- Valve Corporation v. Ironburg Inventions Ltd.No claims unpatentablePTAB · Jan 26, 2023 · IPR2017-00858 · APJ Mitchell G Weatherly · IPR · Remand
Claims 18, 19, 21, 26, and 29 were not shown unpatentable as obvious because Valve did not provide a reasoned basis to combine Burns with the design references.
RulingsRemand decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“testimony relating to the combinations of Burns with LaCelle or Knight, it falls short of providing a reasoned basis for modifying Burns. Dr. Rempel merely opines that incorporating the curved shapes of back controls from LaCelle or Knight into Burns would result in a back control that “could have better coupling with the user’s finger than the flat paddles that are otherwise disclosed by Burns.” Ex. 1019 ¶¶ 39–40 (emphasis added). In other words, modifying Burns in view of LaCelle or Knight might improve Burns. Dr. Rempel testified that the modification “could” improve Burns, not that it “would” improve Burns. The possibility of improvement, which also allows that Burns would not be improved, fails to rise to the level of “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, we find such testimony to be insufficient to demonstrate that an ordinarily skilled artisan would have modified Burns in view of LaCelle or Knight. After considering the parties’ briefing, we conclude that Valve’s arguments and supporting evidence for combining teachings of Burns with each one of the Design References, excluding the untimely evidence submitted with Valve’s Supplemental Reply, are unpersuasive. Neither the Petition nor the evidence cited in the Petition cogently explains what advantage would be provided by the alternative control geometries of Burns and each of the Design References. A petitioner cannot demonstrate obviousness “by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “To facilitate review, this analysis should be made explicit.” KSR, 550 U.S. at 418 (citing Kahn, 441 F.3d at 988). Here, we find that Valve proffers conclusions without sufficient reasoning or objective evidence to demonstrate a reasonable likelihood of establishing that an ordinarily skilled artisan would have found it obvious to combine the elements from the prior art to arrive at the claimed controllers.” slip op. at 17
- Expert testimonyPetitioner expert discountedOther
“this simple and predictable art, and the results would not have been unexpected.” Id. (citing Ex. 1009 ¶¶ 21, 27, 32). Dr. Rempel cites no objective evidence to support this cited testimony, which largely parrots Valve’s brief. Compare id., with Ex. 1009 ¶¶ 21, 27, 32. Dr. Rempel’s testimony is entitled to less weight because it is not supported by underlying facts or data. See 37 CFR § 42.65(a).” slip op. at 15
- ExcludeMotion to exclude, grantedGranted in part
“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify “with particularity” the “evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). “All arguments for the relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition or patent owner response.” 37 C.F.R. § 42.23(b). Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). We find that: (1) Valve proffered new testimony to fill the gaps that we identified in the Institution Decision and (2) presenting such testimony in the reply constitutes untimely new argument and evidence that must have been presented in the Petition.” slip op. at 16
Patent outcomesUS 9,289,688 not shown unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,289,688 - Apple, Inc. v. Corephotonics Ltd.No claims unpatentablePTAB · Nov 8, 2021 · IPR2020-00906 · APJ John F Horvath · IPR · Final written decision
Claims 19–22 were not shown unpatentable because Petitioner did not establish that Ogata’s lens could be scaled for Parulski’s camera with a reasonable expectation of success.
