- Hengdian Group Dmegc Magnetics Co., Ltd. / Zhejiang Innuovo Magnetics Co., Ltd. et al. v. Hitachi Metals, Ltd.Rehearing deniedPTAB · Dec 21, 2017 · IPR2017-01313 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Petitioner’s rehearing request and left in place its § 325(d) denial of institution for claims 1–8 because materially the same prior art had been considered by the Office.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Petitioner, as the party challenging the Decision, has the burden of showing it should be modified. Id. When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“As an initial matter, we note that Petitioner states that, for purposes of its Request, it “do[es] not argue Uchida and Uchida II are not materially the same.” Req. Reh’g 3. Because we have discretion to reject a petition if “the same or substantially the same prior art or arguments previously were presented to the Office,” see 35 U.S.C. § 325(d) (emphasis added), Petitioner has not established that we abused our discretion in denying the Petition. Given that Uchida (asserted here) and Uchida II (previously presented to the Office) are “materially the same,” substantially the same prior art was previously before the Office. Indeed, the presence of Uchida in the Petition and the materially-identical Uchida II in the prosecution history alone is a sufficient basis to exercise our discretion under Section 325(d).” slip op. at 3
Discretionary denialPatents in suitUS 6,527,874 - Hengdian Group Dmegc Magnetics Co., Ltd. / Zhejiang Innuovo Magnetics Co., Ltd. et al. v. Hitachi Metals, Ltd.Institution deniedPTAB · Nov 6, 2017 · IPR2017-01313 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution for claims 1–8 under § 325(d), finding the petition relied on substantially the same prior art or arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“the same prior art and arguments as those previously presented to the Office, we now decide whether to exercise our discretion to deny institution under § 325(d). Our discretion under § 325(d) involves a balance between several competing interests. See Neil Ziegman, N.P.Z., Inc. v. Stephens, Case IPR2015-01860, slip op. at 12–13 (PTAB Feb. 24, 2016) (Paper 11). “On the one hand, there are the interests in conserving the resources of the Office and granting patent owners repose on issues and prior art that have been considered previously.” Fox Factory, Inc. v. SRAM, LLC, Case IPR2016- 01876, slip op. at 7 (PTAB Apr. 3, 2017) (Paper 8). “On the other hand, there are the interests of giving petitioners the opportunity to be heard and correcting any errors by the Office in allowing a patent—in the case of an inter partes review—over prior art patents and printed publications.” Id. For the following reasons, we deny the Petition. The disclosures of the primary references asserted by Petitioner were previously presented to, and considered by, the Office. Specifically, the disclosures in Uchida and Kaneko II upon which Petitioner relies were presented to the Office in Uchida II and Kaneko III, both of which were considered by the Office during prosecution of the ’104 application. Petitioner is thus asking the Board to readjudicate the Office’s previous decision on substantially the same issues, without providing any arguments distinguishing the Examiner’s prior consideration of Uchida II and Kaneko III, or any compelling reason why we should re-evaluate substantially the same prior art as that presented during prosecution and considered by the Examiner. Moreover, although we acknowledge that Petitioner has a direct interest in pursuing the instant Petition, we also acknowledge the burden and expense to Patent Owner in having to defend the ’874 patent based on substantially the same prior art or arguments already considered by the Office. We are not persuaded that adjudicating disputes on already-considered issues is an efficient use of Board or party resources. See Unified Patents Inc. v. John L. Berman, Case IPR2016-01571, slip. op. at 12 (PTAB Dec. 14, 2016) (Paper 10) (informative); see also Cultec, Inc. v. StormTech LLC, Case IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7) (informative) (denying institution of inter partes review under § 325(d) because the same or substantially the same prior art or arguments previously were presented to the Office during prosecution); Hospira, Inc. v. Genentech, Inc., Case IPR2017-00739 (PTAB July 27, 2017) (Paper 16) (informative) (denying institution of inter partes review under § 325(d) because the Office already decided the dispositive issue of whether the asserted references qualified as prior art with respect to the challenged patent); Juniper Networks, Inc. v. Mobile Telecomm’ns Techs., LLC, Case IPR2017-00642, slip op. at 13 (PTAB July 27, 2017) (Paper 24) (finding that “the Examiner was aware of the contents of [the” slip op. at 15
Discretionary denialPatents in suitUS 6,527,874 - Baker Hughes, A GE Company, LLC (F/K/A Baker Hughes Incorporated) v. Liquidpower Specialty Products Inc. (F/K/A Lubrizol Specialty Products, Inc.)All claims unpatentablePTAB · Nov 1, 2017 · IPR2016-00734 · APJ Michelle N Ankenbrand · IPR · Final written decision
Claims 1–11 are unpatentable: claims 1, 3, 4, 6, 7, and 11 as anticipated by Eaton; claims 1–7 and 11 as obvious over Eaton and Strausz; claims 8–10 as obvious over Eaton, Strausz, and Naiman.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Eaton discloses that a different size flow loop—not dilution—was utilized to achieve turbulent flow of the Bow River crude oil. Ex. 1002, 14:40–42 (“The 1" flow loop was used to test the . . . BOW RIVER crude oil[], which [is] so viscous that [it] do[es] not generate turbulent flow in a ¼" flow loop.”); see id. at 14:42–55 (describing the flow loop test procedure).11 We decline to credit Dr. Dunn’s testimony over Eaton’s explicit disclosure. Accordingly, we determine that Petitioner establishes, by a preponderance of the evidence, that Eaton discloses the API gravity limitation.” slip op. at 27
