• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Jan 12, 2021 · IPR2019-01194 · APJ Minn Chung · IPR · Final written decision

  Claims 1 and 2 are unpatentable over Kim and Lee under § 103; Petitioner did not prove claims 4, 5, and 7 unpatentable because the combination was not adequately supported.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “determine that Petitioner has demonstrated sufficiently that the combination of Kim and Lee teaches “a mode indicator generator for generating a mode indicator that indicates a desired mode of the power gated circuit,” as recited in claim 1, and has articulated sufficient reasoning with rational underpinning for combining Kim and Lee to arrive at the subject matter of this claim limitation. c. Conclusion on Claim 1” slip op. at 64

  • Expert testimonyOther

    “F. Testimonial Evidence Petitioner relies on two Declarations from David Harris, Ph.D. in” slip op. at 9

  Patent outcomesUS 8,081,026 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,081,026
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Feb 6, 2020 · IPR2018-01033 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 17 is anticipated by Bednar, and claims 1 and 17 are obvious over Bednar and Gunther; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

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

    “requesting institution of inter partes review of claims 1, 4–6, and 17–19 of U.S. Patent No. 8,004,922 B2 (Ex. 1001, “the ’922 patent”). VLSI Technology LLC (“Patent Owner”) filed a Preliminary Response (Paper 12). Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims. Paper 17 (“Inst. Dec.”).” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8–9; see Pet. 36 (citing Ex. 1002 ¶¶ 26–27).” slip op. at 9

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

    “construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 45

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “preponderance of the evidence, that (1) claim 17 is anticipated by Bednar, and (2) claims 1 and 17 would have been obvious over the combination of Bednar and Gunther. For the reasons discussed above, Petitioner has not demonstrated, by a preponderance of the evidence, that (1) claim 1 is anticipated by Bednar or (2) claims 4–6, 18, and 19 would have been obvious over the combination of Bednar, Gunther, and Willingham. The chart below summarizes our conclusions.” slip op. at 91

  Patent outcomesUS 8,004,922 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,004,922
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Feb 6, 2020 · IPR2018-01144 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 2, 7, and 8 are unpatentable as obvious over Bednar and Gunther; claim 3 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8; see Pet. 29 (citing Ex. 1102 ¶¶ 26–27).” slip op. at 10

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

    “construction is erroneous. Accordingly, because the ’922 patent defines “power island,” we maintain and reaffirm that “power island” means a “group of components with similar power requirements.”” slip op. at 12

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

    “not to expressly construe “conversion controller” was erroneous or that an express construction is required to resolve any dispute between the parties. Accordingly, we maintain and reaffirm that because the construction of “conversion controller” does not resolve a controversy in the matter before us, we decline to construe it expressly.” slip op. at 13

