- Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 30, 2016 · IPR2015-01509 · APJ Jason J Chung · IPR · Final written decision
Claims 26, 29, 30, 33, 42, 43, 48, 60, and 68 are unpatentable as anticipated by Frossard or Pagliaroli, or obvious over the stated combinations.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for petitioner
“In that 2007 filing, the term “signal” was defined as “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Ex. 2002, 11. We are persuaded that this definition is instructive to understanding the proper scope of these claim terms. Thus, a first signal, for example, is an “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information that is sent by a first device.” We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third device.” For convenience, this claim construction is reproduced in the table below.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are not persuaded that Mr. McNamara’s statements on cross examination are sufficient reason to accord his testimony little or no weight. The prosecution history is an important element in understanding the claims of a patent. We are persuaded that the statements made during cross examination appear to misstatements as to Mr. McNamara’s review of the patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury and he has made other statements consistent with his testimony under oath stating that he reviewed the prosecution history. See Ex. 1003 ¶ 14; Ex. 2003, 154:11–20. Mr. McNamara signed his declaration on June 24, 2015, which states that he read the ’130 patent and its prosecution history. Ex. 1003 ¶ 14. Although Mr. McNamara testified that he did not read the prosecution history (Ex. 2003, 153:11–15), Patent Owner ignores Mr. McNamara’s other statements that demonstrate that he reviewed the prosecution history (id. at 154:11–20). In addition, Mr. McNamara’s statement was during a lengthy deposition approximately nine months after Mr. McNamara signed his declaration. Mr. McNamara’s inconsistent testimony appears to illustrate a momentary lapse in memory. Compare e.g., id. at 153:11–15, with id. at 154:11–20. Moreover, the only claim terms Mr. McNamara defined in view of the prosecution history of the ’130 patent were “automatically” and “automatically received,” which neither party contests. Compare PO Resp. 10–16; Reply 1; Pet. 8–9, with Ex. 1020, 26. In addition, we are not persuaded that Mr. McNamara’s statement that he did not review the prosecution history of the ’130 patent displays a lack of understanding of the prosecution history because Patent Owner did not define any claim terms at issue in this proceeding that overlap with claim terms defined during the prosecution of the ’130 patent. Compare PO Resp. 10–16, with Ex. 1020, 26.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Patent Owner attempts to limit “control device” improperly in a way that contradicts Patent Owner’s proposed claim construction. As discussed supra, “control device” is construed as “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” We agree with Petitioner that Frossard’s server 1 and resource 2 discloses the claimed “second control device” because Patent Owner’s proposed definition of “control device” can comprise “part of a device”; it follows that a device can comprise multiple parts. Also, because a “control device” is a type of device, a “control device” can include necessarily multiple parts. We also determine that because Patent Owner acknowledged, in its own definition, that “control device” means “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions” (emphases added), it necessarily follows that the “or” implies that a control device can include multiple parts. Tr. 32:15–19. For example, a “control device” can be “[1] a device or [2] a computer”; in other words, logic dictates that the “or” can be interpreted as an “and” such that a “control device” can be “[1] a device and [2] a computer.” Id. Moreover, during oral hearing, Patent Owner acknowledged Frossard’s server 1 is a “computer” and Frossard’s resource 2 is a “device.” Id. at 34:14–35:11 (In response to the question, “[s]o you are saying that a server can’t be a device,” Patent Owner acknowledged “[a] server is a computer, and broadly, if you consider a computer a device, a server is a device.”) (In response to the question “resource 2 or indicating a network number 2, is that a device as well?” Patent Owner acknowledged “resource 2 has a coder and has a transmitter. I would say it is a computer, but in a broad sense it can be considered a device.”). Using Patent Owner’s acknowledgement during the oral hearing, it follows that Frossard’s server 1 and Frossard’s resource 2, together, discloses a “control device” under Patent Owner’s proposed definition of “control device.” Furthermore, Figure 1 illustrates that Frossard’s server 1 and resource 2, together, form a control device generating and transmitting a signal. Ex. 1005, Fig. 1. Frossard’s server 1 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of generating the message order M (i.e., the claimed “second signal”). Id. at 4– 5. In addition, Frossard’s resource 2 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of transmitting the order message M (i.e., the claimed “second signal”). Id.