- Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Sep 11, 2017 · IPR2017-00935 · APJ Justin T Arbes · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“requesting inter partes review of claims 1, 4, 8–11, 13, 17–24, 26–28, 43, 46, 49, 50, and 52–62 of U.S. Patent No. 8,354,726 B2 (Ex. 1001, “the ’726 patent”) pursuant to 35 U.S.C. § 311(a). Patent Owner Godo Kaisha IP Bridge 1 filed a Preliminary Response (Paper 8, “Prelim. Resp.”) pursuant to 35 U.S.C. § 313. Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we have decided not to institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“limitation of claim 1. Petitioner does not point to any express disclosure in the Intel 90 nm Report of the relevant distance and thicknesses, instead relying on averages of various measurements made by Dr. Fair. See Pet. 39–40; Ex. 1003 ¶¶ 93–99. Petitioner and Dr. Fair, however, do not explain any basis for why it is appropriate to rely on averages of measurements of different components at different locations—as opposed to actual measurements of each component asserted to be the “first gate electrode,” “auxiliary pattern,” “first side-wall insulating film,” “second side-wall insulating film,” and “stress-containing insulating film” recited in the claim—for purposes of calculating the distance limitation. For example, Petitioner does not contend that a person of ordinary skill in the art would have calculated averages and understood the reference to disclose certain values based on such a methodology. “Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference,” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir. 1989), and that the claim limitations be “arranged or combined in the same way as recited in the claim[],” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Petitioner’s reliance on averages of various measurements, without any supporting explanation, is insufficient to show that the Intel 90 nm Report discloses the distance limitation of claim 1.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“D. Other Asserted Grounds (Claims 20, 22, 54, and 56) Petitioner contends that claims 20 and 54 are unpatentable over the Intel 90 nm Report and the Intel IEEE Paper, claims 22 and 56 are unpatentable over the Intel 90 nm Report and Doris, and claims 22 and 56 are unpatentable over the Intel 65 nm Report and Doris, under 35 U.S.C. § 103(a). Pet. 77–83. Claims 20 and 22 depend from claim 1, and claims 54 and 56 depend from claim 43. Petitioner does not argue that the distance limitation of claims 1 and 43 is taught by the Intel IEEE Paper or Doris, alone or in combination with the Intel reports. Id. We are not persuaded that Petitioner has established a reasonable likelihood of prevailing on its asserted grounds for the reasons explained above with respect to parent claims 1 and 43. See supra Sections II.B, II.C.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“E. Claim Interpretation The Board interprets claims using the “broadest reasonable construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard as the claim interpretation standard to be applied in inter partes reviews). The parties do not provide proposed interpretations for any claim terms, but Petitioner refers to a district court decision interpreting certain terms. See Pet. 11 (citing Ex. 1008). For purposes of this Decision, we conclude that no claim terms require interpretation.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,354,726 - Fitbit, Inc. v. Bodymedia, Inc.All claims unpatentablePTAB · Jul 19, 2017 · IPR2016-00545 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 19, 23, and 24 are unpatentable as anticipated by Amano ’342.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). Pursuant to that standard, the claim language should be read in light of the specification, as it would be interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we generally give claim terms their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.”) (internal quotation marks omitted). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Neither party proposes an express construction for any limitation of claim 19, 23, or 24. See Pet. 12–13 (proffering express construction for only “life activities data” (claims 5, 6, and 10)); PO Resp. 7–8 (likewise proffering express construction for only “life activities data”). We do not adopt an express construction for any claim limitation.