• Donner Technology, LLC v. Pro Stage Gear, LLCRehearing denied
  PTAB · Dec 9, 2019 · IPR2018-00707 · APJ John A Hudalla · IPR · Rehearing

  The Board denied the petitioner’s rehearing request, leaving claims 5, 7, 8, 18, 20, and 21 not shown unpatentable on the challenged obviousness grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. See 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “construction of the phrase ‘above the surface,’ then the Board’s construction cannot be reasonably discerned.” Req. Reh’g 8. If that were the case, Petitioner contends we “must articulate and explain [our] construction for the purposes of judicial review.” Id. at 9. Yet Petitioner failed to explain in the Petition how the cited references teach the “above the surface” limitations of claims 5 and 18 under any construction of these limitations, including the one implied in footnote 8 of the Petition. See Pet. 55 n.8, 69 n.10. Petitioner did not specify any dispute regarding the meaning of the term “the surface” and neither did Patent Owner. See, e.g., id. at 8–9 (no terms proposed by Petitioner for construction), 55 (Petitioner’s analysis for claim 18 referring to earlier analysis relative to the “effect mounting surface”); Paper 26, 34–41, 43 (no arguments in Patent Owner’s Response based on an interpretation of “the surface”); Paper 34, 16–17 (Petitioner in its Reply referring to arguments in the Petition for “above the surface”). As such, we did not expressly construe “above the surface.” See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). In addition, Petitioner purports to construe “above the surface” for the first time. See Req. Reh’g 2, 7 (stating that the plain and ordinary meaning of “above the surface” is “above the ground” or “above the area to provide spacing for cables to run underneath the frame”). Petitioner could have, but did not, put forth such constructions in its Petition. See 37 C.F.R. ordinary meaning of “above the surface” in the Request for Rehearing (see Req. Reh’g 7), Petitioner’s arguments come too late. And Petitioner never previously attempted to associate the recited “surface” with “the ground” or “the area to provide spacing for cables to run underneath the frame.” Contrary to Petitioner’s new constructions, and as explained above, Petitioner previously associated the recited “surface” with “the effect mounting surface.” See Pet. 55 n.8 (“the ’023 Patent provides no support for the frame in Claim 15 being supported above the effect mounting surface in Claim 18” (bold emphasis added)), 69 n.10 (referring to footnote 8).” slip op. at 5

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

    “of the “above the surface” limitation was framed by its statement in the Petition that claims 5 and 18 are invalid “under 35 U.S.C. § 112, second paragraph, because the ’023 Patent provides no support for the frame . . . being supported above the effect mounting surface.” Pet. 55 n.8 (italics in original; bolding emphasis added), 69 n.10 (referring to footnote 8); see also Final Dec. 51 n.12 (quoting same). Thus, Petitioner associated the “surface” in the recitation “above the surface” with the “effect mounting surface” recited in base claims 2 and 15. Despite this association, Petitioner’s obviousness analysis made no attempt to show that Arseneault’s higher backwall (i.e., the “frame base,” see Pet. 51–53, 55–56) supports SCC-700’s cross members A–D (i.e., the “frame,” see id. at 50) above the units board of SCC-700 (i.e., the “effects mounting surface,” see Pet. 46–47).1 Rather, Petitioner addressed only the “frame base supporting the frame” and “allowing the cable to pass beneath the frame” limitations of claims 5 and 18. See Pet. 54–55, 69–70. Thus, we determined that Petitioner’s analysis “d[id] not establish that Arseneault teaches ‘a frame base supporting the 1 As we acknowledged, Petitioner’s analysis for claim 18 builds upon its anticipation analysis for claim 15 and its analysis for the recited “frame” in claim 1. See Final Dec. 51–52.” slip op. at 3

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

    “3 We also considered Petitioner’s argument from its Reply that an ordinarily skilled artisan “could have easily made a rigid connection between the cross members and end-members using the same fasteners that are disclosed in Carter.” Final Dec. 72 (citing Paper 34, 24; Ex. 1051 ¶ 26). We were not persuaded by this rationale because Petitioner did not provide a reason why an ordinarily skilled artisan would have made such a connection. See id. at 75. Petitioner does not contest this determination in its Request for Rehearing.” slip op. at 9

  Claim construction§ 103 obviousness
  Patents in suitUS 6,459,023
• Ipr2018-00707Other
  PTAB · Dec 9, 2019 · IPR2018-00707 · IPR · Rehearing

  Unable to determine the rehearing decision because the only provided unit is blank.

