• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-00159 · APJ Kerry Begley · IPR · Final written decision

  Claims 1–3, 8, and 15–25 are unpatentable: Pong anticipates claims 1–3, 8, 15, 16, and 25, and Pong and Smith render claims 17–24 obvious; claim 11 was not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Electronics Co. Ltd., Samsung Electronics America, Inc.,2 and Amazon.com, Inc. (collectively, “Initial Petitioners”) filed a Petition requesting inter partes review of claims 1–3, 8, and 11–25 of U.S. Patent No. 7,296,121 B2 (Ex. 1001, “the ’121 patent”). Pet. Pursuant to 35 U.S.C. § 314(a), we determined the Petition showed a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of claims 1–3, 8, 11, and 15–25, and instituted an inter partes review of these claims. Paper 12 (“Inst. Dec.”). We, however, did not institute review of claims 12–14, because we determined the Petition did not show a reasonable likelihood that Petitioner would prevail with respect to these claims. Id. at 23–30.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Dr. Horst’s testimony that as a result, from the perspective of the presence bit vector, “every processor indicated as storing a copy of the memory line in its cache is storing a valid copy.” Ex. 1014 ¶ A-11; see Pet. 26–27. In other words, as Dr. Horst testifies, “because a write update protocol always updates caches to keep them valid,” “when a cache line is present[,] it is necessarily valid.” Ex. 1025 ¶ 23; see Reply 17–18. Indeed, Dr. Oklobdzija agrees that because the write update protocol “force[s the caches] to update their value for a cache line every time it changes”—as Pong discloses— “every processor that has the cache line will have the line in a valid state.” Ex. 2016 ¶ 90 (emphasis added); Ex. 1003 ¶ 48; see also Tr. 115:1–23 (Patent Owner conceding that in a write update protocol, any cached copies could be “considered . . . to be valid” because they are “kept usable” and “updated”). Accordingly, based on Pong’s disclosures, as well as the explanatory testimony of Dr. Horst in addition to Dr. Oklobdzija, we determine that in the write update protocol, a set bit in Pong’s presence bit vector represents that the corresponding cached copy is present and valid.” slip op. at 44

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

    “2. OBVIOUSNESS OVER PONG AND SMITH We turn to the instituted obviousness ground alleging that claims 17–” slip op. at 73

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “addresses Koster—a prior art U.S. patent of record as Exhibit 1009 that was filed on July 13, 2004 and issued on April 13, 2004—Patent Owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims over the prior art of record. When arguing how the limitations of the proposed substitute claims distinguish them from the disclosures of the references of record, Patent Owner’s Motion addresses Koster only by asserting that “[a]s to . . . Koster . . . , because, as discussed above, all of the substitute claims find support in the [’]347 Application, . . . Koster . . . is not prior art to any of the proposed substitute claims.” Mot. 22. Because Patent Owner does not persuade us that the proposed substitute claims are enabled by the disclosure in the ’347 Application, we find unpersuasive Patent Owner’s suggestion that the proposed substitute claims are entitled to the filing date of the ’347 Application. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“For a patent to claim priority from the filing date of its provisional application, . . . the specification of the provisional must . . . enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”) (internal citation and quotations omitted); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement.”); see also Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (“[If] the 1983 PCT application was . . . not enabled, Novo would not be able to rely upon the application’s priority date to overcome the Brewer patent.”). Accordingly, we also find unpersuasive Patent Owner’s assertion basis for asserting that the proposed substitute claims are patentable over Koster (by itself or in combination with other references of record), we conclude that Patent Owner has not met its burden of demonstrating patentability of the proposed substitute claims over the references of record. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307 (Fed. Cir. 2015) (upholding Board’s requirement that patent owner “show patentable distinction [of the substitute claims] over the prior art of record”); Opp. 1–4. Thus, Patent Owner has not met its burden for proposed substitute claims 26–34.” slip op. at 84

  Patent outcomesUS 7,296,121 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-01353 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 4–6 are unpatentable as anticipated by Koster, claims 19–24 are unpatentable as obvious over Koster and Smith, and claims 11–12 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “For the reasons discussed below, however, despite the arguments and evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11

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

    “The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner fails to proffer evidence sufficient to rebut Patent Owner’s evidence that Koster’s disclosure of a microprocessor does not necessarily disclose that the microprocessor is programmed. Dr. Horst, in his original declaration, asserts that “a requesting microprocessor must be programmed to complete a memory transaction after receiving a first number of responses to a first data request.” Ex. 1014 ¶¶ D-17–D-18. This assertion, however, is conclusory, and does not sufficiently explain why the microprocessor must be programmed or exclude possibilities other than programming. See id.; PO Resp. 27. In particular, Dr. Horst’s original declaration testimony provides no discussion or explanation as to whether a microprocessor composed solely of hardwired logic would necessarily be programmed and whether the functionality described in Koster could not be implemented using hardwired logic. See Ex. 1014 ¶¶ D-17–D-18; PO Resp. 27.” slip op. at 34

  Patent outcomesUS 7,296,121 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Westerngeco, L.L.C. v. PGS Geophysical AsSome claims unpatentable
  PTAB · Jun 8, 2016 · IPR2015-00310 · APJ Justin Busch · IPR · Final written decision

  Claims 23, 24, and 30 are unpatentable as anticipated by de Kok; claims 23, 24, 28, and 29 are unpatentable as obvious over Beasley and Edington.