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner responds that it is not clear whether the “calculated results are equivalent to a derived parameter, data indicative of a first physiological parameter or a second physiological parameter.” PO Resp. 8– 9 (citing Ex. 2005 ¶49). But, the only evidence to which Patent Owner cites—Exhibit 2005 ¶49—has been expunged.8 Accordingly, Patent Owner has no evidence to support its argument that the relied-upon teaching in 8 Exhibit 2005 was a declaration by Thomas Blackadar that was expunged because Mr. Blackadar was not made available for cross-examination. See Paper 17 (expunging both of Mr. Blackadar’s declarations along with his curriculum vitae (i.e., Exhibits 2001, 2002, and 2005)). Amano ’342 is unclear. Second, Patent Owner’s interpretation of Amano ’342 is erroneous. Amano ’342 teaches notification to the user “of the calculated calorie expenditure . . . by means of a synthesized voice” and then immediately states that such notification alternatively could “rel[y] on the tactile sense by employing vibration in the notification” of the calculated expenditure. Ex. 1004, 34:27–32. The calculated calorie expenditure is a derived parameter of the individual. It is not measured directly; it is derived from data collected from the motion, temperature, and pressure sensors. Ex. 1004, 1:6–9, 6:57–7:56, 8:62–9:44, 12:21–30. Petitioner has shown, by a preponderance of the evidence, that Amano ’342 anticipates claim 19.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“As discussed above, we find—as the Examiner in the ’376 reexamination found—that Amano ’342 discloses all limitations of claim 1 including Limitation (b). As further discussed above, we also find that claims 19, 23, and 24—which were not subject to the ’376 reexamination— are unpatentable as anticipated by Amano ’342. In light of the forgoing, we discern no reason to determine whether claims 19, 23, and 24 also would be unpatentable when applying an alternative and erroneous construction of Limitation (b) of claim 1, which this Board and the Federal Circuit did not adopt previously, and which we do not adopt now.” slip op. at 23
Patent outcomesUS 8,073,707 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,073,707 - Hologic, Inc. v. Enzo Life Sciences, Inc.Rehearing deniedPTAB · Mar 13, 2017 · IPR2016-00822 · APJ Michael J Fitzpatrick · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place because it found sufficient evidence that the non-patent references were prior art for institution purposes.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“§ 42.62(a) states that “the Federal Rules of Evidence shall apply to a proceeding,” and that “a proceeding” is defined in § 42.2 to include the preliminary proceeding prior to institution. Id. at 6. Patent Owner then concludes incorrectly, however, that it was entitled to an evidentiary ruling during the preliminary proceeding. Id. at 6–7. Although the Federal Rules of Evidence apply to the instant proceeding,7 a party is not entitled to an evidentiary ruling prior to institution. Indeed, our regulations create a postinstitution procedure for challenging evidence and ruling on those challenges. See 37 C.F.R. § 42.64. This post-institution procedure expressly applies to pre-institution evidence. Id. at 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”). The Board’s procedure allows for curing of alleged evidentiary defects through the timely service of supplemental evidence. Id. at 42.64(b)(2). Ultimately, “[a] motion to exclude must be filed to preserve any objection.” Id. at 42.64(c). Motions to exclude in the instant inter” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner has made a sufficient showing that each of these references qualify as prior art printed publications. For example, Fish appears to be an article from the journal Arthritis and Rheumatism and bears a “March 1981” publication date on the cover of the volume as well as the cover page of the article. Ex. 1006, cover page and 534. Sato appears to be an article from the journal Radiation Research and bears a publication date of 1981. Ex. 1034, 646. Gilham appears to be an article published in a book titled Immobilized Biochemicals and Affinity Chromatography, which includes a copyright date of 1974 and an indication that it contains most of the papers presented in a “Symposium on Affinity Chromatography and Immobilized Biochemicals” held November 7–9, 1973. Ex. 1019, second page after cover (“Library of Congress Cataloging in Publication Data”). VPK appears to be an article from the journal Experimental Cell Research and is dated October 1982. Ex. 1008, cover page. Noyes appears to be an article from the journal Cell and is dated July 1975. Ex. 1007, 301. Finally, Ramachandran appears to be an article from the journal Biotechnology and Bioengineering and is dated 1975. Thus, each of these references bears a date prior to the earliest possible effective filing date for the challenged claims (i.e., Jan. 27, 1983). See Ex. 1001, 1:19; 35 U.S.C. § 120. Moreover, the references are either journal articles or excerpts from a book, and thus appear to have been publicly disseminated. Petitioner has made sufficient showing that these documents qualify as prior art printed publications. After institution, Patent Owner may, if it chooses to do so, continue to challenge the sufficiency or admissibility of the evidence. See 35 U.S.C. § 311(b); 37 C.F.R. § 42.64(b).” slip op. at 4
