- Fisher & Paykel Healthcare Limited v. Resmed LimitedSome claims unpatentablePTAB · Oct 23, 2018 · IPR2017-00501 · APJ James J Mayberry · IPR · Final written decision
Claims 61–64 are unpatentable under § 103; claims 1–60, 65, and 66 were not shown unpatentable under § 103.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(Paper 1, “Pet.”) requesting inter partes review of claims 1–66 (the “Challenged Claims”) of U.S. Patent No. 9,027,556 B2 (Ex. 1001, the “’556 patent”). Patent Owner, ResMed Ltd. (“ResMed”), filed a Preliminary Patent Owner Response to the Petition. Paper 7 (“Prelim. Resp.”). We instituted trial on claims 61–64 and 66 only. See Paper 8 (“Dec. on Inst.” or “Institution Decision”), 42–43 (instituting trial on claims 61–64 and 66 on four of the twelve asserted grounds); cf. Pet. 9–10 (listing the twelve asserted grounds).” slip op. at 2
- BurdenOther
“D. Asserted Grounds of Unpatentability In inter partes reviews, a petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in this proceeding, Fisher must support its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Accordingly, all of our findings and conclusions are based on a preponderance of the evidence.” slip op. at 27
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petition, how Barnett teaches using a different material that is more rigid than silicone for neck 46 and ribs 56. The Petition lays out certain factual statements, but draws no conclusion from those statements, leaving us to somehow connect the dots.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMixed
“patent . . . that claims as innovation the combination of two known devices according to their established functions.” KSR Int’l Co., 550 U.S. at 418. Importantly, “obviousness must be determined in light of all the facts, and . . . a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (emphasis added); see also Winner Int’l, 202 F.3d at 1349 n.8 (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Accordingly, we weigh Fisher’s and ResMed’s evidence with respect to whether a person having ordinary skill in the art would have been motivated to modify Barnett with Ogden’s teaching of a main body of a cushion module using a material that is more” slip op. at 45
Patent outcomesUS 9,027,556 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,027,556 - Samsung Electronics Co., Ltd. v. Promos Technologies, Inc.All claims unpatentablePTAB · Oct 22, 2018 · IPR2017-01412 · APJ Jameson Lee · IPR · Final written decision
Claims 10 and 11 are unpatentable as obvious over Donnelly and Iwamoto; claims 13 and 15 are unpatentable as anticipated by Jefferson.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art at the time of the alleged invention of the ’507 patent “would have had at least a bachelor’s degree in electrical engineering or a similar field, and at least two to three years of experience in integrated circuit design. (Ex. 1002, ¶¶ 18– 19.)” Pet. 5 (footnote omitted). Patent Owner has not expressed what constitutes the level of ordinary skill in the art. We find Petitioner’s proposal vague insofar as it includes the qualifier “at least” to describe the level of education and the amount of working experience. This qualifier results in ranges that are too broad to provide a meaningful indication of what knowledge and skills would have been possessed by one of ordinary skill in the art. We adopt the level of skill in the art proposed by Petitioner, as we credit the testimony of Petitioner’s declarant in that regard (Ex. 1002 ¶ 18), but eliminate the qualifier “at least” to eliminate vagueness. C.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Petitioner asserts that while Donnelly explains the functionality and general operation of its up/down counter, it does not provide any structural detail of the internal components of the counter, that Iwamoto discloses a shift register in a delay locked loop that has the same functionality as the up/down counter of Donnelly in a delay locked loop, and that Iwamoto discloses the structure of the shift register. Pet. 38. These assertions are supported by the testimony of Dr. Baker. Ex. 1002 ¶ 108. We credit Dr. Baker’s testimony and give it substantial weight. Petitioner explains that one of ordinary skill in the art would have looked to Iwamoto for the implementation details regarding a circuit having the functionality of Donnelly’s up/down counter to realize a functional implementation of a delay locked loop incorporating the functionality disclosed in Donnelly. Pet. 38. That assertion also is supported by the testimony of Dr. Baker. Ex. 1002 ¶ 109. Petitioner explains Therefore, just as the state (count value) of the up/down counter 620 in figure 5 of Donnelly selects the tap used to provide the output signal from the delay block 500, the state (location of the HIGH value) of the shift register 4 in figure 17 of Iwamoto selects the tap used to provide the output from the delay line 2. (Ex. 1002, ¶ 117.) Similarly, the phase detector 610 instructs the up/down counter 620 in figure 5 of Donnelly to count up or down based on the phase comparison it performs, while the phase comparator 610 in figure 17 of Iwamoto instructs the shift register 4 to shift UP or DOWN based on its phase comparison. (Id.) The change of state for both references as a result of the up/down indication form the respective phase comparisons by one increment. (Id.) Pet. 42–43. The explanation is supported by the testimony of Dr. Baker. Ex. 1002 ¶ 117. We credit Dr. Baker’s testimony and give it substantial weight.” slip op. at 42
