- PTAB · Dec 3, 2014 · IPR2014-00541 · APJ Josiah C Cocks · IPR · Order
The Board granted the joint motion to terminate the review as to both parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Wintek is met. Furthermore, under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Wintek is the sole petitioner in this review. The Board has discretion to terminate this review with respect to TPK. Upon consideration of the circumstances of this case, the panel has determined to terminate this inter partes review as to both Wintek and TPK without rendering a final written decision. The oral argument scheduled for December 12, 2014 is cancelled.” slip op. at 3
- ExcludeOther
“TPK’s Motion to Seal (Paper 28) is pending. Because this proceeding is terminated without rendering a final written decision, the Motion to Seal is dismissed as moot. The subject paper (Ex. 2019) of the Motion to Seal is hereby expunged.” slip op. at 3
NonePatents in suitUS 8,217,902 - Trivascular, Inc. v. Shaun L.W. SamuelsNo claims unpatentablePTAB · Dec 3, 2014 · IPR2013-00493 · APJ Richard E Rice · IPR · Final written decision
Claims 1, 2, and 4–24 were not shown unpatentable over either instituted §103 combination because the references did not establish the required inflatable protrusions.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“not proved that claims 1, 2, 6–15, and 18–24 would have been obvious over Samuels ’851 and Todd, or that claims 1, 4–6, 9–11, 13, 14, 16, 17, and 19– 21 would have been obvious over Lazarus and Todd. Accordingly, Dr. Samuels’s Motion to Amend, which is contingent on claims 1, 14, and 23 being found unpatentable, is moot. IV. ORDER For the reasons given, it is ORDERED that claims 1, 2, and 4–24 of U.S. Patent No. 6,007,575 are not determined to be unpatentable; and FURTHER ORDERED that Dr. Samuels’s Motion to Amend is dismissed as moot.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“TriVascular argues that “inflatable protrusions can be ‘solid’ structures such as barbs or[,] in the case of [] some of the prior art examples, solid circumferential ridges.” Reply 10 (citing Clark. Dep., Ex. 1021, 135:6–16 (discussing Samuels ’851 (Ex. 1002))). TriVascular’s proposed claim construction, however, does not accord with the plain meaning of “inflatable” as used in the Specification, i.e., expandable by being filled with fluid. See, e.g., Ex. 1001, Abstr. 3–4, 3:55 (“inflatable chamber”), 1:30 (“inflatable balloon”), 2:33, 38, 3:30 (“inflatable cuff”), 3:33–34 (“inflatable ridges”). Under the plain meaning of “inflatable” as used in the Specification, solid ridges are not “inflatable,” because they are not capable of being filled with fluid. See Resp. 5–8; In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (holding that the words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification). Further, under TriVascular’s proposed claim construction, there is no meaningful difference between “protrusions” disposed on an inflatable cuff and “inflatable protrusions” disposed on an inflatable cuff. See Tr. 10:7–14. Trivascular’s proposed claim construction, therefore, fails to give any meaning to “inflatable” in “inflatable protrusions,” and by not giving effect to all words of the claim, runs afoul of a cardinal rule of claim construction. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim,” so that physical structures and characteristics described specifically in a claim are not rendered “merely superfluous.”).” slip op. at 7
- Expert testimonyPetitioner expert discountedOther
“inflatable balloon protuberances, including “inflatable ridges.” Pet. 22 (citing Ex. 1008, Figs. 5–9), 41 & 51 (claim chart) (quoting Ex. 1008, 7:35– 39, citing Ex. 1008, Fig. 7). At oral argument, TriVascular clarified its analysis of Todd’s disclosure, and asserted that the protuberances disclosed in Todd are hollow, and themselves inflatable. Tr. 6:5–12:20. TriVascular cited in support of its position the statement in column 7 of Todd that: “When inflated, the spiral ridge 48 contacts and tightly grips the walls of a body passageway in which it is inserted.” Id. at 6–7; Ex. 1008, 7:37–39 (emphasis added); see Pet. 40–41 (Claim Chart II, element 1a-3, quoting Ex. 1008, 7:35–39). TriVascular, however, has not provided a declaration, or any other evidence, to establish that a person of ordinary skill in the art would understand Todd to disclose protuberances that are hollow, and themselves inflatable. Dr. Samuels does not agree that Todd discloses “inflatable protrusions.” Resp. 12. Dr. Samuels asserts that “the region between the inner and outer surfaces of balloon 26 of Todd is solid . . . and any provided roughened surfaces or protuberances are also solid.” Id. (citing Ex. 1008, Figs. 4 & 8; Ex. 2004). On the record before us, TriVascular has failed to show that Todd discloses “inflatable protrusions,” i.e., protrusions that are expandable by being filled with fluid. See section II.A.5 supra. The protuberances disclosed in Todd project outwardly “from the outer surface” of inflatable balloon 26. See Ex. 1008, 6:58–59, 62–63. As such, the protuberances are disposed on the exterior surface of the inflatable balloon, and are not in fluid communication with the balloon’s inner chamber 32. See Resp. 12; Ex. 1008, 7:15–16, Figs. 2, 4 & 5 (describing knobs 40 as solid