• Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.No claims unpatentable
  PTAB · Feb 1, 2018 · IPR2016-01440 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 2, 4–20, and 28–42 were not shown unpatentable because Myers did not establish axial translation, and Myers with Bostock did not cure that deficiency.

  RulingsFinal written decision

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

    “radially” in the Petition. In its Reply, Petitioner equates “radially” to “outwardly” and “axially” to “downwardly.” Pet. Reply 7. Patent Owner contends that “axially and radially” would have been understood by a person of ordinary skill in the art “to refer to movement relative the body and oriented relative to the axis of the body.” PO Resp. 19 (citing Ex. 2018 ¶ 82). In particular, Patent Owner contends that “axial” refers to “movement along or parallel to the axis of the body, and that “radial” refers to “the direction perpendicular to the axis of the body.” PO Resp. 20. Patent Owner contends its interpretation is consistent with the Specification of the ’099 patent and is supported by both its expert, Mr. Underwood, and Petitioner’s expert, Mr. Shale. Id. at 18–21 (citations omitted). For example, Mr. Shale testified that “‘[r]adially’ basically means left to right within the tubular body,” and “‘axially’ means up and down within the tubular body.” Ex. 2021, 189:5–7. Patent Owner further notes that Figures 4, 5, 11, and 12 of the ’099 patent illustrate arms 520 moving axially and radially relative to body 510. PO Resp. 20. In its Reply, Petitioner argues that “[c]ontrary to Patent Owner’s assertion, claim 1 of the ’099 [p]atent does not require that the body 10 be the frame of reference for the axial and radial movement.” Pet. Reply 13 n.3. Petitioner, however, cites no persuasive evidence to counter Patent Owner’s proposed construction. Contrary to Petitioner’s assertion, Mr. Shale agreed that “radially” corresponds to “outward from the body,” and that “axially” corresponds to “up and down of the body.” Ex. 2021 190:4–19. Consistent with Mr. Shale’s testimony, Petitioner’s analysis purports to show that Myers discloses movement of moveable arms (slips 30) “both axially and radially relative to the body 10 [of Myers].” Pet. 19– 20. Petitioner is not alleging movement of the slips of Myers relative to a feature other than the body of Myers or in some other frame of reference. See Tr. 10:1–21. Thus, based on the evidence discussed above, we determine “translates axially and radially,” as recited in claim 1, means “moves parallel to and perpendicular to the body” and does not encompass movement consisting of only rotation about a pivot point. slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “The steps discussed above address how slips 30 of Myers are deployed, but do not explain expressly whether slips 30 move axially relative to body 10 during deployment. With regard to the slips, Myers further provides that: [Slips 30] are positively movable laterally relative to the expander upon relative longitudinal movement between the expander and slips by inclined spline connections between the slips and expander, provided by oppositely directed side tongues 32 on each slip sliding in companion grooves 33 in the expander on opposite sides of slots 34 in the expander in which the slips are disposed. The lower ends of the slips 30 are coupled for movement longitudinally with one another by being connected to a slip ring 35 having generally T-shaped slots 36 therein receiving companion T-shaped heads 37 on the lower portions of the slips. Thus, the slips 30 move longitudinally jointly with the slip ring 35, although they are still permitted to move radially or laterally inwardly and outwardly of the slip ring, upon relative longitudinal movement between the slips 30 and expander 26. Ex. 1004, 3:2–17. In this passage, the movement of the slips includes “longitudinal movement,” which we understand generally corresponds to a vertical direction, as opposed to lateral movement in a horizontal direction. However, the movement is described relative to expander 26, not relative to body 10. See Pet. 13 (using “lateral” consistent with the horizontal extent and “longitudinal” consistent with the vertical extent). Thus, this passage also does not explain expressly whether slips 30 move axially relative to the body during deployment.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “C. ASSERTED OBVIOUSNESS OVER MYERS AND BOSTOCK Petitioner contends claims 4, 33, and 34, each of which depends from claim 1, would have been obvious over Myers and Bostock. Pet. 24–26. According to Petitioner, “[e]ach of claims 4, 33, and 34 recites biasing either a sleeve or a movable arm to a collapsed position.” Id. at 24. Petitioner relies on Bostock as disclosing a spring for biasing. Id. As to the limitations of claim 1 from which claims 4, 33, and 34 depend, including the requirement of “one moveable arm translates axially and radially,” Petitioner relies only on the contentions it set forth under its anticipation analysis with respect to claim 1. Because Petitioner does not rely on Bostock to teach the recited feature “one moveable arm translates axially and radially,” does not argue the feature would have been obvious over the combination, and, for the reasons provided above, has not shown by a preponderance of the evidence that Myers teaches the feature, Petitioner has not shown by a preponderance of the evidence that claims 4, 33, and 34 of the ’099 patent would have been obvious over Myers and Bostock.” slip op. at 25

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Mr. Shale expresses the opinion that “slips 30 move both axially and radially relative to the body 10, along ‘generally T-shaped slots 36’ that are linear and angled relative to the axial direction,” we find that testimony to be conclusory and entitled to little weight, in part because this testimony does not account for the upward movement of setting sleeve 40. See Ex. 1010 ¶ 53 (quoting Ex. 1004, 3:11); see also In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Accordingly, we find Mr. Shale’s declaration fails to provide persuasive support for Petitioner’s contention that Myers discloses “one moveable arm translates axially and radially,” as required by claim 1, beyond what Myers, itself, discloses. We find more persuasive Mr. Underwood’s testimony, on behalf of Patent Owner, that Myers fails to disclose axial movement of slips 30. Ex. 2018 ¶¶ 90–107. According to Mr. Underwood: slots [36 of Myers] are shown as angled relative to the slip ring 35. However, though the slips may move downward (axially) relative to the slip ring 35 as the slips move outward (radially), the slip ring 35 at the same time moves upward (axially) relative to the body. As such, the angle of the slots 36 within the slip ring 35 is not, itself, indicative of the overall movement of the slips. Id. ¶ 91. Mr. Underwood further reasons that “as the slip ring moves upwardly, the movement of the slips relative to the body in the axial direction is zero due to the slips sliding downward in the slots 36 relative to the slip ring 35 in equal proportion.” Id. ¶ 94. Mr. Underwood also” slip op. at 20

  Patent outcomesUS 7,314,099 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 7,314,099
• Henny Penny Corporation v. Frymaster L.L.C.No claims unpatentable
  PTAB · Dec 21, 2017 · IPR2016-01435 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–3, 5–12, and 17–21, 23 were not proven unpatentable over Kauffman and Iwaguchi, with Howard for claims 18 and 20, because the motivation to combine was insufficiently shown.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art at the time of the invention would have been a “Bachelors of Science degree in Biosystems & Agricultural Engineering (or equivalent) or other Engineering major with a minor in Food Science and Technology and have had one or more years’ experience in the field of research and development of foods.” Pet. 7 (citing Ex. 1011 ¶ 74). Patent Owner does not propose an explicit level of ordinary skill in the art in its Response. Dr. Keener, however, expressly adopts Petitioner’s proposed level of skill in the art. Ex. 2032 ¶ 63. Consistent with the level of ordinary skill in the art 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), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 13

