• Amazon.Com, Inc. / Amazon.Com, LLC et al. v. Zitovault, LLCNo claims unpatentable
  PTAB · Apr 11, 2017 · IPR2016-00021 · APJ Daniel N Fishman · IPR · Final written decision

  Petitioner did not prove claims 1, 3, 5–8, and 10 unpatentable: the asserted grounds did not adequately identify sessions with recognizable beginnings and ends.

  RulingsFinal written decision

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

    “We are persuaded that our preliminary interpretation of “session” in our Decision on Institution is, at least in some respect, overly broad. Independent claims 1, 6, 7, and 10 each refer to “sessions” in plural, and independent claim 7 refers to “simultaneous” sessions. Thus, the term “session” must be understood, at least, in such a manner as to allow multiple sessions to be distinguished from one another. Although independent claim 5 does not recite “sessions” in plural, the same term should be construed consistently across all claims. Accordingly, we conclude that there must be sufficient delineation within a proper construction of “session” that separates a “session” between one client and one server and a different “session” when one of the client and server are replaced, and that separates multiple sessions from each other even between the same pair of client and server. During Oral Hearing there were extensive discussions regarding proper construction of “session.” See Tr. 7:9–22:18, 43:11–65:15, 74:21–76:13. At Oral Hearing, counsel for Petitioner agreed that “session” should be understood as communications having a recognizable beginning and a recognizable end. Id. at 10:13–16 (“Of course a session has a beginning and an end. I think that is axiomatic in a session. I think that is how Dr. Rubin defined it in his declaration”); see also id. at 12:21–13:5, Ex. 1005 ¶ 41. Patent Owner also agreed that if the construction of session is made to include a recognizable beginning and a recognizable end, that would be a proper construction for the term:” slip op. at 12

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

    “We agree with Patent Owner that Petitioner has failed to identify what constitutes a “session” in Feinberg in accordance with a proper construction of “session.” That proper construction of “session” is set forth above and has been agreed to by the parties. Tr. 10:13–16, 53:13–54:10. We state it again here: “a set of transmitters and receivers, and the data streams that flow between them wherein each data stream flowing between the transmitters and receivers has a recognizable beginning of the data stream transmission and a recognizable end of the data stream transmission.” Petitioner identifies Feinberg’s disclosure of forwarding (shunting) received requests from the primary server to secondary servers (for purposes of load balancing) teaches the recited “communication between the main server and agent server enlists additional agent servers to support incremental secure sessions in response to maintaining performance at a desired level.” Pet. 21–23 (emphasis added). The analysis is excessively generic for the claim recitation of “incremental secure sessions.” It is uncertain what Petitioner regards as a session in Feinberg much less how it begins and how it ends. It is unexplained by Petitioner whether a request in Feinberg begins a session, or something else in Feinberg begins a session. We decline to speculate in that regard. It is Petitioner who bears the burden of proof, and who must account for all the limitations in a claim. In that regard, we note further that it is insufficient for Petitioner to present only dots that may be connected in some unspecified manner to yield the claimed invention. Instead, Petitioner must make a sufficient connection through the dots to demonstrate a full accounting of the claimed invention. Petitioner had ample notice of the possibility of a narrower interpretation of “session.” See PO Resp. 7–11, 23–24. Indeed, Petitioner responded to that possibility by referring to its own expert’s testimony that the beginning and end of a session may be signified in a variety of forms. Pet. Reply 2. See Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016) (“The critical question for compliance with the APA and due process is whether [the parties] received ‘adequate notice of the issues that would be considered, and ultimately resolved, at [the] hearing’”) (internal citation omitted). Nevertheless, Petitioner’s Reply still does not specifically identify a “session” within Feinberg that accounts for what constitutes a session in Feinberg, including when it begins and ends. Claim 10 recites, in pertinent part, “sharing spare CPU cycles of the computer network for encrypting and decrypting communication to provide N simultaneous secure session[s] among said network of computers.” Petitioner’s analysis with respect to the recitation of “N simultaneous secure session[s]” is deficient for the same reasons we discussed above with respect to the recitation of “incremental secure sessions” in claim 6. For the above reasons, we are not persuaded Petitioner has established, by a preponderance of the evidence, that claims 6 and 10 are anticipated by Feinberg.” slip op. at 22