structures on the outer surface of the balloon), 7:32–34, Fig. 6 (describing “cross-hatched pattern 44 projecting outwardly from the exterior surface of balloon 26”), 7:35–39, Fig. 7 (describing “outwardly projecting spiral ridge 48 wound about the exterior surface of balloon 26”), 7:40–46, Fig. 8 (describing “outwardly projecting annular rings 52 wound about the exterior surface of balloon 26”). Todd discloses expansion means in fluid communication with inner chamber 32 for inflating balloon 26 (id. at 7:53–60), but does not disclose expansion means for inflating the protuberances, either separately or in conjunction with inflation of the balloon. Todd discloses, simply, that “when balloon 26 is inflated, the gripping means [i.e., the protuberances] on the exterior of the balloon contact and grip the walls of the body passageway.” Id. at 8:14–16. Trivascular has not persuaded us, moreover, that a person of ordinary skill in the art would have understood Todd’s statement “[w]hen inflated, the spiral ridge 48 contacts and tightly grips the walls of a body passageway in which it is inserted” (id at 7:37–39 (emphasis added)), to teach or suggest that spiral ridge 48 is expandable by being filled with fluid. See Tr. 6–7. Other than that isolated statement, there is no suggestion, indication, or hint in Todd that any of the disclosed protuberances is hollow such that it can be filled with fluid and inflated. To the contrary, as discussed above, Todd” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“We determine that Trivascular has not provided a sufficient rationale to support substituting the ridges of Todd for just the barbs of Samuels ’851. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). TriVascular also contends that it would have been obvious to eliminate both the recesses and barbs of Samuels ’851, and to substitute “a circumferential ridge, similar to the one that is in Todd.” See Tr. 15:24– 17:15. TriVascular asserts three reasons why combining the references in that fashion would satisfy the requirement for “inflatable protrusion(s) including at least one circumferential ridge disposed about the inflatable cuff”: (1) the ridges are “inflatable” in the combination simply because they are riding on an inflatable cuff; (2) the ridges in Todd are themselves inflatable; and (3) use of ridges that are themselves inflatable would have been obvious, as they would take up less volume and be easier to insert in blood vessels than ridges that are not themselves inflatable. See id. at 17:16–18:14. None of those reasons is persuasive. The first reason is not persuasive because it does not satisfy the requirement for “inflatable protrusions,” i.e., protrusions that are expandable by being filled with fluid. See section II.A.5 supra. The second reason is not persuasive because we do not agree that Todd discloses ridges that are themselves inflatable. See section II.B.1.b supra. Lastly, the third reason is not persuasive because TriVascular has not established that a person of ordinary skill in the art would have known to use, on an inflatable cuff, circumferential ridges that are themselves inflatable. The evidence is to the contrary. See, e.g., Ex. 2002 (Samuels Decl.) ¶ 4.c (“No one else in the medical field, to the best of my knowledge, ever proposed or suggested an inflatable ridge-based sealing arrangement prior to my invention, ever.”); Ex. 1020 (Samuels Dep.), 138:20–140:7 (affirming testimony in ¶ 4.c of Samuels Decl.), 187:11–14 (testifying that inflatable ridges were not known in the medical field); Ex. 2003 (Clark Decl.) ¶ 8 (“[B]eing able to reduce the overall diameter by just deflating the fluid chamber and, correspondingly, the ridges is an intriguing concept, one which was not known, to the best of my knowledge, in the medical field prior to Samuels ’575.”); Ex. 1021 (Clark Dep.), 82:19–21 (“I’m not aware of any inflatable protrusions to support an endograft prior to Samuels [’575].”).” slip op. at 19
Patent outcomesUS 6,007,575 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,007,575 - Symantec Corporation v. Rpost Communications LimitedAdverse judgmentPTAB · 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
NonePatents in suitUS 8,468,199 - Canon Inc. v. Intellectual Ventures I LLCRehearing deniedPTAB · 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 denialPatents in suitUS 7,315,406 - Canon Inc. v. Intellectual Ventures I LLCRehearing deniedPTAB · 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
NonePatents in suitUS 7,315,406 - Oracle Corporation / Oracle Otc Subsidiary LLC et al. v. Click-To-Call Technologies LPAll claims unpatentablePTAB · 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 obviousnessPatents in suitUS 5,818,836 - Sipnet Eu S.R.O. v. Straight Path IP Group, Inc.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,108,704 - K-40 Electronics, LLC v. Escort, Inc.Some claims unpatentablePTAB · 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 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,670,905 - Dynamic Drinkware LLC v. National Graphics, Inc.No claims unpatentablePTAB · Sep 12, 2014 · IPR2013-00131 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1 and 12 were not shown unpatentable because Patent Owner proved reduction to practice before Raymond’s effective prior art date.