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“The words of the claim are clear in not specifying which signal leads or lags, and there is no express disavowal by Patent Owner, either in the Specification or in the prosecution history, as will be explained below. We must not rewrite the claim to add the requirement proposed by Patent Owner. The Specification of the ’507 patent describes, When the second phase detector 30 determines that CKF [feedback clock signal] is more than 180◦ behind CKI [input clock signal], the second phase detector 30 controls switch 28 to be at position (2). The inverted buffered clock signal is thus selected, so that the input clock signal CKI is reversed by 180◦[.] Through the inversion, the phase difference needing to be compensated by the delay line 16' is made less than 180◦ and within the normal operation capabilities of the phase adjusting loop formed by phase detector 12, shift register 14', and delay line 16'. Ex. 1001, 3:7–15.10 The above-quoted description constitutes an affirmative disclosure of one embodiment, and not a disavowal of anything that is different. Elsewhere in the Specification, there also is no clear language of disavowal.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“We disagree that for “according to the determining step” to have any meaning, Patent Owner’s proposed claim construction must be adopted. Rather, we find substantial meaning in “according to the determining step” without adding the non-inverted clock signal and the inverted clock signal as potential sources to the switch as proposed by Patent Owner. A different switch position is selected depending on the outcome of the determining step. We do not find that reading to be without meaning. As for the “inventive concept” and “fundamental purpose” assertions of Patent Owner, they go about the claim interpretation process in a reverse manner, by starting with the patent disclosure first, and then ensuring, are added to the claims under the name of claim interpretation. That is inappropriate. We must respect the language of the claims. It is a “bedrock principle” of patent law that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Innova, 381 F.3d at 1115; see also Vitronics, 90 F.3d at 1582 (“we look to the words of the claims themselves . . . to define the scope of the patented invention”); Markman, 52 F.3d at 980 (“The written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of claims.”). Phillips, 415 F.3d at 1312. “We do not read limitations from the specification into claims; we do not redefine words. Only the patentee can do that.” Thorner, 669 F.3d at 1366–67. The Federal Circuit has explained,” slip op. at 23
Patent outcomesUS 6,069,507 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,069,507 - Samsung Electronics Co., Ltd. v. Promos Technologies, Inc.All claims unpatentablePTAB · Oct 22, 2018 · IPR2017-01413 · APJ Jameson Lee · IPR · Final written decision
Claims 10, 11, 13, and 15 are unpatentable as anticipated by Kim because Kim discloses each limitation of the challenged claims.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner
“The words of the claim are clear in not specifying which signal leads or lags, and there is no express disavowal by Patent Owner, either in the Specification or in the prosecution history, as will be explained below. We must not rewrite the claim to add the requirement proposed by Patent Owner.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We disagree that for “according to the determining step” to have any meaning, Patent Owner’s proposed claim construction must be adopted. Rather, we find substantial meaning in “according to the determining step” without adding the non-inverted clock signal and the inverted clock signal as potential sources to the switch as proposed by Patent Owner. A different switch position is selected depending on the outcome of the determining step. We do not find that reading to be without meaning.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Pet. 26–28. The explanation is supported by the testimony of Dr. Baker. Ex. 1002 ¶¶ 72–73. We credit Dr. Baker’s testimony and give it substantial weight. Notwithstanding Patent Owner’s arguments to the contrary, discussed below, we are persuaded by Petitioner’s showings, summarized above, that Kim discloses “maintaining the phase difference between the input clock signal and the feedback clock signal within approximately 180◦.”” slip op. at 34
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“understand the term.” Ex. 2002 ¶ 28. We do not credit that testimony, because Mr. Gervasi does not adequately explain why the plain claim language of “selecting a switch position according to the determining step” should be read restrictively to require a selection between non-inverted and inverted input cock signals. As discussed above, it is claims which define the scope of an invention, not the Specification.” slip op. at 28
