- NHK Seating Of America, Inc. v. Lear CorporationSome claims unpatentablePTAB · Jan 12, 2016 · IPR2014-01079 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1, 3, 6–9, 12–16, 20, and 21 are unpatentable; claims 2, 4, 10, 11, 17, and 25 are not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As will be described in greater detail below, headrest 22 moves variably upon vehicle impact. In the embodiment shown, such variable movement occurs in first and second manners wherein the first and second manners relate to first and second forward velocities respectively, those being the velocities of the headrest 22 forward toward the occupant or the front of the vehicle, and first and second trajectories respectively, those being the trajectories or paths of headrest 22. Such variable movement could be along any suitable combination of trajectories and velocities. As long as at least one of the first forward velocity and first trajectory is different than one of a second forward velocity and second trajectory, movement in first and second manners, variable movement, has been achieved. Ex. 1001, 5:12–26 (emphasis added). This passage is consistent with interpreting “first manner and second manner” as meaning “any two different ways.” As described in this quoted passage, if either the forward velocity or the trajectory of the headrest, or both changes, then movement in a first and second manner has occurred. For example, if the headrest were to move forward at one velocity and then merely slow down (or speed up) on the same trajectory, then movement would occur in a first and second manner.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“headrest that moves in a first manner and a second manner because Dr. Kent’s original modeling of Nakano’s headrest failed to account for the constraint imposed by brackets 35. Resp. 20–23. Lear further contends that its expert, Dr. Viano, “correctly model Nakano” and determined that brackets 35 were “essential” to predicting the motion of Nakano’s headrest. Id. at 23. Lear also argues that movement of Nakano’s headrest may be defined mathematically by a single equation, which allegedly demonstrates that Nakano’s headrest moves along “a single trajectory.” Id. at 23–24 (citing Ex. 2010 ¶¶ 112–15). Lear contends that Dr. Kent “admits” that a path of motion that can be expressed by a single equation establishes movement in only one manner. Id. at 25 (citing Ex. 2012, 17:3–14). Our review of the cited testimony, reveals that it does not support Lear’s contention. We also do not understand Dr. Viano’s testimony to support a conclusion that a “single equation” defines the movement of Nakano’s headrest. Dr. Viano refers to Exhibit 2018 as reflecting his derivation of the mathematical relationships that define movement of Nakano’s headrest. Ex. 2010 ¶ 112 (citing Ex. 2018). Exhibit 2014 demonstrates that one equation defines the movement of Nakano’s headrest in the x-direction and another equation defines it in the y-direction. Ex. 2018, 1. Dr. Viano never provides an exemplary output of these two equations to illustrate how Nakano’s headrest would actually move. More importantly, however, Lear does not explain how Nakano’s express description that the coordinated operation of links 61, 62, and 63 lifts its headrest (as shown in Figure 5b) and subsequently lifts the headrest obliquely forward (as shown in Figure 5d) fails to constitute movement in a first and second manner. NHK persuades us by a preponderance of evidence that Nakano describes a headrest that moves in a first and second manner. More specifically, Nakano expressly states that it lifts the headrest (a first manner) and then subsequently lifts the headrest obliquely forward (a second manner). We need not determine whether Dr. Kent’s first or second kinematic model or Dr. Viano’s kinematic or geometric model accurately depicts the movement of Nakano’s headrest because Nakano expressly describes movement in first and second manners.” slip op. at 16
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Bigio, 381 F.3d at 1325. The appropriate field of endeavor is determined by referring to the specification of the patent at issue “including the embodiments, function, and structure of the claimed invention.” Id. at 1325–26. “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Clay, 966 F.2d at 659.” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“addressed by the ’949 patent, Lear persuades us that Seitzer fails to describe the guide member and follower of claims 2 and 25. Lear persuasively argues that Wiklund and Seitzer would not motivate a skilled artisan to incorporate a “bushing having a cam profile” into Wiklund’s support 24 (the alleged guideway) because Seitzer describes only rotating cams used in reciprocating machinery, not the claimed version of the guide member, a bushing having a cam configuration. Id. at 54–56. Drs. Viano and Kent agree that Seitzer describes rotating cams, Ex. 2010 ¶¶ 212–15; Ex. 2012, 198:12–14, 200:17–21. Both experts also agree that Seitzer does not describe the types of non-rotating cams to which the ’949 patent refers. Ex. 2010 ¶ 214; Ex. 2012, 205:3–5. We determine that a preponderance of the evidence establishes that Seitzer fails to describe the types of non-rotating cam configurations discussed in the ’949 patent. Accordingly, we conclude that the combination of Wiklund and Seitzer does not render the guide member and follower of claims 2 and 25 obvious. Resp. 52–56. 4. Conclusion For the reasons expressed above, we conclude that NHK fails to persuade us by a preponderance of evidence that the combination of Wiklund and Seitzer renders claims 2 and 25 unpatentable as obvious under 35 U.S.C. § 103.” slip op. at 43
