- Avx Corporation v. Greatbatch LtdAll claims unpatentablePTAB · Dec 30, 2015 · IPR2014-01361 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–43 are unpatentable under § 103; proposed substitute claims 44 and 45 are not shown patentable, and the Second Motion to Amend is denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In our Decision on Institution, we discussed the meaning of the transitional phrase “consisting essentially of,” but otherwise found that no claim terms required express construction. Dec. on Inst. 4. In its Second Motion to Amend, Patent Owner does not dispute our interpretation of “consisting essentially of,” or propose constructions for any additional claim terms. Upon review of Patent Owner’s evidence and arguments, we conclude that no explicit constructions are required in order to resolve the issues pending before the Board.” slip op. at 6
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“establishing that it is entitled to add proposed substitute claims 44 and 45. 37 C.F.R. § 42.20(c). As part of this showing, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. 37 C.F.R. § 42.121. Upon review of the Second Motion to Amend, we are persuaded that the requirements of 37 C.F.R. § 42.121 have been met. For example, Patent Owner seeks to add only two substitute claims, each of which serves to narrow the scope of original claim 18. Mot. 17–18. Patent Owner also identifies exemplary electrolytes disclosed in the originally-filed application that fall within the scope of proposed substitute claims 44 and 45. Id. at 9 (citing Ex. 1010, 33, 35–36 (disclosing an electrolyte containing ethylene glycol, water, isobutyric acid, and ammonium hydroxide (which results in an ammonium salt of the organic acid) with a pH of 4.9, a conductivity of 7.1 mS/cm, and an anode breakdown voltage of 395 volts)). Thus, we focus on whether Patent Owner has met its burden of proof to show that proposed substitute claims 44 and 45 are patentable over the prior art of record.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentable
“Clark, however, discloses successfully substituting acetic acid in an electrolyte solution with “other low molecular weight paraffin acids,” including butyric, propionic, and lactic acids, as well as forming corresponding ammonium salts of these organic acids. Ex. 1003, 2:40–46, 3:46–61. Likewise, GB 466,193 broadly discloses that acetic acid may be replaced in an electrolyte solution with organic acids of the aliphatic series, including butyric acid and isobutyric acid. Ex. 1015, 3:73–79. In its Second Motion to Amend, Patent Owner does not point to any persuasive evidence to support or explain why a person of ordinary skill in the art would not have considered isobutyric acid, as implied in Clark and expressly identified in GB 466,193, to be a suitable substitute for acetic acid in the electrolyte of Shah. Indeed, similar to the disclosures of Clark and GB 466,193, the ’117 patent discloses that “other relatively weak organic acids of the general formula cnH2+nO2 (where n=2 to 7) are acceptable.”9 Thus, we are not persuaded that Shah, Clark, and GB 466,193 fail to teach or suggest every limitation of proposed substitute claim 44.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsObjective indicia no nexusNot shown unpatentable
“1 of Shah is ten times higher than electrolyte 2 of the ’117 patent, and the resulting conductivity (47.5 mS/cm) is 6.7 times higher than that of electrolyte 2 of the ’117 patent (7.1 mS/cm). First Mot. to Amend 9 (Table 3); Ex. 1001, 2:14–16 (confirming that the ammonium salt “provides electrical conductivity” in the electrolyte). Given the disclosure of Evans that anode breakdown voltage decreases with increasing conductivity (conductivity being the inverse of resistivity), Patent Owner does not explain persuasively why the 150 volt difference in anode breakdown voltage between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is “contrary to” the teachings of Evans. First Mot. to Amend 9 (Table 3),11; Ex. 2004, 3 (Figure 4). Nor does Patent Owner explain why a person of ordinary skill in the art could not use the disclosure of Evans to modify the resistivity of the electrolyte of Shah, Clark, and GB 466,193 to obtain an anode breakdown voltage within the 370 to 400 volt range of proposed substitute