Patent outcomesUS 6,069,507 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 6,069,507 - Fujifilm Corporation v. Sony CorporationNo claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,029,774 - Cherwell Software, LLC v. BMC Software, Inc.Institution deniedPTAB · Oct 19, 2018 · IPR2018-00980 · APJ Jean R Homere · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over Leung under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A petition for inter partes review must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence,” must identify “where each element of the claim is found in the prior art patents or printed publications relied upon,” and must “identify[] specific portions of the evidence that support the challenge.” 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the 17 challenge.” 37 C.F.R. § 42.104(b)(5). Petitioner’s description of Leung and unexplained quotations from Leung in its claim chart fail to meet these requirements.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). In that regard, Petitioner’s Declarant, Dr. Weissman, testifies that a person with ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science or computer engineering, or in a related field, and approximately two [to] three 8 years of experience in industry with respect to software design and computer systems.” Ex. 1004 ¶ 34. Further, Petitioner contends that the level of ordinary skill could have varied somewhat so as to allow industry experience and education to compensate for each other. Pet. 9–10. Patent Owner does not proffer a suggested level of skill for the ordinary artisan. On this record, we observe that Petitioner’s undisputed assessment of a person of ordinary skill in the art appears to be consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Therefore, for purposes of this Decision, we adopt Petitioner’s assessment.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes constructions for claim terms (1) “object,” (2) “overlaid object,” and (3) “dictionary.” Pet. 10–13. Patent Owner characterizes the proposed claim constructions as being “irrelevant” to the merits of the present challenge. Prelim. Resp. 7. Further, Patent Owner disputes Petitioner’s proposed claim constructions as unduly narrow, but declines to offer alternative claim constructions and does not base any of the arguments in its Preliminary Response on its construction of the claims. Id. at 10–16. We conclude that no claim interpretation is necessary to determine whether to institute a trial in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citations omitted)).” slip op. at 8
Claim constructioncites KSR · GrahamPatents in suitUS 9,363,252 - Cherwell Software, LLC v. BMC Software, Inc.Institution deniedPTAB · Oct 19, 2018 · IPR2018-00978 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because Cherwell did not show a reasonable likelihood that claims 1–20 were unpatentable over Leung under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner primarily refers to client application 300, but also mentions “an application (e.g., a formset)” and refers in various places in its claim chart to master formset 18 and client formset 12. See Pet. 15–26. A petition for inter partes review must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence,” must identify “where each element of the claim is found in the prior art patents or printed publications relied upon,” and must “identify[] specific portions of the evidence that support the challenge.” 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). Petitioner’s general description of Leung and unexplained quotations from Leung in its claim chart fail to meet these requirements.” slip op. at 15
- BurdenDenied
“Petitioner primarily refers to client application 300, but also mentions “an application (e.g., a formset)” and refers in various places in its claim chart to master formset 18 and client formset 12. See Pet. 15–26. A petition for inter partes review must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence,” must identify “where each element of the claim is found in the prior art patents or printed publications relied upon,” and must “identify[] specific portions of the evidence that support the challenge.” 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). Petitioner’s general description of Leung and unexplained quotations from Leung in its claim chart fail to meet these requirements.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103(a)). Petitioner argues that a person of ordinary skill in the art at the time of the ’652 patent would have had “a bachelor’s degree in computer science or computer engineering, or in a related field, and approximately two or three years of experience in industry with respect to software design and computer systems.” Pet. 10 (citing Ex. 1004 ¶ 33). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on the record presented, including our review of the ’652 patent and the types of problems and solutions described in the ’652 patent and cited prior art, we agree with Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 9
Nonecites KSR · GrahamPatents in suitUS 8,832,652 - Nokia Of America Corporation v. Blackberry Ltd.Rehearing deniedPTAB · Oct 19, 2018 · IPR2018-00583 · APJ Aaron W Moore · IPR · Rehearing
