• Opower Inc. v. Cleantech Business Solutions, LLCAdverse judgment
  PTAB · Nov 25, 2015 · CBM2014-00155 · APJ Karl D Easthom · CBM · Adverse judgment

  The Board entered adverse judgment against Patent Owner on claims 1–16 after Patent Owner disclaimed all claims in the trial.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Here, Patent Owner has disclaimed, under 37 C.F.R. § 1.321, claims 1–16, all claims involved in this trial. Paper 28. The statutory disclaimer constitutes a request for entry of adverse judgment.1 III. CONCLUSION Entry of judgment against Patent Owner with respect to claims 1–16 of the ’245 patent is appropriate.” slip op. at 2

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied

    “1 During a telephone conference on November 17, 2015, which included counsel for both parties and the panel, counsel for Petitioner stated he did not object to the request for adverse judgment, but requested that the panel issue with this judgment findings of fact and legal determinations arising from papers of record. Petitioner expressed a concern over a potential for duplicated efforts in ongoing reissue proceedings involving the ’245 patent. We exercise our discretion and decline the request to supplement the record. See 37 C.F.R. § 42.73(d) (3) (i) (precluding Patent Owner from obtaining claims that are not “patentably distinct from a finally refused or canceled claim”).” slip op. at 3

  None
  Patents in suitUS 8,489,245
• L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentable
  PTAB · Nov 23, 2015 · IPR2014-00836 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–5 and 8 are unpatentable as obvious over the cited combinations of the EFA Manual, Thomas, and, where applicable, Greene or Brigham.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “term “anomaly” is “deviation from the normal or common order, form, or rule.” Dec. on Inst. 7 (citing THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, 54 (1975)); Ex. 3001, 54. The examples provided in the ’856 patent for identifying a voltage anomaly are consistent with this definition. Namely, a spike in the electric field or an increase in the electric field above a threshold would indicate a deviation from the normal order. Ex. 1002, col. 17, ll. 12–19, col. 18, ll. 8–9, col. 19, ll. 62–67, col. 21, ll. 4– 7. Therefore, we determined that the broadest reasonable interpretation of the phrase “identify the voltage anomaly in the electric field” in claim 1 of the ’856 patent is “identify a deviation from a normal voltage in the electric field, including by identifying an electric field that exceeds a threshold, or that rises and peaks above a threshold or background and then falls.” Dec. on Inst. 7. We see no reason now to deviate from that construction.” slip op. at 8

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

    “obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 24–27, 42–45; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1022 ¶¶ 51–55, 65–67. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 52–53; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1022 ¶¶ 104–106; see KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Brigham with the EFA Manual and Thomas because the EFA Manual teaches using the fast Fourier transform to produce electric field strengths, and, thus, one of ordinary skill in the art would have looked to other references, such as Brigham, for well-known ways to implement the fast Fourier transform. Pet. 54–56; Ex. 1004 § 6.3, Annex C; Ex. 1008, 83–87; Ex. 1022 ¶¶ 109–110; see KSR, 550 U.S. at 416.” slip op. at 16

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

    “c. Teaching Away Patent Owner argues that the EFA Manual teaches away from the combination proposed by Petitioner. PO Resp. 27–30. In particular, Patent Owner argues that the EFA Manual teaches that the electric field sensor disclosed therein must be mounted on a tripod. Id. at 29. According to Patent Owner, requiring the sensor to be mounted on a tripod indicates that the sensor cannot be used while in motion. Id. at 28–30. Patent Owner’s argument is not persuasive. Although the EFA Manual requires that the sensor be “mounted on a tripod and insulated from it” (Ex. 1004 § 3.4.1), Patent Owner does not identify any teaching in the EFA Manual that prohibits the sensor from being used while in motion (Ex. 1024, 108:20– 109:3). Further, as discussed above, Thomas teaches that an electric field sensor can be mounted to an electrically non-conductive support structure on a motor vehicle and used while the vehicle is in motion. Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. Thus, one of ordinary skill in the art reading the EFA Manual and Thomas together would understand that the sensor taught in the EFA Manual could be mounted securely to and insulated from a support structure on a motor vehicle, which would satisfy the conditions for use set forth in the EFA Manual. See Ex. 1022 ¶¶ 52–53.” slip op. at 22

