• TRW Automotive US LLC v. Magna Electronics Inc.All claims unpatentable
  PTAB · Dec 7, 2015 · IPR2014-01010 · APJ Barry L Grossman · IPR · Final written decision

  Claims 6, 7, and 10 are unpatentable under § 103(a) as obvious over Ponziana and Rayner, with Kakinami added for claim 7.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “We determine that the patentability of the challenged claims does not depend on whether Petitioner’s or Patent Owner’s asserted definition is used. The differences among the asserted positions are insignificant in resolving the issue of the patentability of the challenged claims. Moreover, the prior art itself reflects an appropriate level of skill and a need for testimony is not shown. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16

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

    “less” added, to create thereby the word “fastenerless.” The plain and ordinary meaning of the term “fastenerless” means “without a fastener.” Applying this meaning to claim 10, a “fastenerless attachment” is something that detachably mounts accessory module 10 to an attachment member without using a fastener. Petitioner’s assertion that “fastenerless” means a “detachable mount other than a screw” is not supported by the Specification or by a common dictionary definition. We construe the term “fastenerless attachment” in claim 10 to mean an attachment device that does not use a fastener to mount detachably the accessory module. An example of a “fastenerless attachment” is spring clip 400 from the ’687 patent that does not have or use the optional hole or slot 412 in ends 408 and 410 in order to receive a fastener 413 for attaching the respective end to a surface. Ex. 1007, col. 10, ll. 12–19. slip op. at 9

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

    “For a rain sensor mounted on a vehicle windshield, the area to be photographed or sensed may be the windshield itself, as disclosed in Ponziana, or it may be “a larger area,” also as disclosed in Ponziana. Ex. 1004, col. 3, ll. 37–60. For a data recorder as disclosed in Rayner, used to reconstruct events leading up to a vehicle accident, and the accident itself (Ex. 1005, col. 1, ll. 29–41), the area to be photographed or sensed includes preferably “the entire area ahead of the vehicle” (id. at col. 1, ll. 50–55). Rayner also recognizes the need for some “adjustability” to ensure proper orientation of the camera. Ex. 1005, col. 3, ll. 23–27. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Under the correct analysis under § 103(a), “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. In considering the orientation of a camera within an accessory module mounted to a windshield to obtain the desired field of view for the camera, a person of ordinary skill and creativity, that is a person with a degree in engineering and at least two years of relevant experience (Pet. 13–14; PO Resp. 1), would recognize the myriad factors that may affect the orientation of the camera. The angle of the windshield may be substantially raked or angled towards the rear of a vehicle, as in a sports car, or may be substantially vertical, as in a modern bus. The camera may be at 90 degrees to the windshield-facing portion of the module when mounted to a bus windshield, as shown in Ponziana and Rayner, and would be at an angle other than 90 degrees when mounted to the sleek sports car. Both applications compensate for the angle of the windshield to ensure that the field of view of the camera covers the entire area ahead of the vehicle, as disclosed in Rayner, and as recited in claim 6. We find unpersuasive Patent Owner’s assertion” slip op. at 19

  • Obviousness (§103) › KSR rationalesMotivation foundUnpatentable

    “mounting element 26. Pet. 12, 17–18. As stated in Ponziana, a first mounting element 26 is on windshield 15 (Ex. 1004, col. 3, ll. 11–13), and the accessory module (rain sensor 24) attaches to mounting element 26 by a complementary mounting area 32 on housing 30 (id. at col. 3, ll. 16–20). Thus, the issue is whether the combined teachings of the references would have suggested to a person of ordinary skill that the alternative accessory module mounting elements of either suction cups or Velcro-type hook and pile fasteners, as disclosed in Rayner, should be complementary to the windshield mounting element (i.e., element 26), as disclosed in Ponziana. We determine, based on the reference disclosures, that this combination would have been obvious. Rayner discloses that the fastening devices disclosed are alternatives to other known mounting devices. Ex. 1005, col. 7, ll. 30–37. Among the myriad fastening options available, ranging from adhesives to the more complex structure disclosed in Ponziana, we are persuaded, based on the reference disclosures, that it would have been obvious to a person of ordinary skill and creativity to choose the preferred fastening option. We note that claim 6 recites an interior rearview assembly and a “separate” accessory module. Ex. 1002, col. 53, ll. 10–11 (“an accessory module separate from said interior rearview mirror assembly”). In Ponziana and in the embodiment shown and described with respect to Figure 1 in Rayner, the mirror mount and the module mount are integrated. Figure 2 in Rayner, however, discloses a module mount separate and distinct from a mirror mount. As stated clearly in Rayner, the embodiment in Figure 2 “does not include a mirror or function as a rear-view mirror.” Ex. 1005, col. 7, ll. 4–6. Based on this disclosure, a person of ordinary skill would have appreciated the simplicity of Rayner’s Figure 2 embodiment, which allows for more basic mounting structures, ranging from an adhesive to a Velcro-type attachment, than when the mirror and module use a common mounting system. The Velcro-type hook and pile fastener disclosed in Rayner uses two components, a hook component and a pile component. As suggested by the mounting structure in Ponziana, one mounting component is connected to the windshield; and the second component is connected to the module. By attaching the first component to the second component, the module is attached to the windshield.” slip op. at 21

  Patent outcomesUS 7,533,998 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,533,998
• TRW Automotive U.S. LLC v. Magna Electronics Inc.No claims unpatentable
  PTAB · Nov 19, 2015 · IPR2014-01355 · APJ James P Calve · IPR · Final written decision

  Claims 58–76, 78–80, and 82–86 were not shown unpatentable because the proposed combinations did not establish a reason to extend the frit layer beyond the mount and add a camera opening.