  RulingsFinal written decision

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

    “We agree with Patent Owner that the “indexed” limitation requires more than merely “selecting” times. Petitioner offers no explanation how Dr. Ikelle’s testimony that “indexed” should be construed broadly to mean “selected,” Ex. 2002, 184:8–11, would be consistent with the rest of the limitation that requires enabling separate identification of events originating from different sources. Patent Owner’s proposed construction, however, is unduly narrow to the extent it requires recording. As explained in the passage cited by Patent Owner, recording the signal and indexing are two separate aspects of the process involved in the ’981 patent. Ex. 1001, 5:62–67 (“A recording is made of the signal . . . that is indexed to a known time reference with respect to time of firing of the first source) (emphases added). The ’981 patent demonstrates that the term “indexed” is used in the “indexed” limitation according to one of its ordinary meanings that one thing is arranged in reference to another. Id.; see also id. at 6:66–7:1 (“[A] time of firing of each source with respect to a time index” is shown in Figure 4.), 8:33–40 (“[W]hen time is indexed with respect to the firing time of source A,” source B events are not coherent between firing sequences.).” slip op. at 7

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

    “Owner’s distinctions between what de Kok discloses and what claim 23 recites are inapposite. We are persuaded by Petitioner’s arguments, which Patent Owner does not contest, that de Kok’s firing times for each source are indexed (as we have construed the “indexed” limitation) to the reference time in a way that allows the shot records to be separated into source records. Because de Kok discloses both indexing and enabling separate identification of seismic events originating from each source, de Kok discloses the “indexed” limitation as we have construed it.” slip op. at 13

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

    “unpersuaded. Petitioner’s challenge relies on Edington for its teaching that time-delays can be used to encode and decode signals. Based on the arguments and evidence presented during trial, we are persuaded by Petitioner that a person having ordinary skill would have used time-aligning signals, as taught by Edington, as a type of decoding without needing to take multiple shots from the same source. Accordingly, a person having ordinary skill would have been able to decode a signal for a given encoding scheme, and we find Patent Owner’s assertion that an ordinarily skilled artisan would “lack[] an effective decoding scheme” unpersuasive.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Beasley clearly states that “no time shift” results in “no spatial reflection-point smearing.” Ex. 1004, 7:61–62. Both parties agree that some amount of spatial reflection point smearing would result from using Edington’s time delay encoding with Beasley’s seismic surveying system. See Tr. 28:3–8, 38:14–15 (counsel for Patent Owner stating that “frankly, any time you have a time delay at all, there is spatial reflection point smearing”). However, neither party pointed us to evidence explaining the relationship between the amount of delay and the amount of smearing, or how much smearing would be tolerated in marine seismic surveying. One consequence of the lack of evidence on this point is that it is unclear whether Beasley is stating that simultaneous activation versus sequential activation avoids smearing or if simultaneous activation versus near-simultaneous activation avoids smearing. Beasley’s disclosure regarding the benefit of eliminating smearing immediately follows the discussion that distinguishes between sequential and concurrent source activation. Based on the record before us, we find Beasley indicates that simultaneous (or near-simultaneous) activation of sources avoids the smearing that otherwise results when activating the sources sequentially. Ex. 1004, 7:52–63. Furthermore, Patent Owner has not argued, and we do not find, that claim 23 should be construed to exclude any amount of spatial reflection point smearing.10 The parties have pointed to no evidence or argument explaining sufficiently why the level of smearing resulting from Petitioner’s proposed combination of Beasley and Edington would be unacceptable, but the level of smearing resulting from the time delay encoding recited in the ’981 patent would be acceptable. Therefore, to the extent that incorporating Edington’s time delay encoding into Beasley’s system generates reflection point smearing, the evidence does not support a finding that claim 23 excludes any amount of smearing. Based on the record before us, we are not 10 When asked whether the subject matter of the ’981 patent suffered from spatial reflection point smearing because of its use of time delays, counsel for Patent Owner stated “I do think it suffers it to some degree.” Tr. 41:14– 15. persuaded the smearing allegedly introduced by combining Edington’s time delay encoding with Beasley’s system would have led an ordinarily skilled artisan away from that combination.” slip op. at 25

  Patent outcomesUS 6,906,981 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 6,906,981
• Westerngeco, L.L.C. v. PGS Geophysical AsSome claims unpatentable
  PTAB · Jun 8, 2016 · IPR2015-00309 · APJ Justin Busch · IPR · Final written decision

  Claims 1, 2, 6, 7, 10, 11, 16, 17, 21, and 22 are unpatentable; claims 3–5 are not shown unpatentable, and challenges to claims 18–20 are dismissed.

