- Apple Inc. v. Corephotonics Ltd.Adverse judgmentPTAB · Feb 11, 2022 · IPR2018-01146 · APJ Monica S Ullagaddi · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 6 and 14 after their disclaimer, then terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. ANALYSIS Actions construed as a request for adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b). Here, Patent Owner has disclaimed claims 6 and 14 (along with unchallenged claims 3–5 and 8–11) of the ’712 patent under 35 U.S.C. § 253 according to the procedures set forth in 37 C.F.R. § 1.321(a). Ex. 3002, 1. We agree with Petitioner that 37 C.F.R. § 42.73(b) provides that the Board should construe Patent Owner’s statutory disclaimer to be a request that the Board enter adverse judgment against it with respect to claims 6 and 14, the only claims at issue, in this proceeding. Ex. 3001; see also Unified Patents, LLC v. Arsus, LLC, IPR2020-00948, Paper 18 at 2 (PTAB Jan. 27, 2021) (construing statutory disclaimer of all challenged claims as request for adverse judgment), aff’d, Case No. 2021- 1648, 2021 WL 5315423 (Fed. Cir. Nov. 16, 2021). Having reviewed the Disclaimer (Ex. 3002), we determine that entry of adverse judgment against Patent Owner with respect to claims 6 and 14 of the ’712 patent is appropriate. Claims 1, 2, 7, 12, 13, 15–17, and 19 are no longer part of this IPR proceeding because we made a final judgment with regard to these claims and that judgment has not been reversed or vacated. See 37 C.F.R. § 42.2 (“A decision is final only if it disposes of all necessary issues with regard to the party seeking judicial review, and does not indicate that further action is required.” (emphasis added)). As such, these claims are not “in the trial” within the meaning of 37 C.F.R. § 42.73(b)(2). The Federal Circuit remanded the Decision as to only claims 6 and 14. As such, our determination of adverse judgment does not apply to claims 1, 2, 7, 12, 13, 15–17, and 19. Patent Owner’s Disclaimer of claims 6 and 14 means that Patent Owner has no claims remaining in the present proceeding.” slip op. at 3
NonePatents in suitUS 9,568,712 - Apple Inc. v. Corephotonics Ltd.All claims unpatentablePTAB · Apr 6, 2020 · IPR2019-00030 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1–5 are unpatentable as obvious over Ogino and Beich; claims 1–4 are also unpatentable over Ogino alone, but claim 5 is not shown unpatentable on that ground.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We construe claim terms to the extent necessary. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“supported by the cited evidence. We are persuaded, instead, that “the image plane and the sensor are taught by the ’568 patent to be coincident,” and “[t]hus, there is no ambiguity in the ’568 patent about where the image plane is located or that TTL is measured to the image plane,” as Petitioner argues in its Reply. Reply 13 (Ex. 1026 ¶ 5; Ex. 1003, 33–35). Patent Owner acknowledges as much, noting that “as these terms[, i.e., the image plane and the sensor,] are used in the specification of the ’568 patent, the image plane is the surface of the sensor.” Sur-reply 2. We find that the ’568 patent discloses that the electronic sensor corresponds to or is coincident with the image plane and thus, the TTL could be measured with respect to either the sensor (electronic or film) or the image plane and reach the same result. Based upon the complete trial record, we maintain our construction of TTL from the ’1140IPR and the ’1146IPR3, which encompasses “the length of the optical axis spacing between the object-side surface of the first lens element and one of: an electronic sensor, film, and an image plane corresponding to either the 3 The panel authorized, and the parties filed, supplemental briefing to address this construction before it was adopted in both the related ’1140IPR and ’1146IPR, and that the parties responded to this construction in the hearing in this proceeding (with citations to the transcript). See, e.g., Paper 28 (PO’s demonstratives), 5; ’1140IPR, Paper 31; ’1146IPR, Paper 30; see also Trial Practice Guide Update 13–14 (July 2019), https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-update3.pdf; Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1339 (Fed. Cir. 2018) (finding that the Board did not violate the Administrative Procedure Act when it adopted its own claim construction in the final decision because the parties had notice and an opportunity to be heard). electronic sensor or a film sensor.” See ’1140IPR, Paper 37, 18; ’1146IPR, Paper 37, 14.