- PTAB · Dec 28, 2016 · IPR2015-01037 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing in both proceedings because Petitioner did not show that Su was publicly accessible by the critical date or that the Board overlooked or misapprehended a petition argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner fails to recognize that our Decision was based on Petitioner’s failure to present sufficient evidence of public accessibility. Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“The sole evidence cited in the Petition is a print-out of a record created in 2008 by Theses Canada. Ex. 1013 (“TH-Su”). As we noted in our Decision Denying Institution, TH-Su includes an active PDF link to Su, identifies Su as resident on two microfiches, indicates the publisher is the Ottawa: National Library of Canada [1999], and includes an abstract. Dec. Denying Inst. 7. TH-Su also includes an AMICUS No. (20672380)1, an international standard book number (ISBN 0612312569), a Canadian Number (992099080) and the following information “Copies: NL Stacks – Mic. TJ- 31256.” Id. at 7-8. However, TH-Su is a document created and modified on July 18, 2008, not in 1999. Id. at 7–8. Petitioner failed to tie 3 We agree with Petitioner’s assertion that it did not concede any of the argument set forth in Patent Owner’s Preliminary Response. Req. Reh’g. 6, fn 4. However, our inquiry during the conference of August 4, 2016 concerned facts and evidence. any of these numerical designations in TH-Su to public accessibility prior to 2008. Thus, Petitioner failed to meet its burden to demonstrate that Su was publically accessible in 1999.” slip op. at 4
§ 102 anticipationPatents in suitUS 8,122,141 - PTAB · Dec 28, 2016 · IPR2015-01033 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing of the institution denials because Petitioner did not show that Su was publicly accessible before the patents’ critical dates.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. 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 reply. Id. For the reasons discussed below, the Request for Rehearing is DENIED.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Petitioner’s failure to present sufficient evidence of public accessibility. Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).” slip op. at 3
§ 102 anticipationPatents in suitUS 8,327,011 - Unified Patents Inc. v. William GreciaRehearing deniedPTAB · Nov 29, 2016 · IPR2016-00789 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Unified Patents’ rehearing request, leaving in place the denial of institution because the petition did not sufficiently show the claimed token correspondence or GUI and API.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 4 Wieder, U.S. Patent No. 8,001,612 B1, issued Aug. 16, 2011 (Ex. 1007). 5 Wiser, U.S. Patent No. 6,385,596 B1, issued May 7, 2002 (Ex. 1008). 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“a password or e-mail, not just any password or e-mail automatically satisfies the recited membership verification token. To satisfy the recited membership verification token, the password or e-mail must correspond to the digital media, as recited in each of independent claims 1, 12 and 15. See also Inst. Dec. 7 (construing the claim phrase “the request comprising a membership verification token provided by a first user, corresponding to the encrypted digital media” such that the language “corresponding to the encrypted digital media” modifies the membership verification token). This is supported by the specification of the ’555 patent, which teaches that “an identifier for the digital media is stored in a database with another database of a list of associated tokens for cross-reference identification for verification.” Ex. 1001, 8:52–55 (emphasis added); see also id. at 8:19–21 (“Subsequently, the membership verification token is authenticated at step 604. The authentication is performed in connection with a token database.”).” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“a password or e-mail, not just any password or e-mail automatically satisfies the recited membership verification token. To satisfy the recited membership verification token, the password or e-mail must correspond to the digital media, as recited in each of independent claims 1, 12 and 15. See also Inst. Dec. 7 (construing the claim phrase “the request comprising a membership verification token provided by a first user, corresponding to the encrypted digital media” such that the language “corresponding to the encrypted digital media” modifies the membership verification token). This is supported by the specification of the ’555 patent, which teaches that “an identifier for the digital media is stored in a database with another database of a list of associated tokens for cross-reference identification for verification.” Ex. 1001, 8:52–55 (emphasis added); see also id. at 8:19–21 (“Subsequently, the membership verification token is authenticated at step 604. The authentication is performed in connection with a token database.”).” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“the admitted prior art” For the asserted grounds based on DeMello, Petitioner relied on either DeMello or the admitted prior art as teaching the recited “membership verification token . . . corresponding to the encrypted digital media.” Pet. 17–21, 52. For the asserted grounds based on Pestoni, Petitioner relied on either Pestoni or the admitted prior art as teaching the recited “GUI” and “API.” Id. at 33; see id. at 29 (citing Ex. 1009, Exhibit D). We denied institution of these asserted grounds because we were not persuaded by Petitioner’s arguments regarding the teachings of DeMello or Pestoni, either alone or in combination with the admitted prior art. slip op. at 3