  RulingsFinal written decision

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

    “footprint of an accessory in Figure 2C and Figures 3A–3E. Opaque layer 40 extends beyond where storage compartment 42 and outer wall 52 attach to inner surface 30 of window panel 28. However, Carter extends frit layer 40 from top wall 48 of storage compartment 42 only to gasket/grommet 36 at peripheral edge 34 of upper window panel 28. See id. at 3:59–61, Fig. 2C. Carter does not extend frit layer 40 to the front windshield. Thus, we are not persuaded that this teaching would have motivated a skilled artisan to extend a frit layer beyond the footprint of Blank’s mounting button 70 or mount 44 at windshield 22. The issue is not whether a skilled artisan could extend a frit layer beyond an attachment point or whether it would have been trivial to do so. See Pet. Reply 23. The issue is whether a skilled artisan would have been motivated to do so based on teachings of the references; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).” slip op. at 15

  • Expert testimonyOther

    “of accessories from exterior view, the frit coating “conforms substantially to the regions of the window panel which receive the accessory [which] is referred to as the footprint of the accessory.” Ex. 1007, 8:33–38 (emphasis added). As shown in Figures 4A, 4C, 5A, and 5C of Carter, reproduced above, frit layers 108, 170 conceal storage compartments 102, 162 where those accessories attach to window panels 106, 166. Id. at 6:57–67, 7:6–22, 7:59–8:5; Ex. 1016 ¶ 28. Frit layers 108, 170 conform to “footprints” where accessories 102, 162 attach to window panel 106, 166. Ex. 1016 ¶¶ 28, 29.” slip op. at 15

  Patent outcomesUS 8,481,916 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 8,481,916
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Some claims unpatentable
  PTAB · Nov 16, 2015 · IPR2014-01351 · APJ James P Calve · IPR · Final written decision

  Claims 60, 61, 70–74, and 77 are unpatentable as obvious over Blank, Kakinami, and Schofield; the other challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Dr. Nranian testifies that the proposed modification would require substantial reconstruction or a redesign of Blank or a change in the principle of operation. Ex. 2005 ¶¶ 106–110. Dr. Nranian does not elaborate on this opinion or explain what redesigns and reconstructions would be required. We find persuasive the testimony of Dr. Kazerooni that designing a housing to hold components therein is a basic engineering concept within the level of ordinary skill in the art, particularly in view of, and as evidenced by, the disclosures of Blank and Schofield. Ex. 1016 ¶¶ 21–23. Blank discloses that circuit board 150 may be configured for a supplemental vision system. Ex. 1005, 7:51–59. TRW proposes to use this principle of operation and include Kakinami’s camera with Blank’s module 26. Pet. Reply 15–17. As discussed above, Blank and Schofield disclose reconfiguration and redesign of accessory housings, both internally and externally, to accommodate a variety of different accessories. Ex. 1005, 3:8–11, 7:6–10; Ex. 1006, 9:24– 36. Kakinami also discloses mounting of video camera 20, which includes lens 14, video device 15, and signal processing unit 16. Ex. 1010, 2:15–26, Fig. 2a. Physical incorporation is not required to demonstrate obviousness. See In re Yamamoto, 740 F.2d at 1573.” slip op. at 25

  • Skill levelSkill level petitioner adoptedOther

    “sophistication of the technology, all as addressed herein, it is submitted that the person of ordinary skill in the art of the ’590 Patent at the time of the invention would have had at least the qualifications of or equivalent to either a undergraduate degree in electrical engineering or mechanical engineering with course work or research in automobile accessory systems with at least two years of work making automobile accessory systems. Ex. 1012 ¶ 30. This discussion appears in Dr. Kazerooni’s Declaration in a section entitled “LEVEL OF ORDINARY SKILL.” Ex. 1012 ¶¶ 29–30. This definition of a skilled artisan in paragraph 30 immediately precedes Dr. Kazerooni’s discussion of the “STATE OF THE ART IN THE RELEVANT TIMEFRAME.” See id. ¶¶ 31–48. This definition of a skilled artisan in paragraph 30 of Dr. Kazerooni’s Declaration matches TRW’s definition of a skilled artisan in the Petition and is cited as the basis of TRW’s definition of a skilled artisan. See Pet. 17 (citing Ex. 1012 ¶¶ 29–30); Ex. 1012 ¶ 30. Another definition of a skilled artisan appears in Dr. Kazerooni’s Declaration in a section entitled “SUMMARY OF OPINIONS.” Ex. 1012 ¶ 10. It is unclear what use, if any, is made of this definition. Accordingly, we understand TRW and Dr. Kazerooni to assert the same definition of a skilled artisan, which definition appears at page 17 of the Petition and paragraph 30 of Dr. Kazerooni’s Declaration. Dr. Kazerooni identifies November 4, 1999 as the priority date of the ’590 patent invention. Ex. 1012 ¶ 26. Magna does not dispute this date. PO Resp. 57. Dr. Kazerooni testifies to the level of ordinary skill at the time of the invention. Id. ¶ 30. Dr. Kazerooni provides a detailed discussion of the state of the art at the time of the invention by discussing the disclosures of Blank, Kakinami, Schofield, Carter, Anderson, and Klappenbach. Id. ¶¶ 31– 48. These references were filed and issued before November 4, 1999. TRW” slip op. at 32

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

    “We interpret “bus communication” as “information transferred over a set of signal lines between devices connected to the signal lines.” We are not persuaded that a bus must include an interface. The IEEE Standard 969 Interface Devices (Ex. 1004) defines a bus in that context. The’590 patent discloses a CAN bus without disclosing an interface. Ex. 1002, 4:15–17. An ordinary meaning of “bus” includes “[a] set of signal lines to which a number of devices are connected and over which information is transferred between them.” See ANSI/IEEE Standard 1196-1987 IEEE Standard for a Simple 32-Bit Backplane Bus: NuBus (Ex. 3001).” slip op. at 7