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Eaton discloses that a different size flow loop—not dilution—was utilized to achieve turbulent flow of the Bow River crude oil. Ex. 1002, 14:40–42 (“The 1" flow loop was used to test the . . . BOW RIVER crude oil[], which [is] so viscous that [it] do[es] not generate turbulent flow in a ¼" flow loop.”); see id. at 14:42–55 (describing the flow loop test procedure).11 We decline to credit Dr. Dunn’s testimony over Eaton’s explicit disclosure. Accordingly, we determine that Petitioner establishes, by a preponderance of the evidence, that Eaton discloses the API gravity limitation.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“persuaded by Petitioner’s argument and Dr. Epps’s testimony that the combination of Eaton and Strausz suggests drag reducing polymers having the solubility parameter limitation, because the solubility parameter limitation merely states what one of ordinary skill already knew and would have applied—that the drag reducing polymer must be soluble in the liquid hydrocarbon. See Pet. 41; Ex. 1005 ¶ 32. We also credit Dr. Epps’s testimony setting forth how one of ordinary skill in the art, knowing the target solubility parameter of the liquid hydrocarbon (e.g., for Bow River crude oil, a range of 17.1–19.6 MPa1/2), would have consulted the literature or used calculations to determine which of Eaton’s homopolymers or copolymers would provide a solubility parameter within the target range, and then used Eaton’s disclosed methods to prepare that polymer or polymers. Ex. 1005 ¶¶ 81–92 (citing Ex. 1002, 9:8–18; Ex. 1003, 465–467; Ex. 1007, VII-686, VII-707; Ex. 1012, 1025; Ex. 1037, 252–253). Accordingly, Petitioner establishes, by a preponderance of the evidence, that the combined teachings of Eaton and Strausz disclose the solubility parameter limitation of the challenged claims.” slip op. at 45
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“of ordinary skill in the art would have a reason to combine the teachings of Eaton and Strausz and, in making that combination, a person of ordinary skill would have had a reasonable expectation of success at achieving a drag reducing polymer meeting the limitations of claims 1–7 and 11. That does not end our inquiry, however, because Patent Owner presents arguments and evidence regarding objective indicia of nonobviousness that we must consider before reaching our conclusion on obviousness. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). We consider those arguments and evidence below.” slip op. at 57
Patent outcomesUS 8,022,118 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,022,118 - Juniper Networks, Inc. / Brocade Communications Systems, Inc. et al. v. Mobile Telecommunications Technologies, LLCAdverse judgmentPTAB · Oct 31, 2017 · IPR2017-00640 · APJ Meredith C Petravick · IPR · Adverse judgment
Claims 1–5 were cancelled and adverse judgment was entered against Patent Owner after it requested cancellation of all claims at trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Patent Owner requests cancellation of claims 1–5 of U.S. Patent No. 5,659,891 (“the ’891 patent) and entry of adverse judgment against it. Paper 20. Claims 1–5 are all claims of the ’891 patent and all claims at trial. We determine that entry of adverse judgment against Patent Owner is appropriate. Accordingly, it is: ORDERED that claims 1–5 of U.S. Patent No. 5,659,891 are cancelled; ORDERED that adverse judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner; and FURTHER ORDERED that this Order constitutes a final written decision under 35 U.S.C. § 318(a).” slip op. at 1
NonePatents in suitUS 5,659,891 - General Electric Company v. United Technologies CorporationSome claims unpatentablePTAB · Oct 26, 2017 · IPR2016-00952 · APJ Hyun J Jung · IPR · Final written decision
Claim 11 was held unpatentable as obvious over Davies; Petitioner did not show claims 1, 2, 4, 5, 7, and 8 unpatentable on the instituted grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Claim 1 recites “wherein said row of propulsor blades has a solidity value (R) defined as CD/CP that is between 0.6 and 0.9.” Ex. 1001, 4:59– 60. Similarly, now disclaimed independent claim 9 recites “wherein said row of propulsor blades has a solidity value (R) defined as CD/CP.” Id. at 6:9–10. Thus, according to the claims, “solidity value (R)” is defined as “CD/CP,” or chord dimension CD divided by circumferential pitch CP. Also, as pointed out by Patent Owner (PO Resp. 15), the specification of the ’412 patent states that the “solidity value is defined as a ratio (R) of CD/CP (i.e., CD divided by CP).” Ex. 1001, 3:24–25; see also Mathioudakis Decl. ¶ 19 (Patent Owner’s declarant testifying that the ’412 patent defines solidity as the ratio of CD and CP). Patent Owner also quotes a portion of the specification that describes chord dimension CD as the “length that extends between the leading edge 82 and the trailing edge 84 at the tip” (Ex. 1001, 3:5–7) and circumferential pitch CP as “equivalent to the arc distance between the tips 80 of neighboring propulsor blades” (id. at 3:8– 10). PO Resp. 15. In view of these portions of the specification, we find that the ’412 patent provides a clear, deliberate, and precise definition of “solidity value.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (Any special definitions for claim terms or phrases must be set forth with reasonable clarity, deliberateness, and precision). Also, as discussed above, claim 1 similarly relates “solidity value” to “CD/CP.” Compare Ex. 1001, 4:59–60 with id. at 3:24–25.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“art would use fan dimensions given to “illustrate the magnitude of the problem” of restraining blades in the hub to calculate a value of tip solidity, which has already been disclosed in a list of “main features of the chosen design” for the V.P. fan. The tip solidity of 0.83 comes immediately after Davies discusses the “aerodynamic design philosophy” of fixed pitch fans (Ex. 1005, 6) and V.P. fans (id. at 6–8). Davies also states that “[i]n order to achieve a design pressure ratio of say 1.27:1 . . . , a transonic blade design was required with a tip solidity of .8.” Id. at 7. The fan diameter and blade chord at the tip, which Petitioner uses to calculate its tip solidity value, come from a discussion in Davies regarding the hub, in particular restraining V.P. blades in the hub. Id. at 9. Davies states, at the design speed, each aerofoil part exerts 15 tons of centrifugal force, and a “total restraint of about 40 tons” would be required. Id. at 9–10. The numbers that Petitioner uses to calculate its tip solidity value are numbers that Davies uses “[t]o illustrate the magnitude of the problem” in designing its hub. Pet. 29–30; Ex. 1005, 9–10. Thus, we find that Davies gives fan dimensions sufficient to calculate that each fan blade exerts 15 tons of centrifugal force and hence a needed “total restraint of about 40 tons.” See id. We find that these statements would indicate to one of ordinary skill in the art that the numbers given for the fan dimensions are for purposes of estimating what the hub is required to restrain, and not sufficient for calculating tip solidity value, which was previously listed as 0.83 and as one of the “main features” after discussing aerodynamic design philosophy for its V.P. fan. See id. at 7–8; Mathioudakis Decl. ¶¶ 57, 69, 70 (“One would not attempt to use the approximate chord lengths and blade diameters in Section 6 to derive