• Atlas Copco Airpower N.V. v. Kaeser Kompressoren SESome claims unpatentable
  PTAB · Dec 23, 2016 · IPR2015-01421 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1, 2, 4, 5, 7–12, and 14–20 are unpatentable; claim 13 was not shown unpatentable, because White did not teach the claimed input-compressor control.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based upon our review of Dunne and the supporting testimony of Dr. Knaebel, whose opinion, in this regard, we afford persuasive weight, we agree with Petitioner that Dunne discloses each element of claim 1, including inherently disclosing two alternative embodiments wherein a pressure increasing device is provided within the connecting line to increase pressure of the gas flowing from the second discharging line to the second feeding line. In particular, we are persuaded that a person of ordinary skill in the art would understand that Dunne teaches that the compression required by paragraph 26 may optionally be provided in either stream 7 or 9, shown in Dunne’s Figure 1. Each of those streams may be seen as “going to the adsorption zone” and providing an opportunity for compression “prior to contacting the adsorbent wheel,” as required by Dunne. Ex. 1002 ¶ 26. Further, compression in any of those streams is consistent with the teaching in paragraph 27 of Dunne that compression may occur “prior to or after the condenser on the regeneration or cooling effluent,” i.e., Figure 1 shows that compression occurs in stream 7 prior to reaching the condenser and in stream 9 after the condenser, wherein each of those streams may be considered a regeneration effluent as they flow from the regeneration sector.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not provide a statement describing a person of ordinary skill in the art. Nor does Patent Owner provide the testimony of a declarant purported to be such a person. Based upon our review of the record as a whole, we find that Petitioner’s statement regarding the qualifications of a person of ordinary skill in the art is sound and supported by the evidence. Accordingly, we adopt Petitioner’s description. Moreover, we recognize Dr. Knaebel as a person of ordinary skill in the art.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “The Specification explains that the pressure increasing device is provided to “increase the pressure of the gas flowing from the second discharging line to the second feeding line.” Ex. 1001, 3:46–48. The Specification also explains that the pressure increasing device “may be a mechanical compressor, in particular a compressor and/or a fan and/or a pump and/or a side-channel compressor and/or a turbo compressor, e.g., a radial compressor.” Ex. 1001, 5:46–49. Independent claim 1 describes the connecting line by reciting, in part, “the second discharging line being in communication with the second feeding line and thus forming a connecting line.” Based upon our consideration of those descriptions and the Specification as a whole, we construe the phrase “a pressure increasing device provided within the connecting line” broadly to mean a device, such as a mechanical compressor, in particular a compressor, fan, pump, side-channel compressor, and/or a turbo compressor, e.g., a radial compressor, provided within the line formed between the second discharging line and the second feeding line, wherein the device increases pressure of gas flowing from the second discharging line to the second feeding line.” slip op. at 8

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

    “Based upon our review of Dunne and the supporting testimony of Dr. Knaebel, whose opinion, in this regard, we afford persuasive weight, we agree with Petitioner that Dunne discloses each element of claim 1, including inherently disclosing two alternative embodiments wherein a pressure increasing device is provided within the connecting line to increase pressure of the gas flowing from the second discharging line to the second feeding line. In particular, we are persuaded that a person of ordinary skill in the art would understand that Dunne teaches that the compression required by paragraph 26 may optionally be provided in either stream 7 or 9, shown in Dunne’s Figure 1. Each of those streams may be seen as “going to the adsorption zone” and providing an opportunity for compression “prior to contacting the adsorbent wheel,” as required by Dunne. Ex. 1002 ¶ 26. Further, compression in any of those streams is consistent with the teaching in paragraph 27 of Dunne that compression may occur “prior to or after the condenser on the regeneration or cooling effluent,” i.e., Figure 1 shows that compression occurs in stream 7 prior to reaching the condenser and in stream 9 after the condenser, wherein each of those streams may be considered a regeneration effluent as they flow from the regeneration sector. Further, Petitioner has shown persuasively, and Patent Owner has not argued otherwise, that streams 7 and 9 depicted in Dunne’s Figure 1 make up a “connecting line in which a condenser 8 is provided” as required by claim 1. Pet. 28–30. Thus, we determine that Dunne’s inherent disclosure of providing a pressure increasing device in either of streams 7 or 9, results in two embodiments of the invention which necessarily meet all of the limitations in claim 1, including providing a pressure increasing device within the connecting line to increase the gas flowing from the second discharging line to the second feeding line.” slip op. at 16

  Patent outcomesUS 8,349,054 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,349,054
• Elekta, Inc. v. Varian Medical Systems, Inc.All claims unpatentable
  PTAB · Dec 23, 2016 · IPR2015-01401 · APJ Garth D Baer · IPR · Final written decision

  Claims 1, 4–7, 14, 15, 53, 60, and 61 are unpatentable over Jaffray 2001 under §§ 102(b) and 103(a), and over the stated Jaffray combinations under § 103(a).