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

    “means for re-circulating” In the Institution Decision, we preliminarily construed the claim term “means for re-circulating” as a means-plus-function limitation, invoking 35 U.S.C. § 112, ¶ 6. Id. at 17–18. We construed the function as “re-circulating said cooking oil” and identified the corresponding structure as “a pump and structural equivalents thereof.” Id. at 18–19. Neither party contests our construction of the term, and we maintain that construction here for the same reasons. slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “We agree with Patent Owner that we need not expressly construe the term “adapter.” We reiterate the following from our Institution Decision: The term “adapter” appears in each claim of the ’691 patent. Neither party contends that the specification or prosecution history contains a lexicographic definition of the term, and neither party asserts that the specification or prosecution history contains a disclaimer of any portion of the plain and ordinary meaning of the term. From our review of the record, the structure and location of the adapter recited in the claims is provided by other claim language describing that (1) the adapter is located external to the fryer, (2) the sensor is disposed in the adapter, (3) the adapter is installed between two portions of the return pipe or drain pipe, and (4) the adapter has two opposite ends wherein one of the two ends is connected to one of the two portions of either the return pipe or the drain pipe and the other end is connected to the other portion of pipe.3 Inst. Dec. 9–10. In light of the above discussion, and because the focus of the parties’ dispute is not on the meaning of the term “adapter,” we decline to expressly construe the term further.” slip op. at 8

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Differences Between the Prior Art and the Claims; Motivation to Modify We instituted Petitioner’s challenge of these claims, and those that depend therefrom, based on Petitioner’s position that Kauffman disclosed most of the elements of the independent claims with the exception of a sensor capable of measuring an electrical property that is indicative of total polar materials. See, e.g., Inst. Dec. 31. Thus, the theory of obviousness, as discussed above, relies upon substituting Iwaguchi’s sensor for Kauffman’s analyzer. See id. at 31 (“Petitioner provides a second argument that relies upon a modification to Kauffman’s system, in which Iwaguchi’s sensor is employed instead of Kauffman’s analyzer. Because Petitioner provides adequate support for this second position, we address Patent Owner’s arguments based on this proposed combination.”). Petitioner confirmed at the oral argument that its Petition proposed a theory in which Iwaguchi’s sensor is simply swapped for that of Kauffman’s and did not present a more general theory as to modifying Kauffman’s sensor per the teachings of Iwaguchi: JUDGE WEINSCHENK: Did you include both of those alternative theories in your petition or is that something that you’re – you’ve come up with now in the reply? MR. VAIDYA: It’s something that we -- again, in the reply, we wanted to make it very clear that we aren’t going on a 102 basis and we are -- and what -- I think what -- we did have that alternate in the reply, so the alternate -- and I can point to paragraphs if that helps. And so, the idea is again primarily we’re going with the idea of swapping sensors, but that it would be possible to modify the sensor in Kauffman. JUDGE GERSTENBLITH: Because in the petition, it was a swap of the sensors. MR. VAIDYA: That’s right. JUDGE GERSTENBLITH: And that’s what we instituted -- MR. VAIDYA: That’s correct. JUDGE GERSTENBLITH: -- based on. MR. VAIDYA: That’s correct. Tr. 13:21–14:12. We disregard Petitioner’s alternative position as it was an attempt to raise a new theory of unpatentability improperly for the first time in the Reply. See 37 C.F.R. § 42.23(b) (“All arguments for the relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.”).” slip op. at 16

  Patent outcomesUS 8,497,691 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,497,691
• Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.No claims unpatentable
  PTAB · Mar 7, 2017 · IPR2015-01833 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 4, 22, 23, 100, 113–116, 118, 119, 309–312, 314, 315, and 319 were not proven unpatentable because the asserted combinations did not establish the claimed bias signal.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “ordinary meaning of “bias signal” is “a signal having a steady predetermined level.” Resp. 24; Reply 6. The parties also agree that at least some information signals may be considered “bias signals.” The crux of the parties’ disagreement is which type of information signal. The ’940 patent defines “information signal” as “[t]he signal that contains the information that is to be transmitted. As used herein, it refers to the original baseband signal at the source.” Ex. 1001, 8:48–50 (emphasis added). Thus, the ’940 patent clearly defines “information signal” as “the original baseband signal at the source.” The ’940 patent defines “baseband signal” as: Any generic information signal desired for transmission and/or reception. As used herein, it refers to both the information signal that is generated at a source prior to any transmission (also referred to as the modulating baseband signal), and to the signal that is to be used by the recipient after transmission (also referred to as the demodulated baseband signal). Ex. 1001, 7:41–47. The ’940 patent clearly gives a broad meaning to “baseband signal” such that it encompasses any signal desired for transmission and/or reception, but the definition of “information signal,” as quoted above, does not refer to any baseband signal. Rather, it refers to “the original baseband signal at the source.” Ex. 1001, 8:48–54. By including the terms “original” and “at the source,” the meaning of information signal, as defined by the ’940 patent, is more limited than the definition of a baseband signal. Thus, Petitioner’s contention that the meaning of “information signal,” and, hence, “bias signal” should be expanded to include any “baseband signal” (Reply 4) improperly takes “information signal” out of context. Petitioner’s contention eliminates the terms “original” and “at the source” from the ’940 patent’s definition of “information signal,” without providing any reason why those terms should not be considered. Accordingly, we agree with Patent Owner and construe “bias signal” to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.”” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “C. “to gate,” “desired harmonics,” and “pulse shaping module” Patent Owner asserts that we need not construe any of these terms because they “are not material to this IPR and should not be addressed or decided by the Board.” Resp. 31. Petitioner does not discuss the constructions of these terms in its Reply. See generally Reply. Based on the arguments before us, construing these terms does not appear to resolve a controversy between the parties. Accordingly, we agree with Patent Owner that we need not construe expressly any of these terms for purposes of this Decision” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3. Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 9 (citing Ex. 1002 ¶¶ 24–32). Petitioner’s argument is supported by Dr. Larson’s testimony. Ex. 1002 ¶¶ 24–32. Patent Owner does not contest Petitioner’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 17

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petitioner’s argument in its Reply is based on its incorrect claim construction of “bias signal” as encompassing any information signal. See, e.g., Reply 6–7 (asserting that the “bias signal” is met by Dobrovolny’s disclosure because it teaches “an information carrying High Level RF Source for reception”) (citing Ex. 1023, 1:14–17; Ex. 1002 ¶ 160). As explained above, “bias signal” is understood to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.” See supra Section II.A. Petitioner does not argue, and has not established, that Dobrovolny’s RF Source signal is either at a steady, predetermined level or is the original baseband signal at the source. Thus, Petitioner has not shown that Dobrovolny discloses the “bias signal” limitations recited in claims 4 and 22, and the claims that depend from each.6 Accordingly, Petitioner has not shown, by a preponderance of the evidence, that the combination of Dobrovolny and Maas would have rendered the subject matter of claims 4, 22, 113–116, 119, 309–312, 315, and 319 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19

