- Netflix, Inc. v. Divx, LLCRehearing deniedPTAB · Dec 2, 2020 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied DivX’s rehearing request, leaving the institution decision in place because the rule remained effective and Dr. McDaniel’s testimony was supported on the record.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“assertions regarding Dr. McDaniel’s testimony. Dr. McDaniel testified that (a) Chen teaches video data streams, (b) “[a]s was widely known in the art, for example as disclosed by Grab-333,[1] a [person of ordinary skill in the art] would have understood that video data streams were comprised of a series of video frames,” and (c) a person of ordinary skill in the art “would have understood that Chen teaches a plurality of frames of video are encrypted using at least one scrambling key/control word.” Ex. 1003 ¶ 112;” slip op. at 3
NonePatents in suitUS 9,184,920 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00840 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving institution denied because it did not show error in the Board’s § 325(d) analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“Petitioner did not argue, in the Petition, that FIPA97 was released as individual parts. Petitioner’s Rehearing Request (page 8) cites to the Petition at page 20 and Exhibit 1054. Page 20 of the Petition, however, contains Petitioner’s argument that FIPA97 was made publicly available as a single document, as discussed above. It does not include any argument or suggestion that FIPA97 was released as individual parts. Additionally, Exhibit 1054 is not cited on page 20 of the Petition in the discussion of FIPA97 nor does it appear that Exhibit 1054 was cited anywhere in the Petition. Thus, because Petitioner did not argue, in the Petition, that FIPA97 was released as individual parts, we could not have overlooked that argument. Petitioner’s contention of error in our determination that FIPA97 was involved during examination of the ’128 patent application is premised upon finding that FIPA97 existed as individual parts. Because Petitioner fails to demonstrate that we overlooked an argument that was not made, we are not persuaded of error.” slip op. at 4
Discretionary denialPatents in suitUS 7,036,128 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00838 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving institution denied under § 325(d) because Microsoft did not show the Board overlooked arguments made in the petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“and the prior art relied upon in Petitioner’s challenges to the ’128 patent, Petitioner did not address 35 U.S.C. § 325(d) in the Petition (Paper 1). Instead, Petitioner made two critical representations—(1) that the Examiner of the ’128 patent “did not have FIPA97 before him, or any other FIPA reference for that matter” (Pet. 1) and (2) that despite there being seven “Parts” to FIPA97, “FIPA97 was made publicly available as a single document” and was “developed and published as a single, integrated work.” Pet. 20 (citing Ex. 1055 (FIPA97 Table of Contents for Parts 1–7)); Ex. 1026, 5 (Foundation for Intelligent Physical Agents, “Resolution of Munich meeting”). In the Petition (Paper 1), Petitioner never contended that FIPA97 was published or available as separate and distinct parts, such that access to one part might not mean access to each other part. Rather, Petitioner’s sole statement regarding separate parts was that it filed FIPA97 as seven separate exhibits “due to its size and numbering schedule.” Id. at 20. Accordingly, on the record presented, we agreed with Petitioner’s representation and we found that FIPA97 (Exs. 1006–1012) constitutes a single document, which we then found was involved during examination of the ’128 patent application. Inst. Dec. 15.” slip op. at 3