RulingsFinal written decision- BurdenDecided for patent owner
“preponderance of the evidence that Raymond is entitled to the benefit of the earlier provisional filing date. To be entitled to rely on the February 15, 2000 provisional filing date, Petitioner had to establish that it relies on subject matter from Raymond that is present in and supported by its provisional. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“Therefore, an applicant is not entitled to a patent [under § 102(e) (2)] if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application . . . .”); Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential).” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“preponderance of the evidence that Raymond is entitled to the benefit of the earlier provisional filing date. To be entitled to rely on the February 15, 2000 provisional filing date, Petitioner had to establish that it relies on subject matter from Raymond that is present in and supported by its provisional. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“Therefore, an applicant is not entitled to a patent [under § 102(e) (2)] if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application . . . .”); Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential).” slip op. at 6
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for patent owner
“preponderance of the evidence that Raymond is entitled to the benefit of the earlier provisional filing date. To be entitled to rely on the February 15, 2000 provisional filing date, Petitioner had to establish that it relies on subject matter from Raymond that is present in and supported by its provisional. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“Therefore, an applicant is not entitled to a patent [under § 102(e) (2)] if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application . . . .”); Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We conclude, therefore, that Patent Owner has shown by a preponderance of the evidence that by March 28, 2000, a sample product was produced for Patent Owner demonstrating that the Rexam process was suitable for its intended purpose. The testimony establishes that the Rexam process was successful in injection molding a plastic product with a lenticular image that would be acceptable to the intended end user. Walker Decl. ¶ 11; Krause Decl. ¶ 7.” slip op. at 18
Patent outcomesUS 6,635,196 not shown unpatentable§ 102 anticipationPatents in suitUS 6,635,196 - Google, Inc. v. Whitserve LLCAll claims unpatentablePTAB · Sep 9, 2014 · IPR2013-00249 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–9 are unpatentable under §103 as obvious over WF Site, Seybold, and Guck, and over Schrader and Guck.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We are not persuaded by Whitserve’s attempt to narrow the scope of the term Internet-based data further than our prior construction. Whitserve has not explained adequately why the “updating and deleting data” functions stated in the specification are requirements, as opposed to merely an exemplary set of functions that a data processing system may perform. Indeed, Whitserve’s position is undercut by the fact that the sentence in the specification describes software for” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“references disclose these elements, and the lack of dispute over these elements, we conclude that Google has shown by a preponderance of the evidence that these undisputed elements are present in the combined disclosures of WF Site, Seybold, and Guck. The parties’ dispute centers on whether WF Site, Seybold, and Guck teach the three elements construed above: Internet-based data, data backup, and software executing on said central computer for retrieving said data backup. Whitserve also argues that a person of ordinary skill would not have combined Guck with WF Site and Seybold. We address these issues in turn below.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“4. Reason to Combine Google argues that a person of ordinary skill in the art would have had reason to combine the teachings of WF Site, Seybold, and Guck. Both WF Site and Seybold, Google contends, discuss the features and implementation of the wellsfargo.com website, and it would have been obvious to combine these references discussing the same system. Pet. 11. Further, Google contends that it would have been obvious to combine WF Site with Guck, as WF Site teaches transformation of data according to user requests, and Guck discloses techniques for transformation of stored data into desired formats. Id. A person of ordinary skill in the art would not have combined Guck with” slip op. at 27
Patent outcomesUS 6,981,007 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,981,007
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.