 2015) (Paper 11) (“JP Morgan”). “‘The evidence as a whole must show that the non-party possessed effective control over a party’s conduct of the [proceeding] as measured from a practical, as opposed to a purely theoretical standpoint.’” Id. (quoting Gonzalez v. Banco Cent Corp., 27 F.3d 751, 759 (1st Cir. 1994)).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Ex. 1001, Abst. It describes the relevant problems encountered in the art as those involved in the control, monitoring, or security of vehicles or premises, in a network environment. Id. at 1:20–52; 3:12–21. The ’363 patent is not directed to specific issues associated with electrical circuits or electrical connections between devices. The Specification identifies no specific problem that stems from the apparatus being a particular type of electrical device. From this evidence, we conclude that a person of ordinary skill in the art with respect to the ’363 patent would be skilled in the field of networked systems. For the foregoing reasons, we are not persuaded that the level of ordinary skill in the art requires specific coursework or education in the form of a degree in electrical engineering. Instead, we are persuaded by Petitioner’s statement of the level of ordinary skill in the art, and our finding of the level of ordinary skill is similar to that proposed by Petitioner, but with a slight modification, i.e., that a basic level of experience is required, at the level of at least two years of experience in networked systems. We find that the level of ordinary skill in the art is that of one having at least two years of working experience with networked systems. A more advanced degree would be paired with a shorter period of working experience.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner has not articulated a persuasive reason for giving Mr. Bennett’s testimony little or no weight. Moreover, as discussed above, we are not persuaded that a person of ordinary skill in the art of the ’363 patent would be required to have a specific degree or coursework in electrical engineering. We are, thus, not persuaded that Mr. Bennett’s answers, during deposition, to questions about his background are wrong or that the entirety of his testimony should be given little or no weight based on this testimony.” slip op. at 10

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

    “For purposes of the Decision to Institute, we construed the terms “remote,” “premises,” and “located at.” Dec. 8–9. We reviewed and adopted Patent Owner’s explicit definitions for these terms, which Patent Owner provided in the prosecution of the application that issued as the ’363 patent. Dec. 8 (citing Ex. 2002). Based on our review of the full record, we discern no reason to modify or further discuss in this Final Written Decision our constructions for these claim terms. For convenience, these claim constructions are reproduced in the table below. Term Citations Construction Remote Ex. 2002, “‘Remote’ means ‘separate and apart from, or 10–11 external from, or at a distance from or distant from, or not located in.’” Premises Ex. 2002, 8– “‘Premises’ means ‘a building or a structure 9 and the grounds or parcel of land associated with the building or the structure, or a building or structure or a portion, room, or office, of or in the building or structure, or a home, mobile home, mobile building, mobile structure, residence, residential building, office, commercial building, commercial office, structure, equipment, facility, machine, rig, assembly line, or edifice.’” Located at Ex. 2002, 8 “‘Located at’ means ‘situated at, or situated in, or situated on.’”” slip op. at 12

  Patent outcomesUS 7,397,363 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR
  Patents in suitUS 7,397,363
• Qualcomm, Inc. / Qualcomm Atheros, Inc. v. Parkervision, Inc.Institution denied
  PTAB · Mar 8, 2016 · IPR2015-01822 · APJ Jason J Chung · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that the information presented in the Petition does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we deny institution of inter partes review of all the challenged claims.” slip op. at 2

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

    “entitled to claim benefit to the priority date of the ’940 patent—namely, October 21, 1998. See Pet. 11. Specifically, Petitioner contends the challenged claims cannot be entitled to a filing date earlier than April 13, 2000—the filing date of the application that led to the ’372 patent—because, according to the Declaration of Dr. Lawrence E. Larson, none of the earlier filed applications disclose “inversion means” or “‘inverting’ the ‘information signal’” as recited in the challenged claims. Id. (citing Ex. 1023 ¶ 103). Dr. Larson’s testimony merely repeats Petitioner’s assertion and provides no additional explanation or evidence with respect to this issue. Ex. 1023 ¶ 103. Other than “inversion means” or “‘inverting’ the ‘information signal,’” Petitioner does not advance arguments pertaining to other limitations regarding priority. Pet. 11 (citing Ex. 1023 ¶ 103).” slip op. at 6

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

    “Petitioner’s combination of Dobrovolny and Krauss results in Petitioner improperly reading one component of Dobrovolny on two different claimed structures. Petitioner does not explain adequately why it would have been obvious to one of ordinary skill in the art to use Dobrovolny in the Q path of Krauss’s IQ modulator.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundDecided for patent owner

