- TRW Automotive U.S. LLC v. Magna Electronics Inc.No claims unpatentablePTAB · Jan 15, 2016 · IPR2014-01348 · APJ Michael J Fitzpatrick · IPR · Final written decision
The Board held claims 40, 41, 43, 44, 46–59, 61–64, 66–74, 86, 87, 89, and 90 not unpatentable because it excluded Goldbeck for lack of authentication.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted
“Rule 901(a) states: “To satisfy the requirement of authenticating or identifying an item of evidence, the proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a). Thus, we first look to what TRW claimed Exhibit 1105 to be. In that regard, the only identifying information provided by TRW is a footnote in its Petition. See Pet. 2 n.4. The footnote offers a purported bibliographic reference for Exhibit 1105 as follows: “Goldbeck et al., ‘Lane 5 detection and tracking by video sensors,’ Intelligent Transportation Systems, 1999. Proc., 5-8 Oct. 1999, pp.74-79.; prior art under 35 U.S.C. § 102(b).” Id. Thus, TRW claimed that Exhibit 1105 was published during October 5–8 of 1999 in something called Intelligent Transportation Systems. Id. TRW did not cite or otherwise provide any evidence for this claim. Id.8” slip op. at 5
- BurdenNot shown unpatentable
“In its Petition, TRW offered Exhibit 1105 as an article published October 5– 8, 1999, in Intelligent Transportation Systems. Pet. 2 n.4. Magna timely objected for, among other things, lack of authentication. TRW did not serve any supplemental evidence that Exhibit 1105 is what TRW claims it is. And, in opposing the Motion to Exclude, TRW has not directed us to evidence probative of Exhibit 1105 being an article published October 5–8, 1999, in Intelligent Transportation Systems or persuaded us that Exhibit 1105 is self-authenticating for that which TRW generally claims it to be: “an IEEE publication from an IEEE periodical.” Opp. 4. Magna’s Motion to Exclude Exhibit 1105 for lack of authentication is granted. III. CONCLUSION Petitioner’s ground of unpatentability relies on Exhibit 1105 (Goldbeck). Because we exclude Exhibit 1105 from evidence, Petitioner’s ground of unpatentability necessarily fails.” slip op. at 12
Patent outcomesUS 8,508,593 not shown unpatentableNonePatents in suitUS 8,508,593 - TRW Automotive U.S. LLC v. Magna Electronics Inc.No claims unpatentablePTAB · Jan 6, 2016 · IPR2014-01347 · APJ Michael J Fitzpatrick · IPR · Final written decision
The Board held claims 1–3, 6–12, 16, 18–31, 33–39, 76–80, and 82–85 not unpatentable because it excluded Goldbeck for lack of authentication, defeating both obviousness grounds.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted
“Rule 901(a) states: “To satisfy the requirement of authenticating or identifying an item of evidence, the proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a). Thus, we first look to what TRW claimed Exhibit 1005 to be.” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“Magna challenged the sufficiency of TRW’s evidence that Exhibit 1005 constitutes a prior art printed publication. See PO Resp. 48–50; see also 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent . . . only on the basis of prior art consisting of patents or printed publications.”). TRW responded to Magna’s sufficiency of the evidence arguments by” slip op. at 4
Patent outcomesUS 8,508,593 not shown unpatentable§ 102 anticipationPatents in suitUS 8,508,593 - Avx Corporation v. Greatbatch Ltd.Adverse judgmentPTAB · Nov 19, 2015 · IPR2015-00713 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and cancelled claims 1, 2, 8, 9, 23, 24, 30, and 31.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed to be a request for adverse judgment include disclaimer of the involved application or patent and cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. Id. In light of Patent Owner’s disclaimer of claims 1–44 of the ’077 patent, we determine that entry of judgment against Patent Owner with respect to claims 1, 2, 8, 9, 23, 24, 30, and 31 of the ’077 patent is appropriate.” slip op. at 2
NonePatents in suitUS 7,035,077 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00948 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s adverse-judgment motion, entered judgment against Patent Owner, and cancelled claims 2, 22, 23, and 25.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and it did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3
NonePatents in suitUS 6,370,371 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00947 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s motion for adverse judgment and cancelled claims 1, 23, 25, 161, 193, and 202.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3
NonePatents in suitUS 6,061,551 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00946 · APJ Bart A Gerstenblith · IPR · Adverse judgment
The Board granted Patent Owner’s motion for adverse judgment and cancelled claims 1, 82, 90, and 91.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(collectively, “Petitioner”) filed a Petition for inter partes review of U.S. Patent No. 6,266,518 B1 (“the ’518 patent”). Paper 1. ParkerVision, Inc. (“Patent Owner”) filed a Preliminary Response on September 24, 2014. Paper 7. On December 18, 2014, we instituted this inter partes review of claims 1, 82, 90, and 91 of the ’518 patent. Paper 8.” slip op. at 2
