- Growlerwerks, Inc. v. Drink Tanks CorporationInstitution deniedPTAB · Nov 22, 2016 · IPR2016-01125 · APJ Jason W Melvin · IPR · Institution
The Board denied institution of IPR on claims 1–19, exercising discretion to address the overlapping effective-filing-date question in the refiled petition.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“date of the challenged claims, as a predicate to applying Mociak as prior art to the ’670 patent; as discussed above, the answer to that question controls whether the 1125 Petition was untimely filed. Because the 262 Petition was filed after July 13, 2016, this second petition does not present the same untimely filing concern under 37 C.F.R. § 42.3 and 37 C.F.R. §§ 42.102(a)(1) as the 1125 IPR. The 262 Petition, however, does present the same question regarding effective filing date. Thus, deciding whether the 1125 Petition was untimely filed would potentially mean addressing the same question twice. We decline to do so. In our view, our decision on the effective filing date of the ’670 patent is best constrained to a single petition. First, addressing the question in a single proceeding conserves judicial resources because we will not be addressing the same question twice. Moreover, doing so avoids any possibility of reaching different decisions based on different evidence or arguments. Further, our approach does not unduly prejudice either Petitioner or Patent Owner. Petitioner took the opportunity to file the same challenge the filing date of the 1125 Petition in its Preliminary Response. Because the refiled petition proposes the same grounds and arguments for invalidity as the present Petition—it is substantively identical (IPR2017- 00262, Ex. 1021)—and was filed before any decision in this proceeding, it therefore does not present any concerns of taking a “second bite at the apple” or using our decision as a “roadmap” that other panels of the Board have found persuasive when considering multiple petitions against a given patent. See, e.g., Butamax Advanced Biofuels LLC v. Gevo, Inc., IPR2014- 00581, slip op. at 12 (PTAB Oct. 14, 2014) (Paper 8). We exercise our discretion to make our substantive determinations pursuant to the refiled 262 Petition, and deny the 1125 Petition.” slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“Petitioner argues that no claim of the ’670 patent is entitled to an effective filing date earlier than June 28, 2013.14 Pet. 8–11. Patent Owner does not address this issue in the Preliminary Response. See generally Prelim. Resp. Petitioner addresses this question with two separate arguments, one directed to independent claim 1 and dependent claims 2–17 (id. at 9–10), and the other directed at independent claim 18 and dependent claim 19 (id. at 10–11). While we take no position on these arguments at this time, if we were to conclude Petitioner is correct about either of those arguments, the ’670 patent would contain a claim with an effective filing date after March 13, 2016, and 37 C.F.R. § 42.102(a)(1) would require a petition for IPR be filed no earlier than nine months after the grant of the patent, here July 13, 2016. The present Petition was filed June 2, 2016 (see Paper 4).” slip op. at 6
§ 102 anticipationDiscretionary denialPatents in suitUS 9,156,670 - Nestlé USA, Inc. v. Steuben Foods, Inc.Rehearing deniedPTAB · Sep 26, 2016 · IPR2015-00195 · APJ Christopher G Paulraj · IPR · Rehearing
The Board denied Steuben Foods’ rehearing request, leaving claims unpatentable over the Biewendt-based combination because the evidence supported the Board’s obviousness conclusion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The requirements for rehearing are set forth in 37 C.F.R. § 42.71(d), which provides, in relevant part, that “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and that “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” We determine that we did not misapprehend the evidence and arguments of record supporting our conclusion of obviousness based on Biewendt, and for the reasons that follow, Patent Owner’s request for rehearing is denied. .” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Second, Patent Owner has failed to demonstrate error in our consideration of Dr. Heldman’s unequivocal testimony—based on his studying of clean room technology for 40 years—that he expected that Biewendt’s sterilization machine would be kept above atmospheric pressure based on its description as a “clean room.” FWD, 29; see generally Ex. 2055, 146:3–157:19. Indeed we accorded the testimony of both Dr. Heldman and Dr. Sharon the weight that was appropriate in view of the arguments and evidence of record in the trial.1 As to Patent Owner’s argument that this was a “new position” not presented in the Petition or the accompanying declaration, we note that Dr. Heldman was merely responding to questions posed by Patent Owner’s counsel during his deposition, rather than injecting a new theory of his own accord. See, e.g., Ex. 2055, 147:13–14 (“Q. Are all clean rooms overpressured? A. That's the only design that I know.”). Dr. Heldman’s testimony is consistent with the statement in the Petition “that the entire sterilization machine of Biewendt is maintained under positive pressure to prevent contamination from the” slip op. at 3
- Strike new argumentNew argument disregardedDecided for petitioner
