• LG Electronics, Inc. / Toshiba Corp. et al. v. Straight Path IP Group, Inc.Some claims unpatentable
  PTAB · May 9, 2016 · IPR2015-01397 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1, 2, and 5 of the ’469 patent and claim 3 of the ’121 patent are unpatentable as obvious; all other challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “2. Section 315(b) Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceedings is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “In Straight Path, the Federal Circuit held that the claim language “is connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query 11 Petitioner argues that the relevant specifications do not include an embodiment that “guarantee[s]” that an entry in its database is online, and, therefore, Patent Owner’s argument does not distinguish the ’704, ’469, and ’121 patents over the prior art. Addʼl Br. 6‒7. However, such an argument goes towards whether there is written description and enablement support for the claims. In Straight Path, the Federal Circuit did not offer a view as to the sufficiency of the written description or enablement based on the asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.” Id. The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time that the query is transmitted to the server.” Id. at 1363. Petitioner and Patent Owner argue that the limitations “on-line status” and “is accessible” have the same meaning as “is connected to the computer network.” See 209 Pet. 35–36; 209 PO Resp. 36‒48; 198 Pet. 35–36; 198 PO Resp. 35‒46; 196 Pet. 29; 196 PO Resp. 38‒51. Similar to “is connected to a computer network,” the “on-line status” and “is accessible” of the second process are recited in the present tense, and therefore must be claim construction provided by the Federal Circuit because “written-description and enablement challenges were not, and could not have been, part of the inter partes review.” Straight Path, 806 F.3d at 1363. We similarly do not determine whether this claim limitation is supported by the specifications of the ʼ704, ʼ469, and ʼ121 patents. determined at the time of the querying whether the second process “is accessible” or selecting of the process having an “on-line status.” Therefore, we construe “on-line status” and “is accessible” as having the same meaning as “is connected to the computer network.”” slip op. at 12

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

    “fail to determine whether a computer or process is connected to the computer network. PO Resp. 48–51. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly, and (2) requiring a renewal time period in which a computer must reregister. Ex. 1003, 62–63, 68–69. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1003, 68, 150. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1004, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to WINS, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.” Given that the combination of WINS and NetBIOS fails to teach or suggest the claims as construed, we need not reach the remaining arguments presented by Petitioner and Patent Owner.” slip op. at 23

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

    “unpatentable under 35 U.S.C. § 103(a) as obvious over WINS, NetBIOS, and Pinard, and claim 5 of the ’469 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over WINS, NetBIOS, and Palmer. 198 Pet. 37–47, 54‒ 55, 58‒59. For claims 1, 2, and 5, Petitioner provides citations for where each claim limitation is disclosed by WINS and NetBIOS. Id. Petitioner also articulates reasoning with rational underpinnings why a person of ordinary skill in the art at the time of the invention would have combined the teachings of WINS and NetBIOS. Id. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We determine the record supports Petitioner’s contentions and adopt Petitioner’s contentions discussed below as our own. Furthermore, we have reviewed the Petition and supporting evidence and determine that Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 5 of the ’469 patent would have been obvious over WINS and NetBIOS. See id.” slip op. at 25

  Patent outcomesUS 6,131,121 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,131,121
• Cisco Systems, Inc. / Avaya, Inc. et al. v. Straight Path IP Group, Inc.Institution denied
  PTAB · Apr 6, 2016 · IPR2015-01962 · APJ Kalyan K Deshpande · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claim 3 was obvious over the Microsoft Manual and NetBIOS; claims 1 and 2 were disclaimed.

  RulingsInstitution decision

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

    “III. CONCLUSION We conclude that Petitioner has not demonstrated a reasonable likelihood that at least one of the challenged claims of the ’365 patent is unpatentable based on the asserted grounds. Therefore, we do not institute an inter partes review on the asserted ground as to any of the challenged claims. IV. ORDER For the foregoing reasons, it is ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review will be instituted pursuant to 35 U.S.C. § 314(a) with respect to any of the challenged claims of the ’365 patent on the ground of unpatentability asserted in the Petition.” slip op. at 15

  • Adverse judgmentAdverse judgmentOther

    “II. ANALYSIS A. 37 C.F.R. § 42.107(e) Statutory Disclaimer Under 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this” slip op. at 6

