• Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.Institution denied
  PTAB · 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 denial
  Patents in suitUS 6,732,817
• Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.Institution denied
  PTAB · 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 denial
  Patents in suitUS 6,732,817
• Kamstrup A/S v. Apator Miitors ApsAll claims unpatentable
  PTAB · Dec 20, 2016 · IPR2015-01403 · APJ John F Horvath · IPR · Final written decision

  Claims 1–13 are unpatentable: claims 1, 2, 6, and 7 are anticipated by Nielsen; the remaining claims are unpatentable on the listed obviousness grounds.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC, v. Lee, 136 S. Ct. 2131, 2142–46 (2016). Consistent with the rule of broadest reasonable interpretation, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need to be construed and 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). The only term Petitioner asks us to construe is the term “seal” recited in claim 8. Pet. 21. Petitioner argues the term means a “legal” or “tamper-evident” seal. Id. Patent Owner does not dispute this interpretation, and does not ask us to construe any claim terms. We decline to construe the term “seal” because it is not necessary to resolve any controversy. See Vivid Techs., 200 F.3d at 803. We need not expressly construe any other term, as the terms are deemed to have their plain and ordinary meaning.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “In his Declaration, Mr. Skallebæk indicated his position as Senior Vice President for Petitioner. Ex. 1018 ¶ 1. He further declared that he had read the Petition and the Exhibits thereto, and swore that all statements in the Declaration were true and correct, and signed the Declaration. Id. ¶ 2. In his deposition, Mr. Skallebæk testified that although he receives an annual salary from Petitioner, his compensation is independent of the outcome of this proceeding. Ex. 2007, 16:10–17:20. The evidence does not show that Mr. Skallebæk has any other financial interest in the outcome of the case. We duly note the interest of Mr. Skallebæk as an Officer of Petitioner in our consideration and weighing of his testimony. See Ethicon Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1465 (Fed. Cir. 1998). We do not consider the fact that someone else first drafted Mr. Skallebæk’s Declaration, which he reviewed and signed, to diminish the credibility of his testimony in any way.” slip op. at 9

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “In his Declaration, Mr. Drachmann declares a “mechanics6” file was attached to the first Tunheim email and a “UFM++venture” file was attached to both the Bjerngaard and second Tunheim emails. Ex. 2008 ¶¶ 5–10. Although the body of the first Tunheim email refers to a mechanical meter assembly and indicates a sample is attached, there are no indicia in either the body or header of the email indicating a file is attached, let alone a file entitled “mechanics6.” See Ex. 2009, 1, 3. Thus, the only evidence that the “mechanics6” file was attached to the first Tunheim email is the Drachmann Declaration. See Ex. 2008 ¶ 5. Moreover, the only evidence that the first Tunheim email was actually sent to Mr. Tunheim is the Drachmann Declaration. Id. ¶ 5. A similar analysis of the Bjerngaard and second Tunheim emails leads to a similar conclusion, i.e., that the only evidence that a “UFM++venture” file was attached to these emails, or that these emails were sent to their intended recipients is the Drachmann Declaration. Id. ¶¶ 6–7; Ex. 2010 1, 3; Ex. 2011 1, 3. Patent Owner has provided no evidence corroborating Mr. Drachmann’s testimony on these points, such as a reply email from Mr. Tunheim or Mr. Bjerngaard, or a declaration from Mr. Tunheim or Mr. Bjerngaard stating he had received the emails on the dates indicated. See Ex. 2008 ¶¶ 5–7. Moreover, even assuming the first and second Tunheim emails and the Bjerngaard email were sent on the dates indicated and included the “mechanics6” and “UFM++venture” files as attachments, this evidence by itself is insufficient to prove conception of the invention prior to March 22, 2010, because it does not show that the inventors were in possession of every element of the claims. For example, each of independent claims 1, 12, and 13 requires “a housing for the transducers and electronic circuit,” and neither the “mechanics6” file nor the “UFM++venture” file shows transducers located within a housing as required by the claims. See Ex. 2009, 4; Ex. 2010, 4–24; Ex. 2011, 54–74. As Petitioner correctly notes, although the devices are referred to as ultrasonic flowmeters in Exhibits 2010 and 2011, “the presence of ‘at least one ultrasonic transducer’ actually inside the device is not apparent in any of the Exhibits themselves, and could be located elsewhere in the fluid flow and still be fully consistent with the content of the Exhibits.” Pet. Reply 2–3. Patent Owner also relies on the “mechanics7” drawings to prove prior conception of independent claims 1, 12, and 13. See Ex. 2008 ¶¶ 14, 21, 22. Although these drawings show the transducers within the housing, Patent Owner presents no evidence indicating these drawings were shown to another person. See Coleman, 754 F.2d at 359 (“Conception must be proved by corroborating evidence which shows that the inventor disclosed to others his completed thought expressed in such clear terms as to enable those skilled in the art to make the invention”) (emphasis added) (internal quotations and citation omitted).” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “D. Unpatentability of Claims 1, 2, 6, and 7 over Nielsen Petitioner argues Nielsen teaches all the limitations of claims 1, 2, 6, and 7, and therefore, anticipates these claims. Pet. 49–53. Nielsen discloses an ultrasonic flow meter that can be used as either a water or gas meter. Ex. 1016 ¶ 28. The flow meter includes flow meter housing 120 with measuring tube 114, and an attached water tight casing that encloses printed circuit board 202 and transducers 206.5 Id. ¶ 35. Nielsen’s casing consists of top part 134 hermetically sealed to bottom membrane 132 via soldering, laser welding, or glue. Id. ¶¶ 35, 44. The bottom membrane 132 includes first and second recesses 236 for seating transducers 206, and flow meter housing 120 includes first and second holes for receiving the first and second recesses. Id. ¶ 38. Bracing 116 is provided to lock the casing to housing 120 via one or more screws. Id. ¶ 40. 5 Petitioner maps Nielsen’s flow meter housing 120 (which includes measuring tube 114) to the claimed “flow channel,” and Nielsen’s water-tight casing (which contains a circuit board and transducers) to the claimed “housing.” See Pet. 50; Ex. 1016 ¶ 35. Figure 2 of Nielsen is reproduced below. Figure 2 is an exploded view of an ultrasonic flow meter as taught by Nielsen. Petitioner demonstrates, by a preponderance of evidence, that Nielsen discloses each of the limitations required by claims 1, 2, 6, and 7. See Pet. 49–53. Based on Nielsen’s disclosure, discussed supra, we find Petitioner’s analysis persuasive and adopt it as our own. Patent Owner does not contest” slip op. at 10

