- PTAB · Dec 13, 2021 · IPR2020-01062 · APJ Ken B Barrett · IPR · Final written decision
The Board granted cancellation of claims 1–15, 19–20, and 22–24; allowed substitute claims 26–29, 31–38, and 40–44; and denied substitute claims 30 and 39 for lack of written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1003 ¶¶ 78–79; see Pet. 10. In the Institution Decision, we adopted Mr. Fischer’s definition for purposes of that decision. Institution Decision (Paper 7) 9–10. Patent Owner states that it “accepts that definition for the purposes of this proceeding.” Rev’d MTA 24. Mr. Fischer’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Mr. Fischer’s definition of the person of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for “code” and “Electronic Product Code (EPC).” Opp. to Rev’d MTA 6. Patent Owner asserts that “the limitations of the substitute claims do not require construction and should, instead, be construed in accordance with their ordinary meaning.” Rev’d MTA 24. According to Patent Owner, the addition of certain features of the proposed substitute claims renders moot Petitioner’s arguments concerning the meaning of the term “code.” Id. Additionally, Petitioner argues that the content of the recited codes— an EPC and a code different from the EPC—constitutes “printed matter” (non-functional descriptive material) and, therefore, are not entitled to patentable weight. Opp. to Rev’d MTA 7–10; Pet. Sur-reply 5–6. We need not reach this issue. Even if we construed the specifically recited codes as being non-functional descriptive material, Petitioner, for reasons discussed below, has not shown that the claimed subject matter is unpatentable. Also, the parties do not identify any other issue in this case that turns on whether the two recited codes are non-functional descriptive material. See, e.g., Opp. to Rev’d MTA 11–12 (Petitioner arguing that the relied-on prior art discloses codes in the form of an EPC and a TID (i.e. a code other than the EPC)). On this record, we determine that no claim terms require express construction.” slip op. at 14
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“A patent claim is indefinite when that claim, “viewed in light of the specification and prosecution history, [does not] inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. BioSig Instruments, Inc., 572 U.S. 898, 910 (2014).” slip op. at 12
- ScopeDecided for patent owner
“Motion to Amend, that “[c]onstruing ‘a first and second memory bank’ to mean, for example, two memories instead of ‘a memory’ also impermissibly broadens the claims.” Opp. to Rev’d MTA 4 n.1 (citing Ex. 1032 ¶¶ 3024– 3027); see also Pet. Sur-reply 1–2 (“the scope of the proposed claims is impermissibly broadened to encompass logical memory banks storing codes in more than one memory.”); Tr. 7:12–13 (“That’s improper because it enlarges the scope of claims to include two memories instead of just one.”). Petitioner’s argument appears to assume that the proposed substitute claims require two memories (as opposed to the recited “memory bank[s]”) and that, because two memories are quantitatively more than one memory, the claims have been broadened. We disagree with Petitioner’s arguments. The arguments are contingent upon a construction of two memory banks being the same scope as two memories. See Opp. to Rev’d MTA 4 n.1 (“Construing . . . impermissibly broadens the claims.”). Petitioner has not offered any persuasive argument or evidence that the two different terms—“memory” and “memory bank” are coextensive or that the more general term “memory” can encompass two of the more specific “memory bank[s].” Further, even if the proposed substitute claims required two memories rather than two memory banks, adding the requirement of a second memory (or, as written in the proposed claims, two memory banks rather than “a memory” as in the issued claim) is further limiting the claims and, therefore, is not broadening the scope. See Hockerson-Halberstadt, Inc., 183 F.3d at 1374. We agree with Patent Owner that the amended language regarding two memory banks does not impermissibly broaden the scope relative to the original claims.” slip op. at 18
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 8,134,451 - PTAB · Nov 12, 2021 · IPR2021-00843 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on all grounds for claims 1–17, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’023 patent. Accordingly, we institute an inter partes review of claims 1–17 of the ’023 patent. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“For purposes of this Decision, we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosures of the ’023 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the appropriate level of ordinary skill in the art may be reflected in “the prior art itself”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which demonstrates individuals having a broad array of scientific degrees that collaborate as a team. We note, however, that our decision to institute trial in this proceeding would not change were we to adopt Patent Owner’s proposed definition.