• Washington Inventory Services D/B/A Wis International v. Rgis, LLCAll claims unpatentable
  PTAB · Dec 30, 2015 · CBM2014-00158 · APJ James T Moore · CBM · Final written decision

  Claims 1–19 are unpatentable under § 101 as directed to abstract inventory verification implemented with conventional technology, and under § 103 over Whitehouse and ordinary skill in the art.

  RulingsFinal written decision

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

    “We must not import unrecited elements into the claim from the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1319–20 (Fed. Cir. 2005) (en banc). The specification observes its own exemplary nature—“[i]t should be understood that the description and specific examples are intended for purposes of illustration only and are not intended to limit the scope of the present disclosure.” Ex. 1001, 2:16–19.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for petitioner

    “During prosecution, in a responsive amendment, Patent Owner proffered that “mode” implied a device: Amended claim 1 recites “selecting a verification mode, which includes a set of rules that define a methodology for verifying the inventory dataset, from a plurality of verification modes” and “acquiring verification data in the completed area with the remote verification device based on the selected verification mode.” The McGraw-Hill Dictionary of Scientific and Technical Terms, 6th Edition, defines the word “mode” as “one of several alternative conditions or methods of operation of a device.” The portion regarding the “set of rules that define a methodology for verifying the inventory dataset” further clarifies what is meant by verification mode. Ex. 1002, 180–81. Claim 1, however, broadly interpreted, can reasonably refer to either “mode”—the verification mode, or the device mode. Moreover, the specification itself, in describing manual processing of prior art printed inventory sheets, also refers to that method of inventory verification as a “mode.” Ex. 1001, 1:31–38 (see in particular line 35). We, therefore, decline to limit the term “mode” to only “on a device” when inventory checking alone can have different “modes” of being” slip op. at 17

  • Skill levelSkill level board ownDecided for petitioner

    “Mr. Melucci opines that a person of ordinary skill in the art relevant to the ’658 patent “would have at least two years [of] experience related to collecting and verifying inventory data.” Ex. 1006 ¶ 27. Dr. Jagannathan testifies that “a person of ordinary skill in the art of the [’]658 Patent would have had: (1) a Bachelor’s degree in computer science, computer engineering, or related field; (2) one year of related professional experience; and (3) a basic understanding of inventory processes and the use of UPCs and other product identifiers. The professional experience may include, for example, work related to use of bar codes, stock keeping units, and the like. It is further my opinion that relevant professional or practical experience with computer systems and software may substitute for academic credentials.” Ex. 2001 ¶ 40. Based on our review of the ’658 patent, the types of problems and solutions described in the ’658 patent and cited prior art, and the testimony of the parties’ Declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least two years of experience in computerized inventory management. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18

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

    “imports limitations into the claims from the specification. See, e.g., PO Resp. 35 (discussing the claims jointly). For example, Patent Owner asserts that Petitioner “ignores the actual claim language that requires the verification mode selection to be made on and with the device.” PO Resp. 37. The defect in this argument is that the language of “selecting a particular verification mode on the verification device” is absent from claim 1. See Ex. 1001, 6:2–14. Furthermore, the broadest reasonable interpretation of the term “mode” does not limit the step to a device. Claim 1 positively recites the device in the downloading, deploying, acquiring, computing, and displaying steps, but the term “device” is specifically omitted from the selecting step. Accordingly, we do not interpret claim 1 as requiring the step of selecting a verification mode on the device. Contrary to Patent Owner’s position, we are persuaded by Petitioner that each of challenged claims 1–14, and 18, as a whole, is directed to the fundamental concept of providing inventory verification. Pet. 23. In the Abstract, the ’658 patent states: “[a] system and method of verifying the completeness and accuracy of inventory records is disclosed.” Ex. 1001, Abst. Additionally, in the Background section, the ’658 patent states: Prior methods of verification require that the inventory records be printed out in a predetermined format which is then taken to a specific area in the facility for comparison to the inventory physically located there. These methods are inflexible, tedious and time consuming because the mode of verification is strictly depend[e]nt on the predetermined format of the printed reports and requires a repeated reference to the report and comparison with the actual inventory. Ex. 1001, 1:31–38. The only technological features recited in claims 1–14 and 18 are a computer performing conventional computer functions. Ex. 1001, 6:2–22. Specifically, those include downloading data from a computer to a device, deploying the device, acquiring data with the device, computing, and displaying.” slip op. at 23

  Patent outcomesUS 8,606,658 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · Graham
  Patents in suitUS 8,606,658
• Johns Manville Corporation v. Knauf Insulation, Inc.Institution denied
  PTAB · Dec 17, 2015 · IPR2015-01569 · APJ Fred E Mckelvey · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on either obviousness ground for the challenged claims.

