• 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
• 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
• Presidio Components, Inc. v. American Technical Ceramics Corp.All claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01330 · APJ Christopher G Paulraj · IPR · Final written decision

  Claim 1 is unpatentable as anticipated by Horie and Coleman under § 102.

  RulingsFinal written decision

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

    “argues that “the second electrode layer” must be formed on the external capacitor surface that is mounted on the current source. PO Resp. 7–16. We disagree. Nothing in the claim language suggests that a second electrode layer must be positioned in relation to the current source. Rather, the claim specifies only “a second electrode layer formed as a pad for contact with the second surface of the first dielectric layer,” wherein the first dielectric layer is an internal layer of the monolithic capacitor chip. Patent Owner relies upon the opinion of its expert, Dr. Stanley R. Shanfield, Ph.D., to assert that “pad” ordinarily means “mat” or “cushion” and thus connotes a mounting or landing surface, such as against a printed circuit board. Id. at 8 (citing Ex. 2003 ¶ 38). In support of this opinion, Dr. Shanfield cites a) a general dictionary definition of “pad” from the Merriam-Webster’s Collegiate Dictionary (10th ed. 1993) , and b) a 2003 (post-filing date) document entitled “Microwave Office Element Catalog” describing a “multiplate ceramic chip capacitor” with an indication that one can “set size and properties of contact pads.” Ex. 2003 ¶¶ 38–39, Exs. C and D. Neither extrinsic document, however, specifies that an electrode layer that is formed as a contact pad for a multilayer chip capacitor must necessarily be mounted on the printed circuit board or otherwise close to the current source. Moreover, during oral argument, Patent Owner acknowledged that the printed circuit board is not part of the claimed device. Tr. 80:1–4.” slip op. at 7

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

    “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, challenged claim 1 does not require any particular size or proportion. The requirement that the dielectric layers have co-extensive length and width dimensions can be assessed by simply viewing the figures of Horie, 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). Moreover, the specification of Horie is not “completely silent on the issue” of whether the dielectric layers are co-extensive. Cf. Hockerson, 222 F.3d at 956. In particular, Horie discloses that “the laminated body obtained is cut in vertical and horizontal directions to obtain each chip-like laminated body.” Ex. 1002, 7:11–13.3 Although Patent Owner suggested that the use of the terms “vertical” and “horizontal” in Horie could nonetheless encompass cutting the layers at an angle (Tr. 95:15–97:4), we find no support for that position. We, thus, find that Horie’s teaching that each layer in the laminate comprising the capacitor body is cut to the same length and the same width dimensions, in combination with Figure 3, satisfies the “co-extensive” requirement. See Ex. 1013 ¶¶ 32–34.” slip op. at 15

  • ExcludeMotion to exclude, grantedOther

    “PATENT OWNER’S MOTION TO EXCLUDE Patent Owner filed a motion to exclude certain evidence. Paper 28. Specifically, Patent Owner seeks to exclude certain exhibits and the portions of Dr. Randall’s testimony concerning patentability challenges that did not form the basis of our Institution Decision in this proceeding. Id. at 2–6. Petitioner filed a response indicating that it does not dispute Patent Owner’s motion to exclude for any reason. Paper 30. Because we did not rely upon any of the evidence sought to be excluded in our Final Written Decision, we dismiss Patent Owner’s motion to exclude as moot. V.” slip op. at 23

  Patent outcomesUS 6,337,791 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,337,791
• Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00132 · APJ Gregg I Anderson · CBM · Final written decision

  Claims 1, 5, 8, and 10 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exception

    “We are persuaded that claims 1, 5, 8, and 10 are drawn to the abstract idea of conditioning and controlling access to content based on, for example, payment. Specifically, independent claim 1 recites “code to receive payment validation data . . . for said at least one selected item of multimedia content.” Independent claim 8 recites “code to control access to said selected content data item responsive to the payment validation data.” Claim 5 depends from claim 1 and recites “code to retrieve supplementary data via said wireless interface and output said supplementary data to said user using said display.” Claim 10 depends from claim 8 and recites “said data access terminal is integrated with a mobile communications device and audio/video player.” Furthermore, as discussed above, the ’772 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1201, 1:23–57. The patent specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The specification further explains that once data has been published on the Internet, it is difficult to police access to and use of it by Internet users who may not even realize that it is pirated. Id. The ’772 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:61–2:3. The ’772 patent makes clear that the crux of the claimed subject matter is restricting access to stored content based on validation of payment. Id.” slip op. at 11