  RulingsFinal written decision

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

    “ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only those claim terms necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). 2. “capable of implementing a treatment plan” Patent Owner takes the position that to be “capable of implementing a treatment plan,” a radiation treatment system cannot still be in development and must pass industry-established quality assurance validations that are prerequisites to commissioning such systems for use on real patients. See PO Resp. 17–18. We decline to read in these additional limitations. Neither the claims nor the Specification has any support for excluding devices that are still early in development, or those that have not yet been validated against established quality standards. The broadest reasonable construction of the term requires no more than a system capable of implementing one or more treatment plans. 3. “communications network” slip op. at 7

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

    “Patent Owner asserts “[a] communications network is a communication system that facilitates communication between many devices and that uses a networking protocol to selectively route messages to their intended devices.” PO Resp. 28. In Reply, Petitioner proposes a broader construction: “a link between two or more components of the radiation treatment system that allows information to be shared between them.” Reply 11. We agree with Petitioner. In the three instances when the ’021 patent Specification recites “communications network,” it describes only a generic connection between components. See Ex. 1001, 2:36–40 (explaining that “[t]he couch 218 may be connected to the therapy simulator rotatable gantry via a communications network”), 4:16–18 (explaining that “the computer 220 connects to the simulator 100 and the command processor 225 via a communications network 240”), 6:16–18 (explaining that “box 451, processor 425, and computer 450 connect to simulator 400 via communications network 440”). Figures 1 and 3 of the ’021 patent depict the communications network (items 240 and 440) simply as arrows connecting various components. Notably absent from the ’021 patent is any reference to networking protocols or a routing mechanism, and nothing in the term’s plain language requires a networking protocol or selectively routing messages as Patent Owner suggests. We agree with Petitioner under the broadest reasonable construction, a communications network is simply a link between two or more components of the radiation treatment system that allows information to be shared between them. 4. “a high energy radiation source” and “a cone-beam radiation source”” slip op. at 7

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

    “i. Jaffray 2001 Teaches “a radiation treatment system capable of implementing a treatment plan” All of the challenged claims require a “radiation treatment system capable of implementing a treatment plan.” We agree with Petitioner that because Jaffray 2001 teaches “[t]he adaptation of this system to a medical linear accelerator for on-line image-guided radiation therapy demonstrates the suitability of this technology for intra-therapeutic guidance,” Jaffray 2001 discloses a system capable of implementing a treatment plan. See Pet. 18 (quoting Ex. 1003, 800); Ex. 2024 ¶¶ 25–28 (explaining that “a medical linear accelerator, by its very nature, is capable of implementing a treatment plan”), ¶¶ 29–30 (explaining that Fig. 2(a) from Patent Owner’s Exhibit 2015 confirms that Jaffray 2001’s medical linear accelerator is capable of implementing a treatment plan). In contesting this element, Patent Owner notes that one of the other Jaffray references—Jaffray JRO 1999 (Ex. 1007)—states its design “allows normal operation of the accelerator with the imagers removed and the kV xray tube retracted.” Ex. 1007, 775. Patent Owner interprets Jaffray JRO 1999’s statement to mean in all of Jaffray’s systems, removing the imaging system was “necessary” before the linear accelerator could implement a treatment plan. PO Resp. 8–9; Ex. 2020 ¶ 58. Patent Owner argues further Jaffray 2001’s system was not capable of implementing a treatment plan because it was still in development and had not been tested or validated against established industry standards that must be met before the FDA will commission such devices for medical use. See PO Resp.17–18; Ex. 2020 ¶¶ 49–52. We disagree. As explained above, under our claim construction, the claim limitation at issue requires only a system capable of implementing one or more treatment plans, not one that is ready to certify for actual medical use on real patients. Jaffray JRO 1999’s reference to allowing normal operation with the imagers removed does not undermine that teaching; it simply indicates the disclosed system permits radiation therapy with the imagers removed, a feature beneficial for “limited situations in which the treatment plan may require extreme angulation.” Reply 3; see Ex. 1024 ¶¶ 7–8. We find Jaffray 2001 discloses a radiation treatment system capable of implementing a treatment plan as the challenged claims require.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “challenged claims, the claimed subject matter would have been obvious over Jaffray 2001 at the time of the invention. See Pet. 26–27. As explained above, we find Jaffray 2001 discloses every limitation from the challenged claims. In addition, Petitioner explains—with unrefuted support from Dr. Hamilton and the prior art—by 1981 translatable treatment couches moveable in three planes plus angulation and coupled to the gantry via a communications network were standard on linear accelerators. See Pet. 26– 27 (citing Ex. 1016 ¶ 36; Ex. 1015, 220; Ex. 1010, 1, 2, 12, 39–48). Petitioner also explains—again with unrefuted support from Dr. Hamilton— none of the Jaffray references suggest any changes to these standard features and one skilled in the art would understand the linear accelerator depicted in Jaffray 2001 is the Elekta SL20, which had a translatable treatment couch including the same standard features. Pet. 27 (citing Ex. 1016 ¶ 128). In addition, Petitioner explains that to the extent Jaffray 2001 fails to disclose a computing unit to capture and store image projection data, it would have been obvious to one skilled in the art to include one because “to process the image projection data to generate volumetric images, it is necessary to store the image projection data in the computer which will process the data.” Pet. 27 (citing 1016 ¶ 207). Thus, in addition to demonstrating the necessary disclosures in the prior art (through incorporating its anticipation argument), Petitioner identified sufficient reasons that would have prompted a person of ordinary skill in the relevant field to combine the elements the way the claimed invention does. See KSR, 550 U.S. at 418. In contesting obviousness based on Jaffray 2001, Patent Owner reiterates its argument that Jaffray 2001 does not disclose a system capable of implementing a treatment plan (as required in all of the challenged claims), a computing unit coupled to the rotatable gantry via a communications network (as required in claims 1, 4, and 5), or a translatable treatment couch coupled to the rotatable gantry via a communications network (as required in claims 14, 15, and 60). PO Resp. 45. Patent Owner asserts also we should reject Petitioner’s obviousness challenge as an improper attempt to “bootstrap” obviousness to anticipation, without identifying any differences between the claimed subject matter and the prior art or explaining why those elements would have been obvious to a person of ordinary skill in the art. Id. at 43. We disagree with Patent Owner’s arguments addressing Jaffray 2001’s ability to implement a treatment plan and communications network for the reasons explained in our anticipation analysis above. Moreover, we do not view Petitioner’s obviousness challenge as a mere “bootstrap” to anticipation because Petitioner identified potential differences between Jaffray 2001 and claimed subject matter (i.e., the claimed translatable treatment couch and computing unit to store image projection data) as well as rationale explaining why one skilled in the art would have known to include those elements.” slip op. at 19