  None
  Patents in suitUS 6,459,023
• VF Outdoor, LLC v. Cocona, Inc.Rehearing denied
  PTAB · Dec 9, 2019 · IPR2018-00190 · APJ Kristina M Kalan · IPR · Rehearing

  The Board denied VF Outdoor’s rehearing request, leaving intact the determination that claims 27, 28, 30, 32, 33, and 35–37 are unpatentable and claims 38 and 39 are not shown unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. Moreover, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2

  • ExcludeOther

    “We are not persuaded of good cause. First, during Petitioner’s opening portion of the Oral Hearing, we specifically questioned Petitioner about the combination’s MVTR, to which Petitioner replied “those MVTR ranges are disclosed by Dutta” and “the issue is when you switch out a different particle which is the same class of particles, they’re particles that adsorb or trap substances, they’re molecular filter particles, would there be a reasonable expectation of success? Our expert opined that it would be.” Tr. 25:15–23. Petitioner’s proposed new evidence addresses an element of Petitioner’s case-in-chief—whether Petitioner’s obviousness combination meets the MVTR limitation of claim 27. The panel’s questions about the MVTR limitation and Patent Owner’s responsive comments at the Oral Hearing are not good cause justifying submission of new evidence at the rehearing stage to fill a gap in Petitioner’s case-in-chief. Second, the evidence Petitioner seeks to submit, i.e., Dr. Haggquist’s testimony that “an active particle … may be replaced by any other active particle to obtain a substantially similar result” and that “all other active particles are capable of improving the transmission of vapor through the water-proof cured base material” does not explicitly address whether swapping Haggquist’s particles with Dutta’s particles would result in the claimed MTVR range. Req. 14–15. On the basis of the explanation presented in the Rehearing Request alone, we cannot properly ascertain the significance of this testimony as it relates to claim 27. Moreover, we view Petitioner’s request to introduce new evidence in its Rehearing Request as an attempt to supplement the arguments presented in the Petition. A request for rehearing is not a supplemental petition. Nor is it an opportunity to present new arguments or evidence that could have been presented and developed in the first instance in the Petition. For example, Petitioner had the opportunity in the Petition to present evidence regarding the MVTR of the proposed combination, but did not do so. It would be improper, at this stage in the proceeding, to allow Petitioner to introduce additional evidence, and explanations thereof, in an attempt to bolster its original argument in the Petition, which, as discussed previously, did not meet its burden of proof with regard to the MVTR limitation. See Dec. 36. Even if we were to allow Petitioner to submit its additional evidence, we are not persuaded that it would be sufficient to correct the deficiencies of the original Petition. Consequently, we are not persuaded there is good cause to allow Petitioner to submit Exhibit 1060, and we exercise our authority under 37 C.F.R. § 42.7(a) to expunge Exhibit 1060.” slip op. at 9

  None
  Patents in suitUS 8,945,287
• Opec Engineering Co., Ltd. D/B/A Opecmade, Inc. v. Berkenhoff GmbHInstitution denied
  PTAB · Dec 9, 2019 · IPR2019-01090 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because the petition showed a reasonable likelihood on only a limited portion of the challenges, making review of all claims and grounds inefficient.

