• Kayak Software Corp. / Opentable, Inc. et al. v. International Business Machines Corp.All claims unpatentable
  PTAB · Aug 7, 2017 · IPR2016-00608 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1, 3, 12, 14, 15, and 18 are unpatentable as anticipated by Sunada under 35 U.S.C. § 102.

  RulingsFinal written decision

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

    “We do not conclude, however, that the scope of the term is limited to an affiliation of enterprises, as both parties urge. Pet. 18; PO Resp. 13. Indeed, the specification of the ’346 patent teaches that, “[i]n the context of the present invention, a federation is a set of distinct entities, such as enterprises, organizations, institutions, etc., that cooperate to provide a single-sign-on, ease-of-use experience to a user.” Ex. 1001, 10:62–64 (emphasis added). According to the specification of the ’346 patent, an entity “generally refers to an organization, an individual, or a system that operates on behalf of an organization, an individual, or another system.” Id. at 8:31–33. We recognize that the portion of the ’346 patent that the parties cite specifies enterprises, but, in light of the specification of the patent as a whole, we find this instance of “enterprises” to illustrate an example of the types of entities that may make up a federation. Compare id. at 10:62–64 (“[i]n the context of the present invention, a federation is a set of distinct entities, such as enterprises”), with id. at 1:64–2:1 (“[a] federation is a loosely coupled affiliation of enterprises”). Accordingly, we determine that, under a broadest reasonable interpretation in light of the specification of the ’346 patent, the term “federated computing environment” refers to “an environment having a loosely coupled affiliation of entities that adhere to certain standards of interoperability; the federation provides a mechanism for trust among those entities with respect to certain computational operations for the users within the federation.” Based on our construction, the scope of this term encompasses enterprises, but is not limited to enterprises.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Petitioner raises the argument as to whether the preamble is limiting for the first time in its Reply, even though it had an opportunity to brief this issue in its Petition. We therefore find Petitioner’s new argument in this regard waived. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016). Even if we were to consider Petitioner’s argument, however, we would still find it to be unpersuasive. “[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (cited at PO Resp. 15). In this case, as Patent Owner points out, “the inventors stated that the preambles of [c]laims 1, 15, and 18 limit those claims,” and they “also used the term ‘federated computing environment’ to distinguish their claims over a reference cited during prosecution.” PO Resp. 15 (citing Ex. 1003, 15–22); see also Ex. 1003, 14–15 (“the subject disclosure provides for a ‘runtime user account creation operation within a single-sign-on process’ within the context of a ‘federated computing environment” and “[t]he ‘federated’ context of the subject disclosure is evident from the preamble in each independent claim”); id. at 16 (“the ‘federated computing environment’ limitations of the preamble[s] are limiting”); id. at 17 (“Ting, the alleged anticipatory prior art, is not a ‘federated’ teaching. For that reason alone, the reference cannot and does not anticipate any pending claim.”). Based on the record before us, we conclude that the term “federated computing environment” is limiting.” slip op. at 7

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner

    “Based on the record before us, we find that Patent Owner does not meet its burden of producing evidence sufficient to show that Mr. Bray’s work on the source code inured to the benefit of the named inventors. It follows that we also find that Patent Owner does not meet its burden of producing evidence sufficient to show that any of the named inventors constructed an embodiment or performed a process that met all the claim limitations. See Cooper, 154 F.3d at 1327. Even if we were to accept that Mr. Bray’s work on the source code inured to the benefit of the named inventors, however, we find that Patent Owner fails to provide sufficient evidence showing that Mr. Bray’s code was tested successfully and adequately to show that the code actually worked for its intended purpose, as required by the second element of actual reduction to practice. See id. We note Petitioner’s argument that Patent Owner “fails to corroborate the testing by anyone who had first-hand knowledge of that alleged testing.” Pet. Reply 11. Petitioner explains that “Dr. Hinton, when asked on redirect at her deposition in this proceeding, testified that runtime account provisioning was tested, although on recross she admitted that she had no documentation to corroborate that testing.” Id. at 13 n.2 (citing Ex. 1018, 109:14–110:4). Petitioner also explains that “Mr. Wardrop testified that he did not write or test the code, nor was he able to find any documentation about the alleged testing.” Id. at 14 (citing Ex. 1017, 64:16– 22, 79:9–23). In addition, Petitioner points out, “Mr. Wardrop was also unable to say under what configuration the alleged testing would have occurred, which is significant because he testified that not all configurations would have involved runtime account creation.” Id. (citing Ex. 1017, 91:19– 92:21). We agree with Petitioner. In particular, we note the absence from the record of any evidence showing that Mr. Bray’s source code actually worked for its intended purpose. The only evidence that Patent Owner relies on to show testing of Mr. Bray’s code is the testimony of Dr. Hinton, a named inventor, and Mr. Wardrop, a non-inventor. See PO Resp. 40 (citing Ex. 2038 ¶¶ 12–14, 26; Ex. 2061 71:2–72:24). Patent Owner does not direct us to any test documentation corresponding to the code. Indeed, Dr. Hinton testified during her deposition that she has no access to any such documentation. Ex. 1018, 109:18–24 (“Q. You are not aware of any documentation that reflects that testing of runtime account creation for the PRPQ; correct? A. I don’t have access to the test documents. There would have been test cases created. I just don’t have them.”). Similarly, Mr. Wardrop testified during his deposition that he also has no access to any test documentation corresponding to Mr. Bray’s source code, and that he was not involved with the testing. Ex. 1017, 64:16–22 (“Q. Is there any documentation of that testing? A. I couldn’t find any, . . . but I know there was at the time, but it’s so long ago . . . because I’m not a tester, so I don’t know where they actually kept all those records.”); id. at 79:18–23 (“Q. . . . So the Exhibits 2040 to 2049 that you said wouldn’t have been included in the release but that would have been in the build, would you have been involved in testing with those? A. I was not part of the testing.”). In Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1373 (Fed. Cir. 1998), the Federal Circuit found significant “the absence of any physical record to support the oral evidence,” despite “the ubiquitous paper trail of virtually all commercial activity” that normally exists “in modern times.”” slip op. at 15

