• RPX Corporation v. Applications In Internet Time, LLCAll claims unpatentable
  PTAB · Dec 28, 2016 · IPR2015-01752 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1, 3–8, and 10–40 are unpatentable under § 102 over Popp or Kovacevic and/or under § 103 over the stated combinations.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “In our Institution Decisions, we determined that Salesforce had not been shown to be a real party-in-interest in these proceedings. See 1751 Inst. Dec. 8–16; 1752 Inst. Dec. 8–16. In its Patent Owner Response, Patent Owner argues: In its decision instituting these . . . trials, the Board stated that there was insufficient evidence to find that the real party in interest is Salesforce.com, Inc. Patent Owner disagrees with the Board’s view of the law and the facts, and in particular believes that the Board misconstrued the law. As explained previously, the AIA was intended to prevent defendants from getting “a second bite at the apple.” Yet, the Board is doing just that by allowing Petitioner to act indirectly for Salesforce. In its decision, the Board set an improperly high burden of proof for the patent owner, and also improperly shifted the burden of proof to the patent owner. As explained in Patent Owner’s Preliminary Response, Salesforce is the real party in interest and Petitioner is acting as its proxy. Because Salesforce is time limited, so is Petitioner and patentability should be confirmed on this basis. PO Resp. 8. To the extent Patent Owner is attempting to incorporate arguments made in the Preliminary Response into the Patent Owner Response, such incorporation is improper under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, Patent Owner has neither presented any new evidence into the record, beyond the evidence we considered previously in rendering our Institution Decisions, nor cited any legal authority to support its positions set forth above. Based on the complete record now before us, we see no reason to change our previous determination, and we are not persuaded that Salesforce should have been identified as a real party-in-interest in these proceedings.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a “person of ordinary skill in the art in the timeframe of the December 1998 priority date of the ’482 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” 1751 Pet. 6 (citing Ex. 1002 ¶ 10); 1752 Pet. 6 (citing the same evidence). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.12 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects 12 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact). the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “a term of art. PO Resp. 14; see Ex. 1058, 44:19–45:4, 83:13, 95:16–20. Petitioner agrees. 1751 Pet. 10; 1752 Pet. 10; 1751 Pet. Reply 9; 1752 Pet. Reply 8. We agree with Petitioner that the Specification of the ’482 patent “nowhere refers to changes ‘that arise from changes external to the application,’ and does not limit ‘changes’ in any way” and “[t]here is no disclaimer in the ’482 patent that limits the meaning of ‘changes’ in the manner [Patent Owner] alleges.” 1751 Pet. Reply 6; see 1752 Pet. Reply 5; Ex. 1062 ¶¶ 4–5. While Patent Owner points to several portions of the Specification of the ’482 patent in support of its argument that the claimed changes should be limited to those external to the application and those that impact how the application program operates, we are not persuaded that the discussion in the Specification rises to the level of “reasonable clarity, deliberateness, and precision” necessary to provide a special definition for the claim term. See In re Paulsen, 30 F.3d at 1480. In fact, as noted by Petitioner, the “specification also describes an embodiment in which intelligent agents pursue ‘internal’ as well as ‘external Web activities.’” 1751 Pet. Reply 12 (citing Ex. 1001, 19:66–67); see 1752 Pet. Reply 11 (citing the same evidence). Further, the Specification describes the detected changes, more generally, throughout as changes that may affect operation of a user’s business, rather than as changes that affect operation of the application program. See, e.g., Ex. 1001, Abstract (“The system . . . receives information on regulatory and non-regulatory changes that affect operations of the business.”), 9:34–38 (“[C]hange management layer 11 . . . includes one or more change agents that ‘cruise the Web’ and identify and bring to the user’s attention relevant regulatory and non-regulatory changes found on the Web that may affect a user’s business.”), 22:33–39 (“The system . . . does not require that every employee [of a business] become a programmer in order to continue to respond to regulatory and/or technological and/or social changes affecting business operations and/or information management requirements.”); see also Ex. 1062 ¶ 5 (Dr. Crovella testifying that a person of ordinary skill “would have understood that changes can affect an application without impacting how the application ‘should’ operate, and those types of changes are also included in the plain and ordinary meaning of ‘changes that affect an application,’ [such as] a change to the processing resources available to an application could affect the application (e.g., by causing it to run faster or slower) without impacting how the application ‘should’ operate (e.g., without altering any of the steps that the application attempts to perform)”). Based on the evidence in this record, we determine that the plain meaning of the phrase “change management layer for automatically detecting changes that affect an application” is consistent with the Specification. We are not persuaded that the recited “change management layer for automatically detecting changes that affect an application” is limited to detecting changes external to the application, or that any such changes must impact how the application program should operate, as proposed by Patent Owner. No further express construction of the claim phrase is necessary.” slip op. at 14

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

    “Patent Owner argues that Popp does not disclose the “change management layer” recited in claim 1. PO Resp. 22–25. In particular, Patent Owner argues that “Popp does not disclose a ‘change management layer’ which ‘automatically detects changes which impact how the application program should operate’ where those ‘changes’ ‘arise from changes external to the application.’” Id. at 24 (citing Ex. 2032 ¶¶ 63–64; Ex. 2033 ¶¶ 46–50). Patent Owner argues that Popp instead discloses “automatically detect[ing] changes from [an application’s] own operation – in this case, user input of text data via a user interface.” Id. at 23 (citing Ex. 2031, 67:10–25). Patent Owner’s arguments rely upon its proposed construction of the “change management layer,” which we do not adopt for the reasons discussed above (see supra Section II.C.1). We are persuaded by Petitioner’s assertion that automatically detecting a change that affects information stored in the database (e.g., an employee name stored in a database), from which the Web page (i.e., the claimed application) is generated, discloses detecting a change that affects the application, as claimed. See, e.g., Ex. 1001, 12:17–28 (describing the business content layer (i.e., “first layer”) as a database that may include data associated with a selected area of business, such as finance or human resources). Based on the evidence of record, we determine Petitioner has shown, by a preponderance of the evidence, that Popp anticipates claim 1.” slip op. at 24

