• Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01357 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claim 1 was not shown unpatentable because the asserted combination did not establish that Hiroi taught or motivated the claimed voice delay.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “address the qualifications of one of ordinary skill in the art, but instead assert only that the relevant field of endeavor for the ’366 patent is “telephone communications.” PO Resp. 2; Ex. 2098 ¶ 25. This contention appears to relate to Patent Owner’s argument that Hiroi is not analogous art rather than to the level of ordinary skill in the art for assessing obviousness. See PO Resp. 35–48; Ex. 2098 ¶¶ 122–40. Thus, Patent Owner and its expert do not expressly dispute the level of skill in the art proffered by Petitioner and Mr. Occhiogrosso. In addition, although he does not offer his own opinion regarding the qualifications of a person having ordinary skill in the art, Mr. Zatkovich acknowledges Mr. Occhiogrosso’s definition and states that unless otherwise noted, the opinions expressed in his declaration testimony would not change under Mr. Occhiogrosso’s definition. Ex. 2098 ¶ 25 (citing Ex. 1012 ¶ 29). Based on our review of the record, including the experts’ testimony, the ’366 patent, and the prior art involved in this proceeding, we find that Petitioner’s proposal, as set forth by Mr. Occhiogrosso, accurately describes the qualifications of a person having ordinary skill in the art. Accordingly, we adopt Mr. Occhiogrosso’s characterization of the level of ordinary skill in the art.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “In the Institution Decision, we adopted Petitioner’s proposed construction of “assisted user” as “a user who may be deaf or hard of hearing, but who also may be a normally hearing person who simply wants text assistance for some reason.” Dec. 5–6. Patent Owner does not challenge that construction. After considering the complete record, we maintain this construction of “assisted user” for this Final Written Decision. No other claim terms require express construction.” slip op. at 6

  • ExcludeNot reached

    “Under the circumstances in this case, we need not assess the merits of Patent Owner’s Motion to Exclude. As discussed above, even without excluding Mr. Occhiogrosso’s testimony, we have determined that Petitioner has not demonstrated by a preponderance of the evidence that the challenged claims are unpatentable. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 18

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

  Patent outcomesUS 6,934,366 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,934,366
• Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentable
  PTAB · Dec 9, 2016 · IPR2015-01358 · APJ William V Saindon · IPR · Final written decision

  Claim 1 was not shown unpatentable because Petitioner did not establish a sufficient rationale to combine Engelke ’482 and Engelke ’405.

  RulingsFinal written decision

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

    “reasonable interpretation in light of the specification of the patent. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (holding that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office”). Under the broadest reasonable interpretation standard, claim terms are presumed to have their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire” slip op. at 5

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

    “We understand Patent Owner’s argument to be that a person of ordinary skill in the art would not have considered it obvious to follow the teachings of Engelke ’405 in this particular situation, because one of the main benefits taught by Engelke ’405 is to provide voice in addition to text so that non-deaf users can benefit more from voice-to-text services. Here, however, an assisted user does not need the hearing user’s voice to be provided because the assisted user already can hear the hearing user, as they are in close physical proximity (in order to use the personal interpreter). Thus, although a person of ordinary skill in the art might consider Engelke ’405 because it teaches to improve devices for the deaf such as Engelke ’482, we are not persuaded that a person of ordinary skill in the art would have considered it obvious to apply it in this situation. The reason is that the hearing user’s voice would already be present, such that providing that voice again, i.e., when applying the teaching of Engelke ’405, appears to be unnecessary and, as Patent Owner’s declarant suggests, potentially disruptive. Ex. 2098 ¶ 58. Engelke ’405 would not provide the solution to the problem it was intended to solve—the voice is there already. Petitioner offers insufficient reason or evidence explaining why a person of ordinary skill in the art would have considered it obvious to proceed to combine the references nonetheless, in view of this situation.” slip op. at 10

  • Obviousness (§103) › KSR rationalesMotivation not foundNot shown unpatentable

    “design need or market pressure that indicates it would have been obvious to try to modify the personal interpreter of Engelke ’482 to have simultaneous voice and text as shown in Engelke ’405. An obvious to try rationale generally requires some identification of “a design need or market pressure to solve a problem” before looking at the “finite number of identified, predictable solutions.” See KSR, 550 U.S. at 421. A key of the obvious to try rationale is that the design need or market pressure is what drives a person of ordinary skill in the art to consider the identified, predictable solutions. In other words, the need is addressed by the solutions. Here, the need identified by Petitioner is to upgrade devices previously intended for the deaf to be used for the hard of hearing. See Pet. 38. We agree that this is an identified need in the art. The solutions identified by Petitioner, however, are text alone, VCO, and text-enhanced telephony. Id. at 38–39. Notably, only one of these solutions, text-enhanced telephony, actually addresses the identified need of upgrading devices to include features specifically for hard of hearing users. Text only and VCO are for deaf users. Ex. 1003, 1:25–40 (describing text-only devices for the deaf); Ex. 1012 ¶ 64 (Mr. Occhiogrosso testifying that VCO “allowed a deaf but speaking person to . . . respond directly to the hearing user in voice”). The problem with Petitioner’s rationale is that it is based upon the identification of a finite set of identified, predictable solutions to a need where, in fact, two out of the three so-called solutions in the set are not actually solutions at all, because they do not address the need. In this way, Petitioner’s articulated rationale, as a whole, is internally inconsistent and, for that reason, unpersuasive.” slip op. at 13

