- Hewlett Packard Enterprise Co. v. Chrimar Systems, Inc.Rehearing deniedPTAB · Nov 26, 2019 · IPR2019-00032 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because § 315(a)(1) barred review after Petitioner filed and voluntarily dismissed a declaratory judgment action.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“institution of an inter partes review because Petitioner previously filed a declaratory judgment action challenging the validity of claims in the ’012 patent, notwithstanding Petitioner’s voluntary dismissal without prejudice of that declaratory judgment action. Dec. 5–8. We explained that our conclusion was compelled by the Federal Circuit’s analysis in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc as to footnote 3). Dec. 6–8.” slip op. at 2
Discretionary denialPatents in suitUS 8,155,012 - NEC Corporation / Nokia Corporation et al. v. Neptune Subsea IP LimitedAll claims unpatentablePTAB · Nov 25, 2019 · IPR2018-01157 · APJ Jason W Melvin · IPR · Final written decision
Claims 13–20 are unpatentable as obvious over Yamamoto and Nishimoto; the Chowdhury and Webb grounds, with or without Tanaka162, do not establish unpatentability.
RulingsFinal written decision- BurdenFwd all claims unpatentableDecided for petitioner
“III. CONCLUSION For the foregoing reasons, we determine Petitioner has shown by a preponderance of the evidence that each of claims 13–20 is unpatentable.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties submit and we agree that there is no need to construe any term to resolve the issues in this decision. See Pet. 7–9; PO Resp. 6; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“e. Summary For the reasons described above, we find that a person of ordinary skill in the art at the time of invention would have had reason to combine Yamamoto’s and Nishimoto’s teachings as asserted by Petitioner and that the combination teaches all of claim 13’s limitations. Accordingly, Petitioner has shown by a preponderance of the evidence that the subject matter of claim 13 would have been obvious over Yamamoto and Nishimoto.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“tunable compensators is a contingent argument, applicable only if one reads claim 13 to require a certain transmission rate. PO Resp. 21–25. We do not read Petitioner’s argument as so constrained. Rather, we understand Petitioner to argue that a desire for higher transmission speeds would drive skilled artisans to use solutions such as Nishimoto’s tunable compensators, particularly in light of Nishimoto’s guidance regarding the ability to achieve high speeds with the system. See Pet. 21–23. In that regard, we agree with Petitioner that the increase in transmission rates from Yamamoto’s to Nishimoto’s disclosures would have given skilled artisans reason to consider Nishimoto’s teachings. Pet. Reply 16–18 (citing Ex. 1005 8:9–11; Ex. 1007, 12:37–39). As Petitioner points out, Nishimoto specifically discloses that higher-speed transmissions were more sensitive to dispersion. Pet. Reply 17 n.9. Thus, we find the desire for higher transmission speeds and the need for techniques such as taught by Nishimoto would have given skilled artisans reasons to combine Nishimoto’s disclosure regarding dispersion compensation with Yamamoto’s system to achieve Yamamoto’s goals regarding the dispersion maps for multiple channels. Further, Petitioner does not rest entirely on the desire for high-speed operation. Petitioner argues also that using Nishimoto’s adjustable compensators and feedback control would “yield an improved WDM system capable of automatic compensation for degradation of the optical signal waveform caused by both wavelength dispersion and polarization mode dispersion of the optical transmission path, resulting in further reduced size and cost.” Pet. 16 (citing Ex. 1003 ¶¶ 99, 101; Ex. 1007, 3:41–60, 4:3–58, Figs. 17, 20, 21), 29–30 (quoting Ex. 1007, Abstract, 3:37–40, 6:56–64, 7:53–56, 11:41–46, 17:53–55, 17:59–60; citing Ex. 1003 ¶¶ 114–115); accord id. at 14 (quoting Ex. 1007, 3:19–25). Patent Owner recognizes that basis for the combination but argues that the record lacks evidence to support Petitioner’s claim of reduced size and cost. PO Resp. 25–26. Patent Owner does not contest that the modification would give Yamamoto’s system the ability to automatically compensate for signal degradation from dispersion. Nishimoto discloses that as transmission speeds increase, “changes in wavelength dispersion characteristics due to temperature changes of optical fiber; and the influence by polarization mode dispersion” both “can not be neglected,” therefore requiring a system for automatically compensating for wavelength dispersion and polarization mode dispersion,” as taught by Nishimoto. Ex. 1007, 1:34–41. We find that a skilled artisan would have had reason to make the combination because the system would gain capability for automatic compensation. Regarding reduced size and cost resulting from the combination, Patent Owner does not provide any contrary evidence and we conclude that Nishimoto’s statements regarding the benefit of its invention also would have motivated skilled artisans to make the combination. See Ex. 1007, 3:17–26 (“to thereby provide a dispersion compensating apparatus of reduced sizes at a reduced cost”).” slip op. at 18
Patent outcomesUS 8,351,798 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,351,798 - Syrinix, Inc. v. Blacoh Fluid Control, Inc.Some claims unpatentablePTAB · May 22, 2019 · IPR2018-00414 · APJ Frederick C Laney · IPR · Final written decision