  Patent outcomesUS 7,356,482 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,356,482
• RPX Corporation v. Applications In Internet Time, LLCAll claims unpatentable
  PTAB · Dec 28, 2016 · IPR2015-01751 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1, 3–8, and 10–40 are held unpatentable as anticipated by Popp or Kovacevic, or obvious over the combinations stated in the decision.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “In our Institution Decisions, we determined that Salesforce had not been shown to be a real party-in-interest in these proceedings. See 1751 Inst. Dec. 8–16; 1752 Inst. Dec. 8–16. In its Patent Owner Response, Patent Owner argues: In its decision instituting these . . . trials, the Board stated that there was insufficient evidence to find that the real party in interest is Salesforce.com, Inc. Patent Owner disagrees with the Board’s view of the law and the facts, and in particular believes that the Board misconstrued the law. As explained previously, the AIA was intended to prevent defendants from getting “a second bite at the apple.” Yet, the Board is doing just that by allowing Petitioner to act indirectly for Salesforce. In its decision, the Board set an improperly high burden of proof for the patent owner, and also improperly shifted the burden of proof to the patent owner. As explained in Patent Owner’s Preliminary Response, Salesforce is the real party in interest and Petitioner is acting as its proxy. Because Salesforce is time limited, so is Petitioner and patentability should be confirmed on this basis. PO Resp. 8. To the extent Patent Owner is attempting to incorporate arguments made in the Preliminary Response into the Patent Owner Response, such incorporation is improper under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, Patent Owner has neither presented any new evidence into the record, beyond the evidence we considered previously in rendering our Institution Decisions, nor cited any legal authority to support its positions set forth above. Based on the complete record now before us, we see no reason to change our previous determination, and we are not persuaded that Salesforce should have been identified as a real party-in-interest in these proceedings.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “timeframe of the December 1998 priority date of the ’482 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” 1751 Pet. 6 (citing Ex. 1002 ¶ 10); 1752 Pet. 6 (citing the same evidence). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.12 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects 12 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact). the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “a term of art. PO Resp. 14; see Ex. 1058, 44:19–45:4, 83:13, 95:16–20. Petitioner agrees. 1751 Pet. 10; 1752 Pet. 10; 1751 Pet. Reply 9; 1752 Pet. Reply 8. We agree with Petitioner that the Specification of the ’482 patent “nowhere refers to changes ‘that arise from changes external to the application,’ and does not limit ‘changes’ in any way” and “[t]here is no disclaimer in the ’482 patent that limits the meaning of ‘changes’ in the manner [Patent Owner] alleges.” 1751 Pet. Reply 6; see 1752 Pet. Reply 5; Ex. 1062 ¶¶ 4–5. While Patent Owner points to several portions of the Specification of the ’482 patent in support of its argument that the claimed changes should be limited to those external to the application and those that impact how the application program operates, we are not persuaded that the discussion in the Specification rises to the level of “reasonable clarity, deliberateness, and precision” necessary to provide a special definition for the claim term. See In re Paulsen, 30 F.3d at 1480. In fact, as noted by Petitioner, the “specification also describes an embodiment in which intelligent agents pursue ‘internal’ as well as ‘external Web activities.’” 1751 Pet. Reply 12 (citing Ex. 1001, 19:66–67); see 1752 Pet. Reply 11 (citing the same evidence). Further, the Specification describes the detected changes, more generally, throughout as changes that may affect operation of a user’s business, rather than as changes that affect operation of the application program. See, e.g., Ex. 1001, Abstract (“The system . . . receives information on regulatory and non-regulatory changes that affect operations of the business.”), 9:34–38 (“[C]hange management layer 11 . . . includes one or more change agents that ‘cruise the Web’ and identify and bring to the user’s attention relevant regulatory and non-regulatory changes found on the Web that may affect a user’s business.”), 22:33–39 (“The system . . . does not require that every employee [of a business] become a programmer in order to continue to respond to regulatory and/or technological and/or social changes affecting business operations and/or information management requirements.”); see also Ex. 1062 ¶ 5 (Dr. Crovella testifying that a person of ordinary skill “would have understood that changes can affect an application without impacting how the application ‘should’ operate, and those types of changes are also included in the plain and ordinary meaning of ‘changes that affect an application,’ [such as] a change to the processing resources available to an application could affect the application (e.g., by causing it to run faster or slower) without impacting how the application ‘should’ operate (e.g., without altering any of the steps that the application attempts to perform)”). Based on the evidence in this record, we determine that the plain meaning of the phrase “change management layer for automatically detecting changes that affect an application” is consistent with the Specification. We are not persuaded that the recited “change management layer for automatically detecting changes that affect an application” is limited to detecting changes external to the application, or that any such changes must impact how the application program should operate, as proposed by Patent Owner. No further express construction of the claim phrase is necessary.” slip op. at 14

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

  Patent outcomesUS 7,356,482 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,356,482
• RPX Corporation v. Applications In Internet Time, LLCAll claims unpatentable
  PTAB · Dec 28, 2016 · IPR2015-01750 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 13–18 are unpatentable as anticipated by Popp and Kovacevic and obvious over Balderrama and Java Complete.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “In our Institution Decision, we determined that Salesforce had not been shown to be a real party-in-interest in these proceedings. See Inst. Dec. 7–15. In its Patent Owner Response, Patent Owner argues: In its decision instituting [this trial], the Board stated that there was insufficient evidence to find that the real party in interest is Salesforce.com, Inc. Patent Owner disagrees with the Board’s view of the law and the facts, and in particular believes that the Board misconstrued the law. As explained previously, the AIA was intended to prevent defendants from getting “a second bite at the apple.” Yet, the Board is doing just that by allowing Petitioner to act indirectly for Salesforce. In its decision, the Board set an improperly high burden of proof for the patent owner, and also improperly shifted the burden of proof to the patent owner. As explained in Patent Owner’s Preliminary Response, Salesforce is the real party in interest and Petitioner is acting as its proxy. Because Salesforce is time limited, so is Petitioner and patentability should be confirmed on this basis. PO Resp. 8. To the extent Patent Owner is attempting to incorporate arguments made in the Preliminary Response into the Patent Owner Response, such incorporation is improper under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, Patent Owner has neither presented any new evidence into the record, beyond the evidence we considered previously in rendering our Institution Decisions, nor cited any legal authority to support its positions set forth above. Based on the complete record now before us, we see no reason to change our previous determination, and we are not persuaded that Salesforce should have been identified as a real party-in-interest in this proceeding.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a “person of ordinary skill in the art in the timeframe of the December 1998 priority date of the ’111 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” Pet. 5–6 (citing Ex. 1002 ¶ 10). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.8 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. 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). C. Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed 8 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact).” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “timeframe of the December 1998 priority date of the ’111 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” Pet. 5–6 (citing Ex. 1002 ¶ 10). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.8 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. 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). C. Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed 8 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner that the Specification of the ’111 patent “nowhere refers to changes ‘that arise from changes external to the application,’ and does not limit ‘changes’ in any way” and “[t]here is no disclaimer in the ’111 patent that limits the meaning of ‘changes’ in the manner [Patent Owner] alleges.” Pet. Reply 9; see Ex. 1062 ¶¶ 4–5. While Patent Owner points to several portions of the Specification of the ’482 patent11 in support of its argument that the claimed changes should be limited to those external to the application, we are not persuaded that the discussion in the Specification rises to the level of “reasonable clarity, deliberateness, and precision” necessary to provide a special definition for the claim term. See In re Paulsen, 30 F.3d at 1480. In fact, as noted by Petitioner, the “specification also describes an embodiment in which intelligent agents pursue ‘internal’ as well as ‘external Web activities.’” Pet. Reply 12 (citing Ex. 1001, 19:66–67). Based on the evidence in this record, we determine that the plain meaning of the phrase “fourth portion of the server being configured to automatically detect changes that affect the information in the first portion of the server or the information in the second portion of the server” is consistent with the Specification. We are not persuaded that the recited function of “automatically detect[ing] changes” is limited to detecting changes external to the application, as proposed by Patent Owner. No further express construction of the claim phrase is necessary.” slip op. at 13

  Patent outcomesUS 8,484,111 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,484,111
• Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics Inc.All claims unpatentable
  PTAB · Dec 22, 2016 · IPR2015-01414 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 3–12, 14, 15, 17, 19–52, 54–67, 69–79, and 81–86 are unpatentable under § 103(a) over the 17 combinations listed in the order.

