- General Electric Co. v. University Of Virginia Patent FoundationRehearing deniedPTAB · Sep 19, 2017 · IPR2016-00357 · APJ J John Lee · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving in place the final written decision holding all challenged claims unpatentable under § 102(b) and/or § 103(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. Id.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“The Final Written Decision acknowledged the disclosure in the ’182 Application of the objective of lengthening usable echo train durations while achieving desired image contrast characteristics. Final Dec. 22 (citing Ex. 1014, 4). We concluded this disclosure was similar to the disclosure of the key feature in Purdue Pharma. Id. (citing Purdue Pharma, 230 F.3d at 1327). UVAPF disputes that conclusion, arguing that the comparison with Purdue Pharma is not “meaningful,” because we purportedly overlooked the importance of lengthening the usable echo train duration while achieving comparable image contrast, and the relationship between this “primary objective” and the echo time ratio. Req. Reh’g 8–9. The Final Written Decision, however, specifically considered this “primary objective” described in the ’182 Application—including both the echo train duration and image contrast aspects. Final Dec. 22. We further concluded the alleged relationship between that key feature and the echo time ratio, which is not described in the ’182 Application, was insufficient to direct a skilled artisan to the recited echo time ratio limitations. Id. As we explained, the patent in Purdue Pharma similarly described a key feature and claimed a particular ratio related to that feature, but the court held the written description was inadequate because it failed to describe that ratio or ascribe any particular importance to that ratio. Id. at 20–22 (citing Purdue Pharma, 230 F.3d at 1326–28). The same is true of the claimed echo time ratio and the disclosure of the ’182 Application, which does not identify any such ratio much less describe its significance. Id. UVAPF has not identified any argument or evidence we have overlooked, nor has UVAPF shown our application of Purdue Pharma was erroneous.” slip op. at 5
- Strike new argumentNew argument consideredDecided for petitioner
“not have been considered because they were untimely. Req. Reh’g 9–11. GE did not cite the Purdue Pharma case until the Petitioner Reply. See Paper 27, 13–14. We disagree that GE’s arguments were untimely, however, because Purdue Pharma was cited to rebut arguments made by UVAPF in its Patent Owner Response. In the Patent Owner Response, UVAPF argued that a person of ordinary skill would have been able to derive the full range recited for the echo time ratio limitations based on an example provided in the ’182 Application. Paper 21, 55–58. GE argued in the Petitioner Reply that UVAPF’s position is precluded by Purdue Pharma, which held that whether a claimed ratio can be derived from the written description is immaterial if the disclosure does not describe the ratio or direct a person of ordinary skill to the ratio as a part of the invention. Paper 27, 13–14 (citing Purdue Pharma, 230 F.3d at 1328). Thus, Purdue Pharma was cited to respond directly to arguments made by UVAPF in its Patent Owner Response, and GE’s arguments based on Purdue Pharma were not untimely. In addition, UVAPF also contends GE untimely raised its arguments that the ’182 Application does not provide sufficient support for the “at least twice” aspect of the echo time ratio limitations. Req. Reh’g 11–13. To the contrary, GE argued in the Petition that the ’182 Application failed to adequately support the “at least twice” limitation. Pet. 11–12 (“[N]owhere does the ’182 application make a comparison of the [effective echo time] of a pulse sequence derived according to the disclosed method, much less delineate a range with a boundary of ‘at least twice’ that of any other echo time.”). Thus, GE’s arguments regarding the “at least twice” limitation were not untimely.” slip op. at 6
§ 112 disclosure - Facebook, Inc. v. Windy City Innovations, LLCRehearing deniedPTAB · Aug 14, 2017 · IPR2016-01155 · APJ David C Mckone · IPR · Rehearing
The Board denied Windy City’s rehearing request, finding its challenge to termination untimely and its objections to Facebook’s joinder unsupported or not previously raised.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION A party requesting rehearing bears the burden of showing the decision should be modified. See 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. See id. Windy City requests rehearing of two decisions, each of which it contends was an abuse of discretion. First, Windy City contends that our decision to terminate as to Microsoft, but not as to the entire proceeding, exceeded our statutory authority. Req. Reh’g 7–10. Second, Windy City contends we exceeded our statutory authority by joining Facebook to this proceeding despite that Facebook challenges only a portion of the claims originally challenged by Microsoft. Id. at 10–13. As explained below, neither contention is supported by the relevant authorities, and the Request for Rehearing is denied.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedDecided for petitioner