  • Prior constructionPrior construction adoptedDecided for patent owner

    “In Straight Path, the Federal Circuit held that the claim language “is connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.5 The Federal Circuit held that the query 5 Petitioner argues that the specification does not include an embodiment that guarantees the availability of the second process at any given point in time and that the file histories of the challenged patents expressly reject the notion that the claims contain any guarantee of perfect accuracy. Addʼl Br. 4, 6. In Straight Path, the Federal Circuit did not offer a view as to the sufficiency of the written description or enablement based on the claim construction provided by the Federal Circuit because “written-description and enablement challenges were not, and could not have been, part of the inter parties review.” Straight Path, 806 F.3d at 1363. We similarly do not make any determination as to whether the claim as so construed meets the written description or enablement requirement. See 35 U.S.C. § 311(b). asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.” Id. The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time the query is transmitted to the server.” Id. at 1363.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Given that the combination of Microsoft Manual and NetBIOS fails to teach or suggest claim 3 as construed, we need not reach the remaining arguments presented by Petitioner and Patent Owner.” slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,701,365
• HTC Corporation / HTC America, Inc. et al. v. Parthenon Unified Memory Architecture LLCRehearing denied
  PTAB · Feb 17, 2016 · IPR2015-01501 · APJ James B Arpin · IPR · Rehearing

  The Board denied rehearing, leaving institution denied for claims 7–10 and 12 because Petitioner did not show the Board overlooked or misapprehended its arguments or evidence.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION 1. Standard for Reconsideration 37 C.F.R. § 42.71(d) provides that [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. (Emphasis added.) When reconsidering a Decision on Institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). A request for rehearing, however, is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2

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

    “Pet. 15–16 (Section IX.A.1.d.); see also id. at 29 (“Based on information cited above for claim elements 1[c] and claim 2, see supra Sections IX.A.1.d, IX.A.2 . . .”). In order to show that there is a reason to combine the teachings of Gulick and the MPEG standard, it is not enough to show that Gulick and the MPEG standard were available at the effective filing date of the ’753 patent. As we explained, we found this argument to be conclusory and inadequately supported. Dec. 19–20. Second, Petitioner argues that we overlooked that Gulick teaches the use of one or more digital signal processors (“DSPs”) in multimedia engine 112 (Reh’g Req. 9–12 (citing Pet. 13, 14, 30); see Ex. 1017, col. 4, ll. 16–18, col. 5, ll. 15–18, col. 7, ll. 37–42, Figs. 2, 3, 5) and that “it was well known in the art at the time of the alleged invention to employ a DSP for MPEG video processing” (Reh’g Req. 12 (citing Pet. 16); see Ex. 1017, col. 5, ll. 15–21; Ex. 1007, col. 1, ll. 62–67, Fig. 5). Essentially, Petitioner argues that because embodiments of Gulick employ DSPs (Reh’g Req. 11; Dec. 14–15 (reproducing Ex. 1017, Fig. 2)) and because the MPEG standard may be implemented on dedicated DSPs (Reh’g Req. 13 (quoting Ex. 1007, col. 6, ll. 56–57)), the common use of DSPs would have been a reason to combine the teachings of these references.4 We did not overlook this argument; instead, we found the argument and supporting evidence insufficient to demonstrate a reason to combine the teachings of Gulick and the MPEG standard to achieve the subject matter recited in claim 7. Dec. 20. As noted above, a request for rehearing is not an opportunity merely to disagree with our assessment of the arguments or weighing of the evidence. See supra Section II.1.” slip op. at 8

  § 103 obviousnesscites KSR
  Patents in suitUS 7,777,753
• Square, Inc. v. Think Computer CorporationRehearing granted
  PTAB · Feb 9, 2016 · CBM2014-00159 · APJ Michael W Kim · CBM · Rehearing

  The Board granted Patent Owner’s rehearing request insofar as it addressed the assertions in the decision, but denied it in all other respects; the prior analysis remained unchanged.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted in part

