- PTAB · Feb 29, 2016 · IPR2015-01468 · APJ Karl D Easthom · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place institution on claims 4–10 under § 103 over Yamada because the request did not show an overlooked matter or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). A rehearing “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. slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“may extend across, and from, the whole width of a symmetrical wiring portion edge, thereby making the edge of the symmetrical wiring pattern coextensive with the edge of the beginning of the protrusion, as Yamada’s Figure 5 depicts. Patent Owner simply does not address this underlying finding and rationale of the Institution Decision squarely in its Request for Rehearing.3” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“may extend across, and from, the whole width of a symmetrical wiring portion edge, thereby making the edge of the symmetrical wiring pattern coextensive with the edge of the beginning of the protrusion, as Yamada’s Figure 5 depicts. Patent Owner simply does not address this underlying finding and rationale of the Institution Decision squarely in its Request for Rehearing.3” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 6,909,053 - Microsoft Corporation v. Bradium Technologies LLCInstitution deniedPTAB · Dec 23, 2015 · IPR2015-01434 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to institute an inter partes review of claims 1–20 (the “challenged claims”) of U.S. Patent No. 7,908,343 B2 (“the ’343 Patent”). 35 U.S.C. § 311. Bradium Technologies LLC (“Patent Owner”) timely filed a Preliminary Response, Paper 12 (“Prelim. Resp.”), contending that the Petition should be denied as to all challenged claims. We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “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.”” slip op. at 2
- BurdenOther
“map each claim element to a particular teaching of an asserted reference. In particular, Patent Owner notes that, rather than state the claim language in the Petition, Petitioner provides Exhibit 1013, which breaks the claims into specific phrases and assigns each phrase a designation, e.g., 1.A, 1.B. Prelim. Resp. 32. Patent Owner argues that Petitioner’s approach improperly incorporates the claims by reference and that no relief can be granted unless the arguments in the Petition itself, of which the claims are an essential part, support granting the relief. Id. at 33. We agree that Petitioner’s use of an Exhibit to specify the claim elements and its failure to include the claim language anywhere in the Petition is an improper incorporation by reference. Nevertheless, although the claim language is not repeated in the Petition, the Petition contains a paragraph for most, if not all the claim element designations. Therefore, we do not dismiss the Petition on this basis alone.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“specification, neither “data parcel” nor “update data parcel” is defined explicitly in the ’343 Patent. The ’343 Patent refers to “source image data” being processed to obtain a series of K1-N derivative images of progressively lower image resolution. Ex. 1001, col. 6, ll. 6–6. The ’343 Patent also discloses the source image data corresponding to the series image K0 being subdivided into a regular array such that each resulting “image parcel” of the array has, for example, 64 by 64 pixel resolution, where the “image data” has a color or bit per pixel depth of 16 bits, which represents a “data parcel” size of 8 K bytes. Ex. 1001, col. 6, ll. 6–11. Thus, an image parcel is an element of a source image array that defines a source image and a data parcel is data that corresponds to an image parcel. In view of this disclosure, we construe “data parcel” to mean data that corresponds to an element of a source image array. We agree that no other specific claim construction is required and we accord the claim terms their ordinary meaning as used in the ’343 Patent specification.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artReference not prior artMixed
“REFERENCES ARGUED AS NOT APPLICABLE PRIOR ART Patent Owner contends that Petitioner has failed to demonstrate that Potmesil (Ex. 1002) and Lindstrom (Ex. 1004) constitute applicable prior art references. Prelim. Resp. 3–12. We addressed the same arguments as those advanced by Patent Owner in this proceeding in our Decision to Institute in related proceeding Microsoft Corp. v. Bradium Technologies LLC, Case IPP2015-01432, slip op. at 10–14 (PTAB Dec. 23, 2015)(Decision to Institute)3 and Microsoft corp. v. Bradium Technologies LLC, Case IPR2015-01435, slip op. at 8–16 (PTAB Dec. XX, 2015)4. We arrive at the same result in this proceeding and find that, although Petitioner has established that Potmesil is applicable as prior art, Petitioner has not established Lindstrom is prior art that may be applied in Petitioner’s challenge.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,908,343 - Diablo Technologies, Inc. v. Netlist, Inc.All claims unpatentablePTAB · Dec 14, 2015 · IPR2014-01011 · APJ Georgianna W Braden · IPR · Final written decision
Claims 15–17, 22, 24, 26, and 31–33 are unpatentable as obvious over Ludwig and Amidi; claims 22 and 26 are also anticipated by Amidi.
