- 10x Genomics, Inc. v. The University Of ChicagoNo claims unpatentablePTAB · Nov 15, 2016 · IPR2015-01157 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–31 were not shown unpatentable because the evidence did not establish the claimed surface-tension relationship under either instituted obviousness ground.
RulingsFinal written decision- Strike new argumentNew argument disregardedNew argument consideredMixed
“proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). For this reason, our Rules require that “[a] reply may only respond to arguments raised in the corresponding opposition . . . or patent owner response.” See 37 C.F.R. § 42.23(b). This reasoning applies equally to reply declarations, submitted to support a party’s reply brief. See Intelligent Bio-Sys., Inc., 821 F.3d at 1369–70 (affirming exclusion of reply brief and supporting declaration). Our Trial Practice Guide provides that “a reply that raises a new issue or belatedly presents evidence will not be considered. . . . The Board will not attempt to sort proper from improper portions of a reply.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“Trial Practice Guide”). Of course, “the introduction of new evidence in the course of the trial is to be expected in inter partes review trial proceedings.” Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016). That new evidence, however, must be responsive to an argument raised by the opposing party in its opposition brief. By contrast, when “new evidence necessary to make out a prima facie case for . . . unpatentability” or “new evidence that could have been presented in a prior filing” is introduced, these are indications that a new issue has been raised improperly. See Trial Practice Guide, 77 Fed. Reg. at 48,767.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“The theory advanced by 10X—that the surface tension relationship can be inferred from the lack of adhesion of droplets—suffers from at least two failings. First, as discussed above, to establish the presence of fluorinated surfactants with a hydrophilic head group, 10X relies on paragraph 117 of Quake, which it argues discloses surfactants residing at the oil-water interface between the droplets and the carrier fluid. Indeed, this reliance is crucial to its inference that the surfactants have a hydrophilic head group. But when it comes to inferring that the claimed surface tension relationship is present, 10X points to a different disclosure of surfactants coating the channel walls. As counsel conceded, the disclosures of paragraphs 117 and 118 “disclose two separate uses of surfactants.” Tr. 21:8–9. 10X cannot have it both ways, arguing that the hydrophilic head group is implied because the surfactant is at the oil-water interface, while also arguing that the surface tension relationship is implied because the surfactant coats the channel walls. Furthermore, even if we were to accept 10X’s reliance on the surfactant coating the channel walls, its proposed inference is not supported by the record or logic. While it may be the case that if the surface tension relationship is present, droplets do not adhere to the wall, to infer the reverse would be affirming the consequent.9 In other words, we cannot infer from the fact that droplets do not adhere to the channel wall that the claimed surface tension relationship is necessarily present, because there are other possible causes of non-adherence. As Chicago correctly notes, Quake discloses multiple reasons why a droplet may not adhere to a channel wall, including droplet shape (“about four times as long as [it is] wide”) and size (“[d]roplet adherence is overcome when the droplet is massive enough in relation to the channel size”). PO Resp. 24–25 (citing Ex. 1004 ¶ 92).” slip op. at 25
- ExcludeNot reached
“D. Motion to Exclude Chicago moves to exclude various exhibits filed by 10X, namely Exhibits 1037, 1043, 1045, 1047, 1050, 1051–1056, 1072, 1081, 1088–1092, and portions of Dr. Huck’s testimony (Exs. 1002 and 1087). Mot. 1. The basis for the Motion is Chicago’s prior objections to these exhibits on grounds of hearsay (FRE 802), prejudice (FRE 403), or unreliability (FRE 702). Even having considered these objected-to exhibits, however, we have found in Chicago’s favor on the merits of 10X’s patentability challenge. As such, the grant or denial of Chicago’s Motion would have no effect on the outcome of the proceeding. We, therefore, dismiss the Motion to Exclude as moot.” slip op. at 28
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for patent owner
“We agree with Chicago that Quake does not explicitly disclose that the surfactants of paragraph 117 have a hydrophilic head group, and that “surfactants” in general include surface active agents both with and without a hydrophilic head group. Nevertheless, we find that a person of skill in the art would understand the surfactants disclosed in paragraph 117 may include a hydrophilic head group. Dr. Olmsted notes, and Chicago does not dispute, that the other surfactants listed as “exemplary”—namely, Tween and Span— have hydrophilic head groups. Ex. 1085 ¶ 27. Furthermore, the sentence characterizes the surfactants as “soluble in oil relative to water,” from which Dr. Olmsted concludes that the oil-water boundary is the surface where the surfactants are expected to reside. Id. ¶ 29. While Chicago is correct that other portions of Quake—for example, as discussed extensively above, paragraph 118—disclose surfactants that coat the channel walls, we do not understand paragraph 117’s surfactants to be so limited.8 For this reason, we find credible Dr. Huck’s and Dr. Olmsted’s testimony that a person of ordinary skill in the art would understand paragraph 117’s disclosure to refer to surfactants having a hydrophilic head group. We find that Quake discloses fluorinated surfactants that reside at the droplet-carrier fluid interface, and which have a hydrophilic head group.” slip op. at 23
