- 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 - Lupin Limited v. Vertex Pharmaceuticals IncorporatedRehearing deniedPTAB · Nov 2, 2015 · IPR2015-00405 · APJ Sheridan K Snedden · IPR · Rehearing
The Board denied Lupin’s rehearing request, leaving institution on claims 1 and 4–9 in place because Lupin showed no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In view of the above, we conclude that the evidence of record submitted by Petitioner and Patent Owner was considered in our Decision to Institute and, when considered in light of the Petition and Dr. Fisher’s declaration, found to be insufficient to establish a reasonable likelihood of unpatentability. We did not misapprehend or overlook the evidence or arguments now raised by Petitioner.” slip op. at 8
- BurdenDecided for patent owner
“In view of the above, we conclude that the evidence of record submitted by Petitioner and Patent Owner was considered in our Decision to Institute and, when considered in light of the Petition and Dr. Fisher’s declaration, found to be insufficient to establish a reasonable likelihood of unpatentability. We did not misapprehend or overlook the evidence or arguments now raised by Petitioner.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“Request 811. In our Decision, we relied, in part, on the teachings set forth in Ex. 2014 and Ex. 2017 disclosing that the I50V mutation is associated with the highest levels of amprenavir resistance, and on the teachings of Ex. 2030 and Ex. 2031 suggesting that the I50V is absent in certain fosamprenavir therapy. Dec. 19 (citing Ex. 2014, 112; Ex. 2017, 84; Ex. 2030 (Abstract No. 598); Ex. 2031, 652). Petitioner argues that Exs. 2030 and 2031 relate to resistance profiles for fosamprenavir administered with another active agent, ritonavir, and not fosamprenavir administered alone. Request 910. Petitioner supports this new argument with reference to Ex. 1047, which discloses that the I50V mutation is observed with unboosted fosamprenavir. Id. We are not persuaded by Petitioner’s argument that a clear error was made based on the record at the time of our Decision. First, we note that these arguments are being made for the first time in the Request, and as such, cannot be the basis for rehearing. The Board cannot have misapprehended or overlooked an argument that was not presented earlier. Second, Lupin arguments are supported by new evidence and fail to comply with 37 C.F.R. § 42.71(d). It would be inappropriate for us to consider Ex. 1047 in a request for rehearing.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“B. Grounds 3 and 4 Patent Owner confirms that it will not rely on 35 U.S.C. § 103(c) to remove Roy I as prior art, thus mooting those grounds in Petitioner’s rehearing request. Response 15. IV. ORDER” slip op. at 8
§ 103 obviousnessPatents in suitUS 6,436,989 - Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentablePTAB · Jan 27, 2015 · IPR2013-00469 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–37 are unpatentable: claims 1, 6, 7, 17, 18, 20–22, and 36 over Wright Jr., and claims 1–37 over Wright Jr. and Goodman under § 103(a).
RulingsFinal written decision- Skill levelSkill level board ownOther
“following education and experience: Bachelor’s degree in Electrical Engineering or Computer Science, or its equivalent, at least 2 years of experience with the design and programming of patient monitoring systems, and at least 1 year of experience with the design or programming of networked systems. Ex. 1008 ¶ 23. Patent Owner’s declarant, Dr. Yadin David, disagrees with the above assertion, asserting instead that a person of ordinary skill in the art would not have had the 1 year of experience with the design and programming of networked systems. Ex. 2007 ¶ 23. The disagreement appears to be immaterial to the arguments presented by Patent Owner, however, because Dr. David declares that this additional experience would not affect his opinions. Id. Accordingly, we need not determine which of the alleged education and experience proffered by the parties is correct. We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). From the Goodman reference, which Patent Owner does not contest is in the field of endeavor of the invention in question, we understand that the level of ordinary skill in the art, at a minimum, pertains to the configuration of communications systems, such as electronic or wireless systems and personal computer systems for communicating with a central monitoring system, which is computer-implemented technology. See Ex. 1003, 3:5059; see also id. at 6:125 (describing the features of the computer-implemented technology at issue in Goodman). With this level of ordinary skill in” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“analysis is improper because he “used the claims of [the ’192 patent] as a template to try and fit combinations of references into the claims” and “used the teachings of [the ’192 patent] specification[] to identify the goals and motivations for combining the prior art.” PO Resp. 19–22 (citing Ex. 2009 at 412:8–12). According to Patent Owner, Dr. Stone’s analysis is based on improper hindsight reasoning. Id. “Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Patent Owner does not show sufficiently that Dr. Stone’s analysis relies on knowledge that was beyond the level of ordinary skill in the art at the time of the ’192 patent. We do not see, and Patent Owner does not assert or demonstrate persuasively, how the disclosures relied upon by Dr. Stone (which were not gleaned from the ’192 patent Specification) would have been beyond the level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“patent as described in the Decision on Institution. Patent Owner explains that Petitioner “filed a new petition seeking inter partes review of related U.S. Patent No. 7,587,469” in which Petitioner “advances a very different construction” for the term “script program.” PO Resp. 5–6. However, Petitioner does not advance a different construction for the term “script program” in this proceeding. We adopt our previous analysis for the non-disputed claim terms, and interpret these terms as follows: Term Interpretation “script program” a program that contains a set of instructions that is capable of being executed and interpreted “data merge program” a program that combines two or more sets of data into one “pointer” an identifier that indicates the location of an item “script assignment unit” a program that associates a script program with an individual See ’468 Dec. on Inst. 5–9.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundNot shown unpatentable
