- Microsoft Corporation v. Ipa Technologies, Inc.Some claims unpatentablePTAB · Oct 15, 2020 · IPR2019-00812 · APJ Kevin C Trock · IPR · Final written decision
Claims 1, 15, and 17–25 are unpatentable as obvious over Kiss and FIPA97, or over Kiss, FIPA97, and Cohen.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“A. Level of Ordinary Skill” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“description may not be read into a claim when the claim language is broader than the embodiment.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citation omitted). As discussed above, the challenged independent claims 1 and 29 do not recite all of the limiting features required by Patent Owner’s proposed construction of “goal satisfaction plan.” Thus, unless one of the established exceptions, such as lexicography or disavowal, applies, the challenged claims are not restricted as Patent Owner contends. See, e.g., GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“the specification and prosecution history only compel departure from the plain meaning in two instances: lexicography and disavowal”) (citation omitted). Here, Patent Owner does not argue lexicography or disavowal. Nor does Patent Owner explain any other reason why the Specification limits “goal satisfaction plan” as it contends. Thus, claim construction in this case is governed by the general principle that “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” SuperGuide, 358 F.3d at 875; see also WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1323–24 (Fed. Cir. 2018) (“It is well established that claims are not limited to preferred embodiments, unless the specification clearly indicates otherwise.” (citing Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (“[T]his court has repeatedly cautioned against limiting claims to a preferred embodiment.”))). Accordingly, none of the embodiments in the Specification cited by Patent Owner limits “goal satisfaction plan” as Patent Owner contends.” slip op. at 19
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“http://drogo.cselt.stet.it/fipa. FIPA published FIPA 97 Version 1.0 on its website at the conclusion of the Munich meeting on October 10, 1997, or shortly thereafter. See Ex. 1049 ¶ 20. In the several months leading up to the Munich meeting, persons of ordinary skill in the art would have known about the FIPA website through the widely distributed AgentWeb newsletters and the Software Agents mailing list, which provided website information or direct links to drafts of the specification and meeting announcements and reports. See Ex. 1091, 1–2; Ex. 1092, 3; Ex. 1093, 2; Ex. 1094; Ex. 1082, 1; Ex. 1083, 1. Therefore, people working in the field would have been sufficiently familiar with FIPA’s activities and its website to look for FIPA 97 Version 1.0 on the FIPA website when it was posted after the Munich meeting. Indeed, both Dr. Finin, who was affiliated with FIPA, and Dr. Lieberman, who worked in the software agent field, testify that they accessed FIPA 97 Version 1.0 on the FIPA website in late 1997. Id. ¶ 21; Ex. 1050 ¶ 146.” slip op. at 47
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“we consider any relevant evidence of secondary considerations of non-obviousness. See Graham, 383 U.S. at 17. Notwithstanding what the teachings of the prior art would have suggested to one of ordinary skill in the art at the time of the invention, the totality of the evidence submitted, including objective evidence of non-obviousness, may lead to a conclusion that the challenged claims would not have been obvious to one of ordinary skill. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Patent Owner presents evidence of two such considerations: (1) industry praise (Resp. 120–141) and (2) long-felt but unresolved need (id. at 141–145), both involving the software product called “Siri” from Apple Inc. For the reasons explained below, we determine that Patent Owner’s proffered evidence of secondary considerations is not entitled much weight because Patent Owner does not establish a sufficient nexus between the evidence of non-obviousness and the challenged claims of the ’115 patent.” slip op. at 73