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

    “Based on the record before us, we agree with Petitioner. Claims 1, 15, and 18 do not recite any “hallmark[]” of a mechanism for trust. Further, Patent Owner’s own assertion that computer components within a single enterprise implicitly trust each other implies that Sunada discloses a mechanism for trust among those computer components. See PO Resp. 27; see also Ex. 1001, 19:54–63 (“Within an exemplary federated environment that is able to support the present invention, there are two types of ‘trust domains’ . . . . An enterprise trust domain contains those components that are managed by the enterprise; all components within that trust domain may implicitly trust each other.”) (cited at Pet. Reply 24). Moreover, in her declaration, Ms. Spielman directs us to where the ’346 patent teaches that, “[i]f there is no trust relationship, then the service provider cannot depend upon the assertions received from the identity provider; they cannot be used by the service provider to determine how to interpret any information received from the identity provider.” Ex. 2039 ¶ 70 (citing Ex. 1001, 20:28– 32). As discussed above, Sunada’s SSO server sends attributes to a web application, and that web application uses those attributes for runtime account creation. Ex. 1005, Fig. 3. Having considered the arguments and evidence developed during trial, we find that Sunada’s exchange of attributes implies a trust relationship. Specifically, we note the cited teachings in the ’346 patent that all components within an enterprise trust domain may implicitly trust each other, (see Ex. 1001, 19:54–63), and that the service provider cannot depend on assertions from the identity provider where there is no trust relationship, (see id. at 20:28–32). Accordingly, we find that Sunada discloses a mechanism for trust. Patent Owner further argues that Sunada does not disclose a “federated computing environment” because, “‘[w]ithin a single enterprise, some web applications may participate in a single-sign-on, while others may not.’” PO Resp. 27 (quoting Ex. 2039 ¶ 79). Although this may be true generally, Patent Owner does not direct us to evidence showing a web application in Sunada specifically that does not participate in a single-sign-on. Indeed, Sunada teaches that both web applications 2 and 3 “have a function by which, in a case where a user who has logged in by way of the SSO function requests to be provided with a service and the user is not registered, the applications automatically create a user account.” Ex. 1005 ¶ 16 (cited at Pet. 25–26); see also Pet. 24 (“the [web applications in Sunada] ‘participate’ in the SSO and are configured to create a user account for a user that attempts to log on using the SSO server, but does not have an account with the [web application]”). We find that each of Sunada’s web applications participates in single-sign-on operations. Lastly, Patent Owner argues “that Sunada’s web applications and SSO server can share a user’s login status and information about the user is also not sufficient to show that Sunada discloses a ‘federated computing environment.’” PO Resp. 28. According to Patent Owner, computers within a single enterprise trust each other “because they can communicate over the same standard or protocol on a secure internal network,” and “that Sunada’s web application and SSO server purportedly communicate using the same standard or protocols also is not enough to make them a ‘federated computing environment’ because components within a single enterprise can communicate over the same standard or protocol.” Id.” slip op. at 28

  Patent outcomesUS 7,631,346 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,631,346
• Panduit Corp. v. Corning Optical Communications LLCRehearing denied
  PTAB · Jul 27, 2017 · IPR2017-00528 · APJ Terrence W Mcmillin · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution for claims 14-40, 46-53, and 55-62 because the cited art did not show the claimed adapter number, spacing, or density.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Inter Partes Review1 (Paper 7, “Decision” or “Dec.”) of U.S. Patent No. 8,712,206 B2 (Ex. 1001, “the ’206 patent”). Paper 10 (“Req. Reh’g”), 1. When rehearing a decision by the Board on whether to institute a trial, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005). The burden of showing that our Decision should be modified lies with Petitioner, the party challenging the decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2