“First, § 315(c) does not recite any limitations on the challenges presented by the party seeking joinder. To the contrary, § 315(c) states that “any person who properly files a petition under section 311” may be joined, requiring only that the petition “warrants the institution of an inter partes review.” The statute does not address the specifics of challenged claims, asserted grounds of unpatentability, evidence relied upon, etc. Rather, such considerations are left to the Director’s “discretion” (and, thus, the Board’s discretion by delegation). 35 U.S.C. § 315(c) (stating “the Director, in his or her discretion, may join”); 37 C.F.R. § 42.122. Thus, far from failing to provide authority or discretion (Req. Reh’g 11), § 315(c) expressly provides for such discretion.” slip op. at 9
- Strike new argumentNew argument disregardedDecided for petitioner
“motion was an abuse of discretion because 35 U.S.C. § 315(c) does not “provide authority or discretion to join a party to a portion of an inter partes review.” Req. Reh’g 10–11. Although it filed an Opposition to the Motion for Joinder, Windy City did not argue that joinder was improper or contrary to § 315(c) because Facebook only challenged a subset of the claims challenged by Microsoft. We could not misapprehend or overlook an argument that was never made. See 37 C.F.R. § 42.71(d). A request for rehearing cannot be used to advance new arguments not previously presented, and Windy City has waived this argument as a result. See, e.g., Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 5, 7–10 (PTAB Jan. 28, 2016) (Paper 9) (denying a request for rehearing because the arguments had not been previously made).” slip op. at 8
NonePatents in suitUS 8,694,657 - Facebook, Inc. v. Windy City Innovations, LLCRehearing deniedPTAB · Aug 14, 2017 · IPR2016-01067 · APJ J John Lee · IPR · Rehearing
The Board denied Windy City’s rehearing request, finding no legal error or abuse of discretion in terminating Microsoft alone and joining Facebook to the proceeding.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. Id. Windy City requests rehearing of two decisions, each of which it contends was an abuse of discretion. First, Windy City contends our decision to terminate as to Microsoft, but not as to the entire proceeding, exceeded our statutory authority. Req. Reh’g 6–9. Second, Windy City contends we exceeded our statutory authority by joining Facebook to this proceeding despite that Facebook challenges only a portion of the claims originally challenged by Microsoft. Id. at 9–12. As explained below, neither contention is supported by the relevant authorities, and the Request for Rehearing is denied.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedDecided for petitioner
“First, § 315(c) does not recite any limitations on the challenges presented by the party seeking joinder. To the contrary, § 315(c) states that “any person who properly files a petition under section 311” may be joined, requiring only that the petition “warrants the institution of an inter partes review.” The statute does not address the specifics of challenged claims, asserted grounds of unpatentability, evidence relied upon, etc. Rather, such considerations are left to the Director’s “discretion” (and, thus, the Board’s discretion by delegation). 35 U.S.C. § 315(c) (stating “the Director, in his or her discretion, may join”); 37 C.F.R. § 42.122. Thus, far from failing to provide authority or discretion (Req. Reh’g 10), § 315(c) expressly provides for such discretion.” slip op. at 9
- Strike new argumentNew argument disregardedDecided for petitioner
“Joinder of Facebook Windy City contends our decision granting Facebook’s joinder motion was an abuse of discretion because 35 U.S.C. § 315(c) does not “provide authority or discretion to join a party to a portion of an inter partes review.” Req. Reh’g 10. As noted above, however, Windy City did not oppose Facebook’s joinder motion. Despite having an opportunity to file an opposition, Windy City did not do so, nor did it otherwise present any arguments that granting joinder would be improper under § 315(c). We could not have misapprehended or overlooked an argument that was never made. See 37 C.F.R. § 42.71(d). A request for rehearing cannot be used to advance new arguments not previously presented, and Windy City has waived this argument as a result. See, e.g., Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 5, 7–10 (PTAB Jan. 28, 2016) (Paper 9) (denying a request for rehearing because the arguments had not been previously made).” slip op. at 8
NonePatents in suitUS 8,407,356 - Facebook, Inc. v. Windy City Innovations, LLCRehearing deniedPTAB · Aug 14, 2017 · IPR2016-01141 · APJ J John Lee · IPR · Rehearing
The Board denied Windy City's rehearing request, holding that its termination and joinder decisions were consistent with governing law and that the rehearing arguments did not warrant modification.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. Id. Windy City requests rehearing of two decisions, each of which it contends was an abuse of discretion. First, Windy City contends our decision to terminate as to Microsoft, but not as to the entire proceeding, exceeded our statutory authority. Req. Reh’g 5–9. Second, Windy City contends we exceeded our statutory authority by joining Facebook to this proceeding despite that Facebook challenges only a portion of the claims originally challenged by Microsoft. Id. at 9–12. As explained below, neither contention is supported by the relevant authorities, and the Request for Rehearing is denied.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDecided for petitioner