RulingsFinal written decision- Expert testimonyDecided for patent owner
“first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner. The Petition contends that a person of ordinary skill in the art would have known that Ogata’s lens (using glass lens elements) could have been scaled to focus an image onto a 1/2.5” image sensor for use in Parulski’s camera. See Pet. 24–30; Ex. 1021, 36. Petitioner’s reply evidence and argument is not introduced to support that contention but a different contention—that a person of ordinary skill in the art would have known that Ogata’s lens could have been redesigned using aspheric plastic lens elements to focus an image onto a 1/3” image sensor. See n.11, supra. This is a new contention that does not support Petitioner’s 11 We note that Dr. Sasián’s analysis discloses how Kawamura’s lens can be modified by replacing the spherical glass lens elements with aspherical plastic lens elements, moving the aperture stop to the first lens element, changing the F number to 2.8, and reducing the effective focal length to focus an image onto a 1/3” image sensor rather than a 1/2.5” image sensor. See Ex. 1039 ¶¶ 25–30; App’x, 17–18. Dr. Sasián also opines that although this analysis illustrates how Kawamura’s lens could have been modified, a person skilled in the art “would have recognized that Ogata could have been similarly adjusted to yield a miniaturized form-factor.” Id. ¶ 25. because it is a new and untimely contention, we do not consider it further. See Consolidated Trial Practice Guide (Nov. 2019)12 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.”); see also Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015) (“The Board must make judgments about . . . when a Reply contention crosses the line from the responsive to the new.”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d at 1359, 1369–70 (Fed. Cir. 2016) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale to explain why one of skill in the art would have been motivated to combine” prior art references); Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale” for why a claim would have been obvious).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableReasonable expectation not foundNot shown unpatentable
“first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15
Patent outcomesUS 10,225,479 not shown unpatentable§ 103 obviousnessPatents in suitUS 10,225,479 - Apple, Inc. v. Corephotonics Ltd.No claims unpatentablePTAB · Nov 8, 2021 · IPR2020-00905 · APJ John F Horvath · IPR · Final written decision
Claims 1–16, 18, 23–38, and 40 were not shown unpatentable because the asserted obviousness combinations did not establish a fused image with both Wide perspective and position POV.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In a dual-aperture camera image plane, as seen by each sub-camera (and respective image sensor), a given object will be shifted and have different perspective (shape). This is referred to as point-of-view (POV). The system output image can have the shape and position of either sub-camera image or the shape or position of a combination thereof. If the output image retains the Wide image shape then it has the Wide perspective POV. If it retains the Wide camera position then it has the Wide position POV. The same applies for Tele images position and perspective. As used in this description, the perspective POV may be of the Wide or Tele sub-cameras, while the position POV may shift continuously between the Wide and Tele sub-cameras. In fused images, it is possible to register Tele image pixels to a matching pixel set within the Wide image pixels, in which case the output image will retain the Wide POV ("Wide fusion"). Ex. 1001, 5:10–26.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find Petitioner sets forth sufficient reasoning with rational underpinning to combine the teachings of Parulski and Konno. Parulski lenses, but fails to give lens prescription data for the two camera lenses. Konno discloses lens prescription data for a dual-lens camera utilizing two thin lenses. The combination, therefore, is one of familiar elements according to known methods to obtain predictable results or a substitution of one element for another known in the field to obtain a predictable result. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23. Accordingly, for the reasons discussed above, Petitioner has failed to demonstrate by a preponderance of evidence that claims 1 and 23 are unpatentable as obvious over the combination of Parulski and Konno.” slip op. at 21
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Patent Owner argues that Petitioner and Dr. Durand have failed to demonstrate that Parulski teaches “the ‘fused image with a point of view (POV) of the Wide camera’ limitation” because their “sole argument that Parulski meets this limitation is based on the output [image] having the ‘wide image’s field of view.’” PO Resp. 29 (citing Ex. 1003 ¶ 51). Patent Owner further argues that “[n]othing in Parulski suggests that whatever image data from the tele image that might be ‘fused’ into the output would be modified to have the shapes and positions from the wide image POV” and “nothing in Dr. Durand’s declaration even attempts to establish [that] this admitted during his deposition that he had not provided an opinion about whether Parulski generates a fused image having both a Wide perspective POV and a Wide position POV. See PO Sur-Reply 5 (citing Ex. 2041, 52:25–54:20). We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23.” slip op. at 20
Patent outcomesUS 10,225,479 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,225,479 - Intel Corporation v. XMTT, Inc.No claims unpatentablePTAB · May 11, 2021 · IPR2020-00145 · APJ Phillip J Kauffman · IPR · Final written decision
