• Huawei Device Co., Ltd. v. Optis Wireless Technology, LLCRehearing denied
  PTAB · Apr 3, 2019 · IPR2018-00658 · APJ John P Pinkerton · IPR · Rehearing

  The Board denied rehearing and left in place the denial of institution on claim 1 because JVT-B045 did not teach or suggest the claimed periphery-based determining function.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place 1 In Ground 1, Petitioner asserts claim 1 is unpatentable under 35 U.S.C. § 103 over the combination of H.324, H.263, and JVT-B045. Pet. 47–66. where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we address the arguments presented by Petitioner.” slip op. at 2

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

    “limitation [1i] that recites a “determining unit configured to determine a predictive value for the number of non-zero coefficients included in the current block based on the number of non-zero coefficients included in a decoded block located on a periphery of the current block.”2 We also examined Dr. Schonfeld’s testimony that a person of ordinary skill would understand that “the last coded 4x4 block” mentioned in the JVT-B045 proposal is a “neighboring block that is located on the periphery of the block being currently coded” in view of Patent Owner’s examples demonstrating that JVT-B045’s “last coded block” would oftentimes not be located on a “periphery of the current block.” Decision 18. We concluded that Patent Owner’s analysis persuasively rebuts Dr. Schonfeld’s testimony. Id. at 18– 19. We also found it is irrelevant that the last coded block of JVT-B045 would “sometimes” be “located on a periphery of the current block.” Id. at 19. In that regard, the Decision states that because claim 1 is an apparatus claim that is “configured to” determine a value based on information in a decoded block “located on a periphery of the current block,” an apparatus programmed to perform the algorithm disclosed by JVT-B045 would be configured to seek information from the “‘last coded block’ (a temporal relationship), which is different from the claimed apparatus configured to 2 This is the complete limitation, whereas a short-hand version was used on page 17 of the Decision that omitted the words “the number of” preceding each use of the term “non-zero coefficients.” provide information based on a spatial relationship—a decoded block ‘located on a periphery of the current block.’” Id. Thus, we determined that Petitioner had not shown a reasonable likelihood of success on Ground 1 because it did not reasonably demonstrate that configuring a determining unit based on the “last coded block” of JVT-B045 taught or suggested configuring a determining unit based on a decoded block “located on a periphery of the current block.”” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “limitation [1i] that recites a “determining unit configured to determine a predictive value for the number of non-zero coefficients included in the current block based on the number of non-zero coefficients included in a decoded block located on a periphery of the current block.”2 We also examined Dr. Schonfeld’s testimony that a person of ordinary skill would understand that “the last coded 4x4 block” mentioned in the JVT-B045 proposal is a “neighboring block that is located on the periphery of the block being currently coded” in view of Patent Owner’s examples demonstrating that JVT-B045’s “last coded block” would oftentimes not be located on a “periphery of the current block.” Decision 18. We concluded that Patent Owner’s analysis persuasively rebuts Dr. Schonfeld’s testimony. Id. at 18– 19. We also found it is irrelevant that the last coded block of JVT-B045 would “sometimes” be “located on a periphery of the current block.” Id. at 19. In that regard, the Decision states that because claim 1 is an apparatus claim that is “configured to” determine a value based on information in a decoded block “located on a periphery of the current block,” an apparatus programmed to perform the algorithm disclosed by JVT-B045 would be configured to seek information from the “‘last coded block’ (a temporal relationship), which is different from the claimed apparatus configured to 2 This is the complete limitation, whereas a short-hand version was used on page 17 of the Decision that omitted the words “the number of” preceding each use of the term “non-zero coefficients.” provide information based on a spatial relationship—a decoded block ‘located on a periphery of the current block.’” Id. Thus, we determined that Petitioner had not shown a reasonable likelihood of success on Ground 1 because it did not reasonably demonstrate that configuring a determining unit based on the “last coded block” of JVT-B045 taught or suggested configuring a determining unit based on a decoded block “located on a periphery of the current block.”” slip op. at 4

  § 103 obviousness
  Patents in suitUS 7,769,238
• Renesas Electronics Corporation / Renesas Electronics America, Inc. v. Lone Star Silicon Innovations, LLCSome claims unpatentable
  PTAB · Mar 25, 2019 · IPR2017-01869 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 4–6, 9, and 10 are unpatentable as obvious over Igarashi and Tanaka (1999); claims 2 and 7 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “For purposes of our Institution Decision, we accepted the definition of a POSA provided by Dr. Bottoms. Dec. 10–11 (citing Ex. 2001 ¶ 31). Dr. Bottoms provides a “clarification” of the Board’s description, testifying that “[t]he specific industry experience would require process design experience—which is experience beyond managing fabrication equipment.” Ex. 2011 ¶ 36. Dr. Bottoms’ clarification is consistent with the level of skill reflected by the ’330 patent, which discloses process design options for making a low dielectric constant silicon nitride etch stop. Ex. 1001, 5:66-6:24. Dr. Neikirk testifies that, under Dr. Bottoms’ definition, a POSA has a higher degree of skill than under Dr. Neikirk’s definition, and the Board’s adoption of Dr. Bottoms’ definition would not change his opinions regarding obviousness. Ex. 1028 ¶ 14. We find there is little difference between the declarants’ definitions of a POSA, and the outcome of our patentability determinations would be the same, regardless of which definition we accept. For the sake of clarity, we adopt Dr. Bottoms’ definition of a POSA, including the recent clarification. Ex. 2011 ¶¶ 35, 36. We also rely on the cited prior art references as reflecting the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedOther

    “After reviewing the qualifications of Dr. Neikirk and Dr. Bottoms, as set forth in each witness’s declaration and curriculum vitae, we find that each of these declarants has sufficient education and experience related to the subject matter of the ’330 patent to testify regarding the perspective of a POSA at the time of the invention. Ex. 1011 ¶¶ 2, 3; Ex. 1012; Ex. 2002; Ex. 2011 ¶¶ 8–20. See Trial Practice Guide Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018), available at https://go.usa.gov/xU7GP (“TPG Update”), 3 (“A person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’” (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008))). D.” slip op. at 12

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

    “In the Institution Decision, we determined that it was not necessary to resolve the parties’ claim construction dispute. Dec. 9–10. Neither party challenges that determination. Petitioner contends that the asserted grounds of unpatentability apply under either party’s construction for the phrase “etch stop layer of silicon nitride.” Pet. 25 n.3. Patent Owner argues that this phrase is not limited to a layer of pure silicon nitride and allows for the presence of dopants and/or impurities. PO Resp. 8–10. Patent Owner does not, however, rely on its proposed claim construction for any patentability argument. In fact, Patent Owner acknowledges that the silicon nitride materials disclosed in the Low-K References satisfy Patent Owner’s proposed construction. PO Resp. 10. Under these circumstances, we agree with Petitioner that we do not need to resolve the parties’ claim construction dispute. Pet. Reply 2. Accordingly, consistent with the Institution Decision, we determine that we do not need to provide an express construction for any claim term for purposes of resolving the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). B.” slip op. at 10

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

    “copper interconnects need silicon nitride films as an etch stop, but that such films have a high dielectric constant, which causes an undesirable increase in the effective dielectric constant of the interconnect structure and increased parasitic capacitance, as compared with aluminum interconnects. Ex. 1021, 829-1, 829-2; see Pet. 18; Ex. 1011 ¶¶ 92, 93. As Petitioner correctly points out (Pet. 53–54), Tanaka (1999) cites Igarashi as an example of a copper interconnect system that is degraded by parasitic capacitance due to the high permittivity (dielectric constant) of silicon nitride etch stop films. Ex. 1017, 47-1 n.1. Tanaka (1999) discloses a low dielectric constant silicon nitride etch stop film as a solution to the problem of parasitic capacitance in copper damascene interconnect structures, such as Igarashi’s. Id. at 47-1, 47-2 (“New low-k SiN film, with a permittivity of 5.4 . . . should be the solution to realize Cu damascene interconnects . . . .”). Consistent with these express disclosures, Dr. Neikirk persuasively testifies that “Igarashi identifies a need for a low-k dielectric etch stop layer” and “Tanaka (1999) meets this need.” Ex. 1011 ¶ 94; see Pet. 18 (citing Ex. 1011, § VIII.C., which contains paragraph 94 of Dr. Neikirk’s testimony). Accordingly, we find Petitioner has shown by a preponderance of the evidence that a POSA would have been motivated to use the low dielectric constant silicon nitride etch stop film of Tanaka (1999) as the etch stop layer in the interconnect system of Igarashi. Patent Owner disputes whether Petitioner has established a reasonable expectation of success for the combination of Tanaka (1999)’s low dielectric constant silicon nitride etch stop film and Igarashi’s interconnect structure. PO Resp. 65. Although the Petition does not expressly discuss whether one of ordinary skill in the art would have had a reasonable expectation of success in combining Tanaka and Igarashi to arrive at the claimed invention, Petitioner shows a very close relationship between the teachings of Tanaka (1999) and Igarashi. Pet. 12–13, 17–18, 53–62. As discussed above and argued by Petitioner, Tanaka (1999): (1) cites Igarashi as an example of a copper interconnect system that suffers from parasitic capacitance due to the high dielectric constant of silicon nitride etch stop films, and (2) discloses a low dielectric constant silicon nitride etch stop film as a solution to the parasitic capacitance problem exemplified by Igarashi. Pet. 13, 18, 53–54; Ex. 1011 ¶¶ 74–79, 88–94; Ex. 1017, 47-1 & n.1; Ex. 1021, 829-1, 829-2. Petitioner establishes a reasonable expectation of success for the combination of Tanaka (1999) and Igarashi by demonstrating a strong correlation between the problem discussed by Igarashi—the high dielectric constant of silicon nitride films when used as etch stops for copper interconnects—and the solution disclosed by Tanaka (1999)—a low dielectric constant silicon nitride film for use as an etch stop layer in copper damascene interconnect structures. In re Inland Steel Co., 265 F.3d 1354, 1364 (Fed. Cir. 2001) (“[T]he strength of the correlation between the references gives rise to a reasonable expectation of success from combining them.”).” slip op. at 27