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

    “that the system supports “incremental secure sessions.” The Petition relies on Feinberg for disclosing such sessions, presenting the same arguments as those it presents for claim 6. See Pet. 33–34. Patent Owner argues Feinberg fails to disclose sessions for the same reasons as those that Patent Owner presented with respect to claim 6. See PO Resp. 36–37. Petitioner’s Reply asserts essentially the same arguments for claim 1 as it does for claim 6 regarding “incremental secure sessions.” Pet. Reply 17. Petitioner does not rely on Bhaskaran to alleviate the above-identified deficiency in the analysis of Feinberg with respect to claim 6. The standard for obviousness under 35 U.S.C. § 103(a) is what would have been taught or suggested to the ordinarily skilled artisan with based on the references. The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious and, the Court has noted that, the analysis supporting an obviousness assertion should be made explicit. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). A “legal determinations of obviousness, as with such determinations generally, should be based on evidence rather than on mere speculation or conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006). As discussed supra, Petitioner failed to account adequately for the recited “sessions.” Therefore, Petitioner has failed to establish by a preponderance of the evidence that independent claims 1, 6, and 10 would have been obvious over Feinberg and Bhaskaran and, for the same reasons, has failed to establish claim 3, dependent from claim 1, would have been obvious over Feinberg and Bhaskaran.” slip op. at 24

  • ExcludeMotion to exclude, deniedDenied

    “Initially, we note Patent Owner’s Motion to Exclude fails to identify the portions of Dr. Rubin’s Declaration that allegedly fail to be based upon sufficient facts or data, that allegedly are the product of unreliable principles and methods, or that allegedly fail to reliably apply sound principles and methods to the facts of the case. There is no requirement for an exact or perfect match between the expert’s experience and the field of the patent. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010). Thus, Patent Owner fails to meet its burden with respect to this Motion to Exclude. See 37 C.F.R. § 42.20(c). Furthermore, regarding the objections under FRE 702, we note that under 37 C.F.R. § 42.65(a), “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” Consequently, this objection more properly goes to the weight to be given Dr. Rubin’s testimony, and not to its admissibility. In any event, Patent Owner’s argument, that Petitioner did not explain the evidentiary weight or standard that was applied by Dr. Rubin, is misplaced. We note that Dr. Rubin is an expert witness, not a fact finder or a tribunal making fact findings. Dr. Rubin need only provide his opinion and, preferably, also provide the underlying reasoning, inclusive of data and facts, in support of his opinion. For the above reasons, Patent Owner’s Motion to Exclude is denied.” slip op. at 27

  Patent outcomesUS 6,484,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,484,257
• Jackel International Limited / Mayborn USA, Inc. v. Admar International, Inc.No claims unpatentable
  PTAB · Sep 21, 2016 · IPR2015-00979 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–5, 7–12, and 14 were not shown unpatentable under § 103 because the cited references did not teach or suggest the claimed spout.

  RulingsFinal written decision

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

    “In summary, we find that the extrinsic evidence cited by Patent Owner indicates that the ordinary and customary meaning of “spout,” as would have been understood by one of ordinary skill in the art in the context of the entire disclosure of the ’841 patent, is “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” (see Ex. 1001 at 2:6–11, 5:11–13, 5:60–67, 6:2–7, 6:17–23, 10:5–8, Figs. 1, 2, 5, 11–14, claims 1, 8; Ex. 2011, 1688) and does not include a nipple (see Ex. 2022 at 5–8, Figs. 1–3; Valderrama Decl. ¶¶ 91–94). Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2011) (“Even under the broadest reasonable interpretation, the Board’s construction ‘cannot be divorced from the specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.’”). Accordingly, based on the complete record before us, we interpret “spout” to mean “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” and does not encompass a nipple.” slip op. at 18

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

    “For the reasons discussed above in Section II.A, we determine that the broadest reasonable interpretation in view of the ’841 patent’s specification of “spout” to be “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” and does not encompass a nipple. We agree with Patent Owner that liquid cannot be poured through a nipple. PO Resp. 10 (“Spouts are intended for a stream of liquid, while nipples are intended for liquid to seep.”); see also Tr. 24:2– 26:3, 29:12–16 (arguing liquids are poured through a spout); Ex. 1022 at 140:1–12 (Mr. Valderrama testifying that Raymond and Mutti do not have a spout); Ex. 2026, 34:20–35:15, 50:23–51:7 (Dr. Brown testifying that Raymond does not refer to a spout). We find that liquid cannot be poured through Petitioners’ asserted spout (Pet. 18 (citing Ex. 1002 ¶ 32; Ex. 1003 at 5:17–20, Fig. 2)). The full record persuades us that Petitioners’ asserted spout in Raymond and similar structure in Mutti do not teach or suggest the spout of claim 1. See PO Resp. at 28–30 (citing Valderrama Decl. ¶¶ 135– 138; Ex. 1005, Fig. 2–4; Ex. 2026, 27:24–25:16, 86:10–25). Therefore, we find that Raymond fails to teach or suggest the spout of claim 1, as argued by Petitioners. Petitioners rely on Mutti to teach slits that would be understood to be self-sealing. Pet. 19–20 (citing Ex. 1002 ¶ 69; Ex. 1004, Figs. 10–11). Petitioners’ reliance on Mutti does not remedy the deficiency discussed above regarding the “spout” of claim 1.” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “Declaration of Stuart Brown (Ex. 1002)” because Patent Owner contends that “Dr. Brown admittedly has no experience in the design or development of the no-spill cups at issue in the ’841 patent” and “thus no basis to render an opinion of a person ordinarily skilled in the art.” Paper 31, 1. Petitioners respond that Patent Owner “failed to make a timely objection within ten business days of the institution of trial in this matter as required by 37 C.F.R. 42.64(b)(1)” and that Dr. Brown “is more than qualified to opine as a technical expert witness in the relevant art.” Paper 30, 1. Patent Owner filed a Reply (Paper 34). We agree with Petitioners that Patent Owner’s Motion to Exclude is not in compliance with 37 C.F.R. § 42.64(b). Even if Patent Owner’s Motion complied with our rules, however, as discussed above, we considered the Brown Declaration against the full record and gave it appropriate weight. And even having considered the relevant portions of the Brown Declaration, we are persuaded by Patent Owner’s arguments regarding whether the relied upon references teach or suggest “spout.” We, thus, deny Patent Owner’s Motion to Exclude.” slip op. at 26

