- Google LLC / Samsung Electronics Co., Ltd. et al. v. Agis Software Development, LLCInstitution deniedPTAB · Nov 25, 2020 · IPR2020-00871 · APJ Frederick C Laney · IPR · Institution
The Board denied institution of IPR on claims 1–68 under § 314(a), finding that the parallel litigation’s timing, investment, and overlapping issues made review inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petition is particularly problematic in this case because there is significant overlap between the subject matter and alleged grounds of unpatentability found in the Petition and those petitions previously filed. See Apple Inc. v. AGIS Software Dev. LLC, IPR2018-01471, Paper 1 (PTAB July 31, 2018); Google LLC v. AGIS Software Dev. LLC, IPR2018-01086, Paper 2 (PTAB May 15, 2018). In fact, the Petition includes portions that are substantially identical to the petitions previously filed. Compare, e.g., Pet. 1–5, 8–34 with IPR2018-01471, Paper 1 at 1–2, 6–8, 12–39. This similarity shows that Petitioner was fully capable of filing the Petition at or around the time Petitioner was served with a complaint giving them notice that the ’829 patent was being asserted by Patent Owner. Moreover, Petitioner is challenging the patentability of every claim in the ’829 patent, which suggests that there was no need for Petitioner to delay filing until Patent Owner identified which specific claims of the ’829 patent were being asserted. When “the evidence shows that the petitioner[s] did not file the petition expeditiously . . . or even if the petitioner cannot explain the delay in filing its petition,” we weigh this factor toward exercising discretion to deny Petitioner had everything it needed to file the Petition much earlier in the parallel District Court proceeding and because Petitioner offers no explanation for why the filing was delayed, we find the timing of the Petition weighs heavily toward exercising discretion to deny institution.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“relevant circumstances, Petitioner contends that this factor “favors institution because the grounds in the petition provide a strong showing of obviousness.” Pet. 67. Although we do not undertake here a full analysis of the merits, our initial inspection of the record and the parties’ arguments suggest that there is a reasonable likelihood that Petitioner would prevail with respect to at least 1 of the claims challenged in the Petition. The showing, however, is not so strong as to tip the balance in favor of institution. See Fintiv, Paper 11 at 14 (“[I]f the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact has favored institution”) (emphasis added). In a balanced assessment of the relevant evidence of record, this factor neither weighs in favor nor against exercising our discretion to deny institution. G. Conclusion Based on the particular circumstances of this case, we determine that instituting an inter partes review would be an inefficient use of Board resources. As discussed above, the trial in the underlying litigation is currently scheduled to begin in about four months and may conclude several months before we would reach a final decision in this proceeding. Furthermore, the record shows that Petitioner delayed filing the Petition without any excuse for the delay and, therefore, bears significant expended effort in preparing for the upcoming trial that will address issues that substantially overlap with those raised in the Petition. On balance, after a holistic consideration of the relevant facts, we conclude that efficiency and integrity of the system are best served by denying institution. Thus, we exercise our discretion under § 314(a) to deny institution of inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 17
Discretionary denialPatents in suitUS 9,749,829 - Google LLC / Samsung Electronics Co., Ltd. et al. v. Agis Software Development, LLCInstitution deniedPTAB · Nov 25, 2020 · IPR2020-00873 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the Fintiv factors favored denial because trial was near, the petition was delayed, and issues substantially overlapped.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“relevant circumstances, Petitioner contends that this factor “favors institution because the grounds in the petition provide a strong showing of obviousness.” Pet. 73. Although we do not undertake here a full analysis of the merits, our initial inspection of the record and the parties’ arguments suggest that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. In a balanced assessment of the relevant evidence of record, and in view of the possible strength of Petitioner’s showing on the present record, this factor is neutral.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“On the record before us at this time, the only persuasive facts that we have regarding the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision is an Order by the District Court that sets trial for April 5, 2021, which will require “good cause” to be changed, and our projected statutory deadline, which would be toward the end of November 2021. While we appreciate that the trial date is susceptible to change if and when the District Court determines good cause exists to do so, we decline to speculate whether such a contingency will occur. Instead, we must base our evaluation on the existing facts supported by the evidence of record. This factor, therefore, significantly favors the exercise of discretionary denial.” slip op. at 9
