- LG Chem, Ltd. v. Celgard, LLCSome claims unpatentablePTAB · Oct 5, 2015 · IPR2014-00692 · APJ Donna M Praiss · IPR · Final written decision
Claims 1–11 are unpatentable as obvious: claims 7–10 over Tojo and claims 1–6 and 11 over Tobishima and Tojo; the other instituted grounds were not proven.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“Our reviewing court, however, has “cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Patent Owner does not direct us to any specific disclosure in the Specification of the ’586 patent clearly limiting or defining dendrite blocking as impeding dendrite growth for the entire intended life of a rechargeable battery. Accordingly, because the ’586 patent does not clearly disclaim the scope of dendrite blocking in the manner Patent Owner advances, we are not persuaded that we should limit the claims to the asserted primary goal, or preferred result, of the ’586 patent. We, therefore, decline to adopt Patent Owner’s proffered claim construction.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“and Dr. Abraham, as well as the Handbook’s disclosure that separator pores as small as 0.1 µm are effectively barn doors, which cannot prevent electronic shorts caused by dendrite growth, Patent Owner persuades us that Tojo’s porous ceramic composite layer is not capable of hindering, interrupting, or delaying the passage, progress, or course of dendrite growth, with any degree of effectiveness that prevents electronic shorting. That is, Patent Owner persuades us that Tojo’s separators do not include a ceramic composite layer that is adapted to at least block dendrite growth and to prevent electronic shorting, as recited in claim 1 of the ’586 patent.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As discussed above, Petitioner does not persuade us that it has established that Tojo’s separator includes that feature, because of the pores in Tojo’s ceramic composite layer. Because Petitioner relies on this limitation being inherently present in Tojo as argued with respect to claim 1 (Pet. 19, 23), Petitioner does not provide any evidence to support the obviousness of this limitation. In the context of an obviousness analysis, inherency “‘may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’” In re Oelrich, 666 F.3d 578, 581 (C.C.P.A. 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)). An inherent disclosure is one that is “sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function.” Id.; Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (“[T]he concept of inherency must be limited when applied to obviousness, and is present only when the limitation at issue is the ‘natural result’ of the combination of prior art elements.”) (quoting In re Oelrich, 666 F.2d at 581). As discussed above, the preponderance of the evidence leads us to conclude that Tojo’s disclosure would not necessarily produce pores with a tortuosity sufficient to block dendrite growth. Thus, even if an ordinary artisan were to find it obvious to try one of the specific matrix materials recited in dependent claim 4 (id. at 19), the resulting ceramic composite layer required by both claim 4 and claim 12 would, nonetheless, have the pores that Tojo teaches should be present in that layer. Therefore, a preponderance of the evidence does not support a finding that it would have been obvious that the separator disclosed by Tojo would result in a separator having the dendrite-blocking feature required by claims 4 and 12. Accordingly, because Petitioner has not shown that Tojo teaches or suggests all of the features required by claims 4 and 12, we conclude that Petitioner has not established by a preponderance of the evidence that claims 4 and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Tojo.” slip op. at 21
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Even disregarding the procedural infirmities in Patent Owner’s Response, however, Petitioner persuades us that the evidence of secondary considerations is not entitled to substantial weight, because Patent Owner has not established a sufficient nexus between the merits of the claimed subject matter and that evidence. Petitioner persuades us also that the evidence of secondary considerations is not reasonably commensurate in scope with the claimed subject matter.” slip op. at 33
Patent outcomesUS 6,432,586 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,432,586 - Facebook, Inc. / Linkedin Corp. et al. v. Software Rights Archive, LLCSome claims unpatentablePTAB · Jan 30, 2015 · IPR2013-00480 · APJ Barbara A Parvis · IPR · Final written decision