The Board denied Nokia’s rehearing request, leaving institution denied for claims 5–17 because Cherian did not disclose the claimed antenna configuration information for the second or third component carrier.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Because Petitioner has not shown that we abused our discretion in denying institution, the Request for Rehearing is denied. 1 37 C.F.R. § 42.108(c) provides that “a genuine issue of material fact created by . . . testimonial evidence will be viewed in the light most favorable to the petitioner . . . for purposes of deciding whether to institute an inter partes review.” This does not require that we institute whenever there is conflicting testimony, or that every fact issue be resolved in the petitioner’s favor. We only need view the issue in the light most favorable to the petitioner. We did so here.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“. . . to ‘the number of Nxcarriers,’ constituting the number of data traffic channels” and that “[e]ach different channel . . . requires . . . a separate antenna port.” Ex. 1008 ¶ 85. This means that the NxParamsCount field would reflect the number of antennas/ports used for all data channels, not “antenna configuration for the second component carrier,” as recited in claims 1 and 14, or “antenna configuration for the third component carrier,” as recited in claim 14. For example, if there were four data channels, the NxParamsCount field would be set to four, even though, according to Dr. Min, the “second component carrier” and “third component carrier” would each have only one antenna. There is no genuine issue of fact warranting institution because we find Petitioner’s evidence insufficient even if we accept it as true.1 IV. CONCLUSION We denied institution because we found Petitioner failed to show how Cherian’s NxParamsCount value discloses “antenna configuration information”––including a number of ports/antennas––for “the second component carrier” or the “third component carrier.” Further review of the Petition and the Min Declaration, in light of Petitioner’s Rehearing Request, does not lead us to a different conclusion.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“ports” from the broadest reasonable interpretation of “antenna configuration,” “misapprehended or overlooked Nokia’s arguments that an ‘antenna configuration’—i.e., ‘information regarding how the antenna is configured’—encompasses a number of antenna ports,” and “[i]n particular, . . . misapprehended or overlooked Nokia’s presentation of the ’772 Patent’s specification, which states that a number of antenna ports constitutes an ‘antenna configuration.’” Req. Reh’g 1–2, 6. We did not, however, exclude the number of ports from the broadest reasonable interpretation of “antenna configuration.” Instead, we found that, “[b]y Petitioner’s own admission, what is included in the NxParamsCount field is ‘the number of Nxcarriers,’ not antenna configuration information.” Decision 10. In other words, the skilled artisan would have understood––again, as Nokia acknowledges––that the NxParamsCount field specifies the number of carriers, not information about the antenna configuration information, including a number of antennas or ports. We further found “[t]he fact that the number of channels might be used to glean information about the number of antennas does not mean that the message includes ‘information regarding how the antenna is configured,’” even if the number of antennas happens to be the same as the number of channels, as Nokia alleges. Id. Because the field identifies the number of carriers, not a number of antennas or ports, we concluded that Cherian does not disclose each and every element arranged as recited in the claim, as required for anticipation. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“ports” from the broadest reasonable interpretation of “antenna configuration,” “misapprehended or overlooked Nokia’s arguments that an ‘antenna configuration’—i.e., ‘information regarding how the antenna is configured’—encompasses a number of antenna ports,” and “[i]n particular, . . . misapprehended or overlooked Nokia’s presentation of the ’772 Patent’s specification, which states that a number of antenna ports constitutes an ‘antenna configuration.’” Req. Reh’g 1–2, 6. We did not, however, exclude the number of ports from the broadest reasonable interpretation of “antenna configuration.” Instead, we found that, “[b]y Petitioner’s own admission, what is included in the NxParamsCount field is ‘the number of Nxcarriers,’ not antenna configuration information.” Decision 10. In other words, the skilled artisan would have understood––again, as Nokia acknowledges––that the NxParamsCount field specifies the number of carriers, not information about the antenna configuration information, including a number of antennas or ports. We further found “[t]he fact that the number of channels might be used to glean information about the number of antennas does not mean that the message includes ‘information regarding how the antenna is configured,’” even if the number of antennas happens to be the same as the number of channels, as Nokia alleges. Id. Because the field identifies the number of carriers, not a number of antennas or ports, we concluded that” slip op. at 3
Claim construction§ 102 anticipationPatents in suitUS 9,253,772 - Cherwell Software, LLC v. BMC Software, Inc.Institution deniedPTAB · Oct 19, 2018 · IPR2018-00982 · APJ John A Hudalla · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that Hudis, alone or in combinations, taught the required uniquely named hierarchical namespace.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“The parties agree that a “hierarchical namespace” is an arrangement of objects and that the objects are arranged hierarchically. They also agree that the “uniquely addressable” aspect should be included in the construction, but they differ on the specificity with which this concept should be described. We agree with Patent Owner that the construction must include the specification’s express definition of “uniquely addressable.” See Ex. 1001, 1:52–60 (“The term ‘namespace’ generally refers to a set of names in which all names are unique. . . . ‘Uniquely addressable’ refers to the property that items in a namespace have unique names such that any item in the namespace has a name different from the names of all other items in the namespace.”).