• First Quality Baby Products, LLC v. Kimberly-Clark Worldwide, Inc.All claims unpatentable
  PTAB · Dec 14, 2015 · IPR2014-01024 · APJ J John Lee · IPR · Final written decision

  Claims 25–32 are unpatentable under § 103(a) as obvious in view of Brandon, Anderson, and Long.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Patent Owner argues Brandon teaches that training pants should be designed to feel different than diapers to facilitate toilet training, but that replacing its bonded seams by adding refastenable seams such as in Anderson, or adding the containment flaps and surge layer of Long, contradicts that goal by making the training pants resemble diapers. Id. at 36–40. The evidence of record, however, belies that argument. As Petitioner notes (Pet. Reply 13–14), Anderson discloses explicitly that its refastenable seams “approximate the side seams of a normal underpant” (Ex. 1206, 4:27–34), and notes the importance of training pants that “look like a normal panty when first put on by the child” (id. at 2:35–36). Patent Owner’s argument also is unpersuasive with respect to Brandon because it only relies on the conclusory testimony of its declarant. PO Resp. 37–38. On this issue, Mr. Butterworth’s Declaration only states conclusorily that adding a surge layer or containment flaps “would render the garment closer to a conventional disposable diaper.” Ex. 2206 ¶ 79. Compared to the evidence Petitioner cites to support its asserted rationale for combining the references, which we find compelling, we give little weight to this portion of Mr. Butterworth’s testimony because the underlying facts or data on which his opinion is based, if any, were not disclosed. See 37 C.F.R. § 42.65.” slip op. at 20

  • ExcludeMotion to exclude, deniedMixed

    “all related evidence is irrelevant. See id. Rule 401 states that evidence is relevant if “(a) it has any tendency to make a fact more or less probable than it would be without the evidence; and (b) the fact is of consequence in determining the action.” Petitioner does not dispute that the evidence in question pertains to facts underlying Patent Owner’s contentions regarding secondary considerations. Whether Patent Owner failed to provide sufficient evidence or neglected to supply all of the necessary analysis does not negate the relevance of that evidence. In addition, we note that Petitioner’s motion is moot because of our decision above that the challenged claims are unpatentable even considering this evidence. This portion of the Motion is denied.” slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “8 Both parties agree that a person of ordinary skill in the art would have had two to four years of work experience in product design and testing of disposable absorbent articles, such as diapers and training pants. Pet. 13–14; PO Resp. 7. We adopt this characterization and apply it to our analysis.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionTerm construed patent owner constructionMixed

    “claimed training pants “can further include releasable side bonds . . . for improved reliability of maintaining the pant in a prefastened condition particularly when it is being pulled on or off over the hips of the wearer.” Ex. 1201, 20:1–4. In addition, the specification states: “The absorbent articles are desirably pre-fastened to provide a pant-like product for the user. The product can then be pulled on like a conventional training pant . . . .” Id. at 5:31–34. The specification does not describe any manufacturing process for prefastening training pants. Mr. Butterworth’s testimony is based solely on claim language indicating that the recited fastening components and mating fastening components are the elements that are prefastened. Ex. 2206 ¶ 50. His conclusion, however, is not supported by that claim language, which does not reference manufacturing or a timeframe prior to sale. See Ex. 1214, 99:13–16, 102:25–103:9 (Mr. Butterworth indicating at his deposition that the ’379 patent does not discuss a manufacturing process for prefastening the claimed training pant, or when the training pants are prefastened).6 Based on the record presented, the broadest reasonable interpretation of “prefastened” in light of the specification requires that the claimed training pant be fastened prior to wear, but does not require fastening during manufacturing or prior to sale.” slip op. at 8

  Patent outcomesUS 8,747,379 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,747,379
• Sensus USA, Inc. v. Certified Measurement, LLCInstitution denied
  PTAB · Dec 11, 2015 · IPR2015-01439 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 43 unpatentable over any asserted ground.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may be instituted only if “the information presented in the [P]etition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the [P]etition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, we are persuaded that Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’453 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’453 patent.” slip op. at 2

