• Henkel Corporation v. H.B. Fuller Co.All claims unpatentable
  PTAB · Oct 6, 2015 · IPR2014-00606 · APJ Brian P Murphy · IPR · Final written decision

  Claims 22–25, 27, and 28 are unpatentable: claims 22–25 and 28 are anticipated, and claim 27 is obvious.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Preamble not limitingOther

    “We conclude that the preamble language “[a] hot melt adhesive” is a statement of intended use, not a structural limitation of the claims, because the body of the claims defines a structurally complete composition. Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (a preamble is not limiting “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.”). The parties agree that hot melt adhesives are understood in the art as “‘100[%] solid thermoplastic materials that flow when heated’ and then form a ‘final bond . . . when the temperature has fallen to the ambient one, i.e., that of the material being glued.’” PO Resp. 5 (citing Ex. 1015 ¶ 15); Pet. Reply 4–5 (citing Ex. 1015 ¶ 15). The body of claims 22 and 28 recites a hot melt adhesive that flows when heated and bonds when cooled.” slip op. at 7

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Under Federal Rule of Evidence 702, a witness may be qualified as an expert by “knowledge, skill, experience, training, or education” and may give opinion testimony if the expert’s “specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. We find Dr. Hsu to be qualified as an expert in polymers and adhesives, and we further find his specialized knowledge will help us 7 Dr. Hsu originally was funded by National Starch and Chemical Co., a company that was acquired by Petitioner. Ex. 1039, 16:8–17:13. understand the evidence regarding the claimed hot melt adhesive composition and determine facts in dispute between the parties. We further note that, although Patent Owner urges us to disregard Dr. Hsu’s testimony, Patent Owner repeatedly relies on Dr. Hsu’s testimony when necessary. Pet. Reply 2–3 (citing PO Resp. 5–8, 12, 17–22, 25–26, 32–33, 35–36). Patent Owner cannot have it both ways. Having considered the parties’ arguments and cited evidence, we will assign the appropriate weight to the expert opinion testimony offered by Dr. Hsu.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner that if one of ordinary skill in polymer science and engineering were to consider the four corners of the Eastotac Brochure, the H-142R hydrocarbon tackifying resin in Table 1 is directly related to the exemplary hot melt adhesive compositions in Table 3 by the teachings of the reference. Pet. Reply 8–10. The hydrocarbon tackifying resins of Table 1 are listed on pages 4 and 5 of the Eastotac Brochure. Ex. 1002, 4–5. At the top of page 4 just above Table 1, under the heading “Applications,” the Eastotac Brochure states “[t]hese resins are especially suited for low-molecular-weight polyethylene-based hot melt adhesives where elevated temperature resistance and high cohesive strength are required.” Ex. 1002, 4 (emphasis added); Pet. Reply 8. The next page following Table 1 (page 6) discloses exemplary hot melt adhesive compositions in Table 3, each one of which includes an “Eastotac resin” and thermoplastic base polymer in specified composition ranges by weight that overlap with the composition ranges recited in claim 22 of the ’404 patent. Although Patent Owner counts ten different applications for the Eastotac resins of Table 1, the Eastotac Brochure provides specified composition ranges for use of the Eastotac resins in only one application – hot melt adhesives. Ex. 1002. As recently reiterated by the Federal Circuit, “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)). Patent Owner avoids addressing the teachings contained in the text of the Eastotac Brochure and narrowly focuses its discussion only on the express disclosures contained in Tables 1 and 3. PO Resp. 24–26 (citing Ex. 1039, 104:17–20, 106:2–11, 115:2–5). Dr. Hsu testified that, although Table 1 does not list a specific application for the Eastotac resins and Table 3 lists “Eastotac resin” rather than a specific Eastotac resin from Table 1, a fair reading of the Eastotac Brochure indicates “all the ones [resins] in Table 1 can be used in this [Table 3] composition,” including H-142R. Pet. Reply 9–10 (citing Ex. 1015 ¶¶ 41–42; Ex. 1039, 116:12–17, 116:21–117:3, 118:15–21, 121:7–18). Dr. Hsu further testified that one of ordinary skill would have been “motivated” to use the H-142R resin, listed in Table 1, in the hot melt adhesive compositions of Table 3 when a high peel value and high heat resistance were desired, “because Eastotac® H-142 has the highest Tg of the Eastotac® resins in the Eastotac Brochure.” Ex. 1015 ¶ 54. We find Dr. Hsu’s unrebutted testimony to be persuasive. As in the Kennametal case, we find that one of ordinary skill in the art of polymer science and engineering immediately would have envisaged the use of the H-142R hydrocarbon tackifying resin in combination with either APP or EVA thermoplastic base polymer in the exemplary hot melt adhesive compositions in Table 3 of the Eastotac Brochure. See id. at 1382–83.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Patent Owner does not provide any evidence that contradicts Dr. Hsu’s testimony. PO Resp. 40–41. We also are not persuaded by Patent Owner’s argument challenging the sufficiency of Petitioner’s evidence in support of a motivation to combine the asserted references. Rule 41 of the Uniform Freight Classification Committee provides good reason for one of skill in the art to make the asserted modification to the compositions disclosed in the Eastotac Brochure or Exxon Reference. The compositions contain hydrocarbon tackifying resins, and the Eastotac Brochure expressly states that the resins listed therein are “especially suited” for hot melt adhesives where “elevated temperature resistance and high cohesive strength are required.” Ex. 1002, 4. The ’404 patent, moreover, acknowledges the known use of higher Tg tackifying resins to increase heat resistance, and the rail freight packaging requirement for maintaining a hot melt adhesive bond up to 74º C. provides a known application and commercial rationale for using a high peel value adhesive, as recited in claim 27. We also find Dr. Hsu’s opinion articulates a specific, persuasive reason, based on the evidence of record, to explain why a person of ordinary skill in the art would have used a high Tg tackifying resin to achieve a hot melt peel value > 70 ºC., with a reasonable expectation of success. For the reasons stated above, we determine that one of ordinary skill in the art would have been motivated by the teachings of Litz to modify the adhesive compositions disclosed in either the Eastotac Brochure or the Exxon Reference to obtain a composition having a peel value of greater than about 70º C., with a reasonable expectation of success. Therefore, we conclude Petitioner has satisfied its burden of proving by a preponderance of the evidence that either the Eastotac Brochure or the Exxon Reference in combination with Litz would have rendered claim 27 of the ’404 patent obvious to a person of ordinary skill in the art under 35 U.S.C. § 103.” slip op. at 24

  Patent outcomesUS 6,833,404 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,833,404
• Stats LLC v. Hockeyline, Inc.All claims unpatentable
  PTAB · Sep 15, 2015 · IPR2014-00510 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1, 2, 8, 10–12, and 30 were held unpatentable as anticipated by Hameen-Anttila and STATS Football, and obvious over STATS Football combined with Reilly.