Claims 1–39 were not shown unpatentable because the petition did not address the construed system-level processing modes, and Nakaya’s synchronization did not mark the claimed transition.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“adapted to execute “primarily” in serial, and serial memory adapted to store data for use by the serial processor in executing the software instructions “substantially” in serial. Ex. 1001, 3:1–6. That embodiment also includes a plurality of parallel processors adapted to execute “substantially” in parallel. Id. at 2:59–67. Significantly, independent claim 32 refers to the serial processor both as adapted to execute “primarily” in serial, and as adapted to execute “substantially” in serial. Ex. 1001, 16:17–23. In light of these teachings, we find that the Specification uses the terms “primarily” and “substantially” interchangeably. In a context similar to that of the claims at issue, “substantially” has been interpreted to mean “largely but not wholly that which is specified.” See, e.g., York Prods. v. Cent. Tractor and Farm & Family Ctr., 99 F.3d 1568, 1573 (Fed. Cir. 1996). That interpretation is consistent with the claim language and the Specification. Returning to the language of claim 1, we determine that “a serial processing mode” refers to the system executing primarily in serial on the serial processor. Likewise, “a parallel processing mode” refers to the system executing primarily in parallel on the parallel processors. The Specification supports that interpretation. Specifically, the Specification describes that the system may make a hard switch from “serial processing mode” to “parallel processing mode,” or may switch from “primarily serial processing” to “primarily parallel processing.” Ex. 1001, 11:46–52; see also id. at 1:58–61, 3:34–35; 5:6–48, 6:54–56; 8:3–5; 10:36–41. Therefore, the Specification explicitly describes primarily serial processing as an example of a serial processing mode, and likewise describes primarily parallel processing as an example of a parallel processing mode. This suggests that a serial processor as claimed must be adapted to execute in a serial processing mode (a mode of executing so that the system is executing primarily in serial). Likewise, the parallel processor must be adapted to execute in a parallel processing mode (a mode of executing so that the system is executing primarily in serial). We return to the language of claim 1 having determined that: “adapted to” means “configured to,” “primarily” means “largely but not wholly,” and the serial and parallel processing modes each refer to the execution of the system as a whole. Thus, the claimed serial processor must be configured to have a serial processing mode (a mode where the system executes largely but not wholly in serial on the serial processor). Likewise, the parallel processors must be configured to have a parallel processing mode (a mode where the system executes largely but not wholly in parallel on the parallel processors).” slip op. at 10
- Skill levelSkill level board ownOther
“There is very little difference between the skill levels asserted by the parties. As we pointed out in the Institution Decision, the parties only disagree with regard to two of the factors relevant to the level of skill in the art. See Dec. 12. There is no dispute with regard to the many other factors that influence the level of skill in the art. Further, also as pointed out in the Institution Decision, Patent Owner’s broader recitation of experience in “general computer architecture” would include experience with both serial and parallel processing. Id. In the Response, Patent Owner chose not to dispute other factors of the level of skill inquiry, and chose not to dispute that general experience would include experience with parallel computing architectures.5 We determine that a person of ordinary skill in the art at the time of ’388 patent would have had either a Bachelor’s or a Master’s degree in electrical engineering, computer engineering, or a related field, and would have had about three years of experience in computer architecture that 5 We informed the parties they could further address the level of skill during the trial. Dec. 13. included experience with both serial and parallel processing. Our reasoning follows.” slip op. at 15
- BurdenFwd all claims patentableNot shown unpatentable
“We agree with Patent Owner that the Petition must identify how the construed claim is unpatentable. See 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4). We analyze the limitation at issue as addressed by the Petition.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Nakaya’s system changes the ratio of serial to parallel processors at T6, not at T8 (synchronization). Specifically, prior to T6, the system is processing on four serial and four parallel processors, and after time T6, the system is processing on one serial and seven parallel processors. Nakaya’s processor ratio change is akin to the claimed transition from serial processing mode to parallel processing mode. At T8, the ratio of serial to parallel processors being used by the system remains the same (one to seven). That is, at the moment Petitioner contends corresponds to the claimed transition from serial to parallel processing, there is actually no change in the ratio of serial to parallel processors in use by Nakaya’s system. We emphasize that the Petition is deficient because it fails to adequately address how the prior art discloses or suggests a serial processor configured to execute so that the system executes largely but not wholly in serial on the serial processor. Likewise, the Petition does not adequately address how the prior art discloses or suggests a parallel processor adapted to execute so that the system executes largely but not wholly in parallel on the parallel processor.” slip op. at 27
Patent outcomesUS 7,707,388 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,707,388 - Kranos Corporation v. Riddell, Inc.No claims unpatentablePTAB · Jul 11, 2019 · IPR2016-01646 · APJ James J Mayberry · IPR · Remand
On remand, the Board found claims 1–7, 11, 13, 25–28, 30, 32–37 not shown unpatentable on the added grounds; it also denied Riddell’s motion to exclude as moot.
