- Atlanta Gas Light Company v. Bennett Regulator Guards, Inc.Rehearing deniedPTAB · Dec 6, 2016 · IPR2015-00826 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–8 unpatentable, and granted sanctions for Petitioner’s failure to timely update real-party-in-interest notices.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“IV. REQUEST FOR REHEARING On rehearing, the burden of showing that the Decision should be modified lies with Patent Owner, the party challenging the Decision. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 10
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“With respect to Southern Company Gas, Petitioner’s assertion ignores the fact that Southern Company Gas did not result merely from a name change, but rather also from a merger with AMS Corp. that occurred before the name change. See Paper 34, 3. In the related IPR, the Board specifically found that AGLR is a real party in interest, and it follows that the merged entity is also a real party in interest. Atlanta Gas, slip op. at 13 (PTAB Jan. 6, 2015) (Paper 88). The merger with AMS Corp. has meaningful effects that impose an obligation on Petitioner to apprise the Board that Southern Gas Company is a real party in interest. Petitioner’s failure to file timely the updated mandatory notice is especially significant in light of the central nature that the issue of AGLR’s status as a real party in interest played in the related IPR. See Atlanta Gas, Paper 87, 46:6–9 (“The problem that we have, and you will remember, we had to fight like tooth and nail to get these documents. At every turn there was an objection to producing documents related to the real party in interest issue or the privity issue.” (statement by Patent Owner at oral hearing in the related IPR)). With respect to The Southern Company, we do not credit Petitioner’s argument that The Southern Company is not a real party in interest in light of Petitioner’s explicit notification to the contrary. Petitioner cannot have it both ways, identifying The Southern Company as a real party in interest (even “out of an abundance of caution”) to ensure compliance with 35 U.S.C. § 312(b), while simultaneously maintaining that it is not a real party in interest to evade the obligations of 37 C.F.R. § 42.8(a)(3). In light of these various considerations, we conclude that Petitioner has performed conduct that warrants a sanction.” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“be to expunge the Decision and the request for rehearing, dismiss the Petition with prejudice, and order [Petitioner] to pay compensatory expenses and attorney fees to [Patent Owner].” Mot. 5. We disagree that this proposed sanction is proportionate to the harm suffered by Patent Owner. In particular, as Petitioner contends, the harm suffered by Patent Owner is limited because “the estoppel provisions apply to the petitioner and ‘the real party in interest or privy of the petitioner.’” Opp. 6 (citing 35 U.S.C. § 325(e)(1)) (emphasis by Petitioner). There is no requirement that a petitioner identify all of its privies in a petition, and Patent Owner’s ability to address whether The Southern Company was a privy that would give rise to estoppel was not impacted by Petitioner’s original failure to file an updated mandatory notice. Furthermore, “[a] sanction imposed under this rule must be limited to what suffices to deter repetition of the conduct or comparable conduct by others similarly situated.” 37 C.F.R. § 42.11(d)(4) (emphasis added). We have considered, but are not persuaded by, Patent Owner’s argument that “[a]ny remedy short of termination with prejudice would encourage future petitioners to try to suppress the identification of real parties-in-interest.” Mot. 6. A more limited sanction will have sufficient deterrent effect. We determine that an appropriate sanction, proportionate to the harm suffered by Patent Owner, is to award costs and fees incurred in association with this proceeding from the time after issuance of the Final Written Decision until the date of this Decision. 37 C.F.R. § 42.12(b)(6).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“Although we agree with Patent Owner in the abstract that the “ordinary and customary meaning” standard applied to expired patents requires that evidence be viewed through the eyes of one of ordinary skill in the art, Patent Owner stretches that principle too far. See id. at 9–10. “[A] claim construction analysis must begin and remain centered on the claim language itself.” Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 382 F.3d 1111, 1116 (Fed. Cir. 2004). Patent Owner asks us to deviate far from this cardinal principle by incorporating features of the Fisher S254 regulator that are not recited in the claims themselves, under circumstances in which the Fisher S254 regulator is not explicitly identified as such anywhere in the specification of the ’029 patent. “Reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from reading limitations of the specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim.” In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969). This is particularly the case when the standard we are obliged to apply does not afford Patent Owner a presumption of validity of the patent’s claims. For these reasons, we are not persuaded that we misapprehended or overlooked any aspect of Patent Owner’s claim-construction arguments. Nor are we persuaded that Patent Owner’s evidence in support of those arguments was inadequately considered.” slip op. at 16
Claim constructioncites PhillipsPatents in suitUS 5,810,029 - Motivepower, Inc. v. Cutsforth, Inc.Some claims unpatentablePTAB · Sep 9, 2016 · IPR2013-00274 · APJ Trenton A Ward · IPR · Remand
Claims 1–4, 6–7, and 9–24 are unpatentable as obvious over Bissett, Kartman, and Ohmstedt; claims 5 and 8 were not shown unpatentable.
