- Technical Consumer Products, Inc. / Nicor Inc. et al. v. Lighting Science Group Corp.Some claims unpatentablePTAB · Oct 31, 2018 · IPR2017-01280 · APJ John A Hudalla · IPR · Final written decision
Claims 1–3, 5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 are unpatentable under § 103; claims 3 and 4 were not shown unpatentable over Zhang, Soderman, and Silescent.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(collectively, “Lead Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of U.S. Patent No. 8,967,844 B2 (Ex. 1001, “the ’844 patent”) pursuant to 35 U.S.C. §§ 311–319. Patent Owner, Lighting Science Group Corp. (“Patent Owner”), did not file a Preliminary Response to the Petition. We determined that the information presented in the Petition established that there was a reasonable likelihood that Lead Petitioner would prevail in challenging claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we instituted this proceeding on November 1, 2017, as to claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent. Paper 10 (“Dec. on Inst.”).” slip op. at 2
- Skill levelSkill level board ownDecided for patent owner
“The parties’ definitions of the level of skill differ in minor respects, including the number of years of experience and whether or not a 5 Patent Owner has not put forth any evidence or argument related to secondary considerations of nonobviousness. background in chemical engineering should be included. At his deposition, Dr. Bretschneider testified that he included a degree in chemical engineering in his definition because that degree confers expertise in heat transfer. Ex. 1023, 37:14–22. We find this testimony persuasive. Regarding the difference in years of experience, both declarants agree that three years of experience is appropriate. For these reasons, we define the person of ordinary skill in the art as having a bachelor’s degree in electrical engineering, mechanical engineering, chemical engineering, physics, or a related field and three years of experience in designing LED lighting products or fixtures. We are satisfied that this definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’844 patent and the prior art of record.” slip op. at 12
- Expert testimonyPatent owner expert creditedDecided for patent owner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Petitioner (Pet. Reply 8–9), however, that an ordinarily skilled artisan would not have read Chou as narrowly as Patent Owner contends. Not only does Chou state that its fixture “may be configured to be installed into a recessed can housing having other geometries,” but also “recessed housings . . . developed with different geometries.” Ex. 1012, 3:65–4:7 (emphasis added). In light of this express teaching in Chou, we do not agree that Chou’s teachings are confined to 5- and 6-inch can lights, or even can lights in general. Junction boxes represent another geometry that can serve as a recessed housing for an LED light fixture. See Ex. 1023, 30:17–31:7 (Dr. Bretschneider testifying that, by 2009, LED light fixtures attached to junction boxes were known with “certain parts” inside the box). In addition, the fact that certain figures of Chou might depict a junction box external to a can light does not mean that junction boxes are excluded from the universe of “recessed housings” contemplated in the quotation above. In addition, Patent Owner contends Petitioner has provided no reason or motivation to combine Wegner with Chou. PO Resp. 10–11. Patent Owner also contends an ordinarily skilled artisan would not have combined Wegner with Chou because Wegner pertains to a light with a tall reflector, which must be installed in a can light fixture (and not a junction box). Id. at 11–12 (citing Ex. 2001 ¶¶ 74–75, 133–137). Yet Petitioner only cites Wegner for its teaching of removing an Edison base from an LED light fixture to facilitate direct wiring, and not for anything to do with reflectors. Pet. 24 (citing Ex. 1002 ¶ 53; Ex. 1016, 11:3–32). As such, Patent Owner’s arguments regarding Wegner’s light reflectors amounts to a bodily incorporation argument, which is not the test for obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”). We are persuaded that, based on Wegner, an ordinarily skilled artisan would have known to remove the Edison base of Chou’s fixture regardless of the type of reflector and housing used in Wegner’s fixture. See Ex. 1002 ¶ 53. Regarding motivation, Petitioner posits a market-based rationale, namely, that an ordinarily skilled artisan would have been motivated to make a version of Chou’s luminaire to fit nominally sized junction boxes to serve the new construction market. Pet. 25 (citing Ex. 1002 ¶ 54). Dr. Coleman testifies that the Edison base would have been removed to make Chou’s luminaire work in a junction box. Ex. 1002 ¶ 53. We are persuaded that an ordinarily skilled artisan wanting to modify Chou for use in junction boxes would have known to make this modification.” slip op. at 19
