• Apple Inc. v. Qualcomm IncorporatedNo claims unpatentable
  PTAB · Jan 22, 2020 · IPR2018-01252 · APJ Scott B Howard · IPR · Final written decision

  Apple did not prove claims 1–6 and 8–20 unpatentable as obvious over Jin and Elias because it failed to show Jin teaches moving a card with directional contact.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “art include (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “[W]e need only construe those claim limitations ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Because the parties did not request the construction of any limitation and no express constructions are necessary to resolve a controversy, we do not construe any of the limitations. slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “prima facie case of unpatentability.” Trial Practice Guide Update (August 2018), 14, available at https://www.uspto.gov/sites/default/files/documents/ 2018_Revised_Trial_Practice_Guide.pdf. As the Federal Circuit has explained, [i]t is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify “with particularity” the “evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). “All arguments for the relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition or patent owner response.” 37 C.F.R. § 42.23(b). Once the Board identifies new issues presented for the first time in reply, neither this court nor the Board must parse the reply brief to determine which, if any, parts of that brief are responsive and which are improper. As the Board noted, “it will not attempt to sort proper from improper portions of the reply.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016); see also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (quoting same). Based on that standard, the Federal Circuit determined that the PTAB properly refused to consider a new theory raised for the first time in a reply brief:” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “preliminary,” “based on the evidentiary record developed thus far,” and that “[o]ur final decision will be based on the record as fully developed during trial.” Id. at 32. We further advised the parties that we were not “determin[ing] whether an individual asserted fact is indisputable or whether a preponderance of the evidence supports Petitioner.” Id. at 31. Having conducted the trial, for the reasons discussed below, our preliminary finding is not supported by the entirety of the record. Instead, we agree with Patent Owner that Jin does not teach or suggest “directional contact of moving the [selected] card along . . . the touch-sensitive display screen” and agree that the combination of Jin and Elias does not teach or suggest “dismissing the selected first card or second card from the touch-sensitive display screen in the second direction so that the corresponding first application or second application is closed” as recited in claim 1. Specifically, Petitioner has not sufficiently shown that Jin teaches or suggests that the processor responds to directional contact moving the selected card in the second direction on the display screen. Jin’s Figures 9C shows a finger moving along the screen—directional contact. Ex. 1005, Fig. 9C. However, Jin’s Figure 9C does not illustrate the card moving along with the finger. Id. Rather, Jin’s Figure 9E simply shows the cards in a new position without describing what happened on the display while the location of the cards were changed. See id. at Fig. 9E. Accordingly, Petitioner has not proven that Jin teaches directional contact moving the selected card in the second direction on the display screen.” slip op. at 29

  Patent outcomesUS 8,683,362 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,683,362
• Apple Inc. v. Qualcomm IncorporatedNo claims unpatentable
  PTAB · Jan 2, 2020 · IPR2018-01279 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–14 and 16–18 were not shown unpatentable because the asserted combinations did not teach composing a message after the incoming call; the contingent motion to amend was dismissed as moot.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “In our Institution Decision, we adopted Petitioner’s formulation. Inst. Dec. 17. Patent Owner does not challenge Petitioner’s formulation. See PO Resp. 12–13; Ex. 2004 ¶ 57 (Jeffay Decl.) (“[F]or the purposes of this declaration, I have applied Petitioner’s proposed level of skill.”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill, except that we delete the qualifier “or more” to eliminate vagueness as to the amount of practical experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the the art would have had either (1) a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, computer science, or an equivalent field (or a similar technical Master’s Degree, or higher degree) with a concentration in wireless communication and networking systems or (2) a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or computer science and having two years of experience in wireless communication and networking systems. Moreover, additional education in a relevant field, such as computer engineering, or electrical engineering, or industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” slip op. at 7

