- Yamaha Golf Car Company v. Club Car, LLCNo claims unpatentablePTAB · Apr 2, 2019 · IPR2017-02144 · APJ Robert L Kinder · IPR · Final written decision
The Board found claims 11 and 17–19 not shown unpatentable: claim 11 was entitled to priority over the ’918 Publication, and the obviousness challenge to claims 17–19 was unsupported.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner
“slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“sufficiently how the ’918 Publication’s disclosure of a “signal . . . of the violation” (Ex. 1003 ¶ 68) also teaches or suggests the additional claim requirements of “the driver interface unit . . . operable to communicate an alarm to the base station of a controller limiting the performance of a driver command” as required by claim 17. Petitioner recognizes the distinction by arguing “that the system could also provide a message to the course personnel . . . of any remedial corrective measures taken in response.” Pet. 25 (emphasis added). Based on the evidence cited, the ’918 Publication does not provide any such notification. Petitioner cannot suggest that a reference could have a feature that it does not have without some rational basis as to why such a feature would have been suggested by the reference. Mr. Breen’s explanation mirrors Petitioner’s contention (Ex. 1001 ¶ 277) and likewise states “that the system could also provide a message to the course personnel” (emphasis added) but no further explanation is provided as to how this unsupported conclusion was reached. Petitioner has also failed to lay the necessary foundation to establish that “common sense” could fill the gap for the missing limitation, or provide a basis for modifying the ’918 Publication to teach the claim 17 limitation. We recognize that in certain instances “common sense” can be used to supply the missing claim limitation, but only if the art is “unusually simple and the [patented] technology particularly straightforward.” Arendi Sarl v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). In this proceeding, we have no testimony or evidence to establish either condition is met. Neither Petitioner nor Mr. Breen explain adequately why the limitations of claim 17” slip op. at 24
Patent outcomesUS 7,480,569 not shown unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 7,480,569 - Comcast Cable Communications, LLC v. Promptu Systems CorporationNo claims unpatentablePTAB · Mar 29, 2019 · IPR2018-00340 · APJ Alex S Yap · IPR · Final written decision
Claims 1–7, 17–24, and 33 were not shown unpatentable under any asserted § 103 ground because the petition failed to establish the claimed command function.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner that the definitions for a person of ordinary skill in the art involving unrelated patents in different proceedings need not be the same in each proceeding. Reply 2–4. Although the patents in each proceeding before us are issued to the same assignee and have some of the same inventors, the specific goal of each patent differ between proceedings. We also agree with Mr. Wechselberger that “[w]hile the ’538 Patent discloses a system that includes voice recognition processing,” it discusses voice recognition technology only as a component part of the system, and expertise in voice recognition technology was not required to understand the ’538 Patent because it does not discuss any particular voice recognition techniques or algorithms. Ex. 1032 ¶¶ 6–7. Therefore, we agree with Mr. Wechselberger that a practitioner would have understood how to implement existing voice recognition products in a cable television network without having special knowledge or experience with voice recognition algorithms. Id. ¶¶ 5–7. For the foregoing reasons, we credit the testimony of Mr. Wechselberger regarding the person of ordinary skill in the art and adopt, with modification (e.g., removing the words “at least” from Petitioner’s proposed definition), Petitioner’s definition of a person of ordinary skill in the art: (i) an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and three years of work experience in the field of analog and digital television systems with exposure to interactive networks and associated control technologies; or (ii) a Master’s of Science degree (or equivalent) in electrical engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the same field. We further note that the prior art in the instant proceeding reflects the” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) applies§112(f) does not applyMixed
“specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). As the Federal Circuit has noted, “‘structure disclosed in the specification is “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112, ¶ 6.’” Saffran v. Johnson & Johnson, 712 F.3d 549, 562 (Fed. Cir. 2013) (quoting B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). We are not persuaded that Petitioner has identified sufficient corresponding structure for this means-plus-function limitation. Here, Petitioner contends that the corresponding structure for performing the recited function is “‘a processor’ and equivalents.” Pet. 11. Petitioner’s expert further opines that “the patent identifies the Motorola DCT-2000 set-top box (’538 Patent[,] 3:51–52), and a person of ordinary skill in the art would have known that the DCT-2000 includes a processor that executes command functions from the cable head-end.” Ex. 1022 ¶ 138. However, for means-plus-function limitations,” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Not shown unpatentable