  RulingsFinal written decision

  • BurdenMixed

    “Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1, 2, 6, 7, 10, 11, 16, 17, 21, and 22 are unpatentable, but has failed to do so for claims 3–5 and 12–15. We dismiss the Petition with respect to the challenges asserted against claims 18–20.” slip op. at 2

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

    “more than merely “selecting” times. Petitioner offers no explanation how Dr. Ikelle’s testimony that “indexed” should be construed broadly to mean “selected,” Ex. 2002, 184:8–11, would be consistent with the rest of the limitation that requires enabling separate identification of events originating from different sources. Patent Owner’s proposed construction, however, is unduly narrow to the extent it requires recording. As explained in the passage cited by Patent Owner, recording the signal and indexing are two separate aspects of the process involved in the ’981 patent. Ex. 1001, 5:62–67 (“A recording is made of the signal . . . that is indexed to a known time reference with respect to time of firing of the first source) (emphases added). The ’981 patent demonstrates that the term “indexed” is used in the “indexed” limitation according to one of its ordinary meanings that one thing is arranged in reference to another. Id.; see also id. at 6:66–7:1 (“[A] time of firing of each source with respect to a time index” is shown in Figure 4.), 8:33–40 (“[W]hen time is indexed with respect to the firing time of source A,” source B events are not coherent between firing sequences.).” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Although a prior art reference may anticipate when the claim limitations not expressly found in that reference are inherent in it, inherency requires that “the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Here, Petitioner’s arguments and evidence fail to persuade us that de Kok disclosure of suppressing random noise inherently includes determining trace to trace coherence. Merely demonstrating a step may be done is not sufficient to show that step is inherently anticipated. Accordingly, based on the arguments and evidence submitted, we find Petitioner has failed to demonstrate, by a preponderance of the evidence, that de Kok anticipates claims 12 and 17. Similarly, because claims 13–15 ultimately depend from claim 12, we find Petitioner has failed to demonstrate, by a preponderance of the evidence, that de Kok anticipates claims 13–15.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “The relevant passages cited by both parties demonstrate that Beasley distinguishes between alternating and concurrent firings. See, e.g., Ex. 1004, 7:52–63. Although Herkenhoff states that the concurrent disclosure in Beasley means “exactly concurrently,” Patent Owner has not pointed to any clear disclosure in Beasley itself indicating “concurrently” should be understood as excluding any amount of time delay. Petitioner, however, has pointed to multiple references where Beasley explains that sources may be fired “simultaneously or nearly simultaneously.” Pet. Reply 15 (citing Ex. 1004, 8:46–47); Pet. 47 (quoting Ex. 1004, 1:19–25 (“The present invention, in certain aspects, is directed to seismic survey systems and methods in which two or more seismic sources are fired simultaneously, or significantly close together temporally . . . .”)); see also Ex. 1004, 1:47–51, 8:44–47, 9:5–10, 12:26–29. Moreover, claim 1 of the ’655 patent, which Patent Owner asserts claims the “first embodiment” of the ’981 patent, recites a method including the step of “substantially simultaneously launching a first acoustic wavefield,” from the leading source, “the first wavefield being characterized by a first unique code and launching a second acoustic wavefield” from the trailing source, “the second acoustic wavefield being characterized by a second unique code.” Ex. 2009, 6:46–53. Accordingly, Beasley does not exclude time delay encoding from its disclosed “concurrent” activation embodiments.” slip op. at 27

  Patent outcomesUS 6,906,981 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 6,906,981
• Westerngeco, L.L.C. v. PGS Geophysical AsSome claims unpatentable
  PTAB · Jun 8, 2016 · IPR2015-00311 · APJ Justin Busch · IPR · Final written decision

  Claims 31, 32, and 35–37 are unpatentable as obvious over Beasley and Edington; the Board did not find claims 31–34 and 36–38 anticipated by de Kok or claims 33–34 obvious.

  RulingsFinal written decision

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

    “Petitioner initially argued for a specific construction of “wavelet time” as “the duration of the source signature.” Pet. 14–15. For purposes of the Decision on Institution, we preliminarily construed wavelet time consistent with Petitioner’s proposed construction. Dec. on Inst. 14–15. Now, with the full record before us, we determine an explicit construction of “wavelet time” is not necessary to resolve this controversy. Petitioner does not clearly set forth a proposed construction for any other term in its Petition. Patent Owner argues for specific constructions of “quasi-randomly” and “randomly.” PO Resp. 15–19. The constructions of “quasi-randomly” and “randomly” are not in dispute, and an explicit construction is not necessary to resolve the controversy; accordingly, we do not provide an explicit construction of “quasi-randomly” or “randomly.” Therefore, we determine there is no need to construe explicitly any term for purposes of this decision.” slip op. at 6

