• Taiwan Semiconductor Manufacturing Company Limited / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1All claims unpatentable
  PTAB · Dec 20, 2017 · IPR2016-01264 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–3, 5–7, and 9 are unpatentable as obvious over Zhang and Ding, and over Zhang, Ding, and Sun.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Claims 1 and 5 recite “therein,” not “throughout.” The term “therein” means “in there” (i.e., in the first film). That readily apparent meaning unmistakably was conveyed by the Institution Decision. See Inst. Dec. 5–7 (rejecting Patent Owner’s attempt to read “therein” as “throughout.”). As further conveyed by our Institution Decision, Patent Owner’s attempt to incorporate “a mixture” into the limitation is another, unsupported, mechanism that would require nitrogen throughout. See id.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “not adopted. First, Patent Owner proposes to substitute “non-crystalline” for “amorphous.” Id. at 16 (citing Ex. 2003; Ex. 2008). Although both the intrinsic and extrinsic evidence are probative that “amorphous” and “crystalline” are antonyms, the ’324 patent uses the term “amorphous” dozens of times and not once uses the term “non-crystalline.” Further, the meaning of the term “amorphous” is readily apparent in light of the specification; there is no need for extrinsic evidence. See Phillips, 415 F.3d at 1317 (Extrinsic evidence “is less significant than the intrinsic record in determining the legally operative meaning of claim language.”) (internal quotation marks omitted). This is especially so here because the asserted prior art provides an in haec verba disclosure of the “amorphous” aspect of this limitation. See Ex. 1005, 3:39–41 (Ding teaching that the tantalum nitride (TaNx) layer is “amorphous”). In fact, Patent Owner’s proposed construction would not clarify what “amorphous” means; rather, it appears to be a vehicle by which Patent Owner would add a negative limitation prohibiting any portion of the second film being crystalline. See PO Resp. 16 (“As the specification and claims of the patent clearly distinguish between crystalline and amorphous materials and their different characteristics in a barrier film, a second film consisting essentially of amorphous metal nitride requires amorphous metal nitride throughout, and not merely a portion or portions of the film.”). Such a negative limitation is not part of the claim. Second, Patent Owner proposes to substitute “compound containing nitrogen” for “nitride.” Id. (citing Ex. 2004; Ex. 2009; Ex. 2011 ¶¶71–74). Although Patent Owner persuades us that a nitride is a compound containing nitrogen, there is no need to explicitly construe the limitation. The plain and ordinary meaning of “nitride” in light of the specification is readily apparent, and there can be no reasonable dispute in this inter partes review as to whether the “nitride” aspect of this limitation is taught by the asserted prior art. See, e.g., Ex. 1005, 6:64 (disclosing a “TaNx/Ta barrier layer structure”), 3:27 (designating “TaNx” as meaning “tantalum nitride”). Further, if we were to substitute the words “compound containing nitrogen” for “nitride,” we would introduce yet another transitional phrase— “containing”—into the claim. Doing so would obfuscate what the prior transitional phrase (i.e., “composed of,” which, at Patent Owner’s urging, we have construed to mean “consisting essentially of”) modifies.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the art. Petitioner argues that a person of ordinary skill in the art would have had “an equivalent of a Master of Science degree from an accredited institution in electrical engineering, materials science, or physics, or the equivalent, a working knowledge of semiconductor processing technologies for integrated circuits, and at least two years of experience in semiconductor processing analysis, design, and development.” Pet. 11 (citing Ex. 1003 ¶64). Patent Owner argues that such an individual would have had “at least a Bachelor’s degree in Electrical, Materials, Mechanical, or Chemical Engineering, or a related degree, and at least two years of experience working in semiconductor processing and fabrication, semiconductor equipment manufacturing, or semiconductor materials.” PO Resp. 18–19 (citing Ex. 2011 ¶24). Neither party explains in detail why its proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we adopt Petitioner’s definition. 2. Disclosure of Zhang Zhang discloses a semiconductor device that includes a two-layered” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “To meet the limitations specifying that the first film is crystalline and the second film is amorphous, Petitioner cites Ding’s explicit teaching of a two-layered barrier film with a bottom layer being amorphous tantalum nitride and a top layer being crystalline tantalum. See, e.g., Pet. 24–25 (citing Ex. 1005, 3:39–41, 8:1–4). Petitioner argues that a combination of teachings from Zhang and Ding renders the claims obvious. See, e.g., Pet. 24–26, 30–34. In particular, Petitioner argues, with supporting testimony from Dr. Banerjee, that it would have been obvious to a person of ordinary skill in the art “to use crystalline and amorphous top and bottom films for the films 32 and 22 in Zhang’s barrier structure, in view of Ding, to achieve” certain advantages noted in the prior art. Id. at 25–26 (citing Ex. 1003 ¶¶92–96). For example, Petitioner notes that Ding “discloses the desirability of using an amorphous TaNx layer as the bottom layer, so the TaNx is ‘sufficiently amorphous to prevent the diffusion of copper into underlying silicon or silicon oxide surfaces.’” Id. at 24 (quoting Ex. 1005, 3:39–41 (Petitioner’s emphasis)). Similarly, Petitioner notes that Ding “also discloses the desirability of using a crystalline metal film ‘having a tantalum <002> crystalline orientation’ as a top film in the two-layer diffusion barrier because the crystalline orientation ‘enables easy wetting of the tantalum surface by the copper and 13 Petitioner’s claim 5 arguments largely—and, in all relevant aspects, exclusively—rely on its claim 1 arguments. See Pet. 44–46. Hereafter, we cite to only its claim 1 arguments. depositing of a copper layer having a high <111> crystal orientation.’” Id. at 25 (quoting Ex. 1005, 8:1–4). Petitioner further argues that such a combination of teachings would have been obvious because it would have achieved these predictable results (i.e., an amorphous layer to prevent copper diffusion and a crystalline layer to promote copper adhesion) through known techniques. Id. at 32–34. Specifically, Petitioner notes that Zhang and Ding teach similar sputter-deposition processes for forming the top and bottom films. Id. at 32–33 (citing Ex. 1004, 3:21–50; Ex. 1005, 6:63–7:29; Ex. 1003 ¶98); see also PO Resp. 46 (Patent Owner acknowledging that “Zhang and Ding disclose similar sputtering processes.”).” slip op. at 23

