• Sdi Technologies, Inc. v. Bose Corp.All claims unpatentable
  PTAB · Nov 7, 2014 · IPR2013-00465 · APJ David C Mckone · IPR · Final written decision

  Claims 1–21, 24, 27, 29–47, 50, 63, 64, 68–70, 73, 74, 77, and 78 are unpatentable under §103 over WinAmp, Irman Web Pages, Altec Lansing Manual, and, for some claims, Looney.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “standard affidavit from the Internet Archive would have provided sufficient authentication. See Tr. 87:4–21. The Internet Archive’s standard affidavit, however, merely attests to the general procedures of the Internet Archive and the general characteristics of archived web pages on the Wayback Machine and states that the particular web page is part of its records. Ex. 3004. As Petitioner points out, however, we can follow the URL reproduced in Irman Web Pages and verify that Irman Web Pages is part of the Internet Archive’s records. Pet. Opp. to Mot. to Exclude 8. Thus, Patent Owner’s argument reduces to the contention that Petitioner has not provided an affidavit from Internet Archive attesting to its general procedures. As the Keystone case explains, “[t]he Internet Archive has existed since 1996, and federal courts have regularly accepted evidence from the Internet Archive.” 2011 WL 6436210, at *9 n.9. At the hearing, counsel for Patent Owner was asked to explain why we should consider Irman Web Pages unreliable, and, specifically, why we should consider unreliable the indication that Irman Web Pages was archived on May 8, 1999. Tr. 81:13–22; 82:21–83:9; 85:13–86:9; see also Fed. R. Evid. 807. Patent Owner did not articulate anything about the document itself that would indicate unreliability. Instead, as indicated above, Patent Owner essentially contends that Petitioner committed a technical violation of the Rules of Evidence by not obtaining a standard affidavit from Internet Archive to show that “the web contents [were] available on that particular date.” See Tr. 83:1–2; 85:13– 86:9. Such an affidavit would not have added materially to the record for the reasons outlined above. Petitioner shows that the date on the Irman Web Pages facially appears authentic and is authenticated further by accessing the website. Patent Owner has not carried the burden on its motion to show that Irman Web Pages is not authentic. Therefore, we deny Patent Owner’s Motion to Exclude, with respect to Irman Web Pages.” slip op. at 15

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “[t]o reach a non-hindsight driven conclusion as to whether a person having ordinary skill in the art at the time of the invention would have viewed the subject matter as a whole to have been obvious in view of multiple references, the Board must provide some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). Thus, the issue is not whether Dr. Lippman described combinations of the references that would not have rendered the claims obvious; instead, the issue is whether Dr. Lippman provided a reason, with rational underpinning, for combining the references in the way he proposes. Cf. id at 988 (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). 5 For the reasons stated below, we disagree with Patent Owner’s argument. Moreover, Patent Owner has not persuaded us that testimony suffering from hindsight bias should be excluded as inadmissible. Rather, that would go to the weight we give to the testimony. Thus, we deny Patent Owner’s Motion to Exclude with respect to ¶¶ 39–44 of Dr. Lippman’s testimony. Dr. Lippman testified that a skilled artisan would have made the proposed combination “in order to reduce duplication and clutter, such that one remote would control both the speaker and the computer and using the IR receiver positioned in the speaker.” Ex. 1017 ¶ 41. We conclude that this reason has rational underpinning. Moreover, as explained in the Decision to Institute (Dec. 24–25), adding Patent Owner’s proposed combinations to Petitioner’s proposed combination renders the latter no more than an obvious selection from a finite number (here, three) of predictable solutions. The Federal Circuit has distinguished between circumstances where the challenger of a patent “merely throws metaphorical darts at a board filled with combinatorial prior art possibilities,” which is vulnerable to hindsight bias, and circumstances “where a skilled artisan merely pursues ‘known options’ from a ‘finite number of identified, predictable solutions,’” which evidences obviousness. In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (quoting KSR, 550 U.S. at 421). We conclude that this case falls into the latter category. Patent Owner’s two combinations and Petitioner’s combination together constitute three rearrangements of the same elements, where each of those combinations is a predictable use of the elements for their intended purposes. Precisely how to arrange these known elements would have been an obvious matter of design choice. See also Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1331 (Fed. Cir. 2009) (“As the Supreme Court explained, if trying such a limited number of solutions ‘leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.’” (quoting KSR, 550 U.S. at 421)).” slip op. at 22