RulingsFinal written decision- Skill levelSkill level board ownOther
“time it was made, we determine the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere, 383 U.S. at 17. “The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).” slip op. at 16
- Expert testimonyPetitioner expert creditedDecided for petitioner
“To testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372– 73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). We find that, although Dr. Jagannathan is less experienced than Dr. Sechen in the area of memory module design, he is qualified sufficiently to testify about memory systems and memory modules.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The specification of the ’150 patent does not define explicitly the term “memory module.” The specification does, however, teach embodiments that describe a memory module as comprising a plurality of memory devices on a carrier and a circuit. Ex. 1001, 2:63–64; 3:7–9; 4:59–63. In another embodiment, a memory module comprises (i) a printed circuit board on which memory devices are mounted, (ii) a plurality of edge connectors configured to be electrically coupled to a corresponding plurality of contacts of a module slot of the computer system, and (iii) a plurality of electrical conduits which electrically couple the memory devices to the circuit and which electrically couple the circuit to the edge connectors. Id. at 5:24–32. The ’150 patent also teaches that memory modules in the disclosed embodiments are compatible with at least single in-line memory modules (SIMMS) and dual in-line memory modules (DIMMS). Id. at 5:32–39.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Despite Dr. Sechen’s explanation of asynchronous and synchronous memory (see id. ¶¶ 87–92), we do not agree that the teachings of Ludwig are incompatible with the synchronous memory of Amidi, because Ludwig expressly suggests apply its VIC chip to synchronized memory. See Ex. 1001, 10:10–13 (“A valuable added function might be synchronized memory signals to enhance the speed of the memory.”). We also credit the testimony of Dr. Jagannathan, who states “[t]here was sufficient motivation for one of ordinary skill to apply the circuit including a CPLD, a PLL, and a register in Amidi to the interface chip in Ludwig. One of ordinary skill would recognize the benefits of doing so as taught in Ludwig. For example, Ludwig teaches ‘a valuable added function [of the VIC chip] might be synchronized memory signals to enhance the speed of the memory function.’” Ex. 1007 ¶ 118 (citing Ex. 1011, 10:11–13). Therefore, we are persuaded that the teachings of Ludwig and Amidi are combinable. Based on the evidence of record, we agree with Petitioner’s position that challenged independent claims 15, 22, and 31 would have been obvious over Ludwig and Amidi. Specifically, we are persuaded by Petitioner’s reasoning and the evidentiary record that Amidi teaches a circuit mounted on a memory module that is electrically coupled to a first DDR memory device and a second DDR memory device. We are further persuaded that Amidi teaches a circuit with a logic element, a register, and a PLL. We also are persuaded that the teachings of Amidi could have been implemented using the common data signal line and tri-state buffer system disclosed in Ludwig so that by (i) selectively electrically coupling a first data signal line to the common data signal line and (ii) selectively electrically coupling a second data signal line to the common data signal line, the circuit is responsive to a set of input signals. Additionally, we credit the testimony of Dr. Jagannathan that a person of ordinary skill in the art would have had reason to combine the teachings of Ludwig and Amidi, which both relate to memory modules, and are directed to solving the same problem of using additional memory devices in a memory module to increase the overall memory density of the module without hindering the ability of the module to interface with a pre-existing memory controller. See id. ¶ 116. Additionally, we note that the testimony of Patent Owner’s Declarant, Dr. Sechen, is based on the claim constructions proffered by Patent Owner and not on the constructions set forth in the Decision to Institute. Compare Ex. 2002 ¶¶ 38–72, with Dec. to Inst. 7–12. We have considered as relevant, however, the portions of his analysis regarding the prior art and alleged nonobviousness of the claims and accorded the appropriate weight to that particular testimony. Accordingly, we hold that Petitioner has shown by a preponderance of the evidence that claims 15, 22, and 31 of the ’150 patent are unpatentable under 35 U.S.C. § 103(a) as having been obvious over the combination of Ludwig and Amidi.” slip op. at 35
Patent outcomesUS 7,881,150 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,881,150 - Ebay Inc. v. Moneycat Ltd.All claims unpatentablePTAB · Sep 23, 2015 · CBM2014-00091 · APJ Minn Chung · CBM · Final written decision
Claims 1, 2, 4–6, 8, 10, and 11 are unpatentable as obvious over Teramura and APA NetCash, and over Bernstein and APA NetCash.