  Patent outcomesUS 6,388,330 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,388,330
• Fujifilm Corporation v. Sony CorporationSome claims unpatentable
  PTAB · Nov 7, 2018 · IPR2017-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 15 and 17 are unpatentable as anticipated by Ishikawa; the petitioner did not show claims 1–11, 16, and 18–20 unpatentable over Aonuma or Aonuma and Abe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) at the time of the ’774 patent would have had “a bachelor’s degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 13 (citing Ex. 1003 ¶ 65; Ex. 1018 ¶ 60). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For the purposes of the Decision on Institution, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 9

  • Expert testimonyPetitioner expert creditedMixed

    “considerably greater than Ishikawa’s stylus load of 50–300 μN (Ex. 1015 ¶ 45). The Talke Declaration does not address this discrepancy, and Dr. Talke stated during his deposition that reducing the stylus load would reduce scratching of the magnetic tape surface. Ex. 1030, 108:14–19 (“Q: Would reducing the contact pressure for the stylus instrument reduce the scratching of the magnetic tape surface by the stylus? A: Yes, it would, but you have to remember the other problem is the diameter and size of the stylus.”). Moreover, Petitioner provides evidence that it was not uncommon to use stylus-type profilometers to measure the properties of magnetic tape, even after Bhushan was published in 1996. See Reply 6. In particular, Petitioner points to Saliba,6 which describes using a stylus-type profilometer, under identical conditions to those used in Ishikawa, to measure the surface characteristics (including peak-to-valley roughness) of the backcoating of magnetic tape. Ex. 1027, 7:28–40, 57–60. Petitioner further points to Ohno,7 which also describes using “a stylus type 3D profilometer in accordance with JIS B0601” to measure the surface roughness characteristics of magnetic tape. Ex. 1028 ¶ 36; see also Ex. 1015 ¶ 45 (Ishikawa explaining that surface roughness characteristics were measured “in accordance with JIS-B0601-1994”); Ex. 1027, 7:28–39 (Saliba explaining that surface roughness characteristics where measured “in accordance with JIS-B0601-1994”). Accordingly, we are persuaded that the 6 US Patent No. 6,558,774 B1, issued May 6, 2003 (Ex. 1027). 7 U.S. Patent App. Pub. No. US 2005/0175866 A1, published Aug. 11, 2005 (Ex. 1028). evidence establishes that a stylus-type profilometer is a suitable device for measuring the surface characteristics of magnetic tape.” slip op. at 19

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

    “We agree with Petitioner that Ishikawa teaches “peak-to-valley roughness less than about 325 nm” as recited in claim 15. Pet. 24–25; Reply 5–8; Ex. 1003 ¶ 216. In particular, Ishikawa teaches a backcoating layer of a magnetic tape that has a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm.” Ex. 1015 ¶ 44. Ishikawa provides five example embodiments of its magnetic tape, and reports the measurements of a number of characteristics of the backcoat layer for each example, including peak-to-valley roughness Rz. Id. ¶¶ 120–134, Table 1. Ishikawa discloses that peak-to-valley roughness Rz was measured using a stylus-type profilometer under the following conditions: Stylus: diameter: 1.5 to 2.5 μm; curvature: 60º Contact pressure: 50 to 300 μN Cut-off length: 80 μm Sampling length: 80 μm Assessment length: 400 μm Id. ¶¶ 45, 49. The reported peak-to-valley roughness Rz values for the five examples ranged from 58 to 87 nm, as shown in the annotated portion of Ishikawa Table 1 from the Petition, reproduced below: Pet. 24 (citing Ex. 1015, Table 1). The annotated portion of Ishikawa Table 1 shows the results for the measured characteristics of the backcoat layer of Examples 1–5, with the peak-to-valley roughness Rz values highlighted by a red box. Id. Because Ishikawa teaches that the backcoating layer of its magnetic tape should have a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm,” and because Ishikawa presents examples of magnetic tape with backside surfaces having a peak-to-valley roughness of 87 nm or less, Ishikawa discloses “a peak-to-valley roughness less than about 325 nm” as recited in claim 15.” slip op. at 16

  Patent outcomesUS 7,029,774 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774
• Fujifilm Corporation v. Sony CorporationNo claims unpatentable
  PTAB · Oct 22, 2018 · IPR2017-01267 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  The Board held claims 1–13 and 15–20 not shown unpatentable over Law and Sasaki because the evidence did not establish the claimed surface properties.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 17–18 (citing Ex. 1003 ¶ 65). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art. B.” slip op. at 8

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

    “reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b) (May 2, 2016); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For the purposes of the Institution Decision, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The evidence, however, does not establish that a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0 necessarily results from reducing the size and prevalence of the protrusions on the backside surface of Law’s magnetic tape. As Petitioner agrees, Law and Sasaki do not discuss skew and kurtosis values. See Pet. 29 (stating that Law does not expressly disclose skew or kurtosis values); Reply 23 (recognizing that neither Law nor Sasaki contain express disclosures of skew and kurtosis); Tr. 18:22–23 (Petitioner’s counsel noting that there are no reported skew and kurtosis values in Law or Sasaki). Thus, Petitioner relies on Mr. Isobe’s testimony to establish that reducing the protrusions on Law’s backside surface would result in a skew less than about 0.5 and a kurtosis less than about 4.0. See Pet. 45–49; Ex. 1003 ¶¶ 79–81, 170–174. In that regard, Mr. Isobe testified as follows:” slip op. at 17

