- Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Dec 9, 2016 · IPR2014-01530 · APJ Trenton A Ward · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving its final written decision on claim 6 unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 2
- BurdenDecided for petitioner
“Decision that “[t]o prevail in its challenges to the patentability of the claims, a petitioner must establish facts supporting its challenges by a preponderance of the evidence.” Dec. 12 (citing 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d)) (emphasis added).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“189:4–9)), require that these data modules must be part of a larger computer program. Even considering the disclosures in the specification cited by Patent Owner, we are not persuaded that the examples cited require that all data modules must be a discrete unit of a larger computer program. For example, disclosure in the specification that a data module containing the “particular cost-of-a-trimmed-pork-belly-unit” might be executed by a linked computer program to deliver personalized advertisements does not require that it must be a discrete unit of a larger computer program in all circumstances. See Req. 6–7. Yet, as we determined in the Final Written Decision, the specification does disclose that each type of module, including program modules, object modules, and data modules, is executed by a computer to perform a specific function. See Dec. 9 (citing Ex. 1003, 186:10–17, 188:35–37, 188:59–61). Accordingly, we modified our initial construction of “module” in the Decision on Institution as “a discrete unit of digital data” (Paper 8, 8) to incorporate “being executed by a computer to perform a specific function” (see Dec. 9–10). Patent Owner fails to establish persuasively how the examples of data modules in the specification are not met by a construction of “module” as “a discrete unit of digital data that is executed and/or processed to perform a specific function.”” slip op. at 5
Claim constructionPatents in suitUS 7,864,956 - Global Tel*link Corporation v. Securus Technologies, Inc.All claims unpatentablePTAB · Dec 9, 2016 · IPR2015-01219 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–32 are unpatentable as obvious over Rae, Sulmar, and Falcone; the motion to amend with substitute claims 33–57 is denied.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We disagree that Patent Owner has introduced evidence reasonably bringing into question the accuracy of GTL’s identification of the real parties-in-interest in its Petition. First, in its Patent Owner Response, Patent Owner makes conclusory assertions, without explaining how any evidence of record supports Patent Owner’s contentions, such as that the “private equity firm American Securities . . . has the ability to control GTL in general and in [this] proceeding[].” PO Resp. 41 (citing generally Exs. 2002–2011, Discovery Motion, Prelim. Resp.); id. at 41–43 (asserting that its evidence “reasonably brings into question the accuracy” of Petitioner’s identification of the real party-in-interest in its Petition).” slip op. at 10
- ExcludeNot reached
“Similar to the posture of Petitioner’s First Motion to Exclude, the current situation does not require us to assess the merits of Petitioner’s Second Motion to Exclude. See Discovery Order, 13 (indicating that Patent Owner’s evidence was insufficient, “even without excluding Patent Owner’s supporting evidence”). According to Petitioner, the two declarations filed by Patent Owner in support of its Motion for Additional Discovery allegedly” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We agree with Petitioner. The subject limitation of claim 1 is “determining whether a charge for message service using message service communication protocol can be billed to the cellular telephone.” As we discussed in the Institution Decision, the Specification discusses two determinations, and we are not persuaded that both determinations must be satisfied to satisfy claim 1. See Dec. 16–17. As understood at the time of the invention of the ’118 Patent, and as understood today, the physical cellular phone may receive a message or call, but does not receive a charge, per se. Patent Owner has not provided any examples of mobile devices that “do their own billing,” i.e., that internally bill a charge and/or process payments, and we are unaware of such mobile devices. Rather, the charges are handled by a mobile carrier, and can follow a myriad of billing arrangements, which can be purely business agreements, subject to negotiation and not subject to technical requirements. We credit the testimony of Dr. Forys, providing that the ’118 Patent focuses on the ability to charge the phone when a message is transmitted to it, not on the ability of the phone to receive a message. Ex. 1026 ¶¶ 25–28. Furthermore, we determine that focusing on technical capabilities of the called party’s phone 21 ignores the role of the carrier, which is the essential entity in the billing process. As such, we maintain our interpretation of the “determining” step of claim 1, and apply it in our consideration of the ground below.