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

    “We construe “cluster of individual sensors” as “a group of individual sensors or components of individual sensors positioned close together.” Pet. 6–7; Prelim. Resp. 11–12. This interpretation is consistent with an ordinary meaning of “cluster” which includes “a group of things or people that are close together” (Pet. 6) and the claims, which recite “a cluster of individual sensors resides on or near said in-cabin surface of said windshield.” This interpretation is consistent with the ’590 patent specification, which discloses that housing 10 is divided by wall 16 into adjacent first and second compartments 18, 20. Ex. 1002, 3:29–31, Fig. 2. One embodiment contains rain sensor 26 in first compartment 18 and printed circuit board 30 bearing a compass sensor 30 in second compartment 20. Id. at 5:62–6:12, 7:52–55, Figs. 2, 8. The ’590 patent specification discloses that the housing may accommodate a plurality of electrical accessories. Id. at 6:42–44. The ’590 patent further discloses that component 30 “can be any of a number of sensors or circuits which can be made small enough to fit in the compartment 20.” Id. at 7:64–67 (emphasis added). Preferably, component 30 is provided as a unitary module received in compartment 20. Id. at 7:67– 8:1. An ordinary meaning of “any” is one or more. Thus, the ’590 patent specification discloses that component 30 may include more than one sensor.” slip op. at 9

  Patent outcomesUS 8,513,590 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,513,590
• C&D Zodiac, Inc. v. B/E Aerospace, Inc.Some claims unpatentable
  PTAB · Oct 26, 2015 · IPR2014-00727 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1, 3–7, 9, 10, 12–14, 16–19, 21, 22, 24–29, 31, and 33–37 are unpatentable as obvious over Betts; claims 8, 20, 30, and 38 were not shown unpatentable over Betts and the Orange Book.

  RulingsFinal written decision

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

    “The term “enclosure unit” encompasses lavatories, aircraft closets, and aircraft galleys. Given the grounds of unpatentability that Petitioner raises, there is no need to further construe this term. 2. “lavatory stall unit” Whereas independent claim 1 recites “enclosure unit,” independent claim 9 recites “lavatory stall unit.” Patent Owner proposes the latter be construed as “a single room, enclosed on all sides, having a toilet and washbasin and large enough to fit a person inside.” PO Resp. 12. For reasons similar to those with respect to “enclosure unit,” we reject Patent Owner’s proposed construction of “lavatory stall unit.” Further, given the grounds of unpatentability that Petitioner raises, there is no need to provide an express construction for this term. More specifically, Petitioner does not rely on any particular prior art lavatory. Indeed, Petitioner does not rely on either of the asserted references to teach a “lavatory stall unit,” instead relying on the knowledge and skill of a person of ordinary skill in the art.” slip op. at 9

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

    “These proposed constructions would render the claim language “in a vertical plane” meaningless because tilting a seatback between an upright position and another position would have no effect on the shape of the aft surface of the seatback. Therefore, we do not adopt them. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1115 (Fed. Cir. 2002) (proposed construction that rendered a portion of the claim language meaningless held improper). Rather, we construe “in a vertical plane” according to its ordinary and customary meaning and consistent with the specification, which contrasts a forward wall in a vertical plane (see Fig. 1—the prior art) against a recessed forward wall (see Fig. 2—an embodiment of the claimed invention). In sum, the full limitation at issue encompasses an aft portion (in the case of claim 1) and an aft portion with an exterior aft surface (in the case of claims 9, 21, and 31) that has a flat shape but which is not within a vertical plane. This is within the broadest reasonable construction in light of the Specification, which discloses a substantially conforming recessed forward wall positioned behind the seat (see Ex. 1001, Fig. 2), as opposed to a wall that is flat in a vertical plane (see id. at Fig. 1). 4. “forward wall portion is shaped to substantially conform to the shape of the” slip op. at 10

  • BurdenFwd mixedMixed

    “As discussed below, Petitioner has shown by a preponderance of the evidence that claims 1, 3–7, 9, 10, 12–14, 16–19, 21, 22, 24–29, 31, and 33–37 of the ’838 patent are unpatentable as obvious over Betts. But, Petitioner has not shown by a preponderance of the evidence that claims 8, 20, 30, and 38 are unpatentable as obvious in view of Betts and the Orange Book, as Petitioner has not established that the evidence relied upon within the Orange Book is a printed publication.” slip op. at 3

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

    “motivated to efficiently use space on an aircraft, as evidenced by Betts, “to provide more room for passengers.” Id. ¶ 65 (quoting Ex. 1003, 1:6–7). Mr. Anderson further testifies that Betts teaches the person of ordinary skill in the art a recessed forward wall configuration that uses space more efficiently than a flat configuration, and that a person of ordinary skill in the art would have been motivated to apply the recessed configuration to other aircraft enclosures, including lavatories. Patent Owner argues that a person of ordinary skill in the art “would have been discouraged from attempting to tailor Betts’ divided space design to any lavatory stall unit (or any other enclosure unit) because Betts required separate enclosures divided both functionally and spatially.” PO Resp. 29. But, Petitioner’s ground of unpatentability is not premised on whether it would have been practical or possible to convert Bett’s “divided space” (i.e., its overhead coat compartment and floor luggage space) into a lavatory. Rather, Petitioner argues that it would have been obvious to apply Bett’s recessed forward wall design to other aircraft enclosures, including a lavatory. Pet. 19 (“One of ordinary skill in the art would recognize that the teachings of the McDonnell Douglas patent [i.e., Betts] are equally applicable to the forward walls of other enclosure units, such as lavatories or galleys.”) (citing Ex. 1009 ¶¶ 65–68); cf. In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the 15 features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”).” slip op. at 15

