- Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.Institution deniedPTAB · Dec 22, 2016 · IPR2016-01451 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution: it exercised discretion as to claims 43–46, 49, 50, 62–69, and 72, and found no reasonable likelihood of obviousness for claims 55–58.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“determining whether to institute or order a proceeding under this chapter . . . the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In light of § 325(d), we consider whether the reexamination contains the same or substantially the same art or arguments as presented in the Petition. Patent Owner argues that we should decline to institute inter partes review under 35 U.S.C. § 325(d) because the Petition raises the same or substantially the same prior art or arguments that were presented previously to the Office. Prelim. Resp. 19–26. In particular, Patent Owner contends that each of the claims in the reexamination was rejected based on Eddison, under either 35 U.S.C. § 102(b) and/or in combination with Jewkes under § 103(a), and that Petitioner relies upon Jewkes again under § 102(b) in its Petition. Id. at 23–26. Petitioner makes no attempt to explain why the references that form the bases for Petitioner’s challenge here are not the same or substantially similar prior art to that presented during the reexamination or why the arguments are not the same or substantially similar to those presented previously to the Office. Eddison and Jewkes were relied upon in the reexamination. See id. at 141–60 (Office Action (mailed Aug. 25, 2014)). Additionally, Tandberg was presented to the Office in conjunction with the original prosecution of the ’817 patent. See Ex. 2003; Prelim. Resp. 28.” slip op. at 9
- Other 314aInstitution denied discretionary otherInstitution denied
“Patent Owner makes a valid point. Section 1.530(k) of Title 37 of the Code of Federal Regulations provides: “Amendments not effective until certificate. Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued and published.” This places us in a difficult position. If Patent Owner ultimately succeeds in the appeal of the reexamination, a certificate will issue and the amendments to claim 43 and its dependents will be “effective.” See id.; see Ex. 1007, 166 (showing the amendments to claim 43). Yet Petitioner provides no analysis of the amended limitations of claim 43. See, e.g., Pet. 16. Alternatively, if Patent Owner is unsuccessful in its appeal to the Federal Circuit, claim 43 and its dependents, as challenged in the reexamination, will be declared unpatentable. In either circumstance, any review we undertake of the unamended version of claim 43, and the claims depending therefrom, will be for naught. Accordingly, in light of the above circumstances, reviewing these claims on the record presented would waste judicial resources as well as the resources of the parties.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner has not articulated a clear reason as to why one of ordinary skill in the art would have modified Jewkes’s drilling assembly to include the additional structures taught by Tandberg and Eddison. We recognize that Petitioner points to Tandberg’s teaching that employing the same fundamental structure as an underreamer and as a stabilizer has an advantage, but Petitioner never explains what that advantage is or why it would have prompted one of ordinary skill in the art to modify Jewkes.5 Accordingly, on the record before us, Petitioner has not established a reasonable likelihood that it would prevail in showing that the combination of Jewkes, Tandberg, and Eddison would have rendered the subject matter of claims 55–58 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“We agree with Patent Owner that Petitioner has not articulated a clear reason as to why one of ordinary skill in the art would have modified Jewkes’s drilling assembly to include the additional structures taught by Tandberg and Eddison. We recognize that Petitioner points to Tandberg’s teaching that employing the same fundamental structure as an underreamer and as a stabilizer has an advantage, but Petitioner never explains what that advantage is or why it would have prompted one of ordinary skill in the art to modify Jewkes.5 Accordingly, on the record before us, Petitioner has not established a reasonable likelihood that it would prevail in showing that the combination of Jewkes, Tandberg, and Eddison would have rendered the subject matter of claims 55–58 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 12
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,732,817 - Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.Institution deniedPTAB · Dec 22, 2016 · IPR2016-01450 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), citing overlapping prior art and arguments, the pending reexamination appeal, and resource conservation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“D. 35 U.S.C. § 325(d) Section 325(d) of Title 35 of the United States Code provides: “In determining whether to institute or order a proceeding under this chapter . . . the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In light of § 325(d), we consider whether the reexamination contains the same or substantially the same art or arguments as presented in the Petition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. CLAIM CONSTRUCTION Although Petitioner and Patent Owner present proposed constructions for several claim terms, no terms require express construction for purposes of this Decision. Pet. 15–21; Prelim. Resp. 10–23.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerGranted
“On August 29, 2016, Petitioner requested, via electronic mail, to file a motion to correct its identification of the real party in interest in this proceeding. In particular, Petitioner requested the addition of Baker Hughes Incorporated as a real party in interest. Petitioner indicated that Patent Owner would not oppose its request. In a responsive email on September 29, 2016, we authorized Petitioner to file a motion to correct the identified real party in interest. On October 4, 2016, Petitioner filed an Updated Mandatory Notice in which Petitioner stated that it “moves the Board to allow correction of Petitioner’s Real Part in Interest (‘RPI’) disclosure.” Paper 8, 1. Although Petitioner did not file a motion to correct as it had requested, we treat its updated mandatory notice as such and hereby grant Petitioner’s request. Accordingly, Baker Hughes Incorporated is a real party in interest in this proceeding as well.” slip op. at 3
