- Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentablePTAB · Dec 6, 2016 · IPR2015-01248 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1, 5, 20, 22–25, and 30 are unpatentable as obvious over Yamashita and Shamoon; claims 2–4, 6–8, and 19 were not proven unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that Patent Owner is attempting to improperly limit the construction. As we explained in our Decision on Institution, we declined to limit “comparison” to a particular type of evaluation, and by our construction, we did not find that the “focus” of the “comparison” is to identify “any dissimilarity” as Patent Owner contends. See Inst. Dec. 9. Indeed, as evidenced by the dictionary definitions cited by Patent Owner and that we relied upon, determining dissimilarities is not the “focus” of the plain and ordinary meaning of “comparison” that we adopted. See Inst. Dec. 9 (citing Ex. 2003 (defining “comparison” as “the act of looking at things to see how they are similar or different” and “the act of suggesting that two or more things are similar or in the same category”)); see also Ex. 2011 (defining “comparison” as “the representing of one thing or person as similar to or like another” and “an examination of two or more items to establish similarities and dissimilarities”).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Here, we agree with Petitioner that the plain language of the claim is sufficient and no construction is necessary for this term. The claim language already establishes that there are two user profiles, each is associated with a particular and different mobile device, and the profiles include “information to alter an operating condition of the network device according to a preference of a [first/second] user.” The claim already addresses what attributes the user profile must have. We see no support in the claim language or specification for Patent Owner’s additional requirements that the profiles be “individual” and “include information unique to each user.”” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“v. Summary as to Claims 1, 20, 22–25, and 30 Patent Owner raises no evidence of secondary considerations of nonobviousness in this case. Thus, weighing the evidence of obviousness that is before us, we find that Petitioner has shown by a preponderance of the evidence that claims 1, 20, 22–25, and 30 would have been obvious over the combination of Yamashita and Shamoon.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“We do not find Patent Owner’s arguments persuasive. Teaching away requires that “a person of ordinary skill upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).4 Patent Owner cites nothing in Yamashita that says that adding the features from Shamoon in addition to the automatic functionality of Yamashita would be unlikely to work; Yamashita alleges only that manual control alone has certain disadvantages. 4 We understand Patent Owner to be arguing both that the references teach away from the combination generally and teach away because, in particular, the combination would change the principle of operation of the system. PO Resp. 33–36. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012); see also Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998) (finding no teaching away where nothing in the prior art device suggested that the claimed invention was unlikely to work). The lack of teaching away is confirmed by Yamashita’s disclosure of an embodiment requiring manual interaction. See Reply 20 (citing Ex. 1006, 22:31–51). Indeed, although Patent Owner contends that automatic functionality is “not the focus or main purpose of Shamoon,” PO Resp. 35, Shamoon’s system demonstrates that automatic functionality can be combined with manual functionality to result in a working system. See Ex. 1007, 8:36–45. As for Patent Owner’s contentions that Yamashita “abandoned bi- directional communication” (PO Resp. 35), we find no support in the cited portions of Yamashita for these contentions. Although Yamashita does tout the benefits of its automatic control system, the cited portions of Yamashita are silent about the advantages or disadvantages of “bi-directional communication.” As for Patent Owner’s arguments about substantial reconstruction and redesign (PO Resp. 36 (citing Ex. 2008 ¶ 91)), we do not find the testimony or argument persuasive. Yamashita’s control terminal and mobile terminals already has built in communication abilities (Ex. 1006, 11:31–38), and we find Dr. Selker’s testimony persuasive that a person of ordinary skill would have been motivated to add the ability to communicate the thermostat reading to verify that Yamashita’s automatic control worked. Ex. 1002 ¶¶ 205–207. As for Patent Owner’s allegation that the combination with Shamoon would change Yamashita’s principle of operation, we disagree. Yamashita would continue to work as before; the messages, rules, and control information would continue operate in the same manner. Shamoon would only add additional functionality to allow for an improved user interface and two-way communication. Where the device would operate on the same principles as before, the combination does not change the principle of operation. See Mouttet, 686 F.3d at 1332 (noting Ratti inapplicable where the modified apparatus will operate “on the same principles as before”). As Petitioner explains, Shamoon demonstrates that its known techniques have been used to improve similar devices in similar ways. We find that Petitioner has articulated sufficient reasoning with rational underpinnings to support the combination. See Ex. 1002 ¶¶ 205–207, 213. Thus, we conclude that a person of ordinary skill would have had reason to combine the teachings of Yamashita and Shamoon.” slip op. at 29