  RulingsFinal written decision

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

    “The fact that other parts of the claims recite locations of the image capture devices and the overlap zones does not mean that anything more should be read into the “without duplication of objects” clause, which appears clear on its face. Further, the claims do not say anything about parallax or require that the problem of parallax be solved for the synthesized image. Indeed, parallax is not the same as the duplication of objects. See Ex. 1066 ¶ 11 (“Duplication . . . is different from parallax. For example, when each of the cameras have a common center of projection, there will be little or no parallax, but given their overlapping fields of view, the cameras may nonetheless capture the same objects multiple times resulting in duplication.” (citation omitted)). Thus, we are not persuaded that reading in any language pertaining to parallax effects would be appropriate based on the language of the claims.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Neither party explains in detail why their proposed level of ordinary skill in the art should be adopted. After reviewing the evidence, including the cited prior art, however, we are persuaded that Petitioner’s definition is substantially correct. The ’724 patent describes “rearview vision systems which provide the vehicle operator with scenic information in the direction rearward of the vehicle” using “image capture devices, such as CMOS [(complementary metal-oxide semiconductor)] imaging arrays and the like.” Ex. 1001, col. 1, ll. 22–27. “Camera-based rearview vision systems” had been proposed at the time, but had not “obtained commercial acceptance” and suffered from various problems according to the ’724 patent. Id. at col. 1, l. 60–col. 2, l. 55. The ’724 patent further acknowledges that various aspects of the disclosed systems, such as, for example, CMOS and charge-coupled device (CCD) imaging arrays, optical correction systems, various types of image filtering, backlit liquid-crystal displays (LCDs), and systems for measuring the distance of an object behind the vehicle, were known at the time. See, e.g., id. at col. 11, ll. 60–64, col. 12, ll. 33–37, col. 13, ll. 26–41, col. 17, ll. 48–62, col. 20, ll. 42–53, col. 22, ll. 3–19, 44–55. Drs. Wolberg and Wilhelm further testify as to the development and state of the art by the time of the ’724 patent, which we find helpful in assessing what background knowledge would have been available to a person of ordinary skill in the art. See, e.g., Ex. 1020 ¶¶ 27–39; Ex. 1022 ¶¶ 20–27. As a whole, the evidence indicates a higher level of ordinary skill than what Patent Owner proposes, and suggests, for example, that an ordinarily skilled artisan would have had at least some understanding of ways in which images from multiple cameras could be combined. See, e.g., Ex. 1020 ¶¶ 28–38; Ex. 1003, 3, 6; Ex. 1005, 3–6. Accordingly, based on our review of the ’724 patent, the types of problems and solutions described in the ’724 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art would have had a bachelor’s or master’s degree in engineering, computer science, or physics (or equivalent work experience), with some familiarity with how cameras may be used in vehicles and a working understanding of combining image data from multiple cameras and microprocessor-driven controls for displays, actuators, and elementary decision making. We apply this level of ordinary skill in the art for purposes of this Decision.” slip op. at 20

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

    “Patent Owner’s arguments are not persuasive for three reasons. First, as explained above, to establish an earlier constructive reduction to practice, Patent Owner must show that the ’527 application provides sufficient written description support for the challenged claims. Patent Owner states that “each limitation of [the set of claims listed above] is supported in the ’935 patent disclosure,” but includes no substantive arguments in its Response explaining why. See id. Rather, Patent Owner cites 46 paragraphs of Dr. Etienne-Cummings’s declaration and a “Constructive Reduction to Practice Chart” spanning 43 pages. Id. (citing Ex. 2001; Ex. 2004 ¶¶ 54–99). Any arguments contained in these materials cannot be incorporated by reference into the Response. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”).12 Consequently, we do not consider information presented in the declaration or claim chart but not discussed sufficiently in the Response. Second, even if Dr. Etienne-Cummings’s analysis and the claim chart are considered, they are not sufficient. The claim chart provides only block 12 See also Paper 8, 3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”); Apple, Inc. v. Ameranth, Inc., Case CBM2014-00013, 8 (PTAB Mar. 20, 2015) (Paper 37) (“Arguments that are not developed and presented in the Patent Owner Response, itself, are not entitled to consideration.”), reversed-in-part on other grounds, No. 2015-1703, -- F.3d --, 2016 WL 6958650 (Fed. Cir. Nov. 29, 2016); Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454, 7–10 (PTAB Aug. 29, 2014) (Paper 12) (informative) (noting that “[o]ne purpose of the prohibition against incorporation by reference is to eliminate abuses” of the page limits established for the parties’ substantive papers, and that citing “large portions of another document, without sufficient explanation of those portions, amounts to incorporation by reference”). quotes and figures from the ’935 patent,13 but does not explain in any detail why they provide support for the various limitations of the challenged claims. See Ex. 2001. Likewise, the majority of Dr. Etienne-Cummings’s declaration merely states that “the features of [the respective claim] are disclosed” at the block-quoted portions of the ’935 patent, without explanation. See, e.g., Ex. 2004 ¶¶ 56–61, 64, 65, 67–74, 76–99. Third, we agree with Petitioner that the ’935 patent does not provide sufficient written description support for the independent claims of the ’724 patent (claims 1, 49, 65, and 78), each of which recites that the “synthesized image is displayed by a single display screen of a reconfigurable display device that is viewable by a driver of the equipped vehicle when normally operating the equipped vehicle.” See Reply 13–15. As explained above, we interpret “reconfigurable display” to mean a display in which a portion of the display upon which the driver views the synthesized image is used as a high-information content display to selectively display various types of auxiliary information. See supra Section II.A.4. Patent Owner cites various excerpts from the ’935 patent describing display 20, but these portions do not call the display device “reconfigurable” or disclose that it is used to selectively display information. See, e.g., Ex. 2001, 5–6 (citing Ex. 2002, col. 3, l. 61–col. 4, l. 5, col. 5, ll. 48–50, col. 6, ll. 5–12, 22–39); Ex. 2004 ¶ 56. Indeed, the ’724 patent Specification 13 It is unclear why Patent Owner attempts to map the disclosure of the ’935 patent, rather than the ’527 application, to the challenged claims. The ’935 patent issued on September 23, 1997 (after Yamamoto published), from the ’527 application filed on May 22, 1995 (before Yamamoto published). Patent Owner does not provide a copy of the ’527 application in the record to show that the written description is the same as that of the issued ’935 patent.” slip op. at 26