or interpret from Davies a substitute solidity value”). The Petition also does not explain sufficiently why one of ordinary skill in the art would understand Davies to disclose a tip solidity value of 0.74 instead of the expressly disclosed tip solidity of 0.83. See Pet. 29–30 (citing Abhari Decl. ¶¶ 80–82). The Petition and the cited portions of the Abhari Declaration do not address the disclosed tip solidity of 0.83. See Pet. 29–30; Abhari Decl. ¶¶ 80–82. Thus, given the entire context of Davies, a “Solidity Tip” of 0.83 as one of the “main features,” and Petitioner’s tip solidity calculated from fan dimensions given for illustration purposes, the full record does not persuade us that one of ordinary skill in the art would understand that Davies discloses a tip solidity value of 0.74, as argued by Petitioner, for its V.P. fan. One of ordinary skill in the art would understand, instead, that the fan dimensions provided for illustration purposes are not sufficiently specific to calculate a tip solidity value because they are given for evaluating the restraint the hub must provide. See Mathioudakis Decl. ¶ 69. Also, the record provides insufficient basis for determining that one of ordinary skill in the art would have accepted the calculated value of 0.74 over the listed value of 0.83 for tip solidity.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Davies indicates, as Patent Owner argues, that chord length, circumferential pitch, and solidity are interrelated and one of ordinary skill in the art considers implications of varying one parameter on other parameters of a V.P. fan. See, e.g., Ex. 1005, 6–8; Mathioudakis Decl. ¶¶ 72–76. However, Patent Owner’s argument that Petitioner’s proposed modification would lead to larger, heavier, fan blades (PO Resp. 36) does not show a deficiency in Petitioner’s reason for modifying the blade chord of Davies to achieve a ratio of N/R of 15.7 (Abhari Decl. ¶ 95), which would be within the recited range 15 to 16. Petitioner argues, and its Declarant states, that “blade chord dimension can be varied in order to balance the stability, efficiency, and weight of the fan section.” Pet. 39; Abhari Decl. ¶ 94 (citing Ex. 1021). Petitioner’s Declarant acknowledges that increasing chord length would “result in increased weight” but indicates that “increasing the chord length can lead to improved efficiency and stability margin.” Abhari Decl. ¶ 94 (citing Ex. 1021). Petitioner’s reason for modification, thus, acknowledges and anticipates that increasing the chord length to achieve a ratio of N/R equal to 15.7 would lead to heavier blades, but also greater efficiency and stability margin. See Pet. 39; Abhari Decl. ¶¶ 94–95. Also, the arguments and evidence before us persuade us that Petitioner’s proposed modification to achieve a ratio of N/R of 15.7 would not render Davies inoperable for its intended purpose, as argued by Patent Owner (PO Resp. 34, 37, 38). Davies states that the “requirement of reverse thrust via fine pitch implies that the blade solidity must be less than unity since the blades must pass each other.” Ex. 1005, 7. Davies also indicates that “to achieve a design pressure ratio of say 1.27:1 . . . a transonic blade design was required with a tip solidity of .8,” thus indicating that a different design pressure ratio requires a different tip solidity. Id.; see also id. at 5 (“The precise choice of pressure ratio . . . is not particularly important.”). Davies determines a taper ratio based on a “hub solidity near 1 and a tip solidity of 0.8.” Id. We, thus, find that Davies teaches or suggests that a taper ratio can be determined for a hub solidity near 1 and a different tip solidity for a different design pressure ratio in view of the requirement of blade solidity less than unity so that blades can pass. Therefore, we find that Petitioner’s proposed modification to achieve a ratio of N/R of 15.7 would not render Davies inoperable for its intended purpose. Further, based on the statements that the “precise choice of pressure ratio for technology demonstration fan design is not particularly important” (Ex. 1005, 5) and that “[i]n order to achieve a design pressure ratio of say 1.27:1 . . . a transonic blade design was required with a tip solidity of 0.8” (id. at 7), we find that one of ordinary skill in the art would understand that the pressure ratio depends on the application and that one of ordinary skill in the art has the skill to choose an appropriate pressure ratio, and thereby, determine an appropriate tip solidity value and blade chord, as was done in Davies with a design pressure ratio of 1.27:1. We find that, other than the requirement of blade solidity less than unity so that blades can pass, Davies does not preclude increasing the chord length for a different design pressure ratio or for greater efficiency and stability margin to achieve a ratio of N/R between 15 and 16, as proposed by Petitioner. Also, we agree with Petitioner that the record shows that increasing chord dimension to achieve a ratio of N/R of 15.7 would increase blade efficiency and stability margin. Abhari Decl. ¶ 94; Ex. 1021, 1:30–33. We are not pointed to any part of the record that indicates increasing chord dimension would degrade blade efficiency. See PO Resp. 34–44. For the reasons above, we agree with Petitioner that, for claim 11, one of ordinary skill would have modified Davies’ N/R ratio to be 15.7 or between 15 and 16 because the modification can “lead to improved efficiency and stability margin” (Pet. 39 (citing Abhari Decl. ¶ 94; Ex. 1021 1:30–33)). We, thus, determine that Petitioner has shown by a preponderance of the evidence that claim 11 is unpatentable over Davies.” slip op. at 31
- Skill levelSkill level petitioner adoptedOther
“A. Level of Ordinary Skill Petitioner’s Declarant provides a level of ordinary skill. Abhari Decl. ¶ 4. Patent Owner’s Declarant generally agrees to that level of ordinary skill. Mathioudakis Decl. ¶ 16. We note that, to the extent there are any differences in the parties’ proposed level of ordinary skill, such differences do not impact our analysis.” slip op. at 25
Patent outcomesUS 9,121,412 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,121,412 - Mylan Laboratories Limited v. Aventis Pharma S.A.All claims unpatentablePTAB · Sep 21, 2017 · IPR2016-00712 · APJ Brian P Murphy · IPR · Final written decision
Claims 1–5 and 7–30 are unpatentable; the contingent motion to amend claims 27–30 with substitute claims 31–34 is denied.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“unpatentable. Therefore, we address Patent Owner’s contingent motion to enter proposed substitute claims 31–34. MTA 1, App. (claims 31–34). For the reasons that follow, Patent Owner’s motion is denied.” slip op. at 66