Claims 1–6, 10, 12, and 14 are unpatentable; the motion to amend is granted for substitute claims 22 and 24.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundDecided for patent owner
“We find the above remarks made during prosecution of the ’553 patent by the applicant to be an unmistakable disavowal of pressure fluctuations caused by a leak in a pipe from the scope of “dynamic transient pressure.” Accordingly, we agree with Patent Owner that the applicant narrowed the scope of “dynamic transient pressure” to exclude transient pressures caused by pipeline leaks.” slip op. at 18
- Skill levelSkill level board ownOther
“formulation regarding the level of ordinary skill in the art, and instead found the cited references to be representative of the level of ordinary skill in the art. Inst. Dec. 9–10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves)). The parties have not expressed any disagreement with this finding, nor have they suggested a more definitive characterization of the level of ordinary skill in the art is necessary to resolve a disputed issue. Accordingly, for purposes of this Decision we again treat the cited references as being representative of the level of skill in the art. However, the factual findings and legal conclusions set forth herein would” slip op. at 9
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“claims, “the burden of persuasion ordinarily will lie with the petitioner to show that any proposed substitute claims are unpatentable by a preponderance of the evidence.” Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, slip op. at 4 (PTAB Feb. 25, 2019) (Paper 15) (precedential). Before we evaluate the patentability of Patent Owner’s proposed substitute claims, we first must consider whether the proposed claims satisfy the threshold statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.221. Id. at 4–10. Accordingly, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent; (3) the amendment proposes a reasonable number of substitute claims; and (4) the amendment does not introduce new subject matter and has written description support in the original disclosure. Id.” slip op. at 74
Patent outcomesUS 7,219,553 mixedClaim constructioncites KSR · GrahamPatents in suitUS 7,219,553 - Hewlett Packard Enterprise Co. v. Chrimar Systems, Inc.Institution deniedPTAB · Apr 9, 2019 · IPR2019-00032 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because Hewlett Packard Enterprise had previously filed a civil action challenging the validity of a claim, triggering the § 315(a)(1) bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Action,” bars institution of an inter partes review when a petitioner filed a civil action challenging the validity of a claim of a patent before the date on which that petitioner filed a petition requesting an inter partes review of that patent. 35 U.S.C. § 315(a)(1). Section 315(a)(1) does not include an exception for a civil action that was dismissed without prejudice. Id.; see Click-to-Call, 899 F.3d at 1330. And Congress demonstrated that it knew how to provide an exception to a statutory bar by including an exception to the § 315(b) time bar for a joinder request. 35 U.S.C. § 315(b); see Click-to- Call, 899 F.3d at 1331. Thus, Congress could have included an exception to the § 315(a)(1) bar for a civil action that was dismissed without prejudice, but did not. 35 U.S.C. § 315(a)(1); see Click-to-Call, 899 F.3d at 1331.” slip op. at 6
Discretionary denialPatents in suitUS 8,155,012 - Cisco Systems, Inc. v. Chrimar Systems, Inc.Institution deniedPTAB · Mar 12, 2019 · IPR2018-01515 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because Cisco did not show that the cited art disclosed the claimed predetermined response for claims 1, 15, 34, 38, 49, and 64.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review must not be instituted “unless . . . the information presented in the petition . . . 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). Upon considering the evidence presented and the arguments made, we determine that Cisco has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“configured to be interrogated” found in the respective preambles of claims 1 and 38 demonstrate that the preambles are “superfluous and [have] no limiting effect because they “merely provide an intended use for the claimed apparatus.” Pet. 6 (citing Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir. 2010)). Cisco’s argument that the preambles are “superfluous,” however, ignores the antecedent basis the preambles provide to limitations found in the body of the claims. Although Cisco is correct that preamble language that merely states a purpose or intended use of an invention is generally not treated as limiting the scope of a claim, “when limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015). The Catalina decision that Cisco relies upon is in accord with the Pacing holding and further holds that a preamble may also be limiting when it “is essential to understand limitations or terms in the claim body.” 289 F.3d at 808. In this case, we find the preambles of both claims 1 and 38 are limiting because they provide an antecedent for positively recited limitations and are essential to understanding those limitations. In particular, the preamble of claim 1 recites, “[a] BaseT Ethernet device configured to interrogate for [a] predetermined response via at least one direct current (DC) signal,” which the body of the claim