- PTAB · Dec 3, 2014 · IPR2014-00541 · APJ Josiah C Cocks · IPR · Order
The Board granted the joint motion to terminate the review as to both parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Wintek is met. Furthermore, under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Wintek is the sole petitioner in this review. The Board has discretion to terminate this review with respect to TPK. Upon consideration of the circumstances of this case, the panel has determined to terminate this inter partes review as to both Wintek and TPK without rendering a final written decision. The oral argument scheduled for December 12, 2014 is cancelled.” slip op. at 3
- ExcludeOther
“TPK’s Motion to Seal (Paper 28) is pending. Because this proceeding is terminated without rendering a final written decision, the Motion to Seal is dismissed as moot. The subject paper (Ex. 2019) of the Motion to Seal is hereby expunged.” slip op. at 3
NonePatents in suitUS 8,217,902 - Corning Optical Communications RF, LLC v. PPC Broadband, Inc.All claims unpatentablePTAB · Nov 21, 2014 · IPR2013-00340 · APJ Michael R Zecher · IPR · Final written decision
Claims 1–9 are unpatentable under § 103(a) over Matthews and Tatsuzuki.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“We agree with Corning in both respects. We must be careful not to read limitations from a particular embodiment appearing in the specification into the claim if the claim language is broader than that embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). If a feature in the disclosure is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).” slip op. at 9
- Skill levelSkill level board ownOther
“2. Level of Skill in the Art In determining the level of skill in the art, various factors may be considered, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Corning’s expert, Dr. Mroczkowski, attests that a person with ordinary skill in the art would be an individual who possesses a bachelor’s degree in engineering and several years of experience in the cable and telecommunications industry relating to the design and manufacture of coaxial cable connectors. Ex. 1007 ¶ 11. Dr. Mroczkowski also attests that ten or more years of experience in the art could be a substitute for a bachelor’s degree in engineering. Id. PPC’s expert, Dr. Eldering, generally agrees with Dr. Mroczkowski’s assessment of the knowledge level of a person with ordinary skill in the art. Ex. 2074 ¶ 10. In addition, the prior art of record in this proceeding also is indicative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“According to the Supreme Court, “[w]hen 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.” KSR, 550 U.S. at 421. In this case, there is a design need to solve a problem, i.e., Tatsuzuki provides evidence that its disc-shaped spring 13 operates to establish electrical connection between components in a coaxial cable connector, and that such an arrangement is intended to address “deterioration of insertion loss characteristics and reflection loss characteristics even in the state when the coaxial plug is loosened.” Ex. 1002 ¶ 7. There also is a finite number of identified, predictable solutions, i.e., Matthews, Tatsuzuki, and the Bence ’990 patent provide evidence that one of ordinary skill in the art would have known that there is not a sole location recognized for positioning a continuity member in a coaxial cable connector; however, there are a limited number of possible positions for such a continuity member. Exs. 1002, 1004, 1038, 2024. As such, an ordinarily skilled artisan would have had reason to pursue known options within his or her technical grasp when contemplating where, and how, to position Tatsuzuki’s disc-shaped spring 13 in Matthews’s connector 100. In considering the entirety of the record, we are persuaded that Tatsuzuki’s disc-shaped spring 13 forms a continuity member as required by independent claim 1. We also are satisfied that one of ordinary skill in the art would have appreciated that Tatsuzuki’s disc-shaped spring 13 may be arranged in Matthews’s connector 100 so as to form a continuity member positioned in the manner required by independent claim 1. In that respect, instead of presenting reasoning that is based on impermissible hindsight reconstruction as is urged by PPC, Corning has articulated reasoning with rational underpinnings in urging that an ordinarily skilled artisan would have incorporated Tatsuzuki’s disc-shaped spring 13 into connector 100 so as to harness the electrical connectivity benefits attributed to this arrangement.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingDecided for patent owner