  • Strike new argumentNew argument consideredDecided for petitioner

    “We agree with Petitioners that the portions of Petitioners’ Reply identified by Patent Owner are properly responsive to arguments presented by Patent Owner in its briefs. Also, to the extent any of the identified portions can be deemed new arguments, even when those new arguments are considered, as discussed above, we are nevertheless persuaded by Patent Owner’s arguments regarding whether the relied upon references teach or suggest “spout,” and so the objection is overruled.” slip op. at 25

  Patent outcomesUS 8,695,841 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,695,841
• Arctic Cat, Inc. v. Polaris Industries, Inc.No claims unpatentable
  PTAB · Feb 4, 2016 · IPR2014-01428 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–20, 22–33, and 35 were held patentable over the presented grounds because the cited combinations did not remedy the missing drive-shaft limitation.

  RulingsFinal written decision

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

    “transmission and the front axle assembly” and “a rear drive shaft extending between the transmission and the rear axle assembly.” Essentially, Patent Owner asserts that a given drive shaft must account for the entire distance between the transmission and the respective axle assembly in order to meet the aforementioned claim limitation, whereas Petitioner asserts that if the given drive shaft accounts for any amount of distance between the transmission and the respective axle assembly, the aforementioned claim limitation is met. PO Resp. 15–18 (citing Exs. 1002, 2029, 2085); Pet. Reply 2–7 (citing Exs. 1002, 1069, 2085). We discern that the key limitation in this regard is “extending between,” or more generically, “extend between.” Patent Owner provides excerpts from Merriam-Webster’s Dictionary concerning the definition of “extend,” of which the pertinent definitions would be as follows: “to stretch out to fullest length”; “to cause to reach (as in distance or scope)”; “to stretch out in distance, space, or time”; “to reach in scope or application.” Ex. 2085, 442–443. Use of words such as “fullest” and “reach” would appear to support Patent Owner’s proposed construction. When these definitions of “extend” are combined with the word “between,” which introduces the concept of discrete distances, we are persuaded that to “reach” a “fullest” discrete distance supports even further Patent Owner’s proposed construction. Patent Owner identifies the following portions of the specification as informing one of ordinary skill as to what is meant by “extend between,” and it is consistent with the aforementioned plain and ordinary meaning of “extend between”:” slip op. at 9

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

    “and Reply, as well as all supporting evidence, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 1–3, 5–13, 20, 23, and 25–33 are obvious over a combination of Hickey and Hill. Pet. 8–28; PO Resp. 22–46, 56–60; Pet. Reply. 7–25. Independent claim 1, the only independent claim at issue, recites “a front drive shaft extending between the transmission and the front axle assembly.” As set forth above, we construe the aforementioned claim limitations as requiring that a front drive shaft, and only that front drive shaft, must account for the entire distance between the transmission and the front axle assembly. Petitioner cites front propeller shaft 22 of Hickey as corresponding to the aforementioned “front drive shaft.” Front propeller shaft 22 is connected to transmission 14, however, via at least interaxle differential 20 and universal joint 26. Figure 1 of Hickey discloses that that front propeller shaft 22 stops well short of transmission 14, and so does not account for the entire distance between the transmission and the front axle assembly. While there could perhaps be some overlap in the distance covered by front propeller shaft 22, interaxle differential 20, and universal joint 26, Petitioner has not shown such overlap, and in any case, we determine that any such overlapping part of front propeller shaft 22 still would not account for the entire distance between the transmission and the front axle assembly. Accordingly, we determine that Hickey does not disclose or suggest “a front drive shaft extending between the transmission and the front axle assembly,” as recited in independent claim 1. Moreover, Petitioner does not cite Hill for remedying the aforementioned deficiencies of Hickey. Each of dependent claims 2, 3, 5–13, 20, 23, and 25–33 depend ultimately from independent claim 1, and include the same deficiency.” slip op. at 15

  • ExcludeOther

    “claims 1–38 of the ’405 patent are unpatentable. Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 17

  Patent outcomesUS 8,596,405 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,596,405
• Intri–plex Technologies, Inc. / Mmi Holdings, Ltd. v. Saint–gobain Performance Plastics Rencol LimitedNo claims unpatentable
  PTAB · Mar 23, 2015 · IPR2014-00309 · APJ William A Capp · IPR · Final written decision

  Claims 1–10 were not shown unpatentable because Saint-Gobain’s evidence of commercial success outweighed the obviousness case over Admitted Prior Art and Wing.