Discretionary denialPatents in suitUS 7,036,128 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00839 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft's rehearing request, leaving institution denied under § 325(d) because it did not show the Board overlooked arguments about FIPA97 or misweighed the Becton factors.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“and the prior art relied upon in Petitioner’s challenges to the ’128 patent, Petitioner did not address 35 U.S.C. § 325(d) in the Petition (Paper 1). Instead, Petitioner made two critical representations—(1) that the Examiner of the ’128 patent “did not have FIPA97 before him, or any other FIPA reference for that matter” (Pet. 1) and (2) that despite there being seven “Parts” to FIPA97, “FIPA97 was made publicly available as a single document” and was “developed and published as a single, integrated work.” Pet. 20 (citing Ex. 1055 (FIPA97 Table of Contents for Parts 1–7)); Ex. 1026, 5 (Foundation for Intelligent Physical Agents, “Resolution of Munich meeting”). In the Petition (Paper 1), Petitioner never contended that FIPA97 was published or available as separate and distinct parts, such that access to one part might not mean access to each other part. Rather, Petitioner’s sole statement regarding separate parts was that it filed FIPA97 as seven separate exhibits “due to its size and numbering schedule.” Id. at 20. Accordingly, on the record presented, we agreed with Petitioner’s representation and we found that FIPA97 (Exs. 1006–1012) constitutes a single document, which we then found was involved during examination of the ’128 patent application. Inst. Dec. 15.” slip op. at 3
Discretionary denialPatents in suitUS 7,036,128 - Mylan Pharmaceuticals Inc. v. Sanofi-Aventis Deutschland GmbHAll claims unpatentablePTAB · Apr 2, 2020 · IPR2018-01670 · APJ Hyun J Jung · IPR · Final written decision
Claim 1 is unpatentable as obvious over Burroughs and Steenfeldt-Jensen; Petitioner’s motion to exclude is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“preliminary finding regarding the level of ordinary skill in the art. Accordingly, we maintain and reaffirm that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, or an equivalent degree” and “would have understood the basics of medical-device design and manufacturing, and the basic mechanical elements (e.g., gears, pistons) involved in drug-delivery devices.” Dec. to Inst. 15 (quoting Pet. 15).” slip op. at 11
- ExcludeMotion to exclude, deniedDenied
“Therefore, we are not persuaded to exclude the exhibits or expressly limit their purpose pursuant to FRE 105 and Petitioner’s Motion is denied with respect to these exhibits.” slip op. at 93
Patent outcomesUS 8,679,069 unpatentableNonecites Phillips · KSR · GrahamPatents in suitUS 8,679,069 - Intel Corporation v. VLSI Technology LLCNo claims unpatentablePTAB · Feb 26, 2020 · IPR2018-01661 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–5, 15, and 16 were not shown unpatentable because the asserted combinations failed to establish the claimed power gain and power loss relationship used to determine whether to power down.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“B. Level of Ordinary Skill in the Art Relying on the testimony of Dr. Raghunathan, Petitioner proposes that a person of ordinary skill in the art at the time of the alleged invention of the ’014 patent “would have had at least an M.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience), and would have three years of experience with computer hardware and software power management design techniques.” Pet. 24 (citing Ex. 1102 ¶¶ 57–58). In our Institution Decision, we adopted Petitioner’s proposal with a modification to the level of education based on Patent Owner’s proposal in its Preliminary Response. Inst. Dec. 7 (citing Prelim. Resp. 5). Specifically, we determined that “a person of ordinary skill in the art would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and three years of experience with computer hardware and software power management design techniques.” Id. Neither party argues during trial that our definition of the level of ordinary skill in the art was incorrect. See PO Resp. 2–3. See generally Pet. Reply. Because our preliminary determination is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that a person of ordinary skill in the art would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and three years of experience with computer hardware and software power management design techniques.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We need only construe claim terms that are in controversy, and only to the extent necessary to resolve the controversy. 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)). In this proceeding, neither party proposes a formal construction for any term. See Pet. 23; PO Resp. 3. We find it unnecessary to construe expressly any claim terms to resolve the controversy before us.