• The Toro Company v. MTD Products Inc.Institution denied
  PTAB · Jan 4, 2017 · IPR2016-01352 · APJ William V Saindon · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

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

    “Petitioner does not offer a threshold amount of evidence explaining why a person of ordinary skill in the art, looking to improve the ZTR vehicle of Hauser by adding steered wheels, would choose the front wheel steering assembly of Irikura. First, Petitioner does not direct us to evidence that Irikura itself is a ZTR vehicle or describes a steering assembly for zero-degree turns. Indeed, Patent Owner points out that Irikura is likely incapable of zero-degree turns, because Irikura describes a six-wheeled vehicle, and the back four fixed driving wheels would scuff in a zero-degree turn attempt. Prelim. Resp. 11–13 (citing Ex. 2002 ¶¶ 49, 50, 54, 209); see also Ex. 2002 ¶¶ 48–50 (stating the well-understood principle that the rotation axis of the wheel must intersect the turn radius in order not to scuff or slide), ¶¶ 207– 211 (explaining why the four fixed wheels indicate that the vehicle does not make zero-degree turns). On this record, Petitioner has not shown that the vehicle in Irikura is a ZTR vehicle or is designed purposefully for zero-degree turns because there is no discussion of such a feature, and the six-wheel nature of the vehicle indicates otherwise.” slip op. at 7

  • BurdenDenied

    “issue.”). Petitioner directs us to its declarant, Mr. Smith, who uses modified versions of Irikura’s drawings to depict various steering angles. Pet. 16 (citing Ex. 1007 ¶¶ 76–83). Mr. Smith’s analysis allegedly “show[s] the wheels and gears of Irikura’s front steering assembly able to turn the wheels to effect small and zero radius turns.” Ex. 1007 ¶ 76. His drawings then show several modified versions of Irikura’s assembly. Id. ¶¶ 77–81. Mr. Smith never explains, however, the factual basis for his belief that Irikura would be capable of zero-degree turns in the first instance. Instead, he simply modifies the drawings to show them performing zero-degree turns; there is insufficient technical explanation or evidence explaining why the steering assembly is capable of the movements shown in the modified drawings. In summary, we are not persuaded that a person of ordinary skill in the art would have considered modifying the front caster wheels of Hauser with the front steerable wheels of Irikura because Hauser is a ZTR vehicle and Petitioner has not established sufficiently that Irikura’s front steerable wheels are capable of providing zero-degree turns. For this reason, Petitioner has not shown a reasonable likelihood of prevailing on the ground of obviousness in view of Hauser and Irikura. This deficiency also applies to the Hauser-Irikura-Hoch ground, which makes use of the same combination of Hauser and Irikura. See Pet. 42 (stating that “the combination of Hauser and Irikura disclose[s] each and every element of claims 1-20,” but providing Hoch for limitations in claim 11 and 16, to the extent they are not disclosed).” slip op. at 9

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

    “established a reason to modify the front wheels of Hauser’s ZTR vehicle with the front wheel steering assembly of Irikura because Petitioner has not established that Irikura’s steering assembly is capable of a zero-radius turn. Prelim. Resp. 27–29 (arguing Irikura does not disclose zero-radius turns), 10–16 (same), 55–63 (arguing no reason to combine). In other words, Patent Owner argues that a person of ordinary skill in the art would not look to Irikura’s non-ZTR steering assembly for use in the ZTR steering assembly in Hauser. For the reasons that follow, this argument is persuasive. Petitioner does not offer a threshold amount of evidence explaining why a person of ordinary skill in the art, looking to improve the ZTR vehicle of Hauser by adding steered wheels, would choose the front wheel steering assembly of Irikura. First, Petitioner does not direct us to evidence that Irikura itself is a ZTR vehicle or describes a steering assembly for zero-degree turns. Indeed, Patent Owner points out that Irikura is likely incapable of zero-degree turns, because Irikura describes a six-wheeled vehicle, and the back four fixed driving wheels would scuff in a zero-degree turn attempt. Prelim. Resp. 11–13 (citing Ex. 2002 ¶¶ 49, 50, 54, 209); see also Ex. 2002 ¶¶ 48–50 (stating the well-understood principle that the rotation axis of the wheel must intersect the turn radius in order not to scuff or slide), ¶¶ 207– 211 (explaining why the four fixed wheels indicate that the vehicle does not make zero-degree turns). On this record, Petitioner has not shown that the vehicle in Irikura is a ZTR vehicle or is designed purposefully for zero-degree turns because there is no discussion of such a feature, and the six-wheel nature of the vehicle indicates otherwise.” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “a six-wheel vehicle. See Pet. 16–18 (depicting Irikura as a four-wheel vehicle); Ex. 1007 ¶¶ 76–81 (Petitioner’s declarant, Mr. Smith, depicting Irikura as a four-wheel vehicle).5 Patent Owner points out that a six-wheel vehicle having four fixed wheels would not generally be considered capable of performing zero-degree turns because the back wheels would slide or scuff. Prelim. Resp. 11–13, 58 (citing Ex. 2002 ¶¶ 208–211). This makes Petitioner’s next faulty presumption more apparent. Petitioner’s second faulty presumption is that the drawings in Irikura can be used to measure particular, precise gearing relationships when the specification is silent as to the matter. Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (“[P]atent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the 5 To the extent these figures are intended to depict the Hauser vehicle, modified to have Irikura’s front steering assembly, Petitioner’s analysis still would not have considered the four rear wheels of Irikura. issue.”). Petitioner directs us to its declarant, Mr. Smith, who uses modified versions of Irikura’s drawings to depict various steering angles. Pet. 16 (citing Ex. 1007 ¶¶ 76–83). Mr. Smith’s analysis allegedly “show[s] the wheels and gears of Irikura’s front steering assembly able to turn the wheels to effect small and zero radius turns.” Ex. 1007 ¶ 76. His drawings then show several modified versions of Irikura’s assembly. Id. ¶¶ 77–81. Mr. Smith never explains, however, the factual basis for his belief that Irikura would be capable of zero-degree turns in the first instance. Instead, he simply modifies the drawings to show them performing zero-degree turns; there is insufficient technical explanation or evidence explaining why the steering assembly is capable of the movements shown in the modified drawings.” slip op. at 8

