• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-01376 · APJ Kerry Begley · IPR · Final written decision

  Claims 1–3, 8, and 15–25 are unpatentable: Pong anticipates claims 1–3, 8, 15, 16, and 25; Pong and Smith render claims 17–24 obvious. Claim 11 is not shown unpatentable.

  RulingsFinal written decision

  • BurdenOther

    “and 37 C.F.R. § 42.73. Having considered the record before us, we determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 8, and 15–25 of the ’121 patent are unpatentable. See 35 U.S.C. § 316(e). Petitioner, however, has not demonstrated by a preponderance of the evidence that claim 11 is unpatentable.” slip op. at 3

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Communications AB, Sony Mobile Communications (USA) Inc., LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics Mobilecomm USA, Inc. (collectively, “Subsequent Petitioners”; and with Initial Petitioners, “Petitioner”) filed a Petition in IPR2015-01376, requesting inter partes review of claims 1–3, 8, 11, 12,3 and 15–25 of the 2 The Petition also lists Samsung Telecommunications America, LLC (“STA”) as a petitioner. Paper 6 (“Pet.”), 1. After the filing of the Petition, however, STA merged with and into Samsung Electronics America, Inc. Paper 10. Thus, STA no longer exists as a separate corporate entity. Id. 3 Subsequent Petitioners represented that they included claim 12 “merely to conform” to the Petition and motion for rehearing of the Institution Decision, regarding claim 12, that was pending before the Board and that if the motion was denied, they requested joinder on “all claims except claim 12.” IPR2015-01376, Paper 3 (“IPR2015-01376 Pet.”), 1 n.1, 33 n.5. Because we denied the motion, we understood Subsequent Petitioners to no longer maintain their challenge of claim 12 and to the extent they did, we determined they had not shown the IPR2015-01376 Petition warranted institution of review of the claim. IPR2015-01376, Paper 12, at 12–15. IPR2015-01376 Pet. Subsequent Petitioners also filed a motion for joinder with this proceeding, which we granted. IPR2015-01376, Papers 4, 12.” slip op. at 2

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “addresses Koster—a prior art U.S. patent of record as Exhibit 1009 that was filed on July 13, 2004 and issued on April 13, 2004—Patent Owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims over the prior art of record. When arguing how the limitations of the proposed substitute claims distinguish them from the disclosures of the references of record, Patent Owner’s Motion addresses Koster only by asserting that “[a]s to . . . Koster . . . , because, as discussed above, all of the substitute claims find support in the [’]347 Application, . . . Koster . . . is not prior art to any of the proposed substitute claims.” Mot. 22. Because Patent Owner does not persuade us that the proposed substitute claims are enabled by the disclosure in the ’347 Application, we find unpersuasive Patent Owner’s suggestion that the proposed substitute claims are entitled to the filing date of the ’347 Application. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“For a patent to claim priority from the filing date of its provisional application, . . . the specification of the provisional must . . . enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”) (internal citation and quotations omitted); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement.”); see also Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (“[If] the 1983 PCT application was . . . not enabled, Novo would not be able to rely upon the application’s priority date to overcome the Brewer patent.”). Accordingly, we also find unpersuasive Patent Owner’s assertion basis for asserting that the proposed substitute claims are patentable over Koster (by itself or in combination with other references of record), we conclude that Patent Owner has not met its burden of demonstrating patentability of the proposed substitute claims over the references of record. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307 (Fed. Cir. 2015) (upholding Board’s requirement that patent owner “show patentable distinction [of the substitute claims] over the prior art of record”); Opp. 1–4. Thus, Patent Owner has not met its burden for proposed substitute claims 26–34.” slip op. at 84

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

    “Decision and maintain in this Decision—in which “states” is not limited to cache coherency states—we determine that Pong’s presence bit vector discloses the recited “probe filtering information” “representative of states associated with selected ones of the cache memories,” where either the write update or the write invalidate protocol is implemented. See Inst. Dec. 7–10; supra § II.B.1.a. First, under this construction, there is no dispute that “states associated with selected ones of the cache memories” includes presence. See Inst. Dec. 9–10; PO Resp. 25 (arguing that Petitioner’s argument that the presence bit vector represents the “state” of presence allegedly is foreclosed only by Patent Owner’s proposed “construction of state as a cache coherence protocol state”); id. at 1–11, 25–27; Reply 15; Ex. 3001, 497–48 (definition of “state”); Ex. 2016 ¶ 87. Nor is there any dispute that the bits in Pong’s presence bit vector represent this state of presence. Pong discloses that when a bit in the presence bit vector is set, the processor that corresponds to the bit “has a copy of the data block,” i.e., a copy of the data block is present. Ex. 1003 ¶ 51. Accordingly, we agree with Petitioner that in both the write update and write invalidate protocols, a set bit represents the state of presence of a cached copy of the data block in a” slip op. at 42

  Patent outcomesUS 7,296,121 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-00163 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 4–6 and 19–24 are unpatentable over Koster and Koster with Smith, respectively; claims 11 and 12 were not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner

    “evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11

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

    “The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24

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

    “reasonable likelihood of prevailing on this proposed ground of unpatentability. Inst. Dec. 19–24. We have reviewed Petitioner’s anticipation arguments and supporting evidence, including Koster’s disclosure, the detailed arguments appearing on pages 31–38 of the Petition, and the testimony of Dr. Horst. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, which we also have considered, Petitioner has shown, by a preponderance of the evidence, that each of claims 4–6 is unpatentable under 35 U.S.C. § 102 as anticipated by Koster. Petitioner, however, has not shown, by a preponderance of the evidence that Koster anticipates claims 11 and 12.” slip op. at 27

  Patent outcomesUS 7,296,121 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-00159 · APJ Kerry Begley · IPR · Final written decision

  Claims 1–3, 8, and 15–25 are unpatentable: Pong anticipates claims 1–3, 8, 15, 16, and 25, and Pong and Smith render claims 17–24 obvious; claim 11 was not shown unpatentable.