Patent outcomesUS 6,631,949 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,631,949 - PTAB · Dec 7, 2015 · IPR2015-01438 · APJ Michael R Zecher · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before deciding whether to institute review of claims 1–3 and 8–12.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“they have settled their disputes regarding the ’104 patent. Paper 7, 2. The parties further represent that there are numerous related matters in the United States District Court for the Northern District of California that have been dismissed with prejudice or stayed pending final determination of two related inter partes reviews involving U.S. Patent No. 7,550,870 B2 (“the ’870 patent”). Id. at 3. Based on the joint requests filed by the parties in the two proceedings involving the ’870 patent, those cases have been terminated. Avocent Huntsville Corp. v. Cyber Switching Patents, LLC, Cases IPR2015-00690 & IPR2015-00725 (PTAB Dec. 7, 2015) (Paper 33 in each proceeding). Lastly, the parties do not represent that the ’104 patent is involved in any other proceedings before the Office. See generally id. at 2–4. Under these circumstances, we determine that it is appropriate to terminate this proceeding without rendering any further decisions. See 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 7,672,104 - Google Inc. / Motorola Mobility LLC et al. v. Arendi S.A.R.L.All claims unpatentablePTAB · Aug 18, 2015 · IPR2014-00452 · APJ Neil T Powell · IPR · Final written decision
Claims 1–79 are unpatentable as obvious: claims 1–9, 11, 13–29, 38–45, 57–64, 66, 68–75, 77, and 79 over Goodhand; the remaining challenged claims over Goodhand and Padwick.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Samsung Electronics Co., Ltd. (“Samsung”) filed a second Petition for inter partes review of claims 1–79 of the ’853 patent. IPR2014-01518, Paper 1. The second Petition challenged claims 1–79 on the same grounds as those for which we instituted trial in IPR2014-00452. Concurrent with the second Petition, Samsung filed a motion to join IPR2014-01518 with IPR2014-00452. IPR2014-01518, Paper 3. On March 18, 2015, we instituted an inter partes review with respect to all challenges raised in the second Petition, joined IPR2014-01518 with IPR2014-00452, and terminated IPR2014-01518. IPR2014-01518, Paper 10; IPR2014-00452, Paper 26.2” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Patent Owner insofar as the disputed claim language requires that the recited “analyzing” ensues when “a single entry of the execute command” occurs. This follows from the plain meaning of the claim language, and no evidence to the contrary has been cited. We do not agree, however, with Patent Owner’s argument that claim 1 “rule[s] out action by the user, such as selection of text in the document to be analyzed, as a condition for the analyzing to take place.” PO Resp. 17 (citing Ex. 2008 ¶ 25). According to the plain meaning of “upon a single entry of the execute command . . . analyzing the document,” the word “single” does modify entry, thereby excluding multiple entries of the execute command. Additionally, claim 1’s use of the transitional term “comprising” indicates that the method may include other actions prior to the recited “single entry of the execute command.” Furthermore, contrary to Patent Owner’s assertion, the claim language “an execute command which initiates a record retrieval from an information source,” by itself, does not convey clearly that the record retrieval necessarily occurs because of one entry of the execute command. Moreover, the portion of Dr. Levy’s deposition testimony cited by Petitioners persuades us that the system disclosed by the ’853 patent would require user actions prior to entering the execute command to trigger the analyzing process. See Ex. 1016, 75, l. 21–79, l. 18; Pet. Reply 11–12. Additionally, as noted by Petitioners, Patent Owner’s argument is contradicted by the Specification’s disclosure that:” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“Reply, the Federal Circuit has admonished that “[t]he PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Accordingly, we consider the cited portions of the prosecution history and the parties’ arguments about them. Patent Owner cites a number of documents from the prosecution history of U.S. Patent Application No. 09/189,626 (“the ’626 application”), which issued as the ’853 patent. Patent Owner cites an Office Action (Ex. 2001) in which the pending claims of the ’626 application were rejected based on U.S. Patent No. 6,085,201 to Tso (Ex. 2003, “Tso”). PO Resp. 36. Patent Owner also cites a subsequent Interview Summary (Ex. 2002), Amendment (Ex. 2004), and Notice of Allowance (Ex. 2005). Id. at 37–39. We have considered all of these documents, as well as Patent Owner’s arguments regarding them. We find that the cited prosecution history does not demonstrate a clear disavowal of text selection. The Remarks section of the Amendment addresses a number of different subjects. See Ex. 2004, 2–4. The first four paragraphs of the Remarks section present background information, including a