    “Absent a cogent explanation, it appears that Petitioner has engaged in impermissible hindsight reconstruction. See Grain Processing Corp. v. Am.- Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.”’). We, therefore, are not persuaded that Petitioner adequately explains why the limitations at issue in independent claim 99 would have been obvious over the combined teachings of Dobrovolny and Krauss.” slip op. at 17

  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,039,372
• Qualcomm Inc. / Qualcomm Atheros, Inc. v. Parkervision Inc.Institution denied
  PTAB · Mar 8, 2016 · IPR2015-01819 · APJ Michael R Zecher · IPR · Institution

  The Board denied institution because Qualcomm did not show a reasonable likelihood that claims 88–92 and 107–110 were unpatentable under § 103(a).

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in ParkerVision’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Qualcomm will prevail in challenging claims 88– 92 and 107–110 of the ’372 patent as unpatentable under 35 U.S.C. § 103(a). We, therefore, deny the Petition.” slip op. at 2

  • BurdenDenied

    “An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Instead, a determination of unpatentability on a ground of obviousness must include “‘articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The obviousness evaluation “should be made explicit,” and 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.” Id. We analyze the asserted grounds with the principles identified above in mind.” slip op. at 11

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

    “On the present record, we are not persuaded that Qualcomm has articulated a sufficient rationale to combine the teachings of Dobrovolny and Maas. We understand Qualcomm to argue that modifying Dobrovolny’s RF mixer to transmit a harmonic frequency instead of the fundamental frequency is nothing more than a design choice. See Pet. 41–42. This argument, by itself, does not explain why modifying Dobrovolny in the manner proposed by Qualcomm would have been obvious. See Cutsforth, Inc. v. MotivePower, Inc., No. 2015-1316, 2016 WL 279984, at *3 (Fed. Cir. Jan. 22, 2016) (non-precedential) (“Merely stating that a particular placement of an element is a design choice does not make it obvious. [There must be] a reason for why a person of ordinary skill in the art would have made the specific design choice.”). Qualcomm does not offer a sufficient or credible explanation as to why one of ordinary skill in the art would have made the specific design choice of transmitting a harmonic frequency instead of the fundamental frequency to Dobrovolny’s RF mixer in order to account for a desired harmonic, as required by independent claim 88. Absent such an explanation, we are not persuaded that Qualcomm adequately explains why independent claim 88 would have been obvious over the combined teachings of Dobrovolny and Maas. We also are not persuaded by the cited testimony of Dr. Larson that purportedly supports Qualcomm’s rationale to combine the teachings of Dobrovolny and Maas because it essentially repeats the arguments advanced by Qualcomm in its Petition. Compare Pet. 41–42, with Ex. 1025 ¶ 174. For instance, Dr. Larson testifies that: [t]o the extent it is unclear whether Dobrovolny discloses that a desired harmonic is included in the multiplicity of harmonics in waveform C, Maas discloses that the choice to transmit at a harmonic frequency instead of the fundamental frequency was a known design alternative that would have been obvious to one of ordinary skill in the art, as I discussed in Section V above. Ex. 1025 ¶ 174. Similar to our analysis above, Dr. Larson does not offer a sufficient or credible explanation as to why one of ordinary skill in the art would have made the specific design choice of transmitting a harmonic frequency instead of a fundamental frequency to Dobrovolny’s RF mixer in order to account for a desired harmonic, as required by independent claim 88. Moreover, we note that “Section V” of Dr. Larson’s Declaration, referred to in the block quote above, spans forty-six (46) pages or sixty-nine (69) paragraphs. See Ex. 1025 ¶¶ 31–100. In essence, Dr. Larson asks that we search the sixty-nine paragraphs of testimony in Section V to unearth support for his conclusory statement in the passage quoted above. This we will not do. If a party or witness wishes for us to consider one portion of a document as supporting statements made in another portion, it must provide citations to those portions with particularity.” slip op. at 15