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,402,555 - Unified Patents Inc. v. William GreciaRehearing deniedPTAB · Nov 22, 2016 · IPR2016-00602 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Unified Patents’ rehearing request, finding no abuse of discretion in denying institution on the DeMello- and Pestoni-based grounds challenging claim 1.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“argument for ‘requesting the query data.’” Req. Reh’g 8 (emphasis omitted). According to Petitioner, “[t]he Petition certainly offers reasons to combine with Wieder for the token database . . . , but [the requesting step] doesn’t require combination because it is obvious from Pestoni alone.” Id. at 9. We disagree with Petitioner’s contention. As we noted in our Institution Decision, an obviousness analysis requires “‘some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Inst. Dec. 14 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Even if the recited requesting step “doesn’t require combination” with another patent or printed publication, Petitioner did not explain sufficiently why one of ordinary skill in the art would have considered modifying Pestoni to arrive at the claimed invention. See id. For instance, Petitioner merely asserted, without further explanation, that “it would be obvious to one of skill in the art to implement Pestoni with a request and corresponding reception.” Pet. 49. Accordingly, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness as to the recited requesting step. See Kahn, 441 F.3d at 988.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,887,308 - Seabery North America Inc. v. Lincoln Global, Inc.Rehearing deniedPTAB · Nov 17, 2016 · IPR2016-00840 · APJ Thomas L Giannetti · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 32, 51, 70–79, and 105–111 because Petitioner did not show Aiteanu taught or suggested comparing performance data to known parameters.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides in relevant part: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“claims, we did not rely on the lack of disclosure of an algorithm in the ’398 patent in concluding that Petitioner had failed to carry its burden of demonstrating obviousness. Instead, we considered Petitioner’s analysis of Aiteanu and found it insufficient to persuade us that the “comparison” element was met: The description in that analysis does not teach or suggest a comparison to known parameters. See [Pet.] 19–21. Because we conclude that Aiteanu does not teach or suggest such a comparison, we determine that Petitioner has failed to establish a reasonable likelihood of succeeding on its challenge to these claims. Dec. 22–23. These insufficiencies in the Petition are not cured by attacking the ’398 patent’s disclosure, nor is Petitioner relieved its burden of proving the claims unpatentable. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (“In an inter partes review . . . , the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”) (citation omitted).” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Id. at 16 (emphasis added) (citation omitted). The Board found Petitioner’s analysis of this element in relation to Aiteanu insufficient to describe a comparison to known parameters to arrive at this quality characteristic. Dec. 22. Petitioner’s main argument in its Rehearing Request focuses on a different alleged “quality characteristic” in Aiteanu, namely torch position. Req. Reh’g 5–6. The Petition did not present such an argument, and therefore the Board could not have been overlooked or misapprehended it. Instead, we addressed the argument presented by Petitioner: that calculated weld seam thickness was based on a comparison of known parameters. Pet. 16. For the reasons stated in our Institution Decision and in the Preliminary Response (at pp. 38–39), we concluded that Petitioner did not present sufficient proof that Aiteanu met this condition.” slip op. at 5
§ 103 obviousness - American Megatrends, Inc. / Micro-Star International Co., Ltd et al. v. Kinglite Holdings Inc.All claims unpatentablePTAB · Oct 27, 2016 · IPR2015-01079 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–45 are unpatentable: claims 1–40 and 44 as obvious over either PC Tools and Gerace or LogoMania, and claims 41–43 and 45 as obvious over either specified combination.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- ScopeMotion to amend, deniedDenied
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteDecided for petitioner
