• Campbell Soup Company / Campbell Sales Company et al. v. Gamon Plus, Inc.No claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,827,111
• Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.No claims unpatentable
  PTAB · Feb 2, 2018 · IPR2016-01452 · APJ James A Tartal · IPR · Final written decision

  Claims 22, 27, 46–52, 54, and 55 were not shown unpatentable over Myers, Myers and Bostock, or Anderson because the references did not disclose the claimed fluid-flow limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “to determine whether it further supports the contention that Myers discloses the “flowing a fluid” step. Mr. Shale’s declaration discusses the operation of Myers in a manner that is virtually identical in substance to the content of the Petition. Compare Ex. 1010 ¶¶ 49–53, with Pet. 21–24. Mr. Shale does not address directly the “flowing a fluid” step or otherwise explain how Myers discloses “flowing a fluid though an axial flowbore extending through the downhole tool.”7 Accordingly, we find Mr. Shale’s declaration fails to provide persuasive support for Petitioner’s contention that Myers discloses “flowing a fluid though an axial flowbore extending through the downhole tool while preventing the fluid from communicating with a different flowpath of the downhole tool,” as required by claim 22, beyond what Myers, itself, discloses.” slip op. at 17

  • BurdenNot shown unpatentable

    “Ex. 1021, 75:25 – 76:7. Mr. Underwood’s testimony does not support Petitioner’s contention that Myers discloses the “flowing a fluid” step. Mr. Underwood was asked whether there is “a fluid flowing within the Myers tool,” not whether Myers discloses “flowing a fluid though an axial flowbore extending through the downhole tool,” as required by claim 22. Id. Moreover, Mr. Underwood testified that “fluid doesn’t flow through the tool,” but rather just flows “into the tool.” Id. (emphases added)” slip op. at 20

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

    “claims 22, 27, 46, 47, 50–52, 54, and 55 of the ’099 patent. Inst. Dec. 22; see also Pet. 21–29. Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Specifically, “[f]or a claim to be anticipated, each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference.” Id. at 1332–33. Inherent disclosure is established where the reference “must necessarily include the unstated limitation.” Id. (emphasis omitted); see Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) (holding that inherency can be established by extrinsic evidence that “make[s] clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill”).” slip op. at 10

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

    “C. ASSERTED OBVIOUSNESS OVER MYERS AND BOSTOCK Petitioner contends claim 22, and claims 48 and 49, which depend from claim 22, would have been obvious over Myers and Bostock. Pet. 29– 32. With regard to the “flowing a fluid” step of claim 22, Petitioner relies only on the contentions it set forth under its anticipation analysis with respect to claim 22. Pet. 31. Because Petitioner does not rely on Bostock to teach the recited “flowing a fluid” step, does not argue the step would have been obvious over the combination, and, for the reasons provided above, has not shown by a preponderance of the evidence that Myers discloses the step, Petitioner has not shown by a preponderance of the evidence that claims 22, 48, and 49 would have been obvious over Myers and Bostock.” slip op. at 25

  Patent outcomesUS 7,314,099 not shown unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 7,314,099
• Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.No claims unpatentable
  PTAB · Feb 1, 2018 · IPR2016-01440 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 2, 4–20, and 28–42 were not shown unpatentable because Myers did not establish axial translation, and Myers with Bostock did not cure that deficiency.

  RulingsFinal written decision

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

    “radially” in the Petition. In its Reply, Petitioner equates “radially” to “outwardly” and “axially” to “downwardly.” Pet. Reply 7. Patent Owner contends that “axially and radially” would have been understood by a person of ordinary skill in the art “to refer to movement relative the body and oriented relative to the axis of the body.” PO Resp. 19 (citing Ex. 2018 ¶ 82). In particular, Patent Owner contends that “axial” refers to “movement along or parallel to the axis of the body, and that “radial” refers to “the direction perpendicular to the axis of the body.” PO Resp. 20. Patent Owner contends its interpretation is consistent with the Specification of the ’099 patent and is supported by both its expert, Mr. Underwood, and Petitioner’s expert, Mr. Shale. Id. at 18–21 (citations omitted). For example, Mr. Shale testified that “‘[r]adially’ basically means left to right within the tubular body,” and “‘axially’ means up and down within the tubular body.” Ex. 2021, 189:5–7. Patent Owner further notes that Figures 4, 5, 11, and 12 of the ’099 patent illustrate arms 520 moving axially and radially relative to body 510. PO Resp. 20. In its Reply, Petitioner argues that “[c]ontrary to Patent Owner’s assertion, claim 1 of the ’099 [p]atent does not require that the body 10 be the frame of reference for the axial and radial movement.” Pet. Reply 13 n.3. Petitioner, however, cites no persuasive evidence to counter Patent Owner’s proposed construction. Contrary to Petitioner’s assertion, Mr. Shale agreed that “radially” corresponds to “outward from the body,” and that “axially” corresponds to “up and down of the body.” Ex. 2021 190:4–19. Consistent with Mr. Shale’s testimony, Petitioner’s analysis purports to show that Myers discloses movement of moveable arms (slips 30) “both axially and radially relative to the body 10 [of Myers].” Pet. 19– 20. Petitioner is not alleging movement of the slips of Myers relative to a feature other than the body of Myers or in some other frame of reference. See Tr. 10:1–21. Thus, based on the evidence discussed above, we determine “translates axially and radially,” as recited in claim 1, means “moves parallel to and perpendicular to the body” and does not encompass movement consisting of only rotation about a pivot point. slip op. at 9