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Petitioner and Mr. McNamara that it would have been obvious to a person having ordinary skill in the art to combine Frossard’s system with Pagliaroli’s theft sensor 12 to provide a system for remotely disabling or enabling a vehicle that also provides a notification when it detects tampering or theft. Patent Owner fails to proffer any rationale or evidence for why the combination of Frossard and Pagliaroli would destroy the functionality of Frossard. Further, Patent Owner fails to proffer its own expert testimony refuting Petitioner’s arguments and Mr. McNamara’s opinion. Patent Owner’s arguments are conclusory attorney argument. Patent Owner’s argument that Pagliaroli does not provide a teaching or suggestion that its theft sensor 12 can function as Frossard’s receiver-decoder circuits 4 is improper because Petitioner argues for combining (rather than replacing) Pagliaroli’s theft sensor 12 and Frossard’s receiver-decoder circuits 4. In addition, Patent Owner is incorrect because any teaching or suggestion need not be found in the reference itself.” slip op. at 37
Patent outcomesUS 6,549,130 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,549,130 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 29, 2016 · IPR2015-01466 · APJ Stacey G White · IPR · Final written decision
Claims 22, 29, 31, 32, 39, and 40 are unpatentable as anticipated by French; claim 27 is unpatentable as obvious over French and Caglayan.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“skill in the art. Id. at 16. Mr. Bennett testified that a person of ordinary skill would have “a bachelor’s degree in engineering or equivalent coursework and at least two years of experience in networked systems.” Id. (quoting Ex. 1002 ¶ 18). Mr. Bennett, however, does not have a degree in engineering and he has limited coursework in the field. Id. at 16–21. Thus, according to Patent Owner his testimony should be accorded little to no weight because he does not meet his own definition of a person of ordinary skill in the art. Id. This argument is not persuasive. Our reviewing court has noted that “[t]he ‘person of ordinary skill in the art’ is a theoretical construct used in determining obviousness under § 103, and is not descriptive of some particular individual.” Endress + Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) (citing Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 963 (Fed. Cir. 1986)). The Federal Circuit has instead examined whether the purported expert has substantial credentials that would allow the judge to permit testimony from the purported expert. Id. Under the Federal Rules of Evidence, the question is whether Mr. Bennett has “scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702; see also Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Rule 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art”). We are persuaded that Mr. Bennett has such credentials. Mr. Bennett has nearly 40 years of experience in networked systems (Reply. 14 (citing Ex. 1019, 210:2–9)) and is a named inventor in four issued patents dealing with networked systems (id. (citing Ex. 1003, 4–5; Ex. 1019, 49:15–50:10)). Patent Owner did not raise any substantive issues with Mr. Bennett’s experience or knowledge; instead, it only argued that Mr. Bennett did not have sufficient classroom education. We find that Mr. Bennett’s work experience, research, and industry participation are sufficient to provide the expertise necessary to assist us in this matter.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We find Petitioner’s argument to be persuasive. We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third (communications) device.” The recited signals all are construed to be “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Finally, we are not persuaded that these terms exclude signals that may pass through an intermediary. Further, we are persuaded that the claims are broad enough to encompass situations in which an intermediary may append additional information to the received signals.