“argument that we “overlooked the fact that the cited passage in ZFL says that the “fully enclosed system, which is ventilated by sterile air at a slight overpressure, is free of unsterile transport media that may get into the system and works with packages and lids which are sterile on all sides.” Req. Reh’g 4 (citing Ex. 1010, 298). Specifically, that “ZFL and Buchner are consistent with Biewendt in explaining that that those portions of the machine downstream of the sterilization chamber are kept at a pressure above atmospheric in order to ensure sterility during the filling and sealing process.” Id. at 5. Patent Owner, however, did not previously present this interpretation of ZFL and Buchner, and a request for rehearing is not an opportunity to present such new arguments. Moreover, contrary to Patent Owner’s new argument, these references plainly indicate that the “fully enclosed system” and the “entire plant” of the Bosch system is subject to a “slight overpressure.” Ex. 1010, 298; Ex. 1011, 27. As such, we find no basis in the record to conclude that we overlooked any persuasive evidence suggesting that only those portions of the Bosch system downstream of the sterilization machine are subject to overpressure.” slip op. at 4
NonePatents in suitUS 6,475,435 - Amit Agarwal v. Immersion CorporationInstitution deniedPTAB · Sep 19, 2016 · IPR2016-00807 · APJ Minn Chung · IPR · Institution
Institution was denied for all challenged claims because the petition did not show a reasonable likelihood of prevailing on either asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A claim is anticipated only if a single prior art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed[,] but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although the elements must be arranged in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this asserted ground based on anticipation with the principles identified above in mind. 2. Overview of Rosenberg (Ex. 1002)” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“A claim is anticipated only if a single prior art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed[,] but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although the elements must be arranged in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this asserted ground based on anticipation with the principles identified above in mind. 2. Overview of Rosenberg (Ex. 1002)” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“35 U.S.C. § 103(a) over the combination of Rosenberg and Simon. Pet. 17– 20. Claims 5 and 15 depend from claims 1 and 12, respectively, and further recite “wherein the display signal is configured to display a keypad comprising a plurality of softkeys.” Claims 7 and 17 depend from claims 1 and 12, respectively, and further recite “wherein the plurality of softkeys comprises one softkey for each digit from 0 to 9.” Similar to its challenges based on anticipation discussed above, Petitioner relies on Rosenberg as disclosing all of the limitations of underlying independent claims 1 and 12. Id. at 17. Simon is relied upon by Petitioner only to teach the additionally recited limitations of claims 5, 7, 15, and 17. Id. at 17–19. Hence, Simon cannot and does not remedy the above-identified deficiencies in Petitioner’s analysis of challenged independent claims 1 and 12. Accordingly, on this record, the information presented in the Petition does not demonstrate a reasonable likelihood of Petitioner prevailing in its challenge to claims 5, 7, 15, and 17 under 35 U.S.C. § 103(a) as obvious over the combination of Rosenberg and Simon.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no claim interpretation is needed” (Pet. 1), and Patent Owner does not propose any claim constructions in this case (Prelim. Resp. 10). Having considered the arguments and evidence presented, we determine that no claim terms require express interpretation for purposes of this Decision. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,773,356 - LG Display Co, Ltd. v. Innovative Display Technologies LLCNo claims unpatentablePTAB · Jul 15, 2016 · IPR2015-01717 · APJ Beverly M Bunting · IPR · Final written decision
Claims 1, 3, 5, 10, 13, 16, 17, 25–29, and 33–35 were not shown unpatentable under §103 over Oe and Etsuo because the proposed combinations lacked sufficient reasoned support.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“persuaded Petitioner has provided sufficient articulated reasoning with rational underpinning explaining why one with ordinary skill in the art would have modified the teachings of the applied references to address the noted differences. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). We consider Petitioner’s first reason to combine Oe and Etsuo “because they are in the same field of backlighting for liquid crystal display devices.” Pet. 36. The mere fact that both Oe and Etsuo are in the same field of endeavor falls short of an adequate rationale. The same field of endeavor analysis is merely the jumping-off point in reaching the determination of whether a claimed invention is obvious. See K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either from the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). Next, we consider Petitioner’s second reason to combine because “both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.” Pet. 36 (citing Ex. 1004 ¶ 165). Although Petitioner relies on the testimony of Dr. Escuti, he does not proffer any persuasive facts, data, or analysis to support his opinion. See Ex. 1004 ¶ 165 (“Also, both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.”). Merely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument probative value. Dr. Escuti’s opinion lacks sufficient support. For this reason, we do not credit the testimony of Dr. Escuti on this issue. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Petitioner’s second reason is also unavailing because it does not address the entirety of Petitioner’s proposed modification. As discussed above, Petitioner relies on the disclosure in Etsuo for both the position of the plurality of light sources adjacent a single input edge claim element, as well as the output distribution having a greater width component than height component claim element. Petitioner’s reasoning, directed only to the use of light sources at the edge of the light guide, does not explain sufficiently why one of skill in the art would have replaced a single light source positioned adjacent one input edge of Oe, with the plurality of light sources disclosed by Etsuo that have an output distribution defined by a greater width component than height component.” slip op. at 20
