- Microsoft Corporation v. Ipa Technologies Inc.Institution deniedPTAB · Nov 7, 2019 · IPR2019-00838 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution of IPR on claims 1, 13–18, 22, and 33–38 under § 325(d) because the same or substantially the same prior art had been presented to the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In evaluating whether to deny institution on the basis of § 325(d) because the same or substantially the same prior art or arguments previously were presented to the Office, the Board considers the following non-exclusive factors: (1) the similarities and material differences between the asserted art and the prior art involved during examination; (2) the cumulative nature of the asserted art and the prior art evaluated during examination; (3) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (4) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (5) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (6) the extent to which additional evidence and facts presented in the” slip op. at 13
Discretionary denialPatents in suitUS 7,036,128 - Seabed Geosolutions (US), Inc. v. Magseis FF LLCSome claims unpatentablePTAB · Nov 5, 2019 · IPR2018-00961 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–7 and 9–24 are unpatentable under the stated § 103(a) grounds; claim 8 was not shown unpatentable.
RulingsFinal written decision- Expert testimonyPatent owner expert discountedDecided for petitioner
“7. Our Analysis of Claim 1 As we analyze the evidence, Mattaboni’s Figure 4 does not relate to any characteristic of its memories that limits the frequency range of recorded seismic data. Rather, Mattaboni’s Figure 4 is “the product of the manufacturer’s specified response curve for the geophone and the measured transfer function of the preamp and filter blocks of Figure 3.” Ex. 1006, Fig. 4 (caption). Mattaboni discloses that its memories are capable of recording data at 120 times per second, or 60 Hertz, and thus above the 50 Hertz that Patent Owner contends is necessary to record “seismic data.” Regarding Patent Owner’s statements (1) and (2) above, Patent Owner’s declarant does not disclose the underlying facts or data on which these opinions are based, and they are thus entitled to little or no weight. 37 C.F.R. § 42.65(a). Regarding Patent Owner’s statement (3), Mattaboni states that the displacement response peak of its instrument is between 25 and 35 Hertz, which is the most important range for microearthquakes. Ex. 1006, 5. Mattaboni, however, also states the effective frequency band of the disclosed instrument is “from about 2 Hz to somewhat over 50 Hz (Figure 4).” Id. at 5. Thus, Mattaboni’s instrument records signals “somewhat over 50 Hz” which is “at least above 50 Hz” and in the frequency range which Patent Owner’s declarant contends is needed to record “seismic data.” Ex. 2051 ¶ 35; Ex. 1104, 301:5–302:1 (testifying that 8–50 Hz range is minimum for “seismic data” under Patent Owner’s construction).” slip op. at 28
- Skill levelSkill level board ownOther
“Considering the foregoing, we find that a person of ordinary skill in the art of OBS technology would have had: (i) a bachelor’s degree in electrical or mechanical engineering, geophysics, mathematics, general engineering, or equivalent thereof, and five (5) years of experience with the conduct of surveys with geophones, or the equivalent thereof, including two (2) years of work specifically with OBS technologies, or the equivalent thereof; or (ii) a bachelor’s degree and an advanced degree in electrical or mechanical engineering, geophysics, mathematics, general engineering, or equivalent thereof, and four (4) years of experience with the conduct of surveys with geophones, two (2) years of which involve work specifically with OBS technologies, or the equivalent thereof. We adopt these statements as describing the level of ordinary skill in the art pertinent to the 761 Patent in our obviousness analysis.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Petitioner contends there is a “heavy presumption” that claims terms have their ordinary meaning (CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)), and that Patent Owner did not overcome this presumption with a clear and precise definition (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). Reply 8. Claim terms must be construed, however, in light of the specification. See In re Translogic Tech., Inc., 504 F.3d at 1257. In the Specification, the 761 Patent describes “seismic data” as resulting from an acoustic signal from a seismic energy source that propagates into the earth and is partially reflected at subsurface lithologic or fluid boundaries and is detected and recorded as seismic energy data by seismic receivers. Ex. 1030, 1:12–23. Petitioner argues that this passage of the 761 Patent does not mention “seismic data.” We note, however, that this passage does mention “seismic energy data” which is shortened to “seismic data” when mentioned later in the 761 Patent. See, e.g., Ex. 1030, 2:48–51, 3:17–19, 3:26–30, 3:35–40, 3:61–63, 9:41–63. Petitioner further contends that several publications establish that “seismic data” is not limited to the oil and gas industry, but may be used in other fields such as earthquake monitoring. Reply. 