- PTAB · Jul 1, 2019 · IPR2018-01743 · APJ Michael W Kim · IPR · Rehearing
The Board denied rehearing of its decision denying institution of inter partes review of claims 1–25, finding Petitioner had not shown an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3); see also Dec. 11 (citing statute). Petitioner also has the burden to “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).” slip op. at 3
- Prior constructionPrior construction not adoptedDecided for patent owner
“Petition for the limitation of “application . . . that include interactive services.” See generally Req. Our own review of the Petition results in the same. See generally Pet. Pages 12–17 of the Petition provide constructions for several terms, including “application,” but not for the entirety of the limitation identified above. Indeed, Petitioner relied on the Board’s previous decisions for both explicit and implicit constructions of other claim limitations. See Pet. 13–15, 86, 93, 96, 104 (citing Ex. 1004, 40–41, 137– 138, 146–147, 151–152, 157–158, 161, 171). Noticeably absent, however, is the same for “application . . . that include interactive services.” We could not have misapprehended or overlooked a claim construction that was not made. Even if we delve somewhat into the cited portion of the Board’s previous decision, however, we remain unpersuaded. Specifically, while Petitioner’s quotation of the Decision is correct, the Decision later states: “We agree that the body of claim 4 does not require applications with interactive services, but ‘interactive services’ must be one kind of application that can be requested.” Ex. 1004, 136. So, while our analysis may have been altered somewhat, we are unpersuaded that Petitioner has met its burden of showing that maintaining the same result, denial of institution on this basis, would have been an abuse of discretion.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and, Orbitz, LLC (“Petitioner”) filed a Petition to institute an inter partes review of claims 1–25 of U.S. Patent 7,072,849 B1 (Ex. 1002, “the ’849 Patent”). Paper 2 (“Pet.”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On March 19, 2019, we issued a Decision Denying Institution of Inter Partes Review. Paper 8 (“Decision”). On May 1, 2019, Petitioner filed a Request for Rehearing. Paper 11 (“Req.”).1” slip op. at 2
Claim constructionPatents in suitUS 7,072,849 - Toyota Motor Corporation v. General Electric CompanyRehearing deniedPTAB · Jun 14, 2019 · IPR2019-00018 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Toyota’s rehearing request, leaving the denial of institution on claims 16–19 in place because the Petition did not explain how the proposed combination supplied the claimed second DC/DC conversion device.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Mitsutani’s inverter also should be included in its proposed combination of Robinson and Mitsutani. Req. Reh’g 4. Petitioner admits that “the Petition did not call it out separately.” Id. However, a request for rehearing is not an opportunity to supplement the Petition, or submit new arguments that were not made in the Petition, after the Decision has noted the deficiencies in the Petitioner’s original analysis. See 37 C.F.R. § 42.71(d).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“proposed prior art combination teaches or suggests “a second DC/DC conversion device coupleable to an internal charging device,” as recited in independent claim 16. Dec. 11−15. In its Petition, Petitioner asserts that Robinson discloses the claimed “second DC/DC conversion device.” Pet. 31−32 (citing Ex. 1006 ¶ 145, Fig. 4). Petitioner modifies Robinson’s Figure 4 to “include an additional 4−34 V scavenger power converter for device port 4.” Id. Petitioner’s modified Figure 4 of Robinson is reproduced below with annotations added by Petitioner (id.).” slip op. at 3
- BurdenDecided for patent owner
“The burden to prove unpatentability is on the petitioner, not on the patent owner or the Board. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015) (noting that the petitioner in an inter partes proceeding has the initial burden of production and the burden” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“internal charging device” to device port 4 (light pink). Pet. 31. Petitioner asserts that “[t]his second 4−34V scavenger power converter is ‘coupleable to an internal charging device,’ as claimed, because the combined Robinson/Mitsutani system teaches a motor generator that is internal to the vehicle and would be connected to Robinson’s device port 4.” Id. at 32 (citing Ex. 1002 ¶ 76) (emphases added). slip op. at 4