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Even assuming, arguendo, we were to credit Patent Owner’s expert testimony as to the disjointed nature of optical lens assembly design experience and manufacturing experience, we are not persuaded that a person of ordinary skill in the art at the time of the invention having only design experience would be so completely unaware of manufacturing considerations so as to preclude taking into account the very general guidance of Beich. See Reply 24–25. Beich teaches that a lens designer should have a basic understanding of the manufacturing process, which would include the limits for fabricating lens elements in an optical lens assembly. Ex. 1020, 7. We are persuaded that the information conveyed in Beich would have been understood, known, and applied by the ordinarily skilled lens designer (see Reply 4–6 (citing Ex. 2014, 4, 9, 11, Fig. 9.2)), irrespective of whether such person had manufacturing experience. Stated differently, although an ordinarily skilled designer of an optical lens assembly may not have had any real-world manufacturing experience, we are persuaded that such person would still have taken into account manufacturing concerns. Although there are differences between the definitions proposed, our conclusions rendered in this decision do not turn on selecting a particular definition for the level of ordinary skill in the art, for the reasons discussed above. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’568 patent and the asserted prior art. We agree with Patent Owner’s proposal regarding the level of ordinary skill except for Patent Owner’s arguments about manufacturing discussed above. As such, we adopt Patent Owner’s proposal.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“As noted by Petitioner, The Handbook of Optics discloses that “[i]n the case of both negative and positive lens elements, it is good policy to avoid element forms wherein the center-to-edge thickness ratio exceeds three for positive elements.” Ex. 1019 § 34.15. Thus, we are persuaded by Petitioner’s fourth reason that the cited disclosure provides evidence that the ordinarily skilled artisan would have selected a particular diameter for the first lens element disclosed in Ogino in conformance with manufacturing considerations known to the ordinarily skilled artisan. We are further persuaded that, from the selection of that particular diameter, a Z1 value for the object-side surface and a Z2 value for image-side surface at the minimum usable edge of the first lens element can be obtained and, in turn, circumferential edge thickness L1e can be obtained. Pet. 35–36 (citing Ex. 1003, 42; Ex. 1005, 15:1–3). We are further persuaded by Petitioner’s supporting reasoning that “a POSITA would understand the manufacturing benefits of maintaining the lowest possible center-to-edge thickness ratio since ‘the preferred shape of a molded element is one that has fairly uniform thickness.’” Id. at 42 (quoting Ex. 1018, 92) (citing Ex. 1003, 48). Based on our review of the complete record, we find that the record supports Petitioner’s contentions concerning claim 1. Petitioner demonstrates by a preponderance of the evidence that claim 1 is unpatentable as obvious over Ogino.” slip op. at 37
Patent outcomesUS 9,857,568 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,857,568 - Apple Inc. v. Corephotonics Ltd.All claims unpatentablePTAB · Dec 3, 2019 · IPR2018-01140 · APJ Marc S Hoff · IPR · Final written decision
Claims 1 and 13 are unpatentable as anticipated by Ogino; claims 14 and 15 are unpatentable as obvious over Ogino and Chen II.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“claims 1 and 13 of the ’032 Patent are anticipated by Ogino. Petitioner has also demonstrated, by a preponderance of the evidence, that claims 14 and 15 of the ’032 Patent are unpatentable over the combination of Ogino and Chen II. The chart below summarizes our conclusion. References Claims Claims Claims 35. Shown Not shown Challenged U.S.C. Unpatent- Unpatentable able Ogino 1 and 13 1 and 13 § 102 Ogino, Chen 14 and 15 14 and 15 § 103 II 1 and 13-15” slip op. at 40
- Skill levelSkill level board ownDecided for petitioner
“that Ogino and Chen II disclose substantially different lens systems. PO Resp. 36. As Petitioner points out, both Ogino and Chen II describe mobile phone camera systems with all lenses being aspheric; a first lens with a meniscus shape with positive refractive power; a second lens with negative refractive power; a third lens with a meniscus shape and with a negative refractive power; a fourth lens with a meniscus shape with positive refractive power; and a fifth lens with a meniscus shape and with a negative refractive power. Pet. Reply 22; Pet. 41–44. We agree with Petitioner that such a skilled artisan, possessing an applicable college degree, approximately three years experience in designing multi-lens optical systems, “experience in analyzing, tolerancing, adjusting, and optimizing multilens systems, and experience with lens design software such as CodeV, Oslo, or Zemax,” would have the appropriate knowledge to perform routine modifications to a lens design. Pet. Reply 24; Pet. 7; PO Resp. 12. Patent Owner’s expert Dr. Moore testified that such a skilled artisan “would be able to use the computer program [i.e. CodeV or Zemax] to optimize lens designs.” Pet. Reply 24; Ex. 1025, 29:25–30:9. Dr. Moore testified that the skilled artisan would “tell the [lens design] program that you want to vary certain parameters of a lens . . . . And then the program, through a fairly complicated algorithm, then actually goes through and varies them and determines how to make a better lens. You determine as a lens designer what you’re trying to improve.” Ex. 1025, 28:13–23.” slip op. at 38