10 (citing Exs. 1112– 1114, 1121). Patent Owner argues that its constructions are consistent with, and supported by, other publications from the oil and gas industry. PO Resp. 33 (citing Ex. 2003; Ex. 2004, 213–232). Collectively, these publications establish that the term “seismic data” is used differently in different fields, but the best source for determining the meaning of a claim term is the patent’s Specification. See, e.g., In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149–50 (Fed. Cir. 2012); In re Suitco Surface, Inc., 603 F.3d 1255, 1260–61 (Fed. Cir. 2010); Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). As the 761 Patent uses the term “seismic data” consistent with the meaning proposed by Patent Owner, and not the more expansive definition proposed by Petitioner, we adopt Patent Owner’s proposed construction as the correct one to use for our analysis in this decision. The plain meanings of claim terms are construed not in a vacuum, but in the context of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d at 1257. Our construction of “seismic data” and “seismic data recorder” is consistent with the 761 Patent’s use of the terms.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We agree that Patent Owner’s failure to re-allege the argument in the Response waives the argument that Schmalfeldt is not a “printed publication.” See In re Nuvasive, 842 F.3d 1376, 1380 (Fed. Cir. 2016) (finding waiver where a patent owner “challenged the public accessibility of the prior art references during the preliminary proceedings of the inter partes review . . . but failed to challenge public accessibility during the trial phase”); SAP Am., Inc. v. Versata Dev. Group, Inc., CBM2012-00001, Paper 81 (Sept. 13, 2013); Paper 12. In any case, Petitioner has demonstrated Schmalfeldt is a printed publication for reasons noted. Dec. Inst. 10–20; see also Reply 4 (citing Ex. 1105). Accordingly, we determine Petitioner has shown Schmalfeldt is a “printed publication” under 35 U.S.C. § 102.” slip op. at 16
Patent outcomesUS 8,228,761 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,228,761 - Google LLC v. Ipa Technologies Inc.Institution deniedPTAB · Oct 16, 2019 · IPR2019-00736 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the asserted combinations taught the claimed conversational protocol.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’128 patent is unpatentable. Accordingly, we do not institute an inter partes review.” slip op. at 2
- BurdenDenied
“event types” as recited in claim 1. See Pet. 12–13. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. Petitioner’s evidence and argument fails to persuasively and adequately explain how the speech acts or performatives as described in Nodine are the events recited in the challenged claims. Although both Finin and Bayardo define and disclose performatives (Ex. 1016, 297; Ex. 1017, 197), Petitioner does not discuss these disclosures or explain sufficiently how the speech acts/performatives in Nodine, Finin, and Bayardo alone or combination teach the “layer of conversational protocol defined by event types and parameter lists associated with one or more events, and wherein the parameter lists further refine the one or more events” limitation of claim 22 and 45. Petitioner asserts that “Nodine in combination with Steiner and Finin discloses or suggests this limitation” of claim 45 (Pet. 49), but Petitioner does not identify adequately any reliance on Steiner for this limitation (id. at 28–33, 49). slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“in the art at the time of the invention of the ’128 patent would have had at least a Bachelor’s degree in computer science, electrical engineering, or a similar discipline, and one to two years of work experience in networked computer systems or a related area. Ex. 1002 ¶ 14; Pet. 4. At this stage of the proceeding, Patent Owner does not dispute Dr. Olsen’s assessment of the level of ordinary skill in the art. Prelim. Resp. 6.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 12–13. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,036,128 - Google LLC v. Ipa Technologies Inc.Institution deniedPTAB · Oct 16, 2019 · IPR2019-00735 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted combinations rendered claim 1 and its dependent claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“35 U.S.C. § 325(d) because (1) it relies on similar art that applicant overcame during prosecution of the parent ’115 patent, and (2) it is duplicative of the co-pending petition in IPR2019-00733. Prelim. Resp. 48– 61. Because, for reasons discussed below, we deny the Petition on other grounds, we need not determine whether it also would be appropriate to deny the Petition pursuant to our discretion under § 325(d).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 14. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Pet. 25. Petitioner’s arguments offer conclusory statements that equate Nodine’s speech act/performative types to “event types” recited in the challenged claims, and the parameters associated with Nodine’s speech act/performatives with “one or more of the events” recited in the challenged claims. See id. Petitioner argues that Nodine thus discloses the conversational protocols defined by events. Id.; see Ex. 1002 ¶¶ 106–107. In sum, Petitioner maps Nodine’s “speech acts” or “performatives” to the “events” recited in claim 1. We note that Petitioner does not offer a construction for “event” or “event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,036,128 - Triple Plus Ltd. v. Mordechai Ben OldAll claims unpatentablePTAB · Aug 16, 2019 · PGR2018-00038 · APJ Bart A Gerstenblith · PGR · Final written decision
Claim 1 is unpatentable as obvious over the Triple+ NWL, including the obvious substitution of a butterfly valve for its ball valve.
RulingsFinal written decision- BurdenDecided for petitioner
“We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden of proving unpatentability of the challenged claim, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). This Final Written Decision is issued” slip op. at 2
- ExcludeMotion to exclude, grantedGranted
“subject declaration was filed as Patent Owner’s Preliminary Response. Patent Owner’s Preliminary Response states: “Patent Owner, Mordechai Ben Old, hereby submits the following preliminary response in the form of declaration.” Paper 7, 2. To the extent Patent Owner’s Preliminary Response/declaration would be given any weight post-institution, we agree with Petitioner that it would be considered routine discovery and that Patent Owner was required to make himself available for deposition. See Practice Guide, 77 Fed. Reg. at 48,761 (“Routine discovery includes: . . . (2) the cross-examination of the other side[’]s declarants . . . .”). Patent Owner did not do so. Additionally, the record reflects that Patent Owner has continued to fail to participate in this proceeding. In particular, Patent Owner did not respond to our Order specifying “that Patent Owner shall appear . . . on or before May 30, 2019, and show cause as to why adverse judgment should not be issued against Patent Owner for abandonment of the contest pursuant to 37 C.F.R. § 42.73(b)(4).” Paper 14, 3. Accordingly, in light of Patent Owner’s failure to participate in the proceeding by appearing for a deposition by Petitioner or otherwise, we agree that the appropriate remedy is to exclude Patent Owner’s declaration, submitted as its Preliminary Response (Paper 7). Thus, to the extent we would have considered Patent Owner’s declaration at this post-institution stage of the proceeding, we decline to do so.3” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had: “a Bachelor of Science degree in a field of engineering or a closely related discipline, and at least one year of practical academic or industrial experience designing, testing and/or manufacturing fluid control valves.” Pet. 11 (citing Ex. 1003 ¶¶ 28–30). As discussed above, Patent Owner did not file a Response. We reiterate our preliminary finding from the Decision on Institution, that, consistent with the level of ordinary skill in the art reflected by the prior art of record, we adopt the level of ordinary skill in the art proposed by Petitioner based on the present record. See Dec. on Inst. 10; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“one exception that the Triple+ NWL includes a ball valve whereas claim 1 requires a butterfly. See id. at 32–63; see also id. at 31 (“the Triple+ NWL discloses every element of claim 1 except for the choice of quarter turn rotary valve type,” i.e., the claimed butterfly valve). Petitioner asserts that “[t]he ball valve is interchangeable with the claimed ‘butterfly,’ and it would have been obvious to [a person of ordinary skill in the art] to substitute one for the other.” Id. at 35 (citing Ex. 1003 ¶¶ 36–40, 56–57). Petitioner relies upon Dr. Johnson’s testimony in support of this position. See, e.g., id. at 36 (citing Ex. 1003 ¶¶ 36–40). In particular, Petitioner states: a ball valve (like in the Triple+ NWL) is a member of the same family of valves as the butterfly. Except for the shape of the valve member, both are functionally and operationally