- Illumina, Inc. v. The Trustees Of Columbia University In The City Of New YorkAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00797 · APJ Michelle N Ankenbrand · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over the instituted grounds; the Board also denied Petitioner’s motion to exclude and found no estoppel against Patent Owner.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“II. PETITIONER’S MOTION TO EXCLUDE In support of its briefing, Patent Owner provided a declaration of” slip op. at 9
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“proceedings or would otherwise have a collateral estoppel effect on the current proceedings. See Paper 59, 4–5. For the reasons set forth below, we determine that the claims of the ’985 patent have material differences from the claims at issue in the previous proceedings, and that there is no inconsistency between Patent Owner’s positions in the current proceeding and in the previous proceedings. Accordingly, we determine that there is no estoppel attaching to Patent Owner with respect to the present inter partes reviews. Below, we provide a brief history of the previous proceedings and then address Petitioner’s contentions.” slip op. at 61
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for patent owner
“analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50
Patent outcomesUS 9,868,985 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,868,985 - Mentor Graphics Corporation v. Synopsys, Inc.All claims unpatentablePTAB · Jun 11, 2015 · IPR2014-00287 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–3, 10–13, and 20 are unpatentable as obvious over Vander Zanden and Shand; the other proposed grounds did not establish unpatentability.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“inferring” in accordance with its plain meaning, including: concluding, deciding, deducing, deriving, extrapolating, gathering, judging, making out, reasoning, understanding, and recognizing. Inst. Dec. 9–10. We did not provide a construction for any other terms. Patent Owner’s position is that the word “deducing” comes closer to the meaning of “inferring” than the words “recognizing” or “identifying” as proposed by Petitioner. PO Resp. 24, see also Pet. 14. Our construction includes from its plain meaning, a variety of words (including: deducing recognizing, and identifying) that, depending on context, provide additional understanding of the word “inferring.” Inst. Dec. 9–10. A plain meaning of the word “incorporating” is “to unite or work into something already existent so as to form an indistinguishable whole.” Incorporate, Merriam-Webster Online Dictionary, http://www.merriam-webster.com/dictionary/incorporate (last visited May 28, 2015). For these words, we do not consider the proffered constructions to provide any clarity over the term itself. Consequently, we simply are not persuaded by either of the parties contentions and interpretations that under the broadest reasonable interpretation, in the context of the Specification and claims, that these words should be construed with respect to only the particular definitions or meanings ascribed to them by either party. slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on our claim construction, we are persuaded that Vander Zanden does not disclose a “resetable memory” as recited in independent claim 1. We determined that a “resetable memory” means a memory that outputs a reset value until new data is written into the memory. See section II.B.3. Vander Zanden’s “if then” statement in the code shown in Figure 3 outputs a reset value “0” only when the reset signal is high, in all other modes it outputs either a value from RGF1 or added values from RGF1. See Ex. 1003, Fig. 3; see also PO Resp. 32. In other words OUT1 does not keep, or remember, the reset value until new data is written to RGF1. We find Patent Owner’s position persuasive that the resetable flip-flop DFF6 on the output line of the circuit as described in Vander Zanden’s Figure 3, and shown in Figure 4, does not render the registers at RGF1 a “resetable memory” as properly construed because it fails to maintain OUT1 at a reset value until new data is written to a cell. Petitioner’s argument that no temporal limitation should be read into the claim is unpersuasive because, as discussed above in section II.B.3, the ’420 patent expressly differentiates the “reset” functionality of the described “resetable memory” from known resetable memories where the described, and claimed methodology in each embodiment, “causes the reset value 208 to be provided 302 as the effective memory cell output–until the cell has been written to.” Ex. 1001, 4:56–58. Vander Zanden does not disclose a “resetable memory design” for similar reasons as set forth above with respect to “resetable memory.” We are persuaded that the resetable flip-flop DFF 6 on the output line as shown in Figure 4 does not disclose a “restable memory design” as called for in the claims because Petitioner does not explain how the circuit design in Figure 4 implements the retention of a reset value until new data is written to the cell, where it only toggles between the reset mode, ADDER mode and mode which returns