• Ykk Corporation v. 3M Innovative Properties Co.Some claims unpatentable
  PTAB · Sep 13, 2021 · IPR2020-00699 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 1–11 and 13–20 are unpatentable as obvious; claim 12 was not shown unpatentable. The revised contingent motion to amend proposing claims 28–30 was denied.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. As explained below, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1–11 and 13–20 of the ’833 patent are unpatentable, but has not shown that claim 12 of the ’833 patent is unpatentable. We also determine that Petitioner has met the burden to show, by a preponderance of the evidence on this trial record that, all the proposed claims in the revised motion to amend, including independent claim 28 and dependent claims 29 and 30, as set forth in Patent Owner’s Revised Contingent Motion to Amend, are unpatentable. Accordingly, for the reasons given below, we conclude that claims 1–11 and 13–20 are unpatentable and should be canceled. Petitioner has also shown by a preponderance of the evidence that all of the proposed substitute claims that are the subject of Patent Owner’s Revised Contingent Motion to Amend are unpatentable.” slip op. at 3

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “RMTA Opp. 2 (emphasis omitted). In fact, the ’833 patent itself provides additional evidence that other differences may affect the resulting shear strength. More particularly, the ’833 patent discloses that “shear performance is unexpectedly improved upon stretching the thermoplastic backing and decreasing its thickness even though the density of the upstanding elements is reduced by half.” Ex. 1001, 16:17–21. For these reasons, and the reasons discussed above in Section II.D.2., we find there is no credible evidence that the alleged unexpected results are attributable to the claimed combination.” slip op. at 112

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “In response to Dr. Cakmak’s conclusion that the data in the ’833” slip op. at 39

  • Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsObjective indicia no nexusDecided for petitioner

    “whether Mr. Kline accounted for how other mechanical fastener parameters13 would affect resulting shear strength, Mr. Kline testified that he either: (1) did not consider the parameter (see, e.g., Ex. 1024, 115:4–8), or (2) considered the parameter but did not discuss it in his declaration (see, e.g., Ex. 1024, 115:9–120:13). We find Mr. Kline’s conclusion regarding “a correlation—or surprising lack thereof” to be conclusory, given that it fails to consider other parameters that may affect shear strength, and as such, insufficient to support Patent Owner’s position. See, e.g., In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“This court has said previously that mere lawyers’ arguments unsupported by factual evidence are insufficient to establish unexpected results. . . . Likewise, mere conclusory statements in” slip op. at 40

  Patent outcomesUS 10,165,833 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,165,833
• Micron Technology, Inc. v. Innovative Memory Systems, Inc.Some claims unpatentable
  PTAB · Apr 1, 2020 · IPR2016-00330 · APJ Kevin W Cherry · IPR · Remand

  On remand, claims 21, 22, 27, 32, 33, and 38 remain unpatentable; claims 1, 2, 5, 6, 11, 12, 15, 23, 43, 44, 47, and 48 were not shown unpatentable because Tanaka lacks the required …

  RulingsRemand decision

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

    “Thus, the zones contain blocks that are already assigned for address translation. As discussed above, the properly construed remaining language in the claim then requires a controller that can adjust boundaries between zones of assigned blocks “such that blocks from one logical zone are shifted to another logical zone.” Id. Given this analysis and the Federal Circuit’s construction, we agree with Patent Owner that “adjusting blocks that are not yet assigned to logical zones to replace defective blocks that are already assigned to logical zones is not enough to satisfy the claim limitations.” PO Br. 2. Indeed, Federal Circuit noted that our original analysis found that “Tanaka discloses taking” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay), but may not be used to challenge the sufficiency of the evidence to prove a particular fact. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,765, 48,767 (Aug. 14, 2012). While a motion to exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a sur-reply, and also is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case. Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2013–00004, Paper 53, at 62 (PTAB Mar. 13, 2014) (Final Written Decision). Patent Owner’s Motion to Exclude contains such improper arguments, and is in the nature of a sur-reply. Moreover, for the reasons discussed above (see supra Section II.B.2), we find Petitioner’s arguments involving “spare” blocks unpersuasive. For these reasons, Patent Owner’s Motion to Exclude Paragraph 24 of Dr. Subramanian’s Reply Declaration as presenting new arguments is denied.” slip op. at 21