identical, and both can and were used as shut-off valves for main water lines entering a residence or other structure. Id. (citing Ex. 1003 ¶¶ 36–40). Petitioner asserts that “[t]he Triple+ NWL used a ball valve and was intended for use as a shut-off valve on the main water line.” Id. at 37. Petitioner thus contends that: (1) this use for any quarter turn rotary valve type was well known to one of ordinary skill in the art, id. (citing Ex. 1003 ¶¶ 39–40); (2) “replacing a ball valve with a butterfly valve was a ‘simple design choice and an obvious replacement’” to a person of ordinary skill in the art, id. at 37–38 (quoting Ex. 1003 ¶¶ 56– 57); and (3) “[s]ubstituting one known type of a valve for another— particularly within the same family of valves such as the quarter turn rotary valve family—is the epitome of an obvious design choice” to a person of ordinary skill in the art, id. at 38 (citing KSR, 550 U.S. at 416, 421).7” slip op. at 17
Patent outcomesUS 9,671,031 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,671,031 - PTAB · Jun 19, 2019 · IPR2018-01159 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied West’s rehearing request, leaving institution denied because the petition did not show a reasonable likelihood of prevailing on the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In a request for rehearing, we do not review the merits of the Institution Decision de novo. Instead, we consider whether Petitioner has met its burden of showing that a matter has been misapprehended or overlooked. 37 C.F.R. § 42.71(d) (“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”). We conclude that Petitioner has not met this burden in its Request for Rehearing.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Initially, we remind Petitioner that we did not find that one of ordinary skill in the art would not have been motivated to modify Carrel in view of David-Hegerich. See Dec. on Inst. 17–22. Rather, we found that Petitioner did not demonstrate a reasonable likelihood of showing that one of ordinary skill in the art would have modified Carrel as proposed by Petitioner. See id.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Initially, we remind Petitioner that we did not find that one of ordinary skill in the art would not have been motivated to modify Carrel in view of David-Hegerich. See Dec. on Inst. 17–22. Rather, we found that Petitioner did not demonstrate a reasonable likelihood of showing that one of ordinary skill in the art would have modified Carrel as proposed by Petitioner. See id.” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,586,011 - Wilson Electronics, LLC v. Cellphone-Mate, Inc.Institution deniedPTAB · Apr 18, 2019 · IPR2018-01776 · APJ Neil T Powell · IPR · Institution
The Board denied institution on all challenged claims, finding no reasonable likelihood of success on the asserted obviousness grounds and citing petition clarity, prior art accessibility, and objective evidence.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent. 37 C.F.R. § 42.100(b) (2016).9 Consistent with that standard, we assign claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, in the context of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“disclosure teaches identity between the engineering concepts for amplify uplink channels and amplifying downlink channels. Additionally, assuming the cited disclosure does demonstrate some similarity between amplifying uplink and downlink channels, Petitioner again fails to provide persuasive evidence or reasoning as to why a person of ordinary skill in the art would have modified Aida or Kenington, even if they could have. Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. 2016); Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“ordinary skill in the art could have modified Aida or Kenington. See Pet. 30. Petitioner also cites paragraph 110 of McKay, which discloses an example in which “[w]ith the exception of the frequency band, each of the elements of the uplink F1 signal path 274 is functionally identical to the corresponding element previously described with respect to the downlink signal F2 path 236.” Ex. 1107 ¶ 110; Pet. 30. Specifically, Petitioner contends that McKay’s disclosure tends to demonstrate that the paths for uplink and downlink channels could be similar. Pet. 30 (citing Ex. 1107 ¶ 110). But even if McKay demonstrates that a person of ordinary skill in the art could have made paths for uplink channels and downlink channels similar, Petitioner does not explain why a person of ordinary skill in the art would have so modified Aida or Kenington.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundDecided for patent owner