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

    “Patent Owner contends that Petitioner’s identification of the real parties-in-interest is incomplete, and that the Petition should be denied as failing to comply with 35 U.S.C. § 312(a)(2). Prelim. Resp. 30–31. Patent Owner asserts that in a related litigation involving the ’453 patent, Petitioner identified an insurance company as covering some of the costs of defending the action against Patent Owner. See Ex. 2001. Patent Owner argues: A hallmark of indemnity or insurance agreements that are available to satisfy part or all of a judgment or to reimburse payments of same is an ability for the insurer or indemnitor to control over [sic] aspects of the litigation, including the defense and maintenance of an inter partes review which seek[s] to invalidate the subject patent. Prelim. Resp. 30. Patent Owner’s argument is generic and fails to identify any specific evidence that any parties other than those identified by Petitioner actually is exercising control over or could exercise control over this proceeding.1 Accordingly, we decline to deny the Petition on this basis. D. The References Petitioner relies on the following references: U.S. Patent No. 4,077,005, issued Feb. 28, 1978 (Ex. 1005, “Bishop”); U.S. Patent No. 5,199,068, issued Mar. 30, 1993 (Ex. 1006, “Cox”); U.S. Patent No. 5,689,442, issued Nov. 18, 1997 (Ex. 1007,” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Petitioner does not propose a construction for “augmented measurement” aside from stating that it “is described in the individual claims of the patent.” Pet. 17. Nevertheless, Petitioner’s argument suggests that generating an “augmented measurement” requires effecting some combination of the elements recited in the claim—the first signal, the second signal, and the third signal. See Pet. 27 (asserting that Cox disclosing “combining” the previously recited elements of the claim in arguing that Cox teaches “generating an augmented measurement”). Thus, both Petitioner and Patent Owner recognize that generating an augmented measurement requires combining specified elements of the claim. We agree. The parties’ recognition that an augmented measurement requires combining specified elements of the claim is consistent with the specification of the ’453 patent. The ’453 patent explains that an “augmented measurement comprising the cleartext time plus the physical measurement” is created by adding a physical measurement of any physical parameter or event to a time. Ex. 1001, 7:66–8:2.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner’s argument is not persuasive because Petitioner fails to show that Bishop’s position P signal is formed from two separate signals based at least in part on two physical measurements. Petitioner’s cited portions of Bishop fail to disclose how position P is generated aside from stating that “position P of the ship is determined to an accuracy of + 2 nm . . . by the ship’s navigation equipment 48.” Ex. 1005, 2:63–66. Petitioner, however, has not identified where, if at all, Bishop discloses how the navigation equipment generates the position of the ship. Petitioner’s citations to Bishop’s column 3 refer to Bishop’s disclosure of generating a combined message, which Bishop designates as IS + P + T1, and then enciphers. See, e.g., id. at 3:7–23. Additionally, Petitioner’s reliance on paragraph 40 of the Nielson Declaration fares no better. Dr. Nielson’s testimony includes the same statements as the Petition without providing additional explanation or evidentiary support for us to conclude that Bishop expressly or inherently discloses that its position P signal is formed from two separate signals based at least in part on two physical measurements. See 37 C.F.R. § 42.65(a). Accordingly, on this record, we are not persuaded that Petitioner has established a reasonable likelihood of prevailing on the assertion that Bishop discloses each and every element of claim 43 of the ’453 patent.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,289,453
• First Quality Baby Products, LLC v. Kimberly-Clark Worldwide, Inc.All claims unpatentable
  PTAB · Dec 10, 2015 · IPR2014-01023 · APJ J John Lee · IPR · Final written decision

  Claims 33–54 are unpatentable under § 103(a): claims 33–42, 44, 45, 47–49, and 51–53 over Brandon and Anderson; claims 43, 46, 50, and 54 over Brandon, Anderson, and Long.

  RulingsFinal written decision

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

    “As Petitioner asserts, the intrinsic evidence does not support the construction advanced by Patent Owner. The ’379 patent explains that the claimed training pants “can further include releasable side bonds . . . for improved reliability of maintaining the pant in a prefastened condition particularly when it is being pulled on or off over the hips of the wearer.” Ex. 1101, 20:1–4. In addition, the specification states: “The absorbent articles are desirably pre-fastened to provide a pant-like product for the user. The product can then be pulled on like a conventional training pant . . . .” Id. at 5:31–34. The specification does not describe any manufacturing process for prefastening training pants. Mr. Butterworth’s testimony is based solely on claim language indicating that the recited fastening components and mating fastening components are the elements that are prefastened. Ex. 2106 ¶ 48. His conclusion, however, is not supported by that claim language, which does not reference manufacturing or a timeframe prior to sale. See Ex. 1114, 99:13–16, 102:25–103:9 (Mr. Butterworth indicating at his deposition that the ’379 patent does not discuss a manufacturing process for prefastening the claimed training pant, or when the training pants are prefastened).6 Based on the record presented, the broadest reasonable interpretation of “prefastened” in light of the specification requires that the claimed training pant be fastened prior to wear, but does not require fastening during manufacturing or prior to sale.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation foundTeaching away not foundDecided for petitioner