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“We have reviewed the testimony from both Dr. Escuti, and Patent Owner’s expert, Mr. Werner (Ex. 2021). We find that both experts have, at times, taken liberties in proffering conclusory statements without real analysis.5 However, it is within our discretion to assign the appropriate weight to the testimony of both Dr. Escuti, and Mr. Werner. See, e.g., 5 Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004). We, therefore, are not persuaded by Patent Owner’s contention that Dr. Escuti’s testimony be disregarded in its entirety. Instead, we have accorded the testimony of both Dr. Escuti and Mr. Werner the weight that is appropriate in view of the arguments and evidence of record in this trial. 4. Overview of Oe (Ex. 1024)” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“taken into account. In making this determination, we were aided by expert testimony. According to Dr. Escuti, “a person of ordinary skill in the art relevant to the ’660 Patent would have at least an undergraduate degree in physics, optics, engineering, or applied mathematics AND 3 years of work experience (or a graduate degree) in a field related to optical technology.” Ex. 1004 ¶ 23. Mr. Werner does not take issue with this testimony, and in fact proposes a similar standard: a person of ordinary skill in the art of the ’660 patent would hold an undergraduate degree in physics, material science, electrical engineering, or mathematics and have one or both of the following: (1) three or more years of work experience in a field related to optical technology; or (2) a graduate degree in a field related to optical technology. Ex. 2021 ¶ 76. We find that Mr. Werner’s definition is too limited in that it does not include a person with an undergraduate degree in optics. We, therefore, do not accept his standard and adopt instead Dr. Escuti’s more complete definition.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“disclosure in the specification of the ’600 patent to support Patent Owner’s proposed claim construction of “height” and “width.” Indeed, our review of the specification of the ’660 patent reveals that these terms are not defined explicitly or implicitly. For example, the specification states that “the deformities may vary in shape and/or size along the length and/or width of the panel members.” Ex. 1001, 5:43–44 (emphasis added). With respect to the planar optical conductor, claims 1 and 33 each recite, in relevant part, that the input edge has “at least one input edge with a greater cross-sectional width than thickness.” Ex. 1001, 9:11–12, 10:65–67 (emphasis added). Both claims 1 and 33 recite that the output distribution generated by the plurality of light sources is “defined by a greater width component than height component.”4 Id. at 9:15–16, 11:5–6 (emphasis added). Claim 33 recites that the plurality of LED light sources each have “a greater width than height.” Id. at 11:1–2 (emphasis added). Because the terms “width” and “height” are commonly understood, we also consult a general purpose dictionary. “Width” is defined as “the horizontal measurement taken at right angles to the length.” See Merriam- Webster.com, http://www.merriam-webster.com/dictionary/width, (last viewed July 10, 2015). The dictionary definition of height is “the distance from the bottom to the top of something standing upright.” See Merriam-” slip op. at 10
Patent outcomesUS 7,404,660 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,404,660 - LG Display Co, Ltd. v. Innovative Display Technologies LLCNo claims unpatentablePTAB · Jul 15, 2016 · IPR2015-01717 · APJ Beverly M Bunting · IPR · Final written decision
Claims 1, 3, 5, 10, 13, 16, 17, 25–29, and 33–35 were held not unpatentable under § 103 over Oe and Etsuo because the combination lacked an adequately supported reason to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“taken into account. In making this determination, we were aided by expert testimony. According to Dr. Escuti, “a person of ordinary skill in the art relevant to the ’660 Patent would have at least an undergraduate degree in physics, optics, engineering, or applied mathematics AND 3 years of work experience (or a graduate degree) in a field related to optical technology.” Ex. 1004 ¶ 23. Mr. Werner does not take issue with this testimony, and in fact proposes a similar standard: a person of ordinary skill in the art of the ’660 patent would hold an undergraduate degree in physics, material science, electrical engineering, or mathematics and have one or both of the following: (1) three or more years of work experience in a field related to optical technology; or (2) a graduate degree in a field related to optical technology. Ex. 2021 ¶ 76. We find that Mr. Werner’s definition is too limited in that it does not include a person with an undergraduate degree in optics. We, therefore, do not accept his standard and adopt instead Dr. Escuti’s more complete definition.” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“Owner’s expert, Mr. Werner (Ex. 2021). We find that both experts have, at times, taken liberties in proffering conclusory statements without real analysis.4 However, it is within our discretion to assign the appropriate weight to the testimony of both Dr. Escuti, and Mr. Werner. See, e.g., 4 Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004). We, therefore, are not persuaded by Patent Owner’s contention that Dr. Escuti’s testimony be disregarded in its entirety. Instead, we have accorded the testimony of both Dr. Escuti and Mr. Werner the weight that is appropriate in view of the arguments and evidence of record in this trial. 4. Overview of Oe (Ex. 1024)” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Because the terms “width” and “height” are commonly understood, we also consult a general purpose dictionary. “Width” is defined as “the horizontal measurement taken at right angles to the length.” See Merriam- Webster.com, http://www.merriam-webster.com/dictionary/width, (last viewed July 10, 2015). The dictionary definition of height is “the distance from the bottom to the top of something standing upright.” See Merriam- 3 In a related district court proceeding, the claim term “output distribution defined by a greater width component than height component” was determined to have its plain meaning. Ex. 2008, 47. See TR. 21:24–22:8. Webster.com, http://www.merriam-webster.com/dictionary/height, (last viewed July 10, 2015). Within the context of the claims, we are not persuaded by Patent Owner’s contentions that the term “width” is used other than according to its ordinary and customary meaning with respect to the shape of the input edge of the optical conductor, the output distribution of the light source, and the shape of the LED light source. Along this vein, we are not persuaded by Patent Owner’s contentions that the term “height” is used other than according to its ordinary and customary meaning with respect to the light output distribution. Based on this usage in the claims, no express construction is necessary.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“persuaded Petitioner has provided sufficient articulated reasoning with rational underpinning explaining why one with ordinary skill in the art would have modified the teachings of the applied references to address the noted differences. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). We consider Petitioner’s first reason to combine Oe and Etsuo “because they are in the same field of backlighting for liquid crystal display devices.” Pet. 36. The mere fact that both Oe and Etsuo are in the same field of endeavor falls short of an adequate rationale. The same field of endeavor analysis is merely the jumping-off point in reaching the determination of whether a claimed invention is obvious. See K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either from the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). Next, we consider Petitioner’s second reason to combine because “both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.” Pet. 36 (citing Ex. 1004 ¶ 165). Although Petitioner relies on the testimony of Dr. Escuti, he does not proffer any persuasive facts, data, or analysis to support his opinion. See Ex. 1004 ¶ 165 (“Also, both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.”). Merely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument probative value. Dr. Escuti’s opinion lacks sufficient support. For this reason, we do not credit the testimony of Dr. Escuti on this issue. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Petitioner’s second reason is also unavailing because it does not address the entirety of Petitioner’s proposed modification. As discussed above, Petitioner relies on the disclosure in Etsuo for both the position of the plurality of light sources adjacent a single input edge claim element, as well as the output distribution having a greater width component than height component claim element. Petitioner’s reasoning, directed only to the use of light sources at the edge of the light guide, does not explain sufficiently why one of skill in the art would have replaced a single light source positioned adjacent one input edge of Oe, with the plurality of light sources disclosed by Etsuo that have an output distribution defined by a greater width component than height component. We also consider Petitioner’s argument in the Reply that, in addition to Etsuo, Petitioner also relies on Oe’s explicit disclosure of “a plurality of point-like sources of light.” Reply 16–17. Petitioner directs us to the passage of Oe cited in its claim chart (Pet. 40), describing how the light source could be “a plurality of point-like sources of light arranged along the incident surface” (Ex. 1024, 7:30–31). Id. at 16. But Petitioner’s arguments in this regard do not address specifically its proffered reason to combine Oe and Etsuo. Indeed, Petitioner does not explain the relevance of the point-like sources of light to the claim element in question. See 37 C.F.R. § 42.22(a)(2) (requiring a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent). Patent Owner contends that “Petitioner never argues that ‘point-like sources’ are equivalent to LEDs.” PO Resp. 10. We agree. Petitioner’s argument that “Oe discloses a plurality of light sources 4 adjacent to the input edges” (Pet. 35 (citing Ex. 1024, 6:5–13; Ex. 1004 ¶ 161)) makes no mention of the specific passage in Oe concerning the point-like sources of light. Indeed, the cited passage states that:” slip op. at 20