RulingsRemand decision- RemandFwd mixedOther
“On January 22, 2016, the Federal Circuit issued a decision vacating and remanding the case to the Board. Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575, 578 (Fed. Cir. 2016) (unpublished) (nonprecedential) (entered herein as Paper 38). The Federal Circuit held “that the Board’s Final Written Decision does not provide enough explanation to support its finding of obviousness.” Id. “When the Board determines that modifications and combinations of the prior art render a claimed invention obvious, the Board must fully explain why a person of ordinary skill in the art would find such changes obvious.” Id. at 578–79. As a result, the Federal Circuit vacated the Board’s determinations that claims 1–24 of the ’018 patent were not patentable and remanded the case to the Board “for proceedings appropriate to the administrative process.” Id. at 579 (citing In re Sang-Su Lee, 277 F.3d 1338, 1346 (Fed. Cir. 2002)). On February 29, 2016, the Federal Circuit issued a formal mandate, returning the case to the Board. Paper 39.” slip op. at 3
- Additional discoveryAdditional discovery, grantedGranted
“Patent Owner’s request to submit additional briefing in light of the remand and to discuss the Petitioner’s opposition to such additional briefing. Paper 37, 2. During the conference, Patent Owner indicated that it was seeking additional briefing because the “record is without adequate briefing as to whether one of skill would have made the changes that are contemplated as they relate to a spring that was at issue and relating to claim 5.” Ex. 2064, Transcript of March 29, 2016 conference call, 6:15–18. Patent Owner stated that “a remand typically . . . deserves briefing on the point of the remand to make sure the record is full and there could be a fulsome review of the issues that are thought by the Appellate Court to . . . need[] further review.” Id. at 7:20–25. Patent Owner further argued that additional briefing was needed because the record was “devoid of arguments . . . from either side on this issue”; thus, Patent Owner requested “briefing without evidentiary submission by either party, a page limited briefing of simultaneous submission.” Id. at 8:9–11, 11:12–14.4 We granted Patent Owner’s request to file additional briefing. Paper 37, 3. More particularly, we authorized additional briefing limited to the issue raised by Patent Owner, namely, the design choice issue with respect to claim 5 of the ’018 patent. Id. In accordance with the Board’s Order, both Petitioner and Patent Owner filed their briefs on April 15, 2016. See Paper 40 (“Petitioner Remand Br.”) and Paper 41 (“PO Remand Br.”). Subsequently, Patent Owner requested authorization to file a Reply Brief to address arguments presented in Petitioner’s Remand Brief. The Board granted the request and authorized both parties to file a reply brief. Accordingly, the parties filed reply briefs on April 29, 2016. See Paper 42 (“PO Remand Reply”) and Paper 43 (“Pet. Remand Reply”).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“the “specification’s requirement that the mounting block must be fixed to a location.” PO Resp. 8. In support of this argument, Patent Owner relies on Figure 15B of the ’018 patent as depicting that lower mounting block 16, i.e., the “mounting block,” is fixed in place to mount base 41 via bolts 43. Id. at 910. Patent Owner further points to descriptions of various embodiments of the attachment of the “mounting block” to a base or to a location. Id. We determine that neither Figure 15B nor the statements in the specification identified by Patent Owner require the non-moveable, or “fixed,” aspect. Figure 15B does not show that the attachment excludes any ability to adjust the block. Indeed, the bottom surface of the mount is not depicted, leaving us to speculate concerning the shape of mount holes 96, because a round hole would suggest there is no adjustability, while a slotted or elongated hole would suggest adjustability. But see Ex. 1001, Fig. 9 (not cited by Petitioner, but confirming that elongated holes 96 are contemplated). The lack of description and depiction of the shape of the holes compels us to reject Patent Owner’s characterization of Figure 15B as supporting a “fixed” or non-moveable attachment. Furthermore, as for the descriptions of how the mount is attached, the specification uses the word “secure” and describes various embodiments of the attachment, none of which requires non-movability of the mount after the brush holder component is installed. See Ex. 1001, 12:35–36 (bolts and washers “secure the lower mount block 16 to a mount base” (emphasis added)), 14:5658 (“mount holes 96 may include threading or other elements that allow for attachment to a mount base”), 16:2528 (“in other embodiments, a welded, keyed, pinned or other attachment scheme may be used to secure the lower mount block 16 to a mount base” (emphasis added)). In fact, the specification makes a point of not limiting the attachment of the mount to any particular method, fixed or not fixed. See id. at 12:37–41 (“or other attachment scheme may be used to secure the lower mount block 16 to a mount base near a moving conductive surface or in position to move relative to a conductive surface”). Nor does the language of the claim recite any method of attachment that limits the mounting block to something that cannot be adjusted, shifted, re-positioned, or otherwise moved, after attachment to the base.” slip op. at 9