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

    “The steps discussed above address how slips 30 of Myers are deployed, but do not explain expressly whether slips 30 move axially relative to body 10 during deployment. With regard to the slips, Myers further provides that: [Slips 30] are positively movable laterally relative to the expander upon relative longitudinal movement between the expander and slips by inclined spline connections between the slips and expander, provided by oppositely directed side tongues 32 on each slip sliding in companion grooves 33 in the expander on opposite sides of slots 34 in the expander in which the slips are disposed. The lower ends of the slips 30 are coupled for movement longitudinally with one another by being connected to a slip ring 35 having generally T-shaped slots 36 therein receiving companion T-shaped heads 37 on the lower portions of the slips. Thus, the slips 30 move longitudinally jointly with the slip ring 35, although they are still permitted to move radially or laterally inwardly and outwardly of the slip ring, upon relative longitudinal movement between the slips 30 and expander 26. Ex. 1004, 3:2–17. In this passage, the movement of the slips includes “longitudinal movement,” which we understand generally corresponds to a vertical direction, as opposed to lateral movement in a horizontal direction. However, the movement is described relative to expander 26, not relative to body 10. See Pet. 13 (using “lateral” consistent with the horizontal extent and “longitudinal” consistent with the vertical extent). Thus, this passage also does not explain expressly whether slips 30 move axially relative to the body during deployment.” slip op. at 18

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

    “C. ASSERTED OBVIOUSNESS OVER MYERS AND BOSTOCK Petitioner contends claims 4, 33, and 34, each of which depends from claim 1, would have been obvious over Myers and Bostock. Pet. 24–26. According to Petitioner, “[e]ach of claims 4, 33, and 34 recites biasing either a sleeve or a movable arm to a collapsed position.” Id. at 24. Petitioner relies on Bostock as disclosing a spring for biasing. Id. As to the limitations of claim 1 from which claims 4, 33, and 34 depend, including the requirement of “one moveable arm translates axially and radially,” Petitioner relies only on the contentions it set forth under its anticipation analysis with respect to claim 1. Because Petitioner does not rely on Bostock to teach the recited feature “one moveable arm translates axially and radially,” does not argue the feature would have been obvious over the combination, and, for the reasons provided above, has not shown by a preponderance of the evidence that Myers teaches the feature, Petitioner has not shown by a preponderance of the evidence that claims 4, 33, and 34 of the ’099 patent would have been obvious over Myers and Bostock.” slip op. at 25

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Mr. Shale expresses the opinion that “slips 30 move both axially and radially relative to the body 10, along ‘generally T-shaped slots 36’ that are linear and angled relative to the axial direction,” we find that testimony to be conclusory and entitled to little weight, in part because this testimony does not account for the upward movement of setting sleeve 40. See Ex. 1010 ¶ 53 (quoting Ex. 1004, 3:11); see also In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Accordingly, we find Mr. Shale’s declaration fails to provide persuasive support for Petitioner’s contention that Myers discloses “one moveable arm translates axially and radially,” as required by claim 1, beyond what Myers, itself, discloses. We find more persuasive Mr. Underwood’s testimony, on behalf of Patent Owner, that Myers fails to disclose axial movement of slips 30. Ex. 2018 ¶¶ 90–107. According to Mr. Underwood: slots [36 of Myers] are shown as angled relative to the slip ring 35. However, though the slips may move downward (axially) relative to the slip ring 35 as the slips move outward (radially), the slip ring 35 at the same time moves upward (axially) relative to the body. As such, the angle of the slots 36 within the slip ring 35 is not, itself, indicative of the overall movement of the slips. Id. ¶ 91. Mr. Underwood further reasons that “as the slip ring moves upwardly, the movement of the slips relative to the body in the axial direction is zero due to the slips sliding downward in the slots 36 relative to the slip ring 35 in equal proportion.” Id. ¶ 94. Mr. Underwood also” slip op. at 20