a value from RGF1. For the reasons provided above, Petitioner has not established by a” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“disclose the step of inferring the existence of a memory, and turns to Shand for disclosure of a “resetable memory” and a “resetable memory design” for incorporation into a semiconductor circuit. Pet. 31. Petitioner asserts that one of ordinary skill in the art would have combined Shand with Vander Zanden in order to reduce the size of the circuit design. Id. at 32 (citing Ex. 1002 ¶ 68). Patent Owner argues specifically that Petitioner’s Declarant, Mr. Detjens, admitted that one of ordinary skill in the art would not replace the memory in Vander Zanden with the circuit described in Shand. PO Resp. 55. This argument mischaracterizes Mr. Detjens testimony as well as the question. The question asked Mr. Detjens if he could identify “what memory in Vander Zanden you would replace with the Shand memory?” Ex. 2010 84:2–3 (emphasis added). Read in context, Mr. Detjens’ initial answer “No” differentiates between replacing the “memory” and replacing the “resetable memory.” See id. at 84:1–20. Mr. Detjens continued on, and answered the question with further specificity, stating that “for a resetable memory that is created through the process given in the Vander Zanden paper, you would replace it with the memory in the Shand patent.” Id. at 84:18–20 (emphasis added). Thus, we do not find Patent Owner’s argument on this point to be persuasive. Patent Owner further asserts that Shand’s resetable memory is functionally different and one of ordinary skill in the art would not utilize Shand’s resetable memory with Vander Zanden because it “would render the circuit inoperable (i.e., the synthesized circuit in Vander Zanden Figure 4 would no longer match the HDL and it would not work as the designer intended).” PO Resp. 57 (citing McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001)). Petitioner replies that “A POSA knew how to describe a resetable memory in behavioral or RTL level terms, and how to recognize a resetable memory in such a description.” Reply 2–3 (citing Ex. 1024 ¶¶ 10–15; Ex. 1020 at 17–18, 27–28, 75–77, 84–85, 91–98). Petitioner’s position, and Dr. Detjens’ testimony, are persuasive. Neither Patent Owner’s argument that Shand fails to disclose the inferring step, nor the testimony provided in Dr. Hutchings’s Declaration alleging that Shand discloses only resetable memory circuits and not inferring a memory with reset, explains why it was not within the ordinary skill of one in the art to have modified the respective underlying HDL code, for example as shown in Vander Zanden’s Figure 3, to include code defining the respective resetable memory circuit such as disclosed in Shand. See PO Resp. 57, see also Ex. 2011 ¶¶ 85–88. As discussed above with respect to anticipation, we are persuaded that Vander Zanden discloses the “inferring” step for a memory as recited in independent claims 1 and 13, and that it would have been within the abilities of a person of ordinary skill in the art to combine Shand’s resetable memory circuit design with Vander Zanden and consequently modify the HDL code to address the functional changes imparted by the implementation of a different resetable memory in such a combination.” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“We have reviewed Mr. Detjens’ Declaration in Support of Petitioner’s Reply, (Ex. 1024) and find the Declaration, as a whole, complies with our rule, 37 C.F.R.§ 42.23(b), that a reply may only respond to arguments raised in patent owner’s response. For example, Mr. Detjens explains in the Reply Declaration that his testimony is specifically in response to Patent Owner’s argument that Vander Zanden does not disclose inferring resetable memories. Ex. 1024 ¶ 5 (citing PO Resp. 29–30). Within the context of Vander Zanden and his previous testimony, Mr. Detjens’ Reply Declaration provides appropriate elucidating evidence with respect to the level of ordinary skill in the art in addition to that in his original Declaration. Compare id. ¶¶ 6–11, with Ex. 1002 ¶¶ 35–43. The Reply Declaration does, in several paragraphs, refer to certain evidence such as Exhibits 1022 and 1023 not filed with the Petition, but overall, relies substantially upon the prior art and evidence submitted with the Petition. Patent Owner’s Motion does not apprise us that the Reply or Reply Declaration is raising a new issue or injecting improper new evidence into the proceeding. Our review of the Reply Declaration indicates that overall Mr. Detjens’ testimony is proper rebuttal evidence, timely submitted, in reply to Patent Owner’s Response. Therefore, the request to exclude Petitioner’s Reply and Mr. Detjens’ Reply Declaration (Ex. 1024) is denied.” slip op. at 36
Patent outcomesUS 6,836,420 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,836,420 - TD Ameritrade Holding Corp. / TD Ameritrade, Inc. et al. v. Trading Technologies International, Inc.Rehearing deniedPTAB · Feb 2, 2015 · CBM2014-00135 · APJ Philip J Hoffmann · CBM · Rehearing
