- PTAB · Mar 19, 2024 · PGR2022-00052 · APJ Sheila F Mcshane · PGR · Final written decision
The Board cancelled claims 1–27 and denied substitute claims 28–51 because the original disclosure lacked written-description support for the claimed CSP limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s proposed level of ordinary skill in the art, with the exclusion of “at least” because it introduces ambiguity. Inst. Dec. 8. Patent Owner “does not dispute the Board’s findings on the qualifications of a POSA [person of ordinary skill in the art] for purposes of this proceeding.” See RMTA 13. We determine that Petitioner’s definition, with the exclusion of “at least,” is consistent with the prior art of record and the skill reflected in the Specification of the ’034 patent and we use this level of skill here in the evaluation of the Revised Motion to Amend.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues that “claim construction is not necessary” and that “the meaning of the claims would be easily understood by a POSA.” RMTA 13. In the Petition, Petitioner proposed constructions for the terms “client device” and “first server,” and the original claims were rendered obvious under this construction. Pet. 23–27. Petitioner does not assert that the substitute claims of the Revised Motion to Amend are anticipated or rendered obvious by prior art or are patent ineligible. See generally RMTA Opp. Nor does Petitioner’s patentability challenge of the substitute claims contend that express construction is needed. See generally id. For purposes of this Decision, we determine that express claim construction is unnecessary. We need only construe terms that are necessary to resolve disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“written description requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989); All Dental Prodx LLC v. Advantage Dental Prods., 309 F.3d 774, 779 (Fed. Cir. 2002). The issue here, however, is whether the disclosure of the ’034 patent would have reasonably conveyed to a person of ordinary skill that the inventors had possession of the CSP Limitations. Ariad, 598” slip op. at 14
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“to cancelling claims 1–27; and deny-in-part the Motion to Amend as to proposed substitute claims 28–51. In summary: Motion to Amend Outcome Claim(s) Original Claims Cancelled by Amendment 1–27 Substitute Claims Proposed in the Amendment 28–51 Substitute Claims: Motion to Amend Granted Substitute Claims: Motion to Amend Denied” slip op. at 20
Claim construction§ 112 disclosurePatents in suitUS 11,272,034 - PTAB · Mar 14, 2024 · PGR2022-00061 · APJ Thomas L Giannetti · PGR · Final written decision
The Board granted Patent Owner’s non-contingent motion to amend, cancelling claims 1–34 and replacing them with substitute claims 35–66 supported by the written description.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“complies with the legal requirements set forth in 35 U.S.C. § 326(d) and 37 C.F.R. § 42.221. Lectrosonics, Paper 15 at 4, 7–8. Specifically, Patent Owner must show that the amendments do not enlarge the scope of the claims or introduce “new matter.” See 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii)). Lectrosonics describes “new matter” as follows:” slip op. at 4
- 112 supportGranted
“description support for the proposed substitute claims. See 35 U.S.C. § 326(a)(9); 37 C.F.R. § 42.221; Lectrosonics, Paper 15 at 7–8. The written description test is met when the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We disagree with this argument because it is not consistent with the ’953 patent specification or the plain meaning of “replace.” Neither party requested a special construction of the term “replace.” We see no merit in Petitioner’s contention that the plain meaning of “replace” in Figure 32 does not require removal of the device being replaced. The contention that the plain meaning of “replace” does not require “removing” was explored with Petitioner’s counsel at the oral argument: THE BOARD: If you replace a player in a football game or baseball game, a new player goes in and replaces that player. You don't add a 12th, a 12th player or a 10th player to a baseball team. You replace the player that’s there with a different player. Isn’t that what replacement is all about? COUNSEL FOR PETITIONER: Your Honor, in that context, it absolutely is. Because there’s no other way to understand that. You know, but we’re not talking about baseball or people here obviously. Hearing Tr. 18:23–19:3 (emphasis added).” slip op. at 15
Claim constructionPatents in suitUS 11,349,953 - PTAB · Mar 31, 2021 · IPR2020-00001 · APJ Jeffrey W Abraham · IPR · Final written decision
