• The Boeing Company v. Seymour LevineAll claims unpatentable
  PTAB · Dec 20, 2016 · IPR2015-01341 · APJ Trenton A Ward · IPR · Final written decision

  Claims 4, 5, 8, 9, 10, 14, and 16 are unpatentable as obvious under § 103 over the combinations listed in the decision.

  RulingsFinal written decision

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

    “The definition of “advice” is “information or notice given.” Ex. 3001 (Webster’s Third New International Dictionary 32 (1971), 3.). Thus, the plain and ordinary meaning of “maintenance advice” is consistent with the aforementioned evidence, in that “maintenance advice” can include maintenance information, but does not require “recommended maintenance actions.” Patent Owner argues that this dictionary definition cited by the Board includes an alternative definition of “advice” as a “recommendation regarding a decision or course of conduct.” PO Resp. 33 (citing Ex. 3001, 3). Patent Owner further argues that this alternative definition of “advice” is most consistent with specification. PO Resp. 33. Patent Owner fails, however, to cite to any portions of the specification to support this argument (see id.) and fails to explain why we should not be guided by the more general statements in the specification, such as the description in the specification that a “preferred maintenance advisory” can be based “on an expert system for fault isolation,” which is in no way “recommended maintenance actions.” Ex. 1001, 3:36–37. We are not persuaded by Patent Owner’s argument that “maintenance advice” must include recommended maintenance actions. Accordingly, we adopt the portion of the proposed definitions on which the parties agree and determine that the term “maintenance advice” means “problem-specific maintenance information.” See also Dec. 7–8.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’618 patent would have a “B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85.” Ex. 1002 ¶ 15. According to Patent Owner’s Declarant, Mr. Grabowsky, a person of ordinary skill in the art relevant to the ’618 patent would have “at least a B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85; as well as either an M.S. or equivalent work experience, such as 3-5 years of experience in avionics.” Ex. 2011 ¶ 8. Thus, both declarants generally agree on the level of skill, although Mr. Grabowsky suggests experience is required in addition to the B.S. degree or the FAA Mechanic Certificate. See id. Based on our review of the ’618 patent, the types of problems and solutions described in the ’618 patent and cited prior art, and the testimony of Petitioner’s Declarant and Patent Owner’s Declarant, we adopt Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We are not persuaded that the additional experience of an M.S. or equivalent work experience, such as 3-5 years of experience in avionics, is required, as suggested by Mr. Grabowsky, as we are unclear as to why the claimed subject matter is beyond the abilities of someone who otherwise meets applicable federal regulatory standards. Based on the stated qualifications of Dr. Helfrick (Ex. 1002 ¶¶ 5–9) and the stated qualifications of Mr. Grabowsky (Ex. 2011 ¶¶ 6–7), Petitioner’s Declarant and Patent Owner’s Declarant both meet the requirements of this definition. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 12

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

    “and ARINC 624-1 because ARINC 624-1 is a standard directed to the very types of on-board systems discussed in Ward.”)). Additionally, Petitioner contends that ARINC publishes standards for the aviation industry, developed by committees that include aircraft manufacturers, avionics manufacturers, and airlines, and that the ACARS transmitter disclosed in Ward is based on, and, thus, would follow, an ARINC standard. Pet. 30 (citing Ex. 1002 ¶¶ 23, 75). Also, Petitioner contends that both Ward and ARINC 624-1 discuss utilizing (1) onboard maintenance systems including ACMS to collect aircraft performance data and (2) an ACARS transmitter to transmit such data to a ground station. Pet. 30. Petitioner adds that ARINC 624-1 provides an explicit motivation to utilize Ward’s ground based maintenance analysis software in implementing its maintenance system, because ARINC 624-1 states that “if known in advance of an airplane’s arrival at a terminal, selected information held in the OMS central maintenance computer’s memory could be useful to line maintenance personnel in planning timely corrective action.” Pet. 30–31 (quoting Ex. 1014 § 2.2.4). We agree, for the reasons stated by Petitioner, that, given the similarity and overlap in disclosures, and applicability of the ARINC standard to the ACARS transmitter of Ward, a person of skill in the art would have been motivated to improve the system in Ward with the teachings in ARINC 624-1. In view of the foregoing, we determine Petitioner has presented and sufficiently established an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” with respect to claim 4 for this ground, and we adopt its contentions as our own. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 21