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “could only identify voltage anomalies by making direct contact with each potential hazard using a handheld device. PO Resp. 36. According to Patent Owner, this manual scanning did not scale effectively to large cities because of the geographic footprint and large number of potential hazards. Id. at 36– 37. Patent Owner contends that this demonstrates a long-felt but unmet need “for efficient, scalable, stray voltage detection capable of serving as an alternative to manual testing.” Id. at 37. Although Patent Owner explains generally why the technology existing prior to the ’856 patent may not have been ideal for large cities, that alone does not indicate that utility companies actually had a long-felt but unmet need for a more efficient alternative, rather than, for example, just a lack of interest in the technology.” slip op. at 23

  Patent outcomesUS 8,536,856 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,536,856
• L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentable
  PTAB · Nov 23, 2015 · IPR2014-00839 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–5 and 8 are unpatentable as obvious over the EFA Manual and Thomas, with Greene also applied to claim 3.

  RulingsFinal written decision

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

    “anomaly in the electric field” in claim 1 of the ’864 patent to mean “detect an electric field that rises and peaks above a threshold or background and then falls.” PO Resp. 53. Patent Owner argues that the claims and written description of the ’864 patent indicate that a voltage anomaly is identified as the sensor moves past the anomaly. Id. at 53–55. Therefore, according to Patent Owner, an anomaly is represented by a rise in the electric field as the sensor moves closer to the anomaly, a peak when the sensor is near the anomaly, and a fall when the sensor moves past the anomaly. Id. In the Decision on Institution, we determined that Patent Owner’s proposed construction would improperly limit the claims to just one of the examples disclosed in the Specification, and we see no reason now to deviate from that determination. Dec. on Inst. 6 (citing Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007)). Specifically, the ’864 patent states that an anomaly can be “represented for example by a rise-peak-fall in the alert pitch, a corresponding visual spike in raw voltage plot 1206, a high signal strength value in signal strength display field 1322 or a combination thereof.” Ex. 1001, col. 19, ll. 18–23 (emphasis added). Thus, the ’864 patent indicates that a rise-peak-fall in the audible alert or a visual spike are just examples of ways to identify an anomaly. The ’864 patent states that a voltage anomaly also can be identified by an electric field that exceeds a threshold or a high signal strength value. Id. at col. 16, ll. 36–43, col. 17, ll. 31–32, col. 19, ll. 18–23, col. 20, ll. 27–30.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “2. mobile Patent Owner proposes construing the term “mobile” in claim 1 of the ’864 patent to mean “designed to operate while in motion.” Prelim. Resp. 5; PO Resp. 57. Patent Owner argues that the written description of the ’864 patent supports this construction because it states that “the sensor system 100 may detect an energized manhole cover . . . when moving at speeds of up to 10 mph.” Prelim. Resp. 6; Ex. 1001, col. 10, ll. 42–48. We agree that the written description indicates that a mobile apparatus operates while in motion, but Patent Owner does not identify specific evidence showing that a mobile apparatus must be “designed” to operate in motion. Prelim. Resp. 5– 7; PO Resp. 57. Therefore, we determine that the broadest reasonable interpretation of the term “mobile apparatus” in claim 1 of the ’864 patent is “apparatus that operates while in motion.”” slip op. at 8

  • Skill levelOther

    “a. Level of Ordinary Skill in the Art Patent Owner argues that a person of ordinary skill in the art would not have combined the cited teachings of the EFA Manual and Thomas because it was not known at the time of filing of the ’864 patent that an electric field sensor could be used to identify a stray voltage anomaly. PO Resp. 13–16. Patent Owner’s argument is not persuasive. Patent Owner’s declarant, Dr. Fugate, admits that a person of ordinary skill in the art at the time of filing of the ’864 patent would have known that an electric field sensor could be used to identify a stray voltage anomaly. Ex. 1024, 126:10– 127:1; Tr. 61:4–7. Further, as discussed above, Thomas teaches that electric current flowing through an object generates an anomaly in an electric field, and, thus, it would have been obvious to one of ordinary skill in the art reading Thomas that an electric field sensor could be used to identify a stray voltage anomaly. See supra Section II.B.2; Pet. 38–41; Ex. 1005, col. 7, ll. 6–10; Ex. 1021 ¶¶ 75, 76. Patent Owner also argues that “Petitioners’ sole reason for combining the EFA Manual and Thomas relies solely on the false premise that a skilled artisan would have known about the private Sarnoff experiments on stray voltage detection using electric fields,” but “Petitioners failed to show that the skilled artisan would have known about this work.” PO Resp. 16. Patent Owner’s argument is not persuasive. Thomas teaches mounting an electric field sensor on a motor vehicle and using the sensor to identify anomalies in electric fields while the vehicle is in motion. Ex. 1005, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. As such, Thomas itself would have provided one of ordinary skill in the art with a reason to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas and use the sensor to identify anomalies in electric fields while the vehicle is in motion. Pet. 24– 28, 38–41; Ex. 1021 ¶¶ 49–53, 55–58. Therefore, Petitioner’s reason for combining the cited teachings of the EFA Manual and Thomas is not dependent on whether one of ordinary skill in the art would have known about any private Sarnoff experiments.” slip op. at 16