  RulingsFinal written decision

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

    “1. Means-plus-function Claiming Independent claim 1 of the ’107 patent includes a series of means-plus- function limitations. 35 U.S.C. § 112 ¶ 6.5 A means-plus-function limitation “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Id. The claim limitations in the ’107 patent are drafted using the accepted “means for” construct followed by a specified function, without further recitation of structure to achieve the recited function. Triton Tech of Texas, LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014); see Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). “In exchange for using this form of claiming, the patent specification must disclose with sufficient particularity the corresponding structure for performing the claimed function and clearly link that structure to the function.” Triton Tech, 753 F.3d at 1378 (citation omitted). We construe the following claim limitations for purposes of this decision, in accordance with the principles stated above. 2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “c. Claim 1 – “customized by the user to reflect desired data” We are further persuaded that Hameen-Anttila discloses hierarchical menu- based screen displays that may be “customized by the user to reflect desired data,” in accordance with our claim construction. We agree with Petitioner, that the setup menu in Hameen-Anttila (Fig. 4a) allows a user to select desired display menus (e.g., for golf) that will cause other menus not to be displayed (e.g., for hockey, bowling, and baseball) during a user’s input of golf-specific data in real time. Pet. Reply 7–8 (citing Ex. 1002, 5:21–24; Ex. 1014 (Dahbura Dec.) ¶¶ 20–21). As Dr. Dahbura notes, Patent Owner’s expert, Dr. Locke, agrees that choosing not to display a menu screen is a form of user customization. Ex. 1014 ¶ 21 (citing Ex. 1017, 72:19–73:3). We further agree with Petitioner that Patent Owner’s proffered distinction between Hameen-Anttila’s “mere usage” of hierarchical menu-based screen displays and “customizing” such displays is illusory and not consistent with the description of user customization in the ’107 patent. Pet. Reply 8 (citing Ex. 1014 ¶ 22). The individual drop-down arrows in Figure 4b further suggest the ability of a user to change the menu-based screen displays to permit the user to input desired data for the illustrated golf game. Therefore, we determine Hameen- Anttila discloses an action by the user to configure the hierarchical menu-based screen displays to permit desired data to be gathered for one or more sports games. d. Claim 1 – “transferring statistical information based on such inputted data” Patent Owner’s argument asserting Hameen-Anttila does not disclose the transfer of “statistical information based on such inputted data” also is off the mark. As noted above, Hameen-Anttila discloses that sports game event data is input into an electronic scorekeeping device and transmitted via a communications network to a server while the sports game is ongoing. Ex. 1002, 2:40-51, 2:57– 3:13. We are not persuaded by Patent Owner’s argument that the transfer of statistical information “based on” inputted data requires some form of calculation that necessarily excludes inputted data as part of the transferred “statistical information.” PO Resp. 17–19. Patent Owner does not offer a claim construction or request construction of quoted claim phrase at issue, even though Patent Owner’s argument presumes a specific definition of the phrase without explaining why it is consistent with the broadest reasonable interpretation standard. Pet. Reply 2. The language in claim 1 of the ’107 patent recites “a processor,” but it does not recite a calculation function performed by the processor on inputted data. Pet. Reply 11. The claim language also does not exclude inputted data from “statistical information” or limit “statistical information based on such inputted data” only to statistics calculated from the inputted data. Id. The preamble of claim 1, recites “gathering, processing and distributing statistical information.” Ex. 1001, 8:11–12 (emphasis added); see also PO Resp. 19 (citing Ex. 1001, 1:56–60 (“The present invention advantageously provides an electronic scorekeeping device for gathering, calculating and distributing statistical information.”)). Gathering statistical information, when read in light of the ’107 patent specification, refers to inputting sports game event data into the scorekeeping device for transmission to a central database as part of the statistical information transfer. Pet. Reply 11 (citing Ex. 1001, Abstract (“This [inputted] data is transferred in real-time in a system according to the invention via a communications means to a central database.”); Ex. 1014 ¶¶ 25–28). The ’107 patent does not define “statistical information” or “statistical information based on such inputted data.” The ’107 patent also does not exclude inputted data from the description of statistical information. Pet. Reply 12 (citing Ex. 1014 ¶ 27). To the contrary, and consistent with the understanding in the art, the ’107 patent uses the words “data,” “statistics,” “statistical data,” and “statistical information” interchangeably and with significant areas of overlap. Id.; see also id. at 4 (citing Ex. 2002 ¶ 30 (“The terms ‘statistics,’ ‘data,’ and ‘statistical information,’ are widely used in computer systems, but they are often used in very general ways with broad meanings in which their meanings have significant areas of overlap.”)). We further credit Dr. Dahbura’s testimony, that a person of ordinary skill in” slip op. at 18

  Patent outcomesUS 6,725,107 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,725,107
• Hulu, LLC v. Intertainer, Inc.All claims unpatentable
  PTAB · Jun 12, 2015 · CBM2014-00052 · APJ Jennifer M Meyer · CBM · Final written decision

