- Superior Communications, Inc. v. Speculative Product Design, LLCAdverse judgmentPTAB · Apr 24, 2014 · IPR2014-00146 · APJ Lora M Green · IPR · Adverse judgment
The Board entered adverse judgment against Superior Communications, Inc. and terminated the proceeding before institution.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Petitioner’s request to terminate the proceeding under 37 C.F.R. § 42.73(b)(4) is treated as a statement that it is abandoning the contest, and is thus requesting adverse judgment against itself. 1 This case is in the preliminary proceeding2 stage; no institution of a trial has been made. Based on the facts of this case, it is appropriate to enter judgment, and the proceeding is terminated.3” slip op. at 2
NonePatents in suitUS 8,204,561 - PTAB · Mar 18, 2014 · IPR2013-00626 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution on all challenged claims because Superior did not show a reasonable likelihood that the cited references taught layers permanently affixed together.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Based on the current record, we are not persuaded that Superior is reasonably likely to show that Seo teaches a flexible inner layer and an exterior hard layer permanently affixed together. As Speck points out, Seo teaches that it is “impossible” to apply a different material to the surface of the body base of the phone case. Ex. 1002, 2:7-9. Neither Superior nor Dr. Kazmer addresses this teaching or explains how it can be consistent with the notion that Seo teaches permanently affixing Seo’s soft silicone layer to the hard resin layer. On the contrary, this teaching suggests that a soft silicone layer would not adhere or bond to a hard resin layer, and thus must be attached to the hard layer in the mechanical manner that Seo teaches. Moreover, we are not persuaded that Seo’s mechanical attachment method is “permanently affixed,” such that the hard and soft layers cannot be separated without damaging the layers or the rivets that connect the layers. Superior relies on Seo’s teaching that the layers are “integrally formed” or “integrally attached” to support this contention. Pet. 10. But there is insufficient evidence in the record to persuade us that “integrally” attached necessarily means “permanently” attached. Moreover, the combination of the softness and flexibility of Seo’s inner silicone layer with the “impossibility” of applying that layer to the surface of Seo’s hard outer layer leaves open the possibility that the layers may be separated without damaging the layers or the rivets that connect the layers. Thus, we are not persuaded on the present record that Superior is reasonably likely to prevail in showing that any of the challenged claims is anticipated by Seo, would have been obvious over Seo, or would have been obvious over Seo and Cozip.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“the written description define the term. In the absence of an express definition, it is reasonable to consult a general dictionary definition of the word for guidance in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). “Permanent” is commonly understood to mean “continuing or enduring without fundamental or marked change; stable.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 922 (11th ed. 2005). To “affix” means “to attach physically.” Id. at 21. Based on these definitions, the ordinary meaning of the phrase permanently affixed would be “attached physically such that the attachment continues or endures without fundamental or marked change.” Thus, a flexible inner layer and an exterior hard layer are permanently affixed when they cannot be separated without “fundamental[ly] or marked[ly] chang[ing]” – i.e., damaging – the layers or the bond between the layers. For purposes of this decision, therefore, permanently affixed, in the context of claim 1, requires that the flexible inner layer and the outer hard layer cannot be separated without damaging the layers or the bond between the layers.1” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on the current record, we are not persuaded that Superior is reasonably likely to show that Seo teaches a flexible inner layer and an exterior hard layer permanently affixed together. As Speck points out, Seo teaches that it is “impossible” to apply a different material to the surface of the body base of the phone case. Ex. 1002, 2:7-9. Neither Superior nor Dr. Kazmer addresses this teaching or explains how it can be consistent with the notion that Seo teaches permanently affixing Seo’s soft silicone layer to the hard resin layer. On the contrary, this teaching suggests that a soft silicone layer would not adhere or bond to a hard resin layer, and thus must be attached to the hard layer in the mechanical manner that Seo teaches. Moreover, we are not persuaded that Seo’s mechanical attachment method is “permanently affixed,” such that the hard and soft layers cannot be separated without damaging the layers or the rivets that connect the layers. Superior relies on Seo’s teaching that the layers are “integrally formed” or “integrally attached” to support this contention. Pet. 10. But there is insufficient evidence in the record to persuade us that “integrally” attached necessarily means “permanently” attached. Moreover, the combination of the softness and flexibility of Seo’s inner silicone layer with the “impossibility” of applying that layer to the surface of Seo’s hard outer layer leaves open the possibility that the layers may be separated without damaging the layers or the rivets that connect the layers. Thus, we are not persuaded on the present record that Superior is reasonably likely to prevail in showing that any of the challenged claims is anticipated by Seo, would have been obvious over Seo, or would have been obvious over Seo and Cozip.