- ExcludeMotion to exclude, deniedDenied
“McSorley’s Declaration in connection with Exhibits 1089 or 1090 to support our decision. Therefore, Patent Owner’s Motion to Exclude Exhibits 1089 and 1090 is denied as moot.” slip op. at 81
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“e. Conclusion When we balance Petitioner’s strong evidence of obviousness against” slip op. at 52
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(a) regarding the patentability of the challenged claims. In this case, the claimed treatment method, administering a 20 to 25 mg/m2 dose of cabazitaxel in combination with prednisone to docetaxel-refractory metastatic prostate cancer patients, was disclosed more than one year before the earliest effective filing date to which the ’592 patent might be entitled.4 Therefore, for the reasons that follow and based on our review of the complete trial record, we determine Petitioner has shown by a preponderance of the evidence that claims 1–5 and 7–30 of the ’592 patent are unpatentable. We further determine that Patent Owner’s Contingent Motion to Amend claims 27–30 is denied.” slip op. at 4
Patent outcomesUS 8,927,592 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,927,592 - Arris Group, Inc. / Aruba Networks, Inc. et al. v. Mobile Telecommunications Technologies, LLCAll claims unpatentablePTAB · Sep 20, 2017 · IPR2016-00766 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1–5 are unpatentable: claims 1–5 are anticipated by Petrovic, and claim 5 is also obvious over Petrovic, Raith, and Alakija.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The asymmetrical condition recites “the band edge of the mask defining the channel,” referring to the “single mask-defined, bandlimited channel” also recited by the claims. A channel is a range or band of frequencies. See Pet. 5–6; see also Ex. 2001 ¶ 49; Ex. 2011 ¶ 48 (testimony of Patent Owner’s declarant Dr. Kesan that “[t]he word ‘band’ of ‘band edge’ refers to a frequency band or range.”). The language of the claims, themselves, thus indicates that “the band edge” is the edge of the mask that defines the range or band of frequencies of the channel. For example, in Annotation B of Figure 3B the left vertical line 31a and right vertical line 31b are the edges of the mask that define the range or band of frequencies of the channel. In other words, the entire range or band of frequencies of the channel are between left vertical line 31a and right vertical line 31b.” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Third, according to Dr. Kesan, example masks described in the specification of the ’891 and other extrinsic evidence support Patent Owner’s proposed construction. PO Resp. 21–33 (citing Ex. 2011). Dr. Kesan’s testimony is unpersuasive because it is not adequately supported by the cited evidence. See Pet Reply. 6–13. For example, Dr. Kesan testifies that “FCC emission masks can have multiple band edges,” meaning “all points along the edge of the mask that limits the frequency band” (Ex. 2011 ¶¶ 48–51 (citing id. at Appendix C). However, the material cited by Dr. Kesan does not mention the term “the band edges.” See id. at Appendix C. As another example, Dr. Kesan testifies that drawing the mask depicted in Figure 4 of the ’891 patent on Figure 5A of the ’891 patent proves that “not choosing the nearest band edges of the mask of Figure 4 would cause the two carriers of Figure 5A to exceed the diagonal band edges of the masks when the carriers are modulated.” PO Resp. 28–30 (citing Ex. 2011 ¶¶ 71– 76). Dr. Kesan, however, does not sufficiently explain why his placement of the Figure 4 mask on Figure 5A is the correct placement. See generally Ex. 2011 ¶¶ 71–76; see also Ex. 1018 ¶¶ 20–25 (testimony of Dr. Kakaes indicating the Dr. Kesan’s placement is incorrect). Further, Patent Owner’s argument that a POSITA would construe “the band edge” according to its proposed construction is unpersuasive. See generally PO Resp. 21–30. Patent Owner relies upon the testimony of Dr. Kesan for support. Id. We give Dr. Kesan’s testimony little weight because it is not credible due to inconsistency in his testimony. For example, in its Preliminary Response, Patent Owner points to an annotation of Figure 3B of the ’891 patent by Dr. Kesan in related district court litigation. See Prelim. Resp. 27 (reproducing a figure from Ex. 20106, 5). Annotated Figure 3B from the related district court litigation is reproduced below.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Upon review of Petitioner’s evidence and analysis, which we agree with and hereby adopt, we determine that Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic. Pet. 13–14, 23–26; Pet. Reply 16–28. In particular, we are persuaded by Dr. Kakaes’s testimony that Petrovic meets the asymmetric condition. Dr. Kakaes testifies that in Petrovic: the frequency difference between the center frequency of the outer most of the carriers and the band edge of the mask defining said channel (which is greater than 7.5 kHz) is more than half the frequency difference between the center frequencies of each adjacent carrier (which is 5 kHz), as required by claim 1. Ex. 1003 ¶ 22. Dr. Kakaes’s testimony is based upon Petrovic’s description of doubling the 25 kHz bandwidth to 50 kHz to provide “a 35 kHz pass band in the middle of the channel and 7.5 kHz guard bands on each side,” with eight subcarriers spaced 5 kHz apart.” Ex. 1013 1. Further, we are persuaded by Petitioner that Petrovic describes transmitting the carriers from the same location. Petrovic states that “[e]ach transmitter has four subtransmitters capable of 4-FSK over a subset of the 8 frequencies. Outputs of the subtransmitters are combined and sent to a common antenna.” Id. at 2; see also Ex. 1003 ¶¶ 25, 26. We are not persuaded by Patent Owner that Petrovic fails to anticipate claims 1, 3, and 5 because Patent Owner’s arguments are not commensurate with the scope of the claims. See PO Resp. 41–52. First, Patent Owner contends that Petrovic does not meet the asymmetric condition when “the band edge of the mask” is construed, according to Patent Owner’s proposed construction, as “the nearest band edge of the mask,” where “the nearest band edge” is defined as “the band edge that is nearest to the center frequency of each outer most carrier at the highest power level of each outer most carrier.” Id. at 42–50. As discussed above, however, we determine that Patent Owner’s proposed construction of “the band edge of the mask” is not the correct construction. Second, Patent Owner argues that Petrovic does not describe transmitting the carriers from the same location because it does not describes transmitting multiple carriers from the same location at the same time. PO Resp. 51–52. As also discussed above, claims 1, 