Patent outcomesUS 8,889,083 not shown unpatentable§ 103 obviousnesscites GrahamPatents in suitUS 8,889,083 - SK Innovation Co., Ltd. v. Celgard, LLCSome claims unpatentablePTAB · Sep 25, 2015 · IPR2014-00679 · APJ Francisco C Prats · IPR · Final written decision
Claims 7–9 are unpatentable as obvious over Tojo and Lundquist, and claim 10 as obvious over Tojo and Kejha; claims 1–6, 11, and 12 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner
“Our reviewing court, however, has “cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Patent Owner does not direct us to any specific disclosure in the Specification of the ’586 patent clearly limiting or defining dendrite blocking as impeding dendrite growth for the entire intended life of a rechargeable battery. Accordingly, because the ’586 patent does not clearly disclaim the scope of dendrite blocking in the manner Patent Owner advances, we are not persuaded that we should limit the claims to the asserted primary goal, or preferred result, of the ’586 patent. We, therefore, decline to adopt Patent Owner’s proffered claim construction.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“It is well settled that the “very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question.” Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009) (emphasis added); see also In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). Given the evidence discussed above that the pores in Tojo’s ceramic composite layer would allow dendrite growth, Petitioner does not persuade us that, because Tojo’s ceramic composite layer contains the inorganic particles and matrix material required by claim 1, Tojo unavoidably teaches that its ceramic composite layer is adapted to block dendrite growth enough to prevent electronic shorting. See Reply 4–6. Moreover, even assuming for argument’s sake that larger dendrites would be blocked by Tojo’s pores (see id. at 8), Petitioner concedes that dendrites may grow at an atomic scale (id. at 7), and the evidence discussed above supports a finding that Tojo’s pores would not block dendrites of that size from producing an electronic short.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation foundTeaching away not foundDecided for petitioner
“A reference does not teach away, however, “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Patent Owner does not direct us to disclosures in Tojo that clearly or specifically criticize or discredit the use of fluoropolymers as the matrix material in its ceramic composite layer. Moreover, as noted above, and as Petitioner points out (Reply 13–14), Tojo’s teaching regarding its matrix material is rather expansive. See 1007 ¶ 22 (“The binders are not particularly limited, as long as they are conventionally in use, and examples include various polyesters, polyolefins, rubbers, acrylic resins, or the like . . . .”) (emphases added). Given this expansive disclosure, we agree with Petitioner that an ordinary artisan would not have viewed Tojo’s failure to include fluoropolymers in its list of binder materials as a teaching away, even in light of the earlier mention of fluoropolymers as known separator materials.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Because Tojo teaches that essentially any conventional polymeric material used in batteries can be used as its inorganic particle binder material, and because Lundquist, in turn, teaches that PTFE copolymers are useful as a binder material for inorganic particles in a battery separator containing the same two layers contained in Tojo’s separator, we find that that an ordinary artisan would have been prompted to use Lundquist’s PTFE copolymers as the binder material in Tojo’s separator. Patent Owner’s arguments and evidence do not persuade us to the contrary.” slip op. at 26
Patent outcomesUS 6,432,586 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,432,586 - SK Innovation Co., Ltd. v. Celgard, LLCAll claims unpatentablePTAB · Sep 25, 2015 · IPR2014-00680 · APJ Francisco C Prats · IPR · Final written decision
Claims 7–11 are unpatentable as obvious over Tsukamoto, Lundquist, and Tojo because the references teach the claimed separator features and provide a reason to combine them.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“A. Claim Construction In an inter partes review, the Board interprets claims in an unexpired patent using the “broadest reasonable construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b); In re Cuozzo Speed Tech., LLC, 793 F. 3d 1268, 1275 (Fed. Cir. 2015). Under that standard, the Board applies to claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We conclude that, for the purposes of this decision, based on the parties’ contentions and the record developed during trial, no claim terms require express construction. Terms in the challenged claims will be given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure of the ’586 patent. See id.” slip op. at 7