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We are unpersuaded by Patent Owner’s argument that the skilled artisan would have understood that third, fourth, and fifth lenses also contribute to vignetting in Ogino. PO Resp. 38. We credit Petitioner’s argument that Dr. Moore’s conclusion regarding vignetting in the third, fourth, and fifth lenses is unreliable because it is based on assumptions not specified in Ogino. Pet. Reply 16; Ex. 1026 ¶ 11. For example, Ogino does not provide lens diameters or vignetting apertures for the lens assembly of Example 6 that would vignette the light beams on the third, fourth or fifth lens elements. Pet. Reply 17; Ex. 1026 ¶ 11. Additionally, Dr. Sasián testifies that vignetting is a result of the second lens. Pet. Reply 17–18; Pet. 54; Ex. 1003, 59.” slip op. at 36
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Effective Focal Length (EFL) Petitioner asserts that while the specification of the ’032 Patent does not offer an express definition for the term “effective focal length,” “its meaning is well known in the art, as exemplified in Li (Ex. 1007), which states that “[t]he focal length of a lens assembly [is] also referred to as the effective focal length [(]EFL).” Pet. 9–10 (internal parentheses omitted); Ex. 1007, 2:59–61. Patent Owner, in response, does not dispute Petitioner’s construction of “effective focal length,” stating that the Petition does not turn on the construction of the term. PO Resp. 20. Having reviewed the evidence of record, we agree with Petitioner that Li supports construing the term “effective focal length” as “the focal length of a lens assembly.” We adopt this construction.” slip op. at 10
Patent outcomesUS 9,402,032 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,402,032 - Apple Inc. v. Corephotonics, Ltd.Rehearing deniedPTAB · Aug 5, 2019 · IPR2018-01348 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because the petition did not show a sufficient motivation to combine Parulski and Christie.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“and Parulski’s teachings of zoom are combinable (id.) and Petitioner has not established that they are predictable variations of each other. Disparate embodiments in one reference can only be combined if they are a “predictable variation” of each other that does not “require a leap of inventiveness.” C.f. Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009); see e.g. Apple Inc. v. Valencell, Inc., Case IPR2017- 01704, slip op. at 10 (PTAB Mar. 27, 2018) (Paper 9) (acknowledging Boston Scientific stands for the proposition that combining two embodiments from the same reference requires an obviousness analysis); LG Display Co., LLC v. Innovative Display Techs LLC, Case IPR2014-01362, slip op. at 13 (PTAB Mar. 2, 2015) (Paper 12) (“The rationale . . . that a person of ordinary skill would ‘pick and choose’ features from various embodiments of Baur, simply because they are in the same patent, is insufficient to demonstrate a reasonable likelihood of prevailing on this challenge”). “Even when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“fused image.” Reh’g Req. 13. The Petition proposed that “fused image” should be construed as “an output image including information from two images.” We determined that construing that term was unnecessary to resolve any controversy. Inst. Dec. 7. We maintain that determination. Petitioner provides a construction for “fused image” but not for “without fusion continuous Zoom video mode output images of the object or scene.” Id. at 9–10. We properly considered the entire claim limitation in assessing whether Petitioner had shown a reasonable likelihood of prevailing in its obviousness challenge. slip op. at 12
- BurdenDecided for patent owner
“The burden of persuasion remains on a petitioner in inter partes review proceedings. See DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999). Petitioner appears to now argue that, in order to understand its contentions as to the “without fusion” limitation in Parulski, we were to mine the Petition for references to “switching between Wide sensor and Tele sensor” associated with Golan. We were not required to do so. Id. (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”); c.f. Fieldpiece Instruments, Inc. v. Twin Rivers Eng’g, Inc., Case IPR2017-00362, slip op. at 4 (PTAB Sept. 25, 2017) (Paper 16)(“the portions of the Petition cited in the Rehearing Request relate only to overviews of the references”)” slip op. at 8
