- Netapp, Inc. v. Realtime Data LLCInstitution deniedPTAB · Nov 14, 2017 · IPR2017-01354 · APJ Kamran Jivani · IPR · Institution
The Board denied institution of NetApp’s petition challenging claims 1, 2, 9, 10, 15, 17, 20, and 24, exercising discretion under § 314(a) based on the General Plastic factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“IPR2016-01357 Paper 19, 16 (citations omitted). We recognize that these General Plastic factors typically have been used to analyze situations in which the same party files multiple petitions challenging the same patent. However, our discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) is not limited to situations where the same party files multiple petitions, and we find that the General Plastic factors provide a useful framework for analyzing the facts and circumstances present in this case, in which a different petitioner filed a petition challenging a patent that had been challenged already by previous petitions. Applying the General Plastic factors to the present Petition, we conclude that the circumstances present here warrant discretionary denial of institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“provides that the “Director[3] may not authorize an inter partes review to be instituted unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” “Congress did not mandate that an inter partes review must be instituted under certain” slip op. at 8
Discretionary denialPatents in suitUS 9,054,728 - Parrot S.A. / Parrot Drones, S.A.S. et al. v. Qfo Labs, Inc.Institution deniedPTAB · Sep 28, 2017 · IPR2017-01089 · APJ Hyun J Jung · IPR · Institution
The Board denied institution on claims 1–9 under § 314(a), finding the General Plastic follow-on petition factors strongly favored non-institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“institute an inter partes review. Prelim. Resp. 25; 35 U.S.C. § 314(a) (stating “[t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (emphasis added)); 37 C.F.R. § 42.108(a) (stating “the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim” (emphasis added)). There is no per se rule precluding the filing of follow-on petitions after the Board’s denial of one or more first-filed petitions on the same patent. The Board consistently has considered a number of factors in determining whether to exercise that discretion. See NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134, slip op. at 6–8 (PTAB May 4, 2016) (Paper 9) (“NVIDIA”); LG Elecs. Inc. v. Core Wireless Licensing S.A.R.L., Case IPR2016-00986, slip op. at 6–7 (PTAB Aug. 22, 2016) (Paper 12); see also Xactware Sols., Inc. v. Eagle View Techs., Inc., Case IPR2017- 00034, slip op. at 7–8 (PTAB Apr. 13, 2017) (Paper 9); Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 15– 16 (PTAB Sept. 6, 2017) (Paper 19) (designated informative) (“Gen. Plastic”). Those factors are: 1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“CONCLUSION For the foregoing reasons, based on the circumstances of this case and our assessment that the NVIDIA factors strongly favor non-institution, we exercise our discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to deny the Petition in this proceeding. Petitioners’ Motion for Joinder is also dismissed as moot. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to claims 1–9 of the ’239 patent, and” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“our assessment that the NVIDIA factors strongly favor non-institution, we exercise our discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to deny the Petition in this proceeding. Petitioners’ Motion for Joinder is also dismissed as moot. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to claims 1–9 of the ’239 patent, and FURTHER ORDERED that the Motion for Joinder is dismissed as moot.” slip op. at 11
Discretionary denialPatents in suitUS 7,931,239 - Parrot S.A. / Parrot Drones, S.A.S. et al. v. Qfo Labs, Inc.Institution deniedPTAB · Sep 28, 2017 · IPR2017-01090 · APJ Hyun J Jung · IPR · Institution
The Board denied institution on claims 1–7 and 15–24 under § 314(a), finding the follow-on petition factors strongly favored non-institution, and dismissed the joinder motion as moot.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“The factors are intended to take into account undue inequities and prejudices to Patent Owner. Gen. Plastic, slip op. at 17. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse, such as petitioners strategically staging their prior art and arguments in multiple petitions, “using our decisions as a roadmap, until a ground is found that results in the grant of review.” Id. Consideration of these factors allows for assessing whether a petitioner should have or could have raised the new challenges earlier. Id. at 18. “[T]here may be circumstances where multiple petitions by the same petitioner against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case.” Id. We agree with Patent Owner that applying the factors from NVIDIA strongly favors exercising our discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a). We address each of the factors in the order presented above.