  Patent outcomesUS 6,538,324 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,538,324
• Taiwan Semiconductor Manufacturing Company Limited / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1All claims unpatentable
  PTAB · Dec 20, 2017 · IPR2016-01249 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–3, 5–7, and 9 and proposed claims 11–12 are unpatentable as obvious over Ding and Zhang; proposed claim 13 is patentable and allowed by amendment.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “essentially of” for “being composed of.” PO Resp. 11 (citing AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001)). In AFG, the Court noted that, “[i]n 1942, the Court of Customs and Patent Appeals [had] stated that ‘“composed of” should be regarded as synonymous with “consisting of.”’” AFG, 239 F.3d at 1245 (quoting In re Bertsch, 132 F.2d 1014, 1019 (CCPA 1942)). However, as further explained in AFG, the Court of Customs and Patent Appeals had “qualified this statement . . . by remarking that ‘the words “composed of” may under certain circumstances be given, in patent law, a broader meaning than “consisting of.”’” Id. (quoting In re Bertsch, 132 F.2d at 1020). The Court in AFG ultimately construed “composed of” to mean “consisting essentially of.” Id. (“[W]e do agree based on the specification and other evidence before us that the term ‘composed of’ in this case is not completely closed. Rather, we think that ‘composed of’ in this case should be interpreted in the same manner as ‘consisting essentially of.’”). Thus, “composed of” means either “consisting of” or “consisting essentially of.” Id. The term “consisting of” prohibits any 4 <111> and <002> are indices that pertain to an orientation or direction of crystals. Ex. 1003 ¶51. unspecified components. Id. (citing PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998)). The term “consisting essentially of” prohibits only unspecified components that materially affect the basic and novel characteristic(s) of a claimed invention. Id. (citing Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1574 (Fed. Cir. 1984)). By arguing that “being composed of” means “consisting essentially of” as opposed to “consisting of,” Patent Owner argues for broader claim scope. For purposes of this Decision, we construe “being composed of” to mean “consisting essentially of,” as Patent Owner argues.5 In conclusion, we construe “first film being composed of crystalline metal containing nitrogen therein,” as recited in independent claims 1 and 5, to mean “first film consisting essentially of crystalline metal containing nitrogen therein.”6” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of Ordinary Skill in the Art The parties propose similar definitions of the level of ordinary skill in the art. Petitioner argues that a person of ordinary skill in the art would have had “an equivalent of a Master of Science degree from an accredited institution in electrical engineering, materials science, or physics, or the equivalent, a working knowledge of semiconductor processing technologies for integrated circuits, and at least two years of experience in semiconductor processing analysis, design, and development.” Pet. 10–11 (citing Ex. 1003 ¶64). Patent Owner argues that such an individual would have had “at least a Bachelor’s degree in Electrical, Materials, Mechanical, or Chemical Engineering, or a related degree, and at least two years of experience working in semiconductor processing and fabrication, semiconductor equipment manufacturing, or semiconductor materials.” PO Resp. 18 (citing Ex. 2011 ¶24). Neither party explains in detail why its proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we adopt Petitioner’s definition.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable

    “As to Petitioner’s predictable-results assertion, Petitioner persuasively argues that a person of ordinary skill in the art would have added nitrogen to the crystalline tantalum layer of Ding for three independent reasons. First, Petitioner argues that the presence of nitrogen in Ding’s crystalline tantalum layer would make it more easily removable by chemical mechanical polishing (“CMP”), which removal by polishing both Zhang and Ding teach to do. Pet. 24–26 (citing Ex. 1003 ¶¶140, 142, 143; Ex. 1004, 1:30–34, 4:34–37; Ex. 1005, 7:56–65; Ex. 1019, 12–13; Ex. 1021, 354–63). Second, Petitioner argues that the presence of nitrogen in Ding’s crystalline tantalum layer would inhibit, to some additional extent, copper diffusion. Id. at 26–29 (citing Ex. 1003 ¶¶144–146; Ex. 1023, 8). Third, Petitioner argues that adding a small amount of nitrogen to Ding’s crystalline tantalum layer would reduce its resistivity, which was known to help reduce a device’s power consumption and RC delays. Id. at 29–30 (citing Ex. 1003 ¶147; Ex. 1015, 81 (Table 1)). Patent Owner counters that none of these purportedly predictable results are realistic. PO Resp. 46–52. With respect to the first reason offered by Petitioner (to make the first film more susceptible to CMP), Patent Owner argues that: (A) adding only “[a] small amount of nitrogen” to Ding’s crystalline tantalum layer would not change its CMP characteristics; and (B) “[a]dding significant amounts of nitrogen” would result in Ding’s previously crystalline layer becoming amorphous. Id. at 48. Patent Owner does not disclose what it considers “small” and “significant” amounts of nitrogen. Id. As a result, we cannot apply Patent Owner’s argument (even if it were persuasive) to the facts before us. Also, Patent Owner’s argument is based exclusively on declaration testimony that does not cite to any underlying evidence, let alone documentary evidence. See id. at 47–49 (citing Ex. 2011 ¶¶190–98). In contrast, Petitioner’s argument is supported by declaration testimony, which, in turn, is based on underlying evidence, including documentary evidence. See Pet. 24–26 (citing Ex. 1003 ¶¶140, 142, 143; Ex. 1004, 1:30–34, 4:34– 37; Ex. 1005, 7:56–65; Ex. 1019, 12–13; Ex. 1021, 354–63); see also Ex. 1003 ¶139. With respect to the second reason offered by Petitioner (to inhibit, to some additional extent, copper diffusion), Patent Owner argues that, in Petitioner’s asserted combination, “there would be no nitrogen to provide any copper diffusion benefit.” PO Resp. 49. Patent Owner’s argument is premised on Zhang teaching exclusively an upper surface of pure tantalum. Id. But, Zhang explicitly teaches that the upper surface may have a nitrogen content of, for example, 1%, 2%, 3%, or 4%. See Ex. 1004, 3:59–62 (“At the upper surface, the atomic percent tantalum may be at least 95% and the atomic percent nitrogen may be less than 5% if copper adhesion is particularly problematic.”). With respect to the third reason offered by Petitioner (to reduce resistivity), Patent Owner argues that adding nitrogen would actually increase resistivity. As pointed out by Petitioner, however, Patent Owner’s declarant, Harlan R. Harris, Ph.D., conceded that adding nitrogen does lower resistivity. Reply 17–18 (quoting Ex. 1036, 125:3–20). Dr. Harris testified as follows: Q. When the nitrogen flow ratio is zero in the ’324 patent, and the power is kept constant, wouldn’t that result in a film that could be pure tantalum? A. All three of those data points are at the exact same position on the graph. The N2 concentration, which is the numerator of the ratio, is set at zero. And in this particular position, the nitrogen concentration would be assumed to be zero in the film. Q. So is it within the scope of what’s taught in the ’324 patent to have a film that would have no nitrogen at all? A. It’s also apparent to anyone who is examining this of skill in the art that you can decrease from that number, which is favorable in terms of the value of resistivity by adding flow rate in the data points for all of the positions greater than zero. So you decrease resistivity by the addition of any amount of nitrogen, therefore, a person skilled in the art would not be motivated to not have nitrogen, based on this data. Q. You’re referring to the decrease in resistivity as nitrogen is added? A. Yes. Q. Which is desirable? A. You want the resistivity to go down. Ex. 1036, 124:15–125:20. We are satisfied by each of Petitioner’s proffered reasons for why a person of ordinary skill in the art would have added nitrogen to Ding’s crystalline tantalum layer, as taught by Zhang. Petitioner has shown, by a preponderance of the evidence, that claims 1 and 5 would have been obvious over Ding and Zhang.” slip op. at 24

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “obvious over Ding in view of Zhang. Patent Owner’s proposed claims 11 and 12 are unpatentable because they introduce limitations—nitrogen throughout the first film (claim 11) and nitrogen at the upper surface of the first film (claim 12)—that are met by the very references asserted in the ground of unpatentability involved in this inter partes review. Patent Owner’s Motion to substitute claims 11 and 12 is premised, incorrectly, on Zhang requiring pure tantalum (and, thus, no nitrogen) at the upper surface of its tantalum-rich tantalum nitride film. In fact, Zhang does not require any portion of the tantalum-rich tantalum nitride film to be pure tantalum. Ex. 1004, 3:53–54 (“The tantalum-rich tantalum nitride film has a range of approximately 0-30 atomic percent nitrogen.”). And, Zhang explicitly teaches that the upper surface may include nitrogen. Id. at 3:57– 62 (“A lower atomic percent nitrogen at the upper surface typically gives better adhesion to copper films. At the upper surface, the atomic percent tantalum may be at least 95% and the atomic percent nitrogen may be less than 5% if copper adhesion is particularly problematic.”); Ex. 1036, 40:1–6, 42:2–9, 42:15–21, 54:14–20 (Dr. Harris acknowledging that the upper surface of the film would contain some nitrogen). Accordingly, a preponderance of the evidence establishes that Patent Owner’s proposed claims 11 and 12 are not patentable over the art of record in this inter partes review. Put another way, and as Petitioner argues, claims 11 and 12 (like challenged claim 5) are unpatentable as they claim subject matter that would have been obvious over Ding in view of Zhang. See 35 U.S.C. § 103(a); Amend Opp. 6–7 (“The instituted obviousness ground[] based on Zhang and Ding already include[s] the newly-added limitations Patent Owner seeks to add in its Substitute Claims 11–13. Thus, the Substitute Claims 11–13 remain unpatentable over each of the instituted grounds.”).14 Patent Owner’s Motion to Amend is denied with respect to claims 11 and 12.” slip op. at 33

  Patent outcomesUS 6,538,324 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 6,538,324
• CSL Behring GmbH / CSL Behring LLC v. Shire Viropharma Inc.Institution denied
  PTAB · Dec 7, 2017 · IPR2017-01512 · APJ Lora M Green · IPR · Institution

  Institution was denied for claims 1-18: Schranz was not shown to be prior art, and the Jiang ground was denied under §325(d) because the same art and arguments were previously presented.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “may request to cancel . . . claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Before considering the ground before us based on Schranz, we must address whether Petitioner has provided a sufficient threshold showing that Schranz constitutes prior art under 35 U.S.C. § 102—a legal question based on underlying factual determinations. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “As was the case in Dep’t of Justice, the use of a joint declaration “invites innumerable practical difficulties in cross-examining the witnesses, in assessing the reliability of the statements made, and in evaluating the weight to be accorded to the opinions expressed.” Dep’t of Justice 10. For example, Dr. Machnig and Mr. Waldhauser declare in “our recollection.” Ex. 1013-A ¶ 4. It is unclear how two different declarants can have the same “recollection.” In addition, the declarants state that “[h]andouts of the poster . . . [were] picked up by us.” Id. ¶ 5. It is unclear from the Joint Declaration, however, if both declarants were together when the hand-out was picked-up, or if each declarant picked up the handout at separate times. We, therefore, afford the Joint Declaration of Dr. Machnig and Mr. Waldhauser little weight. See Dep’t of Justice 11. As it is the primary evidence on which Petitioner relies to demonstrate that Schranz is prior art, we determine that Petitioner has not made a threshold showing that Schranz is prior art to the ’111 patent. As Petitioner has not sufficiently demonstrated that Schranz is prior art to the ’111 patent, we determine that the Petition does not demonstrate a reasonable likelihood that challenged claims 1‒18 are rendered obvious by the combination of Schranz (as evidenced by Cinryze Label and Bock), Gatlin, Pharming, and Levi.” slip op. at 9