  Patent outcomesUS 7,314,099 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 7,314,099
• Henny Penny Corporation v. Frymaster L.L.C.No claims unpatentable
  PTAB · Dec 21, 2017 · IPR2016-01435 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–3, 5–12, and 17–21, 23 were not proven unpatentable over Kauffman and Iwaguchi, with Howard for claims 18 and 20, because the motivation to combine was insufficiently shown.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art at the time of the invention would have been a “Bachelors of Science degree in Biosystems & Agricultural Engineering (or equivalent) or other Engineering major with a minor in Food Science and Technology and have had one or more years’ experience in the field of research and development of foods.” Pet. 7 (citing Ex. 1011 ¶ 74). Patent Owner does not propose an explicit level of ordinary skill in the art in its Response. Dr. Keener, however, expressly adopts Petitioner’s proposed level of skill in the art. Ex. 2032 ¶ 63. 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 13

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed board ownDecided for petitioner

    “means for re-circulating” In the Institution Decision, we preliminarily construed the claim term “means for re-circulating” as a means-plus-function limitation, invoking 35 U.S.C. § 112, ¶ 6. Id. at 17–18. We construed the function as “re-circulating said cooking oil” and identified the corresponding structure as “a pump and structural equivalents thereof.” Id. at 18–19. Neither party contests our construction of the term, and we maintain that construction here for the same reasons. slip op. at 7

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

    “We agree with Patent Owner that we need not expressly construe the term “adapter.” We reiterate the following from our Institution Decision: The term “adapter” appears in each claim of the ’691 patent. Neither party contends that the specification or prosecution history contains a lexicographic definition of the term, and neither party asserts that the specification or prosecution history contains a disclaimer of any portion of the plain and ordinary meaning of the term. From our review of the record, the structure and location of the adapter recited in the claims is provided by other claim language describing that (1) the adapter is located external to the fryer, (2) the sensor is disposed in the adapter, (3) the adapter is installed between two portions of the return pipe or drain pipe, and (4) the adapter has two opposite ends wherein one of the two ends is connected to one of the two portions of either the return pipe or the drain pipe and the other end is connected to the other portion of pipe.3 Inst. Dec. 9–10. In light of the above discussion, and because the focus of the parties’ dispute is not on the meaning of the term “adapter,” we decline to expressly construe the term further.” slip op. at 8

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Differences Between the Prior Art and the Claims; Motivation to Modify We instituted Petitioner’s challenge of these claims, and those that depend therefrom, based on Petitioner’s position that Kauffman disclosed most of the elements of the independent claims with the exception of a sensor capable of measuring an electrical property that is indicative of total polar materials. See, e.g., Inst. Dec. 31. Thus, the theory of obviousness, as discussed above, relies upon substituting Iwaguchi’s sensor for Kauffman’s analyzer. See id. at 31 (“Petitioner provides a second argument that relies upon a modification to Kauffman’s system, in which Iwaguchi’s sensor is employed instead of Kauffman’s analyzer. Because Petitioner provides adequate support for this second position, we address Patent Owner’s arguments based on this proposed combination.”). Petitioner confirmed at the oral argument that its Petition proposed a theory in which Iwaguchi’s sensor is simply swapped for that of Kauffman’s and did not present a more general theory as to modifying Kauffman’s sensor per the teachings of Iwaguchi: JUDGE WEINSCHENK: Did you include both of those alternative theories in your petition or is that something that you’re – you’ve come up with now in the reply? MR. VAIDYA: It’s something that we -- again, in the reply, we wanted to make it very clear that we aren’t going on a 102 basis and we are -- and what -- I think what -- we did have that alternate in the reply, so the alternate -- and I can point to paragraphs if that helps. And so, the idea is again primarily we’re going with the idea of swapping sensors, but that it would be possible to modify the sensor in Kauffman. JUDGE GERSTENBLITH: Because in the petition, it was a swap of the sensors. MR. VAIDYA: That’s right. JUDGE GERSTENBLITH: And that’s what we instituted -- MR. VAIDYA: That’s correct. JUDGE GERSTENBLITH: -- based on. MR. VAIDYA: That’s correct. Tr. 13:21–14:12. We disregard Petitioner’s alternative position as it was an attempt to raise a new theory of unpatentability improperly for the first time in the Reply. See 37 C.F.R. § 42.23(b) (“All arguments for the relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.”).” slip op. at 16

  Patent outcomesUS 8,497,691 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,497,691
• Los Angeles County Metropolitan Transportation Authority v. Transport Technologies, LLCNo claims unpatentable
  PTAB · Nov 17, 2017 · IPR2016-01633 · APJ Monica S Ullagaddi · IPR · Final written decision

