• Microsoft Corporation v. Science Applications International CorporationInstitution denied
  PTAB · Feb 3, 2020 · IPR2019-01360 · APJ Jason M Repko · IPR · Institution

  The Board denied the petitions because the government was Microsoft’s privy, making the petitions time-barred under § 315(b); it also exercised § 314(a) discretion to deny review.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner

    “pre-existing substantive legal relationships between the parties” Under the second Taylor factor, the evidence shows a “pre-existing substantive legal relationship between” the government and Petitioner. “Qualifying relationships include, but are not limited to, preceding and succeeding owners of property, bailee and bailor, and assignee and assignor.” See Taylor, 553 U.S. at 894. “A common character of these relationships is that the two parties share a high degree of commonality of proprietary or financial interest.” AIT, 897 F.3d at 1352 (Reyna, J., concurring). The evidence here shows that the government and Petitioner share such interests. Before requesting inter partes review, the government had a preexisting, established relationship with Petitioner. In particular, Patent Owner has an ongoing infringement lawsuit against the government in the Court of Federal Claims. Pet. 3 (citing Ex. 1025, (“the Complaint”)). Petitioner entered into the Contract with the government to develop a system incorporating the allegedly infringing feature. Id. slip op. at 7

  • PTAB / AIA Trials › §315(b) time barDenied

    “C. SECTION 315(B) BARS INSTITUTION We have found that the government, a nonparty to the instant proceedings, is a privy of Petitioner. Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” The government was served with a complaint alleging infringement of the patents-at-issue in 2017. The instant Petitions were filed in July 2019, more than 1 year from the service of the complaint on the government. Accordingly, inter partes review may not be instituted under § 315(b).” slip op. at 13

  • Other 314aInstitution denied discretionary otherDenied

    “D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record. Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (Denying Motion to Seal) (informative). Confidential information includes, but is not limited to, commercial information. 37 C.F.R. § 42.54(7). Here, the information to be sealed includes a discussion of and direct quotations from the contract filed as Exhibit 2006. See Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. The contract is not publicly available, it has been sealed in this proceeding, and it contains the details and financial terms of an agreement between Petitioner and the government. We are persuaded that the Motions demonstrate that the information sought to be sealed reflects Petitioner’s confidential business information and that “an interest in maintaining confidentiality outweighs the strong public interest in having an open record” here. See Argentum, Paper 27 at 4.” slip op. at 14

  Discretionary denial
  Patents in suitUS 9,229,230
• Microsoft Corporation v. Science Applications International CorporationInstitution denied
  PTAB · Feb 3, 2020 · IPR2019-01359 · APJ Jason M Repko · IPR · Institution

  The Board denied institution because the government was Microsoft’s privy and was served with an infringement complaint more than one year before the petitions; it also denied review under § 314(a).

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner

    “WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1317 (Fed. Cir. 2018). Rather, “privity” has a common-law meaning. Id. “Privity is essentially a shorthand statement that collateral estoppel is to be applied in a given case.” Id. at 1318 (quoting Trial Practice Guide, 77 Fed. Reg. at 48,759). The privity “analysis seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” TPG 14–15. “[T]he standards for the privity inquiry must be grounded in due process.” WesternGeco, 889 F.3d. at 1319. For example, it is important whether the petitioner and a prior litigant’s relationship is sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the patent’s validity in the corresponding lawsuit. See id. “Due process also prohibits a litigant from taking a second bite at the apple by relitigating the same case through the persona of another, its privy.” AIT, 897 F.3d at 1359 (Reyna, J., concurring). In Taylor v. Sturgell, 553 U.S. 880 (2008), the Supreme Court identified a non-exhaustive list of six considerations under which nonparty preclusion would be justified: (1) an agreement between the parties to be bound; (2) pre-existing substantive legal relationships between the parties; (3) adequate representation by the named party; (4) the nonparty’s control of the prior litigation; (5) where the nonparty acts as a proxy for the named party to re-litigate the same issues; and (6) where special statutory schemes foreclose successive litigation by the nonparty (e.g., bankruptcy or probate). WesternGeco, 889 F.3d. at 1319−20 (citing Taylor, 553 U.S. at 894–95). The presence of one of these is sufficient to establish privity. See id.” slip op. at 6