  Claims 1–3, 5, 8, 10, 11, and 13–15 are unpatentable: claims 1–3, 5, 8, 10, 11, 13, and 14 as anticipated by Chen, and claim 15 as obvious over Chen and Hartanto.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “in view of the Specification of the ’246 patent, requires the link program be limited to a single program. The claim language itself does not indicate a single program is required. Further, we see no language in the Specification, and Patent Owner has not pointed us to any such language, that indicates clearly or persuades us that the claims should be limited as such. The only” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We are persuaded also that Chen’s disclosure of pausing the video and displaying the linked page on the computer, in response to clicking a hot-link, discloses the claimed “creating a link program adapted to both: (a) interrupt streaming of the video at the remote storage medium . . . and (b) access ancillary content . . . .” Pet. 16–17 (citing Ex. 1003, 4:5–10, 4:21–25, 4:28–40, 7:30–33; Ex. 1008 ¶ 16); see also Ex. 1003, 2:11–17 (“The [HyperVideo Authoring] tool allows one to prepare video clips with the hot-link information and then to link them with other types of media.”); id. at 5:55–6:26 (discussing “[c]reation of hot video content”). As discussed above, Patent Owner admitted, during prosecution of the ’884 application, “the fact that [a] computer performs the disclosed functions when a user interacts with an interface link necessarily requires that there is a link program.” Ex. 1002, 60, 83 (emphases added). We are persuaded additionally that Chen’s disclosure of encoding the embedded hyperlinks in the video (e.g., inserting the hot-link information into frames in the video), and identifying incoming data as a “hot” video such that a hot video decoder may display the “hot” video, including the video, audio, and hot-link information, corresponds to the claimed steps of “associating the link program with the video” and “providing the link program over the network.” Pet. 17–19 (citing Ex. 1003, 4:4–10, 5:56–6:39, 6:48–7:2; Ex. 1008 ¶ 18). We are persuaded further that Chen’s disclosure of transmitting a signal to the URL, from which the video is being streamed, to request delivery of a linked html file (containing instructions to display text or multimedia content), in response to a user clicking on a hot-link, corresponds to the claimed step of “receiving an indication of an interaction with the link program.” Pet. 19 (citing Ex. 1003, 4:20–25; Ex. 1008 ¶ 19). We are persuaded also that Chen’s disclosure of having the URL, from which the video is being streamed, pause the video, in response to a user clicking on a hot-link, while the text or multimedia content is being displayed, corresponds to the claimed step of “interrupting, at the first site, the streaming of the video in response to receiving the indication of the interaction with the link program.” Pet. 19 (citing Ex. 1003, 4:28–34; Ex. 1008 ¶ 16). We are persuaded additionally that Chen’s disclosure of allowing the user to resume the video corresponds to the claimed step of “continuing the streaming of the video over the network from the point in time when the streaming of the video was interrupted.” Pet. 19 (citing Ex. 1003, 4:38–40; Ex. 1008 ¶ 20).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “under 35 U.S.C. § 103 as obvious based on Chen and Hartanto. Pet. 28–30. Claim 15 recites that the network includes a wireless network. Ex. 1001, 10:43–44. Petitioner contends that use of wireless networks as a mechanism for the transmission of videos was well known in the art prior to the filing date of the ’246 patent, and provides declaration evidence that one of skill in the art would have understood the network for data transfer could be a wireless network. Pet. 28–29; Ex. 1008 ¶ 24. Petitioner cites Hartanto as an example of disclosure of wireless networks used with video transmission. Id. Petitioner further contends that the combination of using a wireless network connection as the network in Chen would have yielded a predictable result. Pet. 29–30; Ex. 1008 ¶ 24. We determine that Petitioner’s analysis and evidence is persuasive. Patent Owner does not argue specifically the patentability of claim 15 based on any limitations other than those discussed above with respect to independent claim 1. See PO Resp. 33. After reviewing the entire record, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that claim 15 of the ’246 patent would have been obvious to a person of ordinary skill in the art7 over Chen and Hartanto.” slip op. at 18

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We note, as a general matter, that although the claims in the ’592 reexamination may be similar, they are not identical to the claims of the ’246 patent. Further, Patent Owner has not filed a Motion to Exclude Dr. Bove’s testimony. In any case, the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. See Gnosis S.p.A. v. S. Alabama Med. Sci. Found., Case IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64); see also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received.”). In rendering our decision, we have assigned weight to the evidence as appropriate in view of the entire record before us.” slip op. at 17

  Patent outcomesUS 8,479,246 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,479,246
• Apple Inc. v. THX Ltd.Some claims unpatentable
  PTAB · Jun 9, 2015 · IPR2014-00235 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Tomonori and Sadaie; claim 3 was not shown unpatentable over Tomonori, Virva, and Sadaie.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “In sum, the ’483 patent describes and claims a sound reflecting surface that redirects sound waves output from the speaker towards the elongate output slot, whereas sound damping material absorbs standing waves inside the sound duct. The ’483 patent goes to great lengths to distinguish a sound reflecting surface from a sound damping surface. Furthermore, given that “sound damping material” is different from a “sound reflecting surface” and both are recited as separate claim limitations, it follows that a sound reflecting surface is not made of sound damping material. For the reasons given above, we construe “sound reflecting surface,” in the context of claim 1 and in light of the ’483 patent specification, as “a surface that redirects sound waves output from a speaker, not made of sound damping material.”” slip op. at 12

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

    “2. Other Terms Petitioner proposes to construe additional claim terms. Pet. 11–14. We determine that no express construction of these additional terms is necessary for purposes of this decision.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “suppress standing waves inside a duct. Pet. 44 (citing Ex. 1002 ¶ 112). Dr. Vipperman identifies the reason for Sadaie’s use of side wall sound damping as enabling “the sharpness of a fundamental wave resonance of a standing wave determined by the length of the sound path . . . to be suppressed because a substantial length of the sound path cannot be primarily determined.” Ex. 1002 ¶ 112 (citing Ex. 1003, 14). We agree with Petitioner’s reasoning, therefore, that “[e]xtending the damping material of Tomonori along the sidewalls of the duct,” as taught by Sadaie, would have been one of a limited number of known solutions further minimizing the presence of spurious resonances and standing waves inside the duct. Id. at 45 (citing Ex. 1002 ¶ 113). The quoted statements of Petitioner and Dr. Vipperman with respect to Tomonori and Sadaie are consistent with the principles set forth in KSR.10 Petitioner and Dr. Vipperman provide an analysis of why one of ordinary skill in the art of speaker design would have been motivated by Sadaie’s disclosure of side wall sound damping to modify Tomonori’s narrow sound duct, such that sound damping material forms the sides of the sound duct but not the bottom (sound reflecting) surface. In particular, Dr. Vipperman’s Declaration provides a sufficient analysis to support the obvious modification of Tomonori’s narrow profile speaker, by a speaker designer of ordinary skill, such that “sound damping material form[s] sides of the sound duct” to help suppress the presence of spurious resonances and standing waves inside the duct. Ex. 1002 ¶¶ 112, 113.” slip op. at 28