  The Board held claims 1, 3, 5, 6, 8, and 10 not shown unpatentable because Petitioner failed to establish the Draft Ontario Report was prior art.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “consider whether the document was distributed, displayed without indicia of confidentiality, able to be found, or available on request to persons interested and ordinarily skilled in the subject matter to which the document relates. See Blue Calypso, LLC v. Groupon, Inc., 815 F. 3d 1331, 1348 (Fed. Cir. 2016) (“To qualify as a printed publication, a reference ‘must have been sufficiently accessible to the public interested in the art.’” quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed.Cir.1989)). We consider the question of whether the Draft Ontario Report is a printed publication anew, based on the complete record, in light of the evidence and arguments adduced at trial.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s Declarant, Mr. Andrews, testifies that a person of ordinary skill in the art relevant to the ’101 patent “would have a Bachelor’s of Science degree in Electrical or Computer Engineering, or the equivalent,” as well as “two years of experience working with automated toll roads, intelligent transportation systems, RFID tracking systems, or a similar field of experience.” Ex. 1008 ¶ 47. Patent Owner does not offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’101 patent. See generally PO Resp. Based on our review of the ’101 patent, the types of problems and solutions described in the ’101 patent and cited prior art, and the testimony of Petitioner’s Declarant, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention.” slip op. at 8

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

    “E. Discretion Under 35 U.S.C. § 325(d) Patent Owner contends that we should have denied the Petition because Petitioner presented “the same or substantially the same prior art or arguments” in this proceeding as in the earlier ’1077 IPR. PO Resp. 2 (citing 35 U.S.C. § 325(d)). Patent Owner further contends that we abused our discretion by instituting trial in the present proceeding because we did not “explain[] how the invalidity grounds presented in this proceeding are not ‘the same or substantially the same prior art or arguments,’” and as such, our decision was arbitrary and capricious, and violates Patent Owner’s due process rights. Id. at 13–15. Lastly, Patent Owner contends that the Petition is barred by the doctrine of res judicata. Id. at 15. We decline to address these issues insofar as they are moot in light of our conclusion that the Draft Ontario Report is not demonstrated to qualify as prior art and our ultimate conclusion that the challenged claims are not shown to be unpatentable in view of challenges based on the Draft Ontario Report.” slip op. at 21

  Patent outcomesUS 6,980,101 not shown unpatentable
  § 102 anticipationDiscretionary denialcites Graham
  Patents in suitUS 6,980,101
• Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.No claims unpatentable
  PTAB · Mar 7, 2017 · IPR2015-01833 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 4, 22, 23, 100, 113–116, 118, 119, 309–312, 314, 315, and 319 were not proven unpatentable because the asserted combinations did not establish the claimed bias signal.

  RulingsFinal written decision

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

    “ordinary meaning of “bias signal” is “a signal having a steady predetermined level.” Resp. 24; Reply 6. The parties also agree that at least some information signals may be considered “bias signals.” The crux of the parties’ disagreement is which type of information signal. The ’940 patent defines “information signal” as “[t]he signal that contains the information that is to be transmitted. As used herein, it refers to the original baseband signal at the source.” Ex. 1001, 8:48–50 (emphasis added). Thus, the ’940 patent clearly defines “information signal” as “the original baseband signal at the source.” The ’940 patent defines “baseband signal” as: Any generic information signal desired for transmission and/or reception. As used herein, it refers to both the information signal that is generated at a source prior to any transmission (also referred to as the modulating baseband signal), and to the signal that is to be used by the recipient after transmission (also referred to as the demodulated baseband signal). Ex. 1001, 7:41–47. The ’940 patent clearly gives a broad meaning to “baseband signal” such that it encompasses any signal desired for transmission and/or reception, but the definition of “information signal,” as quoted above, does not refer to any baseband signal. Rather, it refers to “the original baseband signal at the source.” Ex. 1001, 8:48–54. By including the terms “original” and “at the source,” the meaning of information signal, as defined by the ’940 patent, is more limited than the definition of a baseband signal. Thus, Petitioner’s contention that the meaning of “information signal,” and, hence, “bias signal” should be expanded to include any “baseband signal” (Reply 4) improperly takes “information signal” out of context. Petitioner’s contention eliminates the terms “original” and “at the source” from the ’940 patent’s definition of “information signal,” without providing any reason why those terms should not be considered. Accordingly, we agree with Patent Owner and construe “bias signal” to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.”” slip op. at 11

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

    “C. “to gate,” “desired harmonics,” and “pulse shaping module” Patent Owner asserts that we need not construe any of these terms because they “are not material to this IPR and should not be addressed or decided by the Board.” Resp. 31. Petitioner does not discuss the constructions of these terms in its Reply. See generally Reply. Based on the arguments before us, construing these terms does not appear to resolve a controversy between the parties. Accordingly, we agree with Patent Owner that we need not construe expressly any of these terms for purposes of this Decision” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3. Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 9 (citing Ex. 1002 ¶¶ 24–32). Petitioner’s argument is supported by Dr. Larson’s testimony. Ex. 1002 ¶¶ 24–32. Patent Owner does not contest Petitioner’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 17