Claim 14 was held unpatentable as anticipated by Fox Thesis; claims 1, 5, 15, and 16 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“determine whether “cluster links” means relationships between two nodes, which are represented in data stored in a computer. Claim 1 recites a method of analyzing data in a database with indirect relationships using links and nodes. Claim 14 similarly recites a method for representing the relationship between nodes, using stored direct links, paths, and candidate cluster links. As explained in the ’494 Patent specification, data in the database may be represented as a node. Ex. 1001, 12:29–33. Exemplary nodes include an object or a portion of an object, a document or section of a document, and a World Wide Web page. Id. at 12:35–38. The ’494 Patent specification states that a link is a “relationship between two nodes.” Id. at 12:65–66. The ’494 Patent specification continues, “[a] link [] can be represented by a vector or an entry on a table and contain information for example, a from-node identification [] (ID), a to-node ID [], a link type [], and a weight.” Id. at 13:3–6. As described in the ’494 Patent specification, a link is represented in data stored in a computer. We, therefore, determine that “cluster links” means relationships, which are represented in data stored in a computer and are used for grouping interrelated nodes.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As described in Fox SMART, the concentration tests that are cited by Petitioner are performed as part of forming the cluster tree. Id. Petitioner does not identify disclosure in Fox SMART of deleting clusters other than those that simply overlap, or duplicate, other clusters. Overlapping clusters are deleted following a routine that identifies plausible clustering with “no limit on overlap.” Id. Additionally, Fox SMART includes code that collects orphans. Id. at 52. Petitioner, however, has not shown that Fox SMART describes a subset which does not include these orphans. Dr. Fox’s supplemental testimony that “Fox SMART teaches that potential (i.e., candidate) clusters are rejected (‘deleted’) if they fail any one of these tests” (Ex. 1028 ¶ 281 (citing Ex. 1005, 51)) suggests that the terms “rejected” and “deleted” are the same. We do not agree. In view of Dr. Fox’s testimony in both of his Declarations and the testimony of Dr. Jacobs, we find that one of ordinary skill in the art reasonably would have understood Fox SMART as describing deleting overlap that had been generated by the immediately preceding software routine. Additionally, we find that one of ordinary skill in the art reasonably would have understood Fox SMART as describing that the tests referred to by Dr. Fox are processed during formation of the tree. We, therefore, determine that Dr. Fox’s testimony does not address persuasively the requirement in claim 1 of deriving a subset of the already generated candidate cluster links.” slip op. at 15
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“FURTHER ORDERED that Patent Owner’s Motion to Amend to cancel claims 8, 10, 11, 35, and 40 of the ’494 Patent is GRANTED;” slip op. at 24
- ExcludeMotion to exclude, deniedDenied
“arguments for the first time. Paper 44, 1. A reply may respond to arguments raised in the corresponding patent owner response. 37 C.F.R. § 42.23(a). Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the unpatentability of a claim. Office Patent Trial Practice Guide, 77 Fed.Reg. 48,756, 48,767 (Aug. 14, 2012). We determine that the evidence presented in the Reply Fox Declaration that is discussed in this Decision properly responds to arguments raised in the Patent Owner Response. Additionally, we do not rely on evidence in the Reply Fox Declaration in our determination that Petitioner established by a preponderance of the evidence that claim 14 is unpatentable. For the reasons given, we deny Patent Owner’s Motion to Exclude.” slip op. at 22
Patent outcomesUS 5,832,494 mixedClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 5,832,494 - Facebook, Inc. / Linkedin Corp. et al. v. Software Rights Archive, LLCSome claims unpatentablePTAB · Jan 29, 2015 · IPR2013-00481 · APJ Barbara A Parvis · IPR · Final written decision
Claims 12 and 22 are unpatentable over Fox Thesis, Fox SMART, and Envision under § 103; claim 21 was not shown unpatentable because the art did not teach deriving actual cluster links from generated candidate …
RulingsFinal written decision- BurdenMixed
“The claim chart persuasively reads all elements of each of claims 12 and 22 onto the teachings of Fox Thesis, Fox SMART, and Envision, taken together. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, which we have also considered, Petitioner has shown by a preponderance of the evidence that claims 12 and 22 of the ’571 Patent are unpatentable, under 35 U.S.C. § 103, as they would have been obvious over the combination of Fox Thesis, Fox SMART, and Envision. Petitioner, however, has not shown by a preponderance of the evidence that claim 21 of the ’571 Patent is unpatentable, under 35 U.S.C. § 103, as obvious over the combination of Fox Thesis, Fox SMART, and Envision. 1.” slip op. at 15