Patent outcomesUS 8,626,344 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,626,344 - Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentablePTAB · Dec 6, 2016 · IPR2015-01251 · APJ Kevin W Cherry · IPR · Final written decision
Claims 9–14, 16, and 26–29 are unpatentable as obvious over Yamashita and Shamoon; claims 15, 17, and 18 were not proven unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that Patent Owner’s further narrowing of our construction is improperly limiting. As we explained in our Decision on Institution, we declined to limit “comparing” to a particular type of evaluation, and by our construction, we did not find that the “focus” of the comparison is to identify “any dissimilarity” as Patent Owner contends. See Inst. Dec. 10. Indeed, as evidenced by the dictionary definitions cited by Patent Owner and that we relied upon, determining dissimilarities is not the “focus” of the plain and ordinary meaning of “comparing” that we adopted; rather, each of them emphasizes determining similarities as well. See Inst. Dec. 9 (citing Ex. 2002 (defining “comparison” as “the act of looking at things to see how they are similar or different” and “the act of suggesting that two or more things are similar or in the same category”)); see also Ex. 2006 (defining “comparison” as “the representing of one thing or person as similar to or like another” and “an examination of two or more items to establish similarities and dissimilarities”). The specification does not compel a different understanding. The” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“that the parties’ actual dispute is twofold. First, the parties dispute whether the mobile device must be able to transmit location information to the site regardless of whether the proximity setting is enabled or disabled. See Reply 8–9; PO Resp. 14–15. Second, Patent Owner argues that the entire process of proximity detection must be automatic. PO Resp. 14. As we explain below, we agree with Petitioner that this term does not require that the mobile device continue to send location reports if the proximity setting is not enabled, whereas we disagree with Petitioner that the proximity setting is limited to enabling or disabling the ability to send location reports. Instead, we find the specification supports a broader construction. In particular, we find that the specification states that “[f]or example, a user may enable proximity detection using proximity detection selector 1036 and energy use at a site may be altered based on a user[’]s distance to the site.” Ex. 1001, 46:45–48. It further explains that “[i]n some forms, proximity detection selector 1036 can be hidden, displayed, selectable, or any combination thereof in response to a user having a mobile device capable of being detected when a user is at or away from a site.” Id. at 46:50–54. Thus, we consider the broadest reasonable construction of “proximity setting” consistent with the specification to be “a setting that can enable or disable proximity detection, where energy use at a site may be altered based on the user’s location.” Both parties acknowledge that this is a reasonable meaning of the term. Reply 8; PO Resp. 12.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“In sum, Petitioner has shown sufficiently that the control terminal in Yamashita receives messages from the wireless terminals that represent the relative location of the mobile terminal (e.g., within 300 m of the site or moving away from the site) and that the control terminal includes a number of rules to compare the messages to determine what control information to send to the controlled appliances, and that as a result of the comparison sends control information to alter the condition of the controlled appliances. See Ex. 1002 ¶¶ 214–216. Thus, we are persuaded that Yamashita accounts for the “comparing limitations” of claim 9.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that Petitioner has shown adequately that a person of ordinary skill would have been motivated to combine Yamashita with Shamoon. In particular, we do not agree with Patent Owner that Yamashita teaches away from the combination or that the combination would change the principle of operation of Yamashita.3 Patent Owner is correct that Yamashita distinguishes manual control, and notes the disadvantages of “burdensome operations” and the possibility the user may forget to perform the required operations. Ex. 1005, 1:35–40. Patent Owner is also correct that Yamashita states that one objective of the invention is a system that can automatically control an appliance based on position without requiring any operation by the user. Id. at 1:44–47. Yet, Yamashita also discloses an embodiment where the user is prompted before a message is sent, which does require an operation by the user. Id. at 23:31–51. Thus, we do not agree that Yamashita disparages all manual interaction as Patent Owner contends. Moreover, teaching away requires that “a person of ordinary skill upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Patent Owner cites nothing in Yamashita that says that adding the communication features from Shamoon to transmit the thermostat readings to the mobile terminal to the automatic functionality of Yamashita would be unlikely to work; Yamashita alleges only that manual control alone has certain disadvantages, not that communicating information from the site to” slip op. at 32