    “Patent Owner contends, however, that a person of ordinary skill would not have been motivated to combine Brandon and Anderson in the manner asserted by Petitioner because both Brandon and Anderson teach away from such a combination. PO Resp. 32–40. First, Patent Owner argues Brandon teaches that training pants should be designed to feel different than diapers to facilitate toilet training, but that replacing its bonded seams by adding refastenable seams such as in Anderson contradicts that goal by making the training pants resemble diapers. Id. at 33–35. The evidence of record, however, belies that argument. As Petitioner notes (Pet. Reply 13), Anderson discloses explicitly that its refastenable seams “approximate the side seams of a normal underpant” (Ex. 1106, 4:27–34), and notes the importance of training pants that “look like a normal panty when first put on by the child” (id. at 2:35–36). Next, Patent Owner argues Anderson teaches away from the asserted combination with Brandon because Anderson teaches away from using its releasable fastening system with a liquid impermeable outer cover, as taught by Brandon and required by claim 33. PO Resp. 36–40. Patent Owner is correct that Anderson discloses advantages to constructing training pants to allow some moisture to leak through the outer cover. See, e.g., Ex. 1106, 3:40–49 (explaining that a preferred embodiment of Anderson includes a “moisture permeable outer covering” that facilitates toilet training by alerting the child to a bowel or bladder accident). According to Patent Owner, Anderson discloses the use of refastenable seams because they facilitate removal while minimizing contamination, which is only necessary due to the moisture permeable covering. See PO Resp. 38–39. Patent Owner’s position is unpersuasive, however, because merely describing the benefits of a moisture permeable cover does not teach away from using an impermeable cover. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). At the oral hearing, Patent Owner also admitted that nothing in the record indicates a person of ordinary skill would have been led to avoid training pants that do not allow moisture to leak through the outer cover. See Tr. 61:21–62:6; see also Ex. 1114, 339:10–18 (Mr. Butterworth testifying that Anderson does not disparage the use of refastenable seams with liquid permeable outer covers). Based on the full record after trial, Petitioner has established sufficiently a reason with rational underpinning to combine Brandon and Anderson. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Consequently, a preponderance of the evidence supports Petitioner’s position that claim 33 of the ’379 patent is unpatentable as obvious in view of the combination of Brandon and Anderson.” slip op. at 17

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “Based on Mr. Butterworth’s testimony, which we find credible, the record indicates that the limitations of claim 36 were known and obvious to one of ordinary skill in the art. Additionally, the record supports Petitioner’s argument that the size limitations of claim 36 do not distinguish the claim from the prior art, which ordinary artisans knew to provide the benefit of adjustability, as Mr. Butterworth testified. See Gardner, 725 F.2d at 1349. Petitioner’s contentions are further supported by the evidence indicating this alleged benefit was not a critical aspect of the claimed invention. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (“These cases [including Gardner] have consistently held that in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.”). Consequently, considering the full record after trial, a preponderance of the evidence supports Petitioner’s contention that claim 36 would have been obvious in view of the combination of Brandon and Anderson.” slip op. at 23