  Patent outcomesUS 8,590,838 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,590,838
• Apple Inc. v. Ziilabs Inc., Ltd.Institution denied
  PTAB · Oct 1, 2015 · IPR2015-00963 · APJ Michael R Zecher · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 21, 25, and 33 were unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in ZiiLabs’ Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Apple will prevail in challenging claims 21, 25, and 33 of the ’649 patent as unpatentable under 35 U.S.C. §§ 102(e) and 103(a). We, therefore, deny the Petition.” slip op. at 2

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

    “First, we recognize that McCormack discloses that memory controller 210 delays or stalls reading pixel data associated with a fragment request that fragment overlap detector 235 identifies as being overlapping until the pixel data at all the previous non-overlapping addresses are rewritten from pixel write queue 220 to frame memory 205. Ex. 1010, 9:3–19. Nonetheless, McCormack also discloses that, when a pixel data entry associated with a fragment request is removed from the CAM, all such entries are removed. See Ex. 1010, 3:64–4:1 (“the address memory is cleared of the detected first address, as well as all other addresses stored in the detector, responsive to the detector detecting a request to read overlapping pixel data associated with the second address”), 9:35–36 (“fragment overlap detector 235 will clear the CAM of the previously stored address, then store the address detected in the most recently received fragment of the CAM”). Given that McCormack’s CAM is cleared completely whenever an entry is removed from the CAM, it is not apparent to us how its disclosure of memory controller 210 delaying or stalling further reads is triggered by a pixel data entry that remains in the CAM because it has not been updated or discarded. Second, we accord Dr. Owens’ testimony regarding the claimed “suspending” step little weight. Dr. Owens’ testimony in this regard is essentially the same as the contentions Apple offers in its Petition, which we have considered above and found unpersuasive. Compare Pet. 30–31, with Ex. 1003 ¶ 181. Dr. Owens does not attempt to reconcile the deficiency we identified in McCormack—namely, how McCormack’s disclosure of memory controller 210 delaying or stalling further reads is triggered by a pixel data entry that remains in the CAM because it has not been updated or discarded, especially given the fact that the CAM is cleared completely whenever an entry is removed from the CAM. See Ex. 1010, 3:54–4:1, 9:35–36. Absent a cogent explanation from Dr. Owens, we are not persuaded that Apple has presented sufficient evidence to support a finding that McCormack describes the “suspending” step, as recited in independent claim 21.” slip op. at 11

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

    “to discern how each of the cited disclosures in McCormack work in conjunction to account for all the features recited in the “suspending” step. The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). Here, Apple directs us to disparate disclosures in McCormack, and then generally asserts that McCormack accounts for all the features recited in the “suspending” step. For instance, Apple cites to and relies upon the following disclosures in McCormack: (1) the “Background Art” section, see, e.g., Ex. 1010, 1:63–64, 2:4–5; (2) the “Summary Disclosure of the Invention” section, see, e.g., id. at 3:14–18; and (3) the “Best Mode for Carrying Out the Invention” section, see, e.g., 8:7–16, 8:22–23, 8:30–35. Apple, however, does not provide a credible or sufficient explanation as to how one of ordinary skill in the art might combine these disparate disclosures to arrive at the “suspending” step. As we explain in our Introduction Section above, § 314(a) places the burden on Apple to demonstrate that there is a reasonable likelihood that the combined teachings of McCormack and Kenworthy render obvious independent claim 25, which includes, among other things, offering concise, well-organized, easy-to-follow arguments as to how these asserted prior art references account for all the features recited in the “suspending” step. We decline to shoulder this burden and, as a result, we will not attempt to fit the disparate disclosures from McCormack together into a coherent explanation to supplement Apple’s insufficient arguments presented in its Petition. Cf. United States v. Lanzotti, 205 F.3d 951, 957 (7th Cir. 2000) (“It is not this court’s responsibility to research and construct the parties’ arguments.”). To the extent that Apple relies upon the supporting testimony of Dr. Owens to bridge the gap between the disparate disclosures of McCormack, we are not persuaded. The testimony of Dr. Owens relied upon by Apple to support its position that McCormack teaches the “suspending” step either reiterates disclosures in McCormack with minimal discussion regarding the level of skill in art, see e.g., Ex. 1003 ¶¶ 103–05, 156, 181, or essentially repeats the contentions offered by Apple in its Petition, see e.g., id. ¶¶ 207– 10. Rarely, however, will minimal discussion regarding the level of skill in the art, without further explanation, act to bridge gaps in the substantive presentation of an asserted ground based on obviousness. See Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999). Consequently, we do not credit Dr. Owens’ cited testimony because it does not provide additional insight beyond Apple’s insufficient arguments presented in its Petition that helps us evaluate how one of ordinary skill in the art might combine the disparate disclosures of McCormack to arrive at the “suspending” step.” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “To the extent that Apple relies upon the supporting testimony of Dr. Owens to bridge the gap between the disparate disclosures of McCormack, we are not persuaded. The testimony of Dr. Owens relied upon by Apple to support its position that McCormack teaches the “suspending” step either reiterates disclosures in McCormack with minimal discussion regarding the level of skill in art, see e.g., Ex. 1003 ¶¶ 103–05, 156, 181, or essentially repeats the contentions offered by Apple in its Petition, see e.g., id. ¶¶ 207– 10. Rarely, however, will minimal discussion regarding the level of skill in the art, without further explanation, act to bridge gaps in the substantive presentation of an asserted ground based on obviousness. See Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999). Consequently, we do not credit Dr. Owens’ cited testimony because it does not provide additional insight beyond Apple’s insufficient arguments presented in its Petition that helps us evaluate how one of ordinary skill in the art might combine the disparate disclosures of McCormack to arrive at the “suspending” step.” slip op. at 17

  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,977,649
• Fieldcomm Group v. Sipco, LLCInstitution denied
  PTAB · Aug 11, 2015 · IPR2015-00659 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution for claims 1–4 and 6–25 because the petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