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (citation omitted). “A reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.’” Id. (citation omitted). We first summarize the evidence presented regarding Wang’s alleged public accessibility. Wang is a publication of the Institute of Electrical and Electronics Engineers (IEEE) and has a copyright notation of “TH0367-3/91/0000/0100$01.00 © 1991 IEEE” on the first page. See Ex. 1009, 1. Petitioner contends that the document was published “on May 27–31, 1991,” citing the testimony of Dr. Wolberg. Pet. 7. Dr. Wolberg testifies that “[a]s a person who regularly reviews scholarly articles, including IEEE publications such as the Wang article, and as someone who regularly attends conferences such as the IEEE conference in which the Wang paper was presented,” he believes that Wang was published in May 1991. Ex. 1020 ¶ 84. Dr. Wolberg also discusses two publications (Exhibits 1040 and 1042) that cite Wang prior to the effective filing date of the ’724 patent (May 22, 1996), “which further indicates to [Dr. Wolberg] that Wang was publicly accessible.” Id.; see Ex. 1040, 12 (cited reference 16); Ex. 1042, 3 (cited reference 4). Finally, he cites the University of Edinburgh website, which “states that the authors of the Wang article began work on CMOS imaging sensors as early as 1986, and began publishing articles reporting the results of their work that led to the incorporation of a CMOS chip in a video camera in 1989.” Ex. 1020 ¶ 84 (citing Ex. 1044). Petitioner presents additional evidence with its Reply that allegedly confirms Wang’s public accessibility prior to May 22, 1996. Reply 11–12. First, Petitioner submits a declaration from Gerard P. Grenier, the Senior Director of Publishing Technologies for the IEEE.17 Ex. 1055. Mr. Grenier states that Wang “was published and presented as part of [the] Euro [A]SIC ’91 [conference] which occurred May 27–31, 1991.” Id. ¶ 9. According to Mr. Grenier, “[t]he Article was published by IEEE as part of the conference proceedings on the date of the conference. Copies of the conference proceedings were made available to attendees of the conference.” Id. ¶ 6. Mr. Grenier also testifies that “IEEE maintains records of the dates on which articles were first made available for public download,” “[t]hese records are maintained as part of the ordinary course of business of the IEEE [and] are updated regularly as articles are published,” and he has “personal knowledge of the records.” Id. ¶ 7. Second, Petitioner submits a copy of Wang, with a “EURO ASIC ’91” cover page and table of contents, “[s]helved” at the Linda Hall Library in Kansas City, Missouri in 1991. Ex. 1046. Third, Petitioner submits a certified copy of Wang from the Library of Congress, with the same cover page and table of contents and a date stamp of June 5, 1992. Ex. 1060. Fourth, Petitioner notes that the U.S. Court of Appeals for the Federal Circuit affirmed a Board decision finding similar claims with a priority date of February 26, 1993, unpatentable based in part on Wang in 17 Petitioner submitted a substantially similar version of the declaration, dated approximately one month earlier, with its Petition, but did not discuss the declaration in the Petition. Compare Ex. 1039, with Ex. 1055. Our analysis applies equally to both versions of the declaration. In re Magna Elecs., Inc., 611 F. App’x 969, 973 (Fed. Cir. 2015) (unpublished) (Ex. 1045). Reply 11. Patent Owner disputes the sufficiency of Petitioner’s evidence of” slip op. at 43

  Patent outcomesUS 8,643,724 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,643,724
• Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics Inc.All claims unpatentable
  PTAB · Dec 22, 2016 · IPR2015-01410 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 3–12, 14, 15, 17, 19–52, 54–67, 69–79, and 81–86 are unpatentable under § 103(a) over the combinations listed in the Order.

  RulingsFinal written decision

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

    “On December 28, 2015, we instituted an inter partes review of claims 1, 3–12, 14, 15, 17, 19–52, 54–67, 69–79, and 81–86 on 17 grounds of unpatentability and consolidated Case IPR2015-01414 with Case IPR2015-01410 (Paper 7, “Dec. on Inst.”). Patent Owner Magna Electronics Inc. filed a Patent Owner Response (Paper 14, “PO Resp.”), and Petitioner filed a Reply (Paper 17, “Reply”). The parties did not request oral argument, and no hearing was held. See Paper 22.” slip op. at 2

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “Patent Owner’s arguments are not persuasive for three reasons. First, as explained above, to establish an earlier constructive reduction to practice, Patent Owner must show that the ’527 application provides sufficient written description support for the challenged claims. Patent Owner states that “each limitation of [the set of claims listed above] is supported in the ’935 patent disclosure,” but includes no substantive arguments in its Response explaining why. See id. Rather, Patent Owner cites 46 paragraphs of Dr. Etienne-Cummings’s declaration and a “Constructive Reduction to Practice Chart” spanning 43 pages. Id. (citing Ex. 2001; Ex. 2004 ¶¶ 54–99). Any arguments contained in these materials cannot be incorporated by reference into the Response. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”).12 Consequently, we do not consider information presented in the declaration or claim chart but not discussed sufficiently in the Response. Second, even if Dr. Etienne-Cummings’s analysis and the claim chart are considered, they are not sufficient. The claim chart provides only block 12 See also Paper 8, 3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”); Apple, Inc. v. Ameranth, Inc., Case CBM2014-00013, 8 (PTAB Mar. 20, 2015) (Paper 37) (“Arguments that are not developed and presented in the Patent Owner Response, itself, are not entitled to consideration.”), reversed-in-part on other grounds, No. 2015-1703, -- F.3d --, 2016 WL 6958650 (Fed. Cir. Nov. 29, 2016); Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454, 7–10 (PTAB Aug. 29, 2014) (Paper 12) (informative) (noting that “[o]ne purpose of the prohibition against incorporation by reference is to eliminate abuses” of the page limits established for the parties’ substantive papers, and that citing “large portions of another document, without sufficient explanation of those portions, amounts to incorporation by reference”). quotes and figures from the ’935 patent,13 but does not explain in any detail why they provide support for the various limitations of the challenged claims. See Ex. 2001. Likewise, the majority of Dr. Etienne-Cummings’s declaration merely states that “the features of [the respective claim] are disclosed” at the block-quoted portions of the ’935 patent, without explanation. See, e.g., Ex. 2004 ¶¶ 56–61, 64, 65, 67–74, 76–99. Third, we agree with Petitioner that the ’935 patent does not provide sufficient written description support for the independent claims of the ’724 patent (claims 1, 49, 65, and 78), each of which recites that the “synthesized image is displayed by a single display screen of a reconfigurable display device that is viewable by a driver of the equipped vehicle when normally operating the equipped vehicle.” See Reply 13–15. As explained above, we interpret “reconfigurable display” to mean a display in which a portion of the display upon which the driver views the synthesized image is used as a high-information content display to selectively display various types of auxiliary information. See supra Section II.A.4. Patent Owner cites various excerpts from the ’935 patent describing display 20, but these portions do not call the display device “reconfigurable” or disclose that it is used to selectively display information. See, e.g., Ex. 2001, 5–6 (citing Ex. 2002, col. 3, l. 61–col. 4, l. 5, col. 5, ll. 48–50, col. 6, ll. 5–12, 22–39); Ex. 2004 ¶ 56. Indeed, the ’724 patent Specification 13 It is unclear why Patent Owner attempts to map the disclosure of the ’935 patent, rather than the ’527 application, to the challenged claims. The ’935 patent issued on September 23, 1997 (after Yamamoto published), from the ’527 application filed on May 22, 1995 (before Yamamoto published). Patent Owner does not provide a copy of the ’527 application in the record to show that the written description is the same as that of the issued ’935 patent.” slip op. at 26

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

    “parallax or require that the problem of parallax be solved for the synthesized image. See supra Sections II.A.2–3. Rather, we interpret “synthesized image is generated without duplication of objects” to mean the synthesized image is generated with minimal multiple exposure of objects appearing in the overlap zones, and interpret “synthesized image approximates a view as would be seen by a virtual camera at a single location exterior of the equipped vehicle” to mean the synthesized image is a nearly exact representation of what would be seen by a virtual camera at a single location exterior of the vehicle. Id. Thus, the claims allow for a “minimal” level of multiple exposure and only require a “nearly exact” representation of what the virtual camera would see. We are not persuaded that any parallax effects that might remain when the pattern recognition techniques of Mitsubishi are used in Yamamoto’s system, as Petitioner asserts, would cause more than “minimal” multiple exposure or prevent the resulting image from being a “nearly exact” representation. See Ex. 1020 ¶ 110; Ex. 1066 ¶ 25. Moreover, even if the resulting image in the combined system would suffer from some parallax effects, we do not see how that contradicts Petitioner’s asserted reason for why a person of ordinary skill in the art would have modified Yamamoto’s system, or why parallax concerns would have outweighed the advantage of improved image processing, such that an ordinarily skilled artisan would have abandoned the three camera arrangement of Yamamoto. See Reply 15–17; Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). In that respect, we find Dr. Wolberg’s analysis of how and why a person of ordinary skill in the art would have combined the references’ teachings compelling. See Ex. 1020 ¶¶ 101–15; Ex. 1066 ¶¶ 22–37.” slip op. at 32