request for reconsideration, a summary of the status of the claims, a summary of the Office Action, and a summary of an interview between the applicant and examiner (“the examiner interview”). Id. at 2–3. The paragraph summarizing the examiner interview bridges pages 2 and 3. Id. This paragraph describes an exploratory discussion between the applicant and the examiner about distinguishing Tso, a discussion in which “[n]o agreement was reached.” Id. at 3. In the following paragraph, the Amendment addresses the scope of the claims, explaining that: Claim 8 has been amended to clarify that according to Applicants’ invention, upon a single entry of an execute command by means of an input device, a document is analyzed to determine if first information is contained therein, and if the first information is contained in the document, an information source is searched for second information associated with the first information using a record retrieval program. Id. (emphasis added). We find that this latter paragraph contains the only clear statement from the applicant regarding the scope of the claims, and, in our view, it says nothing about whether the claims preclude or encompass text selection. See id.” slip op. at 17
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We are persuaded by Petitioners that a person of ordinary skill in the art would have understood from Goodhand that its system performs analysis to determine if address field 600 contains any information, and its system is capable of breaking down the information contained in address field 600 to isolate display names, which constitute first information. Mr. Allison provides credible, persuasive testimony supporting Petitioners’ arguments. See, e.g., Ex. 1002 ¶¶ 101–103, 122. Mr. Allison correctly asserts that Goodhand’s system resolves individual display names and can search for each display name individually. Id. at ¶ 103 (citing Ex. 1003, col. 19, ll. 40– 42); see also Ex. 1003, col. 17, ll. 33–36 (“Thus, in this example, the e-mail program will attempt to match ‘billb,’ ‘sm henry,” and ‘patterson’ with specific address book entries belonging to registered users.”). Given this and Goodhand’s disclosure that a user may enter multiple display names and other information (e.g., punctuation) (see e.g., Ex. 1003, col. 17, ll. 12–20; Fig. 6a), we find credible and persuasive Mr. Allison’s testimony that Goodhand’s system “must first check to determine whether there is any text at all in the relevant address field,” and “must then separate and identify display names that it will use in follow-on searches” (Ex. 1002 ¶ 122; see Ex. 1016, 109, l. 22–110, l. 9). Because we are persuaded that Goodhand’s system must determine if” slip op. at 25
Patent outcomesUS 6,323,853 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,323,853 - Apple, Inc. / Domino’S Pizza, Inc. et al. v. Ameranth, Inc.Some claims unpatentablePTAB · Mar 20, 2015 · CBM2014-00013 · APJ Meredith C Petravick · CBM · Final written decision
Claims 1, 2, 4, 5, 10, and 12 are unpatentable under § 101; claims 3, 6–9, 11, and 13–16 were not shown unpatentable because the petition did not establish their claimed features were conventional.
RulingsFinal written decision- BurdenMixed
“We are persuaded by Patent Owner’s argument. Petitioner states that the claimed linking is a “classic example[] of manual tasks that cannot be rendered patent-eligible merely by performing them with a computer.” Reply 15. However, Petitioner fails to provide sufficient evidence to support its statement. See Pet. 49–66; Reply 9–15. Petitioner provides insufficient evidence to establish that a menu having the functionality to perform the claimed linking from a GUI on a hand-held device, was well-known or conventional and merely require a general purpose computer. See id. Upon review, we determine that Petitioner fails to establish by a preponderance of the evidence that claims 3 and 11 recite patent-ineligible subject matter.” slip op. at 37
- Skill levelOther
“B. Claim Construction The Board interprets claims of unexpired patents using the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.300(b). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Prior to construing the relevant claim limitations, we turn to some initial matters raised by Patent Owner. First, Patent Owner argues that we must construe “the entirety of the challenged claims” (PO Resp. 31), and proposes constructions for some, but not all, limitations of the challenged claims (see id. at 34–36). Claim construction, however, “is not an inviolable prerequisite to a validity determination under § 101.” Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), L.L.C., 687 F.3d 1266, 1273 (Fed. Cir. 2012). See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy). Below, we construe the limitations that are relevant to the issues of patent-eligibility discussed below. We determine that all other claim limitations need no explicit construction.