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “To establish a nexus between alleged commercial success and the challenged claims, Patent Owner must show “that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988); see also In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (holding that a nexus was not demonstrated where “GPAC did not establish which claim(s) of the patent the [allegedly successful] licensing program incorporates”). Patent Owner does not, however, provide an analysis establishing that its PULL-UPS product practices any claim or claims of the ’379 patent. 16 As indicated earlier, we need not reach the issue of whether Patent Owner’s arguments as to secondary considerations are barred due to collateral estoppel because we conclude that a preponderance of the evidence establishes that the challenged claims are unpatentable, even considering Patent Owner’s arguments and evidence. In addition, even assuming arguendo that Patent Owner’s evidence establishes a nexus between the commercial success of its PULL-UPS product and the specific refastenable fastening system recited in the challenged claims, Patent Owner has failed to demonstrate that “the asserted commercial success of the product [is] due to the merits of the claimed invention beyond what was readily available in the prior art.” See J. T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) (emphasis added). As discussed above, the record establishes that the refastenable fastening system recited in the challenged claims was taught in the prior art. Relying on Gillette Co. v. S.C. Johnson & Son, Inc., Patent Owner argues that the “fact that all elements of a claim are in the prior art does not by itself defeat commercial success,” and that “the prior art discloses only individual elements of the patented training pants, but there is no prior art that discloses the unique combination found in the claims of the ’379 Patent.” PO Resp. 59–60 (citing 919 F.2d 720, 725 (Fed.Cir.1990)). In Gillette, although each individual element of the claimed chemical composition was known in the art, it was undisputed that the composition as a whole had “superior properties” that were unique to the composition rather than any individual component. See 919 F.2d at 725. In contrast, Patent Owner’s arguments and evidence focus on a single element of its claimed invention—“refastenable elastomeric sides”—and Patent Owner does not identify any evidence indicating the claimed refastenable sides (or any other claimed feature or combination of features) had unique properties or advantages beyond those found in the prior art training pants relied on by Petitioner.17 See PO Resp. 56–58.” slip op. at 31

  Patent outcomesUS 8,747,379 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,747,379
• First Quality Baby Products, LLC v. Kimberly-Clark Worldwide, Inc.All claims unpatentable
  PTAB · Dec 10, 2015 · IPR2014-01021 · APJ J John Lee · IPR · Final written decision

  Claims 1–24 are unpatentable under § 103: claims 1–10, 12, 13, 15–17, and 19–23 over Brandon and Anderson; claims 11, 14, 18, and 24 over Brandon, Anderson, and Long.

  RulingsFinal written decision

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Based on the full record after trial, the evidence presented supports Petitioner’s view. It is undisputed that Brandon teaches a seam extending 100% of the distance between the waist and leg openings. See Tr. 44:13–15; Ex. 1014, 82:15–22. The record also indicates it was well known in the art generally to provide 80–100% seams. Ex. 1014, 85:3–8; Ex. 1021 ¶ 99. Although Patent Owner disputes that Anderson teaches an 80–100% seam, such an express disclosure is not required given Brandon’s disclosure of a 100% seam. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Moreover, Petitioner argues persuasively that a person of ordinary skill would have understood Anderson also to teach an 80–100% seam because such a seam was known to be important to prevent undesired tearing or separation, and to best approximate a normal underpant. Pet. Reply 11–13; see Ex. 1006, 2:35–36, 4:32–37, Fig. 2; Ex. 1014, 83:14–23, 85:3–20; Ex. 1021 ¶¶ 99, 101, 102, 104, 106, 107.11 In sum, Petitioner has established sufficiently that the combination of Brandon and Anderson teaches or suggests each limitation of claim 1.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Petitioner asserts that a person of ordinary skill would have been led to combine the training pants of Brandon with the refastenable seam of Anderson because the references identify solutions for the same problem, namely potential contamination on the child when removing soiled training pants. Pet. 22–24 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419– 20 (2007)). The record supports Petitioner’s position. Brandon states that “side seams 20 may be constructed to be manually tearable in order to allow training pant 10 to be disassembled manually by the caregiver, so that it can be easily removed from the child after a bowel movement.” Ex. 1002, 11. Anderson discloses that training pants with tearable seams “facilitate removal of the panty after the child has either a bowel accident or a bladder accident,” which reduces “incidents of contamination on the child and in the area surrounding the child.” Ex. 1006, 1:46–55. Anderson further teaches refastenable side seams, as discussed above, explaining that “in the event of an accident the [refastenable] seams are readily released to facilitate removal of the panty without undue contamination.” Id. at 4:32–37.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “not have been motivated to combine Brandon and Anderson in the manner asserted by Petitioner because both Brandon and Anderson teach away from such a combination. PO Resp. 31–39. First, Patent Owner argues Brandon teaches that training pants should be designed to feel different than diapers to facilitate toilet training, but that replacing its bonded seams by adding refastenable seams such as in Anderson contradicts that goal by making the training pants resemble diapers. Id. at 32–35. The evidence of record, however, belies that argument. As Petitioner notes (Pet. Reply 13), Anderson discloses explicitly that its refastenable seams “approximate the side seams of a normal underpant” (Ex. 1006, 4:27–34), and notes the importance of training pants that “look like a normal panty when first put on by the child” (id. at 2:35–36). Next, Patent Owner argues Anderson teaches away from the asserted combination with Brandon because Anderson teaches away from using its releasable fastening system with a liquid impermeable outer cover, as taught by Brandon and required by claim 1. PO Resp. 35–39. Patent Owner is correct that Anderson discloses advantages to constructing training pants to allow some moisture to leak through the outer cover. See, e.g., Ex. 1006, 3:40–49 (explaining that a preferred embodiment of Anderson includes a “moisture permeable outer covering” that facilitates toilet training by alerting the child to a bowel or bladder accident). According to Patent Owner, Anderson discloses the use of refastenable seams because they facilitate removal while minimizing contamination, which is only necessary due to the moisture permeable covering. See PO Resp. 37–38. Patent Owner’s position is unpersuasive, however, because merely describing the benefits of a moisture permeable cover does not teach away from using an impermeable cover. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). At the oral hearing, Patent Owner also admitted that nothing in the record indicates a person of ordinary skill would have been led to avoid training pants that do not allow moisture to leak through the outer cover. See Tr. 61:21–62:6; see also Ex. 1014, 339:10–18 (Mr. Butterworth testifying that Anderson does not disparage the use of refastenable seams with liquid permeable outer covers). Based on the full record after trial, Petitioner has established sufficiently a reason with rational underpinning to combine Brandon and Anderson. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 17