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “on an aircraft having a flight data recorder.” Pet. Reply 15.10 Furthermore, Petitioner identifies that claims 8–10 all require “aircraft position data directed to said flight data recorder.” Id. Petitioner argues that Mr. Levine’s October 9, 1996 Invention Disclosure is insufficient, because it does not reflect the conception of the invention that Patent Owner ultimately claimed, which requires two data recorders—one onboard the aircraft and a second, remote recorder on the ground. Id. We do not agree with Petitioner’s argument that claims 4 and 8–10 require a flight data recorder on the ground, as claim 4 merely recites a “central station” “configured to receive and analyze said digital aircraft performance.” We do agree, however, with Petitioner’s argument that the express language of independent claim 4 requires “an aircraft having a flight data recorder.” Furthermore, claim 4 requires that the “digital aircraft performance data,” which the “central station” is configured to receive and analyze, is “data directed to the flight data recorder.” Thus, the invention recited in independent claim 4, and its dependent claims, must include a flight data recorder onboard the aircraft and, separately, a central station configured to receive and analyze data directed to the onboard flight data recorder. 10 The recitation “[a]n aircraft maintenance system for use on an aircraft having a flight data recorder” appears in the preamble of claim 4. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). Here, the body of claim 4 refers to “the flight data recorder” as an active limitation in the claim. Therefore, we determine that the preamble is limiting for claim 4.” slip op. at 31

  Patent outcomesUS RE39,618 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
• Kamstrup A/S v. Apator Miitors ApsAll claims unpatentable
  PTAB · Dec 20, 2016 · IPR2015-01403 · APJ John F Horvath · IPR · Final written decision

  Claims 1–13 are unpatentable: claims 1, 2, 6, and 7 are anticipated by Nielsen; the remaining claims are unpatentable on the listed obviousness grounds.

  RulingsFinal written decision

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

    “reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC, v. Lee, 136 S. Ct. 2131, 2142–46 (2016). Consistent with the rule of broadest reasonable interpretation, claim terms are generally 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. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The only term Petitioner asks us to construe is the term “seal” recited in claim 8. Pet. 21. Petitioner argues the term means a “legal” or “tamper-evident” seal. Id. Patent Owner does not dispute this interpretation, and does not ask us to construe any claim terms. We decline to construe the term “seal” because it is not necessary to resolve any controversy. See Vivid Techs., 200 F.3d at 803. We need not expressly construe any other term, as the terms are deemed to have their plain and ordinary meaning.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “In his Declaration, Mr. Skallebæk indicated his position as Senior Vice President for Petitioner. Ex. 1018 ¶ 1. He further declared that he had read the Petition and the Exhibits thereto, and swore that all statements in the Declaration were true and correct, and signed the Declaration. Id. ¶ 2. In his deposition, Mr. Skallebæk testified that although he receives an annual salary from Petitioner, his compensation is independent of the outcome of this proceeding. Ex. 2007, 16:10–17:20. The evidence does not show that Mr. Skallebæk has any other financial interest in the outcome of the case. We duly note the interest of Mr. Skallebæk as an Officer of Petitioner in our consideration and weighing of his testimony. See Ethicon Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1465 (Fed. Cir. 1998). We do not consider the fact that someone else first drafted Mr. Skallebæk’s Declaration, which he reviewed and signed, to diminish the credibility of his testimony in any way.” slip op. at 9

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “In his Declaration, Mr. Drachmann declares a “mechanics6” file was attached to the first Tunheim email and a “UFM++venture” file was attached to both the Bjerngaard and second Tunheim emails. Ex. 2008 ¶¶ 5–10. Although the body of the first Tunheim email refers to a mechanical meter assembly and indicates a sample is attached, there are no indicia in either the body or header of the email indicating a file is attached, let alone a file entitled “mechanics6.” See Ex. 2009, 1, 3. Thus, the only evidence that the “mechanics6” file was attached to the first Tunheim email is the Drachmann Declaration. See Ex. 2008 ¶ 5. Moreover, the only evidence that the first Tunheim email was actually sent to Mr. Tunheim is the Drachmann Declaration. Id. ¶ 5. A similar analysis of the Bjerngaard and second Tunheim emails leads to a similar conclusion, i.e., that the only evidence that a “UFM++venture” file was attached to these emails, or that these emails were sent to their intended recipients is the Drachmann Declaration. Id. ¶¶ 6–7; Ex. 2010 1, 3; Ex. 2011 1, 3. Patent Owner has provided no evidence corroborating Mr. Drachmann’s testimony on these points, such as a reply email from Mr. Tunheim or Mr. Bjerngaard, or a declaration from Mr. Tunheim or Mr. Bjerngaard stating he had received the emails on the dates indicated. See Ex. 2008 ¶¶ 5–7. Moreover, even assuming the first and second Tunheim emails and the Bjerngaard email were sent on the dates indicated and included the “mechanics6” and “UFM++venture” files as attachments, this evidence by itself is insufficient to prove conception of the invention prior to March 22, 2010, because it does not show that the inventors were in possession of every element of the claims. For example, each of independent claims 1, 12, and 13 requires “a housing for the transducers and electronic circuit,” and neither the “mechanics6” file nor the “UFM++venture” file shows transducers located within a housing as required by the claims. See Ex. 2009, 4; Ex. 2010, 4–24; Ex. 2011, 54–74. As Petitioner correctly notes, although the devices are referred to as ultrasonic flowmeters in Exhibits 2010 and 2011, “the presence of ‘at least one ultrasonic transducer’ actually inside the device is not apparent in any of the Exhibits themselves, and could be located elsewhere in the fluid flow and still be fully consistent with the content of the Exhibits.” Pet. Reply 2–3. Patent Owner also relies on the “mechanics7” drawings to prove prior conception of independent claims 1, 12, and 13. See Ex. 2008 ¶¶ 14, 21, 22. Although these drawings show the transducers within the housing, Patent Owner presents no evidence indicating these drawings were shown to another person. See Coleman, 754 F.2d at 359 (“Conception must be proved by corroborating evidence which shows that the inventor disclosed to others his completed thought expressed in such clear terms as to enable those skilled in the art to make the invention”) (emphasis added) (internal quotations and citation omitted).” slip op. at 13