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“On this record, we agree with Patent Owner that the disputed preamble phrase is limiting. “[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mkt’g Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808–09 (Fed. Cir. 2002). Here, the Examiner expressly allowed the claims in view of the Examiner’s Amendment changing “scanning system” to “cataract surgery scanning system,” thereby transforming this portion of the preamble into a limitation. Ex. 1006, 13, 15, 18; see Catalina Mkt’g, 289 F.3d. at 808. Furthermore, contrary to Petitioner’s arguments, the record appears to suggest that there are structural differences between the optical systems of cataract surgery systems on the one hand and corneal surgery systems on the other. See Ex. 2006, 5:30–36; Ex. 2009, 1209–10. Thus, on this record, we are not persuaded that the language added by the Examiner represents merely an intended use for the disclosed system. In view of the foregoing, for purposes of this Decision, we construe the preamble phrase “cataract surgery scanning system” recited in independent claims 1, 8, and 12 to be limiting.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The ’023 patent explains that a “cataract incision” is an incision created “to allow access for the lens removal instrumentation.” Ex. 1004, 10:17–19. The potential ambiguity in the claim comes, as Petitioner notes, from the fact that the cataract incision of claim 1 “only partially extend[s] through the target tissue,” which would not appear to provide immediate “access to an eye chamber of the patient’s eye.” Pet. 10; Ex. 1004, 10:19– 23, 14:15–21. Although somewhat ambiguous on its face, the prosecution history provides guidance as to how this claim phrase is to be interpreted. Phillips, 415 F.3d at 1317 (“Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent.”). During prosecution, the Applicants explained that the invention allows “straight cataract incisions [to be] made at the correct location,” and that partially penetrating cataract incisions are advantageous because they allow the laser delivery system to be located in an “unsterile field,” with the final penetrating incision to be made “by a physician after a patient has been moved to a sterile field.” Ex. 1006, 52–53. The Applicants then explained that despite the fact that partially penetrating cataract incisions do not fully for the lens removal instruments,” as that term is used in the ’023 patent. Id. at 52 (noting the purpose of “partially penetrating cataract incisions” is “to allow access for lens removal instruments”), 55 (“In short, none of the cited art teaches . . . to deliver the first treatment pattern to the target tissue to form partially penetrating cataract incisions – i.e. incisions that allow access for the lens removal instruments.”). The Examiner agreed with this reasoning. Id. at 15 (agreeing that the prior art did not teach or suggest partially penetrating cataract incisions that provide “access to the eye chamber of the patient’s eye”). Given these disclosures, we agree with Patent Owner that “provides access to an eye chamber of the patient’s eye” in claim 1 means that the partial incision is a starting incision, made in the appropriate shape and location, that allows complete access for lens removal instrumentation when completed, for example, by the surgeon. In view of the foregoing, we construe the claim phrase “cataract incision therein that provides access to an eye chamber of the patient’s eye, the incision . . . only partially extending through the target tissue” to require “a partially penetrating cataract incision that, when completed by the” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,233,023 - Ty Inc. v. Softbelly’S, Inc.All claims unpatentablePTAB · Sep 10, 2021 · IPR2020-00689 · APJ John E Schneider · IPR · Final written decision
Claims 15 and 16 are unpatentable: claim 15 as anticipated by Ogawa and obvious over Ogawa and Masahiro; claim 16 as obvious over Ogawa with Cherk, and with Masahiro and Cherk.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We have considered the arguments presented by the parties and the evidence of record and are not persuaded that our original definition of a person of ordinary skill in the art was in error. While the claims at issue refer to an optical grade fabric, we note that the fabric is not the invention. Rather, as stated in the Specification, the field of the invention is “cleaning tools for electronic display screens, and more specifically to cleaning tools for computer display screens and the like.” Ex. 1001, col. 1, ll. 4–6. The claims further narrow the field of the invention to cleaning tools in the form of a doll-like structure. Id. at col. 6, l. 37. Based on the forgoing, we continue to apply the same definition of a person of ordinary skill in the art we used in our Decision on Institution. However, the findings and conclusions set forth below would have been the same had we instead adopted Patent Owner’s proposed definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We have considered the arguments presented by the parties and the evidence of record and conclude that Petitioner has the better position. The term “display screen,” as used in the challenged claims, refers to an intended use of the cleaning tool. As such, it does limit the scope of the claims. We begin by noting that the challenged claims are directed to a device or apparatus. Ex. 1002, col. 2, ll. 8–13. As such, the claims “cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (1990). The preamble of both claims 6 and 11 read in part: “doll-like figure for cleaning or wiping the surface of a display screen.” Ex. 1001, col. 6, ll. 37–38; col. 7, ll. 1–2. Both claims end with the clause “providing a pliant cleaning tool for wiping a display screen.” Id. at col. 6, ll. 50–51; col. 7, ll. 13–14. These phrases are crafted in terms of a device for performing a specific function or use. This type of phrase has been found to recite an intended use and not a physical limitation. See Marrin v. Griffin, 599 F.3d 1290, 1294–96 (Fed. Cir. 2010). The recitation of the intended use in the body of the claim does not affect our analysis. The term for wiping a display screen still recites a use of the device that does not impart a structural limitation.