“[i]f special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies. It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed. Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1352 (Fed. Cir. 2015) (en banc) (“In cases . . . involving a claim limitation that is subject to § 112, para. 6 that must be implemented in a special purpose computer, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor[; it must] disclose an algorithm for performing the claimed function.”) (citations omitted); Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). We decline to adopt Petitioner’s proposed construction because Petitioner has not explained sufficiently that the recited function for this term (“responsive to receipt of the command functions for executing the command functions”) is a basic computer function that would not require a special purpose computer, nor has Petitioner directed us to any portion of the Specification sufficient to link a structure (i.e., an algorithm)4 to the recited function. The reference to “a processor” without specifying the algorithm is too generic to identify any specific structure. In Aristocrat, the Federal Circuit stated that “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Id., emphasis added. As the Federal Circuit explained, “a general purpose computer programmed to carry out a particular algorithm creates a ‘new machine’ because a general purpose computer ‘in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.’” 521 F.3d at 1333 (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)); see also WMS Gaming, Inc. v. Int’l Game Techs., 184 F.3d 1339, 1349 (Fed. Cir. 1999). Consequently, the specification must disclose enough of a specific algorithm to provide the necessary structure under § 112, sixth paragraph. Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). Allowing a computer programmed to perform a specialized function to be claimed without disclosure of the algorithm used for that programming would exhibit the same type of impermissible overbreadth of purely functional claims. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008).” slip op. at 19
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“includes a set-top box compatible command function” because “while the references’ disclosures broadly indicate that their set-top boxes receive some information from a remote network location,” the information does not require a command to be sent for decoding or formatting. Ex. 2033 ¶ 43. Specifically, Mr. Tinsman testifies: Cable digital television content is typically transmitted as compressed data that must be decompressed by the set-top box for display on a television. Such content information is generally comprised of the compressed video data accompanied by metadata describing the content data to the set-top box, including, e.g., details of the data’s format. A POSITA would know that a set-top box does not need to receive specific instructions to perform a function every time it receives content data. Instead, the video decoder in the set top box automatically decodes the incoming data for display on a television without needing specific instructions to do so from the head-end unit. Id. We credit the above-quoted testimony of Mr. Tinsman, and find it to be persuasive. Patent Owner also points out that Mr. Wechselberger admitted that decoding and formatting information does not necessarily require a command to be sent. Resp. 29–30 (citing Ex. 2034, 50:20–24 (“Q Is it your opinion that decoding and formatting information necessarily requires a command to be sent from the head end to the set top box? A No.”)); see also Ex. 2034, 50:25–52:20. In contrast, we do not credit the conclusory testimony of Mr. Wechselberger that “[a] person of ordinary skill in the art would know that remote server 108 would send a ‘set-top-box-compatible command function’ to the communications box 104 (‘set-top box’) as a prerequisite to permit it to decode and format the video signal for display on display device 112.” Ex. 1022 ¶ 178. This conclusory statement is not supported by persuasive evidence, and is inconsistent with Mr. Wechselberger’s admission that decoding and formatting information does not necessarily require a command to be sent. See Ex. 2034, 50:20–24.” slip op. at 29
Patent outcomesUS 7,260,538 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,260,538 - Comcast Cable Communications, LLC v. Promptu Systems CorporationNo claims unpatentablePTAB · Mar 29, 2019 · IPR2018-00341 · APJ Alex S Yap · IPR · Final written decision
Claims 34, 35, 37, 40, and 41 were not shown unpatentable under any asserted obviousness ground because the prior art did not establish the claimed set-top-box-compatible instructions.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedSkill level board ownDecided for petitioner
“We agree with Petitioner that the definitions for a person of ordinary skill in the art involving unrelated patents in different proceedings need not be the same in each proceeding. Reply 2–4. Although the patents in each proceeding before us are issued to the same assignee and have some of the same inventors, the specific goal of each patent differ between proceedings. We also agree with Mr. Wechselberger that “[w]hile the ’538 Patent discloses a system that includes voice recognition processing,” it discusses voice recognition technology only as a component part of the system, and expertise in voice recognition technology was not required to understand the ’538 Patent because it does not discuss any particular voice recognition techniques or algorithms. Ex. 1032 ¶¶ 6–7. Therefore, we agree with Mr. Wechselberger that a practitioner would have understood how to implement existing voice recognition products in a cable television network without having special knowledge or experience with voice recognition algorithms. Id. ¶¶ 5–7. For the foregoing reasons, we credit the testimony of Mr. Wechselberger regarding the person of ordinary skill in the art and adopt, with modification (e.g., removing the words “at least” from Petitioner’s proposed definition), Petitioner’s definition of a person of ordinary skill in the art: (i) an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and three years of work experience in the field of analog and digital television systems with exposure to interactive networks and associated control technologies; or (ii) a Master’s of Science degree (or equivalent) in electrical engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the same field. We further note that the prior art in the instant proceeding reflects the” slip op. at 14