Patent outcomesUS 8,967,844 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,967,844 - PTAB · Oct 17, 2018 · IPR2017-00467 · APJ Kamran Jivani · IPR · Rehearing
The Board denied rehearing, leaving institution denied because the Uchida and Bramhill combination did not show the claimed write restriction for claims 15, 18, 24, and 25.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). The request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“In our Decision, we determined Petitioner failed to show a reasonable likelihood of success on its challenges combining Uchida and Bramhill because Petitioner failed to show teachings or suggestions sufficient to meet the following limitation of independent claim 15: “providing restricted-access to the storage device when the storage device does not store the device-specific security information by preventing the digital data from being written to the storage device during the write access.” Dec. 13–15. We similarly determined Petitioner failed to show teachings or suggestions sufficient to meet the commensurate limitation recited in independent claim 18: “configuring the storage drive to prevent write access to the storage device when the security information is not sensed.” Id. at 15.” slip op. at 3
NonePatents in suitUS 6,968,459 - Huawei Technologies Co., Ltd. v. Samsung Electronics Co., Ltd.Rehearing deniedPTAB · Oct 11, 2018 · IPR2017-01979 · APJ Kamran Jivani · IPR · Rehearing
The Board denied Huawei’s rehearing request, finding no abuse of discretion in denying institution on grounds 4–6 because the Petition did not adequately explain how to harmonize the references’ conflicting teachings.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). The request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. We deny the Request for Rehearing for the reasons that follow. slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Id. Figure 1 of R1-071000 identifies the scope of its contribution as limited to transmission of control information together with data information. Id. Thus, R1-071000, on its face, is directed to the opposite scenario of R1- 072122, which is directed to transmitting control information without data. Id.; see also Dec. 14–15 citing (Ex. 1008, 1 (Title: “Data non-associated control signal transmission with UL data.”)). Even if we were to accept arguendo Petitioner’s first argument that R1-071000 invites skilled artisans to expand and apply the data mapping scheme of R1-072122, such an invitation does not remedy Petitioner’s failure to explain sufficiently how one with ordinary skill in the art would have modified the system of R1- 072122 to transmit control signals with data, contrary to the express teachings of that reference. See Reh’g Req. 4; Pet. 85–86. For instance, Petitioner does not address how one would reconcile the two references’ diametrically opposed teachings regarding placement of the ACK/NAK. As we stated: Finally, although the cited portions of R1-071000 teach placing data in the symbols directly adjacent to the symbol containing the reference signal, R1-071000 depicts placing the ACK/NAK in the symbols farthest from the symbol containing the reference signal––directly opposite to the cited teachings of R1-072122 describing placing the ACK/NAK in the symbols directly adjacent to the reference signal. Ex. 1008, Figs. 4, 5. Here too, Petitioner and Dr. Akl do not address how or why an ordinarily skilled artisan would have harmonized the disparate teachings of these two references. Dec. 15 (bold emphasis added; italics original). Absent sufficient evidence and explanation, Petitioner’s argument amounts to impermissible hindsight reconstruction of the challenged claims. See, e.g., In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (cautioning against the use of hindsight).” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“Rehearing. Reh’g Req. 4–6. A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). Petitioner identifies a single page of its Petition as “the place where [that argument] was previously addressed.” Reh’g Req. 4–6 (citing Pet. 86). The cited page of the Petition, recites only a single sentence and string citation related to this argument: “Further, a number of 3GPP contributions, including both R1- 071000 and R1-072122, expressly disclose and teach that it is advantageous to limit the number of different transmission formats due to complexity of UE design.” Pet. 86 (citing Ex. 1008, 2, 5; Ex. 1006, 2; Ex. 1009, 5; Ex. 1003 ¶ 225). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d); see also, e.g., Captioncall, Inc. v. Ultratec, Inc., IPR2014-00780, Paper No. 40 (PTAB May 19, 2016) (discussing that a rehearing request is “not intended as a vehicle simply to disagree with [the] outcome or to provide new arguments”). Contrary to Petitioner’s assertions on rehearing, the cited portion of the Petition does not provide sufficient explanation for the following statements made in the Request for Rehearing: that “R1-072122 also expressly teaches that a single mapping scheme for control information is preferred”; that “R1-070998, another contemporaneous 3GPP contribution, provides a similar statement”; or that “skilled artisans would have been motivated to apply the same control mapping scheme regardless of the presence of data.” Compare Reh’g Req. 4–6 with Pet. 86. Indeed, the cited page of the Petition does not discuss R1-070777or R1-070998. See Pet. 86. Because Petitioner’s second argument was not presented in its Petition, we do not consider it on rehearing. 37 C.F.R. § 42.71(d). To the extent Petitioner contends its declarant Dr. Akl presented the extensive argument that Petitioner now puts forth in its Request for Rehearing, our rules particularly require identification of “the place where [that argument] was previously addressed in a motion, an opposition, or a reply.” Id. (emphasis added); see also 37 C.F.R. § 42.6(3) (prohibiting incorporation of arguments by reference).” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,761,130 - Unified Patents Inc. v. Intellectual Ventures II, LLCRehearing deniedPTAB · Sep 27, 2018 · IPR2016-01404 · APJ Kamran Jivani · IPR · Rehearing
The Board granted the motion to excuse late filing and denied rehearing, maintaining that claims 1, 2, 13, 14, 33, 34, 39, 46, and 48 were not shown unpatentable over Bensimon.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision . . .” who “must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). Petitioner’s argument is predicated upon a mischaracterization of our factual findings. Petitioner asserts that we found Bensimon “taught all of the elements of the claim in ‘one possible mode of operation.’” Reh’g Req. 1 (citing Decision 17). We, however, made no such finding. The phrase that Petitioner attributes to us—namely, “one possible mode of operation”—does not appear anywhere in our Final Written Decision. Compare Reh’g Req. 1 (citing Decision 17) to Decision 17. Contrary to Petitioner’s assertions, we did not find “that Bensimon sometimes teaches all of the elements of the claim” nor did we find “that Bensimon discloses a ‘restricted-access mode’ by disclosing a ‘write protection’ mode.” Reh’g Req. 1–3 (citing Decision, 16–17). Rather, we found the exact opposite—that Bensimon fails to disclose the claimed restricted-access mode because, as claimed, that mode requires the absence of the claimed device-specific security information (i.e. the read/write password, or alternatively the combination of the read/write password and password-enabling flag). Decision 16–17 (citing Reply 16– 22) (“Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device.”) (bolding added; italics original). slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“claim” nor did we find “that Bensimon discloses a ‘restricted-access mode’ by disclosing a ‘write protection’ mode.” Reh’g Req. 1–3 (citing Decision, 16–17). Rather, we found the exact opposite—that Bensimon fails to disclose the claimed restricted-access mode because, as claimed, that mode requires the absence of the claimed device-specific security information (i.e. the read/write password, or alternatively the combination of the read/write password and password-enabling flag). Decision 16–17 (citing Reply 16– 22) (“Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device.”) (bolding added; italics original).” slip op. at 6