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

    “recited in claim 1 means generating a message and does not encompass using pre-composed messages. That construction is consistent with the language recited in the claims, the ’037 patent, and the use of “composing” in a related patent. We begin with the words of claim 1. Claim 1 recites “in response to receiving an incoming call, prompting a user of the first computing device to incoming call by composing, while not answering the incoming call, a message to a user of the second computing device.” Ex. 1001, 10:7–11. Based on the ordinary meaning of the claim language, the claim requires prompting a user to enter user input and that the entered user input “instructs the first computing device to handle the incoming call by composing . . . a message.” See id. That is, it is the user input—which itself is in response to an incoming call—which causes the composing to take place. Thus, the language of the claim requires that the composing takes place after the incoming call is received and the user input is entered. Therefore, the language of the claim precludes using content composed prior to the call and user input, i.e., a precomposed message. See Ex. 2004 ¶ 73 (Jeffay Decl.). This construction is also consistent with the written description of the ’037 patent. The ’037 patent describes two different ways of generating messages. First, the ’037 patent describes how a device may be configured to respond to all incoming calls with a precomposed message, such as “on vacation.” Ex. 1001, 5:18–23. However, claim 1 was amended during prosecution to exclude automatically responding with a precomposed message, thus excluding that embodiment from the scope of claim 1. See Ex. 1002, 157 (amendment to claim 1), 165–68 (prosecution history of the ’037 patent) (distinguishing prior art references which automatically responded with a precomposed message); see also Ex. 2004 ¶ 70 (Jeffay Decl.) (“Accordingly, the Applicant amended the claims to distinguish over Brown and clearly disclaimed claim scope corresponding to the embodiments in which an incoming call is automatically responded to with a message.” (citing Ex. 1002, 166–68)). response to a trigger—user input—from the user. See Ex. 1001, 5:24–54, 7:52–8:2, Fig. 4 (step 470 (“address message body”) is after steps 410 (“receive incoming call”) and 435 (“message response?”)). Because the message is generated in response to the user input, it does not exist prior to user input being entered. That is, a precomposed message is not being used.” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Our rules require the Petition to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2) (2017). Additionally, the Petition “must identify . . . [h]ow the construed claim is unpatentable under must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4) (2017). Our rules further provide for a petitioner to file a reply to respond to arguments made in the patent owner’s response. See 37 C.F.R. § 42.23(b) (2019). Petitioner choose neither option to set forth its arguments regarding Mäkelä’s claim 28. We decline Petitioner’s invitation to consider arguments presented in papers outside of the Petition and Petitioner’s Reply. We treat Petitioner’s request that we consider arguments only presented in the Opposition to the Motion to Amend as a request for incorporation by reference. However, our rules prohibit “incorporat[ion] by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3) (2019); see also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (Incorporation “by reference amounts to a self-help increase in the length of the [ ] brief[,]” and “is a pointless imposition on the court’s time. A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”)). Petitioner has not persuasively argued why we should not apply Rule 42.6(a)(3) in these circumstances. See 37 C.F.R. § 42.5(b) (2019) (“The Board may waive or suspend a requirement of parts 1, 41, and 42 and may place conditions on the waiver or suspension.”). Although Petitioner may have intended to make the argument in both Petitioner’s Reply and the Opposition to the Motion to Amend (Tr. 58–59), it did not do so.8” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “With regard to the merits, we agree with Patent Owner that Petitioner has not sufficiently shown how Mäkelä teaches “composing . . . a message” as recited in claim 1. Neither the Petition nor Petitioner’s Reply specifically addresses when the reply message is prepared. See Pet. 16–17; Pet. Reply 14. Moreover, Dr. Mandayam—Petitioner’s expert witness— conceded that the messages in Mäkelä are composed and stored prior to the incoming call being received: Q. So I think just to repeat the question, is there any disclosure in Mäkelä that the message sent by the user in response to an incoming call is anything other than a message previously stored by the user before the incoming call? Yes or no, please. . . . that have been composed ahead -- previously by the user with the ability to choose them. . . . . Q. The modes of response listed in Claim 27, that is a voice message, an e-mail message, a facsimile, and an SMS message in the form of a character string are all limited to precomposed messages. Do you agree with that? . . . THE WITNESS: So the messages have been composed by the user and stored, as we have gone through this already a few times. So that is stored and composed and resides in the device. And the user is making the choice in response to a call to send whichever their preferred option is. And there is some dynamism if you read through the specifications where there are responses you can fine-tune based on the amount of time you want to be not disturbed or the amount of time your meeting is in session. So there are things like that. But this is the characterization, and I think this is something I agree. . . . Q. So I think we agree that the user selects a message that is to be transmitted in response to an incoming call. The question is would you agree that in Mäkelä the user’s selection of the message in response to an incoming call is limited to precomposed messages? . . .” slip op. at 19

  Patent outcomesUS 7,844,037 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,844,037
• Hytera Communications Co. Ltd. v. Motorola Solutions, Inc.No claims unpatentable
  PTAB · May 13, 2019 · IPR2017-02183 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 7 and 8 were not shown unpatentable under any of the three § 103 grounds because the cited combinations did not teach transmitting on a non-assigned timeslot.

  RulingsFinal written decision

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

    “and the specification to determine whether they expressly or implicitly require a specific order. See Altiris, 318 F.3d at 1369–70. Here, we agree with Patent Owner that the language shows that the results of a step are used in the next step; that is, “step 7[b] ‘preparing to transmit a particular payload type in a timeslot’ [comes before] step 7[c] ‘determining whether the timeslot is a current desired timeslot for the TDMA system,’ because the transmitting device looks at the ‘the timeslot’ identified in the ‘preparing’ step to ‘determin[e]’ whether that timeslot is ‘a current desired timeslot.’” PO Sur-Reply 3–4 (quoting Ex. 1001, cl. 7).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that the ordered steps 7[c] to 7[e] require transmitting on an alternate timeslot, that is, a timeslot that is not an assigned timeslot. PO Resp. 7–9. The plain language of claim 7 states that the preparing step of limitation 7[b] is for “a timeslot,” indicating that it is broader than the assigned timeslot of the TDMA system. In limitation 7[c], the claim expressly requires a determination of whether the timeslot in the preparing step is the “current desired timeslot” (assigned timeslot) and selecting (limitation 7[d]) the appropriate synch pattern. The “selecting” step of claim 7[d] requires: “if the timeslot is the current desired timeslot, select[] a synchronization pattern selected from the first set of synchronization patterns . . . otherwise select[] a synchronization pattern selected from the second set of synchronization patterns . . . .” The synchronization pattern that is selected in limitation 7[d] is then used during transmission in limitation 7[e]. Thus, although the claims and specification do not explicitly refer to an alternate timeslot, the claim requires transmitting on the timeslot that is not the current desired timeslot (assigned timeslot). See PO Resp. 19–20; Ex. 2008 ¶ 89.” slip op. at 23

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “arguments are directed to products produced by Petitioner, rather than by Patent Owner, products that were found in an Initial Determination (“ID”) of the International Trade Commission (“ITC”) to infringe challenged claims 7 and 8 of the ’991 patent. Ex. 2009, 192–202. In addition, the Administrative Law Judge in that ID found that Petitioner intentionally copied Patent Owner’s patented technology. Id. at 226–228. That finding was based, in part, upon an adverse inference drawn from the repeated invocation of the Fifth Amendment when former employees of Patent Owner were questioned about allegations that they downloaded confidential documents of Patent Owner shortly before becoming employed by Petitioner. Id. at 241–242 (citing LiButti v. United States, 107 F.3d 110, 123–24 (2d Cir. 1997)). In addition to Patent Owner’s detailed discussion of how Petitioner’s products embody all limitations of the challenged claims, these specific administrative findings support Patent Owner’s position that there is sufficient nexus between its evidence and the challenged claims. PO Resp. 57–62; Institut Pasteur & Universite Pierre et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013).” slip op. at 27