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s declarant, Dr. Leonard J. Forys, testifies that one of ordinary skill in the art “would have a [Bachelor of Science] B.S. degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3–5 years of academic or industry experience in communications systems, or comparable industry experience.” Ex. 1003 ¶ 30; see Pet. 9 (citing Ex. 1003 ¶ 30). Patent Owner’s declarant, Mr. Bradley O. Walton, contends one of ordinary skill in the art “would have a bachelor’s degree in Electrical Engineering, Computer Science, or an equivalent field and at least three years of academic or industry experience in telecommunications 25 systems.” Ex. 2012 ¶¶ 37. We determine the differences in the declarants’ assertions to be negligible and that both definitions are consistent with the ’118 Patent and the referenced prior art, and we adopt Dr. Forys’ definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 25
Patent outcomesUS 8,626,118 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,626,118 - Asetek Danmark A/S v. Coolit Systems, Inc.No claims unpatentablePTAB · Dec 8, 2016 · IPR2015-01276 · APJ Michelle R Osinski · IPR · Final written decision
Claims 1–4, 6–8, 12, 14, 15, and 18–28 were not shown unpatentable under § 103 because Petitioner did not adequately explain the proposed modifications to Kang.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The Specification does not provide an explicit definition of the claim term “adjacent.” See Tr. 37:20–21. Petitioner argues that the Specification does use the term “adjacent” to describe something more than simply “next to.” Id. at 7:14–26 (citing Ex. 1001, 4:38–43). In the ’330 patent, “[f]luid inlet opening 114 [is described as] be[ing] positioned adjacent . . . contact region 102b” (Ex. 1001, 4:31–33), even though fluid inlet opening 114 is separated from contact region 102b by walls 110 that extend upwardly from upper surface 102a of heat spreader plate 102 (id. at 3:7–15). We are not persuaded that this use of the term “adjacent” in the ’330 patent necessitates a broader construction than “next to.” This is because fluid inlet opening 114 is next to contact region 102b in that nearly the entirety of fluid inlet opening 114 overlies contact region 102b, as depicted by the dashed lines of Figure 1. Figure 2 shows that microchannel walls 110 define corresponding microchannels through which contact region 102b is positioned immediately below fluid inlet opening 114. Because all elements of thin fluid heat exchangers can be considered relatively close to each other due to the small size of these devices, we determine that “adjacent” in the ’330 patent must mean something more than “close to or nearby,” as asserted by Petitioner. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (explaining that a claim interpretation that renders a claim term or phrase superfluous is disfavored). We also are not persuaded that the absence of any intervening structure of the same kind therebetween is sufficient to consider two objects as adjacent to each other in the ’330 patent, as asserted by Petitioner. For example, we would not consider inlet header 112 to be adjacent outlet header 126 in the ’330 patent simply because there are no other elements labeled as “headers” between them. For the foregoing reasons, we construe “adjacent” as “next to” and determine this is the broadest reasonable construction of this term in light of the specification of the ’330 patent.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“The principle that a rearrangement of parts is a mere design choice finds its roots in In re Japikse, 181 F.2d 1019, 1023 (CCPA 1950). In Japikse, claims were held unpatentable because rearranging the position of a starting switch would not have modified the operation of the device. Id. Petitioner provides no evidence or persuasive technical reasoning that rearrangement of the inlet header so as to be next to a lateral side of Kang’s microfins (as opposed to opposite a topside of Kang’s microfins) would not have modified operation of the heat exchanger device. At most, Petitioner has provided conclusory expert testimony that rearrangement of the inlet header in Kang so that it would satisfy the requirements of claim 1 would not “enhance” the heat removal efficiency/performance