§ 103 obviousnessPatents in suitUS 9,821,668 - Toyota Motor Corp. v. GE Hybrid Technologies, LLCRehearing deniedPTAB · May 9, 2019 · IPR2019-00015 · APJ Lynne H Browne · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 1–16 because the petition did not adequately explain why the prior art would be modified to meet the vehicle-control limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. PRINCIPLES OF LAW A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. 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). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“pertaining to a vehicle control unit. Pet. 20, 24; Ex. 1002 ¶ 55. The Petition and the Miller Declaration provide evidence that Sugimoto discloses control device 60, and that one skilled in the art would have considered Sugimoto’s control device 60 to be a vehicle control unit, as required by each of claims 1 and 5. Id. The Petition and the Miller Declaration also provide evidence that Sugimoto’s control device 60 controls a switch. Pet. 17–19; Ex. 1002 ¶ 50. Such evidence alone, however, does not provide sufficient reasoning, with adequate rational underpinnings, for modifying Fassnacht’s process to include a vehicle control unit that is allowed to turn on a first switch when the vehicle is below a first threshold temperature. Rather, as we explained in our Decision, “[t]he allegations in the Petition rely on an assumption that mere inclusion of a vehicle control unit as part of Fassnacht’s method would result in the claimed method.” Dec. 13 (citing Pet. 20, 22–24). Further, even though we did not specifically cite paragraphs 52–53, 61–62, and 103–109 of the Miller Declaration in our Decision, we did not overlook or misapprehend them. These paragraphs provide detailed explanations of how Sugimoto’s control device 60 could have been incorporated in to Fassnacht’s vehicle, but these descriptions also start from the assumption that merely including Sugimoto’s control unit 16 in Fassnacht’s process would have resulted in the claimed method. Neither the Petition nor the Miller Declaration explain why one skilled in the art would modify Fassnacht’s process to include the step of allowing the vehicle control unit to turn on a switch when such a step is unnecessary to Fassnact’s process. In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (“[T]he mere capability of pulling the handles is not the inquiry that the Board should have made; it should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine.”).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“pertaining to a vehicle control unit. Pet. 20, 24; Ex. 1002 ¶ 55. The Petition and the Miller Declaration provide evidence that Sugimoto discloses control device 60, and that one skilled in the art would have considered Sugimoto’s control device 60 to be a vehicle control unit, as required by each of claims 1 and 5. Id. The Petition and the Miller Declaration also provide evidence that Sugimoto’s control device 60 controls a switch. Pet. 17–19; Ex. 1002 ¶ 50. Such evidence alone, however, does not provide sufficient reasoning, with adequate rational underpinnings, for modifying Fassnacht’s process to include a vehicle control unit that is allowed to turn on a first switch when the vehicle is below a first threshold temperature. Rather, as we explained in our Decision, “[t]he allegations in the Petition rely on an assumption that mere inclusion of a vehicle control unit as part of Fassnacht’s method would result in the claimed method.” Dec. 13 (citing Pet. 20, 22–24). Further, even though we did not specifically cite paragraphs 52–53, 61–62, and 103–109 of the Miller Declaration in our Decision, we did not overlook or misapprehend them. These paragraphs provide detailed explanations of how Sugimoto’s control device 60 could have been incorporated in to Fassnacht’s vehicle, but these descriptions also start from the assumption that merely including Sugimoto’s control unit 16 in Fassnacht’s process would have resulted in the claimed method. Neither the Petition nor the Miller Declaration explain why one skilled in the art would modify Fassnacht’s process to include the step of allowing the vehicle control unit to turn on a switch when such a step is unnecessary to Fassnact’s process. In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (“[T]he mere capability of pulling the handles is not the inquiry that the Board should have made; it should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine.”).” slip op. at 3