  • Prior constructionPrior construction adoptedDecided for patent owner

    “term is necessary. Reply 3. Nevertheless, Petitioner argues that “[t]he claims . . . mean that the assemblages are based on types of metadata (for example, artist, album, genre, etc.), not the metadata (‘The Beatles,’ ‘Abby Road,’ ‘Here Comes the Sun,’ ‘Rock’) itself.” Id. at 11. In essence, Petitioner argues that the claims are directed to assemblages of files based on categories that might be included in metadata, although the files themselves might not include metadata. Petitioner’s position is contrary to the plain language of the claims, which recites that an assemblage is “based on . . . a first type of metadata included in the music files.” Moreover, consistent with the claim language, the ’295 patent describes creating assemblages from metadata contained within the files that store the audio data: A second type of assemblage includes recorded units with common identifying characteristics, sometimes referred to as common “metadata” values. “Metadata” values are typically in file header information of music files in many popular music file formats. Metadata values may include the artist, the composer, the type of music, and others. . . . For example, if an assemblage contains music files having a common composer metadata value of “Beethoven”, each time the assemblage is requested, a computer database program may search all the music files for the metadata value of “Beethoven” as the composer. In this manner, each time a new music file is recorded with “Beethoven” as the composer, it is automatically added to the assemblage. Ex. 1001, col. 7, ll. 21–44. In light of the claim language and the description in the specification, and consistent with the district court in the ’682/’295 patent litigation, we construe “an assemblage of music files based on a first type of metadata included in the music files” to mean “a first group of music files that is based on a first type of metadata that is located in the music file, which may be in the file header or elsewhere in the file.” We recognize the differences in the claim construction framework employed by district courts, but nevertheless are persuaded that the district court’s construction is the broadest reasonable interpretation.” slip op. at 11

  • Skill levelOther

    “B. The Level of Ordinary Skill in the Art The declarants for Petitioner and Patent Owner essentially agree that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering and several years (e.g., three years) of experience with audio systems. Compare Declaration of Andrew B. Lippman (Ex. 1017, “Lippman Decl.”) ¶ 19, with Declaration of Dr. Robert L. Stevenson (Ex. 2026, “Stevenson Decl.”) ¶ 20.” slip op. at 12

  Patent outcomesUS 8,364,295 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,364,295
• Sdi Technologies, Inc. v. Bose CorporationAll claims unpatentable
  PTAB · Nov 7, 2014 · IPR2013-00350 · APJ David C Mckone · IPR · Final written decision

  Claims 1–21, 24, 27, 28, 30–48, 51, 54, 62, 63, 67–70, 73, 74, and 76 are unpatentable as obvious under §103.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedGranted in part

    “from the Wayback Machine were found to be authenticated and not hearsay, the party proffering the printouts also offered proof of its accessibility. PO Mot. to Exclude 8–9. At the hearing, Patent Owner clarified that a standard affidavit from the Internet Archive would have provided sufficient authentication. See Tr. 87:4–21. The Internet Archive’s standard affidavit, however, merely attests to the general procedures of the Internet Archive and the general characteristics of archived web pages on the Wayback Machine and states that the particular web page is part of its records. Ex. 3004. As Petitioner points out, however, we can follow the URL reproduced in Irman Web Pages and verify that Irman Web Pages is part of the Internet Archive’s records. Pet. Opp. to Mot. to Exclude 8. Thus, Patent Owner’s argument reduces to the contention that Petitioner has not provided an affidavit from Internet Archive attesting to its general procedures. As the Keystone case explains, “[t]he Internet Archive has existed since 1996, and federal courts have regularly accepted evidence from the Internet Archive.” 2011 WL 6436210, at *9 n.9. At the hearing, counsel for Patent Owner was asked to explain why we should consider Irman Web Pages unreliable, and, specifically, why we should consider unreliable the indication that Irman Web Pages was archived on May 8, 1999. Tr. 81:13–22; 82:21–83:9; 85:13–86:9; see also Fed. R. Evid. 807. Patent Owner did not articulate anything about the document itself that would indicate unreliability. Instead, as indicated above, Patent Owner essentially contends that Petitioner committed a technical violation of the Rules of Evidence by not obtaining a standard affidavit from Internet Archive to show that “the web contents [were] available on that particular date.” See Tr. 83:1–2; 85:13– 86:9. Such an affidavit would not have added materially to the record for the reasons outlined above. Petitioner shows that the date on the Irman Web Pages facially appears authentic and is authenticated further by accessing the website. Patent Owner has not carried the burden on its motion to show that Irman Web Pages is not authentic. Therefore, we deny Patent Owner’s Motion to Exclude, with respect to Irman Web Pages.” slip op. at 17

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

    “construing “audio signal processing circuitry” to include amplifiers would render these two claims identical in scope. Petitioner points out, however, that, if audio signal processing circuitry includes amplifiers, it would be broader in scope than amplifiers, rather than commensurate in scope, rendering claim differentiation inapplicable. Reply 3. We agree with Petitioner; the doctrine of claim differentiation is not applicable here. Thus, we are persuaded that the claimed audio signal processing circuitry may include amplifiers. Further, Patent Owner’s additional arguments are unavailing. Patent Owner argues that the specification of the ’682 patent describes audio signal processing circuitry separately from powered speakers and that the specification uses the term audio signal processing circuitry to refer to techniques, such as bass and treble adjustments, used to modify an audio signal. PO Resp. 11–12 (citing the testimony of its declarant, Dr. Robert Stevenson, Ex. 2026 ¶¶ 78–81). The specification, however, does not distinguish between audio signal processing circuitry and powered speakers. Rather, the patent refers to a powered speaker as an abstract logical unit, while providing a more detailed description of a powered speaker that includes such features as audio signal processing circuitry 14, control electronics circuitry 16, and electroacoustical transducer 18. Ex. 1001, col. 3, ll. 28–35. In any event, Patent Owner has pointed to no disclosure that distinguishes amplifiers from audio signal processing circuitry.” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for patent owner