of Kang’s heat exchanger device. Ex. 1002 ¶ 49. However, Petitioner has provided no expert testimony as to whether or not rearrangement of the inlet header might otherwise modify (e.g., reduce) the heat removal efficiency/performance of the heat exchanger device. When modifying Kang’s device to place inlet section 31 on a lateral side of microfins 14 (i.e., in contact with the microfins) and to place inlet openings 44 on the corresponding lateral side of flow distributor 40 (Pet. Reply 5), at least a portion of fluid is able to enter directly the microchannels formed by microfins 14 and, thus, bypass flow distributor 40. This is because inlet section 31 is placed next to a side of the fins that corresponds with the ends of the microchannels. Petitioner has not persuaded us that bypassing Kang’s flow distributor 40 would not modify the heat removal/efficiency performance of Kang’s heat exchanger device such that modified Kang would perform as equally well as the embodiment illustrated in Figures 1–3.4 Rather, we determine that bypassing flow distributor 40 would avoid “caus[ing] the fluid to change directions several times” (Ex. 1004 ¶ 30), which would affect mixing, which would, in turn, affect heat transfer (id. at Abstr.). Thus, we are not persuaded that modifying Kang’s 4 We note that when discussing the opposing outlet header (which is already asserted to be next to a lateral side of the microfins in Kang), Petitioner asserts that having fluid flow through the microchannels directly, as opposed to through the flow distributor as intended, would not matter because heat exchange happens in the microchannels. See Tr. 15:13–16:2. Although we do not disagree that heat exchange would take place in the microchannels even if fluid bypasses the flow distributor, we are not persuaded that this means that there would be no modification in the operation of the device. embodiment of Figures 1–3 so as to place inlet section 31 on a lateral side of microfins 14 is a mere design choice that would not affect operation of the device. For the foregoing reasons, we determine that Petitioner has not” slip op. at 18
- Obviousness (§103) › KSR rationalesNot shown unpatentableNot shown unpatentable
“Because Petitioner has not specified the orientation of the header regions to the microfins and microchannels in connection with its proposed modification of Kang, we determine that it is unclear if the rearrangement of the header regions proposed by Petitioner is merely a design choice that does not affect the heat removal efficiency/performance of the heat exchanger device. If the header regions of modified Kang are positioned on the sides of microfins 14 corresponding to the ends of the microchannels, at least a portion of fluid could directly enter the microchannels formed by microfins 14, and thus, bypass flow distributor 40 and affect operation of the device. Because the exact configuration of the inlet and outlet header regions in modified Kang has not been set forth with clarity in Petitioner’s challenge, we are not persuaded that the proposed modification to the header regions is merely a design choice, as alleged by Petitioner, that would not affect operation of the device. Similarly, although Petitioner has asserted that “a person of ordinary skill in the art would be easily able to modify Kang’s device to . . . have inlet openings 44 on the corresponding lateral side of flow distributor 40” and that Bhatti teaches this configuration (Pet. Reply 5 (citing Ex. 1002 ¶¶ 49, 212, 213; Ex. 1007, Figs. 1, 2); Tr. 38:13–21), Petitioner has not clarified the specific configuration and orientation of lateral side inlet openings in modified Kang. For example, it is unclear if Petitioner proposes to alter Kang to re-orient inlet channels 44 to extend from a first lateral side to an opposing second lateral side of flow distributor 40 (instead of extending from a top side to a bottom side) or to extend Kang’s inlet channels 44 to only one lateral side, and if so, whether modified inlet channels would extend from the top to bottom of the flow distributor on that one lateral side or only along a portion of the lateral side. Because Petitioner has not specified the exact manner in which Kang’s flow distributor 40 would include inlet channels 44 on a lateral side of flow distributor 40 in connection with its proposed modification of Kang, we determine that it is unclear if the modification of inlet channels 44 proposed by Petitioner is merely a design choice that does not affect the heat removal efficiency/performance of the heat exchanger device. If inlet channels 44 extend from a first lateral side to an opposing second lateral side, at least a portion of fluid would be able to bypass the microchannels and, thus, affect operation of the device. Because the exact configuration of inlet channels 44 in modified Kang has not been set forth with clarity in Petitioner’s challenge, we are not persuaded that the proposed modification to inlet channels 44 is merely a design choice, as alleged by Petitioner, that would not affect operation of the device. For the foregoing reasons, we determine that Petitioner has not provided sufficient detail in its challenge to support a conclusion that modifying Kang in light of the teachings of Bhatti would be a mere design choice that would not modify the heat exchange functionality of the device.” slip op. at 24