  Patent outcomesUS 6,901,498 mixed
  § 103 obviousness
  Patents in suitUS 6,901,498
• Arrows Up, LLC v. Oren Technologies, LLCSome claims unpatentable
  PTAB · Jan 10, 2020 · IPR2018-01230 · APJ Paul J Korniczky · IPR · Final written decision

  Claims 1–3 and 6–11 are unpatentable as obvious; claims 4 and 5 were not shown unpatentable because the petitioner did not establish a reason to use a second conveyor to unload proppant to a road …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the problems and solutions in the prior art of The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the ’772 patent has an effective filing date before March 16, 2013, the pre-AIA version of § 103 applies. record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (“Factors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.”).” slip op. at 7

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

    “In our decision to institute, we determined that “a broad, but reasonable construction of the claimed ‘second different end surface’ limitation requires that the two end surfaces are structurally different.” Paper 7, 10. Petitioner does not dispute our construction. See generally Reply. Patent Owner agrees with our construction. PO Resp. 11 (“The evidence shows the Board’s construction is correct and should be maintained.”). Upon reviewing the claim language in light of the Specification, we maintain our interpretation that a reasonable construction of the claimed “second different end surface” limitation requires that the first and second end surfaces be structurally different, for the reasons given in our decision to institute. See Paper 7, 8–10.” slip op. at 9

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

    “2. Other Claim Terms We determine that no other claim limitation requires express construction for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (internal citation omitted)).” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on these figures and their associated descriptions, and after having weighed the competing testimony of Petitioner’s expert (Mr. Robert Schaaf (e.g., Ex. 1002)) and Patent Owner’s expert (Mr. Fred P. Smith (e.g., Ex. 2008)), we credit Mr. Schaaf’s testimony that a person of ordinary skill in the art “would understand Sheesley’s auger could provide proppant received from a rail car on the rail spur (the ‘source’ on the supply chain of proppant) into Sheesley’s empty proppant containers, and that such containers would necessarily be in ‘close proximity’ to the rail spur.” Ex. 1002 ¶ 68.” slip op. at 16

  Patent outcomesUS 9,248,772 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 9,248,772
• Arrows Up, LLC v. Oren Technologies, LLCSome claims unpatentable
  PTAB · Jan 10, 2020 · IPR2018-01231 · APJ Michael L Woods · IPR · Final written decision

  Claims 1, 2, and 4–6 are unpatentable as obvious over Sheesley, with or without Mintz; claim 3 was not shown unpatentable because Sheesley lacks a required conveying-to-a-source limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We adopt Petitioner’s proposed level of ordinary skill in the art “because it is consistent with the problems and solutions in the prior art of record.” See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (“Factors that may be considered in determining level of ordinary 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the ’066 patent has an effective filing date before March 16, 2013, the pre-AIA version of § 103 applies. skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.”).” slip op. at 7

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

    “In our decision to institute, we determined that “a broad, but reasonable construction of the claimed ‘second different end surface’ limitation requires that this surface is structurally different from the ‘first end surface.’” Paper 7, 9. Petitioner does not dispute our construction. See generally Pet. Reply. Patent Owner agreed with our construction. PO Resp. 10 (“The evidence shows the Board’s construction is correct and should be maintained.”). Upon reviewing the claim language in light of the Specification, we maintain our interpretation that a reasonable construction of the claimed “second different end surface” limitation requires that this surface be structurally different from the “first end surface,” for the reasons given in our decision to institute. See Paper 7, 8–9.” slip op. at 9

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

    “2. Other Claim Terms We determine that no other claim limitation requires express construction for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (internal citation omitted)).” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “A reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment.” In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012). When read in its entirety, Sheesley teaches the claimed limitation. To illustrate this point, we begin by reproducing Sheesley’s Figure 5, below: Figure 5 depicts empty containers being filled with proppant after being placed on a rail car for transport. Although Figure 5 depicts the empty containers placed on a rail car, rather than on a road vehicle, as required by the claim, Sheesley’s disclosure is not limited to rail cars, as Patent Owner contends. Specifically, Sheesley discloses that rail is merely one of many modes of transportation, including trucks. Ex. 1005 ¶ 78 (“Modified cargo containers 270 can be loaded on a ship 272, barge 274, rail 276, or a flatbed truck trailer 278”). For the reasons discussed above, and after having weighed the competing testimony of Petitioner’s expert (Mr. Robert Schaaf (Ex. 1002)) and Patent Owner’s expert (Mr. Fred P. Smith (Ex. 2009)), we credit Mr. Schaaf’s testimony that Sheesley discloses this limitation. Ex. 1002 ¶¶ 71–78; see id. ¶ 78 (“[I]t is my opinion that Sheesley discloses ‘positioning a plurality of empty proppant containers, each removably positioned on a trailer of a respective proppant transporting road vehicle.’”). Accordingly, Petitioner has shown that Sheesley discloses “positioning a plurality of empty proppant containers . . . on a trailer of . . . proppant transporting road vehicle.” slip op. at 14