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

    “construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 86

  Patent outcomesUS 8,004,922 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,004,922
• Wabco Holdings Inc. / Laydon Composites Ltd. v. Transtex Composites Inc.Some claims unpatentable
  PTAB · Jan 10, 2020 · IPR2018-01319 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1, 5–11, and 15–19 are unpatentable as obvious over Layfield and Rinard; claims 2–4, 12–14, and 20 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Micklow does not explain how or why he proposes a different level of ordinary skill in the art as compared to the level proposed by Petitioner and preliminarily adopted in our Decision on Institution. See generally id. ¶¶ 28–31. Additionally, neither Patent Owner nor Dr. Micklow argues that the difference in the proposed level of ordinary skill in the art affects the outcome of this proceeding; Dr. Micklow, in fact, states the contrary—that his opinions are the same under either level of skill. See Ex. 2001 ¶ 31.7 Nothing in the full record is sufficient to persuade us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm our preliminary finding that the level of ordinary skill in the art at the time of the invention would have been “a bachelor’s degree in mechanics, aeronautics, materials, or a related field of study, or equivalent experience, and at least two years of experience in the development of components of vehicles, or an equivalent amount of relevant work or research experience.” Inst. Dec. 10–11; see Pet. 10.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Turning to Petitioner’s video (Ex. 1018), Petitioner asserts testing of commercial versions of the Layfield fairing illustrates what one skilled in the art would have understood from Layfield itself, namely that the Layfield strut is adapted to sustain an elastic deformation when a load is applied to the resilient strut when the skirt panel moves away from the configuration reducing air drag about the trailer and to self-recover the resilient strut original shape when the load is removed. Pet. 29 (citing Ex. 1010 ¶¶ 102–103).16 We afford this evidence little weight for several reasons. First, the video does not show the strut or the bending of a strut. See Ex. 1018. In fact, the only feature shown is a skirt panel attached to a trailer. that because thermoplastic material is more resilient than aluminum, we should adopt Petitioner’s argument. Pet. Reply 15–16 (citing Ex. 1058, 1– 12; Ex. 1010 ¶¶ 77–82). We must base our decision in this case on the arguments and evidence presented. As explained above, the record before us has contradictory evidence in the form of Dr. Micklow’s testimony that was not before the examiner. 16 Petitioner does not cite Exhibit 1018 in the Petition, but instead cites to Mr. Tres’s testimony regarding the exhibit. Id. Thus, from the video, it is unknown whether the skirt panel is attached to the trailer by one strut, multiple struts, or additional features. Second, Petitioner does not identify clearly how the tested system precisely corresponds to the teachings of Layfield. For example, Patent Owner raises a number of issues with the struts and panels in the video to which Petitioner provides either no response or an unconvincing response. For example, Patent Owner argues that each embodiment of Layfield uses trusses 36 to “interconnect each skirt panel and reinforce the panel assembly,” while it is asserted that the skirt panels in the video do not have trusses and are not interconnected. PO Resp. 26. Petitioner argues that the skirt panels in the video were made according to the teachings of Layfield and did include “integral vertical lateral side edges as the connecting mechanism for adjacent panels.” Pet. Reply 19 (citing Exs. 1018, 2003, 2005; Ex. 1004, 18:36–39; Ex. 1010 ¶¶ 63–64; Ex. 1055 ¶¶ 37–38). Other than stating that the skirt panels have connecting mechanisms, Petitioner does not address the fact that the panels are not interconnected according to the teachings of Layfield, as Patent Owner correctly pointed out. See generally id. at 19–21.” slip op. at 28

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “components (see, e.g., id. at 17:1–10), Layfield does not contain any express disclosure concerning the flexibility of the struts. Nor does Layfield include any discussion about the desirability of strut flexibility. The closest Layfield comes to discussing flexibility of the struts is by frequently referring to the struts as “support struts” (see, e.g., id. at 18:40) and discussing the use of a “bracket means,” which is on the struts, to “rigidly secure” the skirt panels to the trailer (id. at 6:48–49). Further, Layfield’s detailed discussion of the embodiment of support strut 58 shown in Figure 10, reproduced below, highlights the bracing and reinforcement features. Figure 10, above, shows the construction detail of a support strut 58. Ex. 1004, 15:45. Specifically, Layfield discloses that strut 58 includes “a pair of spaced-apart vertical members 160, which are braced by horizontal cross-members 162” and “reinforcing rectangular lattice 170.” Id. at 15:46– 54. Thus, we agree with Patent Owner’s argument that “Layfield does not expressly teach that the ‘support struts 58’ are ‘resilient.’” PO Resp. 42 (citing Ex. 2001 ¶¶ 148–149). We reiterate that Petitioner’s first challenge is based on anticipation. Thus, Petitioner must show that resilient struts are “either expressly or inherently described, in” Layfield. Verdegaal Bros. Inc., 814 F.2d at 631; see also PO Resp. 42. In its Reply Brief and at the oral hearing, Petitioner contends that its challenge is based on express disclosure, not inherency. See Pet. Reply 17–18; Tr. 9:21–11:4 (arguing that “this is not a case of inherency”). Petitioner contends one of ordinary skill in the art “would have understood, based upon Layfield’s express disclosures concerning the material, structure, and connection of the strut, that the Layfield strut is resilient and can sustain significant and substantial elastic deformation.” Pet. Reply 18 (citing REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954, 960–61 (Fed. Cir. 2016)). Whether we analyze Petitioner’s argument based on express disclosure or inherency, we reach the same result. To begin, although we agree with Petitioner that a prior art reference “need not satisfy an ipsissimis verbis test” (Pet. Reply 17 (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), there is no express statement that Layfield’s strut is resilient or otherwise exhibits a characteristic synonymous with resiliency. Additionally, we do not agree that Petitioner’s reliance on the thermoplastic materials, disclosed by Layfield for construction of the strut, establishes whether the strut is resilient and capable of elastic deformation. The evidence submitted by the parties is contradictory as to whether one of ordinary skill in the art would have understood Layfield’s struts to be resilient based on the material alone.15 Compare Ex. 1010 ¶¶ 74–82 15 Petitioner also points to a finding by the examiner, during prosecution of the ’017 patent application, that an aluminum strut was resilient, and argues (Mr. Tres opining as to the materials disclosed by Layfield), with Ex. 2001 ¶¶ 160–164 (Dr. Micklow contradicting Mr. Tres’s testimony regarding the materials disclosed by Layfield). Further, the evidence is contradictory as to whether one of ordinary skill in the art would have understood from the design of Layfield’s strut, specifically the taper design and mechanism by which the strut connects to the trailer I-beam, that the strut is resilient. Compare Ex. 1010 ¶¶ 83–90 (Mr. Tres’s testimony regarding the design and connection mechanism), with Ex. 2001 ¶¶ 165–175 (Dr. Micklow’s contradictory testimony). Turning to Petitioner’s video (Ex. 1018), Petitioner asserts testing of commercial versions of the Layfield fairing illustrates what one skilled in the art would have understood from Layfield itself, namely that the Layfield strut is adapted to sustain an elastic deformation when a load is applied to the resilient strut when the skirt panel moves away from the configuration reducing air drag about the trailer and to self-recover the resilient strut original shape when the load is removed. Pet. 29 (citing Ex. 1010 ¶¶ 102–103).16 We afford this evidence little weight for several reasons. First, the video does not show the strut or the bending of a strut. See Ex. 1018. In fact, the only feature shown is a skirt panel attached to a trailer.” slip op. at 26