Discretionary denialPatents in suitUS 9,820,123 - Google LLC / Samsung Electronics Co., Ltd. et al. v. Agis Software Development, LLCInstitution deniedPTAB · Nov 25, 2020 · IPR2020-00872 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the parallel district court trial, unexplained petition delay, and overlapping issues made review inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherInstitution denied
“A. Fintiv Factor 1: Stay in the Underlying Litigation Petitioner contends the first Fintiv factor “favors institution because Judge Gilstrap commonly grants stays after institution of an IPR” and that it intends to seek a stay now that the Petition has been filed. Pet. 74–75 (citing Uniloc USA, Inc. v. Google, Inc., 2:17-cv-00231-JRG, Order (E.D. Tex. Oct. 3, 2017); Intellectual Ventures II LLC v. BITCO Gen. Ins. Corp., 6:15- cv-59, Memorandum Opinion and Order (E.D. Tex. May 12, 2016); Memsmart Semiconductor Corp. v. AAC Techs., 2:14-CV-1107-JRG, Order (E.D. Tex. July 10, 2015); Image Processing Techs. LLC v. Samsung Elecs. Co., No. 2:16-cv-505-JRG, Order (E.D. Tex. Oct. 25, 2017)). Petitioner notably, however, fails to provide any analysis of these cited cases to demonstrate that the facts presented here are analogous to those leading Judge Gilstrap to determine a stay was appropriate. Patent Owner counters that Petitioner’s “motion for a stay has been denied,” although a renewed motion will be permitted if we grant institution of inter partes review. Prelim. Resp. 15. Patent Owner contends, however, that any renewed motion by Petitioner for a stay of the parallel district court proceedings will likely be denied. Id. at 15–16. This is so, Patent Owner argues, because, by the time the District Court is able to hear such a motion, the case will have developed to the later stages of the proceedings. See id. Furthermore, Patent Owner argues that because “the Petitioners copied this Petition from previous filings, their delay is likely to weigh heavily against them.” Id. at 15 (citing Intellectual Ventures v. FedEx et al., No. 2:16-cv-00980-JRG, Dkt. 141 at 4–5 (E.D. Tex. Oct. 24, 2017)).5 Given the District Court’s apparent willingness to reconsider a motion to stay if we grant institution of inter partes review, but also considering the later stage of the district court proceeding, with trial scheduled to begin in a little over four months, we view the first Fintiv factor, on balance, as neutral in determining whether to exercise discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“relevant circumstances, Petitioner contends that this factor “favors institution because the grounds in the petition provide a strong showing of obviousness.” Pet. 77. Although we do not undertake here a full analysis of the merits, our initial inspection of the record and the parties’ arguments suggest that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. In a balanced assessment of the relevant evidence of record, and in view of the possible strength of Petitioner’s showing on the present record, this factor is neutral. G. Fintiv Conclusion Based on the particular circumstances of this case, we determine that instituting an inter partes review would be an inefficient use of Board resources. As discussed above, the trial in the underlying litigation is currently scheduled to begin in about four months and may conclude several months before we would reach a final decision in this proceeding. Furthermore, the record shows that Petitioner delayed filing the Petition without any excuse for the delay and, therefore, bears significant responsibility for the fact that the district court and the parties have expended effort in preparing for the upcoming trial that will address issues that substantially overlap with those raised in the Petition. On balance, after a holistic consideration of the relevant facts, we conclude that efficiency and integrity of the system are best served by denying institution. Thus, we exercise our discretion under § 314(a) to deny institution of inter partes review.” slip op. at 15
Discretionary denialPatents in suitUS 9,820,123 - Workspot, Inc. v. Citrix Systems, Inc.No claims unpatentablePTAB · Nov 17, 2020 · IPR2019-01002 · APJ Justin T Arbes · IPR · Final written decision
Claims 1, 5, 7–9, 12, 16, 18, 19, 23, 24, 29, and 30 were not shown unpatentable under either §103 ground because the references did not teach the required distinct content and web server limitations.