  Patent outcomesUS 8,893,559 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,893,559
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCNo claims unpatentable
  PTAB · Dec 7, 2016 · IPR2015-01367 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–3, 6–9, and 12–14 were not shown unpatentable because Reed and Mahany did not teach interleaving S-blocks to form packet blocks, and Webb did not cure that deficiency.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “The ’831 patent equates “encoding” with interleaving several times. The ’831 patent discloses, for example, that “[p]ackets are encoded into packet blocks by first interleaving the packets together in a register. The interleaved packet block is then transmitted to the receiver. Because the packets are interleaved, a single burst error is dispersed over multiple packets.” Ex. 1001, 2:34–35 (emphasis added). In the detailed description of transmitter 20, an outgoing message is “transferred to a register 96/98,” which “interleaves a message into a large packet block size.” Id. at 4:10–13 (emphasis added). Figure 9 of the ’831 patent, which “is a schematic diagram of a transmitter register used for encoding packets into a variable sized packet block” (id. at 3:18–20) (emphasis added), discloses the use of interleaving as the block coding technique (id. at 6:24–25 (“FIG. 9 shows a diagram for a block coding technique (interleaving) according to the invention . . . .”)). See also id. at Figs. 10, 11, 6:49–65. Also, the ’831 patent describes the point of novelty as “varying the number of bytes in each packet interleaved together according to receiver speed.” Id. at 6:66–7:2 (emphasis added); see also id. at 7:5–30. We, therefore, agree that the proper construction of “encoding packets into packet blocks” is “forming blocks by interleaving packets together.”1” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner

    “’831 patent as performing the recited function to be the CPU performing one of the algorithms identified by Petitioner. Inst. Dec. 8–9. Patent Owner argues that the function is “performed by ‘memory/CPU,’ and not just the CPU alone.” PO Resp. 16–17 (citing Ex. 1001, Figs. 16–18, 8:16–31). The ’831 patent discloses that “[a] memory and CPU 108 determines the appropriate packet block size for the current car travel speed from signal 70.” Ex. 1001, 7:67–8:2 (emphasis added). “The packet block size is determined by reading prestored packet block size values in memory 108.” Id. at 8:3–4 (emphasis added). According to the ’831 patent, “the travel speed received from signal 70 is used as an address to read the memory location containing the appropriate packet block size value.” Id. at 8:5–8 (emphasis added). “The message from receiver/register 102 and the packet block size value determined in memory/CPU 108 are both input to a register 106.” Id. at 8:10–12 (emphasis added). We are persuaded, therefore, that the structure disclosed in the ’831 patent as performing the recited function is not only the CPU, but also the memory, performing one of the algorithms identified by Petitioner.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “subsequent to institution, that “encoding packets into packet blocks” means “forming blocks by interleaving packets together,” a construction which we have adopted. Accordingly, we revisit whether the combination of Reed and Mahany teaches “encoding packets into packet blocks,” as recited in independent claim 1, and “an encoder for combining and varying the number of packets transmitted in each of the packet blocks,” as recited in independent claim 9.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Nevertheless, even assuming that Reed uses “blocks of data” to include S-blocks, we find that Reed’s teaching of “interleaving two or more blocks of data within each packet of data” (Ex. 1006, 2:63–68) is ambiguous and should not be read so broadly when Reed is considered as a whole. Petitioner would like us to interpret the sentence to mean interleaving the data from a first block of data (i.e., S-block) in a packet with data from a second block of data (i.e., S-block) in the packet—i.e., “interleaving two or more blocks of data [with each other] within each packet of data.” However, an equally plausible interpretation is that it means “interleaving [the data within each of] two or more blocks of data within each packet of data.” In other words, interleaving the data within a packet’s first block of data (i.e., R-blocks interleaved in a first S-block) and, separately, interleaving the data within the packet’s second block of data (i.e., R-blocks interleaved in the second S-block). In the latter interpretation, no data from the first block of data (i.e., S-block) are interleaved with data from the second block of data (i.e., S-block). We find that only this latter interpretation is supported by Reed’s disclosure. For example, in Figure 4, Reed discloses interleaving the data within S-blocks in a packet of data, but not interleaving the data between S-blocks. Ex. 1006, 3:20–22, Fig. 4. Reed further discloses employing an “interleaving scheme . . . over each S-block (690 bits), FIG. 4.” Id. at 4:39–41 (emphasis added). Reed similarly claims “concatenating two or more blocks of data and interleaving the bits of the data in each block.” Id., claim 6 (emphasis added). We find no similar support for Petitioner’s interpretation of Reed. Given the lack of support for Petitioner’s interpretation in the rest of the disclosure in Reed, we are not persuaded that a person of ordinary skill in the art, reading this ambiguous sentence in the Summary of Invention of Reed, would have understood it to be teaching interleaving one of Reed’s S-blocks with another of Reed’s S-blocks.” slip op. at 17

  Patent outcomesUS 5,602,831 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 5,602,831
• Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,626,344
• Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,626,344
• Honeywell International Inc. v. Allure Energy, Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,457,797
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,092,029
• Presidio Components, Inc. v. Avx CorporationNo claims unpatentable
  PTAB · Dec 1, 2016 · IPR2015-01332 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–5 and 7–12 were not shown unpatentable because the evidence did not establish a sufficient reason to modify Galvagni’s capacitor.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Harperizing, or “corner rounding,” is typical. It merely describes one exemplary capacitor manufacturing process in which “the surfaces are cleaned of adhering lead contaminations and the edges and corners are eroded, i.e., rounded off, so that after the scrubbing the inside electrodes . . . are made substantially flush to the end faces of the monolithic ceramic body.” Florian, 10:16–22. On the other hand, Patent Owner’s expert, Dr. Shanfield, testifies that “Galvagni does not Harperize or corner round its components,” and that “a person of ordinary skill in the art would have avoided Harperization not least because it would have added processing time to an already labor-intensive process of Galvagni that could lead to longer cycle time, as well as dimensional variability that could lead to lower yield.”) Shanfield Decl. ¶¶ 71–72; see also id. at ¶ 73 (not Harperizing to contain or reduce manufacturing cost). On this record, we credit the testimony of Dr. Shanfield. We are not persuaded that a person of ordinary skill in the art would have understood that it was “typical” to Harperize the ends 18 of capacitor 16 taught in Galvagni prior to the vapor deposition of layer 21 illustrated in Figure 4 of Galvagni.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “In our Decision on Institution, we construed the phrase “negligibly over the top surface” (independent claims 1 and 12) to mean “a small amount of material is formed on the top surface.” Dec. to Inst. 7–9. Neither party disputes our determination or proposes additional terms for construction. Based on the record developed during this proceeding, we maintain this construction.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “On this issue, we agree with Patent Owner. Galvagni’s teachings of in-circuit testing of individual components are limited to using the ends, not the tops, of those components. Ex. 1002, 3:7–10, 6:24–30. Petitioner’s argument that testing probes of 0.05 mm were commercially available is not persuasive because Petitioner makes a comparison only to the dimensions taught in the ’547 patent without providing sufficient evidence that any negligible termination resulting from Harperization of Galvagni’s capacitor would also have been 0.05 mm. Even if it were, any negligible termination on a top surface of Galvagni’s capacitor would be very small relative to the end surface of Galvagni’s capacitor, and, therefore, would not “make it easier to access the capacitor for in-circuit test” (Pet. 17). Finally, even assuming Petitioner is right that a person of ordinary skill in the art would have been motivated to “test the individual components in a manner that minimizes wasted PCB (printed circuit board) space” (Pet. 15), Petitioner has not presented persuasive evidence that such a person would have valued that factor more highly than the other considerations identified by Dr. Shanfield—i.e., (1) the efficiency of testing groups of components rather than individual components, or (2) using pads on the PCB to reduce the risk of damage to components. After weighing the arguments and evidence, including the testimony of both parties’ experts, we are not persuaded that a person of ordinary skill in the art would have been motivated by the purported advantages for in-circuit testing to modify Galvagni’s capacitor 16 to include terminations extending negligibly over a top surface.” slip op. at 13