RulingsRemand decision- RemandOther
“motion to terminate the appeal in IPR2016-01646 and remand the proceeding, in light of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), and the Director’s Guidance on the Impact of SAS on AIA Trial Proceedings, for us to address claims and grounds that we had not instituted.3 In response, we modified our Decision on Institution to institute trial for all challenged claims and all grounds. Paper 32, 3 (the “November 9, 2018, Order”). We ordered briefing on those claims and grounds added to the trial in the November 9, 2018, Order. See Paper 32, 3–7.” slip op. at 3
- PTAB / AIA Trials › Motions to amend / substitute claimsAdverse judgmentGranted
“certain claims and grounds added to the trial in our November 9, 2018, Order. Paper 33. In the motion, Kranos “requests adverse judgment as to . . . [c]laims 3, 4, 7, 13, and 36.” Id. at 2. The motion continues that claims 6 and 26 remain in this proceeding for the grounds of “[o]bviousness over each of Sears or Rappleyea in combination with Ispas.” Id. As to claims 3, 4, 7, 13, and 36, Kranos’s motion is granted. Accordingly, we will enter the following judgment as to those claims: (1) claim 13 is not proven unpatentable as anticipated by Sears; (2) claim 13 is not proven unpatentable as anticipated by Rappleyea; (3) claim 13 is not proven unpatentable as anticipated by Zeller; (4) claim 36 is not proven unpatentable as obvious over Sears, Rappleyea, or Monica and Halstead; and (5) claims 3, 4, and 7 are not proven unpatentable over Sears or Rappleyea and Ispas.” slip op. at 9
- Skill levelSkill level board ownDecided for petitioner
“record before us, and ultimately found that a person having ordinary skill in the art to which the ’118 patent pertains would have at least a Bachelor’s degree in engineering or physics and at least one year of experience in designing protective equipment, protective helmets, or plastic parts including the design of protective or structural plastic elements. Final Wrtn. Dec. 9–10. We also found that additional experience (at least three years) may be substituted for a formal engineering degree. Id. at 10. We found that the prior art of record reflects this level of ordinary skill in the art. Id. at 10–11. We noted that our patentability analysis presented below would reach the same findings and determinations under Kranos’s or Mr. Shewchenko’s definition of the level of ordinary skill in the art. Id. at 11. In the supplemental briefing, neither party argued for a different definition of the level of ordinary skill than the definition adopted in our Final Written Decision, nor do we discern any reason, based on the supplemental record, to change this definition.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The term “aligned along” does not appear in any claim addressed in this Supplemental Final Written Decision. See, e.g., Final Wrtn. Dec. 11 (indicating that the term “aligned along” appears in independent claim 34). In the Final Written Decision, we determined that we did not need to expressly construe the term “integrally formed” to resolve the parties’ dispute. See id. at 16. As will be apparent from our analysis below, we need not address this term further here.” slip op. at 13
Patent outcomesUS 8,528,118 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,528,118 - Kranos Corporation D/B/A Schutt Sports v. Riddell, Inc.No claims unpatentablePTAB · Feb 7, 2018 · IPR2016-01649 · APJ Barry L Grossman · IPR · Final written decision
Claims 1, 2, 4–8, 13, 15, and 16–19 were not shown unpatentable under either §103 ground based on inadequate claim mapping and an unpersuasive rationale to combine.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner does not present an evidence-based analysis of factors typically considered in determining the level of ordinary skill. Petitioner merely states a conclusion without any analysis or persuasive evidence to support that conclusion. Petitioner’s entire assertion concerning the level of ordinary skill is the following sentence: It is contemplated that a person of skill in the art (“POSITA”) in the field of coupling and release mechanisms at the time of the invention of the ‘269 patent would have a bachelor’s degree in engineering or more than three years of experience in product design, with specific experience in attachment and release mechanism design. Pet. 50 (emphasis added). Petitioner does not cite any evidence in the Petition to support this assertion.5 5 Petitioner cites to the Declaration of Mr. Float in its Reply. Pet. Reply 9 (citing Ex. 1028 ¶ 65). Mr. Float’s declaration testimony merely restates Petitioner’s conclusion without any analysis, facts, or data to support that conclusion. As such, his testimony on this issue is entitled to little if any probative weight. 