Patent outcomesUS 6,851,115 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,851,115 - Apple Inc. v. Optis Wireless Technology, LLCInstitution deniedPTAB · Sep 15, 2020 · IPR2020-00466 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution of review of claims 1–10 under § 314(a), finding that the Fintiv factors favored denial after the parallel district court trial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“instituting an inter partes review would be an inefficient use of Board resources. As discussed above, the trial in the parallel proceeding recently concluded more than one year before we would reach a final decision in this proceeding if we instituted an inter partes review. Moreover, the district court and the parties expended considerable effort in preparing for and conducting the trial. These considerations strongly favor the exercise of discretionary denial, other considerations favor denial, and no considerations weigh against the exercise of discretionary denial in this case. On balance, after a holistic consideration of the relevant facts and the particular circumstances of this case, we conclude that efficiency and integrity of the system are best served by denying institution. Thus, we exercise our discretion under § 314(a) to deny institution of inter partes review.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“instituting an inter partes review would be an inefficient use of Board resources. As discussed above, the trial in the parallel proceeding recently concluded more than one year before we would reach a final decision in this proceeding if we instituted an inter partes review. Moreover, the district court and the parties expended considerable effort in preparing for and conducting the trial. These considerations strongly favor the exercise of discretionary denial, other considerations favor denial, and no considerations weigh against the exercise of discretionary denial in this case. On balance, after a holistic consideration of the relevant facts and the particular circumstances of this case, we conclude that efficiency and integrity of the system are best served by denying institution. Thus, we exercise our discretion under § 314(a) to deny institution of inter partes review.” slip op. at 15
Discretionary denialPatents in suitUS 8,411,557 - Samsung Electronics Co., Ltd. v. Ibex PT Holdings Co., Ltd.Rehearing deniedPTAB · Aug 27, 2020 · IPR2018-00011 · APJ Kimberly Mcgraw · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving claims 1–5 unpatentable over WD5 and Lin under § 103(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“evidence because it did not establish that enough interested and ordinarily skilled artisans actually obtained the WD4 reference was . . . erroneous.” Id. The Federal Circuit explained that “the standard for public accessibility is whether a person of ordinary skill in the art could, after exercising reasonable diligence, access a reference” and that the Board “departed from this well- 6 Samsung Elec. Co., Ltd. v. Infobridge Pte. Ltd., IPR2017-00099, Paper 32 (PTAB Apr. 23, 2018), and Samsung Elec. Co., Ltd. v. Infobridge Pte. Ltd., IPR2017-00100, Paper 30 (PTAB Apr. 23, 2018). 7 Cited by the Federal Circuit as “Final Written Decision, 2018 WL 19040480 at *9.” established principle by repeatedly faulting Samsung for not proving that the WD4 reference was ‘generally’ or ‘widely’ disseminated.” Id. Rather than requiring Samsung to prove that persons of ordinary skill actually received the listserv email, the Federal Circuit stated the Board should have considered whether Samsung’s evidence established that an ordinarily skilled artisan could have accessed the WD4 reference, after exercising reasonable diligence, based on the listserv email. See id. at 1374–75.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Evidence to prove personal knowledge may consist of the witness’s 8 Although Patent Owner did object to the admissibility of Mr. Bross’s supplemental declaration (Ex. 1106) under Fed. R. Evid. 602 (see Paper 16, 1– 3), Patent Owner did not seek to exclude Mr. Bross’s supplemental declaration under 37 C.F.R. § 42.64(c), which provides that a “motion to exclude evidence must be filed to preserve any objection” to the admissibility of the evidence. own testimony.” Fed. R. Evid. 602. We credit Mr. Bross’s testimony that he has “personal knowledge and recollection that people subscribed to that list from academia, from companies have been approved by the moderator.” Dec. 28–29 (citing Ex. 2008, 83:53–84:3; Ex. 1002 ¶ 184; Ex. 1058, 2). Mr. Bross testified that, as co-chair and lead author of the Working Drafts of the JCT-VC, he was familiar with the procedures for making JCT-VC documents publicly available, including through the JCT-VC reflector listserv (see Ex. 1002 ¶ 177) and that based on his knowledge and recollection, all communications between members related to the development of the HEVC standard were to be conducted via the JCT-VC reflector (jct-vc@lists.rwth-aachen.de) (see Ex. 1002 ¶ 184). See also Ex. 1058, 2 (stating the JCT-VC “reflector [is] to be used for discussions by the JCT-VC and all its AHGs [Ad Hoc Groups]”); id. at 228–229. slip op. at 17