claim 45. Thus, we are not persuaded that the 150 volt difference between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is nonobvious or surprising. Patent Owner also contends that if acetic acid was equivalent to isobutyric acid, such that it could be replaced interchangeably, “a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 Patent electrolyte, both of which have almost identical pH~4.9.” First Mot. to Amend 11. We note, however, that, as set forth in Table 3 above, electrolyte 1 of Shah has a conductivity that is 6.7 times higher than electrolyte 2 of the ’117 patent, as well as ten times the ammonium constituent, two and a half times the acid constituent, half the ethylene glycol, and five times the phosphoric acid as compared to electrolyte 2 of the ’117 patent. In view of the wide difference in constituents and resulting conductivity levels between the two electrolytes, and in view of the teaching of Evans that anode breakdown voltage depends on the resistivity of the electrolyte, Patent Owner provides insufficient argument or evidence to explain why one of ordinary skill in the art would expect that “[i]f acetic acid were equivalent to isobutyric acid . . . a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 patent electrolyte . . . .” First Mot. to Amend 11. Accordingly, even if arguments made in the First Motion to Amend were considered, we would still not be persuaded that proposed substitute claim 45 is patentable over the prior art. Thus, we are not persuaded that Patent Owner has carried its burden to demonstrate, by a preponderance of the evidence, that proposed substitute claim 45 is patentable over the prior art of record.” slip op. at 16
Patent outcomesUS 6,687,117 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,687,117 - Square, Inc. v. Unwired Planet, LLCInstitution deniedPTAB · Dec 23, 2015 · CBM2015-00148 · APJ James B Arpin · CBM · Institution
Institution of CBM review of claims 1–4 was denied because § 325(e)(1) estopped Square from pursuing grounds it reasonably could have raised in its earlier CBM petition.
RulingsInstitution decision- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDenied
“(emphasis added). As noted above, we issued a Final Written Decision in CBM2014-00156, determining that claims 1–4 of the ’100 patent are unpatentable under 35 U.S.C. § 101. ’156 Dec. 40. Petitioner here was the petitioner in CBM2014-00156, which resulted in a Final Written Decision with respect to claims 1–4. Thus, pursuant to § 325(e)(1), Petitioner cannot “request or maintain” a proceeding before the Office with respect to these claims “on any ground” that Petitioner “raised or reasonably could have raised” in its Petition in CBM2014-00156.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“discovered Orlen earlier, or foreseen our determination that Petitioner had not shown Vazvan’s public availability, we are not persuaded that Petitioner reasonably could not have raised each of the challenges identified above to claims 1–4 of the ’100 patent, based on 35 U.S.C. § 103(a), in its CBM2014- 00156 Petition. Section 325(e)(1) estops Petitioner from requesting or maintaining a proceeding before the Office with respect to the claims at issue in CBM2015-00148 on “any ground that [Petitioner] raised or reasonably could have raised” in CBM2014-00156. Thus, 35 U.S.C. § 325(e)(1) is applicable to the new challenges to claims 1–4 of the ’100 patent. Consequently, Petitioner is estopped from requesting, e.g., petitioning for institution of, or maintaining a proceeding with respect to claims 1–4 of the ’100 patent on the grounds asserted here. See supra Section I.E. Because Petitioner is estopped from requesting or maintaining a proceeding with respect to claims 1–4 based on any ground it “reasonably could have raised” in its earlier petition, we deny covered business method patent review of claims 1–4 of the ’100 patent in the present proceeding.” slip op. at 10
Discretionary denialPatents in suitUS 7,711,100 - Geox S.P.A. v. Outdry Technologies CorporationAll claims unpatentablePTAB · Dec 18, 2015 · IPR2014-01244 · APJ Donna M Praiss · IPR · Final written decision
Claims 1–15 are unpatentable as obvious under § 103(a); the motion to amend claims 16 and 17 is denied for failure to establish written-description support and patentability.