  Patent outcomesUS 7,433,483 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,433,483
• Baxter Healthcare Corp. / Apatech, Inc. et al. v. Millenium Biologix, LLCAll claims unpatentable
  PTAB · Mar 18, 2015 · IPR2013-00590 · APJ Michelle R Osinski · IPR · Final written decision

  Claims 1, 2, 4, 9, 11, 16–18, 20, 25, 26, 36, 38, 43, and 44 are unpatentable under § 103(a) over the stated combinations of prior art.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “biomaterial compound at the same pace as that found in the natural bone remodeling process. “A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” Minton v. Nat'l Ass'n of Sec. Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003). “However, when the ‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005). Determining whether to give a “whereby” or “wherein” clause patentable weight, if any, is done on a case-by-case basis. Id.; Minton, 336 F.3d at 1381; see also In re Griffin v. Bertina, 285 F.3d 1029, 1033–34 (Fed. Cir. 2002) (holding that the Board did not err by giving limited effect to the “wherein” clauses in an interference count because the wherein clauses “giv[e] meaning and purpose to the manipulative steps” rather than “merely stat[ing] the inherent result of performing the manipulative steps”). We maintain our determination that the “wherein” clauses in this case are “to be given no patentable weight beyond requiring that the recited biomaterial compound be capable of producing the recited intended results when implanted at the specified site.” Dec. 8–9. Patent Owner is attempting to read in structural limitations of the biomaterial compound, such as microporosity and macroporosity, which Patent Owner chose not to recite in claims 1 and 2 of the ’992 patent. Compare Claims 1 and 2 of the ’992 patent, with claims 9 and 18 of the ’992 patent, and claims 1 and 6 of the ’251 patent (referring to “macroporous structure” or “microporous structure”). It is improper to import such structural limitations into a wherein clause that does nothing more than recite an intended result of a positively recited process step. A “macroporous structure,” moreover, is not” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “establish that the progressive removal and replacement of the biomaterial compound necessarily occurs at the same pace as natural bone remodeling. Petitioner’s evidence is sufficient to support the finding that Ruys ’93a’s implanted biomaterial compound would be capable of promoting the progressive removal and replacement of the implanted biomaterial compound primarily through osteoclast and osteoblast activity because of the right chemistry (see Pet. 41–43). Patent Owner’s observations (PO Obs. 1–5) do not change our findings or conclusions. Patent Owner also argues that Ruys ’93a teaches away from the porosity which is required for the biomaterial compound to be capable of progressive removal and replacement in a time frame consistent with natural bone remodeling. PO Resp. 33 (citing Ex. 2026 ¶¶ 94–97), 47–49 (citing Ex. 1003 ¶ 368; Ex. 2026 ¶¶ 64–65). More specifically, Patent Owner argues that Ruys ’93a disparages the properties of porous HA as having low compressive strength, and desires a means for enhancing the bioactivity of HA other than porosity control. Id. at 48 (citing Ex. 1011, 3; Ex. 1014, 5, Ex. 2026 ¶¶ 77–78). Patent Owner argues that “one of skill in the art reading Ruys would have been discouraged from taking the SiCaP of Ruys and adding the structural features that the ’992 inventors determined were required to make the biomaterial capable of bioresorption and rebuilding according to the process of natural bone.” PO Resp. 49 (citing Ex. 2026 ¶¶ 66, 79). Petitioner’s position, however, is not based on modification of the biomaterial compound of Ruys ’93a to render it capable of progressive removal and replacement of the biomaterial compound. Rather, Petitioner’s position is based on Ruys ’93a inherently being capable of such progressive removal and replacement, due to its silicon-substituted CaP chemistry. Accordingly, the focus of Ruys ’93a on silicon doping rather than porosity control to improve bioactivity is immaterial to the obviousness determination in this case.” slip op. at 17

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Patent Owner does not explain how a nexus exists between the asserted long-felt need for a synthetic bone graft material to replace autologous bone and the features of claims 1 and 2. In particular, Patent Owner does not identify to what it attributes the effectiveness of Skelite and/or Actifuse and whether that feature is (i) found in the claims and (ii) a novel element not in the prior art. To the extent that the effectiveness may be attributed to the substitution of silicon, for example, this feature was already present in the prior art as evidenced by Ruys ’93a. To the extent that the effectiveness may be attributed to a macroporous structure, for example, this feature is not claimed in independent claims 1 and 2. Consequently, we are not persuaded by Patent Owner’s contentions in relation to long-felt but unmet need.” slip op. at 21

  • ExcludeNot reached

    “We dismiss Petitioner’s motion as moot, because we do not rely on the objected-to timeline in our final Decision and because, even without excluding Patent Owner’s additional evidence, we have determined that Petitioner has demonstrated, by a preponderance of the evidence, that claims 1, 2, 4, 9, 11, 16– 18, 20, 25, 26, 38, 38, 43, and 44 of the ’992 patent are unpatentable.” slip op. at 39