  RulingsFinal written decision

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

    “Electronics Co. Ltd., Samsung Electronics America, Inc.,2 and Amazon.com, Inc. (collectively, “Initial Petitioners”) filed a Petition requesting inter partes review of claims 1–3, 8, and 11–25 of U.S. Patent No. 7,296,121 B2 (Ex. 1001, “the ’121 patent”). Pet. Pursuant to 35 U.S.C. § 314(a), we determined the Petition showed a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of claims 1–3, 8, 11, and 15–25, and instituted an inter partes review of these claims. Paper 12 (“Inst. Dec.”). We, however, did not institute review of claims 12–14, because we determined the Petition did not show a reasonable likelihood that Petitioner would prevail with respect to these claims. Id. at 23–30.” slip op. at 2

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

    “Dr. Horst’s testimony that as a result, from the perspective of the presence bit vector, “every processor indicated as storing a copy of the memory line in its cache is storing a valid copy.” Ex. 1014 ¶ A-11; see Pet. 26–27. In other words, as Dr. Horst testifies, “because a write update protocol always updates caches to keep them valid,” “when a cache line is present[,] it is necessarily valid.” Ex. 1025 ¶ 23; see Reply 17–18. Indeed, Dr. Oklobdzija agrees that because the write update protocol “force[s the caches] to update their value for a cache line every time it changes”—as Pong discloses— “every processor that has the cache line will have the line in a valid state.” Ex. 2016 ¶ 90 (emphasis added); Ex. 1003 ¶ 48; see also Tr. 115:1–23 (Patent Owner conceding that in a write update protocol, any cached copies could be “considered . . . to be valid” because they are “kept usable” and “updated”). Accordingly, based on Pong’s disclosures, as well as the explanatory testimony of Dr. Horst in addition to Dr. Oklobdzija, we determine that in the write update protocol, a set bit in Pong’s presence bit vector represents that the corresponding cached copy is present and valid.” slip op. at 44

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

    “2. OBVIOUSNESS OVER PONG AND SMITH We turn to the instituted obviousness ground alleging that claims 17–” slip op. at 73

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “addresses Koster—a prior art U.S. patent of record as Exhibit 1009 that was filed on July 13, 2004 and issued on April 13, 2004—Patent Owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims over the prior art of record. When arguing how the limitations of the proposed substitute claims distinguish them from the disclosures of the references of record, Patent Owner’s Motion addresses Koster only by asserting that “[a]s to . . . Koster . . . , because, as discussed above, all of the substitute claims find support in the [’]347 Application, . . . Koster . . . is not prior art to any of the proposed substitute claims.” Mot. 22. Because Patent Owner does not persuade us that the proposed substitute claims are enabled by the disclosure in the ’347 Application, we find unpersuasive Patent Owner’s suggestion that the proposed substitute claims are entitled to the filing date of the ’347 Application. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“For a patent to claim priority from the filing date of its provisional application, . . . the specification of the provisional must . . . enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”) (internal citation and quotations omitted); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement.”); see also Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (“[If] the 1983 PCT application was . . . not enabled, Novo would not be able to rely upon the application’s priority date to overcome the Brewer patent.”). Accordingly, we also find unpersuasive Patent Owner’s assertion basis for asserting that the proposed substitute claims are patentable over Koster (by itself or in combination with other references of record), we conclude that Patent Owner has not met its burden of demonstrating patentability of the proposed substitute claims over the references of record. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307 (Fed. Cir. 2015) (upholding Board’s requirement that patent owner “show patentable distinction [of the substitute claims] over the prior art of record”); Opp. 1–4. Thus, Patent Owner has not met its burden for proposed substitute claims 26–34.” slip op. at 84

  Patent outcomesUS 7,296,121 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-01353 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 4–6 are unpatentable as anticipated by Koster, claims 19–24 are unpatentable as obvious over Koster and Smith, and claims 11–12 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “For the reasons discussed below, however, despite the arguments and evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11

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

    “The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner fails to proffer evidence sufficient to rebut Patent Owner’s evidence that Koster’s disclosure of a microprocessor does not necessarily disclose that the microprocessor is programmed. Dr. Horst, in his original declaration, asserts that “a requesting microprocessor must be programmed to complete a memory transaction after receiving a first number of responses to a first data request.” Ex. 1014 ¶¶ D-17–D-18. This assertion, however, is conclusory, and does not sufficiently explain why the microprocessor must be programmed or exclude possibilities other than programming. See id.; PO Resp. 27. In particular, Dr. Horst’s original declaration testimony provides no discussion or explanation as to whether a microprocessor composed solely of hardwired logic would necessarily be programmed and whether the functionality described in Koster could not be implemented using hardwired logic. See Ex. 1014 ¶¶ D-17–D-18; PO Resp. 27.” slip op. at 34

  Patent outcomesUS 7,296,121 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• JDS Uniphase Corporation v. Fiber, LLCSome claims unpatentable
  PTAB · Dec 5, 2014 · IPR2013-00318 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 1, 53–66, 69, and 71–74 are unpatentable; claims 67, 68, and 70 are not shown unpatentable. The contingent motion to amend is denied.

