- Sensus USA, Inc. v. Certified Measurement, LLCInstitution deniedPTAB · 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 obviousnessPatents in suitUS 6,289,453 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsInstitution deniedPTAB · 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 obviousnessPatents in suitUS 6,271,884 - Square, Inc. v. Think Computer CorporationAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,396,808 - PNC Bank, Na / Suntrust Bank v. Parus Holdings, Inc.Institution deniedPTAB · 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 denialPatents in suitUS 8,843,120 - PNC Bank, Na / Suntrust Bank v. Parus Holdings, Inc.Institution deniedPTAB · 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 denialPatents in suitUS 8,843,120 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · 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
NonePatents in suitUS 6,370,371 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · 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
NonePatents in suitUS 6,061,551 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00946 · APJ Bart A Gerstenblith · IPR · Adverse judgment
The Board granted Patent Owner’s motion for adverse judgment and cancelled claims 1, 82, 90, and 91.
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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(collectively, “Petitioner”) filed a Petition for inter partes review of U.S. Patent No. 6,266,518 B1 (“the ’518 patent”). Paper 1. ParkerVision, Inc. (“Patent Owner”) filed a Preliminary Response on September 24, 2014. Paper 7. On December 18, 2014, we instituted this inter partes review of claims 1, 82, 90, and 91 of the ’518 patent. Paper 8.” slip op. at 2
NonePatents in suitUS 6,266,518 - RPX Corporation v. Cedatech Holdings, LLCRehearing deniedPTAB · Oct 13, 2015 · IPR2015-00736 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied RPX’s rehearing request, leaving institution denied because the patent owner’s pre-institution statutory disclaimer did not require adverse judgment.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. 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.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. 37 C.F.R. § 42.71(d).” slip op. at 2
- Adverse judgmentAdverse judgmentDecided for patent owner
“Patent Owner did not disclaim the patent, for example by filing a disclaimer under 35 U.S.C. § 253(b); rather, Patent Owner disclaimed claims under § 253(a). Thus, subsection (b)(1) is inapplicable. indicates correctly that our subsequent Order (Paper 6) placed the burden on Patent Owner to explain why we should not construe Patent Owner’s statutory disclaimer as a request for adverse judgment. Id. at 1–2. Even though Patent Owner did not take the opportunity to respond to our request, we determined, nonetheless, not to construe Patent Owner’s disclaimer as a request for adverse judgment because Patent Owner undertook none of the “[a]ctions construed to be a request for adverse judgment” under 37 C.F.R. § 42.73(b). Subsection (b)(2), which refers to “disclaimer of a claim such that the party has no remaining claim in the trial” (emphasis added), is also inapplicable. Because it includes the phrase “such that the party has no remaining claim in the trial,” it is our view that subsection (b)(2) applies only after a trial has been instituted. See 37 C.F.R. § 42.2 (“Trial means a contested case instituted by the Board based upon a petition. A trial begins with a written decision notifying the petitioner and patent owner of the institution of the trial.”). In the circumstances here, however, trial had not yet been instituted. Thus, subsection (b)(2) does not require that we construe Patent Owner’s disclaimer as a request for adverse judgment. Additionally, Petitioner does not contend that subsections (b)(3) or (b)(4) apply, and we agree that they do not. Accordingly, the facts presented here do not fall within any of subsections (b)(1)–(4), and Petitioner has not pointed us to anything that requires us to construe Patent Owner’s disclaimer as a request for adverse judgment.” slip op. at 3
NonePatents in suitUS 7,707,591 - TRW Automotive U.S. LLC v. Magna Electronics, Inc.Institution deniedPTAB · Sep 17, 2015 · IPR2015-00951 · APJ Richard E Rice · IPR · Institution
Institution was denied on all asserted obviousness grounds because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“construction “does not result in a scope commensurate with the claim language.” Prelim. Resp. 11. Patent Owner contends that “‘a determination is made that the equipped vehicle is being operated in an urban environment’ should be construed to mean a determination is made that the equipped vehicle is being operated in a surrounding condition indicative of an urban/city environment.” Id. at 11–12. Patent Owner argues in support of its proposed construction that “[t]he plain and ordinary meaning of an urban environment is a surrounding condition indicative of a city or similar built up region such as found in towns and suburbs.” Id. at 10–11 (citing Ex. 2004, 3, 4). We agree with Patent Owner’s arguments. On this record, therefore, we determine that the broadest reasonable interpretation consistent with the Specification of “a determination is made that the equipped vehicle is being operated in an urban environment” is a determination is made that the equipped vehicle is being operated in a surrounding condition indicative of an urban/city environment.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“change the orientation of Schofield PCT’s imager from rearward-facing to forward-facing are not persuasive. An analysis under 35 U.S.C. § 103(a) requires more than “mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Petitioner has not explained sufficiently why a forward-facing camera orientation, such as disclosed by Kenue, would have improved the automatic rearview mirror system disclosed by Schofield PCT. In particular, Petitioner has not persuaded us that a forward-facing camera could have been used to detect glare-causing light impinging on the rearview mirror, as required in Schofield PCT’s system. See Prelim. Resp. 33. The testimony of Petitioner’s declarant, Jeffrey A. Miller, does not shed any light on this issue. See Ex. 1010 ¶¶ 54– 57.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“these deficiencies in Schofield PCT and Kenue; accordingly, for the reasons given, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to its challenges to independent claims 1, 14, and 17. Further, as Petitioner’s challenges to dependent claims 2–13, 15, 16, and 18–20 do not cure the deficiencies in Schofield PCT and Kenue discussed above in connection with the independent claims, we determine that Petitioner also has not demonstrated a reasonable likelihood of prevailing with respect to its challenge to dependent claims 2– 13, 15, 16, and 18–20. III. CONCLUSION For the foregoing reasons, we determine that Petitioner has not established a reasonable likelihood of prevailing on its challenges to: claims 1, 4, 5, 9, and 11–13 as obvious over Schofield PCT, Vellacott, and Kenue; claims 2, 14, and 16 as obvious over Schofield PCT, Vellacott, Kenue, and Kim; claims 6–8 and 10 as obvious over Schofield PCT, Vellacott, Kenue, and Muirhead; claims 15 and 17–20 as obvious over Schofield PCT, Vellacott, Kenue, Kim, and Muirhead; claim 3 as obvious over Schofield PCT, Vellacott, Kenue, and Slotkowski; claim 6 as obvious over Schofield PCT, Vellacott, Kenue, and Imaide; and claim 20 as obvious over Schofield PCT, Vellacott, Kenue, Kim, Muirhead, and Imaide. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Petition for an inter partes review of claims 1–20 of the ’801 Patent is denied, and no inter partes review will be instituted pursuant to 35 U.S.C. § 314 as to any claim of the ’801 Patent on any of the grounds of unpatentability alleged by Petitioner in the Petition.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,637,801
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.