“Corning responds that PPC does not establish copying because Corning’s “UltraShield connector is fundamentally different from [PPC’s] SignalTight connector in numerous respects.” Pet. Reply 18. In addition, Corning suggests that the evidence fails to establish that Mr. Burris saw the SignalTight connector before he designed the UltraShield connector. Id. Corning also contends that, even assuming Mr. Burris saw the PPC advertisement for the EX Plus Signal Tight Connector, PPC’s witness, Dr. Eldering, “admitted that ‘[i]t would be hard to draw an accurate drawing of that continuity member’” from the figure in the advertisement. Id. (citing Ex. 2077, 273:5–10; Ex. 2053). Based on the record before us, we are persuaded that there is sufficient evidence indicating that developers at Corning, including Mr. Burris, saw and studied PPC EX Plus products just before Corning developed its final design, RC-1350-350, in April 2010. There also is sufficient evidence indicating that Corning later sold its final design as the UltraShield connector, which included a continuity member between the post and body on the rearward side of the internal lip of the nut. In considering the entirety of the record, we are persuaded that PPC’s contentions and cited evidence provide at least some evidence of objective indicia of non-obviousness, i.e., copying by Corning of PPC’s EX Plus SignalTight design, in relation to the challenged claims.” slip op. at 44
Patent outcomesUS 8,323,060 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,323,060 - Corning Optical Communications RF, LLC v. PPC Broadband, Inc.All claims unpatentablePTAB · Nov 21, 2014 · IPR2013-00345 · APJ Michael R Zecher · IPR · Final written decision
Claims 7–27 are unpatentable under §103 over Matthews and Tatsuzuki; PPC’s motion to exclude is denied.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“At the outset, we observe that the content that PPC seeks to exclude was introduced into this proceeding by PPC. Paper 41, 4. The fact that PPC introduced and relied on Mr. Burris’s deposition testimony means PPC may not bar similar use of that evidence by Corning. In any event, when determining whether Corning copied PPC’s EX Plus SignalTight design, i.e., the coaxial cable connector embodied in the challenged claims, we only relied upon Exhibit 2019 to the extent it was asserted by PPC—not by Corning. With respect to Exhibit 2020, we did not rely upon it when addressing PPC’s arguments regarding long-felt but unsolved need, failed attempts by Corning, copying by Corning, and commercial success. Accordingly, we deny PPC’s Motion to Exclude.” slip op. at 51
- Skill levelSkill level board ownDecided for petitioner
“There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Corning’s expert, Dr. Mroczkowski, attests that a person with ordinary skill in the art would be an individual who possesses a bachelor’s degree in engineering and several years of experience in the cable and telecommunications industry relating to the design and manufacture of coaxial cable connectors. Ex. 1005 ¶ 15. Dr. Mroczkowski also attests that ten or more years of experience in the art could be a substitute for a bachelor’s degree in engineering. Id. PPC’s expert, Dr. Eldering, generally agrees with Dr. Mroczkowski’s assessment of the knowledge level of a person with ordinary skill in the art. Ex. 2074 ¶ 10. Furthermore, the prior art of record in this proceeding also is indicative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 19
- Expert testimonyPetitioner expert creditedDecided for petitioner
“onto Matthews’s connector shown in the illustration above, contrary to PPC’s assertion, the illustration encompasses the features laid out in the claims. The illustration depicts Tatsuzuki’s disc-shaped spring 13 positioned with respect to portions of Matthews’s connector identifiable as nut 30, post 40, and connector body 50. We are satisfied that the noted implementation conveys a continuity member positioned to contact a rearward surface of the nut and extend between the post and connector body. Tatsuzuki’s disc shaped spring 13, when positioned in the manner depicted, would extend between, and facilitate electrical connection among, surfaces of the nut, post, and body, as is required by the claims. Furthermore, we credit Dr. Mroczkowski’s testimony to that effect. See, e.g., Ex. 1005 ¶¶ 147–150, 210–213.6 6 We are not persuaded by PPC’s argument that Dr. Mroczkowski’s opinions should be accorded “little to no weight,” because Dr. Mroczkowski has indicated that his experience is not directed specifically to the design and operation of the particular connectors associated, in some respect, with PPC’s patents. See PO Resp. 11. The record reflects that Dr. Mroczkowski has considerable background and experience relevant to the connector industry. See, e.g., Ex. 1006. There is no requirement that a witness must” slip op. at 31