  § 103 obviousness
  Patents in suitUS 9,254,865
• Telebrands Corp. v. Tinnus Enterprises, LLCAll claims unpatentable
  PTAB · Dec 30, 2016 · PGR2015-00018 · APJ Richard E Rice · PGR · Final written decision

  Claims 1–6, 8, and 10–14 are unpatentable as indefinite under § 112(b); the Board did not reach the § 103(a) grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “II. ANALYSIS A. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art (“POSA”) “would have been a person having a general knowledge about and experience with expandable containers, including without limitation balloons, and at least an associate’s degree in science or engineering.” Pet. 15–16 (citing Ex. 1015 ¶¶ 10–13; Ex. 1016 ¶¶ 10–13). Patent Owner responds that “the Board should limit Petitioner’s overly broad definition of a POSA from having an associate’s degree in any science or engineering to having an associate’s degree in mechanical engineering.” See, e.g., PO Resp. 12. According to Patent Owner, “Petitioner’s proposed definition should be limited because the inclusion of persons with an associate’s degree in any science or engineering fails to take into account the scope of the relevant art, which indisputably utilizes mechanical engineering principles.” Id. Upon consideration of the parties’ contentions, we determine that a POSA would have been a person having a general knowledge about and experience with expandable containers, including without limitation balloons, and at least an associate’s degree in mechanical engineering, or the equivalent.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “1. “elastic fastener” In our Institution Decision, we preliminarily determined that the broadest reasonable interpretation consistent with the Specification of the claim term “elastic fastener” is an elastic element for attaching things together. Inst. Dec. 7–8. As neither party proposes any change to our interpretation, and our review of the evidence does not indicate that any change is necessary, we maintain that interpretation.” slip op. at 8

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “We determine that the test for indefiniteness that is applied in patent examination and reexamination matters, approved in Packard, should be applied in this post-grant review AIA proceeding, rather than the Nautilus requirement. The different approaches to indefiniteness before the PTO and the courts stem from the distinct roles that the PTO and the courts play in the patent system.12 In AIA proceedings, as in patent examination and reexamination matters, applying the broadest reasonable interpretation standard, coupled with an opportunity to amend the claims, is an approach that is fair to the patent holder and protects the public. See Cuozzo, 136 S. Ct. at 2145–46; Packard, 751 F.3d at 1312–14. This approach serves to ensure precision in patent claims, thereby helping the public to understand the limits of the claims and keeping the rights afforded by patents within their legitimate scope. See Cuozzo, 136 S. Ct. at 2144–45; Packard, 751 F.3d at 1313. Accordingly, among the reasons supporting application of the Packard-approved indefiniteness test in this AIA proceeding are those recognized by the Supreme Court in Cuozzo as supporting use of the broadest reasonable interpretation standard in inter partes review AIA proceedings. See Cuozzo, 136 S. Ct. at 2143–2146. Of these, the most important is the opportunity to amend the claims to correct any ambiguity. See id. at 2145 (“The patent holder may, at least once in the process, make a motion to do just what he would do in the examination process, namely, necessary) that a person of ordinary skill in the art would not consider the claim language unclear.” 12 See Packard, 751 F.3d at 1325 (Plager, J., concurring) (stating that “unlike courts which have a full prosecution record to consider, the prosecution record before the USPTO is in development and not fixed during examination”). amend or narrow the claim.”) (citation omitted); 35 U.S.C. § 326(d); 37 C.F.R. § 42.221. An applicant’s ability to clarify claim language through amendment was a significant reason why the Federal Circuit in Packard approved of the indefiniteness test recited in the MPEP (i.e., a “claim is indefinite when it contains words or phrases whose meaning is unclear”). Packard, 751 F.3d at 1313–14.” slip op. at 18

  • ExcludeMotion to exclude, deniedDenied

    “III. MOTIONS TO EXCUDE In its Motion to Exclude (Paper 57), Patent Owner seeks to exclude Petitioner’s Exhibits 1031 and 1032. Paper 57, 1–3. We deny Patent Owner’s motion, as moot, because we did not consider the referenced exhibits in reaching our decision in this case. In its Motion to Exclude (Paper 59), Petitioner seeks to exclude Patent Owner’s Exhibits 2016–2018, 2020 (¶ 84), 2024, 2025 (¶ 39), 2026 (¶ 39), 2027–2070, 2073, 2074, 2078, and 2085. Paper 59, 1–8. We deny Petitioner’s motion, as moot, because we did not consider the referenced exhibits and paragraphs in reaching our decision in this case.” slip op. at 34