§ 103 obviousnessPatents in suitUS 8,409,052 - Adobe Systems Incorporated v. William GreciaInstitution deniedPTAB · Jun 21, 2018 · IPR2018-00418 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Petitioner did not show Venkataramu was a publicly accessible printed publication, defeating every obviousness ground for claims 1–26.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“We agree with Patent Owner. To determine a date on which Venkataramu was publicly accessible, we look to evidence of the SJSU library’s cataloging and indexing practices, as well as any search capability of the library’s website. See Blue Calypso, 815 F.3d at 1348; Voter Verified, 698 F.3d at 1380; SRI, 511 F.3d at 1196. Neither Petitioner nor Mr. Butler offers sufficient evidence that Venkataramu was sufficiently indexed or catalogued at SJSU for access. That the Internet Archive captured and archived a copy of Venkataramu does not mean, by itself, that Venkataramu was sufficiently indexed or catalogued at SJSU. Nor does it reveal anything about the search capabilities of the SJSU library website. Mr. Butler does not claim to have personal knowledge of the general library practices of the SJSU library, or the search capabilities of the SJSU library website. For example, he does not testify as to the procedures, if any, the university uses to index or catalog project reports, or the manner, if at all, in which project reports are indexed or cataloged (e.g., by author, title, subject). He also does not testify as to the search capabilities of the SJSU library website. Further, neither Petitioner nor Mr. Butler introduces any evidence that Venkataramu was actually disseminated to any interested skilled artisans prior to the earliest possible effective filing date for the ’555 patent. Additionally, Petitioner has not explained why making a copy of Venkataramu accessible on the Internet Archive constitutes publication of Venkataramu on the Internet Archive as of October 2, 2008. In that regard, we note that Mr. Butler’s Affidavit does not indicate that the archived files are searchable through a subject matter index or catalog.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In view of the foregoing, we determine that Petitioner has not shown sufficiently that Venkataramu was publicly accessible prior to the earliest possible effective filing date for the ’555 patent. Therefore, Petitioner has not shown that Venkataramu qualifies as a printed publication. Because each of Petitioner’s asserted grounds relies on Venkataramu, Petitioner has not demonstrated a reasonable likelihood of showing that any of claims 1–26 would have been obvious over any of the asserted grounds. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim of the ’555 patent. V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 13
§ 102 anticipationPatents in suitUS 8,402,555 - Yahoo! Inc. v. Almondnet, Inc.Rehearing deniedPTAB · Feb 5, 2018 · CBM2017-00047 · APJ Michael W Kim · CBM · Rehearing
The Board denied Yahoo!’s rehearing request, leaving in place the denial of institution on the § 101 challenge to claims 1, 2-4, 11-13, 16-17, and 20-22.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“matter, resolution of this issue in Petitioner’s favor is not dispositive, as Petitioner still failed to account sufficiently for the terms “offsite” and “targeted” (to say nothing of “first Internet site,” “second Internet site,” and directing off-site advertisements to visitors of the second Internet site as a consequence of determining visits to the first Internet site “using the tags and the records,” as also recited in claim 1). See Decision 11–14. Moreover, Petitioner’s assertion is incorrect, as while certainly at times, an omission of “Internet” from an identification of what a claim is directed to is proper, our review of the case law cited by Petitioner does not support a blanket assertion that the term “Internet” should never be considered in this manner, under any circumstances. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256–57 (Fed. Cir. 2014) (under Alice step one, the court held that “[a]lthough the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet”). We are unpersuaded that we could have misapprehended or overlooked that which is incorrect.” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable
“matter, resolution of this issue in Petitioner’s favor is not dispositive, as Petitioner still failed to account sufficiently for the terms “offsite” and “targeted” (to say nothing of “first Internet site,” “second Internet site,” and directing off-site advertisements to visitors of the second Internet site as a consequence of determining visits to the first Internet site “using the tags and the records,” as also recited in claim 1). See Decision 11–14. Moreover, Petitioner’s assertion is incorrect, as while certainly at times, an omission of “Internet” from an identification of what a claim is directed to is proper, our review of the case law cited by Petitioner does not support a blanket assertion that the term “Internet” should never be considered in this manner, under any circumstances. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256–57 (Fed. Cir. 2014) (under Alice step one, the court held that “[a]lthough the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet”). We are unpersuaded that we could have misapprehended or overlooked that which is incorrect.” slip op. at 6