The Board canceled claims 1, 5, 8, and 10–12, but denied entry of substitute claims 20–25 because claims 20 and 24 were indefinite and claims 21–23 and 25 were obvious.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“LEVEL OF ORDINARY SKILL IN THE ART In the Institution Decision, we determined that “a person of ordinary skill in the art would have had sufficient experience and/or education in the food industry to possess an understanding of (1) sugar particle size as it pertains to brewed beverages and (2) sugar particle size screening.” Inst. Dec. 7. We observed that this level of ordinary skill is consistent with the level of ordinary skill that we adopted in a related case that involves similar subject matter. See Red Diamond, Inc. v. Southern Visions, LLP, PGR2019- 00045, Paper 9 at 6–8 (PTAB Oct. 15, 2019). We also asked the parties to expressly discuss the level of ordinary skill in the art in the remaining briefing if either party disagreed with our determination. Inst. Dec. 7–8. For purposes of this Final Written Decision, we maintain our determination from the Institution Decision because neither party disputes the level of ordinary skill identified in the Institution Decision (see Revised MTA 7–8), and because we continue to find that the stated level of ordinary skill is consistent with the record.” slip op. at 5
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“consider” the Revised Motion to Amend and cancel original claims 1, 5, 8, and 10–12. Revised MTA 1. Because Patent Owner has not indicated that our consideration of the Revised Motion to Amend is contingent on a determination that original challenged claims 1, 5, 8, and 10–12 are unpatentable, we grant Patent Owner’s request to cancel original challenged claims 1, 5, 8, and 10–12. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018- 01129, Paper 15 at 3 (PTAB Feb. 25, 2019) (precedential) (“Lectrosonics”) (“A request to cancel claims will not be regarded as contingent.”). The remaining issue before us is whether to grant the Revised Motion to Amend as to proposed substitute claims 20–25.” slip op. at 6
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“sugar, which indicates that between 2–25% of the particles in EFG sugar can have a size in the range of U.S mesh sieve nos. 20–30. Ex. 2003, 42 (showing the “Typical Analysis” for “X-fine” granulated sugar). Even if we were to agree with Patent Owner that this shows a typical analysis for EFG sugar, it still presents a variance of up to 20% for particles having a size in the range of U.S. mesh sieve nos. 20 and 30. Ex. 2003, 42. Thus, the evidence of record suggests that the particle size distribution for EFG sugar, including the number of particles falling in the range of U.S. mesh sieve nos. 3–35, can vary among different EFG sugars. Thus, the term “typical grocery store sugar,” “might mean several different things” in terms of the number of its particles having a size in the range of U.S. mesh sieve nos. 3–35, and “no informed and confident choice is available among the contending definitions.” HZNP Meds. LLC v. Actavis Labs UT, 940 F.3d 680, 698 (Fed. Cir. 2019) (quoting Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1371 (Fed. Cir. 2015)); Opp. 9; Reply 4.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“sugar in its products (Ex. 1008, 11:2–5), and Mr. Ebersole’s testimony demonstrates that a person of ordinary skill in the art would have known that Standard Grade and Medium Grade sugars are commercial grade granulated sugars and that the particles in Standard Granulated and Medium Granulated sugars “are almost entirely within the range of U.S. mesh nos. 3–35” (Ex. 2076 ¶ 51). The evidence of record thus supports Petitioner’s assertion that following the typical industry practice of using 1 ounce of tea particles and 1 pound of sugar per gallon of tea, and using a commercial grade granulated sugar (as taught by Cooper) such as Standard Granulated or Medium Granulated sugar (which are known to be “almost entirely within the range of U.S. mesh nos. 3–35”), would yield a product having a blend ratio of tea particles to sugar granules having a size in the range of U.S. mesh sieve nos. 3–35 in the range of 1:16–1:25, as recited in proposed substitute claims 21 and 23. Opp. 20–21; Ex. 1008, 11:2–5; Ex. 1001, 17–20, 57–65. In view of the foregoing, we find Petitioner has established sufficiently that the teachings of Cooper, considered in view of admitted prior art sweetening practices, teaches or suggests all of the limitations of proposed substitute claims 21 and 23. Petitioner has presented evidence demonstrating sufficiently that Cooper teaches the use of sugar having particle sizes falling “almost entirely” within the range of mesh 3–35, that following typical industry practices using such sugar would result in the claimed blend ratio of tea to sugar having a size in the range of mesh 3–35, and that a person of ordinary skill in the art would have had reason to brew commercial-sized batches of tea, with a reasonable expectation of success in doing so, as Cooper allows.” slip op. at 26
§ 103 obviousness§ 112 disclosurecites KSR · NautilusPatents in suitUS 9,549,634 - PTAB · Mar 31, 2021 · IPR2019-01662 · APJ Jeffrey W Abraham · IPR · Final written decision
The Board canceled claims 1, 8, 13, and 17; it denied entry of substitute claims 23–26 because claims 23 and 25 lacked written-description support and claims 24 and 26 were indefinite.
