- Sony Computer Entertainment America LLC v. Aplix IP Holdings CorporationAll claims unpatentablePTAB · Jul 20, 2016 · IPR2015-00729 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–14, 16–19, 21–32, and 34–38 are unpatentable: obvious over Mollinari and Nishiumi, Mollinari, Nishiumi, and Tu, or Kerr and Lum; claims 5, 9, 19, and 30 are anticipated by Shima.
RulingsFinal written decision- Skill levelSkill level board ownOther
“II. ANALYSIS A. Level of Skill of Person in the Art We find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construe any terms. Dec. 4–5. Patent Owner subsequently proposed a construction for the claim 1 term an “input controller configured to generate an input signal . . . to control execution of the one or more functions of the software application” to be defined as an “‘input controller’ that can interpret input data and convert it to an input signal ready to be mapped to control functions of a software application.” PO Resp. 27–29. Patent Owner argues that the aforementioned “input signal” must be more than raw, unstructured input data. Id. (citing Ex. 1001, 11:10–17, 13:3–5, 15:42–48). Moreover, Patent Owner argues raw, unstructured input data must undergo at least some additional interpretation before it can be mapped to an application function and used to control the function’s execution. Id. at 28 (citing Ex. 2009 ¶¶ 68–70). We are not persuaded to import this narrowing construction from the Specification based on the examples argued, because the Specification of the ’097 patent does not include a special definition or any disavowal. Rather, we agree with Petitioner’s argument that the plain language of claim 1, in light of the Specification of the ’097 patent, does not require the scope of the aforementioned claim 1 limitation to require the input controller to interpret or pre-map input signals to software functions. Reply 12–13 (citing Ex. 1001, 11:41–46). We, therefore, decline to adopt Patent Owner’s narrow construction. We, instead, decline to construe the aforementioned term.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“The test for determining whether a prior art reference constitutes analogous art to the claimed invention is: (1) whether the prior art is from the same field of endeavor, regardless of the problem addressed, or (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. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).” slip op. at 11
Patent outcomesUS 7,280,097 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,280,097 - Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.No claims unpatentablePTAB · May 3, 2016 · IPR2015-00088 · APJ Ken B Barrett · IPR · Final written decision
Claims 1, 2, 5, 11–16, 19, 20, and 25–36 were not shown unpatentable as obvious over JPAP ’213 and JPAP ’237 because Petitioner failed to establish a reasoned motivation to combine.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also 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 (2016). 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 patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). No issue in this Decision requires explicit construction of any claim term. Accordingly, for purposes of this Decision, we do not provide explicit construction for any claim terms.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“3 Although the parties argue for certain differences in the level of skill in the art, the differences are not material to our decision. Therefore, we apply Petitioner’s proffered skill level of one having at least an undergraduate degree in industrial or systems engineering and 3–5 years of experience designing systems and processes using automated material handling systems. Pet. 11 (citing Ex. 1028 ¶ 38); PO Resp. 8–9 (citing Ex. 2013 ¶ 15).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“paragraph 7 as providing the motivation for one of ordinary skill in the art to add the lateral transfer device from the conveyance truck of JPAP ’237 to moving body 3 in JPAP ’213 Figure 1. Dr. Sturges, moreover, does not provide a reasoned analysis based on the disclosures and embodiments of JPAP ’213 and JPAP ’237, in the context of the knowledge and skill level of a degreed engineer with 3–5 years of experience developing automated material handling systems. Dr. Sturges does not explain why and how one of ordinary skill would have selected the lateral transfer device from the conveyance truck of JPAP ’237 for use with moving body 3 in JPAP ’213 Figure 1. Ex. 1028 ¶¶ 222–226. For example, there is no explanation of why one of ordinary skill would use the lateral transfer device from JPAP ’237, given that mechanically moveable storage tables already are used to effect lateral transfer of articles B on both sides of moving body 3 in JPAP ’213 Figure 1. See id. Even if the proposed modification were to be made, Dr. Sturges does not account for counterweight 51 in JPAP ’237, which extends laterally to the opposite side of extendable arm 42, or explain why the counterweight would not interfere with the articles and storage tables located on the opposite side of moving body 3 in JPAP ’213 Figure 1. Id.; Mot. Observ. 