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

    “We agree with Patent Owner that de Kok’s polarity encoding and decoding process does not disclose the “time aligning” step. As Patent Owner argues, de Kok describes a polarity encoding and decoding system that does not align the “recorded signals with respect to a firing time of the second source in each firing sequence.” Specifically, de Kok explains that it uses activation sequences and polarity to generate signals, from which “source records may be derived” “using a combination of shot record summations, inversions and filtering.” Ex. 1003, 2:51–53; see also id. at 4:55–5:4, 5:55–65. To the extent de Kok discusses time delay encoding, any arguable time alignment applies to the firing of the sources, not the recorded signals. Id. at 5:66–6:2, 6:41–52. Accordingly, Petitioner has not pointed to persuasive evidence that de Kok’s polarity encoding and decoding discloses the “time-aligning” step.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “The relevant passages cited by both parties demonstrate that Beasley distinguishes between alternating and concurrent firings. See, e.g., Ex. 1004, 7:52–63. Although Herkenhoff states that the concurrent disclosure in Beasley means “exactly concurrently,” Patent Owner has not pointed to any clear disclosure in Beasley itself indicating “concurrently” should be understood as excluding any amount of time delay. Petitioner, however, has pointed to multiple references where Beasley explains that sources may be fired “simultaneously or nearly simultaneously.” Pet. Reply 12 (citing Ex. 1004, 8:46–47); Pet. 38 (quoting Ex. 1004, 1:19–25 (“The present invention, in certain aspects, is directed to seismic survey systems and methods in which two or more seismic sources are fired simultaneously, or significantly close together temporally . . . .”)); see also Ex. 1004, 1:47–51, 8:44–47, 9:5–10, 12:26–29. Moreover, claim 1 of the ’655 patent, which Patent Owner asserts claims the “first embodiment” of the ’981 patent, recites a method including the step of “substantially simultaneously launching a first acoustic wavefield,” from the leading source, “the first wavefield being characterized by a first unique code and launching a second acoustic wavefield” from the trailing source, “the second acoustic wavefield being characterized by a second unique code.” Ex. 2009, 6:46–53. Accordingly, Beasley does not exclude time delay encoding from its disclosed “concurrent” activation embodiments. Patent Owner’s argument that time delay encoding results in a plain wavefield rather than an encoded wavefield and, therefore, using time delay encoding would not fall within Beasley’s “any type of coding,” is similarly unpersuasive. Patent Owner fails to address that Beasley distinguishes between “a signal with no encoded feature, individual identifier, tag, discriminating feature, or separate signature” and “signals that can be discriminated from each other due to some identifying characteristic, parameter, signature or feature.” Ex. 1004, 9:67–10:8 (emphasis added). Accordingly, the evidence supports Petitioner’s contention that time delay encoding generates signals with an identifying parameter or characteristic (the timing) that would allow the signals to “be discriminated from each other.” Pet. Reply 11–12. Furthermore, Dr. Lynn acknowledged that “Edington’s time delay source coding is ‘a type of source signature encoding.’” Id. (quoting Ex. 1022, 148:18–23).” slip op. at 17

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

    “nonobviousness. PO Resp. 55–60. The factual inquiries for obviousness include secondary considerations based on evaluation and crediting of objective evidence. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). However, to accord substantial weight to objective evidence requires the finding of a nexus between the evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). “Nexus” is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The burden of showing that a nexus exists lies with the patent owner. Id.; see In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994). Patent Owner points to various prior attempts (including Edington, Beasley, and de Kok) to conduct simultaneous shootings in a marine environment and the failings of each of them. Id. at 43–44. Patent Owner also points to various published papers allegedly “investigat[ing] data processing techniques for use with data sets modeled on [the ’981 patent]’s varied time delays” and field trials and studies allegedly using the ’981 patent’s “time-delay acquisition and indexing methods.” Id. at 44–48. Petitioner argues Patent Owner has shown no nexus between Patent Owner’s proffered secondary considerations and the invention of the ’981 patent. Pet. Reply 20–22. Petitioner contends Patent Owner’s focus on the varied time delays of claim 31 is insufficient because time delayed encoding “existed long before the ’981 patent.” Id. We agree with Petitioner that Patent Owner has not demonstrated sufficiently a nexus between the secondary considerations and the alleged novelty of claim 31. First, as Petitioner points out, and as borne out by the evidence in this case, time delay encoding for seismic surveying existed prior to the ’981 patent. E.g., Exs. 1006, 1021. Second, the majority of the evidence cited by Patent Owner focuses on the randomness of the time delays, not just the use of time delays generally. Consequently, Patent Owner has not presented persuasive evidence or analysis linking the claims at issue with the alleged “long-felt but unmet need, industry praise, and copying.” See PO Resp. 55.” slip op. at 20

  Patent outcomesUS 6,906,981 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 6,906,981
• Westerngeco LLC v. PGS Geophysical AsSome claims unpatentable
  PTAB · Jun 3, 2016 · IPR2015-00313 · APJ Beverly M Bunting · IPR · Final written decision

  Claims 1, 4, 10, and 11 are unpatentable: claims 1, 4, and 10 as anticipated by Gallagher, and claim 11 as obvious over Gallagher and Frasier; claims 2, 3, and 5 were not shown unpatentable.