  Patent outcomesUS 9,051,066 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Nautilus
  Patents in suitUS 9,051,066
• NHK Seating Of America, Inc. v. Lear CorporationRehearing denied
  PTAB · Sep 23, 2016 · IPR2014-00925 · APJ Mitchell G Weatherly · IPR · Rehearing

  The Board denied NHK’s rehearing request, leaving claim 2 not shown unpatentable because NHK did not establish that the asserted tab extended from the identified transfer member or upper armature.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “NHK’s argument for rehearing is unpersuasive even if we were to agree with NHK’s argument that the eyebolt is a “tab.” At trial, NHK failed to establish that the eyebolt extends from cable 6a of DE ’017, which is the structure that NHK identified in its Reply as the claimed transfer member. Reply 23.1 NHK also failed to establish that the eyebolt extends from any structure that NHK equated to the claimed upper armature. In our Final Written Decision, we determined that claim 2 requires that the claimed tab must “extend outward from one or the other of the transfer member and the upper armature.” Final Dec. 23. Because NHK 1 NHK shifted positions again in its Reply in Support of its Request for Rehearing regarding the element in the prior art that constitutes the claimed transfer member when it identified “bowden cable arrangement 6” of DE ’017 as the transfer member. Reh’g Reply 2. A Request for Rehearing is not a proper vehicle for introducing argument or evidence that was not presented at trial. See 37 C.F.R. § 42.71(d) (limiting requests for rehearing to those matters that were “previously addressed in a motion, an opposition, or a reply” during trial). Accordingly, we do not consider NHK’s new argument properly to be before us. failed at trial to demonstrate how the eyebolt meets this requirement of claim 2, we deny the Request for Rehearing.” slip op. at 4

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

    “NHK’s argument for rehearing is unpersuasive even if we were to agree with NHK’s argument that the eyebolt is a “tab.” At trial, NHK failed to establish that the eyebolt extends from cable 6a of DE ’017, which is the structure that NHK identified in its Reply as the claimed transfer member. Reply 23.1 NHK also failed to establish that the eyebolt extends from any structure that NHK equated to the claimed upper armature. In our Final Written Decision, we determined that claim 2 requires that the claimed tab must “extend outward from one or the other of the transfer member and the upper armature.” Final Dec. 23. Because NHK 1 NHK shifted positions again in its Reply in Support of its Request for Rehearing regarding the element in the prior art that constitutes the claimed transfer member when it identified “bowden cable arrangement 6” of DE ’017 as the transfer member. Reh’g Reply 2. A Request for Rehearing is not a proper vehicle for introducing argument or evidence that was not presented at trial. See 37 C.F.R. § 42.71(d) (limiting requests for rehearing to those matters that were “previously addressed in a motion, an opposition, or a reply” during trial). Accordingly, we do not consider NHK’s new argument properly to be before us. failed at trial to demonstrate how the eyebolt meets this requirement of claim 2, we deny the Request for Rehearing.” slip op. at 4

  • Strike new argumentNew argument disregardedOther
  § 103 obviousness
  Patents in suitUS 8,434,818
• Minerva Surgical, Inc. v. Hologic, Inc.Institution denied
  PTAB · Sep 12, 2016 · IPR2016-00685 · APJ Richard E Rice · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–15 obvious over Edwards, Ortiz, Lichtman, and Jing.

  RulingsInstitution decision

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

    “For these reasons, we determine that Petitioner has not established a reasonable likelihood of prevailing on its challenges to independent claims 1 and 11 as obvious over Edwards, Ortiz, Lichtman, and Jing. As Petitioner’s arguments and evidence with respect to dependent claims 2–10 and 12–15 do not remedy the deficiencies in the arguments and evidence with respect to the independent claims, discussed above, we also determine that Petitioner has not established a reasonable likelihood of prevailing on its challenges to dependent claims 2–10 and 12–15.” slip op. at 29

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Skill in the Art Dr. Pearce testifies that a person of ordinary skill in the art would include someone who had, through education or practical experience, the equivalent of a bachelor’s degree in biomedical engineering, electrical engineering, mechanical engineering, or a related field and at least an additional two to three years of work experience developing or implementing electrosurgical devices. Ex. 1002 ¶ 47. Patent Owner does not provide evidence or argument on the level of ordinary skill. Prelim. Resp. 10 n.3. We adopt Dr. Pearce’s definition for purposes of this Decision.” slip op. at 10

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

    “On this record, we agree that the Specification uses “frame” in accordance with its ordinary meaning. See, e.g., Ex. 1001, 17:37–49 (referring to “frame member 178” and “the frame”); Ex. 1013, 4; Ex. 1014, 3. We do not agree with Petitioner’s proposed claim construction, however, because it encompasses only one (apparently, the narrower) of the two dictionary definitions of “frame” cited in the Petition. See Pet. 15–16 (citing Ex. 1013, 4 (“an enclosing structure or case”); Ex. 1014, 3(“an arrangement of structural parts that gives form or support”)). Petitioner has not explained sufficiently why the broadest reasonable claim construction should not encompass both of the dictionary definitions. We determine that the broadest reasonable interpretation consistent with the Specification of “frame” encompasses: an arrangement of structural parts that gives form or support; and a structure coupled (e.g., removably or continuously) to a handle grip, that surrounds or encloses another component (e.g., inner sleeve).” slip op. at 11