37 C.F.R. § 42.65. We further note that Petitioner did not provide this evidence with the Petition and consequently Patent Owner did not have notice or an opportunity to respond. Patent Owner proposes a higher level of ordinary skill than that asserted by Petitioner. According to Patent Owner, a person of ordinary skill would have had “a degree in a relevant technical, physics or engineering field and at least two years of experience in designing and engineering sports helmets. Alternatively, a POSITA could have at least five years of experience designing sports helmets, even without the relevant technical degree.” PO Resp. 21–22 (citing Ex. 2001 ¶ 21) (emphasis added). Mr. Shewchenko testifies that he is aware of “the factors that may be considered in determining the level of ordinary skill in the art.” Ex. 2001 ¶ 16. These factors include: (1) the education level of the inventor; (2) the types of problems encountered in the art; (3) the prior art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the education level of active workers in the field. Id. Mr. Shewchenko also testifies that “[g]iven the potential for significant injury, football (and other contact sports) has instituted rigid safety standards for helmets.” Id. at 20 (citing the National Operating Committee on Standards for Athletic Equipment (“NOCSAE”) safety guidelines for athletic equipment (Exhibit 2003)). Mr. Shewchenko concludes “[i]n view of these potential safety hazards and stringent performance requirements associated specifically with the design of helmets for contact sports,” it is his opinion that: a person of ordinary skill in the art with respect to the ‘269 patent would have [had] a degree in a relevant technical, physics, or engineering field and at least two years of experience designing and engineering sports helmets. Alternatively, one could be considered a person of ordinary skill in the art without the relevant technical degree with at least five years of experience designing sports helmets.” Id. at 21. We have not been directed to any evidence in the record concerning the educational level of the inventors of the ’269 patent; the rapidity with which innovations in the relevant technology are made; or the educational level of workers active in the field. The type of problems discussed in the ’269 patent suggest skill involving” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner
“Dependent claim 2 addresses the direction of the actuation force applied to the coupler mechanism. It recites the negative limitation that “the actuation force lacks a rotational component.” Dependent claims 7 and 18 each recite that a component of the “releasable coupler mechanism,” the “cylindrical body,” “lacks threads.” As dependent claims, these claims further limit the claims from which they depend. As such, as an initial premise, these dependent claims suggest that, under the doctrine of claim differentiation, the construction of the phrase “releasable coupler mechanism” in independent claims 1 and 13 is broader than, and thus does not include, limitations on the direction of the actuation force (“lacks a rotational component,” as recited in claim 2) or any exclusion of threads (“lacks threads,” as recited in claims 7 and 18). As we explain below, however, the doctrine of claim differentiation does not control the outcome here. b. Specification The Abstract summarizes the “invention” by stating “[t]he present invention is directed to an improved sports helmet including a quick release connector assembly for the faceguard that allows for rapid disconnection of the faceguard from the helmet shell . . . [using] [a]n inwardly directed actuation force that lacks a rotational component.” Ex. 1001, Abstract (emphasis added). This summary emphasizes that the quick-release feature of the “releasable coupler mechanism,” and the rapid disconnection function, are dependent on an inwardly directed force that does not have a conventional rotational component.” slip op. at 13
- BurdenNot shown unpatentable