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,185,291 - Bungie, Inc. v. Acceleration Bay, LLCRehearing deniedPTAB · Jun 29, 2018 · IPR2017-01600 · APJ Marc S Hoff · IPR · Rehearing
The Board denied Bungie’s rehearing request and maintained denial of institution because Francis and Gilbert did not show a reasonable likelihood of obviousness for claims 1–5, 7, 8, and 11–13.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A. Principles of Law When rehearing a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. Discussion In our Decision, we concluded that the information presented did not show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–5, 7, 8, and 11–13 are rendered obvious by Francis1 and Gilbert.2 Dec. 13. Specifically, we determined that the combination of Francis and Gilbert, taken together, did not disclose “identifying a pair of participants of the network that are connected wherein [1] a seeking participant contacts a fully connected portal computer, [2] which in turn sends an edge connection request to [3] a number of randomly selected neighboring participants to which the seeking participant is to connect.” Dec. 9–12.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“overlooked any points made in the Petition. In our Decision, we explicitly referred to pages 53–55 of the Petition in discussing Francis’s teaching of “rendezvous hosts,” and Petitioner’s argument that modifying Francis’s rendezvous host with the features of Gilbert’s portal computer would provide some messaging efficiencies. Dec. 11. We concluded that Petitioner “fails to explain sufficiently why it would have been obvious to combine Francis and Gilbert to have a seeking participant contact a fully connected portal computer as claimed.” Id. at 11–12.” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,910,069 - Bungie, Inc. v. Acceleration Bay, LLCInstitution deniedPTAB · Jan 10, 2018 · IPR2017-01600 · APJ Marc S Hoff · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–5, 7, 8, and 11–13 obvious over Francis and Gilbert.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner, however, has not sufficiently explained how or why a person having ordinary skill in the art would have combined Francis and Gilbert to achieve this claim element. Petitioner explains that Francis teaches rendezvous hosts that allow hosts joining a group to find other hosts already in the tree-mesh, and that Francis randomly selects “neighbors” (simply other network members) for every node. See Pet. 53– 55. Petitioner further argues that Gilbert, like Francis, teaches the concept of multifunctional nodes that can execute the steps of adding a new node to the network. According to Petitioner, modifying Francis’s rendezvous host with the features of Gilbert’s portal computer would provide some messaging efficiencies. Pet. 55. In our view, however, Petitioner fails to explain sufficiently why it would have been obvious to combine Francis and Gilbert to have a seeking participant contact a fully connected portal computer as claimed. Still further, the disputed phrase requires that the edge connection request be sent to a “number of randomly selected” neighboring participants to which the seeking participant is to connect. Petitioner asserts that Francis provides for random selection of neighbors for every node. Pet. 55; Ex. 1005, 14. Merely choosing neighboring participants in a random manner to connect to, as Francis does here, is not the same as sending a request to a number of randomly selected neighboring participants. Petitioner has not explained how Francis and Gilbert would be combined to teach a portal computer “send[ing] an edge connection request to a number of randomly selected neighboring participants.”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner, however, has not sufficiently explained how or why a person having ordinary skill in the art would have combined Francis and Gilbert to achieve this claim element. Petitioner explains that Francis teaches rendezvous hosts that allow hosts joining a group to find other hosts already in the tree-mesh, and that Francis randomly selects “neighbors” (simply other network members) for every node. See Pet. 53– 55. Petitioner further argues that Gilbert, like Francis, teaches the concept of multifunctional nodes that can execute the steps of adding a new node to the network. According to Petitioner, modifying Francis’s rendezvous host with the features of Gilbert’s portal computer would provide some messaging efficiencies. Pet. 55. In our view, however, Petitioner fails to explain sufficiently why it would have been obvious to combine Francis and Gilbert to have a seeking participant contact a fully connected portal computer as claimed.