- The Boeing Company v. Seymour LevineAll claims unpatentablePTAB · Dec 20, 2016 · IPR2015-01341 · APJ Trenton A Ward · IPR · Final written decision
Claims 4, 5, 8, 9, 10, 14, and 16 are unpatentable as obvious under § 103 over the combinations listed in the decision.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The definition of “advice” is “information or notice given.” Ex. 3001 (Webster’s Third New International Dictionary 32 (1971), 3.). Thus, the plain and ordinary meaning of “maintenance advice” is consistent with the aforementioned evidence, in that “maintenance advice” can include maintenance information, but does not require “recommended maintenance actions.” Patent Owner argues that this dictionary definition cited by the Board includes an alternative definition of “advice” as a “recommendation regarding a decision or course of conduct.” PO Resp. 33 (citing Ex. 3001, 3). Patent Owner further argues that this alternative definition of “advice” is most consistent with specification. PO Resp. 33. Patent Owner fails, however, to cite to any portions of the specification to support this argument (see id.) and fails to explain why we should not be guided by the more general statements in the specification, such as the description in the specification that a “preferred maintenance advisory” can be based “on an expert system for fault isolation,” which is in no way “recommended maintenance actions.” Ex. 1001, 3:36–37. We are not persuaded by Patent Owner’s argument that “maintenance advice” must include recommended maintenance actions. Accordingly, we adopt the portion of the proposed definitions on which the parties agree and determine that the term “maintenance advice” means “problem-specific maintenance information.” See also Dec. 7–8.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art relevant to the ’618 patent would have a “B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85.” Ex. 1002 ¶ 15. According to Patent Owner’s Declarant, Mr. Grabowsky, a person of ordinary skill in the art relevant to the ’618 patent would have “at least a B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85; as well as either an M.S. or equivalent work experience, such as 3-5 years of experience in avionics.” Ex. 2011 ¶ 8. Thus, both declarants generally agree on the level of skill, although Mr. Grabowsky suggests experience is required in addition to the B.S. degree or the FAA Mechanic Certificate. See id. Based on our review of the ’618 patent, the types of problems and solutions described in the ’618 patent and cited prior art, and the testimony of Petitioner’s Declarant and Patent Owner’s Declarant, we adopt Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We are not persuaded that the additional experience of an M.S. or equivalent work experience, such as 3-5 years of experience in avionics, is required, as suggested by Mr. Grabowsky, as we are unclear as to why the claimed subject matter is beyond the abilities of someone who otherwise meets applicable federal regulatory standards. Based on the stated qualifications of Dr. Helfrick (Ex. 1002 ¶¶ 5–9) and the stated qualifications of Mr. Grabowsky (Ex. 2011 ¶¶ 6–7), Petitioner’s Declarant and Patent Owner’s Declarant both meet the requirements of this definition. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“and ARINC 624-1 because ARINC 624-1 is a standard directed to the very types of on-board systems discussed in Ward.”)). Additionally, Petitioner contends that ARINC publishes standards for the aviation industry, developed by committees that include aircraft manufacturers, avionics manufacturers, and airlines, and that the ACARS transmitter disclosed in Ward is based on, and, thus, would follow, an ARINC standard. Pet. 30 (citing Ex. 1002 ¶¶ 23, 75). Also, Petitioner contends that both Ward and ARINC 624-1 discuss utilizing (1) onboard maintenance systems including ACMS to collect aircraft performance data and (2) an ACARS transmitter to transmit such data to a ground station. Pet. 30. Petitioner adds that ARINC 624-1 provides an explicit motivation to utilize Ward’s ground based maintenance analysis software in implementing its maintenance system, because ARINC 624-1 states that “if known in advance of an airplane’s arrival at a terminal, selected information held in the OMS central maintenance computer’s memory could be useful to line maintenance personnel in planning timely corrective action.” Pet. 30–31 (quoting Ex. 1014 § 2.2.4). We agree, for the reasons stated by Petitioner, that, given the similarity and overlap in disclosures, and applicability of the ARINC standard to the ACARS transmitter of Ward, a person of skill in the art would have been motivated to improve the system in Ward with the teachings in ARINC 624-1. In view of the foregoing, we determine Petitioner has presented and sufficiently established an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” with respect to claim 4 for this ground, and we adopt its contentions as our own. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“on an aircraft having a flight data recorder.” Pet. Reply 15.10 Furthermore, Petitioner identifies that claims 8–10 all require “aircraft position data directed to said flight data recorder.” Id. Petitioner argues that Mr. Levine’s October 9, 1996 Invention Disclosure is insufficient, because it does not reflect the conception of the invention that Patent Owner ultimately claimed, which requires two data recorders—one onboard the aircraft and a second, remote recorder on the ground. Id. We do not agree with Petitioner’s argument that claims 4 and 8–10 require a flight data recorder on the ground, as claim 4 merely recites a “central station” “configured to receive and analyze said digital aircraft performance.” We do agree, however, with Petitioner’s argument that the express language of independent claim 4 requires “an aircraft having a flight data recorder.” Furthermore, claim 4 requires that the “digital aircraft performance data,” which the “central station” is configured to receive and analyze, is “data directed to the flight data recorder.” Thus, the invention recited in independent claim 4, and its dependent claims, must include a flight data recorder onboard the aircraft and, separately, a central station configured to receive and analyze data directed to the onboard flight data recorder. 10 The recitation “[a]n aircraft maintenance system for use on an aircraft having a flight data recorder” appears in the preamble of claim 4. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). Here, the body of claim 4 refers to “the flight data recorder” as an active limitation in the claim. Therefore, we determine that the preamble is limiting for claim 4.” slip op. at 31
Patent outcomesUS RE39,618 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham - Sandisk Corporation v. Netlist, Inc.Rehearing deniedPTAB · Dec 12, 2016 · IPR2015-01020 · APJ Peter P Chen · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no overlooked or misapprehended evidence or arguments in the final written decisions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(d), the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked.” See 37 C.F.R. § 42.71(d). Section 42.71(d) further provides that the request must identify where each matter was previously addressed.” slip op. at 2
NonePatents in suitUS 7,881,150 - Sandisk Corporation v. Netlist, Inc.Rehearing deniedPTAB · Dec 12, 2016 · IPR2015-01021 · APJ Peter P Chen · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests in IPR2015-01020 and IPR2015-01021, finding no overlooked or misapprehended evidence or arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“106 of the first Jagannathan declaration, filed concurrently with the Petition, he testified, “[t]hus, when a chip-select output from the bank control unit is used to enable a particular DDR SDRAM device, it is also used to enable the bit switch.” Final Dec. 23 (citing Ex. 1002 ¶ 106) (emphasis added). This described Petitioner’s evidence on the chip select signal, namely, that Dr. Jagannathan did not testify that the chip select signal “is also the bit switch enable signal,” but rather, that the chip select signal “is used to” generate the enable signals to the bit switch. In Petitioner’s post-hearing brief (Paper 30), Petitioner cited to pages 35 and 36 of the Petition, and to Dr. Jagannathan’s deposition testimony: Q. So what I’m trying to understand is, in that paragraph, it seems that you’re saying it’s the same signal that’s being used. A. No, I don’t -- I disagree with that. What I am trying to say here is the chip select signal -- those signals that I talked about earlier in the sentence, they’re effectively being used to generate the enable signals. Paper 30 (citing Ex. 2002, 218:6–17). Petitioner asserted in its post-hearing brief, “[w]hen taken as a whole, in context, Dr. Jagannathan’s testimony supports the rationale in the Petition.” Paper 30, 4. As set forth in the Final Written Decision, we agree. Nothing argued by Patent Owner persuades us that in the Final Written Decision we misapprehended or overlooked the nature of Dr. Jagannathan’s testimony in his first declaration.” slip op. at 3
NonePatents in suitUS 8,081,536 - Commscope Technologies, LLC v. Communications Components Antenna Inc.Institution deniedPTAB · Nov 3, 2016 · IPR2016-00999 · APJ Jeffrey S Smith · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–28 unpatentable, principally because Yea did not establish the claimed asymmetrical coverage areas.