- Skill levelSkill level board ownOther
“As to the level of ordinary skill in the pertinent art, the parties’ experts advance slightly different opinions. See Ex. 1004 ¶¶ 26–27 (Arnold Decl.); Ex. 2002 ¶¶ 74–75 (White Decl.). Nonetheless, neither party specifically asserts error in the opinion of the other party’s expert, and neither party asserts specifically that the conclusion of obviousness turns on adoption of a particular level of ordinary skill. In that regard, both experts generally agree that an ordinarily skilled artisan at the critical time would have had a degree in chemistry, physics, material science, or chemical engineering; at least two to three years of experience in the battery industry or research and development of lithium batteries; and knowledge of the components and problems of lithium batteries, including dendrite growth, electronic shorting, and separators. See id. When evaluating the parties’ contentions regarding the scope and content of the prior art, and the differences between the prior art and the challenged claims, we take into consideration both parties’ assertions regarding the level of ordinary skill. We note also that the level of ordinary skill in the art may be evidenced by the cited references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We also find that an ordinary artisan would have been prompted to use Tojo’s polyolefinic microporous membrane as the separator element in Tsukamoto’s battery. Specifically, as Petitioner discusses, and as noted above, Tojo teaches that its microporous membrane has the desirable properties of quick pore closure and excellent shutdown function, which halt battery reactions so as to avoid excessive temperature increase. Pet. 49–50; Ex. 1007 ¶¶ 3, 13, 15. As Petitioner also discusses, Tsukamoto recognizes the concerns of battery overheating. Pet. 51–52; Ex. 1032 ¶¶ 3, 29. Given these teachings, an ordinary artisan would have been prompted to use Tojo’s microporous polyolefinic membrane as the separator element in Tsukamoto’s battery, to impart to Tsukamoto’s battery the desirable properties of Tojo’s membrane. Moreover, because using Tojo’s membrane as the separator component in Tsukamoto’s battery assembly would produce, between the battery’s electrodes, a combination of layers having all of the features required by claim 7 of the ’586 patent, the combination of Tsukamoto and Tojo suggests a separator having all of the features required by claim 7.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“We are not persuaded. As discussed above, the teachings of the cited references support Petitioner’s contention that an ordinary artisan would have been prompted to use Tojo’s separator membrane in Tsukamoto’s battery. Because the teachings in the prior art support Petitioner’s posited combination of references, Petitioner’s contentions of obviousness are not based on improper hindsight. Moreover, even if the cited references do not address precisely the same problems, as Petitioner contends (Reply 5–6), each of Tsukamoto, Tojo, and Lundquist are in the field of lithium battery improvement, and address the issue of avoiding the undesirable effects of increased battery temperature. See Ex. 1032 ¶¶ 2–3 (Tsukamoto discussing lithium batteries and potential battery fires due to temperature increase); Ex. 1007 ¶ 3 (Tojo discussing separator shutdown function to prevent excessive temperature increase in high energy lithium batteries); Ex. 1008, 2:47–53 (Lundquist discussing use of battery separator in lithium batteries to stop thermal runaway and explosive reaction); see also In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (A reference is analogous prior art when it is “from the same field of endeavor, regardless of the problem addressed . . . .”) (emphasis added).” slip op. at 15
Patent outcomesUS 6,432,586 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,432,586 - Canon Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Aug 19, 2015 · IPR2014-00631 · APJ Richard E Rice · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1, 2, 8, 11, 13–16, 19–21, and 24 as anticipated by Mishima; claims 3–7, 9, 10, 12, and 15–23 under specified obviousness combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner’s argument that we should limit “selecting” in claim 1 to “user . . . selecting” (PO Resp. 3) is not persuasive for the reasons that we provided in the Decision to Institute. Inst. Dec. 8–9. In addition, Patent Owner’s proposed claim construction would exclude embodiments in which the image capture device, itself, selects an automatic trigger condition. E.g., Ex. 1001, 10:28–32 (“The camera automatically enters the automatic response mode as soon as power is applied unless otherwise instructed by the operator. Alternately, configuration tools can be provided to select from various sensed conditions.”), 12:23–26 (“Once one or more subjects of interest have been stored, digital image capture device 10 can employ these subjects of interest as image capture triggers whenever it is placed in automatic response mode.”). Patent Owner has not explained sufficiently why “selecting” should be interpreted to exclude such embodiments. See, e.g., Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (holding that, at least where claims can be interpreted reasonably to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence to the contrary). For the above reasons, we determine that the term “selecting” carries its ordinary and customary meanings, and is not limited to acts performed by a user of the image capture device; and we maintain our interpretation.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundTerm construed board ownDecided for petitioner