Patent outcomesUS 8,746,330 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,746,330 - Global Tel*link Corporation v. Securus Technologies, Inc.All claims unpatentablePTAB · Dec 7, 2016 · IPR2015-01221 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–19 are unpatentable under § 103 over the stated combinations of Falcone, Jiang, Bangor, and Apple.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Thus, Patent Owner has not introduced evidence reasonably bringing into question Petitioner’s identification of the real party-in-interest in this proceeding. Accordingly, the evidence of record does not support a determination that American Securities had a role in funding or controlling this proceeding, or could have exercised control over this proceeding. For these reasons, we determine that a preponderance of the evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. As such, we determine that Petitioner’s real party-in-interest identification at the time of filing the Petition remains valid.” slip op. at 12
- ExcludeMotion to exclude, deniedDenied
“For these additional reasons, we determine that, even without excluding Exhibits 2006 and 2011, the preponderance of evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. Accordingly, Petitioner’s Second Motion to Exclude Exhibits 2006 and 2011 is dismissed as moot.” slip op. at 15
- PTAB / AIA Trials › Motions to amend / substitute claimsOther
“Patent Owner also filed a Motion to Amend (Paper 27), to which Petitioner filed an Opposition (Paper 32) and Patent Owner filed a Reply (Paper 34). Subsequently, however, Patent Owner filed a Notice of Withdrawal of Patent Owner’s Motion to Amend (Paper 46), making consideration of those papers pertaining to claim amendments moot.” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s declarant, Dr. Leonard J. Forys, testifies that one of ordinary skill in the art “would have a [Bachelor of Science] B.S. degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3–5 years of academic or industry experience in communications systems, or comparable industry experience.” Ex. 1003 ¶ 34; see Pet. 8 (citing Ex. 1003 ¶ 34). Patent Owner’s declarant, Mr. Bradley O. Walton, contends one of ordinary skill in the art “would have a bachelor’s degree in Electrical Engineering, Computer Science, or an equivalent field and at least three years of academic or industry experience in telecommunications systems.” Ex. 2012 ¶¶ 38. We determine the differences in the declarants’ assertions to be negligible, that both definitions are consistent with the ’068 Patent and the referenced prior art, and we adopt Dr. Forys’ definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 26
Patent outcomesUS 8,489,068 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,489,068 - Ima S.P.A. / Fillshape S.R.L. v. Indag Gesellschaft FÜR Industriebedarf MBH & Co. Betriebs KGInstitution deniedPTAB · Dec 7, 2016 · IPR2016-01153 · APJ Timothy J Goodson · IPR · Institution
The Board denied institution on all challenged claims because Petitioners did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“as to which portions of Resterhouse Petitioners rely on as teaching each element of claim 1. The rules governing this proceeding require that a petition “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). As the Federal Circuit has recently indicated, “[t]he Board is not free to disregard its own regulations.” Perfect Surgical Techniques, Inc. v. Olympus America, Inc., __ F.3d __, 2016 WL 6694956 at *1 (Fed. Cir. Nov. 15, 2016). The Federal Circuit has also emphasized the need, in AIA proceedings, for petitioners to articulate their challenges with specificity in their initial petitions. See Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ 35 U.S.C. § 312(a)(3). . . . Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.”). In this case, the Petition’s arguments concerning claim 1 fall short of the requirements of § 42.104(b)(4) because the Petition does not link each element of the claim to a particular disclosure or structure in the reference on which Petitioners rely. Specifically, it is unclear which portion of Resterhouse, in Petitioners’ theory, discloses a “transferring assembly” and which portion discloses an “apparatus.” The Petition’s analysis of limitations that include those elements simply reproduces selected excerpts of Resterhouse without linking the structures described in the excerpts to each element of the claim. See Pet. 13–18.” slip op. at 15