- Skill levelOther
“The level of ordinary skill in the art is reflected by the prior art of record. See 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 16
Patent outcomesUS 7,990,018 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,990,018 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCAll claims unpatentablePTAB · Mar 17, 2016 · IPR2014-01412 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1, 2, 4–7, 10–16, 18–21, 24–28, and 32 are unpatentable, principally because the cited references anticipate or render them obvious.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“On July 10, 2015, we joined IPR2015-01077 to this proceeding and instituted trial on the following grounds: Claims 11 and 25 of the ’557 patent as obvious under 35 U.S.C. § 103(a) over the ’450 patent; Claims 11 and 25 of the ’557 patent as obvious under 35 U.S.C. § 103(a) over the combination of the ’450 patent and the ’219 patent; and Claims 11 and 25 of the ’557 patent as obvious under 35 U.S.C. § 103(a) over the combination of the ’450 patent and Bungum.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“have its plain and ordinary meaning as “a communications path in a communications network.” Dec. to Inst. 8. Patent Owner contends that we should not construe this term at all because its plain and ordinary meaning is clear. PO Resp. 6–7. Patent Owner disputes the authority of the IEEE reference we used to establish the plain and ordinary meaning, arguing that Exhibit 1017 is not a standard, but a functional requirements document generated to assist a working group and is subject to change. Id. at 7–8. However, Patent Owner does not propose a “plain and ordinary meaning.” Id. Nor does Patent Owner argue that the scope of the term would be different if we rely on other evidence of the plain and ordinary meaning. Id. Although our Decision to Institute notes that the construction of “transmission path” is not particularly material to the decision, Dec. to Inst. 7–8, it is helpful to establish a baseline definition of the meaning as understood by those of ordinary skill in the art. Patent Owner’s assertion that the definition we applied was used by an IEEE working group supports our determination that our construction in the Decision to Institute applies the plain and ordinary meaning to those of ordinary skill in the art. Accordingly, we adopt the construction of “transmission path” as “a communication path in a communications network.”” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Time-Slot In this proceeding, neither party proposed a construction for the term “time- slot,” and we did not construe it in our Decision to Institute. However, in related case IPR2015-01471, which concerns a continuation-in-part of the ’557 Patent, it became clear that a construction of the term “slot” was in dispute, and it was discussed extensively at the consolidated oral hearing. In this proceeding, Patent Owner argues that the ’450 Patent does not disclose transmitting payload data on time slots allocated by the network control terminal (NCT), because the NCT in the ’450 Patent assigns only one slot, so that a small aperture terminal (SAT) transmits data beginning on a single slot. PO Resp. 15–19. In IPR2014-01471, we construed “slot” to mean “a duration of time.” Ericsson Inc. and Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLC, Case 2014- 01471, slip op. at 7 (PTAB, March 17, 2015) (Paper 33, Final Written Decision). We address the implications of this issue in our analysis of Representative Claim A and the ’450 patent.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As discussed above, there is evidence that MPEG2 could have been used to transmit video via satellite. As previously discussed, Petitioner has cited credible evidence that satellites transport MPEG2 packets. Reply 14. The claims are drawn to a three channel arrangement in which one channel is used to transmit data from the central controller to the station and two channels are used to transmit data from the station to the central controller. As discussed above, that arrangement is disclosed in the ’450 patent. The further limitation in claims 11 and 25 that the first path is a broadcast channel carrying MPEG2 data is a restriction to a field where Petitioner has demonstrated it was known to use such a format. Thus, Petitioner has produced persuasive evidence that combining the use of known MPEG2 transport packets with a managed access satellite communication system, such as that disclosed in the ’450 patent, would have been obvious to one of ordinary skill. Therefore, we conclude that Patent Owner has demonstrated by a preponderance of the evidence that claims 11 and 25 are unpatentable as obvious under 35 U.S.C. § 103(a) over the ’450 patent.” slip op. at 36
Patent outcomesUS 5,963,557 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,963,557 - ZTE Corporation / ZTE (USA) Inc. et al. v. Ipr Licensing, Inc.All claims unpatentablePTAB · Sep 14, 2015 · IPR2014-00525 · APJ Beverly M Bunting · IPR · Final written decision