RulingsFinal written decision- Skill levelSkill level board ownOther
“C. LEVEL OF ORDINARY SKILL IN THE ART In the Institution Decision, we determined that “a person of ordinary skill in the art would have had sufficient experience and/or education in the food industry to possess an understanding of (1) sugar particle size as it 1 “One degree Brix is one gram of sucrose in 100 grams of solution . . . . Brewed sweetened tea has a typical Brix level of 10½ to 11.” Ex. 1001, 1:35–43. pertains to brewed beverages, (2) sugar particle size screening, and (3) the storage and use of sugar in commercial settings.” Inst. Dec. 7. We observed that this level of ordinary skill is consistent with the level of ordinary skill that we adopted in a related case that involves similar subject matter. See Red Diamond, Inc. v. Southern Visions, LLP, PGR2019-00045, Paper 9 at 6– 8 (PTAB Oct. 15, 2019). We also asked the parties to expressly discuss the level of ordinary skill in the art in the remaining briefing if either party disagreed with our determination. Inst. Dec. 8. For purposes of this Final Written Decision, we maintain our determination from the Institution Decision because neither party disputes the level of ordinary skill identified in the Institution Decision (see Revised MTA 12–13), and because we continue to find that the stated level of ordinary skill is consistent with the record.” slip op. at 4
- 112 supportMotion to amend, deniedDenied
“Structurally, Patent Owner has claimed a broad genus of brewing products – any product that includes sugar having particles in the range of U.S. mesh size nos. 3–35. Patent Owner attempts to further distinguish the genus by including the functional limitation of requiring the product to be capable of producing a tea with a Brix level of at least 10.5 degrees. Patent Owner does not dispute that there are products falling within the structural limitations that do not satisfy the functional limitations. Indeed, there is undisputed testing evidence on the record demonstrating that the entire range of recited structures does not perform the recited function. See Ex. 2076 at Exhibit C, 20–29 (Table 3); Revised MTA 8 (Patent Owner arguing the claims only cover products that include particles within the claimed range that perform the recited function). Here, we discern no evidence on this record of “a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad, 598 F.3d at 1350. Nor do we discern “a precise definition, such as by structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials” in the disclosures, or evidence that “the art has established a correlation between structure and function.” Id. Instead, we view Patent Owner’s proposed substitute claims to involve “merely drawing a fence around the outer limits of a purported genus,” which “is not an adequate substitute for describing a variety of materials constituting the genus and showing that one has invented a genus and not just a species.” Id. We recognize that the subject matter here is different from, and less complex than, the chemical and biochemical subject matter in Ariad. Nevertheless, the written description requirement still requires sufficient description to convey to one of skill in the relevant art that the inventors “had possession of the claimed invention” and “showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.” Id. at 1351, 1356. Thus we consider the difference in technology in determining “the level of detail required to satisfy the written description requirement,” but do not consider the difference in technology to eliminate entirely the need for some disclosure in the specification indicating possession of the claimed invention. Id. at 1351. Patent Owner has not directed us to any portion of the ’526 or ’881” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable
“Structurally, Patent Owner has claimed a broad genus of brewing products – any product that includes sugar having particles in the range of U.S. mesh size nos. 3–35. Patent Owner attempts to further distinguish the genus by including the functional limitation of requiring the product to be capable of producing a tea with a Brix level of at least 10.5 degrees. Patent Owner does not dispute that there are products falling within the structural limitations that do not satisfy the functional limitations. Indeed, there is undisputed testing evidence on the record demonstrating that the entire range of recited structures does not perform the recited function. See Ex. 2076 at Exhibit C, 20–29 (Table 3); Revised MTA 8 (Patent Owner arguing the claims only cover products that include particles within the claimed range that perform the recited function). Here, we discern no evidence on this record of “a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad, 598 F.3d at 1350. Nor do we discern “a precise definition, such as by structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials” in the disclosures, or evidence that “the art has established a correlation between structure and function.” Id. Instead, we view Patent Owner’s proposed substitute claims to involve “merely drawing a fence around the outer limits of a purported genus,” which “is not an adequate substitute for describing a variety of materials constituting the genus and showing that one has invented a genus and not just a species.” Id. We recognize that the subject matter here is different from, and less complex than, the chemical and biochemical subject matter in Ariad. Nevertheless, the written description requirement still requires sufficient description to convey to one of skill in the relevant art that the inventors “had possession of the claimed invention” and “showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.” Id. at 1351, 1356. Thus we consider the difference in technology in determining “the level of detail required to satisfy the written description requirement,” but do not consider the difference in technology to eliminate entirely the need for some disclosure in the specification indicating possession of the claimed invention. Id. at 1351. Patent Owner has not directed us to any portion of the ’526 or ’881” slip op. at 20