Patent outcomesUS 7,404,660 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,404,660 - LG Display Co., Ltd. v. Delaware Display Group LLCAll claims unpatentablePTAB · Jun 23, 2016 · IPR2015-01666 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1–5 are unpatentable because Shinohara anticipates them.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Following institution, LG Electronics, Inc. filed timely a Petition and Motion for Joinder in Case IPR2015-01666, challenging the same claims of the ’973 patent on the same ground as that on which we instituted review in this proceeding, plus one additional ground. See Paper 24, 2. LG Electronics, Inc. agreed to abandon the additional ground should IPR2015- 01666 be joined with this proceeding. See id. at 2 n.1. To administer the proceedings more efficiently, we granted LG Electronics, Inc.’s Motion for Joinder, joining Case IPR2015-01666 with the instant proceeding. Id. at 5. For purposes of this Decision, we refer to LG Display Co., Ltd. and LG Electronics, Inc., jointly, as “Petitioner.”” slip op. at 2
- Skill levelOther
- BurdenUnpatentable
“B. Anticipation by Shinohara A claim is anticipated if each limitation of the claim is disclosed in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). As recently reiterated by the Federal Circuit, “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)). We analyze this ground based on anticipation in accordance with the above-stated principles.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Patent Owner repeats its unsuccessful argument that, “[w]ithout offering a construction for this term, the Petitioner has failed to meet the burden of 37 C.F.R. § 42.104(b)(3).” Id. Petitioner responds that this term (1) does not require construction; (2) is limited to a specific embodiment in the specification; (3) and imports a limitation from the specification into the claims. Reply 3–4. Having considered the full record developed during trial, we agree with Petitioner that this term does not require construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner’s arguments distinguishing the prior art do not rely on a particular construction for this term. See infra.” slip op. at 6
Patent outcomesUS 7,434,973 unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,434,973 - LG Display Co., Ltd. v. Delaware Display Group LLCAll claims unpatentablePTAB · Jun 23, 2016 · IPR2015-00506 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1–5 are unpatentable because Shinohara anticipates them.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Following institution, LG Electronics, Inc. filed timely a Petition and Motion for Joinder in Case IPR2015-01666, challenging the same claims of the ’973 patent on the same ground as that on which we instituted review in this proceeding, plus one additional ground. See Paper 24, 2. LG Electronics, Inc. agreed to abandon the additional ground should IPR2015- 01666 be joined with this proceeding. See id. at 2 n.1. To administer the proceedings more efficiently, we granted LG Electronics, Inc.’s Motion for Joinder, joining Case IPR2015-01666 with the instant proceeding. Id. at 5. For purposes of this Decision, we refer to LG Display Co., Ltd. and LG Electronics, Inc., jointly, as “Petitioner.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner repeats its unsuccessful argument that, “[w]ithout offering a construction for this term, the Petitioner has failed to meet the burden of 37 C.F.R. § 42.104(b)(3).” Id. Petitioner responds that this term (1) does not require construction; (2) is limited to a specific embodiment in the specification; (3) and imports a limitation from the specification into the claims. Reply 3–4. Having considered the full record developed during trial, we agree with Petitioner that this term does not require construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner’s arguments distinguishing the prior art do not rely on a particular construction for this term. See infra.” slip op. at 6
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“the ’176 grandparent application is insufficient. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997); see also Reply 5–6. We find that the cited disclosures in the ’176 grandparent application do not describe the density, size, depth, or height of the deformities at approximate midpoints between adjacent pairs of light sources. As discussed above, Patent Owner maintains that a skilled artisan reading the ’176 grandparent application would know that “the approximate midpoint between the two light sources is an area farther away from a light source.” PO Resp. 28 (emphasis added). We are not persuaded by this argument, for it does not establish that the approximate midpoint between adjacent pairs of light sources is the only area farther away from a light source. As Petitioner points out, “the increased distance from the light source is not limited to a distance along the length of the panel member, along the width of the panel member, or along any direction at all.” Reply 11. Thus, Patent Owner fails to meet its burden under Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015) (burden of production shifted to patent owner to prove entitlement to earlier filing date).” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedReference is prior artDecided for petitioner
“In view of the foregoing, we determine that Patent Owner has not demonstrated that the ’176 grandparent application, as originally filed, provides written description support for the disputed limitation. Therefore, we determine that claims 1–5 are not entitled to the benefit of the filing date of the ’176 grandparent application and Patent Owner is thus entitled only to the effective filing date of the application for the ʼ973 patent, February 9, 2007. As a consequence, we find that Shinohara qualifies as prior art.” slip op. at 11
Patent outcomesUS 7,434,973 unpatentableClaim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 7,434,973 - Westerngeco, L.L.C. v. PGS Geophysical AsSome claims unpatentablePTAB · Jun 8, 2016 · IPR2015-00310 · APJ Justin Busch · IPR · Final written decision