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive concept

    “2. Inventive Concept “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1297). “This requires more than simply stating an abstract idea while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly, the prohibition on patenting an ineligible concept cannot be circumvented by limiting the use of an ineligible concept to a particular technological environment.” Versata, 793 F.3d at 1332 (citations omitted). Moreover, the mere recitation of generic computer components performing conventional functions is not enough. See Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”).” slip op. at 13

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “Smartflash has not articulated a persuasive reason for excluding Mr. Wechselberger’s Declaration. Smartflash has not cited any authority requiring an expert to recite or apply the “preponderance of the evidence” standard in order for the expert opinion to be accorded weight. Under 37 C.F.R. § 42.1(d), we apply the preponderance of the evidence standard in determining whether Petitioner has established unpatentability. In doing so, it is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702.” slip op. at 32

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 8,336,772
• Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00132 · APJ Gregg I Anderson · CBM · Final written decision

  Claims 14, 19, and 22 are unpatentable under § 101 because they claim the abstract idea of conditioning and controlling access to content without an inventive concept.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “We are persuaded that claims 14, 19, and 22 are drawn to the abstract idea of conditioning and controlling access to content based on, for example, payment. Specifically, independent claim 14 recites “code responsive to said user selection of said selected at least one item of multimedia content to transmit payment data relating to payment for said selected at least one item of multimedia content.” Independent claim 19 is similar and recites “code responsive to said user selection of said selected at least one content data item to transmit payment data relating to payment for said selected at least one content item.” Claim 22 depends from claim 19 and recites “wherein said data access terminal is integrated with a mobile communications device and audio/video player.”” slip op. at 11

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “claims are either field of use limitations—limiting the ideas of payment and controlling access to content to payment for retrieving “data” and controlling access to content based on “payment data” and “payment validation data”— or generic computer implementations, which Petitioner argues is insufficient to bring the claims within § 101 patent eligibility. Pet. 25–31. Specifically, Petitioner contends that the challenged claims “recite no more than generic computer elements and functions that were well-known, routine, and conventional to a POSITA at the time of filing.” Reply 6 (citations omitted); see id. at 10–12. Petitioner persuades us that claims 14, 19, and 22 of the ’772 patent do not add an inventive concept sufficient to ensure that the claims in practice amount to significantly more than claims on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt Petitioner’s rationale that the additional elements of claims 14, 19, and 22 are field of use limitations and/or are generic features of a computer that do not bring these claims within § 101 patent eligibility. Pet. 25–31; Reply 4–6.” slip op. at 14

  • ExcludeMotion to exclude, deniedMixed

    “We agree with Petitioner. As noted above, Smartflash, as movant, has the burden to show that these exhibits are inadmissible. Smartflash’s reference to FRE 703 in unavailing because while this rule does not establish the admissibility of the exhibits, it also does not speak to whether these exhibits are inadmissible. Because Mr. Wechselberger attests that he reviewed these exhibits in reaching the opinions he expressed in this case, Smartflash has not shown that they are irrelevant under FRE 401 and 402. Accordingly, we decline to exclude Exhibits 1324, 1329, 1330, 1333, and 1335. We grant the motion as to Exhibit 1305.” slip op. at 30

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 8,336,772
• Apple Inc. / Google, Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00132 · APJ Matthew R Clements · CBM · Final written decision

  Claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 are unpatentable under § 101 as directed to an abstract idea without an inventive concept.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner has not articulated a persuasive reason for excluding Dr. Kelly’s Declaration. Because Exhibit 1019 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. It is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702. Accordingly, we decline to exclude Exhibit 1019 in its entirety or any paragraph therein.” slip op. at 32

  • BurdenUnpatentable

    “ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 35 recites “code responsive to the payment validation data to retrieve data from the data supplier and to write the retrieved data into the data carrier.” Claim 36 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data” and “code to access the stored data when access is permitted.”” slip op. at 9