    “In light of the claim language and the description in the specification, and consistent with the district court in the ’682/’295 patent litigation, we construe “an assemblage of music files based on a first type of metadata included in the music files” to mean “a first group of music files that is based on a first type of metadata that is located in the music file, which may be in the file header or elsewhere in the file.” We recognize the differences in the claim construction framework employed by district courts, but nevertheless are persuaded that the district court’s construction is the broadest reasonable interpretation.” slip op. at 14

  • Skill levelOther

    “B. The Level of Ordinary Skill in the Art The declarants for Petitioner and Patent Owner essentially agree that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering and several years (e.g., three years) of experience with audio systems. Compare Declaration of Andrew B. Lippman (Ex. 1017, “Lippman Decl.”) ¶ 19, with Stevenson Decl., Ex. 2026 ¶ 20.” slip op. at 15

  Patent outcomesUS 8,401,682 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,401,682
• Symantec Corporation v. Rpost Communications LimitedAdverse judgment
  PTAB · Nov 7, 2014 · IPR2014-00357 · APJ Thomas L Giannetti · IPR · Adverse judgment

  The Board entered adverse judgment against Patent Owner after it cancelled claims 9–20, the only claims instituted for review.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Here, Patent Owner has cancelled each claim for which inter partes review has been instituted, and thus Patent Owner has no remaining claim in the trial. Id. § 42.73(b)(2). Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the claims as requested is appropriate.” slip op. at 2

  None
  Patents in suitUS 8,468,199
• Canon Inc. v. Intellectual Ventures I LLCRehearing denied
  PTAB · Nov 5, 2014 · IPR2014-00537 · APJ James A Tartal · IPR · Rehearing

  The Board denied Canon’s rehearing requests, finding no overlooked or misapprehended matter in declining to institute review of claims 1–31 in IPR2014-00536 and IPR2014-00537.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. 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, opposition, or a reply.” slip op. at 2

  • Other 314aInstitution denied discretionary otherInstitution denied

    “and IPR537 we relied on 35 U.S.C. §315(d) and 37 C.F.R. §42.1, but “misapprehended” the applicability of each of those provisions to Petitioner’s multiple Petitions. (Paper 10, 5 in both cases.) Petitioner’s argument is unavailing as we did not base our decision on those cited provisions. Instead, we based our decision on 35 U.S.C. §314(a) and 37 C.F.R. § 42.108(b). Thus, our Decision states: We decline to institute an inter partes review of claims 1–31 on the grounds Petitioner advances based on Kaneko or Chizawa in IPR2014- 00536, and Hayashi in IPR2014-00537. See 35 U.S.C. §314(a); 37 C.F.R. § 42.108(b). Paper 9, 19. Although we also stated that our Decision was “consistent with the authority granted under 35 U.S.C. §315(d),” and with “the objective” of 37 C.F.R. § 42.1, we did not rely upon those provisions.” slip op. at 3

  Discretionary denial
  Patents in suitUS 7,315,406
• Canon Inc. v. Intellectual Ventures I LLCRehearing denied
  PTAB · Nov 5, 2014 · IPR2014-00536 · APJ James A Tartal · IPR · Rehearing

  The Board denied Canon’s rehearing request, leaving in place the denial of institution on claims 1–31 in IPR2014-00536 and IPR2014-00537 under § 314(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. 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, opposition, or a reply.” slip op. at 2

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

    “and IPR537 we relied on 35 U.S.C. §315(d) and 37 C.F.R. §42.1, but “misapprehended” the applicability of each of those provisions to Petitioner’s multiple Petitions. (Paper 10, 5 in both cases.) Petitioner’s argument is unavailing as we did not base our decision on those cited provisions. Instead, we based our decision on 35 U.S.C. §314(a) and 37 C.F.R. § 42.108(b). Thus, our Decision states: We decline to institute an inter partes review of claims 1–31 on the grounds Petitioner advances based on Kaneko or Chizawa in IPR2014- 00536, and Hayashi in IPR2014-00537. See 35 U.S.C. §314(a); 37 C.F.R. § 42.108(b). Paper 9, 19. Although we also stated that our Decision was “consistent with the authority granted under 35 U.S.C. §315(d),” and with “the objective” of 37 C.F.R. § 42.1, we did not rely upon those provisions. Petitioner recognizes that “[c]iting to 35 U.S.C. §314(a), the Board asserted that Congress has ‘given the Office discretion whether to institute a review, or not institute a review.’” (Paper 10, 4 in each case.) Petitioner, however, makes no argument that we misapprehended 35 U.S.C. §314(a), and makes no mention of 37 C.F.R. § 42.108(b). That rule provides that “the Board may deny some or all grounds for unpatentability for some or all of the challenged claims.”” slip op. at 3