2–3 (quoting Ex. 2039, 70:22–71:15 (“Q. [Y]ou did not provide any testimony that the hoist vehicle of the JPAP ’213 reference can utilize the robotic arm on one side while maintaining the swinging shelves on the other side; correct? A. That’s correct.”)). To the extent Petitioner argues that Dr. Sturges has provided evidence on this point (Tr. 83:9–13), such evidence has not been cited in the Petition or the Reply, nor have we located such evidence. Pet. 36–49 (citing Ex. 1028 ¶¶ 218–272); Reply 11– 12 (citing Ex. 1028 ¶¶ 222–26); Mot. Observ., 1–2 (quoting Ex. 2039, 71:23–72:9 (“Q. [Y]ou did not address whether it would have been necessary to change the functional relationship between the swinging shelf and the hoist vehicle of the JPAP ’213 reference; correct? A. That’s accurate.”)).7” slip op. at 21
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We also credit the Declaration testimony of Dr. Bottoms and Patent Owner’s translator, Mr. Yazaki, and the deposition testimony of Petitioner’s translator, Mr. Chu. Mr. Chu testifies that JPAP ’213 paragraph 7 does not “say anything about the transfer means moving an article laterally.” Ex. 1035, 30:23–31:5. Mr. Yazaki’s Declaration states that paragraph 7 expresses only that “the transfer means is on the moving body side, as opposed to being on the article retaining unit side” of the conveyance system and “not [] that the transfer means is on a lateral surface of the moving body facing the article retaining unit.” Ex. 2019 ¶ 5. Dr. Bottoms testifies that a person of ordinary skill would have understood the translated phrase “on the side of the moving body” in paragraph 7 to refer to the transfer means (the hoist) being located on the moving body side of the system rather than the storage side of the system, not physically positioning the transfer means on the lateral side of moving body 3. Ex. 2013 ¶ 114. Dr. Bottoms also explains how JPAP ’213 distinguishes between vertical movement of the retaining unit transfer means and lateral movement of the article movement means MS. Id. ¶ 116 (citing Ex. 1005 ¶ 22). Dr. Sturges’ Declaration testimony, relied upon by Petitioner to rebut Patent Owner’s argument and evidence (Reply 8–9, citing Ex. 1028 ¶¶ 142–44), provides no analysis of paragraph 7, claim 4, or the relevant description in JPAP ’213. Rather, it mimics the error of the Petition in asserting that JPAP ’213 “teaches a system where the vehicle does the work of transferring the pods B laterally to and from the tables 11.” Ex. 1028 ¶ 142.5 Therefore, for the reasons given above, we find that JPAP ’213” slip op. at 14
Patent outcomesUS 7,165,927 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,165,927 - Nissan North America, Inc. / Hitachi Automotive Systems, Ltd. v. Diamond Coating Technologies, LLCAll claims unpatentablePTAB · Apr 20, 2016 · IPR2014-01546 · APJ Christopher L Crumbley · IPR · Final written decision
Claim 1 is unpatentable under § 102 as anticipated separately by Menu and Hirochi.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“For these reasons, we determine that the broadest reasonable interpretation of hard carbon thin film in light of the specification is “film containing a significant fraction of sp3-hybridized carbon.” This construction is not inconsistent with that adopted by the District Court,9 and we agree with the court that it excludes graphitic carbon films. While it is unnecessary to determine the exact boundary of the hard carbon film domain, we note that “a significant fraction of sp3” encompasses a wide range of sp3/sp2 ratios that may even be a majority sp2-bonding, extending to at least 75% sp2. 9 We decline to adopt the District Court’s reliance on a 68:30 ratio of sp3/sp2 bonding as indicative of “a significant fraction,” as the Koidl reference upon which that ratio is based is not in the record of this proceeding, nor does it appear to have been cited during the prosecution history of the ’399 patent. Ex. 1001, References Cited.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“as anticipated by Menu. Pet. 11–24. To establish anticipation, Petitioner must prove that each and every element in a claim may be found in Menu, arranged as recited in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). For the following reasons, Petitioner has established by a preponderance of the evidence that Menu anticipates claim 1.” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Upon review of the reference, the expert testimony, and the parties’ arguments, we find that the amorphous carbon structures of Menu are hard carbon thin films. While we agree with Dr. Kaner’s testimony that the general usage of “amorphous carbon films” may encompass both diamond-like and graphitic carbon, we also agree with Dr. Hersam that Menu is using the term in a more limited way, as synonymous with “diamond-like carbon.” See Ex. 2022, 62. Menu discusses “the need for an improved method for fabricating DLC [diamond-like carbon] superlattice structures” (Ex. 1002, 1:38–40), and it is reasonable to conclude that the method disclosed is directed to addressing this need. In addition, as Petitioner points out, Menu refers initially to “amorphous carbon, or ‘diamond-like carbon’ (DLC)” (id. at 1:25–28), implying that the terms are being used synonymously. The reference to Menu’s first-phase outer layers as “rich in sp2 bonds” (id. at 53–56) does not persuade us otherwise. As Petitioner notes, the ’399 patent uses the same terminology when referring to hard carbon films, suggesting that “rich in sp2” does not imply graphitic. Furthermore, as discussed above, there is a wide range of carbon films within the scope of hard carbon thin films, including films having at least 75% sp2 bonding. Such films can reasonably be termed “rich in sp2” bonds, yet still fall within the domain of diamond-like carbon.” slip op. at 16