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

    “teach or suggest a row of six side-by-side adapters which served as the basis for Petitioner’s contention that the numerical limitations of the independent claims of the ’206 patent were taught or suggested. Dec. 21 (“Petitioner does not direct us to, nor do we discern, any teaching or suggestion in Rapp (or other cited art) of using ‘a row of six side-by-side adapters using standardized LC adapters’ or ‘12 fiber optic adapters over 78.0 mm’ as argued by Petitioner.”). See also Dec. 24, 26. In the Request for Rehearing, Petitioner does not point to any related teaching or suggestion in the cited art that we misapprehended or overlooked. To the contrary, Petitioner argues: “[t]he Board overlooked or misapprehended the full scope of the teachings of Rapp, instead focusing on its exemplary embodiment showing nine adapters or blanks.” Req. Reh’g. 3. Most significantly, in the Request for Rehearing, Petitioner fails to direct our attention to any teaching or suggestion in the cited art of a row of six side-by-side adapters which the Board misapprehended or overlooked.” slip op. at 3

  None
  Patents in suitUS 8,712,206
• Smith & Nephew, Inc. v. Conformis, Inc.Institution denied
  PTAB · Jul 26, 2017 · IPR2017-00307 · APJ James A Worth · IPR · Institution

  Institution was denied because Petitioner failed to show a reasonable likelihood that claims 1–20 were unpatentable over the asserted § 103 grounds.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. For the reasons set forth below, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that claims 1–20 are unpatentable. Accordingly, we do not institute an inter partes review of claims 1–20 based on the grounds asserted in the Petition.” slip op. at 2

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

    “unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs. v. Lee, LLC, 136 S. Ct. 2131, 2142–46 (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner asserts no claim construction is necessary and that it “construes the claim language such that the claims are given their broadest reasonable interpretation in light of the specification of the ’025 patent.” Pet. 19. Patent Owner does not dispute this assertion. See generally Prelim. Resp. Having considered the evidence presented, we determine that express construction of any term is not necessary. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (court construes claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute).” slip op. at 7

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

    “Moreover, while Petitioner seemingly acknowledges that Schuster I and Schuster II are separate and distinct references (see Pet. 21), we agree with Patent Owner that Petitioner has failed to provide an articulated rationale for combining features of Schuster I and those of Schuster II, as required by KSR. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Claim 1 recites that “the patient-specific surface ha[s] at least a portion that is substantially a negative of a corresponding portion of a diseased or damaged cartilage surface of the joint of the patient.” Petitioner asserts that both Schuster I and Schuster II disclose a patient-specific surface. Pet. 27. Yet, Petitioner relies primarily on Figure 2 of Schuster II to describe how “a portion of the patient specific surface is substantially a negative of the cartilage surface.” Id. As discussed below, Petitioner’s arguments and evidence do not demonstrate sufficiently why one of skill in the art would have combined the tool of Schuster I with the tool of Schuster II, which includes a portion that is substantially a negative of the cartilage surface. According to Petitioner, “it would have been obvious to a POSITA to use MRI (as taught by Schuster I & II) to image the patient’s cartilage surface (as was common knowledge) and to make at least a portion of the patient-specific surface of the implantation aid be substantially a negative of the patient’s damaged cartilage surface.” Id. at 29–30 (citing Ex. 1002 ¶¶ 82–85). Relying on the testimony of its declarant, Petitioner proffers several reasons why one of skill in the art would have wanted to match the patient-specific surface to the corresponding cartilage. Id. at 30. For example, Petitioner asserts that “the Schuster references themselves provide the motivation.” Id. (citing Ex. 1008, 3:57–67, Fig. 2; Ex. 1046 ¶ 11; Ex. 1002 ¶ 84). In context, Petitioner is relying on the teachings from both Schuster I and Schuster II that the implantation aids are “set on the damaged knee joint.” Id. (citing Ex. 1008, 3:57–67, Fig. 2; Ex. 1046). However, such reasoning lacks rational underpinnings because it does not address the proposed modification of the tool of Schuster I using the tool of Schuster II, in which a portion of the tool is substantially a negative of the patient’s damaged cartilage surface. Petitioner further suggests that the combination would have been obvious as a matter of design choice, or as a choice from a limited number of finite options, to simplify the surgery, or to ensure “very exact positioning on the damaged knee joint.” Pet. 30–31 (citing Ex. 1002 ¶ 84); see also Ex. 1002 ¶ 84 (providing near verbatim discussion). We determine that these statements, as well as the portion of the Mabrey Declaration to which Petitioner refers, are conclusory as well, and do not provide significantly more than an assertion that they are directed to the same problem. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (explaining that Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements”); see also In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (reviewing case law and explaining that findings must be supported by a reasoned basis).” slip op. at 12

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached

    “likelihood of prevailing on its assertion that claims 1–20 of the ’025 patent are unpatentable. 4 IV. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied. 4 Because we determine that Petitioner has not established a reasonable likelihood of success of prevailing on its contentions and do not institute an inter partes review, Petitioner’s request for joinder, or a consolidated schedule with, with Case IPR2017-00115 is also moot. See Pet. 24–25; see also id. at 22–24 (arguing lack of redundancy with Case IPR2017-00115).” slip op. at 17