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Still further, the disputed phrase requires that the edge connection request be sent to a “number of randomly selected” neighboring participants to which the seeking participant is to connect. Petitioner asserts that Francis provides for random selection of neighbors for every node. Pet. 55; Ex. 1005, 14. Merely choosing neighboring participants in a random manner to connect to, as Francis does here, is not the same as sending a request to a number of randomly selected neighboring participants. Petitioner has not explained how Francis and Gilbert would be combined to teach a portal computer “send[ing] an edge connection request to a number of randomly selected neighboring participants.” For all of the above reasons, we are not persuaded that Petitioner has established a reasonable likelihood that Petitioner would prevail in its challenge to independent claim 1, or to dependent claims 2–5, 7, 8, and 11–13.” slip op. at 12
§ 103 obviousnessPatents in suitUS 6,910,069 - Bungie, Inc. v. Acceleration Bay, LLCInstitution deniedPTAB · Jan 9, 2018 · IPR2017-01601 · APJ Lynne E Pettigrew · IPR · Institution
Institution was denied for claims 19–24 because the petition did not show a reasonable likelihood that Gilbert and Francis render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner fails to demonstrate that Gilbert in view of Francis teaches “requesting the located portal computer to provide an indication of neighbor participants to which the participant can be connected,” as required by claim 19. See Prelim. Resp. 41–44. First, contrary to Petitioner’s argument, the various “portal computer” embodiments in Gilbert relied on by Petitioner do not describe a joining node requesting the portal computer to provide an indication of two adjacent nodes (i.e., the claimed “neighbor participants”) to which the joining node can connect. In the first example cited by Petitioner, see Pet. 47, a new node contacts a node it knows to be already on the network, which Petitioner alleges is the claimed “portal computer.” Ex. 1021, 6:33–34. That node then provides information regarding an adjacent node. Id. at 6:40–42. Thus, as Patent Owner correctly points out, the alleged portal computer identifies only a single adjacent node. See Prelim. Resp. 41. Although Gilbert describes a joining node contacting two adjacent nodes in the network and then connecting to those two nodes, the “two adjacent nodes” are the alleged portal computer and one of its adjacent nodes, not two nodes adjacent to the portal computer, as Petitioner suggests. See Ex. 1021, 6:32–49, Fig. 7. Thus, the node seeking to join the network does not request the portal computer to provide an indication of neighbor participants to which it can be connected, as required by claim 19, but instead only requests an indication of one neighbor participant.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner that Petitioner fails to demonstrate that Gilbert in view of Francis teaches “requesting the located portal computer to provide an indication of neighbor participants to which the participant can be connected,” as required by claim 19. See Prelim. Resp. 41–44. First, contrary to Petitioner’s argument, the various “portal computer” embodiments in Gilbert relied on by Petitioner do not describe a joining node requesting the portal computer to provide an indication of two adjacent nodes (i.e., the claimed “neighbor participants”) to which the joining node can connect. In the first example cited by Petitioner, see Pet. 47, a new node contacts a node it knows to be already on the network, which Petitioner alleges is the claimed “portal computer.” Ex. 1021, 6:33–34. That node then provides information regarding an adjacent node. Id. at 6:40–42. Thus, as Patent Owner correctly points out, the alleged portal computer identifies only a single adjacent node. See Prelim. Resp. 41. Although Gilbert describes a joining node contacting two adjacent nodes in the network and then connecting to those two nodes, the “two adjacent nodes” are the alleged portal computer and one of its adjacent nodes, not two nodes adjacent to the portal computer, as Petitioner suggests. See Ex. 1021, 6:32–49, Fig. 7. Thus, the node seeking to join the network does not request the portal computer to provide an indication of neighbor participants to which it can be connected, as required by claim 19, but instead only requests an indication of one neighbor participant.” slip op. at 10