Claims 23, 24, and 30 are unpatentable as anticipated by de Kok; claims 23, 24, 28, and 29 are unpatentable as obvious over Beasley and Edington.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We agree with Patent Owner that the “indexed” limitation requires more than merely “selecting” times. Petitioner offers no explanation how Dr. Ikelle’s testimony that “indexed” should be construed broadly to mean “selected,” Ex. 2002, 184:8–11, would be consistent with the rest of the limitation that requires enabling separate identification of events originating from different sources. Patent Owner’s proposed construction, however, is unduly narrow to the extent it requires recording. As explained in the passage cited by Patent Owner, recording the signal and indexing are two separate aspects of the process involved in the ’981 patent. Ex. 1001, 5:62–67 (“A recording is made of the signal . . . that is indexed to a known time reference with respect to time of firing of the first source) (emphases added). The ’981 patent demonstrates that the term “indexed” is used in the “indexed” limitation according to one of its ordinary meanings that one thing is arranged in reference to another. Id.; see also id. at 6:66–7:1 (“[A] time of firing of each source with respect to a time index” is shown in Figure 4.), 8:33–40 (“[W]hen time is indexed with respect to the firing time of source A,” source B events are not coherent between firing sequences.).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Owner’s distinctions between what de Kok discloses and what claim 23 recites are inapposite. We are persuaded by Petitioner’s arguments, which Patent Owner does not contest, that de Kok’s firing times for each source are indexed (as we have construed the “indexed” limitation) to the reference time in a way that allows the shot records to be separated into source records. Because de Kok discloses both indexing and enabling separate identification of seismic events originating from each source, de Kok discloses the “indexed” limitation as we have construed it.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“unpersuaded. Petitioner’s challenge relies on Edington for its teaching that time-delays can be used to encode and decode signals. Based on the arguments and evidence presented during trial, we are persuaded by Petitioner that a person having ordinary skill would have used time-aligning signals, as taught by Edington, as a type of decoding without needing to take multiple shots from the same source. Accordingly, a person having ordinary skill would have been able to decode a signal for a given encoding scheme, and we find Patent Owner’s assertion that an ordinarily skilled artisan would “lack[] an effective decoding scheme” unpersuasive.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Beasley clearly states that “no time shift” results in “no spatial reflection-point smearing.” Ex. 1004, 7:61–62. Both parties agree that some amount of spatial reflection point smearing would result from using Edington’s time delay encoding with Beasley’s seismic surveying system. See Tr. 28:3–8, 38:14–15 (counsel for Patent Owner stating that “frankly, any time you have a time delay at all, there is spatial reflection point smearing”). However, neither party pointed us to evidence explaining the relationship between the amount of delay and the amount of smearing, or how much smearing would be tolerated in marine seismic surveying. One consequence of the lack of evidence on this point is that it is unclear whether Beasley is stating that simultaneous activation versus sequential activation avoids smearing or if simultaneous activation versus near-simultaneous activation avoids smearing. Beasley’s disclosure regarding the benefit of eliminating smearing immediately follows the discussion that distinguishes between sequential and concurrent source activation. Based on the record before us, we find Beasley indicates that simultaneous (or near-simultaneous) activation of sources avoids the smearing that otherwise results when activating the sources sequentially. Ex. 1004, 7:52–63. Furthermore, Patent Owner has not argued, and we do not find, that claim 23 should be construed to exclude any amount of spatial reflection point smearing.10 The parties have pointed to no evidence or argument explaining sufficiently why the level of smearing resulting from Petitioner’s proposed combination of Beasley and Edington would be unacceptable, but the level of smearing resulting from the time delay encoding recited in the ’981 patent would be acceptable. Therefore, to the extent that incorporating Edington’s time delay encoding into Beasley’s system generates reflection point smearing, the evidence does not support a finding that claim 23 excludes any amount of smearing. Based on the record before us, we are not 10 When asked whether the subject matter of the ’981 patent suffered from spatial reflection point smearing because of its use of time delays, counsel for Patent Owner stated “I do think it suffers it to some degree.” Tr. 41:14– 15. persuaded the smearing allegedly introduced by combining Edington’s time delay encoding with Beasley’s system would have led an ordinarily skilled artisan away from that combination.” slip op. at 25
Patent outcomesUS 6,906,981 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,906,981 - Westerngeco, L.L.C. v. PGS Geophysical AsSome claims unpatentablePTAB · Jun 8, 2016 · IPR2015-00309 · APJ Justin Busch · IPR · Final written decision
Claims 1, 2, 6, 7, 10, 11, 16, 17, 21, and 22 are unpatentable; claims 3–5 are not shown unpatentable, and challenges to claims 18–20 are dismissed.