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“second processing device because “there is an intermediate device between the local control module 38a and the central control system 20 that receives the ‘first signal’ from the local control module 38a and then subsequently generates and sends a ‘second signal’ to control system 20.” PO Resp. 25– 26 (citing Ex. 2012 ¶ 18); see also id at. 30–31. Dr. DiEuliis testified that “Global Control Module 30a assembles the data from the Local Control Module 38a and other modules, it generates a signal that contains all of this information and transmits it on network 32, where it is received by the Central Control System 20.” Ex. 2012 ¶ 22 (citing Ex. 1005, 6:43–53). As discussed above, we are not persuaded that the claims exclude systems with intermediate devices such as French’s global control module. See § II.B.2. As noted by Dr. DiEuliiss, French’s global control module transmits a signal to the central control module that “contains all of [the information received from the local control module].” Ex. 2012 ¶ 22. Pursuant to our construction, the signal received by the central control module (second control device) is the first signal because it contains all of the information sent by the local control module (first device). Thus, we do not find Patent Owner’s argument to be persuasive and we are persuaded by Petitioner’s arguments regarding the disclosures of French. Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French discloses the limitations of claim 22. See Pet. 19– 28. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of independent claim 22 over the disclosures of French.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Desktop, Internet, and Intranet Agents. Ex. 1006, 1. Caglayan describes how intelligent agents manage tasks such as notifying users of events of significance. Id. at 66. Petitioner argues that it would have been obvious to use Caglayan’s intelligent agents in French’s automation system to further automate the remote monitoring system and more efficiently monitor the data received from the building equipment and systems remotely. Pet. 35– 36 (citing Ex. 1002 ¶¶ 41–44). We find this rationale to be reasonable. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French and Caglayan teach the limitations of claim 27. See Pet. 33–36. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of claim 27 over the combined teachings of French and Caglayan.” slip op. at 19
Patent outcomesUS 6,542,077 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,542,077 - Sony Corporation v. Imation CorporationAll claims unpatentablePTAB · Dec 27, 2016 · IPR2015-01556 · APJ Kevin F Turner · IPR · Final written decision
Claims 1, 3, and 8 are unpatentable as anticipated by Yen; the obviousness ground over Chang, Yen, and either specification was not established.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“preposition “from.” The standard linguistic usage of the verb “protrude” takes the prepositions “from” and “over;” it would not be standard usage to talk about “protruding in” or “protruding on.” See Ex. 3004; see also Protrude, www.merriam-webster.com/dictionary/protrude (for examples of standard usage, last visited Dec. 21, 2016). Therefore, ascribing certain requirements based on the use of a preposition may not be appropriate when only certain prepositions have common usage. As such, we are not persuaded that “from” in the claim limitation “protruding from” must take on the special meaning advocated by Patent Owner. We continue to determine that the “host connector protruding from the housing” 8 encompasses “the host connector and the housing as different parts of a single integral structure.” See Dec. 9.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Additionally, we conclude that Petitioner has demonstrated that USB interface contact 300 (“host connector”), with sub-parts gold contacts 111, jut piece 112, and base 113, protrudes from casings 113A, 114 (“housing”). See Pet. 22–24. As we explain supra in Section II.A.1, the host connector and the housing can meet the language of claim 1, “host connector protruding from the housing,” even if they are different parts of a single integral structure, i.e., attached, connected, joined, or molded to one another. Petitioner and Mr. Berg persuasively demonstrate that Figs. 11–13 of Yen show USB interface contact 300, comprising gold pieces 111, jut piece 112, and base 113, protruding, or jutting out, from casings 113A, 114. See Ex. 1003, Figs. 11–13; Pet. 22–24; Ex. 1002 ¶¶ 55, 58. We see no meaningful difference in the relationship between the host connector and the housing in these figures and that in Figure 5 of the ’038 patent, which the ’038 patent characterizes as the host connector protruding from housing. Compare Ex. 1001, 8:47–51, Fig. 5, with Ex. 1003, Figs. 11–13. For these reasons, we determine that Petitioner demonstrates by a preponderance of the evidence that Yen would have conveyed to one of ordinary skill in the art the limitations recited in claim 1 and that claim 1 is anticipated by Yen.” slip op. at 23