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“We agree with Patent Owner that the Director has discretion to institute an inter partes review. Prelim. Resp. 23; 35 U.S.C. § 314(a) (stating “[t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (emphasis added)); 37 C.F.R. § 42.108(a) (stating “the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim” (emphasis added)). There is no per se rule precluding the filing of follow-on petitions after the Board’s denial of one or more first-filed petitions on the same patent. The Board consistently has considered a number of factors in determining whether to exercise that discretion. See NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134, slip op. at 6–8 (PTAB May 4, 2016) (Paper 9) (“NVIDIA”); LG Elecs. Inc. v. Core Wireless Licensing S.A.R.L., Case IPR2016-00986, slip op. at 6–7 (PTAB Aug. 22, 2016) (Paper 12); see also Xactware Sols., Inc. v. Eagle View Techs., Inc., Case IPR2017-” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“CONCLUSION For the foregoing reasons, based on the circumstances of this case and our assessment that the NVIDIA factors strongly favor non-institution, we exercise our discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to deny the Petition in this proceeding. Petitioners’ Motion for Joinder is also dismissed as moot. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to claims 1–7 and 15–24 of the ’532 patent, and FURTHER ORDERED that the Motion for Joinder is dismissed as moot.” slip op. at 11
Discretionary denialPatents in suitUS 9,073,532 - RPX Corporation v. Rothschild Connected Devices Innovations, LLCAll claims unpatentablePTAB · Jul 6, 2017 · IPR2016-00443 · APJ Scott C Moore · IPR · Final written decision
Claims 1–8 are unpatentable under § 103: claims 1–7 over the Zimmerman-based combinations, and claims 1 and 8 over the Omnisphere- and Zimmerman-based grounds, respectively.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“would have had an undergraduate degree in computer science, electrical engineering, or computer engineering, or an equivalent degree, and at least two years of experience with network control systems, or have an equivalent amount of relevant work or research experience. Pet. 10. In our Decision on Institution, we declined to adopt the specific formulation set forth by Petitioner, and instead treated the cited references as being representative of the level of ordinary skill in the art. Dec. on Inst. 12 n.5 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). In its Response, Patent Owner does not propose a specific formulation regarding the level of skill in the art, and does not object to treating the cited references as being representative of the level of ordinary skill in the art. Petitioner also does not object in its Reply to treating the cited references as being representative of the level of skill in the art. On this record, we decline to adopt a specific formulation regarding the level of ordinary skill in the art, and instead find that the cited references are representative of the level of ordinary skill in the art. See Okajima, 261 F.3d at 1355 (the level of ordinary skill in the art may be evidenced by the cited references themselves). However, our analysis of the issues below would have been the same had we adopted Petitioner’s proposed formulation.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, preambles are not construed as claim limitations. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). “[W]here a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). We find, on this record, that the body of claim 1 defines a structurally complete invention. In particular, the body of claim 1 defines a system that includes a remote server, and a predetermined product that includes a first communication module, wherein the remote server is configured to perform certain recited actions and to interact with the first communication module in the recited manner. Furthermore, the preamble of claim 1 recites “[a] system for customizing a product according to a user’s preferences.” That is, claim 1 recites a system with the intended purpose of customizing a product. We determine on this record that the preamble of claim 1 is a non-limiting statement of intended use.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“Confirmation of Undisputed Claim Construction In our Decision on Institution, we expressly construed the claim term “predetermined product” by determining that this claim term “encompasses a type or class of product,” and rejecting “Patent Owner’s contention that this claim term is limited to a specific, unique product in customized form.” Dec. on Inst. 9. The parties do not dispute our prior construction of this claim term. Thus, on this record and to the extent necessary for our Final Written Decision, we see no reason to disturb our prior construction of “predetermined product,” and adopt the supporting reasoning from our Decision on Institution. See Dec. on Inst. 7–9. Accordingly, the claim term “predetermined product” encompasses a type or class of product, and is not limited to a specific, unique product in customized form. 3.” slip op. at 9