  • Obviousness (§103) › KSR rationalesNot shown unpatentableNot shown unpatentable

    “At best, the evidence establishes that reducing protrusions in Law’s backside coating may result in the surface approaching a Gaussian distribution (namely, a skew of 0 and a kurtosis of 3). See Ex. 1003 ¶ 171 (“By reducing the number of peaks the overall surface may become closer to a Gaussian distribution, which by definition has a skew of zero.” (emphasis added)), ¶ 174 (“As the frequency of large protrusions is reduced, the skew of the backcoat surface approaches 0 and the kurtosis becomes closer to 3.” (emphases added)). There is no evidence of record, however, that establishes the skew and kurtosis values of Law’s backside coating before reducing the protrusions as Petitioner proposes. While it is possible that reducing Law’s protrusions could result in skew and kurtosis values within the claimed range, it is also possible that reducing the protrusions could result in a surface that approaches a Gaussian distribution but still has a skew above 0.5 and a kurtosis above 4.0. See Ex. 2026 ¶¶ 36–60, 77–83, 90; see also PAR Pharm., 773 F.3d at 1195 (Inherency “may not be established by probabilities or possibilities.”). Thus, even if reducing the protrusions on Law’s backside coating caused the surface to approach a Gaussian distribution, that is not sufficient to establish that it necessarily results in a skew less than about 0.5 and a kurtosis less than about 4.0 as claimed. The skew and kurtosis values recited in claims 1 and 20 are not simply properties possessed by any backside coating that otherwise satisfies the structural limitations. Instead, they are recited as limitations on which magnetic recording media fall within the scope of the claims. The evidence of record does not establish that reducing the protrusions in Law’s backside coating, as taught by Sasaki, “would have naturally led to a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0” as Petitioner contends. Pet. 45. Accordingly, on the record before us, we find that Petitioner has not established that claims 1 and 20 would have been obvious over the combined teachings of Law and Sasaki.” slip op. at 21

  Patent outcomesUS 7,029,774 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774
• Sumitomo Electric Industries, Ltd. v. United Technologies CorporationNo claims unpatentable
  PTAB · Sep 12, 2018 · IPR2017-00966 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1–4, 8–13, 16, and 17 were not shown unpatentable under either § 103 ground because SEI did not establish a sufficient reason to combine the references.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingNo construction neededDecided for petitioner

    “We disagree. As the Federal Circuit has observed, “[a] preamble is not a claim limitation if the claim body ‘defines a structurally complete invention . . . and uses the preamble only to state a purpose or intended use for the invention.’” Georgetown Rail, 867 F.3d at 1236 (citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). The fact that the claims were amended to include storage tanks and recirculation loops actually cuts against UTC’s position, as the claim as amended describes a structurally complete invention and reliance on the preamble for this structure is unnecessary. UTC also points to the fact that the Examiner amended the preamble during prosecution, from merely reciting a “flow battery” to a “redox flow battery.” PO Resp. 15. While “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art” (Catalina Mktg., 289 F.3d at 809) may be a reason to view the preamble as limiting, UTC directs us to no evidence here that the Examiner intended the amendment to distinguish the claims from the prior art. Indeed, as UTC acknowledges in its Response, a person of ordinary skill in the art would have understood the ’243 patent to use “‘redox flow battery’ and ‘flow battery’ to mean the same thing.” PO Resp. 13 (emphasis added). If, as UTC concedes, the Examiner’s amendment merely substituted one synonym for another, the amendment could not have changed the scope of the claim or distinguished over the prior art. For these reasons, we conclude that the preamble of the claims is not limiting, and, therefore, we need not construe the term redox flow battery.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “SEI contends that the person of ordinary skill should not be limited to only a degree in chemistry or chemical engineering, because the claimed features of the flow batteries are not directed to chemistry. Pet. Reply 7. We agree, and adopt SEI’s definition of the relevant educational background. While the parties differ as to the number of years of experience in working with flow batteries, we do not consider the difference (one versus two years) to be significant. We find that a person of ordinary skill in the art at the time of invention would be a person with a degree in chemistry, physics, chemical engineering, electrical engineering, or mechanical engineering, who has at least one year of experience designing or testing flow batteries so as to obtain functional knowledge of their structure and operation. We have reviewed the level of skill reflected in the prior art and consider it consistent with this definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 15

