- Micron Technology, Inc. v. MLC Intellectual Property, LLCRehearing grantedPTAB · Mar 31, 2016 · IPR2015-00504 · APJ Kevin F Turner · IPR · Rehearing
The Board granted rehearing only as to addressing the request’s assertions and otherwise denied rehearing, leaving the denial of institution for claims 1, 9, 10, 12, 30, 42, and 45 over Kitamura in place.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. ANALYSIS When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Dr. Baker goes on to further interpret Kitamura (id. at ¶¶ 75–79), citing additional references (Exs. 1012, 1013), but those additional references do not form part of the obviousness ground, and are not cited in the Petition. We further note Petitioner may rely on expert testimony to interpret patents and printed publications, but may not rely on such testimony as a substitute for a patent or printed publication. See 35 U.S.C. § 311(b). We remain persuaded that Dr. Baker does not interpret Kitamura’s D/A conversion circuit as requiring the selection of an analog signal, but rather indicates that only as a possible interpretation of Kitamura. As we stated in the Decision, Dr. Baker’s discussion makes clear how the output voltages could be set, but he does not testify that it must employ his discussed methods. Dec. 10.” slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 1003 ¶ 74 (citing Exhibit 1004 at 21:27-31). We were not persuaded that Dr. Baker is testifying as to how the circuit must perform, only how it could perform. 5 Dr. Baker goes on to further interpret Kitamura (id. at ¶¶ 75–79), citing additional references (Exs. 1012, 1013), but those additional references do not form part of the obviousness ground, and are not cited in the Petition. We further note Petitioner may rely on expert testimony to interpret patents and printed publications, but may not rely on such testimony as a substitute for a patent or printed publication. See 35 U.S.C. § 311(b). We remain persuaded that Dr. Baker does not interpret Kitamura’s D/A conversion circuit as requiring the selection of an analog signal, but rather indicates that only as a possible interpretation of Kitamura. As we stated in the Decision, Dr. Baker’s discussion makes clear how the output voltages could be set, but he does not testify that it must employ his discussed methods. Dec. 10. Petitioner also argues that we mischaracterized what aspects Dr. Baker relied upon in making his assessment. Reh’g Req. 8–9. Petitioner continues that Dr. Baker cites to Kitamura’s explicit disclosure, as well as corroborating his explanation with citations to textbook knowledge, but that we failed to credit the same. Id. at 8. We do not agree. We fully reviewed all of Dr. Baker’s testimony and corroborating citations, but we were not persuaded that Kitamura’s D/A conversion circuit must function as Dr. Baker suggests it could function. In other words, we do not doubt Dr. Baker’s facts; we are only unpersuaded that Dr. Baker’s testimony states sufficiently that Kitamura’s D/A conversion circuit must select among specific analog reference voltages.” slip op. at 5
§ 103 obviousnessPatents in suitUS 5,764,571 - Arista Networks, Inc. v. Cisco Systems, Inc.Rehearing deniedPTAB · Mar 29, 2016 · IPR2015-01710 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution under § 325(d), finding the request did not show that it overlooked or misapprehended any matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“35 U.S.C. § 325(d). Petitioner does not address the Decision’s discussion of the anticipation ground presented in the ’974 Petition. The Decision found that the anticipation ground presented the same arguments regarding Habraken as were presented regarding Habraken in the ’974 Petition. Dec. 9–10.” slip op. at 3
Discretionary denialPatents in suitUS 7,224,668 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Mar 21, 2016 · CBM2015-00180 · APJ Barry L Grossman · CBM · Institution
The Board denied institution of CBM review of claims 1, 9, 16, 18-25, 34, 49-52, and 57 because Acxiom failed to establish standing.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied
“Acxiom must establish more than just the fact that it has sold products to an entity that has been sued for infringement. It must establish that the relationship between itself and a sued customer is sufficient to constitute privity.1 The evidence provided by Acxiom, which will be discussed in detail below, in short, indicates that Acxiom has sold some unspecified software and/or other goods and services to a variety of entities and that some of those entities have approached Acxiom with claims of indemnity. We are not persuaded that these requests for indemnity without evidence or an acknowledgement of an obligation to indemnify are sufficient to establish privity. See Microsoft Corp. v. DataTern, Inc., 755 F. 3d 899 (Fed. Cit. 2014); Arris Group, Inc. v. British Telecomm. PLC, 639 F.3d 1368, 1375 (Fed. Cir. 2011).” slip op. at 6