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

    “We have reviewed the proposed ground of obviousness over Kantronics and AX.25 against claims 1–4, 6, 8–11, 13–22, 24–25, and we are not persuaded, on the record before us, that Petitioner has established a reasonable likelihood that Petitioner would prevail in its challenge to claims 1–4, 6, 8–11, 13–22, 24–25 on this ground.” slip op. at 6

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

    “Alternatively, Petitioner argues that “a person of ordinary skill in the art would know that scalable addresses were well known as far back as the 1980’s [and therefore it] would be obvious to a person of ordinary skill in the art to modify AX.25 to include scalable addresses to use an address format other than call signs.” Pet 14. We are not persuaded by this conclusory argument. Petitioner also relies on its expert to make arguments not contained in the Petition. We decline to import the discussion about the use of scalable addresses from Mr. Goldberg’s Declaration into the Petition, based solely on the Petition’s citation of paragraphs within the Declaration. As stated in 37 C.F.R. § 42.6(a)(3), “[a]rguments must not be incorporated by reference from one document into another document.” Finally, Petitioner and its declarant failed to show that scalable addresses would have been the obvious scheme for routing packets in the system of Kantronics.” slip op. at 8

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner also relies on its expert to make arguments not contained in the Petition. We decline to import the discussion about the use of scalable addresses from Mr. Goldberg’s Declaration into the Petition, based solely on the Petition’s citation of paragraphs within the Declaration. As stated in 37 C.F.R. § 42.6(a)(3), “[a]rguments must not be incorporated by reference from one document into another document.” Finally, Petitioner and its declarant failed to show that scalable addresses would have been the obvious scheme for routing packets in the system of Kantronics.” slip op. at 8

  • BurdenNot shown unpatentable

    “Petitioner asserts that an AX.25 information packet contains a “control field [that] is responsible for identifying the type of frame being sent, and is also used to convey commands and responses from one end of the link to the other in order to maintain proper link control.” Pet. 12 (quoting Ex. 1003 (AX.25), 10). Petitioner points to a CTRL command that is available in Kantronics but does not point to any evidence that the CTRL code can be or actually is placed in the packet. In addition, Petitioner does not discuss whether it would have been obvious to one of ordinary skill in the art to use the control field in the AX.25 protocol to send commands in the Kantronics system. In fact, Kantronics discloses that a user’s “host program will provide you with some means to give commands to the TNC. For a complete description of your host program, refer to the manual that comes with your software.” Kantronics 184. Petitioner does not provide this manual with the Petition. Thus, the record is at best unclear as to how commands are sent by Kantronics. Additionally, Petitioner has not shown that one of ordinary skill would use the control field of the AX.25 protocol to send command code consistent with the command codes of the Kantronics system. Ex. 1004, 169. For that reason, the Petitioner did not show that it is more likely than not to prevail on its proposed obviousness grounds with respect to independent claim 8 or claims 9– 13 that depend therefrom. 3. Claims 22, 24 Petitioner relies on its argument for claims 1–4 and 6 to support its assertion that the various means-plus-function limitations in claim 22 are taught by the prior art. However, claims 1–4 and 6 do not recite any means-plus-function limitations. Additionally, Petitioner did not provide the proper analysis for any of the means-plus-function limitations. That is, the Petitioner did not “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function,” let alone show how the prior art teaches such structure. 37 C.F.R. § 42.104(b)(3)–(4). For these reasons, on the record before us, Petitioner has not shown sufficiently that there is a reasonable likelihood that it would prevail on its proposed obviousness grounds with respect to independent claim 22 or claim 24 that depends therefrom. D. Obviousness of Claims over Kantronics, AX.25, and Zimmerman Petitioner asserts that claims 7, 12, and 23 are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Kantronics, AX.25, and Zimmerman. Pet. 43. As noted above in Section C, Petitioner has not shown that the combination of Kantronics and AX.25 meet all the limitations of claims 1, 8 and 22, from which claims 7, 12, and 23 depend. Further, Petitioner has not argued that Zimmerman makes up for the deficiencies in the combination of Kantronics and AX.25 discussed above. For those reasons, we are not persuaded that Petitioner has established a reasonable likelihood that Petitioner would prevail in its challenge to claims 7, 12, and 23 on this ground.” slip op. at 9

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,697,492
• Euro-Pro Operating LLC v. Acorne Enterprises, LLCAll claims unpatentable
  PTAB · Jul 9, 2015 · IPR2014-00351 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 13, and 14 are unpatentable as obvious over Hlava, Hlava and Nachumsohn, and Nachumsohn and Vallorani; the motion to amend is denied.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Decision to Institute, in which we determined that the following claim terms invoke section 112, ¶ 6 because they specify a function but no structure for performing that function. Inst. Dec. 7.” slip op. at 6

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

    “not provided an articulated reasoning with rational underpinnings to support obviousness of claim 1 over Nachumsohn. PO Resp. 35–38. Patent Owner specifically contends that simply using a double pole triple (or four) throw switch to selectively energize the wrap-around and bottom heat elements “cannot reasonably be accomplished by a person of ordinary skill in the art following the teachings of the Nachumsohn invention.” Id. at 38. This argument is not persuasive for at least two reasons. First, a person of ordinary skill in the art is not limited to the teachings of Nachumsohn. One of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR, 550 U.S. at 418 (“[T]he [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Second, Petitioner showed that one of ordinary skill in the art would have been motivated to include such a function controlling means “to provide variable cooking modes” that constitute the many different cooking phases, such as, baking, searing, scalloping, stewing discussed in Nachumsohn. Pet. 38 (citing Ex. 1004, pg. 1, col. 1, ll. 15–19). Petitioner reasoned that these cooking modes could be achieved by enabling multiple heating elements to be selectively energized, and that electromechanical rotary switches—such as a double pole triple throw switch, which would have enabled Nachumsohn’s bottom and side heating elements to be energized to provide cooking modes via the bottom heating element only, the side heating element only, or both heating elements; and such as a double pole four throw switch, which would have included an “off” setting (where neither heating element is energized) and enabled Nachumsohn’s bottom and side heating elements to be energized to provide cooking modes via the bottom heating element only, the side heating element only, or both heating elements—were known means of accomplishing same. Pet. 38–39 (citing Ex. 1017 ¶¶ 22, 36–39). Petitioner’s reasoning is supported by evidence from Nachumsohn that different modes of heating and cooking food were contemplated by those of skill in the cooking arts, and that modifying Nachumsohn’s circuit with a double pole triple (or four) throw switch to selectively energize, either, or both heating elements to achieve these modes “would have been routine for one of ordinary skill in the art at the time [the] ’262 patent was filed.” Id. Therefore, Petitioner has presented an articulated reasoning with rational underpinning based on Nachumsohn.” slip op. at 22