RulingsFinal written decision- BurdenMixed
“Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1, 2, 6, 7, 10, 11, 16, 17, 21, and 22 are unpatentable, but has failed to do so for claims 3–5 and 12–15. We dismiss the Petition with respect to the challenges asserted against claims 18–20.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“more than merely “selecting” times. Petitioner offers no explanation how Dr. Ikelle’s testimony that “indexed” should be construed broadly to mean “selected,” Ex. 2002, 184:8–11, would be consistent with the rest of the limitation that requires enabling separate identification of events originating from different sources. Patent Owner’s proposed construction, however, is unduly narrow to the extent it requires recording. As explained in the passage cited by Patent Owner, recording the signal and indexing are two separate aspects of the process involved in the ’981 patent. Ex. 1001, 5:62–67 (“A recording is made of the signal . . . that is indexed to a known time reference with respect to time of firing of the first source) (emphases added). The ’981 patent demonstrates that the term “indexed” is used in the “indexed” limitation according to one of its ordinary meanings that one thing is arranged in reference to another. Id.; see also id. at 6:66–7:1 (“[A] time of firing of each source with respect to a time index” is shown in Figure 4.), 8:33–40 (“[W]hen time is indexed with respect to the firing time of source A,” source B events are not coherent between firing sequences.).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Although a prior art reference may anticipate when the claim limitations not expressly found in that reference are inherent in it, inherency requires that “the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Here, Petitioner’s arguments and evidence fail to persuade us that de Kok disclosure of suppressing random noise inherently includes determining trace to trace coherence. Merely demonstrating a step may be done is not sufficient to show that step is inherently anticipated. Accordingly, based on the arguments and evidence submitted, we find Petitioner has failed to demonstrate, by a preponderance of the evidence, that de Kok anticipates claims 12 and 17. Similarly, because claims 13–15 ultimately depend from claim 12, we find Petitioner has failed to demonstrate, by a preponderance of the evidence, that de Kok anticipates claims 13–15.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The relevant passages cited by both parties demonstrate that Beasley distinguishes between alternating and concurrent firings. See, e.g., Ex. 1004, 7:52–63. Although Herkenhoff states that the concurrent disclosure in Beasley means “exactly concurrently,” Patent Owner has not pointed to any clear disclosure in Beasley itself indicating “concurrently” should be understood as excluding any amount of time delay. Petitioner, however, has pointed to multiple references where Beasley explains that sources may be fired “simultaneously or nearly simultaneously.” Pet. Reply 15 (citing Ex. 1004, 8:46–47); Pet. 47 (quoting Ex. 1004, 1:19–25 (“The present invention, in certain aspects, is directed to seismic survey systems and methods in which two or more seismic sources are fired simultaneously, or significantly close together temporally . . . .”)); see also Ex. 1004, 1:47–51, 8:44–47, 9:5–10, 12:26–29. Moreover, claim 1 of the ’655 patent, which Patent Owner asserts claims the “first embodiment” of the ’981 patent, recites a method including the step of “substantially simultaneously launching a first acoustic wavefield,” from the leading source, “the first wavefield being characterized by a first unique code and launching a second acoustic wavefield” from the trailing source, “the second acoustic wavefield being characterized by a second unique code.” Ex. 2009, 6:46–53. Accordingly, Beasley does not exclude time delay encoding from its disclosed “concurrent” activation embodiments.” slip op. at 27
Patent outcomesUS 6,906,981 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 6,906,981 - Westerngeco, L.L.C. v. PGS Geophysical AsSome claims unpatentablePTAB · Jun 8, 2016 · IPR2015-00311 · APJ Justin Busch · IPR · Final written decision
Claims 31, 32, and 35–37 are unpatentable as obvious over Beasley and Edington; the Board did not find claims 31–34 and 36–38 anticipated by de Kok or claims 33–34 obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner initially argued for a specific construction of “wavelet time” as “the duration of the source signature.” Pet. 14–15. For purposes of the Decision on Institution, we preliminarily construed wavelet time consistent with Petitioner’s proposed construction. Dec. on Inst. 14–15. Now, with the full record before us, we determine an explicit construction of “wavelet time” is not necessary to resolve this controversy. Petitioner does not clearly set forth a proposed construction for any other term in its Petition. Patent Owner argues for specific constructions of “quasi-randomly” and “randomly.” PO Resp. 15–19. The constructions of “quasi-randomly” and “randomly” are not in dispute, and an explicit construction is not necessary to resolve the controversy; accordingly, we do not provide an explicit construction of “quasi-randomly” or “randomly.” Therefore, we determine there is no need to construe explicitly any term for purposes of this decision.