  Patent outcomesUS 9,617,066 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 9,617,066
• Seabed Geosolutions (US), Inc. v. Magseis FF LLCSome claims unpatentable
  PTAB · Nov 5, 2019 · IPR2018-00961 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–7 and 9–24 are unpatentable under the stated § 103(a) grounds; claim 8 was not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “7. Our Analysis of Claim 1 As we analyze the evidence, Mattaboni’s Figure 4 does not relate to any characteristic of its memories that limits the frequency range of recorded seismic data. Rather, Mattaboni’s Figure 4 is “the product of the manufacturer’s specified response curve for the geophone and the measured transfer function of the preamp and filter blocks of Figure 3.” Ex. 1006, Fig. 4 (caption). Mattaboni discloses that its memories are capable of recording data at 120 times per second, or 60 Hertz, and thus above the 50 Hertz that Patent Owner contends is necessary to record “seismic data.” Regarding Patent Owner’s statements (1) and (2) above, Patent Owner’s declarant does not disclose the underlying facts or data on which these opinions are based, and they are thus entitled to little or no weight. 37 C.F.R. § 42.65(a). Regarding Patent Owner’s statement (3), Mattaboni states that the displacement response peak of its instrument is between 25 and 35 Hertz, which is the most important range for microearthquakes. Ex. 1006, 5. Mattaboni, however, also states the effective frequency band of the disclosed instrument is “from about 2 Hz to somewhat over 50 Hz (Figure 4).” Id. at 5. Thus, Mattaboni’s instrument records signals “somewhat over 50 Hz” which is “at least above 50 Hz” and in the frequency range which Patent Owner’s declarant contends is needed to record “seismic data.” Ex. 2051 ¶ 35; Ex. 1104, 301:5–302:1 (testifying that 8–50 Hz range is minimum for “seismic data” under Patent Owner’s construction).” slip op. at 28

  • Skill levelSkill level board ownOther

    “Considering the foregoing, we find that a person of ordinary skill in the art of OBS technology would have had: (i) a bachelor’s degree in electrical or mechanical engineering, geophysics, mathematics, general engineering, or equivalent thereof, and five (5) years of experience with the conduct of surveys with geophones, or the equivalent thereof, including two (2) years of work specifically with OBS technologies, or the equivalent thereof; or (ii) a bachelor’s degree and an advanced degree in electrical or mechanical engineering, geophysics, mathematics, general engineering, or equivalent thereof, and four (4) years of experience with the conduct of surveys with geophones, two (2) years of which involve work specifically with OBS technologies, or the equivalent thereof. We adopt these statements as describing the level of ordinary skill in the art pertinent to the 761 Patent in our obviousness analysis.” slip op. at 15