  Patent outcomesUS 7,006,604 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,006,604
• Daicel Corporation v. Celanese International CorporationNo claims unpatentable
  PTAB · Jun 23, 2016 · IPR2015-00171 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 42–44, 47–51, 53, and 55–57 were not shown unpatentable: the ’095 patent did not establish the required amount of DME, and JP ’712 did not cure that deficiency.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “Based on our analysis of the intrinsic and extrinsic evidence, we agree with Patent Owner that a person of ordinary skill in the art would understand the ’507 patent to speak in terms of effects, not molecules. See PO Resp. 4– 5; Tr. 41:8–16. We, therefore, construe the recitation “distilling [a mixture comprising water, acetic acid, methyl iodide, methyl acetate, methanol, and at least one PRC] to separate the mixture into a plurality of streams, at least one of said streams being a PRC enriched overhead stream comprising dimethyl ether” in step (a) of claim 42 as requiring the presence of dimethyl ether in the PRC enriched overhead stream in an amount that one of ordinary skill in the art would recognize as being more than trace or insubstantial. Such amount would be, for example, more than the amount produced in a conventional, prior art, low water carbonylation process that used the same initial reactor contents and conditions, and the same processing equipment. We further interpret this language as requiring the presence of DME in the PRC enriched overhead stream in an amount sufficient to cause (1) a reduction in the solubility of methyl iodide in water during the extraction of the PRC enriched overhead stream (claim 42, step (b)) and (2) an increase in the amount of methyl iodide recoverable during a subsequent extraction of the raffinate stream, which increase in recoverable methyl iodide would be recognized as more than insubstantial by the ordinary artisan.” slip op. at 42

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Mr. Jones and Dr. Porcelli agree the description in the ’507 patent implies that the inventive process is a low water process. Ex. 1039 ¶ 52; Ex. 2029 ¶ 26. As discussed in Section VI. B., below, these experts further agree that there are differences in the reactants and reaction products produced in high and low water processes. We find both Mr. Jones and Dr. Porcelli are qualified to give an opinion as to the level of ordinary skill in the art. Accordingly, for purposes of this proceeding we adopt Mr. Jones’s definition of the level of ordinary skill in the art, and add that the ordinary artisan also would have had a specific understanding of the low water carbonylation process for production of acetic acid and its implementation on an industrial scale.” slip op. at 27

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

    “We are not persuaded that Mr. Jones’s calculations provide a reliable method of determining the amount of DME present in a methanol carbonylation process. Mr. Miura and Dr. Porcelli agreed that it is extremely difficult to anticipate the presence or amount of a component such as DME in a methanol carbonylation system such as the one described in the ’095 patent. See Ex. 1046, 281:14–22; Ex. 2029 ¶ 112. Dr. Porcelli testified that Mr. Jones’s estimates of DME content in the ’095 patent Example were based on numerous assumptions that rendered his estimations of reactor and distillation overhead DME concentrations meaningless. See Ex. 2029 ¶¶ 137, 140, 151. Dr. Porcelli testified, for example, that it was “improper and incorrect” for Mr. Jones “to fail to account for DME lost with the vent stream in the reactor, especially because of the high volatility of DME.” Id. ¶ 148. Mr. Miura’s measured amount of DME present in the first overhead in Experiment 1 was less than half the amount Mr. Jones calculated would be present, supporting Dr. Porcelli’s testimony that the loss of DME via the vents would have had a marked impact on the actual amount of DME sent to distillation column 40 (from which the second overhead stream is produced) in the ’095 patent Example. See Ex. 1060 ¶ 153 (“(103 ppm (calc.) vs. 48 ppm (actual)) is likely to due to loss of DME with the vent gas from the splitter condenser, due to the very low boiling point of DME”); see also Ex. 1039 ¶ 99; Ex. 1060 ¶ 121 (wherein Mr. Jones agreed that the loss of DME from the vent stream in the separator (or decanter) after splitter column 14 in the ’095 patent process would be substantial).” slip op. at 56

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

    “In sum, we determine Petitioner has failed to meet its burden to show, by a preponderance of the evidence, that the ’095 patent describes a process that inherently results in dimethyl ether in a PRC enriched overhead stream (produced by distilling a mixture comprising water, acetic acid, methyl iodide, methyl acetate, methanol, and at least one PRC) in an amount that is (1) more than trace or insubstantial, and (2) sufficient to cause (a) a reduction in the solubility of methyl iodide in water during extraction of the PRC enriched overhead stream and (b) an increase in the amount of methyl iodide recoverable during a subsequent extraction of the raffinate stream, as required by the broadest reasonable interpretation of claim 42. Absent from the record is any evidence that DME is present in the second overhead in the ’095 patent Example in the amount required by independent claim 42 and its dependent claims 43, 44, 47–51, 53, and 55–57. Petitioner’s challenge with respect to claim 57 is based on obviousness over the combination of the ’095 patent and JP ’712. Petitioner relies on JP ’712 for a teaching that “methyl iodide concentration can be controlled by extraction temperature, . . . and that the concentration[] recited in [claim 57 is] well known in the art.” Pet. 55. Petitioner has not explained how JP ’712 cures the deficiency in the ’095 patent’s failure to describe step (a) of claim 42. Accordingly, we likewise determine Petitioner has failed to meet its burden to show unpatentability of claim 57 by a preponderance of the evidence. We conclude Petitioner has failed to meet its burden to show unpatentability of claims 42–44, 47–51, 53, and 55–57 of the ’507 patent.” slip op. at 59