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We determine that Patent Owner has not identified objective indicia of nonobviousness. For example, Patent Owner does not allege, much less persuasively show, that the cited mass customization literature demonstrates a long-felt but unresolved need that is satisfied by the claimed invention, or the failure of others to solve a problem addressed by the claimed invention. See PO Resp. 5–7. Patent Owner uses the cited mass customization literature to bolster its claim construction arguments, but does not offer any coherent or persuasive explanation of how this literature would constitute objective evidence that the claims of the ’090 patent are nonobvious. See id. at 4–7, 11–21. Patent Owner also has failed to establish any nexus between this alleged objective evidence of nonobviousness and the claims of the ’090 patent. Our reviewing court has held that objective evidence of nonobviousness must be “reasonably commensurate with the scope of the claims.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Patent Owner does not sufficiently explain how the mass customization literature relates to the claimed invention, or to any problem addressed by the claimed invention. For example, Patent Owner does not persuasively explain how the challenged claims relate to the specific need that is allegedly identified in the mass customization literature, i.e., to “kee[p] the products affordable.” PO Resp. 4. Patent Owner does not cite sufficient persuasive evidence that the inventor of the ’090 patent was attempting to address the issue of cost, or that the claimed invention would result in less-costly product as compared to the prior art. See id. at 4–7. Accordingly, even if Patent Owner had identified a specific secondary consideration that is evidenced by the cited mass customization literature, this evidence would not be entitled to substantial weight in the obviousness analysis. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (“For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.”); In re Kao, 639 F.3d at 1068 (same). 3.” slip op. at 13
Patent outcomesUS 8,788,090 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,788,090 - Unified Patents Inc. v. American Vehicular Sciences, LLCAll claims unpatentablePTAB · May 19, 2017 · IPR2016-00364 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 1, 8, 10, 12, 17–19, 26, 27, and 36 are unpatentable as obvious over Leising and Lau; the Karlow and Lau ground did not establish unpatentability.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Owner does not address the level of ordinary skill in its Patent Owner Response, but Mr. Nranian testifies that such a person “would have at least a Bachelor’s degree in electrical, electronic, mechanical, or automotive engineering, and at least three years of experience in the integration of airbag, safety, and vehicle occupant protection devices in automotive vehicles, or equivalent knowledge obtained through work experience in the relevant field.” Ex. 2021 ¶ 36. We do not discern a difference between these formulations as applied to the issues in dispute in this proceeding. For purposes of this Final Written Decision, and based on the parties’ proposed formulations and the complete record now before us, we adopt the following definition of one of ordinary skill in the art: a person having at least a Bachelor’s degree in electrical, electronic, mechanical, or automotive engineering, or equivalent coursework, and having several years of experience in the design of vehicle occupant protection systems in automotive vehicles, or equivalent knowledge obtained through work experience in the relevant field. The level of ordinary skill in the art further is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“The parties’ dispute does not require express construction of any claim term. See, e.g., 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)). We address certain aspects of Patent Owner’s proposed constructions in our substantive discussion below.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“of a combination of references). Contrary to Patent Owner’s arguments, Petitioner does not rely on either Leising or Lau individually for a teaching of a single airbag extending across two rows of seats. Instead, as discussed above, Petitioner’s proposed combination relies on disclosure in Lau of airbag protection of both front and back seat passengers (rather than on Lau’s use of two airbags to do so), as evidence that one of skill in the art would also have considered safety protection for rear seat occupants, and would have found it obvious to extend the side airbag of Leising in order to protect also passengers in the back seat. See, e.g., Pet. 26–27 (citing Ex. 1005 ¶ 58); see also Pet. Reply 9–10 (“Patent Owner’s