  RulingsInstitution decision

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

    “that we should exercise our discretion to deny institution under § 314(a). As discussed above, the present Petition challenges six of the claims of the ’789 patent on five asserted grounds, and Petitioner fails to carry its burden with respect to three of those grounds and five of those claims. This leaves two grounds that, between them, challenge a single claim of the ’789 patent. Were we to institute trial on either (or both) of the remaining grounds, we would be required to consider at trial not only the challenge that those grounds present to the remaining claim, but also the challenges to the five claims and three grounds on which Petitioner fails to show a reasonable likelihood of prevailing. SAS Inst. Inc. v. Iancu, 138 S. Ct. at 1356. In exercising discretion, we are guided by the philosophy embodied in the statutory requirement to promulgate regulations for inter partes review that further “the efficient administration of the Office [and] the ability of the Office to timely complete proceedings.” 35 U.S.C. § 316(b). We also are guided by the requirement to construe our rules to “secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). Consistent with these policies, Office guidance explains that we may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a). SAS Q&A’s, Part D, Effect of SAS on Future Challenges that Could Be Denied for Statutory Reasons (June 5, 2018), available at https://www.uspto.gov/ sites/default/files/documents/ sas_qas_20180605.pdf (“[T]he panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 USC § 316(b)), the entire petition should be denied under 35 USC § 314(a).”). Here, Petitioner fails to demonstrate a reasonable likelihood of prevailing on a majority of its asserted grounds of unpatentability and with respect to nearly all of its challenged claims. This raises at least some question as to whether instituting a trial with respect to all six claims and on all five grounds would be an efficient use of the Board’s time and resources. See, e.g., Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018). We must, therefore, decide whether the game is worth the candle; specifically, is resolving the question as to the patentability of claim 1 a sufficient reason to proceed to trial on claims 1 and 10–14? We assume, without deciding, that there may be situations in which resolving the patentability of one claim might justify trial as to six claims. For example, the Patent Owner in some cases may prefer to proceed to trial—and risk the patentability of the single claim—to gain the potential preclusive effect that would attach at the entry of a final written decision (see 35 U.S.C. § 315(e)) finding the remaining five claims not unpatentable. In other situations, the arguments against the patentability of that one claim may be so strong that we believe it is in the public interest to resolve them. Or it is possible the scope of the various claims challenged might merit review as to only some of them. For example, if a petition were to challenge a single, broad independent claim and a number of very narrow dependent claims, a reasonable likelihood of prevailing as to the independent claim alone may justify proceeding to trial on all claims, because a potential finding of unpatentability would significantly narrow the overall scope of the patent. Notably, none of these circumstances is present in the case at hand. Patent Owner has not expressed a preference that we proceed to trial so that it may have the benefit of estoppel under § 315(e). Nor is claim 1, the sole claim still potentially at issue in the case, significantly broader than claims 10–14. All the challenged claims are independent, and, indeed, it appears that claim 10 (directed to a sheath with an outer layer “consisting of a copper/zinc alloy comprising gamma and epsilon phases and predominantly containing a gamma phase”) has a broader scope than claim 1 (directed to a sheath with an outer layer “consisting of a copper/zinc alloy consisting of a gamma phase”). In other words, finding claim 1 unpatentable would not significantly narrow the scope of the ’789 patent. As a result, it is hard to discern how resolving the question as to the patentability of claim 1 would significantly benefit the public interest by narrowing the overall scope of the patent.” slip op. at 8

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

    “In no case, however, does Petitioner offer sufficient argument or supporting evidence for the existence of a reason for a person of ordinary skill in the art to have combined the teachings of the references. With respect to the Briffod2/Groos ground, Petitioner asserts that “[t]he technologies in Briffod2, Groos and the ‘789 Patent are very closely related,” going on to demonstrate the existence of several similarities between the three patents. Pet. 55–56. This may be enough to show an analogous-art type relationship between the references, but there is a difference between proving that the references could have been combined and showing that a person of ordinary skill in the art would have had a reason to do so. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). The same flaw affects Petitioner’s arguments with respect to the Briffod2/Groos/Briffod1 ground and the Briffod2/Groos/Tominaga ground, both of which assert merely that “the technologies in [the references in question] are extremely closely related.” Pet. 57–58, 72. Because Petitioner fails to show why a person of ordinary skill in the art would have combined the teachings of the prior-art references asserted in Petitioner’s multi-reference obviousness grounds, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim on any of those three grounds.” slip op. at 6