RulingsFinal written decision- BurdenDecided for petitioner
“under 35 U.S.C. § 103(a) over the combination of Teramura and the APA NetCash System. Pet. 34–46. Upon review of all of the parties’ papers and supporting evidence discussed in those papers, we are persuaded that Petitioner has demonstrated, by a preponderance of evidence, that claims 1, 2, 4–8, 10, and 11 are unpatentable under 35 U.S.C. § 103(a) over the combination of Teramura and the APA NetCash System.” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“NetCash System, Exhibit 1008 (Simon), Exhibit 1009 (Neuman Declaration), and Exhibit 1012 (Neuman Reply Declaration). As the movant, Patent Owner bears the burden of proof to establish that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a). For the reasons discussed below, Patent Owner’s Motion to Exclude is DENIED.” slip op. at 64
- Skill levelSkill level board ownDecided for petitioner
“On this record, we find that a person of ordinary skill in the art, at the time of the invention of the ’011 patent, would have been familiar with various conventional systems for electronic payments and electronic currency transactions, including two-step transaction systems that employ intermediary “broker servers” that can be trusted, and would have Resp. 26–29), the Board declined to do so for purposes of institution of trial. Dec. to Inst. 10–11. Therefore, Patent Owner is not justified to presume Dr. Neuman’s testimony is not part of the record in this proceeding and conclude it does not exist for the purposes of trial in this case. 28 understood the security problems to be an important issue in existing systems. In addition, the level of ordinary skill is relatively high and would require knowledge specific to electronic currency and electronic payment transactions. See Ex. 1001, col. 1, ll. 49–54 (“The problem of payments over the Internet is . . . a complicated one, because the use of credit cards over the Internet is unsafe, and because in many transactions the buyer does not wish to provide details of himself, or of his bank account.”) (emphases added).” slip op. at 28
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are also persuaded by Petitioner’s argument that a person of ordinary skill in the art would have been guided by Simon and motivated to co-locate the currency server of the APA NetCash System with Teramura’s intermediary broker to further increase the security of the combined system. In addition, we credit the testimony of Dr. Neuman, and are persuaded that a person of ordinary skill would have been motivated by the double-spending problem addressed in the APA NetCash System and Simon’s teaching of currency swapping at the middleman to recognize that, in a combined system where the currency server and the intermediary broker are co-located, the middleman is a preferred location to place the coin exchange 47 function. That is, a person of ordinary skill in the art would have found an internal coin exchange function at the middleman desirable. As discussed above, this means that an ordinary artisan would have found it desirable to have the broker check the coins received from the buyer with the co-located currency server, and, upon verification, replace them with new coins to be sent to the seller, as opposed to forwarding the coins “as-is” to the seller without checking them.” slip op. at 47
Patent outcomesUS 8,051,011 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,051,011 - Finjan, Inc. v. Fireeye, Inc.Some claims unpatentablePTAB · Jul 10, 2015 · IPR2014-00344 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–4, 6–8, 19, 20, 22–25, and 27–29 are unpatentable under §103; claim 21 was not shown unpatentable because the Chen ground did not establish the replayer limitation.