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

    “4. Reasons for Combinations Petitioner identifies evidence indicating that it would have been obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 24–28, 38–41; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1021 ¶¶ 49–53, 55–58. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 48–49; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1021 ¶¶ 89–91; see KSR, 550 U.S. at 416.” slip op. at 15

  Patent outcomesUS 8,598,864 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,598,864
• L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentable
  PTAB · Nov 23, 2015 · IPR2014-00834 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–5 and 8 are unpatentable as obvious under § 103(a) over the specified combinations of the EFA Manual, Thomas, and, for dependent claims, Greene or Brigham.

  RulingsFinal written decision

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

    “proposed construction is not the broadest reasonable interpretation, and we see no reason now to deviate from that determination. Dec. on Inst. 5–6. Specifically, the word “unexpected” in Petitioner’s proposed construction is not found anywhere in the claims or the written description of the ’274 patent, and we are not persuaded that the word “unexpected” is synonymous with “undesirable” or “dangerous.” Further, Petitioner does not explain how any of the cited portions of the prosecution history show that the “voltage anomaly” recited in claim 1 is an unexpected voltage. Pet. 15–17.” slip op. at 6

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

    “obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 25–28, 43–45; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1023 ¶¶ 51–55, 64–66. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 53–54; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1023 ¶¶ 100–102; see KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Brigham with the EFA Manual and Thomas because the EFA Manual teaches using the fast Fourier transform to produce electric field strengths, and, thus, one of ordinary skill in the art would have looked to other references, such as Brigham, for well-known ways to implement the fast Fourier transform. Pet. 55–57; Ex. 1004 § 6.3, Annex C; Ex. 1008, 83–87; Ex. 1023 ¶¶ 105–106; see KSR, 550 U.S. at 416.” slip op. at 16

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

    “c. Teaching Away Patent Owner argues that the EFA Manual teaches away from the combination proposed by Petitioner. PO Resp. 27–30. In particular, Patent Owner argues that the EFA Manual teaches that the electric field sensor disclosed therein must be mounted on a tripod. Id. at 29. According to Patent Owner, requiring the sensor to be mounted on a tripod indicates that the sensor cannot be used while in motion. Id. at 28–30. Patent Owner’s argument is not persuasive. Although the EFA Manual requires that the sensor be “mounted on a tripod and insulated from it” (Ex. 1004 § 3.4.1), Patent Owner does not identify any teaching in the EFA Manual that prohibits the sensor from being used while in motion (Ex. 1024, 108:20– 109:3). Further, as discussed above, Thomas teaches that an electric field sensor can be mounted to an electrically non-conductive support structure on a motor vehicle and used while the vehicle is in motion. Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. Thus, one of ordinary skill in the art reading the EFA Manual and Thomas together would understand that the sensor taught in the EFA Manual could be mounted securely to and insulated from a support structure on a motor vehicle, which would satisfy the conditions for use set forth in the EFA Manual. See Ex. 1023 ¶¶ 52–53.” slip op. at 22

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “could only identify voltage anomalies by making direct contact with each potential hazard using a handheld device. PO Resp. 36. According to Patent Owner, this manual scanning did not scale effectively to large cities because of the geographic footprint and large number of potential hazards. Id. at 36– 37. Patent Owner contends that this demonstrates a long-felt but unmet need “for efficient, scalable, stray voltage detection capable of serving as an alternative to manual testing.” Id. at 37. Although Patent Owner explains generally why the technology existing prior to the ’274 patent may not have been ideal for large cities, that alone does not indicate that utility companies actually had a long-felt but unmet need for a more efficient alternative, rather than, for example, just a lack of interest in the technology.” slip op. at 23

