- Amerigen Pharmaceuticals Limited v. Shire LLCRehearing deniedPTAB · Dec 28, 2016 · IPR2015-02009 · APJ Toni R Scheiner · IPR · Rehearing
The Board denied Amerigen’s rehearing request, leaving claims 1–3, 5, 8, 9, and 11 uninstituted because Mehta did not disclose the claimed release limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Amerigen’s arguments with these principles in mind.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“These arguments are not persuasive. First, Petitioner cites no authority for the proposition that a generic disclosure, such as that discussed above, is an express disclosure of every possible permutation of that generic disclosure. Second, even if we were to accept, for the sake of argument, that Mehta’s combined disclosures constitute an express disclosure of a composition capable of delayed release of “essentially all [of the drug] . . . within about 60 minutes,” non-instituted claims 1–3, 5, 8, 9, and 11 further require that the delayed release is enteric (i.e., the composition releases the second dose of the drug in the intestines, not the stomach). As we noted in the Decision, however, Mehta does not use the word “enteric,” nor does Mehta discuss delivery of the delayed dose to the intestines. Dec. 28. Nevertheless, we considered the possibility that Mehta might inherently disclose a composition that releases into the intestine not less than 80% of the second dose of the drug within about 60 minutes of the delayed release. Accordingly, we turned to Mehta’s Examples 1–5, but determined that not one of the exemplified delayed release compositions achieved a release of “essentially all” of the drug from a delayed release coating within about 60 minutes—regardless of whether the delay was long enough to be considered enteric.3 Id. at 24. As we noted in the Decision,” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“This argument is not persuasive. We considered, for example, Dr. Elder’s testimony that one of ordinary skill in the art would expect “that the number of variables and number of experimental runs to optimize the coating for the amphetamine would present no unusual problems of technology or expense” because one “can use statistical experimental design to optimize a formulation within the 21 trials that Mehta discloses to design one for amphetamine salts” (Ex. 1005 ¶ 471), as well as Dr. Elder’s testimony that one would expect “that routine optimization of the coating using the parameters identified by Mehta would provide enough guidance for controlling the release timing” (id. ¶ 512). Nevertheless, we found the actual results reported by Mehta to be more compelling. As we stated in the Decision: [N]one of Mehta’s delayed release formulations that could be considered to be enteric by virtue of their delay periods (i.e., those with delays of 4 or 5 hours) had release rates of “essentially all” of the drug anywhere near the required time period. Even if Mehta could be read to suggest that a delay of 4 or 5 hours followed by a release of essentially all of the delayed dose within 60 minutes would be desirable, we are not persuaded that Mehta’s disclosure that “the amount of drug released is influenced by: amount of coating, ratio of the two 4 Amerigen supported its challenges with the Declaration of Edmund J. Elder, Jr., Ph.D., R.Ph., executed September 30, 2015 (“Elder Declaration”) (Ex. 1005). polymers, amount of talc, and curing time” is adequate guidance for one of ordinary skill in the art to achieve such a dosage form. In general, Mehta demonstrates that longer delays are accompanied by longer release times, with formulations that could be considered to provide enteric release (i.e., a release after a 4 or 5 hour [delay]) having 85% release times of 8 or more hours. Dec. 33–34 (citing Ex. 1003, Table 1).” slip op. at 8
§ 102 anticipation§ 103 obviousness - Amerigen Pharmaceuticals Limited v. Shire LLCRehearing deniedPTAB · Dec 28, 2016 · IPR2015-02009 · APJ Toni R Scheiner · IPR · Rehearing
The Board denied Shire’s rehearing request and confirmed claim 25 is in the trial only through its dependency from claims 18–20, not claims 2 or 13.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We are not persuaded and decline to alter the Order concluding the Decision of April 19, 2016 in any way. Claim 25 would fall should Petitioner prevail in its obviousness challenge—so long as claim 25’s dependency from claims 18–20 remains. However, we take this opportunity to confirm that claim 25 is part of the trial only to the extent it depends from claims 18–20, and not to the extent it depends from non-instituted claims 2 and 13.” slip op. at 4