  RulingsFinal written decision

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

    “As discussed on our Decision to Institute (Dec. 7–8), we conclude that Patent Owner’s proposed definition of “optical beam” imports improperly a limitation into the claims. The claims themselves do not recite “communications.” Likewise, the ’917 patent Specification does not indicate that “optical beam” is limited to a communications beam, such that it would exclude a YAG laser beam, for example. As noted by Patent Owner, the Specification states that the “invention relates generally to optical switching and more particularly to non-electrical switching of laser communication signals.” Ex. 1001, 1:12–14. In other words, the Specification indicates that communication signals may be a preferred embodiment of the recited “optical beam,” but the claim phrase is not limited to that particular embodiment. See also Ex. 1011, 95:23–96:4 (testimony of Patent Owner’s witness, Dr. David A. Smith, stating that the Specification describes a system that “could switch [a] non-communication beam”); Reply 4. Patent Owner’s proposed dictionary meanings of the terms “transmit,” as relevant to “transmitting” in the claims, as well as “receptor,” do not persuade us otherwise. For example, a dictionary definition of the term “transmit” indicates that it means, more generally, to “send or forward, as to a recipient or destination” or “convey,” even if “[t]o communicate” is another alternative definition. Ex. 2018, 6. Patent Owner does not persuade us that switches for YAG lasers, for example, do not “send or forward” a laser beam. In fact, Patent Owner’s own proposed definition of “transmit” is not limited to sending or forwarding information used in the field of communications, where communications, according to Patent Owner, excludes YAG laser beams. Likewise, as Patent Owner acknowledges (PO Resp. 8–9), the term “optical receptor” is not limited to an element that receives electronic signals, and the Specification, which does not mention the term “receptor” except in the claims, likewise does not limit this term as such. See also Dec. 7 (discussing “optical receptor”); see also infra. Moreover, use of the phrases “optical signal” and “light signal” in a similar context as “optical beam” in the Specification does not mean that “optical beam” is limited to “a light beam consisting of communications information.” PO Resp. 12–13. Similarly, even assuming the Examiner relied exclusively on prior art relating to communications during prosecution of the ’917 patent, that fact would not dictate how we apply our claim construction standard, i.e., the broadest reasonable interpretation in light of the Specification.” slip op. at 9

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

    “2. Other Claim Terms Construed in the Decision to Institute In our Decision to Institute, we construed other terms in the challenged claims—namely, “control,” “optical receptors,” and “data gathering and transmission element,” as recited in independent claims 1 and 53, as well as “adjacent,” as recited in dependent claims 54 and 55. Dec. 8–10. Patent Owner does not propose alternative claim constructions for those claim phrases in its Patent Owner Response, nor did Petitioner challenge our constructions in its Reply. We discern no reason to alter our claim constructions for this Final Written Decision. For convenience, our claim constructions are reproduced in the table below. Claim(s) Claim Phrase Claim Construction 1 and 53 “control” “an element that controls and adjusts one or more beam directing devices (e.g., mirrors), which in turn control transmission of an optical beam from a source and/or mirror(s) to an optical receptor” 1 and 53 “optical receptor” “an element that receives an optical beam after it has been directed by a beam directing device (e.g., mirror),” such as “another optic fiber (cable 7) or optical switch (optical switch 5), as depicted in Figure 1 of the ’917 patent”” slip op. at 10

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Patent Owner further contends, however, that Hurst and Young are not analogous art. Patent Owner contends that, unlike Young, “Hurst does not involve optical switching in the fiber optic communications field,” but instead “relates to the use of micro-machined elements in optical data storage systems.” Id. at 48 (citing Ex. 1005, Abstract). Citing Dr. Smith’s Declaration in support, Patent Owner contends that the Hurst embodiments differ in a number of ways from the fiber optic communications switch described in Young. Id. at 48–50 (citing Ex. 2017, 70–74). For instance, Patent Owner contends that Hurst uses “very short-length polarization-maintaining fibers coupled to mechanical read-write arms,” and involves wavelengths that are “visible or near ultraviolet,” necessitating “alignment requirements of the polarization” to maintain visible or near ultraviolet optics. Id. at 49. Patent Owner contends, citing Dr. Smith’s testimony, that communication switches, such as those disclosed in Young, “require a specific optical system architecture” that “impacts mirror size and overall switch size,” and that the “details of solving that particular optical problem are substantially different than solving the short-wavelength optics challenges of Hurst.” Id. at 49 (citing Ex. 2017, 72–73). Thus, according to Patent Owner, Hurst’s use of polarization-maintaining fibers and shorter wavelengths “change substantially the optical design and the components, such as optical coatings.” Id. at 51. Patent Owner contends that Hurst does not teach “(1) [] a communications-grade fiber switch; (2) how to monitor intensity of the transmitted signal; or (3) how to close a fine alignment loop.” Id. Thus, according to Patent Owner, an ordinary artisan would not have known how to add the feedback element (differential detector) of Hurst to the Young switch system and get it to work, i.e., the teachings “leave[] the combination lacking enablement.” Id. We are not persuaded that Young and Hurst are non-analogous art because, as Petitioner points out, both references describe optical switching and are directed to coupling laser light to receptors with rotational reflective elements. Pet. 21. Patent Owner’s contentions still are relevant, however, to the issue of whether one of ordinary skill in the art would have had reason to combine the elements disclosed in Young and Hurst when making an optical switch.” slip op. at 34