subsequently refers to by reciting, “the predetermined response carried by at least two different magnitudes in slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The problem with Cisco’s proposed interpretation is that it broadly recites any two magnitudes of DC current flow, regardless of whether those magnitudes of DC current are communicating a response that was predetermined. Thus, within the context of the claims, Cisco’s proposed interpretation appears to render “predetermined” meaningless because any two magnitudes of DC current flow encompasses even those responses that would not have been predetermined. Furthermore, claims 1 and 38 expressly state that the “predetermined response” is “carried by at least two different magnitudes in the flow of the at least one direct current (DC) signal.” Cisco’s proposed interpretation improperly conflates the predetermined response with the two different magnitudes of DC current flow used to carry the predetermined response. The plain language of the claims indicates that the two are not synonymous––the at least two different magnitudes of direct current are identified as the means by which the predetermined response is transferred. The specification of the ’825 patent supports our interpretation that a “predetermined response” is not just any two magnitudes of DC current flow. At several points, the specification discusses a BaseT Ethernet device that sends an interrogating signal from a central module to a remote module by way of a DC signal to request information previously defined. See Ex. 1006, 5:37–6:52, 9:1–17, 10:35–42, 15:56–16:35. For example, the specification describes the remote module as providing “a preprogrammed unique identification number” in response to a status request initiated by the central module. Id. at 6:6–14. This information is then compared to information predefined to be what the status signal was intended to retrieve and a determination is made about whether the response is valid. Id. at 6:30–44; see also 9:1–17, 10:35–42, 16:30–35. Thus, the examples of a predetermined response that the ’825 patent specification provides were known identification numbers.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Cisco contends that a person of ordinary skill in the art “would have had at least a B.S. degree in electrical engineering or computer science, or the equivalent, and at least three years of experience in the design of network communication products.” Pet. 9 (citing Ex. 1001 ¶ 42). Patent Owner does not provide an assessment of the appropriate level of skill in the art. See generally Prelim. Resp. We are persuaded that the assessment proposed by Cisco is correct. Further, in this case, the applied prior art reflects the appropriate level of skill at the time of the claimed invention, which is consistent with the level of skill that Cisco proposes. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,812,825 - HTC Corporation / HTC America, Inc. v. Invt Spe LLCInstitution deniedPTAB · Mar 5, 2019 · IPR2018-01556 · APJ Thu A Dang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 4 was obvious over Padovani and Gils.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. Principles of Law In an inter partes review, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied on). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Although Petitioner contends “a POSITA would have been motivated to provide greater protection for the decimal integer portion (an error in which would be magnified versus an error in the decimal fraction portion)” in Padovani (Pet. 33), Petitioner does not identify any passage or combination of passages in Padovani that teaches or suggests providing, or even the need to provide, greater protection for one decimal portion than the other decimal portion, let alone by using “different coding schemes for the different parts.” Id. As Patent Owner asserts, “Padovani discloses using a single code to encode the DRC message[,]” and “does not teach using multiple codes to encode different portions of the DRC message.” Prelim. Resp. 14 (citing Ex. 1009, 45:20–22 (emphasis added)). We recognize that Petitioner’s Declarant, Dr. Min, testifies that, “by virtue of Padovani contemplating the use of an (n,k) coding scheme,” the POSITA “would have naturally sought out similar coding schemes [as those of Gils] to protect DRC messages.” See Pet. 41 (citing Ex. 1017 ¶ 156). Dr. Min further testifies that “a POSITA would have been motivated to provide greater protection for certain bits by selecting appropriate code words generated by one or more of the coding schemes contemplated by Gils,” and thus, use “different coding schemes for the different parts.” Ex. 1017 ¶ 132. Dr. Min’s testimony, however, does not address adequately why one of ordinary skill in the art would have used together different coding schemes from Gils, let alone a separate scheme for certain bits over the other bits. As Dr. Min testifies, “a single UEP coding scheme could also be used depending upon how a POSITA would have wanted to implement unequal error protection.” Ex. 1017 ¶ 132; see Pet. 33 (citing Ex. 1017 ¶ 132). As such, Dr. Min acknowledges that a single unequal error protection coding scheme could be used as well as applying different coding schemes to different parts of a message. Here, Dr. Min’s testimony that a single unequal error protection coding scheme could be used further undermines Petitioner’s position that one of ordinary skill in the art would have used the different coding schemes for different parts as set forth in Gils. Thus, Dr. Min’s testimony does not adequately explain why one of ordinary skill in the art would have applied different coding schemes from Gils to the DRC message of Padovani, much less in the manner proposed by Petitioner, of providing greater protection for the decimal integer portion than the decimal fraction portion, especially when Padovani discloses “using a single code to encode the DRC message.” See Prelim. Resp. 14 (citing Ex. 1009, 45:20–22).