- Skill levelNot reached
“UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ NISSAN NORTH AMERICA, INC. and HITACHI AUTOMOTIVE SYSTEMS, LTD., Petitioner,” slip op. at 1
Patent outcomesUS 6,066,399 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 6,066,399 - TDK Corporation v. Lambeth Magnetic Structures LLCInstitution deniedPTAB · Apr 12, 2016 · IPR2016-00013 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 6–19, 21–31, 34, 38, and 39 were obvious over the asserted reference combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It is the Petitioner’s burden to explain how Shen allegedly teaches a bcc-d layer forming a uniaxial “symmetry broken structure.” Petitioner did not carry this burden. Accordingly, the record before us does not establish a reasonable likelihood that Petitioner would prevail in establishing that claims 1 and 27 would have been obvious over Shen and Dill.” slip op. at 9
- BurdenDecided for patent owner
“It is the Petitioner’s burden to explain how Shen allegedly teaches a bcc-d layer forming a uniaxial “symmetry broken structure.” Petitioner did not carry this burden. Accordingly, the record before us does not establish a reasonable likelihood that Petitioner would prevail in establishing that claims 1 and 27 would have been obvious over Shen and Dill.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“bcc-d layer forming a uniaxial “symmetry broken structure.” Petitioner did not carry this burden. Accordingly, the record before us does not establish a reasonable likelihood that Petitioner would prevail in establishing that claims 1 and 27 would have been obvious over Shen and Dill.” slip op. at 9
- Expert testimonyPetitioner expert discountedOther
“However, Petitioner has not provided sufficient evidence to show that the described increase in magnetization in Shen is the result of symmetry breaking as opposed to the transition from an (fcc) structure to a (bcc) structure. For example, Petitioner has not identified where in Shen there is a description that an increase in magnetization of the Fe films is due to symmetry breaking. Rather paragraph 4 (5) on page 134 cited by Petitioner generally states that the magnetization of the Fe films sharply increase “in the fcc to bcc transformation regime” and that the increase in magnetization of the transformed bcc films is four to five times larger than the values extrapolated from the low thickness fcc Fe films. Similarly, Petitioner’s expert, Dr. Sinclair, merely states that the “structural transition includes symmetry breaking and causes ‘[t]he magnetization of the transformed bcc Fe films [to sharply increase by] about four to five times larger than the extrapolated value from the low thickness fcc Fe films.”. Ex. 1006, ¶ 52. Dr. Sinclair’s testimony is conclusory and does not present a factual basis for us to conclude that Shen’s increase in magnetization is due to symmetry breaking. Thus, Petitioner has not shown sufficiently whether the increase in magnetization is due to symmetry breaking or a transition from an fcc to a bcc structure.” slip op. at 8
§ 103 obviousnessPatents in suitUS 7,128,988 - Fresenius Kabi USA LLC v. Cubist Pharmaceuticals LLCInstitution deniedPTAB · Jan 28, 2016 · IPR2015-01572 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the cited purification methods would yield claim 91’s required purity from each of impurities 1–14.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner does not provide sufficient argument or evidence to demonstrate that the purification methods set forth in the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition having no more than 0.5% of each of impurities 1–14. As noted by Patent Owner, the Petition does not address directly the limitations of claim 91. See, e.g., Pet. 26–27, 31. For example, the claim chart for claim 91 merely states “See claim 85,” and the claim charts for claims 49 and 85 do not indicate that the methods set forth in the ’843 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free” of impurities 1–14. Id. at 26–27, 30. The Petition does state that compositions purified using the disclosed methods “would have at least approached and likely exceeded 99% purity levels with respect to all impurities present.” Id. at 20 (citing Ex. 1005 ¶ 148). A 99% purity level, however, would still allow for at least one of the fourteen impurities to be present in the daptomycin composition at a level greater than 0.5%. Thus, we are not persuaded that this evidence demonstrates that the purification methods of the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free of each of impurities 1 to 14,” as recited in claim 91.” slip op. at 9