“We first note that proposed claim 46 recites a “profile,” a term that is broader than a “user profile” and is not specifically defined. In addition, the meaning of the language in proposed claim 46 “wherein the computer system [that displays the image] characterizes the profile under the operating system environment” is unclear. Although the operating system may be a Windows OS, as Patent Owner argues, Patent Owner does not cite to a description concerning what it means for the computer system, i.e., the system that displays the image, to “characterize[s] the profile” or what steps the computer takes to characterize the profile. Id. at 8–9. Instead, Patent Owner argues that a service center provides additional content based on the user system and profile. Id. at 9. That language, however, is not recited in proposed claim 46. We deny the Motion to Amend on this basis as well.” slip op. at 24
- ExcludeMotion to exclude, deniedDenied
“It was not Petitioner’s responsibility to monitor whether Patent Owner moved for Mr. Summerfield’s pro hac vice admission. However, we also are troubled by Petitioner’s failure to seek a conference with the Board at the time of the deposition. Although Petitioner argues it could not have moved to quash the deposition because the notice was signed by lead counsel, Christopher Frerking (Reply to Opp. To Mot to Exclude 4), it appears that Petitioner’s counsel was aware that Mr. Summerfield would conduct the cross examination at least several days, and possibly several weeks, before the deposition took place. Hr’g Tr. 47, 49. Petitioner does not allege any prejudice as a result of Mr. Summerfield conducting the cross examination or argue that Mr. Summerfield behaved improperly during the deposition. Mot. To Exclude 4. Instead, Petitioner contends we should exclude the evidence as a matter of policy to demonstrate that our rules concerning pro hac vice admission must be taken seriously and to discourage others from acting in a similar manner, particularly in the case of deposition testimony and arguments that become part of the trial record. Id. at 4–6.8 Petitioner contends that allowing the deposition to take place did not cure its objection to the deposition. Reply to Opp. To Mot. To Exclude. 1–2. Dr. Kaliski’s deposition took place on January 8, 2016. Petitioner could have opposed Mr. Summerfield’s pro hac vice admission until January 16, 2016. However, notwithstanding Mr. Summerfield’s conduct, to which Petitioner objected, Petitioner did not oppose Mr. Summerfield’s pro hac vice admission. Had Petitioner opposed Mr. Summerfield’s admission on the basis that he conducted the deposition without proper authorization, the issue could have been addressed earlier in the proceeding and another deposition scheduled, if it was determined that Mr. Summerfield would not be admitted and the deposition transcript would not be entered. Instead, Petitioner elected to delay the matter until the last possible date for filing a Motion to Exclude. Thus, even if Petitioner’s objection was not cured when Petitioner permitted the deposition to proceed without contacting the Board, Petitioner’s subsequent failure to oppose Patent Owner’s Motion for Admission pro hac vice implies at least some degree of consent. The parties conduct in this case does not warrant excluding Dr. Kaliski’s deposition transcript from evidence. We do not condone Patent Owner’s unreasonable delay in seeking pro hac vice admission of Mr. Summerfield, and under other circumstances our ruling might be different. However, in this case, the absence of prejudice and Petitioner’s failure to” slip op. at 27
Patent outcomesUS 6,373,498 unpatentable§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 6,373,498 - Duodecad It Services Luxembourg S.à.R.L. / Friendfinder Networks Inc. et al. v. Wag Acquisition, LLCSome claims unpatentablePTAB · Oct 20, 2016 · IPR2015-01036 · APJ Glenn J Perry · IPR · Final written decision
Claims 1, 3, 4, 6, 8, 10, 11, 13, 15, 17, 18, and 20 are unpatentable as obvious; claims 7, 14, and 21 were not shown unpatentable because the references lack per-user server tracking.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“A given reference is publicly accessible upon a satisfactory showing that such document has been [1] disseminated, or [2] otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194–95 (Fed. Cir. 2008. Even though Chen issued prior to the USPTO PAIR system, Chen FH was and remains easily requisitioned by any interested person from the USPTO by making the appropriate request and paying the appropriate fee.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundMixed
“We are not persuaded by Patent Owner’s argument that initially operating Chen in rush mode would cause unstable operation. The only evidence Patent Owner has presented is the declaration testimony of Dr. Mayer-Patel, which was weakened as a result of cross-examination. For example, Dr. Mayer-Patel admitted that simply setting the water marks to different values would avoid the potential hysteresis instability. See Ex. 1016, pp. 64−66. Further, both Chen and Chen FH disclose that transmission starts in rush mode. Chen states: “transmission occurs in rush mode when the amount of data falls below the lower water mark, i.e., there is not enough data in the client agent packet buffer (33).” Ex. 1004, 6:43–45. Chen FH states at page 86 in the “open file” line: “read data from disk and rush them to CA” (emphasis added). We credit Dr. Polish’s