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“We are persuaded by Patent Owner’s arguments. Petitioner relies on Hudis’s keys for teaching unique naming (see Pet. 18), but Hudis expressly states that a namespace may have two instances with the same key. See Ex. 1005, 9:33–37. This does not comport with our construction of “hierarchical namespace” insofar as one object in the set (i.e., one instance) would not have a different name from all other objects in the set (i.e., the other instance with the same key). See supra § I.G.1. Patent Owner also establishes that certain superclass objects in Hudis may not even have keys, which Patent Owner likens to names. See Ex. 1005, 9:9–12. Without names, such objects cannot meet the unique naming requirements in our construction of “hierarchical namespace.” See supra § I.G.1. In addition, the same teaching cited by Patent Owner states that class objects can inherit keys from a superclass object, which undermines Petitioner’s assertion that a key is unique to an object. See Ex. 1005, 9:9–12. Petitioner has not explained why or how an ordinarily skilled artisan considering Hudis’s use of keys would have understood Hudis as teaching the unique naming of a “hierarchical namespace” consistent with our construction of that term.2” slip op. at 20
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also have considered Dr. Fox’s testimony on Hudis’s teaching that “matching keys are considered to be the same instance within a namespace.” See Ex. 1003 ¶ 135 (quoting Ex. 1005, 9:33–37) (emphasis omitted). Dr. Fox testifies that this teaching resolves the problem of matching keys because “only a single instance object may have a given name (identified by the property designated as a ‘key value’) within a particular namespace.” Id. Yet merely considering two objects to be the same does not demonstrate that the two objects have different names. We do not credit Dr. Fox’s testimony in this regard because it is contradicted by Hudis. Dr. Fox also cites an example from Hudis related to “root/default” (id. (citing Ex. 1005, 8:60–64, 9:22–30)), but the example does not address the existence of two objects having the same name in Hudis. The fact that certain objects in Dr. Fox’s “root/default” example may have unique names does not indicate that all objects in the set have different names from one another, as required by our construction. See supra § I.G.1.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,895,586 - PTAB · Oct 18, 2018 · IPR2018-00701 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied rehearing and left institution denied for claims 1–9 and 12 because the petition did not sufficiently establish motivation to combine Barratt and Calderbank.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs 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. See Star Fruits S.N.C. v. U. S., 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). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R § 42.71(d); accord Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“a combination of Barratt and Calderbank. See DDI 5, 7. Petitioner argued motivation to combine on page 34 of the Petition (Paper 1, “Pet.”) which stated, “while Barratt does not disclose the specific mathematical operations that are performed on the orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode,’ a POSA would have recognized that this spatial signature should be calculated using well-known cross-correlation techniques, such as those described in Calderbank.” Pet. 34. In response to this argument, Patent Owner asserted, “the premise of Petition’s motivation to combine—that Barratt requires calculating spatial signatures from orthogonal training sequences but does not explain how to do so—is not supported by the Petition’s allegations and is instead false.” Paper 8 (Preliminary Response), 15–16. Barratt does not use “orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode.’” See Ex. 1003, 16:31–17:67 (discussing calibration mode using “predetermined calibration signals”); see also id. at 18:50–67 (discussing use of orthogonal training sequences in another “closed loop” embodiment). Barratt does disclose the specific mathematical operations that are used to calculate a remote terminal’s spatial signature in Barratt’s “calibration mode.” See id. at 16:60–17:32. Thus, as we determined in the Decision Denying Institution, the purported gap in the teachings of Barratt that Petitioner relies on as the basis for providing the motivation to combine Calderbank with Barratt does not exist. DDI 10. Institution was denied because we determined Petitioner failed to sufficiently establish a motivation to combine the relevant teachings of the” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“a combination of Barratt and Calderbank. See DDI 5, 7. Petitioner argued motivation to combine on page 34 of the Petition (Paper 1, “Pet.”) which stated, “while Barratt does not disclose the specific mathematical operations that are performed on the orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode,’ a POSA would have recognized that this spatial signature should be calculated using well-known cross-correlation techniques, such as those described in Calderbank.” Pet. 34. In response to this argument, Patent Owner