- Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 30, 2016 · IPR2015-01509 · APJ Jason J Chung · IPR · Final written decision
Claims 26, 29, 30, 33, 42, 43, 48, 60, and 68 are unpatentable as anticipated by Frossard or Pagliaroli, or obvious over the stated combinations.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for petitioner
“In that 2007 filing, the term “signal” was defined as “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Ex. 2002, 11. We are persuaded that this definition is instructive to understanding the proper scope of these claim terms. Thus, a first signal, for example, is an “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information that is sent by a first device.” We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third device.” For convenience, this claim construction is reproduced in the table below.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are not persuaded that Mr. McNamara’s statements on cross examination are sufficient reason to accord his testimony little or no weight. The prosecution history is an important element in understanding the claims of a patent. We are persuaded that the statements made during cross examination appear to misstatements as to Mr. McNamara’s review of the patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury and he has made other statements consistent with his testimony under oath stating that he reviewed the prosecution history. See Ex. 1003 ¶ 14; Ex. 2003, 154:11–20. Mr. McNamara signed his declaration on June 24, 2015, which states that he read the ’130 patent and its prosecution history. Ex. 1003 ¶ 14. Although Mr. McNamara testified that he did not read the prosecution history (Ex. 2003, 153:11–15), Patent Owner ignores Mr. McNamara’s other statements that demonstrate that he reviewed the prosecution history (id. at 154:11–20). In addition, Mr. McNamara’s statement was during a lengthy deposition approximately nine months after Mr. McNamara signed his declaration. Mr. McNamara’s inconsistent testimony appears to illustrate a momentary lapse in memory. Compare e.g., id. at 153:11–15, with id. at 154:11–20. Moreover, the only claim terms Mr. McNamara defined in view of the prosecution history of the ’130 patent were “automatically” and “automatically received,” which neither party contests. Compare PO Resp. 10–16; Reply 1; Pet. 8–9, with Ex. 1020, 26. In addition, we are not persuaded that Mr. McNamara’s statement that he did not review the prosecution history of the ’130 patent displays a lack of understanding of the prosecution history because Patent Owner did not define any claim terms at issue in this proceeding that overlap with claim terms defined during the prosecution of the ’130 patent. Compare PO Resp. 10–16, with Ex. 1020, 26.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Patent Owner attempts to limit “control device” improperly in a way that contradicts Patent Owner’s proposed claim construction. As discussed supra, “control device” is construed as “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” We agree with Petitioner that Frossard’s server 1 and resource 2 discloses the claimed “second control device” because Patent Owner’s proposed definition of “control device” can comprise “part of a device”; it follows that a device can comprise multiple parts. Also, because a “control device” is a type of device, a “control device” can include necessarily multiple parts. We also determine that because Patent Owner acknowledged, in its own definition, that “control device” means “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions” (emphases added), it necessarily follows that the “or” implies that a control device can include multiple parts. Tr. 32:15–19. For example, a “control device” can be “[1] a device or [2] a computer”; in other words, logic dictates that the “or” can be interpreted as an “and” such that a “control device” can be “[1] a device and [2] a computer.” Id. Moreover, during oral hearing, Patent Owner acknowledged Frossard’s server 1 is a “computer” and Frossard’s resource 2 is a “device.” Id. at 34:14–35:11 (In response to the question, “[s]o you are saying that a server can’t be a device,” Patent Owner acknowledged “[a] server is a computer, and broadly, if you consider a computer a device, a server is a device.”) (In response to the question “resource 2 or indicating a network number 2, is that a device as well?” Patent Owner acknowledged “resource 2 has a coder and has a transmitter. I would say it is a computer, but in a broad sense it can be considered a device.”). Using Patent Owner’s acknowledgement during the oral hearing, it follows that Frossard’s server 1 and Frossard’s resource 2, together, discloses a “control device” under Patent Owner’s proposed definition of “control device.” Furthermore, Figure 1 illustrates that Frossard’s server 1 and resource 2, together, form a control device generating and transmitting a signal. Ex. 1005, Fig. 1. Frossard’s server 1 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of generating the message order M (i.e., the claimed “second signal”). Id. at 4– 5. In addition, Frossard’s resource 2 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of transmitting the order message M (i.e., the claimed “second signal”). Id.