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

    “Petitioner’s argument in its Reply is based on its incorrect claim construction of “bias signal” as encompassing any information signal. See, e.g., Reply 6–7 (asserting that the “bias signal” is met by Dobrovolny’s disclosure because it teaches “an information carrying High Level RF Source for reception”) (citing Ex. 1023, 1:14–17; Ex. 1002 ¶ 160). As explained above, “bias signal” is understood to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.” See supra Section II.A. Petitioner does not argue, and has not established, that Dobrovolny’s RF Source signal is either at a steady, predetermined level or is the original baseband signal at the source. Thus, Petitioner has not shown that Dobrovolny discloses the “bias signal” limitations recited in claims 4 and 22, and the claims that depend from each.6 Accordingly, Petitioner has not shown, by a preponderance of the evidence, that the combination of Dobrovolny and Maas would have rendered the subject matter of claims 4, 22, 113–116, 119, 309–312, 315, and 319 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19

  Patent outcomesUS 6,091,940 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,091,940
• Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.No claims unpatentable
  PTAB · Mar 7, 2017 · IPR2015-01834 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 21, 25, 26, 281, 283–286, 288, 289, 293, 363–366, 368, 369, and 373 were not proven unpatentable because the asserted obviousness combinations did not establish the claimed bias or reference signal.

  RulingsFinal written decision

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

    “information signals may be considered “bias signals” and “reference signals.” The crux of the parties’ disagreement is which type of information signal. The ’940 patent defines “information signal” as “[t]he signal that contains the information that is to be transmitted. As used herein, it refers to the original baseband signal at the source.” Ex. 1001, 8:48–50 (emphasis added). Thus, the ’940 patent clearly defines “information signal” as “the original baseband signal at the source.” The ’940 patent defines “baseband signal” as: Any generic information signal desired for transmission and/or reception. As used herein, it refers to both the information signal that is generated at a source prior to any transmission (also referred to as the modulating baseband signal), and to the signal that is to be used by the recipient after transmission (also referred to as the demodulated baseband signal). Ex. 1001, 7:41–47. The ’940 patent clearly gives a broad meaning to “baseband signal” such that it encompasses any signal desired for transmission and/or reception, but the definition of “information signal,” as quoted above, does not refer to any baseband signal. Rather, it refers to “the original baseband signal at the source.” Ex. 1001, 8:48–54. By including the terms “original” and “at the source,” the meaning of information signal, as defined by the ’940 patent, is more limited than the definition of a baseband signal. Thus, Petitioner’s contention that the meaning of “information signal,” and, hence, “bias signal” should be expanded to include any “baseband signal” (Reply 4) improperly takes “information signal” out of context. Petitioner’s contention eliminates the terms “original” and “at the source” from the ’940 patent’s definition of “information signal,” without providing any reason why those terms should not be considered. Accordingly, we agree with Patent Owner and construe “bias signal” to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source”; and we construe “reference signal” to mean “the original baseband signal at the source.”6” slip op. at 12

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

    “decided by the Board.” Resp. 31. Petitioner does not discuss the constructions of these terms in its Reply. See generally Reply. Based on the arguments before us, construing these terms does not appear to resolve a controversy between the parties. Accordingly, we agree with Patent Owner that we need not construe expressly any of these terms for purposes of this Decision.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “4. Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 10 (citing Ex. 1002 ¶¶ 24–29). Petitioner’s argument is supported by Dr. Larson’s testimony. Ex. 1002 ¶¶ 24–29. Patent Owner does not contest Petitioner’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 18

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

    “Petitioner’s argument in its Reply is based on its incorrect claim construction of “bias signal” as encompassing any information signal. See, e.g., Reply 7 (asserting that the “bias signal” is met by Dobrovolny’s disclosure because it teaches “an information carrying High Level RF Source for reception”) (citing Ex. 1023, 1:14–17; Ex. 1002 ¶¶ 154, 210). As explained above, “bias signal” is understood to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.” See supra Section II.A. Petitioner does not argue, and has not established, that Dobrovolny’s RF Source signal is either at a steady, predetermined level or is the original baseband signal at the source. Thus, Petitioner has not shown that Dobrovolny discloses the “bias signal” recited in claim 21 and the claims that depend therefrom, or the “reference signal” recited in claim 25 and the claims that depend therefrom.8 8 Petitioner does not rely upon Maas or Nardozza as disclosing a “bias signal” or “reference signal.” See Pet. 37–38 (relying only on Dobrovolny), 52–53 (same). Accordingly, Petitioner has not shown, by a preponderance of the evidence, that the combination of Dobrovolny, Maas, and Nardozza would have rendered the subject matter of claims 21, 25, 26, 281, 283–286, 289, 293, 363–366, 369, and 373 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 20

  Patent outcomesUS 6,091,940 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,091,940
• Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.No claims unpatentable
  PTAB · Mar 7, 2017 · IPR2015-01832 · APJ Bart A Gerstenblith · IPR · Final written decision

  The Board found claims 1, 18, 81–84, 86, 88–91, 93, 94, 251–254, 256, 258–261, 263, and 264 not proven unpatentable under either asserted obviousness ground.