    “A request for rehearing can only point out that which the Board misapprehended or overlooked, and will be reviewed for abuse of discretion. 37 C.F.R. § 42.71(d). Moreover, as the moving party, the burden of persuasion falls on Patent Owner. 37 C.F.R. § 42.20(c). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and where each matter was previously addressed in a motion, an opposition, or a reply. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).” slip op. at 1

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

    “are unpersuaded that they would alter our construction. For example, Patent Owner asserts that the claim limitation “any particular transaction” requires that “bidirectional account” be construed as allowing an account to function simultaneously as both a merchant account and a purchaser account under all transactions. We disagree, primarily because we are unclear as to what Patent Owner means by “under all transactions.” The relevant limitation of independent claim 1 reads “wherein the first account and the second account are adapted to selectively function as either a merchant or a purchaser account during any particular transaction.” We find that “[a]ny particular transaction” means any specific transaction, and is not necessarily limited to all transactions going forward, and find further that, logically, an account need only function in “merchant mode” or “purchaser mode” for that particular transaction; otherwise the account would be in the awkward position of performing a transaction with itself. Moreover, we are unclear as to why the same account cannot function as both, depending on the transaction, as an account is merely a repository within which funds are held, and whether the account is in “merchant mode” (i.e., the ability to send funds from the account) or “purchaser mode” (i.e., the ability to send funds to the account) does not alter the fundamental repository nature of the account itself. A similar analysis of the cited portions of the prosecution history and Specification yields similar conclusions. For example, Patent Owner’s discussion of the prosecution history on pages 4 and 5 of the Request for Rehearing do not amount to Patent Owner providing an explicit definition of “selectively function,” “during any particular transition,” or any other claim term as meaning “simultaneously”; nor do Patent Owner’s statements rise to the level of a clear and unmistakable disclaimer with respect to the meaning of the claim terms.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “2. whether Dalzell fails to meet the claims’ requirements Based on Patent Owner’s proposed claim construction of “bidirectional accounts,” Patent Owner asserts that Dalzell does not disclose “bidirectional accounts.” Req. 7‒10. As we are unpersuaded, however, that the Board misapprehended or overlooked the items identified by Patent Owner in construing “bidirectional accounts,” we are unpersuaded that our analysis of Dalzell and “bidirectional accounts” set forth on pages 28 to 29 of the Final Written Decision should be modified in any way. See Dec. 29 (“[W]e find that a more logical reading of paragraph 59 of Dalzell is that a buyer, from a particular account, can add a seller feature to that particular account, without the need to create a whole new account. Such a finding is supported by extensive analysis and testimony by Dr. Sadeh-Koniecpol, with explicit citations to Dalzell, which we find credible, reasonable, and persuasive. Ex. 1002 ¶¶ 147-164 (citing Ex. 1006 ¶¶ 9, 27, 49, 57, 61, 82, 85, 87, 132, 163, Figs. 1A, 1B).”)” slip op. at 9

  Claim construction§ 103 obviousness
  Patents in suitUS 8,396,808
• Coalition For Affordable Drugs IV LLC v. Pharmacyclics, Inc.Institution denied
  PTAB · Oct 19, 2015 · IPR2015-01076 · APJ Tina E Hulse · IPR · Institution

  The Board denied institution on claims 1 and 2 because Petitioner did not show that NCT00849654 was a prior art printed publication, a reference used in both asserted grounds.

  RulingsInstitution decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Whether a reference qualifies as a “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981). A reference is considered “publicly accessible” upon a satisfactory showing that the document has been “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence[] can locate it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (citation and internal quotation marks omitted).” slip op. at 6

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “The cited testimony from its declarant, Djordje Atanackovic, M.D., is nothing more than a conclusory statement that “[t]he prior art also includes Pharmacyclics’ Phase I clinical study with PCI-32765 recruitment publication.” Ex. 1021 ¶ 44. Dr. Atanackovic also testified that “Pharmacyclics published much of its drug development work in the area, including . . . clinical study recruitment documents.” Id. ¶ 38. But neither of these statements explains how NCT00849654 qualifies as a printed publication as of February 2, 2009, as Petitioner asserts. And Dr. Atanackovic has not attested to any personal knowledge of the public accessibility or dissemination of NCT00849654 in February 2009. Given his unsupported assertions, we give little to no weight to Dr. Atanackovic’s conclusory testimony that NCT00849654 constitutes prior art. See 37 C.F.R. § 42.65(a) (stating opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for an expert opinion “may render the testimony of little probative value in a validity determination”).” slip op. at 7