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Corning. We must be careful not to read limitations from a particular embodiment appearing in the specification into the claim if the claim language is broader than that embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). If a feature in the disclosure is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). PPC does not allege that the inventors of the ’353 patent acted as their own lexicographer and provided a special definition in the Specification of the ’353 patent for the claim term “electrical continuity member” that is different from its recognized meaning to one of ordinary skill in the art. Absent a special definition set forth in the Specification in the ’353 patent, we decline to import limitations into the disputed claim limitations that would require the “electrical continuity member” to make “consistent contact” with the nut and the post such that it maintains a “continuous electrical connection” between these components. Indeed, the claimed 13 “electrical continuity member” does not cease to be an electrical continuity member, as would be understood by one of ordinary skill in the art, simply because the contact made between the nut and post may not be “consistent” to maintain a “continuous electrical connection” between these components. We also agree with Corning that the term “continuity” does not require some undefined level of consistency, reliability, or robustness of an electrical connection between the nut and post over some undefined period of time. PPC does not direct us to a well-defined or otherwise recognizable standard for making an objective determination as to how long an electrical continuity member must make “consistent contact” with a nut and post to maintain “continuous electrical connection” between these components. If we were to read the requirements of “consistent contact” and a “continuous electrical connection” into the disputed claim limitation, that would interject ambiguity into the determination of claim scope because of the uncertainty arising from the meaning of “consistent” and “continuous.” Applying the broadest reasonable interpretation standard, we construe the disputed claim limitations in connection with the “electrical continuity member” to require that the continuity member need only make contact with the nut and the post to establish an electrical connection between the nut and the post.” slip op. at 13
Patent outcomesUS 8,313,353 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,313,353 - Corning Optical Communications RF, LLC v. PPC Broadband, Inc.All claims unpatentablePTAB · Nov 21, 2014 · IPR2013-00346 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–8 and 10–16 are unpatentable over Matthews, Tatsuzuki, and Montena; claims 18–31 are unpatentable over Matthews and Tatsuzuki under § 103(a).
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Corning in both respects. We must be careful not to read limitations from a particular embodiment appearing in the specification into the claim if the claim language is broader than that embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). If a feature in the disclosure is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). PPC does not allege that the inventors of the ’320 patent acted as their own lexicographer and provided a special definition in the Specification of the ’320 patent for the claim term “continuity member” that is different from its recognized meaning to one of ordinary skill in the art. Absent a special definition set forth in the Specification in the ’320 patent, we decline to import limitations into the disputed claim limitations that would require the “continuity member” to make “consistent contact” with the nut and the post such that it maintains a “continuous electrical connection” between these components. Indeed, the claimed “continuity member” does not cease to be a continuity member, as would be understood by one of ordinary skill in the art, simply because the contact made between the nut and post may not be “consistent” to maintain a “continuous electrical connection” between these components. We agree with Corning that the term “continuity” does not require some undefined level of consistency, reliability, or robustness of an electrical connection between the nut and post over some undefined period of time. PPC does not direct us to a well-defined or otherwise recognizable standard for making an objective determination as to how long a continuity member must make “consistent contact” with a nut and post to maintain “continuous electrical connection” between these components. If we were to read the requirements of “consistent contact” and a “continuous electrical connection” into the disputed claim limitation, that would interject ambiguity into the determination of claim scope because of the uncertainty arising from the meaning of “consistent” and “continuous.” Applying the broadest reasonable interpretation standard, we construe the disputed claim limitations in connection with the “continuity member” to require that the continuity member makes contact with the nut and the post to establish an electrical connection between the nut and the post.” slip op. at 10