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“The use of the term “means” triggers a rebuttable presumption that § 112, ¶ 6 applies. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). One way in which this presumption can be overcome is if “the claim recites sufficient structure for performing the described functions in their entirety.” Id. To determine if the claim recites sufficient structure, “it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1359–60 (Fed. Cir. 2004). Here, for each limitation, the claim recites sufficient structure for performing the described functions. For example, a television remote control is sufficient structure “for directly and wirelessly controlling television sets and additionally receiving user voice input and wirelessly transmitting first output representative of the voice input to a television settop box means” (Ex. 1022 ¶ 139) and a television set-top box is sufficient structure for “receiving television input signals via cable television link and providing television output signals compatible with television sets, and responsive to receiving the first output from one of the television remote control means to transmit representative second output to a central processing station via the cable television link.” (id. ¶ 143). Therefore, based on our review of the record before us, we are persuaded by Petitioner that these terms do not invoke 35 U.S.C. § 112, ¶ 6.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner’s conclusory rationale for the combinations, however, is untethered to any claim limitations. See Pet. 35–38, 56–58 (citing to Ex. 1022 ¶¶ 226–229, 232–234; 299–300, 304–306). For example, when discussing the combination of the references for a particular limitation, Petitioner starts with a discussion of either Julia or Murdock, followed by a discussion of Houser, and then provides a conclusory assertion that the combination would disclose the limitation at issue. See, e.g., Pet. 24–25 (“Julia also discloses . . . . In addition, Houser discloses . . . . Thus, Julia alone or combined with Houser discloses . . .”), 26–27 (“As explained above, Julia discloses . . . . In addition, Houser also discloses . . . . Thus, Julia alone or combined with Houser discloses . . .”). These discussions do not articulate, with respect to any specific limitation, or for any claim as a whole, why or how Julia or Murdock can and should be combined with Houser. A determination of obviousness cannot be reached where the record lacks “explanation as to how or why the references would be combined to produce the claimed invention.” TriVascular, 812 F.3d at 1066. The Petitioner also states that “a skilled artisan would have been capable of combining the teaching[s] of [the prior art references because such] combination[s] would have been no more than combining prior art elements according to known methods to yield predictable results.” However, this discussion is similarly untethered to any claim element, or to the claim as a whole. Pet. 37–38, 58 (citing to Ex. 1022 ¶¶ 233, 306–307.) And, again, we are not informed what teaching of one reference is proposed to be combined with what teaching of the other reference, or why and how the combination would have been made. To the extent Petitioner’s position is that once it establishes that two prior art references are within the same field and are directed to solving the same problem, then all features within one reference can be used within the other, and vice versa, without need for further explanation, it cites no authority to support that broad position and we are aware of none. Therefore, we determine that Petitioner has not established, by a preponderance of the evidence, that claims 34, 35, 37, 40, and 41 would have been obvious over Julia in view of Houser or Murdock in view of Houser. 3.” slip op. at 20
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Id. We credit the above-quoted testimony of Mr. Tinsman, and find it to be persuasive. Patent Owner also points out that Mr. Wechselberger admitted that decoding and formatting information does not necessarily require an instruction to be sent.4 Resp. 31 (citing Ex. 2034, 50:20–24 (“Q Is it your opinion that decoding and formatting information necessarily requires a command to be sent from the head end to the set top box? A No.”)); see also Ex. 2034, 50:25–52:20. In contrast, we do not credit the conclusory testimony of Mr. Wechselberger that “[a] person of ordinary skill in the art would know that remote server 108 would send a ‘set-top-box-compatible instruction’ to the communications box 104 (‘set-top box’) as a prerequisite to permit it to decode and format the video signal for display on display device 112.” Ex. 1022 ¶ 176. This conclusory statement is not supported by persuasive evidence, and is inconsistent with Mr. Wechselberger’s admission that an instruction be sent. See Ex. 2034, 50:20–24.” slip op. at 23
Patent outcomesUS 7,260,538 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,260,538 - Unified Patents Inc. v. Hailo Technologies, LLC, D/B/A Bring, LLCNo claims unpatentablePTAB · Jan 25, 2019 · IPR2017-01865 · APJ Joseph L Dixon · IPR · Final written decision
Claims 1–7 were not shown unpatentable: the combinations of Penzias, Clagett, and Nimura, with Behr for claims 2–6, did not establish the claimed system for multiple transportation companies.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“flowchart in which a user selects one of the plural companies at step 300. The corresponding disclosure states, “all authorized taxi companies would appear along with other information and/or advertisements.” On the following screen, the user will “Select a Company” 300 which will service the request. See Ex. 1001, 3:58–62. Additionally, the ’619 patent discloses that “[t]he present invention embodies a computerized system which enables customers to select a transportation company, in this example a taxi company, from a menu of all permitted and participating companies.” Id. at 2:26–29. Based on our review of the Specification of the ’619 patent, we determine that the claim term “transportation companies” should be accorded its plain and ordinary meaning. That is, we construe “company” as a “commercial business.” THE OXFORD DESK DICTIONARY AND THESAURUS, 146 (American ed. 1997) Ex. 3001. For a “transportation company,” the commercial business would be transportation services. We further clarify that “transportation companies” requires plural companies.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although there are slight differences between the definitions proffered by Petitioner and Patent Owner, the parties agreed that there is no meaningful distinction between them that would change the analysis in this proceeding. See Tr. 26–27. We agree and also find that both definitions are consistent with the level of ordinary skill in the art reflected by the prior art of record—namely, Penzias. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt Petitioner’s articulation of the level of ordinary skill in the art for purposes of this Decision, but our conclusion would not differ if we were to accept Patent Owner’s articulation. See Pet. 7.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“speculation and conjecture. While Mr. Andrews speculates that the multiple paths “could represent” several transportation companies, Mr. Andrews provides no evidence to support a finding that Penzias teaches or suggests a user interface for the multiple transportation companies. Consequently, we do not credit Mr. Andrews’ testimony in this regard because it is not supported by the disclosure in Penzias. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based in entitled to little or no weight.”). We have reviewed Petitioner’s analysis, which is rebutted by Patent Owner, and we conclude that the First Alternative based upon the teachings of Penzias alone for the claimed multiple “transportation companies” is deficient because Petitioner has not shown that Penzias teaches or suggests multiple “transportation companies,” but merely shows multiple routes by different drivers of multi-passenger vans all controlled by a single transportation company. As a result, Penzias does not teach or suggest “displaying a list of authorized transportation companies for selection by the operator of the computer,” where the user selects a desired company, followed by displaying the proximate fare for the selected location and payment options honored by the selected company, and then initiating a dispatch call for available taxi from the selected company, as required by the method of independent claim 1. We find that Penzias only provides a process for a single “transportation company” and does not provide any teaching or suggestion to expand the user interface and process for multiple “transportation companies.”” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Second, Petitioner showed that, based on the teachings of the applied references, it would have been obvious to combine Penzias, Clagett, and Nimura according to known methods to yield predictable results. Pet., 31–32. The Petition provided adequate reasoning based on rational underpinnings for why one of ordinary skill in the art would have modified the asserted prior art. Pet., 31–32 (citing Ex. 1012, ¶¶ 160–162); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); KSR, 550 U.S. at 418. Accordingly, the Board should reject Patent Owner’s erroneous problem-solution argument about why a POSA would have combined the asserted references. Reply 25–26. Again, we disagree with the Petitioner and find that the proffered combination falls short of merely yielding predictable results. Petitioner has provided insufficient evidence that, at the time of the invention in 1997, it would have been obvious to one of ordinary skill in the art to provide a user interface for multiple transportation companies to deliver instructional messages to the consumer to allow the consumer to select a desired company and provide the relevant claimed information to ultimately dispatch a taxi/transportation vehicle/vehicle for hire from the selected company.” slip op. at 26
Patent outcomesUS 5,973,619 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 5,973,619 - Donghee America, Inc. / Donghee Alabama, LLC v. Plastic Omnium Advanced Innovation And ResearchNo claims unpatentablePTAB · Jan 2, 2019 · IPR2017-01647 · APJ Christopher M Kaiser · IPR · Final written decision
Claims 1–5, 8, and 9 were not shown unpatentable over either asserted combination because neither reference combination teaches the claimed punch.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“punch.” The punch must be separated from one portion of the mold, with the plastic sheet that is being formed located between the punch and that mold portion, and the punch must be associated with the other portion of the mold, making it possible to distinguish a “punch side” and a “die side” of the mold. Thus, the proper construction of “punch” cannot be as broad as Petitioner suggests, encompassing any “device that compresses material against a portion of the mold to shape the material.” The written description of the ’921 patent makes clear that the punch may be “fastened to [a] mold portion.” Ex. 1001, 2:48–51. Thus, the term “punch” must encompass at least some bodies that are separate from the mold itself, and it cannot be limited to covering only portions of the mold itself, as Patent Owner suggests. Of course, the punch may be part of the punch side of the mold. Id. at 5:31–33, Fig. 1 (depicting punch 5a as part of one portion of mold 5). The written description also makes clear that the sheet of material being formed is compression molded “in a region located between the punch . . . and the die.” Id. Based on the foregoing, we determine that the construction that is consistent with both the language of the claims and the written description and sole figure of the ’921 patent is that a “punch” is “a device that is part of, fastened to, or otherwise associated with one portion of the mold—the punch side of the mold—and, upon mold closure, acts to compress material against another portion of the mold—the die side of the mold—to shape the material.