§ 102 anticipationPatents in suitUS 6,968,459 - Eset, LLC / Eset Spol S.R.O. v. Finjan, Inc.Rehearing deniedPTAB · Aug 10, 2018 · IPR2017-01738 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving review instituted on all challenged claims and all grounds presented in the Petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Nevertheless, like Petitioner, the panel “is not aware of a single case where a partially-instituted IPR was de-instituted post-SAS, as requested by Patent Owner.” Opp. 5. The panel is sympathetic to the position in which institution of the Freund-based grounds places Patent Owner. If now faced with the Petition in the first instance, and understanding that we have only a “binary choice,” it may well be appropriate to deny the Petition in its entirety. But we have been instructed that the Office SAS Guidance is to be interpreted with the weight of Office policy as precluding termination of a partially instituted proceeding in response to SAS Institute. Given that constraint, we are not persuaded that we abused our discretion in our modification Order to include review of all challenged claims and all grounds presented in the Petition. See 37 C.F.R. § 42.71(c). Thus, notwithstanding the panel’s significant reservations, we continue to give effect to the Director’s policy guidance, and deny Patent Owner’s Rehearing Request.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“SAS procedure outlined herein and determines that the trial must be instituted on all grounds or none, Patent Owner requests that the proceedings be terminated pursuant to 35 U.S.C. § 325(d).” Req. Reh’g 10. In making this request, Patent Owner raises important issues regarding the interplay of SAS Institute and 35 U.S.C. § 325(d). The panel is sensitive to Patent Owner’s concern that Under the full-institution full-review paradigm laid out in the Board’s Modified Institution Order and envisioned by the Guidelines, Patent Owners will be forced to defend against the very types of harassing challenges that these sections of the America Invents Act [35 U.S.C. §§ 314(a) and 325(d)] were designed to prevent, namely to “prevent parties from mounting attacks on patents that raise issues that are substantially the same as issues that were already before the Office with respect to the patent.” Id. at 6 (quoting 157 Cong. Rec. S1360 at S1376 (Mar. 8, 2011) (remarks of Senator Kyl); citing H.R. Rep. No. 112-98, pt. 1, at 48 (2011) (warning the AIA’s procedures should not be used as tools for harassment)).5 Nevertheless, like Petitioner, the panel “is not aware of a single case where a partially-instituted IPR was de-instituted post-SAS, as requested by Patent Owner.” Opp. 5. The panel is sympathetic to the position in which institution of the Freund-based grounds places Patent Owner. If now faced with the Petition in the first instance, and understanding that we have only a “binary choice,” it may well be appropriate to deny the Petition in its entirety. But we have been instructed that the Office SAS Guidance is to be interpreted with the weight of Office policy as precluding termination of a partially instituted proceeding in response to SAS Institute. Given that constraint, we are not persuaded that we abused our discretion in our modification Order to include review of all challenged claims and all grounds presented in the Petition. See 37 C.F.R. § 42.71(c).” slip op. at 9
Discretionary denialPatents in suitUS 7,975,305 - Bose Corporation v. Freebit AsRehearing deniedPTAB · Jul 10, 2018 · IPR2017-00130 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place its determination that claims 1–13 would have been obvious over the cited references.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We do not read Dr. Casali’s cross-examination testimony to include admissions that Aber’s device only loosely fits the crus of helix. Rather, in context, Dr. Casali considered “accommodate” and “partially embrace,” as used in Aber, to be synonymous with “conform,” as used in the ’995 patent. Ex. 2015, 11:14–12:12, 13:11–19, 17:4–18. Moreover, we do not read Aber’s references to “accommodate,” “partially embrace,” and “partially surround” in isolation, but rather in the context of its full disclosure. As noted above and in the Decision (Dec. 35), Aber expressly states that its device embraces the crus of helix in such a way as to provide “much greater contact” between the device and the crus of helix and “assist in firmly retaining” the device in the ear. Ex. 1006, 1:17–83. To the extent that “accommodate,” “partially embrace,” and “partially surround” could be read more broadly, Aber makes clear that its device substantially conforms to the concha at the position of the crus of helix. Thus, we did not overlook Dr. Casali’s testimony.