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Petitioner and Mr. McNamara that it would have been obvious to a person having ordinary skill in the art to combine Frossard’s system with Pagliaroli’s theft sensor 12 to provide a system for remotely disabling or enabling a vehicle that also provides a notification when it detects tampering or theft. Patent Owner fails to proffer any rationale or evidence for why the combination of Frossard and Pagliaroli would destroy the functionality of Frossard. Further, Patent Owner fails to proffer its own expert testimony refuting Petitioner’s arguments and Mr. McNamara’s opinion. Patent Owner’s arguments are conclusory attorney argument. Patent Owner’s argument that Pagliaroli does not provide a teaching or suggestion that its theft sensor 12 can function as Frossard’s receiver-decoder circuits 4 is improper because Petitioner argues for combining (rather than replacing) Pagliaroli’s theft sensor 12 and Frossard’s receiver-decoder circuits 4. In addition, Patent Owner is incorrect because any teaching or suggestion need not be found in the reference itself.” slip op. at 37
Patent outcomesUS 6,549,130 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,549,130 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 29, 2016 · IPR2015-01466 · APJ Stacey G White · IPR · Final written decision
Claims 22, 29, 31, 32, 39, and 40 are unpatentable as anticipated by French; claim 27 is unpatentable as obvious over French and Caglayan.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“skill in the art. Id. at 16. Mr. Bennett testified that a person of ordinary skill would have “a bachelor’s degree in engineering or equivalent coursework and at least two years of experience in networked systems.” Id. (quoting Ex. 1002 ¶ 18). Mr. Bennett, however, does not have a degree in engineering and he has limited coursework in the field. Id. at 16–21. Thus, according to Patent Owner his testimony should be accorded little to no weight because he does not meet his own definition of a person of ordinary skill in the art. Id. This argument is not persuasive. Our reviewing court has noted that “[t]he ‘person of ordinary skill in the art’ is a theoretical construct used in determining obviousness under § 103, and is not descriptive of some particular individual.” Endress + Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) (citing Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 963 (Fed. Cir. 1986)). The Federal Circuit has instead examined whether the purported expert has substantial credentials that would allow the judge to permit testimony from the purported expert. Id. Under the Federal Rules of Evidence, the question is whether Mr. Bennett has “scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702; see also Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Rule 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art”). We are persuaded that Mr. Bennett has such credentials. Mr. Bennett has nearly 40 years of experience in networked systems (Reply. 14 (citing Ex. 1019, 210:2–9)) and is a named inventor in four issued patents dealing with networked systems (id. (citing Ex. 1003, 4–5; Ex. 1019, 49:15–50:10)). Patent Owner did not raise any substantive issues with Mr. Bennett’s experience or knowledge; instead, it only argued that Mr. Bennett did not have sufficient classroom education. We find that Mr. Bennett’s work experience, research, and industry participation are sufficient to provide the expertise necessary to assist us in this matter.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We find Petitioner’s argument to be persuasive. We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third (communications) device.” The recited signals all are construed to be “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Finally, we are not persuaded that these terms exclude signals that may pass through an intermediary. Further, we are persuaded that the claims are broad enough to encompass situations in which an intermediary may append additional information to the received signals.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“second processing device because “there is an intermediate device between the local control module 38a and the central control system 20 that receives the ‘first signal’ from the local control module 38a and then subsequently generates and sends a ‘second signal’ to control system 20.” PO Resp. 25– 26 (citing Ex. 2012 ¶ 18); see also id at. 30–31. Dr. DiEuliis testified that “Global Control Module 30a assembles the data from the Local Control Module 38a and other modules, it generates a signal that contains all of this information and transmits it on network 32, where it is received by the Central Control System 20.” Ex. 2012 ¶ 22 (citing Ex. 1005, 6:43–53). As discussed above, we are not persuaded that the claims exclude systems with intermediate devices such as French’s global control module. See § II.B.2. As noted by Dr. DiEuliiss, French’s global control module transmits a signal to the central control module that “contains all of [the information received from the local control module].” Ex. 2012 ¶ 22. Pursuant to our construction, the signal received by the central control module (second control device) is the first signal because it contains all of the information sent by the local control module (first device). Thus, we do not find Patent Owner’s argument to be persuasive and we are persuaded by Petitioner’s arguments regarding the disclosures of French. Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French discloses the limitations of claim 22. See Pet. 19– 28. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of independent claim 22 over the disclosures of French.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Desktop, Internet, and Intranet Agents. Ex. 1006, 1. Caglayan describes how intelligent agents manage tasks such as notifying users of events of significance. Id. at 66. Petitioner argues that it would have been obvious to use Caglayan’s intelligent agents in French’s automation system to further automate the remote monitoring system and more efficiently monitor the data received from the building equipment and systems remotely. Pet. 35– 36 (citing Ex. 1002 ¶¶ 41–44). We find this rationale to be reasonable. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French and Caglayan teach the limitations of claim 27. See Pet. 33–36. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of claim 27 over the combined teachings of French and Caglayan.” slip op. at 19
Patent outcomesUS 6,542,077 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,542,077 - Sony Corporation v. Imation CorporationAll claims unpatentablePTAB · Dec 27, 2016 · IPR2015-01556 · APJ Kevin F Turner · IPR · Final written decision
Claims 1, 3, and 8 are unpatentable as anticipated by Yen; the obviousness ground over Chang, Yen, and either specification was not established.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“preposition “from.” The standard linguistic usage of the verb “protrude” takes the prepositions “from” and “over;” it would not be standard usage to talk about “protruding in” or “protruding on.” See Ex. 3004; see also Protrude, www.merriam-webster.com/dictionary/protrude (for examples of standard usage, last visited Dec. 21, 2016). Therefore, ascribing certain requirements based on the use of a preposition may not be appropriate when only certain prepositions have common usage. As such, we are not persuaded that “from” in the claim limitation “protruding from” must take on the special meaning advocated by Patent Owner. We continue to determine that the “host connector protruding from the housing” 8 encompasses “the host connector and the housing as different parts of a single integral structure.” See Dec. 9.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Additionally, we conclude that Petitioner has demonstrated that USB interface contact 300 (“host connector”), with sub-parts gold contacts 111, jut piece 112, and base 113, protrudes from casings 113A, 114 (“housing”). See Pet. 22–24. As we explain supra in Section II.A.1, the host connector and the housing can meet the language of claim 1, “host connector protruding from the housing,” even if they are different parts of a single integral structure, i.e., attached, connected, joined, or molded to one another. Petitioner and Mr. Berg persuasively demonstrate that Figs. 11–13 of Yen show USB interface contact 300, comprising gold pieces 111, jut piece 112, and base 113, protruding, or jutting out, from casings 113A, 114. See Ex. 1003, Figs. 11–13; Pet. 22–24; Ex. 1002 ¶¶ 55, 58. We see no meaningful difference in the relationship between the host connector and the housing in these figures and that in Figure 5 of the ’038 patent, which the ’038 patent characterizes as the host connector protruding from housing. Compare Ex. 1001, 8:47–51, Fig. 5, with Ex. 1003, Figs. 11–13. For these reasons, we determine that Petitioner demonstrates by a preponderance of the evidence that Yen would have conveyed to one of ordinary skill in the art the limitations recited in claim 1 and that claim 1 is anticipated by Yen.” slip op. at 23
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“First, a copyright indication alone is not necessarily evidence of publication or that a document was distributed or had public accessibility. Although the year indicated in a copyright notice is intended to be “the year of first publication of the work” (37 C.F.R. § 401(b)), it details nothing about accessibility before the critical date. See In re Lister, 583 F.3d 1307, 1312–13 (Fed. Cir. 2009) (detailing that even when the Copyright Office issues a certificate of registration for a manuscript, that does not mean that the manuscript was listed in a catalog or index that would have permitted an interested researcher to learn of its existence and locate it for inspection); see also Microsoft Co. v. Corel Software, LLC, Case IPR2016-01083, slip op. at 13–14 (PTAB December 1, 2016) (Paper 14) (“The copyright notice, alone, however, sheds virtually no light on whether the document was publicly accessible as of that date, therefore additional evidence is typically necessary to support a showing of public accessibility”). Additionally, although the SD Specification details “[c]onditions for publication” (Ex. 1007, 2), we have no information about its dissemination, i.e., was it publically disseminated, or reproduced for some subset of a private group. As well, reproduction is prohibited without permission of “SD Group” (id.), which does not offer evidence of public accessibility. 27 Similarly, the MMC Specification discloses that “[n]o part of this publication may be transmitted, reproduced or distributed in any way,” without prior written consent (Ex. 1008, 2), which does not offer proof of sufficient accessibility to interested parties. Petitioner also asserts that the ’038 Patent admits that the MMC and SD standards, as well as cards following those standards, were in the prior art. Pet. 16–17. The acknowledgement that the standards were known, or even well-known, does not provide evidence regarding the specific documents relied upon by Petitioner. As provided in 35 U.S.C. § 311(b), a ground of unpatentability in an inter partes review can be made “only on the basis of prior art consisting of patents or printed publications.” The general knowledge of systems or methods, or their public use, cannot serve as a basis. As such, the general citation of the standards existing in the prior art can not substantiate the publication status of the specifically cited MMC Specification and SD Specification documents.” slip op. at 27