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

    “In this regard, Petitioner argues that a person having ordinary skill in the art would have had reason to provide “the feedback” of Hurst with Young’s optical switching system “for the benefit of ensuring that the reflective mirror is properly controlled.” Id.. Petitioner also argues that “the addition of feedback as taught by Hurst into Young would be a use of a known technique to improve a similar device in the same way.” Id. According to Petitioner, “[o]ne of ordinary skill in the art would have realized that Young provided a base device, and Hurst provided a comparable device, and that adding the feedback of Hurst to Young would have been predictable.” Id. Petitioner cites no evidence, such as a declaration from an expert witness, in support of those contentions, however, especially in relation to the differential detector (data gathering and transmission element) in Hurst. Id. Moreover, Petitioner does not explain sufficiently how, or show why, one would have added that element of Hurst to the optical switch of Young, or one would have been using a “known technique to improve a similar device in the same way,” or that “adding the feedback of Hurst to Young would have been predictable.” By contrast, as discussed above, Patent Owner explains, citing evidence in support, i.e., Dr. Smith’s Declaration, that one reading the two references would have understood that the two disclosed systems differed enough, such that it would not have been straightforward or “predictable” to combine elements. We conclude that Petitioner does not address adequately in its Petition, nor respond sufficiently in its Reply to Patent Owner’s Response, contentions raised by Patent Owner in this regard, or in cited testimony by Dr. Smith. At most, Petitioner contends in its Reply that independent claims 1 and 53 of the ’917 patent do not recite elements identified by Patent Owner as deficient in Hurst, and that Patent Owner’s “attempts to read limitations from the specification into the claims is improper.” Reply 14. We are not persuaded that Petitioner shows by a preponderance of the evidence that an ordinary artisan would have included “at least one data gathering and transmission element,” as recited in challenged independent claims 1 and 53, in the optical switch disclosed in Young based on the teachings in Hurst or Young. For the reasons given above, and in light of the record before us, Petitioner” slip op. at 35

  Patent outcomesUS 7,095,917 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,095,917
• JDS Uniphase Corporation v. Fiber, LLCSome claims unpatentable
  PTAB · Dec 5, 2014 · IPR2013-00336 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 112, 123, 124, 127, 129, 131, 133, and 134 are unpatentable as obvious over Chande; the remaining challenged claims were not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “of the phrase “servo control” refers to a “control” element, as opposed to a “servo control” or “data gathering and transmission” element, as recited in challenged claims, where the “servo control” in the provisional application controls movement of a mirror using a “push+pull magnetic force,” for example. Ex. 2006, 7. Consistently, the provisional application states that “[i]t may be desirable to add damping mechanism for better servo control,” i.e., to control movement of the mirrors, and that “resulting push+pull magnetic force is more linear and also larger than the pull only design, and allows for better servo control,” i.e., control of the position of the mirrors. Id. at 5, 7; see also PO Resp. 18. Patent Owner’s position relies on an inherency argument in relation to one sentence in the provisional application, as discussed above, which indicates that after velocity of the mirror is “zeroed,” “currents are adjusted to hold it in place.” Ex. 2006, 7. We are not persuaded that this one sentence describing the adjustment of currents to hold a mirror in place necessarily describes a closed-loop, feedback system, or “an error signal” that is “used in order to correct the angular changes so as to reduce that error signal,” as stated by Dr. Smith. PO Resp. 19–12 (citing Ex. 2017, 44). We do not see how this sentence, expressly or inherently, describes a separate “servo control element” or “data gathering and transmission element” as recited in claims 112 and 123, respectively (i.e., something different from the “control” element of each of those claims, which corresponds to the “servo control” in the provisional application), where each element provides a feedback signal regarding current orientation of the mirror or current location of the optical beam.” slip op. at 15

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We are not persuaded that Chande and Buchin are non-analogous art to each other because, as Petitioner points out, both references are directed to optical switching and coupling of laser light to receptors with rotational reflective elements. Id. at 22. We still address, however, whether one of ordinary skill in the art would have had reason to combine the elements disclosed in Chande and Buchin when making the optical switch of claims 130 and 132.” slip op. at 34

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

    “As an initial matter, we note that Petitioner cites no evidence, such as a declaration from an expert witness, in support of those contentions. Id. In any event, Petitioner does not explain sufficiently how, or show by a preponderance of the evidence why, one would have added a stationary mirror or focusing lens “disposed between a source and one of the first movable mirrors,” as Petitioner contends is disclosed in Buchin, to the system described in Chande. Petitioner’s assertion that “inclusion of additional sources” would have been predictable or accomplished does not explain, nor provide evidence, as to why one would have included an additional stationary mirror or a focusing lens in a different location, i.e., elements that differ from “additional sources,” in the optical switch of Chande. Id.; see also Reply 12 (stating only that Chande and Buchin are both in the field of optical switching, and Patent Owner’s “attempts to read limitations from the specification into the claims is improper”). Thus, we are not persuaded that Petitioner shows by a preponderance of the evidence that an ordinary artisan would have included a stationary mirror, or focusing lens “disposed between a source and one of the first movable mirrors,” as recited in challenged claims 130 and 132 and Petitioner contends are disclosed in Buchin, in the optical switch disclosed in Chande.” slip op. at 35