  Patent outcomesUS 8,076,507 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,076,507
• Daicel Corporation v. Celanese International CorporationNo claims unpatentable
  PTAB · Jun 23, 2016 · IPR2015-00173 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 58–60, 67, 69, and 71–72 were not shown unpatentable over the ’095 patent; claim 73 was not shown unpatentable over the ’095 patent and JP ’712 because the required amount of DME was not …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner relies on Mr. Jones’s testimony to establish the level of ordinary skill in the art. See Pet. 17. Mr. Jones testified that the person of ordinary skill in the art “as of March 2, 2004, the effective filing date of the ’507 Patent” (Ex. 1039 ¶ 15) would have been a chemist or chemical engineer with an advanced degree, or a Bachelor of Science degree and equivalent work experience (e.g., five years in an industrial setting producing acetic acid, acetic anhydride, or related chemicals), and would have generally understood acetic acid production on an industrial scale including the distillation processes and extraction processes that are used in acetic acid or acetic anhydride production. The person of ordinary skill in the art would have understood chemical reactions in general, and, particularly, the primary reactions and the side-reactions associated with acetic acid production (id. ¶ 16). Mr. Jones further testified that a person of ordinary skill in the art would have had separations experience, an understanding of industrial-scale processes, and experience in the production of acetic acid, acetic anhydride, or related chemicals. Id. ¶ 17. Dr. Porcelli, testified that he “generally agree[s]” with Mr. Jones’s opinion as to the level of ordinary skill in the art” (Ex. 2029 ¶ 15; see also Ex. 1065, 65:9–66:5). During cross-examination, however, Dr. Porcelli testified that one of ordinary skill in the art would require, more specifically, an understanding of the low water acetic process and its implementation on an industrial scale. See, e.g., Ex. 1065, 126:18–127:1.” slip op. at 26

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther

    “Based on our analysis of the intrinsic and extrinsic evidence, we agree with Patent Owner that a person of ordinary skill in the art would understand the ’507 patent to speak in terms of effects, not molecules. See PO Resp. 4– 5; Tr. 41:8–16. We, therefore, construe the recitation “distilling [a mixture comprising water, acetic acid, methyl iodide, methyl acetate, methanol, and at least one PRC] to separate the mixture into a plurality of streams, at least one of said streams being a PRC enriched overhead stream comprising dimethyl ether” in step (a) of claim 58 as requiring the presence of dimethyl ether in the PRC enriched overhead stream in an amount that one of ordinary skill in the art would recognize as being more than trace or insubstantial. Such amount would be, for example, more than the amount produced in a conventional, prior art, low water carbonylation process that used the same initial reactor contents and conditions, and the same processing equipment. We further interpret this language as requiring the presence of DME in the PRC enriched overhead stream in an amount sufficient to cause (1) a reduction in the solubility of methyl iodide in water during the extraction of the PRC enriched overhead stream and (2) an increase in the amount of methyl iodide recoverable during the subsequent extraction of the first raffinate stream (claim 58, step (b)), which increase in recoverable methyl iodide would be recognized as more than insubstantial by the ordinary artisan.” slip op. at 42

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded that Mr. Jones’s calculations provide a reliable method of determining the amount of DME present in a methanol carbonylation process. Mr. Miura and Dr. Porcelli agreed that it is extremely difficult to anticipate the presence or amount of a component such as DME in a methanol carbonylation system such as the one described in the ’095 patent. See Ex. 1046, 281:14–22; Ex. 2029 ¶ 112. Dr. Porcelli testified that Mr. Jones’s estimates of DME content in the ’095 patent Example were based on numerous assumptions that rendered his estimations of reactor and distillation overhead DME concentrations meaningless. See Ex. 2029 ¶¶ 137, 140, 151. Dr. Porcelli testified, for example, that it was “improper and incorrect” for Mr. Jones “to fail to account for DME lost with the vent stream in the reactor, especially because of the high volatility of DME.” Id. ¶ 148. Mr. Miura’s measured amount of DME present in the first overhead in Experiment 1 was less than half the amount Mr. Jones calculated would be present, supporting Dr. Porcelli’s testimony that the loss of DME via the vents would have had a marked impact on the actual amount of DME sent to distillation column 40 (from which the second overhead stream is produced) in the ’095 patent Example. See Ex. 1060 ¶ 153 (“(103 ppm (calc.) vs. 48 ppm (actual)) is likely to due to loss of DME with the vent gas from the splitter condenser, due to the very low boiling point of DME”); see also Ex. 1039 ¶ 97; Ex. 1060 ¶ 121 (wherein Mr. Jones agreed that the loss of DME from the vent stream in the separator (or decanter) after splitter column 14 in the ’095 patent process would be substantial). Dr. Porcelli testified that he believed removal of DME by rapid carbonylation would have had a significant effect on the presence of DME in the ’095 patent Example and that this irreversible reaction should have been considered by Mr. Jones in his calculations. Ex. 2029 ¶¶ 130–131. Mr. Jones conceded “some DME will be carbonylated in the reactor” (Ex. 1060 ¶ 45), and that the carbonylation of DME to make acetic acid under low water conditions is an irreversible reaction (Ex. 2026, 227:19–228:1). See also Ex. 1060 ¶ 27 (arguing Exhibits 2032, 2034 evidence DME formation in a batch reactor during methanol carbonylation, but admitting that as the water and methyl acetate start to diminish, DME concentration begins to drop and DME is eventually carbonylated into either acetic acid or acetic anhydride). Mr. Jones disagreed with Dr. Porcelli’s testimony that “carbonylation of DME is . . . known to have a fast reaction rate” and “would be consumed by carbonylation faster than it would be formed by methanol dehydration, especially under low water conditions” (Ex. 2029 ¶ 130). Ex. 1060 ¶ 44. Mr. Jones provided testimony explaining why he believes “the carbonylation of DME is not particularly fast.” Id.; see id. ¶¶ 45–48. Mr. Jones relied on a textbook by Gauthier-Lafaye (Ex. 1062), published in 1987, as evidence that the carbonylation of DME proceeds more slowly than the carbonylation of methyl acetate. Ex. 1060 ¶ 47. Mr. Jones testified that because the reaction liquid in the ’095 patent Example is reported to contain 1.6 wt% methyl acetate, and the carbonylation rate of DME is even slower than that of methyl acetate, then “it stands to reason that the carbonylation rate of DME is not going to be so fast as to ‘immediately’ react away any DME that is formed via the methanol dehydration equilibrium reaction.” Id. ¶ 48. Mr. Jones further testified that consideration of this competing side reaction was “irrelevant to calculating equilibrium concentration” of DME in the reactor in the ’095 patent Example. Id. ¶ 51. The disclosure in Gauthier-Lafaye relied upon by Mr. Jones relates to the carbonylation of methyl acetate into acetic anhydride (Ex. 1062, 9), i.e., a different reaction system than the ’095 and ’507 patents (see Paper 73, 8 (Observation #F.1)). This evidence, therefore, does not support Mr. Jones’s testimony that the carbonylation of DME in the ’095 patent reaction system was irrelevant to his calculation of equilibrium DME concentration. Rather we credit Dr. Porcelli’s testimony that removal of DME by rapid carbonylation would have had an effect on the presence, or at least the quantity, of DME in the ’095 patent Example, and that this factor should have been taken into consideration by Mr. Jones in his calculations. See Ex. 2029 ¶ 130. Mr. Jones testified that in view of the low boiling point of DME (-23.7 ºC), most of the DME will immediately flash from the reactor product . . . and be concentrated in the overhead streams. In view of the relatively low amount of DME in the reactor and overhead, DME’s very low boiling point, and the elevated temperatures in the reactor, special handling techniques would be needed to sample for such a compound in the reaction mixture. It is therefore not surprising that the presence of DME was not measured in the ’095 patent, despite the fact that it was undoubtedly present. Ex. 1060 ¶ 118. Given Mr. Miura’s testimony that he believed DME, if present, would have been detectable (Ex. 1046, 280:9–281:1), and Paulik’s disclosure that insubstantial amounts of DME were measurable as early as 1970 (see, e.g., Ex. 2037, 13:47–49, 15:32–34), Mr. Jones’s testimony (see, e.g., Ex. 1060 ¶ 101 (“It should be clear to someone skilled in the art that very dilute and trace components are frequently not reported in chemical analytical results or in listed process stream compositions.”)) does not show convincingly that DME was present in the second overhead in more than a trace quantity, if at all. See id. ¶ 90 (“[T]he only issue is whether some amount of DME exists (which clearly it does).”).” slip op. at 56

