- Maxlinear, Inc. v. Cresta Technology Corp. And CF Crespe LLCSome claims unpatentablePTAB · Apr 17, 2019 · IPR2015-00592 · APJ Patrick M Boucher · IPR · Remand
Claims 1–3, 5, and 10–20 are unpatentable by collateral estoppel; claims 4, 6–9, and 21 were not shown unpatentable because the combination rationale was insufficient.
RulingsRemand decision- RemandOther
“After this proceeding was remanded by the Federal Circuit, we invited the parties to address a proposed procedure that would include additional briefing regarding the impact of the prior holdings that claims 1–3, 5, and 10–20 are unpatentable, and the parties filed their respective proposals. Papers 78–80. In its proposal, Petitioner suggested that Patent Owner “has waived the right to address the patentability of claims 4, 8, and 9” because “Patent Owner never separately argued for the patentability of these claims.” Paper 79, 1; see MaxLinear, 880 F.3d at 1378 n.4 (“On remand, the Board may consider whether CRESPE has waived arguments concerning these claims.”). But those claims were not challenged in the earlier proceedings that held claims 1–3, 5, and 10–20 unpatentable. Rather, those claims were only challenged in this proceeding with respect to art that was not at issue in the earlier proceedings. In advancing its contention, Petitioner effectively makes the untenable argument that Patent Owner must provide separate reasons for the patentability of claims 4, 8, and 9, even when we determine that its own case-in-chief for those claims is insufficient. In addition, Petitioner’s proposal requests briefing on the issues of “whether claims 6, 7 and 20 materially alter the [unpatentability] analysis on which the prior [unpatentability] determinations rested.” Id. We have considered, and deny, that request. The Federal Circuit’s remand order noted that the fact that “MaxLinear was not a party to the other IPRs is . . . irrelevant since Cresta, the predecessor in interest to CRESPE, was party to the original determination.” MaxLinear, 880 F.3d at 1377. But the Federal Circuit’s order does not state or suggest that the fact that different prior art was considered in the earlier proceedings is similarly irrelevant. Indeed, we agree with Patent Owner that “[t]he Federal Circuit has not ordered the Board and the parties to start over from scratch, and certainly not with new prior art.” Paper 80, 3; see Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (“The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice.”). Patent Owner is correct that “[a]llowing new prior art to be considered on remand after the Final Decision on the merits would essentially be starting a new IPR proceeding.” Paper 80, 9. As Patent Owner asserts, “[t]he parties and the Board would have to argue and consider new grounds, new expert testimony would have to be taken and presented, and a new Final Decision would have to be rendered.” Id. The Federal Circuit’s instruction is limited: “We remand this case to the Board so that it may consider the patentability of the surviving disputed dependent claims 4, 6-9, and 21.” MaxLinear, 880 F.3d at 1378. We have complied with this instruction in two ways: first, by applying the Federal Circuit’s instruction regarding the collateral-estoppel impact on challenged claims 1–3, 5, and 10–20; and, second, by clarifying that Petitioner’s argument regarding the combination of Van De Plassche and Ishikawa compels a conclusion that Petitioner’s showing is insufficient with respect to claims 4, 6–9, and 21, independent of any conclusion previously reached with respect to independent claims 1 and 17. While the Federal Circuit includes language in its remand order that might be construed as suggesting applying different prior art in the latter analysis, 880 F.3d at 1377, the scope of this proceeding is limited by the prior art and the arguments in the Petition here. SAS Institute, 138 S. Ct. at 1356 (“in an inter partes review the petitioner is master of its complaint”); see Paper 80, 8 (Patent Owner addressing potential ambiguity of Federal Circuit’s instruction).” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Experience is but one of several factors that may be considered when determining the level of ordinary skill in the art. See, e.g., In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (identifying factors as including the “type of problems encountered in the art,” “prior art solutions to those problems,” “rapidity with which innovations are made,” “sophistication of the technology,” and “educational level of active workers in the field”). “In a given case, every factor may not be present, and one or more factors may predominate.” Id. Patent Owner’s distinction relates to a portion of one factor (education) in a determination that involves several factors. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry”). Patent Owner does not explain persuasively how the alleged omission by Petitioner impacts the obviousness analysis. We conclude that Petitioner’s proposed definition, which is consistent with the level of skill generally reflected by the prior art of record, reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 11
- ExcludeMotion to exclude, deniedDenied
“Importantly, we find that Patent Owner did not exhaust avenues available to it in attempting to secure answers to its questions from Dr. Hashemi. The line of questioning involving Exhibit 2008 occurred late in the day, “well after the close of business on the east coast,” and an attempt by the parties to telephone the Board during the deposition was unsuccessful. See Opp. 3; Ex. 2006, 154:24–155:4. The parties discussed contacting the Board the following day, and continuing the deposition the day after that, when Petitioner would make Dr. Hashemi available for further cross-examination after receiving guidance from the Board. Ex. 2006, 155:5–157:13. Rather than proceed in this fashion, Patent Owner decided to abandon the line of questioning and passed the witness for redirect: “I think after we talked about it a bit, I think we will withdraw our questions on this document and just move on to redirect.” Id. at 157: 22–25 (emphasis added). Dr. Hashemi could have answered the questions and sought a protective order that would insulate his answers from the public record, providing the Board with the information needed to perform a focused evaluation of the credibility and reliability of specific statements in his testimony. But a significant measure of responsibility for whether Dr. Hashemi’s testimony is tainted with bias lies with Patent Owner for declining to pursue the issue to a point of greater clarification. Indeed, we are limited in how strongly we can fault Petitioner for failing to submit a clarifying declaration from Dr. Hashemi, in light of Patent Owner’s decision to “withdraw” the questions at issue. Because the evidence is insufficiently developed, we are similarly limited in the degree to which we can draw adverse inferences from Dr. Hashemi’s refusal to answer questions, and unable to conclude, by a preponderance of the evidence, that Dr. Hashemi’s testimony is tainted by an undisclosed bias. Accordingly, we deny Patent Owner’s Motion to Exclude.” slip op. at 16
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Not reached
“C. Petitioner’s Motion to File Supplemental Information Pursuant to our authorization, Petitioner filed a Motion for Leave to File Exhibits 1213–17 as Supplemental Information, which Patent Owner opposes. Papers 83, 86. The Motion asserts that such information is “relevant to the issues in the case, specifically the lack of nexus between any purported secondary consideration, including surprising or unexpected results.” Paper 83, 1. We do not reach Patent Owner’s arguments regarding secondary considerations because we conclude that Petitioner’s case-in-chief is insufficient. Accordingly, we dismiss the Motion as moot.” slip op. at 17
Patent outcomesUS 7,075,585 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,075,585
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.