3, and 5 do not require the carriers to be transmitted at the same time. Claims 1, 3, and 5 do not recite any temporal requirement, i.e., that all the carriers must be transmitted at the same time, only that the carriers must be transmitted from the same location. Patent Owner’s arguments, thus, are not commensurate with the scope of the claims. After consideration of both Petitioner’s and Patent Owner’s argument and evidence, Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“In addition, we are persuaded by Petitioner that the combination of Petrovic, Raith, and Alakija teaches the claimed co-locating. Petrovic describes an experiment in which two transmitters are located seven miles apart and synchronized to provide a simulcast overlap area. Ex. 1013, 2. Raith describes a similar cellular digital mobile radio system with plural base station transmitters. Pet. 33 (citing Ex. 1014, Title). Raith describes diving a geographical area into multiple cells and providing two transmitters, which simultaneously transmit the same message information to mobile stations, in each cell. Ex. 1014, Abstract, 6:1–3; Ex. 1003 ¶ 30. For adjacent cells, Raith teaches co-locating groups of three base transmitters to transmit information to contiguous cells. See Ex. 1014, 6:11–15; see also Pet. 33 (reproducing Figure 1 of Raith with annotations to illustrate the co-located transmitters). Dr. Kakaes testifies that a POSITA would have been motivated to expand the experimental paging system configuration described in Petrovic to include multiple adjacent paging cells/regions similar to the structure illustrated in Figure 1 of Raith . . . in order to provide messaging services to a larger geographic area and a larger number of mobile devices. Ex. 1003 ¶¶ 31–32; Ex. 1018 ¶ 73. Alakija describes a “mobile communications base station antenna, which utilizes a cylindrical array design.” Ex. 1015, Abstract. Alakija describes that, “[b]y combining a number of feed networks into a single antenna system, an antenna with multiple independently steerable beams is achieved.” Ex. 1015, 1–2; see also id. at Fig. 6. Dr. Kakaes testifies that a POSITA would have been motivated to utilize a single cylindrical antenna structure to emit the output signals of the three co-located transmitters described by Petrovic in view of Raith instead of three separate antennas, because a single antenna structure “[c]an be used to realize advantages such as...hardware savings, low manufacturing costs, [and] low installation costs,” as recognized by Alakija. Ex. 1003 ¶ 36 (quoting Ex. 1015, 3); Ex. 1018 ¶ 73.” slip op. at 27
Patent outcomesUS 5,659,891 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 5,659,891 - Arris Group, Inc. / Aruba Networks, Inc. et al. v. Mobile Telecommunications Technologies, LLCAll claims unpatentablePTAB · Sep 20, 2017 · IPR2016-00768 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1–5 are unpatentable: claims 1–5 as anticipated by Petrovic, and claim 5 also as obvious over Petrovic, Raith, and Alakija.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The asymmetrical condition recites “the band edge of the mask defining the channel,” referring to the “single mask-defined, bandlimited channel” also recited by the claims. A channel is a range or band of frequencies. See Pet. 5–6; see also Ex. 2001 ¶ 49; Ex. 2011 ¶ 48 (testimony of Patent Owner’s declarant Dr. Kesan that “[t]he word ‘band’ of ‘band edge’ refers to a frequency band or range.”). The language of the claims, themselves, thus indicates that “the band edge” is the edge of the mask that defines the range or band of frequencies of the channel. For example, in Annotation B of Figure 3B the left vertical line 31a and right vertical line 31b are the edges of the mask that define the range or band of frequencies of the channel. In other words, the entire range or band of frequencies of the channel are between left vertical line 31a and right vertical line 31b.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“with and hereby adopt, we determine that Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic. Pet. 13–14, 23–26; Pet. Reply 16–28. In particular, we are persuaded by Dr. Kakaes’s testimony that Petrovic meets the asymmetric condition. Dr. Kakaes testifies that in Petrovic: the frequency difference between the center frequency of the outer most of the carriers and the band edge of the mask defining said channel (which is greater than 7.5 kHz) is more than half the frequency difference between the center frequencies of each adjacent carrier (which is 5 kHz), as required by claim 1. Ex. 1003 ¶ 22. Dr. Kakaes’s testimony is based upon Petrovic’s description of doubling the 25 kHz bandwidth to 50 kHz to provide “a 35 kHz pass band in the middle of the channel and 7.5 kHz guard bands on each side,” with eight subcarriers spaced 5 kHz apart.” Ex. 1013 1. Further, we are persuaded by Petitioner that Petrovic describes transmitting the carriers from the same location. Petrovic states that “[e]ach transmitter has four subtransmitters capable of 4-FSK over a subset of the 8 frequencies. Outputs of the subtransmitters are combined and sent to a common antenna.” Id. at 2; see also Ex. 1003 ¶¶ 25, 26. We are not persuaded by Patent Owner that Petrovic fails to anticipate claims 1, 3, and 5 because Patent Owner’s arguments are not commensurate with the scope of the claims. See PO Resp. 41–52. First, Patent Owner contends that Petrovic does not meet the asymmetric condition when “the band edge of the mask” is construed, according to Patent Owner’s proposed construction, as “the nearest band edge of the mask,” where “the nearest band edge” is defined as “the band edge that is nearest to the center frequency of each outer most carrier at the highest power level of each outer most carrier.” Id. at 42–50. As discussed above, however, we determine that Patent Owner’s proposed construction of “the band edge of the mask” is not the correct construction. Second, Patent Owner argues that Petrovic does not describe transmitting the carriers from the same location because it does not describes transmitting multiple carriers from the same location at the same time. PO Resp. 51–52. As also discussed above, claims 1, 3, and 5 do not require the carriers to be transmitted at the same time. Claims 1, 3, and 5 do not recite any temporal requirement, i.e., that all the carriers must be transmitted at the same time, only that the carriers must be transmitted from the same location. Patent Owner’s arguments, thus, are not commensurate with the scope of the claims. After consideration of both Petitioner’s and Patent Owner’s argument and evidence, Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic. 3. Dependent claims 2 and 4 With respect to the additional limitations