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

    “Additionally, Patent Owner similarly contends that the modifications proposed are redundant of Layfield’s “flexible lower panel 20,” which already “allow[s] flexing when impacting a road object.” PO Resp. 59 (citing Ex. 1004, 14:13–18); see PO Sur-reply 26–27. We disagree. Again, the proposed modifications here are to Layfield’s struts. In the context of Petitioner’s anticipation challenge, we agreed with Patent Owner and found that Petitioner had not established sufficiently on the record that Layfield’s struts were resilient. See supra, § II.D.a.i., ii. Therefore, the proposed modification addressed here, to make Layfield’s struts resilient, does not duplicate the objective of Layfield’s flexible lower panel 20 at least because (a) Layfield’s struts are a different structure than lower panel 20 and (b) modification of Layfield’s struts would provide greater impact protection to other panels aside from just lower panel 20. See Pet. Reply 26–27 (One of ordinary skill in the art “would have been motivated to do so because Rinard and Layfield both seek to provide fairing panels with ‘sufficient flexibility’ to bend when encountering objects.” (citing Ex. 1004, 12:67– 13:4; Ex. 1006, 10:43–50; Ex. 1055 ¶ 47)). We determine that Petitioner has shown that one of ordinary skill in the art would have had a reason with rational underpinning to look to other similar types of trailer components that are flexible to make further improvements to Layfield’s design. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Third, Patent Owner contends one of ordinary skill in the art “would not have a reasonable expectation of success at achieving the claimed technology by looking to the vertical supports of Rinard’s air scoops to modify the Layfield skirt panels 10 and support struts 58.” PO Resp. 61 (citing Ex. 2001 ¶¶ 237–240). Patent Owner asserts that because Layfield’s upper skirt panels are rigid and non-moving one of ordinary skill in the art “would not reasonably expect the hypothetical modified panels (with their reinforcing trusses 36) to move.” Id. Patent Owner also argues that Rinard teaches “an upper skirt panel that is rigid and non-moving” and so it is not reasonable to expect modifying Layfield as proposed would somehow cause Layfield’s fixed skirt panels to be able to move as claimed. PO Sur-reply 27–28 (citations omitted). We disagree for the same reasons discussed above—namely, we find Layfield’s upper skirt panels to be resilient. Therefore, one of ordinary skill in the art would have a reasonable expectation of success in achieving a resilient strut adapted as claimed by modifying Layfield’s strut in light of Rinard, for the reasons proposed by Petitioner. See Pet. Reply 27 (“Applying this solution to the Layfield skirt panel and struts would yield the predictable result of allowing the Layfield skirt panel 10 and struts 58 to absorb greater impacts without having to be repaired or replaced.” (citing Ex. 1021, 7–8, 11–12)).” slip op. at 42

  Patent outcomesUS 8,449,017 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,449,017
• DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentable
  PTAB · Jul 25, 2018 · IPR2017-00724 · APJ Michael W Kim · IPR · Final written decision