  Patent outcomesUS 6,091,940 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,091,940
• Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.No claims unpatentable
  PTAB · Mar 7, 2017 · IPR2015-01834 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 21, 25, 26, 281, 283–286, 288, 289, 293, 363–366, 368, 369, and 373 were not proven unpatentable because the asserted obviousness combinations did not establish the claimed bias or reference signal.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “information signals may be considered “bias signals” and “reference signals.” The crux of the parties’ disagreement is which type of information signal. The ’940 patent defines “information signal” as “[t]he signal that contains the information that is to be transmitted. As used herein, it refers to the original baseband signal at the source.” Ex. 1001, 8:48–50 (emphasis added). Thus, the ’940 patent clearly defines “information signal” as “the original baseband signal at the source.” The ’940 patent defines “baseband signal” as: Any generic information signal desired for transmission and/or reception. As used herein, it refers to both the information signal that is generated at a source prior to any transmission (also referred to as the modulating baseband signal), and to the signal that is to be used by the recipient after transmission (also referred to as the demodulated baseband signal). Ex. 1001, 7:41–47. The ’940 patent clearly gives a broad meaning to “baseband signal” such that it encompasses any signal desired for transmission and/or reception, but the definition of “information signal,” as quoted above, does not refer to any baseband signal. Rather, it refers to “the original baseband signal at the source.” Ex. 1001, 8:48–54. By including the terms “original” and “at the source,” the meaning of information signal, as defined by the ’940 patent, is more limited than the definition of a baseband signal. Thus, Petitioner’s contention that the meaning of “information signal,” and, hence, “bias signal” should be expanded to include any “baseband signal” (Reply 4) improperly takes “information signal” out of context. Petitioner’s contention eliminates the terms “original” and “at the source” from the ’940 patent’s definition of “information signal,” without providing any reason why those terms should not be considered. Accordingly, we agree with Patent Owner and construe “bias signal” to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source”; and we construe “reference signal” to mean “the original baseband signal at the source.”6” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “decided by the Board.” Resp. 31. Petitioner does not discuss the constructions of these terms in its Reply. See generally Reply. Based on the arguments before us, construing these terms does not appear to resolve a controversy between the parties. Accordingly, we agree with Patent Owner that we need not construe expressly any of these terms for purposes of this Decision.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “4. Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 10 (citing Ex. 1002 ¶¶ 24–29). Petitioner’s argument is supported by Dr. Larson’s testimony. Ex. 1002 ¶¶ 24–29. Patent Owner does not contest Petitioner’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petitioner’s argument in its Reply is based on its incorrect claim construction of “bias signal” as encompassing any information signal. See, e.g., Reply 7 (asserting that the “bias signal” is met by Dobrovolny’s disclosure because it teaches “an information carrying High Level RF Source for reception”) (citing Ex. 1023, 1:14–17; Ex. 1002 ¶¶ 154, 210). As explained above, “bias signal” is understood to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.” See supra Section II.A. Petitioner does not argue, and has not established, that Dobrovolny’s RF Source signal is either at a steady, predetermined level or is the original baseband signal at the source. Thus, Petitioner has not shown that Dobrovolny discloses the “bias signal” recited in claim 21 and the claims that depend therefrom, or the “reference signal” recited in claim 25 and the claims that depend therefrom.8 8 Petitioner does not rely upon Maas or Nardozza as disclosing a “bias signal” or “reference signal.” See Pet. 37–38 (relying only on Dobrovolny), 52–53 (same). Accordingly, Petitioner has not shown, by a preponderance of the evidence, that the combination of Dobrovolny, Maas, and Nardozza would have rendered the subject matter of claims 21, 25, 26, 281, 283–286, 289, 293, 363–366, 369, and 373 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 20

  Patent outcomesUS 6,091,940 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,091,940
• Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.No claims unpatentable
  PTAB · Mar 7, 2017 · IPR2015-01832 · APJ Bart A Gerstenblith · IPR · Final written decision

  The Board found claims 1, 18, 81–84, 86, 88–91, 93, 94, 251–254, 256, 258–261, 263, and 264 not proven unpatentable under either asserted obviousness ground.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “ordinary meaning of “bias signal” is “a signal having a steady predetermined level.” Resp. 28; Reply 6–7. The parties also agree that at least some information signals may be considered “bias signals.” The crux of the parties’ disagreement is which type of information signal. The ’940 patent defines “information signal” as “[t]he signal that contains the information that is to be transmitted. As used herein, it refers to the original baseband signal at the source.” Ex. 1001, 8:48–50 (emphasis added). Thus, the ’940 patent clearly defines “information signal” as “the original baseband signal at the source.” The ’940 patent defines “baseband signal” as: Any generic information signal desired for transmission and/or reception. As used herein, it refers to both the information signal that is generated at a source prior to any transmission (also referred to as the modulating baseband signal), and to the signal that is to be used by the recipient after transmission (also referred to as the demodulated baseband signal). Ex. 1001, 7:41–47. The ’940 patent clearly gives a broad meaning to “baseband signal” such that it encompasses any signal desired for transmission and/or reception, but the definition of “information signal,” as quoted above, does not refer to any baseband signal. Rather, it refers to “the original baseband signal at the source.” Ex. 1001, 8:48–54. By including the terms “original” and “at the source,” the meaning of information signal, as defined by the ’940 patent, is more limited than the definition of a baseband signal. Thus, Petitioner’s contention that the meaning of “information signal,” and, hence, “bias signal” should be expanded to include any “baseband signal” (Reply 4) improperly takes “information signal” out of context. Petitioner’s contention eliminates the terms “original” and “at the source” from the ’940 patent’s definition of “information signal,” without providing any reason why those terms should not be considered. Accordingly, we agree with Patent Owner and construe “bias signal” to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.”” slip op. at 11

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

    “Further, Patent Owner explains that “[t]he parties agree on the portion of the ‘to gate’ construction that is material to this IPR, i.e., that ‘to gate,’ the switch module must change between connecting and disconnecting the bias signal from the switch module’s output.” Id. at 37 (citing Pet. 13–14). Patent Owner’s proposed construction is consistent with the construction proposed by Petitioner. See Dec. 11 (discussing Petitioner’s construction of “to gate [a signal]” as “to change . . . between (i) connecting a signal at an input to an output such that the input and output have an equal voltage, and (ii) disconnecting the signal from the output” (quoting Pet. 14)). In light of the consistency between the proposed constructions, and in light of the lack of an actual controversy between the parties with respect to the impact of the minor differences in the proposed meanings of this term, we need not construe expressly the term further.4 Petitioner’s Reply does not challenge Patent Owner’s arguments regarding these claim terms. Accordingly, we adopt the construction of “switch module,” as reproduced above, for the reasons explained in our Decision to Institute. See Dec. 8–11. Additionally, we decline to construe expressly the terms “summer” and “to gate,” for the reasons discussed above.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3. Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 11 (citing Ex. 1002 ¶¶ 24–29). Petitioner’s argument is supported by Dr. Larson’s testimony. Ex. 1002 ¶¶ 24–29. Patent Owner does not contest Petitioner’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “High Level Radio Frequency (“RF”) Source 10. The RF signal contains the information that television watchers see and hear.” Pet. 29 (citing Ex. 1023, 1:14–17). Petitioner asserts that Dobrovolny’s “RF Source signals are information signals that constitute ‘bias signals’ as that term is defined by the ‘940 patent.” Id. (citing Ex. 1002 ¶¶ 154, 210). Petitioner’s position is based on its claim construction of “bias signals” as “encompassing information signals.” Id. Notably, in the Petition,5 Petitioner does not assert that the recited “bias signal[s]” would have been obvious to one of ordinary skill in the art in light of Dobrovolny’s RF Source signals; rather, Petitioner’s position is that “bias signal[s]” are disclosed expressly. See id. (“RF Source signals . . . constitute ‘bias signals’”) (emphasis added).6 Patent Owner’s primary argument is as follows: [E]ven accepting [Petitioner’s] assertion that the ’940 patent expanded the ordinary meaning of ‘bias signal’ to include ‘information signal’ as defined in the patent . . . . [Petitioner] does not even allege, much less prove, that the purported ‘bias signal’—Dobrovolny’s high frequency Radio Frequency (RF) television signal—meets either of these definitions. Resp. 38–39. Patent Owner reiterates that Petitioner’s “only attempt to prove that the Dobrovolny RF television signal satisfies the claimed first and second bias signals is its assertion that Dobrovolny’s ‘RF signal contains the information that television watchers see and hear.’” Id. at 39 (quoting 5 As discussed infra, see Section III.C., Petitioner’s additional argument that bias signals would have been obvious in light of Dobrovolny’s RF Source signals constitutes a new argument, set forth only in Petitioner’s Reply, and we do not consider it here for the reasons explained below. 6 With respect to independent claim 18, Petitioner relies upon its arguments directed to the similar claim limitations of claim 1. See Pet. 44–45 (referring to Petitioner’s arguments directed to claim 1). Pet. 29). Patent Owner contends, however, that “an ‘information signal’ is not just any signal containing information . . . as [Petitioner’s] argument implicitly presumes. Rather, as defined in the ’940 patent, an information signal is restricted to ‘the original baseband signal at the source.’” Id. (quoting Ex. 1001, 8:48–54). Petitioner’s argument in its Reply is based on its incorrect claim construction of “bias signal” as encompassing any information signal. See, e.g., Reply 7 (asserting that the “bias signal” is met by Dobrovolny’s disclosure because it teaches “an information carrying High Level RF Source for reception”) (citing Ex. 1023, 1:14–17; Ex. 1002 ¶¶ 154, 210). As explained above, “bias signal” is understood to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.” See supra Section II.A. Petitioner does not argue, and has not established, that Dobrovolny’s RF Source signal is either at a steady, predetermined level or is the original baseband signal at the source. Thus, Petitioner has not shown that Dobrovolny discloses the “bias signal” limitations recited in claims 1 and 18, and the claims that depend from each.7 Accordingly, Petitioner has not shown, by a preponderance of the” slip op. at 19