§ 101 eligibilityPatents in suitUS 8,244,586 - Mastercard International Incorporated v. William GreciaRehearing deniedPTAB · 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
NonePatents in suitUS 8,402,555 - Telebrands Corp. v. Tinnus Enterprises, LLCInstitution deniedPTAB · 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 denialPatents in suitUS 9,533,779 - Mastercard International Incorporated v. William GreciaRehearing deniedPTAB · 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
NonePatents in suitUS 8,887,308 - PTAB · Aug 24, 2017 · IPR2017-00936 · APJ Michael W Kim · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 9, 10, and 13–16 were unpatentable over Ginter or Ginter and Stefik.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted unless the information presented in the Petition shows “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). Upon consideration of the Petition, Preliminary Response, and the associated evidence, we determine that Petitioner has failed to demonstrate a reasonable likelihood it would prevail with respect to at least one of the challenged claims. Accordingly, and for the reasons that follow, we deny institution of an inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“claim terms, “processing circuitry” and “microprocessor,” to the same CPU 654 of Ginter. Prelim. Resp. 17–20. We agree. See Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1563 (Fed. Cir. 1991) (two distinct claim elements should each be given full effect). Indeed, to determine otherwise would impermissibly read one of “processing circuitry” and “microprocessor” out of the claim. See Tex. Instruments Inc. v. U. S. Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (explaining claim language cannot be mere surplusage, an express limitation cannot be read out of the claim). Mapping both claim terms to CPU 654 of Ginter is especially problematic for the “microprocessor” limitation, which reads, in context, “a microprocessor having software programming to control the operation of the processing circuitry” (Claim 1 (emphasis added)). In making our determination, we acknowledge that Ginter discloses “one or more conventional general purpose central processing units (‘CPUs’) 654 . . . .” Ex. 1002, 185:21–22 (emphasis added). Accordingly, it is plausible that Petitioner intended for one of CPUs 654 to correspond to the recited “processing circuitry” and another of CPUs 654 to correspond to the recited “microprocessor.” We are unpersuaded, however, that Petitioner has articulated that intention with sufficient particularity in the aforementioned portions of the Petition. See 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if . . . the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim . . . .”).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“claim terms, “processing circuitry” and “microprocessor,” to the same CPU 654 of Ginter. Prelim. Resp. 17–20. We agree. See Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1563 (Fed. Cir. 1991) (two distinct claim elements should each be given full effect). Indeed, to determine otherwise would impermissibly read one of “processing circuitry” and “microprocessor” out of the claim. See Tex. Instruments Inc. v. U. S. Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (explaining claim language cannot be mere surplusage, an express limitation cannot be read out of the claim). Mapping both claim terms to CPU 654 of Ginter is especially problematic for the “microprocessor” limitation, which reads, in context, “a microprocessor having software programming to control the operation of the processing circuitry” (Claim 1 (emphasis added)). In making our determination, we acknowledge that Ginter discloses “one or more conventional general purpose central processing units (‘CPUs’) 654 . . . .” Ex. 1002, 185:21–22 (emphasis added). Accordingly, it is plausible that Petitioner intended for one of CPUs 654 to correspond to the recited “processing circuitry” and another of CPUs 654 to correspond to the recited “microprocessor.” We are unpersuaded, however, that Petitioner has articulated that intention with sufficient particularity in the aforementioned portions of the Petition. See 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if . . . the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim . . . .”).