  RulingsFinal written decision

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Saint-Gobain argues that Wing does not satisfy either test. PO Resp. 26. slip op. at 30

  • Skill levelSkill level board ownOther

    “Notwithstanding the scant evidence on skill level presented by the parties, the level of skill in the art can often be determined from a review of the prior art. See Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985). Based on our review of the prior art and the other technology related exhibits of record that are contemporaneous with the date of the invention, the applicable art is hard disk drive assembly and similar precision machinery. The person of ordinary skill in this field would have been familiar with hard disk drive design and assembly in general and the use of tolerance rings in conjunction with actuator bearing cartridges in particular. Ex. 2001; Ex. 2016. The ordinarily skilled artisan would have been familiar with both Shaft Variable and Housing Variable tolerance rings and their manner of assembly with a bearing shaft and a bore. Ex. 1001, Admitted Prior Art. Such an artisan also would have been familiar with the problem of debris or particle generation during assembly of a hard disk drive. Ex. 2003; Ex. 1001, 2:5–17. Such a person would have 17 Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art: (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology, and (6) educational level of workers active in the field. Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). been familiar with the use of chamfering as an aid to assembly of machine components. Ex. 1023, 128:21–132:1; Ex. 1040. 18” slip op. at 34

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner

    “A patentee demonstrates commercial success by showing significant sales of the patented product in a relevant market. J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563 (Fed. Cir. 1997). However, evidence of commercial success is only significant if there is a nexus between the claimed invention and the commercial success. Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). In the instant case, Saint-Gobain produced evidence that adding a flared guide portion to a tolerance ring quickly caused sales of flared tolerance rings to supplant sales of non-flared tolerance rings. Saint-Gobain also produced evidence that adding a flared guide portion caused sales of tolerance rings to supplant the sales of other, competing technologies. This evidence indicates that market demand for the flared tolerance ring is attributable to the flared guide portion. We are not persuaded by Intri-Plex’s evidence and argument that the market dominance of flared tolerance rings is attributable to Saint-Gobain coercing customers into sole source agreements. During the period from 2003 to 2007, Saint-Gobain sold tolerance rings with and without a guide portion. We are persuaded that the rapid increase in sales of flared tolerance rings vis-à-vis non-flared rings is more logically explained by customer preference than supplier coercion. Indeed, given the relatively easily discernable difference between the non-flared tolerance rings and the flared tolerance rings, we are hard pressed to come to a determination that the increase in sales of the flared tolerance rings is attributable to anything other than the flared guide portion. In any event, Intri-Plex’s arguments are belied by its own admissions. In response to Saint-Gobain’s allegations of copying, Intri-Plex volunteered that the only reason Intri-Plex made tolerance rings with a flared guide portion is due to customer requests. Pet. Reply 4; Paper 67, 12. Intri-Plex further admitted that the reason that its customers requested flared tolerance rings is because they had set up their manufacturing operations to accommodate a flared tolerance ring to the exclusion of a non-flared ring. Tr. 31:416.19 These admissions constitute strong evidence that the commercial success is attributable to customer demand for the patented features. In summary, the commercial success of flared tolerance rings, whether made and sold by Saint-Gobain or Intri-Plex, weighs heavily in favor of non-obviousness of the invention. 2. Copying” slip op. at 37

  • Obviousness (§103) › Objective indicia / secondary considerations › CopyingDecided for patent owner