“[D]isavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded that the prosecution history makes clear that claim 1 does not include “entering” of a threshold level by the image capture device itself. The statement on which Patent Owner relies is only part of a sentence; the full sentence reads as follows: In amended Claim 1, a trigger condition and associated threshold [are] selected by a user in a step prior to image capture, the image capture device then monitors a signal corresponding to the trigger condition so that the image capture device can automatically determine when an image should he captured without intervention by a user. Ex. 1015, 6 (emphasis added). The thrust of that sentence, as explained in the paragraph that follows it in the prosecution history, is that, in claim 1, “the timing of image capture[] is determined automatically by the image capture device without the involvement of the user.” Id. (emphasis added). The Beck reference is not distinguished by the applicant on the basis of how the threshold level is selected, but rather on how an image is captured “after a trigger condition and associated threshold ha[ve] been satisfied.” Id. As such, whether “a trigger condition and associated threshold” are selected by a user, or by the device itself, is not central to applicant’s argument distinguishing the Beck reference. Accordingly, the statement that “a trigger condition and associated threshold [are] selected by a user” does not evidence a clear intent to disavow claim scope, contrary to Patent Owner’s contention. For the reasons discussed above, we determine that the broadest slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In opposition, Patent Owner argues that Mishima fails to disclose entering a threshold level corresponding to the automatic trigger condition, because, as asserted by Dr. Bovik, “the user is not involved in setting the threshold in any way.” PO Resp. 31 (citing Ex. 2006 ¶ 72). As discussed above, however, the user does not need to be involved in setting the threshold level under our interpretation of “entering.” See supra Section II.A.4. That is, the term “entering” is not limited to acts of entering performed by a user, but encompasses acts of entering performed by the image capture device itself. See id. We determine that Petitioner has made a sufficient showing that Mishima discloses “entering a threshold level.” See PO Resp. 32. In particular, Petitioner has shown that, when the user sets Mishima’s device in the automatic mode and selects a reference image for comparison with a captured image or photographic subject, the device sets or selects a threshold level, such as Kn, P, or 40%, and, thus, satisfies the “entering a threshold level” requirement under our claim construction. See Pet. 13–15; Pet. Reply 13–15; Ex. 1002 ¶ 43; Ex. 1016 ¶¶ 13, 48–50; Ex. 1005 ¶ 40 (describing “setting a threshold value Kn” based on reference brightness value K0), ¶ 90 (setting or selecting “X < P” to determine a match, where P is a threshold value and X is the average square of differences between the part that is subject to recognition and the user-selected image pattern); ¶ 114 (describing setting a threshold level as “40%” of “the number of pixels that produce 1”). Moreover, we are not persuaded by Dr. Bovik’s testimony that “the user [in Mishima] is not involved in setting the threshold in any way.” See Ex. 2006 ¶ 72. Dr. Bovik does not address adequately Mishima’s disclosure that the user places the camera in the automatic imaging mode and selects a reference image6 for comparison with a captured image or photographic subject. See, e.g., Ex. 1005 ¶¶ 26, 37, 38, 83, 85, 87, 97, 98, 107, 108; see Pet. Reply 14 (citing Ex. 1005 ¶¶ 37, 83). Those acts satisfy “selecting an automatic image trigger condition.” See Pet. 14; Ex. 1002 ¶ 42. Dr. Bovik does not discuss whether those acts also satisfy “entering a threshold level corresponding to the automatic image trigger condition.” As such, Dr. Bovik’s analysis of Mishima is inconsistent with his” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In opposition, Patent Owner argues that a person of skill in the art would not have combined the teachings of Mishima and Misawa because: (1) the devices of Mishima and Misawa are not similar as Petitioner contends and, in fact, operate in fundamentally different ways, (2) the reasons Petitioner provides for combining Mishima and Misawa are undermined by the teachings of those references, and (3) Misawa would discourage one of ordinary skill from combining it with Mishima to arrive at the inventions of