§ 103 obviousnessPatents in suitUS 6,829,634 - Apple Inc. v. Masa LLCAll claims unpatentablePTAB · Sep 11, 2017 · IPR2016-00748 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 6–14 are unpatentable: Acharya anticipates them, and Sweeney combined with Acharya renders them obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“1. “Selector Option Switch” Petitioner contends a person of ordinary skill in the art would construe the claim term “selector option switch” as excluding touch screen input devices, because the Specification of the ’834 patent describes a touch screen selector as a substitute for the selector option switch. Pet. 13–14. Patent Owner does not propose further construction of this term. PO Resp. 16. We agree with Petitioner that the broadest reasonable construction of the “selector option switch,” when read in light of the Specification of the ’834 patent, excludes touch screen input devices, because the Specification describes the touch screen selector as a substitute, not as an alternative, for the selector option switch. Ex. 1001, 4:7–9 (“Alternatively, the selector option switch 56 and confirming option switch 62 may be substituted with touch screen selector and confirming options respectively.”). We construe “selector option switch” to exclude touch screen input devices.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“2. “Coupled” Patent Owner contends a person of ordinary skill in the art would construe the claim term “coupled” as “connected, directly or indirectly.” PO Resp. 18. Petitioner agrees. Reply 2. Accordingly, we construe the claim term “coupled” to encompass at least a direct connection or an indirect connection.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“until the called party is available does not constitute storing an incoming call or text is not commensurate with the scope of the claim. Claim 6 does not limit the first electronic signal to an incoming call or text message. Rather, claim 6 recites a “memory unit further configured to store said first electronic signal.” Column 2 of Acharya discloses that “the portable control device processes the invitation . . . [by] holding the invitation for a specified period of time” (Ex. 1007, 2:48–59), which describes a “memory unit further configured to store said first electronic signal” as recited in claim 6.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“Patent Owner contends Petitioner or its expert did not provide any reason why a person of ordinary skill would have sought to combine particular available elements to reach the claimed invention. PO Resp. 52– 54. According to Patent Owner, Acharya does not suggest a need for transmitting date and time information, or for transmitting, inter alia, a current local weather signal or a current stock ticker signal. PO Resp. 54– 55. Petitioner contends that Acharya discusses the feasibility and motivation to personalize a device to receive different kinds of signals and informational content. Reply 23 (citing Pet. 25–27). Specifically, Petitioner contends that Acharya teaches providing personalized information such as weather conditions or updates on stock prices. Pet. 26–27 (citing Ex. 1007, 15:51–57, 17:39–58, 18:65–19:38). Petitioner contends that a person of ordinary skill in the art would include information such as weather conditions or updates on stock prices as taught by Acharya in the electronic signals received and displayed by the portable device to achieve the predictable benefit of allowing users to receive personalized information as taught by Acharya. Pet. 27. Petitioner’s showing is persuasive. Petitioner provides several reasons, as outlined above, for modifying Acharya. For example, providing different types of information obviously would have appealed to different users, and would have allowed users to personalize their device. See Pet. 26–27. Based on the foregoing discussion and the record, Petitioner has shown by a preponderance of the evidence that the teachings of Acharya render claims 9 and 13 obvious. For independent claims 10 and 14, Petitioner contends persuasively that adding a strap with a buckle fastener to the portable wrist watch device of Acharya would have been obvious because wrist watches commonly have a strap secured to a wearer’s wrist by a buckle in order to secure the device to the wrist. See Pet. 28–29 (citing Ex. 1007, 4:7–13). Based on the foregoing discussion and the record, Petitioner has shown by a preponderance of the evidence that the teachings of Acharya render claims 10 and 14 obvious.” slip op. at 29
Patent outcomesUS 8,519,834 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,519,834 - PTAB · Sep 8, 2017 · IPR2015-01869 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–8, 10–12, 14–18, 20–23, 25, and 27–29 unpatentable over Shuen and RFC1234, and claim 19 unpatentable over Bellovin.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successDecided for petitioner
“mapping for the network address translation” under the Board’s construction of that phrase, i.e., “a property associated with the mapping in which the mapping expires after it has not been used in the translation of a packet for a period of time associated with the mapping,” the Petition cites the following language from Shuen:” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Disclaimer not foundDecided for petitioner
“from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000) (citations omitted). “To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.” Id. (citations omitted). Whether and to what extent material has been incorporated by reference into a host document is a question of law. Id.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for petitioner