“First, § 315(c) does not recite any limitations on the challenges presented by the party seeking joinder. To the contrary, § 315(c) states that “any person who properly files a petition under section 311” may be joined, requiring only that the petition “warrants the institution of an inter partes review.” The statute does not address the specifics of challenged claims, asserted grounds of unpatentability, evidence relied upon, etc. Rather, such considerations are left to the Director’s “discretion” (and, thus, the Board’s discretion by delegation). 35 U.S.C. § 315(c) (stating “the Director, in his or her discretion, may join”); 37 C.F.R. § 42.122. Thus, far from failing to provide authority or discretion (Req. Reh’g 9–10), § 315(c) expressly provides for such discretion.” slip op. at 9
NonePatents in suitUS 8,458,245 - PTAB · Apr 28, 2017 · IPR2015-01664 · APJ Justin Busch · IPR · Rehearing
The Board denied Ericsson’s rehearing request, leaving intact its final written decision that claims 8–12 and 18–22 were not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On rehearing, the burden of showing the Decision should be modified lies with the party challenging the Decision. 37 C.F.R. § 42.71(d). “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.” Id. For the reasons that follow, Petitioner’s Request is denied.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“Petitioner provided no details in its Reply regarding how “within the limits of” adds additional confusion, or why a construction including such language would be inappropriate. The Patent Owner Response demonstrated Patent Owner’s clear disagreement with Petitioner’s position that the proposed prior art combination teaches transmitting the entirety of a broadcast channel in an OFDMA core-band. Nevertheless, in its Reply, Petitioner provided neither an explanation of its understanding of the alleged plain meaning of the disputed limitation nor an explicit statement that transmitting only a portion of a broadcast channel in an OFDMA core-band would be sufficient to meet the disputed limitation. Accordingly, we did not misapprehend or overlook Petitioner’s generic argument for adopting an unspecified “plain meaning” of the disputed limitation. We evaluated all arguments and evidence submitted by both parties, and we determined that the proper construction of the disputed limitation precluded transmitting any portion of the recited broadcast channel outside the OFDMA core-band.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“As discussed in the Decision and above, we provided a preliminary construction of the plain meaning of the disputed term in our Institution Decision, Inst. Dec. 11, and Patent Owner contested that preliminary construction in its Patent Owner Response, see PO Resp. 14–16. Nevertheless, as explained above, Petitioner merely provided unsupported assertions that the plain and ordinary meaning of the disputed limitation should apply and argued Patent Owner’s proposed construction generated more confusion than clarity. See Pet. Reply 2, 3–5. Petitioner did not identify evidence to demonstrate the preliminary construction was correct. We are unable to find—and Petitioner does not cite—any portion of the Petition or Reply identifying the full bandwidth preamble to which Petitioner now refers, much less discussing its relevance to any issue. The panel questioned the parties extensively at the hearing regarding what it means to “transmit a broadcast channel in an” OFDMA core-band. See Tr. 10:4–21:4, 24:16–25:4. Petitioner never pointed to the now-cited disclosure in the specification, let alone argued that such a disclosure was relevant to the proper construction of the disputed limitation. Moreover, the technology is complex, and the record during trial lacks briefing from the parties or testimony from either party’s expert declarant on the portion of the specification now raised by Petitioner. We decline to consider Petitioner’s untimely argument presented for the first time in its Request for Rehearing.” slip op. at 6
Claim constructionPatents in suitUS 7,787,431 - Cpi Card Group Inc. v. Gemalto S.A.Rehearing deniedPTAB · Mar 14, 2017 · IPR2016-01092 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claims 6, 8–11, 15, and 16 over Griffin alone or with Matsumura.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Accordingly, we are not persuaded that we misapprehended or overlooked Petitioner’s arguments as to the construction of “means for decorrelating” under 35 U.S.C. § 112, ¶ 6, as it relates to the second and third structures. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Request for Rehearing is denied.