- Sandisk Corporation v. Netlist, Inc.Rehearing deniedPTAB · Dec 12, 2016 · IPR2015-01020 · APJ Peter P Chen · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no overlooked or misapprehended evidence or arguments in the final written decisions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(d), the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked.” See 37 C.F.R. § 42.71(d). Section 42.71(d) further provides that the request must identify where each matter was previously addressed.” slip op. at 2
NonePatents in suitUS 7,881,150 - Sandisk Corporation v. Netlist, Inc.Rehearing deniedPTAB · Dec 12, 2016 · IPR2015-01021 · APJ Peter P Chen · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests in IPR2015-01020 and IPR2015-01021, finding no overlooked or misapprehended evidence or arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“106 of the first Jagannathan declaration, filed concurrently with the Petition, he testified, “[t]hus, when a chip-select output from the bank control unit is used to enable a particular DDR SDRAM device, it is also used to enable the bit switch.” Final Dec. 23 (citing Ex. 1002 ¶ 106) (emphasis added). This described Petitioner’s evidence on the chip select signal, namely, that Dr. Jagannathan did not testify that the chip select signal “is also the bit switch enable signal,” but rather, that the chip select signal “is used to” generate the enable signals to the bit switch. In Petitioner’s post-hearing brief (Paper 30), Petitioner cited to pages 35 and 36 of the Petition, and to Dr. Jagannathan’s deposition testimony: Q. So what I’m trying to understand is, in that paragraph, it seems that you’re saying it’s the same signal that’s being used. A. No, I don’t -- I disagree with that. What I am trying to say here is the chip select signal -- those signals that I talked about earlier in the sentence, they’re effectively being used to generate the enable signals. Paper 30 (citing Ex. 2002, 218:6–17). Petitioner asserted in its post-hearing brief, “[w]hen taken as a whole, in context, Dr. Jagannathan’s testimony supports the rationale in the Petition.” Paper 30, 4. As set forth in the Final Written Decision, we agree. Nothing argued by Patent Owner persuades us that in the Final Written Decision we misapprehended or overlooked the nature of Dr. Jagannathan’s testimony in his first declaration.” slip op. at 3
NonePatents in suitUS 8,081,536 - Commscope Technologies, LLC v. Communications Components Antenna Inc.Institution deniedPTAB · Nov 3, 2016 · IPR2016-00999 · APJ Jeffrey S Smith · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–28 unpatentable, principally because Yea did not establish the claimed asymmetrical coverage areas.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review of claims 1–28 of U.S. Patent No. 8,311,582 B2 (Ex. 1001, “the ’582 patent”). Paper 1 (“Pet.”). Patent Owner, Communications Components Antenna Inc., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1–28 of the ’582 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner’s proposed construction of this limitation is supported by the specification of the ’582 patent. The ’582 patent discloses replacing a single sector coverage area with sub-sector coverage areas, at least one of which is an asymmetrical coverage area. Ex. 1001, 3:16–18. The ’582 patent discloses that the use of asymmetrical coverage areas permits the total coverage area to closely approximate the symmetrical sector coverage area being replaced, without creating excessively large sub-sector handover zones or introducing sever degradation in network performance. Id. at 3:18–24. The ’582 patent discloses creating the asymmetrical coverage areas by replacing an existing antenna with an antenna that has substantially the same coverage area, but divides the coverage area into a plurality of separate asymmetrical beams or sub-sectors. Id. at 4:32–38. As disclosed by the ’582 patent, the replacement antenna produces a plurality of separate beams, each defining a new sub-sector with only a small overlapping area between them and which together provide substantially identical coverage to the sector supported by the original antenna, to upgrade the single sector to a plurality of sub-sectors without significantly affecting neighboring sites. Id. at 4:51–57. The replacement antenna introduces asymmetry into the generated beam pattern. Id. at 4:58–60. The introduction of asymmetrical beams by the replacement antenna allows close approximation of the coverage area of the conventional sector antenna being replaced. Id. at 5:61–64. For purposes of this Decision, we adopt Petitioner’s proposed construction of “a plurality of sub-sector coverage areas extending therefrom, at least one of which is asymmetrical,” as a plurality of replacement sub-sector beams, at least one of which has an asymmetrical shape, where asymmetry includes deliberate or inherent asymmetry as the broadest reasonable construction consistent with the specification.