  RulingsFinal written decision

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

    “ordinary meaning of “bias signal” is “a signal having a steady predetermined level.” Resp. 28; Reply 6–7. The parties also agree that at least some information signals may be considered “bias signals.” The crux of the parties’ disagreement is which type of information signal. The ’940 patent defines “information signal” as “[t]he signal that contains the information that is to be transmitted. As used herein, it refers to the original baseband signal at the source.” Ex. 1001, 8:48–50 (emphasis added). Thus, the ’940 patent clearly defines “information signal” as “the original baseband signal at the source.” The ’940 patent defines “baseband signal” as: Any generic information signal desired for transmission and/or reception. As used herein, it refers to both the information signal that is generated at a source prior to any transmission (also referred to as the modulating baseband signal), and to the signal that is to be used by the recipient after transmission (also referred to as the demodulated baseband signal). Ex. 1001, 7:41–47. The ’940 patent clearly gives a broad meaning to “baseband signal” such that it encompasses any signal desired for transmission and/or reception, but the definition of “information signal,” as quoted above, does not refer to any baseband signal. Rather, it refers to “the original baseband signal at the source.” Ex. 1001, 8:48–54. By including the terms “original” and “at the source,” the meaning of information signal, as defined by the ’940 patent, is more limited than the definition of a baseband signal. Thus, Petitioner’s contention that the meaning of “information signal,” and, hence, “bias signal” should be expanded to include any “baseband signal” (Reply 4) improperly takes “information signal” out of context. Petitioner’s contention eliminates the terms “original” and “at the source” from the ’940 patent’s definition of “information signal,” without providing any reason why those terms should not be considered. Accordingly, we agree with Patent Owner and construe “bias signal” to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.”” slip op. at 11

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

    “Further, Patent Owner explains that “[t]he parties agree on the portion of the ‘to gate’ construction that is material to this IPR, i.e., that ‘to gate,’ the switch module must change between connecting and disconnecting the bias signal from the switch module’s output.” Id. at 37 (citing Pet. 13–14). Patent Owner’s proposed construction is consistent with the construction proposed by Petitioner. See Dec. 11 (discussing Petitioner’s construction of “to gate [a signal]” as “to change . . . between (i) connecting a signal at an input to an output such that the input and output have an equal voltage, and (ii) disconnecting the signal from the output” (quoting Pet. 14)). In light of the consistency between the proposed constructions, and in light of the lack of an actual controversy between the parties with respect to the impact of the minor differences in the proposed meanings of this term, we need not construe expressly the term further.4 Petitioner’s Reply does not challenge Patent Owner’s arguments regarding these claim terms. Accordingly, we adopt the construction of “switch module,” as reproduced above, for the reasons explained in our Decision to Institute. See Dec. 8–11. Additionally, we decline to construe expressly the terms “summer” and “to gate,” for the reasons discussed above.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3. Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 11 (citing Ex. 1002 ¶¶ 24–29). Petitioner’s argument is supported by Dr. Larson’s testimony. Ex. 1002 ¶¶ 24–29. Patent Owner does not contest Petitioner’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 18

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

    “High Level Radio Frequency (“RF”) Source 10. The RF signal contains the information that television watchers see and hear.” Pet. 29 (citing Ex. 1023, 1:14–17). Petitioner asserts that Dobrovolny’s “RF Source signals are information signals that constitute ‘bias signals’ as that term is defined by the ‘940 patent.” Id. (citing Ex. 1002 ¶¶ 154, 210). Petitioner’s position is based on its claim construction of “bias signals” as “encompassing information signals.” Id. Notably, in the Petition,5 Petitioner does not assert that the recited “bias signal[s]” would have been obvious to one of ordinary skill in the art in light of Dobrovolny’s RF Source signals; rather, Petitioner’s position is that “bias signal[s]” are disclosed expressly. See id. (“RF Source signals . . . constitute ‘bias signals’”) (emphasis added).6 Patent Owner’s primary argument is as follows: [E]ven accepting [Petitioner’s] assertion that the ’940 patent expanded the ordinary meaning of ‘bias signal’ to include ‘information signal’ as defined in the patent . . . . [Petitioner] does not even allege, much less prove, that the purported ‘bias signal’—Dobrovolny’s high frequency Radio Frequency (RF) television signal—meets either of these definitions. Resp. 38–39. Patent Owner reiterates that Petitioner’s “only attempt to prove that the Dobrovolny RF television signal satisfies the claimed first and second bias signals is its assertion that Dobrovolny’s ‘RF signal contains the information that television watchers see and hear.’” Id. at 39 (quoting 5 As discussed infra, see Section III.C., Petitioner’s additional argument that bias signals would have been obvious in light of Dobrovolny’s RF Source signals constitutes a new argument, set forth only in Petitioner’s Reply, and we do not consider it here for the reasons explained below. 6 With respect to independent claim 18, Petitioner relies upon its arguments directed to the similar claim limitations of claim 1. See Pet. 44–45 (referring to Petitioner’s arguments directed to claim 1). Pet. 29). Patent Owner contends, however, that “an ‘information signal’ is not just any signal containing information . . . as [Petitioner’s] argument implicitly presumes. Rather, as defined in the ’940 patent, an information signal is restricted to ‘the original baseband signal at the source.’” Id. (quoting Ex. 1001, 8:48–54). Petitioner’s argument in its Reply is based on its incorrect claim construction of “bias signal” as encompassing any information signal. See, e.g., Reply 7 (asserting that the “bias signal” is met by Dobrovolny’s disclosure because it teaches “an information carrying High Level RF Source for reception”) (citing Ex. 1023, 1:14–17; Ex. 1002 ¶¶ 154, 210). As explained above, “bias signal” is understood to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.” See supra Section II.A. Petitioner does not argue, and has not established, that Dobrovolny’s RF Source signal is either at a steady, predetermined level or is the original baseband signal at the source. Thus, Petitioner has not shown that Dobrovolny discloses the “bias signal” limitations recited in claims 1 and 18, and the claims that depend from each.7 Accordingly, Petitioner has not shown, by a preponderance of the” slip op. at 19