  None
  Patents in suitUS 7,315,406
• Oracle Corporation / Oracle Otc Subsidiary LLC et al. v. Click-To-Call Technologies LPAll claims unpatentable
  PTAB · Oct 28, 2014 · IPR2013-00312 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30 are unpatentable over Dezonno alone or with Mosaic Handbook.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Request for Rehearing, both the Federal Rules of Civil Procedure and Federal Circuit precedent treat a dismissal without prejudice as something that, de jure, never existed. Dec. 16–17; Paper 40, 4. It is undisputed that the patent infringement suit filed by Inforocket against Keen—now YP Interactive LLC—on June 8, 2001, was dismissed without prejudice on March 21, 2003. Ex. 1019, 1; Ex. 1017, 4; Ex. 1018, 8. We have determined that, because this patent infringement suit was dismissed without prejudice, Federal Circuit precedent interprets such a dismissal as leaving the parties in the same legal position as if the underlying complaint had never been served. See Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002); Bonneville Assoc., Ltd. P’ship v. Baram, 165 F.3d 1360, 1364 (Fed. Cir. 1999). Accord 9 WRIGHT, MILLER, KANE, and MARCUS, FEDERAL PRAC. & PROC. CIV. § 2367 (3d. ed.). As a consequence, YP Interactive LLC is not barred from pursuing an inter partes review of the ’836 patent under § 315(b).” slip op. at 12

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached

    “Even if we were to agree with CTC that there is sufficient evidence to corroborate Mr. DuVal’s testimony that he conceived of the claimed invention of the ’836 patent prior to April 21, 1995, as we will discuss below, CTC does not provide sufficient evidence to corroborate Mr. DuVal’s testimony that there was a continuous exercise of reasonable diligence during the entire critical period. Consequently, we need not reach and, therefore, do not address conception.” slip op. at 17

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

    “evidence presented by Oracle in its Petition for the grounds of unpatentability based, in whole or in part, on Dezonno (Pet. 15–33; Ex. 1007 ¶¶ 11–17), we are persuaded that Oracle presents sufficient evidence to support a finding that Dezonno, either standing alone or in combination with Mosaic Handbook, discloses the claimed subject matter recited in claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30. We also are persuaded that Oracle provides an articulated reason with a rational underpinning to combine the teachings of Dezonno and Mosaic Handbook. Pet. 32–33; Ex. 1007 ¶ 17. Therefore, based on the record before us, we conclude that Oracle has demonstrated by a preponderance of the evidence that: (1) claims 1, 2, 12, 13, 19, 22, 23, 26, 29, and 30 are anticipated by Dezonno; (2) claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30 are obvious over Dezonno; and (3) claims 22 and 29 are obvious over the combination of Dezonno and Mosaic Handbook.” slip op. at 26

  • BurdenFwd all claims unpatentableUnpatentable

    “corroborate Mr. DuVal’s testimony does not demonstrate a continuous exercise of reasonable diligence during the entire critical period with respect to either constructive reduction to practice or actual reduction to practice, particularly during the time period between May 15, 1995, and June 15, 1995. As a result, CTC has not antedated Dezonno, which, in turn, qualifies as prior art to the ’836 patent under 35 U.S.C. § 102(e).” slip op. at 26

  Patent outcomesUS 5,818,836 unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 5,818,836
• Athena Automation Ltd. v. Husky Injection Molding Systems Ltd.Some claims unpatentable
  PTAB · Oct 23, 2014 · IPR2013-00290 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 4–16, and 20–22 are unpatentable as anticipated by Arend; claims 2, 3, 17, and 19 were not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

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

    “We agree with Petitioner. We are not persuaded that the ’536 patent limits the required movement of the “rod that is movable” to axial movement of the entire rod. For its proposed construction, Patent Owner relies on figures and description from the ’536 patent that are explicitly described as exemplary embodiment or embodiments. PO Resp. 21 (citing Ex. 1001, Fig. 6C, 7B, 8B, 12:59–64); PO Resp. 26 (citing Ex. 1001, Fig. 7A, 10:26–30, 13:30–37). The ’536 patent, however, clearly identifies Figure 7A (and the rest of the figures), as well as the corresponding description, as exemplary embodiments of the invention, stating explicitly that “[r]eference herein to details of the illustrated embodiments is not intended to limit the scope of the claims.” Ex. 1001, 16:4–8; see also 7:20–25. The testimony of Patent Owner’s declarant, George Markus, is based on these same portions of the ’536 patent that describe exemplary embodiments. Ex. 2009 ¶¶ 34–38. Patent Owner does not, however, point us to any language of the ’536 patent that evidences a clear intention to limit the claims to an exemplary embodiment. Thus, we are not persuaded that the language in the specification pointed to by Patent Owner limits the scope of the term at issue here. See, e.g. Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”); DSW v. Shoe Pavilion, 537 F.3d 1342, 1348 (Fed. Cir. 2008) (“[W]hen claim language is broader than the preferred embodiment, it is well-settled that claims are not to be confined to that embodiment.”).” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner

    “We agree with Petitioner that Patent Owner’s proposed modifications improperly limit the claim terms. See Reply 6–9. Petitioner asserts, and we agree, that while the patent discloses that it is preferable to engage the lock member teeth in a lower flex zone, it does not restrict the invention to that situation. Id. at 7. For example, Mr. Markus admits that there is some benefit of reduced wear even if only some, but not all, of the teeth of the lock members engage in the relatively lower flex zone. Id. (citing deposition testimony of Patent Owner’s expert, Mr. Markus, Ex. 1011, 219:14–22, 222:2–12; 224:7–11, 225:12–25). Thus, a broader interpretation of the term “relatively higher flex zone” is also consistent with the ’536 patent’s stated objection to reduce wear. Even more telling, the ’536 patent itself states, in its description of an exemplary embodiment, “the complementary lock member 512 is lockably engaged with the lock member 510 at a position that is proximate, at least in part, to the zone 514.” Ex. 1001, 14:11–16 (emphasis added). We, therefore, are not persuaded that the ’536 patent “specifically disavows” engagement outside the relatively higher flex zone, as asserted by Patent Owner. See PO Resp. 36–37. To the contrary, we are persuaded that the ’536 patent explicitly contemplates that the teeth may, at least in part, not engage within the relatively higher flex zone. We also agree with Petitioner that the claim language does not require comparison of adjacent flex zones. Id. (citing Ex. 1011, 227:10–24, 230:10–231:3). While the word adjacent is recited in the claims (e.g., “the relatively lower flex zone of the platen being a portion of the platen adjacent to the rod”) it refers to a flex zone being adjacent the rod, not another flex zone. See Ex. 1011, 227:10–24. Patent Owner’s reliance on Figure 8D as supporting the proposed restriction does not persuade us otherwise. As discussed above, Figure 8D describes an exemplary embodiment, and Patent Owner does not point to any language indicating that the claims should be limited to this embodiment. We also are not persuaded by Patent Owner’s unexplained and unsupported statement that “[o]nly by comparing zones that are adjacent, can such location of the engagement [in the lower flex zone] be accurately pinpointed.” PO Resp. 38 (citing Ex. 2009 ¶¶ 45–47).5” slip op. at 22

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “member is engagable with the lock member within a relatively lower flex zone of the platen” (“the engagement limitation”).6 In the Decision to Institute, we adopted a broadest reasonable construction of this term encompassing the situation in which the complementary lock member and the lock member are capable of interlocking or meshing at least in part within or proximate to a relatively lower flex zone of the platen. Dec. to Inst. 10–12. Neither party explicitly addresses the broadest reasonable determine which is the relatively high flex zone and which is the relatively low flex zone.”). The other cited paragraphs are not related to the statement they are cited to support. See id. ¶¶ 46–47. Nor could we find, upon review of the complete declaration, any other support for Patent Owner’s assertion. 6 Independent claims 1 and 12 recite this limitation as quoted. Independent claim 18 includes a similar limitation, “engaging a lock member associated with the rod with a complementary lock member associated with the platen at a position located proximate to a relatively lower flex zone of the platen.” construction of this claim term in their post-institution briefing. We conclude that no additional construction of the term is necessary.” slip op. at 24

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

    “reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (internal quotation marks omitted). Accordingly, an anticipatory reference must show all of the limitations of the claims “arranged or combined in the same way as recited in the claims.” Id. at 1370; see Finisar Corp. v DirecTV Group, Inc., 523 F.3d 1323, 1334–37 (Fed. Cir. 2008); Ecolochem, Inc. v. Southern California Edison Co., 227 F.3d 1361 (Fed. Cir. 2000). Petitioner asserts that Choi’s teeth 38 correspond to the claimed lock member, teeth 48 correspond to the claimed complementary lock member, and tie bar 20 corresponds to the claimed rod. Pet. 36. In addition, according to Petitioner, Choi’s securing/clamping assembly 22 corresponds to the claimed clamp assembly. Id. Petitioner reasons that these elements of Choi are part of the machine disclosed in Glaesener because of the following sentence: “The tie-bar nuts can be secured to the rear wall 16 by any appropriate mechanism, such as the pineapple and toothed-ring mechanism described in [Choi].” Pet. 25, 36. Petitioner, however, does not explain how the relied upon elements of Choi’s device secure the tie-bar nuts of Glaesener to rear wall 16 of Glaesener’s platen. In fact, Petitioner does not direct us to any disclosure in Choi of tie-bar nuts or their equivalent. See Pet. 32–41. Moreover, there is no dispute that Choi does not use the term “pineapple and toothed-ring mechanism.” Tr. 16:7–10. And Petitioner does not provide persuasive evidence as to what part of Choi is included in the term “pineapple and toothed-ring mechanism.” See Tr. 16:7–12 (arguing for the first time that what “pineapple and tooth mechanism” in Glaesener refers to is Figure 3A in Choi with no reference to the record); Tr. 60:14–22 (explaining that Petitioner does not provide evidence of what the pineapple and toothed-ring mechanism is). Without such explanation and supporting evidence, we are not persuaded that Petitioner has met its burden to show that the various portions of Choi and Glaesener, on which it relies, are combined in the same way as recited in the challenged claims. See Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984) (holding that although the prior art reference could be said to contain all of the elements of the claimed invention, it did not anticipate under 35 U.S.C. § 102 because it “disclose[d] an entirely different device, composed of parts distinct from those of the claimed invention, and operating in a different way to process different material differently.”). The Federal Circuit has expressly warned against treating patent “claims as mere catalogs of separate parts” without regard for the “part-to-part relationships set forth” therein. NetMoneyIN, 545 F.3d at 1370 (quoting Lindemann, 730 F.2d at 1459).” slip op. at 30