  RulingsFinal written decision

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

    “Id. at 3:59–65. Additionally, the specification describes how, in this embodiment, “a plurality of the coordinate-designated set of traces have the same coordinates . . . the acquisition geometry resulted in two traces populating each common-inline/common-crossline bin.” Id. at 3:66–4:3. In an alternative embodiment, “there will be a unique set of coordinates per trace (i.e. a single trace per coordinate bin).” Id. at 4:5–7. Thus, based on the specification of the ’059 patent, we credit the testimony of Dr. Lynn that one of skill in the art would understand the “set of bins having a regularized number of traces” into which the coordinate-designated set of traces is organized are “common-offset bins.”4 Ex. 2037 ¶¶ 57–65, 111–113.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “As discussed supra, we determined that the correct interpretation of the claim term “set of bins” is “a set of common offset bins within a common reference point bin.” Patent Owner’s arguments directed to “posthoc bins” are not persuasive because the claims do not limit the bins to “pre” or “post” hoc bins. Thus, in view of the correct construction of the claim term “set of bins,” we are persuaded by Petitioner’s arguments that Gallagher discloses a “set of bins.” Specifically, Petitioner explains how the section shells group the sources based on their azimuth and offset from the CMP (Reply 10–11), and that the sub-squares represent common offset bins (Id. at 11–12). Additionally, Petitioner argues persuasively that the single-trace bin satisfies the claim limitation “a set of bins” as we have construed this term, because “[e]ach trace within the sub-bins or sections of Gallagher is necessarily common [to itself] with respect to offset and even azimuth.” Reply 13. In considering the record in its entirety, Petitioner has presented persuasive evidence to support a finding that Gallagher describes the “organizing” step recited in independent claim 1.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We are not persuaded by Patent Owner’s argument that the disclosure in Gallagher teaches away from the recited method. Patent Owner has not shown, nor can we find, that Gallagher criticizes, discredits, or otherwise discourages the use of a common reflection point instead of a common reference point. A reference teaches away from a claimed invention if it “criticizes, discredits, or otherwise discourages” modifying the reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We will not, however, “read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).” slip op. at 26

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

    “The Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry here is whether Petitioner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. Patent Owner does not proffer persuasive arguments or evidence that Petitioner’s proposed modification of the system of Gallagher using the teachings of Frasier regarding common reflection point would not have been obvious to one of skill in the art. We have considered Patent Owner’s arguments; however, we are persuaded that Petitioner has provided an articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 26

  Patent outcomesUS 6,026,059 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,026,059
• Mobotix Corp. v. Comcam International, Inc.Some claims unpatentable
  PTAB · Apr 28, 2016 · IPR2015-00093 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–6 and 9–28 are unpatentable as obvious over Thomas and Fernandez; claims 7 and 8 were not shown unpatentable on that ground.

  RulingsFinal written decision

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

    “Claim Interpretation In an inter partes review, claim terms in an unexpired patent are construed according to their broadest reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b); see 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, 136 S. Ct. 890 (mem.) (2016). 1. website (independent claims 1 and 25) Petitioner asserts that the broadest reasonable interpretation of the term “website” is “a computer system that has a recognized domain name and runs a Web server for publishing a group of related webpages on the Web.” Pet. 3 (citing Ex. 1005). Based on our analysis below, we determine that the claim term “website” does not require express construction for purposes of this Decision.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “[The] claim language clearly states that the triggering sensor is in an area covered by “a particular imaging device” (emphasis added), not necessarily within an area covered by “the imaging device” activated. Consistent with this, the claim language “capturing event data associated with the event detected at a particular at least one sensor” (emphasis added) does not require that the triggering sensor is in an area covered by the activated imaging device, as an imaging device would not need to cover the area occupied by a sensor to capture event data associated with an event detected by the sensor.” slip op. at 8

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

    “and a sensor sending a signal indicating an event has been detected, we are persuaded that Fernandez teaches this in its statement that detectors may sense state and that, “[i]n certain instances, e.g. unauthorized home entry, such sensed state may trigger other functionality, such as taking electronic photograph and/or notifying certain entities.” Ex. 1007, col. 4, ll. 47–50; Pet. 40–41; Pet. Reply 11–13; Ex. 1003 ¶¶ 128–130. We also are persuaded that it would have been obvious to operate Thomas’s system in accordance with this teaching, i.e., to activate the living room camera in response to the living room motion sensor sending a signal indicating that an event has been detected. Pet. 40–41; Pet. Reply 11–13; Ex. 1003 ¶¶ 122–131.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We are not persuaded that Mr. Monroe correctly identifies the principle of operation of Thomas. In particular, we find that the principle of operation of Thomas is not as narrow as Mr. Monroe asserts. Thomas discloses that: Broadly speaking, the invention relates to improved techniques to remotely monitor locations and to remotely monitor and control devices or appliances through a network. In one embodiment, the network in the Internet and the transmission is facilitated by an Internet server or electronic mail. The remote monitoring of locations is provided by efficiently transmitting images over the network to a remote machine located at a remote location. In one embodiment, the efficiency is facilitated by comparing a current image with a reference image, and then only transmitting the current image if it differs from the reference image by more than a predetermined threshold amount. The remote monitoring can also operate as an alarm system or provide intruder detection based on detected changes in images from a locally provided camera.” slip op. at 35

  Patent outcomesUS 6,975,220 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 6,975,220
• Blackberry Corp. / Blackberry Ltd. v. Zipit Wireless, Inc.Some claims unpatentable
  PTAB · Mar 29, 2016 · IPR2014-01509 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1, 2, and 4–7 are unpatentable over the stated obviousness grounds; claims 9, 10, and 12 were not shown unpatentable over Lotter.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedOther

    “Ex. 2082 ¶ 94. While an argument may be made that Dr. Konchitsky’s description of his Master’s degree is merely harmless embellishment or an artful rewording having the same effective meaning, we find that Dr. Konchitsky, nevertheless, incorrectly described his Master’s degree and misrepresented his credentials to the Board. Further, that Dr. Konchitsky may be qualified to testify based on his undergraduate degrees and experience, as asserted by Patent Owner (Tr. 21:16–5), does not mitigate Dr. Konchitsky’s misrepresentation of his credentials nor preclude us from weighing his testimony in light of such misrepresentation. We expect all parties and individuals involved in proceedings before the Board to “have a duty of candor and good faith to the Office during the course of a proceeding.” 37 C.F.R. § 42.11. Moreover, we agree with the sentiment that “[e]ven the slightest accommodation of deceit or a lack of candor in any material respect quickly erodes the validity of the process. As soon as the process falters in that respect, the people are then justified in abandoning support for the system in favor of one where honesty is preeminent.” United States v. Shaffer Equip. Co., 11 F.3d 450, 457–59 (4th Cir. 1993). Therefore, we will consider Dr. Konchitsky’s statements regarding his Master’s degree in affording his testimony the appropriate weight.” slip op. at 10

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

    “Based on the complete record before us, we agree with the parties that the broadest reasonable interpretation of the term “database” is “a collection of information or data that is structured or organized to allow access and retrieval of the information by a computer.” This interpretation is consistent with the Specification, which, for example, describes device database 58 as storing identification data and allowing access of stored identification data by gateway 54. See Ex. 1001, 5:4–7, 8:7–9. Therefore, we adopt this construction. Moreover, we agree with Petitioner’s position that a “database” as claimed does not require a specific type of structure and even the “simplest” structure or organization of information would satisfy the element. The literal language of the claim language does not require fields, records, etc., and does not exclude the use of lists. Additionally, we determine that the literal language of the claim terms “control database” and “regulation database” do not require separate and distinct databases. Further, we have considered both parties’ arguments regarding the respective position each has taken in the related district court proceeding. These arguments are instructive, but not binding on our construction of the claim term “database” in our review. For example, Dr. Brody’s testimony in the district court proceeding that the Specification describes individual control and regulation databases (Ex. 2001 ¶ 191) does not persuade us that the claim terms require separate and distinct databases. It is well-settled that even “the fact that the specification describes only a single embodiment, standing alone, is insufficient to limit otherwise broad claim language.” Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed. Cir. 2008); see also Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“Although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). Accordingly, we construe the term “database” as “a collection of information or data that is structured or organized to allow access and retrieval of the information by a computer,” and do not limit “control database” and “device database” to separate and distinct databases.” slip op. at 14

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

    “upon by the Petitioner clearly and unequivocally disclose the invention as recited in claim 9 of the ’694 patent “without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” See In re Arkley, 455 F.2d 586, 587 (CCPA 1972). First, although Lotter’s Abstract indicates an alert “and/or” message may be provided, this disclosure is not directed to the flowcharts of Figures 3A–3O, 6A–6B, and 7A–7B. Thus, based on the complete record before us, it is unclear whether this single sentence in the Abstract suggests the combination of the two embodiments shown in the Figures 3A–3O, 6A–6B, and 7A–7B, and if so, what aspects or steps of the flowcharts would be combined. See In re Brink, 419 F.2d 914, 917 (CCPA 1970) (“[I]f a reference is ambiguous and can be interpreted so that it may or may not constitute an anticipation of an appellant’s claims, an anticipation rejection under 35 U.S.C. § 102 based upon the ambiguous reference is improper.”). We decline to speculate on how the combination may be accomplished or whether such a combination would teach or suggest the features recited in claim 9 of the’694 patent.” slip op. at 27

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

    “Furthermore, we do not agree with Dr. Konchitsky’s position that a “PHOSITA would not seek to combine the teachings of de-centralized control of mobile devices with small networks of wireless access points, with Lotter. Such teachings are contrary to the purposes of, and would not be understood to operate with, Lotter.” Ex. 2004 ¶ 148. First, Patent Owner reads the purposes of Lotter and Walter too narrowly. As Petitioner discerns, Lotter and Walter are more generally directed to systems and methods for regulating the network and data service use of electronic devices such as mobile communication devices. Ex. 1005, Abstract, 1:58– 2:12; Ex. 1007 ¶¶ 12, 16. Second, we do not agree that the differences between Lotter’s and Walter’s systems are so great as to render their combination “contrary” or inoperable. Dr. Konchitsky observes Walter’s policies may be imposed on a wireless device “regardless” of what is already in Lotter’s Permissions database. Ex. 2004 ¶ 148. Assuming Dr. Konchitsky’s reading of Walter to be correct, we are not persuaded that adding another category of data service use restriction/rule/policy to Lotter’s system is incompatible with or contrary to Lotter’s general purpose of regulating data service use by mobile communication devices. Rather, the combination with a Walter-type policy provides the added feature of “different policy/control data for different predetermined networks at different locations because the policy controls on one network location, for example a school, would vary compared to another location, for example and office building” as explained by Dr. Brody. Ex. 1003 ¶ 84. Furthermore, Dr. Konchitsky’s statement that Walter’s teachings “would not be understood to operate with, Lotter” is not supported by the record with any evidence or technical reasoning as to why a person of ordinary skill in the art would determine that a combination of Lotter’s and Walter’s teachings “would not operate.” Thus, with regard to this statement, Dr. Konchitsky’s testimony is entitled to little to no weight. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). Accordingly, we conclude that Petitioner has demonstrated by a preponderance of the evidence that claim 6 would have been obvious over Lotter, Patron, and Walter.” slip op. at 48