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble, however, is not limiting where the claim body defines a structurally complete invention and the preamble only states a purpose or intended use for the invention. Id. slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are persuaded by Petitioner that the broadest reasonable construction in light of the Specification of the term CPU is the computational and control unit of a computer. Petitioner’s construction is consistent with the Specification, which describes that the system of the ’733 patent uses typical hardware elements in the form of a computer workstation and that “a typical workstation platform includes hardware such as a central processing unit (‘CPU’), e.g., a Pentium® microprocessor.” Ex. 1033, col. 6, ll. 52–54; see also id. at col. 6, l. 65 (“a CPU, e.g., Pentium® microprocessor”). Further, Petitioner’s construction is consistent with the Specification, which as discussed above, discloses using a desktop PC to generate and download menus to a connected handheld device (see id. at col. 7, l. 38–col. 10, l. 15), as well as, discloses the use of a central back-office server (e.g., see id. at col. 2, ll. 37–40). Patent Owner’s proposed construction improperly reads into the claims the central back-office server. See Renishaw, 158 F.3d at 1249 (explaining that extraneous features should not be read into the claims). For these reasons, we determine that the broadest reasonable construction, in light of the Specification, of CPU is the computational and control unit of a computer.” slip op. at 15
Patent outcomesUS 6,982,733 mixedClaim construction§ 101 eligibilitycites Alice · MayoPatents in suitUS 6,982,733 - PTAB · Aug 20, 2014 · IPR2014-00959 · APJ James B Arpin · IPR · Order
The Board granted the joint motion to terminate and terminated the proceeding after the parties settled, before deciding whether to institute trial.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On August 13, 2014, the parties filed a Joint Motion to Terminate (Paper 10) pursuant to 35 U.S.C. § 317(a). In addition, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Patent Owner filed a copy of a Settlement Agreement (Ex. 2001) along with a Joint Request That Settlement Agreement Be Treated As Business Confidential Information And Kept Separate Under 37 C.F.R. § 42.74(c) (Paper 11), to be kept separate from the patent file. This case is in the preliminary proceeding1 stage; no decision whether to institute a trial has been made. The co-pending district court litigation between the parties has been dismissed, with prejudice, effective August 11, 2014, and the parties have represented that they have settled their dispute regarding Patent No. US 6,700,551 B2.2 See Paper 10, 2-3. Under these circumstances, we determine that it is appropriate to terminate the case without rendering a final written decision. 37 C.F.R. § 42.74. Based on the facts of this case, it is appropriate to enter judgment.3 Therefore, the Joint Motion to Terminate is granted.” slip op. at 2
NonePatents in suitUS 6,700,551 - PTAB · Aug 20, 2014 · IPR2014-00964 · APJ James B Arpin · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, without instituting a trial or issuing a final written decision.
RulingsOther- Adverse judgmentAdverse judgmentGranted
“This case is in the preliminary proceeding1 stage; no decision whether to institute a trial has been made. The co-pending district court litigation between the parties has been dismissed, with prejudice, effective August 11, 2014, and the parties have represented that they have settled their dispute regarding Patent No. US 7,665,664 B2.2 See Paper 8, 2-3. Under these circumstances, we determine that it is appropriate to terminate the case without rendering a final written decision. 37 C.F.R. § 42.74. Based on the facts of this case, it is appropriate to enter judgment.3 Therefore, the Joint Motion to Terminate is granted.” slip op. at 2
NonePatents in suitUS 7,665,664 - PTAB · Jul 15, 2014 · IPR2014-00394 · APJ Miriam L Quinn · IPR · Order
The Board granted the joint motions and terminated IPR2014-00394 and IPR2014-00396 as to all parties before deciding whether to institute trial.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Upon consideration of the requests before us, the early juncture of the proceeding, and the interests of justice, terminating the instant proceedings with regard to both Petitioner and Patent Owner promotes efficiency and minimizes unnecessary costs. Based on the facts of this case, it is appropriate to enter judgment.2 See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate IPR2014-00394 and IPR2014-00396 are granted;” slip op. at 3
NonePatents in suitUS 6,476,858 - PTAB · Jul 15, 2014 · IPR2014-00396 · APJ Miriam L Quinn · IPR · Order
The Board granted the joint motions and terminated IPR2014-00394 and IPR2014-00396 as to all parties before deciding whether to institute trial.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Upon consideration of the requests before us, the early juncture of the proceeding, and the interests of justice, terminating the instant proceedings with regard to both Petitioner and Patent Owner promotes efficiency and minimizes unnecessary costs. Based on the facts of this case, it is appropriate to enter judgment.2 See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate IPR2014-00394 and IPR2014-00396 are granted; FURTHER ORDERED that the instant proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner; and 2 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. § 42.2. FURTHER ORDERED that the parties’ joint requests that the settlement agreement be treated as business confidential information kept separate from the patent file, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted.” slip op. at 3
NonePatents in suitUS 7,310,111
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.