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“49 (Fed. Cir. 2005). There, the district court invalidated claims of the patent in suit on summary judgment based on the measured dimensions of a prior art patent figure. Id. at 1148. The Federal Circuit reversed, warning “that arguments based on drawings not explicitly made to scale in issued patents are unavailing.” Id. at 1149. Petitioner here does not identify any portion of Yea disclosing that Figures 4 and 8 are drawn accurately enough to determine an asymmetrical nature of the radiation patterns. Petitioner also fails to cite to any disclosure in Yea that identifies or describes an asymmetrical nature of the radiation patterns. Furthermore, Petitioner also has not explained why the shapes shown in the linear scale drawings of Figure 4 would show similar shapes when converted to a logarithmic scale. Additionally, Petitioner does not explain why the carrier to interference ratio shown in Figure 8 can be used to accurately measure antenna radiation beam patterns. We find Petitioner does not sufficiently establish that the plots shown in Figures 4 and 8 of Yea can be used to determine whether the antenna radiation beam pattern is asymmetrical. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that Petitioner would prevail in showing that Yea anticipates independent claims 1, 13, and 20. b. Dependent Claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27 Petitioner argues that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27. Pet. 47–53. In so arguing, Petitioner relies on Yea as disclosing the claimed asymmetrical coverage area. Id. Because we are not persuaded that Yea discloses this limitation, we are not persuaded that Petitioner establishes a reasonable likelihood of prevailing in showing that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“as well as testimony of both Mr. Collins and Mr. Cosgrove. Under Rule 37 C.F.R. § 42.108, any genuine issues of material fact created by the testimonial evidence should be viewed in light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review. Even reviewing the testimony of Mr. Collins in the light most favorable to Petitioner, we determine Petitioner has established only that asymmetrical beams may be used in a planar array antenna, but not that a person of ordinary skill in the art would have understood steered beams of a planar array antenna are necessarily asymmetrical. Mr. Collins cites to Litva (Ex. 1009) and Wästberg (Ex. 1018) in stating that prior art steered beams of a planar array antenna can be asymmetrical beams. Ex. 1024 ¶ 179. We credit Patent Owner’s arguments and the testimony of Mr. Cosgrove to determine Petitioner does not sufficiently establish the likelihood that a person of ordinary skill in the art would have understood that steered beams of a planar array antenna are necessarily asymmetrical. Further, Petitioner fails to set forth a sufficient rationale for why a person of ordinary skill in the art would use the asymmetrical beams of the prior art with the disclosure of Yea. Pet. 39–40. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that using asymmetrical beams in Yea would have been obvious. We therefore conclude that the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the subject matter of claims 1, 2, 6, 7, 9, 11–15, 18–22, 24, and 27 would have been obvious over Yea, Metawave Website, Litva, and Wästberg.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,311,582 - Sandisk Corp. v. Netlist, Inc.All claims unpatentablePTAB · Sep 28, 2016 · IPR2015-01021 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 16, 17, 24, 30, and 31 are unpatentable as obvious over Takeda, JEDEC, and Connolly.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for patent owner
“1. “Rank” In the Decision to Institute, we construed the term “rank” as “a block or area that is created using some or all of the memory chips on a memory module.” Dec. to Inst. 8–9. In their papers, neither party challenged our constructions of these claim terms. Thus, for the term “rank,” we see no reason to alter the construction of this claim term as set forth in the Decision to Institute as recited above, and we incorporate our previous analysis for purposes of this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. All Other Claim Terms We determine that no explicit construction is necessary for any other terms in the challenged claims. B.” slip op. at 8
- Skill levelSkill level board ownOther
“would understand basic memory and data communication concepts, with a bachelor’s degree in any of electrical engineering, computer engineering, computer science, or related field. Course work for one of ordinary skill in the art would have included a course on computer organization, principles of digital design, or computer architecture. One of ordinary skill in the art would also have around one year of experience related to computer memory systems. For example, such experience may include experience in DRAM memory technology and related industry standards such as JEDEC standards for DRAM memories and memory modules. Ex. 1002 ¶ 53. Patent Owner’s Declarant, Carl Sechen, Ph.D. (“Dr. Sechen”), testifies that one of ordinary skill in the art at the time of the ’536 Patent would have had an undergraduate degree in electrical engineering or computer engineering, at least two years of professional experience in the design of memory systems, familiarity with the latest JEDEC standard specifications for memory devices and modules, and familiarity with the latest DRAM (dynamic random access memory) memory devices widely available in the market. Ex. 2001 ¶ 14. Dr. Sechen further testifies that a person of ordinary skill in the art would have design proficiency in memory modules comprising DDR memory technology, such as memory modules with JEDEC standard DDR SDRAM (synchronous DRAM) devices. Id. ¶ 15. Based on our review of the ’536 Patent and the types of problems and solutions described in the ’536 Patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’536 Patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“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 must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); 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). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that Dr. Jagannathan is qualified sufficiently to testify about memory systems and memory modules. E.” slip op. at 12
