- Victoria’S Secret Stores LLC v. Andra Group, LPRehearing deniedPTAB · Dec 11, 2020 · IPR2020-00853 · APJ Eric C Jeschke · IPR · Rehearing
The Board denied rehearing, leaving institution denied because the Petition did not show a reasonable likelihood of prevailing on any asserted ground for claims 1, 2, 5–8, and 11.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. See 37 C.F.R. § 42.71(d) (2019). A request on rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the briefing. Id. When reconsidering a decision on institution, we review for an abuse of discretion. See 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“an inter partes review of claims 1, 2, 5–8, and 11 (the “challenged claims”) of U.S. Patent No. 8,078,498 B2 (Ex. 1001, “the ’498 patent”). Paper 1 (“Pet.”). Andra Group, LP filed a Patent Owner’s Preliminary Response. Paper 10. We denied institution, determining that the Petition did not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims in any of the three asserted grounds of unpatentability. See Paper 12 (“Decision on Institution” or “Dec.”). Petitioner timely filed a Request on Rehearing, requesting “partial reconsideration” as to one of the three asserted grounds, in which Petitioner asserted that the challenged claims would have been obvious based on VS Webpages (Ex. 1031). Paper 13 (“Request on Rehearing” or “Req. Reh’g.”), at 1; see also Pet. 40, 51–67 (discussing this ground). For the reasons below, Petitioner’s Request on Rehearing is denied.” slip op. at 2
- Obviousness (§103) › Analogous artNon analogous artNot reached
“The fact that the Decision on Institution did not discuss whether VS Webpages is analogous art to the ’498 patent does not show that we “misapprehended or overlooked” an argument or evidence. See 37 C.F.R. § 42.71(d). An assessment of whether relied-upon art is analogous is a threshold inquiry in an obviousness analysis. See Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Analogous art is merely a threshold inquiry as to whether a reference can be considered in an obviousness analysis. Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Here, we did not address analogousness because we determined that other issues were dispositive as to the asserted ground at issue. Specifically, as discussed below, Petitioner had not shown a reasonable likelihood in prevailing with its position that human beings fall within the scope of the term “article” (or “articles”) in the challenged claims. See Dec. 13–18.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“presented in the Petition. In the Decision on Institution, we expressly stated that, even in the context of Petitioner’s alternative position—involving modifying certain images displayed by VS Webpages—“Petitioner continues to rely on human beings as the ‘article[s].’” Dec. 15 n.9 (citing Pet. 58–59 (discussing the alternative reliance on Vertex as to clause D), 60 (discussing clause E)). The aspects of the Petition cited in Petitioner’s Request on Rehearing continue to support this statement.” slip op. at 5
§ 103 obviousnesscites GrahamPatents in suitUS 8,078,498 - Netflix, Inc. v. Divx, LLCRehearing deniedPTAB · Dec 2, 2020 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied DivX’s rehearing request, leaving the institution decision in place because the rule remained effective and Dr. McDaniel’s testimony was supported on the record.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“assertions regarding Dr. McDaniel’s testimony. Dr. McDaniel testified that (a) Chen teaches video data streams, (b) “[a]s was widely known in the art, for example as disclosed by Grab-333,[1] a [person of ordinary skill in the art] would have understood that video data streams were comprised of a series of video frames,” and (c) a person of ordinary skill in the art “would have understood that Chen teaches a plurality of frames of video are encrypted using at least one scrambling key/control word.” Ex. 1003 ¶ 112;” slip op. at 3
NonePatents in suitUS 9,184,920 - Victoria’S Secret Stores LLC v. Andra Group, LPInstitution deniedPTAB · Oct 22, 2020 · IPR2020-00853 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 5–8, and 11 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). Section 314(a) of Title 35 of the United States Code provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, for the reasons below, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for patent owner