  Patent outcomesUS 8,190,694 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,190,694
• Saint-Gobain Abrasives, Inc. v. 3M Innovative Properties CompanySome claims unpatentable
  PTAB · Feb 23, 2016 · IPR2014-01281 · APJ Richard E Rice · IPR · Final written decision

  Claims 1–8, 12, 23, 24, and 29–33 are unpatentable as obvious over Spitznagel and De Schrijver; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Petitioner agrees that the level of ordinary skill in the art includes a bachelor’s degree in mechanical engineering, or a similar field, or at least two years of experience designing fluid-dispensing devices, but disputes Patent Owner’s contention that the level of ordinary skill includes at least two years of experience operating fluid-dispensing devices. Pet. Reply 3 (citing Ex. 1002 ¶ 16). Petitioner argues that Patent Owner’s definition “is so low that it is met by a person operating a garden hose for two years.” Pet. Reply 3. Based on the competing arguments and evidence of record we determine that a POSA would have had at least a bachelor’s degree in mechanical engineering, or a similar field, or at least two years of work experience in mechanical engineering, or a similar field.” slip op. at 11

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

    “1. “adapter” Patent Owner proposes three dictionary definitions for “adapter”: (1) “a device for connecting pieces of equipment that cannot be connected directly”; (2) “a device, mechanism, or fitting used to mate two parts of different design, shape, or size to each other”; and (3) a “device for connecting parts that will not mate.” PO Resp. 16–17 (citing Exs. 2003, 2004, 2005). Petitioner does not dispute the proposed dictionary definitions. See Pet. Reply 5. We are persuaded that Patent Owner’s proposed dictionary definitions establish the ordinary and customary meanings of “adapter” as would be understood by one of ordinary skill in the art in the context of the entire disclosure and adopt them, collectively, as the broadest reasonable interpretation consistent with the ’780 Patent Specification.” slip op. at 12

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

    “Third, we determine that Petitioner has provided articulated reasoning with rational underpinning sufficient to support the legal conclusion of obviousness. Pet. 20–21; see KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Based on Mr. Leinsing’s testimony, one of skill in the art would have been motivated to use a bayonet coupling as disclosed by De Schrijver at the cup end of Spitznagel’s adapter, instead of a threaded connection, for its known benefit of providing a relatively quick mechanism to attach and remove a paint cup to and from a gravity-fed spray gun. See Ex. 1002 ¶¶ 96–99. We have considered Patent Owner’s opposing arguments, but find them unpersuasive. We disagree, for example, that De Schrijver teaches away. PO Resp. 37 (citing Ex. 1009, 8:18–25). While De Schrijver expresses a general preference for self-contained portable guns, Patent Owner has not shown sufficiently that De Schrijver criticizes, discredits, or otherwise discourages investigation into the invention claimed. See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed.Cir.2004)). Patent Owner’s argument that the gravity-fed paint spray gun of Spitznagel is “fundamentally different” from, and “technically incompatible” with, the aerosol application gun of De Schrijver is largely unresponsive to the relevant De Schrijver teaching that threaded and bayonet connections are substitutable. See Pet. Reply 6–7 (citing Ex. 1002 ¶ 99). As discussed above, that teaching is not limited to connections between an adapter and the aerosol container of De Schrijver’s application gun, but extends to connections between an adapter and other types of fluid containers such as the paint pot of Spitznagel’s gravity-fed paint spray gun. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (holding that “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review”).” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We have considered Patent Owner’s opposing arguments, but find them unpersuasive. We disagree, for example, that De Schrijver teaches away. PO Resp. 37 (citing Ex. 1009, 8:18–25). While De Schrijver expresses a general preference for self-contained portable guns, Patent Owner has not shown sufficiently that De Schrijver criticizes, discredits, or otherwise discourages investigation into the invention claimed. See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed.Cir.2004)). Patent Owner’s argument that the gravity-fed paint spray gun of Spitznagel is “fundamentally different” from, and “technically incompatible” with, the aerosol application gun of De Schrijver is largely unresponsive to the relevant De Schrijver teaching that threaded and bayonet connections are substitutable. See Pet. Reply 6–7 (citing Ex. 1002 ¶ 99). As discussed above, that teaching is not limited to connections between an adapter and the aerosol container of De Schrijver’s application gun, but extends to connections between an adapter and other types of fluid containers such as the paint pot of Spitznagel’s gravity-fed paint spray gun. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (holding that “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review”).” slip op. at 24

  Patent outcomesUS 8,424,780 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,424,780
• NHK Seating Of America, Inc. v. Lear CorporationSome claims unpatentable
  PTAB · Feb 2, 2016 · IPR2014-01202 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 2, 4, 6, 8, 9, and 28–31 are unpatentable as anticipated by JP ’468; the remaining challenged claims are not held unpatentable.