Discretionary denialPatents in suitUS 8,352,317 - Smart Modular Technologies Inc. v. Netlist, Inc.No claims unpatentablePTAB · Mar 9, 2016 · IPR2014-01372 · APJ Linda M Gaudette · IPR · Final written decision
The Board held claims 1–4, 14–20, 27, and 29 not unpatentable because Averbuj did not disclose a control module configured to generate the claimed address signals.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on a comparison of Dr. Bagherzadeh’s and Dr. Sechen’s declarations (Exs. 1009, 2019), we find Dr. Bagherzadeh has a broader range of educational and work experience, and, therefore, accord greater weight to his opinion as to the level of ordinary skill in the art. Dr. Bagherzadeh’s opinion is consistent with our finding as to the level of ordinary skill in the art in our Final Written Decision in IPR-970. We, therefore, adopt our finding in IPR-970 as to the level of ordinary skill in the art: [A] person of ordinary skill in the art at the time of the ’434 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST. IPR-970 FWD, 10–11 (noting that our finding was “based on our review of the ’434 patent and the types of problems and solutions described in the ’434 patent and cited prior art”).” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’434 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’434 patent. See Ex. 1008, 6:3–5, 10:67–11:2, 6:14–17. Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“supports a finding that a customary meaning of “generate” to one of ordinary skill in the art is “cause.”1 We, therefore, determine the broadest reasonable 1 Petitioner relies on Webster’s II, for a definition of “cause.” See Reply 4, 6–8 (citing Ex. 1032, 3). Having determined the broadest reasonable interpretation of “generate” does not encompass “cause,” we do not find this evidence relevant to our claim construction analysis. construction of “generate” is “produce” for the reasons stated above and in our Final Written Decision in IPR-970. We adopt and incorporate by reference our analysis and construction of the term “generate” in our Final Written Decision in IPR-970 (IPR-970 FWD, 24–33).” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Moreover, the evidence in this proceeding fails to support a finding that Averbuj’s BIST controller 4 is configured to generate address signals for testing the memory devices in the manner claimed. In Averbuj, the algorithms (i.e., CMD_DATA containing OP CODE such as SET ADDRESS (see Ex. 1011, 4:4–12, 5:19–21, Table 1)) communicated to sequencers 8 are either received by user interface 22 via external input (id. at 5:41–43) or generated by another component (i.e., a component that is not part of BIST controller 4 circuitry) and stored in algorithm memory 20 (see Ex. 2012, 30:23–24, 41:1–4, 54:21–22, 55:6–25, 55:20–56:9 (wherein Dr. Bagherzadeh testifies that OP CODE residing in the algorithm memory of BIST controller 4 are generated by hand or by a tool, e.g., a compiler, and that “99 percent of the designs or chips do not have a compiler on-board”)). Multiplexer 24 selects one of the algorithms (i.e., CMD_DATA) and BIST controller 4 provides to sequencers 8 the same CMD_DATA (e.g., address signals) without transformation or modification. See Ex. 1011, 4:4–12, 5:16–21; Ex. 2012, 54:8–13 (“Averbuj Figure 2, without consideration of any other disclosure in Averbuj, illustrates that a multiplexer selects an input from the algorithm memory and the output [] reflect[s] what’s in the input, based on the selection.”). Based on our interpretation of the terms “configured to” and “generate,” as discussed above, the claim recitation “a control module configured to generate address . . . signals for testing the memory devices” (claims 1, 20, and 29) does not read on Averbuj’s BIST controller 4, because the SET ADDRESS signal output by BIST controller 4 is produced by a component external to BIST controller 4, and merely selected by multiplexer 24 and provided to sequencers 8 without transformation or modification by BIST controller 4. In sum, after considering the parties’ arguments and evidence, we determine Petitioner has not shown, by a preponderance of the evidence, that Averbuj discloses “a control module configured to generate address . . . signals for testing the memory devices” as recited in independent claims 1, 20, and 29. Petitioner does not correct this deficiency in its challenges as to dependent claims 2–4, 14–19, and 27. See Pet. 32–39; 35 U.S.C. § 112, ¶ 4 (“A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”). Because Petitioner has not identified in Averbuj a teaching of each and every limitation recited in claims 1–4, 14–20, 27, and 29, Petitioner has not met its burden to show these claims are unpatentable under 35 U.S.C. § 102(b) as anticipated by Averbuj.” slip op. at 30