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

    “D. Unpatentability of Claims 1, 2, 6, and 7 over Nielsen Petitioner argues Nielsen teaches all the limitations of claims 1, 2, 6, and 7, and therefore, anticipates these claims. Pet. 49–53. Nielsen discloses an ultrasonic flow meter that can be used as either a water or gas meter. Ex. 1016 ¶ 28. The flow meter includes flow meter housing 120 with measuring tube 114, and an attached water tight casing that encloses printed circuit board 202 and transducers 206.5 Id. ¶ 35. Nielsen’s casing consists of top part 134 hermetically sealed to bottom membrane 132 via soldering, laser welding, or glue. Id. ¶¶ 35, 44. The bottom membrane 132 includes first and second recesses 236 for seating transducers 206, and flow meter housing 120 includes first and second holes for receiving the first and second recesses. Id. ¶ 38. Bracing 116 is provided to lock the casing to housing 120 via one or more screws. Id. ¶ 40. 5 Petitioner maps Nielsen’s flow meter housing 120 (which includes measuring tube 114) to the claimed “flow channel,” and Nielsen’s water-tight casing (which contains a circuit board and transducers) to the claimed “housing.” See Pet. 50; Ex. 1016 ¶ 35. Figure 2 of Nielsen is reproduced below. Figure 2 is an exploded view of an ultrasonic flow meter as taught by Nielsen. Petitioner demonstrates, by a preponderance of evidence, that Nielsen discloses each of the limitations required by claims 1, 2, 6, and 7. See Pet. 49–53. Based on Nielsen’s disclosure, discussed supra, we find Petitioner’s analysis persuasive and adopt it as our own. Patent Owner does not contest” slip op. at 10

  Patent outcomesUS 8,893,559 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,893,559
• Monosol RX, LLC v. Arius Two, Inc.Rehearing denied
  PTAB · Dec 19, 2016 · IPR2014-00376 · APJ Christopher L Crumbley · IPR · Rehearing

  The Board denied Monosol’s rehearing request, leaving claims 1–7 not shown unpatentable because the request showed no prejudicial APA error in the Board’s multilayer construction of “bioerodable device.”

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “At the outset, we note that the premise of Monosol’s argument—that we changed theories in our Final Written Decision—is incorrect. Our Decision on Institution did not articulate a construction for “bioerodable device,” or even state that we were not providing an express construction because the plain and ordinary meaning of the term controlled. Rather, we noted that an explicit construction was not necessary at that stage of the proceeding, because it was not material to resolving the question before us at the time: whether Monosol had established the reasonable likelihood of success required by 35 U.S.C. § 314 to institute trial. Dec. on Inst. 10–11. In this sense, our determination in the Decision on Institution was similar to a trial court’s ruling on a motion for preliminary injunction, and the” slip op. at 6

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

    “In instituting trial, we construed various terms in the challenged claims, but determined that other terms, such as “bioerodable device,” did” slip op. at 3

  • PTAB / AIA Trials › Discretionary denialDecided for patent owner

    “Our denial of institution on particular grounds was based on the fact that we had determined to institute trial on other grounds, and Monosol had not explained why the grounds (such as anticipation by Heiber, or obviousness over Keith combined with Heiber or Schiraldi) were sufficiently distinctive from the instituted grounds. Dec. on Inst. 16, 20 n.2. We, therefore, exercised our discretion to deny these grounds as redundant of the instituted grounds. Id.” slip op. at 3

  • BurdenDecided for patent owner

    “construction of “bioerodable device” earlier—it would have presented evidence that the Heiber and Schiraldi references met that limitation. But Monosol could not have done so post-institution, because neither Heiber nor Schiraldi were part of any ground on which trial was instituted, and could not form any basis for our patentability determination. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765 (Aug. 14, 2012) (“Any claim or issue not included in the authorization for review is not part of the trial.”). Relying on non-instituted prior art in the Final Written Decision— and thereby introducing factual assertions into the proceeding at the end of trial—would trade Monosol’s alleged APA violation for an actual one. See Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016).” slip op. at 10

  Claim constructionDiscretionary denial
  Patents in suitUS 7,579,019
• Kite Pharma, Inc. v. Sloan Kettering Institute For Cancer ResearchNo claims unpatentable
  PTAB · Dec 16, 2016 · IPR2015-01719 · APJ Elizabeth A Lavier · IPR · Final written decision