“For the reasons asserted by Patent Owner, we agree as to the ambiguous nature of (1) the “passing understanding” requirement in the first alternative definition proposed and (2) the “equivalent experience” requirement in the second alternative definition. See Prelim. Resp. 7. Further undermining Petitioner’s first alternative definition, as noted by Patent Owner, Petitioner’s declarant, Mr. Weadock, does not include the “passing understanding” requirement in his definition of the level of ordinary skill in the art. See Weadock Decl. ¶ 20, cited at Pet. 31. For these reasons, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner with the ambiguous aspects removed. For purposes of this Decision only, one of ordinary skill in the art at the time of the invention in the ’498 patent would have had a Bachelor’s degree in Computer Science or another engineering or technical field, with at least two years of experience in World Wide Web design.8” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“(1) “perspective view”; (2) “front,” “side,” and “rear” views; (3) “isometric” view; (4) “thumbnail image[s]”; (5) “master display field”; (6) “icon”; (7) “a distinctive characteristic [to said one of said plurality of thumbnail images]”; and (8) “article.” Pet. 32–40. Patent Owner responds by addressing those claim terms. Prelim. Resp. 10–25. We do not discern a need to construe explicitly any of the claim language discussed in this section or any other claim terms because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 8 Although we do not adopt Petitioner’s definition in its entirety, we decline Patent Owner’s invitation to deny the Petition on this basis alone. See Prelim. Resp. 9. Rather, because we adopt Petitioner’s expert’s definition and the Petition relies on this testimony throughout, we examine the merits of the Petition. 1013, 1017 (Fed. Cir. 2017) (stating that “we 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 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner argues that “Petitioner errs in mapping a female model onto the claimed ‘article.’” Prelim. Resp. 30. We agree. As argued by Patent Owner, the record does not support Petitioner’s position that the scope of the term “article” (or “articles” in parts of claim 7) includes human beings. See id. at 30–32. As an initial matter, as noted by Patent Owner, Petitioner does not explain why a human being allegedly falls within the scope of the term “article.” See Prelim. Resp. 31 (“There simply is no argument or evidence set forth in the Petition to support the interpretation that the ‘article’ term recited in claim 1 encompasses a person.”). And although Petitioner notes the parties’ agreement, in the Texas District Court, that “article” means “item” (see Pet. 40), Petitioner does not explain why a human being allegedly falls within the scope of the term “item.” Petitioner does not identify any aspect of the claim language itself that supports Petitioner’s position as to the scope of the term “article.” And, as argued by Patent Owner, the Specification strongly supports the contrary view. See Prelim. Resp. 30–31. The Specification consistently frames an “article” as an inanimate object that is, for example, “offered for purchase” and has a “price” as well as a “manufacturer” and “supplier.” See, e.g., Ex. 1001, 1:48–52 (describing the “present invention” as “a network server with enhanced graphics and improved methods for displaying articles offered for purchase, to allow a purchaser to fully evaluate the article while shopping ‘on-line’” (emphasis added)), 4:10–11 (discussing the “price of the articles or products”), 6:28–29 (discussing “an analysis of a particular article from the manufacturer, supplier, network operator and/or any other clothing professional”), 6:41–42 (discussing “[i]nformation regarding the manufacturer of a particular article”), 8:49–52 (discussing how, “each time a” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,078,498 - Intex Recreation Corp. v. Team Worldwide Corp.All claims unpatentablePTAB · Apr 29, 2020 · PGR2019-00015 · APJ James J Mayberry · PGR · Final written decision
Claims 1–5 are unpatentable as indefinite under § 112(f)/112(b) and for lack of written description under § 112(a); the prior-art grounds did not show them unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownOther
“We find that the level of ordinary skill in the art reflects aspects of each party’s definition. First, we agree with Petitioner’s characterization that the breadth of experience is in the field of inflatable product pump design. The field of “pneumatic pumps” is broad and encompasses pumps with operating parameters outside the needs identified in the ’979 patent and prior art of record. See e.g., Ex. 1004, 1:24–32 (identifying the types of inflatable objects as having applications “in hospitals for patients, outdoors for recreations and indoors for comfort”); Ex. 1006, 6:54–65 (identifying a low pressure blower and a low volume supplemental pump); Ex. 1007 (involving a pump for supplying breathing air for a continuous positive airway pressure device); Ex. 1010, 1:19–22, 3:21–27 (disclosing a low output circulation pump for “mattresses, chairs, couches and other patient support devices”); Ex. 1013, 11:34–37 (“The blower provides an air flow of 50 cubic feet per minute, without back pressure, and is capable of generating a maximum pressure of about 30 inches of water.”); Ex. 1014, 15:60–16:15 (disclosing gauge air pressures in the range of 0.16 to 0.65 pounds per square inch for an air