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded by this argument. Petitioner’s arguments go to the weight that should accorded to the ID, not to its admissibility. See Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1221 (Fed. Cir. 2006) (“Vaughan’s challenge goes to the weight of the evidence rather than the admissibility of Lueptow’s testimony and analysis.”). As Patent Owner responds, the ITC “determined not to review the portions of the ID’s findings regarding the ’991 patent.” Paper 43, 4. And we agree with Patent Owner that Petitioner’s argument that the Final Determination is subject to approval by the President lacks merit because the President did not act on the Final Determination within the period specified by 19 U.S.C. § 1337(j)(2). Id. at 4–5. The ID recounts evidence that has been considered and evaluated by an objective and disinterested judge, and articulates findings that are relevant to whether there is a sufficient nexus between the challenged claims and Patent Owner’s evidence regarding Petitioner’s products. The ID is also relevant to the issue of copying by Petitioner. Although Petitioner asserts that the ID is prejudicial or confusing, it provides insufficient argument to support those assertions. With respect to Exhibits 2010, 2012–2019, and 2021, Petitioner contends that these exhibits are Hytera advertising and marketing documents, which do not supply sales numbers or third-party praise to prove commercial success. Paper 40, 3–4. Again, this argument relates to the weight to be accorded to that evidence, not to its admissibility. As we note above, we agree with Petitioner that these factors impact the appropriate weight to be accorded to the evidence, and we have accounted for that impact. Finally, we deny Petitioner’s request that Exhibit 2020 should be excluded under Fed. R. Evid. 401 and 402 because Patent Owner’s demonstrative slides in Exhibit 2020 rely on Exhibits 2010, 2012–2019, and 2021. As the Board reminded the parties in its Order granting oral argument, “[d]emonstrative exhibits are not evidence.” Paper 44, 3. Exhibit 2020 is merely a demonstrative and is not evidence.” slip op. at 32

  Patent outcomesUS 8,279,991 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,279,991
• Apple Inc. v. Papst Licensing GmbH & Co. KGNo claims unpatentable
  PTAB · Apr 13, 2018 · IPR2016-01863 · APJ Miriam L Quinn · IPR · Final written decision

  The Board held claims 1, 4, 6-8, 10, 11, 14, 20, 21, 23, 30, 34, and 35 not shown unpatentable under the asserted § 103 grounds for failure to establish a sufficient reason to combine …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find the Zadok testimony in this regard persuasive as it presents more than just the educational level of a person of ordinary skill in the art. Petitioner’s proposal is more helpful as it identifies the familiar objects of the technology used by a person of ordinary skill at the time of the invention: operating systems (e.g., MS-DOS, Windows, Unix) and their associated file systems (e.g., a FAT file system), device drivers for computer components and peripherals (e.g., mass storage device drivers), and communication interfaces (e.g., SCSI and PCMCIA interfaces). Ex. 1003 ¶ 28. We, therefore, determine that Petitioner’s level of ordinary skill in the art is appropriate.” slip op. at 11

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “required to enable the transfer of files from the ION node to the workstation. In this case, we have testimony from Petitioner’s expert opining that the emulation of the ION node as a disk would lead a person of ordinary skill in the art to understand Pucci as accomplishing the file transfer using “existing SCSI hard disk drivers.” Ex. 1003 ¶ 133. On the other hand, we have testimony of Mr. Gafford that explains Pucci’s workstation program as being involved in the request of the A-to-D converted data by “implement[ing] specific functions by enabling the reading or writing of specific block addresses within the ION drive.” Ex. 2006 ¶ 65. That is, Dr. Zadok’s view of Pucci is that once the ION system is set up to emulate a hard disk, no other software is required to transfer data. In contrast, Mr. Gafford’s testimony does not negate Pucci’s use of the SCSI protocol, but ascribes to the workstation application control over the data read, such that the software is required to enable the transfer data. In this regard, we credit the testimony of Mr. Gafford over the testimony of Dr. Zadok, as it is more consistent with the disclosure of Pucci. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (stating that it is “within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate”); see also, 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.”). As we stated above with regard to the file system limitation, Pucci’s principle of operation” slip op. at 41

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “In view of Patent Owner’s arguments and evidence, we are not persuaded that a person of ordinary skill in the art would have had reason to combine the teachings of Pucci and Kepley, as asserted by Petitioner, to achieve the challenged claims. Our determination is based on two findings: a) First, we determine that Pucci does not teach or suggest a reason for the use of a file system for storing digitized voice messages at the ION node; and b) Second, we determine that achieving computer-to-computer file transfer, as taught by Kepley, and the “traditional” nature of the substitution proffered by Petitioner, are not sufficient motivations to modify Pucci, in light of the changes to Pucci that would impermissibly alter Pucci’s principle of operation.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “Petitioner also argues that the ’746 patent works the same way as Pucci in this regard, and, therefore, buffering in real time could be handled as a file even though there is no file at the acquisition time. Reply, 8; Tr. 7 Claim 1 of the ’746 patent, for instance, requires that the “digitized analog data is stored in a file system of the data storage memory as at least one file of digitized analog data,” and Petitioner has identified the “digitized analog data” as the data from the A-to-D converters. Pet. 2728 (emphasis omitted). 24:1221. This argument risks analyzing Pucci in hindsight, with the knowledge of what is disclosed in the ’746 patent. It would be improper, absent any other evidence, for us to rely on the ’746 patent disclosure regarding real-time input to ascertain whether Pucci suggests handling its raw data in the same way. See Nike, Inc. v. adidas AG, 812 F.3d 1326, 1344 n.5 (Fed. Cir. 2016) (“We are troubled by the Board’s citation to the ’011 patent’s written description and the corresponding appearance of using the ’011 patent to find claim 49 unpatentable.”). Instead, as stated above, we rely on what Pucci teaches to a person of ordinary skill in the art at the time of the invention, without the benefit of the ’746 patent disclosure. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (“It is difficult but necessary that the decisionmaker forget what he or she has been taught . . . about the claimed invention and cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art.”).” slip op. at 25

  Patent outcomesUS 8,504,746 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,504,746
• Dell Inc. / Riverbed Technology, Inc. et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · Oct 31, 2017 · IPR2017-00364 · APJ Jason J Chung · IPR · Final written decision

  Petitioner failed to prove claims 1, 2, 4–6, 9, 11, 21, 22, 24, and 25 unpatentable because it did not establish a reasonable expectation of success combining the cited references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner confirms that Petitioner’s statements regarding the level of ordinary skill in the art are partially consistent with Patent Owner’s view, but, nonetheless, Patent Owner contends that an ordinarily skilled artisan would be the “ultimate generalist.” Ex. 2017 ¶¶ 16–17 (citing Ex. 2015, 84:13–20). We do not observe a meaningful differences between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Moreover, Dr. Creusere appears to satisfy either assessment. Our analysis in this Decision is supported by either assessment, but, for purposes of this Decision, we adopt Petitioner’s assessment.” slip op. at 7