Claim constructionDiscretionary denialPatents in suitUS 6,732,817 - Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentablePTAB · Dec 6, 2016 · IPR2015-01248 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1, 5, 20, 22–25, and 30 are unpatentable as obvious over Yamashita and Shamoon; claims 2–4, 6–8, and 19 were not proven unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that Patent Owner is attempting to improperly limit the construction. As we explained in our Decision on Institution, we declined to limit “comparison” to a particular type of evaluation, and by our construction, we did not find that the “focus” of the “comparison” is to identify “any dissimilarity” as Patent Owner contends. See Inst. Dec. 9. Indeed, as evidenced by the dictionary definitions cited by Patent Owner and that we relied upon, determining dissimilarities is not the “focus” of the plain and ordinary meaning of “comparison” that we adopted. See Inst. Dec. 9 (citing Ex. 2003 (defining “comparison” as “the act of looking at things to see how they are similar or different” and “the act of suggesting that two or more things are similar or in the same category”)); see also Ex. 2011 (defining “comparison” as “the representing of one thing or person as similar to or like another” and “an examination of two or more items to establish similarities and dissimilarities”).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Here, we agree with Petitioner that the plain language of the claim is sufficient and no construction is necessary for this term. The claim language already establishes that there are two user profiles, each is associated with a particular and different mobile device, and the profiles include “information to alter an operating condition of the network device according to a preference of a [first/second] user.” The claim already addresses what attributes the user profile must have. We see no support in the claim language or specification for Patent Owner’s additional requirements that the profiles be “individual” and “include information unique to each user.”” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“v. Summary as to Claims 1, 20, 22–25, and 30 Patent Owner raises no evidence of secondary considerations of nonobviousness in this case. Thus, weighing the evidence of obviousness that is before us, we find that Petitioner has shown by a preponderance of the evidence that claims 1, 20, 22–25, and 30 would have been obvious over the combination of Yamashita and Shamoon.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“We do not find Patent Owner’s arguments persuasive. Teaching away requires that “a person of ordinary skill upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).4 Patent Owner cites nothing in Yamashita that says that adding the features from Shamoon in addition to the automatic functionality of Yamashita would be unlikely to work; Yamashita alleges only that manual control alone has certain disadvantages. 4 We understand Patent Owner to be arguing both that the references teach away from the combination generally and teach away because, in particular, the combination would change the principle of operation of the system. PO Resp. 33–36. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012); see also Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998) (finding no teaching away where nothing in the prior art device suggested that the claimed invention was unlikely to work). The lack of teaching away is confirmed by Yamashita’s disclosure of an embodiment requiring manual interaction. See Reply 20 (citing Ex. 1006, 22:31–51). Indeed, although Patent Owner contends that automatic functionality is “not the focus or main purpose of Shamoon,” PO Resp. 35, Shamoon’s system demonstrates that automatic functionality can be combined with manual functionality to result in a working system. See Ex. 1007, 8:36–45. As for Patent Owner’s contentions that Yamashita “abandoned bi- directional communication” (PO Resp. 35), we find no support in the cited portions of Yamashita for these contentions. Although Yamashita does tout the benefits of its automatic control system, the cited portions of Yamashita are silent about the advantages or disadvantages of “bi-directional communication.” As for Patent Owner’s arguments about substantial reconstruction and redesign (PO Resp. 36 (citing Ex. 2008 ¶ 91)), we do not find the testimony or argument persuasive. Yamashita’s control terminal and mobile terminals already has built in communication abilities (Ex. 1006, 11:31–38), and we find Dr. Selker’s testimony persuasive that a person of ordinary skill would have been motivated to add the ability to communicate the thermostat reading to verify that Yamashita’s automatic control worked. Ex. 1002 ¶¶ 205–207. As for Patent Owner’s allegation that the combination with Shamoon would change Yamashita’s principle of operation, we disagree. Yamashita would continue to work as before; the messages, rules, and control information would continue operate in the same manner. Shamoon would only add additional functionality to allow for an improved user interface and two-way communication. Where the device would operate on the same principles as before, the combination does not change the principle of operation. See Mouttet, 686 F.3d at 1332 (noting Ratti inapplicable where the modified apparatus will operate “on the same principles as before”). As Petitioner explains, Shamoon demonstrates that its known techniques have been used to improve similar devices in similar ways. We find that Petitioner has articulated sufficient reasoning with rational underpinnings to support the combination. See Ex. 1002 ¶¶ 205–207, 213. Thus, we conclude that a person of ordinary skill would have had reason to combine the teachings of Yamashita and Shamoon.” slip op. at 29
Patent outcomesUS 8,626,344 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,626,344 - Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentablePTAB · Dec 6, 2016 · IPR2015-01251 · APJ Kevin W Cherry · IPR · Final written decision