testimony that “Chen and the Chen File History teach that the mode that is used at the start of transmission is the rush mode.” Ex. 1003 ¶ 58. Dr. Mayer-Patel was cross-examined regarding “thrashing.” When asked about setting gamma levels to achieve a stable system, Dr. Mayer- Patel answered that he would set the gammas to different levels for transitioning from rush to normal modes than for transitioning from normal to rush modes. Ex. 1016, 66:9–18; see Ex. 1005, 86–87 (discussing gamma values); Reply 14 n.2 (discussing hysteresis). Based on the testimony of Dr. Mayer-Patel and the evidence cited by Petitioner (Reply 14–15), we conclude that one of ordinary skill would have known how to set gamma levels defining mode transitions to provide the appropriate amount of hysteresis to prevent thrashing, e.g., in the manner that a thermostat hysteresis is set to avoid too rapid a cycling of a furnace. We find that if Chen were operated initially in “rush” mode, it would” slip op. at 29
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“We are not persuaded by Patent Owner’s argument that initially operating Chen in rush mode would cause unstable operation. The only evidence Patent Owner has presented is the declaration testimony of Dr. Mayer-Patel, which was weakened as a result of cross-examination. For example, Dr. Mayer-Patel admitted that simply setting the water marks to different values would avoid the potential hysteresis instability. See Ex. 1016, pp. 64−66. Further, both Chen and Chen FH disclose that transmission starts in rush mode. Chen states: “transmission occurs in rush mode when the amount of data falls below the lower water mark, i.e., there is not enough data in the client agent packet buffer (33).” Ex. 1004, 6:43–45. Chen FH states at page 86 in the “open file” line: “read data from disk and rush them to CA” (emphasis added). We credit Dr. Polish’s testimony that “Chen and the Chen File History teach that the mode that is used at the start of transmission is the rush mode.” Ex. 1003 ¶ 58. Dr. Mayer-Patel was cross-examined regarding “thrashing.” When asked about setting gamma levels to achieve a stable system, Dr. Mayer- Patel answered that he would set the gammas to different levels for transitioning from rush to normal modes than for transitioning from normal to rush modes. Ex. 1016, 66:9–18; see Ex. 1005, 86–87 (discussing gamma values); Reply 14 n.2 (discussing hysteresis). Based on the testimony of Dr. Mayer-Patel and the evidence cited by Petitioner (Reply 14–15), we conclude that one of ordinary skill would have known how to set gamma levels defining mode transitions to provide the appropriate amount of hysteresis to prevent thrashing, e.g., in the manner that a thermostat hysteresis is set to avoid too rapid a cycling of a furnace.” slip op. at 29
- Obviousness (§103) › KSR rationalesUnpatentableUnpatentable
“We find that ISO-11172 would have been well known to those of ordinary skill. It was at the time of the ’839 patent already published and utilized. ISO-11172 demonstrates that it was known to encode frames at constant and variable bit rates. We are not persuaded that Chen’s focus on variable bit rates teaches away from the use of either constant or variable bit rates. The fact that a standard, published before Chen, describes the use of both in detail suggests that it was well known to those of ordinary skill in the art. We therefore conclude that Petitioner has established by a preponderance of evidence of record that Chen describes the constant bit rate feature of claims 3, 10 and 17. We find that Petitioner has produced sufficient evidence to establish that claims 3, 10, and 17 are unpatentable over Chen, Chen FH, and ISO-11172. See Pet. 38–39 (citing Ex. 1003 ¶¶ 68–70).” slip op. at 35
Patent outcomesUS 8,364,839 mixed§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,364,839 - Unified Patents Inc. v. William GreciaRehearing deniedPTAB · Oct 13, 2016 · IPR2016-00600 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving institution denied on the DeMello-based anticipation and obviousness grounds because the petition did not sufficiently show the claimed verification token or reason to modify DeMello.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent 3 Wiser, U.S. Patent No. 6,385,596 B1, issued May 7, 2002 (Ex. 1008). 4 Cooper, U.S. Publ’n No. US 2009/0037388 A1, published Feb. 5, 2009 (Ex. 1009). Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the asserted grounds based on DeMello, Petitioner relied on either DeMello or the admitted prior art as teaching the recited “verification token . . . corresponding to the digital content.” Pet. 17–21, 52. We denied institution of these asserted grounds because we were not persuaded by Petitioner’s arguments regarding the teachings of DeMello, either alone or in combination with the admitted prior art.