  RulingsInstitution decision

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

    “Petitioner bears the burden of proof. We have not been given sufficient evidence to support, even at this stage, a finding that it is likely that a block made from Example 3, modified by using a mixture of ammonium sulfate and sulfuric acid, would meet claim 32 as it depends from claim 1.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentable

    “Gogek renders the . . . [sulfuric acid] limitation of . . . Claim 32 . . . obvious at least because it discloses that the chemical adjunct may comprise sulfuric acid. Ex. 1003, 1:72–2:4. At the time of the . . . invention of the ’089 Patent, it would have been obvious to a person of ordinary skill in the art to add a small amount of the sulfuric acid as taught in Gogek to the specific formulation of Example 3 of Gogek in order to acid catalyze the inversion of the sucrose in the molasses to produce additional reducing sugars (e.g., dextrose) available for consumption during curing. Producing additional reducing sugar reactants in situ would help ensure that all of the ammonium cations react with the carbonyl group of a reducing sugar, and allow the reaction to run to completion through the consumption of all reactants. Completing the reaction would also improve the quality of the binder. Therefore, one of ordinary skill in the art would have been motivated to use the sulfuric acid expressly disclosed in Gogek with the ammonium sulfate used in the formulation from Example 3 of Gogek in order to achieve these well-known benefits. Agreeing arguendo with Dr. Hirsekorn’s observations, those observations at best prove that one would have found it obvious to use sulfuric acid along with, or possibly in place of, the ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of ammonium sulfate with a small amount of sulfuric acid or sulfuric acid in place of ammonium sulfate would produce a block having the characteristics of the material of claim 32 as it depends from claim 1.” slip op. at 11

  • BurdenNot shown unpatentable

    “observations at best prove that one would have found it obvious to use sulfuric acid along with, or possibly in place of, the ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of ammonium sulfate with a small amount of sulfuric acid or sulfuric acid in place of ammonium sulfate would produce a block having the characteristics of the material of claim 32 as it depends from claim 1.” slip op. at 11

  § 103 obviousness
  Patents in suitUS 8,940,089
• Johns Manville Corporation v. Knauf Insulation, Inc.Institution denied
  PTAB · Dec 17, 2015 · IPR2015-01527 · APJ Fred E Mckelvey · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Gogek inherently disclosed claim 1’s subject matter or that it would prevail on the dependent challenged claims.