§ 102 anticipationcites GrahamPatents in suitUS 8,654,855 - Samsung Electronics Co., Ltd. v. Ibex PT Holdings Co., Ltd.Rehearing deniedPTAB · Aug 27, 2020 · IPR2018-00092 · APJ Kimberly Mcgraw · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact the decision that claims 1–3 were unpatentable under §103(a) over WD5 and Lin.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“evidence because it did not establish that enough interested and ordinarily skilled artisans actually obtained the WD4 reference was . . . erroneous.” Id. The Federal Circuit explained that “the standard for public accessibility is whether a person of ordinary skill in the art could, after exercising reasonable diligence, access a reference” and that the Board “departed from this well- 6 Samsung Elec. Co., Ltd. v. Infobridge Pte. Ltd., IPR2017-00099, Paper 32 (PTAB Apr. 23, 2018), and Samsung Elec. Co., Ltd. v. Infobridge Pte. Ltd., IPR2017-00100, Paper 30 (PTAB Apr. 23, 2018). 7 Cited by the Federal Circuit as “Final Written Decision, 2018 WL 19040480 at *9.” established principle by repeatedly faulting Samsung for not proving that the WD4 reference was ‘generally’ or ‘widely’ disseminated.” Id. Rather than requiring Samsung to prove that persons of ordinary skill actually received the listserv email, the Federal Circuit stated the Board should have considered whether Samsung’s evidence established that an ordinarily skilled artisan could have accessed the WD4 reference, after exercising reasonable diligence, based on the listserv email. See id. at 1374–75.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Evidence to prove personal knowledge may consist of the witness’s 8 Although Patent Owner did object to the admissibility of Mr. Bross’s supplemental declaration (Ex. 1106) under Fed. R. Evid. 602 (see Paper 16, 1– 3), Patent Owner did not seek to exclude Mr. Bross’s supplemental declaration under 37 C.F.R. § 42.64(c), which provides that a “motion to exclude evidence must be filed to preserve any objection” to the admissibility of the evidence. own testimony.” Fed. R. Evid. 602. We credit Mr. Bross’s testimony that he has “personal knowledge and recollection that people subscribed to that list from academia, from companies have been approved by the moderator.” Dec. 28–29 (citing Ex. 2008, 83:53–84:3; Ex. 1002 ¶ 184; Ex. 1058, 2). Mr. Bross testified that, as co-chair and lead author of the Working Drafts of the JCT-VC, he was familiar with the procedures for making JCT-VC documents publicly available, including through the JCT-VC reflector listserv (see Ex. 1002 ¶ 177) and that based on his knowledge and recollection, all communications between members related to the development of the HEVC standard were to be conducted via the JCT-VC reflector (jct-vc@lists.rwth-aachen.de) (see Ex. 1002 ¶ 184). See also Ex. 1058, 2 (stating the JCT-VC “reflector [is] to be used for discussions by the JCT-VC and all its AHGs [Ad Hoc Groups]”); id. at 228–229. slip op. at 17
§ 102 anticipationcites GrahamPatents in suitUS 9,025,668 - Samsung Electronics Co., Ltd. v. Ibex PT Holdings Co., Ltd.Rehearing deniedPTAB · Aug 27, 2020 · IPR2018-00093 · APJ Kimberly Mcgraw · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its finding that claims 1–5 are unpatentable under §103(a) over WD5 and Lin.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“evidence because it did not establish that enough interested and ordinarily skilled artisans actually obtained the WD4 reference was . . . erroneous.” Id. The Federal Circuit explained that “the standard for public accessibility is whether a person of ordinary skill in the art could, after exercising reasonable diligence, access a reference” and that the Board “departed from this well- 6 Samsung Elec. Co., Ltd. v. Infobridge Pte. Ltd., IPR2017-00099, Paper 32 (PTAB Apr. 23, 2018), and Samsung Elec. Co., Ltd. v. Infobridge Pte. Ltd., IPR2017-00100, Paper 30 (PTAB Apr. 23, 2018). 