Patent outcomesUS 8,081,536 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,081,536 - Sandisk Corp. v. Netlist, Inc.Some claims unpatentablePTAB · Sep 28, 2016 · IPR2015-01020 · APJ Peter P Chen · IPR · Final written decision
Claims 17, 22, 24, 26, and 33 are unpatentable as obvious over Takeda, JEDEC, and Connolly; claims 15, 16, 31, and 32 were not shown unpatentable over Takeda and JEDEC.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are unpersuaded by Patent Owner’s position. First, the claim language does not recite any physical or structural connection, rather, only “electrically coupling.” Pet. Reply 3, 8–9. In addition, the specification of the ’150 patent does not define explicitly the term “selectively electrically coupling.” Therefore, as in IPR2014-00882 and IPR2014-01011, we refer to its ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Translogic Tech., 504 F.3d at 1257. A technical dictionary, the IEEE Dictionary,4 defines “electrical coupling” as “[e]lectrical charges in conductors of a disturbed circuit formed by electrical induction.” Ex. 3001. The IEEE Dictionary explains that “[s]ince the ratio of a conductor’s electrostatic charge to the potential difference between conductors (required to maintain that charge) is the general definition of capacitance, electrical coupling is also called capacitive coupling.” Id. The IEEE Dictionary defines” slip op. at 9
- Skill levelSkill level board ownOther
“Based on our review of the ’150 patent and the types of problems and solutions described in the ’150 patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’150 patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D. Declarant Testimony” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“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 must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); 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). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that, although Dr. Jagannathan may be less experienced than Dr. Sechen in the area of memory module design, he is nonetheless qualified sufficiently to testify about memory systems and memory modules. E. Asserted Obviousness of Claims 15, 16, 31, and 32 in view of Takeda” slip op. at 14
- ExcludeMotion to exclude, deniedDenied
“We have reviewed the parties’ contentions on this issue, and exercise our discretion to determine that Petitioner’s Reply and the Jagannathan Supplemental Declaration will not be excluded. We find that, although they may be “inartfully” drafted, the first Jagannathan declaration and Petition sufficiently outlined Petitioner’s position on the function of the chip select signal, namely, that the chip select signal was not itself the logic signal enabling operation of bit-switches. We further find that Petitioner’s Reply and the Supplemental Jagannathan Declaration did not present an entirely new rationale of unpatentability based on Takeda, JEDEC, and Connolly. Cf. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (affirming Board’s exclusion of reply brief and declaration that changed unpatentability theory to “an entirely new rationale”). Moreover, there is no dispute that Patent Owner was aware of Petitioner’s position by no later than the Jagannathan deposition, which preceded Patent Owner’s Response by ten days. Patent Owner could have addressed Petitioner’s chip select signal contention, procedurally or substantively, in its Response, but chose to raise the issue only after Petitioner filed its Reply and Supplemental Jagannathan Declaration. Accordingly, Patent Owner had notice of Petitioner’s position and an opportunity to refute that position in its Response.” slip op. at 24
Patent outcomesUS 7,881,150 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,881,150 - Silergy Corporation v. Monolithic Power Systems, Inc.All claims unpatentablePTAB · Sep 14, 2016 · IPR2015-00804 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–8 and 10 are unpatentable: claims 1–5 and 10 are anticipated by Sirinorakul; claims 6–7 are obvious over Sirinorakul or Sirinorakul and Eslamy; claim 8 is obvious over Sirinorakul and Khor.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party’s proposed construction adds clarity to the term beyond that provided by the express language of claim 1. Silergy’s construction introduces into the term two requirements—“contacts the solder ball” and “more wettable to a solder ball”—that appear elsewhere in claim 1, making their inclusion in the construction redundant. As for Monolithic’s construction, we see no reason to limit the attachment area to materials deposited during the photoresist process. As discussed above, the inventor’s use of the word “includes” as a transitional phrase signifies that additional steps may be part of “forming the attachment area and non-attachment area,” even after the photoresist process. For these reasons, we reconfirm our determination in the Decision on Institution that the language of claim 1 is sufficiently clear, and that the term attachment area requires no express construction.