Claims 9–14, 16, and 26–29 are unpatentable as obvious over Yamashita and Shamoon; claims 15, 17, and 18 were not proven unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that Patent Owner’s further narrowing of our construction is improperly limiting. As we explained in our Decision on Institution, we declined to limit “comparing” to a particular type of evaluation, and by our construction, we did not find that the “focus” of the comparison is to identify “any dissimilarity” as Patent Owner contends. See Inst. Dec. 10. Indeed, as evidenced by the dictionary definitions cited by Patent Owner and that we relied upon, determining dissimilarities is not the “focus” of the plain and ordinary meaning of “comparing” that we adopted; rather, each of them emphasizes determining similarities as well. See Inst. Dec. 9 (citing Ex. 2002 (defining “comparison” as “the act of looking at things to see how they are similar or different” and “the act of suggesting that two or more things are similar or in the same category”)); see also Ex. 2006 (defining “comparison” as “the representing of one thing or person as similar to or like another” and “an examination of two or more items to establish similarities and dissimilarities”). The specification does not compel a different understanding. The” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“that the parties’ actual dispute is twofold. First, the parties dispute whether the mobile device must be able to transmit location information to the site regardless of whether the proximity setting is enabled or disabled. See Reply 8–9; PO Resp. 14–15. Second, Patent Owner argues that the entire process of proximity detection must be automatic. PO Resp. 14. As we explain below, we agree with Petitioner that this term does not require that the mobile device continue to send location reports if the proximity setting is not enabled, whereas we disagree with Petitioner that the proximity setting is limited to enabling or disabling the ability to send location reports. Instead, we find the specification supports a broader construction. In particular, we find that the specification states that “[f]or example, a user may enable proximity detection using proximity detection selector 1036 and energy use at a site may be altered based on a user[’]s distance to the site.” Ex. 1001, 46:45–48. It further explains that “[i]n some forms, proximity detection selector 1036 can be hidden, displayed, selectable, or any combination thereof in response to a user having a mobile device capable of being detected when a user is at or away from a site.” Id. at 46:50–54. Thus, we consider the broadest reasonable construction of “proximity setting” consistent with the specification to be “a setting that can enable or disable proximity detection, where energy use at a site may be altered based on the user’s location.” Both parties acknowledge that this is a reasonable meaning of the term. Reply 8; PO Resp. 12.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“In sum, Petitioner has shown sufficiently that the control terminal in Yamashita receives messages from the wireless terminals that represent the relative location of the mobile terminal (e.g., within 300 m of the site or moving away from the site) and that the control terminal includes a number of rules to compare the messages to determine what control information to send to the controlled appliances, and that as a result of the comparison sends control information to alter the condition of the controlled appliances. See Ex. 1002 ¶¶ 214–216. Thus, we are persuaded that Yamashita accounts for the “comparing limitations” of claim 9.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that Petitioner has shown adequately that a person of ordinary skill would have been motivated to combine Yamashita with Shamoon. In particular, we do not agree with Patent Owner that Yamashita teaches away from the combination or that the combination would change the principle of operation of Yamashita.3 Patent Owner is correct that Yamashita distinguishes manual control, and notes the disadvantages of “burdensome operations” and the possibility the user may forget to perform the required operations. Ex. 1005, 1:35–40. Patent Owner is also correct that Yamashita states that one objective of the invention is a system that can automatically control an appliance based on position without requiring any operation by the user. Id. at 1:44–47. Yet, Yamashita also discloses an embodiment where the user is prompted before a message is sent, which does require an operation by the user. Id. at 23:31–51. Thus, we do not agree that Yamashita disparages all manual interaction as Patent Owner contends. Moreover, teaching away requires that “a person of ordinary skill upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Patent Owner cites nothing in Yamashita that says that adding the communication features from Shamoon to transmit the thermostat readings to the mobile terminal to the automatic functionality of Yamashita would be unlikely to work; Yamashita alleges only that manual control alone has certain disadvantages, not that communicating information from the site to” slip op. at 32
Patent outcomesUS 8,626,344 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,626,344 - Honeywell International Inc. v. Allure Energy, Inc.All claims unpatentablePTAB · Dec 6, 2016 · IPR2015-01253 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Richton and Rosenblatt.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We do not agree that the claim language unambiguously requires that there must be outer boundaries. The term “zone” generally refers to an area. We turn to the specification to see how the ’797 patent describes a zone. See Trs. of Columbia Univ. in the City of N.Y. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016) (“‘[T]he specification is always highly relevant to the claim construction analysis’ and is, in fact, ‘the single best guide to the meaning of a disputed term.’”). As Petitioner points out, the specification refers to zones that do not have an outer boundary. See Ex. 1001, 12:41–44 (“detect mobile device 210 within a first zone (e.g., less than one (1) mile from the site, less than three (3) miles from site, greater than five (5) miles from site, etc.).”). Indeed, contrary to Patent Owner’s argument that in order to be “within” the zones there must be an outer boundary, the specification describes an embodiment where the user is “within” a zone that is “greater than five (5) miles from [the] site.” Id. at 12:42–44. In this instance, there is an inner boundary for the zone (five miles), but not an outer boundary.