“Our rules require a petition to specify where each element of the claim is found in the prior art patents or printed publications relied upon. 37 C.F.R. § 42.104(b)(4), (5). It is unclear from Petitioner’s argument where each element of challenged claims 1, 4, 13, and 15 is found in either Ide or Szendel and how and why the two references would have been combined. For example, independent claims 1 and 13 each require a releasable coupler mechanism that requires a “washer,” a “cylindrical body,” and a “head.” Dependent claims 4 and 15 require a cylindrical body with two segments of different diameters. Petitioner has not identified persuasively which elements of Ide or Szendel are being relied upon to meet these limitations, and why it would have been obvious to combine the selected elements. We decline to speculate as to Petitioner’s intentions. Accordingly, Petitioner has not met its burden to establish that claims 1, 4, 13, and 15 are unpatentable.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Common sense” is a conclusory label. It is the final step in a reasoned analysis based on the evidence. References to “common sense”—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016), cert. denied sub nom. Google Inc. v. Arendi S. A. R. L., No. 16-626, 2017 WL 1040877 (U.S. Mar. 20, 2017). Petitioners’ failure to explain the “common sense” on which it relies is problematic. Id. slip op. at 33
Patent outcomesUS 8,813,269 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,813,269 - Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Aug 28, 2017 · IPR2016-00593 · APJ Garth D Baer · IPR · Final written decision
The Board held that claims 12–15, 21–23, 25–27, 33–38, 44, and 45 were not shown unpatentable because Pictometry was not established as a publicly accessible printed publication.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Version 2.7 (“EFS 2.7 User Guide,” “Pictometry,” or “User Guide”) and, as the name suggests, is a user guide for the Pictometry software product. See Ex. 1004, xiii. Patent Owner argues that Petitioner does not demonstrate that Pictometry is prior art. PO Resp. 5–10. In our Final Written Decision in IPR2016-00594, we considered substantively the same arguments and evidence Patent Owner and Petitioner raise in this case. See IPR2016-00594 FWD 17–29; compare IPR2016-00594 Paper 31, 13–20 with PO Resp. 6– 13; and compare IPR2016-00594 Paper 33, 3–9 with Reply 4–11. In IPR2016-00594, we found Pictometry’s limited dissemination to some governmental entities subject to licensing restrictions was not sufficient to show public dissemination or public accessibility. IPR2016-00594 FWD 17–29. We adopt that same finding here. For the reasons explained in IPR2016-00594, we find that Petitioner has not established by a preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. §§ 102(b) and 311(b).” slip op. at 6
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“substantively the same as the arguments made in IPR2016-00594. In IPR2016-00594, we denied Patent Owner’s motion to exclude Exhibit 1004 (Pictometry), Exhibit 1011 (a Merriam-Webster Dictionary Definition “database” copied from a web page), Exhibit 2010 (Cohasset Town Report 2008), 2011 (LARIAC1 Pictometry Training), Exhibit 2012 (LAR-IAC2 Product Guide), Exhibit 2020 (“GIS: Pictometry: Oblique Imagery training), Exhibit 2021 (“Pictometry License Guidelines”), and Exhibit 2022 (“Pictometry – April 19, 2007”). IPR2016-00594 FWD 5–17. We granted Patent Owner’s motion to exclude Exhibit 2013 (article titled “Los Angeles County Extends its License Agreement with Pictometry for New Oblique Aerial Photos”), Exhibit 2014 (“Pictometry Administrative Training”), Exhibit 2015 (“Information about TXWILM Administrative Training”), Exhibit 2016 (“Pictometry Administrative Training”), Exhibit 2019 (“GIS Working Group Meeting Minutes”), Exhibit 2023 (“Welcome to Your End User Training”), Exhibit 2024 (“Electronic Field Study Getting Started Guide”), Exhibit 2025 (“Pictometry Announces Technical Advancements for GIS Professionals1”), and Exhibit 2026 (“Pictometry Announces Technical Advancements for GIS Professionals2”). Id. We adopt the same findings and conclusions here. For the reasons explained in IPR2016-00594, we deny the motion to exclude Exhibits 1004, 1011, 2010, 2011, 2020, 2021, and 2022, but grant the motion to exclude Exhibits 2013, 2014, 2015, 2016, 2019, 2023, 2024, 2025, and 2026. See id.” slip op. at 5
Patent outcomesUS 8,823,732 not shown unpatentable§ 102 anticipationPatents in suitUS 8,823,732 - Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Aug 24, 2017 · IPR2016-00594 · APJ Bryan F Moore · IPR · Final written decision
Petitioner did not prove claims 1–10 and 13–20 unpatentable because it failed to establish that Pictometry was a publicly accessible printed publication.
