- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Ixi IP, LLCAll claims unpatentablePTAB · Dec 21, 2016 · IPR2015-01444 · APJ John A Hudalla · IPR · Final written decision
Claims 1, 4–7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42, and 46 are unpatentable under the stated § 103 combinations.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“The parties’ arguments require us to consider whether a printer is commensurate with the broadest reasonable interpretation of “thin terminal.” See Pet. 30–31; PO Resp. 42–43; Pet. Reply 18–20. The ’033 patent describes “thin terminals” as having “a relatively low power central processor and operating system” and as being “mainly used as peripherals to an Application server in a PAN.” Ex. 1001, 5:2–5. The main tasks of a thin terminal are described as “user interaction, rendering output for a user and providing an Application server with a user’s input.” Id. at 5:5–7. Examples of thin terminals provided in the ’033 patent include a watch and a messaging terminal. Id. at 5:5–7. Furthermore, the ’033 patent contrasts thin terminals with smart terminals having “a relatively powerful central processor, operating system and applications,” such as “a computer notebook and PDA.” Id. at 4:62–5:2. In describing a messaging terminal in one embodiment, the ’033 patent states that the terminal “has no embedded application code or data.” Id. at 10:18–21. Petitioner contends a printer is a thin terminal because, at least, a printer “has a low power central processor and operating system relative to a laptop computer or PDA.” Pet. 31 (citing Ex. 1003 ¶ 25) (internal quotation omitted). We agree with Petitioner, and we additionally observe that a printer is a peripheral utilized for rendering user output, which is consistent with the Specification’s description of a thin terminal. We also agree with Petitioner that the Specification’s reference to “no embedded application code or data” (Ex. 1001, 10:18–21) does not preclude a printer with application code and/or data from being a thin terminal, because the ’033 patent also describes the thin terminal locating, downloading, and executing software. Pet. 19 (citing Ex. 1001, 10:13–25). As such, we determine the “thin terminal” recited in claims 7 and 46 encompasses a printer.1” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art would have had a Master[] of Science Degree (or a similar technical Master’s Degree, or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or computer science with a concentration in communication and networking systems or, alternatively, a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical or computer engineering and having two or more years of experience in communication and networking systems. Pet. 7–8. Petitioner’s contention is supported by the testimony of Dr. Kiaei, who bases his testimony on his “experience working in industry and academia, with undergraduate and postgraduate students, with colleagues from academia, and with engineers practicing in industry.” Ex. 1003 ¶¶ 15– 16. IXI does not dispute Petitioner’s definition of the level of ordinary skill in the art, and, in fact, IXI applies it in IXI’s Patent Owner Response. PO Resp. 8; see also Ex. 2301 ¶ 16 (IXI’s declarant, Dr. Mandayam, applying same definition). Accordingly, we apply Petitioner’s definition of the level of ordinary skill in the art for purposes of this Decision. We further observe that Petitioner’s proposed definition comports with the qualifications a person would need to understand and implement the teachings of the ’033 patent and the prior art of record.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“3. Marchand Marchand is a published international patent application, and Petitioner asserts Marchand’s priority date under 35 U.S.C. § 102(e) is April 3, 2000, the date of filing for a prior national application (i.e., Marchand Priority) in the United States. See Pet. 4–5. IXI does not contest Petitioner’s priority date assertion. Therefore, for purposes of this decision, we find Marchand qualifies as prior art to the ’033 patent under 35 U.S.C. § 102(e) because April 3, 2000, predates the May 7, 2001, filing date of the ’033 patent.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“ordinarily skilled artisan “would have modified Marchand’s system such that the public IP address of the mobile phone gateway 33 was provided by the cellular network 35.” PO Resp. 40 (quoting Pet. 17–18). IXI argues that Marchand and Vilander do not indicate a need for the cellular network to provide a public IP address for the gateway mobile phone. Id. (citing Ex. 2301 ¶ 70). Nevertheless, we agree with Petitioner that “using Vilander’s address allocation in Marchand would have amounted to nothing more than the use of a known technique to improve similar devices in the same way or the combination of prior art elements according to known methods to yield predictable results.” Pet. Reply 15 (citing, inter alia, KSR v. Teleflex, 550 U.S. 398, 417 (2007)); see also Pet. 19 (citing same). Although Marchand describes gateway mobile phone as having “a public IP address recognized in the wireless IP network,” Marchand does not explicitly describe how the public IP address is assigned. Pet. Reply 16 (quoting Ex. 1005, 4:23–30). In light of this, Petitioner identifies evidence that Vilander’s GGSN would have improved Marchand by allocating the public IP address to Marchand’s gateway mobile phone 33. Pet. 18 (citing Ex. 1003 ¶ 46; Ex. 1011, 1:48–52, 1:57–59).” slip op. at 22