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“attempts to rebut this testimony with testimony from its declarant, Mr. McAlexander, that this statement in Richton only means that the location-action server can be distributed over a couple of remote servers. Ex. 2004 ¶ 71. We do not find Mr. McAlexander’s testimony persuasive for several reasons. In particular, the testimony ignores Richton’s explicit statement that it is not important where the components of the location-action server are located, but that “[o]nly the operative connection between the components is important.” Ex. 1003, 12:58–59. This statement suggests that the functionality can be more distributed than Mr. McAlexander contends. Moreover, Mr. McAlexander’s testimony mischaracterizes Petitioner’s and Dr. Selker’s argument by saying that “[t]his [statement] does not disclose [that] the various components, which carry out the location-based action services, are located on the mobile device.”8 Ex. 2004 ¶ 71. Neither Petitioner nor Dr. Selker, however, suggested that this statement in Richton discloses locating the components on a mobile device. Instead, they suggested, and we agree, that because the functionality can be distributed, it enables the functionality to be placed on a mobile device.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“not commensurate with the scope of the claims because “whether” and “within” do not impart the limitations that Patent Owner seeks to include the claims. When Richton determines that the mobile device crosses a particular distance threshold such that the device is now in a particular zone, we find that Richton determines whether the device is within that zone. See Ex. 1002 ¶¶ 116–119; Ex. 1003, 6:36–50, 8:46–9:10. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that Richton teaches or suggests the zone limitations of claims 3–8 and 14.” slip op. at 18
Patent outcomesUS 8,457,797 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,457,797 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsAll claims unpatentablePTAB · Dec 1, 2016 · IPR2015-01232 · APJ James B Arpin · IPR · Final written decision
Claims 1, 6, 7, 14, and 16 are unpatentable as obvious over Shimada, including the obviousness-based modifications to its lookup table and photometry teachings.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“construction. Tr. 8:4–15; see also id. at 14:16–15:2 (no need to construe “preparatory power value”). Patent Owner agreed, also stating at the hearing that no claim constructions are necessary. Id. at 19:11–25; see PO Resp. 12 (relating to the claim term “interface”); Tr. 50:19–55:4. Nevertheless, Petitioner notes that the parties appear to disagree regarding the plain and ordinary meaning of the term “weighting.” PO Resp. 16–18; see Pet. Reply 15; Tr. 8:9–15. Petitioner argues that “weighting” means “‘according more weight,’ emphasizing, ‘an area of interest of the image,’ or even emphasizing the entire image.” Pet. Reply 16 (citing Ex. 1001, col. 2, ll. 15–17, col. 9, ll. 1–3; Ex. 2003, 62:10–13); see Tr. 8:24–25 (“according more weight or emphasizing a portion or all of an image”). Patent Owner does not propose expressly an alternative construction, but, in attempting to distinguish the teachings of Shimada, contends implicitly that Petitioner’s construction is overly broad. PO Resp. 18; see Pet. Reply 15 (“Though PO never actually proposes an actual construction for ‘weighting,’ it argues Shimada uses a ‘selection process’ and suggests that, in contrast, the claimed ‘weighting’ must be performed numerically.” (citations omitted)). We find Petitioner’s proposed construction to be consistent with the Specification of the ’029 patent, and we construe “weighting” to mean “according more weight or emphasizing a portion or all of an image.” Nevertheless, only terms that are in controversy in this proceeding need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Because the resolution of this controversy does not depend upon the construction of any other claim term, no other claim terms are construed expressly.” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“5 Petitioner proposes an assessment of the level of skill for a person of ordinary skill in the art. Pet. 15–16 (citing Ex. 1033 ¶ 20). Patent Owner’s declarant proposes a slightly different and somewhat lower (e.g., two years, instead of four years, of industry experience) assessment of the level of skill for a person of ordinary skill in the art. Ex. 2004 ¶ 26. To the extent necessary and for purposes of this Final Written Decision, we adopt Patent Owner’s declarant’s assessment, which each party’s declarant meets or exceeds. See Ex. 1033 ¶ 21; Ex. 2004 ¶ 27. 6 There is no requirement to enumerate each Graham factor and to include findings specifically in terms of the factors as long as “the required factual determinations were actually made and it is clear that they were considered while applying the proper legal standard of obviousness.” Specialty Composites v. Cabot Corp., 845 F.2d 981, 990 (Fed. Cir. 1988).” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“As discussed above (see supra Section IV.A.3.a.i.), Mr. Parulski explains that “Shimada takes a binary approach (either counting an area or discounting an area), utilizing the central four areas of the image in the calculation and ignoring the remainder.” Ex. 1033 ¶ 92 (citing Ex. 1005 ¶ 50). Thus, for example, the four (4) center areas may be weighted one (1), and the sixty (60) surrounding areas may be weighted zero (0). See Ex. 2003, 62:18–63:4, 78:19–84:1; see Pet. Reply 17–18. Shimada discloses “uniform” weighting (Ex. 1001, col. 8, l. 60–col. 9, l. 3), and Mr. Parulski explains that uniform weighting equally weights all areas (see, e.g., Ex. 2003, 171:13–20). See Pet. Reply 18–19. Mr. Parulski testifies that this is how Shimada operates when performing photometry uniformly on all 64 areas of Figure 4. See, e.g., Ex. 2003, 69:10–70:22; see also Ex. 1005 ¶ 50 (“[W]hen the photographic subject is in a normal state other than a backlit state, photometry is performed for a wider area.”); but see Ex. 2004 ¶¶ 42–47. We credit Mr. Parulski’s testimony here. Thus, we are persuaded that Shimada teaches “weighting” as that term is here construed. In its Figure 4, reproduced above (see supra Section IV.A.2.), Shimada further depicts a square imaging element measuring eight “areas” on a side and totaling sixty-four (64) areas. As noted above, Petitioner argues persuasively that Shimada teaches assigning numerical values to each of these areas. Pet. Reply 19 (citing Ex. 2003, 69:10–70:22). Further, Mr. Parulski testifies that: Shimada further describes that “the size of the photometric area substantially may be selected by processing only the signals of the required