  Claims 19 and 26 are unpatentable: claim 19 as anticipated by Hite and claim 26 as obvious over Hite and Baji; claims 32–36 and 41 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “Petitioner, with supporting testimony from Dr. Negus, argues that a person of ordinary skill in the art would have combined Hite’s system with Hill’s teaching of a high access partition in order to increase storage efficiency and address Hite’s goal of providing “advertisers with less waste and greater cost effectiveness.” Pet. 60; Ex. 1008 ¶ 599 (quoting Ex. 1009, 3:21–35; citing Ex. 1010, 4:54–57). According to Petitioner and Dr. Negus, one of ordinary skill would have had reason to combine Hite and Hill— using Hill’s “high access partition allocated for high access data storage” to “store the high access advertisement data of Hite”—to “yield[] the completely predictable and desirable result” of “decrease[d] read and write times of advertisement data stored in Hite’s” storage devices, including optional video storage device 456. Pet. 60, 65; Ex. 1008 ¶ 599; see also Tr. 107:10–15 (asserting the same). Patent Owner argues Dr. Negus’ assertion that advertising data is” slip op. at 26

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

    “at least one addressable and reserved storage space is a partitioned area of a hard disk drive.” Ex. 1003, 49:55–58. Petitioner refers to Hite’s disclosures that its storage devices “can be . . . disks.” Pet. 27–28 (quoting Ex. 1009, 12:6–11; citing Ex. 1009, 10:44–49). Dr. Negus testifies that “‘disks’ at the alleged time of the invention of the ’494 patent were commonly known as ‘hard disk drives.’” Ex. 1008 ¶ 680 (emphases omitted). Petitioner and Dr. Negus represent that a person of ordinary skill in the art would, therefore, “have understood Hite to disclose the use of an entire ‘disk’ (or ‘hard disk’) as the ‘Video Storage Device’” or the RD. Pet. 28 (citing Ex. 1008 ¶ 680). Petitioner, with supporting testimony from Dr. Negus, further contends that “[w]hen the entire ‘hard disk’ storage space is undivided, it is within the broadest reasonable interpretation of the claimed ‘partitioned area of a hard disk drive.’” Pet. 28; Ex. 1008 ¶¶ 680, 683. We disagree. Based on Hite’s explanation that “[t]he storage devices used to implement” its system “can be . . . disks” as well as the evidence before us that “disks” or “hard disks” were known as “hard disks drives” at the relevant time, we agree with Petitioner that an ordinarily skilled artisan would have understood Hite to use an entire disk, hard disk, or hard disk drive for OVS Device 456 and for the RD. Ex. 1009, 10:44–49, 12:6–11; Ex. 1008 ¶ 680; see Ex. 3002 (MICROSOFT COMPUTER DICTIONARY (5th ed. 2002)), 246 (explaining, within definition of “hard disk,” that a “hard disk” is “[a]lso called: hard disk drive” and defining “hard disk drive” as “See hard disk” (emphases omitted)). We part ways with Petitioner, however, in its proffered conclusion that such an “entire,” “undivided” hard disk or hard disk drive falls within the ordinary meaning of “partitioned area of a hard disk drive.” Pet. 28; Ex. 1008 ¶¶ 680, 683; see Ex. 3001, 1087 (defining “partition” as “divide into parts”). The claim language expressly requires a “partitioned area of”—not a whole, entire, or undivided—hard disk drive. Thus, we disagree that an entire hard disk or hard disk drive constitutes the “partitioned area of a hard disk drive” required by claim 32. Accordingly, we are unpersuaded that Hite discloses “wherein said at least one addressable and reserved storage space is a partitioned area of a hard disk drive,” as recited in dependent claim 32. Thus, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 32 is anticipated by Hite.” slip op. at 20

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “e. Conclusion Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is anticipated by Hite. 4. Dependent Claim 26 Claim 26 depends from independent claim 19 and recites, in relevant part, “processing circuitry configured to dynamically merge the particular advertising data with digital media content that is pre-stored in said at least one storage device.” Ex. 1003, 49:6–9. The plain claim language unambiguously and expressly requires that it is the “digital media content” that must be “pre-stored.” Yet in addressing the limitation, the Petition represents, and Dr. Negus testifies, that Hite discloses “‘particular advertising data’ that is ‘pre-stored in said at least one storage device’ (prior to the ‘dynamic merging’ with ‘digital media content’),” because commercials targeted for a display site or consumer according to CID codes are stored in the RD or video storage device. Pet. 26 (emphasis added); Ex. 1008 ¶ 646 (emphasis added). These assertions that Hite’s system pre-stores what Petitioner identifies as the “particular advertising data,” targeted commercials selected using CID codes, fail to address or show adequately that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as claim 26 explicitly requires. Thus, we are unpersuaded that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as recited in dependent claim 26. Accordingly, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 26 is anticipated by Hite.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed