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“The Board’s obligation at this stage is both well-defined and limited— to determine whether the Petition demonstrates “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). In the Institution Decision, we determined that the Petition did not meet that standard with respect to claims 6, 8–11, 15, or 16. Dec. 20–22. In requesting that we make specific findings with respect to its “alternative” claim-construction positions, Petitioner asks that we disregard unambiguous opinions of its own expert. Dr. Polish testifies that “a person of ordinary skill in the art would have also understood from the specification that this third structure that executes random secondary sequences does not perform the claimed function,” that the third structure “does not perform the function in a manner such ‘that the execution of the at least one instruction sequence is desynchronized with respect to the internal or external electrical signals,’” and that the specification “fails to disclose that the execution of the random secondary sequences causes the execution of any instructions ‘to be desynchronized with respect to the internal or external electrical signals.’” Ex. 1003 ¶ 56. We recognize that, like Petitioner, Dr. Polish addresses the possibility of a finding that “the ‘means for decorrelating’ includes this third structure for randomly executing secondary sequences.’” Id. ¶ 58–60. Nevertheless, after considering the full context of the arguments made in the Petition and the supporting testimony of Dr. Polish, we remain unpersuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges of claims 6, 8–11, 15, and 16 as unpatentable over Griffin alone or in combination with Matsumura.” slip op. at 5
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
- BurdenNot shown unpatentable
“The Board’s obligation at this stage is both well-defined and limited— to determine whether the Petition demonstrates “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). In the Institution Decision, we determined that the Petition did not meet that standard with respect to claims 6, 8–11, 15, or 16. Dec. 20–22. In requesting that we make specific findings with respect to its “alternative” claim-construction positions, Petitioner asks that we disregard unambiguous opinions of its own expert. Dr. Polish testifies that “a person of ordinary skill in the art would have also understood from the specification that this third structure that executes random secondary sequences does not perform the claimed function,” that the third structure “does not perform the function in a manner such ‘that the execution of the at least one instruction sequence is desynchronized with respect to the internal or external electrical signals,’” and that the specification “fails to disclose that the execution of the random secondary sequences causes the execution of any instructions ‘to be desynchronized with respect to the internal or external electrical signals.’” Ex. 1003 ¶ 56. We recognize that, like Petitioner, Dr. Polish addresses the possibility of a finding that “the ‘means for decorrelating’ includes this third structure for randomly executing secondary sequences.’” Id. ¶ 58–60. Nevertheless, after considering the full context of the arguments made in the Petition and the supporting testimony of Dr. Polish, we remain unpersuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges of claims 6, 8–11, 15, and 16 as unpatentable over Griffin alone or in combination with Matsumura.” slip op. at 5
Claim constructionPatents in suitUS 5,944,833 - Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.All claims unpatentablePTAB · Feb 7, 2017 · IPR2015-01657 · APJ William M Fink · IPR · Final written decision
Claims 1, 5–8, 19, 26, 27, and 31–36 are unpatentable as obvious over Schnuckle ’455 with Meeker or Physics Lab.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find these “definitions” to be substantially similar. For example, both require at least a mechanical engineering degree and experience varying between “some,” in Dr. Brown’s opinion, and “one to three years,” in Dr. Delson’s opinion. Given this apparent lack of disagreement, we adopt Dr. Delson’s statement of the level of ordinary skill for purposes of this Decision, but we note that our analysis would be the same under either formulation.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer foundDecided for petitioner
“By teaching that the “present description” solves the problems associated with the prior art candle devices because it is driven by “real but chaotic movements,” the patentee disclaims devices driven by rhythmic or metronomic patterns. Id. at 1354. Thus, the Federal Circuit started the paragraph by stating that the specification disclaimed non-chaotic pivoting, and then, after reviewing the ’166 patent specification evidence, concluded that this meant the patentee disclaims devices driven by rhythmic or metronomic patterns. We discern no suggestion by the Federal Circuit that it believed the disclaimer of chaotic pivoting to require more than not being driven by rhythmic or metronomic patterns such that Patent Owner’s mathematical definition of chaos is required.