- BurdenDenied
“as to which portions of Resterhouse Petitioners rely on as teaching each element of claim 1. The rules governing this proceeding require that a petition “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). As the Federal Circuit has recently indicated, “[t]he Board is not free to disregard its own regulations.” Perfect Surgical Techniques, Inc. v. Olympus America, Inc., __ F.3d __, 2016 WL 6694956 at *1 (Fed. Cir. Nov. 15, 2016). The Federal Circuit has also emphasized the need, in AIA proceedings, for petitioners to articulate their challenges with specificity in their initial petitions. See Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ 35 U.S.C. § 312(a)(3). . . . Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.”). In this case, the Petition’s arguments concerning claim 1 fall short of the requirements of § 42.104(b)(4) because the Petition does not link each element of the claim to a particular disclosure or structure in the reference on which Petitioners rely. Specifically, it is unclear which portion of Resterhouse, in Petitioners’ theory, discloses a “transferring assembly” and which portion discloses an “apparatus.” The Petition’s analysis of limitations that include those elements simply reproduces selected excerpts of Resterhouse without linking the structures described in the excerpts to each element of the claim. See Pet. 13–18.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We also agree with Patent Owner that Petitioners have not shown why it would be obvious, based on the disclosures of Sugihara and Hiramoto, for a transferring assembly to simultaneously remove a single pouch and a single spout. We note that in both references, pouch and spout removal are sequential, not simultaneous. Further, Petitioners do not explain what modifications would be made to either reference to accomplish simultaneous removal, nor do Petitioners provide a persuasive reason why a skilled artisan would make such a modification.” slip op. at 23
§ 103 obviousnessPatents in suitUS 7,648,017 - Katun Corporation v. Toshiba Tec Corporation And Toshiba America Business Solutions, Inc.Institution deniedPTAB · Dec 7, 2016 · IPR2016-01149 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because petitioner did not show a reasonable likelihood of proving claims 1, 3, or 11 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons explained below, we are not persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its asserted ground.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“state an intended use or that the claims define a structurally complete invention without the image forming apparatus. “A claim’s preamble may limit the claim when the claim drafter uses the preamble to define the subject matter of the claim.” August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284 (Fed. Cir. 2011); see Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[W]hen the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects.”). The preamble generally is construed to be limiting if it “recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1305 (Fed. Cir. 2005) (quoting Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). “For example, the preamble may be construed as limiting when it recites particular structure or steps that are highlighted as important by the specification.” Proveris Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1372 (Fed. Cir. 2014). “Additionally, ‘[w]hen limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.’” Id. (citing NTP, 418 F.3d at 1306).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“process parameters.” The specification of the ’091 patent defines this claim term: “The image formation parameter means set values for the operations of the photoconductive drum 11a, the developing device 13a, the cleaner 16a, the charger 17a, and the fixing device 19 performing the printing operation.” Ex. 1001, 4:4–7. Examples of these set values include “charging voltage values of the charger 17a for the printing operation and the like.” Id. at 4:12–15.” slip op. at 9
- BurdenNot shown unpatentable