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Weighing the parties’ arguments and evidence on the complete record now before us, we find Petitioner has not shown that a person of ordinary skill in the art would have understood Takahashi’s “predetermined value” to be an estimated power gain. Patent Owner, with the support of Dr. Wolfe’s credible testimony, persuasively argues that Takahashi’s “predetermined value” is a previous value of the cache-miss rate. Petitioner, on the other hand, does not point to anything in Takahashi that describes the “predetermined value” as an estimated power gain, nor does Petitioner cite any testimony from Dr. Raghunathan in support of its position other than a portion of his declaration that is substantially the same as the discussion in the Petition. See Pet. 33–34 (citing Ex. 1102 ¶ 80); see also Ex. 1102 ¶¶ 72– 80 (testimony substantially the same as pages 29–34 of the Petition). Without any suggestion in Takahashi that the “predetermined value” relates to an estimated power gain, Takahashi’s stated goal of reducing power consumption is not sufficient to show that Takahashi’s “predetermined value” is representative of an estimated power gain. For these reasons, we find that Petitioner has not established that Takahashi teaches or suggests an estimated power gain or determining whether to power down a portion of a device component in response to a relationship between an estimated power gain and an estimated power loss, as recited in independent claim 1. Accordingly, Petitioner has not shown by a preponderance of the evidence that claim 1 would have been obvious over the teachings of Takahashi.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We focus on one argument we find particularly persuasive—that Hu does not teach using the L2Access:leak ratio to “determin[e] whether to power down” a cache or a portion of a cache, as required by claim 1, even if the L2Access:leak ratio can be considered a relationship between an estimated power gain and an estimated power loss. See PO Resp. 24; PO Sur-reply 16–18. In its Reply, Petitioner alleges that “Hu explicitly discloses using the L2Access:leak ratio to determine when to power down the L1 cache.” Pet. Reply 16 (emphasis added) (citing Ex. 1102 ¶¶ 97–98). Petitioner, however, does not support this proposition by quoting or citing specific language in Hu, relying only on Dr. Raghunathan’s declaration, which provides substantially the same discussion as the Petition. Compare Ex. 1102 ¶¶ 97–98, with Pet. 39–40. We agree with Patent Owner that the portion of Hu cited in the Petition and Dr. Raghunathan’s declaration does not teach using the L2Access:leak ratio to determine whether to power down the L1 cache, as Petitioner contends. See PO Sur-reply 16–18; Pet. 39–41; Ex. 1102 ¶¶ 97– 99. Rather, Hu discloses determining values of the normalized cache leakage energy for different decay intervals at four values of the L2Access:leak ratio—5, 10, 20, and 100. Ex. 1104, 175–76; see PO Sur-reply 17. Hu uses these assumed values of the L2Access:leak ratio as inputs to generate simulation data, not to determine whether to power down a cache or portion of a cache. Ex. 1104, 175, see PO Resp. 24; PO Sur-Reply 15–16. Petitioner argues that Hu teaches that the higher the L2Access:leak ratio, the longer the system should wait before powering down the cache. Pet. 39–41; Pet. Reply 16–17. Hu, however, does not expressly compare the effect of different L2Access:leak ratios other than to state that when the L2Access:leak ratio is 100, a small decay interval is detrimental to performance and power. Ex. 1104, 175. As Patent Owner correctly asserts, Hu does not describe using the L2Access:leak ratio to determine an appropriate decay interval, nor does Hu describe using the L2Access:leak ratio to determine whether to power down a portion of a cache. See PO Sur-Reply 17–18.” slip op. at 24
Patent outcomesUS 8,020,014 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,020,014 - Intel Corporation v. VLSI Technology LLCNo claims unpatentablePTAB · Feb 12, 2020 · IPR2018-01040 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–4, 10, 12, and 13 were not shown unpatentable because the prior art did not teach or support adding the separately claimed third voltage reference.