photometric area.” [Ex. 1005 ¶ 50.] It would have been obvious to a POSITA that Shimada’s disclosure of “processing only the signals of the required photometric area” could advantageously be accomplished by using a memory having “luminance weighting tables” with binary values (e.g., “0” or “1”), which enable the CPU to identify the photometric areas to be included in the processing. Ex. 1033 ¶ 115; see Ex. 2003, 84:11–94:11; see also KSR, 550 U.S. at 417 (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”). Again, we credit Mr. Parulski’s testimony. Thus, we are persuaded that such an assignment of numerical values discloses a “weighting table,” such as that recited in challenged claim 16, and that a person of ordinary skill in the art would understand, in view of Shimada’s teachings, that such numerical values might be stored in a memory in the form of a table. Pet. 41 n.36; see Pet. Reply 19 (“Claim 16 differs from claims 1, 6 and 7 in that it requires a memory storing a “weighting table.”).” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“power values to determine the main flash values presented in Table 1, that such values must be stored within and/or accessible to Shimada’s system, and that Shimada teaches that storage capacity was a concern in the art. Ex. 1005 ¶ 34; see Ex. 2003, 33:7–34:11, 40:9–15. Shimada expressly teaches that two of the pieces of data used to accomplish Shimada’s purpose may be stored in a single memory, ROM 16 of Shimada’s Figure 1. Ex. 1005 ¶¶ 20, 32, 42. Based on the art and arguments presented here, the record suggests a finite number of ways in which distinct pieces of data (e.g., the main flash duration and power values, the preparatory flash duration, and the preparatory flash power values) may be stored and that these would be within the technical grasp of a person of ordinary skill in the art. Ex. 2003, 44:7–45:17, 46:5–47:6; see Tr. 37:3–38:6. On this record, we are persuaded that a person of ordinary skill in the art would have understood that saving information in one file, instead of two or more files, has the ability to conserve storage space. 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.”), 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.”); see Ex. 1005 ¶¶ 34, 35 (describing known problem of, and solutions for, storage capacity).” slip op. at 21
Patent outcomesUS 7,092,029 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,092,029 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsAll claims unpatentablePTAB · Nov 30, 2016 · IPR2015-01233 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1 and 10 are unpatentable: claim 1 is anticipated by Roe and Toshiba, and claim 10 is obvious over Umeda or Sears combined with either Roe or Toshiba.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Having considered the parties’ arguments, we agree with Samsung that the broadest reasonable interpretation of “interface” in light of the specification of the ’290 patent is “a connection used for communicating signals between two or more electrical components,” and we expressly decline to read into claims 1 and 10 requirements that the recited interfaces (1) must perform a data interfacing function “in accordance with a protocol that is recognized and implemented by both the transmitting device and the receiving device” and (2) necessarily must be “higher-level circuits,” as Imperium suggests. Id. at 2, 6–8; PO Resp. 12–13; see Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993) (“It is improper for a court to add ‘extraneous’ limitations to a claim, that is, limitations added ‘wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.’” (quoting E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988))).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We are persuaded by Samsung’s arguments and evidence presented in the Petition that Roe’s dual-purpose I/O circuit discloses the “data interface circuit” of claim 1 of the ’290 patent, including single-ended and differential interfaces with selectable outputs arranged as set forth in claim 1, and neither Imperium’s arguments nor its cited evidence persuade us otherwise. See Pet. 17–25; PO Resp. 16–22. As stated in Section II.A.2 supra, we agree with Samsung that the broadest reasonable interpretation of the term “interface,” as recited in claim 1 of the ’290 patent, is “a connection used for communicating signals between two or more electrical components,” and we do not read into claim 1 any requirement that the recited interfaces must be a “higher-level circuit” that performs a data interfacing function in accordance with any particular protocol. Accordingly, we are not persuaded by Imperium’s arguments or Dr. Wright’s testimony that Roe’s I/O circuits are not “interfaces” within the meaning of claim 1. PO Resp. 16–20. We also agree with Samsung that claim 1 does not require sending the selected mode to a downstream receiver. Pet. Reply 12. Accordingly, we are not persuaded by Imperium’s argument that Roe does not describe “sending selection signals to any components on the downstream/receive-side of the output lines.” PO Resp. 21. Additionally, because we understand Samsung to rely on Roe’s “dual-purpose I/O circuit” to disclose the claimed “data interface circuit” (see Pet. Reply 12), we are not persuaded by Imperium’s argument that Roe’s “primary interface itself” does not have selectable single-ended and differential components (PO Resp. 21). c. Conclusion For the foregoing reasons, we conclude that Samsung has shown by a preponderance of the evidence that claim 1 is anticipated by Roe.” slip op. at 21