None - RPX Corporation v. Applications In Internet Time, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01751 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 1, 3–8, and 10–40 are held unpatentable as anticipated by Popp or Kovacevic, or obvious over the combinations stated in the decision.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“In our Institution Decisions, we determined that Salesforce had not been shown to be a real party-in-interest in these proceedings. See 1751 Inst. Dec. 8–16; 1752 Inst. Dec. 8–16. In its Patent Owner Response, Patent Owner argues: In its decision instituting these . . . trials, the Board stated that there was insufficient evidence to find that the real party in interest is Salesforce.com, Inc. Patent Owner disagrees with the Board’s view of the law and the facts, and in particular believes that the Board misconstrued the law. As explained previously, the AIA was intended to prevent defendants from getting “a second bite at the apple.” Yet, the Board is doing just that by allowing Petitioner to act indirectly for Salesforce. In its decision, the Board set an improperly high burden of proof for the patent owner, and also improperly shifted the burden of proof to the patent owner. As explained in Patent Owner’s Preliminary Response, Salesforce is the real party in interest and Petitioner is acting as its proxy. Because Salesforce is time limited, so is Petitioner and patentability should be confirmed on this basis. PO Resp. 8. To the extent Patent Owner is attempting to incorporate arguments made in the Preliminary Response into the Patent Owner Response, such incorporation is improper under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, Patent Owner has neither presented any new evidence into the record, beyond the evidence we considered previously in rendering our Institution Decisions, nor cited any legal authority to support its positions set forth above. Based on the complete record now before us, we see no reason to change our previous determination, and we are not persuaded that Salesforce should have been identified as a real party-in-interest in these proceedings.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“timeframe of the December 1998 priority date of the ’482 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” 1751 Pet. 6 (citing Ex. 1002 ¶ 10); 1752 Pet. 6 (citing the same evidence). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.12 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects 12 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact). the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“a term of art. PO Resp. 14; see Ex. 1058, 44:19–45:4, 83:13, 95:16–20. Petitioner agrees. 1751 Pet. 10; 1752 Pet. 10; 1751 Pet. Reply 9; 1752 Pet. Reply 8. We agree with Petitioner that the Specification of the ’482 patent “nowhere refers to changes ‘that arise from changes external to the application,’ and does not limit ‘changes’ in any way” and “[t]here is no disclaimer in the ’482 patent that limits the meaning of ‘changes’ in the manner [Patent Owner] alleges.” 1751 Pet. Reply 6; see 1752 Pet. Reply 5; Ex. 1062 ¶¶ 4–5. While Patent Owner points to several portions of the Specification of the ’482 patent in support of its argument that the claimed changes should be limited to those external to the application and those that impact how the application program operates, we are not persuaded that the discussion in the Specification rises to the level of “reasonable clarity, deliberateness, and precision” necessary to provide a special definition for the claim term. See In re Paulsen, 30 F.3d at 1480. In fact, as noted by Petitioner, the “specification also describes an embodiment in which intelligent agents pursue ‘internal’ as well as ‘external Web activities.’” 1751 Pet. Reply 12 (citing Ex. 1001, 19:66–67); see 1752 Pet. Reply 11 (citing the same evidence). Further, the Specification describes the detected changes, more generally, throughout as changes that may affect operation of a user’s business, rather than as changes that affect operation of the application program. See, e.g., Ex. 1001, Abstract (“The system . . . receives information on regulatory and non-regulatory changes that affect operations of the business.”), 9:34–38 (“[C]hange management layer 11 . . . includes one or more change agents that ‘cruise the Web’ and identify and bring to the user’s attention relevant regulatory and non-regulatory changes found on the Web that may affect a user’s business.”), 22:33–39 (“The system . . . does not require that every employee [of a business] become a programmer in order to continue to respond to regulatory and/or technological and/or social changes affecting business operations and/or information management requirements.”); see also Ex. 1062 ¶ 5 (Dr. Crovella testifying that a person of ordinary skill “would have understood that changes can affect an application without impacting how the application ‘should’ operate, and those types of changes are also included in the plain and ordinary meaning of ‘changes that affect an application,’ [such as] a change to the processing resources available to an application could affect the application (e.g., by causing it to run faster or slower) without impacting how the application ‘should’ operate (e.g., without altering any of the steps that the application attempts to perform)”). Based on the evidence in this record, we determine that the plain meaning of the phrase “change management layer for automatically detecting changes that affect an application” is consistent with the Specification. We are not persuaded that the recited “change management layer for automatically detecting changes that affect an application” is limited to detecting changes external to the application, or that any such changes must impact how the application program should operate, as proposed by Patent Owner. No further express construction of the claim phrase is necessary.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