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

    “have been present in the distillation overhead in the ’095 patent Example in an amount sufficient to reduce solubility of methyl iodide in water during subsequent water extraction steps. Mr. Miura testified that 1.2 wt% DME was present in the second overhead in Experiment 1. Ex. 1005 ¶ 13, Table 1. Mr. Jones testified that he would expect the amount of DME in the second overhead in the ’095 patent process to be about three times the amount of DME in the overhead in Miura Experiment 1 (Ex. 2040, 289:10–– 298:7), because Mr. Miura’s experiment was carried out under conditions less favorable to DME formation as compared to the conditions in the ’095 patent Example (see Ex. 1060 ¶¶ 130, 139). A preponderance of the evidence, however, does not support a finding that DME was present, if at all, in more than a trace quantity/insubstantial amount in the second overhead of the ’095 patent Example, for the following reasons: Although Mr. Miura reported that the second overhead in his Experiment 1 contained 1.2% DME (Ex. 1005 ¶ 13, Table 1), he did not testify that this quantity would be present in the ’095 patent Example despite acknowledged differences in quantities of reaction components and operating conditions (see id. ¶ 21). Rather, Mr. Miura testified that Experiment 1 provided evidence that DME simply was present in some amount in the second overhead in the ’095 patent Example. Id. (“[T]he deviations would not affect the outcome with respect to the presence of DME in the first and second overheads.”). Mr. Miura testified that he supervised the ’095 patent Example and believed DME was present and accounted for in the 0.9 wt% reported as “others.” Ex. 1046, 241:17–242:9. Therefore, we are not persuaded by Mr. Jones’s testimony that the amount of DME in the second overhead in the ’095 patent process would be about three times the amount of DME in the overhead in Miura Experiment 1, i.e. 3.6 wt% (Ex. 2040, 289:10––298:7). See Tr. 70:3–8 (wherein Patent Owner’s counsel raises this inconsistency). We are not persuaded by Mr. Jones’s testimony that an amount as high as 3.6 wt% DME could have been present in the ’095 patent Example, but not reported (see Ex. 2040, 301:18–303:2; Paper 73, 5–6 (Observation #C.4)), since the prior art, e.g., Paulik, clearly indicates DME was considered an undesirable reaction byproduct in a carbonylation process. Mr. Miura did not testify as to what portion of the 0.9 wt% reported as “others” in the ’095 patent Example constituted DME, or whether the amount of DME would be considered more than a trace quantity/insubstantial amount. Nor is there any testimony or evidence that 0.9 wt% or less DME in the overhead/feed to the extractor would have been an amount sufficient to cause a reduction in the solubility of methyl iodide in water during extraction of the PRC enriched overhead stream and an increase in the amount of methyl iodide recoverable during the subsequent extraction of the first raffinate stream as required under the broadest reasonable interpretation of claim 58 of the ’507 patent. We are not persuaded that Mr. Jones’s calculations provide a reliable method of determining the amount of DME present in a methanol carbonylation process. Mr. Miura and Dr. Porcelli agreed that it is extremely difficult to anticipate the presence or amount of a component such as DME in a methanol carbonylation system such as the one described in the ’095 patent. See Ex. 1046, 281:14–22; Ex. 2029 ¶ 112. Dr. Porcelli testified that Mr. Jones’s estimates of DME content in the ’095 patent Example were based on numerous assumptions that rendered his estimations of reactor and distillation overhead DME concentrations meaningless. See Ex. 2029 ¶¶ 137, 140, 151. Dr. Porcelli testified, for example, that it was “improper and incorrect” for Mr. Jones “to fail to account for DME lost with the vent stream in the reactor, especially because of the high volatility of DME.” Id. ¶ 148. Mr. Miura’s measured amount of DME present in the first overhead in Experiment 1 was less than half the amount Mr. Jones calculated would be present, supporting Dr. Porcelli’s testimony that the loss of DME via the vents would have had a marked impact on the actual amount of DME sent to distillation column 40 (from which the second overhead stream is produced) in the ’095 patent Example. See Ex. 1060 ¶ 153 (“(103 ppm (calc.) vs. 48 ppm (actual)) is likely to due to loss of DME with the vent gas from the splitter condenser, due to the very low boiling point of DME”); see also Ex. 1039 ¶ 97; Ex. 1060 ¶ 121 (wherein Mr. Jones agreed that the loss of DME from the vent stream in the separator (or decanter) after splitter column 14 in the ’095 patent process would be substantial).” slip op. at 55