Patent outcomesUS 8,626,344 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,626,344 - Honeywell International Inc. v. Allure Energy, Inc.All claims unpatentablePTAB · Dec 6, 2016 · IPR2015-01253 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Richton and Rosenblatt.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We do not agree that the claim language unambiguously requires that there must be outer boundaries. The term “zone” generally refers to an area. We turn to the specification to see how the ’797 patent describes a zone. See Trs. of Columbia Univ. in the City of N.Y. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016) (“‘[T]he specification is always highly relevant to the claim construction analysis’ and is, in fact, ‘the single best guide to the meaning of a disputed term.’”). As Petitioner points out, the specification refers to zones that do not have an outer boundary. See Ex. 1001, 12:41–44 (“detect mobile device 210 within a first zone (e.g., less than one (1) mile from the site, less than three (3) miles from site, greater than five (5) miles from site, etc.).”). Indeed, contrary to Patent Owner’s argument that in order to be “within” the zones there must be an outer boundary, the specification describes an embodiment where the user is “within” a zone that is “greater than five (5) miles from [the] site.” Id. at 12:42–44. In this instance, there is an inner boundary for the zone (five miles), but not an outer boundary.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“attempts to rebut this testimony with testimony from its declarant, Mr. McAlexander, that this statement in Richton only means that the location-action server can be distributed over a couple of remote servers. Ex. 2004 ¶ 71. We do not find Mr. McAlexander’s testimony persuasive for several reasons. In particular, the testimony ignores Richton’s explicit statement that it is not important where the components of the location-action server are located, but that “[o]nly the operative connection between the components is important.” Ex. 1003, 12:58–59. This statement suggests that the functionality can be more distributed than Mr. McAlexander contends. Moreover, Mr. McAlexander’s testimony mischaracterizes Petitioner’s and Dr. Selker’s argument by saying that “[t]his [statement] does not disclose [that] the various components, which carry out the location-based action services, are located on the mobile device.”8 Ex. 2004 ¶ 71. Neither Petitioner nor Dr. Selker, however, suggested that this statement in Richton discloses locating the components on a mobile device. Instead, they suggested, and we agree, that because the functionality can be distributed, it enables the functionality to be placed on a mobile device.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“not commensurate with the scope of the claims because “whether” and “within” do not impart the limitations that Patent Owner seeks to include the claims. When Richton determines that the mobile device crosses a particular distance threshold such that the device is now in a particular zone, we find that Richton determines whether the device is within that zone. See Ex. 1002 ¶¶ 116–119; Ex. 1003, 6:36–50, 8:46–9:10. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that Richton teaches or suggests the zone limitations of claims 3–8 and 14.” slip op. at 18
Patent outcomesUS 8,457,797 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,457,797 - Telebrands Corp. v. Ragner Technology CorporationInstitution deniedPTAB · Nov 23, 2016 · PGR2016-00026 · APJ Michael W Kim · PGR · Institution
The Board denied institution because the petition did not show that claims 1–25 were more likely than not unpatentable for indefiniteness or obviousness over Berardi and Gladfelter.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Person of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art at the time of the effective filing date of the ’057 patent “would have been a person having general knowledge about and experience with the manufacture and/or use of hoses and with fluid mechanics and materials science as they relate to hoses and how hoses work generally. The person of ordinary skill has at least an associate’s degree in science or engineering.” Pet. 17 (citing Ex. 1005). Patent Owner does not challenge Petitioner’s assertion. On these facts, we determine that Petitioner’s articulation of a person of ordinary skill in the art is credible.” slip op. at 7
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“’057 patent defines the following relevant claim terms: “extended length” and “maximum stretched length.” Petitioner does not dispute that these claim terms are defined expressly by the ’057 patent, nor does Petitioner indicate that these claim terms are indefinite. Next, each independent claim recites expressly that the “stretched length” is longer than the “extended length,” which we construed above as “the length the hose or those components extend to when the hose is pressurized with a fluid and no extension forces are applied other than fluid pressure.” Finally, the term “maximum stretched length,” both by the use of the word “maximum” and the express definition set forth in the ’057 patent, indicates that it constitutes an upper bound for the term “stretched length.” Accordingly, through transitive analysis, we determine that the recited term “stretched length” is a relative length intermediate the explicitly defined terms “extended length” and “maximum stretched length.” Relative claim terminology is acceptable if one of ordinary skill would have understood what is claimed, in light of the Specification. Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“those components extend to when the hose is pressurized with a fluid and no extension forces are applied other than fluid pressure,” and also determined that “stretched length” is a relative length intermediate the explicitly defined terms “extended length” and “maximum stretched length.” When considered in the aggregate, we see that “extended length” is a length of a hose attributable to only fluid pressure, while “stretched length” is a length of a hose attributable to any force other than fluid pressure. Accordingly, a discussion of the prior art must acknowledge the interplay between the length of the hose, fluid pressure, and other forces, in order to meet the aforementioned claim limitation.” slip op. at 17