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003). Thus, a motion to amend claims must identify how the proposed substitute claims are to be construed, especially when the proposed substitute claims introduce new claim terms. See Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26). In its Motion to Amend, Patent Owner introduces three new claim terms— i.e., “communications,” “fiber,” and “fiber optical”—in its proposed substitute claims. Patent Owner argues that those claim features distinguish the proposed substitute claims from the prior art. See, e.g., Motion 11–14. Patent Owner does not provide, however, adequate claim constructions or explanations for how the new claim terms should be construed. For example, in relation to the term “communications,” Patent Owner offers, at most, that the addition of this term means that the recited subject matter “involve[s] switches only in the fiber optic communications field of endeavor,” and that the term identifies claimed components as “related to a fiber optic switching device that switches optical beams containing communications signals.” Id. at 5, 11–12. Simply referring to the terms “communications,” “fiber,” and “fiber optic” in the Motion to Amend does not define adequately an ordinary and customary meaning of “communications,” as would be understood by one of ordinary skill in the art in the context of the Specification (which itself does not define “communications”). Ex. 1001, 1:11–14 (presenting the one time the term “communication” is used in the ’332 patent Specification). During the oral hearing, Patent Owner’s counsel, upon questioning, proposed that “communication” means “a beam of light, with a frequency around approximately 1500 nanometers.” Paper 39, 47:4–13. The Motion to Amend, however, does not suggest such a claim construction, nor refer to any evidence, e.g., a dictionary or scientific definition, in support. Moreover, as discussed during the oral hearing, it is not clear from the record if “communication” might mean simply “transmission of information,” a definition not limited to a beam of light at 1500 nm. Id. at 53:14–55:18. Without a reasonable construction of the new claim features added by the proposed substitute claims, Patent Owner’s Motion does not provide adequate information for us to determine whether its proposed substitute claims are patentable over the prior art generally. Thus, we are not persuaded that Patent Owner has met its burden to demonstrate patentability of the proposed substitute claims under 37 C.F.R. § 42.20(c). 2. Written Description Support A motion to amend claims must identify clearly the written description support for each proposed substitute claim. 37 C.F.R. § 42.121(b). The written description test is whether the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Thus, the motion should account for the claimed subject matter as a whole, i.e., the entire proposed substitute claim, when showing where there is sufficient written description support for each claim feature. See Nichia Corp. v. Emcore Corp., Case IPR2012-00005, slip op. at 4 (PTAB June 3, 2013) (Paper 27).” slip op. at 50

  Patent outcomesUS 6,430,332 mixed
  § 103 obviousness§ 112 disclosure
  Patents in suitUS 6,430,332
• Athena Automation Ltd. v. Husky Injection Molding Systems Ltd.Some claims unpatentable
  PTAB · Oct 23, 2014 · IPR2013-00290 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 4–16, and 20–22 are unpatentable as anticipated by Arend; claims 2, 3, 17, and 19 were not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

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

    “We agree with Petitioner. We are not persuaded that the ’536 patent limits the required movement of the “rod that is movable” to axial movement of the entire rod. For its proposed construction, Patent Owner relies on figures and description from the ’536 patent that are explicitly described as exemplary embodiment or embodiments. PO Resp. 21 (citing Ex. 1001, Fig. 6C, 7B, 8B, 12:59–64); PO Resp. 26 (citing Ex. 1001, Fig. 7A, 10:26–30, 13:30–37). The ’536 patent, however, clearly identifies Figure 7A (and the rest of the figures), as well as the corresponding description, as exemplary embodiments of the invention, stating explicitly that “[r]eference herein to details of the illustrated embodiments is not intended to limit the scope of the claims.” Ex. 1001, 16:4–8; see also 7:20–25. The testimony of Patent Owner’s declarant, George Markus, is based on these same portions of the ’536 patent that describe exemplary embodiments. Ex. 2009 ¶¶ 34–38. Patent Owner does not, however, point us to any language of the ’536 patent that evidences a clear intention to limit the claims to an exemplary embodiment. Thus, we are not persuaded that the language in the specification pointed to by Patent Owner limits the scope of the term at issue here. See, e.g. Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”); DSW v. Shoe Pavilion, 537 F.3d 1342, 1348 (Fed. Cir. 2008) (“[W]hen claim language is broader than the preferred embodiment, it is well-settled that claims are not to be confined to that embodiment.”).” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner

    “We agree with Petitioner that Patent Owner’s proposed modifications improperly limit the claim terms. See Reply 6–9. Petitioner asserts, and we agree, that while the patent discloses that it is preferable to engage the lock member teeth in a lower flex zone, it does not restrict the invention to that situation. Id. at 7. For example, Mr. Markus admits that there is some benefit of reduced wear even if only some, but not all, of the teeth of the lock members engage in the relatively lower flex zone. Id. (citing deposition testimony of Patent Owner’s expert, Mr. Markus, Ex. 1011, 219:14–22, 222:2–12; 224:7–11, 225:12–25). Thus, a broader interpretation of the term “relatively higher flex zone” is also consistent with the ’536 patent’s stated objection to reduce wear. Even more telling, the ’536 patent itself states, in its description of an exemplary embodiment, “the complementary lock member 512 is lockably engaged with the lock member 510 at a position that is proximate, at least in part, to the zone 514.” Ex. 1001, 14:11–16 (emphasis added). We, therefore, are not persuaded that the ’536 patent “specifically disavows” engagement outside the relatively higher flex zone, as asserted by Patent Owner. See PO Resp. 36–37. To the contrary, we are persuaded that the ’536 patent explicitly contemplates that the teeth may, at least in part, not engage within the relatively higher flex zone. We also agree with Petitioner that the claim language does not require comparison of adjacent flex zones. Id. (citing Ex. 1011, 227:10–24, 230:10–231:3). While the word adjacent is recited in the claims (e.g., “the relatively lower flex zone of the platen being a portion of the platen adjacent to the rod”) it refers to a flex zone being adjacent the rod, not another flex zone. See Ex. 1011, 227:10–24. Patent Owner’s reliance on Figure 8D as supporting the proposed restriction does not persuade us otherwise. As discussed above, Figure 8D describes an exemplary embodiment, and Patent Owner does not point to any language indicating that the claims should be limited to this embodiment. We also are not persuaded by Patent Owner’s unexplained and unsupported statement that “[o]nly by comparing zones that are adjacent, can such location of the engagement [in the lower flex zone] be accurately pinpointed.” PO Resp. 38 (citing Ex. 2009 ¶¶ 45–47).5” slip op. at 22