NonePatents in suitUS 6,266,518 - Reg Synthetic Fuels LLC v. Neste Oil OyjAll claims unpatentablePTAB · Jun 5, 2015 · IPR2014-00192 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–24 are unpatentable under § 103; proposed substitute claims 25–28 are patentable and entered because the prior art did not motivate the claimed 5,000–8,000 w-ppm sulfur range.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“Based on the record before us, we conclude that Neste has carried its burden of demonstrating that claim 25 is patentable over the prior art of record. We concluded above, in discussing the original claims, that a person of ordinary skill in the art would have had reason to combine Jakkula and Monnier I to add sulfur to the feedstock of an HDO process that is followed by an HI step, because the prior art suggests that concentrations of 2000 or 4431 w-ppm have beneficial effects on catalyst activation and decarboxylation selectivity. A person of ordinary skill would, therefore, weigh the possible deleterious effects of sulfur on the HI catalyst, against the 28 possible benefits. The question of whether a person of ordinary skill in the art would have had reason to add an even higher concentration of sulfur—in the range of 5000–8000 w-ppm—is an altogether different one. The record before us does not establish persuasively that there was any art-recognized benefit to using a concentration of sulfur over 4431 w-ppm. Absent any indication of a benefit to be obtained from adding even greater amounts of sulfur, the skilled artisan would have no reason to make the modifications to Jakkula necessary to result in the claimed invention. Such modifications would involve catalyst replacement costs, additional processing steps such as stripping, or catalyst substitutions18 that—although not prohibitive if the prior art suggested a benefit might be obtained—would not be undertaken if the person of ordinary skill saw no benefit to making them. For these reasons, we conclude that Neste has established sufficiently that there was no reason to modify the prior art to arrive at the process of claim 25.” slip op. at 28
- Expert testimonyPetitioner expert discountedOther
“We are not convinced by REG’s rate constant argument. First, REG does not direct us to any evidence in the record, other than the testimony of Dr. Sughrue, that establishes that increasing the rate constant of the conversion reaction was recognized in the art to be beneficial. This is in stark contrast to decarboxylation selectivity, which is described by several 17 Furthermore, as discussed above with respect to Laurent I, we do not find such a significant increase in sulfur concentration—from 2000 to 5000–8000 w-ppm—to be “routine.” 26 references as decreasing hydrogen consumption and, therefore, processing cost. We are, therefore, left with only Dr. Sughrue’s statement that an “increase in rate constant is important because a higher activity allows for less catalyst to be used to deoxygenate the feedstock.” Ex. 1043 ¶ 125. Dr. Sughrue cites no support for such an assertion, and we accord it little weight. See 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.”). Second, we note that Table 4 of Laurent II reports, along with kDES, the rate constants k4MA and kGUA, pertaining to the HDO conversion of 4- methylacetophenone and guaiacol, respectively. Ex. 1011, 107. While kDES is shown to increase with sulfur concentration, k4MA decreases and kGUA is unaffected by sulfur concentration. Id. REG provides no evidence or argument establishing why a person of ordinary skill in the art would have considered only the kDES rate constant in determining the benefit of increased sulfur concentration.” slip op. at 26
- Skill levelSkill level board ownOther
“evidence that the prior art teaches all elements of challenged claims 1–24, and that a person of ordinary skill in the art would have had reason to combine the disclosures. Furthermore, we conclude that such a combination would have been within the level of ordinary skill in the art, as evidenced by 17 the prior art of record. We, therefore, conclude that claims 1–24 would have been obvious at the time of the invention, and thus are unpatentable under 35 U.S.C. § 103.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
Patent outcomesUS 8,278,492 unpatentable§ 103 obviousnesscites KSRPatents in suitUS 8,278,492 - PTAB · Mar 11, 2015 · IPR2014-01108 · APJ Michael W Kim · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, before a final decision on the merits.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Petitioner is met. Under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Asustek Computer Inc., Dexin Electronics Co., Ltd., and Thermaltake Technology represent all petitioners in this review. The Board has discretion to terminate this review with respect to Better Mouse Co., LLC as Patent Owner. The above represent all parties in this proceeding.” slip op. at 2
NonePatents in suitUS 7,532,200 - Target Corporation v. Destination Maternity CorporationRehearing grantedPTAB · Feb 12, 2015 · IPR2014-00509 · APJ Lora M Green · IPR · Rehearing
The Board granted Target’s request for rehearing of the denial of institution, for the reasons given in the related IPR2014-00508 decision.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“our Decision Denying Joinder of the instant proceeding with IPR2013-00533 (Paper 18), as well as our Decision Denying Institution of Inter Partes Review (Paper 19). Paper 20 (“Request for Rehearing”). Patent Owner, Destination Maternity Corporation, was authorized to file an Opposition (Paper 22), to which Petitioner was authorized to file a Reply (Paper 23). For the reasons discussed in the Decision Granting Petitioner’s Request for Rehearing in related IPR2014-00508 (Paper 28), we grant the Request for Rehearing.” slip op. at 2
None - Avx Corporation v. Greatbatch Ltd.Adverse judgmentPTAB · Jan 14, 2015 · IPR2014-01461 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment, entered judgment against it on claims 1–20, and cancelled those claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party1 may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Although not titled as such, we interpret Patent Owner’s Preliminary Response as a request for adverse judgment under 37 C.F.R. § 42.73(b). Accordingly, it is ORDERED that Patent Owner’s request for judgment against itself is granted; FURTHER ORDERED that judgment is entered against Patent Owner under 37 C.F.R. § 42.73(b) with respect to claims 1–20 of U.S. Patent No. 7,244,279; and FURTHER ORDERED that claims 1–20 of U.S. Patent No. 7,244,279 are CANCELLED.” slip op. at 2
NonePatents in suitUS 7,244,279
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.