§ 102 anticipation§ 112 disclosurePatents in suitUS 9,182,057 - H&S Manufacturing Company, Inc. v. Oxbo International CorporationInstitution deniedPTAB · Oct 26, 2016 · IPR2016-00926 · APJ James A Tartal · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood of proving claims 28, 32, or 44 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any claim of the ’929 patent. Accordingly, the Petition is denied and no trial is instituted.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“assemblies being aligned side by side when each of the pickup assemblies is positioned in the extended use position such that the first, second, and third pickup assemblies provide a continuous line of material pickup.” Petitioner contends that “‘a continuous line of material pickup’ is: ‘a pickup face uninterrupted by gaps.’” Pet. 9 (citing Ex. 1009 ¶¶ 35–36). Patent Owner argues that “the claims require the pickup assemblies be aligned such that they pickup material continuously along the width of the merger,” and that introducing “gaps” to the meaning of the term “adds unnecessary vagueness to an otherwise definite phrase.” Prelim. Resp. 11. We agree with Patent Owner, and, for purposes of this decision, we determine no express construction is necessary for “continuous line of material pickup.”” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Beougher Figure 1 illustrates combine 10 (folded for transit) equipped with folding header assembly 11, including center section 17 and wing sections 18, which Petitioner contends correspond to the recited three pickup assemblies. Ex. 1010, 3:57–4:8, 6:5–10. As Petitioner notes, “each of the header sections carries an auger section,” and more particularly, “center section 17 rotatably supports auger section 45, and wing sections 18 carry auger sections 46.” Pet. 16 (quoting Ex. 1010, 5:10–13). Petitioner offers no additional explanation in support of its contention that each of the three auger sections of Beougher corresponds to one of the three conveyors recited in claim 44. See Pet. 16; see also Ex. 1009 ¶¶ 46–53. According to Beougher, during combine operation the center and wing sections “of the auger” are in general alignment. Ex. 1010, 6:1–3. The “structure for automatically coupling and uncoupling the auger sections, and for maintaining positive driving connection in all three auger sections during upward and downward pivoting of the header’s wing sections” is shown in Beougher in Figures 6–9. Id. at 5:31–35. Although the three auger sections permit “flexing,” the “parts are nevertheless locked against relative rotational movement by means of springloaded pins 68 received within grooves or keyways 61 of shaft extension 56.” Id. at 6:12–15. In light of these disclosures in Beougher, we agree with Patent Owner that Petitioner has not sufficiently shown that Beougher discloses the three conveyors of claim 44, as opposed to a single auger “that can be separated into sections when the combine harvester header is retracted.” See Prelim. Resp. 35. We have also considered Petitioner’s argument that “the pertinency of Beougher as an anticipatory reference was confirmed by the Patent Office during prosecution of an application related to the ’929 patent,” but find Patent Owner’s decision to cancel a claim during prosecution of a related application does not further support Petitioner’s contentions in this case. See Pet. 17; see also Prelim. Resp. 35–36 (explaining that Patent Owner accepted the allowed claim in the related application and filed a continuing application to prosecute additional claims directed to windrow mergers rather than present arguments in response to the Examiner’s rejection). Accordingly, the information presented by Petitioner does not show a reasonable likelihood that Petitioner would prevail in showing claim 44 of the ’929 patent is anticipated by Beougher.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“(citing Ex. 1012, p. 2, l. 8, Fig. 4; see also additional description of Zhavoronkin in section II.E. below). Petitioner argues that “[o]ne of ordinary skill in the art would have been motivated to modify the second pickup assembly of Schnittjer to include a transverse conveyor as taught by Zhavoronkin, to provide the device with additional options for discharging the material being picked up and moved as taught by Zhavoronkin, to arrive at claim 44 of the ’929 Patent.” Pet. 53 (citing Ex. 1009 ¶ 75 (stating the same)). Petitioner offers no additional explanation for this asserted rationale, which we find not sufficient to support the asserted combination of Schnittjer and Zhavoronkin. As explained above, the apparatus of Schnittjer operates to mix and combine material into a windrow behind its center conveyor 20. On its face, adding a transverse conveyor behind center conveyor 20 