RulingsFinal written decision- Adverse judgmentDenied
“We agree with Patent Owner that we should not address the patentability of claim 9 in this Decision. See PO Resp. 63–64. Rather, following Federal Circuit case law, we treat claim 9 as if it never existed. See Gunn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”). Consistent with other Board decisions in which some, but not all, challenged claims have been disclaimed after institution, we address the patentability only of the remaining claims. See LG Elecs., Inc. v. Wi-LAN Inc., IPR2018-00673, Paper 48 at 3 (PTAB Sept. 5, 2019) (Final Written Decision); Yamaha Golf Car, Paper 63 at 3; Baker Hughes, Paper 74 at 6, 11–12. We also agree with Patent Owner that we should not enter adverse judgment as to claim 9. See PO Sur-reply 26–27. Arthrex, the case relied on by Petitioner, does not mandate a different outcome. By its terms, 37 C.F.R. § 42.73(b)(2) permits disclaimer to be construed as a request for adverse action when there are “no remaining claim[s] in the trial.” That was the situation in Arthrex. 880 F.3d at 1347 (“Arthrex, Inc. disclaimed all claims that were the subject of the petition.”). Here, in contrast, several claims remain in the trial. Furthermore, Arthrex does not support Petitioner’s patent are disclaimed.” Pet. Reply 27. The Arthrex language quoted by Petitioner compares disclaimer of an “entire patent” under § 42.73(b)(1) with disclaimer of “some of the claims” of the patent (i.e., fewer than all claims in the patent but all challenged claims so there are no remaining claims in the trial) under § 42.73(b)(2). 880 F.3d at 1350. Neither situation is present here when only one claim (claim 9) has been disclaimed and several challenged claims (claims 1–4, 10, 12, and 13) remain in the trial.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention of the ’207 patent “would have had at least a[n] M.S. degree in electrical engineering and would have at least two years of experience with circuit design.” Pet. 17 (citing Ex. 1002 ¶ 32). In our Institution Decision, we found Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the asserted prior art and adopted Petitioner’s position, which Patent Owner did not oppose in the Preliminary Response. Inst. Dec. 14 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Neither Patent Owner, in its Response, nor Dr. Ipek, in his declaration, proposes a level of ordinary skill in the art. Dr. Ipek, however, states that “[f]or purposes of the subject IPR proceedings, I have been asked to employ [Petitioner’s proposed] standard of a person of ordinary skill, but I do not offer the opinion that it is the correct standard.” Ex. 2011 ¶ 19. Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary determination is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one least an M.S. degree in electrical engineering and at least two years of experience with circuit design. See Inst. Dec. 14; Pet. 17.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“the complete record developed during this inter partes review, we again conclude that the “third voltage reference” must be separate from the “second voltage reference.” We begin with the language of claim 1, which recites a first voltage reference, a second voltage reference, and a third voltage reference as separate elements.7 “Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citation omitted). The terms “first,” “second,” and “third” are terms used to distinguish separate elements of a claim. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1373 (Fed. Cir. 2005); see also 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1373 (Fed. Cir. 2005) (“The use of the terms ‘first’ and ‘second’ is a common patent-law convention to distinguish between repeated instances of an element or limitation.”). Although Gillette and 3M address whether such terms impose a numerical or serial limitation, they nevertheless support Patent Owner’s position that enumerated elements typically are not construed to be the same element. See Sur-reply 11–12. Other cases cited by Patent Owner also support its position. See id. at 12 (citing Regents of the Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 935–39 (Fed. Cir. 2013) (construing “first” and “second” disks as separate and discrete disks); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1405) (Fed. Cir. 1996)” slip op. at 21