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We have considered the testimony of both experts and the evidence of record and find Mrs. Ryan’s testimony to be more persuasive. Therefore, we agree with Petitioner that Ogawa discloses a wiping tool which has an inner chamber formed by a strip of optical grade fabric — the wipe portion — and a non-optical grade fabric — the gripping body. We give more weight to Mrs. Ryan’s testimony based on her extensive experience in designing plush toys. Ex. 1005 ¶¶ 3–5. Mrs. Ryan has worked in the area of plush toy design for over twenty-six years and has taught classes relating to plush toy design. Id. ¶¶ 3–4; page 40. In addition, Mrs. Ryan’s testimony regarding how one skilled in the art would envision the wiping tool of Ogawa is consistent with the evidence of record. For example, King4 teaches that teddy bears are formed by joining pieces of fabric creating an inner pocket into which stuffing is inserted. Ex. 1026, 7–12. Cockrill5 also teaches that teddy bears are traditionally made by cutting out the material, sewing the pieces together, and then stuffing the bears. Ex. 1025, 67.” slip op. at 17
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We have considered the testimony of both experts and the evidence of record and find Mrs. Ryan’s testimony to be more persuasive. Therefore, we agree with Petitioner that Ogawa discloses a wiping tool which has an inner chamber formed by a strip of optical grade fabric — the wipe portion — and a non-optical grade fabric — the gripping body. We give more weight to Mrs. Ryan’s testimony based on her extensive experience in designing plush toys. Ex. 1005 ¶¶ 3–5. Mrs. Ryan has worked in the area of plush toy design for over twenty-six years and has taught classes relating to plush toy design. Id. ¶¶ 3–4; page 40. In addition, Mrs. Ryan’s testimony regarding how one skilled in the art would envision the wiping tool of Ogawa is consistent with the evidence of record. For example, King4 teaches that teddy bears are formed by joining pieces of fabric creating an inner pocket into which stuffing is inserted. Ex. 1026, 7–12. Cockrill5 also teaches that teddy bears are traditionally made by cutting out the material, sewing the pieces together, and then stuffing the bears. Ex. 1025, 67. Dr. Adanur’s experience and expertise appears to be primarily focused on textiles. Ex. 2005 ¶¶ 8–24. While Dr. Adanur testified that he has some experience in the area of plush toys, that experience appears to be limited to selection of fabric that could be used to manufacture plush toys and making several puppets at home to earn extra money. Ex. 1027, 52, 57–59, 78–79. In addition, Dr. Adanur does not cite to any evidence other than Ogawa to support his opinions as to what one skilled in the art would envision upon reading Ogawa. See Ex. 2005 ¶¶ 84–87. Patent Owner, however, contends that Ogawa is silent as to whether the tool has an inner chamber made from a piece of optical grade fabric and a piece of non-optical grade fabric. PO Resp. 1, 22. 4 King, Make Your Own Teddy Bears, 1985 (Ex. 1026) (“King”). 5 Cockrill, The Teddy Bear Encyclopedia, 1993 (Ex. 1025) (“Cockrill”).” slip op. at 17
Patent outcomesUS 6,195,831 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,195,831 - Cxloyalty, Inc. v. Maritz Holdings Inc.All claims unpatentablePTAB · Dec 19, 2019 · CBM2018-00037 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–15 are unpatentable under § 101; the motion to amend is granted for proposed substitute claims 16–23, which were not shown unpatentable.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“does not remove the claim from the realm of abstract ideas. See Pet. 52–53; Reply 12; SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (holding that it “does not matter to [the conclusion that the claim is directed to an abstract idea] whether the information here is information about real investments,” as “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract” (citation omitted)). Further, the last two clauses of claim 1 that recite how the transaction is viewed from the perspectives of the participant and vendor system, respectively, merely express the “non-physical result” of the information transfers and confirm the abstract nature of the claimed subject matter. See Pet. 57. In fact, as to the vendor system clause, the Specification indicates that the vendor system transfers information no differently than it would for any other transaction. See Ex. 1001, col. 7, ll. 15–18 (disclosing that vendor system 208 responds to purchase request 216 “in the same way that it would respond to any other purchase request from a consumer that presents a credit card”).” slip op. at 35