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

    “Petitioner’s argument that using Ortiz’s mechanical expansion elements to expand Edwards’s applicator head would have simplified the device design by removing the need for a fluid or gaseous expansion medium is unpersuasive because it does not take into account that electrolytic solution is used in Edwards’s applicator head, not just for expansion, but also for ablation treatment. As such, Petitioner does not explain why using Ortiz’s mechanical expansion elements for expansion of Edwards’s applicator head, while continuing to use electrolytic solution in the applicator head for ablation treatment, would have resulted in any simplification or benefit. Dr. Pearce’s testimony that replacing the use of fluid or gaseous media with Ortiz’s mechanical expansion elements would have obviated potential safety issues, such as fluid leakage or contamination, similarly fails to account for the use of electrolytic solution in Edwards’s applicator head for ablation treatment and is, therefore, unpersuasive. See Ex. 1002 ¶ 64. Dr. Pearce’s testimony that incorporating Ortiz’s expansion elements would have improved contact between Edwards’s applicator head and the uterine walls is also unpersuasive. See Ex. 1002 ¶ 63. In particular, Dr. Pearce does not explain sufficiently why replacing the two rigid arms extending outward toward the walls of the uterus (as depicted in Figure 4 of Edwards) with the asserted flexures taught by Ortiz would have improved the ability of the device to conform to the shape of the uterus. See id. For example, Dr. Pearce’s testimony does not address or explain the disclosure in Edwards that “[c]ell necrosis apparatus 10 automatically conforms to the interior of the uterus.” See Ex. 1005, 6:33–41; see also id. at 7:37–40 (disclosing that, in one embodiment, “cell necrosis apparatus 10 conforms lightly with the interior of the uterus so that all, or almost all, of the endometrium is in contact with a conductive surface 24 of conforming member 20”).” slip op. at 27

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,095,348
• Minerva Surgical, Inc. v. Hologic, Inc.Institution denied
  PTAB · Sep 12, 2016 · IPR2016-00680 · APJ Richard E Rice · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on either obviousness ground.

  RulingsInstitution decision

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

    “4. Analysis An analysis under 35 U.S.C. § 103(a) requires more than “mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Upon consideration of the Petition and the Preliminary Response, we agree with, and adopt, Patent Owner’s argument, as summarized above, that the reasons advanced by Petitioner for combining elements of Yoon, Nady-Mohamed, Ortiz, and Jing to make the claimed invention are conclusory and insufficient. We provide additional analysis below.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Skill in the Art Dr. Pearce testifies that a person of ordinary skill in the art would include someone who had, through education or practical experience, the equivalent of a bachelor’s degree in biomedical engineering, electrical engineering, mechanical engineering, or a related field and at least an additional two to three years of work experience developing or implementing electrosurgical devices. Ex. 1002 ¶ 47. Patent Owner does not provide evidence or argument on the level of ordinary skill. Prelim. Resp. 11 n.3. We adopt Dr. Pearce’s definition for purposes of this Decision.” slip op. at 10

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

    “We have considered Petitioner’s proposed claim construction, but determine that the term “frame” does not require explicit construction for purposes of our Decision. We note, however, that this term was construed in a related case (IPR2016-00685).” slip op. at 11

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

    “We do not agree with Petitioner’s proposed construction because it is not consistent with the Specification’s description of flexures 124, 136 as strips that are capable of being bent or curved. See, e.g., Ex. 1001, 4:1–9, 13:8–14:31, Figs. 23, 28–30. Figures 23 and 28, for example, depict flexures 124 as strips that have been bent or curved as the result of relative motion between hypotubes 120 and 122. Id. at 13:8–15, 14:29–30, Figs. 23, 28. Indeed, Petitioner’s declarant, Dr. Pearce, testifies that “a person of skill in the art would understand the term ‘flexure’ to refer to a component capable of being bent or curved.” Ex. 1002 ¶ 56. On this record, we determine that the broadest reasonable interpretation consistent with the Specification of “flexures” is strips that are capable of being bent or curved. We note that a distinction with Petitioner’s proposed construction is that “designed to be bent,” for example, could mean a structure that has been bent but is no longer bendable or a structure that is bendable. “Capable of being bent,” on the other hand, means that the structure is further bendable.” slip op. at 12

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,095,348
• Apple, Inc. / Eventbrite Inc. et al. v. Ameranth, Inc.All claims unpatentable
  PTAB · Aug 26, 2016 · CBM2015-00096 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 12–16 are unpatentable under § 103 over DeLorme; Patent Owner’s secondary-consideration evidence did not outweigh the showing of obviousness.

  RulingsFinal written decision

  • Skill levelOther

    “B. Unpatentability Over DeLorme Under 35 U.S.C. § 103, a claim is unpatentable if: the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art. The ultimate determination of obviousness under § 103 is a question of law based on underlying factual findings. In re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). These underlying factual considerations consist of: (1) the “level of ordinary skill in the pertinent art,” (2) the “scope and content of the prior art,” (3) the “differences between the prior art and the claims at issue,” and (4) “secondary considerations” of non-obviousness such as “commercial success, long-felt but unsolved needs, failure of others, etc.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham, 338 U.S. at 17–18). Petitioner contends that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme. Pet. 50–62. To support its contention, Petitioner provides explanations as to how the prior art meets each claim element. Id. Petitioner also cites the Declaration of Dr. Don Turnbull for support. See Ex. 1002 ¶¶ 180–237. Taking into account Patent Owner’s argument and evidence (PO Resp. 1–4, 12–80; PO Sur-Reply 1–5), for the reasons discussed below, we determine that Petitioner has shown by a preponderance of the evidence that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme.” slip op. at 15