“Id. at 3 (emphasis omitted). Notably, Patent Owner did not raise this argument (i.e., that Shuen’s “time to live” does not satisfy the recited “time out . . .” under the Board’s construction) in its Patent Owner Response. Patent Owner asserts, however, it “noted this deficiency of Petitioner’s proofs in the January 18, 2017 hearing” and “[t]his deficiency of Shuen was first raised in Patent Owner’s Preliminary Response.” Req. Reh’g. 4. However, our rules do not allow Patent Owner to incorporate arguments by reference from its Preliminary Response (see 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference form one document into another document”)), and our Scheduling Order provides that any arguments and evidence not contained in the Patent Owner Response will be “deemed waived” (Paper 9, 3). Petitioner asserted at the oral hearing that the argument was new and, as such, Petitioner did not have a reasonable ability to respond to the argument. Tr. 43:8–14. We determine Patent Owner has waived its argument that Shuen does not disclose the “has not been used” portion of our construction of the phrase “time out of the mapping for the network address translation.”” slip op. at 3
Claim construction§ 103 obviousnessPatents in suitUS 8,544,079 - Avx Corporation v. Samsung Electro-Mechanics Co., Ltd.Rehearing deniedPTAB · Aug 16, 2017 · PGR2017-00010 · APJ Sally C Medley · PGR · Rehearing
The Board denied AVX’s rehearing request, leaving institution on claims 1–4, 6–11, and 13–19 unchanged because AVX showed no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Strike new argumentNew argument disregardedDecided for patent owner
“with “dielectric grains.” Req. Reh’g 3–4. This is a new argument. We could not have overlooked or misapprehended an argument that was never presented by Petitioner in the first place. A request for rehearing is not an opportunity to submit new arguments. See 37 C.F.R. § 42.71(d).1 Petitioner’s rehearing request in this regard is telling, because it never directs us to places in the Petition that we overlooked, but rather takes various disjunctive statements from Patent Owner’s Preliminary Response and Patent Owner’s evidence to contend that we overlooked Patent Owner’s alleged admission of this issue. Req. Reh’g 3–4. The request for rehearing is misplaced because the burden to show the claims are unpatentable is on Petitioner, not Patent Owner. 37 C.F.R. § 42.20(c). Petitioner must put forth its case in its Petition. 1 Petitioner argues that it requested leave to respond to Patent Owner’s arguments made in Patent Owner’s Preliminary Response in a sur-reply, but that we denied that request. Req. Reh’g 3; Paper 9. Petitioner’s implicit due process argument is misplaced. It is incumbent upon Petitioner to make its case in its Petition. Petitioner cannot rely on a sur-reply to fix what should have been in the Petition.” slip op. at 3
- BurdenDecided for patent owner
“with “dielectric grains.” Req. Reh’g 3–4. This is a new argument. We could not have overlooked or misapprehended an argument that was never presented by Petitioner in the first place. A request for rehearing is not an opportunity to submit new arguments. See 37 C.F.R. § 42.71(d).1 Petitioner’s rehearing request in this regard is telling, because it never directs us to places in the Petition that we overlooked, but rather takes various disjunctive statements from Patent Owner’s Preliminary Response and Patent Owner’s evidence to contend that we overlooked Patent Owner’s alleged admission of this issue. Req. Reh’g 3–4. The request for rehearing is misplaced because the burden to show the claims are unpatentable is on Petitioner, not Patent Owner. 37 C.F.R. § 42.20(c). Petitioner must put forth its case in its Petition.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“capacitors be proven to be prior art. Req. Reh’g 7–9. Rather, Petitioner argues, “it was not necessary to prove that the Group 39 capacitors themselves were prior art, only that they faithfully represent products made, offered for sale, and/or sold before the priority date.” Id. at 7. Petitioner’s argument is misplaced because we considered the Group 39 capacitors and representations made by Petitioner with respect to the Group 39 capacitors. Indeed, it was Petitioner that asserted in its Petition that “the Group 39 capacitors that were in on sale, sold, and in public use before the effective filing date of the ’381 patent.” Pet. 65. Thus, we did not err in addressing Petitioner’s own argument when we explained that Petitioner had failed to show that the Group 39 capacitors, purchased four years after the effective filing date of the ’381 patent, was prior art. Dec. 28–30.” slip op. at 4
§ 102 anticipationPatents in suitUS 9,326,381
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.