  • ExcludeNot reached

    “We decline to assess the merits of Patent Owner’s Motion to Exclude. As discussed above, even considering the identified evidence, we have concluded that Petitioner has not demonstrated, by a preponderance of the evidence, that the challenged claims are unpatentable. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 20

  Patent outcomesUS 6,144,547 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,144,547
• Presidio Components, Inc. v. American Technical Ceramics Corp.All claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01331 · APJ Christopher G Paulraj · IPR · Final written decision

  Claims 1–6 are unpatentable: Heron anticipates claims 1–4, and Heron combined with Monsorno ’926 renders claims 5–6 obvious.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2146 (2016). Under that standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “Petitioner submits that each term of the challenged claims should be given its ordinary meaning.” Pet. 6. Patent Owner agreed in its Preliminary Response that claim terms should be given their ordinary meaning, and did not propose that any terms be construed separately in its Patent Owner Response. Prelim. Resp. 8. For the purposes of this Final Written Decision, we determine that none of the claim terms in the ’879 patent require express construction.” slip op. at 6

  • ExcludeMotion to exclude, deniedDenied

    “Specifically, Patent Owner seeks to exclude Exhibits 1004, 1006, 1008, 1009, 1010, and 1011, portions of Dr. Randall’s Declaration concerning those exhibits (paragraphs 65–75, 87–94, and 124–151 of Ex. 1012), as well as Appendices E, G, J, L, M, N, O and P of Dr. Randall’s Declaration on the grounds that they relate to patentability challenges that did not form the basis of our Institution Decision in this proceeding. Id. at 2–4, 6, 7. Patent Owner additionally seeks to exclude paragraphs 22 and 25 of Dr. Randall’s Declaration under Fed. R. Evid. 702 for failing to be based on sufficient facts or data. Id. at 4–5. Furthermore, Patent Owner seeks to exclude Exhibit 1015, Dr. Shanfield’s deposition transcript, on the grounds that the testimony cited to at 8:21–9:2 in Exhibit 1015 was objected to for lack of relevance. Id. at 7. Because we did not rely upon any of the exhibits, portions of Dr. Randall’s Declaration, or the cited testimony from Dr. Shanfield’s deposition transcript that are sought to be excluded in this Final Written Decision, we dismiss Patent Owner’s motion to exclude as moot. V.” slip op. at 22