Patent outcomesUS 7,039,033 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,039,033 - Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Ixi IP, LLCAll claims unpatentablePTAB · Dec 21, 2016 · IPR2015-01446 · APJ John A Hudalla · IPR · Final written decision
Claims 1, 2, 6, 7, 9, 10, 12–16, 21–24, 26–28, and 30 are unpatentable under § 103(a) over Marchand and Sears, or Marchand, Sears, and Lee.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the art relevant to the ’648 patent would have had a Master of Science Degree in electrical engineering, computer engineering, or computer science or a bachelor’s degree in electrical engineering, computer engineering, or computer science and two or more years of experience in communication and networking systems. Pet. 7. Petitioner’s contention is supported by the testimony of Dr. Kiaei, who bases his testimony on his “experience working in industry and academia, with undergraduate and postgraduate students, with colleagues from academia, and with engineers practicing in industry.” Ex. 1014 ¶¶ 15– 16. IXI does not dispute Petitioner’s definition of the level of ordinary skill in the art, and, in fact, IXI applies it in IXI’s Patent Owner Response. PO Resp. 8; see also Ex. 2501 ¶ 16 (IXI’s declarant, Dr. Mandayam, applying same definition). Accordingly, we apply Petitioner’s definition of the level of ordinary skill in the art for purposes of this Decision. We further observe that Petitioner’s proposed definition comports with the qualifications a person would need to understand and implement the teachings of the ’648 patent and the prior art of record.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Petitioner also cites Sears’s description that device information can be “provided by a device or user during a request for . . . application download.” Pet. 36 (quoting Ex. 1015 ¶ 41) (emphasis added). Petitioner additionally cites Sears’s description of software that is downloaded “based on a user profile sent at the time of search.” Pet. Reply 7 (quoting Ex. 1015 ¶ 42). Contrary to IXI’s arguments, these citations establish that Sears is not limited to providing device information in one transaction and then downloading software in a separate transaction. Rather, we are persuaded by Petitioner’s analysis that an ordinarily skilled artisan would have understood Sears as also teaching contemporaneous downloading and sending of device information. See Ex. 1014 ¶¶ 62–63. Thus, Petitioner establishes that the combination of Marchand and Sears teaches every limitation of claim 1.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“IXI also characterizes Petitioner’s alleged motivation to combine Marchand and Sears as being a “hindsight-fueled, juxtaposition of discrete elements of the references.” PO Resp. 27. IXI argues that Petitioner’s alleged motivation “is based entirely on maintaining the benefits (or not ‘negating the benefits of’[)] of each individual system after making the alleged combination.” PO Resp. 26 (citing Pet. 15–16). We do not find Petitioner’s alleged motivation to be flawed, however. Supported by the testimony of Dr. Kiaei, Petitioner provides an extensive analysis that turns on an ordinarily skilled artisan being motivated to add “Sears’ techniques for optimized downloading of applications” to Marchand. See Pet. 15 (citing Ex. 1014 ¶¶ 31–34). Petitioner’s mention of “retain[ing] the benefits” of Marchand simply underscores that Sears’s server and optimized application downloading functionality augment and provide further benefits to Marchand’s piconet and its use of a gateway mobile phone to connect to a cellular IP network. Id. at 17–18 (citing Ex. 1014 ¶ 37). Petitioner’s combination also is rooted in the common teachings mentioned above. Thus, Petitioner establishes that an ordinarily skilled artisan would have recognized that Sears’s technique would also improve similar devices in the same way; as such, using Sears’s technique in this way “is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. The relatively high level of skill ascribed to an ordinary artisan—namely, a Master of Science degree in engineering (see supra § II.A.2.)—suggests that applying Sears’s techniques to Marchand would have been well within the skill of an ordinarily skilled artisan. For these reasons, Petitioner has established that a person of ordinary skill in the art would have had reason to combine the teachings of Marchand and Sears to achieve the method recited in claim 1.” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerationsOther
“c. Secondary Considerations of Nonobviousness IXI did not put forth any evidence of secondary considerations of nonobviousness.” slip op. at 18
Patent outcomesUS 7,016,648 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,016,648 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Ixi IP, LLCAll claims unpatentablePTAB · Dec 21, 2016 · IPR2015-01445 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–3, 5–7, 9, 13–17, 19, 21–23, 27, 28, and 30 are unpatentable as obvious over Liu alone and Liu with Chiloyan; anticipation by Liu was not shown.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“systems. Pet. 7. In its Response, Patent Owner states it applies Petitioner’s definition of a person of ordinary skill on in the art. PO Resp. 9. Based on our review of the ’648 patent, the types of problems and solutions described in the ’648 patent and cited prior art, we adopt, for purposes of this Decision, Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits that “all terms of the ’648 Patent should be given their broadest reasonable plain meaning.” Pet. 4. Patent Owner submits that “the terms of the challenged claims should be interpreted according to their plain and ordinary meaning.” PO Resp. 9. Just as in the Decision on Institution, we apply the broadest reasonable interpretation standard here. In our Decision on Institution, we stated that “we do not explicitly construe any claim terms.” Dec. 5. We similarly see no reason to construe explicitly any claim term at this stage in this proceeding. B. Anticipation Analysis” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“identifier includes manufacturer information, as required by the independent claims. Patent Owner correctly notes that there is no explicit disclosure in Liu of manufacturer information present in the device information. PO Resp. 21–22. Petitioner has not directed us to a disclosure in Liu that expressly states that manufacturer information is present in the device information. We are unpersuaded by Dr. Kiaei’s testimony, which is couched in terms of what Dr. Kiaei opines “must be” in Liu, rather than what Liu expressly discloses. Ex. 1003 ¶ 39. Dr. Kiaei’s testimony discusses portions of Liu regarding manufacturer 1670 and its registration of device identifiers for toys, but these citations to Liu do not expressly disclose the disputed claim limitation. Id. ¶¶ 37–39. Dr. Kiaei provides no additional authority for the statements supporting the assertions in paragraphs 37–39, in particular, the statement that “each identifier must be associated in some way to the particular manufacturer of the toy to allow ‘each toy to be used within the system [to] be uniquely recognized.’” Pet. 15 (citing Ex. 1003 ¶ 39); see also 37 C.F.R. § 42.65(a) (stating opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”). We also find unpersuasive the argument that “each identifier must be associated in some way to the particular manufacturer of the toy to allow ‘each toy to be used with the system [to] be uniquely recognized.’” Ex. 1003 ¶ 39. Liu states that, via registration of a device identification number for the toy, “each toy to be used in the system may be uniquely recognized.” Ex. 1005, 46:5–7. If, as hypothesized by Dr. Kiaei, two manufacturers registered the same toy identifier for two different toys, then by its terms, the toy would not be uniquely recognized, as required by Liu. Id. Petitioner also has not carried its burden to establish that Liu inherently discloses that the device information includes a manufacturer of the device. “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Inherency is not “established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. (quotation omitted).” slip op. at 11