of dependent claims 2 and 4, Petitioner proffers annotated versions of Petrovic’s Figure 1 (Pet. 22–23) to show that adjacent carriers (claim 2) and subchannels (claim 4) “overlap with each other,” as recited in these claims. Id. at 21–23, 27. Figure 6 and Figure 7, the annotated versions of Petrovic’s Figure 1, are reproduced sideby-side below. Figure 6 depicts Petrovic’s Figure 1 with annotations to show transmission levels if subchannels 1–8 are all on. Pet. 21; Ex. 1003 ¶ 23. Figure 7 depicts a portion of Petrovic’s Figure 1 around carrier 1 and carrier 2 and has been annotated to highlight the overlap. According to Patent Owner, to meet claims 2 and 4, Petrovic must “teach overlap of the carriers that could be recognized by a receiver as the carrier except for near-far interference.” PO Resp. 53–59. Patent Owner argues that Petrovic does not teach overlapping carriers, because Petrovic’s overlap is caused by near-far interference and is at a very low power. PO Resp. 53–56 (citing Ex. 2011 ¶¶ 112, 115–120). Patent Owner argues that overlap must be overlap of those portions of a carrier that could be recognized by a receiver as the carrier except for near-far interference. Id. at 54.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“In addition, we are persuaded by Petitioner that the combination of Petrovic, Raith, and Alakija teaches the claimed co-locating. Petrovic describes an experiment in which two transmitters are located seven miles apart and synchronized to provide a simulcast overlap area. Ex. 1013, 2. Raith describes a similar cellular digital mobile radio system with plural base station transmitters. Pet. 33 (citing Ex. 1014, Title). Raith describes diving a geographical area into multiple cells and providing two transmitters, which simultaneously transmit the same message information to mobile stations, in each cell. Ex. 1014, Abstract, 6:1–3; Ex. 1003 ¶ 30. For adjacent cells, Raith teaches co-locating groups of three base transmitters to transmit information to contiguous cells. See Ex. 1014, 6:11–15; see also Pet. 33 (reproducing Figure 1 of Raith with annotations to illustrate the co-located transmitters). Dr. Kakaes testifies that a POSITA would have been motivated to expand the experimental paging system configuration described in Petrovic to include multiple adjacent paging cells/regions similar to the structure illustrated in Figure 1 of Raith . . . in order to provide messaging services to a larger geographic area and a larger number of mobile devices. Ex. 1003 ¶¶ 31–32; Ex. 1018 ¶ 73. Alakija describes a “mobile communications base station antenna, which utilizes a cylindrical array design.” Ex. 1015, Abstract. Alakija describes that, “[b]y combining a number of feed networks into a single antenna system, an antenna with multiple independently steerable beams is achieved.” Ex. 1015, 1–2; see also id. at Fig. 6. Dr. Kakaes testifies that a POSITA would have been motivated to utilize a single cylindrical antenna structure to emit the output signals of the three co-located transmitters described by Petrovic in view of Raith instead of three separate antennas, because a single antenna structure “[c]an be used to realize advantages such as...hardware savings, low manufacturing costs, [and] low installation costs,” as recognized by Alakija. Ex. 1003 ¶ 36 (quoting Ex. 1015, 3); Ex. 1018 ¶ 73.” slip op. at 27
Patent outcomesUS 5,659,891 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 5,659,891 - General Electric Company v. United Technologies CorporationAll claims unpatentablePTAB · Sep 15, 2017 · IPR2016-00862 · APJ George R Hoskins · IPR · Final written decision
Claims 1–11 and 13–21 are unpatentable: claims 1–7, 9–11, 13–18, 20, and 21 as anticipated by Bunker; claims 8 and 19 as obvious over Bunker and Liang.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Thus, there is agreement as to educational background and years of experience. There is disagreement as to the type of experience required — gas turbine airfoil cooling (per Dr. Eaton) or heat transfer in general (per Dr. Faghri). We determine a person of ordinary skill in the art pertaining to the ’568 patent may have the requisite years of experience in the field of gas turbine airfoil cooling, or in the heat transfer field more generally. We are not persuaded by Petitioner’s argument that a person with at least three years of experience in the heat transfer field would require yet more experience in the specific context of gas turbine engine cooling, to achieve a level of ordinary skill as to the ’568 patent. Moreover, our analysis would be the same based on either party’s proposed level of ordinary skill in the art.” slip op. at 6
- Expert testimonyDecided for patent owner
“given no weight,” because he “is an expert in heat pipe design, which has absolutely nothing to do with . . . airfoil cooling hole design.” Pet. Reply 2, 14–15. Petitioner’s Reply in effect urges us to exclude Dr. Faghri’s testimony without providing Patent Owner the procedural safeguards set forth in 37 C.F.R. §§ 42.64(b)–(c) & 42.23 for motions to exclude evidence. We are, also, unpersuaded that testimony from a heat transfer expert would not help us to understand the evidence or to determine a fact at issue in this proceeding. See id. § 42.62; Fed. R. Evid. 702(a). Thus, we will not exclude Dr. Faghri’s testimony. We have, however, taken the respective educational and experiential backgrounds of Dr. Eaton and Dr. Faghri into account when weighing the evidence presented in this proceeding.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We determine a broadest reasonable construction of claim 1 does not require the sidewalls to be a component or part of the lobes. First, the claim plainly recites “a diffusing section . . . comprising” a first lobe, a second lobe, upstream and downstream ends located at an outlet, and first and second sidewalls. Ex. 1001, 13:50–14:8. Thus, claim 1 indicates that the lobes and the sidewalls are parts of the diffusing section, not that the sidewalls are part of the lobes. In requiring the sidewall edges to extend to a downstream end trailing edge of a corresponding lobe (e.g., id. at 13:65–67), claim 1 merely specifies a spatial inter-relationship between the sidewall edges and the trailing edges of the lobes, and does not require that the sidewalls are part of the lobes. It is true, as Patent Owner points out, that each embodiment illustrated in the ’568 patent figures includes diffusing section sidewalls being a component of the lobes in the diffusing section. See, e.g., id. at 7:38–50, Fig. 5. Nonetheless, we must be careful not to read a particular embodiment appearing in the specification into the claim, if the claim language is broader than the