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review of claims 1–28 of U.S. Patent No. 8,311,582 B2 (Ex. 1001, “the ’582 patent”). Paper 1 (“Pet.”). Patent Owner, Communications Components Antenna Inc., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1–28 of the ’582 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner’s proposed construction of this limitation is supported by the specification of the ’582 patent. The ’582 patent discloses replacing a single sector coverage area with sub-sector coverage areas, at least one of which is an asymmetrical coverage area. Ex. 1001, 3:16–18. The ’582 patent discloses that the use of asymmetrical coverage areas permits the total coverage area to closely approximate the symmetrical sector coverage area being replaced, without creating excessively large sub-sector handover zones or introducing sever degradation in network performance. Id. at 3:18–24. The ’582 patent discloses creating the asymmetrical coverage areas by replacing an existing antenna with an antenna that has substantially the same coverage area, but divides the coverage area into a plurality of separate asymmetrical beams or sub-sectors. Id. at 4:32–38. As disclosed by the ’582 patent, the replacement antenna produces a plurality of separate beams, each defining a new sub-sector with only a small overlapping area between them and which together provide substantially identical coverage to the sector supported by the original antenna, to upgrade the single sector to a plurality of sub-sectors without significantly affecting neighboring sites. Id. at 4:51–57. The replacement antenna introduces asymmetry into the generated beam pattern. Id. at 4:58–60. The introduction of asymmetrical beams by the replacement antenna allows close approximation of the coverage area of the conventional sector antenna being replaced. Id. at 5:61–64. For purposes of this Decision, we adopt Petitioner’s proposed construction of “a plurality of sub-sector coverage areas extending therefrom, at least one of which is asymmetrical,” as a plurality of replacement sub-sector beams, at least one of which has an asymmetrical shape, where asymmetry includes deliberate or inherent asymmetry as the broadest reasonable construction consistent with the specification.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“49 (Fed. Cir. 2005). There, the district court invalidated claims of the patent in suit on summary judgment based on the measured dimensions of a prior art patent figure. Id. at 1148. The Federal Circuit reversed, warning “that arguments based on drawings not explicitly made to scale in issued patents are unavailing.” Id. at 1149. Petitioner here does not identify any portion of Yea disclosing that Figures 4 and 8 are drawn accurately enough to determine an asymmetrical nature of the radiation patterns. Petitioner also fails to cite to any disclosure in Yea that identifies or describes an asymmetrical nature of the radiation patterns. Furthermore, Petitioner also has not explained why the shapes shown in the linear scale drawings of Figure 4 would show similar shapes when converted to a logarithmic scale. Additionally, Petitioner does not explain why the carrier to interference ratio shown in Figure 8 can be used to accurately measure antenna radiation beam patterns. We find Petitioner does not sufficiently establish that the plots shown in Figures 4 and 8 of Yea can be used to determine whether the antenna radiation beam pattern is asymmetrical. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that Petitioner would prevail in showing that Yea anticipates independent claims 1, 13, and 20. b. Dependent Claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27 Petitioner argues that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27. Pet. 47–53. In so arguing, Petitioner relies on Yea as disclosing the claimed asymmetrical coverage area. Id. Because we are not persuaded that Yea discloses this limitation, we are not persuaded that Petitioner establishes a reasonable likelihood of prevailing in showing that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“as well as testimony of both Mr. Collins and Mr. Cosgrove. Under Rule 37 C.F.R. § 42.108, any genuine issues of material fact created by the testimonial evidence should be viewed in light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review. Even reviewing the testimony of Mr. Collins in the light most favorable to Petitioner, we determine Petitioner has established only that asymmetrical beams may be used in a planar array antenna, but not that a person of ordinary skill in the art would have understood steered beams of a planar array antenna are necessarily asymmetrical. Mr. Collins cites to Litva (Ex. 1009) and Wästberg (Ex. 1018) in stating that prior art steered beams of a planar array antenna can be asymmetrical beams. Ex. 1024 ¶ 179. We credit Patent Owner’s arguments and the testimony of Mr. Cosgrove to determine Petitioner does not sufficiently establish the likelihood that a person of ordinary skill in the art would have understood that steered beams of a planar array antenna are necessarily asymmetrical. Further, Petitioner fails to set forth a sufficient rationale for why a person of ordinary skill in the art would use the asymmetrical beams of the prior art with the disclosure of Yea. Pet. 39–40. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that using asymmetrical beams in Yea would have been obvious. We therefore conclude that the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the subject matter of claims 1, 2, 6, 7, 9, 11–15, 18–22, 24, and 27 would have been obvious over Yea, Metawave Website, Litva, and Wästberg.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,311,582 - Sandisk Corp. v. Netlist, Inc.All claims unpatentablePTAB · Sep 28, 2016 · IPR2015-01021 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 16, 17, 24, 30, and 31 are unpatentable as obvious over Takeda, JEDEC, and Connolly.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for patent owner