- ExcludeNot reached
“§ 42.62(a) states that “the Federal Rules of Evidence shall apply to a proceeding,” and that “a proceeding” is defined in § 42.2 to include the preliminary proceeding prior to institution. Id. at 6. Patent Owner then concludes incorrectly, however, that it was entitled to an evidentiary ruling during the preliminary proceeding. Id. at 6–7. Although the Federal Rules of Evidence apply to the instant proceeding,7 a party is not entitled to an evidentiary ruling prior to institution. Indeed, our regulations create a postinstitution procedure for challenging evidence and ruling on those challenges. See 37 C.F.R. § 42.64. This post-institution procedure expressly applies to pre-institution evidence. Id. at 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”). The Board’s procedure allows for curing of alleged evidentiary defects through the timely service of supplemental evidence. Id. at 42.64(b)(2). Ultimately, “[a] motion to exclude must be filed to preserve any objection.” Id. at 42.64(c). Motions to exclude in the instant inter” slip op. at 5
§ 102 anticipationPatents in suitUS 7,064,197 - Amneal Pharmacuticals LLC v. Hospira Inc.Institution deniedPTAB · Feb 3, 2017 · IPR2016-01580 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–9 obvious over any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and Preliminary Response, and for the reasons explained below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to any claim challenged in the Petition. See 35 U.S.C. § 314(a); 37 C.F.R § 42.108. The Petition is denied.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“In sum, Petitioner has not shown that the relied-upon prior art teaches “wherein the liquid pharmaceutical composition when stored in the glass container for at least five months exhibits no more than about 2% decrease in the concentration of dexmedetomidine,” or that it is inherent. That limitation is recited by claim 1 and incorporated by all other challenged claims via their dependency on claim 1. Accordingly, there is not a reasonable likelihood of Petitioner prevailing in challenging any of claims 1–9 as unpatentable over 2010 Precedex Label and Palmgren. C. The Remaining Grounds Petitioner challenges claims 1–9 as unpatentable over Aantaa, the 2010 Precedex Label, and Palmgren as well as over the 2010 Precedex Label, De Giorgi, Eichhorn, Palmgren, and Lavoisier. Pet. 11–12. In both of these additional grounds, Petitioner relies on the same flawed inherency argument. See Pet. 37–38, 56. Accordingly, there likewise is not a reasonable likelihood of Petitioner prevailing in challenging claims 1–9 on either of these remaining grounds.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In sum, Petitioner has not shown that the relied-upon prior art teaches “wherein the liquid pharmaceutical composition when stored in the glass container for at least five months exhibits no more than about 2% decrease in the concentration of dexmedetomidine,” or that it is inherent. That limitation is recited by claim 1 and incorporated by all other challenged claims via their dependency on claim 1. Accordingly, there is not a reasonable likelihood of Petitioner prevailing in challenging any of claims 1–9 as unpatentable over 2010 Precedex Label and Palmgren. C. The Remaining Grounds Petitioner challenges claims 1–9 as unpatentable over Aantaa, the 2010 Precedex Label, and Palmgren as well as over the 2010 Precedex Label, De Giorgi, Eichhorn, Palmgren, and Lavoisier. Pet. 11–12. In both of these additional grounds, Petitioner relies on the same flawed inherency argument. See Pet. 37–38, 56. Accordingly, there likewise is not a reasonable likelihood of Petitioner prevailing in challenging claims 1–9 on either of these remaining grounds.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“It is irrelevant that the 2010 Precedex Label does not explicitly disclose this inherent property of the Precedex® solutions therein.” Pet. 22. But, like its “stable for two years” argument, Petitioner’s inherency argument speaks to the concentrated form of dexmedetomidine-HCl disclosed in the 2010 Precedex Label, which is outside the scope of claim 1, and not to a “ready to use” diluted form. Moreover, the stated basis for Petitioner’s inherency assertion is that “the Precedex™ solutions disclosed in the 2010 Precedex Label were stored under identical conditions – sterile, in a sealed glass container – as those in Example 1 of the ’106 patent which exhibited no more than about 2% decrease in the concentration.” Id. at 22 (citing Ex. 