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“ordinary skill in the art would have sought to reduce power consumption in Takahashi to address the well-known problem of current leakage, and that providing a separate voltage reference for transistor 223 in Takahashi’s Figure 15 (i.e., a third voltage reference) would have achieved that goal. Pet. 34–35 (citing Ex. 1002 ¶ 88). But the only evidence Petitioner relies on for adding the proposed third voltage reference is the testimony of Dr. Stojanovic. Id. (citing Ex. 1002 ¶ 88). Without any additional supporting evidence, Dr. Stojanovic’s testimony is insufficient to supply the missing “third voltage reference,” which is a key limitation of claim 1. See K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014); Patent Trial and Appeal Board Consolidated Trial Practice Guide 36 (Nov. 2019)9 (“[I]n an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. . . . In other words, expert testimony may explain ‘patents and publications,’ but is not a substitute for disclosure in a prior art reference itself.” (citing K/S Himpp, 751 F.3d at 1365)); see also Inst. Dec. 30–31 (reaching the same conclusion on the preliminary record). Furthermore, we agree with Patent Owner that Petitioner’s proposed” slip op. at 37
Patent outcomesUS 7,706,207 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,706,207 - Intel Corporation v. VLSI Technology LLCSome claims unpatentablePTAB · Feb 6, 2020 · IPR2018-01033 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 17 is anticipated by Bednar, and claims 1 and 17 are obvious over Bednar and Gunther; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“requesting institution of inter partes review of claims 1, 4–6, and 17–19 of U.S. Patent No. 8,004,922 B2 (Ex. 1001, “the ’922 patent”). VLSI Technology LLC (“Patent Owner”) filed a Preliminary Response (Paper 12). Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims. Paper 17 (“Inst. Dec.”).” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8–9; see Pet. 36 (citing Ex. 1002 ¶¶ 26–27).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 45
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“preponderance of the evidence, that (1) claim 17 is anticipated by Bednar, and (2) claims 1 and 17 would have been obvious over the combination of Bednar and Gunther. For the reasons discussed above, Petitioner has not demonstrated, by a preponderance of the evidence, that (1) claim 1 is anticipated by Bednar or (2) claims 4–6, 18, and 19 would have been obvious over the combination of Bednar, Gunther, and Willingham. The chart below summarizes our conclusions.” slip op. at 91
Patent outcomesUS 8,004,922 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,004,922 - Intel Corporation v. VLSI Technology LLCSome claims unpatentablePTAB · Feb 6, 2020 · IPR2018-01144 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 2, 7, and 8 are unpatentable as obvious over Bednar and Gunther; claim 3 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8; see Pet. 29 (citing Ex. 1102 ¶¶ 26–27).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“construction is erroneous. Accordingly, because the ’922 patent defines “power island,” we maintain and reaffirm that “power island” means a “group of components with similar power requirements.”” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“not to expressly construe “conversion controller” was erroneous or that an express construction is required to resolve any dispute between the parties. Accordingly, we maintain and reaffirm that because the construction of “conversion controller” does not resolve a controversy in the matter before us, we decline to construe it expressly.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 86
Patent outcomesUS 8,004,922 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,004,922 - Wabco Holdings Inc. / Laydon Composites Ltd. v. Transtex Composites Inc.Some claims unpatentablePTAB · Jan 10, 2020 · IPR2018-01319 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1, 5–11, and 15–19 are unpatentable as obvious over Layfield and Rinard; claims 2–4, 12–14, and 20 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Dr. Micklow does not explain how or why he proposes a different level of ordinary skill in the art as compared to the level proposed by Petitioner and preliminarily adopted in our Decision on Institution. See generally id. ¶¶ 28–31. Additionally, neither Patent Owner nor Dr. Micklow argues that the difference in the proposed level of ordinary skill in the art affects the outcome of this proceeding; Dr. Micklow, in fact, states the contrary—that his opinions are the same under either level of skill. See Ex. 2001 ¶ 31.7 Nothing in the full record is sufficient to persuade us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm our preliminary finding that the level of ordinary skill in the art at the time of the invention would have been “a bachelor’s degree in mechanics, aeronautics, materials, or a related field of study, or equivalent experience, and at least two years of experience in the development of components of vehicles, or an equivalent amount of relevant work or research experience.” Inst. Dec. 10–11; see Pet. 10.