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

    “Petitioner contends there is a “heavy presumption” that claims terms have their ordinary meaning (CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)), and that Patent Owner did not overcome this presumption with a clear and precise definition (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). Reply 8. Claim terms must be construed, however, in light of the specification. See In re Translogic Tech., Inc., 504 F.3d at 1257. In the Specification, the 761 Patent describes “seismic data” as resulting from an acoustic signal from a seismic energy source that propagates into the earth and is partially reflected at subsurface lithologic or fluid boundaries and is detected and recorded as seismic energy data by seismic receivers. Ex. 1030, 1:12–23. Petitioner argues that this passage of the 761 Patent does not mention “seismic data.” We note, however, that this passage does mention “seismic energy data” which is shortened to “seismic data” when mentioned later in the 761 Patent. See, e.g., Ex. 1030, 2:48–51, 3:17–19, 3:26–30, 3:35–40, 3:61–63, 9:41–63. Petitioner further contends that several publications establish that “seismic data” is not limited to the oil and gas industry, but may be used in other fields such as earthquake monitoring. Reply. 10 (citing Exs. 1112– 1114, 1121). Patent Owner argues that its constructions are consistent with, and supported by, other publications from the oil and gas industry. PO Resp. 33 (citing Ex. 2003; Ex. 2004, 213–232). Collectively, these publications establish that the term “seismic data” is used differently in different fields, but the best source for determining the meaning of a claim term is the patent’s Specification. See, e.g., In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149–50 (Fed. Cir. 2012); In re Suitco Surface, Inc., 603 F.3d 1255, 1260–61 (Fed. Cir. 2010); Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). As the 761 Patent uses the term “seismic data” consistent with the meaning proposed by Patent Owner, and not the more expansive definition proposed by Petitioner, we adopt Patent Owner’s proposed construction as the correct one to use for our analysis in this decision. The plain meanings of claim terms are construed not in a vacuum, but in the context of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d at 1257. Our construction of “seismic data” and “seismic data recorder” is consistent with the 761 Patent’s use of the terms.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We agree that Patent Owner’s failure to re-allege the argument in the Response waives the argument that Schmalfeldt is not a “printed publication.” See In re Nuvasive, 842 F.3d 1376, 1380 (Fed. Cir. 2016) (finding waiver where a patent owner “challenged the public accessibility of the prior art references during the preliminary proceedings of the inter partes review . . . but failed to challenge public accessibility during the trial phase”); SAP Am., Inc. v. Versata Dev. Group, Inc., CBM2012-00001, Paper 81 (Sept. 13, 2013); Paper 12. In any case, Petitioner has demonstrated Schmalfeldt is a printed publication for reasons noted. Dec. Inst. 10–20; see also Reply 4 (citing Ex. 1105). Accordingly, we determine Petitioner has shown Schmalfeldt is a “printed publication” under 35 U.S.C. § 102.” slip op. at 16

  Patent outcomesUS 8,228,761 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,228,761
• Lego Systems, Inc. / Warner Bros. Home Entertainment Inc. v. Figurefun LLCSome claims unpatentable
  PTAB · Sep 26, 2019 · IPR2018-00755 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1, 3, 5, 7, 10, and 25 are unpatentable as obvious over each listed reference combination; claim 8 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find Patent Owner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We, therefore, find that a person of ordinary skill in the art “would have at least a Bachelor’s Degree in Computer Science with courses and experience in relevant mathematics and three to five years of experience with designing and developing coin-operated electronic gaming devices with electronic displays (such as slot machines).” Ex. 2001 ¶ 19. Any differences regarding additional experience in the parties’ competing proposals for the level of ordinary skill does not affect our analysis of Petitioner’s challenges.” slip op. at 8

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

    “action figure.” See, e.g., id. at 10:21–24 (“Here, it is not necessary that the token with built-in IC chip is configured so integrally with the action figure that the action figure may be fixed firmly and cannot be removed from the token.”), 10:24–25 (“The action figure may be configured so as to be detachable from the token, which is disk-shaped.”). As discussed above, the claims require a “token for a gaming machine” that comprises an integrated circuit chip or a storage section being “detachable from a figure.” Id. at 23:58–62, 26:9–13. The Specification also describes figures with integrated tokens with built-in IC chips (id. at 5:49–54), but the claims are directed by their express terms to embodiments of tokens with detachable figures. We, thus, agree with Patent Owner that “token” does not include a “figure.” Thus, the term “token” cannot include within its scope a “figure.” To resolve the parties’ dispute regarding patentability, we need only determine that the term “token” does not include an “figure.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing only those claim terms in controversy and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). Any further express interpretation is not required for our analysis. Vivid Techs., 200 F.3d at 803. slip op. at 12

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

    “As discussed above, we find that Lee teaches that, in the embodiment shown in its Figure 2, “transducer 64 can be attached to a preexisting wrestling figure” so that “a child who has a collection of various action figures can use those figures as part of the activity center.” Ex. 1004, 6:44– 51. Lee, thus, supports Petitioner’s declarant testimony that one of ordinary skill in the art would have modified Levy so that its integrated circuit chip is detachable in the same manner as Lee so that “various action figures can be used with the token.” Ex. 1002 ¶ 88 (citing Ex. 1006, 6:46–51). We also find that modifying Levy as proposed by Petitioner is within ordinary skill. See, e.g., Ex. 1002 ¶ 59. Thus, Petitioner demonstrates that one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed modification.” slip op. at 34

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “G. Objective Evidence of Nonobviousness The parties do not direct us to any objective evidence of nonobviousness. See generally Pet.; PO Resp.; Tr. 72:19–22 (Patent Owner’s counsel stating it did not submit objective evidence of non-obviousness).” slip op. at 64

  Patent outcomesUS 7,338,377 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,338,377
• Van Der Hoeven Horticultural Projects B.V. v. Houweling Nurseries Oxnard, Inc.Some claims unpatentable
  PTAB · Jun 6, 2018 · IPR2017-00476 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claim 29 is unpatentable over Reisinger under § 103; claims 1–28 were not shown unpatentable because Reisinger’s ducting is not an end gable and the proposed combination lacked a sufficient rationale.

