- 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 - K-40 Electronics, LLC v. Escort, Inc.All claims unpatentablePTAB · Aug 27, 2014 · IPR2013-00203 · APJ Trenton A Ward · IPR · Final written decision
Claims 1–10 are unpatentable: claims 1–10 are anticipated by Hoffberg, claims 2–8 and 10 by Fleming, III, and claims 2–10 are obvious over Fleming, III and Hoffberg.
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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We are not persuaded by Patent Owner’s argument that “correlates to a law enforcement signal” should be construed to mean an undefined determination made by comparing a received signal to the attributes of actual police signals. As Patent Owner stated in the Specification, there are numerous techniques known in the prior art for comparing a received signal to known characteristics of law enforcement signals. See Ex. 1001, col. 8, ll. 45-52. Furthermore, as noted by the Petitioner, Patent Owner’s expert, Dr. Grindon, stated that standard examples of correlating a received signal to a law enforcement signal include adjusting city/highway signal detection thresholds and making sure a signal is present through several sweeps. Pet. Reply 12 (citing Ex. 1019, 36:15-37:4; 37:5-18). Therefore, as generally set forth in the disclosures of standard correlation techniques incorporated into the ’721 patent by reference, correlating a received signal must be interpreted broadly as analyzing one or more characteristics of a received signal in comparison with the known characteristics of law enforcement signals. Accordingly, in light of the Specification and in the context of the claims, we construe “providing a warning if a received signal correlates to a law enforcement signal” as “providing a warning if a received signal correlates to one or more characteristics of a law enforcement signal.”” slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“Patent Owner fails to provide any objective evidence to corroborate Mr. Orr’s testimony that he reduced to practice the GPS lockout concept and associated position determining circuit prior to January 27, 1998 other than the tst4600k.bas file (Ex. 2086), which he concedes does not incorporate the position determining circuit. See Ex. 2073, ¶¶ 79-95. For example, Mr. Orr states in his Declaration that he “used the laptop and the spacebar in the laboratory in Stage 1 to illustrate the GPS lockout concept to other CMI employees,” but failed to cite any evidence to corroborate this testimony. Id. ¶ 80. Furthermore, Mr. Orr states in his Declaration that “my prototype had a position determining circuit” and an alert section that would “alter and/or not provide the alert if the location signal correlated to a location of a rejectable signal.” Id. ¶ 92. Patent Owner fails, however, to cite to any evidence to corroborate this testimony by Mr. Orr. See id. ¶¶ 80, 92. Mr. Orr was questioned at the oral hearing as to whether there was any evidence in the record of the successful test results or observations of the GPS lockout feature that Mr. Orr alleged to have reduced to practice in his Declaration. Tr. 39:15–41:5. During the hearing, Mr. Orr testified that he was not aware of any documents submitted in the record by Patent Owner providing such test results or observations. See id. In addition to a failure to provide sufficient objective evidence supporting the actual reduction to practice by the 1996 prototype of the position determining circuit and the associated GPS lockout concept, Patent Owner fails to provide sufficient corroborating testimony by others that witnessed Mr. Orr’s prototype successfully implementing the GPS lockout concept. Specifically, Patent Owner submitted testimony from four declarants, fellow employees of Mr. Orr at CMI: (1) Beth Andrews (Ex. 2053), (2) Gregory Blair (Ex. 2054), (3) Jim Brandon (Ex. 2055), and (4) Daniel Kindel (Ex. 2056). Ms. Andrews and Mr. Blair testified only that in 1996, the GPS lockout concept was a desired feature for a future radar detector product by CMI. See Ex. 2053 ¶¶ 3-4; Ex. 2054 ¶¶ 3-5. Neither Ms. Andrews nor Mr. Blair testified, however, that they witnessed or even were aware of an actual reduction to practice of a prototype demonstrating the GPS lockout concept. See Ex. 2053 ¶¶ 3-4; Ex. 2054 ¶¶ 3-5. Mr. Kindel testified that in 1996, Mr. Orr was conducting research into the benefits and feasibility of adding GPS to a radar detector, but Mr. Kindel failed to state that he witnessed an actual reduction to practice of such a prototype. See Ex. 2056 ¶ 3-6. Finally, Mr. Brandon testified that during his time at CMI, he was aware that Mr. Orr was working on a GPS enabled radar detector prototype prior to 1998 and the “purpose of this prototype was to mark the locations of false radar signals.” Ex. 2055 ¶ 2-3. Mr. Brandon fails, however, to state that he witnessed or even was aware of an actual reduction to practice of such a prototype. See id. Here, the only evidence of the successful reduction to practice of the position determining circuit and the associated GPS lockout concept 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 challenged claims prior to January 27, 1998. Therefore, Hoffberg and Fleming, III are prior art to the ’721 patent.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Hoffberg.2 Pet. 19-38. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).” slip op. at 17