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“Although not every process claim is limited to the performance of its steps in the order written, the language of the claim, the specification and the prosecution history” may in some instances compel a particular order. Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999). First, the claim language must be examined “to determine if, as a matter of logic or grammar, they must be performed in the order written.” Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). If not, we look to the specification and prosecution history to determine whether an order is directly or implicitly required. Id. slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Taking the latter argument first, Monolithic’s contentions lack merit in view of our conclusion regarding the order of the steps of claim 1. Monolithic’s argument is premised on its contention that in claim 1, the contacting must occur before reflowing begins. As discussed above, the language of claim 1 permits the contacting step to take place before, or during, the reflowing step. Figure 9B of Sirinorakul depicts contact between plated layer 64 and solder ball 42 “during the reflow process.” Ex. 1004, 4:42. Monolithic does not dispute that plated layer 64 is an attachment area; nor does it dispute that there is contact with solder ball 42 during reflow. Tr. 76:7–17 (“[I]n each of those figure Bs in the embodiments disclosed in the [Sirinorakul] prior art reference, it shows during the reflow process. . . . Here it’s showing the contact occurs during reflow.”) (emphasis added). Even if lead-free solder layer 72 is not part of the attachment area—an argument we address below—Figure 9B of Sirinorakul does not show solder layer 72 during reflow, or that there is any other object blocking contact between plated layer 64 and solder ball 42. We, therefore, find the disputed contacting step to be satisfied because plated layer 64 (the attachment area) contacts solder ball 42 during reflow.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We have reviewed Silergy’s undisputed evidence as to claims 6 and 7, and we determine that a preponderance of the evidence supports Silergy’s position. Although Sirinorakul does not disclose the modified photoresist process required by claims 6 and 7, we credit Dr. Baker’s unchallenged testimony that it would have been within the level of ordinary skill in the art to modify a photoresist process to mask the non-attachment area instead, and that the skilled artisan would have recognized this as a predictable variation. Ex. 1003 ¶ 36. Mr. McAlexander does not provide testimony to the contrary. Ex. 2001 ¶ 52. Although it does not address the merits of the obviousness ground, Monolithic instead generally contends that Silergy failed to prove obviousness, as it did not address all factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). PO Resp. 41–43. We disagree. As set forth above, Silergy and Dr. Baker set forth the scope and content of Sirinorakul; the differences between Sirinorakul and claims 6 and 7 (namely, the reversal of the photoresist masking); and the level of ordinary skill in the art (see Ex. 1003 ¶¶ 26–27). Neither party introduced evidence of objective indicia of nonobviousness. Consequently, Monolithic’s argument on this point lacks merit.” slip op. at 22
Patent outcomesUS 8,361,899 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,361,899 - Dexcowin Global, Inc. v. Aribex, Inc.Rehearing deniedPTAB · Sep 13, 2016 · IPR2016-00440 · APJ Daniel J Galligan · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show the Board misapprehended or overlooked matters establishing a reasonable likelihood of proving the challenged claims unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); and In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). 1 To the extent that Patent Owner questions whether Petitioner’s Request for Rehearing was timely filed, we exercise our discretion to accept the delay, if any, and, for efficiency, consider Petitioner’s Request for Rehearing on the merits pursuant to 37 C.F.R. § 42.5(c)(3).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“ANALYSIS Petitioner asserted claims 6, 10, 45–48, 50–53, 55–59, and 62–64 would have been obvious based on (1) Yu in view of Kobayashi and Schulze-Ganzlin and (2) Kobayashi in view of Yu and Grodzins. See Pet. 17–29. In our Decision Denying Institution, we explained why the Petition did not establish a reasonable likelihood Petitioner would prevail on its unpatentability challenges. Dec. 16–23. On rehearing, Petitioner argues our “Decision rested on false, erroneous assumptions of fact and/or law, which apparently caused the Board to reach a legally erroneous conclusion.” Req. Reh’g 1. We disagree.