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,216,025
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Advanced Touchscreen And Gesture Technologies, LLCAll claims unpatentable
  PTAB · Jul 7, 2017 · IPR2016-00655 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1, 3–5, and 10 are unpatentable as obvious over Westerman and Bach, and independently over Ure and Edwards.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “testifies that a person of ordinary skill in the art at the time of the invention “would have had a minimum of bachelor’s degree in mechanical engineering, electrical engineering, computer engineering, or computer science, or an equivalent technical degree and at least two years of experience in the design of computer user interface devices, or the equivalent.” Ex. 1029 ¶ 15. Michael C. Brogioli, Ph.D., Patent Owner’s expert, adopts Mr. Ward’s testimony as to the level of ordinary skill in the art. Ex. 2012 ¶¶ 26–27. Jacob O. Wobbrock, Ph.D., another of Patent Owner’s declarants, seems to agree with the testimony of Mr. Ward, but further testifies that an ordinarily skilled artisan would have “experience building interactive computer applications, including taking readings from input devices and portraying user interfaces on-screen.” Ex. 2009 ¶ 22. Based on the evidence before us, we do not observe meaningful differences between the parties’ assessments of a person with ordinary skill in the art. Therefore, we adopt Mr. Ward’s assessment of a person with ordinary skill in the art. We also find that the prior art references themselves represent the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the references themselves); GPAC, 57 F.3d at 1579 (finding that the Board did not err in concluding that the level of ordinary skill in the art was best determined by the references of record).” slip op. at 13

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

    “touch screen” Claim 1 recites “the touch screen comprising a display and a sensor array comprising a plurality of sensors in physical contact with the display.” Ex. 1001, 11:1–3. In our Decision on Institution, we construed the term “touch screen,” broadly, but reasonably, as a “screen designed to recognize the location of a touch on its surface.” Dec. 9. And, in light of the Specification, we determined that a “touch pad” may encompass a touch screen. Id.; Ex. 1001, 2:24–26, 3:9–22, 4:53–55. Although Patent Owner does not challenge our claim construction in its Patent Owner Response, Patent Owner clarifies that a “transparent touch pad” when positioned over a display, is synonymous with a “touch screen.” PO Resp. 10–11. In its Reply, Petitioner asserts that no construction is necessary for the term “touch screen,” but nevertheless agrees with our claim construction. Reply 4. Upon review of the present record, we discern no reason to modify our claim construction for this term for purposes of the Final Written Decision. slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We are not persuaded by Patent Owner’s arguments and decline to adopt Patent Owner’s proposed claim construction because Patent Owner attempts to import an extraneous limitation into the claims—“a touch gesture must be perceived based on previously known sequential dynamics among hand contact patterns (a set of stored touch gestures).” PO Resp. 12– 13 (emphases in the original). Claim 1 merely recites “the touch gesture is recognized from sequential dynamics among hand contact patterns.” Ex. 1001, 11:20–22. As noted by Petitioner, the challenged claims do not recite “a set of stored touch gestures” or limit gesture recognition to looking up specific “previously known sequential dynamics.” Reply 2–4.” slip op. at 10

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

    “Upon review of the parties’ contentions and the evidence before us, we agree with Petitioner’s analysis and determine Petitioner has articulated sufficiently reasoning with rational underpinning why a person with ordinary skill in the art would have combined the teachings of Westerman and Bach. Pet. 18–21, 24–25. For the reasons discussed below, we find that Petitioner’s reasons to combine the prior art teachings are supported by sufficient explanation and credible evidence. See, e.g., Ex. 1029 ¶¶ 68–70, 81–82 (citing Ex. 1019, 446–48; Ex. 1020, 5:7–9; Ex. 1023, 1:37–2:3). As Patent Owner and the prior art of record confirm, touch screens or transparent touch pads were well-known in the art at the time of the invention. Prelim. Resp. 44 (conceding that touch screens and their benefits were well known); Ex. 2009 ¶ 26 (confirming that “touchpads and touch screens were known to persons of ordinary skill in the art before May 15, 1999.”); Ex. 1018, 2–3, Ex. 1019, 446–48; Ex. 1020, 1:9–14, 5:7–9, Ex. 1023, 1:37–2:3; see also Ex. 1001, 3:16–22 (explaining that “two-dimensional-sensing see-through touch-screens [were] often employed in public computer kiosks.”). More importantly, as Petitioner explains, other prior art of record recognizes the advantages of making a touch sensitive surface that is positioned over a visual display transparent. Pet. 18–21; Ex. 1022, 115–17; Ex. 1023, 1:48–60. For instance, as described in Sears, it 30 was recognized in the art that “[t]ouchscreens free desk space for other uses.” Ex. 1018, 3. Further, as explained in Clancy, having a transparent touch pad positioned over a visual display would provide a convenient and space efficient way to receive information. Ex. 1023, Abs., 1:28–33; see also Ex. 1019, 446–47; Ex. 1020, 1:9–14, 5:7–9 (“The pressure sensor can be made from transparent materials so that, e.g., a display screen can be viewed through a write pad or finger-touch-sensitive pad . . . . Similarly, transparency of the pressure sensor is an advantage for tracing an underlying pattern such as . . . a map or chart.”). In addition, Mr. Ward testifies that it was well known in the art at the time of the invention to make a touch pad positioned over a visual display transparent. Ex. 1029 ¶ 68 (citing Ex. 1022A, 115–17 (“Transparent thin films are used in capacitive touch screens for touch-sensitive input application over computer monitors.”); Ex. 1023, 4:21–42; Ex. 1012, 1:44– 45, 3:35–5:7; Ex. 1019A, 446–47; Ex. 1024, 1, 6, 7). According to Mr. Ward, “[i]t was well known that ‘[t]he transparency of the pressure sensor is an advantage for tracing an underlying pattern such as a map or chart or for minimizing the loss of display quality underneath the touch-sensitive screen.’” Id. ¶¶ 70–71 (citing Ex. 1019, 446–48; Ex. 1020, 5:7–9; Ex. 1023, 1:37–2:3).” slip op. at 30