  RulingsFinal written decision

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

    “and 2 above, the “gabled end” is a region at an end wall of the greenhouse separated from the growing section by a partition. The ’617 patent also explains that “the greenhouse can be arranged without a gabled end,” and provides an example of such an arrangement as one where “the first louver [is] arranged over the fans with the cooling mechanism located at the fans such that ambient air can be pulled directly into the tubes with the air passing the cooling mechanism for additional cooling” and “[p]ipes . . . provide an air passageway between the second vent and the fans during the mode when air from within the crop section is to be recycled.” Ex. 1001, 9:33–41 (emphases added). As noted above, in such arrangements, a direct flow path is provided between first vent 24/first louver 30 to draw ambient air into the system and piping provides a flow path from second vent 34/second louver 36 for air recirculation from growing section 16. We find that “piping,” as used in the ’617 patent, is ducting, as that term is used in the art. Consistent with that finding, Patent Owner’s declarant Mr. Turkewitsch distinguishes ducting from structure such as a plenum or a chamber. See, e.g., Ex. 1031 53:22–55:10. Accordingly, we determine that the alternate example from the ’617 patent noted above discloses use of a ducted system in place of gabled end 14 for air flow. Based on the Specification, therefore, we find that ducting or other piping is not considered an “end gable” in the ’617 patent. As discussed further below, for purposes of this decision, we do not need to determine the precise requirements of the term “end gable” in the claims in order to determine that Petitioner has failed to establish unpatentability of the claims including that term because we at least determine that, even under the broadest reasonable interpretation, an “end gable” does not include ducting.” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Petitioner contends that Reisinger’s fresh air inlet 2, for example, corresponds to the “one or more vents” and flap 10 corresponds to the “one or more mechanisms selectively moveable to cooperate with said one or more vents to control air flow through said one or more vents.” Pet. 64–65 (referencing discussion of similar limitations in claim 1 discussed on pages 35–40 of the Petition). Petitioner explains that Reisinger’s climate control system also meets the additional limitations directed to operation of the “climate control system” in claim 29. Id. (referencing discussion of similar limitations in claim 1 discussed on pages 40–44 of the Petition). We are persuaded by those contentions, which Patent Owner does not dispute.10 With respect to any requirement that the claim has regarding a roof and sidewalls, generally, we are also persuaded by Petitioner’s contentions in connection with those features. See, e.g., Pet. 32 (citing Ex. 1002 ¶¶ 86– 88). Petitioner explains, for example, that “a POSA would have understood Reisinger to disclose them because a greenhouse was known to include a ceiling, and Reisinger’s disclosed function of smoothly adjusting the ratio of fresh air and recirculated air would not work unless the air inlets 1 and 2 were enclosed on the sides.” Id. Patent Owner does not dispute those contentions, which, as stated above, we find persuasive.” slip op. at 15

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

    “Reisinger’s greenhouse and climate control system, because . . . Landstrom is in the same field of endeavor as Reisinger,” “there would have been a reasonable and predictable expectation of success to a POSA in combining the teachings of Reisinger and Landstrom to incorporate Landstrom’s end gable chamber into Reisinger,” and “incorporating Landstrom’s end gable chamber into Reisinger’s greenhouse and climate control system including vents, louver and airflow modes does not change the principle of operation of either component.” Id. at 79–81. Patent Owner disputes whether Landstrom teaches an “end gable” or an “end portion,” and contends that Petitioner has failed to establish that one skilled in the art would have combined Landstrom’s teachings asserted by Petitioner in connection with those features with Reisinger. PO Resp. 66– 72, 74–75. Even accepting Petitioner’s contentions that Landstrom teaches an “end gable” and an “end portion” as required by the claims, Petitioner has failed to establish sufficiently that one skilled in the art would have found it obvious to include those features from Landstrom in Reisinger’s system. Sufficient rationale for combing features from multiple references requires more than those references merely being in the same field of endeavor and that the combination would have had a reasonable expectation of success and not change the principle of operation. See Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (“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”). We are lacking any, let alone sufficient, rationale from Petitioner in this proceeding.” slip op. at 19