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not read Dr. Casali’s cross-examination testimony to include admissions that Aber’s device only loosely fits the crus of helix. Rather, in context, Dr. Casali considered “accommodate” and “partially embrace,” as used in Aber, to be synonymous with “conform,” as used in the ’995 patent. Ex. 2015, 11:14–12:12, 13:11–19, 17:4–18. Moreover, we do not read Aber’s references to “accommodate,” “partially embrace,” and “partially surround” in isolation, but rather in the context of its full disclosure. As noted above and in the Decision (Dec. 35), Aber expressly states that its device embraces the crus of helix in such a way as to provide “much greater contact” between the device and the crus of helix and “assist in firmly retaining” the device in the ear. Ex. 1006, 1:17–83. To the extent that “accommodate,” “partially embrace,” and “partially surround” could be read more broadly, Aber makes clear that its device substantially conforms to the concha at the position of the crus of helix. Thus, we did not overlook Dr. Casali’s testimony.” slip op. at 5
NonePatents in suitUS 8,976,995 - Bose Corporation v. Freebit AsRehearing deniedPTAB · Jul 10, 2018 · IPR2017-00129 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding it had not shown that the Board overlooked or misapprehended arguments or evidence concerning Aber’s groove and obviousness of claims 1–10.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We do not read Dr. Casali’s cross-examination testimony to include admissions that Aber’s device only loosely fits the crus of helix. Rather, in context, Dr. Casali considered “accommodate” and “partially embrace,” as used in Aber, to be synonymous with “conform,” as used in the ’436 patent. Ex. 2015, 11:14–12:12, 13:11–19, 17:4–18. Moreover, we do not read Aber’s references to “accommodate,” “partially embrace,” and “partially surround” in isolation, but rather in the context of its full disclosure. As noted above and in the Decision (Dec. 35), Aber expressly states that its device embraces the crus of helix in such a way as to provide “much greater contact” between the device and the crus of helix and “assist in firmly retaining” the device in the ear. Ex. 1006, 1:17–83. To the extent that “accommodate,” “partially embrace,” and “partially surround” could be read more broadly, Aber makes clear that its device substantially conforms to the concha at the position of the crus of helix. Thus, we did not overlook Dr. Casali’s testimony.” slip op. at 5
- Expert testimonyDecided for patent owner
“We do not read Dr. Casali’s cross-examination testimony to include admissions that Aber’s device only loosely fits the crus of helix. Rather, in context, Dr. Casali considered “accommodate” and “partially embrace,” as used in Aber, to be synonymous with “conform,” as used in the ’436 patent. Ex. 2015, 11:14–12:12, 13:11–19, 17:4–18. Moreover, we do not read Aber’s references to “accommodate,” “partially embrace,” and “partially surround” in isolation, but rather in the context of its full disclosure. As noted above and in the Decision (Dec. 35), Aber expressly states that its device embraces the crus of helix in such a way as to provide “much greater contact” between the device and the crus of helix and “assist in firmly retaining” the device in the ear. Ex. 1006, 1:17–83. To the extent that “accommodate,” “partially embrace,” and “partially surround” could be read more broadly, Aber makes clear that its device substantially conforms to the concha at the position of the crus of helix. Thus, we did not overlook Dr. Casali’s testimony.” slip op. at 5
NonePatents in suitUS 8,630,436 - Riot Games, Inc. v. Paltalk Holdings, Inc.Rehearing deniedPTAB · Jun 29, 2018 · IPR2018-00129 · APJ Thu A Dang · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 1–10, 16–18, and 31–47 based on the RFCs’ public accessibility.