1001, 13:35–43; Ex. 1007, ll. 207–08, 697–701). But, the conditions were not identical; they employed different concentrations and temperatures. More specifically, the 2010 Precedex Label discloses glass vial storage of dexmedetomidine-HCl at a concentration of 100 mcg/mL concentration and a temperature of “25°C (77°F) with excursions allowed from 15 to 30°C (59 to 86°F),” whereas Example 1 of the ’106 patent presents five-month stability data for dexmedetomidine-HCl at a concentration of just 4 mcg/mL and at a temperature of 40°C. Compare Ex. 1007, lines 697–701, with Ex. 1001, 13:28–37, 45–47, 14:4–14. slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,648,106 - Sony Computer Entertainment America LLC / Microsoft Corporation Inc. v. Adc Technology Inc.All claims unpatentablePTAB · Jul 1, 2016 · CBM2015-00026 · APJ Michael P Tierney · CBM · Final written decision
Claims 8–14 are unpatentable under §103 as obvious over the instituted prior-art combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“D. Level of Ordinary Skill in the Art Petitioner’s declarant, Mr. Garry E. Kitchen, testifies that, based on his experience in the commercial software art, a person of ordinary skill in the art at the time of the invention would have had a Bachelor of Science degree in electrical engineering, computer engineering, computer science or a related engineering discipline or equivalent experience or education. Declaration of Garry Kitchen, Ex. 1011 ¶ 33. Patent Owner does not dispute this recitation of the level of ordinary skill in the art. We adopt the level of ordinary skill in the art identified by Mr. Kitchen as it is consistent with the prior art of record. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“Petitioner provides specific constructions for each of the interference means appearing in the dependent claims. Pet. 22–24. Patent Owner disagrees that the dependent claims recitation of interference means requires “additional functional limitations piled on top of the disclosed structure.” PO Resp. 7. Specifically, Patent Owner contends that there is only one construction of interference means, namely that which Petitioner provided with respect to the interference means of claim 8. Petitioner disagrees with Patent Owner and contends that the four dependent claims themselves recite specific functions and must further limit the claim from which they depend. Reply 7. We determine that it is unnecessary to determine whether Patent Owner or Petitioner is correct as to the specific construction of the interference means recited in claims 11, 12, 13, and 14 as the claims are unpatentable under either construction. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Program, Data and Combination of Program and Data Claim 8 contains the recitation “the program, the data, and a combination of the program and data together.” Petitioner contends that the term should mean “the program and/or the data.” Pet. 28; Reply 9. Petitioner, however, contends that Patent Owner was silent as to the meaning of the term during ex parte reexamination. Pet. 29. Patent Owner generally contends that the claim recitation is definite and requires operations to be performed either on “a program, or on data, or on a combination of the program and data.” PO Resp. 8. We adopt Patent Owner’s construction (operations are performed either on “a program, or on data, or on a combination of the program and data”) as it is consistent with the plain and ordinary meaning of the term and appears to be substantially the same as Petitioner’s construction. Reply, 9–10, Ex. 1011, ¶ 54.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The obviousness-type double patenting rejection does not demonstrate that the earlier filed ’995 patent described the invention, with all its claimed limitations. First, the rejection was based on obviousness, not anticipation. See Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). (“One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.”). Second, the Examiner’s identification of “common subject matter” consists merely of that which appears in the preamble of challenged claim 8. Although the Examiner stated that there was no apparent reason why the present claims were not presented in the earlier application, Mr. Kitchen presents credible testimony that the clock means limitation “for keeping a predetermined time period after said executing means starts execution of the program or data processing,” did not appear in the earlier filed applications and written description support for it was added in the continuation-in-part ’784 application via new Figure 12. Ex. 1011 ¶¶ 46–47 and 49; compare Ex. 1001, Figures 1–14, with Ex. 1014, Figures 1–11. Based on the evidence of record, we credit Mr. Kitchen’s testimony as it is consistent with the evidence of record and hold that Petitioner has established that claims 8–14 are limited to the July 2, 1998, filing date of the ’784 application, which resulted in the issuance of the ’520 patent.” slip op. at 15