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As discussed above, we construe “punch” as “a device that is part of, fastened to, or otherwise associated with one portion of the mold—the punch side of the mold—and, upon mold closure, acts to compress material against another portion of the mold—the die side of the mold—to shape the material.” Under this construction, it must be possible to identify one side of the mold as the “punch side” of the mold, because that side of the mold has a punch as part of its structure, or fastened to its structure, or in some other way associated with its structure. It is not possible to make such an identification in Kasugai. Kasugai’s mold has two mold halves, identified in Kasugai’s figures as items 22 and 23. Ex. 1003, 4:23–30, Fig. 1, Fig. 2. Kasugai does not refer to its insert member 7, or to any other item it discloses, as a “punch.” Id. at 1:1–12:36. And the insert member is not part of or fastened to either half of Kasugai’s mold. Id. at Fig. 1, Fig. 2. Both halves of Kasugai’s mold contain recessed portions into which the plastic material being formed is pressed by insert member 7. Id. Because Kasugai’s insert member 7 is not part of, attached to, or otherwise associated with either mold half to a greater extent than to the other half, it is not possible to identify either mold half 22 or mold half 23 as the “punch side” of the mold in Kasugai. Accordingly, we find that Kasugai does not teach or suggest the “punch” recited in claim 1 of the ’921 patent. Because Petitioner relies on Kasugai to teach or suggest the recited “punch,” Pet. 19, and because Kasugai does not teach or suggest a “punch,” we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Kasugai and Kagitani teaches or suggests all the limitations of claim 1.” slip op. at 10
Patent outcomesUS 6,814,921 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,814,921 - Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.No claims unpatentablePTAB · Dec 28, 2018 · IPR2017-00435 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–4, 6–18, and 20 were not shown unpatentable over Malecki; the contingent motion to amend was denied as moot.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“construction more persuasive because it is grounded in, and most consistent with, the specification of the ’731 patent. Contrastingly, Petitioner does not offer a specific interpretation of “inner walls” and its arguments are generally based on extrinsic evidence, including claim charts from the related district court litigation (Pet. 15), arguments from related proceedings (Pet. Reply 3), and the prior art reference (Malecki) relied on to challenge the claims (id. at 3–4). Petitioner criticizes the Patent Owner’s position but provides no express interpretation of “inner walls of the first and second clip arms;” instead, Petitioner argues why Patent Owner’s proposed construction is wrong. Pet. Reply 4–5. Dr. Nicosia does not expressly define or otherwise persuasively explain the definition of “inner walls” in his declarations either. See generally Exs. 1037, 1095, and 1109.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the time of the filing of the application that became the ’731 patent would have possessed the knowledge and skill of an engineer or similar professional 5 The parties have not introduced evidence of secondary considerations in this proceeding. with at least an undergraduate degree in engineering, or a physician having experience with designing medical devices. Pet. 10 (citing Ex. 1037 ¶ 11). Patent Owner does not dispute Petitioner’s proposal, and we adopt it based on the final record before us. It is also consistent with the level of skill evidenced by the references.” slip op. at 15
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Based on the final trial record, including our interpretation of “inner walls of the first and second clip arms” to mean “the exterior surfaces of the first and second clip arms that are inward-facing relative to the longitudinal axis of the clip,” Petitioner has not persuasively established that Malecki Embodiment #1 discloses this limitation. We find persuasive the testimony of Dr. Vaitekunas, that “[t]he jaws of Malecki Embodiment #1 have four walls,” and a person of ordinary skill in the art “would understand Figure 28A to illustrate links 404, 406 connecting to the side walls of jaws 308C, 310C on the side or lateral wall opposite (or underneath) the one shown in Figure 28A.” Ex. 2010 ¶¶ 66, 68. We agree with Dr. Vaitekunas that a person of ordinary skill in the art would not consider side or lateral walls as “inner walls” under the broadest reasonable interpretation of that term. Thus, the portion of the jaw identified by Petitioner as shaded in green (Pet. 26) is a portion of the side/lateral wall, not an inward-facing wall. See Ex. 2010 ¶ 68. Petitioner has also not persuasively established that linkages 404, 406 contact any outside portion of the inner wall. As noted by Patent Owner above, Petitioner’s expert admits that Malecki does not disclose links 404, 406 contacting the radially inward-facing walls. See Ex. 2012 at 274:12–23. We also do not find persuasive Petitioner’s pin engagement theory. First, neither Petitioner nor Dr. Nicosia persuasively establish that a slot and pin channel (Pet. 15) is used in Malecki Embodiment #1. See Ex. 1095 ¶ 27. As pointed out by Dr. Vaitekunas, Petitioner’s theory that an engagement between a pin and a pin hole satisfies the “engaging the inner walls of the first and second clip arms” limitation is based on structure that is simply not disclosed in Malecki. Ex. 2010 ¶ 69. Further, we agree with Dr. Vaitekunas that “[e]ven if contact does occur between a pin and a pinhole, the contact occurs in the pin hole, not the exterior surface of a radially inward-facing wall.” Id.” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on the final trial record, including our interpretation of “inner walls of the first and second clip arms” to mean “the exterior surfaces of the first and second clip arms that are inward-facing relative to the longitudinal axis of the clip,” Petitioner has not persuasively established that Malecki Embodiment #1 discloses this limitation. We find persuasive the testimony of Dr. Vaitekunas, that “[t]he jaws of Malecki Embodiment #1 have four walls,” and a person of ordinary skill in the art “would understand Figure 28A to illustrate links 404, 406 connecting to the side walls of jaws 308C, 310C on the side or lateral wall opposite (or underneath) the one shown in Figure 28A.” Ex. 2010 ¶¶ 66, 68. We agree with Dr. Vaitekunas that a person of ordinary skill in the art would not consider side or lateral walls as “inner walls” under the broadest reasonable interpretation of that term. Thus, the portion of the jaw identified by Petitioner as shaded in green (Pet. 26) is a portion of the side/lateral wall, not an inward-facing wall. See Ex. 2010 ¶ 68. Petitioner has also not persuasively established that linkages 404, 406 contact any outside portion of the inner