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We agree with Petitioner that there remains ambiguity about the field of endeavor Patent Owner seeks to identify with respect to the ’648 patent. Reply 20. “The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016). Petitioner characterizes the field of endeavor of both disclosures as “techniques for network communication between devices and servers,” which, while broad, is not unreasonable. Reply 22. Although Liu’s most noticeable feature may be a teddy bear, the underlying networking and functionality of its system place it in the same field of endeavor as the ’648 patent. See id. at 20–21 (including citations to Liu’s disclosures of aspects of network interactions between toy devices and servers). Limiting Liu’s field of endeavor to “toys” is insupportably narrowing when Liu in fact discloses networking features that in numerous instances align with the disclosure of the ’648 patent. Regarding the particular problem to be solved, our position remains the same as in the Decision on Institution. Liu’s disclosure is, at least, reasonably pertinent to the problem faced by the inventors of the ’648 patent, i.e., “the problem of ‘sending software to a device connected to a local network from a remote server.’” Dec. 14. Thus, we remain persuaded that Petitioner has established sufficiently that Liu is analogous art.” slip op. at 17
Patent outcomesUS 7,016,648 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,016,648 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Ixi IP, LLCAll claims unpatentablePTAB · Dec 21, 2016 · IPR2015-01443 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1, 4, 5, 7–9, 12, 14–16, and 23–24 are unpatentable under § 103 over the instituted combinations of Marchand, Router Plugins, and the applicable additional references.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“For the purpose of this Decision, we accept Petitioner’s undisputed contention that a person of ordinary skill in the art as of the critical date would have had a Master’s of Science Degree in an academic area emphasizing electrical engineering, computer engineering, or computer science (or a similar technical Master’s Degree, or higher degree) with a concentration in communication and networking systems or, alternatively, a Bachelor Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or computer science and having two or more years of experience in communication and networking systems. Ex. 1003 at 15. Additional education in a relevant field, such as computer science, computer engineering, or electrical engineering, or industry experience may compensate for a deficit in one of the other aspects of the requirements stated above. Pet. 9–10. Patent Owner applied Petitioner’s definition in its Patent Owner Response. PO Resp. 10–11. The level of ordinary skill in the art is further” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the broadest reasonable construction in light of the specification of the patent in which they appear. See Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard); 37 C.F.R. § 42.100(b). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In our Decision on Institution, we determined that the claim 1 phrase “software component . . . loaded . . . from the one or more devices connected to said one or more cellular networks” needed no express construction. Dec. 7–8. Patent Owner, in its Response, agrees that “a person of ordinary skill in the art would have understood this recitation without an explicit construction.” PO Resp. 11. We see no reason to modify our position in light of the record developed at trial. No other claim terms have been presented to us for construction, and we determine that no other claim terms require express construction. B. Principles of Law” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We are persuaded by Petitioner’s arguments in this regard. We understand Petitioner as premising the combinability of Marchand and Router Plugins on the routing of IP packets. Pet. 14 (Marchand’s “mobile gateway 33 performs routing for IP packets”), 23 (“Marchand discloses a mobile phone gateway 33 that routes IP packets between a local area network and an external cellular network . . . .”); Reply 3. Petitioner relies on Router Plugins’ “plugin-based routing software” to be “implemented in Marchand’s mobile phone gateway 33 to implement various types of router functionality, such as routing of IP packets and IP address translation.” Pet. 24. Indeed, Dr. Mandayam agrees that routing of IP packets is done by Marchand, and is done at a network layer of the protocol stack. Reply 3–4 (citing Ex. 1016, 21:21–22:2, 160:16–19; Ex. 2201 ¶¶ 34, 35). Dr. Mandayam also agrees that Router Plugins performs routing of IP packets, and that routing of IP packets occurs at a network layer of the protocol stack. Id. at 5–6 (citing Ex. 1016, 145:15–24, 21:21–22:2). We further agree with Petitioner’s contention that, even though the Router Plugins routing framework fits within an operating system kernel, “Router Plugins does not describe routing IP packets at the operating system layer,” but rather, performs routing of IP packets at a network layer of the protocol stack. Id. at 4–5 (citing Ex. 1006, 229 col. 2, 231 col. 2, Fig. 1). We credit Dr. Kiaei’s testimony that one of ordinary skill in the art, understanding that both “Marchand and Router Plugins describe devices that utilize software to route IP packets and perform network address translation,” would have been motivated to make Marchand’s IP routing “more ‘flexible and modular’ by using the plugin-based router software of Router Plugins.” Ex. 1003 ¶ 55. The enhanced routing of IP packets at the network layer, as demonstrated by Router Plugins, would have led one of ordinary skill in the art to consider the inclusion of Router Plugins’ technology to better the IP routing of Marchand, which also takes place at the network layer.