    “We agree with Patent Owner that Petitioner’s proffered rationale for combining Hite with Hill is not adequately supported by the record. Specifically, we agree with Patent Owner that Petitioner’s assertion that advertising data is “high access” data is a conclusory statement that fails to “articulate specific reasoning, based on evidence of record” to support an obviousness determination. In re: Magnum Oil Tools Int’l, Ltd., 829 F.3d at 1380. Although Hite discusses preempting broadcast commercials with stored commercials at broadcast breaks (see Ex. 1009, 7:24–30), Petitioner does not cite any portion of Hite, or provide any evidence at all, that explains how frequently the advertising data would have been accessed. Accordingly, because Petitioner has not shown adequately that it would have been obvious to one of ordinary skill in the art to combine Hite and Hill to arrive at “addressable and reserved storage space for storing the particular advertising data,” as recited in independent claim 19, we are unpersuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is obvious over Hite and Hill.” slip op. at 27

  Patent outcomesUS 9,053,494 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,053,494
• DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentable
  PTAB · Jul 25, 2018 · IPR2017-00717 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–4, 6, 7, 19, 23, 24, and 27 are unpatentable as anticipated by Hite or obvious over Hite; claims 16–18 and 28 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “preponderance of the evidence that the specified claims are unpatentable over the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent Owner that “any arguments for patentability not raised in the [Patent Owner Response] will be deemed waived.” Paper 10, 6; see also 37 C.F.R. § 42.23(a) (“Any material fact not specifically denied may be considered admitted.”).5 Additionally, the Board’s Trial Practice Guide states that the Patent Owner Response “should identify all the involved claims that are believed to be patentable and state the basis for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There are arguments and evidence advanced by Petitioner to support its positions, though, that Patent Owner chose not to address in either its Preliminary Response (Paper 7) or Response (Paper 22), or that was not addressed in the Decision on Institution (Paper 9). We have evaluated those unrebutted arguments and the evidence in support, and we find the Petitioner persuasively established, with sufficient evidence, the manner in which the asserted prior art teaches corresponding elements of the claims. Pet. 18–66 (citing Exs. 1008–1010) (unchallenged portions only). Based on the preponderance of the evidence before us, we conclude that the prior art identified by Petitioner describes all limitations of the reviewed claims that were not contested by the Patent Owner in either its Preliminary Response 5 For the reasons noted in our Order (Paper 43, 2–3), however, for this proceeding, we will also consider the arguments set forth in Patent Owner’s Preliminary Response. (Paper 7) or Response (Paper 22). In re NuVasive, 841 F.3d 966, 974 (2016). We address only the contested limitations below.” slip op. at 7

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

    “correspond properly to the claimed storage device, because it is not capable of recording programming content selected by a user for later playback. PO Resp. 14. We are not persuaded by this argument because, as discussed above, we are persuaded that a proper construction of “storage device” does not require recording programming content for later playback. We are persuaded that Petitioner has shown sufficiently that Hite’s OVS Device 456 corresponds properly to the “at least one storage device,” as recited in each of independent claims 1 and 19.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner. Petitioner does not explain sufficiently, and the cited portions of Hite do not disclose, how the method by which the progression is made from “children’s aspirin” to “children’s chewable vitamins.” Dr. Negus’s testimony is similarly unavailing, as the only cited paragraph that plausibly supports their position, paragraph 484, is conclusory and unsupported. Absent such explanation or cited disclosure, we are unpersuaded that Petitioner has shown adequately that the recited “key word” is a part of the progression, as required to meet the claim. 8 At least a portion of Dr. Negus’s testimony aligns with this testimony of Dr. Kesan. Ex. 1008 ¶ 669 (“An exemplary targeting characteristic to optimize advertising format scenarios within Hite is the ‘context code’ that ‘could be appended to the commercial’s CID code’ to be ‘compared with program identification codes appended to the program signals’ such that a ‘commercial is displayed if it is in a specific channel or network or show’ as in the example of ‘skiing equipment commercials would be shown during a skiing down hill racing competition’ (emphasis added, see, for example, Ex. 1009 at 4:34–40).”. Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 4 is anticipated by Hite.” slip op. at 22