Patent outcomesUS 8,001,434 not shown unpatentableClaim construction§ 102 anticipationPatents in suitUS 8,001,434 - Arista Networks, Inc. v. Cisco Systems, Inc.Rehearing deniedPTAB · Feb 29, 2016 · IPR2015-00973 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing and again denied institution on all challenged claims because the petition did not show a reasonable likelihood that Hendel disclosed the claimed access result.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“being forwarded (restriction) or that an output port is selected and altered. Rather, these citations generally state that priority can be given to certain packets and quality of service can be applied to layer 2 routing. Thus, we are not persuaded that Petitioner’s citation to quality of service in general discloses “generating an access result in response to said at least one selected match.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“rehearing, we determine that the phrase “modifications on the intended destination address to which a packet is to be transmitted” introduces uncertainly into the construction.4 The construction in the Decision appears to conflate the “destination” of a packet with the output interface to which a packet is directed. The Specification does not describe, however, modifying the “destination” of the packet; the only “modification” on how the packet is routed specifically described in the Specification is when “the access control element 120 . . . [alters] the output interface, which was selected by the routing element 110, to another selected output interface.” Ex. 1001, 6:13– 4 Petitioner does not seek rehearing of the claim construction (Reh’g Req. 4, n. 1) but our analysis requires that we revisit the claim construction determination from the Decision. 16; Reh’g Req. 4–5. Thus, we modify our construction of “access control” to mean only restrictions on the transmission of a packet or alteration of a selected output interface for the packet.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Additionally, Petitioner cites to its Declarant Dr. Chao. Reh’g Req. 6 (citing Ex. 1003 ¶ 31). Petitioner’s Declarant states without citation that “a switch may modify the forwarding decision to account for network policies such as quality of service determinations. That is, a packet may be destined for a certain MAC address and port on the switch, but the switch may determine that the packet can be transmitted more reliably through another port, and so it will change the destination port for that packet.” Ex. 1003 ¶ 31. Petitioner’s Declarant’s testimony is conclusory and unsupported by evidence, and, therefore, we give that testimony no weight.” slip op. at 7
Claim constructionPatents in suitUS 6,377,577 - Sure-Fire Electrical Corporation v. Yongjiang Yin And Shenzhen El Lighting Co. Ltd.All claims unpatentablePTAB · Feb 22, 2016 · IPR2014-01448 · APJ Debra K Stephens · IPR · Final written decision
Claims 1 and 7 are unpatentable as obvious over He and Korodi; the Board did not reach the Gustafsson and He ground.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“its claims, but instead, recited only “emits.” Patent Owner has not proffered any evidence or argument as to why “emits and dies” used in the ’279 Patent Specification, would have been abbreviated to “emits” in recitation of the claims. Nor is the term “emits” defined explicitly in the ’279 Patent Specification. Thus, we begin with the assumption that the term “emits” does not include “and dies,” as that comports with the plain and ordinary meaning of the word “emits” Thus, taking the plain and ordinary meaning at the time of the invention, we interpret “emits light in sequence” as “throws off or gives off or out light in a continuous or connected series” and interpret “emits in sequence” as “throws off or gives off or out, in a continuous or connected series” (see e.g., Merriam-Webster’s Collegiate Dictionary 377, 1065 (10th ed. 2000)). Patent Owner has not proffered sufficient evidence or argument that “emits light in sequence” and “emits in sequence” should be read more narrowly than the plain and ordinary meaning as suggested by Patent Owner. Specifically, Patent Owner’s assertion that the Specification supports the proposed interpretation of “emits light in sequence” as “emits and dies light in sequence” is misplaced. The Specification