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“Our conclusion also is supported by the ’087 patent’s description of” slip op. at 41
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75
- 101 substituteMixed
“transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75
Patent outcomesUS 7,134,087 unpatentable§ 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · EnfishPatents in suitUS 7,134,087 - HTC Corporation / HTC America, Inc. et al. v. Electronic Scripting Products, Inc.All claims unpatentablePTAB · Sep 12, 2019 · IPR2018-01032 · APJ William M Fink · IPR · Final written decision
Claims 1–21 are unpatentable under § 103: claims 1–6, 11–18, and 21 over Welch-HiBall and SIGGRAPH 2001; claims 7–11 and 19–21 over those references and Romanik.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“On January 18, 2019, we granted Valve Corporation’s Motion for Joinder in Valve Corp. v. Electronic Scripting Products, Case IPR2019-00074 (PTAB filed Oct. 11, 2018). Paper 12, 10. In doing so, we joined Valve Corporation to this proceeding, resulting in HTC Corporation, HTC America, Inc., and Valve Corporation (collectively “Petitioner”) challenging the claims of the ’935 patent. Id.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not provide its own explanation of the level of ordinary skill in the art. Patent Owner also does not oppose Petitioner’s proffered level of ordinary skill in the art. Upon consideration of the record, including the level of skill reflected by the cited references, Welch-HiBall and SIGGRAPH 2001, we agree with and therefore adopt Petitioner’s proposed definition for the level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of institution, we determined it was unnecessary to construe any of these claim terms expressly to address the parties’ arguments. Inst. Dec. 6. Similarly, in view of the complete record, we find that it is unnecessary to provide a separate explicit claim construction to resolve the issues before us. Instead, to the extent the parties’ arguments are based on the scope of the claims, we resolve the disputed claim scope in the context of the parties’ arguments as set forth below.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner contends SIGGRAPH 2001 is a set of printed, bound course materials distributed to attendees of a course taught by Dr. Welch and colleagues on August 12, 2001, at a widely attended conference (called “SIGGRAPH”), and, therefore, is prior art under 35 U.S.C. § 102(b). Pet. 19–21. Petitioner provides evidence in support of SIGGRAPH 2001’s availability, including Dr. Welch’s testimony regarding the distribution of the course materials at the conference. See id. (citing Exs. 1025–1029, 1036; Welch Decl. ¶¶ 104–108). Patent Owner does not dispute these contentions. In view of the evidence demonstrating the public availability of SIGGRAPH 2001, Petitioner has demonstrated persuasively that SIGGRAPH 2001 is prior art under 35 U.S.C. § 102(b).” slip op. at 9
Patent outcomesUS 8,553,935 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,553,935 - Saudi Arabian Oil Company v. SK Innovation Co., Ltd.All claims unpatentablePTAB · May 9, 2019 · IPR2018-00159 · APJ Monté T Squire · IPR · Final written decision
Claim 2 was held unpatentable as anticipated by Novomer 1; the contingent motion to amend was granted, substituting claim 5.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we granted Petitioner’s request and instituted an inter partes review for challenged claim 2. Paper 9 (“Institution Dec.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner agrees with Petitioner’s assessment regarding the level of ordinary skill in the art. Mot. Amend 7. We determine the level of ordinary skill proposed by Petitioner is consistent with the ’979 patent and the asserted prior art, and we adopt that level in construing and deciding the patentability of claim 2.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Institution Decision, we determined that the phrase “A poly(alkylene carbonate) represented by Formula 10” did not require construction at that stage. Institution Dec. 9; see also id. at 7 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms which are in controversy need be construed and only to the extent necessary to resolve the controversy)). Neither party has argued post-institution that this phrase of claim 2 needs be construed. See PO Resp. 2; Pet. Reply 1–3. We conclude that no further construction of this phrase is necessary.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In the Institution Decision, we agreed with Petitioner that the variable construction of the phrase “each independently” is the broadest reasonable interpretation in light of the specification, and construed the phrase to mean that “each variable R81, R82, R83, and R84 is independent from one instance to another throughout the polymer.” Institution Dec. 13–14. Based on that construction, we also determined in the Institution Decision that claim 2 encompasses the following genera: (1) “Genus A,” which includes a poly(ethylene glycol) chain transfer agent flanked by poly(ethylene carbonate) chains (Pet. 24); (2) “Genus B,” which includes a poly(propylene glycol) chain transfer agent flanked by poly(propylene carbonate) chains (id. at 25–26); (3) “Genus C,” which includes a poly(propylene glycol) chain transfer agent flanked by poly(ethylene carbonate) chains (id. at 26); and (4) “Genus D,” which includes a poly(ethylene glycol) chain transfer agent flanked by poly(propylene carbonate) chains (id. at 27). Institution Dec. 12–13. Neither party opposes adopting the variable construction of the phrase “each independently” and the determination that, under the variable construction, claim 2 encompasses Genus A, Genus B, Genus C, and Genus D. PO Resp. 2; Pet. Reply 1–3. We maintain the variable construction of the phrase “each independently” on the complete record.” slip op. at 11