Patent outcomesUS 7,356,482 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,356,482 - RPX Corporation v. Applications In Internet Time, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01750 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 13–18 are unpatentable as anticipated by Popp and Kovacevic and obvious over Balderrama and Java Complete.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“In our Institution Decision, we determined that Salesforce had not been shown to be a real party-in-interest in these proceedings. See Inst. Dec. 7–15. In its Patent Owner Response, Patent Owner argues: In its decision instituting [this trial], the Board stated that there was insufficient evidence to find that the real party in interest is Salesforce.com, Inc. Patent Owner disagrees with the Board’s view of the law and the facts, and in particular believes that the Board misconstrued the law. As explained previously, the AIA was intended to prevent defendants from getting “a second bite at the apple.” Yet, the Board is doing just that by allowing Petitioner to act indirectly for Salesforce. In its decision, the Board set an improperly high burden of proof for the patent owner, and also improperly shifted the burden of proof to the patent owner. As explained in Patent Owner’s Preliminary Response, Salesforce is the real party in interest and Petitioner is acting as its proxy. Because Salesforce is time limited, so is Petitioner and patentability should be confirmed on this basis. PO Resp. 8. To the extent Patent Owner is attempting to incorporate arguments made in the Preliminary Response into the Patent Owner Response, such incorporation is improper under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, Patent Owner has neither presented any new evidence into the record, beyond the evidence we considered previously in rendering our Institution Decisions, nor cited any legal authority to support its positions set forth above. Based on the complete record now before us, we see no reason to change our previous determination, and we are not persuaded that Salesforce should have been identified as a real party-in-interest in this proceeding.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a “person of ordinary skill in the art in the timeframe of the December 1998 priority date of the ’111 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” Pet. 5–6 (citing Ex. 1002 ¶ 10). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.8 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed 8 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact).” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“timeframe of the December 1998 priority date of the ’111 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” Pet. 5–6 (citing Ex. 1002 ¶ 10). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.8 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed 8 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that the Specification of the ’111 patent “nowhere refers to changes ‘that arise from changes external to the application,’ and does not limit ‘changes’ in any way” and “[t]here is no disclaimer in the ’111 patent that limits the meaning of ‘changes’ in the manner [Patent Owner] alleges.” Pet. Reply 9; see Ex. 1062 ¶¶ 4–5. While Patent Owner points to several portions of the Specification of the ’482 patent11 in support of its argument that the claimed changes should be limited to those external to the application, we are not persuaded that the discussion in the Specification rises to the level of “reasonable clarity, deliberateness, and precision” necessary to provide a special definition for the claim term. See In re Paulsen, 30 F.3d at 1480. In fact, as noted by Petitioner, the “specification also describes an embodiment in which intelligent agents pursue ‘internal’ as well as ‘external Web activities.’” Pet. Reply 12 (citing Ex. 1001, 19:66–67). Based on the evidence in this record, we determine that the plain meaning of the phrase “fourth portion of the server being configured to automatically detect changes that affect the information in the first portion of the server or the information in the second portion of the server” is consistent with the Specification. We are not persuaded that the recited function of “automatically detect[ing] changes” is limited to detecting changes external to the application, as proposed by Patent Owner. No further express construction of the claim phrase is necessary.” slip op. at 13
Patent outcomesUS 8,484,111 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,484,111 - Microsoft Corporation And Microsoft Mobile, Inc. v. Global Touch Solutions, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01928 · APJ Justin Busch · IPR · Final written decision
Claims 1, 3, and 20 are unpatentable as obvious over Jahagirdar and Schultz because their combination would have been a predictable substitution of familiar touch sensors for keys.