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Min’s declaration testimony to support its contention that one of ordinary skill in the art would have used Gils’s techniques to encode Padovani’s DRC message in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Petitioner also has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize- Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” (citation omitted)).” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Moreover, Dr. Min’s contention that “[t]he nature of binary numbers (or other base-x number systems) means that the leftmost bit of any binary number is the most significant bit” (Ex. 1017 ¶ 154) is conclusory. As Patent Owner points out, “Dr Min’s declaration, however, merely repeats the allegations of the Petition without any explanation or citation to any supporting or corroborating evidence.” Prelim. Resp. 20 (citing Ex. 1017 ¶ 154). That is, “[t]here is no proffered evidence that it was well understood by a POSITA at the time that the leftmost bit in binary numbers, and specifically in the DRC message of Padovani, is the ‘most significant bit.’” Prelim. Resp. 20. For that reason, we give little weight to Dr. Min’s uncorroborated testimony that “the leftmost bit of any binary number is the most significant bit.” 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 Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations[.]”).” slip op. at 15
§ 103 obviousnesscites KSRPatents in suitUS 7,206,587 - Apple Inc. / Zte(Usa) Inc. v. Invt Spe LLCInstitution deniedPTAB · Mar 5, 2019 · IPR2018-01474 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claim 4 because Petitioner did not show a reasonable likelihood that Bender and Piret rendered it obvious; claim 3 had been statutorily disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“For the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claim 4 would have been obvious over Bender and Piret. See 35 U.S.C. § 316(e) (To prevail in an inter partes review that has been instituted, “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”). III. CONCLUSION We conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’587 patent challenged in the Petition. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to all challenged claims of the ’587 patent, and no trial is instituted.” slip op. at 17
- Adverse judgmentAdverse judgmentOther
“We agree with Patent Owner. “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (citing Altoona Publix Theatres, Inc. v. Am. Tri–Ergon Corp., 294 U.S. 477 (1935)). An inter partes review cannot be instituted on claims that have been disclaimed and no longer exist. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”). This conclusion is consistent with other panel decisions addressing this issue. See, e.g., Intuitive Surgical, Inc. v. Ethicon LLC, Case IPR2018-00935, Paper 9, 9–10 (PTAB Dec. 7, 2018); Vestas-Am. Wind Tech. Inc. v. Gen. Elec. Co., Case IPR2018-01015, Paper 9, 12–14 (PTAB Nov. 14, 2018). Accordingly, we treat claim 3 as having never been part of the ’587 patent, and do not institute inter partes review on this claim. As discussed above, we regard claim 4 as the only challenged claim. See Sections I.A and I.E.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Accordingly, a plain reading of the reference does not support a finding that Bender teaches or suggests that the FEC scheme is used to encode the SNR itself. Therefore, we are not persuaded that Bender’s FEC description would have provided reason to look to Piret’s encoding techniques for encoding Bender’s “quality” information. That is, although we agree with the Petitioner that Piret teaches and suggests a method of encoding less significant bits differently from the more significant bits of each data word, wherein the most significant bit of the plurality of bits is encoded to be less susceptible to errors (Ex. 1005, 1:20–33), that alone is insufficient to support a conclusion of obviousness of providing an encoder that encodes Bender’s SNR “quality” information, as required by claim 4. That Piret discloses encoding transmitted information does not address the requirements set forth in KSR to provide articulated reasoning with rational underpinning to support the legal conclusion of obviousness. That is, the Petitioner’s obviousness position does not explain why a person of ordinary skill in the art would have encoded the SNR value in Bender, which may not even be transmitted, using Piret’s encoding method. Indeed, Petitioner does not direct us to persuasive evidence that encoding the SNR value would have been expected to provide any advantage, outside the teachings of the ’587 patent. Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Singer’s declaration testimony to support its contention that one of ordinary skill in the art would have used Piret’s techniques to encode Bender’s SNR values in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Therefore, Petitioner has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. In that regard, Petitioner’s Declarant, Dr. Singer, testifies that a person of ordinary skill in the art at the time of the ʼ587 Patent’s invention would have been a person having a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with wireless communication systems or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering. Pet. 6; Ex. 1003 ¶ 39. At this juncture, Patent Owner does not dispute Dr. Singer’s assessment on the level of ordinary skill in the art. See generally Prelim. Resp. Based on the current record, we apply Dr. Singer’s assessment for purposes of this Decision. We also note that the prior art of record currently in the instant proceeding is consistent with this level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 8