  Patent outcomesUS 8,878,810 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,810
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Advanced Touchscreen And Gesture Technologies, LLCAll claims unpatentable
  PTAB · Jul 7, 2017 · IPR2016-00654 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1 and 5–7 are unpatentable as obvious over Westerman and Bach, and separately over Ure, Edwards, and Harrison.

  RulingsFinal written decision

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

    “Inc. (collectively “Petitioner”) filed a Petition requesting inter partes review of claims 1 and 5–7 of U.S. Patent No. 8,866,785 B2 (Ex. 1001, “the ’785 patent”). Paper 2 (“Pet.”). Advanced Touchscreen and Gesture Technologies, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Upon consideration of the Petition and Preliminary Response, we determined that there was a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, and instituted this trial, in pursuance to 35 U.S.C. § 314(a), as to claims 1 and 5– 7 of the ’785 patent. Paper 10 (“Dec.”).” slip op. at 2

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner

    “secondary considerations of non-obviousness. Factual inquiries for an obviousness determination include secondary considerations based on evaluation and crediting of objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Notwithstanding what the teachings of the prior art would have suggested to one with ordinary skill in the art at the time of the invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion” slip op. at 62

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

    “nonobviousness against the evidence of obviousness in the present record. Based on the evidence in this record, we conclude that, on balance, the strong evidence of obviousness outweighs the weak evidence of nonobviousness. See Leapfrog, 485 F.3d at 1162 (holding that the objective considerations of nonobviousness presented, including substantial evidence of commercial success, praise, and long-felt need, were inadequate to overcome a strong showing of primary considerations that rendered the claims at issue invalid). Conclusion on Obviousness Over Westerman and Bach” slip op. at 71

  Patent outcomesUS 8,866,785 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,866,785
• LG Display Co., Ltd. / LG Electronics, Inc. v. Innovative Display Technologies LLCAll claims unpatentable
  PTAB · May 23, 2017 · IPR2015-00493 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 15 and 27 are unpatentable under § 103(a) as obvious over Pristash and over Kobayashi in combination with Pristash.

  RulingsFinal written decision

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

    “name two real parties-in-interest: LG Electronics Inc. and LG Electronics U.S.A. Inc. PO Resp. 15. The identical argument was raised in Patent Owner’s Preliminary Response. Prelim. Resp. 18. We determined in our Institution Decision that Patent Owner failed to provide convincing evidence that LG Electronics Inc. and LG Electronics U.S.A. Inc. are real parties in interest. Paper 11, 16–17. Patent Owner’s Response relies on the same arguments and evidence that we considered in our Institution Decision. For the reasons stated there, we determine that Patent Owner fails to prove that the Petition does not name the real parties-in-interest.” slip op. at 24

  • Skill levelSkill level petitioner adoptedOther

    “relevant to the ’370 patent would have at least an undergraduate degree in physics, optics, electrical engineering, or applied mathematics AND 3 years of work experience (or a graduate degree) in a field related to optical technology.” Escuti Decl. ¶ 23. Mr. Werner does not take issue with this testimony, and in fact proposes a similar standard: In this declaration, I rely on the following definition of a person of ordinary skill in the art: “a person of ordinary skill in the art of the patents would hold an undergraduate degree in physics, material science, electrical engineering, or mathematics and have one or both of the following: (1) three or more years of work experience in a field related to optical technology; or (2) a graduate degree in a field related to optical technology.” Werner Decl. ¶ 36. We find that Mr. Werner’s definition is too limited, in that it does not include a person with an undergraduate degree in optics. We, therefore, do not accept his standard and adopt instead Dr. Escuti’s more complete definition.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “On this issue, however, we credit Dr. Escuti’s testimony over Mr. Werner’s. Dr. Escuti testified that he has over 16 years of experience in the fields of liquid crystal display technologies, backlight design, optical physics, and electronic materials. Escuti Decl. ¶ 5. In comparison, Mr. Werner testified that since 1971, he has not been involved in the design or engineering of liquid crystal displays or backlighting units. Werner Dep. 16:5–17. Mr. Werner was unable to say whether two light rays crossing paths in a light guide plate would be an example of mixing. Werner Dep. 80:17–81:8. Furthermore, at his deposition he would not provide an opinion as to whether Pristash discloses the transition region called for in the claims. Id. at 116:19–117:8. Instead of discussing what is disclosed in Pristash, Mr. Werner’s declaration focuses on alleged deficiencies in the Petition. Werner Decl. 39. Under our rules, expert testimony that does have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). Dr. Escuti, on the other hand, does provide such an opinion, both in his declaration and at his deposition. Escuti Decl. ¶¶ 109–13; 131–33; Escuti Dep. 103:11–104:9. We find that Dr. Escuti’s qualifications and experience are superior to those of Mr. Werner, and that his testimony on this issue is more credible and helpful than Mr. Werner’s.” slip op. at 19