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “In the instant proceeding, we agree with Patent Owner that Petitioner is essentially making the same arguments as to obviousness over Jiang that the Examiner already considered. The prosecution history demonstrates that the Examiner considered many of the same issues with respect to the Schranz Declaration as Petitioner is arguing here. Although the Examiner noted in allowing the claims that Applicant Shire had established the secondary consideration of long-felt need and failure of others, the Examiner also stated that the art did not suggest the claimed dosage. We determine, therefore, that the Examiner did address the Schranz Declaration, and the Examiner’s concerns are similar to those raised by Petitioner in the instant proceeding. That is, as the Examiner stated: The Examiner has considered the arguments found in Dr. Schranz’s declaration concerning difficulty in higher concentration formulation. However, Dr. Schranz’s declaration provides little more than an assertion that it is difficult to reach such a concentration formulation, as opposed to actual evidence establishing that this (1) was a recognized problem in the art and (2) was generally not achievable via other means. Ex. 1001-B, 3041. Thus, the Examiner did acknowledge the lack of supporting evidence in the Schranz Declaration demonstrating that it was difficult to reach the claimed concentration.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “As was the case in Dep’t of Justice, the use of a joint declaration “invites innumerable practical difficulties in cross-examining the witnesses, in assessing the reliability of the statements made, and in evaluating the weight to be accorded to the opinions expressed.” Dep’t of Justice 10. For example, Dr. Machnig and Mr. Waldhauser declare in “our recollection.” Ex. 1013-A ¶ 4. It is unclear how two different declarants can have the same “recollection.” In addition, the declarants state that “[h]andouts of the poster . . . [were] picked up by us.” Id. ¶ 5. It is unclear from the Joint Declaration, however, if both declarants were together when the hand-out was picked-up, or if each declarant picked up the handout at separate times. We, therefore, afford the Joint Declaration of Dr. Machnig and Mr. Waldhauser little weight. See Dep’t of Justice 11. As it is the primary evidence on which Petitioner relies to demonstrate that Schranz is prior art, we determine that Petitioner has not made a threshold showing that Schranz is prior art to the ’111 patent. As Petitioner has not sufficiently demonstrated that Schranz is prior art to the ’111 patent, we determine that the Petition does not demonstrate a reasonable likelihood that challenged claims 1‒18 are rendered obvious by the combination of Schranz (as evidenced by Cinryze Label and Bock), Gatlin, Pharming, and Levi.” slip op. at 9

  § 102 anticipationDiscretionary denial
  Patents in suitUS 9,616,111
• Mastercard International Incorporated v. William GreciaRehearing denied
  PTAB · Dec 4, 2017 · IPR2017-00788 · APJ Jameson Lee · IPR · Rehearing

  The Board denied Mastercard’s rehearing request, leaving in place the denial of institution on claims 1–26 because the Petition did not adequately explain how the prior art met the electronic identification reference limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). For reasons discussed below, we decline to modify the Decision to institute trial on any claim. Thus, Petitioner’s Request is denied.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “The Board concluded that the Petitioner’s evidence showed steps 1–5 and subpart (a) of step 6. (Decision pp. 32– 33). However, the Board determined that Petition did not show that the prior art taught subpart (b) of step 6, specifically “branding metadata of the encrypted digital media by writing . . . (b) the electronic identification reference into the metadata.”” slip op. at 3

  • BurdenDecided for patent owner

    “Petitioner in the Petition regarding subpart (b) of step 6 of independent claims 1 and 15, including the state of the art at the time of the claimed invention. Rather, as we indicated in the Decision, Petitioner has not adequately explained why that which Petitioner regards as the electronic identification reference written into the metadata, as recited in subpart (b) of step 6, is or comes from the login information supplied by the user, i.e., the user’s email address, that the iTunes® system had requested and received according to the prior steps of claims 1 and 15. Dec. 32–33. That is what claims 1 and 15 require, and sufficient explanation is lacking in the Petition.” slip op. at 3

  None
  Patents in suitUS 8,402,555
• Telebrands Corp. v. Tinnus Enterprises, LLCInstitution denied
  PTAB · Nov 30, 2017 · PGR2017-00024 · APJ Frances L Ippolito · PGR · Institution

  The Board denied institution on all challenged claims, finding the § 103 and written-description challenges previously considered under § 325(d), and the remaining written-description and indefiniteness challenges insufficient.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “We agree with Patent Owner that we should exercise our discretion in denying institution of review based on Petitioner’s § 103 challenges because the same art and arguments were considered by the Examiner during the original prosecution. There is no dispute that Saggio and Lee were expressly considered by the Examiner and discussed in the Examiner’s Reasons for Allowance in the May 24, 2016 Notice for Allowance. See Ex. 1008, 86–88. In the Notice of Allowance, the Examiner considered expressly the teachings of Saggio and Lee, and explained in detail that neither one of these disclosed the claimed “elastic fastener.” Id. Moreover, the Examiner expressly also considered Donaldson and found that it was “cumulative with Lee [ ] in that both references disclose that moving mechanical components must be used to detach the balloons.” Id. at 17.” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Based on our review of the record, including the claim language and the Specification of the ’779 patent, we agree with Patent Owner’s position. Here, the restriction of the claimed elastic ring is limited such that the balloon, if filled with a sufficient amount of water, is detachable by (1) gravity or (2) by gravity combined with a manually applied acceleration of the tube. Further, we agree with Patent Owner’s explanation that a person of ordinary skill in the art would know when the amount of water has reached a “sufficient amount,” because the elastic rings would allow detachment by gravity or by gravity and manually applied acceleration of the tube. See Prelim. Resp. 42. Indeed, the claim language itself provides the conditions” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the effective filing date of the ’779 patent (“POSA”) was a person having general knowledge about, and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in a technical science or engineering. Pet. 19 (citing Ex. 1020 ¶¶ 10–14). For purposes of this Decision, we agree with Petitioner and determine that a POSA would have been a person having a general knowledge about, 2 Claims 38, 46, 54, and 60 issued as claims 4, 7, 10, and 13. and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in mechanical engineering, or the equivalent. This level of skill is consistent with the types of problems and solutions described in the ’779 patent and cited prior art.” slip op. at 14