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“First, a copyright indication alone is not necessarily evidence of publication or that a document was distributed or had public accessibility. Although the year indicated in a copyright notice is intended to be “the year of first publication of the work” (37 C.F.R. § 401(b)), it details nothing about accessibility before the critical date. See In re Lister, 583 F.3d 1307, 1312–13 (Fed. Cir. 2009) (detailing that even when the Copyright Office issues a certificate of registration for a manuscript, that does not mean that the manuscript was listed in a catalog or index that would have permitted an interested researcher to learn of its existence and locate it for inspection); see also Microsoft Co. v. Corel Software, LLC, Case IPR2016-01083, slip op. at 13–14 (PTAB December 1, 2016) (Paper 14) (“The copyright notice, alone, however, sheds virtually no light on whether the document was publicly accessible as of that date, therefore additional evidence is typically necessary to support a showing of public accessibility”). Additionally, although the SD Specification details “[c]onditions for publication” (Ex. 1007, 2), we have no information about its dissemination, i.e., was it publically disseminated, or reproduced for some subset of a private group. As well, reproduction is prohibited without permission of “SD Group” (id.), which does not offer evidence of public accessibility. 27 Similarly, the MMC Specification discloses that “[n]o part of this publication may be transmitted, reproduced or distributed in any way,” without prior written consent (Ex. 1008, 2), which does not offer proof of sufficient accessibility to interested parties. Petitioner also asserts that the ’038 Patent admits that the MMC and SD standards, as well as cards following those standards, were in the prior art. Pet. 16–17. The acknowledgement that the standards were known, or even well-known, does not provide evidence regarding the specific documents relied upon by Petitioner. As provided in 35 U.S.C. § 311(b), a ground of unpatentability in an inter partes review can be made “only on the basis of prior art consisting of patents or printed publications.” The general knowledge of systems or methods, or their public use, cannot serve as a basis. As such, the general citation of the standards existing in the prior art can not substantiate the publication status of the specifically cited MMC Specification and SD Specification documents.” slip op. at 27
- Strike new argumentNew argument disregardedDenied
“At oral hearing, when the issue of printed publication status was raised, counsel for Petitioner raised the issues discussed above. Tr. 28–34. Petitioner also argues that without the MMC Specification and the SD Specification, “the obviousness position would still prevail.” Id. at 35. Petitioner asserts that “there’s no question that those skilled in the art understand that if you’re talking about a specific size, that there was no choice once those MMC or SD cards or their associated specs are known to be prior art, that it’d be obvious to modify the size to however you want.” Id. We are not persuaded, however, that dropping the Specification references would not be viewed as altering the grounds upon which trial instituted. Per In re Magnum Oil Tools, 829 F.3d 1364 (Fed. Cir. 2016), that could be interpreted as “borrowing the rationale for combining the first set of references [and] equally apply[ing it] to the second set of references” (id. at 1378), without providing Patent Owner its due process rights with respect to the “new” ground. We respectfully decline to entertain such a new position at this stage of the proceeding.” slip op. at 29
Patent outcomesUS 6,908,038 unpatentableClaim construction§ 102 anticipationPatents in suitUS 6,908,038 - Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics Inc.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,643,724 - Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics Inc.All claims unpatentablePTAB · 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 · KSRPatents in suitUS 8,643,724 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 22, 2016 · IPR2015-01477 · APJ Howard B Blankenship · IPR · Final written decision
Claims 30, 33, 53, and 85–88 are unpatentable by disclaimer; claims 33 and 90 are also unpatentable as obvious over Fuhr, but not anticipated by Goldberg.