  RulingsInstitution decision

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

    “We have broad discretion to assign weight to be accorded witness testimony. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); In re American Academy of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); Velander v. Garner, 348 F.3d 1359, 1370–71 (Fed. Cir. 2003); Bronshtein v. Roser, 61 USPQ2d 1745, 1756 (BPAI 2002) (opinion testimony given little weight where underlying basis has not been provided). Section 42.62(a) is applicable at any stage, including during a “preliminary proceeding” which (1) begins with the filing of a petition and (2) ends with a written decision as to whether a trial will be instituted. Nothing in the Federal Rules of Evidence, which are applicable to IPRs (37 C.F.R. § 42.62(a)), or Federal Circuit jurisprudence, requires a fact finder to credit unsupported assertions of an expert witness. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). See also Ashland Oil, Inc. v. Delta Resins and Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (lack of factual support for expert opinion may render the testimony of little probative value in a validity determination). Petitioner seems to argue that, at least at this stage, we should not doubt Dr. Hirsekorn’s statement. But, Petitioner’s argument cannot justify a lack of credible underlying support for its expert’s opinions. A lack of credible underlying support is no justification to put a patent owner to the expense of defending an inter partes review trial. 37 C.F.R. § 42.1(b) (“This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”).” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “However, Dr. Hirsekorn does not explain what one skilled in the art would have understood “fines” to mean in the phrase “asbestos fines” as of the filing date (1 April 1958) or issue date (20 December 1960) of Gogek. Dr. Hirsekorn states that “Superwool 607 was designed to replace asbestos and is equivalent to asbestos for purposes of the insulating blocks made according to Example 3 of Gogek.” No contemporaneous documentation was offered by Petitioner in support of Dr. Hirsekorn’s statement. Id. For example, no literature supporting Dr. Hirsekorn’s belief that Superwool 607 was designed to replace asbestos has been called to our attention. No literature is cited to show that Superwool 607 is considered by those skilled in the art to be “equivalent to asbestos” for making insulating blocks. Certainly nothing in Gogek confirms the “equivalency” alleged by Petitioner. Nor is there any testimony that Superwool 607 is “fines” having particles sizes consistent with the meaning of “fines” as described in the Gogek patent. Dr. Hirsekorn also states an opinion that “[u]sing Superwool 607 instead of asbestos [fines] would not materially alter the physical properties of the insulating block and would not affect the amounts of residual ionic species of sulfates, phosphates, nitrates, carbonates, and combinations thereof that are assessed in a leach test.” Ex. 1004 ¶ 48 (last sentence). No explanation is given as to why Dr. Hirsekorn is able to state his opinion, particularly since Dr. Hirsekorn does not address the differences, if any, between Gogek’s “asbestos fines” and Superwool 607. We have broad discretion to assign weight to be accorded witness testimony. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); In re American Academy of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); Velander v. Garner, 348 F.3d 1359, 1370–71 (Fed. Cir. 2003); Bronshtein v. Roser, 61 USPQ2d 1745, 1756 (BPAI 2002) (opinion testimony given little weight where underlying basis has not been provided). Section 42.62(a) is applicable at any stage, including during a “preliminary proceeding” which (1) begins with the filing of a petition and (2) ends with a written decision as to whether a trial will be instituted. Nothing in the Federal Rules of Evidence, which are applicable to IPRs (37 C.F.R. § 42.62(a)), or Federal Circuit jurisprudence, requires a fact finder to credit unsupported assertions of an expert witness. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). See also Ashland Oil, Inc. v. Delta Resins and Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (lack of factual support for expert opinion may render the testimony of little probative value in a validity determination). Petitioner seems to argue that, at least at this stage, we should not doubt Dr. Hirsekorn’s statement. But, Petitioner’s argument cannot justify a lack of credible underlying support for its expert’s opinions. A lack of credible underlying support is no justification to put a patent owner to the expense of defending an inter partes review trial. 37 C.F.R. § 42.1(b) (“This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”).” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is “inherent” in its disclosure. To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 . . . (Fed. Cir. 1991). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. at 1269 . . . (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Id. at 745 (italics, except for case citations, added; USPQ citations omitted). The burden of showing something by a preponderance of the evidence simply requires the trier of fact to believe that the existence of a fact is more probable than its nonexistence before the trier of fact may find in favor of the party who has the burden to persuade the trier of fact of the fact’s existence. Concrete Pipe & Products of California, Inc. v. Construction Laborers Pension Trust for Southern California, 508 U.S. 602, 622 (1993). At first blush one might conclude that there is a tension between Robertson’s probabilities and Concrete Pipe’s probable. The tension is resolved if one considers Robertson’s probabilities to mean “may” and Concrete Pipe’s probable to mean “likely.”” slip op. at 8

  § 102 anticipation
  Patents in suitUS 8,940,089
• Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLInstitution denied
  PTAB · Dec 17, 2015 · IPR2015-01598 · APJ Fred E Mckelvey · IPR · Institution

  The Board denied institution on both § 103 grounds because Petitioner did not clearly articulate the differences or show the proposed combinations would meet the challenged claims.

  RulingsInstitution decision

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

    “D. Claims 3, 16–21, 27, 34, 43, 45–49, 51–56, 63, and 73 1. Failure to articulate a clear difference Petitioner has failed to set out precise differences between Swift and the subject matter of the challenged claims. As we explained in declining to institute on Ground 2 in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01402 (PTAB Oct. 21, 2015) (Paper 18, pages 12–14), failure of a petitioner to set out differences in a § 103 context complicates consideration of a petition, both for the Board and the patent owner. Due to Petitioner’s failure to articulate a clear difference between the subject matter of the challenged claims and Swift, we decline to institute an IPR trial in this case. See also 35 U.S.C. § 312(a)(3) (petition identifies with particularity) and 37 C.F.R. 41.104(b)(4) (set out how claim is unpatentable).” slip op. at 9