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

    “The parties do not argue a claim construction for any terms. See generally PO Resp.; Reply. In the Decision to Institute, we did not construe any terms. Dec. 4–5. We determine that no terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131– 132), on this record, we cannot reconcile paragraphs 131–132 of his declaration when faced with the plethora of his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21– 83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131–132), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, Dr. Creusere’s declaration, nor his deposition testimony provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices. Petitioner’s modeling, simulation, and testing theory fails to satisfy sufficiently its “reasonable expectation of success” theory evidentiary burden pursuant to the Federal Circuit’s decision in In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (it is “improper” to argue an obviousness theory on the basis that “it would have been ‘obvious to try’ . . . to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.”). Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“obviousness law in general recognizes an important distinction between combining known options into ‘a finite number of identified, predictable solutions,’ and ‘merely throwing metaphorical darts at a board’ in hopes of arriving at a successful result.”). Furthermore, the Federal Circuit explained in Kubin, the Board should not use hindsight based on allegations that require that the person having ordinary skill in the art to randomly pick from a board filled with combinational prior art possibilities. Kubin, 561 F.3d at 1359. To paraphrase, Petitioner is attempting to bypass its evidentiary burden of having to proffer particular evidence of a specific combination, which would teach the “faster than” limitation recited in claims 1, 21, and 25 by instead repeating that “modeling, simulation, and testing” leads to a reasonable expectation of success (Pet. 28); whereas, in this proceeding, the number of permutations and variables are “unlimited” and “impossible” to address, as acknowledged by Dr. Creusere (Ex. 2015, 81:21–83:24, 84:13– 24, 143:20–144:3). That is, Petitioner’s attempt at crafting a theory of obviousness using non-specific teachings from Franaszek and Osterlund that allegedly demonstrate a reasonable expectation of success; this attempt, however, falls significantly short of the Federal Circuit’s requirements. Another obstacle to our reliance on Dr. Creusere’s vacillating opinions is Patent Owner’s declarant, Dr. Kenneth A. Zeger, Ph.D. Dr. Zeger opines in his declaration that Franaszek illustrates complex choices a person having ordinary skill in the art would face in considering whether and how to modify Franaszek in light of Osterlund on this record. Ex. 2017 ¶¶ 152–169. In particular, Dr. Zeger opines that Franaszek’s approach requires numerous steps that each create delays before compression occurs, which are illustrated in Dr. Zeger’s figure below. Id.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Put another way, we do not find that Petitioner demonstrates a “reasonable expectation of success” when Dr. Creusere acknowledges that a person having ordinary skill in the art did not specify whether to discard or keep Franaszek’s sampling approach, or would use only Franaszek’s teachings of compression algorithms, or incorporate other such algorithms, or what data type or data types an intended system teaches would be created to compress, or what specific goals and objectives the person having ordinary skill in the art would have had reason to achieve. Compare id. at 75:18–76:19, 126:20–127:1, 76:24–78:6, 94:4–12, 96:4–98:14 with Ex. 1002 ¶¶ 121–134; Ex. 2017 ¶¶ 165–167. Instead, Petitioner simply asserts, in a conclusory manner, that “[b]ecause the relevant art is predictable and compression algorithms and transmission times may be modeled, simulated, and easily tested, a person of ordinary skill in the art would have had a reasonable expectation of success in combining these various teachings found in the prior art to arrive at the claimed invention” (emphasis added). Pet. 28 (citing Ex. 1002 ¶¶ 131–132). Notably, Dr. Creusere acknowledges that the number of possible permutations faced by a person having ordinary skill in the art would have been “unlimited” and that it was “impossible” for him to address “all the permutations of those possibilities.” Id. at 81:21–83:24, 84:13–24, 143:20– 144:3. Although Dr. Creusere opines that a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131– 132), on this record, we cannot reconcile paragraphs 131–132 of his declaration when faced with the plethora of his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21– 83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131–132), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, Dr. Creusere’s declaration, nor his deposition testimony provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices. Petitioner’s modeling, simulation, and testing theory fails to satisfy sufficiently its “reasonable expectation of success” theory evidentiary burden pursuant to the Federal Circuit’s decision in In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (it is “improper” to argue an obviousness theory on the basis that “it would have been ‘obvious to try’ . . . to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.”). Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“obviousness law in general recognizes an important distinction between combining known options into ‘a finite” slip op. at 17

  Patent outcomesUS 9,116,908 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,116,908
• Adidas AG v. Nike, Inc.No claims unpatentable
  PTAB · Oct 19, 2017 · IPR2016-00922 · APJ James B Arpin · IPR · Final written decision

  Petitioner failed to prove claims 1–9, 11–19, and 21 unpatentable as obvious over Reed and Nishida because it did not adequately explain why a skilled artisan would combine their teachings.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “appropriate factors identified by our reviewing court and utilized by other panels to assess the level of ordinary skill in the art. Id. at 17–18. We agree with Petitioner that it is not necessary to consider every factor or to weigh the factors equally in order to assess the level of ordinary skill in the art. Reply 2 (quoting In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). Here, we may rely on Petitioner’s declarant’s testimony (Ex. 1003 ¶ 34) and the teachings of the prior art to evaluate Petitioner’s assessment of the level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In particular, Reed and Nishida identify the types of problems encountered in the art prior art solutions to these problems, and the sophistication of the technology. E.g., Ex. 1006, 1:13–55; Ex. 1009, 1:10– 36; see, e.g., Ex. 1007, 1:8–32, 2:12–64; Ex. 1008, 1:11–54; Ex. 1010, 145– 160; see also Ex. 1010, Preface (“The aim of this book is to combine in a single volume the fundamental principles of weft and warp knitting in such a manner that its contents are useful to readers in education, industry or commerce. It thus [fulfills] the long felt need for a comprehensive up-to-date textbook explaining this important sector of textile technology.”).” slip op. at 10