of Schnittjer, as Petitioner proposes, would preclude the apparatus from operating as intended. Petitioner provides no sufficient explanation for why Schnittjer would be modified as proposed for the purported benefit of “provid[ing] the device with additional options for discharging the material being picked up and moved,” when the modification would prevent the apparatus from discharging the material as intended. See also Prelim. Resp. 69 (arguing that “adding a middle conveyor would eliminate the device’s ability to invert the compost core on top of that side material, thereby rendering the combined apparatus inoperable for its intended purpose.”). Petitioner further argues that the asserted combination “would merely involve combining prior art elements according to known methods to yield predictable results,” “would have been predictable for at least the reason that Schnittjer already discloses pickup assemblies having transverse conveyors,” and “would merely involve the use of a known technique to improve a similar device in the same way.” Pet. 53–54. Petitioner identifies no testimony from Mr. Shirley in support of the additional arguments. We are not persuaded that the additional generic arguments offered by Petitioner in support of the asserted combination are sufficient in this case because Petitioner has not shown that its proposed modification of Schnittjer would still permit Schnittjer to operate as intended. Petitioner has identified no persuasive predictable result or improvement corresponding to its asserted combination. Accordingly, the information presented by Petitioner does not show a reasonable likelihood that Petitioner would prevail in showing claim 44 of the ’929 patent would have been obvious over Schnittjer and Zhavoronkin.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,310,929 - H&S Manufacturing Company, Inc. v. Oxbo International CorporationInstitution deniedPTAB · Oct 18, 2016 · IPR2016-00909 · APJ James A Tartal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable; the asserted references did not establish the claimed trough feature.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“requesting an inter partes review of claims 1–4 and 6–8 of U.S. Patent No. 8,511,052 B2 (“the ’052 patent”). Paper 2 (“Pet.”). Patent Owner, Oxbo International Corporation, filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any claim of the ’052 patent. Accordingly, the Petition is denied and no trial is instituted.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted). Petitioner offers little explanation or evidence in support of its contention that the 2004 Oxbo Manual and the 2006 Oxbo Manual are prior art printed publications. With respect to the 2004 Oxbo Manual, Petitioner does no more than identify a copyright date which does not correspond to the date of revision that also appears on the document. Pet. 18. With respect to the 2006 Oxbo Manual, Petitioner further contends that “by its nature, the repair parts manual was made available to the public.” Id. at 35. The statement of Mr. Shirley, to which the Petition cites as support, offers no evidence specific to the manuals asserted as prior art, but instead consists of a general observation that Patent Owner sold windrow mergers, and a conclusory statement that “manuals such as these were distributed to the consuming public by Oxbo as manufacturers typically do.” Ex. 1010 ¶ 34. Mr. Shirley is not explicit in what “manuals such as these” he is referring to, but the paragraph cited by Petitioner addresses “similar manuals for its 2003 and 2005 Model Year 310 Windrow Mergers,” not explicitly the 2004 Oxbo Manual and the 2006 Oxbo Manual. We are not persuaded, based on the facts of this case, that the presence of a copyright notice dated prior to the revision date of the document and a generic reference to the “nature” of a document as a manual is sufficient evidence to support a threshold showing of public accessibility as of a particular date to support institution of inter partes review. See, e.g., ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, slip op. at 17 (PTAB Aug. 26, 2015) (Paper 13) (finding a copyright notice insufficient); but see Ford Motor Co. v. Cruise Control Techs. LLC, Case IPR2014-00291, slip op. at 7–8 (PTAB June 29, 2015) (Paper 44) (finding a copyright notice sufficient evidence of publication) (citing FLIR Sys., Inc. v. Leak Surveys, Inc., Case IPR2014-00411, slip op. at 18–19 (PTAB Sept. 5, 2014) (Paper 9)). While Petitioner argues that the copyright date and the revision date of both manuals predate the priority date of the ’052 patent, Petitioner has provided no evidence that the references at issue were disseminated as of any particular date, and does not otherwise explain why these particular manuals were “sufficiently accessible to the public interested in the art” before the critical date. See In re Cronyn, 890 F.2d at 1160; see also ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 865–66 (Fed. Cir. 2010) (finding no error in district court’s determination that user manuals were not printed publications in the absence of evidence of the source, publication, or public accessibility of either manual). Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any challenged claims of the ’052 patent based on the 2004 Oxbo Manual or the 2006 Oxbo Manual.