RulingsFinal written decision- BurdenMixed
“determine Petitioner’s arguments are not persuasive. Although Chen discloses forwarding suspicious packets to a clone, Petitioner has not explained sufficiently how forwarding packets teaches or suggests “configuring a replayer to transmit . . . data to the virtual machine.” Moreover, Petitioner does not explain how Chen’s logging disclosure (Ex. 1009, 2–3) applies to configuring a replayer. At the oral hearing, Petitioner was asked to explain its reliance on Chen for this limitation.” slip op. at 31
- Skill levelSkill level board ownDecided for petitioner
“2. Level of Ordinary Skill in the Art The parties agree that a person of ordinary skill in the art would have the following education and/or experience: a recent degree in a field such as computer science or computer networking and two or more years of experience in the computer networking or computer security industry. PO Resp. 17; Ex. 1030 ¶ 33. “Alternatively, in lieu of recent formal education, a person of ordinary skill in the art would have had six or more years of relevant experience in the computer networking or computer security industry.” Id. This level of ordinary skill in the art is consistent with the ordinary skill reflected in the prior art of record, which is directed to computer networking and computer security systems. For example, Venezia and Kaeo both disclose intrusion-detection-systems. Ex. 1005; Ex. 1006. With this level of ordinary skill in mind, we now turn to the analysis” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“1. flag or flagging (Claims 1 and 19) For the purposes of our Decision to Institute, we determined that the broadest reasonable interpretation of the terms “flag” and “flagging” is “identify” and “identifying.” Dec. 7. Neither party disputes this interpretation. Pet. 5; PO Resp. 12. Based on the complete record now before us, we discern no reason to change the interpretation; thus, we adopt our previous analysis and interpret “flag” and “flagging” to mean “identify” and “identifying,” respectively.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Next, Patent Owner argues that Petitioner has not provided a reason for why a person of ordinary skill in the art would modify Venezia to (1) flag for replay and (2) include an analysis environment. PO Resp. 25– 26. Nonetheless, Petitioner has explained sufficiently how Venezia teaches both flagging for replay and an analysis environment. Thus, Petitioner does not rely on a modification of Venezia to disclose these features. Additionally, we are persuaded that Petitioner has provided sufficient rationale to combine the teachings of Kaeo and Venezia. Pet. 26. These rationales include combining Venezia’s replay features with Kaeo’s IDS to minimize false positives in Kaeo’s IDS through further verification of suspicious packets with Venezia’s replay. Id. Accordingly, based on the evidence and arguments presented, Petitioner has shown, by a preponderance of the evidence, supported by articulated reasoning with rational underpinning, that claims 1 and 19 would have been obvious over Kaeo and Venezia.” slip op. at 22
Patent outcomesUS 8,291,499 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,291,499 - Microsoft Corporation v. Enfish, LLCSome claims unpatentablePTAB · Mar 2, 2015 · IPR2013-00561 · APJ Barbara A Parvis · IPR · Final written decision
Claims 46 and 54 were held unpatentable; claims 55, 56, and 60 were not shown unpatentable; claims 16, 24–26, and 30 were terminated because their means-plus-function limitation lacked sufficient disclosed structure.