  • ExcludeMotion to exclude, deniedDenied

    “evidence. Our Rule 42.64 provides that a motion to exclude is necessary to preserve any objection, and refers to those objections as “objections to the admissibility” of evidence. See 37 C.F.R. § 42.64(a), (c). The Board’s Trial Practice Guide further explains that a motion to exclude “must explain why the evidence is not admissible.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767. In other words, objections to the timing of late-arising evidence or procedural infirmities are not proper for a motion to exclude. For this reason, the objections raised in UTC’s motion to exclude are improper. First, UTC argues that Exhibit 1066 is untimely under 37 C.F.R. § 42.63(b), which requires a translation of a foreign-language document to be filed with the document. Mot. 5. By UTC’s reasoning, because the Supplemental Declaration revisits Mr. Yagaeshi’s prior translation, but was not submitted with the foreign-language document, it violates the Board’s rules. Id. As this is clearly a procedural objection to the timing of the evidence, as opposed to its admissibility, we deny the motion to exclude on this basis. In any event, even if it were procedurally proper, we would not exclude the Supplemental Declaration on this basis. The Board’s Rule requires only that the original foreign-language document be accompanied by a translation, and there is no dispute that is what happened here. We see nothing in Rule 42.63(b) that prohibits a party to revisit, or even modify, its translation at a later date, given sufficient notice and opportunity to respond by the opposing party. Here, we granted UTC the opportunity to submit its own responsive declaration and address the translation issue at the oral hearing, and UTC did so.” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “character as a minus sign, which is consistent with Mr. Yagaeshi’s original translation, makes more grammatical sense in the context of the sentence. We take note of the fact that SEI only changed its position on the translation—and asked Mr. Yagaeshi to correct his prior translation—once UTC made arguments based on the original translation that might be detrimental to SEI’s case. While it is conceivable that SEI only became aware of the alleged error once UTC called attention to it in the Response, we consider it fair to hold SEI to its original interpretation, especially given that that original interpretation is in agreement with Mr. Baldwin’s translation, which has remained consistent since at least 2016. For these reasons, we will interpret the disputed passage of JP228 to read “the potential was negative 0.4V.”” slip op. at 19

  Patent outcomesUS 9,166,243 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,166,243
• Bose Corporation v. Freebit AsAll claims unpatentable
  PTAB · Apr 18, 2018 · IPR2017-00129 · APJ David C Mckone · IPR · Final written decision

  Claims 1–5 and 7–10 are unpatentable as obvious over Berg, Varming, and Aber; claim 6 is unpatentable as obvious over those references and Marshall.

  RulingsFinal written decision

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

    “Petitioner’s theory of obviousness, however, is that the prior art renders the challenged claims obvious even under Patent Owner’s narrower constructions. Pet. 1; Reply 4. For example, Petitioner argues: What they are saying is that the curvature, this new curvature that they have put into that C-shaped pad has to itself engage and fit closely, in other words touch the concha of the ear. We think that this is a narrow interpretation. When you look at the claim language, we are not really seeing support, Your Honor, for that particular narrow construction. And yet, what we are saying is that nonetheless, if we were to adopt that narrow construction, the prior art renders it obvious. Tr. 7:8–15. Petitioner does not have a theory of obviousness under broader constructions, should we find that the challenged claims are not rendered obvious under Patent Owner’s proposed constructions. Reply 4; Tr. 7:16– 9:2. Accordingly, we evaluate Petitioner’s allegations under Patent Owner’s proposed constructions, and need not determine whether the proper constructions should be broader to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 11

  • Skill levelSkill level board ownDecided for patent owner

    “Patent Owner disagrees with Petitioner and argues that a skilled artisan would have had “a bachelor’s degree or master’s degree in audiology or hearing science and at least three years of experience with developing earphone and hearing instrument products.” PO Resp. 20. We do not discern a meaningful difference between the parties’ proposals, and the parties do not contend that any such difference has an impact on this proceeding. In any case, our findings and conclusions are the same under either party’s proposed level of skill.” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “background discussion and the description of its own invention, we are not persuaded that Varming’s discussion of Berg’s interference with the crus of helix refers to interference at the front of the ear. Rather, Varming clearly describes a device that protrudes into the void or cavity at the front of the ear, a fact that undermines Patent Owner’s argument and the testimony of Dr. Staab. Petitioner characterizes Varming’s background as identifying a problem in Mauney and Feldman (blocked ear canal) that Berg partially solved through its C-shaped pad. Berg, according to Petitioner, introduced a different problem, namely, interference with the crus of helix at the back of the ear, which Varming solved with multiple pads that still engaged the voids at the front of the ear, for stability, but did not interfere with the crus of helix at the back of the ear. Reply 13–14. Petitioner’s characterization of Varming is correct. Varming describes Berg as lacking an “ear plug” like those of Mauney and Feldman, but, because of its C-shaped large pad, it interferes with the crus of helix. Ex. 1005, 2:8–10, 2:20–23. To solve this problem, Varming “suggests a 2 or 3 pad shaped form, with specifically the area around the Crus of Helix removed, in comparison with the devices of the prior art that utilize a continuous form like a C-shape or similar.” Id. at 4:1–3. Berg is the background reference Varming refers to as having a C-shape, and that C-shape is described as interfering with the crus of helix for those with a distinct and emphasized crus of helix. We find that Varming describes removing the area between its pads to accommodate the crus of helix at the back of the ear to avoid a problem that Varming observed with Berg’s device. In other words, Varming expressly teaches modifying Berg’s device to remove a portion that interferes with an extension of the crus of helix at the back of the ear.” slip op. at 31