RulingsFinal written decision- Adverse judgmentAdverse judgmentUnpatentable
“Patent Owner states that it “hereby disclaims claims 30, 53, and 85‒ 88.” PO Resp. 21. Patent Owner does not present any arguments in its Patent Owner Response directed to those claims. A review of the USPTO electronic file of the ʼ046 patent indicated that Patent Owner had not filed a statutory disclaimer. In an Order entered December 7, 2016, we notified Patent Owner that if it failed to file a notice in this proceeding indicating that it has filed a statutory disclaimer for claims 30, 53, and 85‒88 in the patent, the claims will be held unpatentable. Paper 28. The period provided for filing of such notice has passed without response from Patent Owner. See id. at 2. Accordingly, we determine that claims 30, 53, and 85‒88 are 1 Time Warner Cable Inc. and iControl Networks, Inc. also were named as petitioners. We granted a joint motion to terminate the inter partes review with respect to those parties. Paper 22. unpatentable. The patentability of claims 33 and 90 remain for consideration in this Final Written Decision.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“objections with respect to Mr. Bennett’s testimony, nor sought to preclude him from testifying as an expert witness. In any event, to testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). We give appropriate weight to the testimony of Mr. Bennett as an individual with more than 30 years of industry experience in computers and networking, including the development of real-time video collaboration tools (Ex. 1003, 2) and software for a video-on-demand server (Ex. 1002 ¶ 12). See generally Ex. 1002 ¶¶ 5‒12; Ex. 1003 (CV).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We construe “video information” to mean “data or information containing, pertaining to or representing, an image or images or a photograph.” PO Resp. 12; see also Prelim. Resp. 25. Patent Owner submits that “real-time video information” should be construed as synonymous with “live video information,” with each meaning “video information” that is broadcast or transmitted as the video information event occurs. PO Resp. 13‒14. Patent Owner refers to a Memorandum and Order from the U.S. District Court for the Southern District of New York, which construes those terms in the ʼ046 patent. Id. (citing Ex. 2013, 17). We adopt the construction set forth by the District Court and as advocated by Patent Owner. Petitioner does not oppose that construction. See Pet. Reply 2 (“Petitioners have no issue with the wording of this construction, provided it is understood that the construction does not require instantaneous transmission of video information.”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Anticipation is established only when a single prior art reference discloses, expressly or under principles of inherency, each and every element of a claimed invention.” RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). “The identical invention must be shown in as complete detail as is contained in the patent claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The expert testimony upon which the Petition relies does not provide sufficient support for anticipation. Mr. Bennett submits that the camera disclosed in Goldberg “is capable of capturing and transmitting individual images, as well as live video.” Ex. 1002 ¶ 38 (emphasis added). His Declaration does not allege that the artisan would understand that Goldberg discloses a system that includes live video. Further, Goldberg’s description of “two possible fixes” for a live video feed (Ex. 1006, 210 n.1) is in the form of an invitation for the artisan to investigate possible ways to supply a live video feed, as opposed to describing an invention in terms such that the ordinary artisan would be placed in possession of it. See In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“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.’” (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA 1962))). Goldberg, however, describes a system having “a limited level of teleoperation.” Ex. 1006, 210 (§ 2). slip op. at 11
Patent outcomesUS 6,587,046 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 6,587,046 - Pixart Imaging, Inc. v. Syncpoint Imaging, LLCAll claims unpatentablePTAB · Dec 14, 2016 · IPR2015-01347 · APJ Christa P Zado · IPR · Final written decision
Claims 1–4, 6–9, 11, 17–19, and 24–26 are unpatentable under § 102(b) as anticipated by one or more of Stove, Platzker, Elrod, and Vogeley.