  • Strike new argumentNew argument consideredDecided for petitioner

    “deposition testimony (Tr. 54:1–16), but argued the testimony should be disregarded because neither Mr. Butterworth nor Patent Owner had fair notice of Petitioner’s arguments or an adequate opportunity to present counterevidence—for example, regarding possible teaching away (e.g., Tr. 54:19–55:9). We disagree. As an initial matter, Patent Owner is correct that the Petition does not include specifically an allegation that the size limitation was known generally in the art, and does not present evidence of that fact. Such evidence, however, was introduced into the record through discovery in the form of Mr. Butterworth’s deposition testimony. Patent Owner does not advance persuasively any reason to block Petitioner from relying on this evidence, which could not have been cited in the Petition because Mr. Butterworth’s deposition had not yet occurred.12 In essence, Patent Owner requests that the Board prevent Petitioner from using evidence in the record it admits is inconsistent with its position on patentability, and which its own expert provided to Petitioner during discovery. We decline to do so. Nor are we persuaded by Patent Owner’s protestations of prejudice. Although Patent Owner asserts Mr. Butterworth was not given a fair opportunity to “prepare” for Petitioner’s questions, Patent Owner proffered him as an expert in this field and otherwise relies on his testimony regarding 12 Although Petitioner’s position would have been stronger had it provided similar evidence with the Petition, the fact remains that the record includes Mr. Butterworth’s testimony, which was routine discovery provided in the normal course of this inter partes review. See 37 C.F.R. § 42.51(b)(1)(ii). similar issues. See, e.g., PO Resp. 33–35 (citing Ex. 2006 ¶¶ 74–77 (Mr. Butterworth’s declaration testimony regarding “the conventional wisdom in the industry at the time of the invention”)). The testimony relied on by Petitioner was provided in response to basic questions about the understanding of a person of ordinary skill in the art and whether the recited limitation was known in the art at the time of the invention. Ex. 1014, 151:2–13, 152:10–14. Moreover, the Petition plainly raised the issue of whether any alleged functionality of the limitations of claim 4 already was known to be provided by the prior art. Pet. 25. Petitioner’s questioning of Mr. Butterworth on this issue should not have been unexpected considering he provided testimony on the subject in his Declaration, which Patent Owner submitted with its Response. See Ex. 2006 ¶ 95; PO Resp. 41. Patent Owner does not dispute the veracity of Mr. Butterworth’s testimony. Further, Patent Owner does not argue that he misunderstood the questions (Tr. 53:18–24), and did not move to exclude the testimony.13 Patent Owner had the opportunity to adduce further testimony from Mr. Butterworth at his deposition to clarify or supplement his testimony, but it did not do so with respect to the testimony at issue. See Tr. 57:12–58:8. No attempt was made to seek relief from the Board or to introduce further information into the record (e.g., a supplemental declaration or additional briefing). See Tr. 59:18–60:6. Patent Owner made no request to have Mr. 13 Patent Owner properly raised at the oral hearing the issue of whether Petitioner’s arguments should be disregarded as improper new arguments, rather than raising the issue in a motion to exclude. See Tr. 58:9–59:2. That is a distinct issue, however, from whether Mr. Butterworth’s cross-examination testimony should be excluded as inadmissible because it is allegedly misleading or incomplete. In any event, we also conclude Petitioner’s arguments were not improper.” slip op. at 21