  Patent outcomesUS 7,670,536 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,670,536
• Sipnet Eu S.R.O. v. Straight Path IP Group, Inc.All claims unpatentable
  PTAB · Oct 9, 2014 · IPR2013-00246 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1–7 and 32–42 are unpatentable: claims 1–7, 32, and 38–42 as anticipated by NetBIOS; claims 1–7 and 32–42 as anticipated by WINS; and claims 33–37 as obvious over both.

  RulingsFinal written decision

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

    “in-interest. Whether a non-party is a “real party-in-interest” or “privy” for purposes of an inter partes review proceeding is a “highly fact-dependent question” that takes into account how courts generally have used the terms to “describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion.” Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,759. Whether parties are real parties-in-interest or in privity, for instance, depends on whether the relationship between the party and its alleged real party-in-interest or privy is “sufficiently close such that both should be bound by the trial outcome and related estoppels.” Id. A number of factors may be relevant to the analysis, including whether the non-party “exercised or could have exercised control over a party’s participation in a proceeding,” and whether the non-party is responsible for funding and directing the proceeding. Id. “The concept of control generally means that ‘it should be enough that the nonparty has the actual measure of control or opportunity to control that might reasonably be expected between two formal coparties.’” Id. (quoting 18A C. Wright, A. Miller & E. Cooper, Federal Practice & Procedure § 4451 (2d ed. 2011)). Patent Owner has not demonstrated that Stalker Software exercised or could have exercised control over Petitioner’s participation in this proceeding. The evidence of record establishes only that Stalker Software provided the WINS reference, at the request of Petitioner. Pet. Reply 1; Tr. 28:3-9. This alone is insufficient to demonstrate that Stalker Software exercised, or could have exercised, control over Petitioner’s participation in this proceeding. Patent Owner’s evidence of the existence of a vendor-reseller relationship between Stalker Software does not demonstrate Stalker Software exercised, or could have exercised, any control. When a patent holder sues a dealer, seller, or distributor of an accused product, the mere payment of counsel fees and minor participation by the vendor in the trial are insufficient to establish privity between the vendor and reseller. Bros, Inc. v. W.E. Grace Mfg. Co., 261 F.2d 428, 430 (5th Cir. 1958); See generally Broadcom Corp. v. Telefonaktiebolaget LM Ericsson, Case IPR2013- 00601, slip op. at 7, 8 (PTAB Jan. 24, 2014) (Paper 23). Patent Owner’s assertions regarding witnesses with connections to both Stalker Software and Petitioner, and Petitioner’s alleged lack of presence in the U.S. market, are statements of counsel unsupported by any record evidence, and, in any event, are not indicative of any control of this proceeding by Stalker Software. Considering the lack of probative evidence submitted by Patent Owner, we are not persuaded that the record establishes that Stalker Software is a real party-in-interest. Accordingly, we are” slip op. at 11

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

    “We agree with Petitioner that “connected to the computer network” encompasses being “on-line,” which can be done by registering an address with the server. The ’704 patent specification and claims do not limit the scope of “connected to the computer network.” Furthermore, the ’704 patent specification discloses “the second processing unit 22, upon connection to the Internet 24 through a connection service provider, is processed by the connection server 26 to be established in the database 34 as an active on-line party.” Ex. 1001, col. 5, ll. 35–38. Thus, the context of “connected to the computer network,” as disclosed in the specification, includes storing the processing unit address by the connection server database, and storing the address establishes the processing unit as active and on-line. This is consistent with the determination in our Initial Decision. Dec. 5–6. Patent Owner has not provided any evidence or rationale sufficient for us to disturb that claim construction. Furthermore, Patent Owner and Dr. Ketan Mayer-Patel agree that a second processing unit is “active and on-line at registration.” PO Resp. 26; Ex. 2018 ¶ 22. Although Patent Owner argues that a process “being online” does not encompass registering an address because the process “may subsequently go off-line” (PO Resp. 26), Patent Owner has not provided any persuasive rationale or evidence to demonstrate that the limitation “connected to the computer network,” or any other claim limitation, requires a specified duration of time that a processing unit is “active and on-line.” Accordingly, we are not persuaded that the proper scope of the limitation “connected to the computer network” precludes a processing unit that is “active and on-line” but “may subsequently go off-line.” Therefore, under the broadest reasonable construction, “connected to the computer network” encompasses a processing unit that is “active and on-line at registration.”” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner

    “We are persuaded that Petitioner has established WINS as prior art. We are persuaded that WINS was publically available in 1994. Mr. Kolesnikov testifies to seeing printed copies of WINS and the CD version in 1994. Ex. 1017 ¶ 7. Mr. Kolesnikov further testifies he recalls seeing printed copies of WINS during installations he did for clients in 1994, and is certain that it was 1994 because he had switched jobs in 1995. Ex. 2043, 29:1–10, 32:21–22. Additionally, we are persuaded that the portions of WINS relied upon by Petitioner are different from the CD version due to formatting only. Tr. 23:1 – 25:8. Patent Owner’s argument consists of alleging that Petitioner has failed to establish that WINS was publically available and does not offer any evidence contrary to that presented by Petitioner. Based on the evidence discussed above, we are persuaded that Petitioner has established that WINS is prior art.” slip op. at 20

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

    “Patent Owner’s argument that “the name may remain registered even after the computer that registered it is later disconnected from the network” is not persuasive because the scope of the claims does not require any specific time “later” that the second process must be “on-line and active.” As discussed above our claim construction of “connected to the computer network” encompasses a second process that is “on-line” by registering an address with the server. As also discussed above, such constructions for “connected to the computer network” and “determining the on-line status of the second process” are consistent with the ʼ704 patent, which specifies that “the second processing unit 22, upon connection to the Internet 24 through a connection service provider, is processed by the connection server 26 to be established in the database 34 as an active on-line party.” Ex. 1001, col. 5, ll. 35–38. Furthermore, Patent Owner and Dr. Ketan Mayer-Patel agree that a second processing unit is “active and on-line at registration.” PO Resp. 26; Ex. 2018 ¶ 22. In other words, Patent Owner and Dr. Ketan Mayer-Patel agree that NetBIOS discloses, at one point in time, a query or determination for a second processes’ address is the same as a query or determination as to whether the second process is “active and on-line.” See PO Resp. 26; Ex. 2018 ¶ 22. NetBIOS describes that at the time of registration, a query or determination for a second processing unit’s address indicates a second processing unit is “active and on-line.” Patent Owner also argues that NetBIOS fails to teach “dynamic address allocation,” as required by the claims. PO Resp. 50–54. As discussed above, Patent Owner argues that the claims require that an address be assigned “following connection to the computer network” and, by definition, this is dynamic address allocation. Id. at 52 (citing Ex. 2018 ¶¶ 24, 26). Petitioner argues that “dynamic address allocation” is anticipated by NetBIOS, and Patent Owner does not dispute that WINS anticipates dynamic address assignment to computers, as discussed below. Pet. Reply 12. We are not persuaded by Patent Owner’s argument. As discussed above in our claim construction of “following connection to the computer network,” we do not construe the claims 1–4, 32, and 38–42 as requiring “dynamic address allocation.” Accordingly, Patent Owner’s argument that NetBIOS fails to teach “dynamic address allocation” does not persuade us that NetBIOS fails to anticipate claims 1–4, 32, and 38–42.” slip op. at 14

  Patent outcomesUS 6,108,704 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,108,704
• K-40 Electronics, LLC v. Escort, Inc.Some claims unpatentable
  PTAB · Sep 29, 2014 · IPR2013-00240 · APJ Trenton A Ward · IPR · Final written decision

  Claims 1–6, 11–12, 15–18, 22–33, 41–72, and 74–85 are unpatentable; claims 36–38 were not shown unpatentable, because the prior art did not establish their continuous-signal location tracking limitation.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “In order to establish an actual reduction to practice, [a party] must establish three things: ‘(1) construct[ion of] an embodiment or perform[ance of] a process that met all the [claim] limitations [ ]; [ ](2) . . . determin[ation] that the invention would work for its intended purpose,’” and “(3) the existence of sufficient evidence to corroborate inventor testimony regarding these events.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006) (quoting Cooper v. Goldfarb, 154 F.3d 1321, 1327, 1330 (Fed. Cir. 1998)). “A ‘rule of reason’ analysis is applied to determine whether the inventor’s prior conception testimony has been corroborated.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Here, the only evidence of the successful reduction to practice of the claimed invention for its intended purpose prior to January 27, 1998 is the testimony of the inventor, Mr. Orr. “It has long been the case that an inventor’s allegations of earlier invention alone are insufficient—an alleged date of invention must be corroborated.” In re NTP, Inc., 654 F.3d at 1291 (citing Medichem, 437 F.3d at 1170; Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998)). We conclude that the record is lacking sufficient evidence corroborating Mr. Orr’s testimony, which alone is insufficient. In view of the foregoing, we determine that Patent Owner has failed to prove by a preponderance of the evidence its claim of reduction to practice of the claims 1–6, 15–16, 22–29, 33, 41–52, 54–66, 68–72, 75, 77–83, and 85 of the ’905 patent prior to January 27, 1998. Therefore, Hoffberg and Fleming, III are prior art to the ’905 patent.” slip op. at 17