RulingsFinal written decision- Skill levelSkill level board ownOther
“difference between Petitioner’s and Patent Owner’s proposed levels of ordinary skill in the art that would impact our ultimate conclusions. Petitioner contends that a person of ordinary skill in the art is evidenced by the references. Pet. 11. Patent Owner asserts that “[w]aterproofing leather is not a sophisticated technology, and the education level of a PHOSITA working in the industry is likely a four year degree.” PO Resp. 30. According to Patent Owner, a PHOSITA likely would have knowledge related to making apparel from leather, waterproofing leather using sprays and liners, as well as knowledge of adhesives and bonding leather apparel, and also knowledge of waterproof breathable membranes of various types. Id. We consider the cited prior art as representative of the level of ordinary skill in the art, which Patent Owner essentially summarizes as the knowledge of a PHOSITA. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“interpreted to include either a temporary support that is removed, such as a release sheet, or one that becomes part of the final product, such as a liner. Pet. 11. Patent Owner contends that the term should be construed to be limited to “sheets” because “[n]o other material forms are disclosed other than ‘sheets,’ which include paper and fabric support sheets.” PO Resp. 7 (citing Ex. 1001, 2:58–67). According to Patent Owner, the broadest reasonable construction, therefore, “includes any sheet of flexible fabric or fibrous material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” Id. at 7–8. In the Decision on Institution, we construed “support sheet” as “includ[ing] any material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” Dec. on Inst. 6. This construction is based on the Specification, which describes multiple embodiments of the support sheet, including a detachable sheet and an internal liner. Ex. 1001, 2:58–67. The Specification also describes the use of “different materials” to make the support sheet. Id. at 2:63–64. Accordingly, we conclude that the broadest reasonable construction of “support sheet” is not limited to a sheet of fabric or fibrous material as Patent Owner contends, but, rather, explicitly includes “different materials” that can be fastened generally to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane. Therefore, consistent with the Specification, we construe “support sheet” to mean a sheet of any material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“required degree of contact between the membrane and the leather in the regions that are between the dots of adhesive. The ’171 patent summarizes the invention as enabling a membrane to be applied directly to leather by providing a surface of the membrane with a glue pattern. Ex. 1001, 1:56–61. The invention is said to “avoid the use of a semipermeable lining and the water penetration between leather and lining.” Id. at 1:60–61. The title of the invention states “Process for Waterproofing Leather” and describes the leather used in the process as “leather waterproofed by said process.” Id. at 2:27–28. These disclosures do not define either the word “waterproof” as used in the Specification or the word “directly” as recited in independent claims 1 and 9 to mean that there is constant contact between the membrane and leather such that no water permeates the leather, as Patent Owner contends. In an embodiment of the invention, heating of the membrane during pressing is said to result in “a perfect adhesion” that does not plug the pores with glue. Id. at 2:31–42–45. Heating of the membrane during pressing is carried out also in the single example disclosed in the ’171 patent. Id. at 3:12. The leather samples in the example are said to have been “waterproofed by the process according to the present invention” and “hot-pressed with a hydrophilic non-porous semi-permeable membrane of polyurethane material having a thickness of 10 µm.” Id. at 3:9–14. These disclosures of an embodiment and an example do not define “directly pressing” or “waterproofing” or even “perfect adhesion” to mean constant contact between the leather and the membrane or that no water permeates the leather. Therefore, we decline to import such limitations into the term “directly pressing” based on Patent Owner’s argument that these properties are present inherently in the embodiment of the example in the ’171 patent. Accordingly, we construe “directly pressing” to mean applying pressure without any intervening materials or layers other than the recited adhesive.