• Berk-Tek LLC v. Belden Technologies Inc.Some claims unpatentable
  PTAB · Apr 28, 2014 · IPR2013-00059 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 1–9, 11–19, 21, and 22 are unpatentable as obvious; claims 10 and 20 were not shown unpatentable over the asserted foamed-polymer combination.

  RulingsFinal written decision

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

    “Interpretation We agree with Petitioner that the claimed “circumferential surface” is “virtual,” in that, as explained above, the claims require that the “circumferential surface” serves as a reference point from which the protrusions extend. We also agree with Petitioner that the claimed “circumferential surface” spans the circumference (is continuous rather than discontinuous) to include extending across the base of the protrusions. The ordinary meaning of “circumferential” is “of, at, or close to the circumference,” and the ordinary meaning of “circumference” is “the line bounding a circle or other rounded surface, a periphery.” WEBSTER’S NEW UNIVERSAL UNABRIDGED DICTIONARY (Deluxe Second Ed. 1983) (“circumferential,” a.; “circumference,” n. def. 1) (Ex. 3001). Therefore, the ordinary meaning of the term “circumferential” suggests that the claimed “circumferential surface” extends along the line bounding the inner surface (the periphery) of the jacket, to include extending across the base of the protrusions.” slip op. at 11

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

    “Resp. 23), without more, does not establish that the proposed combination would not have yielded predictable results. Even in an unpredictable art, the appropriate inquiry is whether there was a reasonable expectation of success. For example, in O’Farrell, Appellants argued that at the time of the claimed invention there was significant unpredictability in the field of the claimed invention. In re O’Farrell, 853 F.2d 894, 902 (Fed. Cir. 1988). Applying a Graham factor analysis, the court held that obviousness does not require absolute predictability of success; rather, a reasonable expectation of success is all that is required. Id. at 903-904; see in re Inland Steel Co. 265 F.3d 1354 (Fed. Cir. 2001); Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Consequently, the proper inquiry here is whether there was a reasonable expectation of success in adding Grandy ’612’s separator to Newmoyer ’046’s cable. The ’641 Patent includes embodiments utilizing a separator (core or separator 101). See e.g., Ex. 1001, 5:3-16; 11:45-65; figs. 1, 9A, 9B. The Specification does not disclose that incorporation of a separator proved difficult or produced unexpected/unpredictable results. To the contrary, the ’641 Patent acknowledges that it was known to utilize a core that separates twisted pairs to reduce and stabilize crosstalk between the twisted pairs (APA). Id. at 2:18-26. In light of this, we agree with Petitioner that the addition of a separator (core) was a known method with a predictable result (reduced crosstalk). Grandy ’612’s star separator is similar to the core of the APA, in that it separates the twisted pair conductors of the cable to improve crosstalk. Ex. 1010, 5:66˗6:12; fig. 1; Ex. 1001, 5:3-16; 11:45-65; Pet. 25- 26. For these reasons, Petitioner has established a reasonable expectation of success in the proposed modification, and Patent Owner’s argument regarding predictability is unpersuasive.” slip op. at 21

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “But admissibility as an Office record does not preclude a hearsay objection if the Declaration is relied on by Petitioner as expert testimony for the truth of the matter asserted therein. An Office record is admissible to show what was said during a previous Office proceeding. Petitioner clearly has relied on the Baxter declaration as expert testimony for the truth of the matter asserted therein, beyond the nature of an Office record. Patent Owner could have made a hearsay objection and requested cross-examination of Mr. Baxter. Then, Petitioner would have had to produce Mr. Baxter for cross-examination or address the issue in some other way. Here, Patent Owner neither made a hearsay objection nor requested cross-examination. See generally 37 CFR § 42.52; see 37 CFR § 42.64(b)(1)(ii). Therefore, this line of argument is unpersuasive. Second, Patent Owner argues that, “Mr. Baxter never actually opines” slip op. at 24

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

    “Gingue ’748 does not disclose that a halogenated polymeric material is a foamed polymeric material, and Petitioner offers no evidence that a halogenated material is a foamed polymer. Consequently, there is insufficient evidence in the record that a halogenated polymeric material is a foamed polymeric material. Further, Gingue ’748 does not disclose that a cable jacket may be comprised of a foamed polymeric material.” slip op. at 33