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

    “To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’850 patent describes PDAs as an example of a wireless handheld device. Ex. 1001, col. 1, ll. 62–63, col. 13, l. 50. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “As an initial matter, we are not persuaded by Patent Owner that we should wholesale adopt the construction of “communications control module” from a previous district court infringement action. The standard for claim construction in a district court infringement action is different than the standard applied by the Board. See In re Morris, 127 F.3d 1048, 1053–54 (Fed. Cir. 1997). In covered business method patent review proceedings, the Board applies the broadest reasonable construction consistent with the specification. 37 C.F.R. § 42.300(b). We determine that the broadest reasonable construction, in light of the specification of the ’850 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. This construction is consistent with the plain language of claim 12, which requires the communication control module to be an interface between the hospitality applications and any other communications protocol. This construction is also consistent with the description of the communication control module in the specification of the ’850 patent, as a “control program [that] monitors and routes all communications [as] to the appropriate devices” in the ’850 patent and as “a single point of entry for all hospitality application to communicate with one another wirelessly or over the Web.” Ex. 1001, col. 9, ll. 21–22, col. 11, ll. 24–27. This construction, unlike Patent Owner’s proposed construction, does not import extraneous features from the Specification of the ’850 patent into the claims. Although the specification of the ’850 patent describes additional features of the communication control module, such as it is “a layer that sits on top of any communication protocol.” The plain language of claim 12, does not require the claimed communication control module to have such features. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous,” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).” slip op. at 13

  Patent outcomesUS 6,384,850 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,384,850
• Petitioner v. Ameranth, Inc.All claims unpatentable
  PTAB · Aug 26, 2016 · CBM2015-00080 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 12–16 are unpatentable under § 103 over DeLorme because its TRIPS system teaches or renders obvious the claimed elements; secondary considerations do not outweigh that showing.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Petitioner contends that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme. Pet. 50–62. To support its contention, Petitioner provides explanations as to how the prior art meets each claim element. Id. Petitioner also cites the Declaration of Dr. Don Turnbull for support. See Ex. 1002 ¶¶ 180–237. Taking into account Patent Owner’s argument and evidence (PO Resp. 1–4, 12–80; PO Sur-Reply 1–5), for the reasons discussed below, we determine that Petitioner has shown by a preponderance of the evidence that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme.” slip op. at 16

  • ExcludeOther

    “Patent Owner moves to exclude certain paragraphs of Exhibit 1070 and the entirety of Exhibits 1071, 1072, 1073, 1078, 1079, 1080, 1081, and 1082. Paper 33. We do not rely on these exhibits in reaching our Decision and, thus, dismiss Patent Owner’s motion to exclude these exhibits as moot. Petitioner moves to exclude the entirety of Exhibits 2021, 2023, 2025, 2027, 2030–2051, and 2053–2056 and with the annotated portions of Exhibit 2024. Paper 31. We also dismiss Petitioner’s motion to exclude these exhibits. Petitioner’s motion to exclude theses exhibits are moot because we have found this evidence insufficient regardless of their admissibility.” slip op. at 51

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

    “To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’850 patent describes PDAs as an example of a wireless handheld device. Ex. 1001, col. 1, ll. 62–63, col. 13, l. 50. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 8

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

    “Petitioner proposes that “applications” be construed to mean “sequences of instructions that can be executed on a computer that are designed to help people perform a specific task.” Pet. 22. To support its proposed construction, Petitioner cites to the Microsoft Computer Dictionary, 4th ed., which defines “application” as “a program designed to assist in the performance of a specific task” and “program” as “[a] sequence of instructions that can be executed by a computer.” Ex. 1034, 4, 10. Patent Owner does not propose an explicit construction of “applications” but does state that “[i]t is clear from the specification, consistent with the ordinary meaning as would be understood by a POSA, that an application is a software program, not data.” PO Resp. 32 n.15. This is consistent with Petitioner’s proposed construction, which is based in-part on the definition of application, as a program. Given the above, we determine that the broadest reasonable interpretation, in light of the specification of the ’850 patent, of “hospitality applications” is a sequences of instructions that can be executed on a computer (i.e., a program) that are designed to assist in the performance of a specific task in the hospitality industry.” slip op. at 10

  Patent outcomesUS 6,384,850 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,384,850
• Apple, Inc. / Eventbrite Inc. et al. v. Ameranth, Inc.All claims unpatentable
  PTAB · Aug 26, 2016 · CBM2015-00097 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 11, 13, and 15 are unpatentable as obvious over DeLorme because the reference teaches or renders obvious their limitations.

  RulingsFinal written decision

  • BurdenUnpatentable

    “Petitioner contends that claims 11, 13, and 15 are unpatentable under 35 U.S.C. § 103 over DeLorme. Pet. 51–63. To support its contention, Petitioner provides explanations as to how the prior art meets each claim element. Id. Petitioner also cites the Declaration of Dr. Don Turnbull for support. See Ex. 1002 ¶¶ 419–473. Taking into account Patent Owner’s argument and evidence (PO Resp. 1–3, 14–80, PO Sur-Reply 1–5), for the reasons discussed below, we determine that Petitioner has shown by a preponderance of the evidence that claims 11, 13, and 15 are unpatentable under 35 U.S.C. § 103 over DeLorme.” slip op. at 18

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

    “To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci.& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing a wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’325 patent describes PDAs as an example of a wireless handheld device. Ex. 1003, col. 13, l. 63. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 9