- Skill levelSkill level board ownOther
“2. Level of Skill in the Art In determining the level of skill in the art, various factors may be considered, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Corning’s expert, Dr. Mroczkowski, attests that a person with ordinary skill in the art would be an individual who possesses a bachelor’s degree in engineering and several years of experience in the cable and telecommunications industry relating to the design and manufacture of coaxial cable connectors. Ex. 1006 ¶ 15. Dr. Mroczkowski also attests that ten or more years of experience in the art could be a substitute for a bachelor’s degree in engineering. Id. PPC’s expert, Dr. Eldering, generally agrees with Dr. Mroczkowski’s assessment of the knowledge level of a person with ordinary skill in the art. Ex. 2074 ¶ 10.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“evaluation here requires that we consider only the approach presented in the illustration reproduced above in combining the teachings of the prior art, without recourse to any other assessment of the skill of a person of ordinary skill’s viewpoint in so combining the teachings. See PO Resp. 33–34. A person of ordinary skill in the art is a person of ordinary creativity, not an automaton. KSR, 550 U.S. at 421. A person of ordinary skill and creativity would have recognized that combining the teachings of the prior art, in particular Matthews and Tatsuzuki, does not mandate a singular technique for combining those references that precludes consideration of other techniques. Indeed, the evidence of record reflects that a person of ordinary skill in the art knew of other techniques for positioning a continuity member between a body and post of a coaxial connector. For instance, as noted above, upon being questioned about the Bence ’990 patent during cross-examination, Dr. Eldering testified that it was known in the art that a continuity member may be “sandwiched” between such a body and post. Ex. 2076, 190:16–21. Although the Bence ’990 patent is not a reference that has been offered by Corning as forming a part of a proposed ground of unpatentability in this proceeding, it is a reference providing evidence of the level of ordinary skill in the art. “The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art.” In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). As noted above, the level of ordinary skill in the art is reflected by the prior art of record. What is described by the Bence ’990 patent is indicative of the level of ordinary skill in the art. Furthermore, “the knowledge of such an artisan is part of the store of public knowledge that must be consulted when considering whether a claimed invention would have been obvious.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). According to the Supreme Court, “[w]hen 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.” KSR, 550 U.S. at 421 (2007). In this case, there is a design need to solve a problem, i.e., Tatsuzuki provides evidence that its disc-shaped spring 13 operates to establish electrical connection between components in a coaxial cable connector as a part of an arrangement that is intended to address “deterioration of insertion loss characteristics and reflection loss characteristics even in the state when the coaxial plug is loosened” (Ex. 1002 ¶ 7). There also is a finite number of identified, predictable solutions, i.e., the Bence ’990 patent, Matthews, and Tatsuzuki provide evidence that one of ordinary skill in the art would have known that there is not a sole position or location recognized for positioning a continuity member in a coaxial cable connector; however, there are a limited number of possible positions for such a continuity member (Exs. 2024, 1004, and 1022). As such, an ordinarily skilled artisan would have had reason to pursue known options within his or her technical grasp when contemplating where, and how, to position Tatsuzuki’s disc-shaped spring 13 in Matthews’s connector 100.” slip op. at 29
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersNot shown unpatentableDecided for petitioner