“We are unpersuaded by Petitioner’s argument. As discussed above, we construe “image formation process parameters” to mean “set values for controlling the operation of the printing components of the image forming apparatus.” While Best’s operating data may be stored on the chip card of the toner container, they are not set values. Best explains that the operating data include toner type and counter reading. Ex. 1010, 8:1–2. Referring to Figure 6, Best further explains that, “in Step S7, specific electrophotographic values such as a value KW for the setting of the contrast are then set dependent on the identified toner type.” Id. at 9:39–42 (emphasis added), Fig. 6. Moreover, Figure 6 of Best shows that step S7 – setting electrophotographic values – takes place in a control panel process controller (or PC-control panel), which is a part of the printer, not the toner container. Id. at Figs. 4–6. Thus, as Patent Owner points out, “the memory on the toner container of Best does not contain [the recited] ‘image formation process parameters.’” Prelim. Resp. 36.” slip op. at 12
Claim constructionPatents in suitUS 8,554,091 - Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentablePTAB · Dec 7, 2016 · PGR2015-00013 · APJ Kevin F Turner · PGR · Final written decision
Claims 1–4, 7–19 were held unpatentable as obvious; claims 5, 6, and 20 were not shown unpatentable over Reinhold, Walters, and Dudovich.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10; Dec. 8. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8. Second, we found the existence of common directors or employees between American Securities and Petitioner to be insufficient to show a real party-in-interest issue, unless the directors controlled or participated in the filing of the proceedings. Discovery Order 9. We found insufficient evidence that common officers between the American Securities and Petitioner were involved in the filing of the present proceedings or had the ability to direct the filing of the present proceedings. Discovery Order 9. Nor did we find persuasive evidence that American Securities provided any prior art to Petitioner in the instant proceedings. Discovery Order 9.” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
- ExcludeMotion to exclude, deniedDenied
“Patent Owner’s motion to exclude Exhibits 1013, 1014 and 1015 is denied. As Patent Owner points out, 37 C.F.R. § 42.6(a)(3) indicates that “[a]rguments must not be incorporated by reference from one document into another document.” We are not persuaded, however, that Petitioner is attempting to incorporate by reference; Exhibits 1013, 1014, and 1015 are cited by Petitioner’s declarant, not incorporated by reference. If Petitioner’s declarant or the cited exhibits contained arguments not made in a paper, we would likely ignore such arguments. In this instance, Petitioner is making of record the documents cited, which is generally laudatory, so that a reader can determine for herself that cited facts are supported. We are not persuaded that the cited exhibits are “irrelevant.” Additionally, we find no support for Patent Owner’s contention that exhibits must be cited by “papers,” and not other exhibits. Many exhibits, such as declarations, prior art references, and deposition transcripts, cite to other exhibits in normal trial practice. Accordingly, Patent Owner’s Motion to Exclude Exhibits 1013, 1014, and 1015 is denied.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s declarant, Mr. Frank Koperda, testifies that one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least 2–5 years of academic or industry experience in the telecommunications industry. Ex. 1002 ¶ 19; see Pet. 5 (asserting level of ordinary skill in the art). Patent Owner’s declarant, Mr. Stuart J. Lipoff, largely adopts Mr. Koperda’s level of ordinary skill in the art, adding that such artisans should have experience “in the generation of billing statements or cost accounting reports.” Ex. 2012 ¶ 33. We are not persuaded that such billing or accounting experience is necessary “to fully understand the ’280 patent disclosure.” Id. Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1003, 1007, 1006, 1008), we also adopt the level of ordinary skill in the art employed by Petitioner’s declarant, where Patent Owner’s declarant acknowledges that his analysis would be the same under Mr. Koperda’s level of ordinary skill in the art. Ex. 2012 ¶ 34.” slip op. at 23
Patent outcomesUS 8,855,280 mixedClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,855,280 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCNo claims unpatentablePTAB · Dec 7, 2016 · IPR2015-01367 · APJ Matthew R Clements · IPR · Final written decision