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“Thus, Petitioner’s purported reason that a person of ordinary skill in the art would have modified the device of Yu to have a structurally unattached detecting means is that, in dental applications, it is known to have a structurally unattached detecting means. Absent some evidence that the device of Yu is used in dentistry, the record does not support Petitioner’s assertion that such a modification would have been made to the device of Yu by a person of ordinary skill in the art. See Dec. 17–18.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“On rehearing, Petitioner argues that we “overlooked two other Supreme Court KSR holdings, which when considering the Yu reference, would have yielded a decision favorable to Petitioner.” Req. Reh’g 6 (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007)). We disagree that we overlooked any argument that was presented in the Petition. To the extent Petitioner on rehearing presents new rationales for its obviousness contentions, a request for rehearing is not an opportunity to supplement the Petition or submit new arguments that were not made in the Petition after the Decision has noted the deficiencies in the Petitioner’s original analysis. See 37 C.F.R. § 42.71(d). Even considering Petitioner’s new arguments on rehearing, we remain” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 7,224,769 - PTAB · Aug 30, 2016 · IPR2014-01448 · APJ Debra K Stephens · IPR · Rehearing
The Board denied rehearing of its final written decision, leaving claims 1 and 7 unpatentable over He and Korodi under § 103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified, and “[t]he 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, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, concluding Petitioner had shown by a preponderance of the evidence that the challenged claims are unpatentable. Specifically, we determined Petitioner had established by a preponderance of the evidence claims 1 and 7 are unpatentable under 35 U.S.C. § 103(a) over He and Korodi (Final Dec. 11–25). In light of our determination that Petitioner had established by a preponderance of the evidence that claims 1 and 7 of the ’279 Patent are unpatentable under 35 U.S.C. § 103(a) as obvious over He and Korodi, we took no position on whether the same claims are also obvious over the combination of the teachings and suggestions of Gustafsson and He (id. at 25).” slip op. at 3
§ 103 obviousnessPatents in suitUS 7,671,279 - Dexcowin Global, Inc. v. Aribex, Inc.Institution deniedPTAB · Jul 7, 2016 · IPR2016-00436 · APJ Joni Y Chang · IPR · Institution
The Board denied institution because Dexco did not show a reasonable likelihood of proving claims 1–5, 14, 15, 17, 19, 21, and 23 unpatentable over Kobayashi-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the foregoing reasons, we determine that Dexco has not shown adequately that Kobayashi describes “a continuous, high voltage DC power.” Therefore, we conclude that Dexco has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 19, and 21 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Kobayashi.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“determining the level of ordinary skill in the art, various factors may be considered, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). According to the “Field of the Invention” section of the ’178 patent, the invention relates to x-ray devices generally, and also relates specifically to portable x-ray devices that include an integrated power system. Ex. 1001, 1:13–20. Dexco’s experts merely recognize that, in the context of the ’178 patent, a relevant skilled artisan would have had general knowledge in connection with x-ray devices as well as power systems. This is consistent with the prior art of record, recognizing the use of a smaller and lighter power system would address one of the problems of designing a portable x-ray device. Ex. 1011 ¶¶ 11–15; Ex. 1012, 1:6–14, 8:8–60; Ex. 1013, 1:6– 2:51. Therefore, we do not discern any meaningful conflict in Dexco’s definitions, as alleged by Aribex. Ex. 1003 ¶ 12; Ex. 1006 ¶ 7. For purposes of this Decision, we adopt the definitions of a person of ordinary skill in the art identified by Dr. Hamby and Mr. Montrose, as they are consistent with the Specification of the ’178 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We decline, here in an anticipation analysis, to combine the two separate and distinct power systems of Kobayashi, as suggested by Mr. Montrose. Ex. 1006 ¶¶ 27–31. Furthermore, even if we were to contemplate such a combination, Mr. Montrose does not explain how the components of each power system are to be combined or what components would be included in the resulting power system. Nor does he articulate any reasoning why one with ordinary skill in the art would have combined the power systems to provide “a continuous, high voltage DC power” as required by the claims 1, 4, 19, and 21. Dexco also directs our attention to Dr. Hamby’s Declaration, which mainly repeats Mr. Montrose’s testimony and provides no additional meaningful explanations or evidence with respect to the “continuous, high voltage DC power” limitation. Compare Ex. 1003 ¶¶ 31–55, with Ex. 1006 ¶¶ 27–31. Given the evidence before us, we give little, if any, weight to the testimony of Mr. Montrose and Dr. Hamby that Kobayashi discloses “a continuous, high voltage DC power.” See 