  • BurdenNot shown unpatentable

    “those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. Petitioner bears the burden of proof. We have not been given sufficient evidence to support a finding that it is likely that a block made from Example 3, modified by using mono-ammonium phosphate, would meet claim 27 as it depends from claim 1.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The testimony in support of obviousness of the subject matter of claim 27 is that of Dr. Hirsekorn. Ex. 1006, ¶ 105: At the time of the purported invention of the ’089 Patent, it would have been obvious to a person of ordinary skill in the art to add a monoammonium phosphate to the binder composition of Example 3 of Gogek in order to reduce the corrosivity of the binder and preserve . . . manufacturing equipment. In the continuous manufacturing process disclosed in Swift, some manufacturing equipment will be in contact with the solution at all times, amplifying the need to include a corrosion inhibitor to extend the life of the manufacturing equipment. Accordingly, in order to prevent corrosion and “decrease the cost of manufacturing bound materials” (Ex. 1003, ¶ [0073]), it would have been obvious to a person of ordinary skill in the art to add a mono-ammonium phosphate as disclosed in Swift to the binder of Example 3 of Gogek to inhibit corrosion. Assuming arguendo that Dr. Hirsekorn’s observations are correct, those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. Petitioner bears the burden of proof. We have not been given” slip op. at 11

  § 103 obviousness
  Patents in suitUS 8,940,089
• Christie Digital Systems USA, Inc. v. Cascades Projection LLCAdverse judgment
  PTAB · Dec 16, 2015 · IPR2015-01342 · APJ Howard B Blankenship · IPR · Adverse judgment

  The Board entered adverse judgment against Patent Owner on claims 1, 17–19, 27, 28, 60, 61, 68, and 71–73 and terminated the proceeding.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial” (37 C.F.R § 42.73(b)(2)). No claim remains to be adjudicated in this proceeding. ORDER Accordingly, it is ORDERED that adverse judgment is entered against Patent Owner with respect to claims 1, 17–19, 27, 28, 60, 61, 68, and 71–73 of the ’347 patent; and” slip op. at 2

  None
  Patents in suitUS 7,688,347
• International Business Machines Corporation v. Intellectual Ventures II, LLCRehearing denied
  PTAB · Nov 6, 2015 · IPR2014-00587 · APJ Meredith C Petravick · IPR · Rehearing

  The Board denied IBM’s rehearing request, leaving intact its determination that claim 1 was not shown unpatentable over Hughes and Abraham because they were not prior art.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d).” slip op. at 3

  • ExcludeOther

    “concerning the issue of inventorship and concerning Mr. Kumar’s alleged date of employment because we dismissed Patent Owner’s motion to exclude such evidence as moot. Req. 1–2. Patent Owner’s motion to exclude sought to exclude Exhibits 1032, 1034, 1035 and 1036. Paper 40. Petitioner proffered exhibit 1032 and 1034 to establish that Mr. Kumar was an inventor. Pet. Reply 11. However, it is apparent from the ’694 patent, itself, that Mr. Kumar was named as an inventor when the ’694 patent was filed. Ex. 1004, 1. Petitioner proffered exhibits 1035 and 1036 to establish that Mr. Kumar did not start work at AT&T until July 1997. Pet. Reply 11– 12. In reaching our decision, we assumed that Petitioner was correct that Mr. Kumar did not start until July 1997. See Dec. 17–18. We, thus, dismissed Patent Owner’s motion to exclude as moot because we did not rely upon exhibits 1032, 1034, 1035, and 1036 in reaching our Decision. Id. at 19. As indicated in our Decision, even assuming that Mr. Kumar, a named inventor, did not start work at AT&T until July 1997, we were not persuaded that the alleged discrepancy between Mr. Kumar’s alleged date of employment and Patent Owner’s alleged date of reduction to practice ipso facto leads to the conclusion that the claimed subject matter could not have been reduced to practice by June, 1996. See Id. at 17–18.” slip op. at 6

  • Strike new argumentDecided for patent owner

    “Petitioner further argues that consideration of Patent Owner’s argument is improper procedurally because it was first raised in Patent Owner’s motion to exclude. Req. 6–7. We acknowledge that previous Board decisions have stated that a motion to exclude is not an opportunity for submitting new arguments or a sur-reply. See Id. We, however, are not persuaded this was an abuse of our discretion that requires us to modify our decision to determine that Petitioner’s argument outweighs Patent Owner’s evidence of prior invention. We note that Patent Owner responded to Patent Owner’s argument regarding inventorship in its opposition to Patent Owner’s motion to exclude and had an opportunity to respond to the issue during oral argument. See Paper 48, 5–6; Paper 54, 14–16, 20–24.” slip op. at 7

  None
  Patents in suitUS 6,826,694
• Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCAll claims unpatentable
  PTAB · Oct 22, 2015 · IPR2014-01554 · APJ Fred E Mckelvey · IPR · Final written decision