  Patent outcomesUS 8,747,379 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,747,379
• Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsInstitution denied
  PTAB · Dec 2, 2015 · IPR2015-01231 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

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

    “only if “the information presented in the [P]etition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the [P]etition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, we are persuaded that Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’884 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’884 patent.” slip op. at 2

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

    “the setting step of claim 1. Petitioner, however, has not persuaded us, on this record, that Hashimoto likely discloses the claimed adjusting step. First, the citations and parentheticals in Petitioner’s claim charts do not, on their face, teach or suggest this step. Second, even though Petitioner points to Hashimoto’s disclosure of combining photoelectric charge accumulation time changes with gain control, Petitioner does not explain how Hashimoto actually combines these two features. Hashimoto’s discussion of gain control, in the context of Figure 10, suggests that gain is controlled via offsets, specifically offset A or offset B. See, e.g., Ex. 1004, 11:15–20 6 In addition, Petitioner cites to paragraph 74 of the Neikirk Declaration (Pet. 31), which cites to the same portion of Hashimoto but does not provide additional explanation as to how this disclosure teachings the “adjusting” step of claim 1. Ex. 1003 ¶ 74 (citing Ex. 1004, 4:64–5:8; Ex. 1003, footnotes 1–5, 7). (“Accordingly, when the shutter speed is changed from 1/100, the gain is corrected or controlled with the offset, thus obtaining proper brightness control. The offset A is used when the shutter speed is changed from 1/100 to 1/50, and the offset B is used when the shutter speed is changed from 1/100 to a higher speed.”). In Hashimoto’s discussion of gain control, however, Petitioner does not identify, and we are unable to discern, a teaching of “adjusting the overall system gain by adjusting the integration time while maintaining the integration time at an integral multiple of the period of the periodic intensity.”7” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found

    “depend from claim 14. Petitioner relies upon the same teachings of Hashimoto, discussed above with respect to claims 1 and 14, in Petitioner’s challenges to (1) claims 1–6 and 14 as obvious over Hashimoto and Kinugawa; (2) claims 14 and 17–19 as obvious over Hashimoto and the knowledge of a person of ordinary skill in the art; (3) claims 17–19 as obvious over Hashimoto, Nishiyama, and the knowledge of a person of ordinary skill in the art; (4) claims 17–19 as obvious over Hashimoto, Nishiyama, Kinugawa, and the knowledge of a person of ordinary skill in the art; and (5) claims 17–19 as obvious over Hashimoto and the knowledge of a person of ordinary skill in the art. See, e.g., Pet. 31 (referring to Petitioner’s discussion of claim 1), 38 (referring to Petitioner’s discussion of claim 14). Petitioner does not assert that Kinugawa, Nishiyama, or the knowledge of one of ordinary skill in the art9 remedies the deficiencies discussed above with respect to claims 1 and 14, or that the “adjusting” step of claim 1 and the “gain control block” of claim 14 would have been obvious in light of any of these additional references or teachings. Accordingly, for the reasons discussed above with respect to Hashimoto and claims 1 and 14, Petitioner has not established, on the record before us, a reasonable likelihood of prevailing on the assertions that as of 9 For the purposes of this Decision, we need not decide whether Petitioner’s reliance upon the knowledge of a person of ordinary skill in the art violates 35 U.S.C. § 311(b), which limits the grounds under which a petitioner may request cancellation of claims in an inter partes review to “a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications” (emphasis added). the effective filing date of the claimed invention: (1) claims 1–6 and 14 would have been obvious over Hashimoto and Kinugawa; (2) claims 14 and 17–19 would have been obvious over Hashimoto and the knowledge of a person of ordinary skill in the art; (3) claims 17–19 would have been obvious over Hashimoto, Nishiyama, and the knowledge of a person of ordinary skill in the art; (4) claims 17–19 would have been obvious over Hashimoto, Nishiyama, Kinugawa, and the knowledge of a person of ordinary skill in the art; and (5) claims 17–19 would have been obvious over Hashimoto and the knowledge of a person of ordinary skill in the art.” slip op. at 17

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,271,884
• Square, Inc. v. Think Computer CorporationAll claims unpatentable
  PTAB · Nov 27, 2015 · CBM2014-00159 · APJ Michael W Kim · CBM · Final written decision

  Claims 1–7, 9–11, 13–17, and 20–22 are unpatentable under § 103; the motion to amend claims 23–43 is denied.