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Turning to Petitioner’s video (Ex. 1018), Petitioner asserts testing of commercial versions of the Layfield fairing illustrates what one skilled in the art would have understood from Layfield itself, namely that the Layfield strut is adapted to sustain an elastic deformation when a load is applied to the resilient strut when the skirt panel moves away from the configuration reducing air drag about the trailer and to self-recover the resilient strut original shape when the load is removed. Pet. 29 (citing Ex. 1010 ¶¶ 102–103).16 We afford this evidence little weight for several reasons. First, the video does not show the strut or the bending of a strut. See Ex. 1018. In fact, the only feature shown is a skirt panel attached to a trailer. that because thermoplastic material is more resilient than aluminum, we should adopt Petitioner’s argument. Pet. Reply 15–16 (citing Ex. 1058, 1– 12; Ex. 1010 ¶¶ 77–82). We must base our decision in this case on the arguments and evidence presented. As explained above, the record before us has contradictory evidence in the form of Dr. Micklow’s testimony that was not before the examiner. 16 Petitioner does not cite Exhibit 1018 in the Petition, but instead cites to Mr. Tres’s testimony regarding the exhibit. Id. Thus, from the video, it is unknown whether the skirt panel is attached to the trailer by one strut, multiple struts, or additional features. Second, Petitioner does not identify clearly how the tested system precisely corresponds to the teachings of Layfield. For example, Patent Owner raises a number of issues with the struts and panels in the video to which Petitioner provides either no response or an unconvincing response. For example, Patent Owner argues that each embodiment of Layfield uses trusses 36 to “interconnect each skirt panel and reinforce the panel assembly,” while it is asserted that the skirt panels in the video do not have trusses and are not interconnected. PO Resp. 26. Petitioner argues that the skirt panels in the video were made according to the teachings of Layfield and did include “integral vertical lateral side edges as the connecting mechanism for adjacent panels.” Pet. Reply 19 (citing Exs. 1018, 2003, 2005; Ex. 1004, 18:36–39; Ex. 1010 ¶¶ 63–64; Ex. 1055 ¶¶ 37–38). Other than stating that the skirt panels have connecting mechanisms, Petitioner does not address the fact that the panels are not interconnected according to the teachings of Layfield, as Patent Owner correctly pointed out. See generally id. at 19–21.” slip op. at 28
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“components (see, e.g., id. at 17:1–10), Layfield does not contain any express disclosure concerning the flexibility of the struts. Nor does Layfield include any discussion about the desirability of strut flexibility. The closest Layfield comes to discussing flexibility of the struts is by frequently referring to the struts as “support struts” (see, e.g., id. at 18:40) and discussing the use of a “bracket means,” which is on the struts, to “rigidly secure” the skirt panels to the trailer (id. at 6:48–49). Further, Layfield’s detailed discussion of the embodiment of support strut 58 shown in Figure 10, reproduced below, highlights the bracing and reinforcement features. Figure 10, above, shows the construction detail of a support strut 58. Ex. 1004, 15:45. Specifically, Layfield discloses that strut 58 includes “a pair of spaced-apart vertical members 160, which are braced by horizontal cross-members 162” and “reinforcing rectangular lattice 170.” Id. at 15:46– 54. Thus, we agree with Patent Owner’s argument that “Layfield does not expressly teach that the ‘support struts 58’ are ‘resilient.’” PO Resp. 42 (citing Ex. 2001 ¶¶ 148–149). We reiterate that Petitioner’s first challenge is based on anticipation. Thus, Petitioner must show that resilient struts are “either expressly or inherently described, in” Layfield. Verdegaal Bros. Inc., 814 F.2d at 631; see also PO Resp. 42. In its Reply Brief and at the oral hearing, Petitioner contends that its challenge is based on express disclosure, not inherency. See Pet. Reply 17–18; Tr. 9:21–11:4 (arguing that “this is not a case of inherency”). Petitioner contends one of ordinary skill in the art “would have understood, based upon Layfield’s express disclosures concerning the material, structure, and connection of the strut, that the Layfield strut is resilient and can sustain significant and substantial elastic deformation.” Pet. Reply 18 (citing REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954, 960–61 (Fed. Cir. 2016)). Whether we analyze Petitioner’s argument based on express disclosure or inherency, we reach the same result. To begin, although we agree with Petitioner that a prior art reference “need not satisfy an ipsissimis verbis test” (Pet. Reply 17 (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), there is no express statement that Layfield’s strut is resilient or otherwise exhibits a characteristic synonymous with resiliency. Additionally, we do not agree that Petitioner’s reliance on the thermoplastic materials, disclosed by Layfield for construction of the strut, establishes whether the strut is resilient