  Claims 1–13 were not held unpatentable because Kite did not prove the asserted obviousness grounds; the Board found no persuasive rationale to combine the references.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “A. Level of Ordinary Skill in the Art The parties generally agree9 that one of ordinary skill in the art at the time of the invention10 would have had an advanced degree in immunology, cell biology, biochemistry, molecular biology, or a related discipline, along with knowledge and experience in the field of T cell research, including laboratory techniques. See Pet. 33–34 (citing Ex. 100811 ¶ 12); PO Resp. 9 (citing Ex. 202212 ¶ 25; Ex. 1008 ¶ 12). In light of the parties’ general agreement on this point, we adopt that description of the level of ordinary 9 However, Sloan disputes (see PO Resp. 9) Kite’s assertion that one of ordinary skill in the art would have “taken advantage of certain specialized skills” while working as part of a team (Pet. 34). As these specialties (see Pet. 34 (“[f]or example, an immunologist, a cell biologist, and a clinical oncologist”)) are in disciplines within the ambit of the relevant art of T cell research, we discern no meaningful distinction in the parties’ positions on this issue. 10 The application leading to the ’190 patent was filed on May 28, 2003. Ex. 1001, at [22].” slip op. at 8

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

    “II. CLAIM CONSTRUCTION In our decision instituting inter partes review, we determined it was not necessary to construe expressly any of the claim terms. Dec. Inst. 6. Upon consideration of the full record, express construction remains unnecessary. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (noting claim terms require construction “only to the extent necessary to resolve the controversy”). Indeed, neither the Response nor the Reply directly addresses claim construction, and the parties did not focus on claim construction issues during the oral hearing.” slip op. at 7

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

    “Central to any allegation of obviousness is that the proponent must establish that the prior art renders the invention obvious as claimed. Cf. KSR, 550 U.S. at 418 (discussing various considerations important in determining “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue”). Here, Kite’s rationale (1), as presented in the Petition, does not distinguish expressly between the advantages of Krause’s CD28 sequence versus Finney’s, or explain why one of ordinary skill in the art, in developing a dual-signaling chimeric TCR to target GD2, would have been motivated to retain Krause’s 13 CD28 sequence over Finney’s when combining the two references. Accordingly, rationale (1) is deficient on its face. However, if we impute the alleged advantages of Krause’s CD28 sequence as discussed with respect to rationales (2) and (3) to rationale (1),15 then rationale (1) rises or falls with rationale (2).16” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundDecided for patent owner

    “Although, as Kite notes, Sloan cites no prior art evidence about off- target binding concerns specifically in regard to the MYPPPY motif (see Pet. Reply 11), Sloan’s teach-away argument is nonetheless persuasive. Sloan’s argument is based on a reasonable inference from the understanding in the art at the time of the invention that (1) the MYPPPY motif of CD28’s extracellular sequence played a key role in ligand binding (as discussed above), and (2) possible ligand binding other than to the scFv, i.e., off-target binding, was a known, problematic design concern for chimeric TCRs.” slip op. at 23

  Patent outcomesUS 7,446,190 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,446,190
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 15, 2016 · IPR2015-01222 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–11 and 13–15 are unpatentable as obvious over Strubbe and Rae; claims 12 and 16–20 were not shown unpatentable because the petition did not tie the connection-fee limitation to those references.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8. Second, we found the existence of common directors or employees between American Securities and Petitioner to be insufficient to show a real party-in-interest issue, unless the directors controlled or participated in the filing of the proceedings. Discovery Order 9. We found insufficient evidence that common officers between American Securities and Petitioner 9 were involved in the filing of the present proceedings or had the ability to direct the filing of the present proceedings. Discovery Order 9. Nor did we find persuasive evidence that American Securities provided any prior art to Petitioner in the instant proceedings. Discovery Order 9. Third, we found ambiguous and unreliable statements made by a non- lawyer CEO during settlement negotiations covering “ongoing intellectual property disputes” (see Discovery Motion 1) failed to demonstrate that American Securities funded and controlled the instant proceeding. Discovery Order 9; see Exs. 2006, 2011.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “Similarly to the posture of Petitioner’s First Motion to Exclude, the current situation does not require us to assess the merits of Petitioner’s Second Motion to Exclude. See Discovery Order, 13 (indicating that Patent Owner’s evidence was insufficient, “even without excluding Patent Owner’s supporting evidence”). According to Petitioner, the two declarations filed by Patent Owner in support of its Motion for Additional Discovery allegedly recount statements made by Petitioner’s CEO during settlement discussions between Patent Owner and GTL. Mot. Exc. 2nd, 1–2.” slip op. at 12