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

    “unitary construction” means “a textile element having a unitary construction and having a first area and a second area.” Pet. 6. As Petitioner notes, this is the construction that this panel gave to the same term appearing in the substitute claims of the ’011 patent. adidas AG v. Nike, Inc., Case IPR2013- 00067, slip op. at 16–17 (PTAB Apr. 28, 2014) (Paper 60). We further note that the ’749 patent’s Specification provides that “[a]s defined for purposes of the present invention, unitary construction is intended to express a configuration wherein portions of a textile element are not joined together by seams or other connections, as depicted with textile element 40 in FIG. 8.” Ex. 1001, 6:42–46 (emphasis added); see IPR2013-00067, Ex. 1002, 6:41–46 (identical disclosure). The ’011 patent and the ’749 patent share the same Specification (apart from their claims), neither party contested our construction of this term in the appeal of our decision in the inter partes review of the claims of the ’011 patent, and Patent Owner does not contest Petitioner’s proposed construction of this term in this proceeding. Therefore, in view of the express definition of the phrase “unitary construction” in the Specification of the ’749 patent, we adopt Petitioner’s proposed construction as the broadest reasonable interpretation for this term. See Tr. 20:5–13, 37:11–17.” slip op. at 12

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

    “2. “wide-tube circular knitting machine” (Claims 9 and 19) We determine that the broadest reasonable interpretation of the term “wide-tube circular knitting machine” is “a circular knitting machine forming body garment sized, tubular textile structures, including those having a diameter that ranges from 10 inches to 20 inches.” See Inst. Dec. 9–11. Neither party contests this construction. See Tr. 20:5–13, 37:11–17.” slip op. at 13

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “8 Patent Owner contends that Reed is not analogous art. PO Resp. 34–36. In particular, Patent Owner contends that Reed is not from the same field of endeavor as the challenged claims and that Reed’s teachings are not reasonably pertinent to the particular problem with which the recited methods are involved. Id. at 34–35. Because Reed is directed to the manufacture of all types of garments, including footwear (Reply 12–13; see Ex. 1006, 1:33–44), and Reed is related directly to preparation of garments layouts from a knitted textile structure (Reply 14–15; see Ex. 1006, 2:29– 35), we are persuaded that Reed is analogous art to the challenged claims.” slip op. at 18

  Patent outcomesUS 8,266,749 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,266,749
• Adidas AG v. Nike, Inc.No claims unpatentable
  PTAB · Oct 19, 2017 · IPR2016-00921 · APJ James B Arpin · IPR · Final written decision

  Petitioner failed to prove claims 1–13 unpatentable as obvious over Reed and Nishida because it did not show a reason to combine their teachings.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Initially, Patent Owner contends that Petitioner has failed to consider appropriate factors identified by our reviewing court and utilized by other panels to assess the level of ordinary skill in the art. Id. at 12–13. We agree with Petitioner that it is not necessary to consider every factor or to weigh the factors equally in order to assess the level of ordinary skill in the art. Reply 2 (quoting In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). Here, we may rely on Petitioner’s declarant’s testimony (Ex. 1003 ¶ 34) and the teachings of the prior art to evaluate Petitioner’s assessment of the level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In particular, Reed and Nishida identify the types of problems encountered in the art prior art solutions to these problems, and the sophistication of the technology. E.g., Ex. 1006, 1:13–55; Ex. 1009, 1:10– 36; see, e.g., Ex. 1007, 1:8–32, 2:12–64; Ex. 1008, 1:11–54; Ex. 1010, 145– 160; see also Ex. 1010, Preface (“The aim of this book is to combine in a single volume the fundamental principles of weft and warp knitting in such a manner that its contents are useful to readers in education, industry or commerce. It thus [fulfills] the long felt need for a comprehensive up-to-date textbook explaining this important sector of textile technology.”). Patent Owner contends that the level of ordinary skill in the art is “low” (PO Resp. 13), but it is not clear whether Patent Owner further contends that Petitioner’s assessment is deficient because Petitioner fails to argue that a person possessing such a “low” level of ordinary skill in the art also would have “experience using knitting technologies to create knitted footwear uppers” (id. at 13–14) or whether the inclusion of such skill would raise the “low” level of skill in the art (id. at 14). Alternatively, Patent Owner may merely be contending that Petitioner’s declarant fails to qualify as a person of ordinary skill in the art. Id. at 14 (“If it was too ‘dangerous’ for Mr. Holden with his nearly forty years of experience, a person with just a “few years of experience” would not have had any knitting experience, let alone experience using knitting technologies to create uppers.”); see Tr. 62:17–22. Patent Owner is not required to help us assess the level of ordinary skill in the art and does not do so here. See PO Resp. 18 (“Petitioner may criticize NIKE for not submitting an expert declaration. But it is Petitioner’s burden to prove unpatentability; it is not NIKE’s burden to prove patentability.”). In response to Patent Owner’s contentions, Petitioner argues that the level of ordinary skill in the art is not low and that hands-on knitting experience is not required. Reply 2–3. Petitioner further argues Patent Owner has not required knitting experience in its previous assessment with respect to a related patent of the level of ordinary skill in the art. Id. (citing IPR2013-00067, Ex. 2010 ¶ 52). Based on the record before us and to the extent necessary, we again adopt Petitioner’s assessment of a person of ordinary skill in the relevant art. Inst. Dec. 8 n.3.” slip op. at 10