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“combination of Thornton, Scott, and Hayton. Petitioner has established that Thornton’s process for waterproofing leather by using spaced dots of adhesive in a discontinuous configuration on a semi-permeable membrane that is pressed against the leather meets the requirements of claims 1 and 9 but for the dot density and dot size ranges specified by the claims, respectively. Petitioner also provided a rational underpinning for combining the disclosures of Scott and Hayton, which provide guidance for the density and size of adhesive dots to adhere a semi-permeable membrane to a porous layer. We are not persuaded by Patent Owner’s argument that the teachings of Scott and Hayton are unrelated to the problem of adhering a membrane to a leather layer in view of Thornton’s disclosure that both leather and fabric material are amenable to its process for waterproofing breathable articles of clothing. Ex. 1003, 7:58–62. We also are not persuaded by Patent Owner that the combination of Thornton, Scott, and Hayton does not disclose all of the limitations of claims 1 and 9. The ranges explicitly disclosed in Hayton overlap with the ranges recited in claims 1 and 9. Patent Owner does not argue, and the Specification does not indicate, any criticality associated with the portion of the ranges that are not encompassed by Hayton’s ranges. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Rather, the claimed ranges appear once in the Specification as a preferred embodiment when the pattern of thermoadhesive glue is dots of polyurethane glue. Ex. 1001, 2:37–42. Patent Owner’s arguments distinguishing Thornton on the basis that it does not teach constant contact between the membrane and the leather in the regions between the spaced dots of adhesive is not persuasive for the reasons discussed above in connection with Patent Owner’s claim construction argument that this is required by the claim term “directly pressing.” In addition, we find that Thornton’s semi-permeable membrane completely covers the leather layer in the sense that the leather layer surface faces the membrane surface to form a composite. Thornton explicitly describes drawing the membrane barrier component over a former, applying adhesive to the outer surface of the film, drawing the outer glove layer onto the former, and bonding the layers by pressing. Ex. 1003, 21:64–22:8; Reply 9. Thornton also discloses layers on the former are placed in register (Ex. 1003, 21:33–35) and that the composite can be formed face to face in sheets (id. at 6:62–66, 7:13–31; Reply 8).” slip op. at 15
Patent outcomesUS 6,855,171 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,855,171 - L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentablePTAB · Nov 23, 2015 · IPR2014-00836 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–5 and 8 are unpatentable as obvious over the cited combinations of the EFA Manual, Thomas, and, where applicable, Greene or Brigham.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“term “anomaly” is “deviation from the normal or common order, form, or rule.” Dec. on Inst. 7 (citing THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, 54 (1975)); Ex. 3001, 54. The examples provided in the ’856 patent for identifying a voltage anomaly are consistent with this definition. Namely, a spike in the electric field or an increase in the electric field above a threshold would indicate a deviation from the normal order. Ex. 1002, col. 17, ll. 12–19, col. 18, ll. 8–9, col. 19, ll. 62–67, col. 21, ll. 4– 7. Therefore, we determined that the broadest reasonable interpretation of the phrase “identify the voltage anomaly in the electric field” in claim 1 of the ’856 patent is “identify a deviation from a normal voltage in the electric field, including by identifying an electric field that exceeds a threshold, or that rises and peaks above a threshold or background and then falls.” Dec. on Inst. 7. We see no reason now to deviate from that construction.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 24–27, 42–45; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1022 ¶¶ 51–55, 65–67. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 52–53; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1022 ¶¶ 104–106; see KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Brigham with the EFA Manual and Thomas because the EFA Manual teaches using the fast Fourier transform to produce electric field strengths, and, thus, one of ordinary skill in the art would have looked to other references, such as Brigham, for well-known ways to implement the fast Fourier transform. Pet. 54–56; Ex. 1004 § 6.3, Annex C; Ex. 1008, 83–87; Ex. 1022 ¶¶ 109–110; see KSR, 550 U.S. at 416.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“c. Teaching Away Patent Owner argues that the EFA Manual teaches away from the combination proposed by Petitioner. PO Resp. 27–30. In particular, Patent Owner argues that the EFA Manual teaches that the electric field sensor disclosed therein must be mounted on a tripod. Id. at 29. According to Patent Owner, requiring the sensor to be mounted on a tripod indicates that the sensor cannot be used while in motion. Id. at 28–30. Patent Owner’s argument is not persuasive. Although the EFA Manual requires that the sensor be “mounted on a tripod and insulated from it” (Ex. 1004 § 3.4.1), Patent Owner does not identify any teaching in the EFA Manual that prohibits the sensor from being used while in motion (Ex. 1024, 108:20– 109:3). Further, as discussed above, Thomas teaches that an electric field sensor can be mounted to an electrically non-conductive support structure on a motor vehicle and used while the vehicle is in motion. Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. Thus, one of ordinary skill in the art reading the EFA Manual and Thomas together would understand that the sensor taught in the EFA Manual could be mounted securely to and insulated from a support structure on a motor vehicle, which would satisfy the conditions for use set forth in the EFA Manual. See Ex. 1022 ¶¶ 52–53.” slip op. at 22