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

    “nonparty” A special statutory scheme applies here under 35 U.S.C. § 315(b), which bars institution of an IPR if a “privy of the petitioner is served with a complaint alleging infringement of the patent” more than one year before the petition was filed. Moreover, we note that the government, according to a recent Supreme Court case, is not a “person” that can file a Petition for inter partes review under 35 U.S.C. § 311. Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 1853 (2019). Thus, Petitioner’s filings are the only filed Petitions from which the government could benefit, because the government could not file its own petition in light of the June 10, 2019, Return Mail decision.” slip op. at 11

  • Other 314aInstitution denied discretionary otherInstitution denied

    “D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record. Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (Denying Motion to Seal) (informative). Confidential information includes, but is not limited to, commercial information. 37 C.F.R. § 42.54(7). Here, the information to be sealed includes a discussion of and direct quotations from the contract filed as Exhibit 2006. See Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. The contract is not publicly available, it has been sealed in this proceeding, and it contains the details and financial terms of an agreement between Petitioner and the government. We are persuaded that the Motions demonstrate that the information sought to be sealed reflects Petitioner’s confidential business information and that “an interest in maintaining confidentiality outweighs the strong public interest in having an open record” here. See Argentum, Paper 27 at 4. Also, Patent Owner asserts that the United States is a real party in interest and privy in this proceeding. The information to be sealed is the basis for Patent Owner’s argument that Petitioner is time-barred under 35 U.S.C. § 315(b). Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. Because Patent Owner’s argument and Petitioner’s rebuttal depend on the information to be sealed, the parties have adequately shown that there exists a genuine need to rely on that information. See Argentum, Paper 27 at 4. For these reasons, we determine that good cause exists for sealing part of Petitioner’s Reply, part of Patent Owner’s Sur-Reply, and the concurrently filed exhibits (Exs. 1027, 2006). Thus, we grant the Motions to Seal in each case.” slip op. at 14

  Discretionary denial
  Patents in suitUS 9,229,230
• Microsoft Corporation v. Science Applications International CorporationInstitution denied
  PTAB · Feb 3, 2020 · IPR2019-01311 · APJ Jason M Repko · IPR · Institution

  The Board denied the petitions because the government was Microsoft's privy and had been served with infringement complaints more than one year before filing; it also denied review under § 314(a).

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner

    “The evidence here shows that the government and Petitioner share such interests. Before requesting inter partes review, the government had a preexisting, established relationship with Petitioner. In particular, Patent Owner has an ongoing infringement lawsuit against the government in the Court of Federal Claims. Pet. 3 (citing Ex. 1025, (“the Complaint”)). Petitioner entered into the Contract with the government to develop a system incorporating the allegedly infringing feature. Id. Therefore, both Petitioner and the government share a common interest in canceling the allegedly infringed claims.” slip op. at 7

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

    “existing substantive legal relationship. This provides at least one ground of nonparty preclusion under Taylor. We further determine, as discussed below, that two other Taylor factors support our privity determination. 2. “where special statutory schemes foreclose successive litigation by the nonparty” A special statutory scheme applies here under 35 U.S.C. § 315(b), which bars institution of an IPR if a “privy of the petitioner is served with a complaint alleging infringement of the patent” more than one year before the petition was filed. Moreover, we note that the government, according to a recent Supreme Court case, is not a “person” that can file a Petition for inter partes review under 35 U.S.C. § 311. Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 1853 (2019). Thus, Petitioner’s filings are the only filed Petitions from which the government could benefit, because the government could not file its own petition in light of the June 10, 2019, Return Mail decision.” slip op. at 11

  • Other 314aInstitution denied discretionary otherDenied

    “D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13

  • ExcludeGranted

    “All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.” slip op. at 14

  Discretionary denial
  Patents in suitUS 7,787,012
• Microsoft Corporation v. Science Applications International CorporationInstitution denied
  PTAB · Feb 3, 2020 · IPR2019-01312 · APJ Jason M Repko · IPR · Institution