  • Obviousness (§103) › KSR rationalesUnpatentableDecided for petitioner

    “Essentially, Patent Owner assertions are the same as those advanced for the anticipation ground for the same claim. We agree with Patent Owner’s assertions for the same reasons as set forth above. Having said that, the assertions are misplaced, because this is an obviousness ground, and Patent Owner does not address the modification to Hite proposed by the Examiner. To that end, we are persuaded by Petitioner that it would have been obvious to code Hite’s viewer responses using keywords, as we agree that such a technique was common and well known at the time of the invention, and that it would have been an obvious design choice. Ex. 1008 ¶ 486. Indeed, Patent Owner acknowledges this possibility, as they do not assert that using key words would not have been known, just that it may not have been preferable under certain circumstances. PO Resp. 53 (citing Ex. 2003 ¶ 92). Insofar as Patent Owner may be asserting that such a preference teaches away from a modification, we have considered it, but determine that it is outweighed by the evidence of the ubiquity of key word searches at the time of the invention. Indeed, we are unclear as to how, other than using numbers or key words, such searches could have been performed. KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”).” slip op. at 39

  Patent outcomesUS 9,053,494 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,053,494
• Fredman Bros. Furniture Company, Inc. v. Bedgear, LLCSome claims unpatentable
  PTAB · Jun 12, 2018 · IPR2017-00350 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–11, 13, 15–22, 24, 25, and 27–34 are unpatentable; claim 23 was not shown unpatentable, because the Rasmussen anticipation challenge failed.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Accordingly, Petitioner has not persuaded us that claim 23 is” slip op. at 62

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Accordingly, Petitioner has not persuaded us that claim 23 is” slip op. at 62

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

  Patent outcomesUS 8,887,332 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,887,332
• Department Of Justice v. Discovery Patents, LLCSome claims unpatentable
  PTAB · Nov 9, 2017 · IPR2016-01041 · APJ Matthew R Clements · IPR · Final written decision

  Claims 11, 12, 14, 16–18, and 20–31 are unpatentable over Monroe ’183; claims 15 and 19 were not shown unpatentable over Monroe ’183.

  RulingsFinal written decision

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

    “A petition for inter partes review may be considered only if, inter alia, “the petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party in interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations may include whether a non-party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760. Additional relevant factors include: the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. Whether a party who is not a named participant in a given proceeding is a real party in interest to that proceeding “is a highly fact-dependent question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term real party in interest to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Id. A non-party’s participation with a petitioner may be overt or covert, and the evidence may be direct or circumstantial, but the evidence as a whole must show that the non-party possessed effective control over the petitioner relating to the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). We have considered Patent Owner’s and Petitioner’s arguments and evidence, and we determine that Petitioner was not required to identify the Third Parties as real parties in interest because there is insufficient evidence that any of these companies exercised, or could exercise, control over Petitioner with respect to this proceeding. Patent Owner’s arguments regarding the motion practice before the Court of Federal Claims and notification of that action to the Third Parties does not reflect otherwise. Although we acknowledge that the existence of the above-identified indemnification clauses supports Patent Owner’s argument, we are unaware of any inter partes review decision in which a real party in interest finding was based solely on evidence of an indemnification clause, and we decline to do so here.” slip op. at 7

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “We decline to consider Patent Owner’s constitutional challenge as, generally, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments.” See Riggin v. Office of Senate Fair Employment Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”); Amanda Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003); but see Am. Express Co. v. Lunenfeld, Case CBM2014- 00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“for the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment”).” slip op. at 8

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

    “We agree with Petitioner. The ’980 patent states that “the term ‘secured location’ may refer to residences, commercial properties, public venues, such as hospitals and sports arenas, government facilities, military installations and any other location, outside or inside, which is protected by a security alarm system.” Ex. 1003, 3:20–24. This definition is non-limiting and does not exclude a changeable area or region. Based on the record developed during this proceeding, we maintain that the broadest reasonable construction in light of the ’980 patent of “secured location” is “any location, outside or inside, which is protected by a security alarm system.”” slip op. at 10