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “obviousness in Patent Owner’s Response fails to address any relation of the claim elements, or even any particular claim, to that evidence. See PO Resp. 76–80. Nevertheless, even if we were to assume some nexus, that nexus appears to be between Patent Owner’s evidence and the features of claims 1 and 17, rather than those of claim 29. For example, in its discussion of copying, Patent Owner asserts “the ModulAir design has the same ‘corridor’ (or ‘end gable’) design as that of the Ultra Clima®.” Id. at 78. As noted above, claim 29 recites an “end portion,” rather than the “end gable” recited in claims 1 and 17. Moreover, Patent Owner presents evidence of similar designs, rather than actual copying. See, e.g., id. (“the designs are almost identical”). “[C]opying requires the replication of a specific product.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). That products are similar is not persuasive evidence of copying. See Iron Grip, 392 F.3d at 1325 (“Not every competing product that arguably falls within the scope of a patent is evidence of copying. Otherwise every infringement suit would automatically confirm the nonobviousness of the patent.”). With respect to industry praise, we note that evidence, too, is only relevant when it is directed to the merits of the invention claimed. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006). Patent Owner fails to provide any connection between the particular features of claim 29 and the alleged industry praise. Nevertheless, even if we were to assume sufficient nexus had been established by Patent Owner, when we weigh all of the evidence, for and against patentability, we determine that the preponderance of the evidence weighs in favor of unpatentability of claim 29. As explained above, we are persuaded that Reisinger, itself, in a single embodiment, teaches each of the features found in claim 29, other than expressly describing a roof and sidewalls. As also explained above, however, we are persuaded that one skilled in the art would readily appreciate that greenhouses include a roof and sidewalls, which Patent Owner does not dispute. Accordingly, Patent Owner’s evidence does not outweigh Petitioner’s evidence of obviousness.” slip op. at 16

  Patent outcomesUS 8,707,617 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,707,617
• Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.Some claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1, 3, 5, and 7–15 are unpatentable as anticipated by Rabinovich; Petitioner did not prove claims 1–15 obvious over Rabinovich.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 16. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 19–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 21. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating object xs if the ratio of cnt(s,xs) over aff(xs) is greater than m, i.e., a non-zero value. PO Resp. 34; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication step. This means that Rabinovich will not replicate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that Rabinovich object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independently of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer. We are not persuaded by Petitioner’s argument that Rabinovich” slip op. at 18

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

    “pieces” Claim 1 recites “each file including a plurality of individual pieces, the pieces containing parts of the files.” Ex. 1002, 25:67–26:1. The other independent claims recite limitations commensurate in scope. Neither party proposes explicitly a construction of the term “piece.” Petitioner argues that “files are inherently composed of pieces in the form of bits that make up bytes, the bytes themselves being pieces of the file.” Pet. 32. Patent Owner argues that construing “piece” to cover “bits and bytes” of a file “would read out the ‘pieces’ limitation from the claim entirely” (PO Resp. at 29–30) and that “one of ordinary skill in the art would not read the ‘pieces’ limitation of the claim to include bits and bytes” (id. at 30). The claims themselves define “piece” by requiring that a “file” have a “plurality of individual pieces,” but do not establish a lower bound—i.e., a minimum number of bits or bytes—to qualify as a “piece.” Patent Owner identifies no support in the ’680 patent for its contention that “piece” or “pieces” excludes a byte or bytes of a file, relying instead solely on the testimony of Dr. Paul S. Jacobs. Id. (citing Ex. 2006 ¶¶ 38, 39). We are not persuaded by Dr. Jacobs’s conclusory testimony. Because “piece” and “pieces” are limited by the claims only to being a subset of a file and because a byte or collection of bytes of a file is a subset of that file, we are persuaded that the broadest reasonable interpretation of “piece” and “pieces” in light of the Specification of the ’680 patent encompasses a byte or bytes. slip op. at 7

  Patent outcomesUS 7,904,680 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,904,680
• LG Electronics, Inc. v. Core Wireless Licensing S.A.R.L.Some claims unpatentable
  PTAB · Feb 16, 2017 · IPR2015-01983 · APJ Jameson Lee · IPR · Final written decision