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“which indicates that between 2–25% of the particles in EFG sugar can have a size in the range of U.S mesh sieve nos. 20–30. Ex. 2003, 42 (showing the “Typical Analysis” for “X-fine” granulated sugar). Even if we were to agree with Patent Owner that this shows a typical analysis for EFG sugar, it still presents a variance of up to 20% for particles having a size in the range of U.S. mesh sieve nos. 20 and 30. Ex. 2003, 42. Thus, the evidence of record suggests that the particle size distribution for EFG sugar, including the number of particles falling in the range of U.S. mesh sieve nos. 3–35, can vary among different EFG sugars. Thus, the term “typical grocery store sugar,” “might mean several different things” in terms of the number of its particles having a size in the range of U.S. mesh sieve nos. 3–35, and “no informed and confident choice is available among the contending definitions.” HZNP Meds. LLC v. Actavis Labs UT, 940 F.3d 680, 698 (Fed. Cir. 2019) (quoting Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1371 (Fed. Cir. 2015)); Opp. 7–10; Reply 4. Proposed substitute claims 24 and 26 compare the dissolution of the claimed beverage brewing product against the dissolution of a product using typical grocery store sugar (i.e., EFG). Patent Owner explains that the size of the particles affects dissolution – namely that larger sugar is more advantageous – in the claimed invention. See, e.g., Revised MTA 5; Ex. 1001, 9:23–27, 10:19–22. This suggests that an EFG sugar product having a greater percentage of large particles will be capable of dissolving “more of granulated sugar” as compared to an EFG sugar product having a lower percentage of large particles. As a result, using the dissolution properties of “typical grocery store sugar” as a comparator in the claims is problematic as there is a potential for inconsistent results based on which particular EFG sugar product is used. The potential for inconsistent results undermines Patent Owner’s argument that these claims satisfy the definiteness requirement because a person of ordinary skill in the art “can buy EFG . . . and perform brew tests with it in order to determine the scope of the claims.” Reply 4. Particle size is a critical factor for proposed substitute claims 24 and 26, which require a comparison of dissolution properties of the sugar used in the recited brewing product and typical grocery store sugar. Patent Owner contends “[t]here is an ‘informed and confident’ choice for ‘typical grocery store sugar’ - EFG sugar.” Reply 4. The evidence of record, however, shows the number of large particles (3–35 mesh) varies among EFG sugars. Ex. 2003, 42; Ex. 1004, at pages 51–53. In view of this, we find a person of ordinary skill in the art would not have understood “typical grocery store sugar” identifies sugar having particles of a particular size with sufficient specificity to allow the comparisons that proposed substitute claims 24 and 26 require. Accordingly, proposed substitute claims 24 and 26 are indefinite because they “fail[ ] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014); see USPTO Memorandum on the Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021); MPEP 2173.05(e) (9th ed., Rev. 08.2017, June 2020).” slip op. at 25
§ 112 disclosurecites NautilusPatents in suitUS 9,725,232 - PTAB · Oct 13, 2020 · PGR2019-00045 · APJ Christopher C Kennedy · PGR · Final written decision
The Board cancelled claims 13, 18, and 19, but denied substitute claims 23–25 because their percentage-and-range limitations introduced new matter.
RulingsFinal written decision- ScopeMotion to amend, grantedGranted
“3. Scope of Proposed Substitute Claims A motion to amend “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii). Although Patent Owner does not appear to separately address this requirement in the Revised Motion to Amend, see generally Revised MTA, we have reviewed the proposed substitute claims and determine that they do not enlarge the scope of the claims of the patent because they add limitations that render each proposed substitute claim narrower than original challenged claim 13.2 Petitioner does not contend otherwise. See generally Opp. On this record, we determine that the Revised Motion to Amend satisfies this requirement.” slip op. at 9
- 112 supportMotion to amend, deniedDenied
“description support for numerical ranges identified by the parties is General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372 (Fed. Cir. 2018).4 In that case, the Federal Circuit explained: The disclosure of a broad range of values does not by itself provide written description support for a particular value within that range. Instead, where a specification discloses a broad range of values and a value within that range is claimed, the disclosure must allow one skilled in the art to immediately discern the limitation at issue in the claims. Id. (emphasis added); cf. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006) (“[T]he disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points.”). The Federal Circuit has also stated that, “[i]n the absence of blazemarks” that point to a particular species or sub-genus, “simply describing a large genus of compounds is not sufficient to satisfy the written description requirement.” Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996). We find those cases to be instructive because we discern no guidance in the original disclosure that points to the percentage+range limitation of proposed substitute claim 23. Nor do we find anything in the original disclosure that would “allow one skilled in the art to immediately discern” 4 Despite the fact that Sienna was cited in (1) Petitioner’s opposition to Patent Owner’s original Motion to Amend, Paper 24 at 11; (2) the Preliminary Guidance issued by the Board, PG at 8; and (3) Petitioner’s opposition to Patent Owner’s Revised Motion to Amend, Opp. at 12, Patent Owner fails to cite or discuss Sienna, see generally Revised MTA; Reply. the percentage+range limitation. See Sienna, 888 F.3d at 1372. Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to any mesh sieve number range other than 3–35, and Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to having a particular proportion of particles (e.g., 61 wt%) falling within some narrower mesh sieve number range. See Ex. 1021 (Coffield Decl.) ¶¶ 23–24.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“description support for numerical ranges identified by the parties is General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372 (Fed. Cir. 2018).4 In that case, the Federal Circuit explained: The disclosure of a broad range of values does not by itself provide written description support for a particular value within that range. Instead, where a specification discloses a broad range of values and a value within that range is claimed, the disclosure must allow one skilled in the art to immediately discern the limitation at issue in the claims. Id. (emphasis added); cf. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006) (“[T]he disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points.”). The Federal Circuit has also stated that, “[i]n the absence of blazemarks” that point to a particular species or sub-genus, “simply describing a large genus of compounds is not sufficient to satisfy the written description requirement.” Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996). We find those cases to be instructive because we discern no guidance in the original disclosure that points to the percentage+range limitation of proposed substitute claim 23. Nor do we find anything in the original disclosure that would “allow one skilled in the art to immediately discern” 4 Despite the fact that Sienna was cited in (1) Petitioner’s opposition to Patent Owner’s original Motion to Amend, Paper 24 at 11; (2) the Preliminary Guidance issued by the Board, PG at 8; and (3) Petitioner’s opposition to Patent Owner’s Revised Motion to Amend, Opp. at 12, Patent Owner fails to cite or discuss Sienna, see generally Revised MTA; Reply. the percentage+range limitation. See Sienna, 888 F.3d at 1372. Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to any mesh sieve number range other than 3–35, and Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to having a particular proportion of particles (e.g., 61 wt%) falling within some narrower mesh sieve number range. See Ex. 1021 (Coffield Decl.) ¶¶ 23–24.” slip op. at 14
§ 112 disclosurePatents in suitUS 10,071,852 - PTAB · Feb 3, 2020 · IPR2018-01373 · APJ Michael R Zecher · IPR · Final written decision
The Board granted cancellation of claims 1–9 and denied substitution of claims 10–12 because Wallace anticipated and rendered the substitute claims obvious.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“need.” 37 C.F.R. § 42.121(a)(3) (2018). Patent Owner proposes three substitute claims—one for each of cancelled independent claims 1, 4, and 7. Mot. to Amend 1, Claims App’x. We determine that the number of proposed substitute claims is reasonable under 35 U.S.C. § 316(d)(1)(B) and 37 C.F.R. § 42.121(a)(3).” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Apart from Dr. Sharony’s assessment requiring a Bachelor of Science degree in Electrical Engineering or an equivalent degree and Dr. Wicker’s assessment requiring a Master’s degree in Electrical Engineering, we do not discern a material difference between the assessments advanced by the declarants. In any event, each party’s declarant appears to meet or exceed both parties’ assessments (see Ex. 1002 ¶¶ 3–24, App’x A; Ex. 2016 ¶¶ 11– 19), and either assessment of the level of skill in the art is consistent with the ’851 patent and the prior art of record. We, therefore, adopt Dr. Sharony’s assessment and apply it to our anticipation and obviousness evaluations below, but we note that our conclusions would remain the same under Dr. Wicker’s assessment.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Patent Owner contends that “[t]he meanings of any new limitations (e.g., ‘maximum number of spatial paths’ or ‘request to establish a link channel’)—taken as a whole—are discernable from their context and would be readily understood by those of ordinary skill in the art.” Mot. to Amend 12 (citing Ex. 2016 ¶ 16). In its Opposition, Petitioner does not contend that any claim term requires an explicit construction to determine whether the prior art of record anticipates or renders obvious proposed substitute claims 10–12. See generally Opp. 1–30. In the course of our discussion of the merits of Petitioner’s opposition, we address the scope of proposed substitute claims 10–12 in applying them to Wallace.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the record developed during trial, we find that Wallace discloses or reasonably suggests antenna number information that sets the maximum number of spatial paths that a terminal can form. Accordingly, Wallace accounts for “a value indicating the maximum number of spatial paths formable by said communication unit for multiplex communication,” as recited in proposed substitute claim 11.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,934,851 - PTAB · Feb 14, 2018 · IPR2016-01600 · APJ Lynne E Pettigrew · IPR · Final written decision