- BurdenNot shown unpatentable
“sufficient argument or evidence to demonstrate that the purification methods set forth in the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition having no more than 0.5% of each of impurities 1–14. As noted by Patent Owner, the Petition does not address directly the limitations of claim 91. See, e.g., Pet. 26–27, 31. For example, the claim chart for claim 91 merely states “See claim 85,” and the claim charts for claims 49 and 85 do not indicate that the methods set forth in the ’843 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free” of impurities 1–14. Id. at 26–27, 30. The Petition does state that compositions purified using the disclosed methods “would have at least approached and likely exceeded 99% purity levels with respect to all impurities present.” Id. at 20 (citing Ex. 1005 ¶ 148). A 99% purity level, however, would still allow for at least one of the fourteen impurities to be present in the daptomycin composition at a level greater than 0.5%. Thus, we are not persuaded that this evidence demonstrates that the purification methods of the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free of each of impurities 1 to 14,” as recited in claim 91.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“daptomycin composition that is “essentially free” of impurities 1 to 14 in view of the disclosures of the ’843 patent, the ’226 patent, Mulligan, Lin II, and Lakey. Pet. 15–31. In support of this argument, Petitioner notes that daptomycin, or LY146032, is an antibiotic intended for therapeutic use. Pet. 19; Ex. 1007, 1:5–8, 1:36–38; Ex. 1005 ¶ 137. Given this therapeutic application, Petitioner contends a person of ordinary skill in the art would have been motivated to increase the purity of daptomycin compositions “as high as possible.” Pet. 24; Ex. 1005 ¶¶ 75 (asserting that high levels of purity for pharmaceutical preparations of antimicrobial agents would have been a target goal for one of ordinary skill in the art), 137. To achieve this goal, Petitioner contends a person of ordinary skill in the art would have accessed the “extensive tool-box” known in the art for purifying lipopeptide biosurfactants. Pet. 16–17, 23. In particular, Petitioner contends that one of ordinary skill in the art would have understood that the methods disclosed in the ’843 patent, the ’226 patent, Lakey, Mulligan, and Lin II could be used to obtain a daptomycin composition with a purity level exceeding 99%. Pet. 17–18, 20.” slip op. at 8
§ 103 obviousnessPatents in suitUS 8,058,238 - Servicenow, Inc. v. BMC Software, Inc.Institution deniedPTAB · Jan 26, 2016 · IPR2015-01601 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“4. Conclusion Upon review of Petitioner’s analysis and the testimony of Dr. Lavian, we are not persuaded that Petitioner has shown a reasonable likelihood of prevailing on its assertion that independent claims 1 and 6, as well as claims 2–5, 7, and 9–12 depending therefrom, are unpatentable over Miller.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“proposed interpretation. The dictionary definitions submitted by Petitioner indicate that “accompanying” may have two potential meanings: physically going along with or being associated with. See Ex. 1011, 4. The term’s usage in claim 1 and the written description of the ’898 patent, however, indicate that the term was meant to mean the former. See ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“the context of the surrounding words of the claim . . . must be considered in determining the ordinary and customary meaning of those terms”); Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (“where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meaning”). First, claim 1 recites “collecting performance management data having accompanying meta data, the meta data including . . . information indicating operations to be performed on the performance management data,” and “generating output data for display using the collected performance management data according to the information indicating the operations to be performed on the performance management data.” Thus, the performance management data is collected, and that data has accompanying meta data. Reading the claim language in context, the phrase “collecting performance management data having accompanying meta data” suggests that the meta data accompanies the performance management data when the step of collecting is performed (i.e., the meta data travels together with the performance management data being collected). Both the performance management data and the accompanying meta data are collected together in the first claim step, and then output data is generated based on the performance management data “according to” a portion of the meta data in the second step. Interpreting claim 1 to mean that the meta data physically goes along with the performance management data when the performance management data is collected is consistent with the surrounding language of the claim.