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

    “We agree with Petitioner. One portion of the Specification cited by Patent Owner details: “[t]he list of items displayed for the inmate may be selected based upon data stored in the inmate's profile on JAMS database 115.” Ex. 1001, 3:61–63 (emphasis added). The conditional nature of the selection need not be incorporated into claim 8. In addition, the instant claim language would also read on a display of all items, with indications of 18 availability with each item for the inmate, such that all items would be displayed instead of Patent Owner’s truncated listing. As such, we conclude that Patent Owner’s proposed construction of the language of claim 8 is overly narrow and is not adopted in the analysis that follows.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Leonard J. Forys, testifies that one of ordinary skill in the art “would have a bachelor’s degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 2–3 years of academic or industry experience in a call center technology particularly computer telephony integration and in telephone networks in general.” Ex. 1003 ¶ 30; see Pet. 10 (citing Ex. 1003 ¶¶ 29–30). Patent Owner’s declarant, Mr. Ivan Zatkovich, proposes that Petitioner’s definition be adopted. Ex. 2012 ¶ 31. As such, we adopt Dr. Forys’ definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 21

  Patent outcomesUS 8,750,486 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,750,486
• Nu Mark LLC v. Fontem Holdings 1, B.V.Institution denied
  PTAB · Dec 15, 2016 · IPR2016-01309 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution on all challenged claims under § 325(d), finding the Brooks and Whittemore § 103(a) ground substantially the same as art and arguments previously considered by the Office.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “For the foregoing reasons, we determine that the content of Brooks is the same or substantially the same as the disclosures in the EP Publication and the ’875 patent. A comparison of Brooks, the EP Publication, and the ’875 patent demonstrates that the smoking article described in the EP Publication and the flavor delivery article described in the ’875 patent are the same in all material respects as the smoking article described in Brooks.” slip op. at 11

  Discretionary denial
  Patents in suitUS 8,863,752
• Canon Inc. / Canon U.S.A., Inc. et al. v. Papst Licensing GmbH & Co. KGInstitution denied
  PTAB · Dec 15, 2016 · IPR2016-01223 · APJ Jennifer S Bisk · IPR · Institution

  The Board denied institution on all asserted grounds because Petitioner failed to show a reasonable likelihood that claims 1–25, 27–30, 33, and 35 were unpatentable.

  RulingsInstitution decision

  • Skill levelSkill level board ownDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). In that regard, Dr. Reynolds testifies that a person having ordinary skill in the art at the time of the invention “would have had at least a four-year degree in electrical engineering, computer science, or related field of study, or equivalent experience, and at least two [years of] experience in studying or developing computer interfaces or peripherals.” Ex. 1306 ¶ 40. Dr. Reynolds further testifies that such an artisan also would have been “familiar with operating systems (e.g., MS-DOS, Windows, Unix) and their associated file systems (e.g., a [file allocation table (“FAT”)] file system), device drivers for computer components and peripherals (e.g., mass storage device drivers), and communication interfaces (e.g., SCSI and PCMCIA interfaces).” Id. Patent Owner confirms that Petitioner’s statements regarding the level of ordinary skill in the art are mostly consistent with Patent Owner’s view, but nonetheless contends that an ordinarily skilled artisan would have at least three years of experience, or, alternatively, five or more years of experience without a bachelor’s degree. Prelim. Resp. 19. We do not observe any meaningful differences between the parties’ definition of a 7 person of ordinary skill in the art. Our analysis in this Decision is supported by either level of skill. We further find that the prior art (e.g., Ex. 1305) in the instant proceeding reflects 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 7

  • 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). Under the broadest reasonable interpretation standard, claim terms generally 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. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that only those claim terms and elements which are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The parties propose constructions for several claim terms. Pet. 17–19; Prelim. Resp. 16–17, 20–28. For purposes of this Decision, however, we do not find it necessary to address explicitly any claim term.” slip op. at 8

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

    “unpatentable under § 102(b) as anticipated by McNeill. For the same reasons discussed above in relation to the obviousness challenges to claims 1–25, 27–30, and 33, we are not persuaded that Petitioner has shown a reasonable likelihood of prevailing on anticipation for any of the challenged claims. III. CONCLUSION For the foregoing reasons, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in challenging claims 1–25, 27–30, 33, and 35 of the ’746 patent. We, therefore, decline to institute inter partes review on any of the asserted grounds as to any of the challenged claims. 37 C.F.R. § 42.108. IV. ORDER It is ordered that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Patent Owner argues that “Petitioners fail to identify where McNeill discloses an analog signal acquisition channel” (Prelim. Resp. 36) and does not show that “this missing element must inherently, i.e., necessarily, be present based on McNeill’s disclosure” (id. at 39). We agree with Patent Owner and determine that Petitioner has not shown sufficiently that McNeill discloses or would have made obvious an “analog signal acquisition channel” as required by claim 1. Id. at 40. In its analysis of the data acquisition channels, Petitioner states only that “McNeill discloses that the target system can emulate any type of peripheral” one type of which is a scanner. Pet. 35. According to Petitioner “[i]t is implicit and inherent for a scanner to have an analog signal acquisition channel for receiving a signal from analog source.” Id. Petitioner goes on to assert that a typical scanner, as of the priority date, would produce a digital representation of an image and transmit that image “to an interface device (e.g. McNeill’s target computer) across a peripheral device communications channel, such as a SCSI bus or a parallel bus conforming to the IEEE 1284 standard.” Id. (citing Ex. 1306 ¶ 98). Nothing 10 in this analysis, however, explains how the communications channel is an analog data acquisition channel. Nor does Petitioner point to anything else in McNeill that it is relying on for disclosure of such an analog data acquisition channel. Id. Finally, Petitioner does not sufficiently explain why a person of ordinary skill would find the addition of an analog data acquisition channel obvious in light of the teachings of McNeill. See Pet. 35. Petitioner’s only discussion of this issue confusingly states that “[a]dding an analog sensor to the ‘exemplary system’ of McNeill is inherent, but if it is not, a POSITA would find it obvious to do so.” Id. The ’746 patent, however, does not use the term “sensor” in the claims. Ex. 1301. And Petitioner does not explain how an “analog sensor” relates to an “analog signal acquisition channel.” Id. Even assuming that a person of ordinary skill would find obvious adding an “analog sensor” based on McNeill’s disclosure, it is unclear why or how that would result in “an analog signal acquisition channel,” and it is Petitioner’s burden to provide sufficiently articulated reasoning for the alleged modification of McNeill resulting in an “analog signal acquisition channel.”” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,504,746
• Genband US LLC / Genband Management Services Corp. v. Metaswitch Networks Ltd.Some claims unpatentable
  PTAB · Dec 15, 2016 · IPR2015-01457 · APJ Jameson Lee · IPR · Final written decision