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“The photo above from the 2004 Oxbo Manual appears to show a portion of the 310 Windrow Merger. Neither Petitioner nor Mr. Shirley further explains why the photo shows the trough feature, as claimed. See Ex. 1010 ¶ 37 (stating that “[t]he trough can be seen in the figure” (referring to third photo on page 23224 of the 2004 Oxbo Manual), and that “[i]n my opinion one of ordinary skill in the art would view these assemblies as the pickup and transfer unit as claimed in the ‘052 Patent”). Contrary to Petitioner’s conclusory assertions, we agree with Patent Owner that Petitioner has not sufficiently identified any structure in the 2004 Oxbo Manual corresponding to the trough feature. See Prelim. Resp. 27–32. The figures and photos cited by Petitioner all show that the pickup head of the 2004 Oxbo Manual “does not form a wall on the forward side of the conveyor and that the conveyor belt is horizontally flush with the pickup head.” Prelim. Resp. 28. Petitioner has not shown how the pickup head depicted in the 2004 Oxbo Manual, together with the conveyor and cover, “defines a trough” because the conveyor belt is horizontally flush with the pickup head. As explained in our claim construction discussion above, we agree with Patent Owner that the recited trough feature requires a depth formed by two sides. Petitioner has not shown how the 2004 Oxbo Manual satisfies this limitation.5” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Dow Figure 15 shows pickup transfer assembly 108, including merger head 128, arcing shroud 160. Ex. 1008, 4:42–44, 4:66–5:1, 6:18–20. Neither Petitioner nor Mr. Shirley further explains why the Dow apparatus shows the trough feature, as claimed. See Ex. 1010 ¶ 69 (stating that “[t]he trough can be seen in [Dow] Figure 15,” and that “[i]t is my opinion that one of ordinary skill in the art would understand these assemblies to be the pickup and transfer unit disclosed in the ’052 Patent”). Patent Owner contends that Dow does not disclose a trough, as shown in Figure 3 of Dow, reproduced below. Dow Figure 3 shows merger apparatus 100, including head unit 124 and conveyor 134. Ex. 1008, 4:35–37, 62–66. We agree with Patent Owner that Dow, as shown in Figure 3, illustrates “a pickup head and conveyor belt on the same horizontal plane,” and that the belt conveyor “is not located in a depth or depression between the pickup heads and front of shrouds.” Prelim. Resp. 45–46. As noted above, we agree with Patent Owner that the recited trough feature requires a depth formed by two sides. Petitioner has not shown how the pickup head depicted in Dow, together with the conveyor and shroud, “defines a trough” because the conveyor belt is horizontally flush with the pickup head. As explained in our claim construction discussion above, we agree with Patent Owner that the recited trough feature requires a depth formed by two sides. Petitioner has not shown how Dow satisfies this limitation. Petitioner has not sufficiently shown that any of the asserted references discloses “a pickup and transfer unit defining a trough in which material is conveyed,” as recited in claim 1, the only challenged independent claim. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any challenged claims of the ’052 patent based on the 2004 Oxbo Manual, the 2006 Oxbo Manual, Pourchet, or Dow.” slip op. at 15
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,511,052 - Apple Inc. v. Ameranth, Inc.Institution deniedPTAB · Sep 28, 2016 · CBM2016-00053 · APJ Kevin W Cherry · CBM · Institution
The Board denied Apple’s petition and did not institute CBM review because Apple failed to establish standing, including a real and immediate controversy concerning the ’060 patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“3. Analysis We agree with Patent Owner that Petitioner has failed to show sufficiently that it has standing to bring this covered business method patent review. Specifically, we agree with Patent Owner that Petitioner has not established sufficiently, at this time, that there is a real and immediate 8 controversy regarding the ’060 patent. An essential link in the logical chain of Petitioner’s allegations that it has standing is that the scope of the claims of the ’060 patent and the asserted claims of ’850 patent in the district court lawsuit are “substantially similar.” See Pet. 7–10. We agree, however, with Patent Owner that Petitioner has not shown adequately that the claims of the two patents are sufficiently similar. Although Petitioner contends that claim 13 of the challenged patent is similar in scope to claim 12 of the already asserted ’850 patent, it fails to provide any meaningful analysis to support its contention. Instead, it merely summarizes and lists certain similar claim limitations in the two claims without providing any discussion of the actual language of the identified limitations, the other limitations in the claims, and the claims as a whole.” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityDenied
“petitioner’s grounds for standing. 37 C.F.R. § 42.304(a). Rule 42.304(a) states it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.” Id. One of those eligibility requirements is that only persons (or their privies) who have been sued or charged with infringement under a patent are permitted to file a petition seeking a covered business method patent review of that patent. AIA § 18(a)(1)(B); 37 C.F.R. § 42.302(a). Under our rules, “[c]harged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court.” 37 C.F.R. § 42.302(a).” slip op. at 5
Discretionary denialPatents in suitUS 9,009,060 - LG Electronics Inc. v. Core Wireless Licensing S.A.R.L.Institution deniedPTAB · Aug 22, 2016 · IPR2016-00986 · APJ Jameson Lee · IPR · Institution