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When rehearing a decision on petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“and slides) disseminated to members of even a somewhat closed group without restriction as to further dissemination may tend to indicate public accessibility of the documents, in light of other factors, even in the absence of indexing for search purposes. See Medtronic, Inc. v. Barry, No. 2017- 1169, 2018 WL 2769092, at **8–9 (Fed. Cir. June 11, 2018) (“Further, even if the Board were correct in its assumption that Medtronic only gave the Video and Slides to the SDSG members, it did not address whether the disclosures would remain confidential.”)4 On this preliminary record, Petitioner’s evidence shows sufficiently that mailing list members would have been apprised of a new RFC’s contents, at least via the Internet Society’s newsletter’s summary, if not via the mailing list (coupled with prior knowledge of the documents via group circulation thereof), with unrestricted access to the newly published RFC documents, and without any further restriction as to dissemination. See Ex. 1026 ¶¶ 18–24. In other words, prior to official publication of RFC documents, “[t]he Area Director . . . circulates the document to the wider IETF community, for comment, and” slip op. at 7
§ 102 anticipationPatents in suitUS 5,822,523 - Riot Games, Inc. v. Paltalk Holdings, Inc.Rehearing deniedPTAB · Jun 29, 2018 · IPR2018-00130 · APJ Thu A Dang · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting inter partes review of claims 1, 11–15, and 19–30 based on the RFCs’ public accessibility.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Based on the foregoing discussion, Patent Owner fails to show an overlooked or misapprehended material matter amounting to an abuse of discretion in determining Petitioner shows sufficiently that RFC 1692, RFC 1459, and RFC 791 qualify as prior art printed publications. III. CONCLUSION Patent Owner has not carried its burden of demonstrating that we misapprehended or overlooked any material matters in the Decision, and has not shown an abuse of discretion in the Decision to institute an inter partes review of the challenged claims of the ’523 patent. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that Patent Owner’s Request for Rehearing is denied.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Crocker’s testimony that the RFCs were available generally prior to the critical date, wherein a skilled artisan could have determined how to access particular RFCs based on mailing lists and newsletters discussing the RFCs. See Dec. 30–32. In particular, Mr. Crocker’s testimony included the (numbered accordingly), the “situation” regarding RFCs and the IETF, as summarized by the court employing, in part, evidence including a 1997 SEC (Securities Exchange Commission”) filing, would not have changed materially prior to the critical date (February, 1996) involved here. following: 1) “an official summary of published RFCs appeared in each issue of the Internet Society’s newsletter” which “was well-known to members of the Internet technical community as a source for an official summary of published RFCs” (id. at 31 (citing Ex. 1026 ¶ 24)); 2) a well-known mailing list announced RFCs to which anyone could subscribe since the late 1980s (id. (citing Ex. 1026 ¶ 21)); and 3) an RFC Editor publication “summarize[d] the status of all Internet protocol and service specifications” wherein “[t]hese RFCs are made publicly available pursuant to the standard RFC publication process” (id. (citing Ex. 1026 ¶ 23)). Mr. Crocker further testifies as follows: “Since the early 1990s, the RFC Editor repository has been freely accessible to the general public with no login, password, or membership requirement, and was similarly available to the Internet technical community since the 1970s.” Id. (citing Ex. 1026 ¶ 26).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“of our Decision (Paper 11, “Dec.”) to institute inter partes review of claims 1, 11–15, and 19–30 of (the “challenged claims”) of U.S. Patent No. 5,822,523 and 5,822,523 C1 (Ex. 1001, the “’523 patent”). In the Decision, we instituted a trial on the following grounds asserted by Petitioner: 1) claims 1, 15, and 19–27 of the ’523 patent for obviousness over Aldred and RFC 1692; and 2) claims 11–15, 23, and 27–30 of the ’523 patent for obviousness over Aldred, RFC 1692, and Ulrich. Dec. 49. For the reasons stated below, Patent Owner’s Request for Rehearing is denied.” slip op. at 2
§ 102 anticipationPatents in suitUS 5,822,523 - Daimler AG / Daimler North America Corporation et al. v. Stragent, LLCAll claims unpatentablePTAB · Jun 13, 2018 · IPR2017-00458 · APJ Carl L Silverman · IPR · Final written decision