  Patent outcomesUS 7,135,641 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,135,641
• LKQ Corporation v. Clearlamp, LLCSome claims unpatentable
  PTAB · Mar 27, 2014 · IPR2013-00020 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–10, 13, and 14 are unpatentable as obvious over Kuta with Butt or Eastwood; claims 11, 12, and 15–24 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “In considering the respective positions of LKQ and Clearlamp, it is not apparent that the above-noted statement in connection with the “MAGNI 700” is an admission as to prior art. There is no indication in the above description that the curing of the clear coat using infrared radiation was known to anyone but the inventors prior to the filing of the application that issued as the ‟364 patent. The description is contained in the body of the patent describing the invention, and not, for example, in the background section of the patent description. Moreover, LKQ has not directed us to suitable supporting evidence demonstrating that the above description is indicative of known prior art. In that regard, we are persuaded by Clearlamp that LKQ has not established sufficiently that the statement in the ‟364 patent concerning “MAGNI 700” is evidence for use as a factual basis in any of LKQ‟s proposed grounds of unpatentability.” slip op. at 24

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

    “Clearlamp‟s argument is unpersuasive. That Kuta may value a cost- effective approach to lamp refurbishing does not mean that a person of ordinary skill in the art must also value such an approach, to the preclusion of one that favors quality over cost. Indeed, rather than “no reason,” a person of ordinary skill in the art has good reason to select between a limited number of known options within his technical grasp when solving a particular problem, in this case engaging in lamp refurbishment. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”) Here, selecting between the removal and non-removal of a vehicle lamp, where each approach has known tradeoffs, is not an undertaking based on innovation, but is instead the product of a skilled artisan‟s exercise of ordinary skill and common sense. We have fully considered Clearlamp‟s position that the recited step of “removing the lamp from the vehicle” renders the claims of the ‟364 patent free of the applied prior art. However, in light of the record before us, we are not persuaded that the position is correct.” slip op. at 14

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

    “in the secondary factor analysis[,]” “[n]ot every competing product that arguably falls within the scope of a patent is evidence of copying.” Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). Copying, as objective evidence of nonobviousness, requires evidence of effort to replicate a specific product. Wyers, 616 F.3d at 1246; Iron Grip, 392 F.3d at 1325.” slip op. at 26

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusDecided for petitioner

    “Clearlamp must show that commercial success actually occurred and that there is a nexus that exists between that success and the merits of the claimed invention. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1350 (Fed. Cir. 2012). In order to establish a proper nexus, a patentee must offer “proof that the sales were a direct result of the unique characteristics of the claimed invention-as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). Furthermore, absent comparative sales data such as market share information, absolute numbers are not very meaningful. See Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed. Cir. 1984). In that regard, “evidence related solely to the number of units sold provides a very weak showing of commercial success.” Huang, 100 F.3d at 140. Here, Clearlamp bases its commercial success position generally on “the sale of headlamps by LKQ” and urges that those sales alone “demonstrate significant commercial success of the patented invention.” PO Resp. 47 (citing Ex. 2009 ¶¶ 47-48). Yet, even assuming that headlamps produced by LKQ are those encompassed by the claimed invention of the ‟364 patent, which has not been shown, the existence of sales alone sheds little light on the underlying reasoning for the sales. Indeed, absent from any of Clearlamp‟s filings is any meaningful assessment of other potential factors that may have contributed to such sales that have no bearing on the merits of the invention of the ‟364 patent. Also, absent from Clearlamp‟s filings is any comparative sales data that would indicate what the noted sales mean in conjunction with market share. Neither can we infer from the information provided that the noted sales represent a substantial share of the market. Simply put, Clearlamp has not offered sufficient information for us to determine whether the refurbished headlamps were actually commercially successful to demonstrate nonobviousness.” slip op. at 28

  Patent outcomesUS 7,297,364 mixed
  § 103 obviousnesscites KSR
  Patents in suitUS 7,297,364
• Microstrategy, Inc. v. Zillow, Inc.Some claims unpatentable
  PTAB · Mar 27, 2014 · IPR2013-00034 · APJ Michael W Kim · IPR · Final written decision

  Claims 2-11, 13-17, 26, 28-33, 35-37, 39, and 40 are unpatentable; claims 12, 27, 34, and 38 were not shown unpatentable.