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that de Kok’s polarity encoding and decoding process does not disclose the “time aligning” step. As Patent Owner argues, de Kok describes a polarity encoding and decoding system that does not align the “recorded signals with respect to a firing time of the second source in each firing sequence.” Specifically, de Kok explains that it uses activation sequences and polarity to generate signals, from which “source records may be derived” “using a combination of shot record summations, inversions and filtering.” Ex. 1003, 2:51–53; see also id. at 4:55–5:4, 5:55–65. To the extent de Kok discusses time delay encoding, any arguable time alignment applies to the firing of the sources, not the recorded signals. Id. at 5:66–6:2, 6:41–52. Accordingly, Petitioner has not pointed to persuasive evidence that de Kok’s polarity encoding and decoding discloses the “time-aligning” step.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The relevant passages cited by both parties demonstrate that Beasley distinguishes between alternating and concurrent firings. See, e.g., Ex. 1004, 7:52–63. Although Herkenhoff states that the concurrent disclosure in Beasley means “exactly concurrently,” Patent Owner has not pointed to any clear disclosure in Beasley itself indicating “concurrently” should be understood as excluding any amount of time delay. Petitioner, however, has pointed to multiple references where Beasley explains that sources may be fired “simultaneously or nearly simultaneously.” Pet. Reply 12 (citing Ex. 1004, 8:46–47); Pet. 38 (quoting Ex. 1004, 1:19–25 (“The present invention, in certain aspects, is directed to seismic survey systems and methods in which two or more seismic sources are fired simultaneously, or significantly close together temporally . . . .”)); see also Ex. 1004, 1:47–51, 8:44–47, 9:5–10, 12:26–29. Moreover, claim 1 of the ’655 patent, which Patent Owner asserts claims the “first embodiment” of the ’981 patent, recites a method including the step of “substantially simultaneously launching a first acoustic wavefield,” from the leading source, “the first wavefield being characterized by a first unique code and launching a second acoustic wavefield” from the trailing source, “the second acoustic wavefield being characterized by a second unique code.” Ex. 2009, 6:46–53. Accordingly, Beasley does not exclude time delay encoding from its disclosed “concurrent” activation embodiments. Patent Owner’s argument that time delay encoding results in a plain wavefield rather than an encoded wavefield and, therefore, using time delay encoding would not fall within Beasley’s “any type of coding,” is similarly unpersuasive. Patent Owner fails to address that Beasley distinguishes between “a signal with no encoded feature, individual identifier, tag, discriminating feature, or separate signature” and “signals that can be discriminated from each other due to some identifying characteristic, parameter, signature or feature.” Ex. 1004, 9:67–10:8 (emphasis added). Accordingly, the evidence supports Petitioner’s contention that time delay encoding generates signals with an identifying parameter or characteristic (the timing) that would allow the signals to “be discriminated from each other.” Pet. Reply 11–12. Furthermore, Dr. Lynn acknowledged that “Edington’s time delay source coding is ‘a type of source signature encoding.’” Id. (quoting Ex. 1022, 148:18–23).” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“nonobviousness. PO Resp. 55–60. The factual inquiries for obviousness include secondary considerations based on evaluation and crediting of objective evidence. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). However, to accord substantial weight to objective evidence requires the finding of a nexus between the evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). “Nexus” is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The burden of showing that a nexus exists lies with the patent owner. Id.; see In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994). Patent Owner points to various prior attempts (including Edington, Beasley, and de Kok) to conduct simultaneous shootings in a marine environment and the failings of each of them. Id. at 43–44. Patent Owner also points to various published papers allegedly “investigat[ing] data processing techniques for use with data sets modeled on [the ’981 patent]’s varied time delays” and field trials and studies allegedly using the ’981 patent’s “time-delay acquisition and indexing methods.” Id. at 44–48. Petitioner argues Patent Owner has shown no nexus between Patent Owner’s proffered secondary considerations and the invention of the ’981 patent. Pet. Reply 20–22. Petitioner contends Patent Owner’s focus on the varied time delays of claim 31 is insufficient because time delayed encoding “existed long before the ’981 patent.” Id. We agree with Petitioner that Patent Owner has not demonstrated sufficiently a nexus between the secondary considerations and the alleged novelty of claim 31. First, as Petitioner points out, and as borne out by the evidence in this case, time delay encoding for seismic surveying existed prior to the ’981 patent. E.g., Exs. 1006, 1021. Second, the majority of the evidence cited by Patent Owner focuses on the randomness of the time delays, not just the use of time delays generally. Consequently, Patent Owner has not presented persuasive evidence or analysis linking the claims at issue with the alleged “long-felt but unmet need, industry praise, and copying.” See PO Resp. 55.” slip op. at 20
Patent outcomesUS 6,906,981 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,906,981
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.