Claims 1–8, 14–16, 19–29, 36–38, and 41–44 are unpatentable as obvious over Jawanda, the GPRS Standards, and the IEEE 802.11 Standard.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner
“Petitioner argues persuasively that the language of claim 1 does not dictate which entity actually chooses or assigns the physical channels, and instead recites what happens in the absence of physical channels. Reply 3. As noted by Petitioner, “[b]y reciting the past participle ‘assigned,’ claim 1 clearly indicates that the channels have already been assigned, and it does not matter whether the base station or the subscriber unit assigned them.” Id. Based on the context of claim 1, Patent Owner’s proposed interpretation, particularly the language suggesting that the subscriber unit selects the assigned channels as well as the language suggesting that the assigned channels are selected from a subset of available channels, is not the broadest reasonable interpretation. We must be careful not to read limitations from a particular embodiment appearing in the specification into the claim, if the claim language is broader than that embodiment. Van Geuns, 988 F.2d at 1184. Patent Owner’s reliance on the particular embodiment described in Figure 6 does not persuade us to read into the claim term “assigned physical channels” the requirement that the subscriber unit selects the assigned channels. See Dow Chem. Co. v. United States, 226 F.3d 1334, 1342 (Fed. Cir. 2000) (as a general rule, patent claims are not limited to the preferred embodiment).4 Nor are we persuaded by the passage in the Specification cited by Patent Owner, to read a requirement into the claim that the assigned channels are selected from a subset of available channels. “[D]isavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded that the Specification makes clear that claim 1 is limited to only the subscriber unit assigning the physical channels from a subset of channels. Therefore, for purposes of this Final Written Decision, we construe, in light of the Specification, the claim term “assigned physical channels” as “physical channels made available for use by the subscriber unit.”” slip op. at 12
- Prior constructionTerm construed petitioner constructionPrior construction adoptedDecided for petitioner
“2. maintain a communication session with the cellular wireless network in an absence of the plurality of assigned physical channels Claim 1 includes the limitation “maintain a communication session with the cellular wireless network in an absence of the plurality of assigned physical channels.” Ex. 1001, 11:12–14. Claim 23 includes a similar limitation. Id. at 12:41–43. In its Petition, Petitioner argues that Patent Owner’s proposed construction from the related district court proceeding, i.e., maintain a logical connection with the cellular wireless network when none of the plurality of physical channels are in use by the subscriber unit, should be adopted. Pet. 13–15. Patent Owner agrees. PO Resp. 14–16. Upon considering the district court’s claim construction order, we determine that it is consistent with the broadest reasonable interpretation of those terms in light of the ’244 patent specification. Accordingly, we adopt the district court’s construction set forth above. See Ex. 2009 at 12–14.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“disclose that the subscriber unit selects the assigned channels that will be available for use. Id. We credit the testimony of Patent Owner’s Declarant, Dr. Stark, as consistent with the understanding that the GPRS standards in existence at the time of the invention required that the network, not the subscriber unit, select the channels for use. Id. (citing Ex. 2005 ¶¶ 68). Nonetheless, having construed the claim term “plurality of assigned physical channels” to mean “plurality of physical channels made available for use by the subscriber unit,” Patent Owner’s arguments are unavailing. We are persuaded by Petitioner’s argument that “the broadest reasonable interpretation of the claims does not limit them to a narrow type of ‘assigned physical channel’ that must be assigned by a particular entity or require selection of a subset.” Reply 9. Moreover, we agree that Claim 1 does not specify which entity, e.g. the subscriber unit or the network, assigns (selects) the physical channels for use, and nothing in the claim language precludes the network from assigning the physical channels. Indeed, the limitation in question only requires that the physical channel has been assigned, i.e., made available for use by the subscriber unit. As such, Patent Owner’s arguments directed specifically to the subscriber unit itself making the selection of the physical channels, are not persuasive because this contention is not commensurate in scope with the language of claim 1. Likewise, Patent Owner’s further argument, “when the subscriber unit ‘selects’ channels for use, the selected channels are a subset of a larger group of channels,” is not persuasive because this contention is not commensurate in scope with the language of claim 1. PO Resp. 26. Nothing in the language of claim 1 requires that the channels be selected from a subset of larger group of channels. For the above reasons, Petitioner has established persuasively that Jawanda discloses the claim element of “assigned physical channels.”” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Whether a document constitutes a printed publication is a question of law based upon the underlying facts of each particular case. Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1332–33 (Fed. Cir. 2009); see also Kyocera, 545 F.3d at 1350. Patent Owner has not provided credible evidence demonstrating adequately that the draft standards were not “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (quoting Wyer, 655 F.2d at 226). Here, we credit Dr. Bims’ testimony that the GPRS Standards were available to an interested member of the public as of the date listed on the top of the specification. Ex. 1002 ¶ 121. Based on the complete record, we see no reason to revisit our determination that the GPRS Standards are a prior art printed publication, and are available as prior art. Dec. 14–17.” slip op. at 26
Patent outcomesUS 8,380,244 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,380,244 - Unverferth Manufacturing Co., Inc. v. J&M Manufacturing Co., Inc.All claims unpatentablePTAB · Aug 31, 2015 · IPR2014-00758 · APJ James T Moore · IPR · Final written decision
Claims 1–14 are unpatentable as obvious over the combination of Grieshop, Christianson, and Parker.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We have carefully considered both positions, but find Mr. Kucklick’s testimony to be more persuasive. We are not persuaded by Mr. Smith’s position that Grieshop and Christianson are “completely” or “entirely” different. Given the field of the invention, bulk handling of farm products, and the fact that each is a grain handler, we find that they are in the same field of endeavor and also logically would commend themselves to the attention of the skilled artisan at the time the invention was made. For example, Grieshop describes “[a] wagon for transporting grain and other particulate matter” (Ex. 1002, Abst.) and Christianson notes in its Background section that “grain handling equipment commonly makes use of vertically extending tubing to elevate and direct grain into a truck or grain bin.” Ex. 1003, 1:19–22. Although we do not wish to understate the engineering work required on the part of Mr. Wood, replacing the non-askewed hinge with an askewed hinge was known in the art, even if Mr. Wood was unaware of it at the time. We find that askewed hinging was known in the field of grain carts. See, e.g., Ex. 1007 (depicting a Par-Kan grain cart with an askewed hinge). We juxtapose the hinge of Figure 7 of the instant patent (rotated 90 degrees) with that of prior art Par-Kan grain cart (Ex. 1007), known as early as 2006, below.” slip op. at 21
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We have carefully considered both positions, but find Mr. Kucklick’s testimony to be more persuasive. We are not persuaded by Mr. Smith’s position that Grieshop and Christianson are “completely” or “entirely” different. Given the field of the invention, bulk handling of farm products, and the fact that each is a grain handler, we find that they are in the same field of endeavor and also logically would commend themselves to the attention of the skilled artisan at the time the invention was made.” slip op. at 21
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner
“We find Petitioner’s observation about the Grieshop patent, which expired in 2008, has some merit. It seems evident that farm equipment manufacturers will enforce their patents from time to time, so it is reasonable to conclude that the existence of the Grieshop patent could have had a chilling effect on development. See, e.g., Ex. 1016, 47:19–49:15. In particular, the following testimony is pertinent to this issue: Q. And do you remember approximately when J & M asserted the '208 Patent against these companies? A. It would be in the early '90s. Q. So shortly after the patent issued, they would have asserted the patent against these companies -- A. Correct. Q. -- is that fair to say? A. Correct. Q. And is it your understanding that these efforts to enforce the '208 patent against these competitors resulted in those competitors taking front fold single auger grain carts off the market?” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We are not persuaded that these items provide the requisite nexus to the instant claims. Although Patent Owner characterizes the hinge structure as “slightly different,” the provisional applications reference an “offset angle” for the conveyor sections. Exs. 200809. We are not provided with any persuasive explanation about how the hinge would fall within the claimed subject matter. The same is true of the advertising material. As a consequence, we find this position and evidence unpersuasive. Patent Owner’s Efforts Patent Owner turns to its efforts to develop an acceptable solution.” slip op. at 35
Patent outcomesUS 8,585,343 unpatentable§ 103 obviousnessPatents in suitUS 8,585,343 - LG Display Co., Ltd v. Innovative Display Technologies LLCAdverse judgmentPTAB · Jun 10, 2015 · IPR2014-01357 · APJ Thomas L Giannetti · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner at its request and cancelled claims 1–4, 16, and 26.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Here, Patent Owner has requested cancellation of each claim for which inter partes review has been instituted, and thus Patent Owner has no remaining claim in the trial. Id. § 42.73(b)(2). Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the claims as requested is appropriate. CONCLUSION AND ORDER Patent Owner’s request for entry of adverse judgment is granted. It is, therefore, ORDERED that adverse judgment against the Patent Owner is entered under 37 C.F.R. § 42.73(b);” slip op. at 2