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

    “problem in Mauney and Feldman (blocked ear canal) that Berg partially solved through its C-shaped pad. Berg, according to Petitioner, introduced a different problem, namely, interference with the crus of helix at the back of the ear, which Varming solved with multiple pads that still engaged the voids at the front of the ear, for stability, but did not interfere with the crus of helix at the back of the ear. Reply 13–14. Petitioner’s characterization of Varming is correct. Varming describes Berg as lacking an “ear plug” like those of Mauney and Feldman, but, because of its C-shaped large pad, it interferes with the crus of helix. Ex. 1005, 2:8–10, 2:20–23. To solve this problem, Varming “suggests a 2 or 3 pad shaped form, with specifically the area around the Crus of Helix removed, in comparison with the devices of the prior art that utilize a continuous form like a C-shape or similar.” Id. at 4:1–3. Berg is the background reference Varming refers to as having a C-shape, and that C-shape is described as interfering with the crus of helix for those with a distinct and emphasized crus of helix. We find that Varming describes removing the area between its pads to accommodate the crus of helix at the back of the ear to avoid a problem that Varming observed with Berg’s device. In other words, Varming expressly teaches modifying Berg’s device to remove a portion that interferes with an extension of the crus of helix at the back of the ear.” slip op. at 31

  Patent outcomesUS 8,630,436 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,630,436
• Oned Material LLC v. Nexeon LimitedInstitution denied
  PTAB · Jul 27, 2017 · IPR2017-00961 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 18–23 were obvious over the asserted prior-art combinations.

  RulingsInstitution decision

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

    “patent in which it appears.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). In determining the broadest reasonable construction, we presume that claim terms carry their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A patentee may define a claim term in a manner that differs from its ordinary meaning; however, any special definitions must be set forth in the specification with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner and Patent Owner dispute the proper construction of the term “first dimension.” Pet. 13–14; Prelim. Resp. 24 n.6. Because the current Decision does not depend on the proper construction of the term “first dimension,” and because the parties do not dispute the construction of any other claim terms, we determine that no claim terms require construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 6

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to claims 18–23 of the ’437 patent. Accordingly, we do not institute inter partes review.” slip op. at 2

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

    “We are not persuaded by Petitioner’s argument. Farrell already provides a metallurgical grade powder. Thus, it is not evident why the general cost of metallurgical grade powders would have caused the ordinary artisan to pillar Farrell’s porous silicon particles using the technique of Peng. Moreover, Petitioner does not explain persuasively why pillared particles would otherwise be desirable in the applications identified in Farrell, or how Farrell’s particles could substitute for Peng’s expensive pillared silicon wafers in Peng’s photovoltaic applications. See Ex. 1005, 1064 (noting that the disclosed “SiNW arrays give promising results for possible applications in high-efficiency solar-cell manufacture”), 1066 (“The most interesting feature of the as-synthesized SiNW arrays is the significant suppression of reflection over the visible-light spectral range.”); Prelim. Resp. 21 (noting that Farrell’s materials are not “lithium-ion battery anode materials”); see also In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (noting that a proposed modification must not render a device unsuitable for its intended purpose). Thus, on this record, Petitioner has not explained sufficiently why cost concerns would have caused one of ordinary skill in the art to pillar Farrell’s particles using the metal–assisted etching technique of Peng.” slip op. at 12

  Claim construction§ 103 obviousness
  Patents in suitUS 8,940,437
• Husky Injection Molding Systems Ltd. / Husky Injection Molding Systems, Inc. v. Plastics Engineering & Technical Services, Inc.All claims unpatentable
  PTAB · Jun 15, 2017 · IPR2016-00431 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1–22 are unpatentable as obvious over Moss and Erhart because the combination teaches their limitations and a skilled artisan would have had reason to combine the references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ dispute regarding the level of ordinary skill comes down to whether the hypothetical person of ordinary skill must have specific “experience designing and operating injection molding equipment using hot runners.” See id. at 25–26. While we agree with Patent Owner that one of skill in the art will have some familiarity or experience in valve gate assemblies for injection molding machines, we are not persuaded by Patent Owner’s assertion that the relevant art should be defined so narrowly as to specifically require significant experience designing and operating injection molding machines. Patent Owner presents no evidence that the design of injection molding machines is particularly specialized and beyond the skill of a mechanical engineer. Thus, we disagree with Patent Owner and decline to insert any specific amount of experience with, or specialized knowledge of, injection molding machines into the definition of one of ordinary skill in the art at the time of the invention.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner argues that Dr. Slocum fails to adequately establish his familiarity with injection molding machines, molding processes, or computer controlled motion of injection molding equipment, and “tries to draw the Board’s focus away from injection molding machines to a more generic or academic subject matter that he deems himself qualified to give an opinion.” PO Resp. 20–21, 25–26. During the oral hearing, Patent Owner, referring to Dr. Slocum’s cross-examination testimony, argued that Dr. Slocum does not, in fact, have injection molding experience. Tr. 43:17– 44:1; see Mot. for Obs. 10–11 (citing Ex. 2006, 35:15–36:15, 121:10– 122:24). Dr. Slocum, however, expressly testified that he had designed injection molding devices, made molds used for injection molding, and run injection molding machines in the lab at the Massachusetts Institute of Technology (“MIT”). Ex. 1004 ¶ 5; Ex. 2006, 31:1–4, 36:1–5; see Pet. Resp. 14–15. Based on the evidence before us, we find that Dr. Slocum has sufficient familiarity with injection molding machines. Further, as discussed above, we are not persuaded that the level of ordinary skill requires any specific amount of experience with, or specialized knowledge of, injection molding machines.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “B. 35 U.S.C. § 325(d) Patent Owner argues that, because Moss and Erhart were considered during prosecution of the application leading to the ’436 patent, we should exercise our discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review. PO Resp. 9–12. “In determining whether to institute or order a proceeding,” the Director “may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). As we have already decided to institute a proceeding, Patent Owner’s § 325(d) argument is moot. See id. Even if we were to review the substance of the § 325(d) argument, however, for the reasons set forth in the Institution Decision we would not be persuaded to exercise our discretion in this case as there is insufficient evidence that the combination of Erhart and Moss was ever considered by the Examiner or applied in any rejection of the claims. Dec. on Inst. 8–9.” slip op. at 9