“1. Long-felt But Unsolved Need PPC contends that the problem addressed by its patents “is that ‘often connectors are not properly tightened or otherwise installed to the interface port and proper electrical mating of the connector with the interface port does not occur.’” PO Resp. 38 (quoting Ex. 1001 1:41–44). PPC contends that it “solved this problem such that continuity was established even if the connector was only loosely connected to the port.” Id. (citing Ex. 2074 ¶ 112). PPC further contends that Corning’s expert witness, Dr. Mroczkowski acknowledged that the problem existed for decades before 2009, and that Mr. Burris indicated that he spent several years working unsuccessfully on a continuity member design for Corning’s UltraRange connector (lacking a continuity member), before he developed Corning’s UltraShield connector (including a continuity member) in 2010. Id. at 39, 36–38. Based on the record before us, we are persuaded that coaxial connectors known in the art before 2009 had “solved” PPC’s asserted “longfelt” need for connector continuity “even if the connector was only loosely connected to the port.” For example, the Bence ’990 patent (Ex. 1038, Ex. 2024), which issued in 2006, disclosed a connector having a “grounding member,” i.e., a continuity member, placed between a coupler/nut and post. Exs. 1038, 2024, Abstract; Ex. 2076, 190:16–21. As noted by Corning (Pet. Reply 16), in relation to such a connector, the Bence ’990 patent states that an “electrical grounding path is maintained between the coupler and the tubular post whether or not the coupler is tightly fastened to the appliance.” Exs. 1038, 2024, Abstract. Likewise, as discussed above, Tatsuzuki, which published in 2002, disclosed a connector that included disc-shaped spring 13, which provided an “electrical connection” between plug body 11 and rotary mounting element 12 of the connector. Ex. 1002, Abstract, ¶ 17; see Ex. 1006 ¶ 40. Tatsuzuki states that it provides “a coaxial plug without deterioration of insertion loss characteristics and reflection loss characteristics even in the state when the coaxial plug is loosened.” Ex. 1002 ¶ 7.” slip op. at 34
Patent outcomesUS 8,287,320 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,287,320 - Corning Optical Communications RF, LLC v. PPC Broadband, Inc.All claims unpatentablePTAB · Nov 21, 2014 · IPR2013-00347 · APJ Josiah C Cocks · IPR · Final written decision
Claims 9, 17, and 32 are unpatentable as obvious over Matthews and Tatsuzuki because the combination teaches the claimed continuity member and has a reasoned basis.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“the testimony of its expert witness, Dr. Charles A Eldering. Id. at 18–19 (citing portions of Ex. 1001; Ex. 2071, 6; Ex. 2074 ¶¶ 75–78). In reply, Corning contends that the claims of the ’320 patent do not require “consistent contact” and a “continuous electrical connection.” Pet. Reply 8–9 (citing Ex. 1001, 20:55–24:44). Corning argues that PPC’s proposed claim construction improperly imports limitations from the specification into the claims. Id. Corning also argues that, when applying the broadest reasonable construction standard, “the term ‘continuity’ does not require some undefined level of consistency, reliability, or robustness of an electrical connection over some undefined period of time.” Id. at 8. We agree with Corning in both respects. We must be careful not to read limitations from a particular embodiment appearing in the specification into the claim if the claim language is broader than that embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). If a feature in the disclosure is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). PPC does not allege that the inventors of the ’320 patent acted as their own lexicographer and provided a special definition in the Specification of the ’320 patent for the claim term “continuity member” that is different from its recognized meaning to one of ordinary skill in the art. Absent a special definition set forth in the Specification in the ’320 patent, we decline to import limitations into the disputed claim limitations that would require the “continuity member” to make “consistent contact” with the nut and the post such that it maintains a “continuous electrical connection” between these components. Indeed, the claimed “continuity member” does not cease to be a continuity member, as would be understood by one of ordinary skill in the art, simply because the contact made between the nut and post may not be “consistent” to maintain a “continuous electrical connection” between these components. We agree with Corning that the term “continuity” does not require some undefined level of consistency, reliability, or