NonePatents in suitUS 6,755,547 - Crocus Technology S.A. v. New York UniversityAll claims unpatentablePTAB · Mar 26, 2015 · IPR2014-00047 · APJ James B Arpin · IPR · Final written decision
Claims 2–4, 6–12, 14–20, 23–31, 34, and 35 are unpatentable under § 103; claims 1, 5, 22, and 33 are cancelled by granted motion to amend.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“Covington On July 1, 2014, Patent Owner filed a non-contingent Motion to Amend (Paper 18; “Mot. to Amend”)), requesting cancellation of independent claims 1 and 22 and dependent claims 5 and 33. Mot. to Amend 1. Petitioner did not oppose the Motion to Amend. Therefore, we grant the Motion to Amend; and, except to the extent that challenged claims depend from independent claims 1 and 22, claims 1, 5, 22, and 33 are no longer under consideration in this inter partes review. On July 1, 2014, Patent Owner also filed a Patent Owner Response (Paper 17; “PO Resp.”); and, on October 1, 2014, Petitioner filed a Reply (Paper 21; “Pet. Reply”) to the Patent Owner Response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Person of ordinary skill in the art Petitioner’s declarant proposes a definition for a person of ordinary skill in the art. Ex. 1010 ¶ 18. Patent Owner’s declarant proposes an alternative, but overlapping, definition. Ex. 2004 ¶ 24. From our review of the applied references, we conclude that Patent Owner’s declarant proposes too narrow a field of work experience for a person of ordinary skill in the 4 Patent Owner does not argue that secondary considerations are present, which would render the challenged claims patentable over the applied references. 14 art. Therefore, for purposes of this decision, a person of ordinary skill in the art is one who has a Bachelor of Science degree in physics, electrical engineering, or a related field with an additional two years of graduate level study in physics, electrical engineering, or a related field, or at least two years of experience working with or researching magnetic memory technology.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“1. “a first non-magnetic layer” and “a second non-magnetic layer” (Claims 1, 14, 22) We construe the terms “a first non-magnetic layer” and “a second non-magnetic layer” according to their ordinary and customary meanings as describing separate layers of material that are not magnetic in the recited magnetic devices, memory cells, and methods for making memory cells. The Specification of the ’469 patent states that such non-magnetic layers may be comprised of metals or insulators. Ex. 1001, col. 1 ll. 21–23; col. 4, ll. 54–56 (“For the nonmagnetic layers, materials include (but are not limited to) Cu, Cr, Au, Ag, and Al.” (emphasis added)); col. 11, ll. 40–43 (Referring to Figure 10, the nonmagnetic layer I2 may be an insulating layer made from a material such as Al2O3,). Other claims of the ’469 patent also can be valuable sources of enlightenment as to the meaning of a term of a challenged claim. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Although we did not institute inter partes review with respect to claims 13 and 32, these claims further limit the recitations of “non-magnetic layers” in claims 1 and 22 to layers “comprised of at least one member of the group consisting of Cu, Cr, Au, Ag, and Al.” See, e.g., id. at col. 13, ll. 6–8. Thus, we construe “a first non-magnetic layer” and “a second non-magnetic layer” to mean a layer that is not magnetic and that may comprise metals or insulators.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner is not relying on the modification of Redon to include an insulating layer, as taught by Slonczewski, in order to achieve the magnetic devices, memory cells, and methods for making memory cells recited in the challenged claims of the ’469 patent. Pet. Reply 9–10. Instead, Petitioner is relying on Slonczewski “for the limited teaching that a non-magnetic layer (like the first and second non-magnetic layers of Redon) would minimize the mutual magnetic interaction between any two magnetic layers (including the free magnetic layer, the read-out magnetic layer, and the pinned magnetic layer in the device of Redon).” Id. (citing Pet. 18–21, 22, 26–28, 50–51); see id. at 2–4; see also Tr. 6:4–15 (“We’re only really here to discuss one issue and I’d like to talk about that issue in reference to Claim 14 . . . , and that one issue is this fundamental concept that when a non-magnet is placed between two magnets, you minimize the mutual magnetic interaction between those two magnets.”). Petitioner makes clear that this teaching does not depend on whether the non-magnetic layer is a conductor or an insulator. Pet. Reply 4; Tr. 7:21–23. Moreover, Patent Owner does not identify any persuasive evidence in Slonczewski or elsewhere that shows that a person of ordinary skill in the art would be discouraged or diverted from applying this teaching of Slonczewski to the teaching of Redon. Pet. Reply 10; see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (If a reference discloses a different 28 solution to a similar problem, it does not teach away from the claimed subject matter unless the reference also criticizes, discredits or otherwise discourages the solution claimed.). Although Slonczewski might not use an insulating layer in its claimed transmission mode embodiments, this is not sufficient evidence that a person of ordinary skill in the art would not apply other teachings of Slonczewski to those of Redon. See PO Resp. 24–25; Pet. Reply 10–11.” slip op. at 28