  • Expert testimonyPetitioner expert creditedMixed

    “document.” Reply 3 (quoting Ex. 2004, 12:7–11); see Ex. 2004, 12:12– 13:16. Declarants often have assistance in authoring their declarations. See Square, Inc. v. Think Computer Corp., Case CBM2014-00159, slip op. at 26–27 (PTAB Nov. 27, 2015) (Paper 47) (“the mechanics of declaration preparation is ‘a waste of time, both for the witness and the Board’”). Mr. Holden was not required to be the sole author of his declaration. Rather, the relevant issue regarding the preparation of Mr. Holden’s declaration is whether Mr. Holden adopted the content of his declaration as his own. Here, he has. See Ex. 1003 ¶¶ 3, 4, 209. As Patent Owner suggests, we weigh Mr. Holden’s declaration testimony in light of his testimony on cross-examination. Although Mr. Holden indicated that he was unable to define or was unfamiliar with certain terms during cross-examination, he did name references, including Spencer (Ex. 1010), that he could and would consult to obtain the answers to specific questions. Tr. 63:20–64:13. Moreover, Patent Owner’s counsel acknowledged that persons of ordinary skill in the art (or declarants) do not have to have all of the knowledge relevant to their testimony in their heads and that they are allowed to consult references, as appropriate. Id. at 63:20– 64:2. Although Patent Owner notes that Mr. Holden apparently was not aware of Spencer until this inter partes review (see Ex. 2004, 77:1–3; Tr. 64:1–6), his learning of and relying on a new reference alone is not sufficient reason to disregard, i.e., give no weight to, Mr. Holden’s testimony. Further, the issue here is not whether Mr. Holden is a person of ordinary skill in the art, but rather whether his testimony is of value to the panel. See Tr. 64:15– 18. Thus, as indicated in the discussion below, we determine the appropriate weight to give to Mr. Holden’s testimony.” slip op. at 31

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “8 Patent Owner contends that Reed is not analogous art. PO Resp. 29–31. In particular, Patent Owner contends that Reed is not from the same field of endeavor as the challenged claims and that Reed’s teachings are not reasonably pertinent to the particular problem with which the recited methods are involved. Id. at 29–30. Because Reed is directed to the manufacture of all types of garments, including footwear (Reply 12–14; see Ex. 1006, 1:33–44), and Reed is related directly to preparation of garments layouts from a knitted textile structure (Reply 14–15; see Ex. 1006, 2:29– 35), we are persuaded that Reed is analogous art to the challenged claims.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “i. Failure of Proof Petitioner bears the burden of proving by a preponderance of the evidence that the challenged claims are unpatentable. This includes demonstrating by a preponderance of the evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Reed and Nishida to achieve the methods recited in the challenged claims. As noted above, Petitioner argues that a person of ordinary skill in the art would have had at least three reasons to combine the teachings of Reed and Nishida to achieve the methods recited in the challenged claims. Pet. 12–14; see Tr. 10:12–11:12. First, Petitioner argues that, because Reed teaches that its methods are applicable to “all types of garments” (Ex. 1006, 5:56–57 (emphasis added); see Ex. 1003 ¶ 131), a person of ordinary skill in the art would have had reason to apply the teachings of Reed to the processes and shoe parts of Nishida. Pet. 13 (citing Ex. 1003 ¶ 133). Second, Petitioner argues that, because both Reed and Nishida teach the advantages of reducing cost through the use of computer-controlled knitting machines, a person of ordinary skill in the art would have had reason to combine their teachings. Pet. 13 (citing Ex. 1003 ¶¶ 134–135). Third, Petitioner argues that a person of ordinary skill in the art would have had reason to apply Reed’s methods for producing textile elements, from which to produce garments, to produce Nishida’s shoe upper patterns. Id. at 13–14; see KSR, 550 U.S. at 417. However, none of these reasons or any other reason identified by Petitioner addresses the differences between Reed and Nishida, specifically pre-seaming.” slip op. at 34

  Patent outcomesUS 7,814,598 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,814,598
• Amazon.Com, Inc. / Amazon.Com, LLC et al. v. Zitovault, LLCNo claims unpatentable
  PTAB · Apr 11, 2017 · IPR2016-01025 · APJ Daniel N Fishman · IPR · Final written decision

  Petitioner did not prove claims 1, 3, 5–8, and 10 unpatentable because the cited references did not adequately account for the claims’ session limitations.

  RulingsFinal written decision

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

    “We are persuaded that our preliminary interpretation of “session” in our Decision on Institution is, at least in some respect, overly broad. Independent claims 1, 6, 7, and 10 each refer to “sessions” in plural, and independent claim 7 refers to “simultaneous” sessions. Thus, the term “session” must be understood, at least, in such a manner as to allow multiple sessions to be distinguished from one another. Although independent claim 5 does not recite “sessions” in plural, the same term should be construed consistently across all claims. Accordingly, we conclude that there must be sufficient delineation within a proper construction of “session” that separates a “session” between one client and one server and a different “session” when one of the client and server are replaced, and that separates multiple sessions from each other even between the same pair of client and server. During Oral Hearing there were extensive discussions regarding proper construction of “session.” See Tr. 7:9–22:18, 43:11–65:15, 74:21–76:13. At Oral Hearing, counsel for Petitioner agreed that “session” should be understood as communications having a recognizable beginning and a recognizable end. Id. at 10:13–16 (“Of course a session has a beginning and an end. I think that is axiomatic in a session. I think that is how Dr. Rubin defined it in his declaration”); see also id. at 12:21–13:5, Ex. 1005 ¶ 41. Patent Owner also agreed that if the construction of session is made to include a recognizable beginning and a recognizable end, that would be a proper construction for the term:” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner has failed to identify what constitutes a “session” in Feinberg in accordance with a proper construction of “session.” That proper construction of “session” is set forth above and has been agreed to by the parties. Tr. 10:13–16, 53:13–54:10. We state it again here: “a set of transmitters and receivers, and the data streams that flow between them wherein each data stream flowing between the transmitters and receivers has a recognizable beginning of the data stream transmission and a recognizable end of the data stream transmission.” Petitioner identifies Feinberg’s disclosure of forwarding (shunting) received requests from the primary server to secondary servers (for purposes of load balancing) teaches the recited “communication between the main server and agent server enlists additional agent servers to support incremental secure sessions in response to maintaining performance at a desired level.” Pet. 21–23 (emphasis added). The analysis is excessively generic for the claim recitation of “incremental secure sessions.” It is uncertain what Petitioner regards as a session in Feinberg much less how it begins and how it ends. It is unexplained by Petitioner whether a request in Feinberg begins a session, or something else in Feinberg begins a session. We decline to speculate in that regard. It is Petitioner who bears the burden of proof, and who must account for all the limitations in a claim. In that regard, we note further that it is insufficient for Petitioner to present only dots that may be connected in some unspecified manner to yield the claimed invention. Instead, Petitioner must make a sufficient connection through the dots to demonstrate a full accounting of the claimed invention.” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “that the system supports “incremental secure sessions.” The Petition relies on Feinberg for disclosing such sessions, presenting the same arguments as those it presents for claim 6. See Pet. 33–34. Patent Owner argues Feinberg fails to disclose sessions for the same reasons as those that Patent Owner presented with respect to claim 6. See PO Resp. 36–37. Petitioner’s Reply asserts essentially the same arguments for claim 1 as it does for claim 6 regarding “incremental secure sessions.” Pet. Reply 17. Petitioner does not rely on Bhaskaran to alleviate the above-identified deficiency in the analysis of Feinberg with respect to claim 6. The standard for obviousness under 35 U.S.C. § 103(a) is what would have been taught or suggested to the ordinarily skilled artisan with based on the references. The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious and, the Court has noted that, the analysis supporting an obviousness assertion should be made explicit. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). A “legal determinations of obviousness, as with such determinations generally, should be based on evidence rather than on mere speculation or conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006). As discussed supra, Petitioner failed to account adequately for the recited “sessions.” Therefore, Petitioner has failed to establish by a preponderance of the evidence that independent claims 1, 6, and 10 would have been obvious over Feinberg and Bhaskaran and, for the same reasons, has failed to establish claim 3, dependent from claim 1, would have been obvious over Feinberg and Bhaskaran.” slip op. at 24