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner
“could only identify voltage anomalies by making direct contact with each potential hazard using a handheld device. PO Resp. 36. According to Patent Owner, this manual scanning did not scale effectively to large cities because of the geographic footprint and large number of potential hazards. Id. at 36– 37. Patent Owner contends that this demonstrates a long-felt but unmet need “for efficient, scalable, stray voltage detection capable of serving as an alternative to manual testing.” Id. at 37. Although Patent Owner explains generally why the technology existing prior to the ’856 patent may not have been ideal for large cities, that alone does not indicate that utility companies actually had a long-felt but unmet need for a more efficient alternative, rather than, for example, just a lack of interest in the technology.” slip op. at 23
Patent outcomesUS 8,536,856 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,536,856 - L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentablePTAB · Nov 23, 2015 · IPR2014-00839 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–5 and 8 are unpatentable as obvious over the EFA Manual and Thomas, with Greene also applied to claim 3.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“anomaly in the electric field” in claim 1 of the ’864 patent to mean “detect an electric field that rises and peaks above a threshold or background and then falls.” PO Resp. 53. Patent Owner argues that the claims and written description of the ’864 patent indicate that a voltage anomaly is identified as the sensor moves past the anomaly. Id. at 53–55. Therefore, according to Patent Owner, an anomaly is represented by a rise in the electric field as the sensor moves closer to the anomaly, a peak when the sensor is near the anomaly, and a fall when the sensor moves past the anomaly. Id. In the Decision on Institution, we determined that Patent Owner’s proposed construction would improperly limit the claims to just one of the examples disclosed in the Specification, and we see no reason now to deviate from that determination. Dec. on Inst. 6 (citing Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007)). Specifically, the ’864 patent states that an anomaly can be “represented for example by a rise-peak-fall in the alert pitch, a corresponding visual spike in raw voltage plot 1206, a high signal strength value in signal strength display field 1322 or a combination thereof.” Ex. 1001, col. 19, ll. 18–23 (emphasis added). Thus, the ’864 patent indicates that a rise-peak-fall in the audible alert or a visual spike are just examples of ways to identify an anomaly. The ’864 patent states that a voltage anomaly also can be identified by an electric field that exceeds a threshold or a high signal strength value. Id. at col. 16, ll. 36–43, col. 17, ll. 31–32, col. 19, ll. 18–23, col. 20, ll. 27–30.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“2. mobile Patent Owner proposes construing the term “mobile” in claim 1 of the ’864 patent to mean “designed to operate while in motion.” Prelim. Resp. 5; PO Resp. 57. Patent Owner argues that the written description of the ’864 patent supports this construction because it states that “the sensor system 100 may detect an energized manhole cover . . . when moving at speeds of up to 10 mph.” Prelim. Resp. 6; Ex. 1001, col. 10, ll. 42–48. We agree that the written description indicates that a mobile apparatus operates while in motion, but Patent Owner does not identify specific evidence showing that a mobile apparatus must be “designed” to operate in motion. Prelim. Resp. 5– 7; PO Resp. 57. Therefore, we determine that the broadest reasonable interpretation of the term “mobile apparatus” in claim 1 of the ’864 patent is “apparatus that operates while in motion.”” slip op. at 8
- Skill levelOther