37 C.F.R. § 42.65(a) (“Expert” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“patent states that the “power system can be battery-operated, yet still provide a continuous high voltage, rather than Marx generators (pulsed) or capacitively-pulsed systems.” Id. at 8:12–14. In its Petition, Dexco proposes to construe the claim term “high voltage” as “a voltage that can be used by an x-ray tube to generate x-rays.” Pet. 6–7 (citing Ex. 1001, 4:10–21). Aribex, in its Preliminary Response, proposes to construe the claim term “continuous” to exclude a pulse or burst of high voltage. Prelim. Resp. 19 (citing Ex. 1001, 8:12–14; Ex. 1002, 188– 92). In light of the Specification, we agree with the parties that the claim term “a continuous, high voltage DC power” encompasses a DC voltage power that can be used by an x-ray tube to generate x-rays, but this claim term does not include a pulse or burst of high voltage. See Ex. 1001, 4:10– 21, 8:12–14.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,496,178 - Dexcowin Global, Inc. v. Aribex, Inc.Institution deniedPTAB · Jul 7, 2016 · IPR2016-00440 · APJ Daniel J Galligan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 6, 10, 14, 17, 34, 36, 37, 39–53, and 55–64 were unpatentable under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we are not persuaded by Patent Owner’s argument. In determining the level of ordinary skill in the art, various factors may be considered, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). According to the “Field of the Invention” section of the ’769 patent, the invention relates to x-ray devices generally, and also relates specifically to portable x-ray devices. Ex. 1001, 1:12–17. The “Summary of the Invention” section of the ’769 patent explains that the portable x-ray devices of the invention have integrated power systems. Id. at 1:66–2:1. Petitioner’s declarants merely recognize that, in the context of the ’769 patent, a relevant skilled artisan would have had general knowledge in connection with x-ray devices as well as power systems. This is consistent with the prior art of record, recognizing the use of a smaller and lighter power system would address one of the problems of designing a portable x-ray device. See, e.g., Ex. 1015 ¶¶ 11–15; Ex. 1016, 1:6–14, 8:8–60; Ex. 1017, 1:6–2:51. Therefore, we do not discern any meaningful conflict in Petitioner’s definitions, as alleged by Patent Owner. Ex. 1006 ¶ 12; Ex. 1009 ¶ 7. For purposes of this Decision, we adopt the definitions of a person of ordinary skill in the art identified by Dr. Hamby and Mr. Montrose, as they are consistent with the Specification of the ’769 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“structurally unattached to the housing.” The term “detecting means” recites a function—“detecting”—and uses the word “means,” thus creating a presumption that 35 U.S.C. § 112 ¶ 6 applies. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (quoting Personalized Media Communications, LLC v. International Trade Commission, 161 F.3d 696, 703 (Fed.Cir.1998)) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.”). Section 112, paragraph 6 provides: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. (Emphasis added). The challenged independent claims do not recite particular structure for the “detecting means” to avoid invocation of 35 U.S.C. § 112 ¶ 6.6 Therefore, we determine “detecting means” is a means-plus-function limitation subject to 35 U.S.C. § 112 ¶ 6.” slip op. at 8
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“Both parties agree that Yu was published on February 2, 2005. Pet. 12; Prelim. Resp. 16. Also, as explained above, Patent Owner acknowledges that the ’769 patent’s priority date is March 21, 2005, due to the break of the priority chain to provisional application 60/546,575 (see Prelim. Resp. 2–3), and, therefore, the date of constructive reduction to practice (March 21, 2005) is after the date of publication of Yu. Patent Owner’s arguments primarily focus on provisional application 60/546,575, which Patent Owner contends supports the subject matter of the claims. See Prelim. Resp. 34–37. However, although the provisional application may support an argument of an earlier conception date, the provisional application is not a constructive reduction to practice due to the break in the chain of priority. See In re Costello, 717 F.2d 1346, 1350 (Fed. Cir. 1983) (“While the filing of the original application theoretically constituted a constructive reduction to practice at the time, the subsequent abandonment of that application also resulted in an abandonment of the benefit of that filing as a constructive reduction to practice. The filing of the original application is, however, evidence of conception of the invention.”). As such, to demonstrate “the inventor of the challenged claims conceived and reduced them to practice before Yu published” (Prelim. Resp. 16), Patent Owner appears to argue actual reduction to practice occurred before February 2, 2005. The record before us does not demonstrate actual reduction to practice of the claimed subject matter prior to February 2, 2005. Therefore, we decline to deny institution on the basis that Yu is not prior art under 35 U.S.C. § 102(a).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,224,769
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.