  Patent outcomesUS 8,076,507 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,076,507
• Daicel Corporation v. Celanese International CorporationNo claims unpatentable
  PTAB · Jun 23, 2016 · IPR2015-00170 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 1–4, 6–11, and 13 were not held unpatentable under § 103 because the evidence did not show the required amount of dimethyl ether in the second overhead.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “Based on our analysis of the intrinsic and extrinsic evidence, we agree with Patent Owner that a person of ordinary skill in the art would understand the ’507 patent to speak in terms of effects, not molecules. See PO Resp. 50–51; Tr. 41:8–16. We, therefore, construe the recitation “distilling at least a portion of [a] first overhead [comprising methyl iodide, water and at least one PRC] to produce a second overhead stream comprising . . . dimethyl ether” in step (a) of claim 1 as requiring the presence of dimethyl ether in the second overhead stream in an amount that one of ordinary skill in the art would recognize as being more than trace or insubstantial. Such amount would be, for example, more than the amount produced in a conventional, prior art, low water carbonylation process that used the same initial reactor contents and conditions, and the same processing equipment. We further interpret this language as requiring the presence of DME in the second overhead stream in an amount sufficient to cause (1) a reduction in the solubility of methyl iodide in water during the extraction of the second overhead (claim 1, step (b)) and (2) an increase in the amount of methyl iodide recoverable during the extraction of the first raffinate (claim 1, step (c)), which increase in recoverable methyl iodide would be recognized as more than insubstantial by the ordinary artisan.” slip op. at 43

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner substantially agrees with Mr. Jones’s opinion, stating: “a person of ordinary skill in the art may be a qualified chemist or chemical engineer, however separations experience, an understanding of industrial-scale processes, and experience in the production of acetic acid, acetic anhydride, or related chemicals is required.” PO Resp. 14. Dr. Porcelli, testified that he “generally agree[s]” with Mr. Jones’s opinion as to the level of ordinary skill in the art” (Ex. 2029 ¶ 15; see also Ex. 1065, 65:9–66:5). During cross-examination, however, Dr. Porcelli testified that one of ordinary skill in the art would require, more specifically, an understanding of the low water acetic process and its implementation on an industrial scale. See, e.g., Ex. 1065, 126:18–127:1. Mr. Jones and Dr. Porcelli agree the description in the ’507 patent implies that the inventive process is a low water process. Ex. 1039 ¶ 50; Ex. 2029 ¶ 26. As discussed in Section VI. B., below, these experts further agree that there are differences in the reactants and reaction products produced in high and low water processes. We find both Mr. Jones and Dr. Porcelli are qualified to give an opinion as to the level of ordinary skill in the art. Accordingly, for purposes of this proceeding we adopt Mr. Jones’s definition of the level of ordinary skill in the art, and add that the ordinary artisan also would have had a specific understanding of the low water carbonylation process for production of acetic acid and its implementation on an industrial scale.” slip op. at 27

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

    “at least one PRC] to produce a second overhead stream comprising . . . dimethyl ether” as requiring the presence of dimethyl ether in the second overhead stream in an amount that is (1) more than trace or insubstantial, and (2) sufficient to cause (a) a reduction in the solubility of methyl iodide in water during extraction of the second overhead and (b) an increase in the amount of methyl iodide recoverable during the extraction of the first raffinate. Neither Mr. Miura nor Mr. Jones testified that dimethyl ether would have been present in the second distillation overhead in the ’095 patent Example in an amount that is (1) more than trace or insubstantial, and (2) sufficient to cause (a) a reduction in the solubility of methyl iodide in water during extraction of the second overhead and (b) an increase in the amount of methyl iodide recoverable during the extraction of the first raffinate. Mr. Miura testified that 1.2 wt% DME was present in the second overhead in Experiment 1. Ex. 1005 ¶ 13, Table 1. Mr. Jones testified that he would expect the amount of DME in the second overhead in the ’095 patent process to be about three times the amount of DME in the overhead in Miura Experiment 1 (Ex. 2040, 289:10––298:7), because Mr. Miura’s experiment was carried out under conditions less favorable to DME formation as compared to the conditions in the ’095 patent Example (see Ex. 1060 ¶¶ 133, 139). A preponderance of the evidence, however, does not support a finding that DME was present, if at all, in more than a trace quantity/insubstantial amount in the second overhead of the ’095 patent Example, for the following reasons:” slip op. at 57