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“claim 1. Pet. 20–28. For example, Petitioner identifies the data provided by the traceroute-helper script (i.e., a 1 if the gateway is working or a 0 if not) in Miller as “performance management data.” Id. at 20–21 (citing Ex. 1003, 10, 16–17). 4 Although Petitioner’s asserted ground as to independent claims 1 and 6 is based on obviousness under 35 U.S.C. § 103(a), Petitioner argues in its Petition that Miller discloses every limitation of the claims, then includes a single sentence stating that Miller “discloses or suggests” every limitation. Pet. 28, 43. Patent Owner contends that the Petition should be denied because Petitioner fails to identify differences between the claimed invention and the prior art under Graham v. John Deere Co., 383 U.S. 1 (1966), and fails to provide any reason why a person of ordinary skill in the art would have modified Miller. Prelim. Resp. 1–9. We need not reach these issues, however, as Petitioner’s asserted ground fails for other reasons explained herein.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“claim 1. Pet. 20–28. For example, Petitioner identifies the data provided by the traceroute-helper script (i.e., a 1 if the gateway is working or a 0 if not) in Miller as “performance management data.” Id. at 20–21 (citing Ex. 1003, 10, 16–17). 4 Although Petitioner’s asserted ground as to independent claims 1 and 6 is based on obviousness under 35 U.S.C. § 103(a), Petitioner argues in its Petition that Miller discloses every limitation of the claims, then includes a single sentence stating that Miller “discloses or suggests” every limitation. Pet. 28, 43. Patent Owner contends that the Petition should be denied because Petitioner fails to identify differences between the claimed invention and the prior art under Graham v. John Deere Co., 383 U.S. 1 (1966), and fails to provide any reason why a person of ordinary skill in the art would have modified Miller. Prelim. Resp. 1–9. We need not reach these issues, however, as Petitioner’s asserted ground fails for other reasons explained herein.” slip op. at 12
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 6,816,898 - Funai Electric Co., Ltd. / Samsung Display Co., Ltd. v. Gold Charm Ltd.Institution deniedPTAB · Jan 11, 2016 · IPR2015-01448 · APJ Bryan F Moore · IPR · Institution
The Board denied institution for claims 1 and 3–6 because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“III. CONCLUSION The information presented does not show that there is a reasonable likelihood that Petitioner would prevail at trial with respect to at least one 17 claim of the ’176 patent, based on any grounds presented in the Petition. On this record, we deny the petition for inter partes review of claims 1 and 3–6. IV. ORDER Accordingly, it is ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 17
- PTAB / AIA Trials › Real party in interest / privityNot reached
“The current situation does not require us to assess the merits of the real parties in interest issue because, as we explain below, the dispositive issue in this proceeding is whether Petitioner has shown a reasonable likelihood of success on the merits of the grounds presented in the Petition. Consequently, we need not reach and, therefore, do not address whether Petitioner identifies all real parties in interest in its Petition, as required by § 312(a)(2).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1281–1282 (Fed. Cir. 2015) (“Congress implicitly adopted the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). Under the broadest reasonable interpretation 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). For the purposes of this Decision, and on this record, none of the claim terms require an express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy).” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As our reviewing court’s predecessor stated, for anticipation, the prior art reference “must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972); see also Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (holding that “unless a reference discloses within the four corners of the document not only all of the 9 limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102”). We determine that Petitioner has not shown sufficiently that all the limitations of claim 1 are arranged or combined in Koike in the same way as in claim 1.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,995,176 - PTAB · Dec 28, 2015 · IPR2015-01479 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that “[t]he use of the term ‘backlight’ rather than simply ‘light’ indicates that something is being illuminated from behind.” Id. at 28. Petitioner’s proposed constructions (Pet. 13–16) are unreasonably broad insofar as they do not account for the use of the term “backlight.” We also agree with Patent Owner (see id.) that it is clear in the context of the ’833 patent that the recited backlights are in a liquid crystal display apparatus. See Toro Co. v. White Consol. Indus. Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999) (words used in a claim are not construed in a “lexicographic vacuum, but in the context of the specification and drawings”); In re Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983) (“[C]laims are not to be read in a vacuum, and limitations therein are to be interpreted in light of the specification in giving them their ‘broadest reasonable interpretation.’” (emphasis omitted) (quoting In re Okuzawa, 537 F.2d 545, 548 (CCPA 1976)). Petitioner, and its expert Dr. Silzars, recognize in their statements regarding the level of ordinary skill in the art that the relevant art here is “display technologies.” See Pet. 12; Ex. 1002 ¶ 13. Notably, however, despite Petitioner’s assertions and Dr. Silzars’ opinions that “[t]he alleged invention boils down to a method for minimizing the electrical noise generated when simultaneously driving multiple lights,” that the “‘liquid crystal display’ modifier” in the preambles of the challenged claims “merely states a purpose or intended use of the invention” (Pet. 20–22; Ex. 1002 ¶¶ 58–59), and that “there is no structure that is specific to LCDs recited in the body of any of the claims,” neither Petitioner nor Dr. Silzars identifies any context in which backlights would be employed by those of ordinary skill in the art of display technologies, other than in an LCD. Accordingly, on this record and for purposes of this Decision, we determine that the broadest reasonable interpretation of the term “backlight” is “a lamp or set of lamps that illuminates a liquid crystal display from behind.” Because the claims already explicitly define the relationship between the “first backlight” and the “second backlight”—for example, claim 1 recites, in relevant part, that the second backlight is “driven simultaneously with said first backlight” and “ha[s] an oscillation wave whose phase is inverted with respect to an oscillation wave of the first backlight”—we discern no need to provide separate interpretations of “first backlight” and “second backlight.” We also decline to adopt Patent Owner’s proposal to limit the “second backlight” to include “all remaining lamps of the . . . apparatus that are not in the first backlight.” Because independent claims 1 and 16 use the open-ended transitional phrase “comprising,” those claims do not exclude additional, unrecited elements and method steps, respectively. See Manual of Patent Examining Procedure § 2111.03 (9th ed., Rev. 07.2015 Nov. 2015). 2. Other Claim Terms For purposes of this Decision, no other claim terms require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘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))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“B. Anticipation and Obviousness “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed[,] and thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); accord In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)
“A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter[,] as a whole[,] would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze the asserted grounds with the principles identified above in mind.” slip op. at 13
- PTAB / AIA Trials › Real party in interest / privityNot reached
“D. Remaining Contentions The above determination makes it unnecessary to resolve any other disputes, including Patent Owner’s assertion that Petitioner failed to list all of the real parties in interest. See Prelim. Resp. 4–14; Petitioners’ Reply to Patent Owner’s Preliminary Response, Paper 9; Patent Owner’s Sur-Reply to Petitioners’ Reply, Paper 10.” slip op. at 33
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,417,833 - Petroleum Geo-Services Inc. / Ion Geophysical Corporation et al. v. Westerngeco LLCAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00688 · APJ Scott A Daniels · IPR · Final written decision
Claims 1 and 15 are unpatentable as anticipated by Workman and obvious over Workman alone and Workman combined with Elholm.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownPlain and ordinary meaningDecided for petitioner
“Inst. Dec. 9. Our claim construction relies specifically on the nature of the temporal component described in the ’607 patent specification which states “the global positioning system runs position predictor software to estimate the actual locations of each of the birds 18.” Ex. 1001, 4:51–55. Based on the specification, the estimated “actual locations” recited in our construction is a future prediction relative to the old (measured) position data that takes into account the time delay, or lag, and as stated in Patent Owner’s point (1) above. The “actual location” in our claim construction is “where the streamer positioning device will be at the time when commands are received at the device” as contended by Patent Owner. See PO Resp. 7.