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

    “localized thermal stresses and cracking that would be caused by the proposed new bottom heating device.” PO Resp. 22 (citing Ex. 1003, 4:23– 34). However, teaching away requires a reference to actually criticize, discredit, or otherwise discourage investigation into the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The concern addressed by Hlava is that localized hot spots can compromise stoneware inserts, and therefore sensors are used to discriminate between a stoneware insert, and a metallic insert better suited to higher heat settings. Ex. 1003, 4:23–41. The passages in Hlava referred to by Patent Owner state that “when stoneware insert 16 is placed within housing 12, the maximum heat output permitted by heating device 30 is limited to prevent thermal shock and cracking of the stoneware.” Id. at 4:46–49. Patent Owner’s argument fails to explain why one of ordinary skill in the art would have been discouraged from providing a bottom heating element even though Hlava specifically states that metallic inserts were available that could handle higher heat stress. See id. at 4:49– 52. Indeed, Patent Owner’s argument fails to explain why such a bottom heating element could not be regulated in temperature just like Hlava’s heating device 30, for any type of insert in such a deep well cooking apparatus including a stoneware insert. Patent Owner’s further contention that Hlava’s insert discriminating sensor 36 somehow dissuades one of skill in the art from using a bottom heating element is also unavailing. See PO Resp. 23–25. Even if a bottom heating element shifted, or added to Hlava, theoretically could “result in localized thermal stresses and cracking of the stoneware insert 16,” (id. at 25) Hlava expressly teaches how to avoid such a result with sensor 36 to limit the maximum heating temperature of the heating elements. See Ex. 1003, 4:46–49. Patent Owner’s conclusory argument, that shifting heating element 30c' to the bottom of Hlava’s cooker would “destroy the intent, purpose or function” of Hlava’s invention, does not explain persuasively why the temperature of a bottom heating element, either shifted or added to Hlava’s cooker, would not also be limited by operation of sensor 36, for instance when a stoneware insert is used in the cooker. For the above reasons, we conclude that a preponderance of the evidence demonstrates that claim 1 is unpatentable based on Hlava and the admitted prior art.” slip op. at 16

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

    “under § 103 only when it is analogous to the claimed invention. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011)); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). A reference is considered analogous prior art: (1) if the reference is from the same field of endeavor as the claimed subjected matter, regardless of the problem addressed, or (2) if “the reference still is reasonably pertinent to the particular problem with which the inventor is involved,” even though the reference is not within the field of the inventor’s endeavor. Bigio, 381 F.3d at 1325. The “field of endeavor” test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art, because of the similarity to the structure and function of the claimed invention as disclosed in the application. Id. at 1325–27.” slip op. at 32

  Patent outcomesUS 6,515,262 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 6,515,262
• Euro-Pro Operating LLC v. Acorne Enterprises, LLCAll claims unpatentable
  PTAB · Jul 9, 2015 · IPR2014-00352 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1 and 12 are unpatentable as obvious over the stated prior-art combinations; the Patent Owner’s contingent motion to amend is denied.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Decision to Institute, in which we determined that the following claim terms invoke section 112 ¶ 6 because they specify a function but no structure for performing that function. Inst. Dec. 7. Construed Term(s) Claim Construction Temperature The function of this means-plus-function term we controlling means determined to be “regulating the temperature of said heating elements,” and the structure to include “a temperature control switch as shown in Figures 1A–3, and its equivalents, which can be manipulated from outside the housing of the deep well cooker.” Inst. Dec. 6–7. Function controlling We determined the function for this means-plus- means function limitation we found to be “enabling [the] bottom heating element and [the] wrap-around heating element to be selectively energized to provide variable cooking modes,” and the corresponding structure we determined to be “the device, and its equivalents, as reflected in Figures 1A–3 of the ’392 patent mounted in the outer housing of the deep well cooker and manipulated separately from the temperature control means by a user, and as represented in the specification, can pass current individually to either the bottom heater or wrap-around heater, or in combination to both.” Inst. Dec. 7.” slip op. at 7