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

    “Petitioner provides detailed claim charts and expert testimony through the Escuti Declaration. Pet. 22–25; Escuti Decl. ¶¶ 67–70, 114–33. Through the claim charts and expert testimony, Petitioner asserts that Pristash discloses the challenged claims. Moreover, Petitioner contends that a person of ordinary skill “would have been motivated to combine elements of a particular embodiment [of Pristash] with other elements of other embodiments disclosed in Pristash for several reasons.” Pet. 11. Those reasons are set forth in the Petition. Id. at 11–12. In response, Patent Owner challenges the sufficiency of Petitioner’s proofs in several respects that we will discuss infra. We note, however, that most of the claim elements are undisputed. Patent Owner challenges Petitioner’s assertions only as to certain claim elements, and does not challenge Petitioner’s presentation of the rationale to combine various embodiments of Pristash. We have considered Petitioner’s proffered rationale in light of Pristash’s description of various disclosed embodiments as alternatives. See infra. We are persuaded, therefore, that Petitioner has set forth a convincing rationale for why a person of ordinary skill would have combined features from various embodiments of Pristash as discussed infra.” slip op. at 8

  Patent outcomesUS 7,537,370 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,537,370
• Lavelle Industries, Inc. v. Danco, Inc.Institution denied
  PTAB · May 4, 2017 · IPR2017-00159 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 6, 11, or 14 unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 314, which provides that inter partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review of any claim.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id. Petitioner does not propose a level of ordinary skill in the art. Relying on the testimony of Mr. Jones, Patent Owner, asserts that a person of ordinary skill in the art “typically would have had (a) a bachelor’s degree in mechanical engineering, or a related field, and at least two years of experience in the design of plumbing components; or (b) a high school degree and at least four years of experience in the design of plumbing components.” Prelim. Resp. 19 (citing Ex. 2003 ¶ 24). Mr. Jones testifies that his opinion is based on his “experiences working in the field of product design in the plumbing industry in addition to the specification and claims of the ‘455 Patent in light of the state of the art in the 2012 time frame.” Ex. 2003 ¶ 24. We determine that the level of ordinary skill proposed by Mr. Jones is consistent with the challenged patent and the asserted prior art, and we therefore adopt this definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 10

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We are not persuaded by Petitioner’s arguments and evidence that Turner’s sleeves 20, 52 are collapsible. We agree with Patent Owner and Mr. Jones that “flexibility is not the same as collapsibility,” and that Turner thus does not disclose that flexible sleeves 20, 52 necessarily are collapsible. Furthermore, Mr. Jones testifies that one of ordinary skill in the art would not find Turner’s sleeves to be collapsible and “a cylindrical polyethylene wall that is 1/16 or 5/32 of an inch [as disclosed in Turner] would actually be relatively rigid (although still capable of flexing).” Ex. 2003 ¶¶ 65–66. We find this testimony, which is based on Mr. Jones’ “experiences with polyethylene and similar materials and how they have been used in the plumbing industry,” credible and persuasive. See Ex. 2003 ¶ 66. Petitioner, on the other hand, offers no objective evidence supporting its assertion that Turner’s sleeves are collapsible.” slip op. at 28

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

    “Having considered Petitioner’s argument and evidence, we are not persuaded that Schwartz’s intermediate portion 24 is collapsible. Instead, we agree with Patent Owner that the passage of Schwartz cited by Petitioner as disclosing collapsibility (line 21 of column 2), fails to suggest that intermediate portion 24 is collapsible. Indeed, this passage merely discloses that ferrule 12 is shaped with radial flange 18. Ex. 1002, 2:21. As such, we are not directed to any disclosure in Schwartz that suggests intermediate portion 24—or any part of ferrule 12—is collapsible. Schwartz discloses that ferrule 12 is made of “chemically inert plastic material” (Ex. 1002, 2:13–14), but insufficient reasoning is given to establish that this material necessarily would be collapsible. Regarding Petitioner’s argument noted above that intermediate portion 24 “must” be collapsible, we agree with Patent Owner that this argument is not persuasive. The assertion that the intermediate portion must at least partially collapse to provide a sealing force against the soil pipe and to take up any variable space present above the pipe is not supported sufficiently by objective evidence or analysis. Furthermore, this assertion is contradicted by Mr. Jones’ testimony, which we credit. See Ex. 2003 ¶ 51.” slip op. at 14