  Patent outcomesUS 6,091,940 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,091,940
• Sipnet Eu S.R.O. v. Straight Path IP Group, Inc.No claims unpatentable
  PTAB · May 23, 2016 · IPR2013-00246 · APJ Kalyan K Deshpande · IPR · Remand

  On remand, the Board held claims 1–7 and 32–42 not shown unpatentable because WINS and NetBIOS do not disclose the claimed current-connection status.

  RulingsRemand decision

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

    “party-in-interest. Whether a non-party is a “real party-in-interest” or “privy” for purposes of an inter partes review proceeding is a “highly fact-dependent question” that takes into account how courts generally have used the terms to “describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion.” Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,759. Whether parties are real parties-in-interest or in privity, for instance, depends on whether the relationship between the party and its alleged real party-in-interest or privy is “sufficiently close such that both should be bound by the trial outcome and related estoppels.” Id. A number of factors may be relevant to the analysis, including whether the non-party “exercised or could have exercised control over a party’s participation in a proceeding,” and whether the non-party is responsible for funding and directing the proceeding. Id. “The concept of control generally means that ‘it should be enough that the nonparty has the actual measure of control or opportunity to control that might reasonably be expected between two formal coparties.’” Id. (quoting 18A C. Wright, A. Miller & E. Cooper, Federal Practice & Procedure § 4451 (2d ed. 2011)). Patent Owner has not demonstrated that Stalker Software exercised or could have exercised control over Petitioner’s participation in this proceeding. The evidence of record establishes only that Stalker Software provided the WINS reference, at the request of Petitioner. Pet. Reply 1; Tr. 28:3–9. This alone is insufficient to demonstrate that Stalker Software exercised, or could have exercised, control over Petitioner’s participation in this proceeding. Patent Owner’s evidence of the existence of a vendor-reseller relationship between Stalker Software does not demonstrate Stalker Software exercised, or could have exercised, any control. When a patent holder sues a dealer, seller, or distributor of an accused product, the mere payment of counsel fees and minor participation by the vendor in the trial are insufficient to establish privity between the vendor and reseller. Bros, Inc. v. W.E. Grace Mfg. Co., 261 F.2d 428, 430 (5th Cir. 1958); see generally Broadcom Corp. v. Telefonaktiebolaget LM Ericsson, Case IPR2013-00601, slip op. at 7, 8 (PTAB Jan. 24, 2014) (Paper 23). Patent Owner’s assertions regarding witnesses with connections to both Stalker Software and Petitioner, and Petitioner’s alleged lack of presence in the U.S. market, are statements of counsel unsupported by any record evidence, and, in any event, are not indicative of any control of this proceeding by Stalker Software. Considering the lack of probative evidence submitted by Patent Owner, we disagree that Stalker Software is a real partyin-interest. Accordingly, we are not persuaded that Petitioner is barred from initiating this proceeding, or that sanctions should be imposed on Petitioner.” slip op. at 10

  • BurdenNot shown unpatentable

    “fail to determine whether a computer or process is connected to the computer network. PO Resp. 31–46. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1004, 62–63, 75, 84, 130. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 73. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 148. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. See id. at 73, 148. Accordingly, a query as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1004, 84, 166. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” “currently connected to the Internet,” and “connected to the computer network,” as construed herein.” slip op. at 15