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Patent Owner asserts that Petitioner impermissibly maps two distinct claim terms, “processing circuitry” and “microprocessor,” to the same processing means 1200 of Stefik. Prelim. Resp. 29–31. We agree. See Unique Concepts, 939 F.2d at 1563 (two distinct claim elements should each be given full effect). Indeed, to determine otherwise would impermissibly read one of “processing circuitry” and “microprocessor” out of the claim. See Texas Instr., 988 F.2d at 1171 (explaining that claim language cannot be mere surplusage, an express limitation cannot be read out of the claim). Mapping both claim terms to processing means 1200 of Stefik is especially problematic for the “microprocessor” limitation, which reads, in context, “a microprocessor having software programming to control the operation of the processing circuitry” (Claim 1 (emphasis added)). In making our determination, we acknowledge that it is plausible that Petitioner is mapping “processing circuitry” and “microprocessor” to processing means 1200 and processor element 1201, respectively, where processor element 1201 is a component of processing means 1200. We are unpersuaded, however, that Petitioner has articulated that mapping with sufficient particularity in the aforementioned portions of the Petition. See 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if . . . the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim . . . .”). Moreover, as each of “processing circuitry” and “microprocessor” are recited as performing functions, if anything, it would appear that both “processing circuitry” and “microprocessor” should be mapped to processor element 1201, which would still be deficient for the reasons set forth above concerning processing means 1200. Patent Owner also asserts that Petitioner maps the ASIC chip of processing means 1200, which appears to be the same as processor element 1201, of Stefik to the recited “microprocessor,” but that an ASIC chip cannot correspond properly to a “microprocessor.” Prelim. Resp. 31. We agree. Patent Owner cites to a webpage that defines ASIC as follows: (Application Specific Integrated Circuit) Pronounced “a-sick.” A chip that is custom designed for a specific application rather than a general-purpose chip such as a microprocessor. The use of ASICs improve performance over general-purpose CPUs, because ASICs are “hardwired” to do a specific job and do not incur the overhead of fetching and interpreting stored instructions. Prelim. Resp. 31 (citing Ex. 2002); see also Dictionary.com Unabridged, Random House, Inc. http://www.dictionary.com/browse/microprocessor (accessed: June 12, 2017) (Ex. 3001) (microprocessor is “an integrated computer circuit that performs all the functions of a CPU”). Based on the above, we find that an ASIC is not a microprocessor. Against this objective evidence, Petitioner only states that “[a] person of ordinary skill in the art would know that an ASIC chip is a microprocessor” (Pet. 35), and provides a citation to paragraph 223 of Mr. Wechselberger’s Declaration, the relevant portion of which merely states, similarly, that “[a] person of ordinary skill in the art would appreciate that an ASIC chip functions would include those of a microprocessor,” without further relevant explanation or analysis. For the foregoing reasons, we determine that Petitioner failed to establish a reasonable likelihood it would prevail in showing that at least one of claims 1, 9, 10, and 13–16 is unpatentable as obvious over Ginter and Stefik.” slip op. at 10
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,840,437 - Arctic Cat, Inc. v. Polaris Industries Inc.Institution deniedPTAB · Jul 5, 2017 · IPR2017-00455 · APJ Phillip J Kauffman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on the challenged claims, failing to provide a sufficient rationale for either proposed prior-art combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner, and for that reason, section 325(d) is not relevant to our analysis. Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. We consider Patent Owner’s three underlying contentions under this standard.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“cooling air unobstructed by exterior body panels and would avoid receiving hot air from inside the engine compartment, thereby cooling the CVT more effectively, reducing wear, and improving CVT efficiency. Pet. 19, 22; Ex. 1001 ¶¶ 48–50, 54, 55, 230, 233; Ex. 1005 ¶¶ 4–5. The premise of this reasoning is that airflow to Suzuki’s CVT is obstructed by an exterior body panel or panels. That premise is not supported adequately the record.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this decision, and on this record, we determine that no claim terms need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“We reserve ruling on the Motion to Seal. Paper 7 and Exhibit 2015 will remain under seal in the interim. After the absence of a timely request for rehearing, or if filed, after resolution of a request for rehearing, Patent Owner may seek authorization to file a Motion to Expunge Paper 7 and Exhibit 2015. See 37 C.F.R. §§ 42.71(d)(1), 42.56.” slip op. at 3
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,217,501
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.