Patent outcomesUS 9,023,979 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,023,979 - Telesign Corporation v. Twilio Inc.All claims unpatentablePTAB · Mar 6, 2019 · IPR2017-01977 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–3, 5, 14, 16, 17, and 19 are unpatentable as obvious over Maes and Ransom, alone or with Jiang; the ETSI-based grounds were not proven.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in computer science with at least two years of experience in application development.” Pet. 8 (citing Ex. 1009 ¶¶ 49–50). Patent Owner argues that a person of ordinary skill in the art would have had “the equivalent of a four-year degree from an accredited institution in computer science, computer engineering, electrical engineering, software engineering, or the equivalent, and approximately 1–2 years of professional experience with or exposure to computer networking, telephony networking protocols, and various APIs,” but “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” PO Resp. 10 (citing Ex. 2010 ¶ 32).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“transfer (REST) API” to mean “an application programming interface that complies with Representational State Transfer (REST) interface constraints, which are: identification of resources; manipulation of resources through representations; self-descriptive messages; and, hypermedia as the engine of application state.” PO Resp. 10. Petitioner does not propose an express construction for the term “representational state transfer (REST) API,” but acknowledged at the oral hearing that Patent Owner’s proposed construction “simply makes express what [Petitioner] implies.” Tr. 32:24–33:13. Patent Owner’s proposed construction is supported by the specification of the ’376 patent and the extrinsic evidence. Specifically, the ’376 patent indicates that the term “REST” has its ordinary meaning in the art (Ex. 1001, 2:15–16, 8:12–14), and Patent Owner’s declarant, Dr. Negus, explains that a person of ordinary skill in the art would understand the term “REST API” to refer to the interface constraints set forth in Patent Owner’s proposed construction (Ex. 2010 ¶¶ 163–166). Patent Owner’s proposed construction also is consistent with the construction that was adopted by the District Court in a related case. Ex. 2005, 16–22. Therefore, the term “representational state transfer (REST) API” is construed to mean “an application programming interface that complies with Representational State Transfer (REST) interface constraints, which are: identification of resources; manipulation of resources through representations; self-descriptive messages; and hypermedia as the engine of application state.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successAnalogous artMotivation foundUnpatentable
“had reason to combine the cited teachings of Maes and Ransom. Pet. 12, 14, 22–24, 27–29 (citing Ex. 1009 ¶¶ 51–58, 62–75, 80–82, 88). We agree with and adopt Petitioner’s reasoning. Specifically, Maes and Ransom relate to the same field of endeavor as the ’376 patent, namely, web services. Pet. 12, 14; Ex. 1001, 1:66–2:10, 15:51–61; Ex. 1003, 3:52–65; Ex. 1004 ¶¶ 5, 42, 46, 57–58, 69–70, 78; Ex. 1009 ¶¶ 51–58. It would have been obvious to combine the cited teachings of Maes and Ransom because Ransom’s REST API is a common web service model that provides similar functionality and has several design advantages over Maes’s SOAP API, such as increased interface flexibility and lower bandwidth requirements. Pet. 22–24, 27–29; Ex. 1004 ¶ 163; Ex. 1009 ¶¶ 62–75, 80–82. It also would have been obvious to combine the cited teachings of Maes and Ransom because the teachings of Maes and Ransom are interrelated. Pet. 24, 28–29; Ex. 1009 ¶ 88; see KSR, 550 U.S. at 418 (“Often, it will be necessary . . . to look to interrelated teachings of multiple patents.”). Namely, Maes teaches using a web service (Ex. 1003, 3:52–65, 15:66–16:4; Ex. 1009 ¶ 88), and Ransom explains that REST is one of two common web service models (Ex. 1004 ¶ 163; Ex. 1009 ¶ 88).” slip op. at 24
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusObjective indicia outweighedMixed
“Therefore, because the evidence of record indicates that Petitioner had access to some of Patent Owner’s technology, but does not show specifically that Petitioner copied the invention claimed in the ’376 patent, the objective indicia of copying at best only weighs slightly in favor of non-obviousness.” slip op. at 31
Patent outcomesUS 8,755,376 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,755,376 - Emerson Electric Co. v. Sipco, LLCSome claims unpatentablePTAB · Nov 28, 2018 · IPR2017-00359 · APJ Bryan F Moore · IPR · Final written decision
Claims 32, 34, 37–38, 55–57, and 59 are unpatentable over Cunningham; claims 1, 3–8, 11–14, 24–31, 36, 42, 43, 46–49, 51–54, and 60–64 were not shown unpatentable.