  Patent outcomesUS 7,945,021 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,945,021
• Broad Ocean Technologies, LLC v. Nidec Motor CorporationNo claims unpatentable
  PTAB · Dec 21, 2016 · IPR2015-01617 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 7–13 were not shown unpatentable because Beifus did not disclose the claimed torque table with alternate torque settings.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Beifus states that Figure 6 “is a chart illustrating an induction motor speed-torque curve that is programmed into a memory of an ECM.” Ex. 1007 ¶ 11. Because “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference,” the dispositive issue in this proceeding is well defined: does Figure 6 (and related disclosure) of Beifus teach “selecting a torque table associated with the adjustment factor, the torque table including alternate torque settings,” as recited in independent claim 7? See Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “reasoning of Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015). Petitioner contends that “[u]pon reading Beifus, a person of ordinary skill would immediately recognize that the ECM control circuit could handle the torque values in two ways – storing a set of torque values in a memory or by calculating the torque values ‘on the fly.’” Reply 18. Kennametal explains that “a reference can anticipate a claim even if it ‘do[es] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal at 1381 (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)). Petitioner did not raise the Kennametal theory of anticipation in its Petition, and the argument based on it in the Reply is, therefore, improper. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.”) (emphasis added); CBS Interactive, Inc. v. Helferich Pat. Lic., LLC, Case IPR2013-00033, slip op. at 3 (PTAB Aug. 9, 2013) (Paper 79) (“Should there be improper arguments or evidence presented with a reply, the Board, exercising its discretion, may exclude the reply and related evidence in their entirety, or alternatively, decline to consider the improper arguments and/or related evidence.”). Although Patent Owner addressed this theory in its Response (PO Resp. 21–24), Patent Owner appears to have done so only prophylactically after the theory was raised by Petitioner in redirect examination of Dr. Sidman. See PO Resp. 21 (“During Dr. Sidman’s redirect examination by [Petitioner’s] counsel, he was asked the following leading question . . . .”) (“The Board should disregard any of this new evidence and argument if [Petitioner] intends to rely on it.”). Because this is a new argument, not raised in the Petition, we do not consider it.” slip op. at 18