RulingsFinal written decision- ExcludeMixed
“Mot. Reply 3. Given the sequence of events, there is no prejudice to Petitioner, who introduced these documents and was served objections at an early stage. Patent Owner apparently cited to the documents in its Patent Owner Response to preserve the right to substantively respond to these documents rather than wait to see if they were presented in Petitioner’s Reply. Pursuant to our discretion under 37 C.F.R. § 42.5(c)(3), we do not dismiss Patent Owner’s Motion to Exclude due to allegedly untimely filed objections.” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“are also prohibited. Id. The MAPC Agreement states under “Confidentiality of Licensed Products” that the Licensed Products are commercially valuable, proprietary products owned by Pictometry and are treated by Pictometry as confidential and contain substantial trade secrets of Pictometry. Ex. 2009, 16, Article 8.4. The licensee agrees that it will not disclose, provide a copy of, or disseminate the Licensed Products and that its personnel will protect the Licensed Products from unauthorized use, disclosure, copying, and dissemination, and that access to the Licensed Products and each part thereof will be strictly limited. Id. We acknowledge that these represent significant limitations on the dissemination of the User Guide.” slip op. at 21
- BurdenDecided for patent owner
“involving the EFS software and provides no evidence that the EFS software and the EFS 2.7 User Guide were actually maintained confidential by the parties of the MAPC Agreement, or that the EFS software and the EFS 2.7 User Guide were inaccessible to those of ordinary skill in the art.” Reply 9. However, this improperly puts the burden to disprove public accessibility on Patent Owner. Although Patent Owner challenges whether Pictometry is a printed publication, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an inter partes review). Petitioner must demonstrate by a preponderance of the evidence that the challenged claims are unpatentable, and one aspect of such a showing is that the references relied upon are patents or printed publications. See 35 U.S.C. §§ 311(b) 316(e).” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. § 102(b). C. Anticipation of Claims by Pictometry Petitioner asserts that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry. Pet. 16. As noted above, we determine that Petitioner has not shown that Pictometry is a printed publication under 35 U.S.C. § 102(b). Thus, Petitioner has not established by a preponderance of the evidence that that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry.” slip op. at 29
Patent outcomesUS 8,542,880 not shown unpatentable§ 102 anticipationPatents in suitUS 8,542,880 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.No claims unpatentablePTAB · Aug 14, 2017 · IPR2016-00590 · APJ Garth D Baer · IPR · Final written decision
Claims 1, 10, 11, 14, and 19 were not shown unpatentable under § 103 because the asserted art lacked a required movable-marker limitation and objective indicia outweighed the obviousness evidence.