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We are not persuaded that Mr. Jones’s calculations provide a reliable method of determining the amount of DME present in a methanol carbonylation process. Mr. Miura and Dr. Porcelli agreed that it is extremely difficult to anticipate the presence or amount of a component such as DME in a methanol carbonylation system such as the one described in the ’095 patent. See Ex. 1046, 281:14–22; Ex. 2029 ¶ 112. Dr. Porcelli testified that Mr. Jones’s estimates of DME content in the ’095 patent Example were based on numerous assumptions that rendered his estimations of reactor and distillation overhead DME concentrations meaningless. See Ex. 2029 ¶¶ 137, 140, 151. Dr. Porcelli testified, for example, that it was “improper and incorrect” for Mr. Jones “to fail to account for DME lost with the vent stream in the reactor, especially because of the high volatility of DME.” Id. ¶ 148. Mr. Miura’s measured amount of DME present in the first overhead in Experiment 1 was less than half the amount Mr. Jones calculated would be present, supporting Dr. Porcelli’s testimony that the loss of DME via the vents would have had a marked impact on the actual amount of DME sent to distillation column 40 (from which the second overhead stream is produced) in the ’095 patent Example. See Ex. 1060 ¶ 153 (“(103 ppm (calc.) vs. 48 ppm (actual)) is likely to due to loss of DME with the vent gas from the splitter condenser, due to the very low boiling point of DME”); see also Ex. 1039 ¶ 97; Ex. 1060 ¶ 121 (wherein Mr. Jones agreed that the loss of DME from the vent stream in the separator (or decanter) after splitter column 14 in the ’095 patent process would be substantial). Dr. Porcelli testified that he believed removal of DME by rapid carbonylation would have had a significant effect on the presence of DME in the ’095 patent Example and that this irreversible reaction should have been considered by Mr. Jones in his calculations. Ex. 2029 ¶¶ 130–131. Mr. Jones conceded “some DME will be carbonylated in the reactor” (Ex. 1060 ¶ 45), and that the carbonylation of DME to make acetic acid under low water conditions is an irreversible reaction (Ex. 2026, 227:19–228:1). See also Ex. 1060 ¶ 27 (arguing Exhibits 2032, 2034 evidence DME formation in a batch reactor during methanol carbonylation, but admitting that as the water and methyl acetate start to diminish, DME concentration begins to drop and DME is eventually carbonylated into either acetic acid or acetic anhydride). Mr. Jones disagreed with Dr. Porcelli’s testimony that “carbonylation of DME is . . . known to have a fast reaction rate” and “would be consumed by carbonylation faster than it would be formed by methanol dehydration, especially under low water conditions” (Ex. 2029 ¶ 130). Ex. 1060 ¶ 44. Mr. Jones provided testimony explaining why he believes “the carbonylation of DME is not particularly fast.” Id.; see id. ¶¶ 45–48. Mr. Jones relied on a textbook by Gauthier-Lafaye (Ex. 1062), published in 1987, as evidence that the carbonylation of DME proceeds more slowly than the carbonylation of methyl acetate. Ex. 1060 ¶ 47. Mr. Jones testified that because the reaction liquid in the ’095 patent Example is reported to contain 1.6 wt% methyl acetate, and the carbonylation rate of DME is even slower than that of methyl acetate, then “it stands to reason that the carbonylation rate of DME is not going to be so fast as to ‘immediately’ react away any DME that is formed via the methanol dehydration equilibrium reaction.” Id. ¶ 48. Mr. Jones further testified that consideration of this competing side reaction was “irrelevant to calculating equilibrium concentration” of DME in the reactor in the ’095 patent Example. Id. ¶ 51. The disclosure in Gauthier-Lafaye relied upon by Mr. Jones relates to the carbonylation of methyl acetate into acetic anhydride. Ex. 1062, 9. The ’095 patent, however, relates to production of acetic acid by a carbonylation process, wherein, according to Akinori, “intermediates [e.g. DME and methyl acetate] ultimately change into acetic acid” (Ex. 1013, 8, equations (2), (3)). Ex. 2029 ¶ 130; see Paper 79, 8–9 (Observation #G.1). In other words, the evidence relied on by Mr. Jones relates to a different reaction system and does not support his testimony that the carbonylation of DME in the ’095 patent reaction system was irrelevant to his calculation of equilibrium DME concentration. Rather we credit Dr. Porcelli’s testimony that removal of DME by rapid carbonylation would have had an effect on the presence, or at least the quantity, of DME in the ’095 patent Example, and that this factor should have been taken into consideration by Mr. Jones in his calculations. See Ex. 2029 ¶ 130.” slip op. at 59

  Patent outcomesUS 8,076,507 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,076,507
• Google Inc. v. Network-1 Technologies, Inc.No claims unpatentable
  PTAB · Jun 20, 2016 · IPR2015-00343 · APJ Kevin F Turner · IPR · Final written decision

  The Board held claims 1–3, 6–14, 18, 19, 21–27, and 29–37 not shown unpatentable because Conwell did not disclose a non-exhaustive search and Ghias and Philyaw did not teach one.

  RulingsFinal written decision

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

    “exhaustive, as required by independent claims 1, 13, and 25. PO Resp. 23– 32. Patent Owner argues that Conwell teaches identifying a match using a look-up table, but the process is not disclosed to be non-exhaustive. Id. at 24 (citing Ex. 1009, 3:43–44, 5:59–61, Fig. 3; Ex. 2005 ¶¶ 364–366). Patent Owner additionally argues that “[w]hile there are ways to search the lookup table disclosed in Conwell using a non-exhaustive approach, Conwell does not disclose any such non-exhaustive approach.” Id. at 26 (citing Ex. 2005 ¶ 369). We agree that Conwell does not explicitly disclose that the look-up is performed non-exhaustively. Further, Patent Owner argues that Conwell also does not inherently disclose using the look-up table to conduct a non-exhaustive search. Id. at 27–31. Patent Owner continues that “Conwell provides no details as to how the exact-match search between the hashed identifier of the work to be identified and the hashed identifiers in the reference database is actually performed.” Id. at 29 (citing Ex. 1009, 3:43–62). Patent Owner argues that Conwell details how its database is maintained, but does not provide specific disclosures as to how the database is searched. Id. at 31–32. We also agree that Conwell does not inherently disclose that the look-up is performed nonexhaustively.” slip op. at 8