  The Board denied institution because the government was Microsoft’s privy, making the petitions time-barred under § 315(b); it also independently denied review under § 314(a) discretion.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner

    “customer-manufacturer relationship” may not be sufficient to establish privity. WesternGeco, 889 F.3d at 1321. Petitioner and the government, however, have more than a standard relationship here. As discussed in detail above, Petitioner intervened in the infringement case against the government (Mot. to Intervene), the Petition and the infringement claims against the government are intertwined (Mot. to Stay, 6–7; Ex. 2009, 4), and the Thus, we determine that the government and Petitioner have a pre- existing substantive legal relationship. This provides at least one ground of nonparty preclusion under Taylor. We further determine, as discussed below, that two other Taylor factors support our privity determination. 2. “where special statutory schemes foreclose successive litigation by the” slip op. at 11

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

    “C. SECTION 315(B) BARS INSTITUTION We have found that the government, a nonparty to the instant proceedings, is a privy of Petitioner. Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” The government was served with a complaint alleging infringement of the patents-at-issue in 2017. The instant Petitions were filed in July 2019, more than 1 year from the service of the complaint on the government. Accordingly, inter partes review may not be instituted under § 315(b).” slip op. at 13

  • Other 314aInstitution denied discretionary otherDenied

    “D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “§ 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.” slip op. at 14

  Discretionary denial
  Patents in suitUS 8,817,103
• Triple Plus Ltd. v. Mordechai Ben OldAll claims unpatentable
  PTAB · Aug 16, 2019 · PGR2018-00038 · APJ Bart A Gerstenblith · PGR · Final written decision

  Claim 1 is unpatentable as obvious over the Triple+ NWL, including the obvious substitution of a butterfly valve for its ball valve.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden of proving unpatentability of the challenged claim, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). This Final Written Decision is issued” slip op. at 2

  • ExcludeMotion to exclude, grantedGranted

    “subject declaration was filed as Patent Owner’s Preliminary Response. Patent Owner’s Preliminary Response states: “Patent Owner, Mordechai Ben Old, hereby submits the following preliminary response in the form of declaration.” Paper 7, 2. To the extent Patent Owner’s Preliminary Response/declaration would be given any weight post-institution, we agree with Petitioner that it would be considered routine discovery and that Patent Owner was required to make himself available for deposition. See Practice Guide, 77 Fed. Reg. at 48,761 (“Routine discovery includes: . . . (2) the cross-examination of the other side[’]s declarants . . . .”). Patent Owner did not do so. Additionally, the record reflects that Patent Owner has continued to fail to participate in this proceeding. In particular, Patent Owner did not respond to our Order specifying “that Patent Owner shall appear . . . on or before May 30, 2019, and show cause as to why adverse judgment should not be issued against Patent Owner for abandonment of the contest pursuant to 37 C.F.R. § 42.73(b)(4).” Paper 14, 3. Accordingly, in light of Patent Owner’s failure to participate in the proceeding by appearing for a deposition by Petitioner or otherwise, we agree that the appropriate remedy is to exclude Patent Owner’s declaration, submitted as its Preliminary Response (Paper 7). Thus, to the extent we would have considered Patent Owner’s declaration at this post-institution stage of the proceeding, we decline to do so.3” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had: “a Bachelor of Science degree in a field of engineering or a closely related discipline, and at least one year of practical academic or industrial experience designing, testing and/or manufacturing fluid control valves.” Pet. 11 (citing Ex. 1003 ¶¶ 28–30). As discussed above, Patent Owner did not file a Response. We reiterate our preliminary finding from the Decision on Institution, that, consistent with the level of ordinary skill in the art reflected by the prior art of record, we adopt the level of ordinary skill in the art proposed by Petitioner based on the present record. See Dec. on Inst. 10; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 14