contentions . . . are unavailing because they fail to properly consider the combined teachings of Leising and Lau, e.g., extending Leising’s side air bag to protect rear seat occupants, based on Lau’s teaching to use a single unit with one inflator to protect front and rear seat occupants”); Tr. 16:3–25, 47:11–15 (confirming Petitioner’s proposed combination). Further, Petitioner, relying on testimony from Dr. Prasad, describes how such a modification of Leising’s airbag could be accomplished (i.e., “by merely elongating the side curtain 41 and roof storage area of Leising”). See Pet. 27 (citing Ex. 1005 ¶ 58). Based on the evidence presented, we find that it would have been within the level of ordinary skill to extend the side airbag of Leising, and that one of ordinary skill in the art would have done so in order to protect passengers in the back seat.” slip op. at 20
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Further, Petitioner provides testimonial evidence that “Leising’s extended airbag would have provided the same protection for rear seat occupants as it provided for front seat occupants.” Pet. Reply 13 (citing Ex. 1021 ¶ 6). We credit Dr. Prasad’s testimony, and agree with Petitioner, that Patent Owner’s argument—that one of skill in the art would not have modified Leising as proposed by Petitioner because out of position occupants would have been injured—is unpersuasive because “all airbags hav[e] the potential to cause an unintended injury.” Pet. Reply 14; see also Ex. 1022, 21:21–22:2, 33:18–34:5 (Mr. Nranian on cross-examination acknowledging the same). Dr. Prasad testifies that a person of ordinary skill in the art “would have known how to appropriately mitigate [injury risk] through ordinary skill and routine testing” (Ex. 1021 ¶ 6; Pet. Reply 14) and that choosing an appropriate inflator was also within the level of ordinary skill (Ex. 1021 ¶ 9; Pet. Reply 16). Dr. Prasad further testifies that one of ordinary skill in the art also would have addressed any potential interference between a seat belt and Leising’s modified airbag “through routine testing and adjustments known in the art.” Ex. 1021 ¶ 10; Pet. Reply 17–18; see also Ex. 1022, 112:19–113:21 (Mr. Nranian confirming on cross-examination that it was within the skill level of a person of ordinary skill in the art to run tests to avoid seat belt interference). The lack of discussion regarding how to handle potential seatbelt interference in the ’093 patent itself also supports Petitioner’s assertion that it is within the level of ordinary skill in the art. See Pet. Reply 17.” slip op. at 26
Patent outcomesUS 9,043,093 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,043,093 - Koito Manufacturing Co., Ltd / SL Corporation v. Adaptive Headlamp Technologies, Inc.All claims unpatentablePTAB · Mar 15, 2017 · IPR2016-01368 · APJ Scott C Moore · IPR · Final written decision
Claims 3–26, 28–32, and 35 are unpatentable as obvious under the listed combinations of Kato and additional references.
RulingsFinal written decision- Skill levelSkill level board ownOther
“The parties’ formulations as to the level of ordinary skill in the art are similar to one another, and neither party identifies with specificity an error in the opposing party’s formulation. The parties also agree that none of the disputes in this case turn on differences between the parties’ respective formulations. Tr. 33:1–6, 67:20–68:1. On the record presented we hold that the cited prior art is representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves). Specifically, the references are consistent with the parties’ formulations and demonstrate the level of skill in the art. Our determinations regarding the patentability of the challenged claims would remain the same under either party’s proposed formulation.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“usage, could encompass motorcycles. Tr. 41:12–23. Patent Owner further concedes that the ’034 patent does not contain an express lexicographic definition of the term “vehicle,” (Tr. 41:24–43:8), and instead argues that “the disclosure of the patent in the claims and the problem to be solved” make clear that the term “vehicle” excludes motorcycles (id. at 42:19–43:5). Patent Owner, however, does not sufficiently identify the portions of the specification that allegedly support its claim construction argument. See PO Resp. 6–7 (indicating that Patent Owner’s claim construction argument is based on “certain discussion throughout the specification of the ’034 patent, as noted throughout this Response”). Patent Owner cites to Paragraph 38 of the Katona Declaration (see PO Resp. 7), but this declaration testimony relates to the Kato reference and does not identify any portion of the ’034 patent that supports Patent Owner’s argument (see Ex. 2002 ¶ 38; Ex. 1007 ¶¶ 4–5). Moreover, we find that the “Claim Interpretation” section of the Katona Declaration is conclusory in nature because it does not identify any specific portion of the ’034 patent specification that supports Patent Owner’s argument. See Ex. 1002 ¶ 44. For the foregoing reasons, and based on the current record and our review of the specification of the ’034 patent, we are not persuaded that the intrinsic record contains a lexicographic definition or a disclaimer that would exclude motorcycles from the scope of the term “vehicle.” To the contrary, the specification makes clear that the term ”vehicle” is a broad term that is intended to encompass any type of vehicle. Accordingly, we determine that the term “vehicle,” as used in the specification and claims of the ’034 patent, encompasses motorcycles.” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“directed to different fields of endeavor, depends on its argument that the term “vehicle,” as used in the ’034 patent, excludes motorcycles. As discussed above, we reject this argument. In view of our determination that the ’034 patent’s use of the term “vehicle” does not exclude motorcycles, we are persuaded by Petitioner’s arguments (see Reply 7–8; Ex. 1037 ¶ 23) and find that Kato is directed to the same field of endeavor as the ’034 patent, i.e., automatic directional control systems for vehicle headlights. Compare Ex. 1001, 1:57–67, with Ex. 1007 ¶ 1. Even if the ’034 patent’s controller and Kato’s motorcycle controller were directed to different fields of endeavor, Kato’s controller would still be reasonably pertinent to the problem addressed by the ’034 patent. In particular, we find that Patent Owner is incorrect in its assertion that “[n]o crossover applicability exists [] between control devices for a motorcycle headlight and those of four-wheeled vehicles.” PO Resp. at 19. For example, Kato’s controller adjusts a headlight’s optical axis based upon changes to pitch angle or steering angle of a motorcycle. Ex. 1007 ¶ 11; see Ex. 1037 ¶ 33. The controller of the ’034 patent adjusts the aiming angle of vehicle headlights to account for operating conditions such as “steering angle” and “pitch.” Ex. 1001, 2:3–20. In view of the fact that the ’034 patent and Kato both disclose controllers that automatically adjust headlights of motorized vehicles according to steering angle and pitch, we are persuaded by Petitioner’s arguments (see Reply 8–13; Ex. 1037 ¶¶ 24–29) that Kato would “logically have commended itself” to the attention of an inventor considering the problem addressed by the ’034 patent, even if the problem addressed by the ’034 patent only related to four wheeled vehicles. See In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007). On this record, we find that Kato qualifies as analogous art.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“teaches away from the use of Takahashi’s thresholds, or that such thresholds would render Kato’s system unsuitable for its intended purpose. Kato’s stated “Object of the Invention” is “to provide a headlight optical axis control device that can stably ensure a beam irradiation range of a headlight even when pitch, bank, steering angle or the like change while driving a motorcycle.” Ex. 1007 ¶ 6. Kato does disclose an embodiment that is able to correct direction of a headlamp “immediately” (id. ¶ 8), but we do not find that the portions of Kato cited by Patent Owner “criticize, discredit, or otherwise discourage investigation” into the use of a threshold of the type taught by Takahashi. Galderma Labs. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013); see PO Resp. 28–29, Ex. 2002 ¶¶ 57–58. We also do not find that such thresholds would render Kato’s system unsuitable for its intended purpose. See PO Resp. 30–31; Ex. 2002 ¶¶ 57–58. Rather, we agree with Petitioner that a skilled artisan would have realized that Takahashi’s threshold values could have been set to minimize time delays while still realizing the advantages of Takahashi’s invention (i.e., avoiding unnecessary headlight adjustments due to short-term disturbances, such as those caused by a rough road surface). Reply 17–18; Ex. 1037 ¶¶ 34–39. Patent Owner also has failed to cite any persuasive evidence of improper hindsight. See PO Resp. 29, 33. We find on this record that combining Takahashi’s reference values with the Kato’s headlight optical axis control system would result in an obvious “combination of familiar elements according to known methods . . . [that] does no more than yield predictable results.” See KSR, 550 U.S. at 416. We also find on this record that a person of ordinary skill would have recognized that Takahashi’s thresholds could have been used to improve Kato’s motorcycle headlight controller in the same way they were used to improve Takahashi’s headlight controller. See id. at 417.” slip op. at 20
Patent outcomesUS 7,241,034 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,241,034 - Koito Manufacturing Co., Ltd / SL Corporation v. Adaptive Headlamp Technologies, Inc.All claims unpatentablePTAB · Mar 15, 2017 · IPR2016-00079 · APJ Scott C Moore · IPR · Final written decision
Claims 3–26, 28–32, and 35 are unpatentable under § 103(a) over the ten instituted combinations of prior art.