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “We are persuaded that the challenged claims are drawn to a patent- ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 35 recites “code responsive to the payment validation data to retrieve data from the data supplier and to write the retrieved data into the data carrier.” Claim 36 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data” and “code to access the stored data when access is permitted.” As discussed above, the ’772 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1001, 1:23–57. The Specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The Specification further explains that once data has been published on the Internet, it is difficult to police access to and use of that data by internet users who may not even realize that it is pirated. Id. The ’772 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:61–2:3. The ’772 patent makes clear that the crux of the claimed subject matter is restricting access to stored data based on supplier-defined access rules and validation of payment. Id. at 1:59–2:19. Although the Specification refers to data piracy on the Internet, the challenged claims are not limited to the Internet. The underlying concept of the challenged claims, particularly when viewed in light of the Specification, is paying for and/or controlling access to content, as Petitioner contends. As discussed further below, this is a fundamental economic practice long in existence in commerce. See Bilski, 561 U.S. at 611.” slip op. at 9

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Pet. Reply 5. We are persuaded that claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 of the ’772 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt the rationale articulated in the Petition that the additional elements of the challenged claims are either field of use limitations and/or generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 50–76.” slip op. at 14

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 8,336,772
• Apple Inc. / Google, Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00133 · APJ Matthew R Clements · CBM · Final written decision

  Claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 are unpatentable under § 101 as directed to an abstract idea without an inventive concept.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “We are persuaded that the challenged claims are drawn to a patent- ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 35 recites “code responsive to the payment validation data to retrieve data from the data supplier and to write the retrieved data into the data carrier.” Claim 36 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data” and “code to access the stored data when access is permitted.”” slip op. at 9

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Pet. Reply 5. We are persuaded that claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 of the ’772 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt the rationale articulated in the Petition that the additional elements of the challenged claims are either field of use limitations and/or generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 50–76.” slip op. at 14

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner has not articulated a persuasive reason for excluding Dr. Kelly’s Declaration. Because Exhibit 1019 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. It is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702. Accordingly, we decline to exclude Exhibit 1019 in its entirety or any paragraph therein.” slip op. at 32

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 8,336,772
• Apple Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00131 · APJ Matthew R Clements · CBM · Final written decision

  Claims 3–6, 8–14, 16–25, 27–30, and 32–41 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “We are persuaded that the challenged claims are drawn to a patent- ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 21 recites “code for storing and accessing the one or more use rules in the use rule memory.” Claim 35 recites “evaluating the use status data using the one or more use rules to determine whether access to the content data item is permitted” and “enabling access to the content data item responsive to a determination that access to the content data item is permitted.” As discussed above, the ’598 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1001, 1:20–55. The Specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The Specification further explains that once data has been published on the Internet, it is difficult to police access to and use of that data by internet users who may not even realize that it is pirated. Id. The ’598 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:59–2:4. The ’598 patent makes clear that the crux of the claimed subject matter is restricting access to stored data based on supplier-defined access rules and validation of payment. Id. at 1:59–2:15. Although the Specification refers to data piracy on the Internet, the challenged claims are not limited to the Internet. The underlying concept of the challenged claims, particularly when viewed in light of the Specification, is paying for and/or controlling access to content, as Petitioner contends. As discussed further below, this is a fundamental economic practice long in existence in commerce. See Bilski, 561 U.S. at 611.” slip op. at 8

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “2. Inventive Concept “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1297). “This requires more than simply stating an abstract idea while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly, the prohibition on patenting an ineligible concept cannot be circumvented by limiting the use of an ineligible concept to a particular technological environment.” Versata, 793 F.3d at 1332 (citations omitted). Moreover, the mere recitation of generic computer components performing conventional functions is not enough. See Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”). Petitioner argues that “the [challenged c]laims’ ‘additional features’ recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Pet. Reply 6. We are persuaded that claims 3–6, 8–14, 16–25, 27–30, and 32–41 of the ’598 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt the rationale articulated in the Petition that the additional elements of the challenged claims are either field of use limitations and/or generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 53–73.” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner has not articulated a persuasive reason for excluding Dr. Kelly’s Declaration. Because Exhibit 1019 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. It is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702. Accordingly, we decline to exclude Exhibit 1019 in its entirety or any paragraph therein.” slip op. at 32

  Patent outcomesUS 8,061,598 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 8,061,598

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.