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “Patent Owner argues that we should deny institution of inter partes review under 35 U.S.C. § 325(d) because Briffod2, the only prior-art reference at issue in the two asserted single-reference grounds, as well as the primary reference at issue in the combination grounds, previously was presented to the Office during prosecution of the challenged patent. Prelim. Resp. 21–29. We need not consider that argument because we determine that we should exercise our discretion to deny institution under § 314(a). As discussed above, the present Petition challenges six of the claims of the ’789 patent on five asserted grounds, and Petitioner fails to carry its burden with respect to three of those grounds and five of those claims. This leaves two grounds that, between them, challenge a single claim of the ’789 patent. Were we to institute trial on either (or both) of the remaining grounds, we would be required to consider at trial not only the challenge that those grounds present to the remaining claim, but also the challenges to the five claims and three grounds on which Petitioner fails to show a reasonable likelihood of prevailing. SAS Inst. Inc. v. Iancu, 138 S. Ct. at 1356.” slip op. at 7

  § 103 obviousnessDiscretionary denial
• Mobile Tech, Inc. v. Invue Security Products Inc.All claims unpatentable
  PTAB · Dec 5, 2019 · IPR2018-01138 · APJ Stacey G White · IPR · Final written decision

  Claims 1–10, 12–45 are unpatentable: claims 1–10, 12–15, 17–32, 34–43, and 45 as obvious over Rothbaum and Denison; claims 16, 33, and 44 over Rothbaum, Denison, and Ott.

  RulingsFinal written decision

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

    “Here, the same RPI issue was raised in the prior decisions, the RPI issue was actually litigated by the parties (replete with discovery and dispositive motions on this issue), and our determination that the RPI identification was proper was essential to the prior decisions (especially because Patent Owner has sought to have the proceedings terminated due to an allegedly improper identification of RPIs). As such, we agree with the parties’ assertion that collateral estoppel applies to the RPI issue in this case, and we conclude that no exception to collateral estoppel applies. Thus, we determine that collateral estoppel prevents the relitigation of the RPI issue in this proceeding. Accordingly, for the reasons given in the 1900 IPR Decision and in the Order on Patent Owner’s Motion to Terminate from IPR2017-00344, we determine that Petitioner identified all RPIs in this proceeding, as required by 35 U.S.C. § 312(a)(2).” slip op. at 15

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner’s declarant, Thaine Allison III, testifies that a person of ordinary skill in the art would have had a four year technical degree (e.g. B.S. engineering) with a minimum of three years of experience in using, provisioning, designing or creating, or supervising the design or creation, of such theft prevention devices, and other related security devices. Extended experience in the industry could substitute for a technical degree. A [person of ordinary skill in the art] would have known how to research the technical literature in fields relating to theft prevention, including in retail and other environments, as well as security in general. Also, a [person of ordinary skill in the art] may have worked as part of a multidisciplinary team and drawn upon not only his or her own skills, but also taken advantage of certain specialized skills of others in the team, e.g., to solve a given problem. For example, designers, engineers (e.g., mechanical or electrical), and computer scientists or other computer programmers may have been part of a team. Ex. 1019 ¶ 20; see Pet. 14 (citing Ex. 1019 ¶¶ 18–21). Based on the evidence of record, including the testimony of Mr. Allison, the subject matter at issue, and the prior art of record, we adopt the level of ordinary skill in the art set forth in the Decision on Institution, which is that a person of ordinary skill in the art would have had a four-year technical degree or equivalent experience with a minimum of two years of professional technical experience in the field of theft prevention devices or related security devices. Dec. on Inst. 10; see also PO Resp. 17–18 (agreeing with statement of level of ordinary skill in the Decision on Institution). We apply this level of ordinary skill in the art in our analysis below.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther

    “usable in only a single retail store,” “unique to the single retail store and the programming station,” “a ‘housing’ with ‘a port,’” “logic control circuit,” and “‘invalidating’ the ‘key.’” Pet. 8–14. Patent Owner seeks construction of “single security code” and “invalidates the single security code,” and Patent Owner provides arguments responsive to Petitioner’s proposed construction of “usable in only a single retail store.” PO Resp. 12–17. Based on the issues before us, we discern a need to provide express construction for “single security code,” “unique to the single retail store and the programming station,” and “invalidating the single security code.” No other term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor slip op. at 8