  Patent outcomesUS 6,091,940 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,091,940
• World Bottling Cap, LLC v. Crown Packaging Technology, Inc.No claims unpatentable
  PTAB · Jan 19, 2017 · IPR2015-01651 · APJ William V Saindon · IPR · Final written decision

  Petitioner did not prove claims 1–20 unpatentable: secondary considerations outweighed the obviousness evidence, and the Frishman ground also failed to show the claimed liner beads in claims 11 and 16.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “requires the stretching of one of its grooves, and asserts a person of ordinary skill in the art would avoid using Wagner’s cap with a harder steel because it would be more difficult to stretch the grooves because of the harder steel. PO Resp. 49 (citing Ex. 2004 ¶ 41). We credit the testimony of Patent Owner’s declarant, Dr. Kontsos, on this point, as evidence tending to suggest that a person of ordinary skill in the art, who is familiar with materials science and metal packaging (Pet. 17; PO Resp. 56), would understand that using “harder steel would interfere with the flattening operation” of Wagner. Petitioner argues that we should not credit Dr. Kontsos’s testimony (Pet. Reply 9–11), but we find he is sufficiently “qualified in the pertinent art” to testify as to this point because he has an education in materials science and experience in understanding the yielding and plastic deformation of materials. Ex. 2004 ¶¶ 3–5; Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding admission of the testimony of an expert who admittedly lacked expertise in the design of the patented invention, but had experience with materials selected for use in the invention); Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x. 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art).” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “We do not consider the evidence to teach away or render the proposed combination inoperable, however, because we do not have sufficient evidence that the effect would be so great as to preclude a person of ordinary skill in the art from considering or making the combination. In other words, we have evidence of a deleterious effect, but Patent Owner has not provided evidence as to the magnitude of that deleterious effect. The mere presence of a contraindicating factor does not preclude a combination. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”); Winner Intern. Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Given the particular facts at hand, without further evidence as to the magnitude of the effect, or evidence explaining how the level of ordinary skill in the art is not high enough to overcome it, we do not consider the proposed combination to be taught away from or inoperable. Accordingly, we more simply consider this evidence as suggesting that a person of ordinary skill in the art would understand that the use of harder steel for crown caps would come with certain disadvantages. This is not dispositive of the obviousness inquiry, because notwithstanding the evidence tending to suggest that a person of ordinary skill in the art would understand that tinplate steel harder than 62 might interfere with the flattening of Wagner’s cap, Petitioner has provided roughly equal or better evidence tending to suggest that a person of ordinary skill in the art would have selected steel having an average hardness of at least 62.5, because Industrial Heating directly suggests doing so, and several other references suggest similarly. We now turn to the evidence of secondary considerations to determine if or how they contribute to the balancing of evidence.” slip op. at 16

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “(1) Nexus Patent Owner’s evidence of nexus shows that the claimed invention reads on the product sold, and that the claimed invention is not a subcomponent of, but rather the entirety of, the product sold. Ex. 2005 ¶¶ 39–41; see also Exs. 2010–2015 (describing the PPP cap as having the claimed features of a groove and/or harder steel); WBIP, LLC v. Kohler Co., 829 F.3d 1317 (Fed. Cir. 2016) (“[T]here is a presumption of nexus . . . when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘is the invention disclosed and claimed.’”); Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988) (presumption does not apply if the claimed invention is merely a subcomponent of the product). Although the hardness of the steel in the product sold is much higher than the lower end of the claimed range,15 based on the evidence before us we consider this a maximization of the benefits of PPP’s innovation in its commercial embodiment (i.e., using the thinnest, hardest steel for the most cost savings), rather than evidence that the secondary considerations only apply to a small portion of the claims. Further, although some of the evidence of secondary considerations is drawn to the thinness of the steel rather than its hardness (e.g., Exs. 2013, 2014), based on the record before us, the thinness of the steel is only allowed because it is harder. See, e.g., Ex. 2005 ¶¶ 15–16 (Mr. Merino testifying that “the crown-cap industry has focused on light-weighting – that is, reducing the thickness of the steel used . . . and offsetting for the reduced thickness by using harder steel”). That is, the purpose of using harder steel is so that a manufacturer can use less of it per cap, to reap the benefits of using less raw material. In conclusion, Patent Owner’s evidence regarding nexus indicates that there will be a strong correlation between any evidence in this case highlighting the merits of the commercial PPP crown cap and the merits of the claimed invention. In other words, we will consider evidence of the success and praise of the new PPP crown cap as direct evidence of the 15 The evidence before us indicates that PPP used caps having an average hardness of about 76. Ex. 2005 ¶ 40; Ex. 2011 (specifying DR9CA steel); Ex. 2012 (same). Claim 1 requires a minimum average hardness of greater than 62; claims 5–8 walk that minimum up to 65, 68, 71, and 73, respectively.” slip op. at 17

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner

    “claimed invention, was introduced in 2009. Id. ¶ 45. The table shows how sales of the new low-gauge (“LG”) cap displaced sales of the standard (“STD”) cap from 2010–2015. In and of itself, this displacement pattern does not show success—it shows a typical obsolescence curve as one version of a product replaces another. If this were enough to show success, then virtually every product generation would instantly be successful, even if sales or market share remained flat overall.16 What is persuasive here is that PPP’s market share grew during this replacement period, by about 7%— from 88.7% of the market to 95.5% of the market. This allows us to infer that the increase in market share is because of the merits of the new product, even if we cannot infer that the displacement was because of the merits of the new product.” slip op. at 19

  Patent outcomesUS 8,550,271 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,550,271
• Daicel Corporation v. Celanese International CorporationNo claims unpatentable
  PTAB · Jun 23, 2016 · IPR2015-00171 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 42–44, 47–51, 53, and 55–57 were not shown unpatentable: the ’095 patent did not establish the required amount of DME, and JP ’712 did not cure that deficiency.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “Based on our analysis of the intrinsic and extrinsic evidence, we agree with Patent Owner that a person of ordinary skill in the art would understand the ’507 patent to speak in terms of effects, not molecules. See PO Resp. 4– 5; Tr. 41:8–16. We, therefore, construe the recitation “distilling [a mixture comprising water, acetic acid, methyl iodide, methyl acetate, methanol, and at least one PRC] to separate the mixture into a plurality of streams, at least one of said streams being a PRC enriched overhead stream comprising dimethyl ether” in step (a) of claim 42 as requiring the presence of dimethyl ether in the PRC enriched overhead stream in an amount that one of ordinary skill in the art would recognize as being more than trace or insubstantial. Such amount would be, for example, more than the amount produced in a conventional, prior art, low water carbonylation process that used the same initial reactor contents and conditions, and the same processing equipment. We further interpret this language as requiring the presence of DME in the PRC enriched overhead stream in an amount sufficient to cause (1) a reduction in the solubility of methyl iodide in water during the extraction of the PRC enriched overhead stream (claim 42, step (b)) and (2) an increase in the amount of methyl iodide recoverable during a subsequent extraction of the raffinate stream, which increase in recoverable methyl iodide would be recognized as more than insubstantial by the ordinary artisan.” slip op. at 42