bed); Ex. 1017, 10:62–64 (“The blower preferably is a 24 v.d.c. model producing 29.29 in Hg at 70 degrees F.”). Second, we agree with Patent Owner that the level of ordinary skill in the art encompasses a person with an advanced engineering degree and broader experience, with inflatable product pumps. Accordingly, we find that a person having of ordinary skill in the art at the time of the invention would have had: (1) a bachelor’s degree in mechanical engineering or an equivalent field, and two years of experience in inflatable product pump design, or an advanced degree in mechanical engineering or an equivalent field and two years in teaching, research, or experience relating to pneumatic pumps; or (2) an associate’s degree in mechanical engineering, or an equivalent field, and four years of practical experience in inflatable product pump design. Also, our claim construction and patentability analyses presented below would reach the same findings and determinations under either party’s definition of the level of ordinary skill in the art. Cf. Ex. 2020 ¶ 89 (“My opinions expressed in this declaration remain the same under either definition of a POSA.”).” slip op. at 15
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“The Federal Circuit emphasizes “that the essential inquiry is not merely the presence or absence of the word ‘means’ but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Williamson, 792 F.3d at 1348. To overcome the presumption that § 112(f) does not apply, the burden is on Petitioner to “demonstrate[] that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.” Id. at 1349; see Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1347 (Fed. Cir. 2016) (“In determining whether this presumption has been rebutted, the challenger must establish by a preponderance of the evidence that the claims are to be governed by § 112[(f)].”); see also Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1299–1300 (Fed. Cir. 2018) (“[I]n appropriate cases, a party advocating that a claim limitation that does not recite the word ‘means’ is subject to § 112[(f)] can overcome the presumption against its application solely by reference to evidence intrinsic to the patent.”). preponderance of the evidence, that “pressure controlling assembly” is a means-plus-function term. Patent Owner, citing Zeroclick, LLC v. Apple Inc., 891 F.3d 1003 (Fed. Cir. 2018), argues that Petitioner has not rebutted the presumption that the term “pressure controlling assembly” does not invoke § 112(f) by showing that the term is a nonce word. Sur-reply 4–5. As we detail below, we do not agree. We determine that Petitioner has met its burden in demonstrating that the term “pressure controlling assembly” is a means-plus-function term, invoking the requirements of 35 U.S.C. § 112(f). We determine that the intrinsic evidence on which Petitioner relies is sufficient to overcome the presumption that the lack of the word “means” indicates that the term does not invoke § 112(f). See Diebold Nixdorf, Inc., 899 F.3d at 1299–1300.9 In our analysis below, we review the intrinsic evidence, extrinsic evidence (and, particularly whether the extrinsic evidence would support a finding that the term is used in common parlance or by persons of skill in the pertinent art to designate structure, including either a particular structure or a class of structures), and relevant case law.” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner
“We find that the Specification fails to disclose corresponding structure for all the recited functions of the “pressure controlling assembly.” “Where there are multiple claimed functions, as we have here, the patentee must disclose adequate corresponding structure to perform all of the claimed 18 This image differs from Figure 1 of the ’979 patent, which does not include reference numeral 4 or its associated lead line. Compare Ex. 1004, Fig. 1, with Ex. 1003, 17. of the recited functions, as it is dispositive to our finding. Claim 1 requires, in part, the pressure controlling assembly functions to “automatically activate the supplemental air pressure providing device.” Ex. 1004, 5:54–56. Patent Owner takes the position that item 121 and item 122 combine to form the pressure controlling assembly. PO Resp. 25 (“A POSA would understand the region of [Figure] 2a denoted by 121/122 as a disclosed pressure controlling assembly.”). Patent Owner then includes rod 12 as part of item 121. See PO Resp. 24 (showing rod 12 and item 121 in red); id. at 25 (indicating a “rod (also red)” associated with item 121). Patent Owner characterizes item 121 as a “flexible diaphragm” and argues that “flexible diaphragm 121 (red) of [Figure] 2a of the ’979 [p]atent acts as a pressure sensor. Its associated rod (also red) will slide up and down based on the pressure of the inflatable (blue) versus the ambient pressure (green) and force applied to it by the adjusting input (e.g., spring 11 of [Figure] 2a).” PO Resp. 25 (referencing Ex. 2020 ¶ 41). Significant to our analysis, Patent Owner argues, relying on Dr. Stevick’s verbatim testimony, that the movement of the rod is sensed by limit switch 13, which turns the supplemental air pressure providing device on and off. See PO Resp. 25 (referencing Ex. 2020 ¶ 41).” slip op. at 56