  Claims 1–8 and 11 are unpatentable because Joy, Tauster, and Rieck each anticipate them.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “On the record before us, we find that Dr. Farrauto is qualified to testify on the subject matter involved and to offer scientific opinions concerning that subject matter. Ex. 1007A ¶ 1–6. His testimony is consistent with the disclosures of the three references upon which his scientific opinions are based.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “C. Anticipation To establish anticipation, a party must show by a preponderance of the evidence that a prior art reference expressly or inherently describes each claim limitation arranged as in the claim said to be anticipated. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334–35 (Fed. Cir. 2008); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008 ).” slip op. at 7

  Patent outcomesUS 6,037,307 unpatentable
  § 102 anticipation
  Patents in suitUS 6,037,307
• International Business Machines Corporation v. Intellectual Ventures II, LLCNo claims unpatentable
  PTAB · Sep 23, 2015 · IPR2014-00587 · APJ Meredith C Petravick · IPR · Final written decision

  Claim 1 was not shown unpatentable because Petitioner did not establish that Hughes and Abraham qualify as prior art.

  RulingsFinal written decision

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

    “construction, in light of the Specification, of “contents of the packet” in step c is the header and/or payload of the packet. Petitioner’s construction is supported, sufficiently, by the ’694 patent, itself, which discloses embodiments of selecting access rules based upon the header and/or payload of the packet. The ’694 patent discloses a first embodiment in which the firewall selects a rule based on header parameters only, and discloses that, based on the header parameters, the packet may be passed or dropped. See Ex. 1004, col. 2, ll. 35–37, 40–43, col. 3, ll. 10–12, Fig 1 (path formed by steps 101, 102, 103, and 104). The ’694 patent also discloses that an access control proxy selects a rule based on an analysis of the payload of a single or multiple packets. Id. at col. 3, ll. 4–8, 18–22, 30–32, col. 4, ll. 28–34, 38–40, Fig. 1 (path formed by steps 106 and 107). The ’694 patent further discloses alternate embodiments in which the “access control proxy selects an access rule that pertains to the packet based both on an analysis of the payload and the header parameters of the packet” (Ex. 1004, col. 3, ll. 38–41) and the “access rule is retrieved based upon a combination of the contents and header parameters of the packet” (id. at col. 4, ll. 36–38).” slip op. at 9

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner

    “To establish an actual reduction to practice, the patentee must prove that he (1) constructed an embodiment or performed a process that meets all the claimed limitations of the invention, and (2) determined that the invention worked for its intended purpose. Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). “The essential inquiry here is whether the advance in the art represented by the invention . . . was embodied in a workable device that demonstrated that it could do what it was claimed to be capable of doing.” Scott v. Finney, 34 F. 3d 1058, 1063 (Fed. Cir. 1994) (emphasis omitted) (quoting Farrand Optical Co. v. United States, 325 F.2d 3278, 333 (2d Cir. 1963)). “In order to establish an actual reduction to practice, an inventor’s testimony must be corroborated by independent evidence. . . . [A] ‘rule of reason’ analysis is applied to determine whether an inventor’s testimony regarding reduction to practice has been sufficiently corroborated.” Cooper, 154 f.3d at 1330 (citation omitted); see also Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (corroboration requirement “arose out of a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another’s patent”). The sufficiency of corroboration is determined according to a “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). This, however, does not dispense with the requirement that some independent evidence provide corroboration. Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985). The requirement of “independent” corroboration requires evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291–92 (Fed. Cir. 2011).” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “of the evidence, that the challenged claim is unpatentable. 35 U.S.C. § 316(e). This burden includes, inter alia, showing that any reference on which it relies is prior art under 35 U.S.C. § 102. See Mahurkar, 79 F.3d at 1576 (holding that accused infringer “bore the burden of persuasion . . . on all issues relating to the status of [the asserted reference] as prior art”). Hughes and Abraham presumptively constitute prior art under 35 U.S.C. §§ 102(a) or 102(e) because their filing dates are prior to the ‘694 patent’s earliest effective filing date, giving rise to Patent Owner’s burden of coming forward with evidence supporting a date of invention before September 9, 1998. Mahurkar, 79 F.3d at 1576–77; see Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (finding that when party challenging validity came forward with art that is prior to the challenged patent’s application date, the patentee has the burden of going forward with evidence that “the asserted claim is entitled to the benefit of a filing date prior to the alleged prior art”). Upon consideration of the all the evidence, we are persuaded that Patent Owner has met its burden of coming forward with sufficient evidence to corroborate independently inventor Mr. Dutta’s testimony that the inventors of the ’694 patent reduced to practice the claimed invention “at least as early as early 1996 but no later than June 11, 1996” (PO Resp. 36). Thus, we are not persuaded that Hughes and Abraham are prior art under 35 U.S.C. §§ 102(a) or 102(e). C. Obviousness over Hughes and Abraham Petitioner fails to demonstrate that claim 1 is unpatentable under 35 U.S.C. § 103 because Petitioner has not demonstrated that Hughes and Abraham are prior art.” slip op. at 18