wall. As noted by Patent Owner above, Petitioner’s expert admits that Malecki does not disclose links 404, 406 contacting the radially inward-facing walls. See Ex. 2012 at 274:12–23. We also do not find persuasive Petitioner’s pin engagement theory. First, neither Petitioner nor Dr. Nicosia persuasively establish that a slot and pin channel (Pet. 15) is used in Malecki Embodiment #1. See Ex. 1095 ¶ 27. As pointed out by Dr. Vaitekunas, Petitioner’s theory that an engagement between a pin and a pin hole satisfies the “engaging the inner walls of the first and second clip arms” limitation is based on structure that is simply not disclosed in Malecki. Ex. 2010 ¶ 69. Further, we agree with Dr. Vaitekunas that “[e]ven if contact does occur between a pin and a pinhole, the contact occurs in the pin hole, not the exterior surface of a radially inward-facing wall.” Id. Finally, Petitioner seems to recognize that a modification would be” slip op. at 25
Patent outcomesUS 9,271,731 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,271,731 - Becton, Dickinson And Company v. B. Braun Melsungen AGNo claims unpatentablePTAB · Dec 12, 2018 · IPR2017-01588 · APJ Michael L Woods · IPR · Final written decision
The Board found claims 12, 13, 20–23, and 29 not shown unpatentable under any of four § 103 combinations; the contingent motion to amend was dismissed as moot.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Because the term “means” is not used, there is a presumption that the limitation is not subject to § 112 ¶ 6, and Petitioner has not overcome this presumption. See Williamson, LLC, 792 F.3d at 1349 (explaining that the presumption is overcome “if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function’”) (internal citation omitted). The claims do not simply recite a “needle protective device,” without more, but explicitly require that the “needle protective device [be] positioned proximally of the valve and at least in part around the needle and distal of a proximal end of the second hub in a ready position and configured to prevent unintended needle sticks in a protective position.” Ex. 1001, 13:58– 61 (emphasis added to structural limitations of claim 12); see also id. at 14:51–55 (reciting similar structure in independent claim 23). Petitioner fails to address these structural limitations in its proposed claim construction, instead focusing only on the three words “needle protective device.” See Pet. 11–15. Moreover, Petitioner’s proposed construction would seemingly render superfluous several of these other claimed structural features. As argued by Patent Owner, we determine that the needle protective device limitation recites sufficient structure. Mr. Meyst explains how a person of ordinary skill in the art “would recognize that the claimed ‘needle protective device’ refers to the class of structures included in safety IV catheters that prevent unintended needle-sticks by covering (i.e., protecting or guarding) the needle tip.” Ex. 2001 ¶ 56 (citing Ex. 2014, which is cited in the ’735 patent). We find Mr. Meyst’s testimony persuasive.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“of the claimed limitation. Here, the claims require the “arm” to extend distally of the third hub. Ex. 1001, 13:34–14:59. “[I]n determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art, it is appropriate to consult a general dictionary definition of the word for guidance.” See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (citation omitted). In consulting general dictionary definitions, including that submitted by Petitioner (Ex. 1008), we find “arm” to be defined as: “any armlike part or attachment, as the tone arm of a phonograph” (www.dictionary.com (last visited Nov. 13, 2017) (emphasis added)); “[a] part attached to or projecting from something” (Ex. 1008); “a long thin piece that is connected to the main part of a machine, structure, etc., and that looks or moves like a human arm” (www.learnersdictionary.com (last visited Nov. 13, 2017) (emphases added)). We also consult the prosecution history of record. In an amendment dated February 7, 2013, the applicant asserted that “[t]he scope of independent claims [1 and 23] can be found in FIGs. 13 and 14 of the instant application and corresponding written description.” Ex. 1010, 10. We now review the Specification, namely, Figures 13 and 14 and their accompanying description. We find that these figures depict an “arm” extending distally of a “third hub,” and to illustrate this structure, we reproduce Figure 13 of the ’247 patent, below: The ’247 patent describes: The third housing 204 incorporates a pair of arms 210 each comprising a hook 212. The two hooks 212 are configured to engage the two bumps 36 to retain the third housing 204 to the catheter hub 14 in a ready to use position. The two arms 210 are preferably flexible to provide a gripping force against the two bumps 36, which is higher than the frictional force to withdraw the needle through the tip protector 202, hemostatic valve 46, and catheter 12. Alternatively the two arms 210 can be biased radially outward to increase the gripping force. Further, the two arms can be biased inwardly against the needle shaft to decrease the gripping force after the needle is withdrawn proximal of the arms 210. Ex. 1001, 11:33–45 (emphasis added).” slip op. at 18
- Skill levelSkill level board ownDecided for petitioner
“Neither Patent Owner nor Petitioner disputes our initial determination of a person having ordinary skill in the art (“POSITA”), and we see no reason to revisit it here. See, generally, PO Resp.; see also, generally, Pet. Reply. Accordingly, and as explained in our Decision to Institute, we determine that a POSITA would be either a medical practitioner (e.g., a nurse or doctor) having at least some experience with vascular catheter devices, or a person with a technical degree (e.g., associate’s degree in engineering or physics) and having at least some experience with vascular catheter devices. Paper 8, 17–18.” slip op. at 22