    “A party may prove copying by showing that an accused copier had access to the patented product combined with substantial similarity to the patented product. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). Here, Intri-Plex denies direct copying of Saint-Gobain’s product and asserts, instead, that its alleged copy was made in response to customer requests. However, Intri-Plex does not deny that its customers had access to Saint-Gobain’s product.21 To the contrary, Ryan Schmidt admitted that all of the flared tolerance rings that Intri-Plex made and sold were the result of customers asking Intri-Plex to be a “second source” to Saint-Gobain. Ex. 1033 ¶¶ 20–23, 29; Ex. 1034. We are not persuaded that Intri-Plex can insulate itself from an accusation of copying, merely by interposing an intermediary between itself and Saint-Gobain’s patented product.22 We determine that Intri-Plex’s customers gave Intri-Plex detailed product specifications of a flared tolerance ring because they wanted a second source for Saint-Gobain’s patented product. Whether information concerning Saint-Gobain’s patented product was passed from Intri-Plex’s customers to Intri-Plex in the form of detailed product specifications instead of an actual product sample does not, in our view, negate a finding that Intri-Plex had the 21 Tr. 71:13-15. 22 In the copyright context, courts have found access when the alleged infringer and an intermediary occupy positions such that it is natural that information possessed by one would be imparted to the other. See, e.g., Meta-Film Associates, Inc. v. MCA, Inc., 586 F. Supp. 1346, 1356 (C.D. Cal. 1984); Bevan v. Columbia Broadcasting System, Inc., 329 F. Supp. 601, 610 (S.D.N.Y. 1971). requisite access to Saint-Gobain’s patented product.23 Ex. 1033 ¶ 21; Ex. 1034. On the basis of the facts that (1) Intri-Plex admits that its own commercial product included a flared guide portion and (2) that the flared guide portion was added in response to customer requests for a second source to Saint-Gobain’s product, we are persuaded that Saint-Gobain has shown that Intri-Plex had access to the patented product and that there is substantial similarity between the parties’ respective products, specifically, that both products included flared guide portions. Intri-Plex’s evidence fails to persuade us that this similarity between the parties’ respective products is either a coincidence or the result of independent creation. Consequently, Saint-Gobain’s evidence of copying weighs in favor of a finding that the patented invention is non-obvious.” slip op. at 40

  Patent outcomesUS 8,228,640 not shown unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,228,640
• Groupon, Inc. v. Blue Calypso, LLCNo claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00044 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 4-9 were not shown unpatentable because Ratsimor was not established as prior art; cancellation of claims 1-3 and 10-13 was granted.

  RulingsFinal written decision

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

    “customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms “incentive program,” “incentive,” and “incentivizing” in accordance with these principles.” slip op. at 9

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “C. Patent Owner’s Motion to Amend Patent Owner’s Motion to Amend (Paper 18) is before us for consideration. In the motion, Patent Owner requests cancellation of claims 1-3 and 10-13 of the ’646 patent. The cancellation of these claims is not based on any contingency. There is no indication, for example, that claims 1-3 and 10-13 should be cancelled only if the claims are determined unpatentable. Rather, the Motion to Amend leaves no doubt that Patent Owner unequivocally requests cancellation of claims 1-3 and 10-13. For these reasons, we grant Patent Owner’s request to cancel claims 1-3 and 10-13 of the ’646 patent. Because Patent Owner requested cancellation of claims 1-3 and 10-13, not based on any contingency, Patent Owner has waived any issues with respect to claims 1-3 and 10-13, and, therefore, we need not address the patentability of those claims.” slip op. at 13

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

    “prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).” slip op. at 16

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

    “3. The Ratsimor Paper Is Not Prior Art For the foregoing reasons, we determine that Petitioner has not demonstrated, by a preponderance of the evidence, that the Ratsimor paper is a printed publication within the meaning of 35 U.S.C. § 102(b) and, therefore, the Ratsimor paper is not prior art to the claims of the ’646 patent. Therefore, Petitioner may not rely upon the Ratsimor paper for its asserted grounds of patentability under 35 U.S.C. § 103(a). Accordingly, we conclude that Petitioner has not demonstrated that (i) claims 4 and 5 would have been obvious over the Ratsimor paper and Paul, (ii) claims 6-8 would have been obvious over the Ratsimor paper, Paul, and Kitaura, or (iii) claim 9 would have been obvious over the Ratsimor paper, Paul, Hall, and MacEachren.” slip op. at 23

  Patent outcomesUS 8,452,646 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,452,646
• ZTE Corporation / ZTE (USA) Inc. v. Contentguard Holdings, Inc.No claims unpatentable
  PTAB · Jul 1, 2014 · IPR2013-00138 · APJ Michael R Zecher · IPR · Final written decision

  ZTE did not prove claims 1–18, 20–38, and 40–56 unpatentable because neither Leroux nor EP ’139 disclosed the required repository behavioral integrity.