RulingsFinal written decision- BurdenNot shown unpatentable
“This argument is conclusory and not supported by sufficient evidence. Moreover, the stated conclusion is vague with respect to the limitation at issue. Petitioner argues that “the node 18 must translate messages” (id. (emphasis added)), but does not explicitly argue that all three recited pieces of information—“the select information, the transmitter identification information, and transceiver identification information”—must be translated. Even assuming Mason’s node must translate all three recited pieces of information, Petitioner does not show that all such translated pieces of information must be further transmitted to the AMR server over the WAN. In particular, Petitioner does not show that transceiver identification information would have to be further transmitted.” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Moreover, we agree with Petitioner that such a construction is “non- specific, vague and unhelpful” in the context of the ’692 patent. Reply. 16. Patent Owner’s construction limits “low power” to signals having a “limited transmission range,” but provides no guidance of what “limited” means, or what its boundaries might be. Petitioner argues correctly that Patent Owner’s construction fails to address questions its proposed construction raises, such as, what a ‘limited’ transmission range means and how ‘limited’ the range must be (i.e., what the range’s distance should be), whether the transmission range depends on the particular system or application, and whether other factors should be considered in determining whether the transmission range is limited.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Notably, Petitioner says these contentions are “further evidence” but does not explain how this evidence is to be used to buttress Cunningham’s disclosure or how it is to be combined with Cunningham’s disclosure. Specifically, given the limited contentions in the Petition detailed above, Petitioner does not explain how Energy Management Services or the “routines” described in the Provisional send control signals from the computer to the actuator as required by the claims. For example, even if we to accept that the “Williams Network Control Center” creates control signals as required by the claim Petitioner has not explained how those signals are translated from network transfer protocol to RF signals and then translated to an analog signal that can be used at an actuator. Even though the ’978 Provisional is allegedly incorporated by reference, an obviousness determination still requires--“[w]hether a [obviousness challenge] is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference[--] a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan Co., 868 F.3d 1342, 1346 n. 1 (Fed. Cir. 2017); c.f. Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (finding obviousness shown despite fact that “all of the limitations are found in two separate embodiments pictured side by side in the patent, not in one embodiment” because the party showed motivation to combine and reasonable likelihood of success). Additionally, “there must be evidence presented on the obviousness of the claim as a whole.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1337 (Fed. Cir. 2015) (citing KSR, 550 U.S. at 420, 127 S.Ct. 1727); see also Acorda Therapeutics, Inc. v. Roxane Labs., Inc., 903 F.3d 1310, 1352 (Fed. Cir. 2018) (“The determination of obviousness is made with respect to the subject matter as a whole, not separate pieces of the claim”). Here, the “routines” described in the ’978 Provisional work differently than the “utility prices” embodiment of Cunningham. Petitioner has not explained how those would work together to meet the claim limitations.” slip op. at 30
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Patent Owner’s argument is inapposite, as it is premised on reading a limitation into the claims, namely that the information encoded in the RF signal must be translated in real time. Further, we agree with Petitioner, that even under such an erroneously narrow construction, Cunningham would meet the limitation. In that regard, Petitioner argues that, “although Cunningham discloses sending cumulative data readings, individual signals from the sensor are identified by the gateway and this information is then transmitted (with transmitter identification information) to a computer on the WAN.” Reply 6 (citing Ex. 1046 ¶¶31–32; Ex. 1004, 31:6–28). Petitioner argues, and we are persuaded, that “Cunningham explains that the ‘most current cumulative reading’ is the current absolute ‘reading’ (i.e., information signal) from the sensor (Ex. 1004, 13:44–46) and that two cumulative readings can be used to ‘interpolate’ and ‘recover’ a missed reading (i.e., a signal from the sensor).” Reply 7 (citing Ex. 1004, 13:44–56; 31:6–27; Pet. 75; Ex. 1002 ¶¶115, 152; Ex. 1046 ¶32). We are persuaded that Cunningham discloses this limitation. Lastly, claim 32 also recites “a computer configured to execute at least one computer program that formats and stores select information responsive to the electrical signal for retrieval upon demand from a remotely located device.” To meet this limitation, Petitioner accurately points