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Mr. Jones and Dr. Porcelli agree the description in the ’507 patent implies that the inventive process is a low water process. Ex. 1039 ¶ 52; Ex. 2029 ¶ 26. As discussed in Section VI. B., below, these experts further agree that there are differences in the reactants and reaction products produced in high and low water processes. We find both Mr. Jones and Dr. Porcelli are qualified to give an opinion as to the level of ordinary skill in the art. Accordingly, for purposes of this proceeding we adopt Mr. Jones’s definition of the level of ordinary skill in the art, and add that the ordinary artisan also would have had a specific understanding of the low water carbonylation process for production of acetic acid and its implementation on an industrial scale.” slip op. at 27

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “We are not persuaded that Mr. Jones’s calculations provide a reliable method of determining the amount of DME present in a methanol carbonylation process. Mr. Miura and Dr. Porcelli agreed that it is extremely difficult to anticipate the presence or amount of a component such as DME in a methanol carbonylation system such as the one described in the ’095 patent. See Ex. 1046, 281:14–22; Ex. 2029 ¶ 112. Dr. Porcelli testified that Mr. Jones’s estimates of DME content in the ’095 patent Example were based on numerous assumptions that rendered his estimations of reactor and distillation overhead DME concentrations meaningless. See Ex. 2029 ¶¶ 137, 140, 151. Dr. Porcelli testified, for example, that it was “improper and incorrect” for Mr. Jones “to fail to account for DME lost with the vent stream in the reactor, especially because of the high volatility of DME.” Id. ¶ 148. Mr. Miura’s measured amount of DME present in the first overhead in Experiment 1 was less than half the amount Mr. Jones calculated would be present, supporting Dr. Porcelli’s testimony that the loss of DME via the vents would have had a marked impact on the actual amount of DME sent to distillation column 40 (from which the second overhead stream is produced) in the ’095 patent Example. See Ex. 1060 ¶ 153 (“(103 ppm (calc.) vs. 48 ppm (actual)) is likely to due to loss of DME with the vent gas from the splitter condenser, due to the very low boiling point of DME”); see also Ex. 1039 ¶ 99; Ex. 1060 ¶ 121 (wherein Mr. Jones agreed that the loss of DME from the vent stream in the separator (or decanter) after splitter column 14 in the ’095 patent process would be substantial).” slip op. at 56

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “In sum, we determine Petitioner has failed to meet its burden to show, by a preponderance of the evidence, that the ’095 patent describes a process that inherently results in dimethyl ether in a PRC enriched overhead stream (produced by distilling a mixture comprising water, acetic acid, methyl iodide, methyl acetate, methanol, and at least one PRC) in an amount that is (1) more than trace or insubstantial, and (2) sufficient to cause (a) a reduction in the solubility of methyl iodide in water during extraction of the PRC enriched overhead stream and (b) an increase in the amount of methyl iodide recoverable during a subsequent extraction of the raffinate stream, as required by the broadest reasonable interpretation of claim 42. Absent from the record is any evidence that DME is present in the second overhead in the ’095 patent Example in the amount required by independent claim 42 and its dependent claims 43, 44, 47–51, 53, and 55–57. Petitioner’s challenge with respect to claim 57 is based on obviousness over the combination of the ’095 patent and JP ’712. Petitioner relies on JP ’712 for a teaching that “methyl iodide concentration can be controlled by extraction temperature, . . . and that the concentration[] recited in [claim 57 is] well known in the art.” Pet. 55. Petitioner has not explained how JP ’712 cures the deficiency in the ’095 patent’s failure to describe step (a) of claim 42. Accordingly, we likewise determine Petitioner has failed to meet its burden to show unpatentability of claim 57 by a preponderance of the evidence. We conclude Petitioner has failed to meet its burden to show unpatentability of claims 42–44, 47–51, 53, and 55–57 of the ’507 patent.” slip op. at 59

  Patent outcomesUS 8,076,507 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,076,507
• Daicel Corporation v. Celanese International CorporationNo claims unpatentable
  PTAB · Jun 23, 2016 · IPR2015-00173 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 58–60, 67, 69, and 71–72 were not shown unpatentable over the ’095 patent; claim 73 was not shown unpatentable over the ’095 patent and JP ’712 because the required amount of DME was not …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner relies on Mr. Jones’s testimony to establish the level of ordinary skill in the art. See Pet. 17. Mr. Jones testified that the person of ordinary skill in the art “as of March 2, 2004, the effective filing date of the ’507 Patent” (Ex. 1039 ¶ 15) would have been a chemist or chemical engineer with an advanced degree, or a Bachelor of Science degree and equivalent work experience (e.g., five years in an industrial setting producing acetic acid, acetic anhydride, or related chemicals), and would have generally understood acetic acid production on an industrial scale including the distillation processes and extraction processes that are used in acetic acid or acetic anhydride production. The person of ordinary skill in the art would have understood chemical reactions in general, and, particularly, the primary reactions and the side-reactions associated with acetic acid production (id. ¶ 16). Mr. Jones further testified that a person of ordinary skill in the art would have had separations experience, an understanding of industrial-scale processes, and experience in the production of acetic acid, acetic anhydride, or related chemicals. Id. ¶ 17. Dr. Porcelli, testified that he “generally agree[s]” with Mr. Jones’s opinion as to the level of ordinary skill in the art” (Ex. 2029 ¶ 15; see also Ex. 1065, 65:9–66:5). During cross-examination, however, Dr. Porcelli testified that one of ordinary skill in the art would require, more specifically, an understanding of the low water acetic process and its implementation on an industrial scale. See, e.g., Ex. 1065, 126:18–127:1.” slip op. at 26

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther

    “Based on our analysis of the intrinsic and extrinsic evidence, we agree with Patent Owner that a person of ordinary skill in the art would understand the ’507 patent to speak in terms of effects, not molecules. See PO Resp. 4– 5; Tr. 41:8–16. We, therefore, construe the recitation “distilling [a mixture comprising water, acetic acid, methyl iodide, methyl acetate, methanol, and at least one PRC] to separate the mixture into a plurality of streams, at least one of said streams being a PRC enriched overhead stream comprising dimethyl ether” in step (a) of claim 58 as requiring the presence of dimethyl ether in the PRC enriched overhead stream in an amount that one of ordinary skill in the art would recognize as being more than trace or insubstantial. Such amount would be, for example, more than the amount produced in a conventional, prior art, low water carbonylation process that used the same initial reactor contents and conditions, and the same processing equipment. We further interpret this language as requiring the presence of DME in the PRC enriched overhead stream in an amount sufficient to cause (1) a reduction in the solubility of methyl iodide in water during the extraction of the PRC enriched overhead stream and (2) an increase in the amount of methyl iodide recoverable during the subsequent extraction of the first raffinate stream (claim 58, step (b)), which increase in recoverable methyl iodide would be recognized as more than insubstantial by the ordinary artisan.” slip op. at 42