“Nonetheless, where there is an attempt to show obviousness over a single reference, there also must be a showing of a suggestion or motivation to modify the teachings of that reference to achieve the claimed invention. Sibia Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000). Determining obviousness with respect to whether a single piece of prior art could be modified to produce the claimed invention invokes an inquiry into whether a person having ordinary skill in the art would have had a reason to so modify the prior art reference. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351-52 (Fed. Cir. 2010). An obviousness challenge relying on such a modification to bridge the difference between the prior art and the claimed invention must be supported by articulated reasoning with rational underpinning to explain why the person of ordinary skill in the art would make the modification. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (Kahn). The Supreme Court has admonished courts that this analysis should be made explicit. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing Kahn, 441 F.3d at 988). For example, Petitioner relies on knowledge of one of ordinary skill to meet the “one or more databases” limitation. Petitioner explains that user responses are stored on the personal computer in a tab-delimited format for use with a database. Pet. 37–38 (citing Ex. 1002, 3:28–40, 5:7–15, 14:1–10). Wright Jr. also teaches that a form can be selected from a list of existing forms. Id. Patent Owner’s declarant Dr. David acknowledged one of ordinary skill would be aware of the ability to store a list of forms in a database. Ex. 1041, 557:14–19 (agreeing that “one of ordinary skill would understand that one way to store such a list of forms would be to store them in a computer database that’s accessible on the computer”). Given that the use of databases was well within the skill of one of ordinary skill, and given that the form data in Wright Jr. is stored in tab-delimited format, Petitioner has shown, by a preponderance of the evidence, supported by articulated reasoning with rational underpinning, that a person of ordinary skill in the art would have made the modification to store Wright Jr.’s forms in a database.” slip op. at 12
Patent outcomesUS 7,516,192 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,516,192 - Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentablePTAB · Jan 27, 2015 · IPR2013-00469 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–37 are unpatentable: claims 1, 6, 7, 17, 18, 20–22, and 36 over Wright Jr.; claims 1–37 over Wright Jr. and Goodman.
RulingsFinal written decision- Skill levelSkill level board ownOther
“following education and experience: Bachelor’s degree in Electrical Engineering or Computer Science, or its equivalent, at least 2 years of experience with the design and programming of patient monitoring systems, and at least 1 year of experience with the design or programming of networked systems. Ex. 1008 ¶ 23. Patent Owner’s declarant, Dr. Yadin David, disagrees with the above assertion, asserting instead that a person of ordinary skill in the art would not have had the 1 year of experience with the design and programming of networked systems. Ex. 2007 ¶ 23. The disagreement appears to be immaterial to the arguments presented by Patent Owner, however, because Dr. David declares that this additional experience would not affect his opinions. Id. Accordingly, we need not determine which of the alleged education and experience proffered by the parties is correct. We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). From the Goodman reference, which Patent Owner does not contest is in the field of endeavor of the invention in question, we understand that the level of ordinary skill in the art, at a minimum, pertains to the configuration of communications systems, such as electronic or wireless systems and personal computer systems for communicating with a central monitoring system, which is computer-implemented technology. See Ex. 1003, 3:5059; see also id. at 6:125 (describing the features of the computer-implemented technology at issue in Goodman). With this level of ordinary skill in” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“patent as described in the Decision on Institution. Patent Owner explains that Petitioner “filed a new petition seeking inter partes review of related U.S. Patent No. 7,587,469” in which Petitioner “advances a very different construction” for the term “script program.” PO Resp. 5–6. However, Petitioner does not advance a different construction for the term “script program” in this proceeding. We adopt our previous analysis for the non-disputed claim terms, and interpret these terms as follows: Term Interpretation “script program” a program that contains a set of instructions that is capable of being executed and interpreted “data merge program” a program that combines two or more sets of data into one “pointer” an identifier that indicates the location of an item “script assignment unit” a program that associates a script program with an individual See ’468 Dec. on Inst. 5–9.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“Nonetheless, where there is an attempt to show obviousness over a single reference, there also must be a showing of a suggestion or motivation to modify the teachings of that reference to achieve the claimed invention. Sibia Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000). Determining obviousness with respect to whether a single piece of prior art could be modified to produce the claimed invention invokes an inquiry into whether a person having ordinary skill in the art would have had a reason to so modify the prior art reference. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351-52 (Fed. Cir. 2010). An obviousness challenge relying on such a modification to bridge the difference between the prior art and the claimed invention must be supported by articulated reasoning with rational underpinning to explain why the person of ordinary skill in the art would make the modification. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (Kahn). The Supreme Court has admonished courts that this analysis should be made explicit. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing Kahn, 441 F.3d at 988). For example, Petitioner relies on knowledge of one of ordinary skill to meet the “one or more databases” limitation. Petitioner explains that user responses are stored on the personal computer in a tab-delimited format for use with a database. Pet. 37–38 (citing Ex. 1002, 3:28–40, 5:7–15, 14:1–10). Wright Jr. also teaches that a form can be selected from a list of existing forms. Id. Patent Owner’s declarant Dr. David acknowledged one of ordinary skill would be aware of the ability to store a list of forms in a database. Ex. 1041, 557:14–19 (agreeing that “one of ordinary skill would understand that one way to store such a list of forms would be to store them in a computer database that’s accessible on the computer”). Given that the use of databases was well within the skill of one of ordinary skill, and given that the form data in Wright Jr. is stored in tab-delimited format, Petitioner has shown, by a preponderance of the evidence, supported by articulated reasoning with rational underpinning, that a person of ordinary skill in the art would have made the modification to store Wright Jr.’s forms in a database.” slip op. at 12
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Evidence of commercial success, however, “is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To establish a proper nexus between a claimed invention and the commercial success of a product, a patent owner must offer “proof that the sales [of the allegedly successful product] were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In addition, “if the commercial success is due to an unclaimed feature of the device,” or “if the feature that creates the commercial success was known in the prior art, the success is not pertinent.” Ormco, 463 F.3d at 1312; see also In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (requiring a determination of “whether the commercial success of the embodying product resulted from the merits of the claimed invention as opposed to the prior art or other extrinsic factors”). If a patent owner is able to show a sufficient nexus, “the burden shifts to the challenger to prove that the commercial success is instead due to other factors extraneous to the patented invention, such as advertising or superior workmanship.” J.T. Eaton & Co., Inc. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). Patent Owner has not established a sufficient nexus between the claimed monitoring system, method, or apparatus and the alleged commercial success of the Health Buddy. Patent Owner argues that the success of the Health Buddy was “directly attributable to the invention of the ’192 patent.” PO Resp. 24 (citing Ex. 2007 ¶¶ 81, 83, 88–89, 99). Patent Owner and Dr. David, however, do not provide any analysis of how the Health Buddy allegedly embodied the challenged claims, or explain in any detail why it was the unique characteristics of the claimed monitoring system, method, or apparatus that drove sales. Instead, Dr. David” slip op. at 34
Patent outcomesUS 7,516,192 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,516,192 - Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentablePTAB · Jan 27, 2015 · IPR2013-00468 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–37 are unpatentable: claims 1, 6, 7, 17, 18, 20–22, and 36 over Wright Jr.; claims 1–37 over Wright Jr. and Goodman.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Nonetheless, where there is an attempt to show obviousness over a single reference, there also must be a showing of a suggestion or motivation to modify the teachings of that reference to achieve the claimed invention. Sibia Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000). Determining obviousness with respect to whether a single piece of prior art could be modified to produce the claimed invention invokes an inquiry into whether a person having ordinary skill in the art would have had a reason to so modify the prior art reference. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351-52 (Fed. Cir. 2010). An obviousness challenge relying on such a modification to bridge the difference between the prior art and the claimed invention must be supported by articulated reasoning with rational underpinning to explain why the person of ordinary skill in the art would make the modification. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (Kahn). The Supreme Court has admonished courts that this analysis should be made explicit. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing Kahn, 441 F.3d at 988). For example, Petitioner relies on knowledge of one of ordinary skill to meet the “one or more databases” limitation. Petitioner explains that user responses are stored on the personal computer in a tab-delimited format for use with a database. Pet. 37–38 (citing Ex. 1002, 3:28–40, 5:7–15, 14:1–10). Wright Jr. also teaches that a form can be selected from a list of existing forms. Id. Patent Owner’s declarant Dr. David acknowledged one of ordinary skill would be aware of the ability to store a list of forms in a database. Ex. 1041, 557:14–19 (agreeing that “one of ordinary skill would understand that one way to store such a list of forms would be to store them in a computer database that’s accessible on the computer”). Given that the use of databases was well within the skill of one of ordinary skill, and given that the form data in Wright Jr. is stored in tab-delimited format, Petitioner has shown, by a preponderance of the evidence, supported by articulated reasoning with rational underpinning, that a person of ordinary skill in the art would have made the modification to store Wright Jr.’s forms in a database.” slip op. at 12