Patent outcomesUS 6,980,469 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,980,469 - Motivepower, Inc. v. Cutsforth, Inc.All claims unpatentablePTAB · Oct 30, 2014 · IPR2013-00268 · APJ Trenton A Ward · IPR · Final written decision
Claims 14, 16-19, 21, and 22 are unpatentable as anticipated by Ohmstedt and Krulls ’155.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim terms also are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Also, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“limitations are not to be read into the claims from the specification”). In the Decision on Institution, we interpreted the term “‘mounting block’” of the ’906 patent to mean “‘a base for affixing to another structure.’” Dec. 7–8. We do not modify the construction of “mounting block” in this decision. Regarding” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner disagrees and argues that Patent Owner is attempting to improperly narrow the term “beam.” Furthermore, Petitioner argues that the term “beam” should be given its plain and ordinary meaning of an “elongated support structure.” Pet. Reply 8. Petitioner further argues that the portions of the Specification quoted by Patent Owner do not require “rigid” materials because the Specification expressly states that, although in “some embodiments” stainless steel can be used for the beam, “other materials, including other metals, non metals, plastics and/or composites may also be used.” Pet. Reply 5–6 (citing Ex. 1001, 5:4–11) (emphasis added). Therefore, we are not persuaded by Patent Owner to read a limitation recited in the Specification for “some embodiments” into all embodiments encompassed by the claims. Ex. 1001, 5:4–11. As to the Patent Owner’s proposal that the term “beam” includes a requirement that it be “long” and “straight,” Patent Owner fails to cite to any disclosure in the Specification of the ’906 patent that any embodiments of the “beam,” much less all embodiments, must be long and straight. Furthermore, Patent Owner provides neither an indication of what constitutes a sufficiently straight or sufficiently long beam nor any citations to disclosure in the ’906 patent or other materials defining those limitations. For example, because beam 14 in the ’906 patent Specification is not “straight” in all directions, we presume that Patent Owner does not propose that the “beam” be “straight” in all directions, but the Patent Owner Response fails to identify which axis of the “beam” is to be “straight.” In view of the foregoing, we construe the term “beam” of the ’906 patent to mean “an elongated support structure.”” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We are not persuaded by Patent Owner’s argument. As construed above, the claimed “brush catch” can be provided as an integral sub-component of the “beam.” As shown in Figure 1 of Ohmstedt above, outwardly extending portions 23 and teeth 25 are sub-components of biased legs 21 provided at the bottom of biased legs 21. Ex. 1003, Fig. 1. Accordingly, we determine that the cited Ohmstedt disclosures meet the limitations of a “beam” and a “brush catch.” Second, Patent Owner argues that Ohmstedt does not disclose a “beam,” as recited in claim 14. PO Resp. 23. Specifically, Patent Owner argues that neither brush holder 11 nor inwardly biased legs 21 of Ohmstedt are “long, straight structural members designed to be rigid.” PO Resp. 23. We are not persuaded by Patent Owner’s argument. As discussed above, we do not adopt Patent Owner’s proposed construction of “beam” to mean “a long, straight structural member designed to be rigid.” We construe “beam” to mean an “elongated support structure,” and Patent Owner does not dispute that brush holder 11, disclosed in Ohmstedt, provides an “elongated support structure.” Accordingly, we are persuaded that Ohmstedt’s brush holder 11, identified by Petitioner in its challenge for the beam (Pet. 14), discloses this “beam” limitation.” slip op. at 12
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“On February 18, 2014, the Board granted the Motion to Amend the claims filed by Cutsforth, Inc., Patent Owner, in which Patent Owner requested cancellation of claims 1, 2, 4, 5, and 10–13. Accordingly, Petitioner’s challenges to these claims were rendered moot.” slip op. at 2
Patent outcomesUS 7,141,906 unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,141,906 - Motivepower, Inc. v. Cutsforth, Inc.All claims unpatentablePTAB · Oct 30, 2014 · IPR2013-00272 · APJ Miriam L Quinn · IPR · Final written decision
Claims 1–5 and 7–15 are unpatentable as anticipated by Kartman; the Board did not reach the other instituted grounds.