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded that Mr. Jones’s calculations provide a reliable method of determining the amount of DME present in a methanol carbonylation process. Mr. Miura and Dr. Porcelli agreed that it is extremely difficult to anticipate the presence or amount of a component such as DME in a methanol carbonylation system such as the one described in the ’095 patent. See Ex. 1046, 281:14–22; Ex. 2029 ¶ 112. Dr. Porcelli testified that Mr. Jones’s estimates of DME content in the ’095 patent Example were based on numerous assumptions that rendered his estimations of reactor and distillation overhead DME concentrations meaningless. See Ex. 2029 ¶¶ 137, 140, 151. Dr. Porcelli testified, for example, that it was “improper and incorrect” for Mr. Jones “to fail to account for DME lost with the vent stream in the reactor, especially because of the high volatility of DME.” Id. ¶ 148. Mr. Miura’s measured amount of DME present in the first overhead in Experiment 1 was less than half the amount Mr. Jones calculated would be present, supporting Dr. Porcelli’s testimony that the loss of DME via the vents would have had a marked impact on the actual amount of DME sent to distillation column 40 (from which the second overhead stream is produced) in the ’095 patent Example. See Ex. 1060 ¶ 153 (“(103 ppm (calc.) vs. 48 ppm (actual)) is likely to due to loss of DME with the vent gas from the splitter condenser, due to the very low boiling point of DME”); see also Ex. 1039 ¶ 97; Ex. 1060 ¶ 121 (wherein Mr. Jones agreed that the loss of DME from the vent stream in the separator (or decanter) after splitter column 14 in the ’095 patent process would be substantial). Dr. Porcelli testified that he believed removal of DME by rapid carbonylation would have had a significant effect on the presence of DME in the ’095 patent Example and that this irreversible reaction should have been considered by Mr. Jones in his calculations. Ex. 2029 ¶¶ 130–131. Mr. Jones conceded “some DME will be carbonylated in the reactor” (Ex. 1060 ¶ 45), and that the carbonylation of DME to make acetic acid under low water conditions is an irreversible reaction (Ex. 2026, 227:19–228:1). See also Ex. 1060 ¶ 27 (arguing Exhibits 2032, 2034 evidence DME formation in a batch reactor during methanol carbonylation, but admitting that as the water and methyl acetate start to diminish, DME concentration begins to drop and DME is eventually carbonylated into either acetic acid or acetic anhydride). Mr. Jones disagreed with Dr. Porcelli’s testimony that “carbonylation of DME is . . . known to have a fast reaction rate” and “would be consumed by carbonylation faster than it would be formed by methanol dehydration, especially under low water conditions” (Ex. 2029 ¶ 130). Ex. 1060 ¶ 44. Mr. Jones provided testimony explaining why he believes “the carbonylation of DME is not particularly fast.” Id.; see id. ¶¶ 45–48. Mr. Jones relied on a textbook by Gauthier-Lafaye (Ex. 1062), published in 1987, as evidence that the carbonylation of DME proceeds more slowly than the carbonylation of methyl acetate. Ex. 1060 ¶ 47. Mr. Jones testified that because the reaction liquid in the ’095 patent Example is reported to contain 1.6 wt% methyl acetate, and the carbonylation rate of DME is even slower than that of methyl acetate, then “it stands to reason that the carbonylation rate of DME is not going to be so fast as to ‘immediately’ react away any DME that is formed via the methanol dehydration equilibrium reaction.” Id. ¶ 48. Mr. Jones further testified that consideration of this competing side reaction was “irrelevant to calculating equilibrium concentration” of DME in the reactor in the ’095 patent Example. Id. ¶ 51. The disclosure in Gauthier-Lafaye relied upon by Mr. Jones relates to the carbonylation of methyl acetate into acetic anhydride (Ex. 1062, 9), i.e., a different reaction system than the ’095 and ’507 patents (see Paper 73, 8 (Observation #F.1)). This evidence, therefore, does not support Mr. Jones’s testimony that the carbonylation of DME in the ’095 patent reaction system was irrelevant to his calculation of equilibrium DME concentration. Rather we credit Dr. Porcelli’s testimony that removal of DME by rapid carbonylation would have had an effect on the presence, or at least the quantity, of DME in the ’095 patent Example, and that this factor should have been taken into consideration by Mr. Jones in his calculations. See Ex. 2029 ¶ 130. Mr. Jones testified that in view of the low boiling point of DME (-23.7 ºC), most of the DME will immediately flash from the reactor product . . . and be concentrated in the overhead streams. In view of the relatively low amount of DME in the reactor and overhead, DME’s very low boiling point, and the elevated temperatures in the reactor, special handling techniques would be needed to sample for such a compound in the reaction mixture. It is therefore not surprising that the presence of DME was not measured in the ’095 patent, despite the fact that it was undoubtedly present. Ex. 1060 ¶ 118. Given Mr. Miura’s testimony that he believed DME, if present, would have been detectable (Ex. 1046, 280:9–281:1), and Paulik’s disclosure that insubstantial amounts of DME were measurable as early as 1970 (see, e.g., Ex. 2037, 13:47–49, 15:32–34), Mr. Jones’s testimony (see, e.g., Ex. 1060 ¶ 101 (“It should be clear to someone skilled in the art that very dilute and trace components are frequently not reported in chemical analytical results or in listed process stream compositions.”)) does not show convincingly that DME was present in the second overhead in more than a trace quantity, if at all. See id. ¶ 90 (“[T]he only issue is whether some amount of DME exists (which clearly it does).”).” slip op. at 56

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “have been present in the distillation overhead in the ’095 patent Example in an amount sufficient to reduce solubility of methyl iodide in water during subsequent water extraction steps. Mr. Miura testified that 1.2 wt% DME was present in the second overhead in Experiment 1. Ex. 1005 ¶ 13, Table 1. Mr. Jones testified that he would expect the amount of DME in the second overhead in the ’095 patent process to be about three times the amount of DME in the overhead in Miura Experiment 1 (Ex. 2040, 289:10–– 298:7), because Mr. Miura’s experiment was carried out under conditions less favorable to DME formation as compared to the conditions in the ’095 patent Example (see Ex. 1060 ¶¶ 130, 139). A preponderance of the evidence, however, does not support a finding that DME was present, if at all, in more than a trace quantity/insubstantial amount in the second overhead of the ’095 patent Example, for the following reasons: Although Mr. Miura reported that the second overhead in his Experiment 1 contained 1.2% DME (Ex. 1005 ¶ 13, Table 1), he did not testify that this quantity would be present in the ’095 patent Example despite acknowledged differences in quantities of reaction components and operating conditions (see id. ¶ 21). Rather, Mr. Miura testified that Experiment 1 provided evidence that DME simply was present in some amount in the second overhead in the ’095 patent Example. Id. (“[T]he deviations would not affect the outcome with respect to the presence of DME in the first and second overheads.”). Mr. Miura testified that he supervised the ’095 patent Example and believed DME was present and accounted for in the 0.9 wt% reported as “others.” Ex. 1046, 241:17–242:9. Therefore, we are not persuaded by Mr. Jones’s testimony that the amount of DME in the second overhead in the ’095 patent process would be about three times the amount of DME in the overhead in Miura Experiment 1, i.e. 3.6 wt% (Ex. 2040, 289:10––298:7). See Tr. 70:3–8 (wherein Patent Owner’s counsel raises this inconsistency). We are not persuaded by Mr. Jones’s testimony that an amount as high as 3.6 wt% DME could have been present in the ’095 patent Example, but not reported (see Ex. 2040, 301:18–303:2; Paper 73, 5–6 (Observation #C.4)), since the prior art, e.g., Paulik, clearly indicates DME was considered an undesirable reaction byproduct in a carbonylation process. Mr. Miura did not testify as to what portion of the 0.9 wt% reported as “others” in the ’095 patent Example constituted DME, or whether the amount of DME would be considered more than a trace quantity/insubstantial amount. Nor is there any testimony or evidence that 0.9 wt% or less DME in the overhead/feed to the extractor would have been an amount sufficient to cause a reduction in the solubility of methyl iodide in water during extraction of the PRC enriched overhead stream and an increase in the amount of methyl iodide recoverable during the subsequent extraction of the first raffinate stream as required under the broadest reasonable interpretation of claim 58 of the ’507 patent. We are not persuaded that Mr. Jones’s calculations provide a reliable method of determining the amount of DME present in a methanol carbonylation process. Mr. Miura and Dr. Porcelli agreed that it is extremely difficult to anticipate the presence or amount of a component such as DME in a methanol carbonylation system such as the one described in the ’095 patent. See Ex. 1046, 281:14–22; Ex. 2029 ¶ 112. Dr. Porcelli testified that Mr. Jones’s estimates of DME content in the ’095 patent Example were based on numerous assumptions that rendered his estimations of reactor and distillation overhead DME concentrations meaningless. See Ex. 2029 ¶¶ 137, 140, 151. Dr. Porcelli testified, for example, that it was “improper and incorrect” for Mr. Jones “to fail to account for DME lost with the vent stream in the reactor, especially because of the high volatility of DME.” Id. ¶ 148. Mr. Miura’s measured amount of DME present in the first overhead in Experiment 1 was less than half the amount Mr. Jones calculated would be present, supporting Dr. Porcelli’s testimony that the loss of DME via the vents would have had a marked impact on the actual amount of DME sent to distillation column 40 (from which the second overhead stream is produced) in the ’095 patent Example. See Ex. 1060 ¶ 153 (“(103 ppm (calc.) vs. 48 ppm (actual)) is likely to due to loss of DME with the vent gas from the splitter condenser, due to the very low boiling point of DME”); see also Ex. 1039 ¶ 97; Ex. 1060 ¶ 121 (wherein Mr. Jones agreed that the loss of DME from the vent stream in the separator (or decanter) after splitter column 14 in the ’095 patent process would be substantial).” slip op. at 55