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

    “Id. at 38. Petitioner responds by arguing that Patent Owner is not addressing the combination proposed in the Petition, which is “modifying Rothbaum’s system (used in a retail store) to have an electronic-key system instead of a mechanical-key system. It isn’t a vending machine.” Reply 4. Thus, Petitioner’s argument focuses on incorporating the teachings regarding Denison’s key into the retail security system of Rothbaum. Therefore, Patent Owner’s arguments that are directed to the features of Denison’s vending machines are not responsive to the proposed combination because the vending machine is not part of the proposed modified system. Mr. Allison’s testimony supports Petitioner by explaining that a [person of ordinary skill in the art] would have found it obvious that a retail store employing the modified Rothbaum system would not share or use the system (or individual parts of the system, for example, the programming station / “external computing device,” the electronic keys, and the security device / “strip or housing 12”) with another retail store because doing so would compromise the integrity of the security system. Ex. 1019 ¶ 116. We credit Mr. Allison’s testimony and find that one of ordinary skill in the art would have found it obvious to improve security by using Denison’s operation limits to limit the use of the security code to a single store because such a limit would reduce the possibility that unauthorized individuals would gain access to the code by, for example, obtaining a key from one store and using it in another store. See Ex. 1019 ¶¶ 113, 116. We determine that the findings made in our analysis of claim 1 of the ’762 patent along with our findings regarding the “usable in only a single retail store” limitation also support a finding of unpatentability of claim 17 of the ’472 patent. We are careful to view the claim as a whole and not just its constituent parts. We determine that the findings noted above as to prior related cases along with the findings we make in this Decision as to the disputed limitation are sufficient to establish the unpatentability of claim 17 as a whole. The prior findings were essential to determining the patentability of the prior challenged claims and the parties had a full and fair opportunity to litigate those claims. Therefore, we determine that Petitioner has shown by a preponderance of the evidence that claim 17 of the ’472 patent would have been obvious over Rothbaum and Denison. As noted above, our analysis equally applies to claims 1 and 39 of the ’472 patent. Therefore, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1, 17, and 39 are unpatentable.” slip op. at 26

  Patent outcomesUS 9,659,472 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,659,472
• Ioxus, Inc. v. Cap-Xx, Ltd.Institution denied
  PTAB · Dec 4, 2019 · IPR2019-01178 · APJ Jennifer Meyer Chagnon · IPR · Institution

  The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood of success on its asserted obviousness grounds.

  RulingsInstitution decision

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

    “The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314, which provides that an inter partes review may be instituted only upon a showing that “there is 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) (2012). After considering the Petition, the Preliminary Response, and the evidence of record, we conclude that the information presented does not establish a reasonable likelihood that Petitioner will prevail in challenging the patentability of the challenged claims. We, therefore, decline to institute an inter partes review of the ’034 patent.” slip op. at 2

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

    “On this record, we agree that Petitioner has not offered sufficient argument or supporting evidence that a person skilled in the art would have had reason to combine the teachings of Yoshida and AAPA. Petitioner first argues that the PowerStor device uses the same cylinder-type supercapacitor as that is described in Yoshida and “[i]t would have therefore been obvious to a [person of ordinary skill in the art] to combine the ‘Prior Art 1’ AAPA with Yoshida so that Yoshida’s supercapacitor has a volumetric FOM of 3.0 (or 3.02).” Pet. 62; see also Ex. 1002 ¶ 202 (“Because Yoshida has the same EDLC shape and wound-cell configuration as the PowerStor supercapacitor . . . it would have been obvious to a [person of ordinary skill in the art] to combine the data for that supercapacitor . . . with the general cylindrical EDLC disclosures in Yoshida to obtain the 3.0 FOMv value.”). Petitioner’s reasoning, while relevant to showing that the references could have been combined, i.e., that they may be analogous, nevertheless falls short of establishing what would have prompted the ordinarily skilled artisan to make the proffered combination to yield a supercapacitor having volumetric FOM of 3.0. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Petitioner’s further argument that “there were no standard electrode shapes/sizes/dimensions at the time of the ’034 patent” and, therefore, “[i]t would have been a simple matter of the [person of ordinary skill in the art art] playing around with the dimensions of Yoshida’s device to get to the 3.0 FOMv” fares no better. Pet. 62–63; Ex. 1002 ¶ 204. As our reviewing court has explained, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc., 805 F.3d at 1703 (citations omitted). That the person of ordinary skill in the art would have known how to achieve a volumetric FOM of 3.0 does not explain why modifying Yoshida to achieve a volumetric FOM of 3.0 is desirable in the first instance. The prior art may show a supercapacitor having a gravimetric FOM as claimed, but without more, this fails to provide the requisite reason for a skilled artisan to modify Yoshida’s device to include the claimed gravimetric FOM. KSR, 550 U.S. at 418–419. Accordingly, Petitioner’s assertions here are “insufficient to show persuasively that a relevant artisan would have recognized some deficiency in one reference or had some other reason to motivate looking to the other and combining them.” Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (unpublished); see also id. (“[T]he Board correctly concluded that Microsoft did not articulate a sufficient motivation to combine,” where “Microsoft gave no reason for the motivation of a person of ordinary skill to combine [two references] except that the references were directed to the same art or same techniques.”). Thus, Petitioner fails to show why a person of ordinary skill in the art would have been motivated to combine the teachings of Yoshida and AAPA as proposed. Arguments Regarding a Presumption of Obviousness” slip op. at 27