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We have the discretion to determine the appropriate weight to be accorded to the evidence presented, including opinion testimony, based on the disclosure of the underlying facts or data upon which the opinion is based. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to credit one witness’s testimony over another “unless no reasonable trier of fact could have done so”). We are not persuaded by Patent Owner’s arguments that Dr. Kiaei’s testimony as a whole should be given “little weight, if any.” We have considered Patent Owner’s sub-piconet theory, and we determine that it would not have limited an ordinarily skilled artisan’s understanding of Marchand. Thus, we accord an appropriate weight to Dr. Kiaei’s testimony as indicated in this Decision and for the reasons articulated in this Decision. F. Motion to Exclude” slip op. at 34
Patent outcomesUS 7,295,532 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,295,532 - Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00762 · APJ Christopher M Kaiser · IPR · Rehearing
Denied Petitioner’s rehearing request; claims 1–5 remain instituted only on the Mukherjee anticipation ground, with institution denied on the Briffod and Takano anticipation grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). However, we will grant a request for rehearing only if it also “specifically identif[ies] . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering the Request for Rehearing, the Decision, and the evidence currently of record, we determine that Petitioner has not demonstrated an abuse of discretion. Accordingly, we deny the Request for Rehearing.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“sufficiently that Briffod discloses the “crack structure” of the recited claims on the surface of its film 2. Dec. 14–15. This was based on the failure of Petitioner and Briffod to explain whether the voids that Petitioner contends constitute cracks are present on “the surface” of the layer in question. Id. In its Request for Rehearing, Petitioner now argues that conclusion was an abuse of discretion. Request 6–9. Petitioner argues that Briffod discloses voids contained within film 2 and that these voids “qualify as cracks.” Id. at 6. As stated in our Decision, we agree that Briffod discloses voids within film 2, and, for the purposes of deciding whether to institute inter partes review, we accepted Petitioner’s contention that the voids in question constitute “cracks.” Dec. 13–14. The challenged claims, however, require that the “alloy layer has a crack structure on its surface,” and the Petition failed to explain why the presence of cracks within a layer demonstrates the presence of cracks on the surface of that layer.” slip op. at 5
- BurdenDecided for patent owner
“Finally, Petitioner argues that the roughness of the surface of film 2 and the roughness of overlying thin film 3 demonstrate the presence of voids on the surface of film 2. Request 8–9. Once again, Petitioner fails to explain adequately where this argument was made previously. Petitioner intermittently points to portions of the Petition where it contends that this argument was made previously, but Petitioner also intersperses arguments that do not cite to the Petition. Id. (citing Pet. 13–14, 23). To the extent that the citations are missing, we cannot consider this argument. 37 C.F.R. § 42.71(d). Even if we could consider this argument, we would not be persuaded that it showed an abuse of discretion in our conclusion that Petitioner failed to show sufficiently that Briffod discloses the presence of a crack structure on the surface of thin film 2. Briffod shows voids within thin film 2, and Briffod shows that thin film 2 has a rough surface. Ex. 1003, Fig. 1b. Briffod also states that the voids caused by the Kirkendall effect “may be the reason for the observed porosity of [thin film 3].” Id. at 4:21– 29. It is not clear that this establishes a causal relationship of any kind between the presence of voids and the rough surface, because it only posits a possible connection. Even if the voids do cause the surface to be rough, they could do so through several conceivable mechanisms, only one of which is the accumulation of voids at the surface. Petitioner did not explain in the Petition why we should assume any causal relationship, much less the single type of causal relationship that would satisfy the language of the challenged claims.” slip op. at 6