  Patent outcomesUS 8,076,507 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,076,507
• Daicel Corporation v. Celanese International CorporationNo claims unpatentable
  PTAB · Jun 23, 2016 · IPR2015-00170 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 1–4, 6–11, and 13 were not held unpatentable under § 103 because the evidence did not show the required amount of dimethyl ether in the second overhead.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “Based on our analysis of the intrinsic and extrinsic evidence, we agree with Patent Owner that a person of ordinary skill in the art would understand the ’507 patent to speak in terms of effects, not molecules. See PO Resp. 50–51; Tr. 41:8–16. We, therefore, construe the recitation “distilling at least a portion of [a] first overhead [comprising methyl iodide, water and at least one PRC] to produce a second overhead stream comprising . . . dimethyl ether” in step (a) of claim 1 as requiring the presence of dimethyl ether in the second overhead stream in an amount that one of ordinary skill in the art would recognize as being more than trace or insubstantial. Such amount would be, for example, more than the amount produced in a conventional, prior art, low water carbonylation process that used the same initial reactor contents and conditions, and the same processing equipment. We further interpret this language as requiring the presence of DME in the second overhead stream in an amount sufficient to cause (1) a reduction in the solubility of methyl iodide in water during the extraction of the second overhead (claim 1, step (b)) and (2) an increase in the amount of methyl iodide recoverable during the extraction of the first raffinate (claim 1, step (c)), which increase in recoverable methyl iodide would be recognized as more than insubstantial by the ordinary artisan.” slip op. at 43

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner substantially agrees with Mr. Jones’s opinion, stating: “a person of ordinary skill in the art may be a qualified chemist or chemical engineer, however separations experience, an understanding of industrial-scale processes, and experience in the production of acetic acid, acetic anhydride, or related chemicals is required.” PO Resp. 14. Dr. Porcelli, testified that he “generally agree[s]” with Mr. Jones’s opinion as to the level of ordinary skill in the art” (Ex. 2029 ¶ 15; see also Ex. 1065, 65:9–66:5). During cross-examination, however, Dr. Porcelli testified that one of ordinary skill in the art would require, more specifically, an understanding of the low water acetic process and its implementation on an industrial scale. See, e.g., Ex. 1065, 126:18–127:1. Mr. Jones and Dr. Porcelli agree the description in the ’507 patent implies that the inventive process is a low water process. Ex. 1039 ¶ 50; Ex. 2029 ¶ 26. As discussed in Section VI. B., below, these experts further agree that there are differences in the reactants and reaction products produced in high and low water processes. We find both Mr. Jones and Dr. Porcelli are qualified to give an opinion as to the level of ordinary skill in the art. Accordingly, for purposes of this proceeding we adopt Mr. Jones’s definition of the level of ordinary skill in the art, and add that the ordinary artisan also would have had a specific understanding of the low water carbonylation process for production of acetic acid and its implementation on an industrial scale.” slip op. at 27

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “at least one PRC] to produce a second overhead stream comprising . . . dimethyl ether” as requiring the presence of dimethyl ether in the second overhead stream in an amount that is (1) more than trace or insubstantial, and (2) sufficient to cause (a) a reduction in the solubility of methyl iodide in water during extraction of the second overhead and (b) an increase in the amount of methyl iodide recoverable during the extraction of the first raffinate. Neither Mr. Miura nor Mr. Jones testified that dimethyl ether would have been present in the second distillation overhead in the ’095 patent Example in an amount that is (1) more than trace or insubstantial, and (2) sufficient to cause (a) a reduction in the solubility of methyl iodide in water during extraction of the second overhead and (b) an increase in the amount of methyl iodide recoverable during the extraction of the first raffinate. Mr. Miura testified that 1.2 wt% DME was present in the second overhead in Experiment 1. Ex. 1005 ¶ 13, Table 1. Mr. Jones testified that he would expect the amount of DME in the second overhead in the ’095 patent process to be about three times the amount of DME in the overhead in Miura Experiment 1 (Ex. 2040, 289:10––298:7), because Mr. Miura’s experiment was carried out under conditions less favorable to DME formation as compared to the conditions in the ’095 patent Example (see Ex. 1060 ¶¶ 133, 139). A preponderance of the evidence, however, does not support a finding that DME was present, if at all, in more than a trace quantity/insubstantial amount in the second overhead of the ’095 patent Example, for the following reasons:” slip op. at 57