  • Expert testimonyPetitioner expert creditedOther

    “11 Petitioner requested authorization to file a Reply to Patent Owner’s Preliminary Response to address Patent Owner’s arguments regarding the credibility of Dr. Juzkow’s testimony. See Ex. 3001. We denied Petitioner’s request. Paper 7, 2. For purposes of this Decision, we have given full weight to Dr. Juzkow’s testimony, notwithstanding any alleged credibility issues raised by Patent Owner.” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person having ordinary skill in the art would have had “a bachelor’s degree or the equivalent in electrical engineering or chemistry (or equivalent degree or experience) and at least two years of additional experience in the area of supercapacitors, or equivalent work experience.” Pet. 7. Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt and apply Petitioner’s proposed description of the person of ordinary skill in the art.” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,920,034
• Ioxus, Inc. v. Cap-Xx, Ltd.Institution denied
  PTAB · Dec 4, 2019 · IPR2019-01179 · APJ Avelyn M Ross · IPR · Institution

  The Board denied institution because the petition did not show a reason to combine Yoshida and AAPA to achieve the claimed gravimetric FOM for claims 1, 2, and 6–13.

  RulingsInstitution decision

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

    “Because Petitioner fails to show why a person of ordinary skill in the art would have been motivated to combine the teachings of Yoshida and AAPA as proposed, Petitioner has not shown a reasonable likelihood that it would prevail with respect to claim 1.” slip op. at 20

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

    “On this record, we agree that Petitioner has not offered sufficient argument or supporting evidence that a person skilled in the art would have had reason to combine the teachings of Yoshida and AAPA. Petitioner first argues that the PowerStor device uses the same cylinder-type supercapacitor as that is described in Yoshida and “[i]t would have therefore been obvious to a POSITA to combine the ‘Prior Art 1’ AAPA with Yoshida so that Yoshida’s supercapacitor has a gravimetric FOM of 2.06.” Pet. 27–28; see also Ex. 1002 (“Because Yoshida has the same EDLC shape and wound-cell configuration as the PowerStor supercapacitor . . . it would have been obvious to a POSITA to combine data for that supercapacitor . . . with the general cylindrical EDLC disclosures in Yoshida to obtain the 2.06 FOMg value.”). Petitioner’s reasoning, while relevant to showing that the references could have been combined, i.e., that they may be analogous, nevertheless falls short of establishing what would have prompted the ordinarily skilled artisan to make the proffered combination to yield a supercapacitor having gravimetric FOM of 2.1. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Petitioner’s further argument that “the skilled artisan would have known to test Yoshida’s supercapacitor and then, based on the measured FOMg for that device . . . would start modifying certain aspects of the device to reach the target FOMg” fares no better. Pet. 28. As our reviewing court has explained, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc., 805 F.3d at 1703 (citations omitted). That the person of ordinary skill in the art would have known how to achieve a gravimetric FOM of 2.1 does not explain why modifying Yoshida to achieve a gravimetric FOM of 2.1 is desirable in the first instance. That the prior art may show a supercapacitor having a gravimetric FOM as claimed, without more, fails to provide the requisite reason for a skilled artisan to modify Yoshida’s device to include the claimed gravimetric FOM. KSR, 550 U.S. at 418–419. Accordingly, without more, Petitioner’s assertions are “insufficient to show persuasively that a relevant artisan would have recognized some deficiency in one reference or had some other reason to motivate looking to the other and combining them.” Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (unpublished); see also id. (“[T]he Board correctly concluded that Microsoft did not articulate a sufficient motivation to combine,” where “Microsoft gave no reason for the motivation of a person of ordinary skill to combine [two references] except that the references were directed to the same art or same techniques.”).” slip op. at 18