The Board denied both rehearing requests, leaving intact institution of CBM review of claims 1–56 under § 101 and denial of institution under §§ 102, 103, and 112.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 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. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). For the reasons that follow, Petitioner does not show that the Board abused its discretion.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“characterizing Togher’s disclosure, for the following reasons we find that Petitioner relied on Silverman and Gutterman to render obvious claim 1’s limitation “selecting a particular area in the order entry region [corresponding to a price of a static display of prices] through single action of the user input device . . . to set a plurality of parameters for the trade order and send the trade order to the electronic exchange.” Thus, Petitioner’s argument that Togher discloses “selecting a particular area in the order entry region [corresponding to a price of a static display of prices] through single action of the user input device . . . to set a plurality of additional parameters for the trade order and send the trade order to the electronic exchange” is not timely raised, and will not be a basis for instituting covered business method patent review.” slip op. at 3
- BurdenDecided for patent owner
“displaying market information, setting trade order parameters, and sending a trade order to an electronic exchange. As further explained, the only hardware recited in claim 1 is a display and an input device, which both were known technology. Dec. 11–12. Further recitations in claim 1 are directed to use and operation of the GUI – for example, displaying market information in a certain arrangement on the GUI, as well as setting order parameters and sending the order to the exchange with the GUI. Id. Thus, inasmuch as claim 1 recites only known hardware, Patent Owner does not persuade us that claim 1 recites a novel GUI tool.” slip op. at 7
§ 103 obviousnessPatents in suitUS 6,772,132 - TD Ameritrade Holding Corp. / TD Ameritrade, Inc. et al. v. Trading Technologies International, Inc.Rehearing deniedPTAB · Feb 2, 2015 · CBM2014-00133 · APJ Philip J Hoffmann · CBM · Rehearing
The Board denied both rehearing requests, leaving in place institution on claims 1–28 under § 101 and denial of institution under § 103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 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. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). For the reasons that follow, Petitioner does not show that the Board abused its discretion.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Ameritrade Online Holdings Corp. (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) on May 19, 2014, which requested review under the transitional program for covered business method patents of U.S. Patent No. 7,676,411 B2 (Ex. 1001, “the ’411 patent”). Trading Technologies International, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 18, “Prelim. Resp.”) on September 3, 2014. The Board instituted covered business method patent review of claims 1–28 of the ’411 patent under 35 U.S.C. § 101, and denied institution of any claims under 35 U.S.C. § 103. Paper 19 (“Decision”). Petitioner and Patent Owner each filed a Request for Rehearing asking that the Board reconsider its Decision – Petitioner requesting that we institute based on grounds 2 and 3 of the Petition because claims 1–28 are obvious based on Silverman, Gutterman, and Togher with or without Paal (Paper 21, “Petitioner’s Req. Reh’g”), and Patent Owner requesting that we deny institution because the ’411 patent does not qualify for covered business method patent review (Paper 22, “Patent Owner’s Req. Reh’g”).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“characterizing Togher’s disclosure, for the following reasons we find that Petitioner relied on Silverman and Gutterman to render obvious claim 1’s limitation “selecting a particular graphical area in the order entry region through a single action of the user input device to . . . set a price for the trade order and send the trade order . . . to the electronic exchange,” and relied on Togher to disclose the claim limitation “the trade order having a default quantity.” Thus, Petitioner’s argument that Togher discloses “a single action of the user input device [] both set[ting] a price for the trade order and send[ing] the trade order having a default quantity” is not timely raised, and will not be a basis for instituting covered business method patent review.” slip op. at 3
- BurdenDecided for patent owner
“information in a certain arrangement on the GUI, as well as setting order parameters and sending the order to the exchange with the GUI. Id. Thus, inasmuch as claim 1 recites only known hardware, Patent Owner does not persuade us that claim 1 recites a novel GUI tool.” slip op. at 7
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,676,411 - Schott Gemtron Corporation v. SSW Holding Company, Inc.No claims unpatentablePTAB · Aug 20, 2014 · IPR2013-00358 · APJ Georgianna W Braden · IPR · Final written decision
The Board held claims 1, 13, and 25 not shown unpatentable: Angros was not shown to be analogous art, and the proposed combinations did not establish obviousness.