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Petitioner provides the testimony of Mr. Kolesnikov that WINS was publically available and a CD version (Ex. 1019) was received by Mr. Kolesnikov in 1994. Pet. Reply 13–14; Tr. 19:5–19; see Ex. 1017. Mr. Kolesnikov testifies that he saw several Microsoft Windows NT 3.5 Server packages that included a print copy of WINS. Ex. 1017 ¶ 7. Petitioner further provides the testimony of Ms. Ehrlich to establish that the differences between WINS and the CD version are differences mostly as to formatting. Pet. Reply 13–14; see Ex. 1018. Ms. Ehrlich testifies that WINS and the CD version are substantially similar, noting differences in the glossaries and formatting. Ex. 1018 ¶ 6; Ex. 2044, 16:17–24. We are persuaded that Petitioner has established WINS as prior art. We are persuaded that WINS was publically available in 1994. Mr. Kolesnikov testifies to seeing printed copies of WINS and the CD version in 1994. Ex. 1017 ¶ 7. Mr. Kolesnikov further testifies he recalls seeing printed copies of WINS during installations he did for clients in 1994, and is certain that it was 1994 because he switched jobs in 1995. Ex. 2043, 29:1–10, 32:21–22. Additionally, we are persuaded that the portions of WINS relied upon by Petitioner are different from the CD version due to formatting only. Tr. 23:1–25:8. Patent Owner’s argument consists of alleging that Petitioner has failed to establish that WINS was publically available and does not offer any evidence contrary to that presented by Petitioner. Based on the evidence discussed above, we are persuaded that Petitioner has established that WINS was publicly available in 1994, and, therefore, qualifies as prior art under 35 U.S.C. § 102(a).” slip op. at 14

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

    “fail to determine whether a computer or process is connected to the computer network. PO Resp. 31–46. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1004, 62–63, 75, 84, 130. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 73. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 148. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. See id. at 73, 148. Accordingly, a query as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1004, 84, 166. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” “currently connected to the Internet,” and “connected to the computer network,” as construed herein.” slip op. at 15

  Patent outcomesUS 6,108,704 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,108,704
• Masterimage 3d, Inc. / Masterimage 3d Asia, LLC v. Reald Inc.No claims unpatentable
  PTAB · Apr 20, 2016 · IPR2015-00035 · APJ Bart A Gerstenblith · IPR · Final written decision

  The Board denied cancellation of claims 1–23 because Petitioner did not show Schuck was entitled to the provisional filing date, so it was not prior art.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “It is only “confidential information” that may be protected from disclosure, 35 U.S.C. § 316(a)(7), and, even then, there is a public interest in “maintaining a complete and understandable file history” of the proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the burden of proof in showing entitlement to the requested relief. 37 C.F.R. § 42.20(c).” slip op. at 19

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for patent owner

    “as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “for multiple reasons. First, Petitioner acknowledges that what it refers to as “the Milburn doctrine” was codified in 35 U.S.C. § 102(e), and Petitioner does not show persuasively that we should read Milburn as requiring anything beyond application of that statutory section in light of the facts presented here. Supp. Reply 6. Second, Milburn did not address directly the question of whether an issued patent is entitled to claim priority to a provisional patent application, and, specifically, what must be shown in order to do so. Third, Schuck claims priority to not one, but three provisional applications, which was not the case in Milburn. Fourth, in Giacomini, the Federal Circuit expressly considered Milburn and stated: “An important limitation [on 35 U.S.C. § 119(e)(1)] is that the provisional application must provide written description support for the claimed invention.” Giacomini, 612 F.2d at 1383 (emphasis added). Although the Federal Circuit did not address the application of the argument—that the reference patent’s provisional application fails to provide written description support for the claimed subject matter—in Giacomini, because the appellant had waived it, the Federal Circuit’s decision acknowledges that there was an argument that could have been raised. Id. Finally, Dynamic Drinkware is directly on point and clearly establishes that Petitioner is required to show that the claimed invention of Schuck finds written description support in the ’657 provisional in order to rely on the ’657 provisional’s filing date. Dynamic Drinkware, 800 F.3d at 1381. It is undisputed that Petitioner has not done so. We find that Petitioner has not shown that claim 1 or any other claim of Schuck is supported by the ’657 provisional, and, thus, Petitioner has not shown that Schuck is entitled to claim priority to the ’657 provisional’s filing date. See Apple, Case IPR2015-00969, slip op. at 12–13. The result of our finding is that Schuck does not qualify as prior art, under § 102(e), to the ’455 patent, and, therefore, is not a reference which may be relied upon to establish the unpatentability of claims in an inter partes review. See 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” (emphasis added)). Accordingly, Petitioner has not demonstrated, by a preponderance of the evidence, that: (1) claims 1–8, 10–14, and 16–22 are unpatentable as anticipated by Schuck and (2) claims 9, 15, and 23 are unpatentable as obvious over Schuck and APA.” slip op. at 16

  Patent outcomesUS 7,857,455 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 7,857,455

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.