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

    “We, therefore, determine that Petitioner has not satisfied its initial burden of coming forward with sufficient evidence to make a threshold showing that NCT00849654 is a prior art printed publication. Because Petitioner relies on NCT00849654 for both asserted grounds to challenge the patentability of the claims, we also determine that Petitioner has failed to establish a reasonable likelihood that it would prevail in asserting that claims 1 and 2 of the ’090 patent are unpatentable.” slip op. at 8

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Not reached

    “B. Pending Motions Patent Owner filed a motion for sanctions, seeking dismissal of the Petition for Petitioner’s alleged abuse of process and improper use of the proceedings under 37 C.F.R. § 42.12. Paper 20. Petitioner filed a motion to correct a clerical error in which Petitioner filed an incorrect document as Exhibit 1004. Paper 25. In light of the foregoing determination that Petitioner has failed to establish a reasonable likelihood that it would prevail in challenging the asserted claims, both motions are dismissed as moot.” slip op. at 8

  § 102 anticipation
  Patents in suitUS 8,754,090
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Sep 28, 2015 · IPR2014-00863 · APJ Kevin F Turner · IPR · Final written decision

  Claims 2, 11, 13, 14, and 16 are unpatentable under § 103(a) over the listed combinations of Wang, Lantsman, and the respective additional references.

  RulingsFinal written decision

  • ExcludeOther

    “Zond had the opportunity, during this trial, to object to evidence and file a motion to exclude the evidence submitted by GlobalFoundries. Zond, however, did not object under 37 C.F.R. § 42.64(b) to the admissibility of the catalog entry or the Mozgrin Thesis. Notably, Zond does not challenge the authenticity of these documents, nor allege that they constitute inadmissible hearsay. Therefore, the information set forth in the catalog entry can be relied upon by GlobalFoundries as evidence supporting its contention that Mozgrin Thesis was sufficiently accessible to the public before the critical date and it is printed publication within the meaning of § 102. Furthermore, Zond does not provide sufficient explanation or credible evidence to rebut the information disclosed in the Russian State Library’s catalog entry, including the 1994 publication date. For instance, Zond does not explain why a library, such as the Russian State Library here, would take more than seven years to catalog and index a thesis.” slip op. at 28

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Dr. Overzet testifies that Kudryavtsev’s model on plasma behavior is not intended to be limited to a particular type of plasma apparatus. Ex. 1129 ¶ 61. Indeed, Kudryavtsev discloses a study of the ionization relaxation in plasma when the external electric field suddenly increases. Ex. 1106, 30. Specifically, Kudryavtsev discloses that “the electron density increases explosively in time due to accumulation of atoms in the lowest excited states.” Id. at Abs. (emphasis added). Kudryavtsev also describes the experimental results that confirm the model. Id. at 32–34. Moreover, Kudryavtsev expressly explains that “the effects studied in this work are characteristic of ionization whenever a field is suddenly applied to a weakly ionized gas.” Id. at 34 (emphasis added). Dr. Overzet also testifies that a person having ordinary skill in the art “would have looked to Kudryavtsev to understand how plasma would react to a quickly applied voltage pulse, and how to achieve an explosive increase in electron density” when generating a strongly-ionized plasma for improving sputtering and manufacturing processing. Ex. 1129 ¶ 62. Dr. Overzet further explains that such an artisan would have known how to apply Kudryavtsev’s model to Wang’s system by making any necessary changes to accommodate the differences through routine experimentation. Id. ¶¶ 63–65. On this record, we credit Dr. Overzet’s testimony (id. ¶¶ 61– 65) because his explanations are consistent with the prior art of record. As well, Dr. Overzet testifies, Lantsman states that its techniques can be applied to any plasma process, including DC magnetron sputtering, where Wang is directed to DC magnetron sputtering. Ex. 1129 ¶¶ 66–67 (citing Ex. 1104, 6:14–17). Additionally, Dr. Overzet testifies that the different processing conditions in Wang and Lantsman are routine variables that ordinarily skilled artisans would understand need to be changed to accommodate different systems and processing conditions. Id. ¶ 68. In addition, Dr. Overzet points out that both Lantsman and Wang “teach two stage plasma systems.” Id. ¶ 69. Indeed, Lantsman discloses both “limited” and “substantial” plasma stages (Ex. 1104, 2:48–51, 4:58–61, 5:6), and Wang discloses plasma states that vary with the application of pulses (Ex. 1105, 7:13–39). As noted above, Wang discloses background power PB of 1 kW (falling within the range of 0.01–100 kW, as disclosed in the ’142 Patent, for generating a weakly-ionized plasma), and pulse peak power PP of 1 MW (falling within the range of 1 kW–10 MW, as disclosed in the ’142 Patent, for generating a strongly-ionized plasma). Ex. 1105, 7:19–25; Ex. 1101, 11:34–38, 12:1–8, Fig. 5. On this record, we credit Dr. Overzet’s testimony (Ex. 1129 ¶¶ 66–69) because his explanations are consistent with the prior art of record.” slip op. at 18