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

    “D. The Instituted Ground of Unpatentability We instituted trial based on the ground that claims 1–22 are unpatentable under 35 U.S.C. § 103(a) over Moss1 and Erhart.2 Dec. on Inst. 25.” slip op. at 8

  Patent outcomesUS 7,588,436 unpatentable
  § 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,588,436
• Elekta, Inc. v. Varian Medical Systems, Inc.No claims unpatentable
  PTAB · Jun 5, 2017 · IPR2016-00380 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, and 4–9 were not shown unpatentable under either § 103 ground; claims 13 and 18 were canceled after Patent Owner’s motion to amend was granted.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Although a claim term that does not include the word “means” is presumed not to invoke a means-plus-function analysis, that presumption may be overcome if the limitation does not “recite sufficiently definite structure” or recites a “function without reciting sufficient structure for performing that function.” Williamson v. Citrix Online, LLC, 792 F.3d 2 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) redesignated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112- 29, 125 Stat. 284, 296 (2011). Because the ’703 patent has a filing date before September 16, 2012 (effective date of § 4(c)), we refer to the pre-AIA version of § 112. 1339, 1349 (Fed. Cir. 2015). Petitioner’s expert, Russell J. Hamilton, Ph.D., testifies that “the term ‘logic’ would not be recognized by one of ordinary skill in the art as providing sufficiently definite structure for performing the claimed functions,” and that “[l]ogic can be implemented in software, in hardware, and in combinations of hardware and software.” Ex. 1021 ¶ 122. The parties provide sufficient reasoning to overcome the presumption against a means-plus-function construction, and we accordingly construe “first logic” and “second logic” in accordance with 35 U.S.C. § 112 ¶ 6.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner

    “untenable because its broad identification only of “computer software and/or computer hardware” as structure for performing the recited function is too generic. The law regarding construction of means-plus-function limitations as applied to computer-implemented elements is well-established: For computer-implemented means-plus-function claims where the disclosed structure is a computer programmed to implement an algorithm, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” . . . This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose, . . . , or as a flow chart, or in any other manner that provides sufficient structure. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citations omitted). Patent Owner’s proposed construction is superior because it identifies the algorithm through explicit reference to the flow chart of Figure 4 and related disclosure in the Specification. Patent Owner’s position is supported by testimony of its expert, Sasa Mutic, Ph.D., who refers to those disclosures in opining that “the [’703] patent describes a process of steps for obtaining the result of properly positioning a patient to begin a treatment” and that “Fig. 4 of the [’703] patent provides a flowchart of a process for use of an embodiment of the invention.” Ex. 2012 ¶ 69. Petitioner takes the position that the ultimate scope of the corresponding algorithm “does not matter” because Petitioner contends that the challenged claims are unpatentable even under Patent Owner’s proposed construction. Pet. Reply 315, 3. Nevertheless, Petitioner attacks Patent Owner’s proposed construction as “implicitly adopt[ing]” two “additional but unreasonable limitations.” Id. First, Petitioner contends that “the claims do not require the performance of the function of the second logic to be fully automated and instead permit human interaction with the second logic.” Id. Second, Petitioner contends that blocks 520 (“Position Patient”), 525 (“Register Treatment Image Data with Simulator/Reference Image Data and Reposition Patient”), and 530 (“Position Clinical Treatment Machine”) of Figure 4 “need not be performed in their entirety by logic so long as the second logic is used for some step in each block.” Id. at 4. We find no inconsistency in these positions with Patent Owner’s proposed construction. In light of the foregoing considerations, we adopt Patent Owner’s proposed construction.” slip op. at 14