RulingsFinal written decision- BurdenNot shown unpatentable
“We do not agree with Petitioner that Avrahami’s pointing to and identifying seed points, constitutes movement of a first visual marker. Rather, as Patent Owner explains, “prior to the user’s click, the seed point does not exist, and thus there is nothing to move.” See PO Resp. 18 (citing 2008 ¶ 56). Avrahami’s characterization of the already-placed seed point as the “initial 2D seed point” supports Patent Owner’s position. See Ex. 1003, 44. The user cannot move an object that does not yet exist, and Petitioner offers no support to suggest that Avrahami’s seed points somehow exist before the user places them by clicking. See Pet. 14; Reply 2–4. There is also no indication that after placing the seed point, the user can move its location. See Ex. 2008 ¶ 56. To the contrary, Avrahami describes the algorithm as “fully automatic” after the user places the seed point. Ex. 1003, 43.” slip op. at 9
- Strike new argumentNew argument disregardedDecided for patent owner
“We note that in Reply, Petitioner makes an alternative argument that “placement of subsequent seed points after placement of a first seed point, as well as the addition of segmentations around such seed points, qualifies as ‘movement.’” Reply 3. We decline to reach this argument, however, because Petitioner raised it for the first time in its Reply. See 37 C.F.R. § 42.104(b)(5) (requiring that a petition must identify “the supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge” and explaining that “[t]he Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge”).” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia outweighedDecided for patent owner
Patent outcomesUS 8,818,770 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,818,770 - Arista Networks, Inc. v. Cisco Systems, Inc.No claims unpatentablePTAB · May 25, 2017 · IPR2016-00306 · APJ Miriam L Quinn · IPR · Final written decision
Claim 63 was not shown unpatentable because Spinney does not disclose performing the selecting and determining steps in parallel.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“First, we give no credit to Dr. Chao’s opinion in this regard because it is not supported by Spinney. Specifically, we give no weight to Dr. Chao’s opinion that “Spinney makes clear that the CAM lookup and the hashing function (i.e., the forwarding lookup) take place at the same time.” Ex. 1002 ¶ 53. Instead, we find that the parallel operations in Spinney are confined to (1) applying the hash function to the 48-bit address and (2) performing a CAM lookup of the same 48-bit address. For example, Spinney discloses in Figure 8 that incoming address field 85 is subjected to hash function 86 to produce another 48-bit value. See id. at Fig. 8, 15:21−24; 16:16−19 (“The 48-bit destination address 61 from an incoming packet is simultaneously subjected to the hash function 86 and a CAM match” (emphasis added)), 16:44−46 (“this compare in the CAM is done in parallel with the hash function” (emphasis added)). The application of the hash function and the performance of the hash lookup are two different operations that produce different results. The hash function application produces a hashed 48-bit value, while the hash lookup results in pointing to an entry in the translation table that includes the gigaheader information, for processing the packet. See id. at Fig. 8 (identifying hash function 86 applied to input address 85, resulting in hashed address 89); 15:60−63. Spinney further discloses that the hash lookup is performed only if a CAM match is not found and, therefore, must occur after the CAM lookup is performed. Id. at 16:20–26 (“[I]f a CAM match is found in CAM 23, an index into the translation table 94 is immediately generated as indicated by the line 100. If not, the 16-bit field 88 of the hashed address 87 is used to index into the hash table 89 . . . .” (emphasis added)).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“is not supported by Spinney. Specifically, we give no weight to Dr. Chao’s opinion that “Spinney makes clear that the CAM lookup and the hashing function (i.e., the forwarding lookup) take place at the same time.” Ex. 1002 ¶ 53. Instead, we find that the parallel operations in Spinney are confined to (1) applying the hash function to the 48-bit address and (2) performing a CAM lookup of the same 48-bit address. For example, Spinney discloses in Figure 8 that incoming address field 85 is subjected to hash function 86 to produce another 48-bit value. See id. at Fig. 8, 15:21−24; 16:16−19 (“The 48-bit destination address 61 from an incoming packet is simultaneously subjected to the hash function 86 and a CAM match” (emphasis added)), 16:44−46 (“this compare in the CAM is done in parallel with the hash function” (emphasis added)). The application of the hash function and the performance of the hash lookup are two different operations that produce different results. The hash function application produces a hashed 48-bit value, while the hash lookup results in pointing to an entry in the translation table that includes the gigaheader information, for processing the packet. See id. at Fig. 8 (identifying hash function 86 applied to input address 85, resulting in hashed address 89); 15:60−63. Spinney further discloses that the hash lookup is performed only if a CAM match is not found and, therefore, must occur after the CAM lookup is performed. Id. at 16:20–26 (“[I]f a CAM match is found in CAM 23, an index into the translation table 94 is immediately generated as indicated by the line 100. If not, the 16-bit field 88 of the hashed address 87 is used to index into the hash table 89 . . . .” (emphasis added)).” slip op. at 14
Patent outcomesUS 7,023,853 not shown unpatentable§ 102 anticipationPatents in suitUS 7,023,853
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.