RulingsFinal written decision- Skill levelSkill level board ownOther
“The parties’ formulations as to the level of ordinary skill in the art are similar to one another, and neither party identifies with specificity an error in the opposing party’s formulation. The parties also agree that none of the disputes in this case turn on differences between the parties’ respective formulations. Tr. 33:1–6, 67:20–68:1. On the record presented we hold that the cited prior art is representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves). Specifically, the references are consistent with the parties’ formulations and demonstrate the level of skill in the art. Our determinations regarding the patentability of the challenged claims would remain the same under either party’s proposed formulation.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The specification of the ’034 patent uses the term “vehicle” in a broad sense. For example, the Background of the Invention section of the ’034 patent uses the term “vehicle” to encompass “land vehicles, and many other types of vehicles (such as boats and airplanes, for example).” Ex. 1001, 1:20–21. The specification also makes clear that the claims are not limited to the specific vehicle types described in the Detailed Description of the Preferred Embodiment. See, e.g., id. at 2:60–3:3 (“The illustrated headlight 11 is, of itself, conventional in the art and is intended to be representative of any device that can be supported on any type of vehicle for the purpose of illuminating any area.”) (emphasis added).” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Patent Owner’s first argument, that Kato and the ’034 patent are directed to different fields of endeavor, depends on its argument that the term “vehicle,” as used in the ’034 patent, excludes motorcycles. As discussed above, we reject this argument. In view of our determination that the ’034 patent’s use of the term “vehicle” does not exclude motorcycles, we are persuaded by Petitioner’s arguments (see Reply 7–8; Ex. 1037 ¶ 23) and find that Kato is directed to the same field of endeavor as the ’034 patent, i.e., automatic directional control systems for vehicle headlights. Compare Ex. 1001, 1:57–67, with Ex. 1007 ¶ 1. Even if the ’034 patent’s controller and Kato’s motorcycle controller were directed to different fields of endeavor, Kato’s controller would still be reasonably pertinent to the problem addressed by the ’034 patent. In particular, we find that Patent Owner is incorrect in its assertion that “[n]o crossover applicability exists [] between control devices for a motorcycle headlight and those of four-wheeled vehicles.” PO Resp. at 19. For example, Kato’s controller adjusts a headlight’s optical axis based upon changes to pitch angle or steering angle of a motorcycle. Ex. 1007 ¶ 11; see Ex. 1037 ¶ 33. The controller of the ’034 patent adjusts the aiming angle of vehicle headlights to account for operating conditions such as “steering angle” and “pitch.” Ex. 1001, 2:3–20. In view of the fact that the ’034 patent and Kato both disclose controllers that automatically adjust headlights of motorized vehicles according to steering angle and pitch, we are persuaded by Petitioner’s arguments (see Reply 8–13; Ex. 1037 ¶¶ 24–29) that Kato would “logically have commended itself” to the attention of an inventor considering the problem addressed by the ’034 patent, even if the problem addressed by the ’034 patent only related to four wheeled vehicles. See In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007). On this record, we find that Kato qualifies as analogous art.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Takahashi’s thresholds operate to “prevent the illumination of the lamp [] from being corrected inadvertently when a sudden change in the posture of the vehicle occurs temporarily or due to the wrong operation of the lamp [] caused by external disturbances.” Ex. 1007 ¶ 6. We are not persuaded that Takahashi’s thresholds could not be used to prevent the direction of Kato’s motorcycle headlight from being corrected inadvertently in the event of a temporary change in vehicle posture or external disturbance. Mr. Katona, Patent Owner’s expert, identifies several differences between motorcycles and four-wheeled vehicles, but does not persuasively and credibly explain why these differences would have prevented the use of such thresholds to prevent Kato’s headlight from being adjusted inadvertently in the event of a sudden and transient disturbance. See Ex. 1002 ¶¶ 54–56. We find credible the testimony of Petitioner’s expert, Dr. Wilhelm, that a skilled artisan would have realized that Takahashi’s thresholds could be used to prevent a motorcycle headlight controller from making undesirable adjustments to the headlight. Ex. 1019 ¶¶ 61–62; Ex. 1037 ¶¶ 34–36. We also are not persuaded by Patent Owner’s argument that Kato teaches away from the use of Takahashi’s thresholds, or that such thresholds would render Kato’s system unsuitable for its intended purpose. Kato’s stated “Object of the Invention” is “to provide a headlight optical axis control device that can stably ensure a beam irradiation range of a headlight even when pitch, bank, steering angle or the like change while driving a motorcycle.” Ex. 1007 ¶ 6. Kato does disclose an embodiment that is able to correct direction of a headlamp “immediately” (id. ¶ 8), but we do not find that the portions of Kato cited by Patent Owner “criticize, discredit, or otherwise discourage investigation” into the use of a threshold of the type taught by Takahashi. Galderma Labs. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013); see PO Resp. 28–29, Ex. 2002 ¶¶ 57–58. We also do not find that such thresholds would render Kato’s system unsuitable for its intended purpose. See PO Resp. 30–31; Ex. 2002 ¶¶ 57–58. Rather, we agree with Petitioner that a skilled artisan would have realized that Takahashi’s threshold values could have been set to minimize time delays while still realizing the advantages of Takahashi’s invention (i.e., avoiding unnecessary headlight adjustments due to short-term disturbances, such as those caused by a rough road surface). Reply 17–18; Ex. 1037 ¶¶ 34–39. Patent Owner also has failed to cite any persuasive evidence of improper hindsight. See PO Resp. 29, 33. We find on this record that combining Takahashi’s reference values with the Kato’s headlight optical axis control system would result in an obvious “combination of familiar elements according to known methods . . . [that] does no more than yield predictable results.” See KSR, 550 U.S. at 416. We also find on this record that a person of ordinary skill would have recognized that Takahashi’s thresholds could have been used to improve Kato’s motorcycle headlight controller in the same way they were used to improve Takahashi’s headlight controller. See id. at 417.” slip op. at 20
Patent outcomesUS 7,241,034 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,241,034 - Mitsubishi Cable Industries, Ltd. / Mitsubishi Cable America, Inc. v. Goto Denshi Co., Ltd.Rehearing deniedPTAB · Jan 10, 2017 · IPR2015-01108 · APJ Scott C Moore · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter in its decision holding claims 1–8 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“R part” in the Sugita and Harada references refer, respectively, to a radius, and to an arc-shaped corner having a radius R. Final Dec. 15, 20–21. In reaching these determinations, we credited Dr. Klopp’s testimony that the term “R” in Sugita “must mean radius based on the Sugita disclosures.” Id. (citing Ex. 1006 ¶¶ 95, 143–144). We similarly credited Dr. Klopp’s testimony that the phrase “R parts of the corner portions” in Harada refers to arc-shaped corners with a radius R. Id. at 21 (citing Ex. 1006 ¶¶ 142–146). We also noted that Patent Owner, which chose not to submit testimony in support of its arguments, failed to offer any persuasive evidence that these terms would have been ambiguous to a person of ordinary skill in the art. Final Dec. 15, 21. We further noted that the ’888 Patent itself uses the terms “R” and “radius” synonymously, and also uses the phrase “R part” to refer to an arc-shaped chamfer. Id. at 15 (citing Ex. 1001, 1:35–39, 4:26–30), 21. slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Here, Petitioner has pointed to both interrelated teachings and market demands that would have motivated a person of ordinary skill to combine the teachings of Sugita and MWS Wire. Sugita discloses a die capable of drawing a wire into a deformed wire. Ex. 1002, Abstract. Petitioner has offered testimony from Dr. Klopp that Sugita and MWS Wire both relate to the same field of technology (i.e., wires that are intended “for use in a coil”) and describe similar types of wires (i.e., “square shaped wire[s] with arc-shaped corners”). Ex. 1006 ¶¶ 205–207. Petitioner also has offered testimony that a person of ordinary skill in the art would have realized that Sugita’s die could be used to manufacture wires having the dimensions described in MWS 1 A separate erratum paper correcting this typographical error is entered concurrently with this decision. Wire. Pet. 52–53; Ex. 1006 ¶¶ 205–208. In addition, Petitioner has offered evidence that market demand would have motivated a person of ordinary skill in the art to use Sugita’s die to manufacture wires having the specific dimensions set forth in MWS Wire because MWS Wire teaches that these dimensions result in wires that provide “more power in less space” when used to form coils. See Pet. 52–53; Ex. 1006 ¶ 206; Ex. 1011, 1. We credit Dr. Klopp’s testimony and find, on this record, that Petitioner has articulated reasoning having a rational underpinning to support the legal conclusion of obviousness. [KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)].” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 7,238,888
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