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We are not persuaded that Mr. Jones’s calculations provide a reliable method of determining the amount of DME present in a methanol carbonylation process. Mr. Miura and Dr. Porcelli agreed that it is extremely difficult to anticipate the presence or amount of a component such as DME in a methanol carbonylation system such as the one described in the ’095 patent. See Ex. 1046, 281:14–22; Ex. 2029 ¶ 112. Dr. Porcelli testified that Mr. Jones’s estimates of DME content in the ’095 patent Example were based on numerous assumptions that rendered his estimations of reactor and distillation overhead DME concentrations meaningless. See Ex. 2029 ¶¶ 137, 140, 151. Dr. Porcelli testified, for example, that it was “improper and incorrect” for Mr. Jones “to fail to account for DME lost with the vent stream in the reactor, especially because of the high volatility of DME.” Id. ¶ 148. Mr. Miura’s measured amount of DME present in the first overhead in Experiment 1 was less than half the amount Mr. Jones calculated would be present, supporting Dr. Porcelli’s testimony that the loss of DME via the vents would have had a marked impact on the actual amount of DME sent to distillation column 40 (from which the second overhead stream is produced) in the ’095 patent Example. See Ex. 1060 ¶ 153 (“(103 ppm (calc.) vs. 48 ppm (actual)) is likely to due to loss of DME with the vent gas from the splitter condenser, due to the very low boiling point of DME”); see also Ex. 1039 ¶ 97; Ex. 1060 ¶ 121 (wherein Mr. Jones agreed that the loss of DME from the vent stream in the separator (or decanter) after splitter column 14 in the ’095 patent process would be substantial). Dr. Porcelli testified that he believed removal of DME by rapid carbonylation would have had a significant effect on the presence of DME in the ’095 patent Example and that this irreversible reaction should have been considered by Mr. Jones in his calculations. Ex. 2029 ¶¶ 130–131. Mr. Jones conceded “some DME will be carbonylated in the reactor” (Ex. 1060 ¶ 45), and that the carbonylation of DME to make acetic acid under low water conditions is an irreversible reaction (Ex. 2026, 227:19–228:1). See also Ex. 1060 ¶ 27 (arguing Exhibits 2032, 2034 evidence DME formation in a batch reactor during methanol carbonylation, but admitting that as the water and methyl acetate start to diminish, DME concentration begins to drop and DME is eventually carbonylated into either acetic acid or acetic anhydride). Mr. Jones disagreed with Dr. Porcelli’s testimony that “carbonylation of DME is . . . known to have a fast reaction rate” and “would be consumed by carbonylation faster than it would be formed by methanol dehydration, especially under low water conditions” (Ex. 2029 ¶ 130). Ex. 1060 ¶ 44. Mr. Jones provided testimony explaining why he believes “the carbonylation of DME is not particularly fast.” Id.; see id. ¶¶ 45–48. Mr. Jones relied on a textbook by Gauthier-Lafaye (Ex. 1062), published in 1987, as evidence that the carbonylation of DME proceeds more slowly than the carbonylation of methyl acetate. Ex. 1060 ¶ 47. Mr. Jones testified that because the reaction liquid in the ’095 patent Example is reported to contain 1.6 wt% methyl acetate, and the carbonylation rate of DME is even slower than that of methyl acetate, then “it stands to reason that the carbonylation rate of DME is not going to be so fast as to ‘immediately’ react away any DME that is formed via the methanol dehydration equilibrium reaction.” Id. ¶ 48. Mr. Jones further testified that consideration of this competing side reaction was “irrelevant to calculating equilibrium concentration” of DME in the reactor in the ’095 patent Example. Id. ¶ 51. The disclosure in Gauthier-Lafaye relied upon by Mr. Jones relates to the carbonylation of methyl acetate into acetic anhydride. Ex. 1062, 9. The ’095 patent, however, relates to production of acetic acid by a carbonylation process, wherein, according to Akinori, “intermediates [e.g. DME and methyl acetate] ultimately change into acetic acid” (Ex. 1013, 8, equations (2), (3)). Ex. 2029 ¶ 130; see Paper 79, 8–9 (Observation #G.1). In other words, the evidence relied on by Mr. Jones relates to a different reaction system and does not support his testimony that the carbonylation of DME in the ’095 patent reaction system was irrelevant to his calculation of equilibrium DME concentration. Rather we credit Dr. Porcelli’s testimony that removal of DME by rapid carbonylation would have had an effect on the presence, or at least the quantity, of DME in the ’095 patent Example, and that this factor should have been taken into consideration by Mr. Jones in his calculations. See Ex. 2029 ¶ 130.” slip op. at 59

  Patent outcomesUS 8,076,507 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,076,507
• Google Inc. v. Network-1 Technologies, Inc.No claims unpatentable
  PTAB · Jun 20, 2016 · IPR2015-00343 · APJ Kevin F Turner · IPR · Final written decision

  The Board held claims 1–3, 6–14, 18, 19, 21–27, and 29–37 not shown unpatentable because Conwell did not disclose a non-exhaustive search and Ghias and Philyaw did not teach one.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “exhaustive, as required by independent claims 1, 13, and 25. PO Resp. 23– 32. Patent Owner argues that Conwell teaches identifying a match using a look-up table, but the process is not disclosed to be non-exhaustive. Id. at 24 (citing Ex. 1009, 3:43–44, 5:59–61, Fig. 3; Ex. 2005 ¶¶ 364–366). Patent Owner additionally argues that “[w]hile there are ways to search the lookup table disclosed in Conwell using a non-exhaustive approach, Conwell does not disclose any such non-exhaustive approach.” Id. at 26 (citing Ex. 2005 ¶ 369). We agree that Conwell does not explicitly disclose that the look-up is performed non-exhaustively. Further, Patent Owner argues that Conwell also does not inherently disclose using the look-up table to conduct a non-exhaustive search. Id. at 27–31. Patent Owner continues that “Conwell provides no details as to how the exact-match search between the hashed identifier of the work to be identified and the hashed identifiers in the reference database is actually performed.” Id. at 29 (citing Ex. 1009, 3:43–62). Patent Owner argues that Conwell details how its database is maintained, but does not provide specific disclosures as to how the database is searched. Id. at 31–32. We also agree that Conwell does not inherently disclose that the look-up is performed nonexhaustively.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “As Patent Owner points out, the second search of the identified matches is performed exhaustively of Works A, C, D, and E. Tr. 40–43 (citing Ex. 1010 7:4–9; Ex. 2005 ¶ 288; Ex. 2006, 325:12–21, 336:12–22). If viewed as separate and independent searches, both would be exhaustive of the data set being searched, and if viewed as a single search, all of the initially input records of the data set (i.e., Works A–E) would be searched by that single search, making it exhaustive. As such, we agree that Ghias does not teach or suggest a non-exhaustive search, as recited in the independent claims. Petitioner responds that Ghias’s subsequent searches are non- exhaustive (Reply 13–14), but we have addressed the same in the prior paragraph, not finding it to be persuasive. Petitioner also argues that the queries from the “first” and “second” searches need not be the same, and in fact would likely be different, such that the results for the first query could exclude non-matches from the results, where those non-matches would be matches for the second query, so that the subsequent search for the second query would not consider these excluded references. Id. at 14. We are not persuaded, however, as the search would still be exhaustive to the dataset provided to the search algorithm. As discussed above, we construe “non-exhaustive search” as “a search that locates a match without a comparison of all possible matches.” We are not persuaded that simply because a search does not seek matches outside of its input records would make that search non-exhaustive; that would make every search non-exhaustive, because it is, by definition, limited to the records input or available to the search algorithm. Petitioner also argues that Ghias discloses that its string matching algorithms operate faster than a brute force search (Reply 14–15), but we are persuaded, as discussed above, that this disclosure is related to comparing a work with a single record in the database, and not with respect to all of the records in the database. Petitioner also argues that Ghias discloses that performance may be improved by “packing all the songs into one file,” whereby the non-exhaustive searching within a record would apply to all of the concatenated record, making the search of the records non-exhaustive. Id. at 15. With respect to this latter argument, we agree with Patent Owner that this represents a “new theory” of the ground than that established in the Petition. Paper 24, 1–2. Compare Pet. 47–48, with Reply 14–15. We will not consider such new arguments for the purposes of this decision. See 37 C.F.R. § 42.23(b); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 2016 WL 2620512, at *8–9 (Fed. Cir. May 9, 2016) (concluding the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)).” slip op. at 13

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “i.e., exhaustive and non-exhaustive, and that “one would have envisaged a ‘non-exhaustive’ search as the predominant form of ‘database query,’” such that Conwell discloses the elements of the claims in substance. Reply 11–12 (citing Ex. 2005 ¶ 371; In re Gleave, 560 F.3d 1331, 1334, 1337–38 (Fed. Cir. 2009)). We do not agree. Instead, we find persuasive the testimony of Dr. Karypis that exhaustive methods may be employed to perform the database lookup in Conwell, and that Conwell does not disclose any non-exhaustive approach. Ex. 2005 ¶¶ 367–369. Although Petitioner alleges that Dr. Karypis’s declaration “is replete with attorney argument presented in the guise of expert testimony,” and thus entitled to little weight (Reply 19), we find no fault with his specific review and interpretation of Conwell, and we are persuaded that it demonstrates that the lookup processes in Conwell need not be non-exhaustive.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “With respect to this latter argument, we agree with Patent Owner that this represents a “new theory” of the ground than that established in the Petition. Paper 24, 1–2. Compare Pet. 47–48, with Reply 14–15. We will not consider such new arguments for the purposes of this decision. See 37 C.F.R. § 42.23(b); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 2016 WL 2620512, at *8–9 (Fed. Cir. May 9, 2016) (concluding the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)).” slip op. at 14

  Patent outcomesUS 8,640,179 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,640,179

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.