  RulingsFinal written decision

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

    “the specification of the ’736 patent that allegedly support its proposed claim construction. Id. at 17–20 (citing Ex. 1001, 4:23–24, 6:65–7:2, 12:45–54, 13:51–53, 14:4–9, and 52:18–23). When instituting trial, we construed “repository” as “a trusted system which maintains physical, communications and behavioral integrity, and supports usage rights.” Dec. 13. For reasons discussed below, we adhere to the same interpretation for this final written decision. The specification provides a glossary that explicitly sets forth a definition for “repository.” For convenience, that glossary definition is reproduced below: Conceptually a set of functional specifications defining core functionality in the support of usage rights. A repository is a trusted system in that it maintains physical, communications and behavioral integrity. Ex. 1001, 52:20–23 (emphasis added). By setting forth the term in a glossary and using the verb “is” following “repository” in the second sentence, the specification sets forth an explicit definition of “repository” as “a trusted system in that it maintains physical, communications and behavioral integrity.” The first sentence also is relevant to the definition of “repository” because it specifies that the repository supports usage rights. Accordingly, we construe “repository” as “a trusted system which maintains physical, communications and behavioral integrity, and supports usage rights.”” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “based on anticipation by Leroux—not obviousness over Leroux. As such, the issue is not merely whether one with ordinary skill in the art would have recognized that Leroux’s identification and authentication procedures used to interrogate the right of access include using a digital certificate to authenticate the source of the software, but whether those procedures necessarily require a digital certificate. To establish inherency, the extrinsic evidence ‘must make 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. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’ In re Oelrich, 666 F.2d 578, 581–82 (CCPA 1981). Although Leroux’s identification and authentication procedures may include using a digital certificate to authenticate the source of the software, mere probabilities or possibilities fall short of demonstrating that those procedures necessarily require using a digital certificate. In our discussion of the construction of “behavioral integrity,” we were not persuaded by ContentGuard’s contention that a digital certificate is not required, or that anything which accomplishes a similar objective in substantially the same way is satisfactory.” slip op. at 30

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “We do not credit the testimony of ContentGuard’s expert, Dr. Michael T. Goodrich, in paragraphs 40 and 41 of his Declaration (Ex. 2013). In those paragraphs, Dr. Goodrich attests that, in his opinion, a person of ordinary skill in the art in 1994 would have understood that the term “repository software” in the ’736 patent identifies and refers to the operating software of the repository, and not the software digital works the usage rights of which are controlled by the repository. Dr. Goodrich’s testimony is unpersuasive because it does not account for the disclosure of the specification, discussed above, which conveys that some repositories are rendering depositories that run and execute the software digital works the rights of which they control, such as a new version of a “player.”” slip op. at 21

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

    “based on anticipation by Leroux—not obviousness over Leroux. As such, the issue is not merely whether one with ordinary skill in the art would have recognized that Leroux’s identification and authentication procedures used to interrogate the right of access include using a digital certificate to authenticate the source of the software, but whether those procedures necessarily require a digital certificate. To establish inherency, the extrinsic evidence ‘must make 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. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’ In re Oelrich, 666 F.2d 578, 581–82 (CCPA 1981). Although Leroux’s identification and authentication procedures may include using a digital certificate to authenticate the source of the software, mere probabilities or possibilities fall short of demonstrating that those procedures necessarily require using a digital certificate. In our discussion of the construction of “behavioral integrity,” we were not persuaded by ContentGuard’s contention that a digital certificate is not required, or that anything which accomplishes a similar objective in substantially the same way is satisfactory.” slip op. at 30

  Patent outcomesUS 7,139,736 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,139,736
• ZTE Corporation / ZTE (USA) Inc. v. Contentguard Holdings, Inc.No claims unpatentable
  PTAB · Jul 1, 2014 · IPR2013-00137 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–5, 9–11, 15–17, 19, 21–33, 37–38, 42–44, 46, 48–62, 66–67, 71–73, 75, and 77–84 were not shown unpatentable as anticipated by Leroux under § 102(e).

  RulingsFinal written decision

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

    “The specification provides a glossary which recites the following meaning for “repository”: Conceptually a set of functional specifications defining core functionality in the support of usage rights. A repository is a trusted system in that it maintains physical, communications and behavioral integrity. Ex. 1001, 50:47-51 (emphasis added). By setting forth the term in a glossary and using the verb “is” following “repository” in the second sentence, the specification sets forth an explicit definition of “repository” as “a trusted system in that it maintains physical, communications and behavioral integrity.” The first sentence is relevant also to the definition of “repository” because it specifies that the repository supports usage rights. Accordingly, we construe “repository” as “a trusted system which maintains physical, communications and behavioral integrity, and supports usage rights.”” slip op. at 8

  • Expert testimonyPetitioner expert discountedMixed

    “Ex. 1025, ¶ 25. We are not persuaded that Dr. Madisetti’s conclusion is credible, because, even though we agree with the underlying facts in the aforementioned portions of Leroux cited by Dr. Madisetti, those underlying facts do not support adequately his conclusion. In particular, Dr. Madisetti asserts that software uploaded to service center 1 from the vendor will include a digital certificate, so that later the software can be identified by microcomputer 2 running the identification and authorization procedures to load the software from the service center 1 to the microcomputer 2. However, these facts are inapposite to Dr. Madisetti’s conclusion for several reasons. First, there is no indication that only a vendor is capable of uploading software to service center 1. Leroux is silent as to whether software uploaded into service center 1 by a non-vendor requires a digital certificate. Behavioral integrity requires that all software uploaded to service center 1 include a digital certificate, whether from a vendor or a nonvendor. Second, just because the uploaded software includes a digital certificate does not indicate that the digital certificate is required to upload the software. In other words, there is no indication in Leroux that the digital certificate has any relationship to the uploading process, itself, when it is uploaded with the software into service center 1, as would be required for “behavioral integrity.”” slip op. at 28