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The above images depict perspective and front views of the Cozip case. Ex. 1003 at 8, 10. Superior asserts that Cozip discloses a case with “an exterior hard layer ha[ving] four corner joints with cut-away portions.” Pet. 28. Superior argues that “it would have been obvious to one of ordinary skill in the art to fill the shell and corners of Cozip . . . with the flexible layer of Seo.” Id. at 33. Superior, therefore, is proposing that a person of ordinary skill would attach Seo’s soft silicone layer to Cozip’s polycarbonate case, with Cozip’s cut-away portions serving as the “dispensing portions” as taught by Seo. Superior reasons that it would be obvious to fill permanently the cut away portion of Cozip with the flexible inner layer 20 of Seo to attach tightly and integrally the inner layer 20 to Cozip’s outer layer as taught by Seo. Pet. 39 (citing Ex. 1002, 5:9-16). But Superior does not explain how attaching Seo’s inner silicone layer to Cozip’s case would result in “permanently affix[ing]” the two layers together, given that Seo teaches that it is “impossible to apply different material to the surface of the body case.” Ex. 1002, 2:7-9. Accordingly, as with the grounds based on Seo as the primary reference, we are not persuaded that Superior is reasonably likely to show that a person of ordinary skill in the art at the time of the invention would “permanently affix” Seo’s soft silicone layer to Cozip’s polycarbonate case. Therefore, we do not institute an inter partes review on any of the grounds based on Cozip as the primary reference.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,204,561 - PTAB · Feb 19, 2014 · IPR2014-00194 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions to terminate the proceedings before deciding whether to institute trial.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Board. 37 C.F.R. § 42.20(b). Once parties enter into a settlement agreement, authorization to file a joint motion to terminate may be sought. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). In these cases, the parties failed to follow the correct procedure and filed the joint motions without prior authorization. However, based on the particular facts of the cases, we discern no prejudice to either party, or the public. We therefore exercise our discretion to consider the filing of the joint motions to include a request for authorization to file, and hereby grant such authorization. Turning the merits of the motions, we note that these cases are in the preliminary proceeding2 stage; no decision whether to institute a trial has been made. Based on the facts of the cases, it is appropriate to terminate the proceedings. Therefore, the joint motions to terminate the proceedings are granted.” slip op. at 2
NonePatents in suitUS 7,335,157 - PTAB · Feb 19, 2014 · IPR2014-00232 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions, treated the settlement agreement as confidential, and terminated the proceedings before deciding whether to institute trial.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Board. 37 C.F.R. § 42.20(b). Once parties enter into a settlement agreement, authorization to file a joint motion to terminate may be sought. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). In these cases, the parties failed to follow the correct procedure and filed the joint motions without prior authorization. However, based on the particular facts of the cases, we discern no prejudice to either party, or the public. We therefore exercise our discretion to consider the filing of the joint motions to include a request for authorization to file, and hereby grant such authorization. Turning the merits of the motions, we note that these cases are in the preliminary proceeding2 stage; no decision whether to institute a trial has been made. Based on the facts of the cases, it is appropriate to terminate the proceedings. Therefore, the joint motions to terminate the proceedings are granted. Accordingly, it is ORDERED that the parties’ request that the settlement agreement be treated as business confidential information, to be kept separate from the patent file, is granted; 2 A preliminary proceeding begins with the filing of a petition for instituting a trial and ends with a written decision as to whether trial will be instituted. 37 C.F.R. § 42.2. FURTHER ORDERED that the joint motions to terminate the proceedings are granted; FURTHER ORDERED that the proceedings are terminated.” slip op. at 2
NonePatents in suitUS 6,345,402 - PTAB · Feb 19, 2014 · IPR2014-00095 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions to terminate the proceedings before deciding whether to institute trial.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Board. 37 C.F.R. § 42.20(b). Once parties enter into a settlement agreement, authorization to file a joint motion to terminate may be sought. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). In these cases, the parties failed to follow the correct procedure and filed the joint motions without prior authorization. However, based on the particular facts of the cases, we discern no prejudice to either party, or the public. We therefore exercise our discretion to consider the filing of the joint motions to include a request for authorization to file, and hereby grant such authorization. Turning the merits of the motions, we note that these cases are in the preliminary proceeding2 stage; no decision whether to institute a trial has been made. Based on the facts of the cases, it is appropriate to terminate the proceedings. Therefore, the joint motions to terminate the proceedings are granted.” slip op. at 2
NonePatents in suitUS 6,483,080 - PTAB · Nov 19, 2013 · IPR2013-00197 · APJ Lora M Green · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, without a final written decision.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“A decision by the Board to institute a trial was entered on September 23, 2013. Paper No. 16. This matter, however, is in the preliminary stages. The parties have not identified any other related matters between them. Under these circumstances, the Board determines that it is appropriate to enter judgment2 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“to a settlement. On, November 7, 2013, the Board authorized the parties to file a joint request to terminate and to file the settlement agreement as business confidential under 37 C.F.R. 42.74(c). Paper No. 23. On, November 11, 2013, the parties filed a joint motion to terminate and to treat the settlement agreement as business confidential.1 Paper No. 22. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. With their motion to terminate and to treat the settlement agreement as business confidential, the parties also filed a copy of a written settlement agreement. Paper No. 22, Ex. 2001 (Confidential Exhibit a A).” slip op. at 2
NonePatents in suitUS 8,204,561
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.