- Strike new argumentNew argument disregardedDenied
“At oral hearing, when the issue of printed publication status was raised, counsel for Petitioner raised the issues discussed above. Tr. 28–34. Petitioner also argues that without the MMC Specification and the SD Specification, “the obviousness position would still prevail.” Id. at 35. Petitioner asserts that “there’s no question that those skilled in the art understand that if you’re talking about a specific size, that there was no choice once those MMC or SD cards or their associated specs are known to be prior art, that it’d be obvious to modify the size to however you want.” Id. We are not persuaded, however, that dropping the Specification references would not be viewed as altering the grounds upon which trial instituted. Per In re Magnum Oil Tools, 829 F.3d 1364 (Fed. Cir. 2016), that could be interpreted as “borrowing the rationale for combining the first set of references [and] equally apply[ing it] to the second set of references” (id. at 1378), without providing Patent Owner its due process rights with respect to the “new” ground. We respectfully decline to entertain such a new position at this stage of the proceeding.” slip op. at 29
Patent outcomesUS 6,908,038 unpatentableClaim construction§ 102 anticipationPatents in suitUS 6,908,038 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 22, 2016 · IPR2015-01477 · APJ Howard B Blankenship · IPR · Final written decision
Claims 30, 33, 53, and 85–88 are unpatentable by disclaimer; claims 33 and 90 are also unpatentable as obvious over Fuhr, but not anticipated by Goldberg.
RulingsFinal written decision- Adverse judgmentAdverse judgmentUnpatentable
“Patent Owner states that it “hereby disclaims claims 30, 53, and 85‒ 88.” PO Resp. 21. Patent Owner does not present any arguments in its Patent Owner Response directed to those claims. A review of the USPTO electronic file of the ʼ046 patent indicated that Patent Owner had not filed a statutory disclaimer. In an Order entered December 7, 2016, we notified Patent Owner that if it failed to file a notice in this proceeding indicating that it has filed a statutory disclaimer for claims 30, 53, and 85‒88 in the patent, the claims will be held unpatentable. Paper 28. The period provided for filing of such notice has passed without response from Patent Owner. See id. at 2. Accordingly, we determine that claims 30, 53, and 85‒88 are 1 Time Warner Cable Inc. and iControl Networks, Inc. also were named as petitioners. We granted a joint motion to terminate the inter partes review with respect to those parties. Paper 22. unpatentable. The patentability of claims 33 and 90 remain for consideration in this Final Written Decision.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“objections with respect to Mr. Bennett’s testimony, nor sought to preclude him from testifying as an expert witness. In any event, to testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). We give appropriate weight to the testimony of Mr. Bennett as an individual with more than 30 years of industry experience in computers and networking, including the development of real-time video collaboration tools (Ex. 1003, 2) and software for a video-on-demand server (Ex. 1002 ¶ 12). See generally Ex. 1002 ¶¶ 5‒12; Ex. 1003 (CV).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We construe “video information” to mean “data or information containing, pertaining to or representing, an image or images or a photograph.” PO Resp. 12; see also Prelim. Resp. 25. Patent Owner submits that “real-time video information” should be construed as synonymous with “live video information,” with each meaning “video information” that is broadcast or transmitted as the video information event occurs. PO Resp. 13‒14. Patent Owner refers to a Memorandum and Order from the U.S. District Court for the Southern District of New York, which construes those terms in the ʼ046 patent. Id. (citing Ex. 2013, 17). We adopt the construction set forth by the District Court and as advocated by Patent Owner. Petitioner does not oppose that construction. See Pet. Reply 2 (“Petitioners have no issue with the wording of this construction, provided it is understood that the construction does not require instantaneous transmission of video information.”