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,206,587 - Sonitor Technologies, Inc. v. Centrak, Inc.Rehearing deniedPTAB · Feb 21, 2019 · IPR2018-00740 · APJ Frederick C Laney · IPR · Rehearing
The Board denied Sonitor’s rehearing request, leaving institution denied for claims 1–14 and 21–33 because Sonitor had not shown a reasonable likelihood of prevailing on its obviousness challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(d) Rehearing. 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.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“because, rather than resolving a factual dispute in Centrak’s favor, the Decision concludes Sonitor failed to show persuasively that there was a reasonable likelihood it would prevail in establishing the facts necessary to support an unpatentability determination of the challenged claims in view of Corrado (Ex. 1005) and Welles. Although we agreed with Centrak’s argument “that Sonitor’s basis for combining Corrado and Welles in the manner claimed relies on a critical unfounded factual assertion about what Welles teaches” (Dec. 14), we did not reach that conclusion by weighing Centrak’s argument against Sonitor’s alleged facts. Instead, we carefully evaluated Sonitor’s contentions, independent of any factual representations Centrak may have made, and determined, based on the record before us, that Sonitor’s support for the facts alleged was deficient. See Dec. 14–19. Put another way, we did not improperly credit Centrak’s uncorroborated attorney argument over Sonitor’s allegedly supported arguments; we made a determination that Sonitor did not establish a reasonable likelihood of success because Sonitor’s arguments did not have persuasive evidentiary support in the record before us.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Moreover, as noted in the Decision, Sonitor’s declarant, Gary Michael Gaukler, Ph.D., does not provide additional information sufficient to explain why the disputed passage would have been understood by a skilled artisan in the manner Sonitor alleges. Dec. 15 n. 5. Such conclusory testimony carries little, if any, probative and/or evidentiary value. See, e.g., 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts . . . on which the opinion is based is entitled to little or no weight.”). Dr. Gaukler states the same thing that Sonitor argues in the Petition (compare Pet. 17 with Ex. 1003 ¶¶ 51–52) and both fail to explain why a skilled artisan would have understood column 8, lines 5–9, of Welles to teach synchronizing the transmitters such that they transmit signals at different times; both simply state this as a conclusion. Therefore, Sonitor’s reliance on Dr. Gaulker’s declaration as proof of its argument on this point is misplaced. Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 1378 (Fed. Cir. 2017) (“we must disregard the testimony of an expert that is plainly inconsistent with the record”).” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDenied
“misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. The Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) (“Practice Guide”) explains that “[e]vidence not already of record at the time of the decision will not be admitted absent a showing of good cause.” Id. at 48,768 (emphasis added). Here, Sonitor has not established “good cause” for us to consider Centrak’s Reply Brief. Sonitor does not contend Centrak’s Reply Brief was not available before we issued our Decision in this matter. Sonitor asserts instead that it “did not earlier present these contrary admissions by Centrak because the ‘timing’ and ‘synchronization’ features of the claims were not the focal point of the proceeding until the Board’s institution decision adopted Centrak’s factually implausible interpretation of Welles.” Req. Reh’g 12. Sonitor, however, could have sought to supplement the record and provide additional briefing immediately after receiving Centrak’s Preliminary Response, but it chose not to do so. See 37 C.F.R. § 42.108(c) (“A petitioner may seek leave to file a reply to the preliminary response . . . . Any such request must make a showing of good cause.”). Because Sonitor fails to provide a reasonable explanation for why it did not present Centrak’s Reply Brief sooner, and fails to otherwise justify persuasively why we should consider the Reply Brief arguments made by Centrak in a different case to address a different issue (i.e., written description and/or enablement), we do not find “good cause” exists for us to allow it to become part of this record now. Therefore, Sonitor’s arguments based on Centrak’s Reply Brief are not entitled to consideration.” slip op. at 7
NonePatents in suitUS 9,622,030
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.