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“noted in our Institution Decision, an obviousness analysis requires “‘some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Inst. Dec. 12. With respect to claim elements [C], [D], and [G], Petitioner did not explain sufficiently why one of ordinary skill in the art would have considered modifying DeMello to arrive at the claimed invention. See id. at 13; see also Req. Reh’g 8 (“A claim can be rejected as obvious over a single reference by identifying a teaching, suggestion, or motivation (TSM) to modify the single reference to fall within the scope of the claim.”). For example, with respect to claim element [D], Petitioner merely asserts that “DeMello describes a browser, which clearly implies or suggests a GUI.” Req. Reh’g 8; see also id. at 12 (“one of skill in the art, analyzing the ‘browser’ in DeMello, would understand that these browsers obviously have a GUI”); Pet. 23 (“it is obvious that the browser of the reader mentioned in DeMello includes a GUI, since browsers provide a GUI”). We are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness over DeMello alone as to claim element [D]. Similarly, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness over DeMello alone as to claim elements [C] and [G]. See Req. Reh’g 10–11; Pet. 20–21, 26–28.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“DeMello, Petitioner contends that we “overlooked the Petition’s argument that the claims are obvious in view of DeMello alone, without any of the additional, admitted prior art.” Req. Reh’g 7 (emphasis omitted). According to Petitioner, “the admitted prior art was added, as background information,” and the Petition showed that claim elements [C], [D], and [G] are obvious over DeMello alone. Id. at 8, 10, 12. This is a new argument, which does not address what was overlooked or misapprehended in our Decision, and is not appropriate in a request for rehearing. See 37 C.F.R. § 42.71(d). For instance, the heading at page 15 of the Petition reads “Ground 1: Claims 1–20 are unpatentable as obvious over DeMello (EX1006) in view of the admitted prior art” (emphasis omitted). None of the other headings in the Petition alleges that any of the claims are unpatentable as obvious over DeMello alone. Nor has Petitioner directed us to any portion of the Petition presenting such argument.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,533,860 - Micron Technology, Inc. / SK Hynix, Inc. v. Elm 3ds Innovations, LLCInstitution deniedPTAB · Sep 6, 2016 · IPR2016-00703 · APJ Barbara A Benoit · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, including for failure to establish the required partitioned control layer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“4. Conclusion “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., No. 2015-1693, 2016 WL 2620512, at *6 (Fed. Cir. May 9, 2016) (“It was [Petitioner]’s burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.”) (internal quotation marks removed). Thus, Petitioner must explain how the combination of Hsu and Sakuta would have rendered the independent claims 1 and 5 unpatentable. For the foregoing reasons, we determine that the Petition does not demonstrate sufficiently that Petitioner’s proposed combination of Hsu and Sakuta would have conveyed to one of ordinary skill in the art a control layer of the stacked memory integrated circuit partitioned into a plurality of vertically interconnected circuit block stacks as required by independent claims 1 and 5. Accordingly, after considering the information presented in” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art relevant to the challenged patent “would have had at least a B.S. degree in electrical engineering, material science, or equivalent thereof, and at least 3–5 years of experience in the relevant field, e.g., semiconductor processing.” Ex. 1002 ¶ 58; see Pet. 6–7 (relying on Ex. 1002 ¶ 58). Patent Owner does not offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the challenged patent. See generally Prelim. Resp. Based on our review of the challenged patent, the types of problems and solutions described in the challenged patent and cited prior art, and the testimony of Petitioner’s Declarant, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“required partitioned circuit control layer of a stacked memory integrated circuit, Petitioner asserts, without further explanation or analysis, that one of ordinary skill in the art “would have recognized that the stacked memory integrated circuits disclosed by Hsu, e.g., ROM and SRAM, are often partitioned into a plurality of circuit blocks. Ex. 1002 at ¶147.” Id. at 33 (quoting ¶ 147 of Dr. Franzon’s testimony (Ex. 1002)). Although Petitioner quotes Dr. Franzon’s testimony for support, Dr. Franzon’s testimony is unavailing because it is conclusory. Dr. Franzon’s testimony merely states, without providing further analysis or evidence, that one of ordinary skill in the art would have recognized stacked memory integrated circuits are often partitioned. As such, Dr. Franzon’s testimony does not disclose the facts underlying his conclusion or provide sufficient analysis or evidence to support his conclusion. Accordingly, Dr. Franzon’s testimony is entitled to” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In referring to “the block-based design” or “the block-based memory design” of Sakuta, Petitioner fails to distinguish between Sakuta’s various embodiments, only one of which even arguably discloses a partitioned control circuit (embodiment shown in Figure 3) for the reasons previously discussed. See id. at 33–34 (discussing embodiments shown in both Figures 1 and 3). This further demonstrates shortcomings in Petitioner’s position relying on Sakuta’s purported “memory circuit design that is partitioned into a plurality of circuit blocks” for a partitioned two-dimensional control circuit. Id. Moreover, Petitioner does not address, much less sufficiently explain, why one of ordinary skill in the art would have combined, with Hsu’s threedimensional memory structure, Sakuta’s embodiment that includes a control circuit in the memory block (as shown in Figure 3), rather than Sakuta’s embodiment that includes the memory blocks controlled by a shared control circuit (as shown in Figure 1). See generally id. at 25–30, 35. For these reasons, we are not persuaded by Petitioner’s reasons to” slip op. at 20