  Patent outcomesUS 8,482,274 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,482,274
• Samsung Display Co., Ltd. / Funai Electric Co., Ltd. et al. v. Gold Charm Ltd.Institution denied
  PTAB · Nov 13, 2015 · IPR2015-01452 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution on claims 1–14 because the disputed claim language lacked clarity, preventing determination of claim scope for the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “As explained at the outset, determining if the prior art renders the claims obvious necessarily requires resolving facts and determining the scope of the claims. See BlackBerry, Case IPR2013-00036 (Paper 65, 19– 20). Based on the foregoing discussion, “the prior art grounds of unpatentability must fall, pro forma, because they [would be] based on speculative assumption as to the meaning of the claims.” See id. at 20 (citing In re Steele, 305 F.2d at 862–63). Therefore, we decline to institute an inter partes review of claims 1–14.” slip op. at 13

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

    “The agreed understanding between the parties about the location of the channel underlies and highlights a clarity problem, because the challenged independent claims specifically recite contrary structure: “each [TFT] having a channel in an ohmic contact layer and a semiconductor layer.” Claim 1 (emphasis added); accord claims 9, 13 (similar recitation). Recognizing the problem with this phrase, both parties essentially propose rewriting it: Petitioner contends that “the only reasonable interpretation of the phrase ‘channel in an ohmic contact layer and a semiconductor layer’ is . . . ‘an ohmic contact layer and a channel in a semiconductor layer.’” Pet. 13. On the other hand, Patent Owner contends “an artisan would clearly understand that ‘a channel in an ohmic contact layer[]” simply means “a region formed by the ohmic contact layer and the semiconductor layer in a channel etching process.” Prelim. Resp. 25 (emphases added) (arguing also that “the channel would not be formed if the central portion of the ohmic contact layer was not etched away”). Neither party cites proper legal authority for what amounts to rewriting the claim phrase in one of manners proposed. Both proposals cannot be correct, and therefore point to an effective material change, as the parties disagree over the claim construction. See Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353 (Fed. Cir. 2009) (courts can correct obvious typographical errors “if the correction is not subject to reasonable debate . . . and the prosecution history does not suggest a different interpretation”). Further exemplifying the materiality of the disputed construction, Patent Owner relies on its construction and argues” slip op. at 9

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “E. Remaining Contentions The above determination makes it unnecessary to resolve any other disputes, including Patent Owner’s assertion that Petitioner failed to list all the real parties-in-interest. See Prelim. Resp. 5–15.” slip op. at 13

  Claim constructioncites Graham
  Patents in suitUS 7,460,190
• Apple Inc. v. Contentguard Holdings, Inc.Rehearing denied
  PTAB · Nov 2, 2015 · IPR2015-00448 · APJ Karl D Easthom · IPR · Rehearing

  The Board denied rehearing and left in place the denial of institution on claims 1–18 because Apple did not show an abuse of discretion in the Board’s merits decision.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “an abuse of discretion.” 37 C.F.R. § 42.71(c). “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.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “proposed modifications were, how they were to be made, and why a person of ordinary skill would have made them. See Dec. 11–21. Petitioner’s Rehearing Request—characterizing the modifications as “a single change” as noted—neither clarifies the Petition nor shows that the Board overlooked or misapprehended a matter. Petitioner correctly notes that the need for extensive modification, alone, does not necessarily doom a proposed ground of obviousness, see Reh’g Req. 5–6; however, extensive modification was just one of many problems obfuscating the asserted ground. The Decision explains that combined with the many other deficiencies of the Petition, Petitioner had not shown a reasonable likelihood of prevailing on any of the challenged claims. See Dec. 11–21 (discussing the Petition’s vague, nested string citations to broad swaths of references; clarity problems created by pervasive use of internal cross-references and nested citations; improper incorporation by reference of the Sherman Declaration to support conclusory statements, thin analysis, and inadequate reasoning; and lack of sufficient information to enable a proper Graham analysis).” slip op. at 3