7 Cited by the Federal Circuit as “Final Written Decision, 2018 WL 19040480 at *9.” established principle by repeatedly faulting Samsung for not proving that the WD4 reference was ‘generally’ or ‘widely’ disseminated.” Id. Rather than requiring Samsung to prove that persons of ordinary skill actually received the listserv email, the Federal Circuit stated the Board should have considered whether Samsung’s evidence established that an ordinarily skilled artisan could have accessed the WD4 reference, after exercising reasonable diligence, based on the listserv email. See id. at 1374–75.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Evidence to prove personal knowledge may consist of the witness’s 8 Although Patent Owner did object to the admissibility of Mr. Bross’s supplemental declaration (Ex. 1106) under Fed. R. Evid. 602 (see Paper 16, 1– 3), Patent Owner did not seek to exclude Mr. Bross’s supplemental declaration under 37 C.F.R. § 42.64(c), which provides that a “motion to exclude evidence must be filed to preserve any objection” to the admissibility of the evidence. own testimony.” Fed. R. Evid. 602. We credit Mr. Bross’s testimony that he has “personal knowledge and recollection that people subscribed to that list from academia, from companies have been approved by the moderator.” Dec. 28–29 (citing Ex. 2008, 83:53–84:3; Ex. 1002 ¶ 184; Ex. 1058, 2). Mr. Bross testified that, as co-chair and lead author of the Working Drafts of the JCT-VC, he was familiar with the procedures for making JCT-VC documents publicly available, including through the JCT-VC reflector listserv (see Ex. 1002 ¶ 177) and that based on his knowledge and recollection, all communications between members related to the development of the HEVC standard were to be conducted via the JCT-VC reflector (jct-vc@lists.rwth-aachen.de) (see Ex. 1002 ¶ 184). See also Ex. 1058, 2 (stating the JCT-VC “reflector [is] to be used for discussions by the JCT-VC and all its AHGs [Ad Hoc Groups]”); id. at 228–229. slip op. at 17
§ 102 anticipationcites GrahamPatents in suitUS 8,774,279 - Emerson Electric Co. v. Sipco, LLCRehearing deniedPTAB · Aug 14, 2020 · IPR2019-00548 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board denied Emerson’s rehearing request and the petition, finding Jubin insufficient to show claim 1’s required path determination occurs when transmitting to the site controller.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Request, but we do not reach a different result. As Petitioner admits, claim 1 requires that “determin[ing] a first communication path” in limitation [1.b] be performed by the first remote device “when transmitting to the site controller.” Ex. 1001, 20:56–57; see Req. Reh’g 8. According to Petitioner, Jubin’s first remote device (PR M in Petitioner’s example) selects a “first communication path” by updating its tier table with a new next PR (e.g., PR Q) for destination PR L when the direct path from PR M to PR L is “bad.” Pet. 32 (citing Ex. 1005, 24); see Req. Reh’g 4–5. Petitioner further asserts that updating the tier table occurs “[w]hen PR M attempts to transmit a packet to PR L,” i.e., “when transmitting to the site controller.” Pet. 32 (citing Ex. 1005, 24); Req. Reh’g 7–8. On the record before us, Petitioner does not show sufficiently that Jubin discloses “determin[ing] a first communication path between the first remote device and the site controller” by updating the tier table “when transmitting to the controller” as required by the claim language in limitation [1.b]. The cited section of Jubin discloses that “[w]hen the link quality to a neighboring PR (say the link from PR N to PR M) becomes ‘bad,’” PR N’s which PR M is the next PR in the route. Ex. 1005, 24. Thus, with reference to Petitioner’s Figure 6 scenario, PR M (the claimed first remote device) updates its tier table for destination PR L (the claimed site controller) when it becomes aware that the quality of the link from PR M to PR L has become bad. See Pet. 32; Ex. 1005, 24. Petitioner contends that PR M updates its tier table (i.e., determines a first communication path) when PR M is transmitting a packet to PR L, but Petitioner does not cite, nor do we see, a specific description in Jubin supporting this assertion. See Pet. 32; Ex. 1005, 