RulingsFinal written decision- BurdenMixed
“Microsoft has shown by a preponderance of the evidence that claims 46 and 54 of the ’775 patent are unpatentable. Microsoft has not shown that claims 55, 56, and 60 of the ’775 patent are unpatentable. For the reasons discussed below, we are unable to reach a determination on the alleged grounds of unpatentability over prior art for claims 16, 24–26 and 30. Accordingly, we terminate this proceeding with respect to claims 16, 24–26 and 30 under 37 C.F.R. § 42.72.” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“1249 (Fed. Cir. 2005)). Additionally, specific portions of the specification must clearly link or associate a computer program or algorithm to the function corresponding to the claimed means. See Medical Inst. & Diag. Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). For the reasons set forth below, we conclude that the four steps and other ’775 patent specification portions identified by Enfish do not describe an algorithm for the recited function of “configuring memory according to a logical table.” We further conclude that Enfish has not clearly linked or associated the recited function to the four steps or the portions of the ’775 patent specification that Enfish identifies.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We determine that Enfish’s proposed construction of OID introduces requirements beyond what is needed for an OID to identify data and retrieve data from memory. Enfish, for example, contends that “an OID is unique among all rows and columns of the logical table.” PO Resp. 29. Additionally, claims 46 and 54 recite that an OID is included “to identify” each attribute set and each record, but do not specifically recite using an OID to retrieve data from memory.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“80, PG 453, 471, 481, 482, 484, Ex. 1219 ¶¶ 67–93, 119–131). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 54. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1204, LR 558. The table object comprises “records (rows) and fields (columns).” Id. As an additional example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses each record and each attribute set including an OID, as recited in claim 54. In the cited portions above, Visual Basic describes assigning a primary key and that “[a] table’s primary key is the determining factor when testing to see if the record is unique within the table.” Ex. 1204, PF 39. According to Visual Basic “[Visual Basic] creates an index on the primary key of the table and uses it to find records and to create joins between tables.” Id. Regarding each column including an OID, according to Visual Basic, “[e]ach Field in the Fields collection of a TableDef has a unique value in the OrdinalPosition property.” Id. at LR 425. Furthermore, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses indexing data stored in the table and a cell including a pointer to an index record, as recited in claim 54. In the cited portions above, Visual Basic discloses an index object used for creating indexes to “speed up the process of finding records.” Ex. 1204, LR 276; see also id. at PF 37, 38, PG 482. Visual Basic also discloses a cell pointing to an index object. Id. at LR 280, PG 484.” slip op. at 17
Patent outcomesUS 6,163,775 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,163,775 - Microsoft Corporation v. Enfish, LLCSome claims unpatentablePTAB · Mar 2, 2015 · IPR2013-00560 · APJ Barbara A Parvis · IPR · Final written decision
Claims 47–48 are unpatentable as anticipated by Visual Basic, and claims 49–50 as obvious over Visual Basic and Jensen; claims 51–53 were not shown unpatentable, and claims 17–23 were terminated.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner
“Enfish contends that our construction for “object identification number” is incomplete. PO Resp. 15. We evaluate Enfish’s contention below. Enfish also provides a proposed construction for “anchor,” recited in claims 21 and 51. PO Resp. 22. Because we determine that Microsoft has not met its burden with respect to these claims for other reasons, no construction of this term for the purposes of this Decision is necessary. We discern no reason, based on the complete record now before us, to change our constructions in the Decision to Institute of “logical table,” “object identification number,” and “attribute set.”” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“evidence, and the detailed claim analysis, which reads persuasively all elements of claim 47 onto the disclosure of Visual Basic. Pet. 33–46 (citing Ex. 1104, LR 162, 185, 280, 425, 484, 532, 558, PF 1, 3, 18, 37–39, 40, 47, 76, 80, PG 453, 471, 481, 482 ; Ex. 1119 ¶¶ 67–98). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 47. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1104, LR 558. The table object comprises “records (rows) and fields (columns).” Id.