  RulingsFinal written decision

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

    “Beginning with the claim terms themselves, the word “selectively” is used. We discern that the ordinary and customary usage of this word denotes expressly that a particular account need not function simultaneously as both a merchant account and a purchaser account; a user is permitted expressly to select which account mode is desired at the appropriate point in time. The following disclosure in the Specification is consistent with this understanding: An entity (e.g., a person, business, or other legally recognized entity) preferably creates an account within the payment system. The accounts of the payment system are preferably designed so that an account may selectively function as either a merchant or a purchaser during any particular transaction. In other words, within the scope of all transactions, accounts of the payment system can function as bi-directional transaction accounts. Ex. 1001, 3:15–22. Indeed, here, the Specification discloses expressly that being able to select which account mode is desired is the same as “bi-directional transaction accounts.”” slip op. at 13

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

    “more properly considered a claim construction. PO Resp. 9. And indeed, when considered in conjunction with Petitioner’s proposed construction, the two constructions are similar. As noted by both Patent Owner and Petitioner, the Specification only mentions “line item data,” or similar wording, as follows: Additionally, as one of the main benefits of having merchant product catalogs integrated into the payment system, line item transaction data can be communicated. The line item data is additionally stored as part of the transaction record of the accounts. This itemized information can be very useful, such as in one application where tax forms are automatically completed by aggregating each category of line item transaction data as appropriate. Ex. 1001, 8:6–13. From the aforementioned portion of the Specification, we determine that the key to a proper construction of “line item data” is that it is information that is itemized and capable of categorization. In other words, “line item data” is an itemized part of a larger whole, more specifically, but not limited to, product catalogs, purchase lists, and transactions records, i.e., at a most granular level, individual products involved in a purchase or sale, as advocated by Petitioner. This focus on itemization and categorization of products is supported by other portions of the Specification cited by the parties, for example, column 2, lines 15–17, which recites that “[t]he integration of the payment system and product catalog functions to enable recording and tracking transactions with itemized detail” (emphases added). See also Ex. 1001, 5:51–55 (“the method may additionally store purchase list information as a transaction record for the merchant account and/or the purchaser account, which functions to form an itemized purchase history” (emphasis added)); 4:4–6 (“[t]he product catalog preferably includes a listing of product descriptions and prices for each product contained within the product catalog” (emphases added)); 4:6–13 (“[a]dditional information may be included for a product such as categories for tax purposes and other purposes, product-related IDs for each distributor of the product (e.g., Stock-Keeping Unit or ‘SKU’), images or media files related to the product, inventory related information (the number of items on hand, on order, etc. at each warehouse location), or any other suitable product-related data” (emphases added)); 4:13–16 (“[t]he product catalog may be a database accessed by outside applications, but may additionally or alternatively include a hosted web-based store through which products can be added to a shopping cart (i.e., a purchase list)” (emphases added)). Accordingly, we construe “line item data” as “itemized information from a larger group of information, related to individual products involved in a purchase or sale, that is capable of categorization,” where non-limiting examples of “line item data” may include one or more of “quantity, description, type, cost, product identifier (e.g., stock keeping unit), tax, duty, shipping or other fees.”” slip op. at 10

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

    “valid reason for combining Bemmel and Dalzell, because Dr. Sadeh- Koniecpol’s opinions of industry custom are unsupported. We are unpersuaded that Dr. Sadeh-Koniecpol’s opinions are unsupported, and especially unpersuaded that Dr. Sadeh-Koniecpol has not provided adequate support regarding the reasons for combining Bemmel and Dalzell. Dr. Sadeh-Koniecpol includes explicit citations to references, in particular Bemmel and Dalzell, for supporting his conclusions, and we determine that any purported “leaps of logic” taken by Dr. Sadeh-Koniecpol are reasonable given the underlying support. For example, Dr. Sadeh-Koniecpol opines that “one of ordinary skill in the art would have been motivated to combine the mobile payment system of Bemmel with the electronic marketplace of Dalzell.” Ex. 1002 ¶ 136. Of course, this paragraph considered in isolation would be an unsupported opinion. Dr. Sadeh-Koniecpol, however, then goes on to support this opinion with explicit citations to Bemmel and Dalzell. Ex. 1002 ¶¶ 137, 139, 140. Dr. Sadeh-Koniecpol then reaches conclusions that we determine flow logically from those citations. Ex. 1002 ¶¶ 138, 141, 142.” slip op. at 21