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“This argument is not persuasive because Workman clearly describes that the Kalman filter would first receive signals including vessel positioning and location sensing device signals, i.e. position and location signals, and that the network solution 10 would make use of such signals to determine “real time . . . streamer cable positions.” Ex. 1004, 3:46–51, see also Ex. 1092, 434. We further understand the term “real time” cable positions to mean a cable position as a function of time and signal processing delay time, and that is most reasonably understood in context as current, actual, or some future estimated time relative to when the data i.e. old data, used to compute the “real time” cable position was observed. Thus, we interpret Workman to disclose a Kalman filter that provides an estimate of real time, i.e. actual, streamer positions based on previously observed location data, an interpretation that falls squarely within an “estimate of an actual position” as determined in our claim construction for the “predict[ing] positions” limitation in claims 1 and 15.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Despite Patent Owner’s arguments, we agree with Petitioner’s analysis as supported by Dr. Evans testimony, that one of ordinary skill in the art would have had reason to combine the teachings of Workman and Elholm to achieve the invention recited in challenged claims 1 and 15 with a reasonable expectation of success. Workman teaches every aspect of the claimed invention including towing an array of streamers, each streamer having a plurality of streamer positioning devices, predicting the positions of at least the streamers (if not the streamer positioning devices) and calculating changes in position of the streamer so as to control a streamer positioning device to affect the streamers. Based on Dr. Evans testimony, we are persuaded that one of skill in the art would have been motivated to modify Workman, by measuring, observing and changing the position of an SPD itself (as opposed to merely the streamer) as taught by Elholm, in order to accurately and precisely control the streamer. We agree that a person of ordinary skill in the art would have looked to Elholm’s teaching of an observable and controllable SPD via a “computer programme,” as a compatible streamer positioning device providing more accurate positional control of a streamer along its length, in the manner of Workman’s streamer control processor as it controls an array of streamers via multiple SPD’s on each streamer. We are not persuaded by Patent Owner’s position that Elholm only discloses a single SPD at the front of a streamer array because Petitioner is relying on Elholm for its teaching of an observable and controllable SPD, whereas it is Workman that teaches multiple SPD’s along the length of each streamer. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). Additionally, Patent Owner is arguing the references individually and these arguments fail to consider the collective teachings of Workman and Elholm from the perspective of one of ordinary skill in the art. See PO Resp. 40–43. Nonobviousness cannot be established by attacking the references individually when a challenge is predicated upon a combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In attacking Elholm individually, Patent Owner fails to address Petitioner’s actual challenges or, therefore, establish an insufficiency in the combined teachings of the references. Accordingly, we conclude Petitioner has established by a preponderance of evidence that claims 1 and 15 would have been obvious under 35 U.S.C. § 103 in view of the disclosures of Workman and Elholm.” slip op. at 37
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Id. Patent Owner argues that these references to trial testimony from district court litigation support a finding of long-felt need but does not explain with any detail why, or how, the referenced testimony, evidences a long-felt need, failure of others, or industry praise. In this regard, we limit our review to evidence actually discussed in Patent Owner’s Response. We will not play archeologist with the record to discover evidentiary support for bare attorney argument made in such a response. See Google Inc. v. ART+COM Innovationpool GmbH, Case IPR2015-00788, slip. op. at 10 (PTAB Sept. 2, 2015) (Paper 7) (citing 37 C.F.R. § 42.104(b)(5) (“The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.”)). We decline to consider, moreover, information presented in an Exhibit, but not discussed sufficiently in Patent Owner’s Response. See PO Resp. 48 (citing Ex. 2035 and 2036, without any discussion of that evidence). Among other reasons, doing so would permit the use of declarations to circumvent our rules relating to page limits. In that regard, our rules prohibit a party from incorporating by reference from one document (such as a supporting declaration) into another document (such as Patent Owner’s Response). See 37 C.F.R. § 42.6(a)(3). Patent Owner argues that the Declaration of Robin Walker is firsthand evidence of industry praise “and how WesternGeco’s revolutionary lateral steering technology satisfied a long-felt need in the industry (Ex. 2077, ¶¶ 12–37) and ultimately contributed to billions of dollars in revenue (Ex. 2077, ¶¶ 47–51).” PO