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“2007 ¶ 231. In contrast to Dr. Jagadish’s statement, however, Jensen teaches an object-oriented application for managing information retrieved from a structured database, such as a relational database. Ex. 1106, Abstract. Enfish further contends that Microsoft does not explain why one of ordinary skill in the art would have been motivated to apply the pointers of Jensen to the indexing structure in Visual Basic. PO Resp. 35. We, however, are persuaded that Microsoft has shown a sufficiently articulated reason with rational underpinning to support obviousness (Pet. 48–49 (citing Ex. 1119 ¶¶ 387–404)). Microsoft, for example, states “[i]t was well known in the art at the time that indexes such as the index disclosed in [Visual Basic], maintain object identification numbers of the cell for locating data.” Pet. 49 (emphasis added). Microsoft continues, “Jensen discloses containing the address in a pointer, e.g., a physical memory address (i.e., OIDs).” Id. (citing Ex. 1106, 7:29–35). Dr. Hosking testifies “[i]t was well known in the art at the time that Index Objects locate data by maintaining object identification numbers in the internal pointers as disclosed in Jensen.” Ex. 1119 ¶ 403 (emphasis added). Dr. Hosking further testifies “[a] person of ordinary skill in the art would be motivated to combine Jensen’s teaching of maintaining the OIDs in a pointer with [Visual Basic’s] disclosure of identifying the logical columns / rows with the OIDs.” Ex. 1119 ¶ 404. The predictable use of familiar prior art elements according to their established functions renders the recited invention obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).” slip op. at 19
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). However, to accord substantial weight to objective evidence requires the finding of a nexus between the evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention.”). Enfish contends that the claimed invention received industry accolades, including praise from Microsoft, satisfied a long-felt need, resulted in success where others had failed, as well as commercial success. PO Resp. 42–47. Enfish points to features of claim 17, which Enfish contends are the features of the claimed invention that resulted in the objective indicia of success to which Enfish refers. Id. at 43–44. Claim 17 of the ’775 patent, however, is challenged on the basis that it is anticipated by Visual Basic. Secondary considerations do not weigh into determinations regarding anticipation. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008). Because we conclude that Microsoft has not shown that claims 51–53 of the ’775 patent are unpatentable for other reasons, the only claims that we need to evaluate are dependent claims 49 and 50 of the ’775 patent. Microsoft asserts that claims 49 and 50 are obvious over the combination of Visual Basic with a reference that teaches referencing objects through two-way pointers. Pet. 49 (citing Ex. 1106, 7:29–35). Enfish has not shown a nexus between any of the accolades or successes it says occurred and the use of two-way pointers.” slip op. at 24
Patent outcomesUS 6,163,775 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,163,775 - Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentablePTAB · Jan 27, 2015 · IPR2013-00469 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–37 are unpatentable: claims 1, 6, 7, 17, 18, 20–22, and 36 over Wright Jr.; claims 1–37 over Wright Jr. and Goodman.
RulingsFinal written decision- Skill levelSkill level board ownOther
“following education and experience: Bachelor’s degree in Electrical Engineering or Computer Science, or its equivalent, at least 2 years of experience with the design and programming of patient monitoring systems, and at least 1 year of experience with the design or programming of networked systems. Ex. 1008 ¶ 23. Patent Owner’s declarant, Dr. Yadin David, disagrees with the above assertion, asserting instead that a person of ordinary skill in the art would not have had the 1 year of experience with the design and programming of networked systems. Ex. 2007 ¶ 23. The disagreement appears to be immaterial to the arguments presented by Patent Owner, however, because Dr. David declares that this additional experience would not affect his opinions. Id. Accordingly, we need not determine which of the alleged education and experience proffered by the parties is correct. We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). From the Goodman reference, which Patent Owner does not contest is in the field of endeavor of the invention in question, we understand that the level of ordinary skill in the art, at a minimum, pertains to the configuration of communications systems, such as electronic or wireless systems and personal computer systems for communicating with a central monitoring system, which is computer-implemented technology. See Ex. 1003, 3:5059; see also id. at 6:125 (describing the features of the computer-implemented technology at issue in Goodman). With this level of ordinary skill in” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“patent as described in the Decision on Institution. Patent Owner explains that Petitioner “filed a new petition seeking inter partes review of related U.S. Patent No. 7,587,469” in which Petitioner “advances a very different construction” for the term “script program.” PO Resp. 5–6. However, Petitioner does not advance a different construction for the term “script program” in this proceeding. We adopt our previous analysis for the non-disputed claim terms, and interpret these terms as follows: Term Interpretation “script program” a program that contains a set of instructions that is capable of being executed and interpreted “data merge program” a program that combines two or more sets of data into one “pointer” an identifier that indicates the location of an item “script assignment unit” a program that associates a script program with an individual See ’468 Dec. on Inst. 5–9.