out that “Cunningham discloses that[,] in response to receiving information from the sensor interface module through the data collection modules, the host module compiles the information into a user specified readable format and stores it for later retrieval upon demand from a customer computer or workstation.” Pet. 83 (citing Ex. 1004, 7:19–27, 44:12–41, 44:53–64, 46:44–61, 47:44–54, Ex. 1002 ¶¶138–140). Patent Owner does not contest that Cunningham discloses “a computer configured to execute at least one computer program that formats and stores select information responsive to the electrical signal for retrieval upon demand from a remotely located device.” See PO Resp. 22–29, 41–46. We are persuaded that Cunningham discloses this limitation. For the forgoing reasons, Petitioner has shown by a preponderance of” slip op. at 37
Patent outcomesUS 6,437,692 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,437,692 - Fujifilm Corporation v. Sony CorporationSome claims unpatentablePTAB · Nov 7, 2018 · IPR2017-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 15 and 17 are unpatentable as anticipated by Ishikawa; the petitioner did not show claims 1–11, 16, and 18–20 unpatentable over Aonuma or Aonuma and Abe.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) at the time of the ’774 patent would have had “a bachelor’s degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 13 (citing Ex. 1003 ¶ 65; Ex. 1018 ¶ 60). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For the purposes of the Decision on Institution, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 9
- Expert testimonyPetitioner expert creditedMixed
“considerably greater than Ishikawa’s stylus load of 50–300 μN (Ex. 1015 ¶ 45). The Talke Declaration does not address this discrepancy, and Dr. Talke stated during his deposition that reducing the stylus load would reduce scratching of the magnetic tape surface. Ex. 1030, 108:14–19 (“Q: Would reducing the contact pressure for the stylus instrument reduce the scratching of the magnetic tape surface by the stylus? A: Yes, it would, but you have to remember the other problem is the diameter and size of the stylus.”). Moreover, Petitioner provides evidence that it was not uncommon to use stylus-type profilometers to measure the properties of magnetic tape, even after Bhushan was published in 1996. See Reply 6. In particular, Petitioner points to Saliba,6 which describes using a stylus-type profilometer, under identical conditions to those used in Ishikawa, to measure the surface characteristics (including peak-to-valley roughness) of the backcoating of magnetic tape. Ex. 1027, 7:28–40, 57–60. Petitioner further points to Ohno,7 which also describes using “a stylus type 3D profilometer in accordance with JIS B0601” to measure the surface roughness characteristics of magnetic tape. Ex. 1028 ¶ 36; see also Ex. 1015 ¶ 45 (Ishikawa explaining that surface roughness characteristics were measured “in accordance with JIS-B0601-1994”); Ex. 1027, 7:28–39 (Saliba explaining that surface roughness characteristics where measured “in accordance with JIS-B0601-1994”). Accordingly, we are persuaded that the 6 US Patent No. 6,558,774 B1, issued May 6, 2003 (Ex. 1027). 7 U.S. Patent App. Pub. No. US 2005/0175866 A1, published Aug. 11, 2005 (Ex. 1028). evidence establishes that a stylus-type profilometer is a suitable device for measuring the surface characteristics of magnetic tape.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Ishikawa teaches “peak-to-valley roughness less than about 325 nm” as recited in claim 15. Pet. 24–25; Reply 5–8; Ex. 1003 ¶ 216. In particular, Ishikawa teaches a backcoating layer of a magnetic tape that has a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm.” Ex. 1015 ¶ 44. Ishikawa provides five example embodiments of its magnetic tape, and reports the measurements of a number of characteristics of the backcoat layer for each example, including peak-to-valley roughness Rz. Id. ¶¶ 120–134, Table 1. Ishikawa discloses that peak-to-valley roughness Rz was measured using a stylus-type profilometer under the following conditions: Stylus: diameter: 1.5 to 2.5 μm; curvature: 60º Contact pressure: 50 to 300 μN Cut-off length: 80 μm Sampling length: 80 μm Assessment length: 400 μm Id. ¶¶ 45, 49. The reported peak-to-valley roughness Rz values for the five examples ranged from 58 to 87 nm, as shown in the annotated portion of Ishikawa Table 1 from the Petition, reproduced below: Pet. 24 (citing Ex. 1015, Table 1). The annotated portion of Ishikawa Table 1 shows the results for the measured characteristics of the backcoat layer of Examples 1–5, with the peak-to-valley roughness Rz values highlighted by a red box. Id. Because Ishikawa teaches that the backcoating layer of its magnetic tape should have a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm,” and because Ishikawa presents examples of magnetic tape with backside surfaces having a peak-to-valley roughness of 87 nm or less, Ishikawa discloses “a peak-to-valley roughness less than about 325 nm” as recited in claim 15.” slip op. at 16