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Anticipation is established only when a single prior art reference discloses, expressly or under principles of inherency, each and every element of a claimed invention.” RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). “The identical invention must be shown in as complete detail as is contained in the patent claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The expert testimony upon which the Petition relies does not provide sufficient support for anticipation. Mr. Bennett submits that the camera disclosed in Goldberg “is capable of capturing and transmitting individual images, as well as live video.” Ex. 1002 ¶ 38 (emphasis added). His Declaration does not allege that the artisan would understand that Goldberg discloses a system that includes live video. Further, Goldberg’s description of “two possible fixes” for a live video feed (Ex. 1006, 210 n.1) is in the form of an invitation for the artisan to investigate possible ways to supply a live video feed, as opposed to describing an invention in terms such that the ordinary artisan would be placed in possession of it. See In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention ‘such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.’” (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA 1962))). Goldberg, however, describes a system having “a limited level of teleoperation.” Ex. 1006, 210 (§ 2). slip op. at 11
Patent outcomesUS 6,587,046 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 6,587,046 - Pixart Imaging, Inc. v. Syncpoint Imaging, LLCAll claims unpatentablePTAB · Dec 14, 2016 · IPR2015-01347 · APJ Christa P Zado · IPR · Final written decision
Claims 1–4, 6–9, 11, 17–19, and 24–26 are unpatentable under § 102(b) as anticipated by one or more of Stove, Platzker, Elrod, and Vogeley.
RulingsFinal written decision- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)
“Co-pending Reexamination of the ’214 patent, Reexamination Control No. 90/020,085. Paper 16. Petitioner filed an opposition to Patent Owner’s motion. Paper 17. At the oral hearing, Patent Owner withdrew its motion. Tr. 74:8–24. At the hearing, Petitioner responded that it has no objection to Patent Owner withdrawing its motion. Id. at 75:2–5. Accordingly, Patent Owner’s motion is withdrawn.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“interpreted according to their “broadest reasonable construction in light of the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC, v, Lee, 136 S. Ct. 2131, 2141–46 (2016). The terms also generally are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We determine that it is unnecessary to construe any claim terms for purposes of this decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“the spot’s detection. Pet. 15 (citing Ex. 1005 6:9–14, 10:11–15). We are not persuaded by Petitioner’s evidence and arguments. Claim 4 recites “filtering the image to detect at least one property,” and therefore requires filtering the image captured by video camera 5 in Stove. The filter Petitioner relies on from Stove is an optical filter placed in front of the lens of video camera 5 (Ex. 1005, 6:8–9, 10:11–15 (“a red filter can be placed in front of the lens of video camera 5”)), and thus, it filters light before it enters the camera, and before an image is captured. We, therefore, are not persuaded by a preponderance of the evidence that Stove discloses “filtering the image to detect at least one property,” as recited in claim 4. We have reviewed the parties’ arguments and the evidence of record. Upon review, we determine Petitioner has not demonstrated by a preponderance of the evidence that Stove discloses every element of either claim 4, or claim 5 due to its dependence on claim 4.” slip op. at 20
- BurdenDecided for petitioner
“Petitioner must prove its proposition by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C. § 102 if “the prior art reference discloses every element of the claim.” In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). “[A]bsence from the reference of any claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1571 (Fed. Cir 1986).” slip op. at 8
Patent outcomesUS 6,275,214 unpatentableClaim construction§ 102 anticipationPatents in suitUS 6,275,214 - Katun Corporation v. Toshiba Tec Corporation And Toshiba America Business Solutions, Inc.Institution deniedPTAB · Dec 7, 2016 · IPR2016-01149 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because petitioner did not show a reasonable likelihood of proving claims 1, 3, or 11 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons explained below, we are not persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its asserted ground.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“state an intended use or that the claims define a structurally complete invention without the image forming apparatus. “A claim’s preamble may limit the claim when the claim drafter uses the preamble to define the subject matter of the claim.” August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284 (Fed. Cir. 2011); see Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[W]hen the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects.”). The preamble generally is construed to be limiting if it “recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1305 (Fed. Cir. 2005) (quoting Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). “For example, the preamble may be construed as limiting when it recites particular structure or steps that are highlighted as important by the specification.” Proveris Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1372 (Fed. Cir. 2014). “Additionally, ‘[w]hen limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.’” Id. (citing NTP, 418 F.3d at 1306).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“process parameters.” The specification of the ’091 patent defines this claim term: “The image formation parameter means set values for the operations of the photoconductive drum 11a, the developing device 13a, the cleaner 16a, the charger 17a, and the fixing device 19 performing the printing operation.” Ex. 1001, 4:4–7. Examples of these set values include “charging voltage values of the charger 17a for the printing operation and the like.” Id. at 4:12–15.” slip op. at 9