  • Expert testimonyOther

    “Petitioner argues that the present record is different than the one before the Examiner. Pet. 80. In particular, Petitioner asserts that the testimony of Dr. Kamrin was not before the Examiner. Id. Petitioner contends that “one of the issues in this petition is inherency of the prior art references, which benefits from the consideration of expert testimony.” Id. at 81. Nonetheless, having reviewed the record, we disagree with Petitioner’s position. The technology here does not appear to be particularly complex, and the Examiner’s explanation shows that he expressly considered the issues of inherency, and offered detailed findings why the functional limitations related to the elastic fastener were not necessarily present in the art at issue. See Ex. 1008, 87–88. Although not referred to expressly in the Examiner’s explanation, the Information Disclosure Sheet considered by the Examiner includes the Petitions in PGR2016-00030 and PGR2016-00031, which contain similar explanations of inherency to those at issue in this case. See PGR2016-00031, Paper 2, 43–45 (Petition discussing inherency issue with respect to Lee). Although the Examiner’s explanation does not refer to those papers expressly, the fact that those papers were listed on an IDS is, nevertheless, circumstantial evidence that Petitioner’s inherency arguments were considered when the Examiner provided his explanation concerning inherency. See Ex. 1008, 87 (“Because it is not true that all elastic bands have the same elastic force as an inherent property, it cannot be presumed that all elastic bands would function the same way.”). Moreover, as Patent Owner notes, Dr. Kamrin fails to even address Donaldson’s use of a mechanical means, i.e., a spring, to release the balloon. Prelim. Resp. 32. Thus, we are not persuaded that Dr. Kamrin’s testimony meaningfully distinguishes the record that is before us from the record that was before the Examiner.” slip op. at 12

  § 112 disclosureDiscretionary denial
  Patents in suitUS 9,533,779
• Adidas AG v. Nike, Inc.No claims unpatentable
  PTAB · Oct 19, 2017 · IPR2016-00922 · APJ James B Arpin · IPR · Final written decision

  Petitioner failed to prove claims 1–9, 11–19, and 21 unpatentable as obvious over Reed and Nishida because it did not adequately explain why a skilled artisan would combine their teachings.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “appropriate factors identified by our reviewing court and utilized by other panels to assess the level of ordinary skill in the art. Id. at 17–18. We agree with Petitioner that it is not necessary to consider every factor or to weigh the factors equally in order to assess the level of ordinary skill in the art. Reply 2 (quoting In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). Here, we may rely on Petitioner’s declarant’s testimony (Ex. 1003 ¶ 34) and the teachings of the prior art to evaluate Petitioner’s assessment of the level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In particular, Reed and Nishida identify the types of problems encountered in the art prior art solutions to these problems, and the sophistication of the technology. E.g., Ex. 1006, 1:13–55; Ex. 1009, 1:10– 36; see, e.g., Ex. 1007, 1:8–32, 2:12–64; Ex. 1008, 1:11–54; Ex. 1010, 145– 160; see also Ex. 1010, Preface (“The aim of this book is to combine in a single volume the fundamental principles of weft and warp knitting in such a manner that its contents are useful to readers in education, industry or commerce. It thus [fulfills] the long felt need for a comprehensive up-to-date textbook explaining this important sector of textile technology.”).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “unitary construction” means “a textile element having a unitary construction and having a first area and a second area.” Pet. 6. As Petitioner notes, this is the construction that this panel gave to the same term appearing in the substitute claims of the ’011 patent. adidas AG v. Nike, Inc., Case IPR2013- 00067, slip op. at 16–17 (PTAB Apr. 28, 2014) (Paper 60). We further note that the ’749 patent’s Specification provides that “[a]s defined for purposes of the present invention, unitary construction is intended to express a configuration wherein portions of a textile element are not joined together by seams or other connections, as depicted with textile element 40 in FIG. 8.” Ex. 1001, 6:42–46 (emphasis added); see IPR2013-00067, Ex. 1002, 6:41–46 (identical disclosure). The ’011 patent and the ’749 patent share the same Specification (apart from their claims), neither party contested our construction of this term in the appeal of our decision in the inter partes review of the claims of the ’011 patent, and Patent Owner does not contest Petitioner’s proposed construction of this term in this proceeding. Therefore, in view of the express definition of the phrase “unitary construction” in the Specification of the ’749 patent, we adopt Petitioner’s proposed construction as the broadest reasonable interpretation for this term. See Tr. 20:5–13, 37:11–17.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “2. “wide-tube circular knitting machine” (Claims 9 and 19) We determine that the broadest reasonable interpretation of the term “wide-tube circular knitting machine” is “a circular knitting machine forming body garment sized, tubular textile structures, including those having a diameter that ranges from 10 inches to 20 inches.” See Inst. Dec. 9–11. Neither party contests this construction. See Tr. 20:5–13, 37:11–17.” slip op. at 13