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

    “one exception that the Triple+ NWL includes a ball valve whereas claim 1 requires a butterfly. See id. at 32–63; see also id. at 31 (“the Triple+ NWL discloses every element of claim 1 except for the choice of quarter turn rotary valve type,” i.e., the claimed butterfly valve). Petitioner asserts that “[t]he ball valve is interchangeable with the claimed ‘butterfly,’ and it would have been obvious to [a person of ordinary skill in the art] to substitute one for the other.” Id. at 35 (citing Ex. 1003 ¶¶ 36–40, 56–57). Petitioner relies upon Dr. Johnson’s testimony in support of this position. See, e.g., id. at 36 (citing Ex. 1003 ¶¶ 36–40). In particular, Petitioner states: a ball valve (like in the Triple+ NWL) is a member of the same family of valves as the butterfly. Except for the shape of the valve member, both are functionally and operationally identical, and both can and were used as shut-off valves for main water lines entering a residence or other structure. Id. (citing Ex. 1003 ¶¶ 36–40). Petitioner asserts that “[t]he Triple+ NWL used a ball valve and was intended for use as a shut-off valve on the main water line.” Id. at 37. Petitioner thus contends that: (1) this use for any quarter turn rotary valve type was well known to one of ordinary skill in the art, id. (citing Ex. 1003 ¶¶ 39–40); (2) “replacing a ball valve with a butterfly valve was a ‘simple design choice and an obvious replacement’” to a person of ordinary skill in the art, id. at 37–38 (quoting Ex. 1003 ¶¶ 56– 57); and (3) “[s]ubstituting one known type of a valve for another— particularly within the same family of valves such as the quarter turn rotary valve family—is the epitome of an obvious design choice” to a person of ordinary skill in the art, id. at 38 (citing KSR, 550 U.S. at 416, 421).7” slip op. at 17

  Patent outcomesUS 9,671,031 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,671,031
• Tarsco Bolted Tank Inc. v. Tank Connection, LLCAdverse judgment
  PTAB · Aug 25, 2017 · IPR2016-01634 · APJ Meredith C Petravick · IPR · Adverse judgment

  The Board entered adverse judgment against Patent Owner on claims 1–11 after their cancellation and Patent Owner’s abandonment of the contest.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “Actions construed to be a request for adverse judgment include: . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Ex Parte Reexamination Certificate No. 9,187,921 C1, canceling claims 1–11 of the ’921 patent, issued on July 24, 2017. Ex. 3001; see Paper 14 (memorializing a conference call during which Patent Owner indicated that it was allowing the claims to be canceled in the reexamination intentionally). Claims 1–11 are all of the claims of the ’921 patent and all claims at issue in this inter partes review. Cancellation of claims 1–11 is construed as a request for adverse judgment. Additionally, “[a]ctions construed to be a request for adverse judgment include: . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). Patent Owner did not file a Patent Owner’s Response or a Motion to Amend in this inter partes review by the May 17, 2017 deadline, set in the Scheduling Order (Paper 13), and did not file a paper in response to the Order to Show Cause by the August 22, 2017 deadline. Patent Owner’s lack of response is consistent with abandonment of the contest. Abandonment of the contest is construed as a request for adverse judgement. slip op. at 2

  None
  Patents in suitUS 9,187,921
• Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.Institution denied
  PTAB · Dec 22, 2016 · IPR2016-01450 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution on all challenged claims under § 325(d), citing overlapping prior art and arguments, the pending reexamination appeal, and resource conservation.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “D. 35 U.S.C. § 325(d) Section 325(d) of Title 35 of the United States Code provides: “In determining whether to institute or order a proceeding under this chapter . . . the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In light of § 325(d), we consider whether the reexamination contains the same or substantially the same art or arguments as presented in the Petition.” slip op. at 10

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

    “II. CLAIM CONSTRUCTION Although Petitioner and Patent Owner present proposed constructions for several claim terms, no terms require express construction for purposes of this Decision. Pet. 15–21; Prelim. Resp. 10–23.” slip op. at 7

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

    “On August 29, 2016, Petitioner requested, via electronic mail, to file a motion to correct its identification of the real party in interest in this proceeding. In particular, Petitioner requested the addition of Baker Hughes Incorporated as a real party in interest. Petitioner indicated that Patent Owner would not oppose its request. In a responsive email on September 29, 2016, we authorized Petitioner to file a motion to correct the identified real party in interest. On October 4, 2016, Petitioner filed an Updated Mandatory Notice in which Petitioner stated that it “moves the Board to allow correction of Petitioner’s Real Part in Interest (‘RPI’) disclosure.” Paper 8, 1. Although Petitioner did not file a motion to correct as it had requested, we treat its updated mandatory notice as such and hereby grant Petitioner’s request. Accordingly, Baker Hughes Incorporated is a real party in interest in this proceeding as well.” slip op. at 3

  Claim constructionDiscretionary denial
  Patents in suitUS 6,732,817
• Qualcomm Inc. v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-01580 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 5, 6, 8, 17, 18, and 20 are unpatentable; claims 7 and 19 were not shown unpatentable because Cuffaro does not disclose a specified number of votes and the obviousness testimony was insufficient.