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “the ambiguity when Figure 6 is actually described in detail in the specification.” Id. at 16. As Patent Owner asserts, “Beifus makes it clear that Figure 6 is a plot of values derived from key characteristics which are motor parameters of the emulated motor.” Id. (citing Ex. 1007 ¶ 36; Ex. 2002 ¶¶ 15–16, 31). This understanding of Beifus is confirmed by testimony of Patent Owner’s expert, Mark N. Horenstein, Ph.D. Ex. 2002 ¶¶ 15–16. Dr. Horenstein explains that a person of ordinary skill in the art would understand that the parameters stored in the ECM are key parameters used with the formula reproduced above to describe the torque-speed curve of the induction motor being emulated, namely the no-load speed, breakdown speed, and shape description number n. Id. ¶ 15. Dr. Horenstein further testifies that, “although square and diamond symbols appear along the curves in Figure 6, nowhere does Beifus describe the storing of these individual points.” Id. ¶ 16. Rather, Dr. Horenstein expresses his opinion that “a person of skill would understand these symbols to be included simply to identify which curve applies to Option 1 and which to Option 2 [i.e., different options for the induction motor breakdown speed], as indicated by the legend to the right of the plots.” Id. Petitioner challenged Dr. Horenstein’s opinion at his deposition, in part by comparing a drawing from one of Dr. Horenstein’s own patents that included a series of curves with data marked by different symbols: Q. So if a person of ordinary skill in the art looking at Figure 6 of the Beifus patent sees diamonds and squares, wouldn’t they come to an understanding that those are data points? A. I don’t think so. And the reason is that a formula is given that explains how the curves are computed. Figure 19 of [Dr. Horenstein’s patent], those are discretely measured points performed by experiment, and there really is no formula that applies to those curves per se, they’re just data points that have some scatter relative to each other and they happen to be connected by lines, but those lines do not represent a formula. Ex. 1013, 54:2–16. We disagree with Petitioner’s characterization of this testimony as explaining that “the reason a person of ordinary skill in the art would understand that the diamonds and squares appearing in Figure 19 of [Dr. Horenstein’s] patent are data points, as opposed to mere curve identifiers, is because the diamonds and squares are connected by lines.” Reply 15. Rather, Dr. Horenstein’s testimony makes clear that his opinion is grounded in Beifus’s disclosure of a formula that allows calculation of the illustrated points and that connection of data points measured by experiment with lines is incidental. Dr. Horenstein’s testimony is more persuasive than the testimony of Petitioner’s expert, Michael D. Sidman, Ph.D., on the identification of “key characteristic points” disclosed by Beifus. For example, Dr. Sidman appeared to suggest at his deposition that the entire speed-torque curve of Beifus’s Figure 6 is itself a “key characteristic point,” but qualified that position when challenged by Patent Owner. See Ex. 2001, 23:22–25:15. Nevertheless, Dr. Sidman agrees that (1) a curve can be generated from a mathematical formula and graphed (Ex. 2001, 30:8–11); (2) Beifus’s two formulas correspond to the formulas for “Option 1” and “Option 2” shown in Figure 6 (id. at 33:12–36:19); (3) operating speed, breakdown speed, no load speed, and shape-description number n are variables used in the formula disclosed by Beifus (id. at 22:23–23:10); (4) the calculation disclosed by Beifus could be performed on the fly in a motor controller (id. at 47:6–14); and (5) Beifus does not explicitly disclose that any precalculations are performed (id. at 43:1–23). These aspects of Dr. Sidman’s testimony are consistent with Patent Owner’s reading of Beifus.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We see no compelling reason to modify these constructions based on the positions of the parties as developed during the trial, and adopt them for this Decision. With respect to the construction of “torque table,” Patent Owner asserts: If the Board’s construction means that the table need not be in any particular format in the memory, but the table must still store the alternative torque values required by the claim “in a memory connected to the motor,” then Patent Owner accepts this interpretation for the purposes of this proceeding. However, if the Board’s construction including reference to “a torque curve graphically representing a set of torque values” does not require the torque values shown on the curve to be stored in memory, it is erroneous. PO Resp. 9. We agree with Patent Owner’s position, namely that “[t]he broadest reasonable interpretation of ‘table’ still must require the torque values to be stored in the table.” Id. As Patent Owner points out, “[t]he only intrinsic evidence available in this proceeding demonstrates a ‘torque table’ stores alternative torque settings.” Id. In particular, the ’092 patent consistently uses “table” to refer to discrete data that are stored in a memory, such as in the “speed tables” described as alternatives to “torque tables.” See Ex. 1001, col. 11, ll. 5–24, col. 16, ll. 63–66 (“Instead of adjusting the torque as described above, the motor controller 18 could store a plurality of different torque or speed tables and select one of the torque/speed tables based on an input provided by the torque adjustment mechanism.”). This aspect of the construction of “torque table” is reflected in its reference to including a graphical representation of “a set” of torque values in a memory connected to a motor.” slip op. at 7

  Patent outcomesUS 7,990,092 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,990,092
• Monosol RX, LLC v. Arius Two, Inc.Rehearing denied
  PTAB · Dec 19, 2016 · IPR2014-00376 · APJ Christopher L Crumbley · IPR · Rehearing

  The Board denied Monosol’s rehearing request, leaving claims 1–7 not shown unpatentable because the request showed no prejudicial APA error in the Board’s multilayer construction of “bioerodable device.”