  None
  Patents in suitUS 8,370,956
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCRehearing denied
  PTAB · Sep 29, 2015 · IPR2014-01532 · APJ Trenton A Ward · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing request, leaving the institution decision unchanged, because it found no overlooked evidence or argument on claim construction.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A request for rehearing “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.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id. When rehearing a decision on a petition, a panel will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • Prior constructionPrior construction not adoptedDecided for patent owner

    “Contrary to Patent Owner’s arguments, the prior decisions of other panels of the Board appear to have relied upon characterizations of the invention and the specification provided by Patent Owner. See e.g., Ex. 2001, 67–68, 91. Those decisions did not rely on the same respective part of the lengthy specification relied upon here, as described in the next paragraph. See id.; see also Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014) (Although prosecution history serves as intrinsic evidence, the “court also observes that the PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.”) We previously considered the arguments made by Patent Owner regarding the construction of “decrypting,” and, as stated in the Decision, we determined Patent Owner failed to establish a “significant distinction between encryption/decryption and scrambling/unscrambling.” Dec. on Inst., 25. More particularly, we determined that “the ’304 patent Specification expressly equates the two by stating that ‘decryptors, 107, 224, and 231, may be conventional descramblers, well, known in the art, that descramble analog television transmissions.’” Id. (quoting Ex. 1004, 160:34–37) (emphasis added). Thus, Patent Owner fails to establish that the Board misapprehended and/or overlooked any evidence or argument regarding the construction of “decrypting,” and merely argues that the Board should have been more persuaded by the evidence in the record. See Req. Reh’g. 3–9.” slip op. at 3

  Claim construction
  Patents in suitUS 7,801,304
• Mastercard International Incorporated v. John D’AgostinoAll claims unpatentable
  PTAB · Aug 31, 2015 · IPR2014-00544 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1–30 are unpatentable: claims 1–15 and 22–30 as anticipated by Cohen, and claims 16–21 as obvious over Cohen and Musmanno.

  RulingsFinal written decision

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

    “card’s use to a type of store, a type of charge, or to a group of stores does not meet the “single merchant” limitation. PO Resp. 21–25. Patent Owner specifically argues that Cohen “cannot meet the disputed claim limitation, because the claim limitation requires a payment category that limits transactions to only a [sic] one merchant.” Id. at 23 (citing Ex. 2007 ¶¶ 39, 40). Patent Owner also argues that Cohen’s disclosure of a group of stores does not meet this limitation because the “phrase ‘group of stores’ itself means more than one store.’” Id. at 24–25. Patent Owner further argues that Cohen’s particular chain of stores disclosure fails to meet the “single merchant” limitation. Id. at 25–26. We disagree with Patent Owner. As discussed above, we construe the “single merchant” limitation as limiting purchase to a single merchant. See supra Section I.E.3. We further agree with Patent Owner’s broad construction of “merchant” to mean “someone who buys and sells goods.” Supra Section I.E.3. Accordingly, under the broadest reasonable construction, the “single merchant” limitation includes limiting transactions to any chain of stores or group of stores that is identified as a single merchant.” slip op. at 15

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

    “claims 16–21. Id. Petitioner further provides an articulated reasoning with a rational underpinning to support its conclusion of obviousness. Id. For example, Petitioner contends that Cohen discloses claim 1, as discussed above, and further discloses that Cohen’s transaction code can be used repeatedly for a range of dates or a series of dates, as recited by claim 16. Id. at 33 (citing Ex. 1004, 7:44–62). Petitioner further argues that Musmanno discloses that a predetermined amount from a master account is transferred to at least two subaccounts at a fixed time interval. Id. (citing Ex. 1006, 5:53–59). Petitioner also argues that applying the repeating transaction steps of Musmanno to the transaction code generation steps of Cohen would not change the respective functions of each step and such a combination would have yielded the predictable result of the ability to use Cohen’s transaction code for repeating transactions for a fixed amount at fixed intervals. Id. at 32–33 (citing Ex. 1008 ¶ 64). Patent Owner argues that claims 16–21 depend from independent claim 1, and, therefore, the combination of Cohen and Musmanno fails to disclose dependent claims 16–21 for the same reasons discussed above with regard to claim 1. PO Resp. 33. We are not persuaded by Patent Owner’s arguments in support of claim 1 for the reasons discussed above, and, therefore, are not persuaded that claims 16–21 would not have been obvious for the same reasons. See supra Section II.A.3. We have reviewed the Petition and supporting evidence and find that Petitioner has shown that the combination of Cohen and Musmanno meets all of the limitations of claims 16–21. See Pet. 31–36. We further agree with the rationale for this combination of references articulated by Petitioner. See id. (citing Ex. 1008 ¶ 64).” slip op. at 20