§ 102 anticipationPatents in suitUS 6,482,535 - Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00764 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding no abuse of discretion in denying institution on the Briffod and Takano anticipation grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 the decision 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 Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 200 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“evidence presented, that Petitioner established sufficiently that Briffod discloses voids or cracks that are formed in the alloy layer. Dec. 19–20. Specifically, we stated that Briffod describes the surface of thin film 3 as shown in Figure 1b (the claimed “coating layer,” according to Petitioner) as “very rough,” with “many holes of 1 to 2µ which confirms the sponge-like structure suggested by the appearance of the surface.” [Ex. 1003, 4:8–15.] Briffod does not, however, describe the characteristics of film 2, which Petitioner contends is the “alloy layer” required by the claims. See Pet. 29 (quoting Ex. 1003, 2:55–56); id. at 30 (same). Petitioner does not provide any other evidence that shows sufficiently that Briffod discloses voids or cracks that are formed in the alloy layer. Id. Therefore, we considered Petitioner’s arguments and evidence that cracks or voids are formed in Briffod film 2, and deemed it insufficiently persuasive. Moreover, with respect to Petitioner’s argument that Briffod Figure 1b “illustrates the Kirkendall voids as small circles in the film 2,” we note that Briffod describes Figure 1b as illustrating the Briffod invention “in a schematic manner” (Ex. 1003, 2:51–55), and does not explain what, if anything, the “small circles” drawn in film 2 signify. It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees. As a result, we did not abuse our discretion in denying institution of inter partes review of claims 2, 5, 7, 8, and 10 on the asserted ground of unpatentability based on Briffod.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“to show anticipation because Comparative Example 2, alone, shows all of the features of claims 1 and 6 of the ’036 patent.” Req. Reh’g 13. Petitioner does not point us to where this argument was made in the Petition; instead, Petitioner directs us to page 19 of the Petition, which is an overview of Takano. Id. at 12. In contrast, in the claim charts, which “show features of Takano that correspond to the claims of the ‘036 patent,” Petitioner identifies Example 1 as disclosing some limitations of the claims, and Comparative Example 2 as disclosing others. See, e.g., Pet. 33–34 (claim chart for claim 1). Per 37 C.F.R. § 42.71(d), Petitioner must point out where the matter was previously addressed in its Petition. We could not have overlooked argument or evidence that was not presented in the Petition. A request for rehearing is not an opportunity to supplement a petition.” slip op. at 5
§ 102 anticipationPatents in suitUS 6,492,036 - Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00763 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the refusal to institute on Takano anticipation of claims 1–4, 6, and 14–18.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). However, we will grant a request for rehearing only if it also “specifically identif[ies] . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering the Request for Rehearing, the Decision, and the evidence currently of record, we determine that Petitioner has not demonstrated an abuse of discretion. Accordingly, we deny the Request for Rehearing.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)
“arguments in support of the asserted anticipation of claims 1–4, 6, and 14–18 by Takano. Req. 1. In refusing to institute on this ground, we concluded that Petitioner had not shown sufficiently that Takano anticipates claims 1– 4, 6, and 14–18 because Petitioner’s argument required combining disclosures from multiple embodiments disclosed in Takano. Dec. 18. Petitioner now presents two arguments that this determination was an abuse of discretion. Req. 5–8.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“arguments in support of the asserted anticipation of claims 1–4, 6, and 14–18 by Takano. Req. 1. In refusing to institute on this ground, we concluded that Petitioner had not shown sufficiently that Takano anticipates claims 1– 4, 6, and 14–18 because Petitioner’s argument required combining disclosures from multiple embodiments disclosed in Takano. Dec. 18. Petitioner now presents two arguments that this determination was an abuse of discretion. Req. 5–8.” slip op. at 3