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “and education as an electrical engineer with 50 years of product development and design experience including electric cooking devices. Ex. 1019¶¶ 3–14. Mr. Sherwood’s testimony is offered by Petitioner, not as expert testimony on the specific legal criteria of obviousness, but as evidence of what one of ordinary skill in the art of electric cooker design would have understood at the time of the filing of the ’392 patent. Id. ¶ 22. Mr. Sherwood’s legal principal statements are informative as to his understanding of obviousness, but not expert testimony as to the specific legal elements and requirements for obviousness. Id. ¶¶ 20–21. Mr. Sherwood’s opinions and testimony as they relate specifically to the prior art, and his knowledge of one of ordinary skill in the art at the time of 1 Fed. R. Evid. 702. Testimony by Expert Witnesses A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if: (a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case. filing of the ’392 patent, comport with the legal requirements for obviousness as explained to him by Petitioner’s counsel. See Ex. 1019 ¶ 20. Obviousness is a mixed question of law and fact and it is not necessary that an expert be a “legal” expert on the question of obviousness. See Soverain Software LLC, v. Newegg Inc., 705 F.3d 1333, 1341 (Fed. Cir. 2013) (“precedent does not require ‘expert’ opinions on matters of law”). Also, we are persuaded that Mr. Sherwood’s testimony was undertaken with consideration as to the level of ordinary skill in the art within the 2000-2001 time frame of the alleged invention and filing of the ’392 patent. Although Mr. Sherwood did not state, explicitly, what the level of one of ordinary skill in the art would have been at the time of filing of the ’392 patent, it is reasonable to determine that a professional engineer having a master’s degree in electrical engineering and 50 years of electronic product design experience including extensive experience in the design of cooking appliances and electronic temperature control systems including slow cookers and crockpots, is qualified to testify as to what would have been known by, and obvious, to one of ordinary skill in the art at the time of the filing of the ’392 patent. Ex. 1019 ¶ 8. Mr. Sherwood specifically states that his opinions are “based on my personal knowledge, experience, and the materials I have reviewed, as to how someone of ordinary skill in the field of cooking appliances would understand the challenged claims of . . .the ’262 patent and the ’392 patent as of at least July 2001.” Id. ¶ 22. We determine that Mr. Sherwood’s opinions and testimony are entitled to weight, as they embrace the requirement of one of skill in the art at the time of filing of the ’392 patent, and are adequately supported by his professional experience and skill in the field of electronic cooking appliance design.” slip op. at 24

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

    “Patent Owner’s first argument is not persuasive because the fact that an element of claim 1, namely the bottom heating element, is missing from the Hlava reference is essentially the basis upon which Petitioner has asserted that claim 1 is obvious, as opposed to anticipated. See Pet. 24. Moreover, we are aware of no case law, nor has Patent Owner directed us to any, that all the features of a claim must be found in a prior art reference to properly support an obviousness analysis, or that the absence of a feature in the reference, “mitigates,” against a finding of obviousness. See 35 U.S.C § 103, see also In re O'Farrell, 853 F.2d 894, 902 (Fed. Cir. 1988) (claimed invention would have been obvious over single reference or combination of references). We are also not persuaded by Patent Owner’s contention that Petitioner has failed to present an articulated reasoning with rational underpinnings in support of its obviousness positions. Petitioner has asserted several reasons why one of ordinary skill in the art would shift, or add a bottom heating element to Hlava, one reason being that: it was known in the prior art to use a bottom heating element in addition to a side heating element to facilitate heat distribution in roasting (see Nachumsohn at page 2, column 1, lines 61–71 (discussing properly proportioned heat for browning a roast, which is part of roasting)), and because roasting is a function for which Hlava’s heating element 30c' was designed. Pet. 24–25 (citing Ex. 1004, 8:17–22). Petitioner additionally asserts that although Hlava does not disclose expressly a bottom heating element, Hlava teaches that heating elements for other cooking situations, besides those shown in the reference itself, are contemplated: “the actual number of elements and wattage values could be varied in order to obtain the desired heating profile” . . . to accommodate “a wide variety of cooking situations,” [] which an extra heating element would have helped to accomplish by expanding the heating profiles of the Hlava cooking apparatus. Pet. 27 (citing Ex. 1004, 1:53–64, 5:48–56). Petitioner has supported its reasoning with evidence from the prior art references, such as Hlava and Nachumsohn, which teach that it was well known in the art to use bottom heating elements in deep well cooking apparatus for particular cooking operations. Pet. 25–26 (citing Ex. 1004, 4:11–19, 8:17–22, Fig. 5). Indeed, Petitioner points to the Background section of the ’392 patent itself, discussing certain prior art cooking devices having bottom heating elements. Pet. 7–8, 25 (citing Ex. 1001, 1:21–60). Mr. Sherwood testifies persuasively that shifting or adding a bottom heating element to Hlava was well within the ordinary skill in the art, and “would have yielded the predictable result of quicker heating of the bottom of Hlava’s cooking insert and/or would have resulted in providing Hlava’s cooking apparatus 10 associated with FIG. 9 with additional cooking modes.” Ex. 1019 ¶¶ 27–29. In view of such reasons and evidence, we are satisfied that Petitioner’s explanations constitute articulated reasoning with rational evidentiary underpinnings sufficient to justify the legal conclusion of obviousness.” slip op. at 13

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

    “Patent Owner next argues that Hlava teaches away from a bottom heating element because Hlava’s “stoneware insert 16 could not resist the localized thermal stresses and cracking that would be caused by the proposed new bottom heating device.” PO Resp. 22 (citing Ex. 1004, 4:23– 34). However, teaching away requires a reference to actually criticize, discredit, or otherwise discourage investigation into the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The concern addressed by Hlava is that localized hot spots can compromise stoneware inserts, and therefore sensors are used to discriminate between a stoneware insert, and a metallic insert better suited to higher heat settings. Ex. 1004, 4:23–41. The passages in Hlava referred to by Patent Owner state that “when stoneware insert 16 is placed within housing 12, the maximum heat output permitted by heating device 30 is limited to prevent thermal shock and cracking of the stoneware.” Id. at 4:46–49. Patent Owner’s argument fails to explain why one of ordinary skill in the art would have been discouraged from providing a bottom heating element even though Hlava specifically states that metallic inserts were available that could handle higher heat stress. See id. at 4:49– 52. Indeed, Patent Owner’s argument fails to explain why such a bottom heating element could not be regulated in temperature just like Hlava’s heating device 30, for any type of insert in such a deep well cooking apparatus including a stoneware insert. Patent Owner’s further contention that Hlava’s insert discriminating sensor 36 somehow dissuades one of skill in the art from using a bottom heating element is also unavailing. See PO Resp. 23–25. Even if a bottom heating element shifted, or added to Hlava, theoretically could “result in localized thermal stresses and cracking of the stoneware insert 16” (id. at 26), Hlava expressly teaches how to avoid such a result with sensor 36 to limit the maximum heating temperature of the heating elements. See Ex. 1004, 4:46–49. Patent Owner’s conclusory argument, that shifting heating element 30c' to the bottom of Hlava’s cooker would “destroy the intent, purpose or function” of Hlava’s invention, does not explain persuasively why the temperature of a bottom heating element, either shifted or added to Hlava’s cooker, would not also be limited by operation of sensor 36, for instance when a stoneware insert is used in the cooker. For the above reasons, we conclude that a preponderance of the evidence demonstrates that claim 1 is unpatentable based on Hlava and the admitted prior art.” slip op. at 16