- BurdenNot shown unpatentable
“We are unpersuaded by Petitioner’s argument. As discussed above, we construe “image formation process parameters” to mean “set values for controlling the operation of the printing components of the image forming apparatus.” While Best’s operating data may be stored on the chip card of the toner container, they are not set values. Best explains that the operating data include toner type and counter reading. Ex. 1010, 8:1–2. Referring to Figure 6, Best further explains that, “in Step S7, specific electrophotographic values such as a value KW for the setting of the contrast are then set dependent on the identified toner type.” Id. at 9:39–42 (emphasis added), Fig. 6. Moreover, Figure 6 of Best shows that step S7 – setting electrophotographic values – takes place in a control panel process controller (or PC-control panel), which is a part of the printer, not the toner container. Id. at Figs. 4–6. Thus, as Patent Owner points out, “the memory on the toner container of Best does not contain [the recited] ‘image formation process parameters.’” Prelim. Resp. 36.” slip op. at 12
Claim constructionPatents in suitUS 8,554,091 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Rehearing deniedPTAB · Sep 30, 2016 · IPR2016-00587 · APJ Stacey G White · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 11, 13, 14, 16–20, 22, and 23 because Petitioner did not sufficiently explain how Verma’s teachings rendered the pitch determination marker obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW When rehearing a decision, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“incorporate Verma’s handles and operations. Req. Reh’g 13–14. This argument, however, misstates our analysis. In the Decision, we stated that it was “not sufficient for Petitioner to point out different teachings that were available in the prior art; instead, Petitioner must sufficiently articulate a rationale for the combination.” Dec. 11 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The interaction or integration of these various teachings does not require that the disparate elements of Verma be integrated physically. We, instead, were looking for a discussion of how one of ordinary skill in the art would view these teachings and what one of ordinary skill would learn from the combination. Petitioner has not supplied us with a sufficient explanation as to how one of ordinary skill would combine the knowledge gleaned from these passages and, as such, we were not persuaded that Petitioner had put forth a sufficient showing.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“incorporate Verma’s handles and operations. Req. Reh’g 13–14. This argument, however, misstates our analysis. In the Decision, we stated that it was “not sufficient for Petitioner to point out different teachings that were available in the prior art; instead, Petitioner must sufficiently articulate a rationale for the combination.” Dec. 11 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The interaction or integration of these various teachings does not require that the disparate elements of Verma be integrated physically. We, instead, were looking for a discussion of how one of ordinary skill in the art would view these teachings and what one of ordinary skill would learn from the combination. Petitioner has not supplied us with a sufficient explanation as to how one of ordinary skill would combine the knowledge gleaned from these passages and, as such, we were not persuaded that Petitioner had put forth a sufficient showing.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“the model can adjusted by the user to correct roof slopes (pitches).” Pet. 13 (citing Ex. 1008 ¶ 49). Paragraph 49 of Schuch’s declaration, however, discusses Verma’s planar rotation in conjunction with Verma’s handles. Ex. 1008 ¶ 49 (citing Ex. 1005 ¶¶ 37, 62). There is no mention of Verma’s operations in that portion of Schuch’s declaration. Verma’s operations are mentioned in paragraph 50 of Schuch’s declaration, however, this paragraph is not cited in the Petition. See Ex. 1008 ¶ 50. In paragraph 50, Schuch quotes the passage regarding operations, but does not explain the operations or their relationship to the other passages cited from Verma. Then, in paragraph 51, Schuch concludes without explanation that a person of ordinary skill would understand that Verma’s handles would be used to drag the grab the edges or corners between planes in order to modify the slope of the roof to fit the LIDAR image. Id. ¶ 51. We remain unpersuaded by the Schuch declaration. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing requires a fact finder to credit the inadequately explained testimony of an expert). It does not provide sufficient explanation as to how and why these teachings are integrated and, as such, we do not find the Schuch declaration to be sufficient to tie together these teachings.” slip op. at 7