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“For similar reasons that we found that the ’979 patent did not disclose corresponding structure for the means-plus-function limitation “pressure controlling assembly,” we find that the ’847 application fails to provide written description support for the “pressure controlling assembly.” Specifically, we find that the ’847 application fails to demonstrate that the inventors were in possession of a “pressure controlling assembly” that “automatically activate[s] the supplemental air pressure providing device” as required by claim 1. We do not agree with Patent Owner that the cited sections of the ’847 application disclose to a person having ordinary skill in the art that automatically operate the supplemental air pressure providing device. The ’847 application itself is silent as to any limit switch operating the supplemental air pressure providing device. See, e.g., PO Resp. 34–35 (presenting two sections of the ’847 application that allegedly support Patent Owner’s position, where the text of the application never mentions limit switches). We also do not credit Dr. Stevick’s testimony in this regard. Again, Dr. Stevick’s declaration essentially mimics the Patent Owner Response, down to the bolding of language from the ’847 application. Compare Ex. 2020 ¶¶ 53–54, with PO Resp. 34–35. Also, Dr. Stevick’s declaration states that a person having ordinary skill in the art would have understood that a “pressure controlling assembly provides limit switching to automatically turn the supplemental air pressure providing device on when the pressure of the inflatable object is at a lower limit and to turn it off when the pressure is at an upper limit to maintain an air pressure of the inflatable object.” Ex. 2020 ¶ 54. The sole basis for this statement is a reference to Exhibit 1003, Figures 1 and 2a, without any further explanation. Such a conclusory opinion that is not adequately supported is entitled to little weight. See 37 C.F.R. § 42.65(a). We also find Patent Owner’s post hoc reliance on the CN ’302 application as confirmation of its position inapposite. As an initial point, there is no dispute that the CN ’302 application cannot be directly relied upon for written description support of the “pressure controlling assembly,” with respect to any disclosure in that application that does not appear in the ’847 application.19 Patent Owner’s use of the information in the application 19 See supra note 8.” slip op. at 63
Patent outcomesUS 9,989,979 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 9,989,979 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00840 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving institution denied because it did not show error in the Board’s § 325(d) analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“Petitioner did not argue, in the Petition, that FIPA97 was released as individual parts. Petitioner’s Rehearing Request (page 8) cites to the Petition at page 20 and Exhibit 1054. Page 20 of the Petition, however, contains Petitioner’s argument that FIPA97 was made publicly available as a single document, as discussed above. It does not include any argument or suggestion that FIPA97 was released as individual parts. Additionally, Exhibit 1054 is not cited on page 20 of the Petition in the discussion of FIPA97 nor does it appear that Exhibit 1054 was cited anywhere in the Petition. Thus, because Petitioner did not argue, in the Petition, that FIPA97 was released as individual parts, we could not have overlooked that argument. Petitioner’s contention of error in our determination that FIPA97 was involved during examination of the ’128 patent application is premised upon finding that FIPA97 existed as individual parts. Because Petitioner fails to demonstrate that we overlooked an argument that was not made, we are not persuaded of error.” slip op. at 4
Discretionary denialPatents in suitUS 7,036,128 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00838 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving institution denied under § 325(d) because Microsoft did not show the Board overlooked arguments made in the petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“and the prior art relied upon in Petitioner’s challenges to the ’128 patent, Petitioner did not address 35 U.S.C. § 325(d) in the Petition (Paper 1). Instead, Petitioner made two critical representations—(1) that the Examiner of the ’128 patent “did not have FIPA97 before him, or any other FIPA reference for that matter” (Pet. 1) and (2) that despite there being seven “Parts” to FIPA97, “FIPA97 was made publicly available as a single document” and was “developed and published as a single, integrated