  RulingsFinal written decision

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

    “After institution, Qualcomm Inc. filed substantially the same petition in IPR2015-01580 (IPR2015-01580, Paper 1), together with a Motion for Joinder of IPR2015-01580 with the instant proceeding (IPR2015-01580, Paper 2). On September 17, 2015, we granted a motion to terminate this proceeding with respect to MediaTek Inc. and MediaTek USA, Inc., but not as to Patent Owner, leaving only Patent Owner as a party to the proceeding. Paper 22. On November 16, 2015, we granted Qualcomm Inc.’s Motion for Joinder, joining Qualcomm Inc. to the instant proceeding. Paper 23. Qualcomm Inc. (“Petitioner”) is now the sole petitioner.” slip op. at 2

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner

    “phrase “means for . . . .” Petitioner construes these terms in accordance with 35 U.S.C. § 112 ¶ 6, identifying an algorithm described in the specification corresponding to each “means” limitation. Pet. 7–9 (citing Ex. 1001, col. 8, l. 8–38, col. 8, ll. 49–col. 9, l. 16, col. 19, l. 25–col. 20, l. 67). Petitioner identifies a general purpose computer, processor 704 in Figure 7, as structure for “executing the instructions associated with the corresponding function” recited in each “means limitation,” except for the “means fro [sic] the first participant to communicate . . .” recited in claims 5 and 20. Pet. 7–9 (citing Ex. 1001, Fig. 7, col. 25, ll. 13–18). For the “means fro [sic] the first participant to communicate” limitation, Petitioner identifies transceiver 216, shown in Figure 2, reproduced supra. Pet. 9 (citing Ex. 1001, Fig. 2, col. 9, ll. 54–59). Patent Owner does not contest these identifications. We agree with Petitioner’s identifications and adopt them as our constructions of the means-plus-function limitations. Specifically, as to those means-plus-function limitations that correspond to processor 704 in Figure 7, Petitioner identifies in its claim chart the algorithm described in the specification for performing each function of these means. Pet. 8–9; See also Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013) (“When dealing with a ‘special purpose computer-implemented means-plus-function limitation,’ [the Federal Circuit] require[s] the specification to disclose the algorithm for performing the function.”); Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009) (“[W]hen a computer is referenced as support for a function in a means-plus-function claim, there must be some explanation of how the computer performs the claimed function.”).” slip op. at 8

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

    “We are not persuaded by this reasoning. As Petitioner observes, the embodiments of the ’624 patent identified by Patent Owner are characterized as “examples,” and a person of ordinary skill “would understand that the example scenarios of the specification are not necessarily limiting on the claims.” Reply 3 (citing Ding Supp. Decl. ¶ 6). In addition, Petitioner notes that claim language in related patents owned by Patent Owner explicitly refers to participants, evidencing Patent Owner’s understanding “how to expressly create participant-specific voting requirements in claims.” Id. at 3. At the oral hearing, Patent Owner suggested that explicit reference to participants in such other claim language “was because it wanted to clarify that each participant got a single vote,” and explained its position that, in the claims at issue in this proceeding, “participant is implicit in the claim language as it is.” Tr. 78:16–25. But the claims are directed to a “communications apparatus,” and recite “votes” in the context of what the “particular communications channel” “receives.” Nothing within the structure of the claims requires resolving the origin of such votes. Furthermore, Patent Owner’s proposed construction is inconsistent with the construction it agreed to before the district court in the Qualcomm Litigation. In that litigation, the parties agreed that the term “vote” should be construed as “a binary expression (to use or not to use),” a construction that makes no reference to the origin of the “vote” as from a participant or otherwise. Ex. 1014, 6. We see no compelling reason to excuse the inconsistency by adopting a narrower construction when the Board applies a claim-construction standard (broadest reasonable interpretation) that could only result in the same or a broader construction. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“A patent may not, like a ‘nose of wax,’ be twisted one way to avoid anticipation and another to find infringement.” (quoting Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970))). Accordingly, we construe “votes to use a particular communications channel” as “expressions of preference for using the particular communications channel.”” slip op. at 10