robustness of an electrical connection between the nut and post over some undefined period of time. PPC does not direct us to a well-defined or otherwise recognizable standard for making an objective determination as to how long a continuity member must make “consistent contact” with a nut and post to maintain “continuous electrical connection” between these components. If we were to read the requirements of “consistent contact” and a “continuous electrical connection” into the disputed claim limitation, that would interject ambiguity into the determination of claim scope because of the uncertainty arising from the meaning of “consistent” and “continuous.” Applying the broadest reasonable interpretation standard, we construe the disputed claim limitations in connection with the “continuity member” to require that the continuity member makes contact with the nut and the post to establish an electrical connection between the nut and the post.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Corning’s expert, Dr. Mroczkowski, attests that a person with ordinary skill in the art would be an individual who possesses a bachelor’s degree in engineering and several years of experience in the cable and telecommunications industry relating to the design and manufacture of coaxial cable connectors. Ex. 1006 ¶ 15. Dr. Mroczkowski also attests that ten or more years of experience in the art could be a substitute for a bachelor’s degree in engineering. Id. PPC’s expert, Dr. Eldering, generally agrees with Dr. Mroczkowski’s assessment of the knowledge level of a person with ordinary skill in the art. Ex. 2074 ¶ 10. Furthermore, the prior art of record in this proceeding also is indicative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“offered by Corning as forming a part of a proposed ground of unpatentability in this proceeding, it is a reference providing evidence of the level of ordinary skill in the art. “The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art.” In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). As noted above, the level of ordinary skill in the art is reflected by the prior art of record. What is described by the Bence ’990 patent is indicative of the level of ordinary skill in the art. Furthermore, “the knowledge of such an artisan is part of the store of public knowledge that must be consulted when considering whether a claimed invention would have been obvious.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). According to the Supreme Court, “[w]hen 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.” KSR, 550 U.S. at 421 (2007). In this case, there is a design need to solve a problem, i.e., Tatsuzuki provides evidence that its disc-shaped spring 13 operates to establish electrical connection between components in a coaxial cable connector as a part of an arrangement that is intended to address “deterioration of insertion loss characteristics and reflection loss characteristics even in the state when the coaxial plug is loosened” (Ex. 1002 ¶ 7). There also is a finite number of identified, predictable solutions, i.e., the Bence ’990 patent, Matthews, and Tatsuzuki provide evidence that one of ordinary skill in the art would have known that there is not a sole position or location recognized for positioning a continuity member in a coaxial cable connector; however, there are a limited number of possible positions for such a continuity member (Exs. 2024, 1004, and 1022). As such, an ordinarily skilled artisan would have had reason to pursue known options within his or her technical grasp when contemplating where, and how, to position Tatsuzuki’s disc-shaped spring 13 in Matthews’s connector 100. In considering the entirety of the record, we are persuaded that Tatsuzuki’s disc-shaped spring 13 forms a “continuity member” as required by the claims of the ’320 patent. We also are satisfied that one of ordinary skill in the art would have appreciated reasonably that such a spring may be arranged in the coaxial connector of Matthews so as to form a continuity member or electrical continuity member positioned to contact nut, post, and body components of a coaxial cable connector in the manner required by the claims. In that respect, instead of presenting reasoning that is speculative or impermissible hindsight, as is argued by PPC, Corning has articulated reasoning with rational underpinnings in urging that an ordinarily skilled artisan would have incorporated Tatsuzuki’s disc-shaped spring 13 into Matthews’s connector 100 so as to harness the electrical connectivity benefits attributed to Tatsuzuki’s spring arrangement.” slip op. at 25