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “At the outset, we note that the premise of Monosol’s argument—that we changed theories in our Final Written Decision—is incorrect. Our Decision on Institution did not articulate a construction for “bioerodable device,” or even state that we were not providing an express construction because the plain and ordinary meaning of the term controlled. Rather, we noted that an explicit construction was not necessary at that stage of the proceeding, because it was not material to resolving the question before us at the time: whether Monosol had established the reasonable likelihood of success required by 35 U.S.C. § 314 to institute trial. Dec. on Inst. 10–11. In this sense, our determination in the Decision on Institution was similar to a trial court’s ruling on a motion for preliminary injunction, and the” slip op. at 6

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

    “In instituting trial, we construed various terms in the challenged claims, but determined that other terms, such as “bioerodable device,” did” slip op. at 3

  • PTAB / AIA Trials › Discretionary denialDecided for patent owner

    “Our denial of institution on particular grounds was based on the fact that we had determined to institute trial on other grounds, and Monosol had not explained why the grounds (such as anticipation by Heiber, or obviousness over Keith combined with Heiber or Schiraldi) were sufficiently distinctive from the instituted grounds. Dec. on Inst. 16, 20 n.2. We, therefore, exercised our discretion to deny these grounds as redundant of the instituted grounds. Id.” slip op. at 3

  • BurdenDecided for patent owner

    “construction of “bioerodable device” earlier—it would have presented evidence that the Heiber and Schiraldi references met that limitation. But Monosol could not have done so post-institution, because neither Heiber nor Schiraldi were part of any ground on which trial was instituted, and could not form any basis for our patentability determination. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765 (Aug. 14, 2012) (“Any claim or issue not included in the authorization for review is not part of the trial.”). Relying on non-instituted prior art in the Final Written Decision— and thereby introducing factual assertions into the proceeding at the end of trial—would trade Monosol’s alleged APA violation for an actual one. See Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016).” slip op. at 10

  Claim constructionDiscretionary denial
  Patents in suitUS 7,579,019
• Polygroup Limited v. Willis Electric Co., Ltd.Rehearing denied
  PTAB · Dec 6, 2016 · IPR2016-00802 · APJ William V Saindon · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting inter partes review.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Specifically for rehearing requests of decisions on institution, “a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “Patent Owner’s second argument for rehearing involves the discretion we have under 35 U.S.C. § 325(d) not to institute review if “the same or substantially the same prior art or arguments previously were presented to the Office.” In our Decision, we declined to exercise our discretion to deny. Dec. on Inst. 14. One factor behind our decision that we highlighted was that the grounds asserted against the ’186 patent were going forward already in a related proceeding (namely, the grounds in IPR2016-00802) against a very similar patent. Id. As such, we saw little substantive burden in proceeding on the merits. Id. Further, denying institution here causes additional inefficiencies, as it leaves to the district court issues that we are going to resolve on a closely related patent. Id. Patent Owner points to other cases having different facts in which petitions were denied. See Req. Reh’g 9–11. Different facts will give different results, especially in a multi-factor test such as that involved in § 325(d). Patent Owner does not address any facts that would make us reconsider our Decision. Patent Owner then points out that more cases were filed against it after this particular proceeding was filed (Req. 11–14); this is immaterial as to our decision regarding this proceeding. See 35 U.S.C. § 325(d) (referring to “prior art or arguments [that] previously were presented to the Office”) (emphasis added).” slip op. at 3

  • Strike new argumentDecided for petitioner

    “Patent Owner’s first argument for rehearing is directed to whether the Petition provided sufficient notice to Patent Owner regarding the basis of the unpatentability challenge. Req. 2–7. Patent Owner argues that Petitioner’s ground was to modify one reference with another as a “wholesale” slip op. at 2

  Discretionary denial
  Patents in suitUS 9,044,056
• Polygroup Limited v. Willis Electric Co., Ltd.Rehearing denied
  PTAB · Dec 6, 2016 · IPR2016-00801 · APJ William V Saindon · IPR · Rehearing

  The Board denied Willis Electric’s rehearing request, leaving institution in place because it found no abuse of discretion in its notice analysis or decision not to deny under § 325(d).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Specifically for rehearing requests of decisions on institution, “a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner

    “we have under 35 U.S.C. § 325(d) not to institute review if “the same or substantially the same prior art or arguments previously were presented to the Office.” In our Decision, we declined to exercise our discretion to deny. Dec. on Inst. 14. One factor behind our decision that we highlighted was that the grounds asserted against the ’186 patent were going forward already in a related proceeding (namely, the grounds in IPR2016-00802) against a very similar patent. Id. As such, we saw little substantive burden in proceeding on the merits. Id. Further, denying institution here causes additional inefficiencies, as it leaves to the district court issues that we are going to resolve on a closely related patent. Id. Patent Owner points to other cases having different facts in which petitions were denied. See Req. Reh’g 9–11. Different facts will give different results, especially in a multi-factor test such as that involved in § 325(d). Patent Owner does not address any facts that would make us reconsider our Decision. Patent Owner then points out that more cases were filed against it after this particular proceeding was filed (Req. 11–14); this is immaterial as to our decision regarding this proceeding. See 35 U.S.C. § 325(d) (referring to “prior art or arguments [that] previously were presented to the Office”) (emphasis added).” slip op. at 3

  Discretionary denial
  Patents in suitUS 8,454,187
• Polygroup Limited v. Willis Electric Co., Ltd.Rehearing denied
  PTAB · Dec 6, 2016 · IPR2016-00800 · APJ William V Saindon · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review after rejecting its notice and § 325(d) arguments.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Specifically for rehearing requests of decisions on institution, “a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “we have under 35 U.S.C. § 325(d) not to institute review if “the same or substantially the same prior art or arguments previously were presented to the Office.” In our Decision, we declined to exercise our discretion to deny. Dec. on Inst. 14. One factor behind our decision that we highlighted was that the grounds asserted against the ’186 patent were going forward already in a related proceeding (namely, the grounds in IPR2016-00802) against a very similar patent. Id. As such, we saw little substantive burden in proceeding on the merits. Id. Further, denying institution here causes additional inefficiencies, as it leaves to the district court issues that we are going to resolve on a closely related patent. Id. Patent Owner points to other cases having different facts in which petitions were denied. See Req. Reh’g 9–11. Different facts will give different results, especially in a multi-factor test such as that involved in § 325(d). Patent Owner does not address any facts that would make us reconsider our Decision. Patent Owner then points out that more cases were filed against it after this particular proceeding was filed (Req. 11–14); this is immaterial as to our decision regarding this proceeding. See 35 U.S.C. § 325(d) (referring to “prior art or arguments [that] previously were presented to the Office”) (emphasis added).” slip op. at 3

  Discretionary denial
  Patents in suitUS 8,454,186
• Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentable
  PTAB · Dec 6, 2016 · IPR2015-01248 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 5, 20, 22–25, and 30 are unpatentable as obvious over Yamashita and Shamoon; claims 2–4, 6–8, and 19 were not proven unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner that Patent Owner is attempting to improperly limit the construction. As we explained in our Decision on Institution, we declined to limit “comparison” to a particular type of evaluation, and by our construction, we did not find that the “focus” of the “comparison” is to identify “any dissimilarity” as Patent Owner contends. See Inst. Dec. 9. Indeed, as evidenced by the dictionary definitions cited by Patent Owner and that we relied upon, determining dissimilarities is not the “focus” of the plain and ordinary meaning of “comparison” that we adopted. See Inst. Dec. 9 (citing Ex. 2003 (defining “comparison” as “the act of looking at things to see how they are similar or different” and “the act of suggesting that two or more things are similar or in the same category”)); see also Ex. 2011 (defining “comparison” as “the representing of one thing or person as similar to or like another” and “an examination of two or more items to establish similarities and dissimilarities”).” slip op. at 6