Claims 1–3, 6–9, and 12–14 were not shown unpatentable because Reed and Mahany did not teach interleaving S-blocks to form packet blocks, and Webb did not cure that deficiency.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The ’831 patent equates “encoding” with interleaving several times. The ’831 patent discloses, for example, that “[p]ackets are encoded into packet blocks by first interleaving the packets together in a register. The interleaved packet block is then transmitted to the receiver. Because the packets are interleaved, a single burst error is dispersed over multiple packets.” Ex. 1001, 2:34–35 (emphasis added). In the detailed description of transmitter 20, an outgoing message is “transferred to a register 96/98,” which “interleaves a message into a large packet block size.” Id. at 4:10–13 (emphasis added). Figure 9 of the ’831 patent, which “is a schematic diagram of a transmitter register used for encoding packets into a variable sized packet block” (id. at 3:18–20) (emphasis added), discloses the use of interleaving as the block coding technique (id. at 6:24–25 (“FIG. 9 shows a diagram for a block coding technique (interleaving) according to the invention . . . .”)). See also id. at Figs. 10, 11, 6:49–65. Also, the ’831 patent describes the point of novelty as “varying the number of bytes in each packet interleaved together according to receiver speed.” Id. at 6:66–7:2 (emphasis added); see also id. at 7:5–30. We, therefore, agree that the proper construction of “encoding packets into packet blocks” is “forming blocks by interleaving packets together.”1” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“’831 patent as performing the recited function to be the CPU performing one of the algorithms identified by Petitioner. Inst. Dec. 8–9. Patent Owner argues that the function is “performed by ‘memory/CPU,’ and not just the CPU alone.” PO Resp. 16–17 (citing Ex. 1001, Figs. 16–18, 8:16–31). The ’831 patent discloses that “[a] memory and CPU 108 determines the appropriate packet block size for the current car travel speed from signal 70.” Ex. 1001, 7:67–8:2 (emphasis added). “The packet block size is determined by reading prestored packet block size values in memory 108.” Id. at 8:3–4 (emphasis added). According to the ’831 patent, “the travel speed received from signal 70 is used as an address to read the memory location containing the appropriate packet block size value.” Id. at 8:5–8 (emphasis added). “The message from receiver/register 102 and the packet block size value determined in memory/CPU 108 are both input to a register 106.” Id. at 8:10–12 (emphasis added). We are persuaded, therefore, that the structure disclosed in the ’831 patent as performing the recited function is not only the CPU, but also the memory, performing one of the algorithms identified by Petitioner.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“subsequent to institution, that “encoding packets into packet blocks” means “forming blocks by interleaving packets together,” a construction which we have adopted. Accordingly, we revisit whether the combination of Reed and Mahany teaches “encoding packets into packet blocks,” as recited in independent claim 1, and “an encoder for combining and varying the number of packets transmitted in each of the packet blocks,” as recited in independent claim 9.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Nevertheless, even assuming that Reed uses “blocks of data” to include S-blocks, we find that Reed’s teaching of “interleaving two or more blocks of data within each packet of data” (Ex. 1006, 2:63–68) is ambiguous and should not be read so broadly when Reed is considered as a whole. Petitioner would like us to interpret the sentence to mean interleaving the data from a first block of data (i.e., S-block) in a packet with data from a second block of data (i.e., S-block) in the packet—i.e., “interleaving two or more blocks of data [with each other] within each packet of data.” However, an equally plausible interpretation is that it means “interleaving [the data within each of] two or more blocks of data within each packet of data.” In other words, interleaving the data within a packet’s first block of data (i.e., R-blocks interleaved in a first S-block) and, separately, interleaving the data within the packet’s second block of data (i.e., R-blocks interleaved in the second S-block). In the latter interpretation, no data from the first block of data (i.e., S-block) are interleaved with data from the second block of data (i.e., S-block). We find that only this latter interpretation is supported by Reed’s disclosure. For example, in Figure 4, Reed discloses interleaving the data within S-blocks in a packet of data, but not interleaving the data between S-blocks. Ex. 1006, 3:20–22, Fig. 4. Reed further discloses employing an “interleaving scheme . . . over each S-block (690 bits), FIG. 4.” Id. at 4:39–41 (emphasis added). Reed similarly claims “concatenating two or more blocks of data and interleaving the bits of the data in each block.” Id., claim 6 (emphasis added). We find no similar support for Petitioner’s interpretation of Reed. Given the lack of support for Petitioner’s interpretation in the rest of the disclosure in Reed, we are not persuaded that a person of ordinary skill in the art, reading this ambiguous sentence in the Summary of Invention of Reed, would have understood it to be teaching interleaving one of Reed’s S-blocks with another of Reed’s S-blocks.” slip op. at 17