  • 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; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic, 504 F.3d at 1259. The level of ordinary skill in the art is 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). We analyze the asserted grounds of unpatentability in accordance with the above-stated principles.” slip op. at 7

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

    “plasma to generate a strongly-ionized plasma,” with independent claim 10 reciting a similar limitation. All of the challenged claims depend from claim 1 or 10. During the pre-trial stage of this proceeding, the parties submitted their constructions for the claim terms “a weakly-ionized plasma” and “a strongly-ionized plasma.” Pet. 14–15; Prelim. Resp. 20–22. In our Decision on Institution, we adopted Zond’s proposed constructions, in light of the Specification, as the broadest reasonable interpretation. Dec. 8–10. Upon review of the parties’ explanations and supporting evidence before us, we discern no reason to modify our claim constructions set forth in the Decision on Institution with respect to these claim terms. Id. Therefore, for purposes of this Final Written Decision, we construe, in light of the Specification, the claim term “a weakly-ionized plasma” as “a plasma with a relatively low peak density of ions,” the claim term “a strongly-ionized plasma” as “a plasma with a relatively high peak density of ions.”” slip op. at 7

  Patent outcomesUS 6,853,142 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,853,142
• Mediatek Inc. / Mediatek USA, Inc. v. Bandspeed, Inc.Other
  PTAB · Sep 17, 2015 · IPR2015-00531 · APJ Patrick M Boucher · IPR · Order

  The Board terminated the proceedings as to MediaTek Inc. and MediaTek USA, Inc., vacated the scheduling orders, and continued the proceedings as to Bandspeed, Inc.

  RulingsOther

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached

    “IPR2015-01581, and IPR2015-01582 (“the related proceedings”). In each of the related proceedings, a petition was filed by Qualcomm Incorporated on July 12, 2015, with a motion to join a respective one of these proceedings. Papers 1, 2 in each of the related proceedings. We note that the joinder motions in the related proceedings were filed before the instant motions to terminate were filed in these proceedings. Patent Owner opposes the joinder motions in the related proceedings. Paper 8 in each of the related proceedings. If the joinder motions are not granted, the related proceedings are barred under 35 U.S.C. § 315(b). See 35 U.S.C. § 315(c). Patent Owner has not yet filed a preliminary response in any of the related proceedings, the deadline for which is October 28, 2015, nor sought to expedite the related proceedings by filing a waiver under 37 C.F.R. § 42.107(b). It is thus 2 Citations are to IPR2015-00314. premature to decide the joinder motions in the related proceedings. See 35 U.S.C. § 315(c). Nevertheless, we discern no compelling interest to be served by delaying termination of these proceedings with respect to MediaTek Inc. and MediaTek USA, Inc., both of which have settled with Patent Owner. See 35 U.S.C. § 317 (“An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner unless the Office has decided the merits of the proceeding before the request for termination is filed” (emphasis added)). These proceedings are at an early stage, and no motions are pending in any of these proceedings. Under these circumstances, we determine that it is appropriate to terminate these proceedings with respect to MediaTek Inc. and MediaTek USA, Inc. We exercise the discretion afforded under 35 U.S.C. § 317(a) to decline, at this time, to terminate these proceedings with respect to Patent Owner. Because no petitioner remains in these proceedings, we vacate the Scheduling Order in each proceeding (Paper 13 in IPR2015-00314, IPR2015-00316, and IPR2015-00531; and Paper 15 in IPR2015-00315). If necessary, we will revisit scheduling for these proceedings after decisions on the joinder motions are made in the related proceedings. If appropriate, we will also revisit the Motions to Terminate as to Patent Owner after ruling on the motions for joinder in the related proceedings.” slip op. at 2