of the ’279 Patent does not explicitly define “emits light in sequence” as “emits and dies light in sequence.” Nor is any explicit definition provided for “emits light in sequence” or “emits in sequence.” Patent Owner would have us import limitations disclosed in several of the embodiments, including Embodiment 1, to interpret “emits” as “emits and dies light in sequence” or “emits and” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“Patent Owner additionally asserts “Patent Owner specifically disclaimed emission of light over the full length of the cable, but rather limited the patent to segment by segment illumination along the length of the cable,” thereby limiting the phrase “emits light in sequence” (PO Resp. 43). Patent Owner identified pages 9–10 of the Response to Office Action filed September 18, 2009 (Ex. 1002, 25–26), as providing this disclaimer (PO Resp. 48–49). However, we agree with Petitioner that the statements in the Response to Office Action do not disclaim subject matter, nor do these statements provide an explicit definition of “emits,” “emits light in sequence, and “emits in sequence.” Indeed, the discussion, limited to claim 7, discusses the object of the invention and distinguishes the invention as recited in claim 7 over the cited prior art, Baumberg et al. (US 5,869,930) (Resp. to OA 9–10). This discussion does not qualify as “clear and unmistakable” disavowing statements as required to meet the “demanding standard for finding a disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., No. 2015-1246, 2016 WL 363410, at *4 (Fed. Cir. Jan. 29, 2016). We, therefore, determine the term “emits light in sequence” and “emits in sequence” used in the claims, should not be interpreted as “emits and dies light of each electroluminescent cored bar or cord in succession, one after the other,” but instead, should be interpreted giving the terms their ordinary and customary meaning as understood by an ordinarily skilled artisan at the time of the invention, in light of the Specification.” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“(PO Resp. 37–40). A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. Innovention Toys, LLC, v. MGA Entm’t, Inc., 637 F.3d 1314, 1322 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Bigio, 381 F.3d at 1325 (citations omitted).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Nonetheless, we find Petitioner has articulated reasoning with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine the teachings (Pet. 34–36; Ex. 1008 ¶¶ 98–104). Specifically, Petitioner contends an ordinarily skilled artisan would have been motivated to combine the teachings of He and Korodi because “such a modification is both a predictable variation and an incremental improvement” (Pet. 35). According to Petitioner, an ordinarily skilled artisan would have found it obvious and “straight-forward” to replace the aluminum core wire in He with a power cord to create an improved illuminated cable using electroluminescent wires that light in sequence (id. at 36). Petitioner further asserts combining the teachings would “involve the merger of familiar elements according to their established functions, known methods, and predictable results” (id.). We agree with the Petitioner that an ordinarily skilled artisan would have been motivated to replace the core wire at the center of He’s cable with a power cord as taught by Korodi to create an improved illuminated cable. We find the combination of He and Korodi unites old elements with no change in their respective functions. Indeed, we agree that combining the teachings would be a merger of familiar elements, Korodi’s power cord and He’s electroluminescent cable, that perform their ordinary functions to predictably result in the recited cable which includes a main power cord and a plurality of electroluminescent cords which emit light in sequence when the main cord and the driver are live. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Additionally, as further support, we credit Petitioner’s Declarant’s, Dr. Mark Horenstein’s, testimony that replacing the aluminum core wire in He for the power cord in Korodi would have been a merger of familiar elements according to their established functions, known methods, and predictable results that an ordinarily skilled artisan would have found obvious (Ex. 1008 ¶¶ 99, 102, 103).” slip op. at 20