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,791,581 - Micron Technology, Inc. / SK Hynix, Inc. v. Elm 3ds Innovations, LLCInstitution deniedPTAB · Sep 6, 2016 · IPR2016-00706 · APJ Barbara A Benoit · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 5, 12, 36, 54, 78, 113, 116, 133, or 136 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (“It was [Petitioner]’s burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art” slip op. at 17
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner then asserts, without further explanation or analysis, that one of ordinary skill in the art “would have recognized that the integrated circuits are often partitioned into a plurality of circuit blocks.” Id. (citing Ex. 1002 ¶ 132 (claim element 1c) 8). Although Petitioner cites Dr. Franzon’s testimony regarding how one of ordinary skill in the art would have understood Bertin ’945, Dr. Franzon’s testimony is unavailing because it is conclusory. Dr. Franzon’s testimony merely states, without providing further analysis or evidence, that one of ordinary skill in the art would have recognized that the integrated circuits are often partitioned into a plurality of circuit blocks. As such, Dr. Franzon’s testimony does not disclose the facts underlying his conclusion or provide sufficient analysis or evidence to support his conclusion. Accordingly, Dr. Franzon’s testimony is entitled to little or no weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner’s reliance on Sakuta’s two-dimensional memory circuit design for the requisite partitioned control layer, however, does not distinguish sufficiently between Sakuta’s embodiment with a two-dimensional matrixed memory circuit that shares a control circuit (as shown in Sakuta’s Figure 1) and Sakuta’s embodiment with a two-dimensional matrixed memory circuit in which each memory block includes a control circuit (as shown in Sakuta’s Figure 3). See id. at 31–32 (citing Ex. 1067, Abstract, 5:52–54 (discussing embodiment shown in Fig. 1), 8:49–60 (discussing embodiment shown in Fig. 3), Fig. 3). Thus, Petitioner relies both on Sakuta’s embodiment in which the control circuit arguably seems to be partitioned (Figure 3) and on Sakuta’s embodiment in which the control circuit is not partitioned (Figure 1). See, e.g., Ex. 1067, 6:34–35 (indicating the “control circuit” is the “timing and address generator of FIG. 1”), 8:49– 60 (indicating Fig. 3 shows “each memory block of this embodiment” as being “equipped with . . . the control circuit”). Petitioner’s reliance on both embodiments—only one of which arguably has a partitioned control 15 circuit—undermines Petitioner’s position that its proposed combination of Bertin ’945 and Sakuta would have conveyed to one of ordinary skill in the art the required partitioned control layer of a stacked memory integrated circuit. Thus, we are not persuaded that Petitioner has shown sufficiently that Petitioner’s proposed combination of Bertin ’945 and Sakuta would have conveyed to one of ordinary skill in the art the required partitioned circuit control layer of a stacked memory integrated circuit.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In referring to “the block-based design” or “the block-based memory design” of Sakuta, Petitioner fails to distinguish between Sakuta’s various embodiments, only one of which even arguably discloses a partitioned control circuit (embodiment shown in Figure 3) for the reasons previously 16 discussed. See id. at 31 (discussing embodiments shown in both Figures 1 and 3). This further demonstrates shortcomings in Petitioner’s position relying on Sakuta’s purported “memory circuit design that is partitioned into a plurality of circuit blocks” for a partitioned two-dimensional control circuit. Id. Moreover, Petitioner does not address, much less sufficiently explain, why one of ordinary skill in the art would have combined, with Bertin ’945’s multichip semiconductor stack, Sakuta’s embodiment that includes a control circuit in the memory block (as shown in Figure 3), rather than Sakuta’s embodiment that includes the memory blocks controlled by a shared control circuit (as shown in Figure 1). See generally id. at 27–29, 32. For these reasons, we are not persuaded that Petitioner’s reasons to combine explain how Sakuta would have conveyed to one of ordinary skill in the art a partitioned control circuit.” slip op. at 16
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,791,581
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.