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part

    “The Joint Motions to Seal are granted to the extent that they request that the agreement be treated as business confidential information and be kept separate from the patent files under 37 C.F.R. § 42.74(c) but otherwise denied. The requests should not have been filed as “Motions to Seal,” which has other meaning, under 37 C.F.R. § 42.14, with respect to the underlying document in the context of the proceeding, e.g., expungement or made public under certain circumstances.” slip op. at 3

  None
  Patents in suitUS 8,542,643
• Motionpoint Corporation v. Transperfect Global, Inc.All claims unpatentable
  PTAB · Jul 15, 2015 · CBM2014-00060 · APJ Bart A Gerstenblith · CBM · Final written decision

  Claims 1–28 are unpatentable for lack of adequate written description under § 112, first paragraph.

  RulingsFinal written decision

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

    “that “hyperlink” is a well-understood term that the ’022 patent uses in accordance with its ordinary meaning. As explained above, the Microsoft Computer User’s Dictionary makes clear that a hyperlink includes a connection to another element or document. Patent Owner points to no persuasive evidence that the ’022 patent describes a hyperlink as separate from this connection such that the connection can be changed with the hyperlink remaining the same. Indeed, the ’022 patent describes “replac[ing] all links in the translated web page 7 with links that point to the translation manager 4” as part of the translation process. Ex. 1001, 3:37–38. Thus, as described in the patent, changing the connection to point to the translation manager requires a new link. This is consistent with the ordinary meaning of a hyperlink as including a specific connection from one document to another element or document. Our preliminary construction of “hyperlink” included “a link or connection” but did not include a recitation of the element or document linked. To resolve the parties’ dispute, consistent with the ordinary meaning and the specification, we conclude, on the full record before us, that one of ordinary skill in the art at the time of the invention would have understood “hyperlink” to mean “a connection between an element in a hypertext document, such as a word, phrase, symbol, or image, and a different element in the document, another hypertext document, a file, or a script.”” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “First, the inter partes reexamination of the ’022 patent is relevant to our consideration of the claim construction issues presented here because claim construction was at issue in the reexamination. Second, we see no risk of undue prejudice that would outweigh the probative value of the documents and evidence submitted in the reexamination. Of note, is that this proceeding is not a jury trial and, thus, the risk of prejudice in this forum is less than what may otherwise exist before a jury. Third, we agree with Petitioner that Exhibit 1013 is not hearsay at least under Federal Rule of Evidence 801(d)(2)(B) because the testimony in Dr. Nakhimovsky’s Declaration was submitted by, and on behalf of, Patent Owner to the Patent Office, thus evidencing that Patent Owner manifested a belief that the statements contained therein were true. Accordingly, Patent Owner’s Motion to Exclude as applied to Exhibit 1013 is denied.” slip op. at 22

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

    “Patent Owner’s first argument is contrary to our constructions of the term “hyperlink” and the phrase “said hyperlink.” As reflected in our construction, “said hyperlink” in each of independent claims 1, 17, and 26, refers back to the original recitation of “one or more hyperlinks” in the original (untranslated) electronic communication. The portion of the specification relied upon by Patent Owner does not disclose providing translation of said further electronic communications when the original one or more hyperlink is activated. Rather, this disclosure indicates that the translation manager may replace all of the links (i.e., hyperlinks) in the translated web page with links that point to the translation manager. These replaced links are in the translated electronic communication (e.g., web page 7), and not in the original untranslated electronic communication (e.g., web page 2). Thus, this disclosure does not reasonably convey to one of ordinary skill in the art that the inventors had possession of a translation manager that provides translation of further electronic communications when the one or more hyperlinks in the original untranslated electronic communication is activated (i.e., one or more hyperlinks with unmodified destination addresses). See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 25