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “As an initial matter, we note that the ground of unpatentability is based on anticipation by Leroux—not obviousness over Leroux. As such, the issue is not merely whether one with ordinary skill in the art would have recognized that Leroux’s identification and authentication procedures used to interrogate the right of access include using a digital certificate to authenticate the source of the software, but whether those procedures necessarily require a digital certificate. To establish inherency, the extrinsic evidence ‘must make 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. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’” In re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981). Although Leroux’s identification and authentication procedures may include using a digital certificate to authenticate the source of the software, mere probabilities or possibilities fall short of demonstrating that those procedures necessarily require using a digital certificate. In our discussion of the construction of “behavioral integrity,” we were not persuaded by ContentGuard’s contention that a digital certificate is not required, or that anything which accomplishes a similar objective in substantially the same way is satisfactory.” slip op. at 25

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

    “removable carrier 4 does not constitute the “distributed repository,” as recited by each of independent claims 1, 29, and 58, because ZTE has not persuaded us that the identification and authentication procedures used to interrogate the right of access associated with the software stored on removable carrier 4 necessarily includes a digital certificate that authenticates the source of the software. In addition, Leroux’s database service center 1 does not constitute the “another distributed repository,” as recited by each of independent claims 1, 29, and 58, because ZTE has not persuaded us that a digital certificate is required necessarily to upload software from a software vendor into database service center 1. For the foregoing reasons, we conclude that ZTE has not demonstrated by a preponderance of the evidence that independent claims 1, 29, and 58 are anticipated by Leroux.” slip op. at 32

  Patent outcomesUS 6,963,859 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,963,859
• ZTE Corporation / ZTE (USA) Inc. v. Contentguard Holdings, Inc.No claims unpatentable
  PTAB · Jul 1, 2014 · IPR2013-00133 · APJ Michael R Zecher · IPR · Final written decision

  ZTE did not prove claims 1–25 unpatentable because EP ’139 did not disclose a digital certificate required for the claimed repository’s behavioral integrity.

  RulingsFinal written decision

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

    “The specification provides a glossary that explicitly sets forth a definition for “repository.” For convenience, that glossary definition is reproduced below: Conceptually a set of functional specifications defining core functionality in the support of usage rights. A repository is a trusted system in that it maintains physical, communications and behavioral integrity. Ex. 1001, 51:34–37 (emphasis added). By setting forth the term in a glossary and using the verb “is” following “repository” in the second sentence, the specification sets forth an explicit definition of “repository” as “a trusted system in that it maintains physical, communications and behavioral integrity.” The first sentence also is relevant to the definition of “repository” because it specifies that the repository supports usage rights. Accordingly, we construe “repository” as “a trusted system which maintains physical, communications and behavioral integrity, and supports usage rights.”” slip op. at 10

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

    “Physical integrity refers to the integrity of the physical devices themselves. Physical integrity applies both to the repositories and to the protected digital works. Thus, the higher security classes of repositories themselves may have sensors that detect when tampering is attempted on their secure cases. In addition to protection of the repository itself, the repository design protects access to the content of digital works. In contrast with the design of conventional magnetic and optical devices-such as floppy disks, CD-ROMs, and videotapes-repositories never allow non-trusted systems to access the works directly. A maker of generic computer systems cannot guarantee that their platform will not be used to make unauthorized copies. The manufacturer provides generic capabilities for reading and writing information, and the general nature of the functionality of the general computing device depends on it. Thus, a copy program can copy arbitrary data. This copying issue is not limited to general purpose computers. It also arises for the unauthorized duplication of entertainment “software” such as video and audio recordings by magnetic recorders. Again, the functionality of the recorders depends on their ability to copy and they have no means to check whether a copy is authorized. In contrast, repositories prevent access to the raw data by general devices and can test explicit rights and conditions before copying or otherwise granting access. Information is only accessed by protocol between trusted repositories. Ex. 1001, 12:1–26 (emphases added).” slip op. at 10

  • Expert testimonyPatent owner expert discountedPatent owner expert creditedMixed

    “We do not credit the testimony of ContentGuard’s expert, Dr. Michael T. Goodrich, in paragraph 48 of his Declaration (Ex. 2013). In that paragraph, Dr. Goodrich attests that, in his opinion, a person of ordinary skill in the art in 1994 would have understood that the term “repository software” in the ’072 patent identifies and refers to the operating software of the repository, and not the software digital works, the usage rights of which are controlled by the repository. Dr. Goodrich’s testimony is unpersuasive because it does not account for the disclosure of the specification, discussed above, which conveys that some repositories are rendering depositories that run and execute the software digital works the rights of which they control, such as a new version of a “player.”” slip op. at 18