  Patent outcomesUS 6,624,392 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 6,624,392
• Apple, Inc. v. Contentguard Holdings, Inc.Institution denied
  PTAB · Jul 2, 2015 · IPR2015-00358 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim obvious over Ginter alone or Ginter and Wiggins.

  RulingsInstitution decision

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

    “The Petition also lacks an articulated or apparent reason supported by “some rationale underpinning” to modify/combine the purportedly known elements into the fashion claimed by the ’053 patent. See KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Instead, and as demonstrated in the block quote above, Petitioner leaves it to the Board to ascertain what gaps to fill, stating that “possible distinctions between Ginter and the contested ’053 claims, even if found to exist, would not render [the challenged] claims patentable.” Pet. 44.5 Contrary to Petitioner’s implication, however, Patent Owner need not present a showing to “render” its claims patentable. The burden is on Petitioner to show unpatentability. 35 U.S.C. § 42.20(c). Petitioner’s vague statements regarding what the prior art suggests, referring to “a range of possible implementations,” “obvious variations,” and “obvious design or implementation choices” does not satisfy its burden. Pet. 43–44. Petitioner’s blanket citation to over one hundred paragraphs of Dr. Prakash’s declaration to support its assertion that “the core techniques and functionalities of the ’053 claimed processes and systems were well-known to persons of ordinary skill in the art before 2001,” and that a “person of ordinary skill could readily implement systems for distributing digital” slip op. at 9

  • BurdenDenied

    “The Petition also lacks an articulated or apparent reason supported by “some rationale underpinning” to modify/combine the purportedly known elements into the fashion claimed by the ’053 patent. See KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Instead, and as demonstrated in the block quote above, Petitioner leaves it to the Board to ascertain what gaps to fill, stating that “possible distinctions between Ginter and the contested ’053 claims, even if found to exist, would not render [the challenged] claims patentable.” Pet. 44.5 Contrary to Petitioner’s implication, however, Patent Owner need not present a showing to “render” its claims patentable. The burden is on Petitioner to show unpatentability. 35 U.S.C. § 42.20(c). Petitioner’s vague statements regarding what the prior art suggests, referring to “a range of possible implementations,” “obvious variations,” and “obvious design or implementation choices” does not satisfy its burden. Pet. 43–44. Petitioner’s blanket citation to over one hundred paragraphs of Dr. Prakash’s declaration to support its assertion that “the core techniques and functionalities of the ’053 claimed processes and systems were well-known to persons of ordinary skill in the art before 2001,” and that a “person of ordinary skill could readily implement systems for distributing digital” slip op. at 9

  • Strike new argumentOther

    “Petitioner’s vague statements regarding what the prior art suggests, referring to “a range of possible implementations,” “obvious variations,” and “obvious design or implementation choices” does not satisfy its burden. Pet. 43–44. Petitioner’s blanket citation to over one hundred paragraphs of Dr. Prakash’s declaration to support its assertion that “the core techniques and functionalities of the ’053 claimed processes and systems were well-known to persons of ordinary skill in the art before 2001,” and that a “person of ordinary skill could readily implement systems for distributing digital 5 The Petition does not identify the differences between Ginter and the claimed inventions. Yet, the Petition also does not show that there are no differences. The Petition fails to show, let alone assert, anticipation at least because the Petition does not show that Ginter discloses all the limitations of the challenged claims, as arranged in the challenged claims. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (holding that an anticipatory reference must show all limitations arranged or combined in the same way as recited in the claims). content using these design elements based on the guidance in Ginter and routine programming skills” also does not satisfy its burden. (Pet. 44 (citing Ex. 1003 ¶¶ 129–154, 156–185, 188–231, and 819–824)). Board rules require an identification of “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). Board rules also prohibit incorporation by reference, such as incorporating over one hundred paragraphs6 of a declaration into a petition. 37 C.F.R. § 42.6(a)(3). It is unreasonable to expect the Board to sort through this huge swath of declaration testimony.7” slip op. at 9

  Nonecites KSR · Graham
  Patents in suitUS 8,001,053
• Apple, Inc. v. Contentguard Holdings, Inc.Institution denied
  PTAB · Jun 29, 2015 · IPR2015-00357 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was obvious over the asserted grounds.

  RulingsInstitution decision

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

    “There is not a reasonable likelihood that Petitioner would prevail in showing the subject matter of any of the challenged claims is obvious over any of the grounds identified in the Petition. First, the Petition does not identify sufficiently the differences between the claimed invention and the prior art, or how the prior art teachings are to be modified or combined, if at all. Pet. 43–58; see Graham, 383 U.S. at 17–18 (obviousness inquiry is based on factual inquiries including the difference between the claimed invention and the prior art). Indeed, it is difficult to understand the” slip op. at 7

  • BurdenDenied

    “First, the Petition does not identify sufficiently the differences between the claimed invention and the prior art, or how the prior art teachings are to be modified or combined, if at all. Pet. 43–58; see Graham, 383 U.S. at 17–18 (obviousness inquiry is based on factual inquiries including the difference between the claimed invention and the prior art). Indeed, it is difficult to understand the” slip op. at 7

  Nonecites KSR · Graham
  Patents in suitUS 8,001,053

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.