- Spectra Logic Corporation v. Overland Storage Inc.All claims unpatentablePTAB · Nov 7, 2014 · IPR2013-00357 · APJ Matthew R Clements · IPR · Final written decision
Claims 1–11 are unpatentable as anticipated by 3494 GSP under § 102(b); Overland’s contingent motion to amend is denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for petitioner
“patent does not define explicitly the claim term “host computer,” but does state that “[t]he host computer system 36 may be a personal computer, a mainframe, a local area network server, or any of a wide variety of data processing apparatus well known to utilize media, libraries for data storage.” Ex. 1007, 4:10–14 (italics added) (bold omitted). Accordingly, in the Decision to Institute, we construed “host computer” as “a data processing apparatus.” Overland argues, as it did in the Preliminary Response, that “host computer” should be construed to require that it be “separate and external from the library.” PO Resp. 6–10. As we noted in our Decision to Institute, however, claim 1 does not recite a “library,” much less specify whether the recited “host computer” is separate and external from such a library. We are not persuaded by Overland’s argument that “[c]laim 1 uses the term ‘data storage system’ because it claims the entire system—the library by its individual components (media, drives, controller, etc.) plus the host computers.” PO Resp. 7 (citing Ex. 1007, 3:16–4:6, cl. 1). Claim 1 does not recite a “library” and none of the independent claims use the word “external.” Moreover, the portions of the Specification relied upon by Overland—e.g., column 1, lines 16–20; column 3, line 16 to column 4, line 8 6—do not use, much less define, the term “data storage system.” We acknowledge, as we did in the Decision to Institute, that Figures 2 to 4 depict the host computer outside the hashed line representing library 10. The ’766 patent, however, describes those figures as illustrating only a “[p]referred embodiment.” Ex. 1007, 2:61–63. We decline to import limitations from a preferred embodiment into the claim. See Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012) (“While claim terms are understood in light of the specification, a claim construction must not import limitations from the specification into the claims.”); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1371 (Fed. Cir. 2003) (Even in cases where a patent describes only a single embodiment, courts have rejected the contention that the claims of the patent must be construed as being limited to that embodiment.).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We are not persuaded by Overland’s argument because the Petition relies upon the physical tapes, not the virtual 3490 tapes emulated by the Virtual Tape Server, as the recited “plurality of media element drives.” Pet. 29. 3494 GSP discloses that “[t]he Library Manager is the central component that manages all movements inside an IBM Automated Tape Library.” Ex. 1006, 18. Spectra Logic also argues that the IBM 3494 library can be installed with exclusively the same drives such that all tapes would be readable in each drive. Pet. 32. Overland does not contend that the physical tapes (i.e., the 3490 tapes and/or 3590 tapes) are not readable in each of the physical tape drives (i.e., the 3490 tape drive subsystem and/or the 3590 tape drive subsystem). In view of the foregoing, we conclude that Spectra Logic has demonstrated sufficiently that each of the physical tapes (i.e., “media elements”) is readable in each of the physical tape drives (i.e., “media element drives”).” slip op. at 23
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Without a reasonable construction of the new claim features added by the proposed substitute claims, Overland’s motion does not provide adequate information for us to determine whether Overland’s proposed substitute claims are patentable over the prior art generally. Therefore, we are not persuaded that Overland has met its burden to demonstrate patentability of the proposed substitute claims under 37 C.F.R. § 42.20(c).” slip op. at 32
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner
“Overland asserts that there was a long-felt need for the invention disclosed in the ’766 patent. Mot. to Amend 11–12. Specifically, Overland asserts that “[t]ape libraries were not usually accessed over a network, and they certainly were not configured over a network.” Mot. to Amend 11; Ex. 2005 ¶ 112. Overland, however, presents no credible evidence this need was satisfied by the invention claimed in the proposed substitute claims.” slip op. at 36
Patent outcomesUS 6,328,766 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,328,766 - 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 - Taiwan Semiconductor Manufacturing Company, Limited / TSMC North America Corporation v. Ziptronix, Inc.Adverse judgmentPTAB · Nov 4, 2014 · IPR2014-00114 · APJ Kevin F Turner · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment against claims 1–14 and 53–60, terminating the proceeding.
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). Patent Owner already has conceded that the requested judgment will effectively cancel the claims identified for trial and moot this proceeding, and has no pending motion to amend claims. The deadline for filing such a motion has passed. See Paper 15. Under these circumstances, the request for entry of adverse judgment is appropriate. ORDER It is ORDERED that Patent Owner’s request for adverse judgment for under 37 C.F.R. § 42.73(b) with respect to claims 1-14 and 53-60 of U.S. Patent No. 6,563,133 B1 is GRANTED; and, ORDERED that judgment is entered herein against Patent Owner with respect 1-14 and 53-60 of U.S. Patent No. 6,563,133 B1.” slip op. at 2
NonePatents in suitUS 6,563,133 - 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 - PTAB · Sep 24, 2014 · IPR2014-00190 · APJ James A Tartal · IPR · Adverse judgment
The Board granted the Patent Owner’s request for adverse judgment and entered judgment against it on claims 3–8 and 10.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“for Abandonment of the Contest Under 37 C.F.R. § 42.73(b)(4) (“Req. for Adverse Judgment”). Paper 19. Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include abandonment of the contest. 37 C.F.R. § 42.73(b)(4). Patent Owner acknowledged that, in accordance with its request, all challenged claims (claims 3–8 and 10) of the ’425 patent will be cancelled. Req. for Adverse Judgment 2. Accordingly, it is hereby ORDERED that Patent Owner’s Request for Adverse Judgment for Abandonment of the Contest Under 37 C.F.R. § 42.73(b)(4) with respect to claims 3–8 and 10 of U.S. Patent No. 8,281,425 B2 patent is GRANTED; and, ORDERED that judgment is entered herein against Patent Owner with respect to claims 3–8 and 10 of U.S. Patent No. 8,281,425 B2.” slip op. at 2
NonePatents in suitUS 8,281,425 - PTAB · Sep 24, 2014 · IPR2014-00187 · APJ James A Tartal · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment against Patent Owner on claims 1, 2, and 9.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“for Abandonment of the Contest Under 37 C.F.R. § 42.73(b)(4) (“Req. for Adverse Judgment”). Paper 20. Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include abandonment of the contest. 37 C.F.R. § 42.73(b)(4). Patent Owner acknowledged that, in accordance with its request, all challenged claims (claims 1, 2, and 9) of the ’425 patent will be cancelled. Req. for Adverse Judgment 2.” slip op. at 2
NonePatents in suitUS 8,281,425
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.