  Patent outcomesUS 6,585,992 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,585,992
• Baxter Healthcare Corp. / Apatech, Inc. et al. v. Millenium Biologix, LLCAll claims unpatentable
  PTAB · Mar 18, 2015 · IPR2013-00582 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1 and 8–13 are unpatentable as anticipated by Ruys ’93a; claim 6 is unpatentable as obvious over Ruys ’93a and Bioceramics.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “The word “isolated” in claim 1 is used in accordance with its plain and ordinary meaning to those skilled in the art—separated from all other substances. See Ex. 1005, 4 (right-hand column, “1isolate,” definition “2”).12 The isolated compounds disclosed in the ’251 patent are stabilized calcium phosphates synthesized and isolated as calcium phosphate “phases” or as a calcium phosphate “phase.” Therefore, we determine that the broadest reasonable interpretation of “isolated . . . compound” in the context of the claimed invention, consistent with the ’251 Specification, is “a stabilized 11 Patent Owner does not contest our construction of “isolated . . . compound” in its Response to the Petition. PO Resp. 22–23. 12 “to separate (as a chemical compound) from all other substances: obtain pure or in a free state” single phase or multi-phase calcium phosphate compound separated from all other substances.”” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “do not describe interconnected microporosity as critical or necessary to the microporous structure of the claimed compound. Id. at 5:37–38 (“compound having a microporous morphology based on inter-connected particles”); 11:50–52 (“the surface morphology is that of an interconnected set of rounded particles with a high degree of porosity”); 13:61–64 (“The ceramic comprises rounded, inter-connected particles . . . with a large degree of localized porosity.”); 22:3–6 (“A characteristic microporous morphology that arises from the agglomeration of particles . . . and the sintering of the material to produce a network of interconnected particles.”); Ex. 1134 ¶ 146. Patent Owner does not explain how interconnected microporosity results necessarily from interconnected particles. Interconnected microporosity may be preferred for supporting percolation of physiological fluids and bone cell activity,14 but interconnected microporosity is neither recited in claim 1 nor required for a functional biomaterial. As established by Dr. Mikos’s testimony and Dr. Ong’s testimony, dense HA (without interconnected microporosity) is suitable for implantation at load bearing sites in patients. Ex. 1003 ¶¶ 68, 69; Ex. 1134 ¶ 149 (citing Dr. Ong’s deposition testimony, Ex. 1133, 150:18–151:1). Therefore, we decline to read “interconnected microporosity” into the construction of “microporous structure.”” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable

    “’93a must inherently disclose “interconnected microporosity” in order to satisfy the wherein clause recitation of “a microporous structure” in claim 1 of the ’251 patent. See section II A.2. above. Further, there is no dispute that Ruys ’93a discloses a silicon-substituted CaP compound having a porous structure, graphically demonstrated by the “apparent porosity” curve in Figure 2 of Ruys ’93a. Ex. 1011, 4 (left column); Pet. 44 (citing Ex. 1003 ¶¶ 388–391); Pet. Reply (citing Ex. 1003 ¶ 631; Ex. 2026 ¶¶ 38–39; Ex. 1133, 59:14–18, 242:12–15). The silicon-substituted CaP compound analyzed in Ruys ’93a demonstrates an apparent porosity as high as 50% of the material tested. Ex. 1011, 4 (Fig. 2); Tr. 20:7–15. Petitioner and Patent Owner both recognize, however, that Ruys ’93a does not report pore size. Pet. Reply 4; Tr. 52:22–24. Therefore, the dispute boils down to whether the porous structure of the silicon-substituted CaP compound disclosed in Ruys ’93a is inherently “microporous,” i.e. whether the method disclosed in Ruys ’93a would necessarily result in “pore sizes of about 2 microns or less in diameter,” in accordance with our claim construction. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)(“the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference’”(citation omitted)).” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “2. Analysis Petitioner acknowledges Ruys ’93a does not teach the formation of a macroporous, open-cell structure, but Petitioner argues that formation of such a structure using Ruys ’93a’s silicon-substituted CaP material would have been an “obvious design choice” for one skilled in the art in view of the Bioceramics reference. Pet. 45 (citing Ex. 1003 ¶ 683). Petitioner, relying on the Declaration of Dr. Mikos, asserts that methods of making a biomaterial compound having a macroporous structure were conventional and well known. Id. at 48 (citing Ex. 1003 ¶¶ 147–164, 690); Tr. 34:14–20. Petitioner notes that Bioceramics was not considered during examination of the application resulting in the ’251 patent. Id. at 46 (citing Ex. 1003 ¶ 523). Petitioner emphasizes the Bioceramics disclosure that “[a]n ideal cancellous bone graft substitute would mimic osteon-evacuated cancellous bone and have a thin lattice interconnected by pores of 500–600 µm” (Ex. 1021, 110) and that “[p]orosity and interconnectivity are key determinants of amount and type of ingrowth” of CaP bone implant material (id. at 116–17). Pet. 46–47 (citing Ex. 1003 ¶¶ 155, 528–530, 685–87). Petitioner asserts that one of ordinary skill in the art would have been motivated by the teachings of Bioceramics to form the silicon-substituted CaP compound disclosed in Ruys ’93a into a macroporous open cell structure with interconnected voids having pore sizes within the claimed range of 50 to 1000 microns. Id. at 47– 48 (citing Ex. 1003 ¶¶ 689–90). Patent Owner argues that, even though techniques for forming CaP compounds into a macroporous structure were well known prior to the ’251 patent’s August 1996 priority date, there was no prior publication of forming elementally-substituted CaP compounds into a macroporous structure. PO Resp. 36–37. Patent Owner further argues Petitioner has failed to prove one of ordinary skill in the art would have had a reasonable expectation of success in forming the silicon-substituted CaP powder disclosed in Ruys ’93a into the macroporous structure recited in claim 6. Id. at 37–39. Patent Owner further relies on asserted secondary considerations in support of Patent Owner’s argument for the nonobviousness of claim 6. Id. at 27–36, 40–54. Dr. Ong agreed with Dr. Mikos that interconnected macroporosity was known to be “critical” to vascularization, bone cell differentiation, and bone implantation, as stated in the 1993 Bioceramics textbook. Pet. Reply 9 (citing Ex. 1133, 159:16–160:3). Figure 4 in chapter 10 of Bioceramics illustrates an “[i]dealized microstructure for cancellous bone regeneration” having “a thin lattice interconnected by pores of 500–600 [microns]” in diameter. Id.; Ex. 1021, 110–111. Bioceramics, therefore, expressly discloses the claim 6 recitation of a “macroporous structure” of “interconnected voids having a pore size of approximately 50 to 1000 microns,” and Bioceramics provides sound physiological reasons for forming a CaP biomaterial compound into a macroporous structure.” slip op. at 37

  Patent outcomesUS RE41,251 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
• Blackberry Corporation v. NXP B.V.All claims unpatentable
  PTAB · Sep 19, 2014 · IPR2013-00232 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–4 are unpatentable: anticipated by Ueno and obvious over Chesebro and Rostoker for claims 1–2, and over Chesebro, Rostoker, and Nowak for claims 3–4.