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Although unsupported, we have considered whether replacing the entire gimbal would destroy the principle of operation, and we find that it would not. As discussed above, replacing the two-axis gimbal in Figure 12 with Meeker’s support wire would eliminate one of the two axes of rotation. Thus, the replacement would involve trade-offs, but, in this case, the trade-offs would be similar to those already contemplated by Schnuckle ’455. See also In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016) (agreeing that a person of ordinary skill in the art would have been motivated to pursue the desirable qualities taught by one reference at the expense of foregoing the benefit taught by another reference). For example, at a high level, all embodiments of Schnuckle ’455, even the single-axis embodiment of Figure 7, are designed to provide a realistic flame effect. See Ex. 1003, 2:1–3 (“[R]otation of the at least one channel about at least one axis of the mount creates an artificial flickering flame on the flame shaped surface.”). Given these teachings, and Patent Owner’s failure to explain why Meeker’s structure would have undermined or destroyed the principle of operation of Schnuckle ’455, we do not find that the proposed combination would have destroyed Schnuckle ’455’s principle of operation. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). As to the rationale for combining, Schnuckle ’455 and Meeker, based on reducing the number of components and reducing the possibility of the wire support slipping off the ring, Patent Owner’s arguments are again based on keeping parts of the gimbal structure, which is not the proposal. See PO Resp. 24 (“If Schnuckle’s gimbal is kept even partially intact, modification of the gimbal would be even more costly and require the same number of parts. (Ex. 2010, Brown Decl. ¶¶ 99, 129.)”). Dr. Brown makes similar statements in his Declaration. See Ex. 2010 ¶¶ 99, 129. Petitioner’s cost and reliability rationales, based on replacing the entire gimbal, remain unrebutted. We find Petitioner’s reasons for combining Schnuckle ’455 and Meeker to be based on rational underpinnings. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Although unsupported, we have considered whether replacing the entire gimbal would destroy the principle of operation, and we find that it would not. As discussed above, replacing the two-axis gimbal in Figure 12 with Meeker’s support wire would eliminate one of the two axes of rotation. Thus, the replacement would involve trade-offs, but, in this case, the trade-offs would be similar to those already contemplated by Schnuckle ’455. See also In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016) (agreeing that a person of ordinary skill in the art would have been motivated to pursue the desirable qualities taught by one reference at the expense of foregoing the benefit taught by another reference). For example, at a high level, all embodiments of Schnuckle ’455, even the single-axis embodiment of Figure 7, are designed to provide a realistic flame effect. See Ex. 1003, 2:1–3 (“[R]otation of the at least one channel about at least one axis of the mount creates an artificial flickering flame on the flame shaped surface.”). Given these teachings, and Patent Owner’s failure to explain why Meeker’s structure would have undermined or destroyed the principle of operation of Schnuckle ’455, we do not find that the proposed combination would have destroyed Schnuckle ’455’s principle of operation. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). As to the rationale for combining, Schnuckle ’455 and Meeker, based on reducing the number of components and reducing the possibility of the wire support slipping off the ring, Patent Owner’s arguments are again based on keeping parts of the gimbal structure, which is not the proposal. See PO Resp. 24 (“If Schnuckle’s gimbal is kept even partially intact, modification of the gimbal would be even more costly and require the same number of parts. (Ex. 2010, Brown Decl. ¶¶ 99, 129.)”). Dr. Brown makes similar statements in his Declaration. See Ex. 2010 ¶¶ 99, 129. Petitioner’s cost and reliability rationales, based on replacing the entire gimbal, remain unrebutted. We find Petitioner’s reasons for combining Schnuckle ’455 and Meeker to be based on rational underpinnings. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” slip op. at 28
Patent outcomesUS 8,534,869 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,534,869 - Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.All claims unpatentablePTAB · Feb 6, 2017 · IPR2015-01656 · APJ William M Fink · IPR · Final written decision
Claims 1 and 5 are anticipated by Schnuckle ’455, and claims 1–5 are unpatentable as obvious over Schnuckle ’455.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“30, 2013) (Paper 26) (precedential as to Section III.A) squarely address Patent Owner’s argument. In LG, the Board determined that a proceeding was time-barred even though the prior case (in which a complaint was served more than one year prior to the Petition) was dismissed with prejudice in part and without prejudice in part. Id. at 6. Because even a partial dismissal with prejudice did not leave the parties in the position that they would have been in had the prior complaint never been brought, the Board found the exception to § 315(b) for prior complaints dismissed without prejudice did not apply. Id. In Oracle, by contrast, the facts are similar to those alleged here. Specifically, a petitioner was served with a complaint alleging infringement of