  RulingsFinal written decision

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

    “19-26. Petitioner counters that “automatic valuation of a distinguished home” is not a term of art, and should be construed as “a calculation of a value of a distinguished property or home performed without human intervention.” Reply 5-9. We agree with Petitioner for the reasons set forth below. The Specification of the ‟674 patent does not set forth expressly a definition of “automatic valuation.” Nor is it apparent what definition is implicit within the Specification. The parties also do not identify any prosecution history that purportedly would offer a definition for the term. Instead, Petitioner proposes that “automatic valuation of a distinguished home” should be construed with its ordinary and customary meaning as “a calculation of a value of a distinguished property or home performed without human intervention.” For support, Petitioner cites the testimony of their expert, Dr. Borst (Ex. 1023 ¶¶ 13-18). This construction is consistent with the Specification, which discloses using computer system 100 to perform home valuations (Ex. 1001, Fig. 1), and thus is appropriately broad and reasonable in light of the Specification, as required by our rules. It is also consistent with dictionary definitions of “automatic”2” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “Furthermore, even if a tribunal were permitted, generally, to take into account a disavowal made during the same proceeding, as opposed to a prior, completed proceedings, absent extraordinary circumstances, we are not persuaded that such same proceeding disavowals are proper in a proceeding where amendments are available. This is because when claim amendments are available, a patent owner has an opportunity to amend claims to a scope it desires, so as to have the substance of any purported same proceeding disavowal reflected in the claim language expressly. The public should not be burdened with inadequate notice concerning the scope of claims, where the Patent Owner has been provided with an opportunity to amend claims to reflect the scope it desires. If Patent Owner chooses not to avail itself of the opportunity to amend, it is reasonable to accord the claims their scope under the broadest reasonable construction, without regard to the substance of any same proceeding disavowal.” slip op. at 12

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

    “forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).” slip op. at 23

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

    “replace the appraiser of Dugan and Kim with the “owner,” as recited in independent claim 2, because both Dugan and Kim are directed to appraisal processes which must be controlled by an appraiser. PO Resp. 26-28. Petitioner counters that both Dugan and Kim disclose that the discussions of appraisers in the process are merely exemplary, and that there is nothing preventing a non-appraiser from using the systems set forth in Dugan and Kim. We agree with Petitioner. Dugan discloses the following: “[o]nce the system 10 is formatted, step 30, the operator, here an appraiser, will have two options.” Ex. 1003, 7:44-45. By using the term “operator” in conjunction with system 10, and indicating that an example of an “operator” is an appraiser, Dugan at least suggests that operators other than appraisers are contemplated. Furthermore, Dugan discloses that because the appraisals are relied upon by sellers, buyers, appraisers, bankers, investors and the like, it is desirable that the appraisal is trustworthy. Ex. 1003, 4:30-33. Accordingly, we are persuaded that it would have been obvious to have a seller as an operator in Dugan because the seller would have interest in obtaining an accurate 32 valuation of his or her property. And as set forth above in our construction of “owner,” a seller is merely an owner who is selling their property. Similarly, Kim discloses the following: “login page 200 includes a name field and a password field in which a user (e.g., an appraiser) enters his/her name and password to access the appraiser valuation engine.” Ex. 1004 ¶ 42 (emphasis added). Patent Owner asserts that the use of the term “e.g.,” by itself, does not show that the system in either Dugan or Kim was intended for use by someone other than an appraiser. Petitioner counters that the use of the term “e.g.” signals exactly that: that both Dugan and Kim contemplated users other than an appraiser. We agree with Petitioner. When words are used they are presumed to convey meaning, and we find that the deliberate use of the term “e.g.” shows that Kim explicitly contemplates users other than the appraiser. And as an owner would have interest in obtaining an accurate valuation of their property, we are persuaded that it would have been obvious to replace the appraiser with the owner as the user in Kim. Patent Owner cites the testimony of Dr. Kilpatrick in support of its position. PO Resp. 26-28 (citing Ex. 2001 ¶ 31). Petitioner counters that Dr. Kilpatrick acknowledges that sellers could use the systems of Dugan and Kim. Reply 12-14 (citing Ex. 1022, 152:22- 153:8, 156:3-157:4). We have reviewed Dr. Kilpatrick‟s testimony and agree with Petitioner. 33 Fundamentally, independent claim 2 recites a “computer readable medium,” which is, at best, an apparatus claim. As an apparatus claim, Petitioner only needed to show that Dugan and Kim suggest a system capable of receiving input from an owner. To counter, Patent Owner needed to show not only that Dugan and Kim disclose an appraiser controlling the appraisal process, but also that Dugan and Kim disclose systems that could not be used by individuals other than appraisers. Patent Owner has failed to do so, as Dr. Kilpatrick agrees that both buyers and sellers could use the systems disclosed in Dugan and Kim. Ex. 1022, 152:15-153:8, 156:3- 157:4.” slip op. at 32

  Patent outcomesUS 7,970,674 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,970,674
• Berk-Tek, LLC v. Belden Inc.Some claims unpatentable
  PTAB · Mar 18, 2014 · IPR2013-00057 · APJ Richard E Rice · IPR · Final written decision