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “public accessibility. PO Resp. 17–21. Based on all of the evidence of record,18 however, we are persuaded that Wang was disseminated or otherwise made available prior to May 22, 1996, to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence could have located it. Most probative are the Library of Congress certification and Linda Hall Library documentation, which show that Wang was catalogued and readily available through these libraries. See Exs. 1046, 1060. Mr. Grenier further testifies that copies of the article were made available to attendees of the EURO ASIC ’91 conference, which was an IEEE academic conference pertaining to ASICs. See Ex. 1039; Ex. 1055; Ex. 1060, 2–13 (stating that the conference “includes reports on ASIC design experiences, advances in design methods and tools, and on the evolution of ASIC technology,” and is “the definitive place . . . for the academic community to exchange ideas”; listing numerous papers to be 18 We are persuaded that all of Petitioner’s evidence should be considered, including the evidence introduced with the Reply, under 37 C.F.R. § 42.23(b). Further, during a conference call with the parties on May 26, 2016, Patent Owner sought authorization to file a motion to “strike” Petitioner’s new evidence and portions of Petitioner’s Reply. See Paper 20. We determined that a motion to strike was not appropriate at that time, but stated that “[s]hould either party request a hearing in this proceeding, . . . the parties may address the propriety of the exhibits and Petitioner’s Reply during oral argument. If the parties choose not to request a hearing, Patent Owner may request another conference call and we will determine whether additional briefing or any other action may be appropriate at that time.” Id. at 3; Ex. 1071, 20:14–22:18. Patent Owner did not request oral argument, and did not request another conference call to address the issue. presented relating to, for example, digital signal processing ASICs, chip architecture, and graphic application and image processing ASICs). Given the level of ordinary skill in the art of the ’724 patent set forth above, see supra Section II.B, we are persuaded that the EURO ASIC ’91 conference is the type of conference that ordinarily skilled artisans would have been interested in and likely attended. The dates and documentation for the conference also are consistent with the other submitted evidence, including the copyright notation of Wang itself, which states in part “© 1991 IEEE.” See Ex. 1009, 1. Finally, as Petitioner correctly points out, the first article cited by Dr. Wolberg shows that Wang in fact was accessed by some other individuals working in the field of image sensors. See Reply 12; Ex. 1040. Based on the record presented, we are persuaded that Wang is a prior art printed publication under 35 U.S.C. § 102(b).” slip op. at 45

  Patent outcomesUS 8,643,724 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,643,724
• International Flavors & Fragrances Inc. v. Zoomessence, Inc.All claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01418 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1, 16, 19, and 28–30 are unpatentable: claims 1, 16, and 19 are anticipated by Merritt and also obvious over two combinations; claims 28–30 are obvious over specified combinations.

  RulingsFinal written decision

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

    “Id. at 2:8–14. The Specification describes a similar cooling effect within the drying chamber of the claimed system as follows: “It has been demonstrated that an inlet air temperature of about 40° C. may result in an outlet air temperature of about 32° C. from the drying chamber 107.” Id. at 7:35–37. Based on these disclosures, we understand that drying fluid is hotter at the inlet than it is at the outlet. Accordingly, claims that recite the temperature of drying fluid “at introduction into the drying chamber,” e.g., claims 4 and 5, effectively limit the highest permitted temperature of the drying fluid, which includes “air,” at any point in the drying chamber. Claim 1 recites an upper limit of 100°C on the temperature of one component of the drying fluid, “air,” without limiting the location at which the temperature is measured. We conclude, therefore, that the upper limit of 100°C as recited in claim 1 refers to the temperature of air measured at any location within the drying chamber, including at the outlet. Petitioner proposes that the broadest reasonable interpretation of “the drying fluid comprises air at temperature that is above freezing temperature of the liquid solvent and below 100°C” requires that “at some location within the internal volume of the drying chamber there is air at a temperature that is above the freezing temperature of the liquid solvent and below 100°C.” Pet. 7–8 (citing Ex. 1010 ¶ 46). Based on our review of claims 1–5 and the Specification, we adopt Petitioner’s interpretation.” slip op. at 11

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

    “To establish anticipation, each limitation in a claim must be found in a single prior art reference, arranged as recited in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). While the limitations must be arranged or combined in the same way as in the claim, identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, a reference anticipates a claim “if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.” In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995). Thus, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).” slip op. at 15

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

    “a. Independent Claim 1 Petitioner’s challenge to claim 1 as being obvious in view of the combination of Merritt, Dobry, and Skelbæk, is based largely upon the same comparison of Merritt to the claim. See Pet. 33–37, 41–42. Nevertheless, Petitioner states, and we agree, that “[i]f there is any question about whether low temperature spray drying could be used in the encapsulation of active ingredients in a carrier, Skelbæk teaches the advantages of drying liquid drops under the supply of air having a temperature of 50–120°C.” Pet. 37 (citing Ex. 1008, Abstract, pg. 2–3.). We further agree with the rationale of Petitioner that the advantages that would have been obvious to an ordinarily skilled artisan from using the lower temperature range of Skelbæk with Merritt are “a denser, non-permeable matrix material” and to “retain high levels of flavorant.” Id. (citing Ex. 1010 ¶ 107). In addition to relying on Merritt and Skelbæk, Petitioner cites Dobry’s Figure 1 in its claim chart, which schematically illustrates a conventional spray-drying system.12 See Pet. 41–42. Patent Owner’s principle argument against obviousness over Merritt, Dobry, and Skelbæk is the same as its argument against anticipation by Merritt, i.e., that Merritt includes gas above 100°C as well as below 100°C. We have rejected this argument as a matter of claim interpretation, for the reasons set forth in Part II.D.2.a above. In addition, Patent Owner asserts that Skelbæk may not be relied upon by Petitioner for the teaching of the use of a lower temperature drying fluid in a drying chamber because Skelbæk’s spray drying process yields partially dried material that requires further drying. PO Resp. 46 (citing Ex. 1008, 6:20–24). In particular, Patent Owner points out that Skelbæk uses a fluidized bed to dry further the product leaving Skelbæk’s spray drying process. Id. 12 Dobry’s Figure 1 is virtually identical to Figure 1 in the ’388 patent. Compare Ex. 1007, Fig. 1 with Ex. 1001, Fig. 1. Figure 2 of the ’388 patent is virtually identical to Figure 1 of the ’388 patent, but merely replaces the “process heater” of Figure 1 with a “process dehumidifier.” Compare Ex. 1001, Fig. 2 with id. at Fig. 1.” slip op. at 22

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

    “Patent Owner’s argument is unpersuasive because Watanabe’s use of excipients does not diminish Watanabe’s express suggestion to use a dehumidifier in a spray drying process. Rather, we agree with Petitioner that an ordinarily skilled artisan would have understood that a dehumidifier can be used for dehumidification purposes in spray-drying processes, even when the materials being dried differ. Further, we find that Watanabe, Merritt, and Dobry are all analogous art to the claimed invention (and to one another) inasmuch as they relate to the field of spray drying and the problem of drying. See In re Bigio, 381 F.3d 1320, 1325–26 (Fed. Cir. 2004).” slip op. at 27

  Patent outcomesUS 8,939,388 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,939,388
• Asetek Danmark A/S v. Coolit Systems, Inc.No claims unpatentable
  PTAB · Dec 8, 2016 · IPR2015-01276 · APJ Michelle R Osinski · IPR · Final written decision

  Claims 1–4, 6–8, 12, 14, 15, and 18–28 were not shown unpatentable under § 103 because Petitioner did not adequately explain the proposed modifications to Kang.