“Moreover, we agree with Patent Owner that Petitioner’s reliance on the cited portion of the ’190 patent is impermissible hindsight. See Prelim. Resp. 20. Indeed, Petitioner alleges that disclosure of the ’190 patent demonstrates what “the [person of ordinary skill in the art] would understand.” Pet. 30. “It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Thus, we find that Petitioner’s allegation of what a person of ordinary skill in the art would understand now (after seeing the disclosure of the ’190 patent) does not support an assertion of unpatentability under 35 U.S.C. § 103, which precludes patentability “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention” (emphasis added).” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,402,190 - Wilson Electronics, LLC v. Cellphone-Mate, Inc.Institution deniedPTAB · Apr 18, 2019 · IPR2018-01774 · APJ Neil T Powell · IPR · Institution
The Board denied institution on all challenges because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On the whole, Petitioner’s arguments and evidence demonstrate no more than the possibility that a person of ordinary skill in the art could have modified Layne, without providing sufficient reasoning or evidence as to why a person of ordinary skill in the art would have modified Layne to meet the claimed invention. Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would combine the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). Consequently, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that independent claim 1 would have been obvious over Layne, Sahota, and “alternatively” McKay. See Metalcraft, 848 F.3d at 1366 (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”). We understand that a person of ordinary skill is a person of ordinary creativity, not an automaton, but “[w]ithout any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.” Id. at 1367 (“‘[T]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,’ we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” (quoting KSR, 550 U.S. at 420–21)). Petitioner’s arguments and evidence regarding independent claim 19 suffer from the same problems. See Pet. 38. And Petitioner’s treatment of dependent claims 2–4, 6, 8, 20, and 24 does not cure the deficiencies in the challenges of claims 1 and 19. See Pet. 29–36, 42–44.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent. 37 C.F.R. § 42.100(b) (2016).8 Consistent with that standard, we assign claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, in the context of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“paths have the same configuration of circuitry. Pet. 24. We find this unavailing. Patent Owner persuades us that Layne discloses separate paths for its two downlink channels, and that the circuits for the uplink paths have significantly different configurations from the circuit for the uplink paths. Prelim. Resp. 16–18. Thus, not all uplink and downlink paths have the same configuration of circuitry. Without addressing the different circuit configurations of Layne’s uplink and downlink paths, Petitioner and Dr. Ralston cite McKay as disclosing an example with uplink and downlink paths having similar or the same configuration. Pet. 24 (citing Ex. 1007 ¶ 110); Ex. 1002 ¶ 50 (citing Ex. 1007 ¶ 110). In view of Layne, Dr. Ralston’s testimony and McKay demonstrate, at most, that the circuit configurations of uplink and downlink paths could be the same. Demonstrating that uplink and downlink paths could be the same does not demonstrate why a person of ordinary skill in the art would have modified Layne. Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis added) (citation omitted) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Petitioner’s citation of the ’190 patent as evidence of obviousness is” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“Contrary to Petitioner’s assertion, it is not clear to us that the cited disclosure teaches identity between the circuitry of uplink and downlink paths. Additionally, assuming the cited disclosure does demonstrate some similarity between amplifying uplink and downlink channels, Petitioner again fails to provide sufficient persuasive evidence or reasoning as to why a person of ordinary skill in the art would have modified Layne. Moreover, we agree with Patent Owner that Petitioner’s reliance on the cited portion of the ’190 patent is impermissible hindsight. See Prelim. Resp. 20–21. Pet. 30. “It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” In re Fritch, 972 F.2 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Thus, we find that Petitioner’s allegation of what is allegedly known now (after seeing the disclosure of the ’190 patent) does not support an assertion of unpatentability under 35 U.S.C. § 103, which precludes patentability “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention” (emphasis added).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 9,402,190
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.