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

    “forth in the challenged claims of related U.S. Patent No. 7,999,721 at issue in IPR2013–00203. For the same reasons set forth in the ’203 Decision at pages 6–8, we are not persuaded by Patent Owner’s argument that “correlates to a police signal” should be construed to mean an undefined determination made by comparing a received signal to the attributes of actual police signals. Accordingly, we construe “provide an alert if a received electromagnetic signal correlates to a police signal” as “provide an alert if a received electromagnetic signal correlates to one or more characteristics of a police signal.” 2. “position determining circuit” Claim 1 recites “a position determining circuit generating a location signal.” Ex. 1001, col. 25, l. 50 (emphasis added). Independent claims 43 and 68 provide similar recitations regarding a “position determining circuit.” Patent Owner proposes that “position determining circuit” should be construed to mean “a device for receiving information related to geographic locations.” PO Resp. 22. Patent Owner made similar arguments with respect to the “position determining circuit” set forth in the challenged claims of related U.S. Patent No. 7,999,721 at issue in IPR2013–00203. For the same reasons set forth in the ’203 Decision at pages 6–8, we determine that the “position determining circuit” must be involved in determining the position of the device, rather than merely receiving information related to geographic locations of the device, as proposed by Patent Owner. Accordingly, we construe “position determining circuit” as “a circuit for determining a position of a device.”” slip op. at 7

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

    “We are not persuaded by Patent Owner’s arguments because they are not commensurate with the scope of the claims. As discussed above, we construe the phrase “provide an alert if a received electromagnetic signal correlates to a police signal” as “provide an alert if a received electromagnetic signal correlates to one or more characteristics of a police signal.” The ’905 patent Specification describes that this correlation may be implemented based on “any of the techniques” described in the many patents incorporated by reference in the Specification. Ex. 1001, col. 8, ll. 50–56. Therefore, the correlate limitation recited in the independent claims can involve many prior art techniques, such as those disclosed in Hoffberg. For example, Petitioner argues that Hoffberg discloses the use of a “commercially available radar detector.” Pet. Reply 15 (citing Ex. 1002, col. 33, ll. 9–15). More particularly, Hoffberg discloses “an event sensor is provided, such as a police radar and laser speed detection system (e.g., “radar detector”)” to detect signals and determine whether they correlate to a law enforcement signal. Ex. 1002, col. 33, ll. 9–15. We determine, therefore, that Hoffberg discloses the claimed correlating limitation. Based on the evidence presented, we conclude that Petitioner has established by a preponderance of evidence that Hoffberg discloses all limitations of independent claims 1, 43, 54, 68, and 81. Patent Owner does not address dependent claims 2–4, 15, 17–18, 22–24, 28–29, 31–33, 41–42, 44–48, 53, 55–57, 59–60, 64–65, 67, 69–72, 76–80, and 82–84 with separate, specific arguments against the anticipation challenge based on Hoffberg. See PO Resp. 28–38. As to dependent claims 2–4, 15, 17–18, 22–24, 28–29, 31–33, 41–42, 44–48, 53, 55–57, 59–60, 64–65, 67, 69–72, 76–80, and 82–84, Petitioner provides sufficient evidence to show that Hoffberg discloses the additional recited limitations in those claims. Pet. 20–26, 28–32, 34–48. For example, Petitioner argues that the claim 15 limitation that the information associated with geographic locations includes information identifying rejectable signals at a geographic location is met by Hoffberg’s disclosure that “further information is also stored, such as a time of the event, its character or nature, and other quantitative or qualitative aspects.” Pet. 21 (quoting Ex. 1002, col. 18, l. 64–col. 19, l. 4 (emphasis omitted)). In a further example, Petitioner argues that the claim 28 requirement that the police warning receiver include “storage for vehicle history information identifying vehicle activities including geographic locations” is met by Hoffberg’s disclosure that the “memory stores information describing the event as well as the location of the event.” Pet. 29 (quoting Ex. 1002, col. 22, ll. 18–29 (emphasis omitted)).” slip op. at 20

  Patent outcomesUS 6,670,905 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,670,905
• Target Corporation v. Destination Maternity CorporationInstitution denied
  PTAB · Sep 25, 2014 · IPR2014-00509 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution because the petition was filed more than one year after Target was served with an infringement complaint, barring review under § 315(b).

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

    “The instant Petition, accorded a filing date of March 14, 2014, was filed more than one year after Petitioner was served with the complaint alleging infringement of the ’531 patent. See Paper 5. We may not institute an inter partes review when “the petition . . . is filed more than 1 year after the date on which the petitioner, . . . is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Section 315(b) further states this “time limitation . . . shall not apply to a request for joinder under subsection (c).” Id. Thus, it does not apply to a person’s request to “join as a party to that [i.e., a previously instituted] inter partes review.” 35 U.S.C. § 315(c).2 However, the time limitation does apply to that person’s petition.” slip op. at 3

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “filed more than one year after Petitioner was served with the complaint alleging infringement of the ’531 patent. See Paper 5. We may not institute an inter partes review when “the petition . . . is filed more than 1 year after the date on which the petitioner, . . . is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Section 315(b) further states this “time limitation . . . shall not apply to a request for joinder under subsection (c).” Id. Thus, it does not apply to a person’s request to “join as a party to that [i.e., a previously instituted] inter partes review.” 35 U.S.C. § 315(c).2 However, the time limitation does apply to that person’s petition.” slip op. at 3

  Discretionary denial

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.