RulingsFinal written decision- BurdenUnpatentable
“III. CONCLUSION Based on the evidence and arguments, Petitioner has demonstrated, by a preponderance of the evidence, that claims 1, 3, and 20 of the ’494 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Jahagirdar and Schultz. IV. ORDER Accordingly, it is: ORDERED that claims 1, 3, and 20 of the ’494 patent have been shown to be unpatentable; and” slip op. at 19
- Skill levelOther
“touch sensors were not limited by size or arrangement, and a person of ordinary skill could have taken the Schultz sensors and put them into touch sensors the size of the buttons on Jahagirdar. Ex. 1017, 138:17–21, 140:2– 13. Additionally, as Dr. Morley acknowledges, the claims of the ’494 patent contain no limitations as to the physical form, internal architecture, or arrangement of the touch sensors. Id. at 172:12–173:10. Patent Owner presents no argument that the proposed combination would have been beyond the capabilities or knowledge of a person having ordinary skill in the art. As the Supreme Court has stated, “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (internal quotation marks omitted). “If a person of ordinary skill can implement a predictable variation . . . § 103 likely bars its patentability.” Id. As illustrated by Schultz, the use of a touch sensor as an alternative to a mechanical push button was well known in the prior art. See Ex. 1005; Ex. 1015 ¶¶ 40–43. We agree that the combination of Jahagirdar and Schultz teaches the elements of claim 1 as arranged, and we determine the proposed combination would have been obvious, because it merely involves substitution of familiar elements, the combination of which yields predictable results. See KSR, 550 U.S. at 417. In particular, we agree that the proposed combination is the simple substitution or modification of Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As the Supreme Court has stated, “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (internal quotation marks omitted). “If a person of ordinary skill can implement a predictable variation . . . § 103 likely bars its patentability.” Id. As illustrated by Schultz, the use of a touch sensor as an alternative to a mechanical push button was well known in the prior art. See Ex. 1005; Ex. 1015 ¶¶ 40–43. We agree that the combination of Jahagirdar and Schultz teaches the elements of claim 1 as arranged, and we determine the proposed combination would have been obvious, because it merely involves substitution of familiar elements, the combination of which yields predictable results. See KSR, 550 U.S. at 417. In particular, we agree that the proposed combination is the simple substitution or modification of Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results.”). Patent Owner does not point us to objective evidence of nonobviousness to overcome the textbook case of obviousness here.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Notwithstanding Patent Owner’s position that the proposed combination would increase accidental actuations when grabbing or holding Jahagirdar’s mobile station, Petitioner points to Dr. Morley’s testimony that touch sensors would alleviate accidental actuation by inanimate objects (e.g., “clothes, objects in a bag, [and] surfaces of furniture”). Pet. Reply 2 (citing Ex. 1017, 157:20–158:23; Ex. 2006 ¶ 63). Accordingly, Petitioner argues a person having ordinary skill in the art looking to reduce inadvertent actuation by inanimate objects would be motivated to incorporate Schultz’s touch sensor. Id. at 2–3 (citing Ex. 1023 ¶¶ 4–5). Moreover, Petitioner’s unrebutted evidence in the record demonstrates Schultz’s touch sensor could have been integrated into Jahagirdar’s keys 144 in multiple ways, depending upon what might have been convenient or desirable. Id. at 3–4 (citing Ex. 1015 ¶ 75); Ex. 1023 ¶ 5. For example, a person of ordinary skill would have been readily able to relocate those touch sensors to different locations, or “one of skill could have easily programmed Jahagirdar’s controller such that touch sensor inputs were only recognized at appropriate times for example, depending on whether the mobile station 102 was opened or closed.” Ex. 1015 ¶ 75. In such a way, inadvertent actuation of the touch sensors would be minimized or eliminated.” slip op. at 13
Patent outcomesUS 7,265,494 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,265,494 - Toshiba America Information Systems, Inc. / Apple Inc. v. Global Touch Solutions, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01616 · APJ Justin Busch · IPR · Final written decision
Claims 1–3, 19, and 20 are unpatentable as obvious over Layman and Beard, with Rathmann additionally for claim 19 and APA additionally for claim 20.