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Having considered Callaway in its entirety, and after weighing the competing testimony of Mr. Griffis and Mr. Meyst, we agree with Patent Owner and credit its expert that Callaway’s “third hub” 21 would do “nothing more than hold the spring clip in place until the needle is withdrawn,” and that the “only embodiment in which the inner catheter hub (21) potentially adds any needle protection is in the Critikon version” (PO Resp. 35), which does not integrate Woehr-630’s safety clip (Ex. 1004 ¶ 62), and which Petitioner does not rely on (see Pet. 26–27). Accordingly, because Petitioner fails to demonstrate by a preponderance of the evidence that Callaway teaches Woehr-630’s spring clip retained in hub 21 after the needle is withdrawn, Petitioner has not shown that claims 12, 13, 20–23, and 29 are unpatentable over Woehr, Callaway, and Sutton.” slip op. at 50
Patent outcomesUS 8,460,247 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,460,247 - Campbell Soup Company / Campbell Sales Company et al. v. Gamon Plus, Inc.No claims unpatentablePTAB · May 2, 2018 · IPR2017-00087 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–16 were cancelled at Patent Owner’s request; claims 27, 28, and 32–35 were not shown unpatentable over the instituted §103 grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, as of the earliest priority date of the claims, would have had either: “(1) a Bachelor’s Degree in Industrial Design and at least 1-2 years of experience in designing gravity feed display dispensers, or (2) 5-10 years of experience in designing gravity feed display dispensers.” Pet. 7 (citing Ex. 1002 ¶ 36). Patent Owner does not propose an explicit level of ordinary skill in the art in its Response. Consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construed according to their broadest reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In our Institution Decision, we construed several claim terms recited in claims 1–17. Inst. Dec. 13–20. Patent Owner requests cancellation of claims 1–16 and we did not institute inter partes review of claim 17. Thus, none of the claim terms we construed previously are at issue in the trial. Additionally, Patent Owner’s Response and Sur-Reply and Petitioner’s Reply do not request that we construe any additional claim terms. Accordingly, we need not construe expressly any claim terms to resolve the controversy before us. See Vivid Techs., 200 F.3d at 803.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“how or why an ordinarily skilled artisan would have been led to combine Weichselbaum and Nesso in the manner claimed. On that point, the Petition rests on bare opinion testimony that is not tethered to any disclosure in the prior art or other objective proof. Pet. 32 (citing Ex. 1002 ¶¶ 168–170). We are mindful that a reason to combine prior art may exist “in the content of the public prior art, in the nature of the problem addressed by the invention, or even in the knowledge of one of ordinary skill in the art.” Princeton Biochemicals Inc. v. Beckman Coulter Inc., 411 F.3d 1332, 1338-39 (Fed. Cir. 2005). But when we turn to the opinion testimony that undergirds Petitioner’s argument on the reasons to combine, we find no objective proof and inadequate reasoning. Id. Ultimately, Petitioner presents two very weak reasons based on unstated and unexplained factual assumptions in support of its view that one of ordinary skill in the art would have been prompted to modify Weichselbaum. Additionally, as explained above, Petitioner takes conflicting positions as to how Nesso’s second chute would be incorporated in Weichselbaum’s device and the record remains unclear as to the precise structure resulting from Petitioner’s combination. Accordingly, Petitioner fails to provide sufficient clarity regarding the specific modifications to Weichselbaum, fails to provide a sufficient reason with rational underpinning as to why and how one of ordinary skill in the art would have modified Weichselbaum in light of Nesso, and appears, on this record, to engage in an impermissible exercise of hindsight reconstruction to make out a reason to combine the applied references in the manner claimed. Further, in light of the full trial record, including Patent Owner’s evidence of secondary considerations discussed below, we are persuaded that the bare opinions set forth in the Visser Declaration (Ex. 1002 ¶¶ 168–170) are entitled to little weight. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for” opinion testimony “going to factual determinations” may be of little probative value in validity determination.”).” slip op. at 36
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner
“specific product and that product ‘is the invention disclosed and claimed in the patent.’” WBIP, 829 F.3d at 1329 (citation omitted). The presumption is rebuttable, but “a patent challenger cannot successfully rebut the presumption with argument alone—it must present evidence.” Id. (citation omitted). Patent Owner has shown that the asserted objective evidence, discussed further below, is tied to a specific product and that product “is the invention disclosed and claimed in the patent.” Id. (quoting J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997)). “This showing––that the specific products are embodiments of the claimed invention and that the proffered objective evidence relates to these products—is sufficient to establish the presumption of nexus for the objective considerations at issue in this case.” Id. at 1330. It is, therefore, Petitioner’s burden to rebut that presumption. Id. at 1329 (“a patent challenger cannot successfully rebut the presumption with argument alone— it must present evidence”); see Tr. 46:20–47:8 (Petitioner agreeing that nexus is presumed and that Petitioner has the burden to overcome the presumption.). Petitioner does not rebut the presumption of nexus. First, Petitioner’s entire argument is phrased as challenging whether Patent Owner satisfied its burden of establishing nexus, as opposed to whether Petitioner rebuts the presumption of nexus. Pet. Reply 20–21 (“It is Patent Owner’s burden to establish a nexus.”) (citing CaptionCall LLC v. Ultratec Inc., IPR2013- 00540, Paper 78 at 50 (PTAB Mar. 3, 2015)). Second, Petitioner points to other factors, including higher prices and increased advertising, referred to in Campbell’s annual reports that contributed to increased soup sales. Pet. Reply 21–22. There is no dispute that other factors also contributed to the increase in soup sales. But, there