  RulingsFinal written decision

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

    “1. “pattern density for the surface of the semiconductor wafer” “[A] claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). The ’697 patent uses lexicography to define the portion of the claim limitation that recites a “pattern density for the surface of the semiconductor wafer” as: “The pattern density of topography is defined as the ratio of the overall surface area of raised areas on a wafer surface to the total surface area of the wafer.” Ex. 1001, 4:60–63. This definition is consistent with the repeated references in the ’697 patent to wafer surface topography as having raised areas, the combined surface area of which is a ratio or percentage of the total surface area of the wafer. Id. at Abstract, 3:34–38, 57–61, 4:54–63, 6:26–40. Therefore, we adopt the definition recited above for the portion of the claim limitation reciting a “pattern density for the surface of the semiconductor wafer.” See PO Resp. 16.” slip op. at 8

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

    “(Merriam-Webster Dictionary Online, http://www.merriam-webster.com/dictionary/standard (last visited September 4, 2014)). The ’697 patent does not describe how to determine a “standardized” pattern density (Tr. 20), but it does describe “commonizing” pattern density to reduce variation in pattern density across the surface of a single wafer layer, from layer to layer within a wafer, or from IC product to IC product on different wafers, to improve CMP removal rate consistency. E.g., Ex. 1001, 3:13–18 (“[D]ummy raised areas . . . commonize the pattern density of topography from layer to layer of an integrated circuit, as well as from product to product.”) (emphasis added), 3:23–29 (“The overall surface area of the raised areas . . . typically varies from layer to layer. In order to commonize the pattern density of topography from layer to layer of an integrated circuit and from product to product, dummy raised areas are added to the same layers on which active conductive traces are situated.”) (emphasis added), 7:39–42 (“It should be clear that dummy raised lines may be added to a single layer of a wafer in order to achieve a desired pattern density of topography on that layer alone.”). In the context of the entire ’697 patent disclosure, “commonizing” pattern density refers to reducing variation in pattern density (see Ex. 1010 (Decl. of Ron Maltiel) ¶ 17), or, similarly, increasing the commonality of pattern density (see Ex. 2006 (Decl. of Dr. Bruce Smith) ¶ 15 (citing Ex. 1001, 1:1721)), on one or more surface layers of one or more semiconductor wafers to be polished. The claimed method step permits flexibility in how to reduce pattern density variation in order to accommodate different concentrations of raised surface areas (Ex. 1001, 2:4–9, 3:23–25, 5:26–29), different fabrication processing requirements (id. at 2:51–61, 5:1–5, 6:61–7:18), and various device requirements and operating conditions. A person skilled in the art would understand, in particular, that the claim phrase in question “does not refer to a single specific pattern density value that is used for all workpieces undergoing CMP.” Ex. 2006 ¶ 85. For example, the ’697 patent discloses a standard that is flexible enough to determine different pattern densities for different surface layers of a wafer. Ex. 1001, 5:34–39; PO Resp. 17; Pet. Reply 3–4; Ex. 1021, 7; Ex. 1022, 6–7 (¶¶ 56–57); Tr. 29. It is also flexible enough to determine a pattern density for a single surface layer of a wafer (Ex. 1001, 7:39–42; Pet. Reply 2–4; Ex. 1021, 7; Ex. 1022, 5 (¶ 55)), which reduces pattern density variation across the wafer surface in comparison to the wafer surface without any dummy raised areas in the gaps between active conductive traces. See Ex. 1001, 7:39–42, Figs. 3A–C, 4a–e; PO Resp. 4; Ex. 2006 ¶¶ 38, 39, 98, 101, 115; Tr. 6, 8. We conclude that the claimed method step incorporates a flexible standard for reducing variation in pattern density when determining the surface area ratio of active conductive traces and dummy raised areas for one or more surface layers on one or more wafers to be polished.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We agree with Petitioner’s expert, Mr. Maltiel, that by combining an original IC design with a dummy fill pattern at each layer, particularly a fill pattern having the same pattern density as that of the densest part of the original IC design, Chesebro teaches a reduction in the variation in that layer’s pattern density. See Ex. 1010 ¶ 61. We also credit Mr. Maltiel’s opinion that a person of skill in the art would have recognized that Chesebro’s process steps “describe a simultaneous filling of this multi-level structure, which would be most easily and beneficially executed by using the same fill pattern for every level in the entire structure” as a matter of prudent cost and process efficiency. See Ex. 1024 ¶ 28. Thus, we are persuaded that Chesebro teaches a process for using the same fill pattern on each layer of a multi-layer wafer, thereby reducing pattern density variation between multiple layers. See Ex. 1010 ¶ 61. Chesebro teaches one of skill in the art to determine pattern density “as a ratio of the overall surface area of raised areas on the wafer surface to the total surface area of the wafer,” by describing a percentage, e.g., 25%, for the raised areas-not-to-fill and the raised areas-to-fill on each wafer surface layer of the IC to be fabricated. Ex. 1004, 1:52–56, 5:27–40. The raised areas of the selected pattern density in Chesebro are determined so as to reduce variation across the wafer surface, with the effect of improving CMP polishing. Id. at 1:62–2:6, 2:29–33; Ex. 1010 ¶ 65. To the extent one of ordinary skill in the art might have required more detail regarding the CMP process, Rostoker describes CMP in detail. E.g., Ex. 1006, 1:43–50, 1:56–59, 5:32–52, Fig. 1. We also credit Mr. Maltiel’s opinion that a person of ordinary skill in the art “would have been motivated to use Chesebro’s addition of dummy structures to reduce variation and improve wafer planarization of deposited layers using the CMP process described in Rostoker.” Ex. 1010 ¶ 66 (referring to ¶¶ 36–39). With regard to Patent Owner’s argument that Rostoker’s use of a “stop” structure would have led one of skill in the art away from the process claimed in the ’697 patent (PO Resp. 28–29), we determine, as we did above with the challenge based on Ueno, that the use of a stop structure and raised dummy areas in the gaps between active wiring are not mutually exclusive or inconsistent. See Ex. 1024 ¶¶ 25–26 (citing Ex. 1006, 5:58–6:42; Ex. 1003 ¶ 4). Therefore, we are persuaded by Petitioner’s evidence and” slip op. at 26