  § 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 9,273,455
• Westerngeco LLC v. PGS Geophysical AsRehearing granted
  PTAB · Feb 3, 2017 · IPR2015-00313 · APJ Justin Busch · IPR · Rehearing

  On rehearing, the Board held claim 2 unpatentable as anticipated by Gallagher, modifying the final written decision; no other aspect was modified.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “On rehearing, the burden of showing the Decision should be modified lies with the party challenging the Decision. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. For the reasons that follow, Petitioner’s request for rehearing is granted. This decision on rehearing modifies our Final Written Decision only to the extent that we now hold claim 2 of the ’059 patent to be unpatentable as anticipated by Gallagher. Neither party challenges our holdings with respect to any other claims in our Final Written Decision.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Owner, and Petitioner does not contest, that traces “have the same coordinates” when those traces populate the same bin in the “set of bins.” We agree with Petitioner, however, that the disputed limitation is tied to the assignment of coordinates, not to the organizing step, and we are unpersuaded by Patent Owner’s arguments that a trace can only populate a particular bin after “the coordinate-designated set of traces” has been organized.” slip op. at 6

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

    “interpreted properly (i.e., not tied to the organizing step), Gallagher teaches or suggests the disputed limitation. Req. Reh’g 5–6. We found persuasive Petitioner’s mappings of (1) Gallagher’s assignment of sections and shells in a common reference point bin to the assigning step, (2) the section-shell segments created from that assignment to the recited set of bins, and (3) Gallagher’s decimation process, which in one example leaves one trace per section-shell segment (or bin), to the organizing step. Dec. 14–19; see Pet. 45–48. In Gallagher, it is the combination of the acquisition geometry and the selection of the sections and shells that defines the coordinate-designated set of traces and the bins. Prior to Gallagher’s decimation,” slip op. at 10

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 6,026,059
• Spectrum Brands, Inc. / Unikey Technologies, Inc. v. Assa Abloy ABSome claims unpatentable
  PTAB · Jan 12, 2017 · IPR2016-00686 · APJ Christopher G Paulraj · IPR · Final written decision

  Claims 1, 3, 5, 9–16, 22, 23, 26, 29, and 30 are unpatentable over Nielsen; claims 7 and 21 were not shown unpatentable over Nielsen and Karkas for lack of a sufficient reason to combine.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Id. ¶ 84. Dr. Villasenor, however, does not cite to any underlying technical documents that may have corroborated Mr. Lovelock’s explanation about how the Seos platform operates; nor has Dr. Villasenor mapped Mr. Lovelock’s explanation to specific claim elements. Also, Mr. Lovelock himself has not submitted a declaration in this proceeding. We, thus, give Dr. Villasenor’s opinion that Patent Owner’s Seos platform practices the claims little weight. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Further, we recognize that Dr. Villasenor’s testimony is the only evidence of record on this issue, as Petitioners have not submitted a rebuttal declaration attesting that Patent Owner’s products do not practice the claims.” slip op. at 37

  • ExcludeMotion to exclude, deniedMixed

    “between the commercial success of the Seos product and the claims of the ’374 patent.” Mot. to Exclude 8. Patent Owner argues that “the quoted passage is not relevant because it is removed by 10 years from the commercial success events Dr. Villasenor addressed,” and “bears no relationship to, and does not serve to prove, disprove or rebut the nexus between the commercial success of the Seos product in the hospitality or enterprise industries and the claimed credential updating features embodied in the Seos system.” Id. at 9. We disagree. As discussed above, we find that the quoted passage of the Annual Report statement is evidence of Patent Owner’s pre-existing market share, and, thus, relevant to the issue of whether the alleged commercial success has a nexus to the claimed invention. We have taken into account the fact that the 2004 Annual Report is from over 10 years ago, and do not find that it will cause any confusion. To the contrary, the 2004 Annual Report is more probative to the issue of pre-existing market share than more recent reports insofar as the ’374 patent claims an effective filing date based on a provisional application filed in April 2005. Ex. 1001, Title Page. Accordingly, we determine that Exhibit 1008 is admissible evidence under Rules 402 and 403, and we deny Patent Owner’s Motion to Exclude as to that exhibit. IV.” slip op. at 44

  • Skill levelSkill level board ownOther

    “We agree with Dr. Villasenor insofar as the relevant field for the ’374 patent is more accurately defined as “electronic control access systems” rather than merely “security systems” (id. ¶ 41), but otherwise find no meaningful difference between the level of ordinary skill in the art proposed by the parties’ experts. We also recognize that the level of skill in the art is reflected in the prior art references themselves, which focus on mobile-phone based electronic access systems, and take that into consideration in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). As such, we determine that a person of ordinary skill in the art would have least an undergraduate degree in computer science or electrical engineering and one year of experience in electronic control access systems.” slip op. at 15

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

    “We determine, for purpose of this Final Written Decision, that no terms in the challenged claims require express construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  Patent outcomesUS 8,150,374 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,150,374
• Spectrum Brands, Inc. / Unikey Technologies, Inc. v. Assa Abloy ABSome claims unpatentable
  PTAB · Jan 12, 2017 · IPR2015-01562 · APJ Christopher G Paulraj · IPR · Final written decision