  Claims 2–5, 8, 9, 15–18, and 22–24 are unpatentable as obvious over Ejzak and Cisco or Intel; claim 10 was not shown unpatentable over either combination.

  RulingsFinal written decision

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

    “First, the above-reproduced figure does not appear in the Specification of the ’640 patent. Rather, it is a creation of the Patent Owner. The figure creates the impression that a “part” necessarily is a “device.” Patent Owner, however, does not provide adequate support for such a narrow reading of 14 “part.” Although a “device” is a “part” of a telecommunications network, that does not mean a “part” has to be a “device.” Even Dr. Akl, Patent Owner’s expert, testified only that a “device” is a “part” of a telecommunications network and not that a “part” of a telecommunications network has to be a “device.” Ex. 2006 ¶ 56. Second, the figure also creates the impression that neither a domain nor a region would identify a device. But Patent Owner does not provide adequate support for such a narrow reading of “domain” and “region.” In that regard, Dr. Akl, Patent Owner’s expert, testifies only that a “device” is neither a “domain” nor a “region,” not that a “domain” or a “region” would not or could not identify a “device.” Id. By assuming that a “part” of a telecommunications system has to be a “device,” and by assuming that neither “domain” nor “region” would identify one or more devices, Patent Owner sees an alleged contradiction in allowing media connectivity setting to be as we have construed it, and the phrase that immediately follows the claim term—“identifying one or more other devices.” Because of that alleged contradiction, Patent Owner contends that “at least one media connectivity setting identifying one or more other devices” should be construed as “information identifying one or more parts of a telecommunication network, distinct from either a domain or a region of the telecommunication network.”” slip op. at 14

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

    “Claim 10 recites, among other limitations, an additional requirement of determining from said bypass mode data that said media gateway “must” be bypassed in said media path. That is in contrast with the language of claim 9, which also depends from claim 8, and which recites, among other limitations, the additional requirement of determining from said bypass mode data that said media gateway “may” be bypassed in said media path. Neither Petitioner nor Patent Owner proposes an express construction for the word “must.” In the circumstances here, the plain and ordinary meaning of “must” in the English language applies. There is no indication that one with ordinary skill in the art would understand the word as conveying something different. The Specification of the ’640 patent does not set forth a special definition of “must.” Also, consistent with the plain and ordinary meaning of “must,” the Specification of the ’640 patent distinguishes between “must” and “may”: It may be determined from the retrieved bypass mode data that the media gateway may be bypassed in the media path, in which case preceding device connectivity data is included in the outbound communication setup request message. It may be determined from the retrieved bypass mode data that the media gateway must be bypassed in the media path, in which case preceding device connectivity data is included in the outbound communication session setup request message. Ex. 1101, 12:35–42 (emphasis added). 34 We determine that “must,” when applied to an action, such as bypassing a media gateway as recited in claim 10, eliminates not taking that action as a possibility and precludes the not taking of that action. In that regard, the different language used between claims 9 and 10 further supports the distinction between the absolute nature of “must” as used in claim 10 and the permissive nature of “may” as used in claim 9. In that regard, as is noted by Patent Owner, Petitioner’s witness, Mr. Bress, agrees that the permissive nature of “may” does not meet the absolute requirement of “must.” PO Resp. 43 (citing Ex. 2004, 123:7–124:5).” slip op. at 34