“1. “Rank” In the Decision to Institute, we construed the term “rank” as “a block or area that is created using some or all of the memory chips on a memory module.” Dec. to Inst. 8–9. In their papers, neither party challenged our constructions of these claim terms. Thus, for the term “rank,” we see no reason to alter the construction of this claim term as set forth in the Decision to Institute as recited above, and we incorporate our previous analysis for purposes of this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. All Other Claim Terms We determine that no explicit construction is necessary for any other terms in the challenged claims. B.” slip op. at 8
- Skill levelSkill level board ownOther
“would understand basic memory and data communication concepts, with a bachelor’s degree in any of electrical engineering, computer engineering, computer science, or related field. Course work for one of ordinary skill in the art would have included a course on computer organization, principles of digital design, or computer architecture. One of ordinary skill in the art would also have around one year of experience related to computer memory systems. For example, such experience may include experience in DRAM memory technology and related industry standards such as JEDEC standards for DRAM memories and memory modules. Ex. 1002 ¶ 53. Patent Owner’s Declarant, Carl Sechen, Ph.D. (“Dr. Sechen”), testifies that one of ordinary skill in the art at the time of the ’536 Patent would have had an undergraduate degree in electrical engineering or computer engineering, at least two years of professional experience in the design of memory systems, familiarity with the latest JEDEC standard specifications for memory devices and modules, and familiarity with the latest DRAM (dynamic random access memory) memory devices widely available in the market. Ex. 2001 ¶ 14. Dr. Sechen further testifies that a person of ordinary skill in the art would have design proficiency in memory modules comprising DDR memory technology, such as memory modules with JEDEC standard DDR SDRAM (synchronous DRAM) devices. Id. ¶ 15. Based on our review of the ’536 Patent and the types of problems and solutions described in the ’536 Patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’536 Patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that Dr. Jagannathan is qualified sufficiently to testify about memory systems and memory modules. E.” slip op. at 12
Patent outcomesUS 8,081,536 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,081,536 - Sandisk Corp. v. Netlist, Inc.Some claims unpatentablePTAB · Sep 28, 2016 · IPR2015-01020 · APJ Peter P Chen · IPR · Final written decision
Claims 17, 22, 24, 26, and 33 are unpatentable as obvious over Takeda, JEDEC, and Connolly; claims 15, 16, 31, and 32 were not shown unpatentable over Takeda and JEDEC.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are unpersuaded by Patent Owner’s position. First, the claim language does not recite any physical or structural connection, rather, only “electrically coupling.” Pet. Reply 3, 8–9. In addition, the specification of the ’150 patent does not define explicitly the term “selectively electrically coupling.” Therefore, as in IPR2014-00882 and IPR2014-01011, we refer to its ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Translogic Tech., 504 F.3d at 1257. A technical dictionary, the IEEE Dictionary,4 defines “electrical coupling” as “[e]lectrical charges in conductors of a disturbed circuit formed by electrical induction.” Ex. 3001. The IEEE Dictionary explains that “[s]ince the ratio of a conductor’s electrostatic charge to the potential difference between conductors (required to maintain that charge) is the general definition of capacitance, electrical coupling is also called capacitive coupling.” Id. The IEEE Dictionary defines” slip op. at 9
- Skill levelSkill level board ownOther
“Based on our review of the ’150 patent and the types of problems and solutions described in the ’150 patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’150 patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D. Declarant Testimony” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that, although Dr. Jagannathan may be less experienced than Dr. Sechen in the area of memory module design, he is nonetheless qualified sufficiently to testify about memory systems and memory modules. E. Asserted Obviousness of Claims 15, 16, 31, and 32 in view of Takeda” slip op. at 14
- ExcludeMotion to exclude, deniedDenied