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “8 Patent Owner contends that Reed is not analogous art. PO Resp. 34–36. In particular, Patent Owner contends that Reed is not from the same field of endeavor as the challenged claims and that Reed’s teachings are not reasonably pertinent to the particular problem with which the recited methods are involved. Id. at 34–35. Because Reed is directed to the manufacture of all types of garments, including footwear (Reply 12–13; see Ex. 1006, 1:33–44), and Reed is related directly to preparation of garments layouts from a knitted textile structure (Reply 14–15; see Ex. 1006, 2:29– 35), we are persuaded that Reed is analogous art to the challenged claims.” slip op. at 18

  Patent outcomesUS 8,266,749 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,266,749
• Adidas AG v. Nike, Inc.No claims unpatentable
  PTAB · Oct 19, 2017 · IPR2016-00921 · APJ James B Arpin · IPR · Final written decision

  Petitioner failed to prove claims 1–13 unpatentable as obvious over Reed and Nishida because it did not show a reason to combine their teachings.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Initially, Patent Owner contends that Petitioner has failed to consider appropriate factors identified by our reviewing court and utilized by other panels to assess the level of ordinary skill in the art. Id. at 12–13. We agree with Petitioner that it is not necessary to consider every factor or to weigh the factors equally in order to assess the level of ordinary skill in the art. Reply 2 (quoting In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). Here, we may rely on Petitioner’s declarant’s testimony (Ex. 1003 ¶ 34) and the teachings of the prior art to evaluate Petitioner’s assessment of the level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In particular, Reed and Nishida identify the types of problems encountered in the art prior art solutions to these problems, and the sophistication of the technology. E.g., Ex. 1006, 1:13–55; Ex. 1009, 1:10– 36; see, e.g., Ex. 1007, 1:8–32, 2:12–64; Ex. 1008, 1:11–54; Ex. 1010, 145– 160; see also Ex. 1010, Preface (“The aim of this book is to combine in a single volume the fundamental principles of weft and warp knitting in such a manner that its contents are useful to readers in education, industry or commerce. It thus [fulfills] the long felt need for a comprehensive up-to-date textbook explaining this important sector of textile technology.”). Patent Owner contends that the level of ordinary skill in the art is “low” (PO Resp. 13), but it is not clear whether Patent Owner further contends that Petitioner’s assessment is deficient because Petitioner fails to argue that a person possessing such a “low” level of ordinary skill in the art also would have “experience using knitting technologies to create knitted footwear uppers” (id. at 13–14) or whether the inclusion of such skill would raise the “low” level of skill in the art (id. at 14). Alternatively, Patent Owner may merely be contending that Petitioner’s declarant fails to qualify as a person of ordinary skill in the art. Id. at 14 (“If it was too ‘dangerous’ for Mr. Holden with his nearly forty years of experience, a person with just a “few years of experience” would not have had any knitting experience, let alone experience using knitting technologies to create uppers.”); see Tr. 62:17–22. Patent Owner is not required to help us assess the level of ordinary skill in the art and does not do so here. See PO Resp. 18 (“Petitioner may criticize NIKE for not submitting an expert declaration. But it is Petitioner’s burden to prove unpatentability; it is not NIKE’s burden to prove patentability.”). In response to Patent Owner’s contentions, Petitioner argues that the level of ordinary skill in the art is not low and that hands-on knitting experience is not required. Reply 2–3. Petitioner further argues Patent Owner has not required knitting experience in its previous assessment with respect to a related patent of the level of ordinary skill in the art. Id. (citing IPR2013-00067, Ex. 2010 ¶ 52). Based on the record before us and to the extent necessary, we again adopt Petitioner’s assessment of a person of ordinary skill in the relevant art. Inst. Dec. 8 n.3.” slip op. at 10

  • Expert testimonyPetitioner expert creditedMixed

    “document.” Reply 3 (quoting Ex. 2004, 12:7–11); see Ex. 2004, 12:12– 13:16. Declarants often have assistance in authoring their declarations. See Square, Inc. v. Think Computer Corp., Case CBM2014-00159, slip op. at 26–27 (PTAB Nov. 27, 2015) (Paper 47) (“the mechanics of declaration preparation is ‘a waste of time, both for the witness and the Board’”). Mr. Holden was not required to be the sole author of his declaration. Rather, the relevant issue regarding the preparation of Mr. Holden’s declaration is whether Mr. Holden adopted the content of his declaration as his own. Here, he has. See Ex. 1003 ¶¶ 3, 4, 209. As Patent Owner suggests, we weigh Mr. Holden’s declaration testimony in light of his testimony on cross-examination. Although Mr. Holden indicated that he was unable to define or was unfamiliar with certain terms during cross-examination, he did name references, including Spencer (Ex. 1010), that he could and would consult to obtain the answers to specific questions. Tr. 63:20–64:13. Moreover, Patent Owner’s counsel acknowledged that persons of ordinary skill in the art (or declarants) do not have to have all of the knowledge relevant to their testimony in their heads and that they are allowed to consult references, as appropriate. Id. at 63:20– 64:2. Although Patent Owner notes that Mr. Holden apparently was not aware of Spencer until this inter partes review (see Ex. 2004, 77:1–3; Tr. 64:1–6), his learning of and relying on a new reference alone is not sufficient reason to disregard, i.e., give no weight to, Mr. Holden’s testimony. Further, the issue here is not whether Mr. Holden is a person of ordinary skill in the art, but rather whether his testimony is of value to the panel. See Tr. 64:15– 18. Thus, as indicated in the discussion below, we determine the appropriate weight to give to Mr. Holden’s testimony.” slip op. at 31