  RulingsFinal written decision

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

    “The Specification does not provide an explicit definition of the claim term “adjacent.” See Tr. 37:20–21. Petitioner argues that the Specification does use the term “adjacent” to describe something more than simply “next to.” Id. at 7:14–26 (citing Ex. 1001, 4:38–43). In the ’330 patent, “[f]luid inlet opening 114 [is described as] be[ing] positioned adjacent . . . contact region 102b” (Ex. 1001, 4:31–33), even though fluid inlet opening 114 is separated from contact region 102b by walls 110 that extend upwardly from upper surface 102a of heat spreader plate 102 (id. at 3:7–15). We are not persuaded that this use of the term “adjacent” in the ’330 patent necessitates a broader construction than “next to.” This is because fluid inlet opening 114 is next to contact region 102b in that nearly the entirety of fluid inlet opening 114 overlies contact region 102b, as depicted by the dashed lines of Figure 1. Figure 2 shows that microchannel walls 110 define corresponding microchannels through which contact region 102b is positioned immediately below fluid inlet opening 114. Because all elements of thin fluid heat exchangers can be considered relatively close to each other due to the small size of these devices, we determine that “adjacent” in the ’330 patent must mean something more than “close to or nearby,” as asserted by Petitioner. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (explaining that a claim interpretation that renders a claim term or phrase superfluous is disfavored). We also are not persuaded that the absence of any intervening structure of the same kind therebetween is sufficient to consider two objects as adjacent to each other in the ’330 patent, as asserted by Petitioner. For example, we would not consider inlet header 112 to be adjacent outlet header 126 in the ’330 patent simply because there are no other elements labeled as “headers” between them. For the foregoing reasons, we construe “adjacent” as “next to” and determine this is the broadest reasonable construction of this term in light of the specification of the ’330 patent.” slip op. at 11

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

    “The principle that a rearrangement of parts is a mere design choice finds its roots in In re Japikse, 181 F.2d 1019, 1023 (CCPA 1950). In Japikse, claims were held unpatentable because rearranging the position of a starting switch would not have modified the operation of the device. Id. Petitioner provides no evidence or persuasive technical reasoning that rearrangement of the inlet header so as to be next to a lateral side of Kang’s microfins (as opposed to opposite a topside of Kang’s microfins) would not have modified operation of the heat exchanger device. At most, Petitioner has provided conclusory expert testimony that rearrangement of the inlet header in Kang so that it would satisfy the requirements of claim 1 would not “enhance” the heat removal efficiency/performance of Kang’s heat exchanger device. Ex. 1002 ¶ 49. However, Petitioner has provided no expert testimony as to whether or not rearrangement of the inlet header might otherwise modify (e.g., reduce) the heat removal efficiency/performance of the heat exchanger device. When modifying Kang’s device to place inlet section 31 on a lateral side of microfins 14 (i.e., in contact with the microfins) and to place inlet openings 44 on the corresponding lateral side of flow distributor 40 (Pet. Reply 5), at least a portion of fluid is able to enter directly the microchannels formed by microfins 14 and, thus, bypass flow distributor 40. This is because inlet section 31 is placed next to a side of the fins that corresponds with the ends of the microchannels. Petitioner has not persuaded us that bypassing Kang’s flow distributor 40 would not modify the heat removal/efficiency performance of Kang’s heat exchanger device such that modified Kang would perform as equally well as the embodiment illustrated in Figures 1–3.4 Rather, we determine that bypassing flow distributor 40 would avoid “caus[ing] the fluid to change directions several times” (Ex. 1004 ¶ 30), which would affect mixing, which would, in turn, affect heat transfer (id. at Abstr.). Thus, we are not persuaded that modifying Kang’s 4 We note that when discussing the opposing outlet header (which is already asserted to be next to a lateral side of the microfins in Kang), Petitioner asserts that having fluid flow through the microchannels directly, as opposed to through the flow distributor as intended, would not matter because heat exchange happens in the microchannels. See Tr. 15:13–16:2. Although we do not disagree that heat exchange would take place in the microchannels even if fluid bypasses the flow distributor, we are not persuaded that this means that there would be no modification in the operation of the device. embodiment of Figures 1–3 so as to place inlet section 31 on a lateral side of microfins 14 is a mere design choice that would not affect operation of the device. For the foregoing reasons, we determine that Petitioner has not” slip op. at 18

  • Obviousness (§103) › KSR rationalesNot shown unpatentableNot shown unpatentable

    “Because Petitioner has not specified the orientation of the header regions to the microfins and microchannels in connection with its proposed modification of Kang, we determine that it is unclear if the rearrangement of the header regions proposed by Petitioner is merely a design choice that does not affect the heat removal efficiency/performance of the heat exchanger device. If the header regions of modified Kang are positioned on the sides of microfins 14 corresponding to the ends of the microchannels, at least a portion of fluid could directly enter the microchannels formed by microfins 14, and thus, bypass flow distributor 40 and affect operation of the device. Because the exact configuration of the inlet and outlet header regions in modified Kang has not been set forth with clarity in Petitioner’s challenge, we are not persuaded that the proposed modification to the header regions is merely a design choice, as alleged by Petitioner, that would not affect operation of the device. Similarly, although Petitioner has asserted that “a person of ordinary skill in the art would be easily able to modify Kang’s device to . . . have inlet openings 44 on the corresponding lateral side of flow distributor 40” and that Bhatti teaches this configuration (Pet. Reply 5 (citing Ex. 1002 ¶¶ 49, 212, 213; Ex. 1007, Figs. 1, 2); Tr. 38:13–21), Petitioner has not clarified the specific configuration and orientation of lateral side inlet openings in modified Kang. For example, it is unclear if Petitioner proposes to alter Kang to re-orient inlet channels 44 to extend from a first lateral side to an opposing second lateral side of flow distributor 40 (instead of extending from a top side to a bottom side) or to extend Kang’s inlet channels 44 to only one lateral side, and if so, whether modified inlet channels would extend from the top to bottom of the flow distributor on that one lateral side or only along a portion of the lateral side. Because Petitioner has not specified the exact manner in which Kang’s flow distributor 40 would include inlet channels 44 on a lateral side of flow distributor 40 in connection with its proposed modification of Kang, we determine that it is unclear if the modification of inlet channels 44 proposed by Petitioner is merely a design choice that does not affect the heat removal efficiency/performance of the heat exchanger device. If inlet channels 44 extend from a first lateral side to an opposing second lateral side, at least a portion of fluid would be able to bypass the microchannels and, thus, affect operation of the device. Because the exact configuration of inlet channels 44 in modified Kang has not been set forth with clarity in Petitioner’s challenge, we are not persuaded that the proposed modification to inlet channels 44 is merely a design choice, as alleged by Petitioner, that would not affect operation of the device. For the foregoing reasons, we determine that Petitioner has not provided sufficient detail in its challenge to support a conclusion that modifying Kang in light of the teachings of Bhatti would be a mere design choice that would not modify the heat exchange functionality of the device.” slip op. at 24