Patent outcomesUS 7,999,721 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,999,721 - U.S. Bancorp v. Retirement Capital Access Management CompanyAll claims unpatentablePTAB · Aug 22, 2014 · CBM2013-00014 · APJ Trenton A Ward · CBM · Final written decision
Claims 1, 13, 14, 18, 30, and 31 are unpatentable under § 101 because they claim an abstract economic concept without meaningful additional limitations.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“To construe means-plus-function language in a claim, one “must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure.” In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). More particularly, to construe properly the limitations in claims 13 and 30 reciting a “means for causing said future retirement payments . . . to be deposited into said account,” the limitations “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112, ¶ 6.3 As noted by Patent Owner (PO Resp. 29), the corresponding structure within the specification supporting the means-plus-function limitation states the following: “[b]enefits source 12 of system 10 disburses retirement payments directly to an individual direct deposit account 14 in a designated depository 16. Preferably, this is accomplished utilizing the well-known technique of electronic funds transfer.” Ex. 1003, col. 5, ll. 18–22. Accordingly, we construe “means for causing . . . to be deposited into said account,” recited in claims 13 and 30, to mean “disbursing directly to said account utilizing an electronic funds transfer.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“Unlike the means-plus function claims, we are not persuaded by Patent Owner’s argument that the term “deposited” in method claims 1 and 18 should similarly be interpreted to mean “deposited via direct deposit.” PO Resp. 30–33. Patent Owner fails to point to any support in the specification of the ’582 patent that would require the construction of the term “deposited” to mean a direct deposit or electronic funds transfer. If an inventor acts as his or her own lexicographer, the definition must be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The specification of the ’582 patent does not set forth expressly a definition of “deposited.” In fact, as cited above, the ’582 patent states that deposits are “[p]referably” conducted with the “well-known technique of electronic funds transfer,” but the specification does not limit the term “deposited” to this implementation. Ex. 1003, col. 5, ll. 20–22 (emphasis added). Even in cases where the specification describes only a single embodiment, the claims are not necessarily limited to that embodiment. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (It is not enough that the only embodiment, or all of the embodiments, contain a particular limitation to limit a claim to that particular limitation.). Here, the specification itself indicates that electronic deposits are preferable, but not required. Therefore, we do not adopt Patent Owner’s proposed construction of “deposited” recited in claims 1 and 18 as limited to “deposited via direct deposit.”” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“In accordance with the Supreme Court’s “framework for distinguishing patents that claim . . . abstract ideas from those that claim patent-eligible applications of those concepts,” we must first “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice Corp., 132 S.Ct. at 2355. In Alice Corp., the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. Id. Furthermore, the Supreme Court determined that “[l]ike the risk hedging in Bilski [v. Kappos, 561 U.S. 593 (2010)], the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” Alice Corp., 132 S.Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice Corp. that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice Corp. and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Alice Corp., 132 S.Ct. at 2357. Here, Petitioner argues that Patent Owner’s claims are directed to the abstract concept of advancing funds based on future retirement payments. Reply 4. Patent Owner does not disagree. Tr. 40 (Patent Owner’s counsel stated at the oral hearing that Patent Owner is “happy to accept what [Petitioner] claim[s] is the abstract concept.”). Similar to the concept of intermediated settlement in Alice Corp. and the concept of risk hedging in Bilski, we find that the concept of advancing funds based on future retirement payments is an economic practice long prevalent in our system of commerce and squarely within the realm of abstract ideas.” slip op. at 12
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
Patent outcomesUS 6,625,582 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Phillips · GrahamPatents in suitUS 6,625,582
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.