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

    “After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 11

  • Skill levelSkill level petitioner adoptedOther
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,382,600
• Charter Communications, Inc. v. Sprint Communications Company, L.P.Institution denied
  PTAB · Dec 3, 2019 · IPR2019-01135 · APJ Brian J Mcnamara · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–53 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “In consideration of the above, we are not persuaded that Petitioner has demonstrated a reasonable likelihood it will succeed in its challenge to claim 1 as unpatentable over the combined teachings of Sampsell and Yosuke.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “bachelor’s degree in electrical engineering, computer science, or a related field with at least five years of experience or research in interactive systems applicable to digital television, including VOD for cable and Internet delivery.” Pet. 12–13 (citing Ex. 1002, Declaration of Dr. Kevin Almeroth (“Almeroth Dec.”) ¶¶ 44–46. Patent Owner does not offer a definition of the level of ordinary skill, but reserves the right to dispute Petitioner’s assessment of the level of ordinary skill. Prelim. Resp. 20. Petitioner’s commensurate with the subject matter for the ’7907 patent, for purposes of this Decision we apply Petitioner’s description of the level of ordinary skill.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “Having reviewed the claims and the specification of the ’7907 patent, we determine that the phrase “video-on-demand” in the preamble is necessary to give life and meaning to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“[I]f the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim.”). The difference between watching television and watching a video on demand is a difference in kind, rendering a video-on-demand system different from a non-video-on-demand system. While a person watching television can change channels and thus in some sense selects video content, such video content is being distributed regardless of whether the user selects specifically selects it.1 Because of that nature, the user also has control over the playback of the video content, such as pausing and stopping. Although the dependent claims more clearly demonstrate the on-demand nature of the video content (e.g., with the menu and control buttons), only the preamble in the independent claims provides the clue as to this context.2 Thus, the preamble serves to provide the framework necessary to understand the body of the claims, and is limiting.” slip op. at 10

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

    “Owner’s proposed construction, i.e., plain and ordinary meaning or “a signal reflecting viewer control” and instead construed “view control signal” to mean “a viewer control signal generated and processed without the involvement of a set-top box for remote control of the video-on-demand system.” Pet. 15. Petitioner notes that the Comcast court found the ’7907 patent does not dispute the use of a set-top box for purposes other than remote control, e.g. for the purpose of decoding a video signal and presenting it to a television. Id. n. 3. Referring to Figure 1, the Specification states “[i]n response to viewer input to the control screen, the second display 122 transfers a corresponding viewer control signal to the second communication system 112,” the second communication system 112 1 See, e.g., Ex. 1001, 1:17–33 (instructing that, with video-on-demand, the system receives a request to view a selection from the video content library, the video is played “[i]n response to the [user’s] request,” and the user is allowed “to immediately view [the] selected video content”). 2 This is broadly recited in claim 12 to encompass the controls relevant to video-on-demand, e.g., play, pause, stop, etc. Limiting claim 1 to a video-on-demand system provides meaningful context. and “[t]he second communication interface 102 transfers the [viewer] control signal to the processing system 103.” Ex. 1001, 2:61–67. Thus, we understand the viewer control signal to be a signal generated in response to user input.” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,757,907
• Apple Inc. v. Corephotonics Ltd.All claims unpatentable
  PTAB · Dec 3, 2019 · IPR2018-01140 · APJ Marc S Hoff · IPR · Final written decision