  • Obviousness (§103) › Analogous artAnalogous artDecided for patent owner

    “On the present record, we are not persuaded that Qualcomm has articulated a sufficient rationale to combine the teachings of Dobrovolny, Maas, and Thodesen. With respect to Qualcomm’s assertion that the teachings of Dobrovolny and Thodesen are capable of being combined because both of these references teach the same structure and recognize the same problem, this assertion, at best, indicates that Dobrovolny and Thodesen are analogous art to each other. Merely asserting that these prior art references are analogous art to each other, however, does not suffice as an articulated reason with a rational underpinning to combine their respective teachings—more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. We also are not persuaded by the cited testimony of Dr. Larson that purportedly supports Qualcomm’s rationale to combine the teachings of Dobrovolny and Thodesen because it essentially repeats the arguments advanced by Qualcomm in its Petition. Compare Pet. 42, with Ex. 1025 ¶ 173. For instance, Dr. Larson testifies that: [f]or example, it would have been obvious to a person of ordinary skill in the art to combine Dobrovolny with Thodesen’s summer because both references teach the same architecture of a switch where one input of each switch is coupled to AC ground and [both references] recognize the need to sum the signals generated by the switch . . . . Thus, a person of ordinary skill in the art using Dobrovolny’s circuitry would have been motivated to combine it with any similar device that would sum the voltages of the inputted signals, including the summer disclosed in Thodesen. Ex. 1025 ¶ 173. Similar to our explanation above, simply demonstrating that Dobrovolny and Thodesen are analogous art to each other does not suffice as an articulated reason with a rational underpinning to combine their respective teachings—more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418.” slip op. at 22

  § 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,039,372
• Qualcomm, Inc. / Qualcomm Atheros, Inc. v. Parkervision, Inc.Institution denied
  PTAB · Mar 8, 2016 · IPR2015-01825 · APJ Jason J Chung · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that the information presented in the Petition does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we deny institution of inter partes review of all the challenged claims.” slip op. at 2

  • Skill levelOther

    “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; (3) the level of skill in the art; and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Instead, a determination of unpatentability on a ground of obviousness must include “‘articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The obviousness evaluation “should be made explicit,” and 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.” Id. We analyze the asserted grounds with the principles identified above in mind.” slip op. at 11

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

    “reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84 U.S.LW. 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under the broadest reasonable interpretation standard, and absent any special definitions, claim terms or phrases are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In its Petition, Petitioner proposes constructions for the following claim phrases or terms: (1) “inversion means for inverting the [] information signal and outputting a [] inverted information signal” (claims 99 and 100); (2) “gating [a signal]” (claims 99, 100, 126, and 127); (3) “first [second/third/fourth] gating means for gating” (claims 99 and 100); (4) “harmonically rich signal” (claims 99, 100, 126, and 127); (5) “harmonic” (claims 99 and 100); and (6) “summing means” (claims 99 and 100). Pet. 12–18. In response, Patent Owner proposes a construction for each of the claim phrases or terms identified by Petitioner. Prelim. Resp. 11–20. We, however, need not assess the parties’ proposed constructions because they are not necessary to resolve the dispositive issues discussed below. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9

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

    “entitled to claim benefit to the priority date of the ’940 patent—namely, October 21, 1998. See Pet. 11. Specifically, Petitioner contends the challenged claims cannot be entitled to a filing date earlier than April 13, 2000—the filing date of the application that led to the ’372 patent—because, according to the Declaration of Dr. Lawrence E. Larson, none of the earlier filed applications disclose “inversion means” or “‘inverting’ the ‘information signal’” as recited in the challenged claims. Id. (citing Ex. 1025 ¶ 103). Dr. Larson’s testimony merely repeats Petitioner’s assertion and provides no additional explanation or evidence with respect to this issue. Ex. 1025 ¶ 103. Other than “inversion means” or “‘inverting’ the ‘information signal,’” Petitioner does not advance arguments pertaining to other limitations regarding priority. Pet. 11 (citing Ex. 1025 ¶ 103). In response, Patent Owner argues that the specification of the ’940 patent, which is a parent patent to the ’372 patent, describes inverters 3910 and 4010. Prelim. Resp. 3–4 (citing Ex. 1016, 45:25–46:25, Figs. 39 and 40). For convenience, Figures 39A and 40A of the ’940 patent are reproduced below. Figures 39A and 40A of the ’940 patent illustrate inverters 3910 and 4010 inverting, respectively, waveforms 3902 and 4002. On this record before us, we are not persuaded Petitioner has demonstrated facts sufficient to establish a reasonable likelihood that it will prove that the challenged claims of the ’372 patent lack sufficient written description support. Specifically, Petitioner does not explain why the disclosure of inverters 3910 and 4010 would not convey to the person of ordinary skill in the art that the inventors were in possession of “inversion means” at the time the application that led to the ’940 patent was filed. Based on the current record, the challenged claims, therefore, are entitled to claim the benefit of the priority date of the ’940 patent—namely, October 21, 1998.” slip op. at 6

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,039,372

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.