the challenged patent more than one year before the petition the proceeding was filed. Id. at 15. That suit was dismissed without prejudice. Id. at 16–17. Applying the Federal Circuit decisions in Graves and Bonneville, the Board determined that “the dismissal of the infringement suit . . . nullifies the effect of the service of the complaint and, as a consequence, does not bar [Petitioner] or any of the other Petitioners from pursuing an inter partes review.” Id. at 17. As with Oracle, Patent Owner here concedes the 2012 case was dismissed without prejudice and does not allege any circumstances that would tend to show the parties are not in the position they were in had the complaint never been served. Accordingly, we find Oracle is controlling under the circumstances alleged in this proceeding.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find these “definitions” to be substantially similar. For example, both require at least a mechanical engineering degree and experience varying between “some,” in Dr. Brown’s opinion, and “one to three years,” in Dr. Delson’s opinion. Given this apparent lack of disagreement, we adopt Dr. Delson’s statement of the level of ordinary skill for purposes of this Decision, but we note that our analysis would be the same under either formulation.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“based interpretation of the disclaimer addressed by the Federal Circuit, we also consider whether Patent Owner’s construction of “pivotally mounted” (i.e., requiring three, independent, non-linear types of motions that must not be controlled or modulated) is appropriate. See PO Resp. 12–13. We conclude it is not. Though preliminary, the Federal Circuit specifically rejected this reading both before and after determining that non-chaotic pivoting is disclaimed. Luminara, 814 F.3d at 1352–53 (rejecting the district court’s construction that “free to pivot” requires “movement that is more than rotation around two axes”; “Pivoting includes rotation around a single axis.”), 1354 (finding that “[t]he [Schnuckle] ’455 patent undisputedly teaches pivoting in two axes” and the “final limitation in claim 1 of the ’166 patent—chaotic movement—seems to be met . . . in the prior art [Schnuckle] ’455 patent.”). We agree with the Federal Circuit’s analysis, because it is consistent with the intrinsic evidence. Conversely, Patent Owner’s proposed construction contradicts the intrinsic evidence in other respects. For example, claim 17 has a limitation directed to both pivoting (i.e. “allowing the pendulum to pivot about the hole on the support wire”) and “chaotic motion at the coupling member in at least two dimensions.” Ex. 1001, 23:28–30 (emphasis added). By requiring chaotic motion in at least two dimensions (as on a single-axis), the claims suggest chaotic motion nominally includes motion in even one dimension, as in up or down or side to side. On the other hand, interpreting the specification disclaimer of “chaotic pivoting” for purposes of claim 1 to require three, independent nonlinear types of motion, as Patent Owner argues, would lead to the incompatible result that claim 17, which requires movement in only two dimensions, would cover devices that are disclaimed by the specification.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“consider whether Schnuckle ’455 sufficiently discloses the pivotally mounted limitation given the disclaimer of non-chaotic pivoting and devices driven by rhythmic and metronomic patterns. As noted above, the Federal Circuit specifically determined, at least as a preliminary matter, that Schnuckle ’455 seemed to meet this claim requirement with its discussion of a two-axis gimbal articulated by “chaotic forces” that can articulate the flame element to “randomly simulat[e] blowing in the wind. ’455 patent, col. 6, ll. 53–62.” Luminara, 814 F.3d at 1354. We agree with the Federal Circuit’s preliminary determination. Petitioner, relying on Dr. Delson’s testimony, also states the disclosure of driving with “natural and chaotic forces” “simulating blowing in the wind” is not a “rhythmic or metronomic” driving force in accordance with the disclaimer. Pet. Reply 20 (citing Ex. 1019 ¶¶ 19–27). Petitioner cites the discussion of “programmable movement patterns” as additional evidence of this fact. Id. (citing Ex. 1003, 5:52–67 (“The desired movement pattern of the flame shaped surface 326 may be encoded and stored in the memory module 408 of the control board 302 in the form of digital data or control signals.”); Ex. 1019 ¶¶ 25–26 (explaining that exciting electromagnets according to digital data can produce chaotic motion)). Patent Owner interprets this excerpt differently, arguing that because “the movement pattern of the flame shaped surface 326 may be encoded and stored in the memory module 408 of the control board 302 in the form of digital data or control signals,” Schnuckle ’455 admits the gimbal of Figure 7 does not move naturally. PO Resp. 21 (quoting Ex. 1003, 5:53–56; Ex. 2010 ¶ 141). We disagree. Nothing in the column 5 excerpt of Schnuckle ’455 suggests memory is programmed with rhythmic or metronomic patterns. Rather, column 5 explains how the electromagnets 316 are excited according to the data programmed into the memory module. See Ex. 1003, 5:54–63. This column 5 description is informed by column 6’s explanation that magnetism articulates the light pipe (i.e., pendulum) with a “natural and chaotic external . . . force (such as . . . magnetism)” resulting in “simulating blowing in the wind.” See id. at 6:56–63. From these descriptions, the programmed pattern is not rhythmic or metronomic, but is natural and chaotic. We, therefore, find the column 5 description consistent with the column 6 description relied upon by the Federal Circuit (Ex. 1003, 6:53–62).5 This is consistent with Dr. Delson’s testimony (Ex. 1002 ¶¶ 57–58; Ex. 1019 ¶ 26), which we credit. Accordingly, we find Schnuckle ’455 discloses chaotic pivoting.” slip op. at 24