  Claims 1, 3, 5, 9–16, 22, 23, 26, 29, and 30 are unpatentable as obvious over Nielsen; claims 7 and 21 were not shown unpatentable over Nielsen and Karkas.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “separate Petition for inter partes review, challenging claims 1, 3, 5, 7, 9–16, 21–23, 26, 29, and 30 of the ’374 patent based on similar grounds to those presented by Spectrum. See IPR2016-00686, Paper 2. We instituted inter partes review based on UniKey’s Petition to the extent that the grounds set forth therein are consistent with the basis for our institution of this proceeding, and joined UniKey as a Petitioner to this proceeding. See Paper 29 (instituting inter partes review based on UniKey’s Petition and joining UniKey as a Petitioner to IPR2015-01562). As a condition of UniKey’s joinder, the parties submitted a joint stipulation setting forth the parameters of UniKey’s participation in this proceeding, including the requirement that “UniKey will not have any right to separate or additional briefing, discovery, or speaking time for the duration of the contest involving [the ’374 patent], through termination of the joined proceedings and through any related appeal.” Paper 27, 1. UniKey also filed a statement “withdraw[ing] all grounds and arguments presented in IPR2016-00686 to the extent that they differ from the Panel’s ground for institution in IPR2015-01562.” Paper 32.2” slip op. at 2

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

    “the Specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2146 (2016). Under the broadest reasonable construction 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 disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification . . . when [it] expressly disclaim[s] the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004). “Although an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We determine, for purpose of this Final Written Decision, that no terms in the challenged claims require express construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Dr. Villasenor insofar as the relevant field for the ’374 patent is more accurately defined as “electronic control access systems” rather than merely “security systems” (id. ¶ 41), but otherwise find no meaningful difference between the level of ordinary skill in the art proposed by the parties’ experts. We also recognize that the level of skill in the art is reflected in the prior art references themselves, which focus on mobile-phone based electronic access systems, and take that into consideration in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). As such, we determine that a person of ordinary skill in the art would have least an undergraduate degree in computer science or electrical engineering and one year of experience in electronic control access systems.” slip op. at 15

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

    “step 1a. As recognized by Petitioners, the Federal Circuit has observed that “[u]nless the steps of a method actually recite an order, the steps are not ordinarily construed to require one.” Reply 10–11 (quoting Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003)). In this case, however, the plain language of claim 1 requires “storing . . . a first set of credential data,” “receiving . . . a credential update,” and “in response to receiving the credential update, . . . replacing the first set of credential data with a second set of credential data that is different from the first set of credential data.” Ex. 1001, 12:35–45. Thus, we agree that “[l]ogic compels the conclusion that step 1b follows step 1a, because the controller’s receipt of a ‘credential update’ associated with ‘different’ data would follow the first set of credential data previously stored at the controller.” PO Resp. 21. See Mformation Techs., Inc. v. Research In Motion Ltd., 764 F.3d 1392, 1398–99 (Fed. Cir. 2014) (“[A] claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.” (internal quotation marks omitted)). With reference to Figure 3, Nielsen teaches that “[i]n the initial step 381, the access right owner 352 defines the access rights to be granted, possibly including a list of possible access right grantees,” that “[i]n step 382, the access right owner 352 authorizes the administrator 351 to generate and assign access keys,” that “[b]y means of an access code management system, the administrator in step 383 transforms the access right definition into a set of electronic access codes,” and that “[i]n step 384, the access codes and other related data are stored.” Ex. 1002 ¶ 132. Thus, we agree with Patent Owner that “the relied upon steps of Nielsen teach a process that differs from the steps recited in claim 1” insofar as Figure 3 shows the “receiving” step(s) performed before the “storing” step 384. PO Resp. 25. Specifically, that Figure 3 of Nielsen does not show that the process is iterative. Nonetheless, we find that Nielsen suggests a process wherein access codes (i.e., “credential data”) that are stored in the access code management system are periodically replaced with new and different access codes (i.e., a “credential update”). See Ex. 1002 ¶ 128 (“[T]he access code may be transmitted periodically, in order to replace the access codes on a lock control unit and the corresponding electronic key . . . .”). The same paragraph of Nielsen also indicates that “[t]he access code management system 211 generates and administers the access codes as described in connection with FIGS. 3 and 9a-b.” Id. Thus, we determine that the skilled artisan would have found it obvious to initially store access codes, and thereafter repeat the process described in the flow chart of Figure 3 in order to replace previously stored access codes. As explained by Dr. Green, the purpose of Nielsen periodically replacing previous access codes “is to improve the security of the system,” such as in the situation when codes are invalidated if misused or lost. See Ex. 1004 ¶ 29. Nielsen explicitly references Figure 3 when referencing how the access code management system administers access codes (Ex. 1002 ¶ 128), thereby providing a suggestion and motivation to modify Nielsen’s teachings so as to repeat the process of Figure 3 when replacing previously stored access codes in order to improve security.” slip op. at 18

  Patent outcomesUS 8,150,374 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,150,374

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.