  Claims 1 and 13 are unpatentable as anticipated by Ogino; claims 14 and 15 are unpatentable as obvious over Ogino and Chen II.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “claims 1 and 13 of the ’032 Patent are anticipated by Ogino. Petitioner has also demonstrated, by a preponderance of the evidence, that claims 14 and 15 of the ’032 Patent are unpatentable over the combination of Ogino and Chen II. The chart below summarizes our conclusion. References Claims Claims Claims 35. Shown Not shown Challenged U.S.C. Unpatent- Unpatentable able Ogino 1 and 13 1 and 13 § 102 Ogino, Chen 14 and 15 14 and 15 § 103 II 1 and 13-15” slip op. at 40

  • Skill levelSkill level board ownDecided for petitioner

    “that Ogino and Chen II disclose substantially different lens systems. PO Resp. 36. As Petitioner points out, both Ogino and Chen II describe mobile phone camera systems with all lenses being aspheric; a first lens with a meniscus shape with positive refractive power; a second lens with negative refractive power; a third lens with a meniscus shape and with a negative refractive power; a fourth lens with a meniscus shape with positive refractive power; and a fifth lens with a meniscus shape and with a negative refractive power. Pet. Reply 22; Pet. 41–44. We agree with Petitioner that such a skilled artisan, possessing an applicable college degree, approximately three years experience in designing multi-lens optical systems, “experience in analyzing, tolerancing, adjusting, and optimizing multilens systems, and experience with lens design software such as CodeV, Oslo, or Zemax,” would have the appropriate knowledge to perform routine modifications to a lens design. Pet. Reply 24; Pet. 7; PO Resp. 12. Patent Owner’s expert Dr. Moore testified that such a skilled artisan “would be able to use the computer program [i.e. CodeV or Zemax] to optimize lens designs.” Pet. Reply 24; Ex. 1025, 29:25–30:9. Dr. Moore testified that the skilled artisan would “tell the [lens design] program that you want to vary certain parameters of a lens . . . . And then the program, through a fairly complicated algorithm, then actually goes through and varies them and determines how to make a better lens. You determine as a lens designer what you’re trying to improve.” Ex. 1025, 28:13–23.” slip op. at 38

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “We are unpersuaded by Patent Owner’s argument that the skilled artisan would have understood that third, fourth, and fifth lenses also contribute to vignetting in Ogino. PO Resp. 38. We credit Petitioner’s argument that Dr. Moore’s conclusion regarding vignetting in the third, fourth, and fifth lenses is unreliable because it is based on assumptions not specified in Ogino. Pet. Reply 16; Ex. 1026 ¶ 11. For example, Ogino does not provide lens diameters or vignetting apertures for the lens assembly of Example 6 that would vignette the light beams on the third, fourth or fifth lens elements. Pet. Reply 17; Ex. 1026 ¶ 11. Additionally, Dr. Sasián testifies that vignetting is a result of the second lens. Pet. Reply 17–18; Pet. 54; Ex. 1003, 59.” slip op. at 36

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

    “Effective Focal Length (EFL) Petitioner asserts that while the specification of the ’032 Patent does not offer an express definition for the term “effective focal length,” “its meaning is well known in the art, as exemplified in Li (Ex. 1007), which states that “[t]he focal length of a lens assembly [is] also referred to as the effective focal length [(]EFL).” Pet. 9–10 (internal parentheses omitted); Ex. 1007, 2:59–61. Patent Owner, in response, does not dispute Petitioner’s construction of “effective focal length,” stating that the Petition does not turn on the construction of the term. PO Resp. 20. Having reviewed the evidence of record, we agree with Petitioner that Li supports construing the term “effective focal length” as “the focal length of a lens assembly.” We adopt this construction.” slip op. at 10

  Patent outcomesUS 9,402,032 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,402,032
• Google LLC v. Agis Software Development, LLCAll claims unpatentable
  PTAB · Dec 2, 2019 · IPR2018-01080 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1, 2, 5–7, 14, 15, 17, 21–25, 27, 28, 30, 32–34, 36, 37, 40–43, 45, 49, and 54 are unpatentable as obvious.

  RulingsFinal written decision

  • Skill levelOther

    “A. Level of Ordinary Skill” slip op. at 9

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

    “improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Reaching this conclusion, however, requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. I. Obviousness over Fumarolo, Sheha, and Lazaridis” slip op. at 19

  Patent outcomesUS 9,408,055 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,408,055

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.