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded that we should exclude Mr. Gussin’s testimony. Mr. Gussin’s extensive experience and education certainly qualify him to provide expert testimony in general hardware and software technologies. See Ex. 2007, Appendix A. To the extent Mr. Gussin is more familiar with general hardware and software technologies and less familiar with “payment card payment technologies,” we weigh Mr. Gussin’s testimony accordingly. See 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.”). Accordingly, Petitioner’s argument goes more to the weight we should accord Mr. Gussin’s testimony, rather than its admissibility, and it is within our discretion to assign the appropriate weight to Mr. Gussin’s testimony.” slip op. at 22

  • Expert testimonyPatent owner expert creditedPatent owner expert discountedOther

    “We are not persuaded that we should exclude Mr. Gussin’s testimony. Mr. Gussin’s extensive experience and education certainly qualify him to provide expert testimony in general hardware and software technologies. See Ex. 2007, Appendix A. To the extent Mr. Gussin is more familiar with general hardware and software technologies and less familiar with “payment card payment technologies,” we weigh Mr. Gussin’s testimony accordingly. See 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.”). Accordingly, Petitioner’s argument goes more to the weight we should accord Mr. Gussin’s testimony, rather than its admissibility, and it is within our discretion to assign the appropriate weight to Mr. Gussin’s testimony.” slip op. at 22

  Patent outcomesUS 7,840,486 unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 7,840,486
• Mastercard International Incorporated v. John D’AgostinoAll claims unpatentable
  PTAB · Aug 31, 2015 · IPR2014-00543 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1–38 are unpatentable: claims 1–10, 15–25, 27–33, and 35–38 as anticipated by Cohen; claims 11–14, 26, and 34 as obvious over Cohen and Musmanno.

  RulingsFinal written decision

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

    “Patent Owner further argues that the plain and ordinary meaning of “merchant” is “someone who buys and sells goods.” PO Resp. 19–22 (citing Ex. 2007 ¶¶ 19, 24; Ex. 2005, 3). We agree with Patent Owner. We note that this broad definition for the term “merchant” is not limited by any business association or corporate relationship such that specific stores within a chain of stores are not individually merchants.” slip op. at 12

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

    “card’s use to a type of store, a type of charge, or to a group of stores does not meet the “single merchant” limitation. PO Resp. 28–31. Patent Owner specifically argues that these disclosures by Cohen “cannot meet the disputed claim limitation, because the claim limitation requires a payment category that limits transactions to a [sic] one merchant.” Id. at 29 (citing Ex. 2007 ¶¶ 46, 47). Patent Owner also argues that Cohen’s disclosure of a group of stores does not meet this limitation because the “phrase ‘group of stores’ itself means more than one merchant.’” Id. at 30. Patent Owner further argues that Cohen’s particular chain of stores disclosure fails to meet the “single merchant limitation.” Id. at 31–32. We disagree with Patent Owner. As discussed above, we construe the “single merchant” limitation as limiting transactions to a single merchant. See supra Section I.E.3. We further agree with Patent Owner’s broad construction of “merchant” to mean “someone who buys and sells goods.” Supra Section I.E.3. Accordingly, under the broadest reasonable construction, the “single merchant” limitation includes limiting transactions to any chain of stores or group of stores that is identified as a single merchant. Petitioner contends that Cohen discloses a card that can be customized such that it can be valid only for purchases in a particular store or a particular chain of stores, such as a particular restaurant or a particular chain of restaurants. Pet. Reply 6 (citing Ex. 1004, 8:25–39); Pet. 27 (citing Ex. 1004, 8:25–39); Ex. 1004, 8:25–39. As discussed above, the “particular merchant” is “the merchant with whom the customer is transacting,” and the “single merchant” includes the “particular merchant” in a broad manner without identifying the particular merchant. See supra Section I.E.3. The relationship between a chain of stores and a particular store satisfies the relationship between the “single merchant” and the “particular merchant.” For example, the “single merchant” could be Target or McDonald’s chain of stores, where a “particular merchant” could be a specific Target or McDonald’s store, e.g., at a particular location or online. See PO Resp. 31– 32; Tr. 33:19–37:2. Patent Owner argues that in such a scenario Target or McDonald’s is both the “single merchant” limitation and the “particular merchant” (Tr. 33:1–37:5), however, Patent Owner has not directed us to evidence or provided a rationale to rebut our construction that the chain of stores is the “single merchant” and the specific store in the chain of restaurants is the “particular merchant.” Accordingly, we find that Cohen discloses the recited “single merchant” limitation.” slip op. at 17