is also no dispute that Campbell’s own statements, through its Annual Reports and Mr. Finnel’s interview, tie increased soup sales expressly to Gamon’s display racks. Additionally, Campbell’s internal presentation describes Gamon’s IQ Maximizer as “Breakthrough Gravity Feed Shelving” and attributes the following to the display racks based on the results of its study: • +13.6% volume lift for Corporate Brand • +10% volume lift for Condensed Segment • +9.3% volume lift for Campbell’s Condensed • +5.5% volume lift for Wet Soup Category • Encourages purchase of additional varieties • Billboard effect improves branding: 210% larger • Positive labor impact due to elimination of shelf conditioning Ex. 2032, 4. Although other factors had some degree of impact on commercial success,29 we determine that Patent Owner has established that an appreciable amount of Campbell’s increased commercial success of soup during the relevant time period is attributable to the display rack covered by claim 27 of the ’111 patent. Accordingly, Gamon’s sales to Campbell of about $31 million from 2002–2009 as well as a portion of the increased sales of Campbell’s soup using Gamon’s display racks provide a strong showing of commercial success of the commercial embodiment of claim 27 of the ’111 patent.” slip op. at 61
Patent outcomesUS 8,827,111 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,827,111 - Samsung Electronics Co., Ltd. v. Infobridge Pte. Ltd.No claims unpatentablePTAB · Apr 23, 2018 · IPR2017-00100 · APJ John P Pinkerton · IPR · Final written decision
Claims 8 and 9 were not proven unpatentable because Samsung did not establish that WD4 was a prior art printed publication.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986) (citations omitted). Whether a reference is publicly accessible is determined on a case-by-case basis based on the “facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004) (citations omitted). A reference will be considered publicly accessible if it was “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) (citations omitted) (GSM standard was “sufficiently accessible, at least to the public interested in the art” (citing In re Hall, 781 F. 2d at 899)). Just as indexing plays a significant role in evaluating whether a reference in a library is publicly accessible, “indexing, ‘[w]hether . . . through search engines or otherwise,’ [] is also an important question for determining if a reference stored on a given website in cyberspace is publicly accessible.” Blue Calypso LLC v. Groupon Inc., 815 F.3d 1331, 1349 (Fed. Cir. 2016) (citing Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1381 (Fed. Cir. 2012)). “[A] printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication.” Suffolk Technologies, LLC v. AOL Inc., 752 F.3d 1358, 1365 (Fed. Cir. 2014). Whether a reference qualifies as a printed publication is a legal conclusion based on underlying factual determinations. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). slip op. at 13
Patent outcomesUS 8,917,772 not shown unpatentable§ 102 anticipationPatents in suitUS 8,917,772 - Samsung Electronics Co., Ltd. v. Infobridge Pte. Ltd.No claims unpatentablePTAB · Apr 23, 2018 · IPR2017-00099 · APJ John P Pinkerton · IPR · Final written decision
Claims 1–7 were not proven unpatentable because Samsung did not establish that WD4 was a prior art printed publication under § 102(b).
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“evidence does not establish WD4 was indexed in a manner that one ordinarily skilled in the art, exercising reasonable diligence, could locate it. See Response 45. There is no evidence that the JCT-VC site provided users sufficient guidance on finding documents of interest. Importantly, there is no evidence that one could search for or locate WD4 based on its subject matter. Although the Torino document register contains the number, title, and source (i.e, authors’ names) of each document, the subject of the document is not listed or identified. See In re Cronyn, 890 F.2d 1158, 1160– 61 (Fed. Cir. 1989) (finding references were not publicly accessible, despite the use of indexing, because the references were indexed only by title and author’s name, rather than by subject). Furthermore, identifying a meeting location was key to navigating the JCT-VC site; however, there is no evidence showing that persons of skill in the art outside of JCT-VC would have had any knowledge or familiarity with the cities in which the JCT-VC meetings were conducted or that the names of the cities were helpful in any respect in locating a document on the site. For these reasons, the evidence does not support the conclusion by a preponderance of the evidence that persons interested and ordinarily skilled in the art at the time of the invention would have been aware of the JCT-VC document repository site, or that, if they were aware of the site, would have been able to locate the WD4 document relied upon by Samsung.” slip op. at 19
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Mr. Bross’s testimony is conclusory and insufficiently factually supported. We understand Mr. Bross to be testifying in this regard as a fact witness pursuant to Federal Rule of Evidence 602, rather than as an expert witness pursuant to Federal Rule of Evidence 702. Under Rule 602, a fact witness may testify as to a matter only if “evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter.” Fed. R. Evid. 602. Here, Mr. Bross’s testimony is based on his “knowledge and recollection” and “the prominence of the JCT-VC” in the video coding industry. However, the particular factual knowledge on which the testimony is based is not described. Similarly, the “prominence” of the JCT-VC is nothing more than an unsupported assumption. We also find Mr. Bross has not been shown to have the requisite personal knowledge to testify about persons “who would regularly visit the JCT-VC site.” Even if we accepted Mr. Bross’s premise of the “prominence of the JCT-VC,” we would not find that to be a sufficient basis for Mr. Bross to reliably testify about persons “regularly visit[ing]” the JCT-VC site.” slip op. at 16
Patent outcomesUS 8,917,772 not shown unpatentable§ 102 anticipationPatents in suitUS 8,917,772
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.