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

    “We determine that the broadest reasonable construction, in light of the specification of the ’325 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. This construction is consistent with the plain language of claims 11 and 13, which requires the communication control module to be an interface between the hospitality applications and any other communications protocol. This construction is also consistent with the description of the communication control module in the specification of the ’325 patent as “a communications control program [that] monitors and routes all communications to the appropriate devices” and as “a single point of entry for all hospitality applications to communicate with one another wirelessly or over the [w]eb.” Ex. 1003, col. 9, ll. 35–36, col. 11, ll. 38–40. This construction, unlike Patent Owner’s proposed construction, does not import extraneous features from the specification of the ’325 patent into the claims. The specification of the ’325 patent describes additional features of the communication control module, such as it is “a layer that sits on top of any communication protocol.” Ex. 1003, col. 11, ll. 40–43. The plain language of claims 11 and 13, however, do not require the claimed communication control module to have such features. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous,” and should not be read into the claim. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). We, thus, determine that the broadest reasonable construction, in light of the specification of the ’325 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol.” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “We are persuaded by Petitioner’s evidence and analysis that the claimed communication control module, when it is given the broadest reasonable construction, would have been obvious in view of DeLorme’s Interface and Interaction Bus 209. As discussed above, the broadest reasonable construction of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. DeLorme describes the Interface and Interaction Bus 209 as a device that gives retail users access to TRIPS Subsystem (Ex. 1024, col. 13, ll. 15–41) and depicts it as an interface between retail users 205 and third-party providers at 231 and TRIPS Subsystems 213, 217, 221, and 223 (id. at Fig. 9). DeLorme also describes Main Menu 413 and Interaction Bus 414, which corresponds to the Interface and Interaction Bus 209, as coordinating the responses to alternate input means embedded in specialized TRIPS field or in-vehicle embodiments. Id. at col. 37, ll. 54–65. DeLorme, thus, discloses an intermediary in transferring communications to and from the host computer to which it is connected. DeLorme does not explicitly disclose that the Interface and Interaction Bus 209 is an interface between different communication protocols. DeLorme, however, does describe the Interface and Interaction Bus 209 interfacing with different devices. E.g., see id. at col. 14, l. 66–col. 15, l. 14 (describing different alternative end-user hardware platforms). The different devices would use different communication protocols. See id. at col. 37, ll. 54–56, (describing simplified input or remote queries), col. 14, l. 66–col. 15, l. 13 (describing internet based access); PO Resp. 9 (“third party systems such as POS system devices (clearly which operate with different protocols”), Ex. 1076, 176:17–177:12 (testimony of Dr. Weaver indicating that different devices operate with different protocols). In order for Interface and Interaction Bus 209 to interface with devices using different communication protocols, Interface and Interaction Bus 209 would be configured to interface with different communication protocols or it would be obvious for it to be configured as such, because it is advantageous for TRIPS to interface with different devices. See Ex. 1002 ¶ 447. Patent Owner’s argument that DeLorme’s Interface and Interaction Bus 209 fails to meet this claim element is based upon its proposed construction (see PO Resp. 45–49), which we did not adopt. For example, Patent Owner’ argues that Interface and Interaction Bus 209 is not a software layer that sits on top of a communication protocol. Id. at 45–49. This argument is not persuasive because it is not commensurate with the scope of claim 12, when given its broadest reasonable construction. See Pet. Reply 15–19. We are persuaded by Petitioner’s evidence and analysis that the claimed communication control module, when it is given the broadest reasonable construction, would have been obvious in view of DeLorme’s Interface and Interaction Bus 209. We, thus, determine that DeLorme’s TRIPS system teaches the claimed communications control module that is an interface between the hospitality applications and any other communications protocol.” slip op. at 30

  Patent outcomesUS 6,871,325 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,871,325
• Apple, Inc. / Eventbrite Inc. et al. v. Ameranth, Inc.All claims unpatentable
  PTAB · Aug 26, 2016 · CBM2015-00082 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 11, 13, and 15 are unpatentable under § 103 over DeLorme because the evidence establishes the claimed system features, and secondary considerations do not outweigh the showing.

  RulingsFinal written decision

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

    “To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci.& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing a wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’325 patent describes PDAs as an example of a wireless handheld device. Ex. 1003, col. 13, l. 63. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 9

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

    “Given the above, we determine that the broadest reasonable interpretation, in light of the specification of the ’325 patent, of “hospitality applications” is a sequence of instructions that can be executed on a computer (i.e., a program) and that is designed to assist in the performance of a specific task in the hospitality industry. We are not persuaded by Patent Owner that the hospitality industry excludes travel, tourism, and transportation. However, to resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to construe hospitality industry. See Vivid Techs, 200 F.3d at 803 (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme discloses that TRIPS can be used for buying event tickets and making restaurant or hotel reservations. E.g., see Ex. 1024, col. 21, ll. 8–17, col. 31, ll. 42–51, col. 77, ll. 60–67, Fig. 1B-3. The ’325 patent describes frequent customer ticketing and restaurant reservations as tasks in the hospitality application. Ex. 1003, col. 5, ll. 17–20, claim 5. Patent Owner’s also argues reservations, with regards to claim 13, include hotel reservations. See PO Resp. 14 (“within the hospitality industry e.g. restaurants/hotels and event ticketing”). Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “hospitality applications” excludes tasks performed in the travel, tourism, and transportation industries.” slip op. at 11

  • Prior constructionPrior construction not adoptedTerm construed board ownDecided for petitioner