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

    “1. Principles of Law To establish anticipation under § 102(b), “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). We analyze the ground of unpatentability based on anticipation by EP ’139 with the principles stated above in mind.” slip op. at 22

  Patent outcomesUS 7,523,072 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,523,072
• ZTE Corporation / ZTE (USA) Inc. v. Contentguard Holdings, Inc.No claims unpatentable
  PTAB · Jun 26, 2014 · IPR2013-00139 · APJ Jameson Lee · IPR · Final written decision

  ZTE did not prove claims 18-21, 25-28, and 31-36 unpatentable because EP ’139 did not disclose the claimed receiving step.

  RulingsFinal written decision

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

    “The specification provides a glossary which recites the following meaning for “repository”: Conceptually a set of functional specifications defining core functionality in the support of usage rights. A repository is a trusted system in that it maintains physical, communications and behavioral integrity. Ex. 1001, 52:1-6 (emphasis added). By setting forth the term in a glossary and using the verb “is” following “repository” in the second sentence, the specification sets forth an explicit definition of “repository” as “a trusted system in that it maintains physical, communications and behavioral integrity.” The first sentence is also relevant to the definition of “repository” because it specifies that the repository supports usage rights. Accordingly, we construe “repository” as “a trusted system which maintains physical, communications and behavioral integrity, and supports usage rights.”” slip op. at 10

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

    “Physical integrity refers to the integrity of the physical devices themselves. Physical integrity applies both to the repositories and to the protected digital works. Thus, the higher security classes of repositories themselves may have sensors that detect when tampering is attempted on their secure cases. In addition to protection of the repository itself, the repository design protects access to the content of digital works. In contrast with the design of conventional magnetic and optical devices-such as floppy disks, CD-ROMs, and videotapes-repositories never allow non-trusted systems to access the works directly. A maker of generic computer systems cannot guarantee that their platform will not be used to make unauthorized copies. The manufacturer provides generic capabilities for reading and writing information, and the general nature of the functionality of the general computing device depends on it. Thus, a copy program can copy arbitrary data. This copying issue is not limited to general purpose computers. It also arises for the unauthorized duplication of entertainment “software” such as video and audio recordings by magnetic recorders. Again, the functionality of the recorders depends on their ability to copy and they have no means to check whether a copy is authorized. In contrast, repositories prevent access to the raw data by general devices and can test explicit rights and conditions before copying or otherwise granting access. Information is only accessed by protocol between trusted repositories. Ex. 1001, 12:35-61 (emphases added). Much of the above description makes use of permissive terms such as “may” and “can” and, thus, do not reflect or indicate a required limitation for physical integrity. The specification also appears to use the terms or phrases in each of the following three groups interchangeably: 1. data, content, digital work, information; 2. non-trusted system, general device; and 3. “never allow access” and “prevent access.” When referring to the relationship between the repository and data, the specification uses absolute terms such as “never” and “only.” In light of the foregoing, we construe “physical integrity” as “preventing access to information by a non-trusted system.”” slip op. at 11

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

    “We are unpersuaded by ZTE’s argument, and agree with ContentGuard. Although it is true that claim 18 does not require the authorization object to be “first” received in the repository when it is determined that a request for it should be granted, at least an instance of receiving, as an affirmative act, is necessary. In other words, if not being received for the first time, the authorization object must be received a second, third, or fourth time, and so forth. For an object that already is received, not receiving it another time does not meet the claimed “receiving” step. We agree with ContentGuard that, where coprocessor 20 is the repository and software decryption key AK is the authorization object, moving the key from one part of coprocessor 20 to another part of coprocessor 20 does not meet the requirement of “receiving” the authorization object when it is determined that a request for the object should be granted.” slip op. at 31

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “The reasoning of Dr. Madisetti is tenuous, as the issue is not whether, in some respect, a decryption key under certain overall operating conditions, can “serve as” or substitute for a digital certificate authenticating the source of a software, but whether a decryption key itself “is” a digital certificate. Dr. Madisetti’s testimony falls short of stating that decryption key AK would be referred to, or identified by, one with ordinary skill in the art as a digital certificate. As is evident from our discussion of the construction of “behavioral integrity,” we are unpersuaded by ContentGuard’s contention that a digital certificate is not required, and that anything which accomplishes a similar objective in some way is satisfactory. ZTE does not account adequately for the fact that, even if decryption of software with the decryption key AK is regarded as authentication of the source of the software, the decryption key, itself, does not authenticate anything. Rather, it has to be applied in a decryption step and it is that process which determines an ascertainable result for further evaluation. Thus, the decryption key is unlike a digital certificate which, by itself, authenticates the source of the software.” slip op. at 27

  Patent outcomesUS 7,269,576 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,269,576

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.