  Claims 1, 3–5, 7–12, 15, and 16 are unpatentable as obvious over both asserted combinations; claim 2 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art With regard to the level of ordinary skill in the art, Petitioner asserts: “A person of ordinary skill in the art in the field of the [’]671 patent is a person who has, through formal education or extensive practical experience, the equivalent of a Bachelor’s Degree in Computer Science or Electrical Engineering and 2–3 years of experience in graphical user interfaces.” Pet. 10–11. Patent Owner does not explicitly take a position on the level of ordinary skill and does not dispute Petitioner’s articulation. Petitioner’s assertion is supported by the testimony of Dr. Rhyne. We accept and adopt Petitioner’s statement of the level of ordinary skill in the art. C.” slip op. at 12

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

    “A ‘remote information resource’ contains information of interest to a potentially large number of users and is remotely accessible over a wireless connection. Web and WAP sites are examples of remote information resources. PO Resp. 11 (citing Ex. 1001, 3:15–19). The above-quoted text first provides a definition, and then identifies examples. Petitioner’s witness, Dr. Rhyne, agrees that the above-quoted text in the specification functionally defines a remote information resource and provides examples. Ex. 2004, 21:15–22:12. In accordance with the definition given in the specification, we construe “remote information resource” as: a remotely wirelessly accessible location or object that contains information of interest to a potentially large number of users.3 3 Patent Owner correctly notes that a remote information resource is a container of information and is not the information itself. PO Resp. 13.” slip op. at 8

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

    “Patent Owner argues that in the context of claims 1 and 12, which add the language “an end-user is enabled to” just prior to the phrase “select the remote information resource” (claim 1) and the phrase “select a remote information resource” (claim 12), claims 1 and 12 should be construed to be limited to “direct” selection of the remote information resource. PO Resp. 13–15. The argument is unpersuasive. The presence of the phrase “an end- user is enabled to” in claims 1 and 12 does not restrict the selection by the end-user to the direct approach. The end-user still can make its selection indirectly, such as by selecting a default profile, as is described in the specification and discussed above. We construe “select [a/the] remote information resource” broadly, but reasonably, to mean “select a remote information resource either directly or indirectly.” We also clarify that indirect selection, in that context, means a selection made on the basis of information provided by the user that does not itself identify the remote information resource.” slip op. at 9

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

    “Ex. 1001, 1:28–36. Citing to the first two sentences in the above-quoted text, and without explanation, Petitioner proposes a construction for “idle screen” that is differently worded from that stated above. Pet. 12. It is inappropriate to rephrase the first two sentences in the above-quoted definition provided in the specification. The meaning of “idle screen” is provided in the specification by the entirety of the above-quoted text and needs no further construction.4 4. “mobile communication device” and “mobile device” Independent claims 1 and 12 each recite the term “mobile communication device,” and independent claims 15 and 16 each recite the term “mobile device.” Petitioner asserts that both terms should be construed to include a portable electronic device with communications capabilities. Pet. 11. Patent Owner asserts that the term “mobile communication device” should be construed as wireless mobile communication device, and the term “mobile device” should be construed as wireless mobile device. PO Resp. 12–13. Because the prior art in the involved grounds of unpatentability accounts for a wireless communication capability of a portable device, we discern no need to specify any express construction for either “mobile communication device” or “mobile device.” 5. “a source selected by a user” Claim 2 depends from claim 1 and further recites: “in which the information is from a source selected by the user.” According to Patent Owner, the phrase requires “direct” selection of a source of information. PO Resp. 19. We will address Patent Owner’s position in the context of analysis 4 The last sentence, “Personal computers have no equivalent to an idle screen,” indicates only that the ’671 patent defines “idle screen” to exclude anything on a personal computer, such as a screen saver. It acts as a disclaimer, and does not mean a screen saver on a personal computer is not reasonably pertinent to what the ’671 patent regards as an idle screen. By adopting the definition in the specification, we are not finding that teachings about screen savers on a personal computer may not be relied on to render the claimed invention obvious. of claim 2 below. It is not necessary, however, to provide an express construction of the phrase. Note, however, a “source” is not the same as a “remote information resource.” A “remote information resource” is specially defined in the specification and construed above. B.” slip op. at 10

  Patent outcomesUS 8,498,671 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,498,671
• Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentable
  PTAB · Dec 6, 2016 · IPR2015-01248 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 5, 20, 22–25, and 30 are unpatentable as obvious over Yamashita and Shamoon; claims 2–4, 6–8, and 19 were not proven unpatentable.