  • Disclosure Requirements (§112) › Definiteness (Nautilus)Not reached

    “E. Indefiniteness of Claims 23 and 25–28 Under 35 U.S.C. § 112, Second Paragraph Our determination that each challenged claim is unpatentable for lack of an adequate written description renders it unnecessary to reach Petitioner’s contentions that claims 23 and 25–28 of the ’022 patent are indefinite.” slip op. at 31

  Patent outcomesUS 6,857,022 unpatentable
  Claim construction§ 112 disclosurecites Phillips
  Patents in suitUS 6,857,022
• Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCAll claims unpatentable
  PTAB · Jun 22, 2015 · IPR2014-00305 · APJ Susan L C Mitchell · IPR · Final written decision

  Claims 22 and 24–28 are unpatentable as anticipated by Gass; claim 23 is unpatentable as obvious over Gass and Sabatini.

  RulingsFinal written decision

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

    “Patent Owner asserts that Petitioner fundamentally misunderstands the invention of claims 22–28 of the ’831 patent in three respects regarding the interpretation of the claims. First, the “fastening locations,” to which the claims refer, are single openings into which a single fastener is inserted by an operator; second, the recited “predetermined” sequence requires the sequence to be set prior to the operator beginning work on the workpiece; and, third, the claims require an operator to be alerted to whether a predetermined sequence has been followed or whether a parameter has been applied correctly. PO Resp. 1. We disagree with Patent Owner’s interpretation of the claim terms at issue. 1. “fastening location” – (Claim 22) Patent Owner asserts in the Patent Owner Response that “[a]t the heart of the parties’ dispute is the question of whether a ‘fastening location’ is a single opening or a group of openings.” PO Resp. 14. Patent Owner construes “fastening location” as “a single opening into which a single fastener is inserted by an operator.” Id. (quoting Ex. 2009 ¶¶ 39, 59–60)). Patent Owner asserts that the claim language of claim 22 mandates this conclusion when reciting “manually fastening fasteners into the article of assembly using a fastening tool at the first and second fastening locations according to a predetermined fastening sequence.” Id. (quoting Ex. 1001, 12:19–22). Patent Owner also points to the Specification and drawings of the ’831 patent that it asserts shows only single fasteners inserted into single openings. PO Resp. 15 (defining fastening locations as 52a–c). Petitioner asserts that such a definition improperly imports an example from the Specification into the claims. Petitioner states that “Fig. 1’s embodiment may have ‘openings,’ but nothing in the Specification or claims confines fastening locations to ‘single openings’ or even to ‘openings’ (e.g., a fastening location could be a bolt, with no opening, projecting from the article).” Reply 4. We agree with Petitioner that the broadest reasonable interpretation of” slip op. at 7

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

    “Petitioner proposes a claim construction for “disabling the fastening tool when not at a fastening location,” as recited in claim 25. Pet. 19. We do not need to construe this claim limitation to determine whether Petitioner has shown by a preponderance of the evidence that claim 25 is unpatentable. Therefore, we do not construe expressly this limitation here, but give this limitation its broadest reasonable interpretation according to its plain and ordinary meaning.” slip op. at 19