RulingsFinal written decision- BurdenDecided for petitioner
“We have reviewed the Petition, Patent Owner Response, and Petitioner’s Reply, as well as the relevant evidence discussed therein. For the reasons that follow, we determine Petitioner has shown, by a preponderance of the evidence, that the challenged claims would have been obvious in view of the asserted combined teachings of the asserted references.” slip op. at 5
- Skill levelOther
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We agree with Petitioner’s arguments, as supported by testimony from Mr. Beard, that the combination of Layman and Beard teaches or suggests the uncontested limitations recited in claim 1 as well as the additional limitations recited in dependent claims 2 and 3, and we adopt those assertions as our findings. See Pet. 35–43, 50–51. For example, Petitioner points to Layman’s power management system 28 (electronic unit) connected to an infusion pump system (product), including pump circuits 34 (load), and to power sources (both an AC power source and a battery) through an electrical circuit as meeting the preamble of claim 1. Id. at 35– 37. Petitioner argues Layman’s disclosure of processor 42 providing a control signal to turn power to pump circuits 34 on or off in response to a signal received from switch 38 meets the recited microchip that controls “the flow of power from the power source to activate the load.” Id. at 38. Petitioner contends Layman’s switch 38 is not a serial element in the power circuit because switch 38 merely sends a signal to processor 42, which controls whether the pump is powered on, and that switch 38, therefore, teaches the recited switch. Id. at 38–39. Petitioner relies on Beard for teaching a touch sensor used to activate the battery capacity display. Id. at 39–40. We find the disclosures in Rathmann and APA relied upon by Petitioner teach or suggest the additional limitations recited in claims 19 and 20, respectively, id. at 52–55, and that a person having ordinary skill in the art would have had reason to combine Rathmann’s asserted teachings as proposed, id. at 30–34. We discuss the disputed limitations of independent claim 1 and the rationale for combining the asserted teachings from Layman and Beard in more detail below.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“All of Patent Owner’s challenges to Petitioner’s rationale assume the proposed combination replaces Layman’s battery with the battery disclosed in Beard. See, e.g., PO Resp. 8 (“While the Petition suggests replacing Layman’s battery with that of Beard would be desirable . . . .”) Petitioner does not suggest such a replacement. Rather, Petitioner asserts “[a] POSITA would have been especially motivated to combine Layman with Beard’s power-saving touch switch activated display in light of Layman’s stated desire for features that extend battery life and increase the time between battery replacements.” Pet. 28 (emphasis added). Petitioner reiterated its position, asserting that Patent Owner’s arguments do “not address Petitioner’s motivation arguments,” which are no “more than an obvious substitution of elements that were well known in the prior art.” Pet. Reply 2. Petitioner merely proposes incorporating Beard’s teaching of a touch switch activated display into Layman’s system. Pet. Reply 7 (arguing “the Petition analyzed whether one of ordinary skill would have found it obvious to incorporate a touch-sensor activated display such as in Beard into Layman’s system”). As discussed above, Petitioner has presented reasons with rational underpinning as to why a person having ordinary skill in the art would look to integrate Beard’s touch sensor activated display with Layman. We find Petitioner’s arguments persuasive, and we adopt those reasons as the rationale for combining the cited teachings of Beard with the cited teachings of Layman.” slip op. at 12
Patent outcomesUS 7,265,494 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,265,494 - PTAB · Dec 28, 2016 · IPR2015-01037 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing in both proceedings because Petitioner did not show that Su was publicly accessible by the critical date or that the Board overlooked or misapprehended a petition argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner fails to recognize that our Decision was based on Petitioner’s failure to present sufficient evidence of public accessibility. Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“The sole evidence cited in the Petition is a print-out of a record created in 2008 by Theses Canada. Ex. 1013 (“TH-Su”). As we noted in our Decision Denying Institution, TH-Su includes an active PDF link to Su, identifies Su as resident on two microfiches, indicates the publisher is the Ottawa: National Library of Canada [1999], and includes an abstract. Dec. Denying Inst. 7. TH-Su also includes an AMICUS No. (20672380)1, an international standard book number (ISBN 0612312569), a Canadian Number (992099080) and the following information “Copies: NL Stacks – Mic. TJ- 31256.” Id. at 7-8. However, TH-Su is a document created and modified on July 18, 2008, not in 1999. Id. at 7–8. Petitioner failed to tie 3 We agree with Petitioner’s assertion that it did not concede any of the argument set forth in Patent Owner’s Preliminary Response. Req. Reh’g. 6, fn 4. However, our inquiry during the conference of August 4, 2016 concerned facts and evidence. any of these numerical designations in TH-Su to public accessibility prior to 2008. Thus, Petitioner failed to meet its burden to demonstrate that Su was publically accessible in 1999.” slip op. at 4