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

    “member is engagable with the lock member within a relatively lower flex zone of the platen” (“the engagement limitation”).6 In the Decision to Institute, we adopted a broadest reasonable construction of this term encompassing the situation in which the complementary lock member and the lock member are capable of interlocking or meshing at least in part within or proximate to a relatively lower flex zone of the platen. Dec. to Inst. 10–12. Neither party explicitly addresses the broadest reasonable determine which is the relatively high flex zone and which is the relatively low flex zone.”). The other cited paragraphs are not related to the statement they are cited to support. See id. ¶¶ 46–47. Nor could we find, upon review of the complete declaration, any other support for Patent Owner’s assertion. 6 Independent claims 1 and 12 recite this limitation as quoted. Independent claim 18 includes a similar limitation, “engaging a lock member associated with the rod with a complementary lock member associated with the platen at a position located proximate to a relatively lower flex zone of the platen.” construction of this claim term in their post-institution briefing. We conclude that no additional construction of the term is necessary.” slip op. at 24

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (internal quotation marks omitted). Accordingly, an anticipatory reference must show all of the limitations of the claims “arranged or combined in the same way as recited in the claims.” Id. at 1370; see Finisar Corp. v DirecTV Group, Inc., 523 F.3d 1323, 1334–37 (Fed. Cir. 2008); Ecolochem, Inc. v. Southern California Edison Co., 227 F.3d 1361 (Fed. Cir. 2000). Petitioner asserts that Choi’s teeth 38 correspond to the claimed lock member, teeth 48 correspond to the claimed complementary lock member, and tie bar 20 corresponds to the claimed rod. Pet. 36. In addition, according to Petitioner, Choi’s securing/clamping assembly 22 corresponds to the claimed clamp assembly. Id. Petitioner reasons that these elements of Choi are part of the machine disclosed in Glaesener because of the following sentence: “The tie-bar nuts can be secured to the rear wall 16 by any appropriate mechanism, such as the pineapple and toothed-ring mechanism described in [Choi].” Pet. 25, 36. Petitioner, however, does not explain how the relied upon elements of Choi’s device secure the tie-bar nuts of Glaesener to rear wall 16 of Glaesener’s platen. In fact, Petitioner does not direct us to any disclosure in Choi of tie-bar nuts or their equivalent. See Pet. 32–41. Moreover, there is no dispute that Choi does not use the term “pineapple and toothed-ring mechanism.” Tr. 16:7–10. And Petitioner does not provide persuasive evidence as to what part of Choi is included in the term “pineapple and toothed-ring mechanism.” See Tr. 16:7–12 (arguing for the first time that what “pineapple and tooth mechanism” in Glaesener refers to is Figure 3A in Choi with no reference to the record); Tr. 60:14–22 (explaining that Petitioner does not provide evidence of what the pineapple and toothed-ring mechanism is). Without such explanation and supporting evidence, we are not persuaded that Petitioner has met its burden to show that the various portions of Choi and Glaesener, on which it relies, are combined in the same way as recited in the challenged claims. See Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984) (holding that although the prior art reference could be said to contain all of the elements of the claimed invention, it did not anticipate under 35 U.S.C. § 102 because it “disclose[d] an entirely different device, composed of parts distinct from those of the claimed invention, and operating in a different way to process different material differently.”). The Federal Circuit has expressly warned against treating patent “claims as mere catalogs of separate parts” without regard for the “part-to-part relationships set forth” therein. NetMoneyIN, 545 F.3d at 1370 (quoting Lindemann, 730 F.2d at 1459).” slip op. at 30

  Patent outcomesUS 7,670,536 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,670,536
• SAS Institute, Inc. v. Complementsoft, LLCSome claims unpatentable
  PTAB · Aug 6, 2014 · IPR2013-00226 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 3, and 5–10 are unpatentable as obvious; claim 4 was not shown unpatentable. The contingent motion to amend was denied.