Patent outcomesUS 6,193,520 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 6,193,520 - Enovate Medical, LLC v. Intermetro Industries CorporationAll claims unpatentablePTAB · May 11, 2016 · IPR2015-00300 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 27, 28, 88, 101, and 108 are unpatentable as obvious over Dell, Sweere, and Allan, with Planar additionally applied to claim 108.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (internal citations omitted). Generally, “the ‘real party-in-interest’ [on the petitioner side] is the party that desires review of the patent. Thus, the ‘real party-in-interest’ may be the petitioner itself, and/or it may be the party or parties at whose behest the petition has been filed.” Id.” slip op. at 8
- ExcludeMotion to exclude, grantedGranted
“IV. MOTIONS TO EXCLUDE Petitioner filed a Motion to Exclude Exhibits 2003–2006. Paper 33. Each of Exhibits 2003–2005 is a license agreement, and Exhibit 2006 is a Declaration by Robert A. Sobie. All of this evidence was submitted by Patent Owner as objective evidence of secondary considerations. Because we do not rely on any of that evidence in a manner adverse to Petitioner, we dismiss the Motion as moot. Patent Owner filed a Motion to Exclude Exhibit 1007, which is a declaration by T.E. Schlesinger, Ph.D., which Petitioner filed with its Reply. Paper 35. Because we do not rely on Exhibit 1007 in any manner, we dismiss the Motion as moot.” slip op. at 28
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“entity. It was filed without our authorization because it was filed with Patent Owner’s Opposition to Petitioner’s Motion to Exclude despite that Exhibit 202316 is not responsive to the Motion to Exclude. Paper 42 (“Opp. to Pet. Mot. to Excl.”). In fact, Patent Owner’s Opposition requests that we enter into the record “new Exhibit 2023, which was finalized subsequent to Patent Owner’s Response.” Opp. to Pet. Mot. to Excl. 1. A request for relief should not be made in an opposition brief. It should be made in a motion. 37 C.F.R. § 42.20(a) (“Relief, other than a petition requesting the institution of a trial, must be requested in the form of a motion.”). Further, a motion (and, thus, a request for relief) may be filed only if authorization has been obtained. 37 C.F.R. § 42.20(b) (“A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability or during the proceeding.”). Consequently, Exhibit 2023 shall be expunged because it was filed without our authorization. See 37 C.F.R. § 42.7.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“No limitation requires an express construction for purposes of the patentability challenge at issue here. See Pet. 6–7 (offering only one proposed construction, which was not material to the patentability challenge);8 PO Resp. 11 (“Patent Owner agrees that the claim terms involved in the [instituted Grounds] do not require construction for purposes of resolving this [inter partes review (IPR)].”).” slip op. at 7
Patent outcomesUS 6,721,178 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,721,178 - EMC Corporation v. Acqis LLCNo claims unpatentablePTAB · Mar 8, 2016 · IPR2014-01462 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 54 and 56–61 were not shown unpatentable because the evidence did not establish that the cited references rendered the claimed PCI transaction communication obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“construction in the Decision on Institution. The evidence indicates that the term “Peripheral Component Interconnect (PCI) bus transaction” refers to a particular industry standard, not just any communication with an interconnected peripheral component. Industry literature and dictionaries use the proper noun “Peripheral Component Interconnect” and the abbreviation “PCI” to refer to a particular industry specification for a local bus. See, e.g., Ex. 2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims recite “Peripheral Component Interconnect” as a proper noun and abbreviate it as “PCI,” indicating that the challenged claims use those terms consistent with the understood industry meaning. Ex. 1001, col. 43, ll. 48–49, col. 44, l. 6; see Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed. Cir. 2014). The written description similarly uses the abbreviation “PCI” to refer to a particular industry standard, and uses the common noun “peripheral bus” to refer to a generic peripheral bus. Compare Ex. 1001, col. 5, ll. 31–33 (“The present invention . . . interface[s] two PCI or PCI-like buses”), with id. at col. 10, ll. 53–55 (“Additionally, the peripheral controller is coupled to a clock control logic, a configuration signal, and a peripheral bus.”) (emphasis added).