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

    “As Patent Owner points out, the second search of the identified matches is performed exhaustively of Works A, C, D, and E. Tr. 40–43 (citing Ex. 1010 7:4–9; Ex. 2005 ¶ 288; Ex. 2006, 325:12–21, 336:12–22). If viewed as separate and independent searches, both would be exhaustive of the data set being searched, and if viewed as a single search, all of the initially input records of the data set (i.e., Works A–E) would be searched by that single search, making it exhaustive. As such, we agree that Ghias does not teach or suggest a non-exhaustive search, as recited in the independent claims. Petitioner responds that Ghias’s subsequent searches are non- exhaustive (Reply 13–14), but we have addressed the same in the prior paragraph, not finding it to be persuasive. Petitioner also argues that the queries from the “first” and “second” searches need not be the same, and in fact would likely be different, such that the results for the first query could exclude non-matches from the results, where those non-matches would be matches for the second query, so that the subsequent search for the second query would not consider these excluded references. Id. at 14. We are not persuaded, however, as the search would still be exhaustive to the dataset provided to the search algorithm. As discussed above, we construe “non-exhaustive search” as “a search that locates a match without a comparison of all possible matches.” We are not persuaded that simply because a search does not seek matches outside of its input records would make that search non-exhaustive; that would make every search non-exhaustive, because it is, by definition, limited to the records input or available to the search algorithm. Petitioner also argues that Ghias discloses that its string matching algorithms operate faster than a brute force search (Reply 14–15), but we are persuaded, as discussed above, that this disclosure is related to comparing a work with a single record in the database, and not with respect to all of the records in the database. Petitioner also argues that Ghias discloses that performance may be improved by “packing all the songs into one file,” whereby the non-exhaustive searching within a record would apply to all of the concatenated record, making the search of the records non-exhaustive. Id. at 15. With respect to this latter argument, we agree with Patent Owner that this represents a “new theory” of the ground than that established in the Petition. Paper 24, 1–2. Compare Pet. 47–48, with Reply 14–15. We will not consider such new arguments for the purposes of this decision. See 37 C.F.R. § 42.23(b); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 2016 WL 2620512, at *8–9 (Fed. Cir. May 9, 2016) (concluding the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)).” slip op. at 13

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “i.e., exhaustive and non-exhaustive, and that “one would have envisaged a ‘non-exhaustive’ search as the predominant form of ‘database query,’” such that Conwell discloses the elements of the claims in substance. Reply 11–12 (citing Ex. 2005 ¶ 371; In re Gleave, 560 F.3d 1331, 1334, 1337–38 (Fed. Cir. 2009)). We do not agree. Instead, we find persuasive the testimony of Dr. Karypis that exhaustive methods may be employed to perform the database lookup in Conwell, and that Conwell does not disclose any non-exhaustive approach. Ex. 2005 ¶¶ 367–369. Although Petitioner alleges that Dr. Karypis’s declaration “is replete with attorney argument presented in the guise of expert testimony,” and thus entitled to little weight (Reply 19), we find no fault with his specific review and interpretation of Conwell, and we are persuaded that it demonstrates that the lookup processes in Conwell need not be non-exhaustive.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “With respect to this latter argument, we agree with Patent Owner that this represents a “new theory” of the ground than that established in the Petition. Paper 24, 1–2. Compare Pet. 47–48, with Reply 14–15. We will not consider such new arguments for the purposes of this decision. See 37 C.F.R. § 42.23(b); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 2016 WL 2620512, at *8–9 (Fed. Cir. May 9, 2016) (concluding the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)).” slip op. at 14

  Patent outcomesUS 8,640,179 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,640,179
• Google Inc. v. Network-1 Technologies, Inc.No claims unpatentable
  PTAB · Jun 20, 2016 · IPR2015-00347 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 15–17, 21–28, 31–33, 38, 51, and 52 were not shown unpatentable because Ghias and Iwamura did not disclose the claimed non-exhaustive search.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “For these reasons, we are not persuaded that Ghias discloses “a non- exhaustive search identifying a neighbor,” as recited in independent claim 15. Claims 16, 17, 21–23, 28, 31, and 51 depend from claim 15. Therefore, Petitioner has not demonstrated that Ghias discloses each and every limitation of claims 15–17, 21–23, 28, 31, and 51. Accordingly, Petitioner has not shown by a preponderance of the evidence that Ghias anticipates 15–17, 21–23, 28, 31, and 51 of the ’988 patent.” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for patent owner

    “patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, No. 15–446, slip op. at 13 (U.S. June 20, 2016). In our Institution Decision, we construed “a non-exhaustive search” to mean “a search that locates a match without a comparison of all possible matches.” Dec. 7. We disagreed with Petitioner’s view that a search that conducts a comparison with all possible matches is nevertheless non-” slip op. at 5

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

    “For these reasons, we are not persuaded that Ghias discloses “a non- exhaustive search identifying a neighbor,” as recited in independent claim 15. Claims 16, 17, 21–23, 28, 31, and 51 depend from claim 15. Therefore, Petitioner has not demonstrated that Ghias discloses each and every limitation of claims 15–17, 21–23, 28, 31, and 51. Accordingly, Petitioner has not shown by a preponderance of the evidence that Ghias anticipates 15–17, 21–23, 28, 31, and 51 of the ’988 patent.” slip op. at 12

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

    “With respect to its contention that claims 22, 24–26, and 52 would have been obvious over Ghias, Petitioner does not present any additional analysis of the recited “non-exhaustive search” beyond that addressed above in connection with claim 15. Therefore, for the same reasons, Petitioner has not shown by a preponderance of the evidence that claims 22, 24–26, and 52 are unpatentable for obviousness over Ghias.” slip op. at 13

  Patent outcomesUS 8,010,988 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,010,988
• Google Inc. v. Network-1 Technologies, Inc.No claims unpatentable
  PTAB · Jun 20, 2016 · IPR2015-00348 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–3, 6, 8–14, 18, 19, 21–27, 29, and 30 were not shown unpatentable because neither Conwell nor Ghias and Philyaw disclosed the claimed non-exhaustive neighbor search.