  • ExcludeMotion to exclude, deniedDenied

    “Initially, we note Patent Owner’s Motion to Exclude fails to identify the portions of Dr. Rubin’s Declaration that allegedly fail to be based upon sufficient facts or data, that allegedly are the product of unreliable principles and methods, or that allegedly fail to reliably apply sound principles and methods to the facts of the case. There is no requirement for an exact or perfect match between the expert’s experience and the field of the patent. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010). Thus, Patent Owner fails to meet its burden with respect to this Motion to Exclude. See 37 C.F.R. § 42.20(c). Furthermore, regarding the objections under FRE 702, 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 more properly goes to the weight to be given Dr. Rubin’s testimony, and not to its admissibility. In any event, Patent Owner’s argument, that Petitioner did not explain the evidentiary weight or standard that was applied by Dr. Rubin, is misplaced. We note that Dr. Rubin is an expert witness, not a fact finder or a tribunal making fact findings. Dr. Rubin need only provide his opinion and, preferably, also provide the underlying reasoning, inclusive of data and facts, in support of his opinion. For the above reasons, Patent Owner’s Motion to Exclude is denied.” slip op. at 27

  Patent outcomesUS 6,484,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,484,257
• Amazon.Com, Inc. / Amazon.Com, LLC et al. v. Zitovault, LLCNo claims unpatentable
  PTAB · Apr 11, 2017 · IPR2016-00021 · APJ Daniel N Fishman · IPR · Final written decision

  Petitioner did not prove claims 1, 3, 5–8, and 10 unpatentable: the asserted grounds did not adequately identify sessions with recognizable beginnings and ends.

  RulingsFinal written decision

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

    “We are persuaded that our preliminary interpretation of “session” in our Decision on Institution is, at least in some respect, overly broad. Independent claims 1, 6, 7, and 10 each refer to “sessions” in plural, and independent claim 7 refers to “simultaneous” sessions. Thus, the term “session” must be understood, at least, in such a manner as to allow multiple sessions to be distinguished from one another. Although independent claim 5 does not recite “sessions” in plural, the same term should be construed consistently across all claims. Accordingly, we conclude that there must be sufficient delineation within a proper construction of “session” that separates a “session” between one client and one server and a different “session” when one of the client and server are replaced, and that separates multiple sessions from each other even between the same pair of client and server. During Oral Hearing there were extensive discussions regarding proper construction of “session.” See Tr. 7:9–22:18, 43:11–65:15, 74:21–76:13. At Oral Hearing, counsel for Petitioner agreed that “session” should be understood as communications having a recognizable beginning and a recognizable end. Id. at 10:13–16 (“Of course a session has a beginning and an end. I think that is axiomatic in a session. I think that is how Dr. Rubin defined it in his declaration”); see also id. at 12:21–13:5, Ex. 1005 ¶ 41. Patent Owner also agreed that if the construction of session is made to include a recognizable beginning and a recognizable end, that would be a proper construction for the term:” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner has failed to identify what constitutes a “session” in Feinberg in accordance with a proper construction of “session.” That proper construction of “session” is set forth above and has been agreed to by the parties. Tr. 10:13–16, 53:13–54:10. We state it again here: “a set of transmitters and receivers, and the data streams that flow between them wherein each data stream flowing between the transmitters and receivers has a recognizable beginning of the data stream transmission and a recognizable end of the data stream transmission.” Petitioner identifies Feinberg’s disclosure of forwarding (shunting) received requests from the primary server to secondary servers (for purposes of load balancing) teaches the recited “communication between the main server and agent server enlists additional agent servers to support incremental secure sessions in response to maintaining performance at a desired level.” Pet. 21–23 (emphasis added). The analysis is excessively generic for the claim recitation of “incremental secure sessions.” It is uncertain what Petitioner regards as a session in Feinberg much less how it begins and how it ends. It is unexplained by Petitioner whether a request in Feinberg begins a session, or something else in Feinberg begins a session. We decline to speculate in that regard. It is Petitioner who bears the burden of proof, and who must account for all the limitations in a claim. In that regard, we note further that it is insufficient for Petitioner to present only dots that may be connected in some unspecified manner to yield the claimed invention. Instead, Petitioner must make a sufficient connection through the dots to demonstrate a full accounting of the claimed invention. Petitioner had ample notice of the possibility of a narrower interpretation of “session.” See PO Resp. 7–11, 23–24. Indeed, Petitioner responded to that possibility by referring to its own expert’s testimony that the beginning and end of a session may be signified in a variety of forms. Pet. Reply 2. See Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016) (“The critical question for compliance with the APA and due process is whether [the parties] received ‘adequate notice of the issues that would be considered, and ultimately resolved, at [the] hearing’”) (internal citation omitted). Nevertheless, Petitioner’s Reply still does not specifically identify a “session” within Feinberg that accounts for what constitutes a session in Feinberg, including when it begins and ends. Claim 10 recites, in pertinent part, “sharing spare CPU cycles of the computer network for encrypting and decrypting communication to provide N simultaneous secure session[s] among said network of computers.” Petitioner’s analysis with respect to the recitation of “N simultaneous secure session[s]” is deficient for the same reasons we discussed above with respect to the recitation of “incremental secure sessions” in claim 6. For the above reasons, we are not persuaded Petitioner has established, by a preponderance of the evidence, that claims 6 and 10 are anticipated by Feinberg.” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “that the system supports “incremental secure sessions.” The Petition relies on Feinberg for disclosing such sessions, presenting the same arguments as those it presents for claim 6. See Pet. 33–34. Patent Owner argues Feinberg fails to disclose sessions for the same reasons as those that Patent Owner presented with respect to claim 6. See PO Resp. 36–37. Petitioner’s Reply asserts essentially the same arguments for claim 1 as it does for claim 6 regarding “incremental secure sessions.” Pet. Reply 17. Petitioner does not rely on Bhaskaran to alleviate the above-identified deficiency in the analysis of Feinberg with respect to claim 6. The standard for obviousness under 35 U.S.C. § 103(a) is what would have been taught or suggested to the ordinarily skilled artisan with based on the references. The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious and, the Court has noted that, the analysis supporting an obviousness assertion should be made explicit. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). A “legal determinations of obviousness, as with such determinations generally, should be based on evidence rather than on mere speculation or conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006). As discussed supra, Petitioner failed to account adequately for the recited “sessions.” Therefore, Petitioner has failed to establish by a preponderance of the evidence that independent claims 1, 6, and 10 would have been obvious over Feinberg and Bhaskaran and, for the same reasons, has failed to establish claim 3, dependent from claim 1, would have been obvious over Feinberg and Bhaskaran.” slip op. at 24