“a. Level of Ordinary Skill in the Art Patent Owner argues that a person of ordinary skill in the art would not have combined the cited teachings of the EFA Manual and Thomas because it was not known at the time of filing of the ’864 patent that an electric field sensor could be used to identify a stray voltage anomaly. PO Resp. 13–16. Patent Owner’s argument is not persuasive. Patent Owner’s declarant, Dr. Fugate, admits that a person of ordinary skill in the art at the time of filing of the ’864 patent would have known that an electric field sensor could be used to identify a stray voltage anomaly. Ex. 1024, 126:10– 127:1; Tr. 61:4–7. Further, as discussed above, Thomas teaches that electric current flowing through an object generates an anomaly in an electric field, and, thus, it would have been obvious to one of ordinary skill in the art reading Thomas that an electric field sensor could be used to identify a stray voltage anomaly. See supra Section II.B.2; Pet. 38–41; Ex. 1005, col. 7, ll. 6–10; Ex. 1021 ¶¶ 75, 76. Patent Owner also argues that “Petitioners’ sole reason for combining the EFA Manual and Thomas relies solely on the false premise that a skilled artisan would have known about the private Sarnoff experiments on stray voltage detection using electric fields,” but “Petitioners failed to show that the skilled artisan would have known about this work.” PO Resp. 16. Patent Owner’s argument is not persuasive. Thomas teaches mounting an electric field sensor on a motor vehicle and using the sensor to identify anomalies in electric fields while the vehicle is in motion. Ex. 1005, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. As such, Thomas itself would have provided one of ordinary skill in the art with a reason to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas and use the sensor to identify anomalies in electric fields while the vehicle is in motion. Pet. 24– 28, 38–41; Ex. 1021 ¶¶ 49–53, 55–58. Therefore, Petitioner’s reason for combining the cited teachings of the EFA Manual and Thomas is not dependent on whether one of ordinary skill in the art would have known about any private Sarnoff experiments.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“4. Reasons for Combinations Petitioner identifies evidence indicating that it would have been obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 24–28, 38–41; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1021 ¶¶ 49–53, 55–58. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 48–49; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1021 ¶¶ 89–91; see KSR, 550 U.S. at 416.” slip op. at 15
Patent outcomesUS 8,598,864 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,598,864 - L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentablePTAB · Nov 23, 2015 · IPR2014-00834 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–5 and 8 are unpatentable as obvious under § 103(a) over the specified combinations of the EFA Manual, Thomas, and, for dependent claims, Greene or Brigham.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner
“proposed construction is not the broadest reasonable interpretation, and we see no reason now to deviate from that determination. Dec. on Inst. 5–6. Specifically, the word “unexpected” in Petitioner’s proposed construction is not found anywhere in the claims or the written description of the ’274 patent, and we are not persuaded that the word “unexpected” is synonymous with “undesirable” or “dangerous.” Further, Petitioner does not explain how any of the cited portions of the prosecution history show that the “voltage anomaly” recited in claim 1 is an unexpected voltage. Pet. 15–17.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 25–28, 43–45; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1023 ¶¶ 51–55, 64–66. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 53–54; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1023 ¶¶ 100–102; see KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Brigham with the EFA Manual and Thomas because the EFA Manual teaches using the fast Fourier transform to produce electric field strengths, and, thus, one of ordinary skill in the art would have looked to other references, such as Brigham, for well-known ways to implement the fast Fourier transform. Pet. 55–57; Ex. 1004 § 6.3, Annex C; Ex. 1008, 83–87; Ex. 1023 ¶¶ 105–106; see KSR, 550 U.S. at 416.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“c. Teaching Away Patent Owner argues that the EFA Manual teaches away from the combination proposed by Petitioner. PO Resp. 27–30. In particular, Patent Owner argues that the EFA Manual teaches that the electric field sensor disclosed therein must be mounted on a tripod. Id. at 29. According to Patent Owner, requiring the sensor to be mounted on a tripod indicates that the sensor cannot be used while in motion. Id. at 28–30. Patent Owner’s argument is not persuasive. Although the EFA Manual requires that the sensor be “mounted on a tripod and insulated from it” (Ex. 1004 § 3.4.1), Patent Owner does not identify any teaching in the EFA Manual that prohibits the sensor from being used while in motion (Ex. 1024, 108:20– 109:3). Further, as discussed above, Thomas teaches that an electric field sensor can be mounted to an electrically non-conductive support structure on a motor vehicle and used while the vehicle is in motion. Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. Thus, one of ordinary skill in the art reading the EFA Manual and Thomas together would understand that the sensor taught in the EFA Manual could be mounted securely to and insulated from a support structure on a motor vehicle, which would satisfy the conditions for use set forth in the EFA Manual. See Ex. 1023 ¶¶ 52–53.” slip op. at 22