The Board granted cancellation of claims 1, 2, 5, and 9 but denied substitute claims 13–16 because the application lacked written description support for the added limitation.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“Under the correct test for compliance with the written description requirement, Patent Owner’s arguments and evidence do not establish that the ’642 application provides written description support for a variable current limit threshold increasing “during at least a portion of the first state.” The only embodiment disclosed in the ’642 application shows a current limit threshold that increases during the entire on time of the switch (i.e., the entire first state), and the ’642 application never describes a current limit threshold that increases during only a portion of the on time of the switch. Patent Owner’s Motion to Amend and Dr. Kelley’s declaration testimony in support thereof rely exclusively on portions of the ’642 application describing a threshold that increases throughout the on time of the switch. See Mot. 10–13; Ex. 2010 ¶¶ 62–65. Patent Owner and Dr. Kelley do not specifically address the “at least a portion of” claim language and thus fail to explain adequately how the disclosure of a threshold that increases throughout the on time of the switch would reasonably convey to a person having ordinary skill in the art that the inventor had possession of a current limit threshold that increases for “at least a portion of” the first state. Therefore, Patent Owner’s arguments and submitted testimony are unsupported and conclusory with regard to written description support for the “at least a portion” language, and indeed are inconsistent with the disclosure in the ’642 application, which provides support only for a current limit threshold that increases during the entire first state.” slip op. at 22
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Owner asserts that a person of ordinary skill in the art at the time of the invention of the ’605 patent “would have had a bachelor’s degree in electrical engineering, physics, or a related discipline, and at least two to three years of relevant experience in the field of power electronics or similar circuitry.” Mot. 3 (citing Ex. 2010 ¶ 22). Patent Owner further asserts that “[a]dditional education, such as an advanced degree in electrical engineering or a related field, might substitute for some of the experience, and substantial experience might substitute for some of the educational background.” Id. (citing Ex. 2010 ¶ 22). Petitioner’s declarant, Dr. Douglas Holberg, has a similar view, opining that a person of ordinary skill in the art at the time of the invention would have had “a B.S. in Electrical Engineering or a related field with at least two years of experience in designing power electronics,” or “an M.S. in Electrical Engineering or a related field.” Ex. 1003 ¶ 38. The two formulations do not differ in any material way. Based on our review of the record, we agree with the parties as to the level of ordinary skill in the art. For purposes of analyzing the Motion to Amend, we specifically adopt Patent Owner’s definition of a person of ordinary skill in the art. See Mot. 3; Ex. 2010 ¶ 22.” slip op. at 14
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We disagree for two reasons. First, under Aqua Products, as explained further in the Office’s post-Aqua Products guidance document, a patent owner must still meet the statutory and regulatory requirements for a motion to amend, including setting forth written description support for amended claims, which must not introduce new matter. Aqua Prods., 872 F.3d at 1305–06; Guidance 2. Second, Dr. Kelley’s conclusion that the ’642 application provides written description support for “the variable current limit threshold increases during at least a portion of the first state of each control signal cycle” is conclusory and inconsistent with the intrinsic evidence (i.e., the ’642 application itself), and we therefore give his testimony on this point little weight.” slip op. at 23
- BurdenDecided for petitioner
“We disagree for two reasons. First, under Aqua Products, as explained further in the Office’s post-Aqua Products guidance document, a patent owner must still meet the statutory and regulatory requirements for a motion to amend, including setting forth written description support for amended claims, which must not introduce new matter. Aqua Prods., 872 F.3d at 1305–06; Guidance 2. Second, Dr. Kelley’s conclusion that the ’642 application provides written description support for “the variable current limit threshold increases during at least a portion of the first state of each control signal cycle” is conclusory and inconsistent with the intrinsic evidence (i.e., the ’642 application itself), and we therefore give his testimony on this point little weight.” slip op. at 23
NonePatents in suitUS 7,834,605 - PTAB · Jan 10, 2018 · IPR2016-01404 · APJ Kamran Jivani · IPR · Final written decision
The Board found claims 1, 2, 13, 14, 33, 34, 39, 46, and 48 not shown unpatentable: Bensimon did not disclose the claimed restricted-access mode, and Takahashi did not cure that deficiency.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner states––and Patent Owner does not dispute––that “a person having ordinary skill in the art of secure computer data storage devices (i.e. in the art for the ’459 patent) would have had (i) a B.S. degree in electrical engineering, computer engineering, computer science, or equivalent training, and (ii) approximately two years of experience in the design or research of secure computer data storage devices.” Pet. 4 (citing Ex. 1002 ¶ 32). We agree with Petitioner’s statement of the level skill of an ordinary artisan at the time and adopt it as our own. Although Patent Owner does not directly address an ordinary artisan’s level of skill, Petitioner’s description of the level of skill accords with that of Patent Owner’s witness Dr. Goldschlag. Compare id., with Ex. 2004 ¶ 21 (opining that “one of ordinary skill in the art would have had a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or equivalent training, as well as two to three years of technical experience in the field of computer security and storage devices.”). We further find the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau,” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“within an electronic circuit embedded within the storage device.” Ex. 1001, 9:58–59, 10:34–35. Although these claims are not at issue in this case, they evince the patentee’s desire to employ each of the terms “unique” and “specific” where each is intended. It is well established that ordinarily different claim terms are presumed to have different meanings. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings. . . .”); CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”). Further, the Specification describes that, depending on the selected security level, a cryptographic key can be generated using in part “device-specific security information derived from the unique format information of the removable storage device.” Ex. 1001, 3:66–4:1. The Specification thus describes the format information of the removable storage device as “unique” but describes the security information of the device merely as “specific,” not “unique.” Finally, the Specification discloses “for exemplary purposes only” an embodiment wherein “a unique, device-specific security information can be generated from the unique characteristics of the underlying storage medium.” Id. at 7:43–47 (emphasis added). The Specification thus describes device-specific security information as unique in a particular, non-limiting example and explicitly indicates that the device-specific security information derived in that example is “unique.” See id. In light of the foregoing description, we disagree with Patent Owner’s arguments that “specific” in the context of the claim term “device-specific security information” means unique. Construing “specific” to mean “unique” as Patent Owner urges would render meaningless the subsequent use of “unique” in claims 9 and 17, without a clear indication in the Specification of such an intent. See In re Paulsen, 30 F.3d at 1480. Instead, we accord the word “specific” its ordinary and customary meaning and construe “device-specific security information” as meaning “information particular to, but not necessarily unique to, a storage device and used to secure access to the storage device.” Although we construe the disputed term “device-specific security information,” our determination that Petitioner has failed to show by a preponderance of the evidence that any of the Instituted Claims are unpatentable is not dependent upon our construction, as detailed below.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner has not identified in Bensimon explicit or inherent disclosure of the claimed restricted-access mode. Claim 1 requires operating in restrictedaccess mode “when the storage device does not have the device-specific security information.” Ex. 1001, 9:24–26. Petitioner identifies Bensimon’s read/write password, either alone or in combination with the password-enabling flag, as meeting the claimed device-specific security information. Reply 13; Pet. 22. Thus, in order to meet the requirements of claim 1, Petitioner is required to show that Bensimon discloses operating in restricted-access mode when the storage device does not have the read/write password, or alternatively does not have the combination of the read/write password and password-enabling flag. See, e.g., In re Bond, 910 F.2d at 832 (Fed. Cir. 1990) (holding that in order to show anticipation, claimed elements must be arranged as required by the claim). Petitioner does not make the required showing. As Petitioner argues: “these claims recite operating in one mode if ‘the device-specific security information’ (i.e., that instance of device-specific security information) is present, and operating in another mode if ‘the device-specific security information’ (i.e., that instance of device-specific security information) is not present.” Reply 16. Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device. See id. at 16–22. Rather, Bensimon describes two different possible modes of operation when the read/write password is absent from the storage device, namely either no protection or write protection. Ex. 1004, 5:33–39, 6:3–4, 6:13–29. Contrary to the claim language, operation in Bensimon’s write protection mode depends upon the presence of the write protection password, not upon the absence of the read/write password and password-enabling flag (i.e. the claimed device-specific security information). Ex. 1004, 6:13–23; see also Reply 16 (citing Ex. 1012 ¶ 18) (asserting the claimed restricted-access mode is met “when Bensimon’s storage device 100 only has the write-protection (read-only) password”). This disclosure is insufficient to establish anticipation because claim 1 requires operating in restricted access mode when the storage device does not have the device-specific storage information, which Petitioner asserts is the read/write password and password-enabling flag. “A claim is anticipated only if each and every element as set forth in the claims is found.” Verdegaal Bros., Inc. v. Union Oil. Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). We similarly are not persuaded that Bensimon inherently anticipates claim 1. “Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). Here, the cited disclosure identifies two possible modes of operation when the read/write password and password-enabling flag are absent from Bensimon’s storage device, neither of which necessarily must occur.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“E. Obviousness of Claims 2 and 34 based on Bensimon in combination with Takahashi Petitioner asserts dependent claims 2 and 34 would have been obvious in light of Bensimon and Takahashi. Pet. 36–40 (analysis of claim 2) and 42–43 (analysis of claim 34). Petitioner’s analysis of these claims does not repair the deficiencies described above with regard to the claimed restrictedaccess mode. See id.; see also Reply 25. Accordingly, for the reasons discussed above in the context of claim 1 and based on the full trial record, we determine that Petitioner has failed to show by a preponderance of the evidence that claims 2 and 34 would have been obvious in light of Bensimon and Takahashi. See supra Section III.D.2.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,968,459 - PTAB · Sep 17, 2015 · IPR2015-00531 · APJ Patrick M Boucher · IPR · Order
The Board terminated the proceedings as to MediaTek Inc. and MediaTek USA, Inc., vacated the scheduling orders, and continued the proceedings as to Bandspeed, Inc.