Claims 1–7 and 20 are unpatentable under § 103 over Miesterfeld, Stewart, and Wense; claims 1, 3–7, and 20 are also unpatentable over Posadas, Stewart, and Wense.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner proposes that the term, “sharing the information,” should be construed according to its plain and ordinary meaning, which Patent Owner argues is “completing delivery to a destination” as information is not “shared” until the information has completed delivery to a destination. PO Resp. 15–16. Patent Owner contends the claim language and the specification describe the actual delivery of information to the local bulletin board. Id. (citing Ex. 1001, 6:27–31, 12:33–35). Petitioner contends Patent Owner’s proposed meaning is unreasonably narrow and proposes, instead, that the term “should be construed as ‘making the information available to another process,’ consistent with its plain meaning.” Reply 7 (citing Ex. 1036 ¶ 29). Petitioner observes the challenged claims do not recite delivery into a second process, and 7 Petitioner refers to the ’843 patent; in context, it is clear the reference is intended to be to the ’705 patent. additionally notes claim 1 of the related ’843 patent merely requires “sharing the information” and it is not until dependent claim 16 of the ’843 patent that “sharing” further includes “providing the information.” Id. Petitioner contends the doctrine of claim differentiation further supports its proposed claim construction. Id. Petitioner contends this claim construction is consistent with the Specification in which information is shared by placing the information on a bulletin board. Id. at 8 (citing Ex. 1036 ¶ 32). We agree with Petitioner’s claim construction analysis and agree that the broadest reasonable interpretation of “sharing the information” is “making the information available to another process.”” slip op. at 10
- Skill levelSkill level patent owner adoptedDecided for patent owner
“ordinary skill in the art “would have at least an undergraduate degree in Computer Engineering, Computer Science, or equivalent degree, and at least two years relevant experience in industry.” Ex. 1004 ¶ 48. Patent Owner’s Declarant, Jeffrey A. Miller, Ph.D, asserts that a person of ordinary skill in the art would have at least the qualifications of or equivalent to either a master’s degree in electrical engineering, computer science, or computer engineering with course work or research in embedded networking technologies or an undergraduate degree in electrical engineering, computer science, or computer engineering with at least two years of relevant work experience in industry. Ex. 2004 ¶ 12. Based upon our review of the ’705 patent and the prior art of record, we find Dr. Miller’s statement of the level of ordinary skill in the art reasonable, and adopt it for this Final Written Decision.” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We agree that Stewart’s memory management techniques are fundamental techniques applicable to shared memory environments and Petitioner’s reasoning is thus supported by sufficient rational underpinning. See KSR, 550 U.S. at 418. In particular, we credit Dr. Koopman’s testimony as being more persuasive than Dr. Miller’s testimony. See Ex. 1036 ¶¶ 59– 62; Ex. 1004 ¶¶ 97, 98; Ex. 2004 ¶¶ 30–39.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner contends there is no basis for combining Posadas and Stewart to arrive at the invention of claim 1. PO Resp. 27–30 (citing Ex. 2004 ¶¶ 30, 33). According to Patent Owner, Petitioner provides no explanation why a skilled artisan would have combined Posadas’s blackboard system with Stewart’s non-blackboard system. Id. (citing Ex. 2004 ¶¶ 34– 39). Petitioner contends a blackboard is simply a specific type of shared memory and the operations described by Stewart are fundamental features that could apply to any shared memory environment, e.g., determining whether memory is available before writing is a basic process that is not specific to any memory architecture. Reply 19 (citing Ex. 1037 ¶¶ 57–60). According to Petitioner, Stewart’s spin locks were well–known, simple tools to access shared memory and application to Posadas would have been straightforward. Id. at 20 (citing Ex. 1036 ¶¶ 57–59; Ex. 1004 ¶¶ 97–99). We agree that Stewart’s memory management techniques are fundamental techniques applicable to shared memory environments and Petitioner’s reasoning is thus supported by sufficient rational underpinning. See KSR, 550 U.S. at 418. In particular, we credit Dr. Koopman’s testimony as being more persuasive than Dr. Miller’s testimony. See Ex. 1036 ¶¶ 59– 62; Ex. 1004 ¶¶ 97, 98; Ex. 2004 ¶¶ 30–39.” slip op. at 29
Patent outcomesUS 8,209,705 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,209,705
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.