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

    “For instance, Gass teaches that its system is always able to keep track of whether the process tool has been guided to the correct process site and in the correct sequence and can determine the absolute location of the bolting sites in X, Y, Z coordinates. See Ex. 1012 ¶¶ 15, 73–76, 79; Ex. 1042 ¶ 5. Gass also teaches that an enabling means can enable process tool 7 at programmed process site 4”, only when the recognizing means, i.e., the image processing means, has implemented a predefined number of process operations in the region of previous process sites 4, 4’ to ensure that no process site is missed. Ex. 1012 ¶ 87. We agree with Petitioner that any “bolting site” in process site 4 has a different, distinct location as compared to any bolting site in another process site 4’, which bolting sites would meet the first and second fastening locations limitation, even under Patent Owner’s construction. See Reply 7– 8. We also are persuaded that the figures in Gass show single openings in process sites 4, 4’, and 4”, as in the ’831 patent, and would meet Patent Owner’s interpretation of fastening locations. See Ex. 1012, Figs. 6, 8a, 8b, and 10. Petitioner asserts that Gass also teaches “electronically comparing the sensed position of the fastening tool with a predetermined sequence of fastening among the first and second fastening locations.” Reply 10–14. Petitioner relies on the express teaching of Gass requiring a correct sequence among process sites, and the statement that the tool is only enabled at 4” after the tool has already implemented a predefined number of process operations in process sites 4, and 4’. Id. at 12 (citing Ex. 1012 ¶¶ 15, 87; Ex. 1042 ¶¶ 10–18). We agree with Petitioner that “it is evident that Gass’ ‘counter’ simply serves as a memory indicating that a previous site 4,4’ has been completed properly, from which the controller can ensure that a predetermined sequence (i.e. site 4” only after completion of 4, 4’) is being followed.” Id. Patent Owner’s assertion that Gass teaches a user selected initiation” slip op. at 24

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

    “Sabatini teaches assembling automobile seats on an assembly line. Ex. 1013, 54–55. Sabatini also teaches an output indicating to an operator whether operations have been performed correctly. See id. at 55 (“Operators use torque-sensing guns with visual indicators. If fasteners are not run to the correct torque setting, a light above the line comes on and the line shuts down until an operator corrects the problem.”). Relying on testimony from its declarant, Petitioner concludes that “[o]ne of ordinary skill in the art would have recognized that applying the method of Gass to vehicle seats would have yielded the predictable and improved result of facilitating the assembly of a vehicle seat and lowering defects by allowing the sequence of fasteners to be controlled when assembling the vehicle seat.” Pet. 37 (citing Ex. 1002 ¶ 49).” slip op. at 30

  Patent outcomesUS 7,062,831 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,062,831
• Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCRehearing denied
  PTAB · Aug 29, 2014 · IPR2014-00304 · APJ Susan L C Mitchell · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 24 and 25 based on Petitioner’s reasonable-likelihood showing.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION When rehearing a decision on petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted) . A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “In any event, we are not persuaded that the prosecution history of the ’573 patent shows that Patent Owner affirmatively relinquished claim scope that would encompass a “fasten it wrong and fix it later” system. We did consider the Examiner’s statement for allowance (see Ex. 1007, 3–4; Prelim. Resp. 12–13, 33–34, 36) and the general statement in the Specification of the ’573 patent concerning the goal of providing “a more reliable and more foolproof way to conduct fastening operations” (see Ex. 1001, col. 2, ll. 39-40, Abstract; Prelim. Resp. 6, 26–27), along with Figure 4 and its description, the meaning of the claim term “indicating,” and the predetermined sequence program embodiment. Dec. 25. We are unpersuaded on this record, however, that Patent Owner affirmatively surrendered claim scope that would encompass a “fasten it wrong and fix it later” system.” slip op. at 4

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

    “Id. at 4 (citation omitted). In our decision to institute inter partes review, we addressed these arguments, but found them unpersuasive. See Dec. 10–16 (addressing claim construction). We stated that, as Patent Owner admitted, Figure 4 of the ’573 patent and its description “is an express teaching that it is possible to incorrectly insert fasteners in the fastening locations 52a-52c.” Id. at 11. We also stated that the originally-filed claims and the ordinary meaning of the claim term “indicating” “does not limit or negate the admittedly express teaching of a ‘fasten it wrong and fix it later’ system, as depicted in Figure 4 and described in the ’573 patent.” Id. at 12. Finally, as we noted in the decision on institution and as Patent Owner expressly acknowledges, the Specification of the ’573 patent uses the permissive “may” when referring to the electronic controller as including the predetermined sequence program embodiment. Req. Reh’g. 4; Dec. 5.” slip op. at 3

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached

    “2 Because we did not institute inter partes review on any ground based on the Wilhelm reference, we need not address Patent Owner’s argument as to this reference. See Req. Reh’g 13.” slip op. at 5

  Claim construction§ 102 anticipation
  Patents in suitUS 6,763,573

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.