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Evidence of commercial success, however, “is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To establish a proper nexus between a claimed invention and the commercial success of a product, a patent owner must offer “proof that the sales [of the allegedly successful product] were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In addition, “if the commercial success is due to an unclaimed feature of the device,” or “if the feature that creates the commercial success was known in the prior art, the success is not pertinent.” Ormco, 463 F.3d at 1312; see also In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (requiring a determination of “whether the commercial success of the embodying product resulted from the merits of the claimed invention as opposed to the prior art or other extrinsic factors”). If a patent owner is able to show a sufficient nexus, “the burden shifts to the challenger to prove that the commercial success is instead due to other factors extraneous to the patented invention, such as advertising or superior workmanship.” J.T. Eaton & Co., Inc. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). Patent Owner has not established a sufficient nexus between the claimed monitoring system, method, or apparatus and the alleged commercial success of the Health Buddy. Patent Owner argues that the success of the Health Buddy was “directly attributable to the invention of the ’192 patent.” PO Resp. 24 (citing Ex. 2007 ¶¶ 81, 83, 88–89, 99). Patent Owner and Dr. David, however, do not provide any analysis of how the Health Buddy allegedly embodied the challenged claims, or explain in any detail why it was the unique characteristics of the claimed monitoring system, method, or apparatus that drove sales. Instead, Dr. David” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner
“monitoring products such as [Patent Owner’s] Health Buddy,” and that the Health Buddy improved on existing systems in various ways. PO Resp. 24–25. To support a conclusion of nonobviousness, an alleged long-felt need must have been a persistent one that was recognized by those of ordinary skill in the art, must not have been satisfied by another before the challenged patent, and must have been satisfied by the claimed invention. See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332–33 (Fed. Cir. 2009); Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988). Patent Owner does not explain sufficiently why there was a long-felt need to solve a particular problem that others recognized but were unable to meet. As Patent Owner acknowledges, other remote patient monitoring systems existed prior to the Health Buddy. PO Resp. 24–25. Even assuming that the Health Buddy represented an improvement over those systems, that does not mean automatically that there was a recognized long-felt but unmet need in the art. Further, the evidence cited by Patent Owner and Dr. David pertains only to the Health Buddy itself and does not show recognition of a particular need prior to the Health Buddy. See id. (citing Exs. 2026, 2027, 2036); Ex. 2007 ¶¶ 91, 95–96, 102–105 (citing Exs. 2026, 2027, 2036); Perfect Web, 587 F.3d at 1332–33 (“‘[L]ong-felt need is analyzed as of the date of an articulated identified problem and evidence of efforts to solve that problem.’”) (citation omitted). Finally, Patent Owner does not show sufficiently that the ’192 patent actually satisfied the alleged need. See PO Resp. 24. Thus, Patent Owner’s evidence of long-felt need is not persuasive.” slip op. at 37
- Obviousness (§103) › Objective indicia / secondary considerations › Skepticism / industry praiseDecided for petitioner
“two television news segments and various written publications. PO Resp. 25 (citing Ex. 2007 ¶¶ 98–103). Patent Owner contends that the industry praise “highlighted the ease of use of the device, made possible by the scripting invention of the ’192 patent.” Id. As with commercial success, however, evidence of industry praise is only relevant when it is directed to the merits of the invention claimed. See Ormco, 463 F.3d at 1311. Patent Owner cites a general “scripting” feature, but does not tie the discussion in the cited materials to any particular limitation(s) of the challenged claims. Dr. David also cites numerous materials praising the Health Buddy in general, rather than praise due to specific features that are present in the claims. See Ex. 2007 ¶¶ 98–103 (describing, for example, awards won by the Health Buddy). Thus, Patent Owner has not established a sufficient nexus with the claimed methods, and industry praise of the Health Buddy does not support a conclusion of nonobviousness of the claims.” slip op. at 38
Patent outcomesUS 7,516,192 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,516,192 - PTAB · May 2, 2014 · IPR2014-00231 · APJ Stacey G White · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties before deciding whether to institute review.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“The instant proceedings are in the preliminary stage. Patent Owner has filed preliminary responses in each of the instant proceedings.5 The Board, however, has not determined whether trial will be instituted for any of the requests for inter partes review.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ arguments and the early stage of these proceedings, we agree with the parties that terminating the instant proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. The Board is persuaded that, under these circumstances, it is appropriate to enter judgment6 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate these proceedings are granted, and that these proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner; FURTHER ORDERED that the parties’ joint requests that the settlement agreement (Ex. 1047) be treated as business confidential information, kept separate from the file of the involved patents, and made available only to Federal 6 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. § 42.2. Government agencies on written request, or to any person on a showing of good cause under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted.” slip op. at 3
NonePatents in suitUS 6,009,469
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.