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “construction, shows an “arrangement of active conductive traces [212, 214, and 216] and dummy raised areas [218] on a surface of a semiconductor wafer.” Ueno Figure 1(c) (above right) also shows an “arrangement of active conductive traces [13A] and dummy raised areas [13B] on a surface of a semiconductor wafer.” Both figures show a “uniform” arrangement of raised areas on the semiconductor surface. Figure 2 of Ueno shows a uniform pattern of rectangular dummy raised areas regularly spaced apart to fill gaps between active wiring lines. Ex. 1003, Fig. 2; see also Ex. 1024 ¶ 21. Ueno’s method also teaches one of skill in the art “to reduce variation in pattern density with respect to one or more surface layers on one or more wafers to be polished,” in much the same way as taught by the ’697 patent. As explained above, Ueno adds dummy raised areas between active conductive lines according to a set of gap width, spacing, and line width dimensions to increase the pattern density of the raised surface area, thereby reducing variation of pattern density and the potential for “dishing” across the surface of the wafer. Ex.1003 ¶¶ 6, 8–10, 12, 17, Figs. 1c, 3c, 4c, 5; Pet. 17; Ex. 1010 ¶¶ 44–45; Pet. Reply 6–7; Ex. 1024 ¶¶ 17, 20–21. Ueno’s method and rationale for increasing pattern density on a wafer surface is comparable to the ’697 patent’s “commonized” pattern density that reduces variation across a wafer surface. Ex. 1001, 7:39–42, Figs. 3A–C, 4a–e; Pet. 17; Ex. 1010 ¶¶ 44–45; PO Resp. 4; Ex. 2006 ¶¶ 38, 39, 98, 101, 115; Pet. Reply 2. Patent Owner argues that Ueno does not disclose determining a “standardized” pattern density because Ueno uses a plasma nitride “stopper” layer to control CMP planarization, rather than a method where the same depth of material is removed from every layer of every product during CMP, using a fixed set of CMP process parameters. PO Resp. 18–24 (citing Ex. 2006 ¶¶ 92–97). Patent Owner’s argument rests squarely on its proposed claim construction, which we have declined to adopt. The claim phrase at issue does not require a fixed set of CMP process parameters to remove the same depth of material from every wafer surface layer to be polished, as argued by Patent Owner. PO Resp. 19 (citing Ex. 2006 ¶¶ 94, 96). 6” slip op. at 18

  Patent outcomesUS 5,639,697 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,639,697
• Blackberry Corporation v. NXP B.V.All claims unpatentable
  PTAB · Sep 19, 2014 · IPR2013-00233 · APJ Trenton A Ward · IPR · Final written decision

  Claim 3 is unpatentable as obvious over each of four combinations: Koss with O’Neill, Koss with Sheynblat, Jessup with O’Neill, and Jessup with Sheynblat.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “For the reasons stated above, we conclude that Petitioner has shown by a preponderance of the evidence that claim 3 would have been obvious over Koss and O’Neill.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Specifically, Patent Owner argues that the plain and ordinary meaning of the claim 3 term “power up,” is that the power supplied to something is increased. Id. (citing Ex. 2006 ¶ 46). During the hearing, Petitioner acknowledged that “selectively increasing or adding power to the component is the broadest reasonable interpretation” of “power up.” Tr. 7:3–11. We determine that both proposed constructions are substantially equivalent. 4 US 7,330,883 B1 (Ex. 1007) (“Jessup”) Furthermore, the Specification uses the term “power up” to describe providing power to the GPS receiver. Ex. 1001, Abstr. (“a GPS receiver (105, 106) arranged to power up in response to direct interaction between a user and the mobile phone (100) after the telephone has been switched on.”). Accordingly, in light the Specification and in the context of the claims, we construe “power up” to mean increasing the power supplied.” slip op. at 5

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “as proposed by Petitioner. Specifically, Petitioner relies upon Koss, not O’Neill, for teaching that a GPS location is acquired from the GPS receiver in response to a user selecting a particular web site. For this teaching, Petitioner cites to the following disclosure in Koss: Step 302 comprises allowing a user to select a hyperlink from the rendered hyperlinked content. Step 304 comprises obtaining current geographical coordinates of the mobile computer from the computer’s GPS receiver. Pet. 19–20 (emphasis omitted) (quoting Ex. 1004, col. 5, ll. 34–48). Petitioner further proposes in its challenge that O’Neill’s teaching of power conservation in activation of the GPS receiver be combined with this disclosure from Koss regarding acquiring GPS location information when the user selects a particular web site. Pet. 23–24. Accordingly, we are persuaded Petitioner has established sufficiently that the combination of Koss and O’Neill teaches a GPS receiver “arranged to power up in response to a user selecting a particular web site,” as recited in claim 3. For the reasons stated above, we conclude that Petitioner has shown by a preponderance of the evidence that claim 3 would have been obvious over Koss and O’Neill.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “subject to GPS receiver power conservation concerns that arise in mobile cellular telephones, because it is a large mobile computer with substantial battery capacity. PO Resp. 13. Thus, Patent Owner argues that one of ordinary skill in the art seeking to conserve energy in an “internet enabled, mobile cellular telephone” would not look to Koss. Id. Patent Owner argues that one of ordinary skill in the art would not have combined Koss with O’Neill, because power consumption would have been a concern only for the wireless phone with GPS receiver described in O’Neill, not for Koss’s large mobile computer with substantial battery capacity. PO Resp. 16–17. Patent Owner’s argument that Koss discloses only large mobile computers with substantial battery capacity is contrary to the express disclosure in Koss that its mobile computer may be a “hand-held device[].” Ex. 1004, col. 2, ll. 1–24. Furthermore, as Patent Owner’s counsel conceded during the oral hearing, all mobile devices under certain circumstances have power conservation concerns, including laptop mobile computers. Tr. 24:6– 8 (“Would you agree that all mobile devices have some sort of concern with power conservation? Mr. Schaeffer: Under certain circumstance[s], yes.”). Therefore, we determine that one of ordinary skill in the art looking at Koss would realize that power consumption is a concern for the mobile computer device. Furthermore, O’Neill expressly discloses, “it is common practice to operate a GPS receiver in a stand-by mode of readiness” in an “effort to preserve battery energy.” Ex. 1005, col. 2, ll. 7–11. Accordingly, we are not persuaded by Patent Owner’s argument that one of skill in the art would not have had a reason to combine Koss and O’Neill.” slip op. at 11