  • ExcludeMotion to exclude, deniedMixed

    “under Federal Rule of Evidence (“FRE”) 602. Pet. Mot. 4–5; Pet. Mot. Reply 1–3. FRE 602 states that “[a] witness may testify to a matter only if evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter. Evidence to prove personal knowledge may consist of the witness’s own testimony.” Fed. R. Evid. 602. Exhibit 2006 is the Declaration of Partha Dutta. According to Petitioner, in paragraphs 22, 23, and 26, Mr. Dutta testimony contains statements that require an understanding of the proper legal scope of the ’694 patent, but there is insufficient evidence to support a finding Mr. Dutta has personal knowledge of that proper legal scope of the ’694 patent. Id. at 4. We dismiss Petitioner’s motion to exclude paragraphs 22, 23, and 26 paragraphs of Exhibit 2006 as moot because we do not rely upon the statements made in these paragraphs that Petitioner alleges to require an understanding of the proper legal scope of the ’694 patent in reaching our decision. Although we cite to paragraphs 22, 23, and 26 of Ex. 2006 above, we only rely upon other statements in those paragraphs, which do not address the legal scope of the ’694 patent, such as “the prototype code is no longer available.” Ex. 2006 ¶ 26.” slip op. at 20

  Patent outcomesUS 6,826,694 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,826,694
• Compass Bank / Commerce Bancshares, Inc. et al. v. Intellectual Ventures II, LLCAll claims unpatentable
  PTAB · Sep 23, 2015 · IPR2014-00786 · APJ Meredith C Petravick · IPR · Final written decision

  Claim 1 is unpatentable as anticipated by Rubin and obvious over Norman and Rubin; Cunningham was not shown to anticipate claim 1.

  RulingsFinal written decision

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

    “construction, in light of the Specification, of “contents of the packet” in step c is the header and/or payload of the packet. Petitioner’s construction is supported, sufficiently, by the ’694 patent itself, which discloses embodiments of selecting access rules based upon the header and/or payload of the packet. The’694 patent discloses a first embodiment in which the firewall selects a rule based on header parameters only, and discloses that, based on the header parameters the packet may be passed or dropped. See Ex. 1004, col. 2, ll. 35–37, 40–43, col. 3, ll. 10–12; Fig 1 (path formed by steps 101, 102, 103, and 104). The ’694 patent also discloses that an access control proxy selects a rule based on an analysis of the payload of a single or multiple packets. Id. at col. 3, ll. 4–8, 18–22, 30–32; col. 4, ll. 28–34, 38–40; Fig. 1 (path formed by steps 106 and 107). The ’694 patent further discloses alternate embodiments, in which the “access control proxy selects an access rule that pertains to the packet based both on an analysis of the payload and the header parameters of the packet” (Ex. 1004, col. 3, ll. 38–41) and the “access rule is retrieved based upon a combination of the contents and header parameters of the packet” (id. at col. 4, ll. 36–38).” slip op. at 10

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

    “Given the above, we determine that the broadest reasonable construction, in light of the Specification, of step b is to choose the access rule based upon the contents of the payload of the received packet. Likewise, the broadest reasonable construction, in light of the Specification, of step c is the access rule is chosen based upon a combination of the contents of the received packet and another packet. The broadest reasonable construction of these steps does not require selecting the rule by choosing the access rule from set of rules or preclude selecting the access rule by choosing whether or not the rule is pertinent. Although the Specification discloses selecting a rule from a set of rules (Ex. 1004, col. 3, ll. 10–12, 30–32, col. 4, ll. 47–59), claim 1 does not set forth a set of rules or require that the rule is selected from a set of rules. Limitations appearing in the Specification but not recited in the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the specification” without importing limitations from the specification into the claims unnecessarily).” slip op. at 14