and capable of elastic deformation. The evidence submitted by the parties is contradictory as to whether one of ordinary skill in the art would have understood Layfield’s struts to be resilient based on the material alone.15 Compare Ex. 1010 ¶¶ 74–82 15 Petitioner also points to a finding by the examiner, during prosecution of the ’017 patent application, that an aluminum strut was resilient, and argues (Mr. Tres opining as to the materials disclosed by Layfield), with Ex. 2001 ¶¶ 160–164 (Dr. Micklow contradicting Mr. Tres’s testimony regarding the materials disclosed by Layfield). Further, the evidence is contradictory as to whether one of ordinary skill in the art would have understood from the design of Layfield’s strut, specifically the taper design and mechanism by which the strut connects to the trailer I-beam, that the strut is resilient. Compare Ex. 1010 ¶¶ 83–90 (Mr. Tres’s testimony regarding the design and connection mechanism), with Ex. 2001 ¶¶ 165–175 (Dr. Micklow’s contradictory testimony). Turning to Petitioner’s video (Ex. 1018), Petitioner asserts testing of commercial versions of the Layfield fairing illustrates what one skilled in the art would have understood from Layfield itself, namely that the Layfield strut is adapted to sustain an elastic deformation when a load is applied to the resilient strut when the skirt panel moves away from the configuration reducing air drag about the trailer and to self-recover the resilient strut original shape when the load is removed. Pet. 29 (citing Ex. 1010 ¶¶ 102–103).16 We afford this evidence little weight for several reasons. First, the video does not show the strut or the bending of a strut. See Ex. 1018. In fact, the only feature shown is a skirt panel attached to a trailer.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Additionally, Patent Owner similarly contends that the modifications proposed are redundant of Layfield’s “flexible lower panel 20,” which already “allow[s] flexing when impacting a road object.” PO Resp. 59 (citing Ex. 1004, 14:13–18); see PO Sur-reply 26–27. We disagree. Again, the proposed modifications here are to Layfield’s struts. In the context of Petitioner’s anticipation challenge, we agreed with Patent Owner and found that Petitioner had not established sufficiently on the record that Layfield’s struts were resilient. See supra, § II.D.a.i., ii. Therefore, the proposed modification addressed here, to make Layfield’s struts resilient, does not duplicate the objective of Layfield’s flexible lower panel 20 at least because (a) Layfield’s struts are a different structure than lower panel 20 and (b) modification of Layfield’s struts would provide greater impact protection to other panels aside from just lower panel 20. See Pet. Reply 26–27 (One of ordinary skill in the art “would have been motivated to do so because Rinard and Layfield both seek to provide fairing panels with ‘sufficient flexibility’ to bend when encountering objects.” (citing Ex. 1004, 12:67– 13:4; Ex. 1006, 10:43–50; Ex. 1055 ¶ 47)). We determine that Petitioner has shown that one of ordinary skill in the art would have had a reason with rational underpinning to look to other similar types of trailer components that are flexible to make further improvements to Layfield’s design. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Third, Patent Owner contends one of ordinary skill in the art “would not have a reasonable expectation of success at achieving the claimed technology by looking to the vertical supports of Rinard’s air scoops to modify the Layfield skirt panels 10 and support struts 58.” PO Resp. 61 (citing Ex. 2001 ¶¶ 237–240). Patent Owner asserts that because Layfield’s upper skirt panels are rigid and non-moving one of ordinary skill in the art “would not reasonably expect the hypothetical modified panels (with their reinforcing trusses 36) to move.” Id. Patent Owner also argues that Rinard teaches “an upper skirt panel that is rigid and non-moving” and so it is not reasonable to expect modifying Layfield as proposed would somehow cause Layfield’s fixed skirt panels to be able to move as claimed. PO Sur-reply 27–28 (citations omitted). We disagree for the same reasons discussed above—namely, we find Layfield’s upper skirt panels to be resilient. Therefore, one of ordinary skill in the art would have a reasonable expectation of success in achieving a resilient strut adapted as claimed by modifying Layfield’s strut in light of Rinard, for the reasons proposed by Petitioner. See Pet. Reply 27 (“Applying this solution to the Layfield skirt panel and struts would yield the predictable result of allowing the Layfield skirt panel 10 and struts 58 to absorb greater impacts without having to be repaired or replaced.” (citing Ex. 1021, 7–8, 11–12)).” slip op. at 42
Patent outcomesUS 8,449,017 mixed§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,449,017
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.