embodiment. See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004) (“particular embodiments appearing in the written description will not be used to limit claim language that has broader effect”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the specification.”). Furthermore, the ’568 patent specification, like the language of claim 1, indicates the lobes and the sidewalls are parts of the diffusing section, not that the sidewalls are part of the lobes. Ex. 1001, Abstract, 3:12–21, 12:2–11. Unlike the situation presented in Toro, the ’568 patent specification does not describe any advantage of the sidewalls being a component or part of the lobes. See Toro, 199 F.3d at 1298, 1301 (patent at issue emphasized permanent attachment between ring and cover, with ring as part of cover). Patent Owner does not cite, and we cannot find, any disclosure in the ’568 patent specification informing a person of ordinary skill in the art of any special significance of the sidewalls being a part of the lobes, versus other characteristics of the cooling hole illustrated in Figure 5 of the ’568 patent (for example). Patent Owner’s assertion that the “advantages to the ’568 cooling hole design attach to the entire shape of the cooling hole” (PO Resp. 56–57) proves too much. Taken to its logical conclusion, it requires importation into claim 1 of every aspect of the entire shape and configuration of the cooling hole illustrated in Figure 5 of the ’568 patent. For example, it requires importation of the exact shape of lobes 124 and 126 and outlet 116 as shown therein, without deviation as to the width of the lobes or the exact curvature of the outlet. It further requires importation of the specific inclined portions 148 and 150, and interlobe region 142, shown in Figure 5. However, it is a “fundamental principle that claims define the scope of patent protection,” which “presupposes that a patent applicant defines his invention in the claims, not in the specification.” Johnson & Johnson Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1052 (Fed. Cir. 2002) (en banc) (citations omitted). For the foregoing reasons, we determine a broadest reasonable” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We determine Petitioner’s position as to the location of the downstream end in Bunker’s Figure 5 is the correct one. This is so regardless of whether we apply Patent Owner’s proffered definition of the downstream end (i.e., the end of the outlet in the direction of cooling airflow) or Petitioner’s proffered definition (i.e., the point where the end of the diffusing section meets the second wall surface). Under either definition, the downstream end of Bunker’s Figure 5 must include at least the downstream ends of troughs 86 and 88. Troughs 86 and 88 are part of the diffusing section in Figure 5, and their downstream ends both meet wall surface 82 / 93. See Ex. 1005, Fig. 5, ¶ 52. A person of ordinary skill in the art would understand that cooling air flows within troughs 86 and 88 to be diffused along outer surface 82 / 93 at their downstream ends. Ex. 1005 ¶¶ 6–8, 38, 40, 42, 45, and claim 20; Ex. 1003 ¶¶ 26–27, 45. Patent Owner’s contention that the front face of plateau 92 is the downstream end of the diffusing section cannot be correct, because troughs 86 and 88 extend within passage hole 80 further downstream than that front face. See Ex. 1005, Fig. 5.3 As Patent Owner recognizes, the front face of plateau 92 causes at least some of the cooling airstream to split, laterally, into troughs 86 and 88. See PO Resp. 19–20 (discussing prosecution history of Bunker); Tr. 19:19– 20:24. Also, Patent Owner’s position as to the downstream end location in Bunker’s Figure 5 is not supported by testimony from Dr. Faghri, who does not opine on the location of the downstream end. Thus, Patent Owner’s position in this regard is supported only by attorney argument, not by evidentiary testimony. Moreover, claim 1 of the ’568 patent fails to specify any particular structure(s) between the two lobes. Thus, whether Bunker’s plateau 92 forces some of the cooling airstream upwardly into the hot airstream is irrelevant to the structure recited in claim 1. 3 Figure 6 of the ’568 patent illustrates downstream end 160 being “spaced from,” and therefore not axially coextensive with, trailing edges 136 and 138 of lobes 124 and 126. Ex. 1001, Fig. 6, 8:7–11, 10:21–33. However, in ’568 patent Figure 6, downstream end 160 is downstream of trailing edges 136 and 138. Patent Owner’s alleged downstream end in Bunker’s Figure 5, by contrast, is upstream of the trailing edges of lobes 86 and 88. We find further that, in some configurations of plateau 92 in Figure 5, the top surface of plateau 92 (i.e., the roughly trapezoid-shaped surface in Figure 5 surrounding “92”) slopes downwardly into the cooling hole, below wall surface 82 / 93. Figure 5 shows a line extending between the trailing edges of troughs 86 and 88. Ex. 1005, Fig. 5. That line indicates there is a defined, angled edge between outer surface 93 and the top surface of plateau 92. If there were no such angled edge, there would be no line in Figure 5. See, e.g., PO Resp. 61 (“There is necessarily some form of plane between the side of the troughs [86, 88] and the edge of the outlet[], otherwise the green-shaded portions [reproduced at PO Resp. 61] would not be visible to a viewer looking down on passage hole 80.”) Bunker also discloses that plateau 92 in Figure 5 “can generally lie in the same plane as outer surface region 93, although the figure seems to show plateau 92 as being angled upwardly from region 93,” and plateau 92 “can vary in height, relative to surface 82.” Ex. 1005 ¶ 52 (emphases added). Bunker further indicates, more generally, that the shape, size and orientation of its plateau surfaces or faces (such as in plateau 92 of Figure 5) can vary considerably. Id. ¶ 49. In light of these disclosures, a person of ordinary skill in the art would appreciate that the top surface of plateau 92 will slope downwardly into the diffusing section of the cooling hole in some configurations. See Tr. 23:1–23:19. In at least such configurations, the edge defining the transition between the top surface of plateau 92 and valley 90 underneath plateau 92 is located down within the diffusing section below wall surface 82 / 93, and therefore is not at the downstream end of the diffusing section.” slip op. at 29
Patent outcomesUS 8,689,568 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,689,568 - Autodesk, Inc. v. Uniloc USA, Inc. And Uniloc Luxembourg, S.A.All claims unpatentablePTAB · Sep 11, 2017 · CBM2016-00043 · APJ Christopher M Kaiser · CBM · Final written decision
Claims 1, 2, 4–7, and 12–19 are unpatentable under § 101; claims 3, 8–11, and 20 are subject to adverse judgment after disclaimer.