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “Petitioner contends that the claims canceled in IPR2016-00341 “were directed to methods that recited the function performed by the second logic,” and that “Patent Owner is now estopped from arguing the subject matter of the same scope is patentable.” Pet. Reply 315, 1. Petitioner cites no authority to support this position, which improperly focuses on only one limitation of the claims, divorced from the claims’ other limitations. We reject Petitioner’s contention because the method claims canceled in IPR2016-00341 do not constitute “subject matter of the same scope” as the apparatus claims challenged in these proceedings.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’703 patent “would be a person with a graduate degree (MS or PhD) in medical physics or a related field (e.g. Physics, Engineering) and three years of experience in radiation oncology beyond the completion date of their degree.” Ex. 1021 ¶ 17. Patent Owner’s expert, Dr. Mutic, expresses a level of ordinary skill that is generally similar to Petitioner’s expert, but accounts for the possibility of a medical education instead of a medical-physics education: [A] person of ordinary skill in the art . . . would be a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications. Alternatively, one of ordinary skill in the art might have an M.D. degree in the same relevant fields and two or more years of practical experience with image processing and the use of computer systems that is related to medical applications. Ex. 2012 ¶ 36. The similarity in the experts’ opinions is reinforced by Dr. Mutic’s assertion that he has “considered Dr. Hamilton’s definition of the level of ordinary skill in the art and determined that it does not differ from [his] own expressions of this concept in any way that is relevant to the opinions” he expresses in his Declaration. Id. ¶ 38. Based on the expert testimony in the record, we agree with and adopt the level of skill expressed by Dr. Hamilton.” slip op. at 17

  Patent outcomesUS 8,867,703 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,867,703
• Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 17, 2017 · IPR2016-00956 · APJ Patrick M Boucher · IPR · Final written decision

  The Board held claims 1, 3–7, 9, 12–16, 18–23, 29, and 35 not shown unpatentable because the asserted combinations did not teach dynamically building a parse tree while receiving incoming code.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We have considered these constructions in light of the full trial record. We see no compelling reason to alter these constructions in light of the parties’ 4 We repeat our observation from the Institution Decision that claim 9 recites “detecting any one of a plurality of programming languages in which the incoming stream is written” (emphasis added), but requires instantiating the scanner “in response to said determining” (emphasis added), without apparent antecedent basis. We consider “said determining” in claim 9 as intended to refer to the previously recited “detecting,” in parallel with the structure of claims 1 and 22. Dec. 11 n.4. positions as developed during the trial, and we therefore adopt them for this Final Written Decision. See PO Resp. 12–13 (“Although Patent Owner maintains that the terms ‘dynamically building’ and ‘dynamically detecting’ do not require construction, it does not contest these constructions for purposes of this proceeding, and they are, therefore, controlling.”); Reply 3 (noting Patent Owner does not contest the preliminary constructions of “dynamically building” and “dynamically detecting”).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Skill in the Art Based on its expert’s testimony, Petitioner contends that a person of ordinary skill in the art at the time of the claimed invention would have held a bachelor’s degree or the equivalent in computer science or related academic fields, and three to four years of additional experience in the field of computer security, or equivalent work experience. Pet. 2001, 14 (citing Ex. 1002 ¶ 33). Patent Owner does not dispute Petitioner’s contention, and its expert’s opinion on the level of ordinary skill is generally similar to that of Petitioner’s expert, differing only by about a year in minimum work experience and suggesting an advanced degree as a substitute for work experience. See Ex. 2007 ¶ 37. Furthermore, Patent Owner’s expert, Dr. Medvidovic, asserts that the opinions stated in his Declaration “would be the same if rendered from the perspective of a person of ordinary skill in the art set out by [Petitioner’s expert,] Dr. Rubin.” Id. at ¶ 40. Based on the expert testimony in the record, we agree with and adopt the level of skill advocated by Petitioner.” slip op. at 10

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We have considered the opinions of both experts and the underlying bases for those opinions. In light of specific disclosures in Chandnani, we conclude that Patent Owner’s expert, Dr. Medvidovic, articulates the more compelling position. Of particular relevance is the following disclosure from Chandnani: The script language virus detection methodologies described herein may be performed by a computer in one or a combination of the following circumstances. The script language virus detection methodologies may be performed periodically (e.g., once/twice per day) or at selected times (e.g., each time the computer is powered up or restarted) by the computer on all relevant electronic files. In addition, the script language virus detection methodologies may be performed on a file (or a data stream received by the computer through a network) before the file is stored/copied/executed/opened on the computer. Ex. 1003, col. 9, ll. 6–16 (emphasis added). In considering this passage, Petitioner’s expert, Dr. Rubin, makes the conclusory statement that “[t]hus, under [Patent Owner’s] own interpretation of the claim language, the Chandnani+Kolawa combination teaches the ‘dynamically building’ limitation.” Ex. 1002 ¶ 167. We accord such a conclusory assertion little weight. See Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness).” slip op. at 18

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

    “Consequently, Dr. Medvidovic opines, and we agree, that “simply because Chandnani’s tokenizer operates on a data stream does not demand or even imply that the data stream is being received while being tokenized.” Id. As Patent Owner contends, because Chandnani discloses that operation of the tokenizer “only occurs on the second pass through the data stream, . . . the data stream must have already been received before the stream of tokens is generated.” PO Resp. 21. “[W]hile it is conceivable (though not explicitly disclosed) that a data stream might be ‘incoming’ while Chandnani uses the ‘language check data to select the language definition data to use for the detection process,’ it is not possible for the data stream to still be ‘incoming’ when the data stream ‘is lexically analyzed again, this time using the language definition data, to generate a stream of tokens.’” Id. (citing Ex. 1003, col. 8, ll. 4–17; Ex. 2007 ¶¶ 73–74).” slip op. at 20

  Patent outcomesUS 8,225,408 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,225,408

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.