work.” Pet. 20 (citing Ex. 1055 (FIPA97 Table of Contents for Parts 1–7)); Ex. 1026, 5 (Foundation for Intelligent Physical Agents, “Resolution of Munich meeting”). In the Petition (Paper 1), Petitioner never contended that FIPA97 was published or available as separate and distinct parts, such that access to one part might not mean access to each other part. Rather, Petitioner’s sole statement regarding separate parts was that it filed FIPA97 as seven separate exhibits “due to its size and numbering schedule.” Id. at 20. Accordingly, on the record presented, we agreed with Petitioner’s representation and we found that FIPA97 (Exs. 1006–1012) constitutes a single document, which we then found was involved during examination of the ’128 patent application. Inst. Dec. 15.” slip op. at 3
Discretionary denialPatents in suitUS 7,036,128 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00839 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft's rehearing request, leaving institution denied under § 325(d) because it did not show the Board overlooked arguments about FIPA97 or misweighed the Becton factors.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“and the prior art relied upon in Petitioner’s challenges to the ’128 patent, Petitioner did not address 35 U.S.C. § 325(d) in the Petition (Paper 1). Instead, Petitioner made two critical representations—(1) that the Examiner of the ’128 patent “did not have FIPA97 before him, or any other FIPA reference for that matter” (Pet. 1) and (2) that despite there being seven “Parts” to FIPA97, “FIPA97 was made publicly available as a single document” and was “developed and published as a single, integrated work.” Pet. 20 (citing Ex. 1055 (FIPA97 Table of Contents for Parts 1–7)); Ex. 1026, 5 (Foundation for Intelligent Physical Agents, “Resolution of Munich meeting”). In the Petition (Paper 1), Petitioner never contended that FIPA97 was published or available as separate and distinct parts, such that access to one part might not mean access to each other part. Rather, Petitioner’s sole statement regarding separate parts was that it filed FIPA97 as seven separate exhibits “due to its size and numbering schedule.” Id. at 20. Accordingly, on the record presented, we agreed with Petitioner’s representation and we found that FIPA97 (Exs. 1006–1012) constitutes a single document, which we then found was involved during examination of the ’128 patent application. Inst. Dec. 15.” slip op. at 3
Discretionary denialPatents in suitUS 7,036,128 - Mylan Pharmaceuticals Inc. v. Sanofi-Aventis Deutschland GmbHAll claims unpatentablePTAB · Apr 2, 2020 · IPR2018-01670 · APJ Hyun J Jung · IPR · Final written decision
Claim 1 is unpatentable as obvious over Burroughs and Steenfeldt-Jensen; Petitioner’s motion to exclude is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“preliminary finding regarding the level of ordinary skill in the art. Accordingly, we maintain and reaffirm that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, or an equivalent degree” and “would have understood the basics of medical-device design and manufacturing, and the basic mechanical elements (e.g., gears, pistons) involved in drug-delivery devices.” Dec. to Inst. 15 (quoting Pet. 15).” slip op. at 11
- ExcludeMotion to exclude, deniedDenied
“Therefore, we are not persuaded to exclude the exhibits or expressly limit their purpose pursuant to FRE 105 and Petitioner’s Motion is denied with respect to these exhibits.” slip op. at 93
Patent outcomesUS 8,679,069 unpatentableNonecites Phillips · KSR · GrahamPatents in suitUS 8,679,069 - Intel Corporation v. VLSI Technology LLCNo claims unpatentablePTAB · Feb 26, 2020 · IPR2018-01661 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–5, 15, and 16 were not shown unpatentable because the asserted combinations failed to establish the claimed power gain and power loss relationship used to determine whether to power down.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“B. Level of Ordinary Skill in the Art Relying on the testimony of Dr. Raghunathan, Petitioner proposes that a person of ordinary skill in the art at the time of the alleged invention of the ’014 patent “would have had at least an M.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience), and would have three years of experience with computer hardware and software power management design techniques.” Pet. 24 (citing Ex. 1102 ¶¶ 57–58). In our Institution Decision, we adopted Petitioner’s proposal with a modification to the level of education based on Patent Owner’s proposal in its Preliminary Response. Inst. Dec. 7 (citing Prelim. Resp. 5). Specifically, we determined that “a person of ordinary skill in the art would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and three years of experience with computer hardware and software power management design techniques.” Id. Neither party argues during trial that our definition of the level of ordinary skill in the art was incorrect. See PO Resp. 2–3. See generally Pet. Reply. Because our preliminary determination is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that a person of ordinary skill in the art would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and three years of experience with computer hardware and software power management design techniques.