  • Skill levelDecided for patent owner

    “Level of Ordinary Skill in the Art Petitioner asserts: As of the priority date of the ’640 Patent of March 22, 2011, a person of ordinary skill in the art (“POSITA”) would have been someone with a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and at least two years of work or research experience in the telecommunications industry, which could include telecommunications device design, telecommunications software development, or related areas. Alternatively, a POSITA in the relevant timeframe would have been someone with an advanced degree, such as a Master’s Degree, in electrical engineering, computer science, or a related scientific field, focusing on telecommunications technology. Alternatively, a POSITA in the relevant timeframe could have been someone lacking formal technical education but having experience in the 18 telecommunications industry that would be equivalent to such education. See Ex. 1004 at ¶ 128. Pet. 19–20. Patent Owner does not explicitly take a position on the level of ordinary skill in the art. We determine that no express finding on a specific corresponding level of technical education and experience is necessary, and 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); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). C.” slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “49 media gateways. In that connection, we credit the testimony of Petitioner’s witness, Mr. Bress, over the testimony of Patent Owner’s witness, Mr. Akl, in part because Mr. Bress discusses and explains more of the disclosure of Ejzak. Patent Owner’s argument that it is possible to obtain the media connectivity setting of the ensuing device by requesting the ensuing device for such information (PO Resp. 38) is ineffective with respect to claim 4, which does not specify from where the information is retrieved. Retrieving information from the ensuing device nonetheless still is retrieving. With respect to claim 5 which requires retrieving the information from within the given media gateway, not the ensuing device, we have determined that Petitioner has not stablished that Ejzak necessarily discloses retrieving such information from within the storage of the given gateway. Patent Owner’s argument that the claim limitation of “retrieving ensuing device connectivity data for an ensuing device” would not have been regard by one with ordinary skill in the art as an obvious variant of Ejzak’s determining the IP realm for the next segment of the media path is not supported by sufficient reasoning and explanation directed to Ejzak’s disclosure of provisioning IP realms of media gateways as identified and explained by Petitioner. Between the testimony of respective expert witnesses of Petitioner and Patent Owner, we credit the testimony of Mr. Bress, Petitioner’s witness, over that of Mr. Akl, Patent Owner’s witness. Mr. Bress’s testimony, in our view, is more thorough, whereas Mr. Aky’s testimony, in our view, focuses more on what a prior art 50 disclosure literally states without enough explanation as to the understanding by one with ordinary skill in the art of the teachings associated with that language.” slip op. at 49

  Patent outcomesUS 8,687,640 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,687,640
• Genband US LLC / Genband Management Services Corp. v. Metaswitch Networks Ltd.All claims unpatentable
  PTAB · Dec 15, 2016 · IPR2015-01456 · APJ Jameson Lee · IPR · Final written decision

  Claims 1, 6, 7, 11–12, 19–21, and 25–31 are unpatentable as obvious over Ejzak and Cisco and over Ejzak and Intel.

  RulingsFinal written decision

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

    “discussed below, Patent Owner is unpersuasive in arguing (PO Resp. 18–19) that “at least one media connectivity setting identifying one or more other devices” should be construed as “information identifying one or more parts of a telecommunication network, distinct from either a domain or a region of the telecommunications network.” (Emphasis added). Specifically, we determine that the requirement of “identifying one or more other devices” does not exclude information describing domains or regions of a telecommunications network from satisfying the claimed “at least one media connectivity setting identifying one or more other devices.” Patent Owner presents its argument as follows: A “device” is a “part” of a telecommunications network, such as an endpoint or media gateway. Ex. 1001 [’640 Patent] at 11:46 (“a device (endpoint device or media gateway)”); see also Ex. 2006 [Akl Declaration] at ¶ 56. A “device” is neither a “domain” nor a “region” of a telecommunications network. Ex. 2006 [Akl Declaration] at ¶ 56; see also Ex. 2004 [Bress Transcript 1] at 137:15–18 [footnote omitted] and 142:7–11 [footnote omitted]. The following figure demonstrates the relationships between parts, domain, and regions and their associated media connectivity settings:” slip op. at 14

  • Skill levelSkill level board ownOther

    “As of the priority date of the ’640 Patent of March 22, 2011, a person of ordinary skill in the art (“POSITA”) would have been someone with a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and at least two years of work or research experience in the telecommunications industry, which could include telecommunications device design, telecommunications software development, or related areas. Alternatively, a POSITA in the relevant timeframe would have been someone with an advanced degree, such as a Master’s Degree, in electrical engineering, computer science, or a related scientific field, focusing on telecommunications technology. Alternatively, a POSITA in the relevant timeframe could have been someone lacking formal technical education but having experience in the telecommunications industry that would be equivalent to such education. See Ex. 1004 at ¶ 128. Pet. 19–20. Patent Owner does not explicitly take a position on the level of ordinary skill in the art. We determine that no express finding on a specific corresponding level of technical education and experience is necessary, and 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); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 19