Patent outcomesUS 8,070,319 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,070,319 - Oracle America, Inc. v. Realtime Data LLCInstitution deniedPTAB · Jul 1, 2016 · IPR2016-00375 · APJ J John Lee · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 4, 10-12, and 18-20 were obvious over Kawashima and Sebastian.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Its challenge to the remaining claims also fails because each claim is dependent on claim 1. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms. Techs., LLC, Case IPR2015-00017, 2015 WL 1777146, at *8 (PTAB Apr. 8, 2015).” slip op. at 12
- BurdenDenied
“In sum, Petitioner does not explain adequately how Kawashima and Sebastian teach an individual memory device that meets the limitations of claim 1. To the extent Petitioner intended to allege that multiple structures in Kawashima together teach these limitations, the Petition does not explain such an allegation clearly, nor does it explain how or why a person of ordinary skill would have combined those different elements—some from different embodiments of Kawashima—to arrive at the recited memory device and its claimed characteristics. See Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (holding that two embodiments in a single reference could be combined to render a claim obvious where an ordinary artisan would have been motivated to combine them). As discussed above, each limitation of claim 1 that recites a “memory device” refers to the same memory device, and it is unclear how the multiple different memory devices from different embodiments in Kawashima relied on by Petitioner teach the “memory device” of claim 1. Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Its challenge to the remaining claims also fails because each claim is dependent on claim 1. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms. Techs., LLC, Case IPR2015-00017, 2015 WL 1777146, at *8 (PTAB Apr. 8, 2015).” slip op. at 11
Nonecites KSR · GrahamPatents in suitUS 7,415,530 - Oracle America, Inc. v. Realtime Data LLCInstitution deniedPTAB · Jul 1, 2016 · IPR2016-00377 · APJ Jason J Chung · IPR · Institution
The Board denied institution on claims 1, 2, 4–6, 9, 11, 21, 22, 24, and 25 because the petition did not adequately show the same memory device met claim 1’s limitations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms.” slip op. at 14
- BurdenDenied
“Petitioner, therefore, fails to explain how Kawashima and Sebastian teach an individual memory device that meets the limitations of claim 1. To the extent Petitioner intended to allege that multiple structures in Kawashima together teach these limitations, the Petition does not explain such an allegation clearly, nor does it explain how or why a person of ordinary skill would have combined those different elements—some from different embodiments of Kawashima—to arrive at the recited memory device and its claimed characteristics. See Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (holding that two embodiments in a single reference could be combined to render a claim obvious where an ordinary artisan would have been motivated to combine them). Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner, therefore, fails to explain how Kawashima and Sebastian teach an individual memory device that meets the limitations of claim 1. To the extent Petitioner intended to allege that multiple structures in Kawashima together teach these limitations, the Petition does not explain such an allegation clearly, nor does it explain how or why a person of ordinary skill would have combined those different elements—some from different embodiments of Kawashima—to arrive at the recited memory device and its claimed characteristics. See Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (holding that two embodiments in a single reference could be combined to render a claim obvious where an ordinary artisan would have been motivated to combine them).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We decline to adopt Petitioner’s proposed claim construction, at least because Petitioner’s proposed claim construction omits the claimed “memory device” and its relationship to the faster storage limitation. See Prelim. Resp. 13. As noted by Patent Owner, “a claim should be constructed so that each word in the claim has meaning.” Id., citing Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) and In re Wilson, 424 F.2d 1382, 1385 (C.C.P.A.1970). Accordingly, no claim terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,116,908
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.