  RulingsFinal written decision

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

    “We agree with Petitioner that Patent Owner is attempting to improperly limit the construction. As we explained in our Decision on Institution, we declined to limit “comparison” to a particular type of evaluation, and by our construction, we did not find that the “focus” of the “comparison” is to identify “any dissimilarity” as Patent Owner contends. See Inst. Dec. 9. Indeed, as evidenced by the dictionary definitions cited by Patent Owner and that we relied upon, determining dissimilarities is not the “focus” of the plain and ordinary meaning of “comparison” that we adopted. See Inst. Dec. 9 (citing Ex. 2003 (defining “comparison” as “the act of looking at things to see how they are similar or different” and “the act of suggesting that two or more things are similar or in the same category”)); see also Ex. 2011 (defining “comparison” as “the representing of one thing or person as similar to or like another” and “an examination of two or more items to establish similarities and dissimilarities”).” slip op. at 6

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

    “Here, we agree with Petitioner that the plain language of the claim is sufficient and no construction is necessary for this term. The claim language already establishes that there are two user profiles, each is associated with a particular and different mobile device, and the profiles include “information to alter an operating condition of the network device according to a preference of a [first/second] user.” The claim already addresses what attributes the user profile must have. We see no support in the claim language or specification for Patent Owner’s additional requirements that the profiles be “individual” and “include information unique to each user.”” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “v. Summary as to Claims 1, 20, 22–25, and 30 Patent Owner raises no evidence of secondary considerations of nonobviousness in this case. Thus, weighing the evidence of obviousness that is before us, we find that Petitioner has shown by a preponderance of the evidence that claims 1, 20, 22–25, and 30 would have been obvious over the combination of Yamashita and Shamoon.” slip op. at 31

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

    “We do not find Patent Owner’s arguments persuasive. Teaching away requires that “a person of ordinary skill upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).4 Patent Owner cites nothing in Yamashita that says that adding the features from Shamoon in addition to the automatic functionality of Yamashita would be unlikely to work; Yamashita alleges only that manual control alone has certain disadvantages. 4 We understand Patent Owner to be arguing both that the references teach away from the combination generally and teach away because, in particular, the combination would change the principle of operation of the system. PO Resp. 33–36. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012); see also Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998) (finding no teaching away where nothing in the prior art device suggested that the claimed invention was unlikely to work). The lack of teaching away is confirmed by Yamashita’s disclosure of an embodiment requiring manual interaction. See Reply 20 (citing Ex. 1006, 22:31–51). Indeed, although Patent Owner contends that automatic functionality is “not the focus or main purpose of Shamoon,” PO Resp. 35, Shamoon’s system demonstrates that automatic functionality can be combined with manual functionality to result in a working system. See Ex. 1007, 8:36–45. As for Patent Owner’s contentions that Yamashita “abandoned bi- directional communication” (PO Resp. 35), we find no support in the cited portions of Yamashita for these contentions. Although Yamashita does tout the benefits of its automatic control system, the cited portions of Yamashita are silent about the advantages or disadvantages of “bi-directional communication.” As for Patent Owner’s arguments about substantial reconstruction and redesign (PO Resp. 36 (citing Ex. 2008 ¶ 91)), we do not find the testimony or argument persuasive. Yamashita’s control terminal and mobile terminals already has built in communication abilities (Ex. 1006, 11:31–38), and we find Dr. Selker’s testimony persuasive that a person of ordinary skill would have been motivated to add the ability to communicate the thermostat reading to verify that Yamashita’s automatic control worked. Ex. 1002 ¶¶ 205–207. As for Patent Owner’s allegation that the combination with Shamoon would change Yamashita’s principle of operation, we disagree. Yamashita would continue to work as before; the messages, rules, and control information would continue operate in the same manner. Shamoon would only add additional functionality to allow for an improved user interface and two-way communication. Where the device would operate on the same principles as before, the combination does not change the principle of operation. See Mouttet, 686 F.3d at 1332 (noting Ratti inapplicable where the modified apparatus will operate “on the same principles as before”). As Petitioner explains, Shamoon demonstrates that its known techniques have been used to improve similar devices in similar ways. We find that Petitioner has articulated sufficient reasoning with rational underpinnings to support the combination. See Ex. 1002 ¶¶ 205–207, 213. Thus, we conclude that a person of ordinary skill would have had reason to combine the teachings of Yamashita and Shamoon.” slip op. at 29

  Patent outcomesUS 8,626,344 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,626,344

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.