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

    “Here, we agree with Petitioner that the plain language of the claim is sufficient and no construction is necessary for this term. The claim language already establishes that there are two user profiles, each is associated with a particular and different mobile device, and the profiles include “information to alter an operating condition of the network device according to a preference of a [first/second] user.” The claim already addresses what attributes the user profile must have. We see no support in the claim language or specification for Patent Owner’s additional requirements that the profiles be “individual” and “include information unique to each user.”” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “v. Summary as to Claims 1, 20, 22–25, and 30 Patent Owner raises no evidence of secondary considerations of nonobviousness in this case. Thus, weighing the evidence of obviousness that is before us, we find that Petitioner has shown by a preponderance of the evidence that claims 1, 20, 22–25, and 30 would have been obvious over the combination of Yamashita and Shamoon.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “We do not find Patent Owner’s arguments persuasive. Teaching away requires that “a person of ordinary skill upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).4 Patent Owner cites nothing in Yamashita that says that adding the features from Shamoon in addition to the automatic functionality of Yamashita would be unlikely to work; Yamashita alleges only that manual control alone has certain disadvantages. 4 We understand Patent Owner to be arguing both that the references teach away from the combination generally and teach away because, in particular, the combination would change the principle of operation of the system. PO Resp. 33–36. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012); see also Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998) (finding no teaching away where nothing in the prior art device suggested that the claimed invention was unlikely to work). The lack of teaching away is confirmed by Yamashita’s disclosure of an embodiment requiring manual interaction. See Reply 20 (citing Ex. 1006, 22:31–51). Indeed, although Patent Owner contends that automatic functionality is “not the focus or main purpose of Shamoon,” PO Resp. 35, Shamoon’s system demonstrates that automatic functionality can be combined with manual functionality to result in a working system. See Ex. 1007, 8:36–45. As for Patent Owner’s contentions that Yamashita “abandoned bi- directional communication” (PO Resp. 35), we find no support in the cited portions of Yamashita for these contentions. Although Yamashita does tout the benefits of its automatic control system, the cited portions of Yamashita are silent about the advantages or disadvantages of “bi-directional communication.” As for Patent Owner’s arguments about substantial reconstruction and redesign (PO Resp. 36 (citing Ex. 2008 ¶ 91)), we do not find the testimony or argument persuasive. Yamashita’s control terminal and mobile terminals already has built in communication abilities (Ex. 1006, 11:31–38), and we find Dr. Selker’s testimony persuasive that a person of ordinary skill would have been motivated to add the ability to communicate the thermostat reading to verify that Yamashita’s automatic control worked. Ex. 1002 ¶¶ 205–207. As for Patent Owner’s allegation that the combination with Shamoon would change Yamashita’s principle of operation, we disagree. Yamashita would continue to work as before; the messages, rules, and control information would continue operate in the same manner. Shamoon would only add additional functionality to allow for an improved user interface and two-way communication. Where the device would operate on the same principles as before, the combination does not change the principle of operation. See Mouttet, 686 F.3d at 1332 (noting Ratti inapplicable where the modified apparatus will operate “on the same principles as before”). As Petitioner explains, Shamoon demonstrates that its known techniques have been used to improve similar devices in similar ways. We find that Petitioner has articulated sufficient reasoning with rational underpinnings to support the combination. See Ex. 1002 ¶¶ 205–207, 213. Thus, we conclude that a person of ordinary skill would have had reason to combine the teachings of Yamashita and Shamoon.” slip op. at 29

  Patent outcomesUS 8,626,344 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,626,344
• Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentable
  PTAB · Dec 6, 2016 · IPR2015-01251 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 9–14, 16, and 26–29 are unpatentable as obvious over Yamashita and Shamoon; claims 15, 17, and 18 were not proven unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner that Patent Owner’s further narrowing of our construction is improperly limiting. As we explained in our Decision on Institution, we declined to limit “comparing” to a particular type of evaluation, and by our construction, we did not find that the “focus” of the comparison is to identify “any dissimilarity” as Patent Owner contends. See Inst. Dec. 10. Indeed, as evidenced by the dictionary definitions cited by Patent Owner and that we relied upon, determining dissimilarities is not the “focus” of the plain and ordinary meaning of “comparing” that we adopted; rather, each of them emphasizes determining similarities as well. See Inst. Dec. 9 (citing Ex. 2002 (defining “comparison” as “the act of looking at things to see how they are similar or different” and “the act of suggesting that two or more things are similar or in the same category”)); see also Ex. 2006 (defining “comparison” as “the representing of one thing or person as similar to or like another” and “an examination of two or more items to establish similarities and dissimilarities”). The specification does not compel a different understanding. The” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “that the parties’ actual dispute is twofold. First, the parties dispute whether the mobile device must be able to transmit location information to the site regardless of whether the proximity setting is enabled or disabled. See Reply 8–9; PO Resp. 14–15. Second, Patent Owner argues that the entire process of proximity detection must be automatic. PO Resp. 14. As we explain below, we agree with Petitioner that this term does not require that the mobile device continue to send location reports if the proximity setting is not enabled, whereas we disagree with Petitioner that the proximity setting is limited to enabling or disabling the ability to send location reports. Instead, we find the specification supports a broader construction. In particular, we find that the specification states that “[f]or example, a user may enable proximity detection using proximity detection selector 1036 and energy use at a site may be altered based on a user[’]s distance to the site.” Ex. 1001, 46:45–48. It further explains that “[i]n some forms, proximity detection selector 1036 can be hidden, displayed, selectable, or any combination thereof in response to a user having a mobile device capable of being detected when a user is at or away from a site.” Id. at 46:50–54. Thus, we consider the broadest reasonable construction of “proximity setting” consistent with the specification to be “a setting that can enable or disable proximity detection, where energy use at a site may be altered based on the user’s location.” Both parties acknowledge that this is a reasonable meaning of the term. Reply 8; PO Resp. 12.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “In sum, Petitioner has shown sufficiently that the control terminal in Yamashita receives messages from the wireless terminals that represent the relative location of the mobile terminal (e.g., within 300 m of the site or moving away from the site) and that the control terminal includes a number of rules to compare the messages to determine what control information to send to the controlled appliances, and that as a result of the comparison sends control information to alter the condition of the controlled appliances. See Ex. 1002 ¶¶ 214–216. Thus, we are persuaded that Yamashita accounts for the “comparing limitations” of claim 9.” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We find that Petitioner has shown adequately that a person of ordinary skill would have been motivated to combine Yamashita with Shamoon. In particular, we do not agree with Patent Owner that Yamashita teaches away from the combination or that the combination would change the principle of operation of Yamashita.3 Patent Owner is correct that Yamashita distinguishes manual control, and notes the disadvantages of “burdensome operations” and the possibility the user may forget to perform the required operations. Ex. 1005, 1:35–40. Patent Owner is also correct that Yamashita states that one objective of the invention is a system that can automatically control an appliance based on position without requiring any operation by the user. Id. at 1:44–47. Yet, Yamashita also discloses an embodiment where the user is prompted before a message is sent, which does require an operation by the user. Id. at 23:31–51. Thus, we do not agree that Yamashita disparages all manual interaction as Patent Owner contends. Moreover, teaching away requires that “a person of ordinary skill upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Patent Owner cites nothing in Yamashita that says that adding the communication features from Shamoon to transmit the thermostat readings to the mobile terminal to the automatic functionality of Yamashita would be unlikely to work; Yamashita alleges only that manual control alone has certain disadvantages, not that communicating information from the site to” slip op. at 32