RulingsFinal written decision- BurdenFwd mixedUnpatentable
“B. Patentability of Claims To prevail in its challenges to the patentability of claims, the Petitioner must establish facts supporting its challenges by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is anticipated, and, thus, unpatentable, if a single prior art reference discloses each and every element of the claimed invention. See Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“’014 patent as depicting that lower mounting block 16, i.e., the “mounting block,” is fixed in place to mount base 41 via bolts 43. Id. at 7. Patent Owner further points to descriptions of various embodiments of the attachment of the “mounting block” to a base or to a location. Id. at 8. Neither Figure 15B nor the statements in the specification identified by Patent Owner require the non-moveable, or “fixed,” aspect. Figure 15B does not show that the attachment excludes any ability to adjust the block. Indeed, the bottom surface of the mount is not depicted in Figure 15B, leaving us to speculate concerning the shape of mount holes 96 in that embodiment, because a round hole would suggest there is no adjustability, while a slotted or elongated hole would suggest adjustability. But see Ex. 1001, Fig. 9 (not cited by Petitioner, and confirming that elongated holes 96 are contemplated). The lack of description and depiction of the shape of the holes compels us to reject Patent Owner’s characterization of Figure 15B as supporting a “fixed” or non-moveable attachment. Furthermore, as for the descriptions of how the mount is attached, the specification uses the word “secure” and describes various embodiments of the attachment, none of which requires non-movability of the mount after the brush holder component is installed. See Ex. 1001, col. 16, ll. 2831 (bolts and washers “secure the lower mount block 16 to a mount base” (emphasis added)); col. 14, ll. 6264 (“mount holes 96 may include threading or other elements that allow for attachment to a mount base”); col. 16, ll. 3234 (“in other embodiments, a welded, keyed, pinned or other attachment scheme may be used to secure the lower mount block 16 to a mount base” (emphasis added)). In fact, the specification makes a point of not limiting the attachment of the mount to any particular method, fixed or not fixed. See id. at col. 12, ll. 4447 (“or other attachment scheme may be used to secure the lower mount block 16 to a mount base near a moving conductive surface or in position to move relative to a conductive surface”). Nor does the language of the claim recite any method of attachment that limits the mounting block to something that cannot be adjusted, shifted, re-positioned, or otherwise moved, after attachment to the base.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“a. Independent Claim 1 Concerning independent claim 1, Petitioner has shown that Kartman discloses a stationary mounting surface 14 (corresponding to the recited “stationary base”), a detachable connecting means 42 (corresponding to the “elongate mounting block”), the brush holder 31 (corresponding to the “brush holder component”), the rear channel 48 (corresponding to the “channel”), the cap screws 47 (corresponding to the “fastener”); and brush holder 38 (corresponding to the “brush box”). Pet. 911. Petitioner has further shown that Kartman’s brush holder 31 is “detachably connected mechanically and electrically to the mounting surface 14 of the support cross beam 13,” and that rear channel 48 at the rear end of the brush box slideably receives clamp bar 46. Id. at 10. Clamp screws 47 pass into threaded apertures 51 in clamp bar 46. Id. Therefore, Kartman discloses a brush holder 31 (“brush holder component”) for removably mounting to clamp bar 46 of detachable connecting means 42 (“mounting block”) because the brush holder attaches to clamp bar 46 of detachable connecting means 42 in a non-permanent manner. Patent Owner challenges Petitioner’s evidence of anticipation by Kartman, arguing that Kartman does not disclose the “mounting block,” “removably mounting,” and “fastener” limitations. PO Resp. 1826. Patent Owner’s arguments rely on claim construction positions we did not adopt, and, therefore, the arguments are unpersuasive. i. Mounting Block Limitation Specifically, with regard to the “mounting block,” Patent Owner argues that because Kartman employs a clamping mechanism, clamp bar 46 is inherently moveable. PO Resp. 1819. But we have determined that “mounting block,” based on the plain and the ordinary meaning of the term, does not mean that the block must be fixed or non-moveable. See Section II.C.1, supra. Accordingly, this argument is not persuasive. Instead, we find that Kartman discloses a “mounting block” because clamp” slip op. at 19
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“We granted Patent Owner’s motion requesting cancellation of claims 6 and 16 of the ’014 patent. Paper 13, Order on Mot. to Amend.” slip op. at 2
Patent outcomesUS 8,179,014 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 8,179,014 - Google, Inc v. Inventor Holdings, LLCAdverse judgmentPTAB · Sep 12, 2014 · CBM2014-00003 · APJ Miriam L Quinn · CBM · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment of unpatentability against claims 1-4, 9-11, 19, 24, 27, 28, 31, 32, and 65 based on Patent Owner’s concession.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“in this proceeding under 37 C.F.R. § 42.73(b). Paper 33, “Req.”. Under section 42.73(b)(3), concession of unpatentability of the contested subject matter is construed as an adverse judgment. In its Request, Patent Owner concedes the unpatentability of and requests adverse judgment regarding claims 14, 911, 19, 24, 27, 28, 31, 32, and 65 of U.S. Patent No. 5,844,272. Req. 2. The conceded unpatentability addresses all the claims subject to this proceeding. Therefore, no other patent claims remain for trial in this covered business method review. Accordingly, it is hereby ORDERED that Patent Owner’s Request for Adverse Judgment under 37 C.F.R. § 42.73(b)(3) is hereby granted; and FURTHER ORDERED that a judgment of unpatentability is entered against claims 14, 911, 19, 24, 27, 28, 31, 32, and 65 of the U.S. Patent No. 5,884,272.” slip op. at 2
NonePatents in suitUS 5,884,272
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.