Patent outcomesUS 7,671,279 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,671,279 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Feb 16, 2016 · IPR2015-01710 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the petition presented substantially the same art and arguments as the earlier IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Habraken, which was not stated with specificity. “The [’974 IPR] Petition, therefore, fails to identify with sufficient specificity the differences between the claimed invention and the prior art.” ’974 Dec. 17. While the current Petition apparently attempts to provide such specificity (See Pet. 28–31), Patent Owner, nonetheless, has been forced to address a similar ground with similar arguments in two separate Petitions. Prelim Resp. 9, 10; ’974 Prelim. Resp. 22–25, 49–52; see Biodelivery Sciences International, Inc. v. RB Pharmaceuticals Limited, Case IPR2014-00998, slip op. at 7–8 (PTAB December 19, 2014) (Paper 12) (determining, in exercising § 325(d) discretion with respect to a ground in the second-filed petition that was based on a reference not formally included in the ground from the first-filed petition and which the prior DI merely acknowledged as a citation in a claim chart, that the ground in the second-filed petition presented was “the same arguments and relies substantially on the same prior art that the same Petitioner relied upon in its earlier Petition regarding the same claims of the same patent”). Allowing similar, serial challenges to the same patent, by the same petitioner, risks harassment of patent owners and frustration of Congress’s intent in enacting the Leahy-Smith America Invents Act. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (“While this amendment is intended to remove current disincentives to current administrative processes, the changes made by it are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). For these reasons, we conclude that the instant Petition advances “the same or substantially the same prior art or arguments [that] previously were presented to the Office” in the ’974 IPR, and, therefore, we have discretion under § 325(d) to deny institution of the obviousness ground based on Frazier and Habraken.” slip op. at 10
Discretionary denialPatents in suitUS 7,224,668 - Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCInstitution deniedPTAB · Feb 9, 2016 · CBM2015-00171 · APJ Michael W Kim · CBM · Institution
The Board denied institution because Petitioner did not show that any existing claim qualified as a covered business method patent under AIA § 18(d)(1).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that the patent for which review is sought is a covered business method patent.” The AIA defines “covered business method patent” as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a).” slip op. at 6
- Adverse judgmentAdverse judgmentOther
“disclaimer under 37 C.F.R. § 1.321(a) of claims 1–10. Prelim. Resp. 13 (citing Ex. 2002). Thus, the question is whether we should consider now-statutorily disclaimed claims 1–10 in determining whether or not the ’177 patent is a covered business method patent for the purposes of instituting a covered business method patent review. We determine that we should not. 37 C.F.R. § 1.321(a) is the rule promulgated by the Office for creating a procedure for a patentee to avail itself of the provisions of 35 U.S.C. § 253. See Manual of Patent Examining Procedure § 1490. Our reviewing court has held that a patent with a statutory disclaimer is to be treated as though the disclaimed claims never existed. See Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”). Accordingly, for the purposes of whether or not to institute a covered business method patent review, we treat claims 1–10 as never having existed. See Google Inc. v. SimpleAir, Inc., CBM2015-00019 slip op. at 14– 15 (PTAB May 19, 2014) (Paper 11); but see J.P. Morgan Chase v. Intellectual Ventures, Case CBM2014-00157 slip op. at 12–15 (PTAB Jan. 12, 2016) (Paper 40) (although the panel states that “petitioner’s standing to file a petition for covered business method patent review is evaluated based on the time the petition was filed,” in this proceeding, Patent Owner” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“unexpired patent are interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.300(b); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1328 (2015) (affirming use of the broadest reasonable construction standard in a covered business method patent review). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).” slip op. at 5
Claim constructionPatents in suitUS 7,516,177 - Ocean Tomo, LLC v. Patent Ratings, LLCInstitution deniedPTAB · Jan 26, 2016 · CBM2015-00157 · APJ Peter P Chen · CBM · Institution
The Board denied institution of CBM review of claims 1, 9, 16, 18–25, 34, 49, 50–52, and 57 because Ocean Tomo failed to establish standing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied
“must set forth the petitioner’s grounds for standing. 37 C.F.R. § 42.304(a). Rule 42.304(a) states it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.” Id.” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied
“this issue, and agree with Patent Owner. This case is factually distinguishable from MedImmune for the reasons described by Patent Owner. We are not persuaded any of the evidence herein sufficiently demonstrates a charge by Patent Owner of Petitioner’s infringement of the ’849 patent. For example, the parties’ amended pleadings in the Illinois action total 15 causes of action, spanning 71 pages and 280 paragraphs of allegations, yet there is no mention of the ’849 patent, or patent infringement, or non-infringement of patents, or charges of patent infringement. Exs. 1004, 1005. The parties’ contract, tort, and related causes of action concern and arise from the fractured employment and business relationship between Petitioner and Mr. Barney and Patent Owner, not from charges of infringement of the ’849 patent.” slip op. at 9
Discretionary denialPatents in suitUS 9,075,849 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Jan 21, 2016 · IPR2014-01185 · APJ Peter P Chen · IPR · Final written decision
Claims 1–10 and 17 are unpatentable: claims 1–3 and 5 as obvious over Schmidl and Arslan; claims 4 and 6–10 over those references and Kim; claim 17 over those references and Heiskala.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Our interpretation of the disputed term begins with the language of the claim. See Microsoft Corp. v. Proxyconn Inc., 789 F.3d 1292, 1299 (Fed. Cir. 2015). Claim 1 recites that pilot symbols are inserted “into data blocks.” We construe claim 1’s plain language using the plural form of “data blocks” to mean that pilot symbols may be inserted not only within a single data block, as Patent Owner contends, but also between one data block and another data block, as Petitioner contends. Claims should also be read in light of the specification and teachings in the underlying patent. Cuozzo, 793 F.3d at 1280; Microsoft, 789 F.3d at 11 1298. Here, the specification also uses the plural form of data blocks in explaining that “[t]ypically, pilot symbols may be inserted at any point in the data blocks.” Ex. 1001, 16:55–56, 7:28–29. There is no language in the specification disclaiming the insertion of pilot symbols between data blocks. We are persuaded that based on the claim’s usage of the plural “data blocks,” which is supported by the description in the specification, the broadest reasonable construction is “pilot/training symbol inserter configured to insert pilot symbols within, or between, one or more data blocks,” and accordingly, does not exclude the insertion of pilot symbols between two data blocks that are in a group of data blocks.” slip op. at 11
- Skill levelSkill level board ownOther
“We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the 13 cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“that “both Schmidl and Arslan are directed at improving synchronization between a wireless transmitter and a wireless receiver, and disclose frame structures including information for the same.” Pet. 16. In particular, Schmidl discloses an encoder that inserts training symbols in the frequency domain, to form training symbols in the time domain. Pet. Reply 13, 17 (citing Ex. 1036 ¶ 21); see Ex. 1002, 2:7–17. Arslan discloses a frame structure in the time domain containing pilot symbols interspersed among data symbols. Pet. Reply 16–17 (citing Ex. 1036 ¶¶ 20, 22). Petitioner further states: [I]t would have been obvious to use pilot symbols as separate time domain symbols for tracking time variations to calibrate or synchronize the receiver to the transmitter by using time-domain pilot symbols in Schmidl’s system. . . [citing to Supplemental Declaration of Dr. Zygmunt Haas ¶ 22.] As discussed above, Schmidl discloses inserting symbols in the frequency domain for an OFDM system, for calibration and synchronization. See id. It would have been obvious to create those time-domain pilot symbols in the same manner as the time-domain training symbols are created in Schmidl’s encoder – that is, by inserting blocks of known pilot symbols in the frequency domain that would result in time-domain pilot symbols. See id. It would be obvious to a POSA that the same circuitry in Schmidl’s encoder 14 used to insert training symbols would be used to insert pilot symbols, resulting in the claimed “pilot/training symbol inserter configured to insert pilot symbols into data blocks.” See id. Pet. Reply 17–18; see Pet. 16, 29–30.” slip op. at 22
Patent outcomesUS 7,269,127 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,269,127
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.