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

    “We agree with Petitioner. Although the Specification of the ’980 patent gives examples of “response agency,” e.g., Ex. 1003, 1:41–43 (“an emergency response agency (e.g., the police department, the fire department or an emergency medical team)”), Patent Owner does not identify, and we do not find, a definition in the specification limiting “response agency” to 911, police, or fire departments. Patent Owner also does not identify, and we do not find, anything in the entire disclosure of the ’980 patent requiring a “response agency” to be distinct from the “surveillance system infrastructure.” Accordingly, we decline to limit “response agency” to 911, police, or fire departments, or construe it to be distinct from surveillance system infrastructure.” slip op. at 11

  Patent outcomesUS 7,323,980 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,323,980
• Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentable
  PTAB · Sep 22, 2017 · IPR2016-00949 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 1–12 and 15–18, and 20 are unpatentable: claims 1, 3–12, 15–17, 19, and 20 as anticipated by Tosaki; claims 1–12, 15–18, and 20 as obvious over Enright and Tosaki.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “This Motion has no meaningful distinction from the Motion filed in IPR2016-00948, and we incorporate that analysis here. Consequently, we deny Patent Owner’s Motion.” slip op. at 4

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

    “Patent Owner’s argument is that the ’770 patent expresses a clear intent to disavow controllers having a recessed portion that does not receive a user’s fingers. See PO Resp. 17–22. Stated in a positive sense, Patent Owner argues that the ’770 patent expresses a clear intent to cover only recessed portions that receive a user’s fingers. Patent Owner does not identify, nor do we discern, any explicit disclosure in the ’770 patent that the invention includes only recessed portions that receive a user’s fingers. The description that “preferably” each elongate member is mounted in a recess such that a user’s fingers may be received in the recess is an exemplary disclosure of a preferred embodiment. See Ex. 1011, 1:62–67. Likewise, the disclosures that the elongate members (e.g., paddles 11) are mounted within recesses so that a user may engage the elongate members with the tips of the fingers are exemplary. See Ex. 1011, 2:21–25, 3:39–44, Fig. 3. Consequently, the ’770 patent does not express a clear intent to limit the claimed invention to recessed portions that receive a user’s fingers. See e.g., SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed.Cir. 2001); see also Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed.Cir. 1988) (“Although the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims.”). In light of the disclosures above, the ordinary meaning that a recessed portion is an indentation is consistent with the Specification.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner (Pet. Reply 9–10) that nothing in claim 1 precludes the back of Tosaki’s steering wheel 14 from corresponding to the back of the controller as claimed. Claim 1 is an open-ended claim, so that additional components like base casing 10 with its bottom plate 11 are not precluded. Patent Owner’s assertion is not persuasive because it is not commensurate in scope with the claims. c) Conclusion Petitioner has demonstrated by a preponderance of the evidence that Tosaki anticipates independent claim 1.” slip op. at 23

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We accept Patent Owner’s uncontested assertions regarding the education level of the inventors; however, this information provides an incomplete picture because other factors are involved. See e.g. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating a non-exhaustive list of six factors that are a guide to determining the level of skill in the art). For example, one concern is the type of problems encountered in the art, and the problem solved by the ’770 patent is but one type of problem encountered. Tosaki describes that removing a hand from the controller to manipulate switches makes prompt reaction difficult and degrades usability, and describing that repositioning the user’s hands can affect comfort. Ex. 1002, 1:54–67, 2:19–23. Tosaki describes an apparatus that permits manipulation of a plurality of switches while holding the controller. Id. at 3:20–23. Tosaki’s solution also includes switches on the back of the controller (shift levers) that are accessible to a user’s fingers. Id. at 3:36–4:8. Enright describes that controller had become more complex in that the number of functions and user input devices increased to the point that user’s had difficulty moving a finger to a desired button. Ex. 1003 ¶ 2. Enright describes that movement between input devices can be difficult. Id. at ¶¶ 3–4. As a solution, Enright disclosed a device that permits selection of discrete button commands without looking at or moving fingers from buttons. Id. ¶ 5. Enright’s solution includes switches (mode switches 32, 34) added to the underside (back) of the controller to reside near a user’s fingers for easy operation. Id. at ¶ 32. Enright also discloses that these switches may be located elsewhere is ergonomically desired. Id. In light of this, the prior art of record demonstrates that switch position on the controller, usability, and comfort were known problems in the art. Further, prior solutions included placing switches to be easily accessible to a user’s finger or thumb, and placing switches so that those switches are accessible without removing a finger or thumb from another switch. In particular, these solutions placed controls on the back of the controller to be accessible to a user’s fingers. The technology involved was placement of switches in ergonomically desired locations that permit usability.” slip op. at 37