RulingsOther- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“IPR2015-01581, and IPR2015-01582 (“the related proceedings”). In each of the related proceedings, a petition was filed by Qualcomm Incorporated on July 12, 2015, with a motion to join a respective one of these proceedings. Papers 1, 2 in each of the related proceedings. We note that the joinder motions in the related proceedings were filed before the instant motions to terminate were filed in these proceedings. Patent Owner opposes the joinder motions in the related proceedings. Paper 8 in each of the related proceedings. If the joinder motions are not granted, the related proceedings are barred under 35 U.S.C. § 315(b). See 35 U.S.C. § 315(c). Patent Owner has not yet filed a preliminary response in any of the related proceedings, the deadline for which is October 28, 2015, nor sought to expedite the related proceedings by filing a waiver under 37 C.F.R. § 42.107(b). It is thus 2 Citations are to IPR2015-00314. premature to decide the joinder motions in the related proceedings. See 35 U.S.C. § 315(c). Nevertheless, we discern no compelling interest to be served by delaying termination of these proceedings with respect to MediaTek Inc. and MediaTek USA, Inc., both of which have settled with Patent Owner. See 35 U.S.C. § 317 (“An 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” (emphasis added)). These proceedings are at an early stage, and no motions are pending in any of these proceedings. Under these circumstances, we determine that it is appropriate to terminate these proceedings with respect to MediaTek Inc. and MediaTek USA, Inc. We exercise the discretion afforded under 35 U.S.C. § 317(a) to decline, at this time, to terminate these proceedings with respect to Patent Owner. Because no petitioner remains in these proceedings, we vacate the Scheduling Order in each proceeding (Paper 13 in IPR2015-00314, IPR2015-00316, and IPR2015-00531; and Paper 15 in IPR2015-00315). If necessary, we will revisit scheduling for these proceedings after decisions on the joinder motions are made in the related proceedings. If appropriate, we will also revisit the Motions to Terminate as to Patent Owner after ruling on the motions for joinder in the related proceedings.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“The Joint Motions to Seal are granted to the extent that they request that the agreement be treated as business confidential information and be kept separate from the patent files under 37 C.F.R. § 42.74(c) but otherwise denied. The requests should not have been filed as “Motions to Seal,” which has other meaning, under 37 C.F.R. § 42.14, with respect to the underlying document in the context of the proceeding, e.g., expungement or made public under certain circumstances.” slip op. at 3
NonePatents in suitUS 8,542,643 - PTAB · Oct 28, 2014 · IPR2013-00266 · APJ Christopher L Crumbley · IPR · Final written decision
The Board denied entry of substitute claims 20–26 as obvious, and granted cancellation of challenged claims 1, 2, 4, 11, 12, 17, 18, and 19.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“1. the cleavable linker and the protecting group are cleavable under identical conditions Proposed substitute claim 20 recites, inter alia, “a base that is linked to a detectable label via a cleavable linker,” a “protecting group attached via the 3' oxygen atom” of the nucleotide, and a step of “removing the label and the protecting group of the nucleotide . . . under a single set of chemical cleavage conditions.” Mot. 2 (emphasis added). These limitations are similar to those present in original claim 1, which we construed in our Decision on Institution. Specifically, we construed removal of the label and the protecting group under a single set of conditions “to mean what its plain language indicates: removal of the label and the protecting group under a single set of conditions.” Dec. 6. Neither of the parties contested this construction subsequent to institution, and we discern no reason to modify our initial construction for the purposes of this decision. Proposed claim 20 also requires that the cleavable linker comprise a disulfide linkage, but does not specify the protecting group. Thus, “a single set of chemical cleavage conditions,” under the broadest reasonable interpretation standard, limits the structure of the protecting group to one which can be cleaved under the same conditions as a disulfide linkage, but does not require a specific structure, such as a disulfide linkage.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“Illumina was essentially 100%. This is a significant and unexpected improvement over the disulfide cleavages of Ruby (~86%) and Herman (87%).” Ex. 2004 ¶ 84. There is no testimony, however, that the stated results were due to the claimed nucleotide rather than the reducing agent. While Dr. Romesberg refers to the “disulfide cleavage yield” as being unexpected, he does not testify that this yield was attributable to the claimed nucleotide configuration, rather than the reducing agent which performs the disulfide bond cleavage. Illumina has not distinguished the Vermaas results from the prior art by showing that the nucleotide is responsible for the disulfide yield, rather than it being a property of the disulfide bond and the yield being “the mere recognition” of the bond’s “latent properties,” which “does not render nonobvious an otherwise known invention.” Baxter, 952 F.2d at 392; In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997). Absent such evidence, Illumina has not shown that the claimed subject matter possesses “unexpected results relative to the prior art.” Galderma Labs., LP v. Tolmar, Inc., 737 F3d 731, 738 (Fed. Cir. 2013). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416.” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“After considering all the evidence as a whole, we conclude that Illumina has not met its burden in showing that the proposed substitute claims are patentable over the prior art considered in this Decision. The Motion to Amend is DENIED to the extent that it requests entry of substitute claims 20–26.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,158,346
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.