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“obvious over Horst and LVDS Owner’s Manual; claims 56 and 59 would have been obvious over Horst, LVDS Owner’s Manual, and Pocrass; and claim 58 would have been obvious over Horst, LVDS Owner’s Manual, and Deters. Pet. 58–59. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) any objective indicia of non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We have considered the parties’ arguments and supporting evidence, and we determine that Petitioner has not shown by a preponderance of the evidence that claims 54 and 56–61 would have been obvious over the cited references.” slip op. at 7
- ExcludeMotion to exclude, deniedMixed
“Owner argues that paragraphs 10–24 and 31–37 of Exhibit 1031 should be excluded as irrelevant and prejudicial because Petitioner relies on those paragraphs to support improper arguments in the Reply. PO Mot. 8. Petitioner argues in the Reply that the TNet transaction in Horst includes PCI address bits, and that claim 54 only requires communicating two bits of a PCI bus transaction. PO Mot. 1. Patent Owner contends that both arguments exceed the scope of a proper reply, as set forth in 37 C.F.R. § 42.23(b), and that the portions of Exhibit 1031 that Petitioner relies upon to support those arguments should be excluded as irrelevant and prejudicial. PO Mot. 2–4, 6, 7. Patent Owner’s argument is not persuasive. Patent Owner argues in the Response that the TNet transaction in Horst does not include PCI address bits. PO Resp. 27–29. As such, Petitioner’s argument in the Reply that the TNet transaction includes PCI address bits is responsive to an argument raised in the Response. See 37 C.F.R. § 42.23(b) (generally permitting a reply to respond to arguments raised in a response). Patent Owner also argues in the Response that claim 54 requires communicating a 32-bit PCI address. PO Resp. 8–11. As such, Petitioner’s argument in the Reply that claim 54 only requires communicating two bits of a PCI bus transaction is responsive to an argument raised in the Response. Because we are not persuaded that the identified arguments in the Reply are improper, the premise of Patent Owner’s Motion to Exclude Exhibit 1031 fails. Therefore, Patent Owner’s Motion to Exclude paragraphs 10–24 and 31–37 of Exhibit 1031 is denied.” slip op. at 16
Patent outcomesUS 8,041,873 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,041,873 - Leggett & Platt, Inc. v. Dreamwell, Ltd.Institution deniedPTAB · Feb 22, 2016 · IPR2015-01757 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on claims 1–9 under the asserted obviousness ground.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. ANALYSIS A. Claim Construction In an inter partes review, the Board interprets claim terms in an unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as they 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). Petitioner proposes a construction for “high-carbon steel.” Pet. 21. We, however, determine that an explicit construction of “high-carbon steel” or any other claim term is not necessary for the purposes of our Decision.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Absent other evidence or another articulated rationale with logical underpinning, combining Gladney, Kochi, and Magrab to arrive at the a spring for a cushioning article made from the specifically claimed alloy of high-carbon steel appears to be improper hindsight. “A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” See KSR, 550 U.S. at 421. Petitioner fails to establish a sufficient articulated reasoning with some rational underpinning to support the legal conclusion of obviousness (In re Kahn, 441 F.3d at 988) and, thus, fails to demonstrate a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. iii. Dependent Claims 2–9 Claims 2–9 depend from claim 1, and, like for claim 1, Petitioner contends that claims 2–9 are unpatentable over Gladney, Kochi, and Magrab (Pet. 40–47). For the same reasons as discussed above, we determine that Petitioner fails to demonstrate a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The evidence of record does not establish sufficiently that the prior art alloyed high-carbon steel is an inexpensive material suitable for springs of a mattress or other cushioning article. Gladney’s general disclosure that springs made from high-carbon spring steels are inexpensive (see Ex. 1003, 5:1–3), fails to establish sufficiently that the prior art alloyed high-carbon steel is inexpensive or suitable for springs of a mattress or cushioning article. Likewise, Magrab’s general disclosures that high-carbon steel is inexpensive and used for springs (see Ex. 1005, 155, 161–162) and Kochi’s brief mention of “spring steel” (Ex. 1004 ¶ 1) does