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “8 Patent Owner contends that Reed is not analogous art. PO Resp. 29–31. In particular, Patent Owner contends that Reed is not from the same field of endeavor as the challenged claims and that Reed’s teachings are not reasonably pertinent to the particular problem with which the recited methods are involved. Id. at 29–30. Because Reed is directed to the manufacture of all types of garments, including footwear (Reply 12–14; see Ex. 1006, 1:33–44), and Reed is related directly to preparation of garments layouts from a knitted textile structure (Reply 14–15; see Ex. 1006, 2:29– 35), we are persuaded that Reed is analogous art to the challenged claims.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “i. Failure of Proof Petitioner bears the burden of proving by a preponderance of the evidence that the challenged claims are unpatentable. This includes demonstrating by a preponderance of the evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Reed and Nishida to achieve the methods recited in the challenged claims. As noted above, Petitioner argues that a person of ordinary skill in the art would have had at least three reasons to combine the teachings of Reed and Nishida to achieve the methods recited in the challenged claims. Pet. 12–14; see Tr. 10:12–11:12. First, Petitioner argues that, because Reed teaches that its methods are applicable to “all types of garments” (Ex. 1006, 5:56–57 (emphasis added); see Ex. 1003 ¶ 131), a person of ordinary skill in the art would have had reason to apply the teachings of Reed to the processes and shoe parts of Nishida. Pet. 13 (citing Ex. 1003 ¶ 133). Second, Petitioner argues that, because both Reed and Nishida teach the advantages of reducing cost through the use of computer-controlled knitting machines, a person of ordinary skill in the art would have had reason to combine their teachings. Pet. 13 (citing Ex. 1003 ¶¶ 134–135). Third, Petitioner argues that a person of ordinary skill in the art would have had reason to apply Reed’s methods for producing textile elements, from which to produce garments, to produce Nishida’s shoe upper patterns. Id. at 13–14; see KSR, 550 U.S. at 417. However, none of these reasons or any other reason identified by Petitioner addresses the differences between Reed and Nishida, specifically pre-seaming.” slip op. at 34

  Patent outcomesUS 7,814,598 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,814,598
• Incyte Corporation v. Concert Pharmaceuticals, Inc.Institution denied
  PTAB · Oct 19, 2017 · IPR2017-01256 · APJ Tina E Hulse · IPR · Institution

  The Board denied institution on claims 1–15 because Petitioner did not show a reasonable likelihood of proving anticipation by Rodgers or obviousness over either asserted combination.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.4(a) (stating Director has delegated institution authority to Board). Upon considering the Petition and Preliminary Response, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–15 of the ’149 patent. Accordingly, we decline to institute an inter partes review of those claims.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “15, 2012, would have had a “master’s degree or a Ph.D. in chemistry, biochemistry, pharmaceutics, pharmaceutical sciences, physical organic chemistry or a related discipline,” or a lesser degree with more experience.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming applicability of broadest reasonable construction standard to inter partes review proceedings). Under that standard, and absent any special definitions, we generally 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). We determine that it is unnecessary to expressly construe any claim terms for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable

    “2. Analysis Anticipation requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Anticipation may arise where a reference describes a “definite and limited class,” and a person of ordinary skill in the art would “at once envisage each member of this limited class.” In re Petering, 301 F.2d 676, 681 (CCPA 1962).” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,249,149
• Mastercard International Incorporated v. William GreciaRehearing denied
  PTAB · Oct 19, 2017 · IPR2017-00793 · APJ Michael W Kim · IPR · Rehearing

  The Board denied rehearing of its decision denying institution on claim 1, finding that the Petition did not clearly map the claimed authorization object to Muller and the Request showed no overlooked error.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “To the extent Petitioner actually regards the entirety of Muller’s “media access response” as the recited “computer readable authorization object,” and believes a limitation with regard to the “computer readable authorization object” is met if at least a part of the identified object satisfies the limitation, that position has not been clearly articulated. Neither Patent Owner nor the Board has been provided with sufficient notice of that position. We decline to make that assumption.” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “To the extent Petitioner actually regards the entirety of Muller’s “media access response” as the recited “computer readable authorization object,” and believes a limitation with regard to the “computer readable authorization object” is met if at least a part of the identified object satisfies the limitation, that position has not been clearly articulated. Neither Patent Owner nor the Board has been provided with sufficient notice of that position. We decline to make that assumption.” slip op. at 3

  None
  Patents in suitUS 8,887,308
• Google Inc. v. Performance Pricing Holdings, LLCAll claims unpatentable
  PTAB · Sep 13, 2017 · CBM2016-00050 · APJ Kevin W Cherry · CBM · Final written decision