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

    “obvious over the combination of Cohen and Musmanno. Id. at 32–36. Petitioner provides a detailed explanation, including citations to Cohen and Musmanno, as to how the combination of Cohen and Musmanno discloses each limitation of claims 11–14, 26, and 34. Id. Petitioner further provides an articulated reasoning with a rational underpinning to support its conclusion of obviousness. Id. For example, Petitioner contends that Cohen discloses claim 1, as discussed above, and further discloses that Cohen’s transaction code can be used repeatedly for a range of dates or a series of dates, as recited by claim 11. Id. at 34 (citing Ex. 1004, 7:44–62). Petitioner further argues that Musmanno discloses that a predetermined amount from a master account is transferred to at least two subaccounts at a fixed time interval. Id. (citing Ex. 1006, 5:53–59). Petitioner also argues that applying the repeating transaction steps of Musmanno to the transaction code generation steps of Cohen would not change the respective functions of each step and such a combination would have yielded the predictable result of the ability to use Cohen’s transaction code for repeating transactions for a fixed amount at fixed intervals. Id. at 33–34 (citing Ex. 1008 ¶ 69).” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded that we should exclude Mr. Gussin’s testimony. Mr. Gussin’s extensive experience and education certainly qualify him to provide expert testimony in general hardware and software technologies. See Ex. 2007, Appendix A. To the extent Mr. Gussin is more familiar with general hardware and software technologies and less familiar with “payment card payment technologies,” we weigh Mr. Gussin’s testimony accordingly. See 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.”). Accordingly, Petitioner’s argument goes more to the weight we should accord Mr. Gussin’s testimony, rather than its admissibility, and it is within our discretion to assign the appropriate weight to Mr. Gussin’s testimony. Petitioner further moves to exclude Mr. Gussin’s declaration because it relies on claim constructions inconsistent with our Decision to Institute. Mot. 5–6; Reply to Opp. to Mot. 4–5. Patent Owner responds that “[n]othing requires Mr. Gussin’s testimony to be consistent with or constrained by the Board’s preliminary claim constructions.” Opp. to Mot. 6. We agree with Patent Owner. Our preliminary Decision is not a final determination. See Dec. 20. Accordingly, Patent Owner is permitted to provide evidence towards claim construction, regardless of our initial determinations. For the reasons discussed above, we are not persuaded to exclude Mr. Gussin’s testimony. Petitioner’s Motion to Exclude is denied.” slip op. at 24

  Patent outcomesUS 8,036,988 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,036,988
• Apple Inc. v. Virnetx Inc.Some claims unpatentable
  PTAB · Aug 24, 2015 · IPR2014-00482 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1, 4, 6, 10, 13–15, 17, 20, 22, 26, 29–31, 33, 35, and 37 are unpatentable; claims 12 and 28 were not shown unpatentable.