not demonstrate such. Dr. O’Malley’s testimony also does not cure the deficiencies of the prior art because Dr. O’Malley discusses cost with regards to carbon steel generally, but not the cost of the prior art alloyed high-carbon steel. See Ex. 1002 ¶¶ 68, 85. We also acknowledge that Gladney and Magrab disclose that the cost of materials is a factor to be considered when choosing an alloy. Pet. 38 (citing Ex. 1003, 1005). Such disclosure, however, does not demonstrate that claim 1 would have been obvious based on Gladney, Kochi, and Magrab. And Petitioner’s reliance on Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006) does not persuade us otherwise. In Dystar, decided prior to KSR, the Federal Circuit emphasized a flexible approach to considering whether an invention would have been obvious. DyStar, 464 F.3d at 1367 (“It is difficult to see how our suggestion test could be seen as rigid and categorical given the myriad cases over several decades in which panels of this court have applied the suggestion test flexibly.”). As noted by the Court, “[o]bviousness is a complicated subject requiring sophisticated analysis, and no single case lays out all facets of the legal test.” Id. Moreover, as discussed above, there is no persuasive evidence that the alloyed high-carbon steel spring recited in the claim is less expensive or more efficient than prior art springs. See Prelim. Resp. 17 (pointing out there is no “list of materials costs or any manufacturing cost analysis that would substantiate Petitioner’s statement in the context of combining Gladney with Kochi with Magrab to allegedly come up with the claimed invention.”). The evidence of record fails to demonstrate, sufficiently, that the prior art alloyed high-carbon steel is an inexpensive material suitable for a spring for a mattress or cushioning articles and, thus, Petitioner fails to establish that one of ordinary skill in the art would make the proposed modification because the alloyed high-carbon steel required by claim 1 is a well-known inexpensive material that is suitable for springs.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“C. Availability of Magrab as Prior Art Patent Owner argues that Petitioner fails to establish that Magrab was publically accessible prior to April 18, 2008. Prelim. Resp. 34–36. As discussed above, we determine that Petitioner fails to demonstrate that claims 1–9 are unpatentable over Gladney, Kochi, and Magrab and, thus, we need not address whether Petitioner has established sufficiently that Magrab is prior art for the purposes of our Decision.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,919,752 - Leggett & Platt, Inc. v. Dreamwell, Ltd.Institution deniedPTAB · Feb 22, 2016 · IPR2015-01753 · APJ Barry L Grossman · IPR · Institution
Institution was denied because the petition did not show a reasonable likelihood of proving claims 1–20 obvious over Gladney, Kochi, and Magrab.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. It is not enough to show merely that the prior art includes separate references covering each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. Petitioner’s rationale for the proposed combination of references is that it would have been obvious “to apply the alloy compositions as taught by Kochi to the wire spring of Gladney to obtain the multiple benefits as taught by Kochi.” Pet. 33. According to Petitioner, [t]he combination is nothing more than applying a known technique of producing a high-carbon spring steel, as taught by Kochi, to the known spring of Gladney to yield the predictable results of, for example, providing excellent wire-drawing workability, generating wire insusceptible to wire break, extending die life, increasing a wire-drawing rate thereby enhancing productivity during the manufacturing process, reducing cost, and producing a product, e.g., spring that is less susceptible to breakage. Id. at 33–34 (citing Ex. 1002 ¶ 71). Paragraph 71 of Exhibit 1002, the Declaration of Dr. O’Malley, is essentially a verbatim repetition of the portion of the Petition quoted above. It does not provide any underlying facts or data on which the opinion is based, and thus is entitled to little or no probative weight. 