  Claims 1–14 are unpatentable under §§ 101 and 112(a) because they claim an abstract advertising-pricing idea implemented with conventional technology and lack written-description support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (quoting Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983)). Considering these factors, we agree with Petitioner that a degree in computer science is not required for a person of ordinary skill in the art. See Reply 4. First, as Patent Owner admitted at the hearing, the named inventor, Mr. Rosenberg, does not have a computer science degree. Tr. 87:8–22. Second, as Patent Owner’s Response makes clear, the problems encountered in the field of the ’059 patent are problems of maintaining advertising customers, when viewer response to an ad can be tracked and there is an almost limitless inventory. PO Resp. 5–7. These are economic and business problems caused by the particular market conditions present in the Internet advertising market—large inventory and a high level of knowledge of behavior in the market. See Ex. 1003 ¶ 36. We are persuaded that a computer science degree would not provide a person with further useful insight into such economic and business problems. See Ex. 1003 ¶¶ 36–40. Indeed, this understanding is confirmed by the ’059 patent, which describes the business problems Internet advertising had on sellers of advertising. See, e.g., Ex. 1002, 1:55–59 (“As systems of accountability are developed and the amount of advertising inventory increases, vendors or publishers in all media will be faced with the problems of attracting advertisers while, at the same time, covering overhead costs.”); 1:60–63 (noting “[o]ne problem associated with current methods of selling Internet advertising is the difficulty of striking a fair and reasonable balance between fixed-fee pricing and performance-based pricing”); 1:63–3:24 (describing characteristics of the Internet advertising market); 3:27–31 (“[T]he present invention include methods and systems for selling advertising, which incorporates a unique pricing model wherein advertising Buyers earn bonus exposure to the advertising message based on the reflected interest by the Viewers in that advertising message.”). Third, the discussion of computer components in the ’059 patent is only at a very high level. See, e.g., id. at 8:33–9:9 (discussing the components of the claimed system as only “computers,” “servers,” “databases,” “network protocol (such as Hypertext Transfer Protocol or HTTP)”). This indicates that the focus is not on the computer technology, but the pricing strategy. Fourth, the prior art solutions discussed in the ’059 patent are all in terms of different pricing models—“fixed fee” or “performance based”—not in terms of technical solutions. See id. at 1:55– 3:24. Finally, Patent Owner submits a job announcement by Petitioner for hiring a “Technical Program Manager, Ads Quality, AdWords,” as evidence of the level of skill of workers in this field. PO Resp. 29 (citing Ex. 2006 (Google Technical Program Manager, Ads Quality, AdWords Job Announcement)). However, no evidence or explanation is provided why this announcement should be given particular weight for defining the educational level of active workers in the field of the ’059 patent, beyond the fact that they both nominally involve Internet advertising. See PO Resp. 29. Moreover, no evidence or explanation is provided why a job announcement from 2016 would relate to the level of skill in the art at the time of the invention, i.e., at the latest, 2001, the effective filing date of the ’059 patent. See id. Thus, we give Ex. 2006 little weight. Accordingly, considering this evidence together, we agree with Petitioner that a “person of ordinary skill in the art would have, through education or practical experience, the equivalent of a bachelor’s degree in business, economics, or a similar discipline and/or two years of experience with media buying or selling, including Internet advertising or e-commerce systems.” Pet. 17. slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “lacks a computer science degree, he is not a person of ordinary skill and we should give his testimony no weight. PO Resp. 29. As set forth above, we are unpersuaded that Patent Owner’s definition of a person of ordinary skill above is correct. Accordingly, this argument is unpersuasive. Dr. Farris is a tenured professor of business and during his career, Dr. Farris has written a number of articles and books on advertising, including Internet advertising. Ex. 1003 ¶¶ 5–19, Appendix B. He has also taught a number of courses in Internet advertising, and has done extensive consulting on Internet advertising. Id. Thus, contrary to Patent Owner’s contentions, we are persuaded that Dr. Farris’s experience is more than sufficient for him to provide competent testimony on the subject matter of the ’059 patent. Accordingly, we decline to give his testimony no weight.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “We construe the challenged claims according to these principles. In our Decision to Institute, we determined that no terms required express construction. In its Patent Owner Response, Patent Owner contends that we should construe the term “impression,” recited in claim 1, as “presentation of an Internet advertising message.” PO Resp. 29–31. In the Reply, Petitioner indicates that it agrees with Patent Owner’s proposed interpretation and points to the testimony of Petitioner’s declarant Dr. Farris and Patent Owner’s declarant Mr. Zatkovich for support. Reply 5–6 (citing Ex. 1003 ¶ 27, Ex. 1017, 44:19–45:19, 142:15–143:12). This is also the construction we adopted in our Decision to Institute in the related proceeding, CBM2016- 00049. See Google Inc. v. Performance Price Holdings, LLC, Case CBM2016-00049, slip op. 5–6 (PTAB Sept. 21, 2016) (Paper 10). Given that this construction is consistent with the specification, we adopt Patent Owner’s construction of “impression” as “presentation of an Internet advertising message.” See Ex. 1002, 2:36–44, 5:12–16.” slip op. at 15

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “We agree with Petitioner that these claims are drawn to an abstract idea. Specifically, we agree with Petitioner that the claims of the challenged patent are directed to decreasing the cost of an advertisement based on the performance of the ad, and that such a concept is an abstract idea. Pet. 19. More succinctly, we are persuaded that the claims are directed to a performance-based pricing model for advertising, and that such a pricing model is an abstract idea. The clear language of the claims and unambiguous disclosure of the specification to the contrary belie Patent Owner’s arguments. For example, beginning with independent claims 1 and 6, the only equipment that those claims identify are a “processor” and “at least one storage device in communication with the at least one processor.” Ex. 1002, 12:24–25, 12:56–57. The remainder of the claim is simply a method embodied in instructions stored on the storage device. As discussed above, these claimed method steps include having the processor (i) “ascertain[ ] . . . a predetermined cost to an entity per impression of an advertising message,” (ii) “present[ ] . . . the advertising message for display on a website such that the advertising message is viewable via one or more viewer computers,” (iii) “detect[ ] . . . a quantity of actions performed by users of the one or more viewer computers,” and (iv) “decrease[e] the cost per impression of the advertising message to the entity below the predetermined cost” as the “quantity of detected actions increases.” Id. at 12:30–43. Thus, the focus of the claims is on collecting and analyzing data for the pricing method, not the hardware on which it is performed or the software that implicitly causes it to happen. The specification reinforces the abstract nature of the claimed invention. The “Summary of the Invention,” explains that “[e]mbodiments of the present invention include methods and system for selling advertising, which incorporates a unique pricing model wherein advertising Buyers earn bonus exposure to the advertising message based on the reflected interest by the Viewers in that advertising message.” Id. at 3:27–33. Indeed, the specification describes the advantages of the claimed invention include helping sellers secure fixed-fee pricing while offering a performance-based incentive to buyers, and attracting potential buyers, while maintaining customer loyalty, encouraging effective creative advertising design and placement, and assisting sellers in managing unsold inventory. Id. at 3:34– 39. These advantages all concern abstract concepts, and not technology.” slip op. at 19

  Patent outcomesUS 8,799,059 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Electric Power
  Patents in suitUS 8,799,059

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.