claims 3-6. PO Resp. 34. Patent Owner argues, for example, that Misawa “has nothing to do with automatic image trigger conditions, thresholds, or automatic image capture.” Id. at 35 (citing Ex. 2006 ¶ 91). We are persuaded by Petitioner, however, that Patent Owner’s argument is largely unresponsive to Petitioner’s asserted reason to combine, which “does not rely on Misawa for automatic image capture, but for an example user interface for creating an image database.” See Pet. Reply 15. We also are persuaded that a person of ordinary skill “would have looked to Misawa’s user interface as an example of how to construct/control image feature database 80 used in Mishima’s camera.” Id. at 16 (citing Ex 1005 ¶¶ 80, 94); see Ex. 1016 ¶¶ 53–55. Patent Owner has not persuaded us that using Misawa’s selection/extraction process in Mishima’s camera would have been outside the skill in the art, or yielded an unpredictable result. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Further, we are not persuaded by Patent Owner’s argument that Misawa would have led one in a divergent direction and, thus, teaches away from the recited method. See PO Resp. 44–45 (citing Ex. 2006 ¶¶ 108–111). Patent Owner has not shown that Misawa criticizes, discredits, or otherwise discourages investigation into the invention claimed. See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009 (“A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed.”) (emphases added; citation omitted). Patent Owner makes essentially the same arguments for claims 4–6 as” slip op. at 37
Patent outcomesUS 7,817,914 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,817,914 - Canon Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Aug 19, 2015 · IPR2014-00632 · APJ Richard E Rice · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1, 2, 8, 11, 13–16, 19–21, and 24 as anticipated by Mishima; claims 3–7, 9, 10, 12, 15–18, 22, and 23 as obvious over specified combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner’s argument that we should limit “selecting” in claim 1 to “user . . . selecting” (PO Resp. 3) is not persuasive for the reasons that we provided in the Decision to Institute. Inst. Dec. 8–9. In addition, Patent Owner’s proposed claim construction would exclude embodiments in which the image capture device, itself, selects an automatic trigger condition. E.g., Ex. 1001, 10:28–32 (“The camera automatically enters the automatic response mode as soon as power is applied unless otherwise instructed by the operator. Alternately, configuration tools can be provided to select from various sensed conditions.”), 12:23–26 (“Once one or more subjects of interest have been stored, digital image capture device 10 can employ these subjects of interest as image capture triggers whenever it is placed in automatic response mode.”). Patent Owner has not explained sufficiently why “selecting” should be interpreted to exclude such embodiments. See, e.g., Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (holding that, at least where claims can be interpreted reasonably to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence to the contrary). For the above reasons, we determine that the term “selecting” carries its ordinary and customary meanings, and is not limited to acts performed by a user of the image capture device; and we maintain our interpretation.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“[D]isavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded that the prosecution history makes clear that claim 1 does not include “entering” of a threshold level by the image capture device itself. slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“7 Patent Owner does not dispute Petitioner’s definition of the level of skill in the art as “(1) a Bachelor’s degree in electronics, computer science, or a related discipline and 2-3 years of camera electronics design and implementation experience, or (2) a Master’s degree or higher in a field such as electronics, computer science, or a related discipline with some concentration in imaging systems or image processing.” PO Resp. 5 n.2 (citing Ex. 1002 ¶¶ 16–17; Ex. 2006 ¶¶ 25–27). We adopt that definition for purposes of this Final Written Decision. 8 Patent Owner does not contend in the Patent Owner Response that any secondary considerations are present that would render the challenged claims patentable over the combined teachings of these references.” slip op. at 35
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“electronic device.” See Pet. Reply 2 (citing Ex. 1016 ¶¶ 9–16). We credit Dr. Stevenson’s testimony on this point: Data entry in electronic devices occurs through a variety of different mechanisms. For instance, in the context of electronic devices, including digital cameras, “entering” of data encompasses the electronic input of data into a component of the electronic device, such as a processor or memory. An electronic device’s operating instructions may cause the device to input data into a processor or memory. The entered data may be data from another memory (e.g., read-only memory (“ROM”)), a removable memory card, or a network.” slip op. at 19
Patent outcomesUS 7,817,914 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,817,914
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.