  RulingsFinal written decision

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

    “We are persuaded by the testimony of Dr. Roussopoulos that a data manipulation language does not require direct access to data in a database. To the extent that Patent Owner argues that Java and C++ never actually retrieve or manipulate data in a database because the embedded functionality does not directly access the database, we credit Petitioner’s evidence, particularly Exhibit 1013, which supports Dr. Roussopoulos’s conclusion that embedded SQL accesses and manipulates data in a database. All of Patent Owner’s evidence to the contrary hinges on the testimony of Mr. Zatkovich, which we do not find persuasive. Mr. Zatkovich’s conclusion that access to a database from a data manipulation language must be direct is unsupported. Mr. Zatkovich simply asserts this to be the case, without providing credible support. See Ex. 2001 ¶ 47.” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “As between the conflicting evidence on this point, we credit Petitioner’s evidence, particularly Dr. Roussopoulos’s testimony, which is supported by objective evidence. All of Patent Owner’s evidence, to the contrary, hinges on the testimony of Mr. Zatkovich, which we do not find persuasive on this point. Mr. Zatkovich’s conclusion that a person of ordinary skill would not conclude that Figure 14 depicts program flows is unsupported. Mr. Zatkovich simply asserts this to be the case, without providing credible support. See Ex. 2001 ¶¶ 28-30.” slip op. at 28

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

    “reasonable likelihood of prevailing on this proposed ground of unpatentability. Dec. 15. In particular, we determined that Petitioner had a reasonable likelihood of prevailing on its assertions that the combination of Coad and the Oracle Primers disclosed every limitation of claim 1. Id. at 12- 14. We also found reasonable Petitioner’s asserted rationale that a person of ordinary skill would have combined the teachings of Coad and the Oracle Primers in order to enhance the utility of the programming environment to include data manipulation. Id. at 14-15 (citing Pet. 25); see Ex. 1015 ¶ 115. In its response brief, Patent Owner argues that the combination of Coad and the Oracle Primers fails to disclose the limitations “graphical representations of flows within the retrieved source code” where the source code is written in a “data manipulation language.” PO Resp. 34-42. Patent Owner does not address any other limitations of claim 1 or the rationale to combine the references. Id.” slip op. at 20

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

    “We are not persuaded by this argument. First, this argument is based on an interpretation of the term “graphical representations of flows” that we rejected above. As explained, the interpretation we adopt is a diagram that depicts a map of the progression (or path) through the source code. This interpretation is broad enough to include, but is not limited to, program and data flows. We also reject Patent Owner’s assertion that the graphical representation must show flow within source code steps that are actually performing data manipulation. Our interpretation of the term includes, but does not require, that the flows are shown within source code that is actually performing data manipulation. Petitioner relies on Figures 11-17 (depicting UML diagrams) of Coad as disclosing graphical representations of flows. Pet. 28-30. We agree with Petitioner that at least Figures 14 and 17 of Coad disclose graphical representations of flows as we have construed that term. See, e.g., Ex. 1015 ¶¶ 97-98; see also Ex. 1043, 88-89 (describing UML diagrams as showing flows). Patent Owner concedes that Figure 14 shows communications between objects, which “would at best only show program flow in a purely object[-]oriented language—between objects.” PO Resp. 32 (citing Ex. 2001 ¶ 36). Nonetheless, Patent Owner asserts that because object messages “cannot sensibly be asserted to constitute program or data flow,” Figure 14 does not show flow through source code. Id. at 31-32. Because our interpretation of the term is broad enough to encompass flows that are not program or data flows, we conclude that Figure 14 discloses graphical representations of flows. Similarly, Mr. Zatkovich agrees that Figure 17 shows a type of flow— “Figure 17 can depict a type of flow [], within an object, but only within state-based objects. So it’s a very specialized type of flow in a very limited circumstance.” Ex. 1044, 104:12-17. Because our interpretation of the term is broad enough to encompass flows that are not program or data flows, we conclude that Figure 17 discloses graphical representations of flows as well.” slip op. at 22

  Patent outcomesUS 7,110,936 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 7,110,936
• Corning Incorporated v. DSM IP Assets B.V.Some claims unpatentable
  PTAB · May 9, 2014 · IPR2013-00048 · APJ Scott E Kamholz · IPR · Final written decision

  Claims 5, 13, 17, 29, 33, 37, 45, and 49 are unpatentable; the remaining challenged claims are not shown unpatentable, principally because key material-property limitations were not proved.

  RulingsFinal written decision

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

    “The evidence supports a conclusion that the broadest reasonable interpretation of the term “moisture” is liquid water—that is, a condition of 100% relative humidity. The written description uses the term “moisture” in a context that suggests liquid water. See, e.g., Ex. 1001, 28:65-67 (applying a “wax/water slurry” to surface of sample film in order “to retain moisture”); 35:17-18 (applying heat to remove “moisture” from samples, suggesting removal of liquid water). Moreover, where the written description discusses water in vapor form, the inventors use the word “humidity” or “atmospheric moisture,” but not “moisture” alone. See, e.g., id. at 21:47 (referring to “atmospheric moisture”); 28:48, 60, 65 (referring to “humidity”). The ’189 patent further discloses that a “ribbon assembly can be buried under ground or water for long distance connections, such as between cities,” which is consistent with the proposition that an optical fiber coating must endure long periods of immersion in liquid water without delaminating. Ex. 1001, 67:43-45. In light of the context in which the term “moisture” appears in the specification, we conclude that the inventors used that term in its ordinary sense to refer to liquid water. The ’189 patent, thus, is directed to a coating composition that, after radiation cure, has sufficient adhesion to glass to prevent delamination in the presence of liquid water. We decline to resolve what temperature, or length of time of exposure to liquid water the coating must endure, without delaminating, in order to satisfy the claimed adhesion property. Resolving those conditions is not necessary to our analysis, which focuses on whether Corning’s wet adhesion test, conducted under conditions of 95% relative humidity, is probative of the extent to which a cured coating delaminates from glass when exposed to liquid water.” slip op. at 10