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We need only construe claim terms that are in controversy, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In this proceeding, neither party proposes a formal construction for any term. See Pet. 23; PO Resp. 3. We find it unnecessary to construe expressly any claim terms to resolve the controversy before us.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Weighing the parties’ arguments and evidence on the complete record now before us, we find Petitioner has not shown that a person of ordinary skill in the art would have understood Takahashi’s “predetermined value” to be an estimated power gain. Patent Owner, with the support of Dr. Wolfe’s credible testimony, persuasively argues that Takahashi’s “predetermined value” is a previous value of the cache-miss rate. Petitioner, on the other hand, does not point to anything in Takahashi that describes the “predetermined value” as an estimated power gain, nor does Petitioner cite any testimony from Dr. Raghunathan in support of its position other than a portion of his declaration that is substantially the same as the discussion in the Petition. See Pet. 33–34 (citing Ex. 1102 ¶ 80); see also Ex. 1102 ¶¶ 72– 80 (testimony substantially the same as pages 29–34 of the Petition). Without any suggestion in Takahashi that the “predetermined value” relates to an estimated power gain, Takahashi’s stated goal of reducing power consumption is not sufficient to show that Takahashi’s “predetermined value” is representative of an estimated power gain. For these reasons, we find that Petitioner has not established that Takahashi teaches or suggests an estimated power gain or determining whether to power down a portion of a device component in response to a relationship between an estimated power gain and an estimated power loss, as recited in independent claim 1. Accordingly, Petitioner has not shown by a preponderance of the evidence that claim 1 would have been obvious over the teachings of Takahashi.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We focus on one argument we find particularly persuasive—that Hu does not teach using the L2Access:leak ratio to “determin[e] whether to power down” a cache or a portion of a cache, as required by claim 1, even if the L2Access:leak ratio can be considered a relationship between an estimated power gain and an estimated power loss. See PO Resp. 24; PO Sur-reply 16–18. In its Reply, Petitioner alleges that “Hu explicitly discloses using the L2Access:leak ratio to determine when to power down the L1 cache.” Pet. Reply 16 (emphasis added) (citing Ex. 1102 ¶¶ 97–98). Petitioner, however, does not support this proposition by quoting or citing specific language in Hu, relying only on Dr. Raghunathan’s declaration, which provides substantially the same discussion as the Petition. Compare Ex. 1102 ¶¶ 97–98, with Pet. 39–40. We agree with Patent Owner that the portion of Hu cited in the Petition and Dr. Raghunathan’s declaration does not teach using the L2Access:leak ratio to determine whether to power down the L1 cache, as Petitioner contends. See PO Sur-reply 16–18; Pet. 39–41; Ex. 1102 ¶¶ 97– 99. Rather, Hu discloses determining values of the normalized cache leakage energy for different decay intervals at four values of the L2Access:leak ratio—5, 10, 20, and 100. Ex. 1104, 175–76; see PO Sur-reply 17. Hu uses these assumed values of the L2Access:leak ratio as inputs to generate simulation data, not to determine whether to power down a cache or portion of a cache. Ex. 1104, 175, see PO Resp. 24; PO Sur-Reply 15–16. Petitioner argues that Hu teaches that the higher the L2Access:leak ratio, the longer the system should wait before powering down the cache. Pet. 39–41; Pet. Reply 16–17. Hu, however, does not expressly compare the effect of different L2Access:leak ratios other than to state that when the L2Access:leak ratio is 100, a small decay interval is detrimental to performance and power. Ex. 1104, 175. As Patent Owner correctly asserts, Hu does not describe using the L2Access:leak ratio to determine an appropriate decay interval, nor does Hu describe using the L2Access:leak ratio to determine whether to power down a portion of a cache. See PO Sur-Reply 17–18.” slip op. at 24
Patent outcomesUS 8,020,014 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,020,014 - Intel Corporation v. VLSI Technology LLCNo claims unpatentablePTAB · Feb 12, 2020 · IPR2018-01040 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–4, 10, 12, and 13 were not shown unpatentable because the prior art did not teach or support adding the separately claimed third voltage reference.