37 C.F.R. § 42.65(a). Neither the Petition nor the cited portion of Dr. O’Malley’s Declaration refers to any persuasive evidence to support the assertions that the proposed combination of references extends die life, increases a wire-drawing rate thereby enhancing productivity during the manufacturing process, reduces cost, and produces a product, e.g., a spring, that is less susceptible to breakage. slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner’s rationale for the proposed combination of references is that it would have been obvious “to apply the alloy compositions as taught by Kochi to the wire spring of Gladney to obtain the multiple benefits as taught by Kochi.” Pet. 33. According to Petitioner, [t]he combination is nothing more than applying a known technique of producing a high-carbon spring steel, as taught by Kochi, to the known spring of Gladney to yield the predictable results of, for example, providing excellent wire-drawing workability, generating wire insusceptible to wire break, extending die life, increasing a wire-drawing rate thereby enhancing productivity during the manufacturing process, reducing cost, and producing a product, e.g., spring that is less susceptible to breakage. Id. at 33–34 (citing Ex. 1002 ¶ 71). Paragraph 71 of Exhibit 1002, the Declaration of Dr. O’Malley, is essentially a verbatim repetition of the portion of the Petition quoted above. It does not provide any underlying facts or data on which the opinion is based, and thus is entitled to little or no probative weight. 37 C.F.R. § 42.65(a). Neither the Petition nor the cited portion of Dr. O’Malley’s Declaration refers to any persuasive evidence to support the assertions that the proposed combination of references extends die life, increases a wire-drawing rate thereby enhancing productivity during the manufacturing process, reduces cost, and produces a product, e.g., a spring, that is less susceptible to breakage.” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“C. Availability of Magrab as Prior Art Patent Owner argues that Petitioner fails to establish that Magrab was publically accessible prior to April 18, 2008. Prelim. Resp. 36–38. As discussed above, we determine that Petitioner fails to demonstrate that claims 1–20 are unpatentable over Gladney, Kochi, and Magrab and, thus, we need not address whether Petitioner has established sufficiently that Magrab is prior art for the purposes of our decision.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. ANALYSIS A. Claim Construction When interpreting a claim, words of the claim are generally given their ordinary and accustomed meaning, unless it appears from the specification, the file history, or other evidence asserted by the parties that the inventor used them differently. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. Id. Petitioner proposes a construction for “high-carbon steel.” Pet. 20– 21. We, however, determine that an explicit construction of “high-carbon steel” or any other claim term is not necessary for the purposes of our Decision.” slip op. at 5
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,474,805 - TRW Automotive U.S. LLC v. Magna Electronics Inc.No claims unpatentablePTAB · Jan 15, 2016 · IPR2014-01348 · APJ Michael J Fitzpatrick · IPR · Final written decision
The Board held claims 40, 41, 43, 44, 46–59, 61–64, 66–74, 86, 87, 89, and 90 not unpatentable because it excluded Goldbeck for lack of authentication.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted
“Rule 901(a) states: “To satisfy the requirement of authenticating or identifying an item of evidence, the proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a). Thus, we first look to what TRW claimed Exhibit 1105 to be. In that regard, the only identifying information provided by TRW is a footnote in its Petition. See Pet. 2 n.4. The footnote offers a purported bibliographic reference for Exhibit 1105 as follows: “Goldbeck et al., ‘Lane 5 detection and tracking by video sensors,’ Intelligent Transportation Systems, 1999. Proc., 5-8 Oct. 1999, pp.74-79.; prior art under 35 U.S.C. § 102(b).” Id. Thus, TRW claimed that Exhibit 1105 was published during October 5–8 of 1999 in something called Intelligent Transportation Systems. Id. TRW did not cite or otherwise provide any evidence for this claim. Id.8” slip op. at 5
- BurdenNot shown unpatentable
“In its Petition, TRW offered Exhibit 1105 as an article published October 5– 8, 1999, in Intelligent Transportation Systems. Pet. 2 n.4. Magna timely objected for, among other things, lack of authentication. TRW did not serve any supplemental evidence that Exhibit 1105 is what TRW claims it is. And, in opposing the Motion to Exclude, TRW has not directed us to evidence probative of Exhibit 1105 being an article published October 5–8, 1999, in Intelligent Transportation Systems or persuaded us that Exhibit 1105 is self-authenticating for that which TRW generally claims it to be: “an IEEE publication from an IEEE periodical.” Opp. 4. Magna’s Motion to Exclude Exhibit 1105 for lack of authentication is granted. III. CONCLUSION Petitioner’s ground of unpatentability relies on Exhibit 1105 (Goldbeck). Because we exclude Exhibit 1105 from evidence, Petitioner’s ground of unpatentability necessarily fails.” slip op. at 12
Patent outcomesUS 8,508,593 not shown unpatentableNonePatents in suitUS 8,508,593
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.