- Expert testimonyPatent owner expert creditedDecided for patent owner
“As taught in Fox SMART, the concentration tests that are cited by Petitioner are performed as part of forming the cluster tree. Id. Petitioner does not identify a teaching in Fox SMART of deleting clusters other than those that simply overlap, or duplicate, other clusters. Overlapping clusters are deleted following a routine that identifies plausible clustering with “no limit on overlap.” Id. Additionally, Fox SMART includes code that collects orphans. Id. at 52. Petitioner, however, has not shown that Fox SMART teaches a subset, which does not include these orphans. Dr. Fox’s supplemental testimony that “Fox SMART teaches that potential (i.e., candidate) clusters are rejected (‘deleted’) if they fail any one of these tests” (Ex. 1032 ¶ 281 (citing Ex. 1005, 51)) suggests that the terms “rejected” and “deleted” are the same. We do not agree. In view of Dr. Fox’s testimony in both of his Declarations and the testimony of Dr. Jacobs, we find that one of ordinary skill in the art reasonably would have understood Fox SMART as teaching deleting overlap that had been generated by the immediately preceding software routine. Additionally, we find that one of ordinary skill in the art reasonably would have understood Fox SMART as teaching that the tests referred to by Dr. Fox are processed during formation of the tree. We, therefore, determine that Dr. Fox’s testimony does not address persuasively the requirement in claim 21 of deriving a subset of the already generated candidate cluster links. In light of the Declaration by Patent Owner’s Declarant, Dr. Jacobs, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Fox Thesis, Fox SMART, and Envision teaches deriving actual cluster links. For the foregoing reasons, Petitioner has not established that claim 21 of the ’571 Patent is unpatentable, under 35 U.S.C. § 103, as obvious over the combination of Fox Thesis, Fox SMART, and Envision.” slip op. at 27
- ExcludeMotion to exclude, deniedDenied
“Owner contends that the Reply Fox Declaration should be excluded in accordance with Federal Rule of Evidence (“FRE”) 702. Paper 44, 1. In particular, Patent Owner contends that the Reply Fox Declaration should be excluded because FRE 702 precludes admission of expert testimony unless “the testimony is based on sufficient facts or data, the testimony is the product of reliable principles and methods, and the expert has reliably applied the principles and methods to the facts of the case.” Id. With regard to this objection, we note that under 37 C.F.R. § 42.65(a), “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” Consequently, this objection properly goes to the weight to be given to Dr. Fox’s testimony, and not to its admissibility. It is within our discretion to assign the appropriate weight to the testimony offered by Dr. Fox. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). When weighing evidence, we are capable of determining whether the prior art references render obvious the challenged claims without being confused, misled or prejudiced by Dr. Fox’s testimony.” slip op. at 32
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Claim 21 recites a method of displaying information about a network, which includes a determination regarding hyperjump data. As explained in the ’571 Patent specification, exemplary hyperjump data includes hyperjump links, which connect web pages, web sites, and documents on the web. Ex. 1001, 48:37–39. The specification of the ’571 Patent states that a link is a “relationship between two nodes.” Id. at 13:5–6. The ’571 Patent specification continues, “[a] link [] can be represented by a vector or an entry on a table and contain information for example, a from-node identification [] (ID), a to-node ID [], a link type [], and a weight.” Id. at 13:9–12. As described in the ’571 Patent specification, a link is represented in data stored in a computer. We, therefore, construe “cluster links” in light of the specification of the ’571 Patent to mean relationships, which are represented in data stored in a computer and are used for grouping interrelated nodes. 4. “indirect relationships” and “indirect reference” The term “indirect relationships” is recited in claim 12 and the term “indirect reference” is recited in claim 22. As discussed above, the terms “link” and “relationship” are used interchangeably in the ’571 Patent specification. For the reasons discussed above, therefore, we construe “indirect relationships” to mean indirect relationships that are represented in data stored in a computer. For these same reasons, we construct “indirect reference” to mean an indirect reference that is represented in data stored in a computer.” slip op. at 9
Patent outcomesUS 6,233,571 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,233,571
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.