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“Nonetheless, where there is an attempt to show obviousness over a single reference, there also must be a showing of a suggestion or motivation to modify the teachings of that reference to achieve the claimed invention. Sibia Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000). Determining obviousness with respect to whether a single piece of prior art could be modified to produce the claimed invention invokes an inquiry into whether a person having ordinary skill in the art would have had a reason to so modify the prior art reference. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351-52 (Fed. Cir. 2010). An obviousness challenge relying on such a modification to bridge the difference between the prior art and the claimed invention must be supported by articulated reasoning with rational underpinning to explain why the person of ordinary skill in the art would make the modification. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (Kahn). The Supreme Court has admonished courts that this analysis should be made explicit. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing Kahn, 441 F.3d at 988). For example, Petitioner relies on knowledge of one of ordinary skill to meet the “one or more databases” limitation. Petitioner explains that user responses are stored on the personal computer in a tab-delimited format for use with a database. Pet. 37–38 (citing Ex. 1002, 3:28–40, 5:7–15, 14:1–10). Wright Jr. also teaches that a form can be selected from a list of existing forms. Id. Patent Owner’s declarant Dr. David acknowledged one of ordinary skill would be aware of the ability to store a list of forms in a database. Ex. 1041, 557:14–19 (agreeing that “one of ordinary skill would understand that one way to store such a list of forms would be to store them in a computer database that’s accessible on the computer”). Given that the use of databases was well within the skill of one of ordinary skill, and given that the form data in Wright Jr. is stored in tab-delimited format, Petitioner has shown, by a preponderance of the evidence, supported by articulated reasoning with rational underpinning, that a person of ordinary skill in the art would have made the modification to store Wright Jr.’s forms in a database.” slip op. at 12
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Evidence of commercial success, however, “is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To establish a proper nexus between a claimed invention and the commercial success of a product, a patent owner must offer “proof that the sales [of the allegedly successful product] were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In addition, “if the commercial success is due to an unclaimed feature of the device,” or “if the feature that creates the commercial success was known in the prior art, the success is not pertinent.” Ormco, 463 F.3d at 1312; see also In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (requiring a determination of “whether the commercial success of the embodying product resulted from the merits of the claimed invention as opposed to the prior art or other extrinsic factors”). If a patent owner is able to show a sufficient nexus, “the burden shifts to the challenger to prove that the commercial success is instead due to other factors extraneous to the patented invention, such as advertising or superior workmanship.” J.T. Eaton & Co., Inc. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). Patent Owner has not established a sufficient nexus between the claimed monitoring system, method, or apparatus and the alleged commercial success of the Health Buddy. Patent Owner argues that the success of the Health Buddy was “directly attributable to the invention of the ’192 patent.” PO Resp. 24 (citing Ex. 2007 ¶¶ 81, 83, 88–89, 99). Patent Owner and Dr. David, however, do not provide any analysis of how the Health Buddy allegedly embodied the challenged claims, or explain in any detail why it was the unique characteristics of the claimed monitoring system, method, or apparatus that drove sales. Instead, Dr. David” slip op. at 34
Patent outcomesUS 7,516,192 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,516,192 - PTAB · Mar 25, 2014 · IPR2013-00355 · APJ Sally C Medley · IPR · Order
The Board granted the joint motion to terminate IPR2013-00355 and terminated the proceeding without a final written decision.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Board instituted trial on December 12, 2013. Paper 13. At this juncture of the proceeding, the Board does not have before it full briefing on the trial issues and the Board has not entered a final decision.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“It is ORDERED that the joint motion to terminate IPR2013-00355 is granted; FURTHER ORDERED that the proceeding is terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information kept separate from the patent file, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.” slip op. at 2
NonePatents in suitUS 8,305,840
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.