Patent outcomesUS 8,287,320 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,287,320 - PTAB · Oct 31, 2014 · IPR2014-00323 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding under their settlement without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Paper 10. Patent Owner has not yet filed a Patent Owner Response and the parties have not taken any discovery. Paper 20, 1. In a telephone conference on October 23, 2014, the parties confirmed that there are no other written or verbal agreements between them concerning the patent that is the subject of this proceeding. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated; FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 2
NonePatents in suitUS 8,220,959 - PTAB · Oct 16, 2014 · CBM2013-00056 · APJ Michael W Kim · CBM · Order
The Board granted the parties’ joint motion and terminated the proceeding as to all parties without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 327(a), “[a] post-grant review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Petitioner is met. Under 35 U.S.C. § 327(a), “[i]f no petitioner remains in the post-grant review, the Office may terminate the post-grant review or proceed to a final written decision under section 328(a).” Trulia is the sole petitioner in this review. The Board has discretion to terminate this review with respect to Zillow as Patent Owner.” slip op. at 2
NonePatents in suitUS 7,970,674 - PTAB · Oct 3, 2014 · IPR2014-00162 · APJ Josiah C Cocks · IPR · Order
The Board granted the parties’ joint motion to terminate IPR2014-00162 and terminated the proceeding without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“settlement, and may identify independently any question of patentability. 37 C.F.R. § 42.74(a). Generally, however, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). A decision by the Board to institute was entered on May 13, 2014. Paper 11. TAS filed a Patent Owner Response on August 13, 2014. Paper 16. GE has not yet filed any reply. Briefing, thus, has not been completed in this proceeding. As noted above, TAS also has agreed to dismiss the litigation associated with the ’686 patent. Under the circumstances, based on the record before us, the Board determines that it is appropriate to terminate this proceeding without rendering a final written decision. See 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 6,470,686 - PTAB · Oct 3, 2014 · IPR2014-00161 · APJ Josiah C Cocks · IPR · Order
The Board granted the parties’ joint motion to terminate IPR2014-00161 without a final written decision and ordered the settlement agreement treated as business confidential.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“settlement, and may identify independently any question of patentability. 37 C.F.R. § 42.74(a). Generally, however, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). A decision by the Board to institute was entered on May 13, 2014. Paper 10. TAS filed a Patent Owner Response on August 13, 2014. Paper 17. GE has not yet filed any reply. Briefing, thus, has not been completed in this proceeding. As noted above, TAS also has agreed to dismiss the litigation associated with the ’065 patent. Under the circumstances, based on the record before us, the Board determines that it is appropriate to terminate this proceeding without rendering a final written decision. See 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 6,318,065 - Shaw Industries Group, Inc. v. Automated Creel Systems, Inc.Some claims unpatentablePTAB · Jul 24, 2014 · IPR2013-00584 · APJ Justin T Arbes · IPR · Final written decision
Claims 1–5, 8–12, 14, 19, and 20 are unpatentable; claims 6, 7, 13, 15–18, and 21 were not shown unpatentable, principally because the proposed Ligon combinations were inoperable or lacked motivation.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“E. Motions to Exclude The party moving to exclude evidence bears the burden of proof to establish that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a). For the reasons discussed below, all of the parties’ motions to exclude are denied.” slip op. at 44
- Strike new argumentNew argument disregardedDecided for patent owner