24. Rather, Jubin discloses using Packet Radio Organization Packets (PROPs), which are broadcast by each PR every 7.5 seconds to announce information about the network, to determine link quality (“good” vs. “bad”) and to communicate link quality and “news of bad tier data” among PRs. Ex. 1005, 24; see id. at 23–24 (describing PROPs). Petitioner does not contend that Jubin’s broadcasting of PROPs satisfies the “when transmitting to the site controller” language in limitation [1.b]. See Pet. 32. Nor does Petitioner explain adequately how Jubin discloses that PR M in Figure 6 updates its tier table for destination PR L (i.e., “determine[s] a first communication path between the first remote device and the site controller”) when PR M is attempting to transmit a packet to PR L (i.e., “when transmitting to the site controller”) based on information that the link between PR M and PR L is “bad.” See id.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On the record before us, Petitioner does not show sufficiently that Jubin discloses “determin[ing] a first communication path between the first remote device and the site controller” by updating the tier table “when transmitting to the controller” as required by the claim language in limitation [1.b]. The cited section of Jubin discloses that “[w]hen the link quality to a neighboring PR (say the link from PR N to PR M) becomes ‘bad,’” PR N’s which PR M is the next PR in the route. Ex. 1005, 24. Thus, with reference to Petitioner’s Figure 6 scenario, PR M (the claimed first remote device) updates its tier table for destination PR L (the claimed site controller) when it becomes aware that the quality of the link from PR M to PR L has become bad. See Pet. 32; Ex. 1005, 24. Petitioner contends that PR M updates its tier table (i.e., determines a first communication path) when PR M is transmitting a packet to PR L, but Petitioner does not cite, nor do we see, a specific description in Jubin supporting this assertion. See Pet. 32; Ex. 1005, 24. Rather, Jubin discloses using Packet Radio Organization Packets (PROPs), which are broadcast by each PR every 7.5 seconds to announce information about the network, to determine link quality (“good” vs. “bad”) and to communicate link quality and “news of bad tier data” among PRs. Ex. 1005, 24; see id. at 23–24 (describing PROPs). Petitioner does not contend that Jubin’s broadcasting of PROPs satisfies the “when transmitting to the site controller” language in limitation [1.b]. See Pet. 32. Nor does Petitioner explain adequately how Jubin discloses that PR M in Figure 6 updates its tier table for destination PR L (i.e., “determine[s] a first communication path between the first remote device and the site controller”) when PR M is attempting to transmit a packet to PR L (i.e., “when transmitting to the site controller”) based on information that the link between PR M and PR L is “bad.” See id.” slip op. at 5
- BurdenNot shown unpatentable
“On the record before us, Petitioner does not show sufficiently that Jubin discloses “determin[ing] a first communication path between the first remote device and the site controller” by updating the tier table “when transmitting to the controller” as required by the claim language in limitation [1.b]. The cited section of Jubin discloses that “[w]hen the link quality to a neighboring PR (say the link from PR N to PR M) becomes ‘bad,’” PR N’s which PR M is the next PR in the route. Ex. 1005, 24. Thus, with reference to Petitioner’s Figure 6 scenario, PR M (the claimed first remote device) updates its tier table for destination PR L (the claimed site controller) when it becomes aware that the quality of the link from PR M to PR L has become bad. See Pet. 32; Ex. 1005, 24. Petitioner contends that PR M updates its tier table (i.e., determines a first communication path) when PR M is transmitting a packet to PR L, but Petitioner does not cite, nor do we see, a specific description in Jubin supporting this assertion. See Pet. 32; Ex. 1005, 24. Rather, Jubin discloses using Packet Radio Organization Packets (PROPs), which are broadcast by each PR every 7.5 seconds to announce information about the network, to determine link quality (“good” vs. “bad”) and to communicate link quality and “news of bad tier data” among PRs. Ex. 1005, 24; see id. at 23–24 (describing PROPs). Petitioner does not contend that Jubin’s broadcasting of PROPs satisfies the “when transmitting to the site controller” language in limitation [1.b]. See Pet. 32. Nor does Petitioner explain adequately how Jubin discloses that PR M in Figure 6 updates its tier table for destination PR L (i.e., “determine[s] a first communication path between the first remote device and the site controller”) when PR M is attempting to transmit a packet to PR L (i.e., “when transmitting to the site controller”) based on information that the link between PR M and PR L is “bad.” See id.” slip op. at 5