“We have reviewed the parties’ contentions on this issue, and exercise our discretion to determine that Petitioner’s Reply and the Jagannathan Supplemental Declaration will not be excluded. We find that, although they may be “inartfully” drafted, the first Jagannathan declaration and Petition sufficiently outlined Petitioner’s position on the function of the chip select signal, namely, that the chip select signal was not itself the logic signal enabling operation of bit-switches. We further find that Petitioner’s Reply and the Supplemental Jagannathan Declaration did not present an entirely new rationale of unpatentability based on Takeda, JEDEC, and Connolly. Cf. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (affirming Board’s exclusion of reply brief and declaration that changed unpatentability theory to “an entirely new rationale”). Moreover, there is no dispute that Patent Owner was aware of Petitioner’s position by no later than the Jagannathan deposition, which preceded Patent Owner’s Response by ten days. Patent Owner could have addressed Petitioner’s chip select signal contention, procedurally or substantively, in its Response, but chose to raise the issue only after Petitioner filed its Reply and Supplemental Jagannathan Declaration. Accordingly, Patent Owner had notice of Petitioner’s position and an opportunity to refute that position in its Response.” slip op. at 24
Patent outcomesUS 7,881,150 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,881,150 - PTAB · Aug 30, 2016 · IPR2014-01448 · APJ Debra K Stephens · IPR · Rehearing
The Board denied rehearing of its final written decision, leaving claims 1 and 7 unpatentable over He and Korodi under § 103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified, and “[t]he 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 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, concluding Petitioner had shown by a preponderance of the evidence that the challenged claims are unpatentable. Specifically, we determined Petitioner had established by a preponderance of the evidence claims 1 and 7 are unpatentable under 35 U.S.C. § 103(a) over He and Korodi (Final Dec. 11–25). In light of our determination that Petitioner had established by a preponderance of the evidence that claims 1 and 7 of the ’279 Patent are unpatentable under 35 U.S.C. § 103(a) as obvious over He and Korodi, we took no position on whether the same claims are also obvious over the combination of the teachings and suggestions of Gustafsson and He (id. at 25).” slip op. at 3
§ 103 obviousnessPatents in suitUS 7,671,279 - Alstom Grid LLC v. Dominion Resources, Inc. And Virginia Electric And Power CompanyInstitution deniedPTAB · Jul 6, 2016 · IPR2016-00504 · APJ Kalyan K Deshpande · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1-3, 5-10, 12, 13, and 15-20 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review of claims 1‒3, 5‒10, 12, 13, and 15‒20 of U.S. Patent No. 8,437,883 B2 (Ex. 1002, “the ’883 patent”). Paper 1 (“Pet.”). Dominion Resources, Inc. and Virginia Electric and Power Company (collectively, “Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and associated evidence, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing unpatentability of all the challenged claims. We, therefore, deny the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Patent Owner argues that Deaver fails to disclose “a signal reporting what was sensed by a sensor that is not included in the subset.” Prelim. Resp. 14‒15. We agree with Patent Owner. As argued by Patent Owner, Petitioner contends that Deaver discloses “alerts” that are transmitted when the minimum and maximum voltage thresholds are exceeded. Prelim. Resp. 14‒15; see Pet. 23. However, the CPVMs transmitting the alerts are monitors at each customer premises that are “selected by an electric utility company as a desired point within the power distribution system [] that will be voltage monitored.” Ex. 1004, 4:1‒3. As such, the CPVMs are all in the subset of sensors being monitored, and none of CPVMs are “not included in the subset.” Accordingly, we agree with Patent Owner that Deaver fails to disclose “at least one other sensor of the plurality of sensors that is not included in the subset is further configured to send a respective reporting signal.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner. Petitioner fails to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Petitioner generally states that Deaver, LaPlace, Richeson, and Bell are analogous to the ’883 patent because they are in the same field of endeavor, dealing with power distribution systems and power management in power distribution systems, and metering technology. Pet. 16. Petitioner goes on to characterize each of the references in this field of endeavor. Id. at 16‒17. Although a determination that the cited prior art is analogous to the ’883 patent provides insight into the scope and content of the prior art to be examined, such a determination is, by itself, insufficient to support the conclusion of obviousness. Petitioner must set forth an articulated reasoning with some rational underpinning in supporting its legal conclusion of obviousness, and must provide a reason that would have prompted a person of ordinary skill in the art to combine the elements disclosed by each of the references. Here, Petitioner has failed to provide such a reasoning.