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “This burden includes, inter alia, showing that any reference on which it relies is prior art under 35 U.S.C. § 102. See Mahurkar, 79 F.3d at 1576 (holding that accused infringer “bore the burden of persuasion . . . on all issues relating to the status of [the asserted reference] as prior art”). Cunningham presumptively constitutes prior art under 35 U.S.C. § 102(e) because its September 9, 1998 filing date is prior to the ’694 patent’s earliest effective filing date, giving rise to Patent Owner’s burden of coming forward with evidence supporting a date of invention before September 9, 1998. Mahurkar, 79 F.3d at 1576–77; see Technology Lic. Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (finding that when party challenging validity came forward with art that is prior to the challenged patent’s application date, the patentee has burden of going forward with evidence that “the asserted claim is entitled to the benefit of a filing date prior to the alleged prior art”). Upon consideration of Patent Owner’s proffered evidence, as discussed above, we are persuaded that Patent Owner has met its burden of coming forward with sufficient independently corroborated evidence showing that the inventors of the ’694 patent reduced to practice the claimed invention “at least as early as early 1996 but no later than June 11, 1996” (id. at 40). Thus, upon consideration of all of the evidence, we are not persuaded that Cunningham is prior art under 35 U.S.C. § 102(e).” slip op. at 25

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner

    “was publicly accessible in February 1997 and, thus, qualifies as prior art under 35 U.S.C. § 102(b). The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted). Dr. Aviel Rubin testifies that Rubin is a true copy of the paper, which was presented by his co-author David Martin at the Symposium on Network and Distributed System Security, held on February 10–11, 1997. Ex. 1027 ¶¶ 1–2, 6. Dr. Rubin also testifies that he personally attended the symposium and that he observed that copies of Rubin were freely available to the several hundred attendees. Id. ¶¶ 3, 8–9. Dr. Rubin further testifies that Rubin was published in the Proceedings of the Symposium on Network and Distributed System Security, which are handed out to participants at the symposium. See id. ¶¶ 1, 13. Dr. Rubin’s testimony is consistent with Rubin itself, which states that it was “[r]eprinted from The Proceedings of the 1997 Symposium on Network and Distributed Systems Security.” Ex. 1009, n. 1. Given the above, we determine that Rubin was a printed publication publicly available as of February 1997 and is prior art under 35 U.S.C. § 102(b). See Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104, 1109 (Fed. Cir. 1985) (paper orally presented at a scientific meeting open to all persons interested in the subject matter, with written copies distributed without restriction to all who requested, is a printed publication). Thus, Rubin cannot be overcome by proving prior invention.” slip op. at 16

  Patent outcomesUS 6,826,694 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,826,694
• Flir Systems, Inc. v. Leak Surveys, Inc.All claims unpatentable
  PTAB · Sep 3, 2015 · IPR2015-00065 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1–28 and 30–58 of the ’813 patent and claims 1–7 and 9–20 of the ’496 patent are unpatentable as obvious under § 103.

  RulingsFinal written decision

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

    “construction of “leak” deviates from the ordinary meaning of the term. PO Resp. 31–33. LSI relies on extrinsic evidence to supports its contention that the ordinary meaning of “leak” as recited in the ’813 and ’496 patents is limited to unintended or fugitive emissions. PO Resp. 33. LSI’s contention fails to recognize and distinguish the express teaching that chemicals of interest from flares, exhausts, vents or blow off valves are expressly described as uses of the claimed invention. Ex. 1001, 12:17–25. Indeed, one portion of the specification that LSI relies on to distinguish known versus unknown emissions, indicates that the invention is used to survey known emissions of gas from vents. Ex. 1001, 20:28–31; see PO Resp. 34. Although LSI admits that exhaust valves and flares will have known emissions and that the invention is used to survey these structures (PO Resp. 32), LSI argues that the term “leak” does not include the known emissions from these structures, as the ordinary use of the term is limited to fugitive or unknown emissions. We disagree, concluding that a person of ordinary skill in the art would understand that the specification describes a chemical of interest that is present in valves and exhausts that have known emissions. Ex. 1001, 12:22, 20:28–32.15 Under the broadest reasonable interpretation, LSI’s extrinsic evidence does not persuade us that a person of ordinary skill in the art would understand that “leak” as used in the specification and claims is limited to only unknown or fugitive emissions. Accordingly, on the full record, we maintain our construction of “leak” as including both fugitive and non-fugitive emissions.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for petitioner