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“ordinary skill in the art, adopted in Section II.C.3.b supra, as well as the testimony of both Dr. Wright (Ex. 1040; Ex. 1046; Ex. 2008) and Dr. Baker (Ex. 1008; Ex. 1041; Ex. 2007), we are persuaded by Samsung’s arguments and evidence that it would have been within the skill of a person of ordinary skill in the art to incorporate a dual interface as taught by either Roe or Toshiba into Umeda’s image sensor. We also agree with Samsung that Umeda, Roe, and Toshiba are analogous art with respect to claim 10 of the ’290 patent. See Pet. Reply 17–18; PO Resp. 29. As Samsung points out (Pet. Reply 17), the question of whether prior art references are “analogous” is evaluated with respect to the claimed invention, not with respect to other references. See, e.g., Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (“A reference qualifies as prior art for a determination under § 103 when it is analogous to the claimed invention.”). A prior art reference is considered to be analogous to a claimed invention if it is either: (1) from the same field of endeavor, regardless of the problem addressed; or (2) reasonably pertinent to the particular problem with which the inventor is concerned, regardless of the field of endeavor. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). In this case, we determine that Umeda is analogous art with respect to claim 10 under at least the first prong of Bigio, and that Roe and Toshiba are both analogous art under at least the second prong. In particular, Umeda generally describes solid state image sensors, including CMOS-type image sensors, that include a data interface circuit and an image processor connected to the image sensor to receive the signals output by the data interface circuit (see supra Section II.C.3.a and citations therein), which are within the same field of endeavor as the CMOS imaging apparatus of claim 10. Moreover, because each of Roe and Toshiba discloses an interface that provides selectable single-ended and differential signal output with reuse of output pins, we find that those references clearly are pertinent to the problem set forth in the ’290 patent, namely fulfilling a “need for an improved interface circuit that would allow either a single-ended or a differential output and using as few pins as possible” (Ex. 1001, 3:17–19; see also id. at 1:11–15 (“The field of the invention relates generally to the field of interface circuits, and more particularly, to interface circuitry for providing selectable single-ended and differential signal output from a CMOS image sensor to an external digital signal processor.”)).” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are persuaded, moreover, that a person of ordinary skill in the art would have had reason in view of Umeda’s teachings, as cited by Samsung, to make the proffered combinations. See, e.g., Ex. 1006, 1:61–67 (stating the goal of “mak[ing] the most of the[] characteristic features” of a MOS type image sensor and the importance of using “an appropriate interface” to avoid increases in chip area, package size, and cost), Fig. 14 (listing both single-ended (“PC Card”) and differential (“IEEE 1394”) interface types). We conclude that the recited combination of claim 10 is no more than “the predictable use of prior art elements according to their established function,” and that a person of ordinary skill in the art would have been prompted to combine those elements in the claimed fashion. KSR, 550 U.S. at 417, 418. We, accordingly, are persuaded that Samsung has shown that the first three Graham factors weigh in favor of finding that Umeda in combination with either Roe or Toshiba would have rendered the subject matter of claim 10 of the ’290 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38
Patent outcomesUS 6,836,290 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,836,290 - Telebrands Corp. v. Ragner Technology CorporationInstitution deniedPTAB · Nov 23, 2016 · PGR2016-00026 · APJ Michael W Kim · PGR · Institution
The Board denied institution because the petition did not show that claims 1–25 were more likely than not unpatentable for indefiniteness or obviousness over Berardi and Gladfelter.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Person of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art at the time of the effective filing date of the ’057 patent “would have been a person having general knowledge about and experience with the manufacture and/or use of hoses and with fluid mechanics and materials science as they relate to hoses and how hoses work generally. The person of ordinary skill has at least an associate’s degree in science or engineering.” Pet. 17 (citing Ex. 1005). Patent Owner does not challenge Petitioner’s assertion. On these facts, we determine that Petitioner’s articulation of a person of ordinary skill in the art is credible.” slip op. at 7
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“’057 patent defines the following relevant claim terms: “extended length” and “maximum stretched length.” Petitioner does not dispute that these claim terms are defined expressly by the ’057 patent, nor does Petitioner indicate that these claim terms are indefinite. Next, each independent claim recites expressly that the “stretched length” is longer than the “extended length,” which we construed above as “the length the hose or those components extend to when the hose is pressurized with a fluid and no extension forces are applied other than fluid pressure.” Finally, the term “maximum stretched length,” both by the use of the word “maximum” and the express definition set forth in the ’057 patent, indicates that it constitutes an upper bound for the term “stretched length.” Accordingly, through transitive analysis, we determine that the recited term “stretched length” is a relative length intermediate the explicitly defined terms “extended length” and “maximum stretched length.” Relative claim terminology is acceptable if one of ordinary skill would have understood what is claimed, in light of the Specification. Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“those components extend to when the hose is pressurized with a fluid and no extension forces are applied other than fluid pressure,” and also determined that “stretched length” is a relative length intermediate the explicitly defined terms “extended length” and “maximum stretched length.” When considered in the aggregate, we see that “extended length” is a length of a hose attributable to only fluid pressure, while “stretched length” is a length of a hose attributable to any force other than fluid pressure. Accordingly, a discussion of the prior art must acknowledge the interplay between the length of the hose, fluid pressure, and other forces, in order to meet the aforementioned claim limitation.” slip op. at 17