  Patent outcomesUS 8,746,330 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,746,330
• Presidio Components, Inc. v. Avx CorporationNo claims unpatentable
  PTAB · Dec 1, 2016 · IPR2015-01332 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–5 and 7–12 were not shown unpatentable because the evidence did not establish a sufficient reason to modify Galvagni’s capacitor.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Harperizing, or “corner rounding,” is typical. It merely describes one exemplary capacitor manufacturing process in which “the surfaces are cleaned of adhering lead contaminations and the edges and corners are eroded, i.e., rounded off, so that after the scrubbing the inside electrodes . . . are made substantially flush to the end faces of the monolithic ceramic body.” Florian, 10:16–22. On the other hand, Patent Owner’s expert, Dr. Shanfield, testifies that “Galvagni does not Harperize or corner round its components,” and that “a person of ordinary skill in the art would have avoided Harperization not least because it would have added processing time to an already labor-intensive process of Galvagni that could lead to longer cycle time, as well as dimensional variability that could lead to lower yield.”) Shanfield Decl. ¶¶ 71–72; see also id. at ¶ 73 (not Harperizing to contain or reduce manufacturing cost). On this record, we credit the testimony of Dr. Shanfield. We are not persuaded that a person of ordinary skill in the art would have understood that it was “typical” to Harperize the ends 18 of capacitor 16 taught in Galvagni prior to the vapor deposition of layer 21 illustrated in Figure 4 of Galvagni.” slip op. at 10

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

    “In our Decision on Institution, we construed the phrase “negligibly over the top surface” (independent claims 1 and 12) to mean “a small amount of material is formed on the top surface.” Dec. to Inst. 7–9. Neither party disputes our determination or proposes additional terms for construction. Based on the record developed during this proceeding, we maintain this construction.” slip op. at 6

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

    “On this issue, we agree with Patent Owner. Galvagni’s teachings of in-circuit testing of individual components are limited to using the ends, not the tops, of those components. Ex. 1002, 3:7–10, 6:24–30. Petitioner’s argument that testing probes of 0.05 mm were commercially available is not persuasive because Petitioner makes a comparison only to the dimensions taught in the ’547 patent without providing sufficient evidence that any negligible termination resulting from Harperization of Galvagni’s capacitor would also have been 0.05 mm. Even if it were, any negligible termination on a top surface of Galvagni’s capacitor would be very small relative to the end surface of Galvagni’s capacitor, and, therefore, would not “make it easier to access the capacitor for in-circuit test” (Pet. 17). Finally, even assuming Petitioner is right that a person of ordinary skill in the art would have been motivated to “test the individual components in a manner that minimizes wasted PCB (printed circuit board) space” (Pet. 15), Petitioner has not presented persuasive evidence that such a person would have valued that factor more highly than the other considerations identified by Dr. Shanfield—i.e., (1) the efficiency of testing groups of components rather than individual components, or (2) using pads on the PCB to reduce the risk of damage to components. After weighing the arguments and evidence, including the testimony of both parties’ experts, we are not persuaded that a person of ordinary skill in the art would have been motivated by the purported advantages for in-circuit testing to modify Galvagni’s capacitor 16 to include terminations extending negligibly over a top surface.” slip op. at 13

  • ExcludeNot reached

    “We decline to assess the merits of Patent Owner’s Motion to Exclude. As discussed above, even considering the identified evidence, we have concluded that Petitioner has not demonstrated, by a preponderance of the evidence, that the challenged claims are unpatentable. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 20

  Patent outcomesUS 6,144,547 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,144,547
• Presidio Components, Inc. v. American Technical Ceramics Corp.All claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01331 · APJ Christopher G Paulraj · IPR · Final written decision

  Claims 1–6 are unpatentable: Heron anticipates claims 1–4, and Heron combined with Monsorno ’926 renders claims 5–6 obvious.

  RulingsFinal written decision

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2146 (2016). Under that standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “Petitioner submits that each term of the challenged claims should be given its ordinary meaning.” Pet. 6. Patent Owner agreed in its Preliminary Response that claim terms should be given their ordinary meaning, and did not propose that any terms be construed separately in its Patent Owner Response. Prelim. Resp. 8. For the purposes of this Final Written Decision, we determine that none of the claim terms in the ’879 patent require express construction.” slip op. at 6

  • ExcludeMotion to exclude, deniedDenied

    “Specifically, Patent Owner seeks to exclude Exhibits 1004, 1006, 1008, 1009, 1010, and 1011, portions of Dr. Randall’s Declaration concerning those exhibits (paragraphs 65–75, 87–94, and 124–151 of Ex. 1012), as well as Appendices E, G, J, L, M, N, O and P of Dr. Randall’s Declaration on the grounds that they relate to patentability challenges that did not form the basis of our Institution Decision in this proceeding. Id. at 2–4, 6, 7. Patent Owner additionally seeks to exclude paragraphs 22 and 25 of Dr. Randall’s Declaration under Fed. R. Evid. 702 for failing to be based on sufficient facts or data. Id. at 4–5. Furthermore, Patent Owner seeks to exclude Exhibit 1015, Dr. Shanfield’s deposition transcript, on the grounds that the testimony cited to at 8:21–9:2 in Exhibit 1015 was objected to for lack of relevance. Id. at 7. Because we did not rely upon any of the exhibits, portions of Dr. Randall’s Declaration, or the cited testimony from Dr. Shanfield’s deposition transcript that are sought to be excluded in this Final Written Decision, we dismiss Patent Owner’s motion to exclude as moot. V.” slip op. at 22

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Although a Reply may properly respond to arguments raised in Patent Owner’s Response (see 37 C.F.R. § 42.23(b)), it is not an opportunity for Petitioner to identify, for the first time, new and different prior art elements that are alleged to satisfy the claim requirements. Here, Petitioner’s reliance on trimming plate 15 is materially different from its prior reliance on capacitor plates 2a, 4a, 2c, 4b, etc., especially with respect to the requirement of “one of said contacts members connecting to an end surface of said electrode layer.” Whereas the Petition pointed to, and our Institution Decision relied upon, Bonini’s teaching that the capacitor plates extend to the left or right side portions of capacitor body 3 in order to contact terminal-forming coating 13 or 14 (see Pet. 17; Inst. Dec. 10; Ex. 1002, 3:5– 21, Fig. 2), Petitioner’s new argument relies upon Bonini’s teaching that trimming plate 15 has a narrow tab 15" having an edge 15' that extends to a difference surface (lateral side margin) of ceramic body 3. See Reply 8; Ex. 1002, 2:69–3:1. Because Patent Owner was not given a fair opportunity in this proceeding to respond to this argument, we consider Petitioner’s argument to be improper under 37 C.F.R. § 42.23(b) as not responding to arguments raised in the Patent Owner Response and, therefore, decline to consider it. See In re Nuvasive, Inc., 2016 WL 6608999, Nos. 2015-01672, 2015-1673, slip op. at 11–13 (Fed. Cir. Nov. 9, 2016).” slip op. at 10