RulingsFinal written decision- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)
“Co-pending Reexamination of the ’214 patent, Reexamination Control No. 90/020,085. Paper 16. Petitioner filed an opposition to Patent Owner’s motion. Paper 17. At the oral hearing, Patent Owner withdrew its motion. Tr. 74:8–24. At the hearing, Petitioner responded that it has no objection to Patent Owner withdrawing its motion. Id. at 75:2–5. Accordingly, Patent Owner’s motion is withdrawn.” slip op. at 7
- 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); see also Cuozzo Speed Techs., LLC, v, Lee, 136 S. Ct. 2131, 2141–46 (2016). The terms also generally are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We determine that it is unnecessary to construe any claim terms for purposes of this decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“the spot’s detection. Pet. 15 (citing Ex. 1005 6:9–14, 10:11–15). We are not persuaded by Petitioner’s evidence and arguments. Claim 4 recites “filtering the image to detect at least one property,” and therefore requires filtering the image captured by video camera 5 in Stove. The filter Petitioner relies on from Stove is an optical filter placed in front of the lens of video camera 5 (Ex. 1005, 6:8–9, 10:11–15 (“a red filter can be placed in front of the lens of video camera 5”)), and thus, it filters light before it enters the camera, and before an image is captured. We, therefore, are not persuaded by a preponderance of the evidence that Stove discloses “filtering the image to detect at least one property,” as recited in claim 4. We have reviewed the parties’ arguments and the evidence of record. Upon review, we determine Petitioner has not demonstrated by a preponderance of the evidence that Stove discloses every element of either claim 4, or claim 5 due to its dependence on claim 4.” slip op. at 20
- BurdenDecided for petitioner
“Petitioner must prove its proposition by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C. § 102 if “the prior art reference discloses every element of the claim.” In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). “[A]bsence from the reference of any claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1571 (Fed. Cir 1986).” slip op. at 8
Patent outcomesUS 6,275,214 unpatentableClaim construction§ 102 anticipationPatents in suitUS 6,275,214 - Katun Corporation v. Toshiba Tec Corporation And Toshiba America Business Solutions, Inc.Institution deniedPTAB · Dec 7, 2016 · IPR2016-01149 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because petitioner did not show a reasonable likelihood of proving claims 1, 3, or 11 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons explained below, we are not persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its asserted ground.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“state an intended use or that the claims define a structurally complete invention without the image forming apparatus. “A claim’s preamble may limit the claim when the claim drafter uses the preamble to define the subject matter of the claim.” August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284 (Fed. Cir. 2011); see Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[W]hen the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects.”). The preamble generally is construed to be limiting if it “recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1305 (Fed. Cir. 2005) (quoting Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). “For example, the preamble may be construed as limiting when it recites particular structure or steps that are highlighted as important by the specification.” Proveris Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1372 (Fed. Cir. 2014). “Additionally, ‘[w]hen limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.’” Id. (citing NTP, 418 F.3d at 1306).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“process parameters.” The specification of the ’091 patent defines this claim term: “The image formation parameter means set values for the operations of the photoconductive drum 11a, the developing device 13a, the cleaner 16a, the charger 17a, and the fixing device 19 performing the printing operation.” Ex. 1001, 4:4–7. Examples of these set values include “charging voltage values of the charger 17a for the printing operation and the like.” Id. at 4:12–15.” slip op. at 9
- BurdenNot shown unpatentable
“We are unpersuaded by Petitioner’s argument. As discussed above, we construe “image formation process parameters” to mean “set values for controlling the operation of the printing components of the image forming apparatus.” While Best’s operating data may be stored on the chip card of the toner container, they are not set values. Best explains that the operating data include toner type and counter reading. Ex. 1010, 8:1–2. Referring to Figure 6, Best further explains that, “in Step S7, specific electrophotographic values such as a value KW for the setting of the contrast are then set dependent on the identified toner type.” Id. at 9:39–42 (emphasis added), Fig. 6. Moreover, Figure 6 of Best shows that step S7 – setting electrophotographic values – takes place in a control panel process controller (or PC-control panel), which is a part of the printer, not the toner container. Id. at Figs. 4–6. Thus, as Patent Owner points out, “the memory on the toner container of Best does not contain [the recited] ‘image formation process parameters.’” Prelim. Resp. 36.” slip op. at 12