RulingsFinal written decision- BurdenNot shown unpatentable
“We credit the testimony of Dr. Hernandez on step (a), as it explains in detail the deficiencies in Petitioner’s position and is consistent with the references’ disclosures discussed above. See Ex. 2004 ¶¶ 90–92, 95. Based on the full record developed during trial and for the reasons explained above, we are not persuaded by Petitioner’s arguments that Craft and Duursma teach step (a) of claim 1. Petitioner has not proven, by a preponderance of the evidence, that claim 1 would have been obvious based on Craft and Duursma under 35 U.S.C. § 103(a).” slip op. at 30
- Strike new argumentNew argument disregardedDecided for patent owner
“Reply is improper because it was not raised adequately in the Petition. See Sur-Reply 9–11. Pursuant to 37 C.F.R. § 42.23(b), “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Practice Guide at 74; see also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not err in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., 821 F.3d at 1369–70 (concluding that the Board did not err in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)). Petitioner in its Petition never referenced any specific “software” executed by web server 49a or “portion” of web server 49a, instead referring to the device throughout as a singular entity. See Pet. 50–63. The word “software” appears only four times in the Petition, and never in reference to web server 49a of Zoller. See id. at 52, 61, 66, 77. Mr. Zoller in his declaration likewise does not refer to any particular software or portion of web server 49a. See Ex. 1016 ¶¶ 119–163, pp. 106–123. Mr. Zoller’s” slip op. at 45
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We credit the testimony of Dr. Hernandez on step (a), as it explains in detail the deficiencies in Petitioner’s position and is consistent with the references’ disclosures discussed above. See Ex. 2004 ¶¶ 90–92, 95. Based on the full record developed during trial and for the reasons explained above, we are not persuaded by Petitioner’s arguments that Craft and Duursma teach step (a) of claim 1. Petitioner has not proven, by a preponderance of the evidence, that claim 1 would have been obvious based on Craft and Duursma under 35 U.S.C. § 103(a).” slip op. at 30
- Skill levelSkill level board ownOther
“Based on the full record developed during trial, including our review of the ’843 patent and the types of problems and prior art solutions described in the ’843 patent, we adopt the preliminary definition of the level of ordinary skill in the art, with one clarification. The definition includes both an education and a work experience component. The education component is satisfied by a bachelor’s degree in computer science or equivalent education. We see no reason why such an education must have been acquired in a “formal” setting as Patent Owner suggests—as opposed to, for example, via on-the-job training or work experiences that would be the equivalent of the education one would receive by obtaining a bachelor’s degree in computer science. We find that a person of ordinary skill in the art would have had a bachelor’s degree in computer science (or equivalent education) and 3–4 years of experience working with remote-accessed skill for purposes of this Decision.5” slip op. at 9
Patent outcomesUS 8,135,843 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,135,843 - PTAB · Oct 30, 2020 · IPR2020-00909 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because claims 15–17 were statutorily disclaimed, and denied Garmin’s motion to join IPR2020-00782.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Pursuant to 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” A disclaimer under 35 U.S.C. § 253(a) shall be recorded in the Office, and is “considered as part of the original patent.” See 35 U.S.C. § 253(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“As discussed above, because Patent Owner filed a statutory disclaimer in compliance with 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a) disclaiming all the challenged claims of the ’958 patent, no inter partes review is instituted in this proceeding. Moreover, for the same reason, the Board has denied institution in IPR2020-00782. Accordingly, there is no ongoing inter partes review in IPR2020-00782 to which the instant Petitioner could be joined. Therefore, pursuant to § 315(c), we deny the Motion for Joinder.” slip op. at 6
NonePatents in suitUS 6,976,958 - Fitbit, Inc. v. Philips North America LLCInstitution deniedPTAB · Oct 30, 2020 · IPR2020-00782 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Philips had recorded a statutory disclaimer of all challenged claims 15–17.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Pursuant to 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” (Emphasis added.) A disclaimer under 35 U.S.C. § 253(a) shall be recorded in the Office, and is “considered as part of the original patent.” See 35 U.S.C. § 253(a).” slip op. at 5
Discretionary denialPatents in suitUS 6,976,958 - Louisiana-Pacific Corporation v. Huber Engineered Woods LLCInstitution deniedPTAB · Aug 20, 2020 · IPR2020-00605 · APJ Michael L Woods · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable under any of its three obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“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). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner’s challenges are based on obviousness. Pet. 17. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedPrinted publication not establishedMixed