§ 103 obviousnesscites KSRPatents in suitUS 9,129,376 - 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 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Rehearing deniedPTAB · Sep 21, 2016 · IPR2016-00582 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Xactware’s rehearing request, leaving institution denied for claims 1–5, 7–13, 15–23, 25–31, 33–40, 42, 46–52, and 54–56 because Hsieh’s public accessibility was not sufficiently shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“that Hsieh was indexed prior to the critical date. Req. Reh’g 2–5. Petitioner points to indicia on the first few pages of Hsieh showing dates and bar codes, provides an explanation of the import of those indicia, and argues that we should have found a reasonable inference of public accessibility before the critical date. We considered the indicia along with Petitioner’s failure to explain the import of the indicia and found the evidence presented by Petitioner lacking. Dec. 5–6 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)). A request for rehearing is not an opportunity merely to disagree with the Panel’s assessment of the arguments or weighing of the evidence. It is not an abuse of discretion to have performed an analysis or reached a” slip op. at 2
§ 102 anticipationPatents in suitUS 8,078,436 - Apple, Inc. / Eventbrite Inc. et al. v. Ameranth, Inc.All claims unpatentablePTAB · Aug 26, 2016 · CBM2015-00096 · APJ Meredith C Petravick · CBM · Final written decision
Claims 12–16 are unpatentable under § 103 over DeLorme; Patent Owner’s secondary-consideration evidence did not outweigh the showing of obviousness.
RulingsFinal written decision- Skill levelOther
“B. Unpatentability Over DeLorme Under 35 U.S.C. § 103, a claim is unpatentable if: the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art. The ultimate determination of obviousness under § 103 is a question of law based on underlying factual findings. In re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). These underlying factual considerations consist of: (1) the “level of ordinary skill in the pertinent art,” (2) the “scope and content of the prior art,” (3) the “differences between the prior art and the claims at issue,” and (4) “secondary considerations” of non-obviousness such as “commercial success, long-felt but unsolved needs, failure of others, etc.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham, 338 U.S. at 17–18). Petitioner contends that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme. Pet. 50–62. To support its contention, Petitioner provides explanations as to how the prior art meets each claim element. Id. Petitioner also cites the Declaration of Dr. Don Turnbull for support. See Ex. 1002 ¶¶ 180–237. Taking into account Patent Owner’s argument and evidence (PO Resp. 1–4, 12–80; PO Sur-Reply 1–5), for the reasons discussed below, we determine that Petitioner has shown by a preponderance of the evidence that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’850 patent describes PDAs as an example of a wireless handheld device. Ex. 1001, col. 1, ll. 62–63, col. 13, l. 50. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“As an initial matter, we are not persuaded by Patent Owner that we should wholesale adopt the construction of “communications control module” from a previous district court infringement action. The standard for claim construction in a district court infringement action is different than the standard applied by the Board. See In re Morris, 127 F.3d 1048, 1053–54 (Fed. Cir. 1997). In covered business method patent review proceedings, the Board applies the broadest reasonable construction consistent with the specification. 37 C.F.R. § 42.300(b). We determine that the broadest reasonable construction, in light of the specification of the ’850 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. This construction is consistent with the plain language of claim 12, which requires the communication control module to be an interface between the hospitality applications and any other communications protocol. This construction is also consistent with the description of the communication control module in the specification of the ’850 patent, as a “control program [that] monitors and routes all communications [as] to the appropriate devices” in the ’850 patent and as “a single point of entry for all hospitality application to communicate with one another wirelessly or over the Web.” Ex. 1001, col. 9, ll. 21–22, col. 11, ll. 24–27. This construction, unlike Patent Owner’s proposed construction, does not import extraneous features from the Specification of the ’850 patent into the claims. Although the specification of the ’850 patent describes additional features of the communication control module, such as it is “a layer that sits on top of any communication protocol.” The plain language of claim 12, does not require the claimed communication control module to have such features. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous,” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).” slip op. at 13
Patent outcomesUS 6,384,850 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,384,850
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.