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Although a Reply may properly respond to arguments raised in Patent Owner’s Response (see 37 C.F.R. § 42.23(b)), it is not an opportunity for Petitioner to identify, for the first time, new and different prior art elements that are alleged to satisfy the claim requirements. Here, Petitioner’s reliance on trimming plate 15 is materially different from its prior reliance on capacitor plates 2a, 4a, 2c, 4b, etc., especially with respect to the requirement of “one of said contacts members connecting to an end surface of said electrode layer.” Whereas the Petition pointed to, and our Institution Decision relied upon, Bonini’s teaching that the capacitor plates extend to the left or right side portions of capacitor body 3 in order to contact terminal-forming coating 13 or 14 (see Pet. 17; Inst. Dec. 10; Ex. 1002, 3:5– 21, Fig. 2), Petitioner’s new argument relies upon Bonini’s teaching that trimming plate 15 has a narrow tab 15" having an edge 15' that extends to a difference surface (lateral side margin) of ceramic body 3. See Reply 8; Ex. 1002, 2:69–3:1. Because Patent Owner was not given a fair opportunity in this proceeding to respond to this argument, we consider Petitioner’s argument to be improper under 37 C.F.R. § 42.23(b) as not responding to arguments raised in the Patent Owner Response and, therefore, decline to consider it. See In re Nuvasive, Inc., 2016 WL 6608999, Nos. 2015-01672, 2015-1673, slip op. at 11–13 (Fed. Cir. Nov. 9, 2016).” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “dielectrics having “coextensive” length and width dimensions. PO Resp. 30–33. We disagree, as we find that requirement satisfied by the capacitor shown in Heron’s figures. Specifically, “FIG. 1 shows in side section view of a capacitor,” “FIG. 2 shows in exploded view four green ceramic layers that are stacked, sintered and terminated to make the capacitor of FIG. 1,” and “FIG. 3 shows in perspective view the capacitor of FIG. 1.” Ex. 1003, 2:25–31, Figs. 1–3. Figures 4, 7, and 8 show side sectional views, while figures 5 and 6 show top views of capacitors with alternate electrode geometries. Ex. 1003, 2:32–36; Figs. 5–8. Taken as a whole, these figures indicate plainly that the lengths and widths of dielectric layers 10 and 11 terminate at the same location, thereby satisfying the “coextensive” requirement. Patent Owner contends that reliance on Heron’s figures is improper under the Federal Circuit’s decision in Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). PO Resp. 31–33. We do not find Hockerson’s holding to be applicable here. Unlike with the claim at issue in Hockerson, which was construed to require that the “central longitudinal groove” has a width that must be less than the combined width of the two peripheral fins, the challenged claims do not require any particular size or proportion. The requirement that the dielectric layers have coextensive length and width dimensions can be assessed by simply viewing the figures of Heron, and no additional measurements are necessary to make that determination. It is well established “that a claimed invention may be anticipated or rendered obvious by a drawing in a reference, whether the drawing disclosure be accidental or intentional.” In re Meng, 492 F.2d 843, 847 (CCPA 1974). Patent Owner also contends that the Petition fails to identify what specific elements in Heron correspond to numerous claim elements. PO Resp. 34–37. We disagree. As noted above, the Petition identifies specific teachings of Heron, and includes a claim chart mapping Heron’s teachings to the claim elements. Pet. 18–24. In particular, Patent Owner argues that the Petition does not specify where the claimed “electrode layer” is found in Heron. PO Resp. 34–35. As Patent Owner recognizes, however, the Petition identified overlapping buried electrodes 15 and 16 for this claim element. See Pet. 19–20. We find this to be sufficient as both layers 15 and 16 satisfy the claim requirements of having dimensions smaller than the dielectric layer, being mounted on the first surface of a dielectric layer, and extending to a side face of the capacitor body so as to contact the end terminations. Patent Owner also argues that the Petition fails to specify where in Heron “opposite polarity” is taught. PO Resp. 35–36. We find that the Petition’s identification of end terminations 22 and 24 is sufficient. See Pet. 23–24. As explained by Petitioner’s expert, Dr. Randall, in order to store charge, a voltage must be imposed across the terminals of Heron’s capacitor, “and the resulting voltage difference across the two contact members 22 and 24 establishes the opposite polarities of the capacitor.” Ex. 1014 ¶ 38. Finally, Patent Owner argues that the Petition fails to specify where “said second surface of said first dielectric layer” is found in Heron. PO Resp. 36–37. The Petition, however, noted that “[a]s seen in Fig. 2, each dielectric layer has a length and width, as well as a first and second surface.” Pet. 19. The Petition further notes that “Heron discloses that green ceramic (dielectric) layer 10 would be first formed and screen printing the electrode pattern 15 thereon.” Id. at 18. Because the Petition identifies electrode layer 15 as being on the “first surface” of the first dielectric layer 10, we find that the Petition also sufficiently identified the opposite surface of dielectric layer 10 as satisfying the requirements of the “second surface.” Figure 1 of Heron shows terminations 22 and 24 provided on the bottom, i.e., “second surface,” of the dielectric layer and extending to the edges of the capacitor body. The Petition, therefore, identified sufficiently the specific features of Heron’s capacitor that correspond to the claim elements. Based on those identified features, and the record developed during this proceeding, we find that Heron anticipates claims 1–4.” slip op. at 18

  Patent outcomesUS 6,992,879 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,992,879

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.