Patent outcomesUS 7,029,774 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,029,774 - Dexcom, Inc. v. Waveform Technologies, Inc.Some claims unpatentablePTAB · Sep 12, 2018 · IPR2017-01051 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1, 4–12, and 15–19 were held unpatentable as obvious over Hagiwara; claims 2, 3, 13, and 14 were not shown unpatentable. The motion to amend was granted in part.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“j. Conclusion Regarding Obviousness Based on Hagiwara (Proposed Substitute Claims) We conclude that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 20, 22, 23, and 26–29 are unpatentable as obvious in view of Hagiwara. We conclude that Petitioner has not shown by a preponderance of the evidence that proposed substitute claims 21, 24 and 25 are unpatentable as obvious in view of Hagiwara. 2. Remaining Grounds of Unpatentability Asserted by Petitioner (Proposed Substitute Claims) In view of our determination that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 20, 22, 23, and 26–29 are unpatentable as obvious in view of Hagiwara, we do not reach Petitioner’s remaining grounds of unpatentability as to these claims. Regarding proposed substitute claims 24 and 25, Petitioner’s contentions regarding the Handbook, Wilson, and Say do not remedy the deficiencies in Petitioner’s contentions regarding Hagiwara, as discussed above. Accordingly, we conclude that a preponderance of the evidence does not show that proposed substitute claims 24 and 25 are unpatentable as obvious based on Hagiwara in view of the Handbook, Wilson, or Say. H.” slip op. at 71
- ExcludeOther
“As discussed above, we do not reach the Wilson-Based Grounds with respect to claims 1, 4–12, and 15–19 of the ’574 patent. As for claims 2, 3, 13, and 14, we determine that Petitioner has not shown unpatentability based on the Wilson-Based Grounds, even if Exhibit 1037 and the corresponding portions of Petitioner’s Reply (Paper 37) are not excluded, because Petitioner does not offer Exhibit 1037 to cure the deficiency we noted in Wilson. See Section II.F, supra. For this reason, we dismiss as moot Patent Owner’s motion.” slip op. at 72
- Expert testimonyPetitioner expert discountedPatent owner expert discountedDecided for patent owner
“sensor would not have been a motivation to combine Hagiwara’s embodiments” because Hagiwara’s catheter prevents damage to the sensor during insertion and because a sensor with a side sensor window creates a greater risk of damage and vascular injury and reduces exposure to blood, as compared with a sensor with an end sensor window. PO Resp. 20–25. We have considered Patent Owner’s arguments, but, for the reasons discussed above, we are persuaded that Petitioner has established a motivation to combine, notwithstanding the conflicting expert testimony regarding the disadvantages of a side sensor window versus an end sensor window. Neither of the expert opinions on this topic is supported by objective facts or data. Ex. 1006 ¶ 155;13 Ex. 2008 ¶¶ 54–57, 87–95; Ex. 2009, 92:8–97:12. For this reason, we give little or no weight to either side’s expert testimony 13 Dr. Vachon cites “WO 01/13102, Vadgama” (Ex. 1006 ¶ 155), however, this reference was not submitted as an exhibit in this proceeding. on this topic. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing in the Federal Rules of Evidence or Federal Circuit jurisprudence requires the fact finder to credit unsupported assertions of an expert witness). As discussed above, however, there is no disagreement that a side sensor window was a known alternative to an end sensor window. Ex. 1006 ¶¶ 73, 155; Tr. 43:22–44:3. That undisputed fact, together with Petitioner’s other evidence, is sufficient to establish a motivation to combine.” slip op. at 42
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art For purposes of our Institution Decision, we accepted the definition of a person of ordinary skill in the art (“POSITA”) provided by Petitioner’s declarant, Dr. Vachon. Dec. 11 (citing Ex. 1006 ¶ 28). That definition is: a person having a bachelor’s degree or the equivalent training or experience in mechanical engineering, bioengineering, or related field and at least three years of experience relating to biosensor research and development, or a master’s degree or the equivalent training or experience in mechanical engineering, bioengineering, or related field, and at least one year of experience relating to biosensor research and development. Id. Patent (https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_ to_amend_11_2017.pdf); Bosch Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017); Bosch Automotive Service Solutions, LLC v. Iancu, Order on Petition for Panel Rehearing, No. 2015-1928 (Fed. Cir. Mar. 15, 2018). Owner’s declarant accepts and applies this definition of a POSITA for purposes of his opinions. Ex. 2008 ¶ 30. Neither party’s declarant indicates that any proffered opinion would change depending on the level of ordinary skill in the art. Therefore, consistent with our Institution Decision, we adopt Dr. Vachon’s definition of a POSITA. Ex. 1006 ¶ 28. We also rely on the cited prior art references as reflecting the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 20
Patent outcomesUS 7,529,574 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,529,574
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.