    “As an initial matter, we are not persuaded by Patent Owner that we should wholesale adopt the construction of “communications control module” from a previous district court infringement action. The standard for claim construction in a district court infringement action is different than the standard applied by the Board. See In re Morris, 127 F.3d 1048, 1053–54 (Fed. Cir. 1997). In covered business method patent review proceedings, the Board applies the broadest reasonable construction consistent with the specification. 37 C.F.R. § 42.300(b). We determine that the broadest reasonable construction, in light of the specification of the ’325 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. This construction is consistent with the plain language of claims 11 and 13, which requires the communication control module to be an interface between the hospitality applications and any other communications protocol. This construction is also consistent with the description of the communication control module in the specification of the ’325 patent as “a communications control program [that] monitors and routes all communications to the appropriate devices” and as “a single point of entry for all hospitality applications to communicate with one another wirelessly or over the [w]eb.” Ex. 1003, col. 9, ll. 35–36, col. 11, ll. 38–40. This construction, unlike Patent Owner’s proposed construction, does not import extraneous features from the specification of the ’325 patent into the claims. The specification of the ’325 patent describes additional features of the communication control module, such as it is “a layer that sits on top of any communication protocol.” Ex. 1003, col. 11, ll. 40–43. The plain language of claims 11 and 13, however, do not require the claimed communication control module to have such features. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous,” and should not be read into the claim. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). We, thus, determine that the broadest reasonable construction, in light of the specification of the ’325 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol.” slip op. at 14

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

    “We are persuaded by Petitioner’s evidence and analysis that the claimed communication control module, when it is given the broadest reasonable construction, would have been obvious in view of DeLorme’s Interface and Interaction Bus 209. As discussed above, the broadest reasonable construction of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. DeLorme describes the Interface and Interaction Bus 209 as a device that gives retail users access to TRIPS Subsystem (Ex. 1024, col. 13, ll. 15–41) and depicts it as an interface between retail users 205 and third-party providers at 231 and TRIPS Subsystems 213, 217, 221, and 223 (id. at Fig. 9). DeLorme also describes Main Menu 413 and Interaction Bus 414, which corresponds to the Interface and Interaction Bus 209, as coordinating the responses to alternate input means embedded in specialized TRIPS field or in-vehicle embodiments. Id. at col. 37, ll. 54–65. DeLorme, thus, discloses an intermediary in transferring communications to and from the host computer to which it is connected. DeLorme does not explicitly disclose that the Interface and Interaction Bus 209 is an interface between different communication protocols. DeLorme, however, does describe the Interface and Interaction Bus 209 interfacing with different devices. E.g., see id. at col. 14, l. 66–col. 15, l. 14 (describing different alternative end-user hardware platforms). The different devices would use different communication protocols. See id. at col. 37, ll. 54–56, (describing simplified input or remote queries), col. 14, l. 66–col. 15, l. 13 (describing internet based access); PO Resp. 9 (“third party systems such as POS system devices (clearly which operate with different protocols”), Ex. 1076, 176:17–177:12 (testimony of Dr. Weaver indicating that different devices operate with different protocols). In order for Interface and Interaction Bus 209 to interface with devices using different communication protocols, Interface and Interaction Bus 209 would be configured to interface with different communication protocols or it would be obvious for it to be configured as such, because it is advantageous for TRIPS to interface with different devices. See Ex. 1002 ¶ 447. Patent Owner’s argument that DeLorme’s Interface and Interaction Bus 209 fails to meet this claim element is based upon its proposed construction (see PO Resp. 45–49), which we did not adopt. For example, Patent Owner’ argues that Interface and Interaction Bus 209 is not a software layer that sits on top of a communication protocol. Id. at 45–49. This argument is not persuasive because it is not commensurate with the scope of claim 12, when given its broadest reasonable construction. See Pet. Reply 15–19. We are persuaded by Petitioner’s evidence and analysis that the claimed communication control module, when it is given the broadest reasonable construction, would have been obvious in view of DeLorme’s Interface and Interaction Bus 209. We, thus, determine that DeLorme’s TRIPS system teaches the claimed communications control module that is an interface between the hospitality applications and any other communications protocol.” slip op. at 30

  Patent outcomesUS 6,871,325 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,871,325
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Queen’S University At KingstonAll claims unpatentable
  PTAB · Jul 27, 2016 · IPR2015-00583 · APJ Richard E Rice · IPR · Final written decision