asserted, “the premise of Petition’s motivation to combine—that Barratt requires calculating spatial signatures from orthogonal training sequences but does not explain how to do so—is not supported by the Petition’s allegations and is instead false.” Paper 8 (Preliminary Response), 15–16. Barratt does not use “orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode.’” See Ex. 1003, 16:31–17:67 (discussing calibration mode using “predetermined calibration signals”); see also id. at 18:50–67 (discussing use of orthogonal training sequences in another “closed loop” embodiment). Barratt does disclose the specific mathematical operations that are used to calculate a remote terminal’s spatial signature in Barratt’s “calibration mode.” See id. at 16:60–17:32. Thus, as we determined in the Decision Denying Institution, the purported gap in the teachings of Barratt that Petitioner relies on as the basis for providing the motivation to combine Calderbank with Barratt does not exist. DDI 10. Institution was denied because we determined Petitioner failed to sufficiently establish a motivation to combine the relevant teachings of the” slip op. at 3
§ 103 obviousnessPatents in suitUS 6,611,231 - General Electric Company v. United Technologies CorporationRehearing deniedPTAB · Oct 18, 2018 · IPR2017-00428 · APJ George R Hoskins · IPR · Rehearing
The Board denied GE’s rehearing request, leaving intact its finding that claims 10–14 were not shown unpatentable, including claim 10’s failure under §103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“issue here, the party challenging the decision has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). 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 the proceeding. Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundNot shown unpatentable
“We have reviewed the case law cited in Petitioner’s Request. At most, it establishes that prior art disclosures indicating a given design option would be inoperative or technically infeasible are sufficient to teach away from the design option. See Urbanski, 809 F.3d at 1243 (“[i]f references taken in combination would produce a ‘seemingly inoperative device,’ . . . such references teach away from the combination”) (quoting McGinley, 262 F.3d at 1354); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326–28 (Fed. Cir. 2009) (prior art taught away from a “rigid” pedicle screw in “warn[ing] that rigidity increases the likelihood that the screw will fail within the human body, rendering the device inoperative for its intended purpose”) (emphases added); Orthopedic Equip. Co., Inc. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (obviousness may be defeated if “skilled persons in the art felt that there was some technological incompatibility that prevented [the prior art’s] combination”). The cited case law does not, as Petitioner would have it, establish that such prior art disclosures are necessary to teach away from the design option. See Polaris, 882 F.3d at 1069–70 (on remand, “the Board must analyze whether Denney ‘teaches away’” based on undisputed evidence indicating that adding a fuel tank under Denney’s seats would “rais[e] the center of gravity and render[] the vehicle less stable, which would run contrary to one of Denney’s stated purposes”) (emphasis added)1; Urbanski, 809 F.3d at 1243–44 (“the cited references do not teach away,” because “[n]othing in the prior art teaches that the proposed modification would have resulted in an ‘inoperable’ process or a dietary fiber product with undesirable properties”) (emphases added). Instead, a teaching away requires the prior art merely to criticize, discredit, or discourage pursuit of the design option. See Polaris, 882 F.3d at 1068–70 (Board erred in “fail[ing] to analyze whether Denney ‘teaches away’ . . . by determining whether ‘a person of ordinary skill, upon reading [Denney], would be discouraged from following the path set out in [Denney], or would be led in a direction divergent from the path that was taken by the applicant”) (emphases added); Urbanski, 809 F.3d at 1243–44; DePuy Spine, 567 F.3d at 1327; Reply Br. 8–9; Reh’g Req. 4. For the reasons provided in the Decision, Wendus criticizes, discredits, and discourages using a two-stage high pressure turbine in the Wendus ADP engine. See Dec. 23–30.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“motivation must be found to physically combine the actual embodiments in” Wendus and Moxon. Reh’g Req. 9–10. However, as stated in the Decision and not disputed in Petitioner’s Request, Petitioner’s case for obviousness is premised upon modifying the specific ADP engine disclosed in Wendus. See Dec. 12 n.5 (citing Pet. 59–60, 65, 66–75 and Reply Br. 23–24). Further, the Decision did not require Petitioner to establish that the two-stage high pressure turbine of Moxon could be bodily incorporated into the Wendus ADP engine. See id. at 32–38. Instead, the Decision discussed Petitioner’s failure to provide a persuasive motivation or justification for why a person of ordinary skill in the art, when modifying the Wendus ADP engine to include a two-stage high pressure turbine, would maintain the other claimed parameters within the scope of claim 10. See id. This was especially true concerning the claimed parameters for the low pressure turbine, which is located downstream of the high pressure turbine. Id. at 36–38.” slip op. at 8
§ 103 obviousnesscites KSRPatents in suitUS 8,695,920
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.