§ 102 anticipationPatents in suitUS 8,122,141 - PTAB · Dec 28, 2016 · IPR2015-01033 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing of the institution denials because Petitioner did not show that Su was publicly accessible before the patents’ critical dates.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a 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 reply. Id. For the reasons discussed below, the Request for Rehearing is DENIED.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Petitioner’s failure to present sufficient evidence of public accessibility. Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).” slip op. at 3
§ 102 anticipationPatents in suitUS 8,327,011 - Adlens USA, Inc. / Adlens, Ltd. v. Superfocus Holdings LLC, Superfocus, LLC, Insolvency Services Group, Inc., And Dr. Stephen KurtinAll claims unpatentablePTAB · Dec 27, 2016 · IPR2015-01824 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1–5 are unpatentable as obvious under § 103 over Kurtin ’532 and Kurtin ’629 in view of Gordon and/or Cronin.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “manually adjustable” (claim 1) Patent Owner contends that this term should be construed to mean “capable of being manually adjusted by a wearer of the spectacles.” PO Resp. 7. Petitioner contends that Patent Owner’s proposed construction improperly incorporates an extraneous limitation—by a wearer—into the claims. Pet. Reply 6. We agree with Petitioner. Claim 1 of the ’797 Patent expressly recites “by a wearer” (Ex. 1002, 4:46), but there is no such limitation in either of claims 1 or 4 of the ’487 Patent. Patent Owner identifies various specification passages discussing adjustment by a wearer or user. PO Resp. 7–8. None of these passages amounts to an express definition or disclaimer requiring that “by a wearer” be read into the claims not reciting that phrase. Bigio, 381 F.3d at 1325 (“[T]his court counsels the PTO to avoid the temptation to limit broad claim terms solely on the basis of specification passages.”).” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“Our reviewing court instructs that “merely because an element does not include the word ‘means’ does not automatically prevent that element from being construed as a means-plus-function element.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) (quoting Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed.Cir.1996)). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. at 1350. We agree with Patent Owner that the term, “adjustable connector” (claims 1 and 4), should be construed as a means-plus-function term. The word “connector” is “tantamount to using the word ‘means’” because it is a generic description that does not connote a definite structure. Williamson, 792 F.3d at 1350. Dr. Savidis agrees that the term, “adjustable connector,” is a generic term that does not define a particular structure. Ex. 2003, 82:15–84:8. Accordingly, we construe this term in accordance with 35 U.S.C. § 112 ¶ 6.” slip op. at 9
- Skill levelSkill level board ownDecided for petitioner
“B. Person of Ordinary Skill in the Art We determine that a person of ordinary skill in the art would have an undergraduate degree in mechanical engineering or equivalent education and one to two years of experience with optics. Our determination is supported 3 The parties dispute whether the corresponding structure disclosed in the ’487 Patent Specification includes a flexure. PO Resp. 11 (citing Ex. 1001, 4:34–37); Pet. Reply 7 n.2. It is not necessary for us to resolve this dispute because a flexure is not relevant to any ground of unpatentability raised in the Petition. by the testimony of Dr. Plummer (Ex. 2002 ¶ 49), as well as the testimony of Dr. Savidis (Ex. 2003, 66:24–67:7, 67:16–20, 69:14–20). We also rely on Petitioner’s asserted references as establishing the level of skill in the art at the relevant time. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Based upon their stated qualifications, we consider both Dr. Savidis and Dr. Plummer qualified to opine from the viewpoint of a person of ordinary skill in the art regarding the subject matter of the ’487 Patent. Ex. 1002 ¶¶ 5–11, Appendix A (Savidis CV); Ex. 2002 ¶¶ 9–22, Attachment A (Plummer CV).