  Patent outcomesUS 9,089,770 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,089,770
• Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentable
  PTAB · Sep 22, 2017 · IPR2016-00948 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 1, 6, 13, 14, 16, 17, 19, and 20 are unpatentable: Tosaki anticipates them, and Enright with Tosaki also renders claim 20 obvious.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “In our Decision to Institute, we explained that a preliminary response cannot serve as an effective objection for two reasons.2 Dec. 4–5 (entered on September 27, 2016). First, objections must be made after institution of trial. See 37 C.F.R. § 42.64(b)(1) (objections are due ten days from institution of trial). Second, an objection and a preliminary response may not be combined into a single document. See 37 C.F.R. § 42.6(a)(3) (prohibiting combined documents).” slip op. at 5

  • Strike new argumentNew argument consideredDecided for petitioner

    “The Petition fails to address a claimed characteristic of the elongate members (flexibility). See PO Resp. 39–41 (arguing that Enright does not disclose elongate members that are flexible as claimed). This cannot be corrected in Petitioner’s Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (Aug. 14, 2012) (a reply may not raise a new issue or belatedly present evidence); 35 U.S.C. § 312 (a)(3) (requiring petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”); 37 C.F.R. § 42.104(b)(4) (a petition for inter partes review must identify how the construed claim is unpatentable under the statutory grounds on which the petitioner challenges the claim and must specify where each element of the claim is found in the prior art patents or printed publications relied upon); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015); see also Paper 39, 2 (pointing out that Petitioner is making a new argument).20 Petitioner has not demonstrated by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over Enright and Tosaki. The same is true of claims 2–11, 13, 16, and 17 by virtue of their dependence from claim 1. 20 Petitioner argues that Patent Owner’s contention could not have been addressed earlier because the Board did not explicitly construe this claim limitation. Petitioner’s burden is not alleviated by the lack of a claim construction by the Board.” slip op. at 38

  • Expert testimonyPetitioner expert discountedMixed

    “In our Institution Decision, we observed that the Petition does not explain persuasively how observations from a UK patent examiner, which presumably are based on UK law and not United States law, are of use in our proceeding. Dec. 4. Petitioner asserts that Mr. Donohoe must be a person of ordinary skill because the level of ordinary skill is low, and because the UK Intellectual Property Office employed Mr. Donohoe to examine the video game controller art. Pet. Reply 16–17. Petitioner chose not to address our concern regarding the distinctions between United States and UK law. Because of those distinctions, Petitioner’s assertions and evidence with regard to Mr. Donohoe are entitled to little or no weight. This shortcoming is not fatal to this ground of unpatentability because, as explained below, the prior art of record is reflective of the level of skill in the art.” slip op. at 39

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contends that the level of skill in the art is relatively low and that “less than a year of experience or other training in controller assembly or tooling is required.” PO Resp. 34; Ex. 2002 ¶ 30 (Patent Owner’s expert opining that the level of skill is “no more than a year of experience or other training in controller assembly or tooling”). Patent Owner bases this level of skill on the education level of the inventor and the type of problems encountered in the art. PO Resp. 35. Regarding the education level of the inventors, Patent Owner provides evidence that the named inventors have degrees in unrelated fields. Id. (citing Ex. 2008, 3; Ex. 2009, 4). Patent Owner asserts the problem solved was that users of conventional game controllers were at risk of hand strain or injury from having to operate many different controls on the front of the controller with only a user’s thumbs. Id. at 35–36 (citing Ex. 2012 ¶ 10; Ex. 1001, 1:33–40, 3:56–61). Petitioner does not contest the education level of the inventors or the problem solved by the ’525 patent. Pet. Reply 15–16. Rather, Petitioner asserts that Patent Owner has taken the illogical position that the qualifications of a person of ordinary skill in the art are maximum levels of experience or training rather than minimums. Id. To the extent that Patent Owner’s assertion suggests that the level of skill may not exceed a year of experience or other training in controller assembly or tooling, we disagree. Patent Owner does not cite, nor are we aware, of any legal precedent supporting the assertion that education and experience levels are maximums that must not be exceeded. Regarding the problem solved by the ’525 patent, the portions cited by” slip op. at 40

  Patent outcomesUS 8,641,525 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,641,525

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.