  • ExcludeMotion to exclude, deniedDenied

    “Initially, we note Patent Owner’s Motion to Exclude fails to identify the portions of Dr. Rubin’s Declaration that allegedly fail to be based upon sufficient facts or data, that allegedly are the product of unreliable principles and methods, or that allegedly fail to reliably apply sound principles and methods to the facts of the case. There is no requirement for an exact or perfect match between the expert’s experience and the field of the patent. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010). Thus, Patent Owner fails to meet its burden with respect to this Motion to Exclude. See 37 C.F.R. § 42.20(c). Furthermore, regarding the objections under FRE 702, 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 more properly goes to the weight to be given Dr. Rubin’s testimony, and not to its admissibility. In any event, Patent Owner’s argument, that Petitioner did not explain the evidentiary weight or standard that was applied by Dr. Rubin, is misplaced. We note that Dr. Rubin is an expert witness, not a fact finder or a tribunal making fact findings. Dr. Rubin need only provide his opinion and, preferably, also provide the underlying reasoning, inclusive of data and facts, in support of his opinion. For the above reasons, Patent Owner’s Motion to Exclude is denied.” slip op. at 27

  Patent outcomesUS 6,484,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,484,257
• Masterimage 3d, Inc. / Masterimage 3d Asia, LLC v. Reald Inc.No claims unpatentable
  PTAB · Apr 20, 2016 · IPR2015-00035 · APJ Bart A Gerstenblith · IPR · Final written decision

  The Board denied cancellation of claims 1–23 because Petitioner did not show Schuck was entitled to the provisional filing date, so it was not prior art.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14

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

    “It is only “confidential information” that may be protected from disclosure, 35 U.S.C. § 316(a)(7), and, even then, there is a public interest in “maintaining a complete and understandable file history” of the proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the burden of proof in showing entitlement to the requested relief. 37 C.F.R. § 42.20(c).” slip op. at 19

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for patent owner

    “as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “for multiple reasons. First, Petitioner acknowledges that what it refers to as “the Milburn doctrine” was codified in 35 U.S.C. § 102(e), and Petitioner does not show persuasively that we should read Milburn as requiring anything beyond application of that statutory section in light of the facts presented here. Supp. Reply 6. Second, Milburn did not address directly the question of whether an issued patent is entitled to claim priority to a provisional patent application, and, specifically, what must be shown in order to do so. Third, Schuck claims priority to not one, but three provisional applications, which was not the case in Milburn. Fourth, in Giacomini, the Federal Circuit expressly considered Milburn and stated: “An important limitation [on 35 U.S.C. § 119(e)(1)] is that the provisional application must provide written description support for the claimed invention.” Giacomini, 612 F.2d at 1383 (emphasis added). Although the Federal Circuit did not address the application of the argument—that the reference patent’s provisional application fails to provide written description support for the claimed subject matter—in Giacomini, because the appellant had waived it, the Federal Circuit’s decision acknowledges that there was an argument that could have been raised. Id. Finally, Dynamic Drinkware is directly on point and clearly establishes that Petitioner is required to show that the claimed invention of Schuck finds written description support in the ’657 provisional in order to rely on the ’657 provisional’s filing date. Dynamic Drinkware, 800 F.3d at 1381. It is undisputed that Petitioner has not done so. We find that Petitioner has not shown that claim 1 or any other claim of Schuck is supported by the ’657 provisional, and, thus, Petitioner has not shown that Schuck is entitled to claim priority to the ’657 provisional’s filing date. See Apple, Case IPR2015-00969, slip op. at 12–13. The result of our finding is that Schuck does not qualify as prior art, under § 102(e), to the ’455 patent, and, therefore, is not a reference which may be relied upon to establish the unpatentability of claims in an inter partes review. See 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” (emphasis added)). Accordingly, Petitioner has not demonstrated, by a preponderance of the evidence, that: (1) claims 1–8, 10–14, and 16–22 are unpatentable as anticipated by Schuck and (2) claims 9, 15, and 23 are unpatentable as obvious over Schuck and APA.” slip op. at 16

  Patent outcomesUS 7,857,455 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 7,857,455

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.