  Claims 1–4 are unpatentable: claims 1 and 4 as obvious over JP ’910, and claims 2 and 3 as obvious over JP ’910 with either the ’582 patent or JP ’694; claims 5 and 6 …

  RulingsFinal written decision

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

    “We are persuaded by Belden’s arguments, however, that Berk-Tek’s proposed claim construction is inconsistent with the context of the surrounding language of claim 1. See, e.g., ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“the context of the surrounding words of the claim also must be considered”). Claim 1 recites “passing a plurality of transmission media and a core through a first die which aligns the plurality of transmission media . . . and prevents twisting of the core,” “bunching the aligned plurality of transmission media and core using a second die . . . which maintains a spatial relationship between each of the plurality of transmission media,” “twisting the bunched plurality of transmission media and core to close the cable,” and “jacketing the closed cable.” As Belden argues (PO Resp. 13), these recited steps suggest a process of producing a complete, jacketed cable, not a part or subset of the cable, contrary to Berk-Tek’s asserted claim construction.” slip op. at 11

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

    “4. “surface features” We initially determined that the term “‘surface features’ is on its face broad and does not require any particular structure, shape or configuration,” and that “[a]pplication of the broadest reasonable construction rule also results in the conclusion that any surface feature qualifies, including the plain profile of a flat or curved surface area.” Inst. Dec. 12. Neither Berk-Tek nor Belden has raised any issue with respect to our initial construction of the term “surface features.” Accordingly, we adhere to our initial construction.” slip op. at 15

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

    “As discussed above, the claim term “a plurality of transmission media” in claim 1 encompasses all of the transmission media that are enclosed in the cable under production, not merely a subset of the transmission media. Under that claim construction, the limitation “surface features of the core which maintain a spatial relationship between each of the plurality of transmission media” (emphasis added) requires surface features that maintain a spatial relationship between each of the plural transmission media that are enclosed in the cable under production. Thus, as Belden contends, merely separating two groups of the transmission media that are enclosed in the cable does not meet the claim requirement, because transmission media within either group may not be separated from one another. That is, irrespective of whether the plurality of transmission media in the ’582 patent are considered to be the plurality of individually-insulated conductors, the plurality of pairs of twisted individually-insulated conductors, or the plurality of stranded units, many of the transmission media are adjacent to one another. As such, a spatial relationship is not maintained between each of the plurality of transmission media, as claim 1 requires. For the foregoing reasons, we determine that the ’582 patent does not anticipate claim 1 of the ’503 patent. Because dependent claim 2 incorporates by reference the method of claim 1, it follows that the ’582 patent does not anticipate claim 2 for the same reasons as claim 1.” slip op. at 18

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

    “on core 1 with the four conductors. This requires orienting each of the grooves on core 1, as it passes through the center hole in board 5, to face in the direction of one of the four holes (placed on board 5 at intervals of 90 degrees) through which a corresponding conductor passes. A person with ordinary skill in the art would have recognized that such alignment of the grooves on core 1 with the fixed positions of the conductors on board 5 cannot be maintained if core 1 twists in relation to board 5. See Ex. 1012, ¶ 121. Therefore, by teaching alignment of the grooves and the conductors at board 5, JP ’910 suggests using board 5 to prevent twisting motion of core 1. That is, a person of ordinary skill in the art would have recognized that preventing twisting motion of core 1 in relation to board 5 would maintain alignment between grooves 3a, 3b, 3c, 3d and conductors 4a, 4b, 4c, 4d, in accordance with the teaching of JP ’910. Further, as Berk-Tek argues, “since one of the most important concerns, as stated in the reference[,] is to avoid any misplacement of the conductors in relation to the core, it would [have been] prudent to prevent any twisting of the core relative to the conductors at the first possible instance during the manufacturing.” Pet. 35-36. That board 5 could have been used to prevent twisting of core 1 as it passes through board 5 need not be stated explicitly in JP ’910. See KSR, 550 U.S. at 418. We are persuaded that board 5 could have been used to prevent twisting of core 1 by one with ordinary skill in the art exercising ordinary creativity. See id. at 421; Reply to PO Resp. 11-14; Ex. 1012, ¶¶ 118-131. For example, as explained by Berk-Tek’s expert, Mr. Baxter, a person skilled in the art would have recognized that a material, such as a heat recoverable polymer that changes shape by extrusion, could have been used as a core to separate the conductors of the quad disclosed in JP ’910. Ex. 1012, ¶¶ 124-126. Such a material, according to Mr. Baxter’s testimony, “solidifies into a new form that would engage the die so as to prevent the back twisting motion of the core.” Id. at ¶ 126.” slip op. at 23

  Patent outcomesUS 6,074,503 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,074,503

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.