  Claims 1–6, 8–13, 15, 16, and 18–20 are unpatentable, including as anticipated by Goldstein and Ho and obvious over Horvitz and Tognazzini.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “A. Level of Skill in the Art The parties do not appear to disagree on the level of skill in the art. See Ex. 1003 ¶ 12; Ex. 1085 ¶¶ 12, 106; Ex. 2007 ¶ 19; Ex. 2008 ¶ 11; Pet. 4; PO Resp. 14. We agree with, and adopt for purposes of this Decision, the level of skill advanced by Dr. Balakrishnan, i.e., that “a person having ordinary skill in the art [‘POSA’ or ‘POSITA’] would have had a bachelor’s degree or higher degree in Computer Science or Computer Engineering or the equivalent, and at least several years of experience in user interface development,” and that “[l]ess education could be compensated by more direct experience and vice versa.” Ex. 2007 ¶ 19. We also agree with, and adopt for purposes of this Decision, Dr. Essa’s observation that “many people were working on eye sensing technology” and “the relative skill of those in the art was relatively high.” Ex. 1085 ¶ 106.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “modulating of an operation is essentially triggered by time (i.e., comparing multiple scans over a predetermined time threshold)—in stark contrast to the claimed features where the modulation of an operation is triggered based on the instant a user’s attention is not directed toward the device or attention is redirected toward the device. PO Resp. 39 (emphasis added) (citing Ex. 2007 ¶¶ 120–126, 130–133). Dr. Balakrishnan explains this asserted instantaneous, or immediate, triggering requirement as follows: Modulating based on attention described by the ’665 patent is only useful when the modulation occurs immediately in response to a determination that the user is either paying attention or not paying attention. For example, in the [’]665 patent’s augmented television device, if the television is configured to pause audiovisual material when the user is not paying attention, the pausing operation should occur immediately when it is determined that the user’s attention is not directed toward the device (e.g., glint, pupil and camera are not aligned on the camera axis). Immediate pausing is necessary so that the user does not miss any portion of the audiovisual material. If the television did not pause immediately, then the ’665 patent’s modulation would prove to be ineffective and indeed not a true modulation based on the user’s attention toward the device, as claimed. The same holds true for the ’665 patent’s attention monitor example, where a user would need immediate re-routing or prioritization of messages/calls, in order for the modulation of the operation based on the user’s attention to prove meaningful to properly appreciate the significant differences between Ho and the claimed invention of the ’665 patent. Ex. 2007 ¶ 126 (emphasis added). We do not agree with Dr. Balakrishnan that modulating based on attention, as described in the ’665 Patent, is useful only when the modulation occurs immediately in response to a determination that the user is or is not paying attention. See id. As Petitioner argues, Dr. Balakrishnan’s analysis fails to consider examples described in the ’665 Patent that require monitoring attention over time. See Pet. Reply 16; Ex. 1001, 12:42–53, 14:35–51, 17:37–49; 18:62–65; Ex. 1068, 187:7–193:22. In one example described in the ’665 Patent, “attentive user interfaces employing eye contact sensors or other related eye tracking technology may be used to initiate the retrieval of information on the basis of progressive disclosure.” Ex. 1001, 17:37–40. “For example, information may initially be shown with limited resolution on the side of a display.” Id. at 17:40–42. If the user looks at that information “for a set amount of time, [however,] more detailed information is retrieved and rendered on the screen using a larger surface.” Id. at 17:42–45. “Examples include stock market tickers that grow and provide more information when users pay attention to it.” Id. at 17:45–46. Accordingly, we are not persuaded by Patent Owner that “modulating” slip op. at 8

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

    “We agree with Petitioner that the signal from processor 46 to text presentation control 48 is “a measure or index of the user’s attention toward the device.” As disclosed in Goldstein, processor 46, which is contained within mobile device 10, performs a geometric calculation to determine the direction of the reader’s point of gaze based on data received from sensor 20. Ex. 1005 ¶ 31, Fig. 3. “If processor 46 determines that the reader’s point of gaze has moved out of the display window 12 since the last computation, processor 46 sends a signal to a text presentation control 48 to pause further presentation of text on the display window.” Id. ¶ 31. “Thereafter, processor 46 will signal control 48 to resume presentation, upon determining that the reader’s point of gaze is again focused upon the text in window 12.” Id. The signal from processor 46 to text presentation control attention toward the device, as determined by measurement or calculation, and thus is a “measure” of the user’s attention under our claim interpretation. See supra Section II.B.1. Patent Owner has not persuaded us that a simple binary control signal cannot be a measure or index of a user’s attention toward a device. Indeed, the ’665 Patent expressly describes using “eye contact sensors,” for example, with “televisions and other audiovisual content delivery systems . . . to determine whether [their] content is being viewed, and to take appropriate action when it is no longer viewed.” Ex. 1001, 15:13–14; see id. at 6:57–61. A binary signal determined by calculation of eye contact/no eye contact accords with our interpretation of “measure,” discussed above, in that it indicates the extent, quantity, amount, or degree of something, as determined by measurement or calculation. See supra Section II.B.1. c) Summary For the reasons given, we conclude that Petitioner has shown by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 102(e) as anticipated by Goldstein.” slip op. at 20

  • BurdenDecided for petitioner

    “b) Enablement (1) The Shifting Burdens of Production As Petitioner contends, prior art printed publications are presumptively enabling. Pet. Reply 7 (citing In re Antor Media Corp., 689 F.3d 1282, 1287–88 (Fed. Cir. 2012); Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003)); accord Google, Inc. v. Jongerious Panoramic Techs., LLC, IPR2013-00191, slip op. at 37 (PTAB Aug. 12, 2014) (Paper 70). In view of that presumption, Petitioner satisfied its initial burden of production with respect to its anticipation challenge to claim 11 based on Goldstein by arguing persuasively that Goldstein’s disclosure was anticipating. See Amgen, 314 F.3d at 1355; Impax Labs., Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1316 (Fed. Cir. 2008); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). The burden of production then shifted to Patent Owner to argue or to produce evidence that Goldstein actually does not anticipate, or that its relevant disclosures are not pertinent prior art, for example, as Patent Owner argues in this case, because they are not enabled. See Amgen, 314 F.3d at 1355; Dynamic Drinkware, 800 F.3d at 1380.4 4 As Patent Owner notes, the ultimate burden of persuasion in this inter partes review is on Petitioner to prove “unpatentability by a preponderance” slip op. at 22

  Patent outcomesUS 7,762,665 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,762,665

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.