  Patent outcomesUS 6,501,420 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,501,420
• Redline Detection, LLC v. Star Envirotech, Inc.No claims unpatentable
  PTAB · Jun 30, 2014 · IPR2013-00106 · APJ James B Arpin · IPR · Final written decision

  Claims 9 and 10 were not shown unpatentable because the evidence did not establish a reason to combine the references to create the claimed inert environment.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner, however, does not cite precedent to support its position, and, during the oral hearing, Petitioner acknowledged that it was unaware of any supporting case law. Id. at 28:14-17. Moreover, we note that Dr. Checkel has “worked on automotive research projects with all of the ‘Big Three’ North American manufacturers as well as various suppliers to the industry.” Ex. 2018 ¶ 3. We are not persuaded on this record and with respect to this art that Petitioner has shown that a relevant distinction may be drawn between persons of ordinary skill in the United States and in Canada.” slip op. at 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Based on the present record, including Dr. Checkel’s unrebutted testimony, we are not persuaded that Petitioner has provided sufficient evidence to show that a person of ordinary skill in the art would have had reason to substitute the air used in Gilliam with inert gas alone from the mixture disclosed in Stoyle to achieve the invention recited in claim 9. Specifically, Dr. Checkel opines that: 136. The Stoyle apparatus heater relies on a high pressure process to heat oil to a temperature so as to enable flash evaporation and thus generate a large output of smoke. The Stoyle apparatus heats and forces a foam of oil and inert carbon dioxide gas under pressure through narrow annular passages in a heated metal assembly. This construction allows the oil to be pressurized and superheated above its atmospheric boiling temperature without significant degradation because of the uniform heating temperature and lack of oxygen. At the end of Stoyle’s heater tube, the superheated liquid oil is released to ambient conditions to form a mist. 137. A smoke generator relying on high pressure and flash evaporation to generate large volumes of smoke would be inappropriate and dangerous to use with the closed volume of an EVAP system, which is typically restricted to pressure of 1 psi (7kPa) or less. Even if the smoke generator had some modifications, the use of high pressure in generating the smoke and the production of large volumes of smoke at a rapid rate would risk damaging EVAP and fuel system components, possibly to the point of rupture. A person of skill would not consider Stoyle to be an analogous reference to add features missing from Gilliam. Ex. 2018 ¶¶ 136-137 (emphasis added; citations omitted). Dr. Checkel’s analysis of the differences between Stoyle and claim 9 of the ’808 patent is specific, well-supported, and persuasive. Therefore, we do not find sufficient evidence to support Petitioner’s argument for relying on Stoyle’s ventilation testing apparatus, in combination with Gilliam’s vacuum system leak-testing apparatus, to make the asserted substitution. We determine that the evidence of record is not sufficient to conclude that Gilliam and Stoyle provide a reason for one skilled in the relevant art to create an inert environment within a closed smoke-producing chamber and, subsequently, within a closed EVAP system during leak testing. In view of the differences between Stoyle’s and Gilliam’s apparatus, as detailed by Dr. Checkel, we are persuaded that a person of ordinary skill in the relevant art would not have reason to choose only the inert gas from Stoyle’s air/inert gas mixture and substitute inert gas alone for Gilliam’s use of air to achieve the invention recited in claim 9.” slip op. at 25

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

    “iii. Combination of Gilliam and Stoyle For the reasons discussed below, we agree with Patent Owner, and we are not persuaded by Petitioner’s evidence or Petitioner’s reasoning that a person of ordinary skill would have had reason to substitute Stoyle’s use of inert gas, forced into the narrow compressed space between a bore and a plug, in place of the air used in Gilliam’s temperature-regulated, spark arrestor-governed system to generate smoke in a closed smoke-producing chamber. See Pet. 41-42. It is not sufficient for prior art references to teach or suggest the recited limitations of a claim. There must be some reasoning supported by rational underpinnings to combine the references to achieve the invention recited in the challenged claims. As the U.S. Supreme Court explained, “[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.” KSR, 550 U.S. at 421 (citing Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “guard against slipping into use of hindsight”).” slip op. at 22

  • ExcludeMotion to exclude, deniedMixed

    “Exhibits 2020, 2022, and 2024-2036: Referenced in Dr. Checkel’s Declaration, and Exhibits 2008, 2013, 2015, and 2017: Referenced in Mr. Saffie’s Declaration Petitioner seeks to exclude Exhibits 2020, 2022, and 2024-2036, referenced in Dr. Checkel’s Declaration, and Exhibits 2008, 2013, 2015, and 2017, referenced in Mr. Saffie’s Declaration, as allegedly irrelevant under FRE 403 and hearsay under FRE 801 and 802. Pet. Mot. Excl. 15. Petitioner, however, fails to identify any allegedly improper portions of any of these exhibits with any particularity. Id.; see Pet. Reply Mot. Excl. 5 (“For the reasons set forth in [Petitioner’s] motion, the remainder of [Patent Owner’s] evidence should be excluded.”). Such a general objection to these exhibits does not provide us with the information necessary to assess Petitioner’s reasons for seeking exclusion of these exhibits. Therefore, on this record, Petitioner’s motion to exclude Exhibits 2008, 2013, 2015, 2017, 2020, 2022, and 2024-2036 is denied. V. CONCLUSION Petitioner has not presented sufficient evidence to show by a preponderance” slip op. at 38

  Patent outcomesUS 6,526,808 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 6,526,808

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.