RulingsFinal written decision- Skill levelSkill level board ownPetitioner expert discountedOther
“Mr. Schechter testified that a person of ordinary skill in the art relevant to the ’561 patent “would have at least a bachelor’s degree in mechanical engineering and at least four years of experience designing and manufacturing shelf assemblies or equivalent education and training.” Ex. 1010 ¶ 4. Patent Owner’s witness, Mr. Richard Bruce Mills, defined a person of ordinary skill in the art relevant to the ’561 patent to be a person with at least an associate’s or bachelor’s degree and three years of experience working with shelf assemblies, and having familiarity with “encapsulated spill containing refrigerator shelves.” Ex. 2022 ¶ 8. Based on our review of the ’561 patent, the types of problems and solutions described in the ’561 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention (i.e., as of June 27, 2008, as discussed above in Section II.B.3.a.) would have had a degree in mechanical engineering or a similar discipline, and at least three years of work experience with refrigerator shelf assemblies. See, e.g., Ex. 1001, col. 1, ll. 16–62 (stating that the ’561 patent relates to “shelving which may be adapted for use with refrigerators,” and describing conventional refrigerator shelf assemblies that use plastic molded parts to encapsulate shelves and silicone sealants to form physical spill containment barriers around the perimeter of the refrigerator shelving); Ex. 1010 ¶¶ 1–2 (describing the background of Mr. Schechter); Ex. 2022 ¶¶ 3–5 (describing the background of Mr. Mills). We note that under this standard, Petitioner’s witness, Mr. Schechter, does not qualify as a person of ordinary skill in the art. Although Mr. Schechter has a Master’s of Science degree in Mechanical Engineering, he has only worked as an engineer designing and manufacturing shelf assemblies since December 2011. Ex. 1010 ¶¶ 1-2. Thus, Mr. Schechter had less than two years of experience when he signed his declaration on June 14, 2013. Id. ¶ 36. Furthermore, Mr. Schechter was not a person of ordinary skill in the art at the time of the invention of the ’561 patent (i.e., June 27, 2008). Indeed, at his deposition, Mr. Schechter testified that he does not qualify as one of ordinary skill in the art under the definition in his declaration. Ex. 1011, 26:2–13. In this case, we accord the testimony of Mr. Schechter regarding the alleged obviousness of the claims less weight because he was not a person of ordinary skill in the art at the time of the invention disclosed in the ’561 patent.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Petitioner’s position is unpersuasive. Contrary to Petitioner’s characterization, Example 1 in the ’561 patent discloses only a demonstration of water retention by a shelf with a hydrophobic border. See Ex. 1001, col. 20, ll. 1–9. The patent recounts, in Example 1, a test to determine the amount of water retainable on a shelf, within a hydrophobic border, without leakage. Id. Thus, Example 1 does not show that the term “spill” merely means liquid placed on a surface. Therefore, we construe “spill,” in accordance with its plain meaning and consistent with the specification of the ’561 patent, to mean “an accidental or unintentional release of liquid.” See Ex. 2003; Ex. 1001, col. 11, ll. 28–49 (describing Figure 3 as illustrating “the concept that the hydrophobic surface 1030 will form a spill containment barrier,” and using soda can 1026 turned on its side as an example for “spilled liquid”).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“entions. A As discusse ed in detail l below, we e conclude e that the ’2 273 prov visional app plication, w which is th he earlier fi iled of the two provis sional appl ications, su upports the e claim ele ements reci ited in clai ms 1, 13, a and 25. Ther refore, the ’561 paten nt is entitle ed to the Ju une 27, 200 08 filing da ate of the ’273” slip op. at 12
- Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable
“A reference is considered analogous prior art: (1) if the reference is from the same field of endeavor as the claimed subjected matter, regardless of the problem addressed, or (2) if “the reference still is reasonably pertinent to the particular problem with which the inventor is involved,” even though the reference is not within the field of the inventor’s endeavor. Bigio, 381 F.3d at 1325. The “field of endeavor” test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art, because of the similarity to the structure and function of the claimed invention as disclosed in the application. Id. at 1325-27. It is necessary to apply “common sense” in “deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” Id. at 1326 (citations and quotation marks omitted). As to the “reasonably pertinent” test: A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. Thus, the purposes of both the invention and the prior art are important in determining whether the reference is reasonably pertinent to the problem the invention attempts to solve. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. An inventor may well have been motivated to consider the reference when making his invention. If it is directed to a different purpose, the inventor would accordingly have had less motivation or occasion to consider it. In re Clay, 966 F.2d at 659.” slip op. at 19
Patent outcomesUS 8,286,561 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 8,286,561
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.