§ 102 anticipation§ 112 disclosurePatents in suitUS 9,182,057 - H&S Manufacturing Company, Inc. v. Oxbo International CorporationInstitution deniedPTAB · Oct 26, 2016 · IPR2016-00926 · APJ James A Tartal · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood of proving claims 28, 32, or 44 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any claim of the ’929 patent. Accordingly, the Petition is denied and no trial is instituted.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“assemblies being aligned side by side when each of the pickup assemblies is positioned in the extended use position such that the first, second, and third pickup assemblies provide a continuous line of material pickup.” Petitioner contends that “‘a continuous line of material pickup’ is: ‘a pickup face uninterrupted by gaps.’” Pet. 9 (citing Ex. 1009 ¶¶ 35–36). Patent Owner argues that “the claims require the pickup assemblies be aligned such that they pickup material continuously along the width of the merger,” and that introducing “gaps” to the meaning of the term “adds unnecessary vagueness to an otherwise definite phrase.” Prelim. Resp. 11. We agree with Patent Owner, and, for purposes of this decision, we determine no express construction is necessary for “continuous line of material pickup.”” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Beougher Figure 1 illustrates combine 10 (folded for transit) equipped with folding header assembly 11, including center section 17 and wing sections 18, which Petitioner contends correspond to the recited three pickup assemblies. Ex. 1010, 3:57–4:8, 6:5–10. As Petitioner notes, “each of the header sections carries an auger section,” and more particularly, “center section 17 rotatably supports auger section 45, and wing sections 18 carry auger sections 46.” Pet. 16 (quoting Ex. 1010, 5:10–13). Petitioner offers no additional explanation in support of its contention that each of the three auger sections of Beougher corresponds to one of the three conveyors recited in claim 44. See Pet. 16; see also Ex. 1009 ¶¶ 46–53. According to Beougher, during combine operation the center and wing sections “of the auger” are in general alignment. Ex. 1010, 6:1–3. The “structure for automatically coupling and uncoupling the auger sections, and for maintaining positive driving connection in all three auger sections during upward and downward pivoting of the header’s wing sections” is shown in Beougher in Figures 6–9. Id. at 5:31–35. Although the three auger sections permit “flexing,” the “parts are nevertheless locked against relative rotational movement by means of springloaded pins 68 received within grooves or keyways 61 of shaft extension 56.” Id. at 6:12–15. In light of these disclosures in Beougher, we agree with Patent Owner that Petitioner has not sufficiently shown that Beougher discloses the three conveyors of claim 44, as opposed to a single auger “that can be separated into sections when the combine harvester header is retracted.” See Prelim. Resp. 35. We have also considered Petitioner’s argument that “the pertinency of Beougher as an anticipatory reference was confirmed by the Patent Office during prosecution of an application related to the ’929 patent,” but find Patent Owner’s decision to cancel a claim during prosecution of a related application does not further support Petitioner’s contentions in this case. See Pet. 17; see also Prelim. Resp. 35–36 (explaining that Patent Owner accepted the allowed claim in the related application and filed a continuing application to prosecute additional claims directed to windrow mergers rather than present arguments in response to the Examiner’s rejection). Accordingly, the information presented by Petitioner does not show a reasonable likelihood that Petitioner would prevail in showing claim 44 of the ’929 patent is anticipated by Beougher.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“(citing Ex. 1012, p. 2, l. 8, Fig. 4; see also additional description of Zhavoronkin in section II.E. below). Petitioner argues that “[o]ne of ordinary skill in the art would have been motivated to modify the second pickup assembly of Schnittjer to include a transverse conveyor as taught by Zhavoronkin, to provide the device with additional options for discharging the material being picked up and moved as taught by Zhavoronkin, to arrive at claim 44 of the ’929 Patent.” Pet. 53 (citing Ex. 1009 ¶ 75 (stating the same)). Petitioner offers no additional explanation for this asserted rationale, which we find not sufficient to support the asserted combination of Schnittjer and Zhavoronkin. As explained above, the apparatus of Schnittjer operates to mix and combine material into a windrow behind its center conveyor 20. On its face, adding a transverse conveyor behind center conveyor 20 of Schnittjer, as Petitioner proposes, would preclude the apparatus from operating as intended. Petitioner provides no sufficient explanation for why Schnittjer would be modified as proposed for the purported benefit of “provid[ing] the device with additional options for discharging the material being picked up and moved,” when the modification would prevent the apparatus from discharging the material as intended. See also Prelim. Resp. 69 (arguing that “adding a middle conveyor would eliminate the device’s ability to invert the compost core on top of that side material, thereby rendering the combined apparatus inoperable for its intended purpose.”). Petitioner further argues that the asserted combination “would merely involve combining prior art elements according to known methods to yield predictable results,” “would have been predictable for at least the reason that Schnittjer already discloses pickup assemblies having transverse conveyors,” and “would merely involve the use of a known technique to improve a similar device in the same way.” Pet. 53–54. Petitioner identifies no testimony from Mr. Shirley in support of the additional arguments. We are not persuaded that the additional generic arguments offered by Petitioner in support of the asserted combination are sufficient in this case because Petitioner has not shown that its proposed modification of Schnittjer would still permit Schnittjer to operate as intended. Petitioner has identified no persuasive predictable result or improvement corresponding to its asserted combination. Accordingly, the information presented by Petitioner does not show a reasonable likelihood that Petitioner would prevail in showing claim 44 of the ’929 patent would have been obvious over Schnittjer and Zhavoronkin.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,310,929 - H&S Manufacturing Company, Inc. v. Oxbo International CorporationInstitution deniedPTAB · Oct 18, 2016 · IPR2016-00909 · APJ James A Tartal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable; the asserted references did not establish the claimed trough feature.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“requesting an inter partes review of claims 1–4 and 6–8 of U.S. Patent No. 8,511,052 B2 (“the ’052 patent”). Paper 2 (“Pet.”). Patent Owner, Oxbo International Corporation, filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any claim of the ’052 patent. Accordingly, the Petition is denied and no trial is instituted.