NonePatents in suitUS 9,439,126 - Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Rehearing deniedPTAB · May 26, 2020 · IPR2019-01209 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because the Petition lacked adequate evidence and reasoning to support the proposed obviousness combination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c); see 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.”). “An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As the Petition makes clear, the linchpin of Petitioner’s argument for modifying Brenner is that a person of ordinary skill in the art would have recognized reliability issues due to signal loss in the optical waveguide of Brenner’s device. See Pet. 21 (“Thus, a [person of ordinary skill in the art] would have recognized that the security device of Brenner is prone to reliability issues due to signal loss in the optical waveguide.”); id. at 34 (“A [person of ordinary skill in the art] would recognize that . . . the security device will likely suffer from reliability issues associated with signal loss within the optical waveguide.”); id. at 35 (“[T]he optical transceivers of the sensor unit and the base unit may not be able to reliably communicate with one another due to optical signal loss within the optical waveguide.”); id. 6 The Petition and our Decision refer to this book by its title (“Communications Standard Dictionary”), but Petitioner now refers to it by the last name of its author (“Weik”). Compare Pet. 6, 19, with Req. Reh’g 2. For convenience and consistency with the Request for Rehearing, we refer to the book herein as “Weik.” Notably, Petitioner did not submit Weik as a prior art printed publication to be considered as part of an unpatentability ground, as set forth in 35 U.S.C. § 311(b) (2018). See Pet. 5. Rather, the Petition cites Weik as support for its proposed claim construction and as support for an alleged “well-known fact” that an optical waveguide subjected to bending or winding is prone to signal loss. Id. at 6, 19. skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 17–18 (citing Pet. 21, 35). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“As the Petition makes clear, the linchpin of Petitioner’s argument for modifying Brenner is that a person of ordinary skill in the art would have recognized reliability issues due to signal loss in the optical waveguide of Brenner’s device. See Pet. 21 (“Thus, a [person of ordinary skill in the art] would have recognized that the security device of Brenner is prone to reliability issues due to signal loss in the optical waveguide.”); id. at 34 (“A [person of ordinary skill in the art] would recognize that . . . the security device will likely suffer from reliability issues associated with signal loss within the optical waveguide.”); id. at 35 (“[T]he optical transceivers of the sensor unit and the base unit may not be able to reliably communicate with one another due to optical signal loss within the optical waveguide.”); id. 6 The Petition and our Decision refer to this book by its title (“Communications Standard Dictionary”), but Petitioner now refers to it by the last name of its author (“Weik”). Compare Pet. 6, 19, with Req. Reh’g 2. For convenience and consistency with the Request for Rehearing, we refer to the book herein as “Weik.” Notably, Petitioner did not submit Weik as a prior art printed publication to be considered as part of an unpatentability ground, as set forth in 35 U.S.C. § 311(b) (2018). See Pet. 5. Rather, the Petition cites Weik as support for its proposed claim construction and as support for an alleged “well-known fact” that an optical waveguide subjected to bending or winding is prone to signal loss. Id. at 6, 19. skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 17–18 (citing Pet. 21, 35). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“We are not persuaded that we overlooked evidence from Weik relied on in the Petition. Our Decision considered Weik’s description of a “microbend loss” that was quoted in the Petition: “the optical power loss caused by a microbend, i.e., a small bend, kink, or abrupt discontinuity in the direction of the optical axis of fibers, in the core-cladding interface surface, or both, usually caused by cabling, wrapping the fiber around drums and (citing Pet. 34–35 (citing Ex. 1002, 576)). But Petitioner does not identify, nor do we see, any assertion in the Petition that Weik shows a microbend loss can cause a “total failure” of an optical signal to reach its destination. See Req. Reh’g 9; Pet. 19–20, 34–35. Petitioner’s Request for Rehearing also does not identify where the Petition addressed Weik’s statement that microbends can cause radiative loss. See Pet. 19–20, 34–35. Because these arguments were not presented in the first instance in the Petition, we could not have overlooked them in our Decision.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 10,062,253 - Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Rehearing deniedPTAB · May 26, 2020 · IPR2019-01206 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because the Petition lacked sufficient evidence and reasoning to show a reasonable likelihood of prevailing on obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c); see 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.”). “An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“ordinary skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 18 (citing Pet. 21, 36–37). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“ordinary skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 18 (citing Pet. 21, 36–37). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 9,818,274 - Lectrosonics, Inc. v. Zaxcom, Inc.Rehearing deniedPTAB · Apr 9, 2020 · IPR2018-01129 · APJ Kalyan K Deshpande · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 7, 8, 11, 12, 14, and 15 unpatentable under the grounds in the Final Written Decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We are not persuaded by Patent Owner that we misapprehended or overlooked the arguments raised in the Petition, Patent Owner Response, and Petitioner’s Reply, or the disclosure of Woo. In particular, we are not persuaded that Woo’s “jam synchronization” is a separate embodiment such that citing this disclosure raises a “new theory of unpatentability.” See id. at 4–5, 7. As argued by Petitioner, Woo is concerned with synchronizing audio recorders at a performance event using a master clock to timestamp audio data with SMPTE (“The Society of Motion Picture and Television Engineers”) timecodes. Pet. 23– 24 (citing Ex. 1020, Abstract, 1:21–28, 1:60–2:9, 2:39–48, 3:3–24, 4:3–32 (“audio recorders”), Figs. 1–5)). Woo discloses that the “time code is synchronized to the video signal by the time code generator.” Ex. 1020, 3:26–27. Woo further discloses that a “common feature of time code generators is the slave or jam-sync” slip op. at 4
- Strike new argumentNew argument consideredDecided for patent owner
“Furthermore, our analysis relied on the arguments and evidence set forth in the Petition. See Dec. 18 (citing Pet. 23 (citing Ex. 1020, Abstract, 1:21–28, 1:60– 2:9, 2:39–48, 3:3–24, 4:3–32 (“audio recorders”), Figs. 1–5)). We additionally cited to Petitioner’s Reply, which includes a citation to column 3, lines 38–46 of Woo, to further illustrate Woo’s disclosure of a “master timecode generator,” and the associated “jam synchronization” of a commercially-available timecode generator described in Woo. That is, our citation to Petitioner’s Reply was supplemental to our analysis that Woo disclosed a “master timecode generator.” Therefore, we are not persuaded by Patent Owner’s argument that we relied on a “new theory of unpatentability” raised for the first time in Petitioner’s Reply because our analysis that Woo disclosed a “master timecode generator” was based on the arguments and evidence in the Petition. We are also not persuaded that our consideration of Woo’s “jam synchronization” disclosure deprived Patent Owner of “due process rights under the Administrative Procedure[] Act.” Req. Reh’g 1, 6–8. As discussed above, we are not persuaded that Woo’s “jam synchronization” is a separate and distinct embodiment that results in a “new theory of unpatentability.” Furthermore, Patent Owner had