§ 102 anticipationPatents in suitUS 6,306,523 - PTAB · Oct 3, 2016 · IPR2016-00982 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution on all asserted grounds because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing any of the challenged claims are unpatentable. Accordingly, we do not institute inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The parties agree that the term “central” requires an aperture that is “in, at, or near the center” or “of, at, or forming the center” of a structural element. Pet. 12 (citing Ex. 1017, 1) (Petitioner asserting the definition “in, at, or near the center” applies); Prelim. Resp. 17 (citing Ex. 1017, 1) (Patent Owner asserting a hybrid definition, “of, at, or forming the center,” applies). Petitioner asserts “central” applies to “any portion of the overall claimed structure (e.g., filter flange assembly, filter element, or other structure),” and not just the filter flange assembly. Pet. 12. Patent Owner counters that the term “central aperture” “cannot be divorced from the surrounding claim language giving it context,” which indicates that the “central aperture” is at the center of the “filter flange assembly,” and “not some random ‘other structure,’ as Petitioner argues.” Prelim. Resp. 17 (citing Ex. 1017, 1). In this case, the claims themselves identify the “rectangular filter flange assembly” as the structural element having a central aperture. Thus, we agree with Patent Owner that the term “central aperture” applies to the rectangular filter flange assembly and not “any portion of the overall claim structure,” as asserted by Petitioner. This understanding is consistent with the written description of the ’037 patent, which describes and depicts an” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“We have construed “central aperture” as “an aperture that is in, at, or near the center of the rectangular filter flange assembly.” Upon review of the parties’ arguments and supporting testimony, we agree with Patent Owner that Petitioner and Mr. Haynam have not explained sufficiently why one of ordinary skill in the art, upon reviewing the ’037 patent as a whole, would conclude that any of openings 25 and 26 of Nostrand constitute a “central aperture.” First, as is evident from Figures 5 and 8 of Nostrand, openings 25 and 26 are not “in” or “at” the center of outlet plate 22 or spider plate 9, respectively. Indeed, spider plate 9 and post 10 physically prevent an aperture from being “in” or “at” the center of either structure. Second, Petitioner has not provided evidence or argument that persuasively demonstrates that one of ordinary skill in the art would consider one or more of Nostrand’s openings to be “near” the center of a rectangular filter flange assembly. Finally, Mr. Haynam does not explain sufficiently why one of ordinary skill in the art would consider four openings surrounding a central location in a solid plate (i.e., openings 26 in spider plate 9) to collectively constitute a “central aperture.” See Ex. 1002 ¶ 58; see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (noting that the “[l]ack of factual support” for an expert opinion “may render the testimony of little probative value”). As we find that Petitioner has not demonstrated that every element of independent claim 1 is disclosed in Nostrand, we need not address Petitioner’s arguments relating to claim 4. Based on the foregoing, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that Nostrand anticipates claims 1–5 of the ’037 patent.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“art could rearrange the orientation of Nostrand’s primary filter element into a 4-3-4 or 2-1-2 array, Pet. 58; Ex. 1002 ¶ 136, Petitioner supports this argument by citation to MPEP 2144.04 and, in particular, MPEP 2144.04 § VI, entitled “Reversal, Duplication, or Rearrangement of Parts.” In this section of the MPEP, however, it is noted: The mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness. The prior art must provide a motivation or reason for the worker in the art, without the benefit of appellant’s specification, to make the necessary changes in the reference device. MPEP 2144.04 § VI (citing Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (BPAI 1984)); see also Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008) (noting that “some kind of motivation must be shown” to explain why a person of ordinary skill in the art would have modified a prior art reference to achieve the patented method). Here, Petitioner provides no reasoned explanation as to why one of skill in the art would modify the array of Nostrand to a 4-3-4 or 2-1-2 configuration. See Ex. 1002 ¶ 136 (Mr. Haynam testifying that other configuration are available, but not explaining why these configurations would be chosen in place of the configuration depicted in Nostrand).” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,673,037 - Innovative Environmental Technologies, Inc. v. Peroxychem LLCRehearing deniedPTAB · Jul 25, 2016 · IPR2016-00198 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place on claims 1, 2, 4, 5, 10, 11, and 13 based on Chowdhury anticipation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision to Institute. Notably, we did not agree with Patent Owner’s argument that Petitioner failed to show anticipation by Chowdhury; instead, we found that, given the information before us and the standards for institution of inter partes review, “Petitioner has demonstrated that Chowdhury is reasonably likely to anticipate the challenged claims.” Dec. 15. Patent Owner’s attempt to read into our Decision to Institute its own conclusion on express anticipation is unwarranted. In rendering a Decision to Institute, the Board need not address every possible issue and take a position on every potential theory of unpatentability; rather, we determine whether the record, at the time, establishes a reasonable likelihood of success. The standard for institution of an inter partes review requires nothing more. In reaching our determination in the Decision to Institute, we acknowledged Patent Owner’s arguments regarding both express anticipation and inherent anticipation and found that the anticipation ground based on Chowdhury, as presented in the Petition, met the standard required for institution of an inter partes review. Dec. 13– 15. We did not overlook these arguments, and Patent Owner has not shown that the Board misapprehended or overlooked any matter in instituting trial in this proceeding.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Patent Owner did not propose an express construction of the phrase “composition comprising a water soluble persulfate compound and zero valent iron” in its Preliminary Response. See Dec. 6. In our Decision to Institute, we determined that this phrase required no express construction. Id. Although Patent Owner avers that there is no material dispute regarding claim construction, it urges in its Request for Rehearing a construction that Patent Owner has not previously raised. Req. 4–5. A Request for Rehearing is not an opportunity to present a new argument about claim construction, notwithstanding its framing as a matter that is not in dispute.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Decision to Institute. Notably, we did not agree with Patent Owner’s argument that Petitioner failed to show anticipation by Chowdhury; instead, we found that, given the information before us and the standards for institution of inter partes review, “Petitioner has demonstrated that Chowdhury is reasonably likely to anticipate the challenged claims.” Dec. 15. Patent Owner’s attempt to read into our Decision to Institute its own conclusion on express anticipation is unwarranted. In rendering a Decision to Institute, the Board need not address every possible issue and take a position on every potential theory of unpatentability; rather, we determine whether the record, at the time, establishes a reasonable likelihood of success. The standard for institution of an inter partes review requires nothing more. In reaching our determination in the Decision to Institute, we acknowledged Patent Owner’s arguments regarding both express anticipation and inherent anticipation and found that the anticipation ground based on Chowdhury, as presented in the Petition, met the standard required for institution of an inter partes review. Dec. 13– 15. We did not overlook these arguments, and Patent Owner has not shown that the Board misapprehended or overlooked any matter in instituting trial in this proceeding.” slip op. at 4
Claim construction§ 102 anticipationPatents in suitUS 7,785,038 - Amerigen Pharmaceuticals Limited v. Janssen Oncology, Inc.Rehearing deniedPTAB · Jul 21, 2016 · IPR2016-00286 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left institution in place for claims 1–20 on two obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing must identify specifically all matters the party believes the Board 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). The Board applies an abuse of discretion standard in reviewing institution decisions. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusNot reached
“The issue of secondary considerations is highly fact-specific. At this stage of the proceeding, the record regarding such secondary considerations is incomplete. Based on the record before us, we determine that Patent Owner’s evidence of secondary considerations is insufficient to preclude trial. Such evidence of secondary considerations should be more fully evaluated in the context of a trial when the ultimate determination of obviousness is made.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,822,438
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.