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

    “Patent Owner responds that “the Gerten device is not capable of and expressly teaches away from performing this functionality.” PO Resp. 15 (citing Melendez Decl. ¶ 33). Patent Owner contends that “Gerten’s disclosure is directed toward eliminating channels for use in an entire piconet as opposed to eliminating channels for use by certain participants within a piconet.” Id. at 16 (emphasis added). Patent Owner argues that Gerten does not disclose a selection kernel capable of maintaining synchronization between a master and more than one slave in a piconet, with the master and one slave using a default set of channels while the same master and a different slave use a different set of channels. Id. We are not persuaded that the absence of a specific teaching of such a selection kernel supports the conclusion that one of skill in the art would understand Gerten to function in the manner Patent Owner suggests. In this instance, Petitioner refers to two embodiments of Gerten “in which a first participant communicates with a second participant via a normal sequence and with another participant via an adaptive hopping sequence.” Reply 5. First, Figure 3 of Gerten is reproduced below. Figure 3 illustrates “methodology for determining and communicating channels to be avoided to a remote device.” Ex. 1003, col. 2, ll. 4–6. As illustrated in the drawing, a master unit performs a discovery process (block 110) upon connecting with a new slave unit. Ding Decl. ¶¶ 60, 64. If the slave unit is capable of using interference avoidance, the master unit begins the process of determining a modified set of channels for use (block 120). Id. ¶ 45. If a second slave unable to use interference avoidance enters the piconet, standard frequency hopping is used. Supp. Ding Decl. ¶ 9. Under Patent Owner’s characterization of Gerten, entry of the second slave into the network would require the first slave necessarily to revert back to the default hopping sequence. Id. ¶ 10. But this would undermine the stated benefits of Gerten, which explicitly discloses: The above process can be applied to a Bluetooth example and includes identification of a Bluetooth device’s ability to support interference avoidance, the measurements of signal strength on all channels and identification of which channel should not be used without violating the FCC rules, a method of modifying the Bluetooth hop sequence so that it will avoid channels containing strong or fixed interferers while still supporting standard Bluetooth hopping with other non-enabled members of the piconet and a method of relating necessary interference avoidance information to the remote Bluetooth devices. Ex. 1003, col. 4, l. 66–col. 5, l. 9 (emphasis added).” slip op. at 17

  Patent outcomesUS 7,477,624 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,477,624
• Masterimage 3d, Inc. / Masterimage 3d Asia, LLC v. Reald Inc.No claims unpatentable
  PTAB · Apr 20, 2016 · IPR2015-00035 · APJ Bart A Gerstenblith · IPR · Final written decision

  The Board denied cancellation of claims 1–23 because Petitioner did not show Schuck was entitled to the provisional filing date, so it was not prior art.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “It is only “confidential information” that may be protected from disclosure, 35 U.S.C. § 316(a)(7), and, even then, there is a public interest in “maintaining a complete and understandable file history” of the proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the burden of proof in showing entitlement to the requested relief. 37 C.F.R. § 42.20(c).” slip op. at 19