opportunities to respond to this disclosure of Woo, including its Sur-reply and at oral hearing. Accordingly, we are not persuaded that Patent Owner’s due process rights were deprived because Patent Owner had notice of Woo’s disclosure of “jam synchronization” and had opportunities to respond. Even further, Patent Owner waived the argument that Petitioner relied on a “new theory of unpatentability” by citing Woo’s disclosure of “jam synchronization” in its Reply. Although Patent Owner indicates that it timely raised this argument in its Sur-reply, we find no such argument raised. See Req. Reh’g 6 (citing Paper 24 (“PO Sur-reply”), 24–25 (citing Pet. Reply 6–7)). Thus, we could not have misapprehended or overlooked this argument because Patent Owner had not previously raised it when it had the opportunity, and, therefore, it is considered waived.” slip op. at 5
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“A patentee is entitled to a presumption of nexus “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000))). “[T]he purpose of the coextensiveness requirement is to ensure that nexus is only presumed when the product tied to the evidence of secondary considerations ‘is the invention disclosed and claimed.’” Id. at 1374 (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). “[T]he degree of correspondence between a product and the patent claim falls along a spectrum. At one end of the spectrum lies perfect or near perfect correspondence. At the other end lies no or very little correspondence.” Id. “A patent claim is not coextensive with a product that includes a ‘critical’ unclaimed feature that is claimed by a different patent and that materially impacts the product’s functionality.” Id. at 1375. We are not persuaded by Patent Owner that we misapprehended or overlooked these arguments because they were not before us. Although Patent Owner directs us to Mr. DeFilippis’s analysis mapping the claim limitations to Patent Owner’s products, we find no arguments or evidence cited in Patent Owner’s Response or Sur-reply directed to a presumption of nexus or demonstrating that its products are coextensive (or nearly coextensive) with the challenged claims. Accordingly, our determination that “Patent Owner does not provide an analysis demonstrating that its products are coextensive (or nearly coextensive) with the challenged claims” is consistent with the legal requirements for a presumption of nexus. See Dec. 33. In view of Patent Owner’s failure to establish a presumption of nexus, we are further unpersuaded that we misapprehended or overlooked the legal requirements for rebutting the presumption of nexus, as argued by Patent Owner. Req. Reh’g 10–11.” slip op. at 7
- Obviousness (§103) › Objective indicia / secondary considerationsDecided for petitioner
“Owner’s evidence of objective indicia of nonobviousness by characterizing the evidence as being directed towards the feature of “dropouts.” Id. at 11–12 (citing Dec. 34–35). First, Patent Owner argues that the Academy Award and Emmy Award refer to several claimed features without limiting the praise to the problem of “dropouts,” and we did not cite the actual exhibits. Id. at 12 (citing Exs. 2100, 2101). We are not persuaded that we misapprehended or overlooked this evidence. Notably absent from Patent Owner’s arguments are citations to where in its Response or Sur-reply these arguments were raised. See id. at 11–12. Exhibits 2100 and 2101 were not relied on in Patent Owner’s Response or Sur-reply beyond supporting statements that the Academy Award and Emmy Award were received. See PO. Resp. 58. We decline to independently review the evidence submitted by Patent Owner and sua sponte raise arguments when Patent Owner has not presented them. As such, we are not persuaded that we misapprehended or overlooked Exhibits 2100 and 2101 in rendering our Final Written Decision.” slip op. at 8
§ 103 obviousnessPatents in suitUS 7,929,902 - Comcast Cable Commuications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Mar 25, 2020 · IPR2019-00292 · APJ William M Fink · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving in place its denial of authorization to seek a stay or termination based on Arthrex.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “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
NonePatents in suitUS 7,937,394
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.