Resp. 48–49. Patent Owner, however, does not explain adequately how the Q-Marine product allegedly embodies the challenged claims in the ’607 patent. Mr. Walker states specifically that [t]hrough its provision of WesternGeco’s patented lateral steering technology, Q-Marine satisfied a significant, previously unmet need in the industry for better quality data and more cost-effective surveys by offering numerous benefits, including those detailed below. Ex. 2077 ¶ 12. The benefits described in the subsequent paragraphs of Mr. Walker’s Declaration are apparently based on lateral steering technology, with the result that “better data quality could be achieved without the risk of costly downtime and damage due to streamer tangling.” Id. at ¶ 15. It may be that Q-Marine provides a better, faster, more reliable and commercially successful 4D survey, but any commercial success enjoyed by the Q-Marine product is relevant only if the challenged claims are shown to embody those products. Patent Owner has not made out that critical showing. See In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008) (finding no nexus, absent evidence that “the driving force behind [the allegedly successful product’s sales] was the claimed combination”) (emphasis added); Ormco Corp. v. Align Technology Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006) (requiring a “nexus between the claimed invention and the commercial success”); Huang, 100 F.3d at 140 (requiring proof that sales were a “direct result of the unique characteristics of the claimed invention”). In the alternative, Patent Owner’s evidence of commercial success does not outweigh the strong showing of obviousness made out by Petitioner in view of anticipation by Workman, and also Workman and Elholm. See Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“evidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”). Accordingly, the alleged commercial success of the Q-Marine product does not support a conclusion of nonobviousness of the challenged claims in this case.” slip op. at 42
Patent outcomesUS 7,080,607 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,080,607 - PTAB · Nov 13, 2015 · IPR2015-01452 · APJ Karl D Easthom · IPR · Institution
The Board denied institution on claims 1–14 because the disputed claim language lacked clarity, preventing determination of claim scope for the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As explained at the outset, determining if the prior art renders the claims obvious necessarily requires resolving facts and determining the scope of the claims. See BlackBerry, Case IPR2013-00036 (Paper 65, 19– 20). Based on the foregoing discussion, “the prior art grounds of unpatentability must fall, pro forma, because they [would be] based on speculative assumption as to the meaning of the claims.” See id. at 20 (citing In re Steele, 305 F.2d at 862–63). Therefore, we decline to institute an inter partes review of claims 1–14.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“The agreed understanding between the parties about the location of the channel underlies and highlights a clarity problem, because the challenged independent claims specifically recite contrary structure: “each [TFT] having a channel in an ohmic contact layer and a semiconductor layer.” Claim 1 (emphasis added); accord claims 9, 13 (similar recitation). Recognizing the problem with this phrase, both parties essentially propose rewriting it: Petitioner contends that “the only reasonable interpretation of the phrase ‘channel in an ohmic contact layer and a semiconductor layer’ is . . . ‘an ohmic contact layer and a channel in a semiconductor layer.’” Pet. 13. On the other hand, Patent Owner contends “an artisan would clearly understand that ‘a channel in an ohmic contact layer[]” simply means “a region formed by the ohmic contact layer and the semiconductor layer in a channel etching process.” Prelim. Resp. 25 (emphases added) (arguing also that “the channel would not be formed if the central portion of the ohmic contact layer was not etched away”). Neither party cites proper legal authority for what amounts to rewriting the claim phrase in one of manners proposed. Both proposals cannot be correct, and therefore point to an effective material change, as the parties disagree over the claim construction. See Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353 (Fed. Cir. 2009) (courts can correct obvious typographical errors “if the correction is not subject to reasonable debate . . . and the prosecution history does not suggest a different interpretation”). Further exemplifying the materiality of the disputed construction, Patent Owner relies on its construction and argues” slip op. at 9
- PTAB / AIA Trials › Real party in interest / privityNot reached
“E. Remaining Contentions The above determination makes it unnecessary to resolve any other disputes, including Patent Owner’s assertion that Petitioner failed to list all the real parties-in-interest. See Prelim. Resp. 5–15.” slip op. at 13
Claim constructioncites GrahamPatents in suitUS 7,460,190
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.