Claim constructionPatents in suitUS 8,554,091 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Rehearing deniedPTAB · Sep 30, 2016 · IPR2016-00587 · APJ Stacey G White · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 11, 13, 14, 16–20, 22, and 23 because Petitioner did not sufficiently explain how Verma’s teachings rendered the pitch determination marker obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW When rehearing a decision, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“incorporate Verma’s handles and operations. Req. Reh’g 13–14. This argument, however, misstates our analysis. In the Decision, we stated that it was “not sufficient for Petitioner to point out different teachings that were available in the prior art; instead, Petitioner must sufficiently articulate a rationale for the combination.” Dec. 11 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The interaction or integration of these various teachings does not require that the disparate elements of Verma be integrated physically. We, instead, were looking for a discussion of how one of ordinary skill in the art would view these teachings and what one of ordinary skill would learn from the combination. Petitioner has not supplied us with a sufficient explanation as to how one of ordinary skill would combine the knowledge gleaned from these passages and, as such, we were not persuaded that Petitioner had put forth a sufficient showing.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“incorporate Verma’s handles and operations. Req. Reh’g 13–14. This argument, however, misstates our analysis. In the Decision, we stated that it was “not sufficient for Petitioner to point out different teachings that were available in the prior art; instead, Petitioner must sufficiently articulate a rationale for the combination.” Dec. 11 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The interaction or integration of these various teachings does not require that the disparate elements of Verma be integrated physically. We, instead, were looking for a discussion of how one of ordinary skill in the art would view these teachings and what one of ordinary skill would learn from the combination. Petitioner has not supplied us with a sufficient explanation as to how one of ordinary skill would combine the knowledge gleaned from these passages and, as such, we were not persuaded that Petitioner had put forth a sufficient showing.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“the model can adjusted by the user to correct roof slopes (pitches).” Pet. 13 (citing Ex. 1008 ¶ 49). Paragraph 49 of Schuch’s declaration, however, discusses Verma’s planar rotation in conjunction with Verma’s handles. Ex. 1008 ¶ 49 (citing Ex. 1005 ¶¶ 37, 62). There is no mention of Verma’s operations in that portion of Schuch’s declaration. Verma’s operations are mentioned in paragraph 50 of Schuch’s declaration, however, this paragraph is not cited in the Petition. See Ex. 1008 ¶ 50. In paragraph 50, Schuch quotes the passage regarding operations, but does not explain the operations or their relationship to the other passages cited from Verma. Then, in paragraph 51, Schuch concludes without explanation that a person of ordinary skill would understand that Verma’s handles would be used to drag the grab the edges or corners between planes in order to modify the slope of the roof to fit the LIDAR image. Id. ¶ 51. We remain unpersuaded by the Schuch declaration. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing requires a fact finder to credit the inadequately explained testimony of an expert). It does not provide sufficient explanation as to how and why these teachings are integrated and, as such, we do not find the Schuch declaration to be sufficient to tie together these teachings.” slip op. at 7
§ 103 obviousnesscites KSRPatents in suitUS 9,129,376 - Apple Inc. v. Ameranth, Inc.Institution deniedPTAB · Sep 28, 2016 · CBM2016-00053 · APJ Kevin W Cherry · CBM · Institution
The Board denied Apple’s petition and did not institute CBM review because Apple failed to establish standing, including a real and immediate controversy concerning the ’060 patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“3. Analysis We agree with Patent Owner that Petitioner has failed to show sufficiently that it has standing to bring this covered business method patent review. Specifically, we agree with Patent Owner that Petitioner has not established sufficiently, at this time, that there is a real and immediate 8 controversy regarding the ’060 patent. An essential link in the logical chain of Petitioner’s allegations that it has standing is that the scope of the claims of the ’060 patent and the asserted claims of ’850 patent in the district court lawsuit are “substantially similar.” See Pet. 7–10. We agree, however, with Patent Owner that Petitioner has not shown adequately that the claims of the two patents are sufficiently similar. Although Petitioner contends that claim 13 of the challenged patent is similar in scope to claim 12 of the already asserted ’850 patent, it fails to provide any meaningful analysis to support its contention. Instead, it merely summarizes and lists certain similar claim limitations in the two claims without providing any discussion of the actual language of the identified limitations, the other limitations in the claims, and the claims as a whole.” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityDenied
“petitioner’s grounds for standing. 37 C.F.R. § 42.304(a). Rule 42.304(a) states it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.” Id. One of those eligibility requirements is that only persons (or their privies) who have been sued or charged with infringement under a patent are permitted to file a petition seeking a covered business method patent review of that patent. AIA § 18(a)(1)(B); 37 C.F.R. § 42.302(a). Under our rules, “[c]harged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court.” 37 C.F.R. § 42.302(a).” slip op. at 5
Discretionary denialPatents in suitUS 9,009,060
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.