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for patent owner

    “as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “for multiple reasons. First, Petitioner acknowledges that what it refers to as “the Milburn doctrine” was codified in 35 U.S.C. § 102(e), and Petitioner does not show persuasively that we should read Milburn as requiring anything beyond application of that statutory section in light of the facts presented here. Supp. Reply 6. Second, Milburn did not address directly the question of whether an issued patent is entitled to claim priority to a provisional patent application, and, specifically, what must be shown in order to do so. Third, Schuck claims priority to not one, but three provisional applications, which was not the case in Milburn. Fourth, in Giacomini, the Federal Circuit expressly considered Milburn and stated: “An important limitation [on 35 U.S.C. § 119(e)(1)] is that the provisional application must provide written description support for the claimed invention.” Giacomini, 612 F.2d at 1383 (emphasis added). Although the Federal Circuit did not address the application of the argument—that the reference patent’s provisional application fails to provide written description support for the claimed subject matter—in Giacomini, because the appellant had waived it, the Federal Circuit’s decision acknowledges that there was an argument that could have been raised. Id. Finally, Dynamic Drinkware is directly on point and clearly establishes that Petitioner is required to show that the claimed invention of Schuck finds written description support in the ’657 provisional in order to rely on the ’657 provisional’s filing date. Dynamic Drinkware, 800 F.3d at 1381. It is undisputed that Petitioner has not done so. We find that Petitioner has not shown that claim 1 or any other claim of Schuck is supported by the ’657 provisional, and, thus, Petitioner has not shown that Schuck is entitled to claim priority to the ’657 provisional’s filing date. See Apple, Case IPR2015-00969, slip op. at 12–13. The result of our finding is that Schuck does not qualify as prior art, under § 102(e), to the ’455 patent, and, therefore, is not a reference which may be relied upon to establish the unpatentability of claims in an inter partes review. See 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 a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” (emphasis added)). Accordingly, Petitioner has not demonstrated, by a preponderance of the evidence, that: (1) claims 1–8, 10–14, and 16–22 are unpatentable as anticipated by Schuck and (2) claims 9, 15, and 23 are unpatentable as obvious over Schuck and APA.” slip op. at 16

  Patent outcomesUS 7,857,455 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 7,857,455
• Denso Corporation v. Netlatch, LLCAdverse judgment
  PTAB · Mar 8, 2016 · IPR2015-00473 · APJ Ken B Barrett · IPR · Adverse judgment

  The Board granted Continental’s request for adverse judgment as patent owner for claims 14, 17, 27, and 31.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Pursuant to 37 C.F.R. § 42.73(b)(3), “[c]oncession of unpatentability” may be construed as a request for adverse judgment. We understand Continental to expressly request entry of adverse judgment against itself as the current patent owner. IPR2015-00481, Continental’s Ownership Statement 5. Additionally, we treat Continental’s concession that certain challenged claims are unpatentable (id. at 5; see IPR2015-00481, Paper 4 (Petition) 3–4 (challenging claims 14, 17, 31, and 33 of the ’431 patent)) as a request for adverse judgment at least as to those claims. 37 C.F.R. § 42.73(b)(3). Under these circumstances, entry of judgment adverse to Patent Owner Continental is appropriate.” slip op. at 7

  • PTAB / AIA Trials › Real party in interest / privityDecided for patent owner

    “assignment, and found that neither weighed in favor of Mr. Wingard. Id. at 9–10. The Court ultimately found, “at the time of the [bankruptcy] filing, that the patent was owned by Mr. Wingard personally, and, therefore, became part of the [Bankruptcy] Estate,” and the Court granted the Trustee’s motion to sell the patent. Id. at 10, 11; see also Ex. 1020 (Order granting the motion). The time to appeal the order has expired and no appeal was sought. Ex. 1017, 2 (citing Fed. R. Bankr. P. 8002). In an assignment dated December 17, 2015, the Bankruptcy Trustee assigned to Continental the entire right, title, and interest in the ’431 patent. Ex. 1017. An assignment from the Trustee to Continental Automotive GmbH is recorded in the USPTO at Reel/Frame 037329/0544. Ex. 3001. II. ANALYSIS In light of the Bankruptcy Court’s Order and the authorized sale of the ’431 patent, we recognize Continental as the current owner of the ’431 patent for purposes of this inter partes review proceeding. Continental asserts in the related 481 case: “because Continental is now the patent owner and has represented that the 431 patent claims are invalid, the claims should be found unpatentable either by way of a final determination or in response to a request for adverse judgment.” IPR2015-00481, Continental’s Ownership Statement 5.6 Continental also indicates that the same request” slip op. at 6

  None
  Patents in suitUS 5,530,431

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.