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

    “We do not agree with Corning that the ’189 patent defines the term “stripping temperature” as “about 90°C to about 120°C.” Rather, the patent indicates that stripping temperature is “typically” within this range. Ex. 1001, 13:32-34; accord id. at 14:21-25 (“[F]or most coating compositions the design ribbon stripping temperatures are usually about 90° C. to about 120° C., but may be different depending on the specific design parameters for the particular coating composition.”). This disclosure is too imprecise to serve as a definition. See Paulsen, 30 F.3d at 1480. The ’189 patent does refer repeatedly, however, to 90°C as an exemplary stripping temperature. E.g., Ex. 1001, 31:14-15, 31:41-42, 50:55. The ’189 patent also identifies 100°C as an exemplary stripping temperature, particularly in the context of measuring change in length. Id. at 14:46-47, 18:44-45. Whatever other temperatures this term encompasses, it certainly encompasses at least the ones specifically identified. See Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008) (“We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification.”). The limitation requires no further construction.” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “plots is whether they exhibit a linear region of negative slope. Corning argues that they do, and the description in Exhibit 2015 that a region of the Shustack Example I plot showing a “linear relationship” was used to calculate slope bears out this argument. See Ex. 2015, 1. DSM, in contrast, argues that Corning’s plots lack “a substantially smooth linear region” but offers little evidence to support this assertion beyond Dr. Taylor’s statements that the plots “have no linear region from which to measure a slope” and that they lack any “substantial linear region.” See Resp. 31; Ex. 2032 ¶ 86. Dr. Taylor gives no credible explanation for the basis on which he reaches these conclusions. Even if Dr. Taylor provided some underlying facts or data for this conclusion, Dr. Taylor’s statements do not support DSM’s argument that there is no substantially smooth linear region. As between the conflicting evidence on this point, we credit Corning’s evidence, particularly from Exhibit 2015, in which Corning’s Mr. Gleason identifies the region of linear relationship as extending between displacements of 2.76 mm and 7 mm. DSM does not explain why this determination is invalid. We agree with Corning that the plots for Shustack Example I show a linear region of negative slope from 2.76 mm to 7 mm. To be sure, the signal is noisy, and the plots are jagged, but that does not mean that a linear relationship is not discernible in that region.” slip op. at 23

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundNot shown unpatentable

    “For these reasons, we credit Corning’s testing evidence over DSM’s. We are persuaded that Corning has shown that Shustack Example I and Szum ’928 Example 5B each inherently possess a fiber pull-out friction within the scope of every challenged claim. 2. “Sufficient Adhesion” As discussed above in section II.A.1, each of claims 1-4 and 9-12” slip op. at 27

  Patent outcomesUS 6,298,189 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,298,189
• Corning Incorporated v. DSM IP Assets B.V.Some claims unpatentable
  PTAB · May 1, 2014 · IPR2013-00053 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 35, 39, 44, and 53-57 are unpatentable as anticipated by Murphy; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

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

    “Corning’s proposed claim construction of “absorption maximum” as unreasonably broad in light of the Specification. Dec. 6. Based on the language in the Specification, the Board explained that [A]n absorption maximum does not include a “wavelength with the highest absorbance on either side of [the identified valley within the range of 240 and 360 nm]” unless that wavelength is also “a point on the curve wherein the tangent to the curve is parallel with the horizontal axis.” Id. After the institution of the trial, the parties did not further brief this issue. The Board hereby adopts its previous construction.” slip op. at 4

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

    “factual findings. Brown v. Barbacid, 276 F.3d 1327, 1332 (Fed. Cir. 2002). To establish an actual reduction to practice, the inventor must prove that: (1) an embodiment of the invention was constructed that meets all the limitations of the claim-at-issue; and (2) the inventor appreciated that the invention would work for its intended purpose. Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998).” slip op. at 8

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

    “patent under 35 U.S.C. § 102(e). Pet. 9. According to Corning, examples 8- 13 and a-d of Murphy meet all the limitations recited in claims 35, 39, 44, and 53-57, and thus, anticipate these claims. Id. at 40-46. DSM did not dispute that Murphy meets all the limitations recited in the challenged claims. Nor did it dispute that the effective filing date of Murphy is December 23, 1999. PO Resp. 41. Instead, it contended that Murphy could not qualify as § 102(e) prior art, because the inventors of the ’543 patent made the claimed invention through an actual reduction to practice before December 23, 1999. Id. at 41-55. As evidence, DSM submitted a “Rule 37 C.F.R. § 1.131 Declaration of Timothy E. Bishop,” one of the co-inventors of the ’543 patent. Ex. 2041. DSM also attached Exhibits A, B, and C to the Bishop Declaration as proof to antedate Murphy.4” slip op. at 5

  • ExcludeMotion to exclude, deniedDenied

    “We find Corning’s arguments unconvincing. Nevertheless, we deny DSM’s Motion to Exclude. Similar to a district court in a bench trial, the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. See, e.g., Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received . . . .”). Thus, in this inter partes review, the better course is to have a complete record of the evidence to facilitate public access as well as appellate review. See id. (“If the record on review contains not only all evidence which was clearly admissible, but also all evidence of doubtful admissibility, the court which is called upon to review the case can usually make an end of it, whereas if evidence was excluded which that court regards as having been admissible, a new trial or rehearing cannot be avoided.”).” slip op. at 19

  Patent outcomesUS 7,276,543 mixed
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 7,276,543

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.