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

    “37), and based on our discussion of media gateway above, we find that each pair of ALG and associated BG in Ejzak constitutes a media gateway.6 This was a determination first made in the initial decision (Dec. Inst. 21), and Patent Owner put forth no contrary position in the Patent Owner Response. Tr. 48:7–18. Petitioner additionally argues that it would have been obvious to one with ordinary skill to combine each pair of ALG and associated BG in a single physical device, in view of Ejzak alone, because it was well-known in the art that the signaling and media functions of the ALG and BG could be implemented in a single physical device. Pet. 20–21.7 That contingent argument is unnecessary, because none of the claims requires the media gateway to be in the form of a single physical device, such as a unified 6 In particular, each ALG and associated BG pair is a distributed mode SBC (Session Border Controller). 7 Petitioner cites to Cisco and Intel, respectively, as teaching that signaling and media functions can be performed by a single physical device. Pet. 21. In particular, Cisco discloses that SBCs come in two different models, a distributed model and a unified model, and that in the unified model the signaling and media functions are performed not by separate units but by a single operative unit. Ex. 1010, 2. model SBC. Even if we assume that a single physical device is required by the claims, then for reasons expressed by Petitioner, we determine that it would have been obvious to one with ordinary skill in the art, based on the disclosure of Ejzak, to implement Ejzak’s ALG and corresponding BG in a single physical device.8 In that regard, Cisco was cited by Petitioner to show what was well known to one with ordinary skill in the art. In any event, for the reasons indicated by Petitioner on pages 21–25 of the Petition, Cisco would have suggested to one with ordinary skill in the art to implement Ejzak’s ALG and corresponding BG in a single physical device.9” slip op. at 24

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

    “In summary, traversed-realm attribute is information about a preceding BG or media gateway including the BG, and that information identifies devices in a traversed IP realm which are accessible from that BG or media gateway. Ejzak discloses limitation [1e]. For limitation [1f], which recites “to enable bypass of said media gateway in said media path if an ensuing device in said outbound signaling path determines that such bypass should be conducted,” Petitioner provides persuasive explanation on pages 16–17, 29–30, and 36–37 of the Petition. For instance, Petitioner explains that in Ejzak, if there is a match between a preceding BG’s IP realm and the next IP realm, one or more BGs may be bypassed. Pet. 16, 30. Petitioner cites to “Case 1,” described in Ejzak, as one example. Pet. 16–17. Ejzak describes: An example of case 1, using FIG. 1 as reference, is that upon receiving an SDP offer from the direction of UA1, ALG3 determines that R4 125 and R1 107 are instances of the same IP realm. ALG3 substitutes the connection and port information from UA1 into the outgoing SDP offer and deletes the traversed-realm instances for R2 113 and R3 119 from the SDP before forwarding. After the end-to-end SDP offer/answer transaction is completed, the media path will bypass BG1 105, BG2 111, and BG3 117. Ex. 1003 ¶ 74. Petitioner also relies on “Case 3,” described in Ejzak, as another example. Pet. 17, 30. Ejzak describes:” slip op. at 27

  Patent outcomesUS 8,687,640 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,687,640
• Pixart Imaging, Inc. v. Syncpoint Imaging, LLCAll claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01347 · APJ Christa P Zado · IPR · Final written decision

  Claims 1–4, 6–9, 11, 17–19, and 24–26 are unpatentable under § 102(b) as anticipated by one or more of Stove, Platzker, Elrod, and Vogeley.

  RulingsFinal written decision

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)

    “Co-pending Reexamination of the ’214 patent, Reexamination Control No. 90/020,085. Paper 16. Petitioner filed an opposition to Patent Owner’s motion. Paper 17. At the oral hearing, Patent Owner withdrew its motion. Tr. 74:8–24. At the hearing, Petitioner responded that it has no objection to Patent Owner withdrawing its motion. Id. at 75:2–5. Accordingly, Patent Owner’s motion is withdrawn.” slip op. at 7

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

    “interpreted according to 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 Cuozzo Speed Techs., LLC, v, Lee, 136 S. Ct. 2131, 2141–46 (2016). The terms also generally are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We determine that it is unnecessary to construe any claim terms for purposes of this decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim 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 8

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

    “the spot’s detection. Pet. 15 (citing Ex. 1005 6:9–14, 10:11–15). We are not persuaded by Petitioner’s evidence and arguments. Claim 4 recites “filtering the image to detect at least one property,” and therefore requires filtering the image captured by video camera 5 in Stove. The filter Petitioner relies on from Stove is an optical filter placed in front of the lens of video camera 5 (Ex. 1005, 6:8–9, 10:11–15 (“a red filter can be placed in front of the lens of video camera 5”)), and thus, it filters light before it enters the camera, and before an image is captured. We, therefore, are not persuaded by a preponderance of the evidence that Stove discloses “filtering the image to detect at least one property,” as recited in claim 4. We have reviewed the parties’ arguments and the evidence of record. Upon review, we determine Petitioner has not demonstrated by a preponderance of the evidence that Stove discloses every element of either claim 4, or claim 5 due to its dependence on claim 4.” slip op. at 20

  • BurdenDecided for petitioner

    “Petitioner must prove its proposition by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C. § 102 if “the prior art reference discloses every element of the claim.” In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). “[A]bsence from the reference of any claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1571 (Fed. Cir 1986).” slip op. at 8

  Patent outcomesUS 6,275,214 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,275,214

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.