“None of the analysis in Dr. Wang’s reply declaration, however, was included with Shaw’s Petition. See 37 C.F.R. § 42.23(b); Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012) (“Oppositions and replies may rely upon appropriate evidence to support the positions asserted. Reply evidence, however, must be responsive and not merely new evidence that could have been presented earlier to support the movant’s motion.”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing.”). The modification to Münnekehoff proposed in the Petition was only to add a second bobbin on either side of the frame, see -132 Pet. 18–21, but Dr. Wang now proposes making different changes to allow Münnekehoff to be combined with Ligon. During the hearing, Shaw acknowledged that Ligon’s teaching of two bobbins on one side of the frame could not just be inserted into the Münnekehoff assembly, and that some changes would be necessary to combine the two references. Tr. 17:14–20. Shaw does not provide any reason, however, as to why the changes proposed in its Reply could not have been discussed earlier in the Petition. Even if Dr. Wang’s new analysis had been included in the Petition, though, we do not find it persuasive. The use of tube Q, shown in the diagrams above, is not disclosed in the cited references. Dr. Wang does not provide any basis (in Ligon or otherwise) for adding the additional tube to the Münnekehoff assembly in the manner proposed, or cite anything in the references indicating that the rotation of packages should be reversed after one sequence. Indeed, the opposite appears to be the case. Because the packages on one side of the frame would be replenished while thread is being pulled from the packages on the other side, a person of ordinary skill would not want to reverse the rotation and immediately begin pulling thread from a recently depleted package. See Ex. 1005, p. 5, ll. 26–28; p. 6, ll. 7–9; p. 7, ll. 12–15.” slip op. at 22
- Skill levelSkill level board ownOther
“1. Level of Ordinary Skill in the Art Neither party expressly states what it believes to be the level of ordinary skill in the art applicable to the ’360 patent. Based on our review of the ’360 patent, the types of problems and solutions described in the ’360 patent and cited prior art, and the testimony of the parties’ declarants,5 we conclude that a person of ordinary skill in the art at the time of the ’360 patent (October 2008) would have had a degree in mechanical engineering or a similar discipline, and multiple years of work experience with creels. See, e.g., Ex. 1002, col. 1, l. 14–col. 2, l. 32 (stating that the ’360 patent relates to “creels used for supplying stranded materials,” and describing conventional creel systems of the time and problems with such systems, including problems with strand breakage and manual replacement of yarn 5 Shaw submitted testimony from Dr. Wang in each proceeding. See Exs. 1001, 1013, 1101, 1116. ACS submitted testimony from David Chadwick, the named inventor of the ’360 patent, and David Brookstein, Sc.D. See Exs. 2001, 2101, 2102. packages); Ex. 1001 ¶¶ 3–7 (describing the background of Dr. Wang); Ex. 2001 ¶¶ 1–8 (describing the background of Mr. Chadwick); Ex. 2102 ¶¶ 2–5 (describing the background of Dr. Brookstein).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundTeaching away foundNot shown unpatentable
“motivated to combine Münnekehoff with Ligon because Münnekehoff uses multiple sharp turns in guiding thread from the bobbins, and Ligon discourages the use of sharp turns. See -132 PO Resp. 17–21. As shown in Figure 2 of Münnekehoff, thread from a package enters balloon thread guide 14 horizontally, undergoes a 90-degree turn to vertical through thread guiding tube 21, then again undergoes a 90-degree turn at the top of thread guiding tube 21 to horizontal. Ex. 1005, p. 11, ll. 26–32. Ligon discloses that sharp changes in direction for yarn packages are “a problem to which considerable attention may be given.” Ex. 1010, col. 1, ll. 46–50. Specifically, “[e]ach time that the yarn changes its direction, particularly sharply, the chances of a yarn break are greatly increased because of the increased tension resulting from increased angles.” Id. at col. 1, ll. 32–38 (emphasis added). Thus, Ligon’s assembly uses a “relatively straight in-line yarn delivery path in which yarn bends and changes in direction are minimized.” Id. at col. 1, ll. 4–10; col. 1, ll. 55–58; col. 2, ll. 5–8 (“a generally in-line yarn delivery path”); col. 2, ll. 23–26 (“reduced bends in the yarn delivery path”). The “in-line” yarn delivery path in Ligon is shown in Figure 1 below. Figure 1 depicts thread being guided through yarn eyelet assembly C and yarn accumulator 12 in a generally horizontal manner, at angles greater than 90 degrees. See id. at col. 3, ll. 55–63. ACS contends that a person of ordinary skill in the art would not have thought to combine Münnekehoff and Ligon due to Münnekehoff’s use of 90-degree turns and Ligon’s express teaching that sharp turns should be avoided. -132 PO Resp. 17–21. Again, ACS’s arguments are supported by Mr. Chadwick’s explanation of the references, and we find them persuasive. See Ex. 2001 ¶¶ 38–47.” slip op. at 25
Patent outcomesUS 7,806,360 mixed§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,806,360
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.