RulingsFinal written decision- Adverse judgmentDenied
“We agree with Patent Owner that we should not address the patentability of claim 9 in this Decision. See PO Resp. 63–64. Rather, following Federal Circuit case law, we treat claim 9 as if it never existed. See Gunn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”). Consistent with other Board decisions in which some, but not all, challenged claims have been disclaimed after institution, we address the patentability only of the remaining claims. See LG Elecs., Inc. v. Wi-LAN Inc., IPR2018-00673, Paper 48 at 3 (PTAB Sept. 5, 2019) (Final Written Decision); Yamaha Golf Car, Paper 63 at 3; Baker Hughes, Paper 74 at 6, 11–12. We also agree with Patent Owner that we should not enter adverse judgment as to claim 9. See PO Sur-reply 26–27. Arthrex, the case relied on by Petitioner, does not mandate a different outcome. By its terms, 37 C.F.R. § 42.73(b)(2) permits disclaimer to be construed as a request for adverse action when there are “no remaining claim[s] in the trial.” That was the situation in Arthrex. 880 F.3d at 1347 (“Arthrex, Inc. disclaimed all claims that were the subject of the petition.”). Here, in contrast, several claims remain in the trial. Furthermore, Arthrex does not support Petitioner’s patent are disclaimed.” Pet. Reply 27. The Arthrex language quoted by Petitioner compares disclaimer of an “entire patent” under § 42.73(b)(1) with disclaimer of “some of the claims” of the patent (i.e., fewer than all claims in the patent but all challenged claims so there are no remaining claims in the trial) under § 42.73(b)(2). 880 F.3d at 1350. Neither situation is present here when only one claim (claim 9) has been disclaimed and several challenged claims (claims 1–4, 10, 12, and 13) remain in the trial.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention of the ’207 patent “would have had at least a[n] M.S. degree in electrical engineering and would have at least two years of experience with circuit design.” Pet. 17 (citing Ex. 1002 ¶ 32). In our Institution Decision, we found Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the asserted prior art and adopted Petitioner’s position, which Patent Owner did not oppose in the Preliminary Response. Inst. Dec. 14 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Neither Patent Owner, in its Response, nor Dr. Ipek, in his declaration, proposes a level of ordinary skill in the art. Dr. Ipek, however, states that “[f]or purposes of the subject IPR proceedings, I have been asked to employ [Petitioner’s proposed] standard of a person of ordinary skill, but I do not offer the opinion that it is the correct standard.” Ex. 2011 ¶ 19. Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary determination is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one least an M.S. degree in electrical engineering and at least two years of experience with circuit design. See Inst. Dec. 14; Pet. 17.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“the complete record developed during this inter partes review, we again conclude that the “third voltage reference” must be separate from the “second voltage reference.” We begin with the language of claim 1, which recites a first voltage reference, a second voltage reference, and a third voltage reference as separate elements.7 “Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citation omitted). The terms “first,” “second,” and “third” are terms used to distinguish separate elements of a claim. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1373 (Fed. Cir. 2005); see also 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1373 (Fed. Cir. 2005) (“The use of the terms ‘first’ and ‘second’ is a common patent-law convention to distinguish between repeated instances of an element or limitation.”). Although Gillette and 3M address whether such terms impose a numerical or serial limitation, they nevertheless support Patent Owner’s position that enumerated elements typically are not construed to be the same element. See Sur-reply 11–12. Other cases cited by Patent Owner also support its position. See id. at 12 (citing Regents of the Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 935–39 (Fed. Cir. 2013) (construing “first” and “second” disks as separate and discrete disks); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1405) (Fed. Cir. 1996)” slip op. at 21
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“ordinary skill in the art would have sought to reduce power consumption in Takahashi to address the well-known problem of current leakage, and that providing a separate voltage reference for transistor 223 in Takahashi’s Figure 15 (i.e., a third voltage reference) would have achieved that goal. Pet. 34–35 (citing Ex. 1002 ¶ 88). But the only evidence Petitioner relies on for adding the proposed third voltage reference is the testimony of Dr. Stojanovic. Id. (citing Ex. 1002 ¶ 88). Without any additional supporting evidence, Dr. Stojanovic’s testimony is insufficient to supply the missing “third voltage reference,” which is a key limitation of claim 1. See K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014); Patent Trial and Appeal Board Consolidated Trial Practice Guide 36 (Nov. 2019)9 (“[I]n an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. . . . In other words, expert testimony may explain ‘patents and publications,’ but is not a substitute for disclosure in a prior art reference itself.” (citing K/S Himpp, 751 F.3d at 1365)); see also Inst. Dec. 30–31 (reaching the same conclusion on the preliminary record). Furthermore, we agree with Patent Owner that Petitioner’s proposed” slip op. at 37
Patent outcomesUS 7,706,207 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,706,207
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.