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner
“could only identify voltage anomalies by making direct contact with each potential hazard using a handheld device. PO Resp. 36. According to Patent Owner, this manual scanning did not scale effectively to large cities because of the geographic footprint and large number of potential hazards. Id. at 36– 37. Patent Owner contends that this demonstrates a long-felt but unmet need “for efficient, scalable, stray voltage detection capable of serving as an alternative to manual testing.” Id. at 37. Although Patent Owner explains generally why the technology existing prior to the ’274 patent may not have been ideal for large cities, that alone does not indicate that utility companies actually had a long-felt but unmet need for a more efficient alternative, rather than, for example, just a lack of interest in the technology.” slip op. at 23
Patent outcomesUS 8,482,274 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,482,274 - Avx Corporation v. Greatbatch Ltd.Adverse judgmentPTAB · Nov 19, 2015 · IPR2015-00713 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and cancelled claims 1, 2, 8, 9, 23, 24, 30, and 31.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed to be a request for adverse judgment include disclaimer of the involved application or patent and cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. Id. In light of Patent Owner’s disclaimer of claims 1–44 of the ’077 patent, we determine that entry of judgment against Patent Owner with respect to claims 1, 2, 8, 9, 23, 24, 30, and 31 of the ’077 patent is appropriate.” slip op. at 2
NonePatents in suitUS 7,035,077 - United States Department Of Homeland Security v. Larry GoldenRehearing deniedPTAB · Nov 17, 2015 · IPR2014-00714 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place denial of substitute claims 154–156 because they were broader, lacked written description support, and were not shown patentable over the prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The burden of showing [the] decision should be modified lies with the party challenging the decision.” Id. The request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“three independent reasons: (1) substitute claims 154–156 are impermissibly broader than the claims they replaced; (2) Patent Owner failed to show written description support for substitute claims 154–156 as a whole; and (3) Patent Owner failed to show that claims 154–156 were patentable over the prior art of record. Final Dec. 15–21 (improper broadening), 21–22, (written description), 22–31 (prior art of record). Therefore, to succeed on this Rehearing Request, Patent Owner must show that we misapprehended or overlooked matters in reaching each of these determinations. Patent Owner has not done so. We address Patent Owner’s arguments in detail below.” slip op. at 3
- ScopeDenied
“In any event, this priority date argument does not contain any reason why our determination that substitute claims 154–156 are broader in scope than cancelled claims 11, 74, and 81 that they seek to replace was in error. Reh’g Req. 4–5. To the extent that Patent Owner does contest our finding that the claims are broader in scope, we do not find it persuasive because Patent Owner does not show amending a claim to replace a particular species with an entire genus would not be broadening. Thus, this argument regarding priority date does not persuade us that we erred in denying Patent Owner’s motion to amend.” slip op. at 4
- 112 supportDenied
“B. Lack of Written Description Support Patent Owner argues that we should also excuse Patent Owner’s failure to identify written description support for the entire claim because of the “special circumstances” discussed above. Reh’g Req. 2–3. Without determining whether such an exception exists for the requirement of providing written description support for the entire claim, Patent Owner fails to identify anywhere in the Patent Owner Response or Motion to Amend where this argument was raised. Because the argument was not raised, we could not have misapprehended or overlooked it. Thus, we determine that Patent Owner has failed to show that we erred in our determination that the Motion to Amend failed to show written description support for the claim as a whole.” slip op. at 5
§ 102 anticipation - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00948 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s adverse-judgment motion, entered judgment against Patent Owner, and cancelled claims 2, 22, 23, and 25.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and it did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3
NonePatents in suitUS 6,370,371 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00947 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s motion for adverse judgment and cancelled claims 1, 23, 25, 161, 193, and 202.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3
NonePatents in suitUS 6,061,551
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.