The Board denied institution on claim 15 under § 314(a), finding the second petition an unjustified serial challenge that fixed deficiencies in the first petition; joinder was dismissed as moot.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“IPR2015-01986. Rather, Petitioner states: “For purposes of this Petition, Petitioner has followed the constructions adopted by the Board in IPR2015- 01986, set forth below. These constructions are relevant to claim 15, either directly or through its dependence on claim 14.” Pet. 12–13. Petitioner no longer relies on Sony or Shiroshita, which we described in the Institution Decision of IPR2015-01986 as not adding to the disclosure of MMS Spec. More importantly, Byers has been added to the combination of MMS Specs. and Nokia, to account for the full extent of the limitation in claim 15 that was at issue in IPR2015-01986, as we have construed it in the Institution Decision of IPR2015-01986. The same is true with respect to Rochkind. Petitioner does not indicate when or how it first became aware of Byers and Rochkind, and does not represent that either Byers or Rochkind reasonably was unavailable to Petitioner at the time of filing of its first petition. These facts suggest this is a case of undesirable incremental- petitioning, where a petitioner relies on a Board decision in a prior proceeding involving the same parties, the same patent, and the same claim, to mount a second attack against a claim after an unsuccessful first attack, by fixing deficiencies, noted by the Board, that should not have been in the first petition.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“5. Conclusion For all of the reasons discussed above, and given the limited resources of the Board, we exercise our discretion not to institute review in this proceeding with respect to claim 15. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a). B. Petitioner’s Motion for Joinder Because we do not institute inter partes review of claim 15 on any ground of unpatentability, Petitioner’s Motion for Joinder, which seeks joinder of the instant proceeding with IPR2015-01986, is moot. III. ORDER It is ORDERED that the Petition is denied and no trial or inter partes review is instituted for claim 15 of the ’049 patent on any ground; and” slip op. at 15
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“B. Petitioner’s Motion for Joinder Because we do not institute inter partes review of claim 15 on any ground of unpatentability, Petitioner’s Motion for Joinder, which seeks joinder of the instant proceeding with IPR2015-01986, is moot. III. ORDER It is ORDERED that the Petition is denied and no trial or inter partes review is instituted for claim 15 of the ’049 patent on any ground; and FURTHER ORDERED that Petitioner’s Motion for Joinder is dismissed as moot.” slip op. at 15
Discretionary denialPatents in suitUS 8,165,049 - Alstom Grid LLC v. Dominion Resources, Inc. And Virginia Electric And Power CompanyInstitution deniedPTAB · Jul 6, 2016 · IPR2016-00504 · APJ Kalyan K Deshpande · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1-3, 5-10, 12, 13, and 15-20 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review of claims 1‒3, 5‒10, 12, 13, and 15‒20 of U.S. Patent No. 8,437,883 B2 (Ex. 1002, “the ’883 patent”). Paper 1 (“Pet.”). Dominion Resources, Inc. and Virginia Electric and Power Company (collectively, “Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and associated evidence, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing unpatentability of all the challenged claims. We, therefore, deny the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Patent Owner argues that Deaver fails to disclose “a signal reporting what was sensed by a sensor that is not included in the subset.” Prelim. Resp. 14‒15. We agree with Patent Owner. As argued by Patent Owner, Petitioner contends that Deaver discloses “alerts” that are transmitted when the minimum and maximum voltage thresholds are exceeded. Prelim. Resp. 14‒15; see Pet. 23. However, the CPVMs transmitting the alerts are monitors at each customer premises that are “selected by an electric utility company as a desired point within the power distribution system [] that will be voltage monitored.” Ex. 1004, 4:1‒3. As such, the CPVMs are all in the subset of sensors being monitored, and none of CPVMs are “not included in the subset.” Accordingly, we agree with Patent Owner that Deaver fails to disclose “at least one other sensor of the plurality of sensors that is not included in the subset is further configured to send a respective reporting signal.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner. Petitioner fails to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Petitioner generally states that Deaver, LaPlace, Richeson, and Bell are analogous to the ’883 patent because they are in the same field of endeavor, dealing with power distribution systems and power management in power distribution systems, and metering technology. Pet. 16. Petitioner goes on to characterize each of the references in this field of endeavor. Id. at 16‒17. Although a determination that the cited prior art is analogous to the ’883 patent provides insight into the scope and content of the prior art to be examined, such a determination is, by itself, insufficient to support the conclusion of obviousness. Petitioner must set forth an articulated reasoning with some rational underpinning in supporting its legal conclusion of obviousness, and must provide a reason that would have prompted a person of ordinary skill in the art to combine the elements disclosed by each of the references. Here, Petitioner has failed to provide such a reasoning.