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Patent Owner asserts additionally that the Board should exercise its discretion under 35 U.S.C. § 325(d) and deny the Petition, because similar art was already before the Examiner during prosecution. We note that 35 U.S.C. § 325(d) is normally exercised in a Decision on Institution. Moreover, we have already conducted a full trial in this proceeding subsequent to a Decision on Institution. Furthermore, 35 U.S.C. § 325(d) is discretionary, and insofar as Patent Owner is requesting any vacating of the Decision on Institution, we decline to do so for the reasons set forth above.” slip op. at 28

  Patent outcomesUS 8,396,808 unpatentable
  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,396,808
• PNC Bank, Na / Suntrust Bank v. Parus Holdings, Inc.Institution denied
  PTAB · Nov 9, 2015 · CBM2015-00150 · APJ Bart A Gerstenblith · CBM · Institution

  The Board denied institution for claims 1–18 because Petitioner did not show that the patent was eligible for covered business method review.

  RulingsInstitution decision

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

    “for the creation of a transitional program for reviewing covered business method patents. “The Director may institute a transitional proceeding only for a patent that is a covered business method patent.” Pub. L. No. 112-29, § 18(a)(1)(E), 125 Stat. 284, 330 (Sept. 16, 2011). A “covered business method patent” is a patent that “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” Id. § 18(d)(1), 125 Stat. at 331; accord 37 C.F.R. § 42.301(a) (providing the same definition of “covered business method patent”). “The petitioner must demonstrate that the patent for which review is sought is a covered business method patent.” 37 C.F.R. § 42.304(a).” slip op. at 9

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied

    “discussed above, a teleconference was held with the parties on November 5, 2015. Petitioner and Patent Owner jointly request authorization to file a motion for termination under 35 U.S.C. § 327, the statute governing termination of instituted post-grant reviews due to settlement, but confirmed during the call that no written settlement agreement currently exists. The parties request that the proceedings terminate without estoppel, such that Petitioner can re-file the petitions upon completion of Federal Circuit review of the District Court’s ineligibility determination, if necessary. Patent Owner limits its agreement to Petitioner re-filing the same petitions. Effectively, the parties request that we stay these proceedings pending Federal Circuit review of the District Court’s decision. We deny the parties’ request. As explained below, the ’120 patent is not eligible for covered business method patent review. Deferring entering such a decision is inconsistent with our policy objective of “secur[ing] the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1. We do not reach, and, thus, express no opinion on, eligibility of the claims of the ’120 patent under 35 U.S.C. § 101.” slip op. at 3

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

    “II. CLAIM CONSTRUCTION Although Petitioner presents constructions for several claim terms, no terms require express construction for purposes of this Decision.” slip op. at 9

  Claim constructionDiscretionary denial
  Patents in suitUS 8,843,120
• PNC Bank, Na / Suntrust Bank v. Parus Holdings, Inc.Institution denied
  PTAB · Nov 9, 2015 · CBM2015-00110 · APJ Bart A Gerstenblith · CBM · Institution

  The Board denied both petitions and did not institute CBM review of claims 1–18 because Petitioner did not show the patent was eligible for CBM review.

  RulingsInstitution decision

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

    “On this record, Petitioner has not introduced persuasive evidence to show that at least one claim of the ’120 patent claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. Accordingly, Petitioner has not met its burden of demonstrating that the ’120 patent is eligible for covered business method patent review.” slip op. at 19

  Discretionary denial
  Patents in suitUS 8,843,120
• Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgment
  PTAB · Oct 29, 2015 · IPR2014-00948 · APJ Jon B Tornquist · IPR · Adverse judgment

  The Board granted Patent Owner’s adverse-judgment motion, entered judgment against Patent Owner, and cancelled claims 2, 22, 23, and 25.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and it did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3

  None
  Patents in suitUS 6,370,371
• Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgment
  PTAB · Oct 29, 2015 · IPR2014-00947 · APJ Jon B Tornquist · IPR · Adverse judgment

  The Board granted Patent Owner’s motion for adverse judgment and cancelled claims 1, 23, 25, 161, 193, and 202.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3

  None
  Patents in suitUS 6,061,551

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.