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

    “dielectrics having “coextensive” length and width dimensions. PO Resp. 30–33. We disagree, as we find that requirement satisfied by the capacitor shown in Heron’s figures. Specifically, “FIG. 1 shows in side section view of a capacitor,” “FIG. 2 shows in exploded view four green ceramic layers that are stacked, sintered and terminated to make the capacitor of FIG. 1,” and “FIG. 3 shows in perspective view the capacitor of FIG. 1.” Ex. 1003, 2:25–31, Figs. 1–3. Figures 4, 7, and 8 show side sectional views, while figures 5 and 6 show top views of capacitors with alternate electrode geometries. Ex. 1003, 2:32–36; Figs. 5–8. Taken as a whole, these figures indicate plainly that the lengths and widths of dielectric layers 10 and 11 terminate at the same location, thereby satisfying the “coextensive” requirement. Patent Owner contends that reliance on Heron’s figures is improper under the Federal Circuit’s decision in Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). PO Resp. 31–33. We do not find Hockerson’s holding to be applicable here. Unlike with the claim at issue in Hockerson, which was construed to require that the “central longitudinal groove” has a width that must be less than the combined width of the two peripheral fins, the challenged claims do not require any particular size or proportion. The requirement that the dielectric layers have coextensive length and width dimensions can be assessed by simply viewing the figures of Heron, and no additional measurements are necessary to make that determination. It is well established “that a claimed invention may be anticipated or rendered obvious by a drawing in a reference, whether the drawing disclosure be accidental or intentional.” In re Meng, 492 F.2d 843, 847 (CCPA 1974). Patent Owner also contends that the Petition fails to identify what specific elements in Heron correspond to numerous claim elements. PO Resp. 34–37. We disagree. As noted above, the Petition identifies specific teachings of Heron, and includes a claim chart mapping Heron’s teachings to the claim elements. Pet. 18–24. In particular, Patent Owner argues that the Petition does not specify where the claimed “electrode layer” is found in Heron. PO Resp. 34–35. As Patent Owner recognizes, however, the Petition identified overlapping buried electrodes 15 and 16 for this claim element. See Pet. 19–20. We find this to be sufficient as both layers 15 and 16 satisfy the claim requirements of having dimensions smaller than the dielectric layer, being mounted on the first surface of a dielectric layer, and extending to a side face of the capacitor body so as to contact the end terminations. Patent Owner also argues that the Petition fails to specify where in Heron “opposite polarity” is taught. PO Resp. 35–36. We find that the Petition’s identification of end terminations 22 and 24 is sufficient. See Pet. 23–24. As explained by Petitioner’s expert, Dr. Randall, in order to store charge, a voltage must be imposed across the terminals of Heron’s capacitor, “and the resulting voltage difference across the two contact members 22 and 24 establishes the opposite polarities of the capacitor.” Ex. 1014 ¶ 38. Finally, Patent Owner argues that the Petition fails to specify where “said second surface of said first dielectric layer” is found in Heron. PO Resp. 36–37. The Petition, however, noted that “[a]s seen in Fig. 2, each dielectric layer has a length and width, as well as a first and second surface.” Pet. 19. The Petition further notes that “Heron discloses that green ceramic (dielectric) layer 10 would be first formed and screen printing the electrode pattern 15 thereon.” Id. at 18. Because the Petition identifies electrode layer 15 as being on the “first surface” of the first dielectric layer 10, we find that the Petition also sufficiently identified the opposite surface of dielectric layer 10 as satisfying the requirements of the “second surface.” Figure 1 of Heron shows terminations 22 and 24 provided on the bottom, i.e., “second surface,” of the dielectric layer and extending to the edges of the capacitor body. The Petition, therefore, identified sufficiently the specific features of Heron’s capacitor that correspond to the claim elements. Based on those identified features, and the record developed during this proceeding, we find that Heron anticipates claims 1–4.” slip op. at 18

  Patent outcomesUS 6,992,879 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,992,879
• Presidio Components, Inc. v. American Technical Ceramics Corp.All claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01330 · APJ Christopher G Paulraj · IPR · Final written decision

  Claim 1 is unpatentable as anticipated by Horie and Coleman under § 102.

  RulingsFinal written decision

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

    “argues that “the second electrode layer” must be formed on the external capacitor surface that is mounted on the current source. PO Resp. 7–16. We disagree. Nothing in the claim language suggests that a second electrode layer must be positioned in relation to the current source. Rather, the claim specifies only “a second electrode layer formed as a pad for contact with the second surface of the first dielectric layer,” wherein the first dielectric layer is an internal layer of the monolithic capacitor chip. Patent Owner relies upon the opinion of its expert, Dr. Stanley R. Shanfield, Ph.D., to assert that “pad” ordinarily means “mat” or “cushion” and thus connotes a mounting or landing surface, such as against a printed circuit board. Id. at 8 (citing Ex. 2003 ¶ 38). In support of this opinion, Dr. Shanfield cites a) a general dictionary definition of “pad” from the Merriam-Webster’s Collegiate Dictionary (10th ed. 1993) , and b) a 2003 (post-filing date) document entitled “Microwave Office Element Catalog” describing a “multiplate ceramic chip capacitor” with an indication that one can “set size and properties of contact pads.” Ex. 2003 ¶¶ 38–39, Exs. C and D. Neither extrinsic document, however, specifies that an electrode layer that is formed as a contact pad for a multilayer chip capacitor must necessarily be mounted on the printed circuit board or otherwise close to the current source. Moreover, during oral argument, Patent Owner acknowledged that the printed circuit board is not part of the claimed device. Tr. 80:1–4.” slip op. at 7

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

    “with the claim at issue in Hockerson, which was construed to require that the “central longitudinal groove” has a width that must be less than the combined width of the two peripheral fins, challenged claim 1 does not require any particular size or proportion. The requirement that the dielectric layers have co-extensive length and width dimensions can be assessed by simply viewing the figures of Horie, and no additional measurements are necessary to make that determination. It is well-established “that a claimed invention may be anticipated or rendered obvious by a drawing in a reference, whether the drawing disclosure be accidental or intentional.” In re Meng, 492 F.2d 843, 847 (CCPA 1974). Moreover, the specification of Horie is not “completely silent on the issue” of whether the dielectric layers are co-extensive. Cf. Hockerson, 222 F.3d at 956. In particular, Horie discloses that “the laminated body obtained is cut in vertical and horizontal directions to obtain each chip-like laminated body.” Ex. 1002, 7:11–13.3 Although Patent Owner suggested that the use of the terms “vertical” and “horizontal” in Horie could nonetheless encompass cutting the layers at an angle (Tr. 95:15–97:4), we find no support for that position. We, thus, find that Horie’s teaching that each layer in the laminate comprising the capacitor body is cut to the same length and the same width dimensions, in combination with Figure 3, satisfies the “co-extensive” requirement. See Ex. 1013 ¶¶ 32–34.” slip op. at 15

  • ExcludeMotion to exclude, grantedOther

    “PATENT OWNER’S MOTION TO EXCLUDE Patent Owner filed a motion to exclude certain evidence. Paper 28. Specifically, Patent Owner seeks to exclude certain exhibits and the portions of Dr. Randall’s testimony concerning patentability challenges that did not form the basis of our Institution Decision in this proceeding. Id. at 2–6. Petitioner filed a response indicating that it does not dispute Patent Owner’s motion to exclude for any reason. Paper 30. Because we did not rely upon any of the evidence sought to be excluded in our Final Written Decision, we dismiss Patent Owner’s motion to exclude as moot. V.” slip op. at 23

  Patent outcomesUS 6,337,791 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,337,791

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.