  Patent outcomesUS 8,626,344 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,626,344
• Honeywell International Inc. v. Allure Energy, Inc.All claims unpatentable
  PTAB · Dec 6, 2016 · IPR2015-01253 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–17 are unpatentable as obvious over Richton and Rosenblatt.

  RulingsFinal written decision

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

    “We do not agree that the claim language unambiguously requires that there must be outer boundaries. The term “zone” generally refers to an area. We turn to the specification to see how the ’797 patent describes a zone. See Trs. of Columbia Univ. in the City of N.Y. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016) (“‘[T]he specification is always highly relevant to the claim construction analysis’ and is, in fact, ‘the single best guide to the meaning of a disputed term.’”). As Petitioner points out, the specification refers to zones that do not have an outer boundary. See Ex. 1001, 12:41–44 (“detect mobile device 210 within a first zone (e.g., less than one (1) mile from the site, less than three (3) miles from site, greater than five (5) miles from site, etc.).”). Indeed, contrary to Patent Owner’s argument that in order to be “within” the zones there must be an outer boundary, the specification describes an embodiment where the user is “within” a zone that is “greater than five (5) miles from [the] site.” Id. at 12:42–44. In this instance, there is an inner boundary for the zone (five miles), but not an outer boundary.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “attempts to rebut this testimony with testimony from its declarant, Mr. McAlexander, that this statement in Richton only means that the location-action server can be distributed over a couple of remote servers. Ex. 2004 ¶ 71. We do not find Mr. McAlexander’s testimony persuasive for several reasons. In particular, the testimony ignores Richton’s explicit statement that it is not important where the components of the location-action server are located, but that “[o]nly the operative connection between the components is important.” Ex. 1003, 12:58–59. This statement suggests that the functionality can be more distributed than Mr. McAlexander contends. Moreover, Mr. McAlexander’s testimony mischaracterizes Petitioner’s and Dr. Selker’s argument by saying that “[t]his [statement] does not disclose [that] the various components, which carry out the location-based action services, are located on the mobile device.”8 Ex. 2004 ¶ 71. Neither Petitioner nor Dr. Selker, however, suggested that this statement in Richton discloses locating the components on a mobile device. Instead, they suggested, and we agree, that because the functionality can be distributed, it enables the functionality to be placed on a mobile device.” slip op. at 21

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “not commensurate with the scope of the claims because “whether” and “within” do not impart the limitations that Patent Owner seeks to include the claims. When Richton determines that the mobile device crosses a particular distance threshold such that the device is now in a particular zone, we find that Richton determines whether the device is within that zone. See Ex. 1002 ¶¶ 116–119; Ex. 1003, 6:36–50, 8:46–9:10. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that Richton teaches or suggests the zone limitations of claims 3–8 and 14.” slip op. at 18

  Patent outcomesUS 8,457,797 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,457,797

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.