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that there is no need to construe expressly any of the claim terms at this time. Although Petitioner and Patent Owner disagree as to the construction of the term “energy delivery parameter,” we need not construe this term because it is not necessary to resolve the dispositive issues discussed below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,437,883 - Alstom Grid LLC v. Dominion Resources, Inc. And Virginia Electric And Power CompanyInstitution deniedPTAB · Jul 6, 2016 · IPR2016-00503 · APJ Kalyan K Deshpande · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–5, 7–13, 15, 16, and 18–34 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner. Petitioner fails to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that there is no need to construe expressly any of the claim terms at this time. Although Petitioner and Patent Owner disagree as to the construction of the term “energy delivery parameter,” we need not construe this term because it is not necessary to resolve the dispositive issues discussed below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Patent Owner argues that Deaver fails to disclose “a signal reporting what was sensed by a sensor that is not included in the subset.” Prelim. Resp. 14‒16. We agree with Patent Owner. As argued by Patent Owner, Petitioner contends that Deaver discloses “alerts” that are transmitted when the minimum and maximum voltage thresholds are exceeded. Prelim. Resp. 14‒16; see Pet. 22. However, the CPVMs transmitting the alerts are monitors at each customer premises that are “selected by an electric utility company as a desired point within the power distribution system [] that will be voltage monitored.” Ex. 1004, 4:1‒3. As such, the CPVMs are all in the subset of sensors being monitored, and none of the CPVMS are “not included in the subset.” Accordingly, we agree with Patent Owner that Deaver fails to disclose “at least one other sensor of the plurality of sensors that is not included in the subset is further configured to send a respective reporting signal.” Patent Owner further argues that Deaver fails to disclose “add[ing] to the subset the at least one other sensor that sent the respective reporting signal,” as recited by independent claim 1. Prelim. Resp. 8‒14. We agree with Patent Owner. Petitioner contends that Deaver discloses voltage adjustment instructions based on the reported measurement data, and “because any number of customer premises may be selected for voltage monitoring, the reporting meter could be added to the monitored subset.” Pet. 23 (citing Ex. 1004, 4:45‒60, 5:47‒62, 6:46‒51; Ex. 1001, 38‒42). However, as argued by Patent Owner, Deaver is silent as to adding to the subset of CPVMs being monitored. See Prelim. Resp. 9. At best, Petitioner’s argument that any number of customer premises may be selected, and meters could be added to the subset is an argument towards the obviousness of this limitation, not anticipation, as challenged by Petitioner. See Pet. 23. Accordingly, we agree with Patent Owner that Deaver fails to disclose “wherein the voltage controller is further configured to add to the subset the at least one other sensor in response to receiving the reporting,” as recited by independent claim 1.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner. Petitioner fails to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Petitioner generally states that Deaver, LaPlace, Richeson, and Bell are analogous to the ’510 patent because they are in the same field of endeavor, dealing with power distribution systems and power management in power distribution systems, and metering technology. Pet. 14. Petitioner goes on to characterize each of the references in this field of endeavor. Id. at 14‒15. Although a determination that the cited prior art is analogous to the ’510 patent provides insight into the scope and content of the prior art to be examined, such a determination is, by itself, insufficient to support the conclusion of obviousness. Petitioner must set forth an articulated reasoning with some rational underpinning in supporting its legal conclusion of obviousness, and must provide a reason that would have prompted a person of ordinary skill in the art to combine the elements disclosed by each of the references. Here, Petitioner has failed to provide such a reasoning. We further agree with Patent Owner that testimony from Dr. Kezunovic’s Declaration should not be incorporated in to the Petition. See Prelim. Resp. 31‒33. The Petition itself does not address a rationale to combine Deaver, LaPlace, Richeson, Bell, Keefe, and ANSI C84.1-2006, and further does not direct us to discussion in Dr. Kezunovic’s Declaration for a rationale to combine. At best, Dr. Kezunovic asserts that “DMS, smart meters, and substations are well-known prior art elements, whereby their combination yields predictable results.” Ex. 1001, 95; see Ex. 1001, 176, 238, 250. However, Dr. Kezunovic does not provide any explanation as to why the combination of “DMS, smart meters, and substations” would yield predictable results. Accordingly, even if we were to incorporate Dr. Kezunovic’s Declaration in to the Petition, which we do not, we are not persuaded that Petitioner has set forth articulated reasoning with some rational underpinning in supporting its legal conclusion of obviousness. As such, Petitioner has not demonstrated a reasonable likelihood in prevailing in its obviousness challenges.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,577,510 - Mastercard International Inc. v. Leon StamblerAll claims unpatentablePTAB · Jul 6, 2016 · CBM2015-00044 · APJ Peter P Chen · CBM · Final written decision