RulingsFinal written decision- Adverse judgmentAdverse judgmentGranted
“B. Statutory Disclaimer During the pendency of this proceeding, Patent Owner filed a disclaimer pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2014. According to this disclaimer, Patent Owner disclaims claims 3, 8–11, and 20 of the ’820 patent. Id.; see also Resp. 1 (“Contemporaneously with the filing of this Response, Patent Owner is disclaiming claims 3, 8, 9, 10, 11, and 20 of the ’820 Patent.”). Our rules provide for entry of adverse judgment against a Patent Owner who disclaims “a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Although Patent Owner does not disclaim all the challenged claims, and although Patent Owner therefore has some claims remaining in this trial, we construe the disclaimer of claims 3, 8–11, and 20 as a request for the entry of adverse judgment solely with respect to those claims. We grant the request and enter adverse judgment with respect to claims 3, 8–11, and 20.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“1. Add-On Computer Software Code Both parties propose construing “add-on computer software code,” a term that appears in every challenged claim. Ex. 1001, 78:43–82:36. Petitioner argues that this term should be interpreted as a “set of computer code that cannot be run independently from a parent program.” Pet. 22. Patent Owner argues that the term should be interpreted as “set of computer code that is designed to run within a parent computer software application or code, particularly architectural CAD software (or another architectural, civil, industrial, or other software design tool), as an internal component.” Resp. 42–43. We agree with Patent Owner. Patent Owner’s construction is taken directly from the written description of the ’820 patent, which provides a reasonably clear, deliberate, and precise definition of the term. See Paulsen, 30 F.3d at 1480; Ex. 1001, 61:42–51 (“The plug-in (add-on) computer software code is . . . .”). To the extent that Petitioner’s proposed construction seeks to limit add-on software code further by requiring that the software code be incapable of running independently from a parent program, as opposed merely to being designed to run within the parent program as an internal component, this further limitation is inconsistent with the lexicography undertaken by the patentee of the ’820 patent. Accordingly, we construe “add-on computer software code” as a “set of computer code that is designed to run within a parent computer software application or code, particularly architectural CAD software (or another architectural, civil, industrial, or other software design tool), as an internal component.”” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“As discussed above, the ’820 patent describes solving problems with the generation of cost estimates of construction projects, including that the process takes significant time and effort, that the estimates produced are difficult to revise, and that the estimates can be inaccurate, leading to cost overruns and difficulties obtaining construction loans. Ex. 1001, 1:15–62. The claims recite a computer readable medium or system for automating the process of generating a price schedule, which is used to develop the overall project cost estimate. Id. at 78:43–82:36. In so doing, the claims do not recite any “specific asserted improvement in computer capabilities,” such as the “self-referential table for a computer database” in Enfish, 822 F.3d at 1336. Instead, the claims of the ’820 patent “invoke[]” known aspects of computer technology, including “[a] non-transitory computer readable medium,” “a computer that includes a processor and a memory,” “an add-on computer software code,” “a software design tool,” and “a database,” “merely as a tool” for solving the problem of improving the known process of generating construction project cost estimates. Id.; Ex. 1001, 78:43–60. Accordingly, the claims of the ’820 patent are not like those considered in Enfish, where the claims were determined at the first step of the Alice framework not to be directed to abstract ideas because they were directed to “[a] specific asserted improvement in computer capabilities.” 822 F.3d at 1336. Instead, Petitioner has shown by a preponderance of the evidence that the challenged claims of the ’820 patent are focused “on a process that qualifies as an ‘abstract idea.’” Id. The ’820 patent makes clear that the heart of the claimed subject matter is generating prices for construction projects, a process that can be accomplished without automation technology. Ex. 1001, 1:15–62. The claims themselves recite “[a] non-transitory computer readable medium [that] causes [a] computer to generate a price schedule” and “[a] system for creating a pricing schedule.” Id. at 78:43–51, 82:4. As discussed above, the computer technology recited in the claims is used merely as a tool to automate the process of determining the price of a construction project. Determining a price is an abstract idea. See Versata Dev. Grp., 793 F.3d at 1333–34 (Fed. Cir. 2015). Thus, on the current record, Petitioner has made a sufficient showing that the claims of the ’820 patent are directed to an abstract idea under the first step of the Alice analysis.” slip op. at 20
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“application of an abstract idea. Mayo, 566 U.S. at 78. Petitioner argues that the challenged claims have no such elements, because “the challenged claims add nothing more than well-understood, routine, conventional activity to the abstract idea of calculating a price.” Pet. 32–48. Patent Owner argues that the presence of the add-on computer software code limitations in the challenged claims transforms those claims into patent-eligible applications. Resp. 49–50. We are persuaded that Petitioner has shown by a preponderance of the evidence that the challenged claims of the ’820 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355.” slip op. at 23
Patent outcomesUS 8,515,820 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · EnfishPatents in suitUS 8,515,820
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.