  RulingsFinal written decision

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

    “patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, No. 15–446, slip op. at 13 (U.S. June 20, 2016). In our Institution Decision, we construed “a non-exhaustive . . . search” to mean “a search that locates a match without a comparison of all possible matches.” Dec. 7. We disagreed with Petitioner’s view that a search that conducts a comparison with all possible matches is nevertheless non-exhaustive if it does not compare all data within all possible matches. Id.” slip op. at 6

  • Skill levelOther

    “demonstrate by a preponderance of the evidence that the claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is anticipated if a single prior art reference either expressly or inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time of the invention to a person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “two species—exhaustive and non-exhaustive—and a skilled artisan “would have envisaged a ‘non-exhaustive’ search as the predominant form of ‘database query.’” Pet. Reply 11 (citing Ex. 2005 ¶ 371). Therefore, according to Petitioner, Conwell discloses a non-exhaustive search in substance. Id. (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). We do not agree. Instead, we find persuasive the testimony of Dr. Karypis that the database look-up in Conwell may use exhaustive methods, and Conwell does not disclose any non-exhaustive approach. Ex. 2005 ¶¶ 367– 69. Although Petitioner alleges that Dr. Karypis’s declaration is entitled to little weight because it “is replete with attorney argument presented in the guise of expert testimony,” Pet. Reply 19, we are persuaded that his analysis of Conwell demonstrates that the look-up processes disclosed in Conwell need not be non-exhaustive. For these reasons, we are not persuaded that Conwell discloses “a non-exhaustive neighbor search,” as recited in independent claims 1, 13, and 25. Claims 2, 3, 6, 8–12, 14, 19, 21–24, 26, and 30 each depend from one of the independent claims and thus also include this limitation. Therefore, Petitioner has not demonstrated that Conwell discloses each and every limitation of claims 1–3, 6, 8–14, 19, 21–26, and 30. Accordingly, Petitioner has not shown by a preponderance of the evidence that Conwell anticipates claims 1–3, 6, 8–14, 19, 21–26, and 30 of the ’441 patent.” slip op. at 11

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

    “recitation of claim limitations. Pet. Reply 9. Further, Petitioner contends, at the time the ’441 patent was filed, “it was at least ‘probable’ that one skilled in the art would use a non-exhaustive lookup to conduct a database query.” Id. However, the fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Even if it would have been trivial to perform the look-up in Conwell using a non-exhaustive process, such a possible application does not demonstrate that Conwell expressly or inherently discloses a non-exhaustive search, as is required for anticipation.” slip op. at 10

  Patent outcomesUS 8,656,441 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,656,441
• Global Tel*link Corporation v. Securus Technologies, Inc.No claims unpatentable
  PTAB · Oct 7, 2015 · IPR2014-00785 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–10 were not shown unpatentable under § 103 over Karacki and Gainsboro ’843 because the petitioner did not establish a reason to combine them to reduce telephone rates based on inmate behavior.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Leonard Forys, opines that a person of ordinary skill in the art relevant to the ’591 patent “would have an associate degree in a technical field such as Electrical Engineering, Computer Science, or equivalent experience and a year or two experience in telecommunications technologies in order to be able to understand the nomenclature and architectures of the invention and the prior art.” Ex. 1010 ¶ 29. Patent Owner does not disagree with Petitioner’s assertions regarding the level of skill in the art, nor does Patent Owner offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’591 patent. PO Resp. 12–13. Based on our review of the ’591 patent, the types of problems and solutions described in the ’591 patent and cited prior art, and the testimony of Petitioner’s declarant, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least a an associate degree in Electrical Engineering, Computer Science, or a similar discipline, and at least one year of work experience in the design and/or development of telecommunications technologies. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “regard, for an obviousness analysis it can be important to identify a reason that would have prompted one of skill in the art to combine prior art elements in the way the claimed invention does. Id. On the record developed at trial, we are not persuaded that Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have had a reason to combine the references to arrive at the challenged claims. Karacki does not disclose reducing the rate of telephone calls as reward to an inmate for good behavior, neither does Gainsboro ’843. Petitioner has not explained persuasively why a person of ordinary skill in the art would have applied the behavior modification program in Karacki to the automated calling system in Gainsboro ’843 so as to change the telephone call rate based on behavior, which is required by the claim limitation “reducing the telephone call charge rate for inmates that meet the measurement of conduct during incarceration for a predetermined period of time,” recited in each independent claim. Additionally, we are not persuaded that one of ordinary skill in the art would have viewed the creation of a 100% discount for the call as a reward to teach or suggest a change or reduction in the rate for telephone calls.” slip op. at 16

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

    “regard, for an obviousness analysis it can be important to identify a reason that would have prompted one of skill in the art to combine prior art elements in the way the claimed invention does. Id. On the record developed at trial, we are not persuaded that Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have had a reason to combine the references to arrive at the challenged claims. Karacki does not disclose reducing the rate of telephone calls as reward to an inmate for good behavior, neither does Gainsboro ’843. Petitioner has not explained persuasively why a person of ordinary skill in the art would have applied the behavior modification program in Karacki to the automated calling system in Gainsboro ’843 so as to change the telephone call rate based on behavior, which is required by the claim limitation “reducing the telephone call charge rate for inmates that meet the measurement of conduct during incarceration for a predetermined period of time,” recited in each independent claim. Additionally, we are not persuaded that one of ordinary skill in the art would have viewed the creation of a 100% discount for the call as a reward to teach or suggest a change or reduction in the rate for telephone calls.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayNot reached

  Patent outcomesUS 6,636,591 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,636,591
• 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

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.