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We find that a person of ordinary skill in the art would have had a reason or motivation to modify the spectacles of Kurtin ’532 to provide independent adjustability of each lens. Our finding is supported by the undisputed testimony of Dr. Savidis that “the desirability of having independently and manually adjustable, liquid filled, variable focus lenses was known in the art well prior to 2010.” Ex. 1003 ¶ 77. Our finding is further supported by Dr. Savidis’ testimony that both Gordon (Ex. 1007) and Cronin (Ex. 1006) describe adjustable, liquid filled, variable focus eyeglasses in which each eye’s lens can be manually adjustable independently of the other eye’s lens. Id. Dr. Savidis’ testimony (and our finding) is further supported by Gordon, which discloses that the focus of each lens can be independently adjusted by turning a screw. Ex. 1007, Figs. I–IV, 1:67–80, 1:87–100, 2:5– 22; see also Ex. 1011, 75:9–13 (Plummer agrees that Gordon’s screws are independently adjustable.). Dr. Savidis’ testimony (and our finding) is also supported by Cronin, which discloses left and right calibration screws for allowing independent adjustment of the focal length of the left and right lenses, respectively. Ex. 1006, 4:27–32, 5:16–22, 5:66–6:2, Figs. 2 and 4. We also rely on Cronin’s disclosure of the purpose and advantage of the independent adjustment feature: According to Cronin, it allows the focal lengths of the left and right lens assemblies to be matched or related to each other in a pre-determined manner to compensate for unusual visual disorders, thereby avoiding visual discomfort by focusing each of the user’s eyes at sensibly the same object distance. Id. at 5:9–16. The preponderance of the evidence establishes that one way suggested by the prior art to provide independent adjustability of each eye’s lens would have been to replace the non-adjustable connector (leaf hinge 23) of Kurtin ’532 with an adjustable connector, such as the nut, screw, and tab arrangement of Kurtin ’629. See PO Resp. 15 (describing Petitioner’s first proposed modification); Tr. 14:16–20 (Petitioner is relying on modifications 1 and 3.). Our finding is supported by Dr. Savidis’ testimony that, in order to have independent adjustability of each lens unit, a person of ordinary skill in the art would have been motivated to seek a suitable adjuster structure to replace the non-adjustable connector of Kurtin ’532. Ex. 1003 ¶ 77. Our finding is also supported by Dr. Savidis’ testimony that a person of ordinary skill in the art “would have exercised no more than routine skill in the art to implement this substitution by utilizing existing seal 21 of Kurtin ’532 shown in Figure 3 and by attaching tabs to or creating tabs for Kurtin’s ’532 front and rear rings to accommodate Kurtin’s ’629 screw and nut.” Id. ¶ 81. Our finding is further supported by Kurtin ’532 Figure 5, which shows leaf hinge 23 connecting the front and rear rings, and Kurtin ’532 Figure 3, which shows elastomeric bellows 21 allowing the rear ring to move with respect to the front ring. Ex. 1004 ¶¶ 32, 33, Figs. 3, 5. Our finding is further supported by Kurtin ’629, which discloses adjustable spectacles including nut 20, screw 21, and actuating tabs 19, where nut 20 can be turned by the wearer to adjust the optical power of the lenses. Ex. 1009, Abstract, Figs. 1–3, 3:50–4:9.” slip op. at 15
Patent outcomesUS 8,708,487 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,708,487 - Samsung Display Co., Ltd. / Funai Electric Co., Ltd. et al. v. Gold Charm Ltd.All claims unpatentablePTAB · Dec 27, 2016 · IPR2015-01416 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 2, and 4–10 are unpatentable as obvious over Fujii, Fujii and Nakamura, or Fujii and Tsutsui, as applicable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In essence, Patent Owner’s construction of the term “light shield area” as requiring an observable effect on the quantity of light leakage in order to improve the quality of the display to the user imports a term of degree into claims that recite this feature. “When a ‘word of degree’ is used [in a claim], . . . the patent [must provide] ‘some standard for measuring that degree.’” Enzo Biochem v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)). “The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). “When a claim term ‘depend[s] solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention,’ without sufficient guidance in the specification to provide objective direction to one of skill in the art, the term is indefinite.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014) (quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005)). The phrases “observable” and “quality to the user” are highly subjective and, on their face, provide little guidance to one of skill in the art. These phrases are not recited explicitly in the claims themselves. Patent Owner has not directed us to any disclosure in the written description, nor can we find such a disclosure, relevant to determining a standard for 11 measuring the necessary degree of observability or quality.3 Consequently, we decline to adopt Patent Owner’s construction of the term “light shield area” because it would inject unnecessary ambiguity into the claims that recite this feature. Instead, we maintain our initial determination that “light shield area” should be accorded its plain and ordinary meaning (i.e. area that shields light), which, in our view, is a broad, yet reasonable construction in light of the Specification and claims of the ’275 patent.