Patent outcomesUS 5,602,831 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 5,602,831 - Polygroup Limited v. Willis Electric Co., Ltd.Rehearing deniedPTAB · Dec 6, 2016 · IPR2016-00802 · APJ William V Saindon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting inter partes review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Specifically for rehearing requests of decisions on institution, “a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Patent Owner’s second argument for rehearing involves the discretion we have under 35 U.S.C. § 325(d) not to institute review if “the same or substantially the same prior art or arguments previously were presented to the Office.” In our Decision, we declined to exercise our discretion to deny. Dec. on Inst. 14. One factor behind our decision that we highlighted was that the grounds asserted against the ’186 patent were going forward already in a related proceeding (namely, the grounds in IPR2016-00802) against a very similar patent. Id. As such, we saw little substantive burden in proceeding on the merits. Id. Further, denying institution here causes additional inefficiencies, as it leaves to the district court issues that we are going to resolve on a closely related patent. Id. Patent Owner points to other cases having different facts in which petitions were denied. See Req. Reh’g 9–11. Different facts will give different results, especially in a multi-factor test such as that involved in § 325(d). Patent Owner does not address any facts that would make us reconsider our Decision. Patent Owner then points out that more cases were filed against it after this particular proceeding was filed (Req. 11–14); this is immaterial as to our decision regarding this proceeding. See 35 U.S.C. § 325(d) (referring to “prior art or arguments [that] previously were presented to the Office”) (emphasis added).” slip op. at 3
- Strike new argumentDecided for petitioner
“Patent Owner’s first argument for rehearing is directed to whether the Petition provided sufficient notice to Patent Owner regarding the basis of the unpatentability challenge. Req. 2–7. Patent Owner argues that Petitioner’s ground was to modify one reference with another as a “wholesale” slip op. at 2
Discretionary denialPatents in suitUS 9,044,056 - Polygroup Limited v. Willis Electric Co., Ltd.Rehearing deniedPTAB · Dec 6, 2016 · IPR2016-00801 · APJ William V Saindon · IPR · Rehearing
The Board denied Willis Electric’s rehearing request, leaving institution in place because it found no abuse of discretion in its notice analysis or decision not to deny under § 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Specifically for rehearing requests of decisions on institution, “a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“we have under 35 U.S.C. § 325(d) not to institute review if “the same or substantially the same prior art or arguments previously were presented to the Office.” In our Decision, we declined to exercise our discretion to deny. Dec. on Inst. 14. One factor behind our decision that we highlighted was that the grounds asserted against the ’186 patent were going forward already in a related proceeding (namely, the grounds in IPR2016-00802) against a very similar patent. Id. As such, we saw little substantive burden in proceeding on the merits. Id. Further, denying institution here causes additional inefficiencies, as it leaves to the district court issues that we are going to resolve on a closely related patent. Id. Patent Owner points to other cases having different facts in which petitions were denied. See Req. Reh’g 9–11. Different facts will give different results, especially in a multi-factor test such as that involved in § 325(d). Patent Owner does not address any facts that would make us reconsider our Decision. Patent Owner then points out that more cases were filed against it after this particular proceeding was filed (Req. 11–14); this is immaterial as to our decision regarding this proceeding. See 35 U.S.C. § 325(d) (referring to “prior art or arguments [that] previously were presented to the Office”) (emphasis added).” slip op. at 3
Discretionary denialPatents in suitUS 8,454,187
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.