  RulingsFinal written decision

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

    “The Specification describes two embodiments in which structures are “joined or fastened” to the seatback frame, namely, a first embodiment in which plate 10 having clamped ends 14 with clips 16, and springs 18 are joined to the frame 2, id. at 1:54–64, and a second embodiment in which spring 18, clips 32, and cam guides 46 are joined to frame 2, id. at 2:15–24. Headrest cushion 6 never touches frame 2 in either embodiment, but instead is connected to posts 8 (first embodiment) or 30 (second embodiment). “[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (citation omitted). Dependent claims 6 and 59 recognize that the posts are structures different than the headrest by reciting that the headrest “is separated from the seatback frame by a post.” Ex. 1001, C1 1:52–54 (claim 6), C1 4:31–32 (claim 59). The principle of claim differentiation instructs us to interpret “headrest” in claims 2 and 57 to refer to the headrest without the posts. Even if we were to interpret “headrest” to encompass the posts, however, posts 8 (first embodiment) and posts 30 (second embodiment) also never touch the seatback frame. Instead, the posts along with other structures functionally link the headrest to the frame.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “NHK persuades us by a preponderance of evidence that JP ’468 describes a headrest that is pivotally attached with the seatback frame. For the reasons expressed in part II.A above, we interpret “headrest pivotally attached with the seatback frame” more broadly than proposed by Lear. We interpret “pivotally attached with” to encompass a relationship between the headrest and seatback frame that involves the headrest being functionally linked via intervening structures to the seatback frame so that the headrest rotates forward in response to a rearward force applied to an impact target. Under our interpretation, JP ’468 describes “a headrest pivotally attached with the seatback frame.” We find that intervening structures physically join headrest 15 of JP ’468 to its frame member 8. Frame member 8, with its supporting arm 9 (the alleged seatback frame), is pivotally joined at axis 10 to bracket 5 of seat cushion support member 4 (the alleged bun frame), which is joined to floor 1 and thus also floor member 1′. Ex. 1008, 3–5, Figure 1. Headrest 15 is connected to arm 16, which is pivotally joined via pin 17 to bracket 18 “at the top part of floor member 1′.” Id. at 5. Headrest 15 is attached to frame 8 via the intervening structures described above and pivots about the recited axis. Accordingly, we find that a preponderance of evidence demonstrates that headrest 15 is “pivotally attached with the seatback frame” as recited in claims 2 and 57.” slip op. at 19

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

    “Similarly, we are not persuaded by NHK’s argument that using Ferrara’s spring would decrease the risk of whiplash injury. To the extent that Ferrara improves a headrest, it does so by providing the compliance that Dr. Viano recognized to reduce the risk of impact-based head injury in highspeed collisions. Ferrara never describes its spring, which softens a blow to the occupant’s head, as reducing the risk of whiplash injury, and the testimony from Dr. Viano that NHK cites does not support such a conclusion. Rather, Dr. Viano merely testifies that it is “possible” for “some blows to the head” to cause whiplash, Ex. 1018, 51:1–52:2, and whether such a blow causes whiplash “depends on so many factors,” id. at 52:4–53:1. Dr. Viano never testifies that Ferrara’s spring reduces the risk of whiplash injury, and NHK cites no evidence to support such a conclusion. Because NHK fails to establish that using Ferrara’s spring in Mertens’s headrest would “mitigate whiplash risk,” NHK’s proffered rationale for using Ferrara’s spring in Mertens’s headrest and, thus, NHK’s obviousness challenge is unpersuasive. “[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 Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). A challenge “on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006)). The argument and evidence proffered by NHK does not establish any credible reason to combine Ferrara’s spring with Mertens’s headrest. Nor does NHK proffer any evidence to establish whether a skilled artisan would have considered Ferrara’s spring 48 to have been an obvious substitute for Mertens’s torsion member 85 to permit rearward rotation of the headrest in severe collisions. NHK bears the burden of proving obviousness of the challenged claims by a preponderance of evidence, and we conclude that it has failed to do so in this case. Accordingly, we conclude that NHK has failed to establish that the combination of Mertens and Ferrara renders claims 2, 4, 6, 8, 9, 13–20, 31, 43–49, 55–60, 62–68, 70, 81, 84–90, 93, and 94 unpatentable as obvious under 35 U.S.C. § 103.” slip op. at 28

  • ExcludeMotion to exclude, deniedDenied

    “IV. LEAR’S MOTION TO EXCLUDE We have reviewed Lear’s Motion to Exclude, NHK’s Opposition to the Motion, and Lear’s Reply in support of the Motion. Based on our review, we deny the Motion in all respects for one or both of the following reasons: (1) the Motion is moot because it seeks to exclude evidence not considered or relied upon in rendering this Decision or (2) the Motion addresses issues more appropriate to determining the weight ascribed to the evidence rather than the admissibility of evidence. In rendering this Decision, we determine and ascribe the appropriate weight to all proffered evidence and, when appropriate, comment upon the weight ascribed.” slip op. at 29

  Patent outcomesUS 5,378,043 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,378,043

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.