    “PO Resp. 27. Specifically, LSI argues that “in the context of the full claims, this limitation should be construed to mean that an infringing method must operate to image gas leaks under real-world field conditions, without taking steps to artificially control any variables such as background temperature, wind, etc.” Id. at 25. LSI does not provide any argument or evidence that the patent describes the range of “real-world” versus “artificially controlled” conditions. Instead, LSI’s construction merely seeks to eliminate any conditions obtained in a lab or test setting from ambient conditions in other settings. We are not persuaded that the patent claims’ references to variable ambient conditions are limited to “real-world” conditions. As we previously noted, a person having ordinary skill in the art would understand that the claimed system and method would typically be used outdoors, where environmental conditions change, at the point where a leak may occur. Dec. ’411, 18. For example, in the summer, a chemical of interest may be present at higher temperature than the same chemical of interest in the winter. Id. Similarly, exhaust temperature may vary depending on conditions. LSI admits that “the claim does not specify what the normal operating conditions would be” under given circumstances. Oral Argument Transcript (“Tr.”) 62:23–24. LSI also admits that a smokestack, for example, would have “a different range of normal operating conditions.” Tr. 63:6–8. Because these conditions vary and the ’813 and ’496 patent specifications are silent on the range or limits of normal operating conditions, we are not persuaded by LSI’s attempt to exclude controlled environments from the claimed ambient conditions. See PO Resp. 26–27. We find no support for LSI’s contention that “variable ambient conditions” or “normal operating in variable ambient conditions” is limited to those instances that are not constrained or controlled in some artificial manner. Id. On the full record, we maintain our constructions of “produce a visible image of the chemical emanating from the component under variable ambient conditions of the area around the leak” as meaning “being able to produce a visible image under the ambient conditions of the area around the leak.”” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We are not persuaded by LSI’s arguments. The case LSI relies on, Virginia Innovation, is neither binding authority nor persuasive authority. The facts in Virginia Innovation can be distinguished from the facts of the present case, as the prior art in question in Virginia Innovation was not sufficiently shown to be generally on sale to the interested public, and was instead “restricted” to members of a publishing organization, which required membership dues for access. See 983 F. Supp. 2d at 737–38. Indeed, the district court in Virginia Innovation noted that there was no evidence that the document was available for sale to the general public outside of the publishing organization members. Id. In the present case, no membership fee or organization membership is required for access to the Merlin User’s Guide, which testimony shows was available and sold to the interested public as early as late 2000. See Ex. 1026 ¶¶ 17–19; Ex. 1024 ¶¶ 12–14; Ex. 1016 ¶ 12. Based on the complete record, we find by a preponderance of the evidence that distribution of the Merlin User’s Guide with the sale of the Merlin MID camera shows sufficient public accessibility and distribution. The cost to obtain the camera does not negate the evidence that the camera and accompanying user’s guide was available to the interested public. The testimony evidence shows that the Merlin User’s Guide was available for sale and distribution to the interested as early as 2000. Thus, FLIR has shown by a preponderance of the evidence that the Merlin User’s Guide was a publicly available printed publication.” slip op. at 22

  • Skill levelSkill level board ownOther

    “relevant experience with passive IR (infrared) systems in addition to the requisite engineering or physics education. Paper 2, 10–11 (IPR ’065); Reply 19–20. LSI contends that in addition to the requisite physics or optical science/engineering education a person of ordinary skill the art would have experience developing IR camera systems generally. PO Resp. 22. LSI’s contention is that FLIR’s definition of a person of ordinary skill is too narrowly focused on passive IR systems and is evidence of hindsight bias. PO Resp. 23. LSI’s arguments are contradictory and confusing; asserting not only that FLIR’s person of ordinary skill in art is overly narrow and defined as a “specialist in the [’813 and ’496 patents’] specific solution to the problem being solved,” but also that FLIR’s artisan “would not [] have been familiar with the technical problem being addressed by the invention.” PO Resp. 22 (emphasis omitted). Regardless, FLIR argues that the invention would have been obvious under either FLIR’s or LSI’s proposed person of ordinary skill in the art. Reply 20. Based on the full record, we find that the level of ordinary skill in the art is evidenced by the prior art references and the type of problems and solutions described in the ’813 and ’496 patents (Ex. 1001, 1:25–2:34), and includes experience in imaging of chemical gases using IR camera systems generally in addition to the requisite engineering, physics or optical science education. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Moreover, and apart from any differences of opinion between FLIR and LSI on the precise background and knowledge of one skilled in the art, the prior art itself is highly indicative of the level of skill. See id. (“the level of ordinary skill in the art . . . was best determined by appeal to the references of record”). In any event, we do not find that a person of ordinary skill’s understanding of the teachings of the prior art would differ if an ordinarily skilled artisan possessed knowledge of both active and passive IR systems rather than knowledge of passive IR systems alone. See PO Resp. 22–24.” slip op. at 23

  Patent outcomesUS 8,426,813 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,426,813

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.