  RulingsFinal written decision

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

    “We previously determined that, under a broad but reasonable construction, one of skill in the art would have understood the term “virtual private network communication link,” in light of the Specification, to include “a transmission path between two devices that restricts access to data, addresses, or other information on the path, generally using obfuscation methods to hide information on the path, including, but not limited to, one or more of authentication, encryption, or address hopping.” Dec. on Inst. 6–7. 1 Patent Owner disputes this interpretation and argues that the term “virtual private network communication link” must be “a communication path between computers in a virtual private network” (PO Resp. 8), “requir[es] computers within a VPN to communicate directly” (PO Resp. 10), and requires a “network of computers,” which, according to Patent Owner must be “more than a ‘path between two devices.’” PO Resp. 14. We decline to modify our previous construction of this term in the manner suggested by Patent Owner because such a modification is immaterial in this proceeding for reasons set forth below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed to the extent necessary to resolve the case).” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “understood that a “secure computer network address” must be “associated with a computer capable of virtual private network communications” because a claim recites “sending an access request message to the secure computer network address using a virtual private network communication link.” PO Resp. 16. We agree with Patent Owner that claim 1, for example, recites “sending an access request message to the secure computer network address using a virtual private network communication link.” However, Patent Owner does not explain sufficiently why an explicitly recited claim limitation must be incorporated into the construction of an associated claim term. Indeed, if one of ordinary skill in the art would have understood that all secure computer network addresses must be associated with a computer capable of VPN communications and that any computer network address that is associated with computers that are incapable of VPN communications would be understood by one of ordinary skill in the art not to be a “secure computer network address” (even if authorization for access is required), then any such recited claim limitation would be superfluous. Patent Owner also argues that “VirnetX’s proposed construction has been agreed to by its litigation adversaries and has been adopted by a district court.” PO Resp. 17. Even if Patent Owner’s proposed construction “has been agreed to by” parties in litigation and the district court, Patent Owner does not assert or demonstrate persuasively that one of ordinary skill in the art would have broadly but reasonably construed the term “secure computer network address” in light of the Specification to require association with a computer capable of virtual private network communications. In any event, Patent Owner does not appear to contend that the cited references fail to disclose a secure computer network address that is associated with a computer capable of VPN communications and, therefore, does not demonstrate sufficiently that the construction of “secure computer network address” will bear on the outcome of the issues in this inter partes review. We decline to modify our construction of this term.” slip op. at 5

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “computer network address” of “the server-side proxy” (and not the “host”). PO Resp. 32 (emphasis omitted). In other words, Patent Owner argues that, in contrast to claim 1, which requires sending a query message requesting an address and receiving a response message containing the address requested in the query message, Kiuchi discloses sending a query message requesting an address of “the host” but receiving a response message containing an address of “the server-side proxy,” rather than “the host.” Based on this presumption that “the host” of Kiuchi differs from the “server-side proxy” of Kiuchi, Patent Owner argues that Kiuchi fails to disclose the claimed invention and also that “the Board has exceeded its statutory authority by instituting in part on rationales that were not before it.” PO Resp. 30. However, Patent Owner does not explain sufficiently a difference between “the host” and the “server-side proxy” of Kiuchi. Kiuchi discloses that a client-side proxy “asks the C-HTTP name server whether it can communicate with the host” and that, in response, the C-HTTP name server examines “the requested server-side proxy” and responds by sending the IP address of the server-side proxy. Ex. 1004, 65 (emphasis added). In other words, Kiuchi discloses that “the host” that is requested is the requested “server-side proxy.”” slip op. at 13

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

    “of ordinary skill in the art would have combined Kiuchi with the other references.” PO Resp. 3. Petitioner provides reasons with supporting factual underpinnings to support the conclusion that the combination of Kiuchi and Bhatti (and/or Tavs) would have been obvious to one of ordinary skill in the art. Pet. 34–35, 38–39. For example, Petitioner states that one of ordinary skill in the art would implement Kiuchi’s user agent such that the user agent sends an access request for content stored on the origin server, in the same manner that Bhatti describes sending an access request from a user terminal for content stored [on] a content server. Pet. 38. Petitioner also states that “[i]t would have been obvious to one of ordinary skill at the time of the ’180 patent to modify the client-side proxy and server-side proxy described by Kiuchi to support the service-level categorization and differentiation described by Tavs in order to give priority to business-relevant traffic during peak network congestion.” Pet. 34. Patent Owner does not dispute the reasons provided by Petitioner as to why it would have been obvious to one of ordinary skill in the art to have combined teachings of Kiuchi and Bhatti (and/or Tavs) but argues that this obviousness ground “is critically flawed because the Petition relies solely on missing expert testimony for its rationale for combining” the references. PO Resp. 54, 56. However, Patent Owner does not explain why Petitioner is required to provide expert testimony in support of a proposed ground of unpatentability. Nor does Patent Owner explain the supposed flaws in the rationale provided by Petitioner.” slip op. at 21

  Patent outcomesUS 7,188,180 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,188,180

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.