Claims 51 and 53 are unpatentable as anticipated by Davies; claims 51, 53, 55, and 56 are unpatentable as obvious over Davies and Meyer; claim 55 over Davies and Nechvatal; and claim 56 over Davies, …
RulingsFinal written decision- Skill levelSkill level board ownOther
“F. Level of Ordinary Skill in the Art Petitioner’s proposal for the level of ordinary skill in the art is “at least a bachelors degree in computer programming and two years’ experience as a programmer or developer in the field of computer science, with a working understanding of cryptographic operations for transforming original input into a coded output using a known algorithm.” Pet. 14–15. Patent Owner has proposed similarly, that one of ordinary skill in the art would possess “(1) undergraduate education in mathematics, physics, computer science, electrical engineering or similar technical subject; and (2) either postgraduate education in networking, cryptography, or other discipline encompassing information theory, or equivalent experience with applications involving communication of financial, military, medical or similarly sensitive data over secure and non-secure networks.” Prelim. Resp. 30–31. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“1. “variable authentication number (VAN)” In the Decision to Institute, we construed the term “variable authentication number” or “VAN” as “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.” Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 8–9 (PTAB Oct. 31, 2014) (Paper 10). Patent Owner “does not challenge this construction.” PO Resp. 16–17. Patent Owner asserts additional construction of the term is necessary for CBM standing issues, but does not elaborate further. PO Resp. 1. Patent Owner also argues we incorrectly applied the broadest reasonable interpretation to the term in the Decision to Institute. PO Resp. 9. The Decision to Institute noted that our review of the claims of the expired ’302 patent is similar to that of a district court’s review, In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005), but inadvertently mentioned the broadest reasonable interpretation standard in construing this term. Dec. to Inst. 7–8. We reaffirm our agreement with Patent Owner that the Phillips framework is applied to the expired ’302 patent. Our construction of “VAN” is the same under either claim construction standard. We reject Patent Owner’s undeveloped argument regarding standing, and maintain the construction of VAN from the Decision to Institute, as the ordinary and customary meaning of the term: “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.”” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“2. Sequence of method steps: receiving, generating In the Decision to Institute, we agreed with Patent Owner and construed the sequence of method steps in independent claim 51 to mean that at least a portion of the receiving step must precede the generating step. Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 11–14 (PTAB Oct. 31, 2014) (Paper 10). We maintain that construction as the ordinary and customary meaning of the sequence of the receiving and generating method steps.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“intended use of an invention is generally not treated as limiting the scope of the claim. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). However, “a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). “The effect preamble language should be given can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). When the limitations in the body of the claim rely upon or derive essential structure from the preamble elements, e.g., the preamble serves as an antecedent basis for limitations in the claim, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). In this case, the preamble of independent claim 51 recites “a credential being previously issued,” and the limitations of the claim include “determining whether the at least a portion of the received funds transfer information is authentic by using the VAN and the credential information.” Ex. 1001, 33:18–19, 33:29–31. Thus, the preamble’s recitation of “a credential” is an antecedent basis for the recited “the credential information” in the “determining” step, and we determine that the preamble limits the scope of the challenged independent claim 51 and dependent claims 53, 55, and 56.” slip op. at 11
Patent outcomesUS 5,793,302 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 5,793,302
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.