“the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (“Hulu”).5 5 The Decision to Institute in IPR2019-00919, in which many of the references cited in the present case also were at issue, was entered before the Board’s precedential decision in Hulu. Compare IPR2019-00919, Paper 9 (dated Oct. 8, 2019), with Hulu, Paper 29 (dated Dec. 20, 2019). Here, we assess the sufficiency of Petitioner’s evidence as to whether APA, StoGuard- 2001, and StoGuard-2003 qualify as printed publications in view of the guidance provided in Hulu. We note that the Petition was filed on February 19, 2020, such that Petitioner also had the benefit of the guidance provided in Hulu when filing its Petition.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner submits that the ordinary and customary meaning applies to the claimed terms and does not propose construction of any particular claim term. See Pet. 24. Patent Owner, on the other hand, proposes that the term “the first/second structural/OSB panel comprises a bulk water resistant and water vapor permeable barrier” requires construction. Prelim. Resp. 14. For purposes of this decision, we discern no need to construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe 4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Skill levelSkill level board ownDecided for patent owner
“The parties propose to adopt the same definition that we applied in co-pending IPR2019-00919. See Pet. 24; see also Prelim. Resp. 13. Based on our review of the ’140 patent, the types of problems and solutions described in the ’140 patent and applied prior art, for purposes of this decision, we agree with the parties and determine that a person having ordinary skill in the art would have had degree in civil engineering or building, material or wood science, or other degree, if such other degree required coursework or experience in the pertinent technology and two years of industry experience or equivalent therein. See IPR2019-00919, Paper 9, 14.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,702,140 - Louisiana-Pacific Corporation v. Huber Engineered Woods LLCInstitution deniedPTAB · Aug 20, 2020 · IPR2020-00604 · APJ Michael L Woods · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any of claims 1–20 was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that the record does not demonstrate a reasonable likelihood that Petitioner will prevail with respect to any claim challenged in the Petition. We, therefore, do not institute inter partes review of the ’159 patent. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that, no inter partes review is instituted.” slip op. at 38
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 Because we deny institution upon consideration of the merits of Petitioner’s challenges (see infra Part II), Patent Owner’s argument that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under the factors set forth in the recent precedential Order in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (see Prelim. Resp. 17–18) is moot and we do not address it in this Decision.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“For purposes of this decision, we discern no need to construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Skill levelSkill level board ownDecided for petitioner
“The parties propose to adopt the same definition that we applied in co-pending IPR2019-00919. See Pet. 24–25; see also Prelim. Resp. 13. Based on our review of the ’159 patent, the types of problems and solutions described in the ’159 patent and applied prior art, for purposes of this decision, we agree with the parties and determine that a person having ordinary skill in the art would have had degree in civil engineering or building, material or wood science, or other degree, if such other degree required coursework or experience in the pertinent technology and two years of industry experience or equivalent therein. See IPR2019-00919, Paper 9, 14.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,689,159 - Louisiana-Pacific Corporation v. Huber Engineered Woods LLCInstitution deniedPTAB · Aug 20, 2020 · IPR2020-00596 · APJ Michael L Woods · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable over any of its three obviousness grounds.
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). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner’s challenges are based on obviousness. Pet. 17. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-called” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“As the Board held in a precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (“Hulu”).5” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, however, we do not consider StoGuard’s waterproof coating or joint filler in our analysis. See supra Part II.E.9.b. Without the benefit of StoGuard-2001 or StoGuard-2003, we are not persuaded that a skilled artisan would have replaced APA’s housewrap with Peng’s caulk or tape to improve water resistance. APA’s housewrap covers both the panels and the joints. See, e.g., Ex. 1005, Fig. 12.27. Assuming arguendo that Peng teaches a joint sealant, as Petitioner asserts (Pet. 32), we are not persuaded that a skilled artisan would have replaced APA’s housewrap with Peng’s joint sealant to improve water resistance, as removal of APA’s housewrap would leave APA’s panels exposed to water intrusion. In other words, even if Peng’s joint sealant seals the joints between adjacent panels, the sealant would not seal the panels themselves, and removing APA’s housewrap would leave the panels exposed to water intrusion. Based on the record before us, Petitioner has not established that APA in view of Peng satisfies the claimed sealant for sealing the joint between the proximate edges of two adjacent panels.” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“4. Analysis Each of independent claims 1, 12, and 20 recites, “lignocellulosic panels.” Ex. 1001, 21:51, 22:29, 23:8. Petitioner submits that “Forbes discloses a lignocellulosic structural wall panel,” citing page 1 of Forbes. Pet. 60. Page 1 of Forbes indeed discloses that prior art systems disclose plywood or OSB panels, yet these wood or OSB panels are not the “panels” that Petitioner points to in satisfying the claim limitations. Rather, and as explained above, Petitioner relies on Forbes’s insulation material 52 to satisfy the claimed adjacent panels, yet Forbes’s “panels” are made of insulation material, typically expanded polystyrene. See Ex. 1038, 9:7–15. Petitioner does not point to anything in Forbes that discloses that “panels” 52 are made from wood or other lignocellulosic material. Nor does Petitioner contend this would have been obvious. See Pet. 63–64. As such, we agree with Patent Owner that Petitioner’s challenge is deficient in at least this respect. We also agree with Patent Owner that this challenge fails to satisfy the claimed sealant or sealing the joint between two adjacent panels, as called for in the claims. See Ex. 1001, 21:61–62 (claim 1), 22:22 (claim 12), 23:23–24 (claim 20). Petitioner cites to Forbes for disclosing a sealant for the joint between adjacent panels (Pet. 61), yet we find no such disclosure. The “sealant” that Petitioner appears to refer to is instead an adhesive for affixing second layer 54 to first layer 52. Ex. 1038, 11:12–13 (“A suitable adhesive is PVA Dispersion Glue for Assembly . . . .”). Petitioner also reasons, in the alternative, that a skilled artisan would have used “the Flack membrane as a form of or substitute for the ‘second layer’ of Forbes, with the joint tape of Van Wagoner, motivated to improve resistance to water infiltration with a cost-effective and functionally effective alternative to housewraps.” Pet. 63. This reasoning, however, falls short for at least two reasons. First, Petitioner proposes that the combination is an “alternative to housewraps,” yet Petitioner’s challenge does not propose to use a housewrap, as Forbes’s “barrier layer” 54 is not a housewrap. Second, and as discussed above, the Petition fails to cite to any evidence, such as testimony or citations to the record, to support a finding that the combination would either improve water resistance or reduce costs. See supra Part II.E.9.d. Petitioner does not explain how Forbes’s water-resistive barrier and sealants are deficient at resisting water or how substituting Flack’s membrane or Van Wagoner’s seam tape would have improved Forbes’s water resistance or reduce costs such that one of ordinary skill in the art would have been motivated to make this substitution. See 37 C.F.R. § 42.104(b)(5). Although Petitioner also relies on Peng and Elliott in challenging independent claim 1 under Ground 2 (see Pet. 19), Petitioner cites to nothing in either of these references that overcomes the deficiencies discussed above (see id. at 60–64). 5. Summary For the foregoing reasons, Petitioner has not established a reasonable likelihood of prevailing on its contention that Forbes in view of Flack or Van Wagoner renders claim 1, 12, or 20 unpatentable. Further, Petitioner does not contend that the other secondary references relied upon in challenging the dependent claims remedy these deficiencies. See Pet. 63–68. Accordingly, Petitioner has not established a reasonable likelihood of prevailing on its contentions based on Forbes that any of claims 1–20 are unpatentable.” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,474,197 - Motorola Mobility LLC v. Intellectual Ventures II LLCRehearing deniedPTAB · Jul 22, 2020 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Motorola’s rehearing request, leaving intact the remand decision that claims 1–4, 7, and 18 were not shown unpatentable on the instituted grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 3
- Expert testimonyPatent owner expert creditedDecided for patent owner
“that Dr. Tewfik’s testimony is not credible because he has “no personal knowledge” and “merely parrots the inventor’s claim chart.” Req. 6. We disagree, because we considered and analyzed expressly Petitioner’s argument and the basis for Dr. Tewfik’s testimony. Remand Dec. 27, 30. We determined that Dr. Tewfik’s testimony was credible, in that it was testimony concerning his opinion with respect to the claim chart, and also that his testimony was based, at least in part, on his personal experience with Windows 98 and its functionalities. Id. at 30. Indeed, the Federal Circuit noted that the rule of reason requires us to consider all pertinent evidence, and then noted explicitly that Dr. Tewfik’s testimony was one example of such pertinent evidence that needed to be considered. See Intellectual Ventures II, 692 F. App’x at 627–628. For these reasons, we are not persuaded that we misapprehended or overlooked the credibility of Dr. Tewfik’s testimony.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“not have changed the outcome of our Decision. In Figure 4, Kellerer shows a block with a central control unit, address management, routing, an application server, and network managers. Exhibit 1007, 45. This block diagram, however, does not specifically address whether or not Internet access requires an external service controller. Moreover, Petitioner provides no citations to any passages that describe the functions of the central control unit, address management, routing, the application server, and the network managers. See generally Req. 9–13. We are not persuaded that Kellerer teaches all of the components that are necessary to enable Internet access based on Figure 4 alone. That these components are located inside the car, as shown in Figure 3, also does not specifically address whether or not Internet access requires an external service controller. Accordingly, we are not persuaded that Figures 3 and 4 render the stand-alone system limitation obvious.” slip op. at 12
§ 103 obviousnessPatents in suitUS 7,382,771
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.