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted). Petitioner offers little explanation or evidence in support of its contention that the 2004 Oxbo Manual and the 2006 Oxbo Manual are prior art printed publications. With respect to the 2004 Oxbo Manual, Petitioner does no more than identify a copyright date which does not correspond to the date of revision that also appears on the document. Pet. 18. With respect to the 2006 Oxbo Manual, Petitioner further contends that “by its nature, the repair parts manual was made available to the public.” Id. at 35. The statement of Mr. Shirley, to which the Petition cites as support, offers no evidence specific to the manuals asserted as prior art, but instead consists of a general observation that Patent Owner sold windrow mergers, and a conclusory statement that “manuals such as these were distributed to the consuming public by Oxbo as manufacturers typically do.” Ex. 1010 ¶ 34. Mr. Shirley is not explicit in what “manuals such as these” he is referring to, but the paragraph cited by Petitioner addresses “similar manuals for its 2003 and 2005 Model Year 310 Windrow Mergers,” not explicitly the 2004 Oxbo Manual and the 2006 Oxbo Manual. We are not persuaded, based on the facts of this case, that the presence of a copyright notice dated prior to the revision date of the document and a generic reference to the “nature” of a document as a manual is sufficient evidence to support a threshold showing of public accessibility as of a particular date to support institution of inter partes review. See, e.g., ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, slip op. at 17 (PTAB Aug. 26, 2015) (Paper 13) (finding a copyright notice insufficient); but see Ford Motor Co. v. Cruise Control Techs. LLC, Case IPR2014-00291, slip op. at 7–8 (PTAB June 29, 2015) (Paper 44) (finding a copyright notice sufficient evidence of publication) (citing FLIR Sys., Inc. v. Leak Surveys, Inc., Case IPR2014-00411, slip op. at 18–19 (PTAB Sept. 5, 2014) (Paper 9)). While Petitioner argues that the copyright date and the revision date of both manuals predate the priority date of the ’052 patent, Petitioner has provided no evidence that the references at issue were disseminated as of any particular date, and does not otherwise explain why these particular manuals were “sufficiently accessible to the public interested in the art” before the critical date. See In re Cronyn, 890 F.2d at 1160; see also ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 865–66 (Fed. Cir. 2010) (finding no error in district court’s determination that user manuals were not printed publications in the absence of evidence of the source, publication, or public accessibility of either manual). Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any challenged claims of the ’052 patent based on the 2004 Oxbo Manual or the 2006 Oxbo Manual.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“The photo above from the 2004 Oxbo Manual appears to show a portion of the 310 Windrow Merger. Neither Petitioner nor Mr. Shirley further explains why the photo shows the trough feature, as claimed. See Ex. 1010 ¶ 37 (stating that “[t]he trough can be seen in the figure” (referring to third photo on page 23224 of the 2004 Oxbo Manual), and that “[i]n my opinion one of ordinary skill in the art would view these assemblies as the pickup and transfer unit as claimed in the ‘052 Patent”). Contrary to Petitioner’s conclusory assertions, we agree with Patent Owner that Petitioner has not sufficiently identified any structure in the 2004 Oxbo Manual corresponding to the trough feature. See Prelim. Resp. 27–32. The figures and photos cited by Petitioner all show that the pickup head of the 2004 Oxbo Manual “does not form a wall on the forward side of the conveyor and that the conveyor belt is horizontally flush with the pickup head.” Prelim. Resp. 28. Petitioner has not shown how the pickup head depicted in the 2004 Oxbo Manual, together with the conveyor and cover, “defines a trough” because the conveyor belt is horizontally flush with the pickup head. As explained in our claim construction discussion above, we agree with Patent Owner that the recited trough feature requires a depth formed by two sides. Petitioner has not shown how the 2004 Oxbo Manual satisfies this limitation.5” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Dow Figure 15 shows pickup transfer assembly 108, including merger head 128, arcing shroud 160. Ex. 1008, 4:42–44, 4:66–5:1, 6:18–20. Neither Petitioner nor Mr. Shirley further explains why the Dow apparatus shows the trough feature, as claimed. See Ex. 1010 ¶ 69 (stating that “[t]he trough can be seen in [Dow] Figure 15,” and that “[i]t is my opinion that one of ordinary skill in the art would understand these assemblies to be the pickup and transfer unit disclosed in the ’052 Patent”). Patent Owner contends that Dow does not disclose a trough, as shown in Figure 3 of Dow, reproduced below. Dow Figure 3 shows merger apparatus 100, including head unit 124 and conveyor 134. Ex. 1008, 4:35–37, 62–66. We agree with Patent Owner that Dow, as shown in Figure 3, illustrates “a pickup head and conveyor belt on the same horizontal plane,” and that the belt conveyor “is not located in a depth or depression between the pickup heads and front of shrouds.” Prelim. Resp. 45–46. As noted above, we agree with Patent Owner that the recited trough feature requires a depth formed by two sides. Petitioner has not shown how the pickup head depicted in Dow, together with the conveyor and shroud, “defines a trough” because the conveyor belt is horizontally flush with the pickup head. As explained in our claim construction discussion above, we agree with Patent Owner that the recited trough feature requires a depth formed by two sides. Petitioner has not shown how Dow satisfies this limitation. Petitioner has not sufficiently shown that any of the asserted references discloses “a pickup and transfer unit defining a trough in which material is conveyed,” as recited in claim 1, the only challenged independent claim. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any challenged claims of the ’052 patent based on the 2004 Oxbo Manual, the 2006 Oxbo Manual, Pourchet, or Dow.” slip op. at 15
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,511,052
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.