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Patent Owner relies on Allergan for the proposition that Fujii’s criticism of blocking light means that it cannot be relied on as prior art in this case. PO Resp. 26 (citing Allergan, Inc. v. Sandoz Inc. 796 F.3d 1293, 1305-06 (Fed. Cir. 2015)). Patent Owner asserts that, “[i]n Allergan, the court found that the prior art criticized the claimed formulation [BAK] because the reference taught one of ordinary skill in the art to minimize the amount of a particular claimed element in order to avoid certain problems. PO Resp. 26 (citing Allergan, 796 F.3d at 1305–06.). However, Patent Owner does not explain that, in Allergan, “the prior art taught that BAK should be minimized in ophthalmic formulations to avoid safety problems.” Allergan, 796 F.3d at 1305. In Allergan, “the prior art [also] taught that BAK would not increase the permeability of bimatoprost, but might instead decrease it.” Id. at 1306. Thus, in Allergan, the prior art taught that the formulation at issue caused safety problems and caused the opposite effect than the one desired by the patent at issue. Here, in contrast, Fujii teaches that the metal auxiliary terminals will cause the exact effect desired (or intended result) in the ’275 patent, even though that same effect, i.e. blocking light, is disfavored by the Fujii inventors. In fact, Fujii suggests that the light blockage above the maximum width would block light and “darken[] the screen.” Ex. 1003, 16:11–32. This disclosure is Fujii is supported by the testimony of Dr. Chiang. Ex. 1008 ¶ 52 (testifying that chromium wiring materials disclosed in Fujii may be used as opaque light shield areas used to darken a screen). 15 Also relevant to Patent Owner’s argument presented here is its’ assertion in its claims construction argument that light shield areas must have an observable effect or “there would be no point in providing the light shield areas.” PO Resp. 20. Were we to accept that logic, then we would also apply the same logic here that there would be no point in reducing darkening in Fujii unless the darkening described was an observable effect. “A finding that two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another.” Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). While Fujii suggests limiting the width of the metal auxiliary electrodes to avoid darkening of the screen and maintaining a consistent gap between the top and bottom substrates, it also teaches one of ordinary skill that widening of the metal auxiliary electrodes shields light to the screen. See, e.g., Ex. 1003, 16:29–33 (disclosing that “[w]hen the width of the metal auxiliary electrode 56 is increased to further reduce the wiring resistance, the display opening factor of the liquid crystal device is reduced darkening the screen”). Finally, in our claim construction section above, we construed “light” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find that Fujii explicitly states that “the invention [of Fujii] can also be applied to an active matrix liquid crystal display,” and further states that the electrodes could be replaced by “scanning signal . . . or video signal lines.” Ex. 1003, 1:7–12, 12:54–67. As mentioned previously, Fujii states that the auxiliary electrodes may cause a darkening of the panel. Id. at 16:29–33. This is the same effect that the inventors of the ’275 patent were trying to achieve. Ex. 1001, 2:39–43. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. A person of ordinary skill is a person of ordinary creativity, not an automaton. Id. at 421. Thus, because Fujii explicitly contemplates that its teachings may be applied to an active matrix liquid crystal display, and Fujii shares a common objective with the inventors of the ’275 patent— namely, resolving uneven brightness or darkening of a panel—Fujii provides sufficient teachings such that one of ordinary skill in would implement the claimed light shield areas in an active matrix crystal display. Pet. 19; Pet. Reply 9. Patent Owner does not address separately Petitioner’s contentions and supporting evidence with respect to claims 2 and 4, which depend from claim 1. We have reviewed Petitioner’s proposed ground of obviousness by Fujii against claims 1, 2, and 4, and we agree with and adopt Petitioner’s 20 analysis. Based on the record developed during trial, Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 4 would have been obvious over Fujii.” slip op. at 20
- ExcludeMotion to exclude, deniedDenied
“III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude the ’163 patent introduced by Petitioner with its Reply as improper reply evidence and as irrelevant. Mot. to Exclude 1. Petitioner relies on the ’163 patent to support Dr. Watts’s purported admission that “in the embodiment of the ’275 patent where light shield areas are comprised of strips of light shield material (as shown in blue 27 coloration in Figure 6), the strips are on the order of 10–20 microns wide.” Pet. Reply 11 n.2. This issue is moot because this Final Written Decision does not cite to or rely upon the ’163 patent. In addition, we do not rely on any assertion by Petitioner that light shield material in the ’275 patent is on the order of 10–20 microns wide. For that reason, we do not address the matter on the merits and dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 27
Patent outcomesUS 5,850,275 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,850,275
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.