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that there is no need to construe expressly any of the claim terms at this time. Although Petitioner and Patent Owner disagree as to the construction of the term “energy delivery parameter,” we need not construe this term because it is not necessary to resolve the dispositive issues discussed below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,437,883 - Alstom Grid LLC v. Dominion Resources, Inc. And Virginia Electric And Power CompanyInstitution deniedPTAB · Jul 6, 2016 · IPR2016-00503 · APJ Kalyan K Deshpande · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–5, 7–13, 15, 16, and 18–34 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner. Petitioner fails to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that there is no need to construe expressly any of the claim terms at this time. Although Petitioner and Patent Owner disagree as to the construction of the term “energy delivery parameter,” we need not construe this term because it is not necessary to resolve the dispositive issues discussed below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Patent Owner argues that Deaver fails to disclose “a signal reporting what was sensed by a sensor that is not included in the subset.” Prelim. Resp. 14‒16. We agree with Patent Owner. As argued by Patent Owner, Petitioner contends that Deaver discloses “alerts” that are transmitted when the minimum and maximum voltage thresholds are exceeded. Prelim. Resp. 14‒16; see Pet. 22. However, the CPVMs transmitting the alerts are monitors at each customer premises that are “selected by an electric utility company as a desired point within the power distribution system [] that will be voltage monitored.” Ex. 1004, 4:1‒3. As such, the CPVMs are all in the subset of sensors being monitored, and none of the CPVMS are “not included in the subset.” Accordingly, we agree with Patent Owner that Deaver fails to disclose “at least one other sensor of the plurality of sensors that is not included in the subset is further configured to send a respective reporting signal.” Patent Owner further argues that Deaver fails to disclose “add[ing] to the subset the at least one other sensor that sent the respective reporting signal,” as recited by independent claim 1. Prelim. Resp. 8‒14. We agree with Patent Owner. Petitioner contends that Deaver discloses voltage adjustment instructions based on the reported measurement data, and “because any number of customer premises may be selected for voltage monitoring, the reporting meter could be added to the monitored subset.” Pet. 23 (citing Ex. 1004, 4:45‒60, 5:47‒62, 6:46‒51; Ex. 1001, 38‒42). However, as argued by Patent Owner, Deaver is silent as to adding to the subset of CPVMs being monitored. See Prelim. Resp. 9. At best, Petitioner’s argument that any number of customer premises may be selected, and meters could be added to the subset is an argument towards the obviousness of this limitation, not anticipation, as challenged by Petitioner. See Pet. 23. Accordingly, we agree with Patent Owner that Deaver fails to disclose “wherein the voltage controller is further configured to add to the subset the at least one other sensor in response to receiving the reporting,” as recited by independent claim 1.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner. Petitioner fails to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Petitioner generally states that Deaver, LaPlace, Richeson, and Bell are analogous to the ’510 patent because they are in the same field of endeavor, dealing with power distribution systems and power management in power distribution systems, and metering technology. Pet. 14. Petitioner goes on to characterize each of the references in this field of endeavor. Id. at 14‒15. Although a determination that the cited prior art is analogous to the ’510 patent provides insight into the scope and content of the prior art to be examined, such a determination is, by itself, insufficient to support the conclusion of obviousness. Petitioner must set forth an articulated reasoning with some rational underpinning in supporting its legal conclusion of obviousness, and must provide a reason that would have prompted a person of ordinary skill in the art to combine the elements disclosed by each of the references. Here, Petitioner has failed to provide such a reasoning. We further agree with Patent Owner that testimony from Dr. Kezunovic’s Declaration should not be incorporated in to the Petition. See Prelim. Resp. 31‒33. The Petition itself does not address a rationale to combine Deaver, LaPlace, Richeson, Bell, Keefe, and ANSI C84.1-2006, and further does not direct us to discussion in Dr. Kezunovic’s Declaration for a rationale to combine. At best, Dr. Kezunovic asserts that “DMS, smart meters, and substations are well-known prior art elements, whereby their combination yields predictable results.” Ex. 1001, 95; see Ex. 1001, 176, 238, 250. However, Dr. Kezunovic does not provide any explanation as to why the combination of “DMS, smart meters, and substations” would yield predictable results. Accordingly, even if we were to incorporate Dr. Kezunovic’s Declaration in to the Petition, which we do not, we are not persuaded that Petitioner has set forth articulated reasoning with some rational underpinning in supporting its legal conclusion of obviousness. As such, Petitioner has not demonstrated a reasonable likelihood in prevailing in its obviousness challenges.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,577,510
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.