• Microsoft Corp. v. Windy City Innovations LLCInstitution denied
  PTAB · Nov 29, 2016 · IPR2016-01138 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 18–49, 54–57, and 59–63 would have been obvious over Brown and Tang.

  RulingsInstitution decision

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

    “alternatives” to allow members in “at least one group . . . [to] send communications and receive communications . . . wherein at least some of the communications are received in real time via the Internet network.” See, e.g., Ex. 1001, 23:59–67 (emphases added). Here, “wherein at least some of the communications are received in real time” refers to the communications sent and received by members of “at least one group.” Claim 1 is clear that both client software alternatives must “allow at least some of the participator computers to form at least one group in which members can send communications and receive communications.” Thus, the communications in a group pursuant to each of the client software alternatives must include real-time communications.” slip op. at 9

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

    “alternatives” to allow members in “at least one group . . . [to] send communications and receive communications . . . wherein at least some of the communications are received in real time via the Internet network.” See, e.g., Ex. 1001, 23:59–67 (emphases added). Here, “wherein at least some of the communications are received in real time” refers to the communications sent and received by members of “at least one group.” Claim 1 is clear that both client software alternatives must “allow at least some of the participator computers to form at least one group in which members can send communications and receive communications.” Thus, the communications in a group pursuant to each of the client software alternatives must include real-time communications.” slip op. at 9

  § 103 obviousness
  Patents in suitUS 8,473,552
• Oracle America, Inc. v. Realtime Data LLCInstitution denied
  PTAB · Jul 1, 2016 · IPR2016-00375 · APJ J John Lee · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 4, 10-12, and 18-20 were obvious over Kawashima and Sebastian.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Its challenge to the remaining claims also fails because each claim is dependent on claim 1. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms. Techs., LLC, Case IPR2015-00017, 2015 WL 1777146, at *8 (PTAB Apr. 8, 2015).” slip op. at 12

  • BurdenDenied

    “In sum, Petitioner does not explain adequately how Kawashima and Sebastian teach an individual memory device that meets the limitations of claim 1. To the extent Petitioner intended to allege that multiple structures in Kawashima together teach these limitations, the Petition does not explain such an allegation clearly, nor does it explain how or why a person of ordinary skill would have combined those different elements—some from different embodiments of Kawashima—to arrive at the recited memory device and its claimed characteristics. See Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (holding that two embodiments in a single reference could be combined to render a claim obvious where an ordinary artisan would have been motivated to combine them). As discussed above, each limitation of claim 1 that recites a “memory device” refers to the same memory device, and it is unclear how the multiple different memory devices from different embodiments in Kawashima relied on by Petitioner teach the “memory device” of claim 1. Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Its challenge to the remaining claims also fails because each claim is dependent on claim 1. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms. Techs., LLC, Case IPR2015-00017, 2015 WL 1777146, at *8 (PTAB Apr. 8, 2015).” slip op. at 11

  Nonecites KSR · Graham
  Patents in suitUS 7,415,530
• Oracle America, Inc. v. Realtime Data LLCInstitution denied
  PTAB · Jul 1, 2016 · IPR2016-00377 · APJ Jason J Chung · IPR · Institution

  The Board denied institution on claims 1, 2, 4–6, 9, 11, 21, 22, 24, and 25 because the petition did not adequately show the same memory device met claim 1’s limitations.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms.” slip op. at 14

  • BurdenDenied

    “Petitioner, therefore, fails to explain how Kawashima and Sebastian teach an individual memory device that meets the limitations of claim 1. To the extent Petitioner intended to allege that multiple structures in Kawashima together teach these limitations, the Petition does not explain such an allegation clearly, nor does it explain how or why a person of ordinary skill would have combined those different elements—some from different embodiments of Kawashima—to arrive at the recited memory device and its claimed characteristics. See Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (holding that two embodiments in a single reference could be combined to render a claim obvious where an ordinary artisan would have been motivated to combine them). Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms.” slip op. at 14

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

    “Petitioner, therefore, fails to explain how Kawashima and Sebastian teach an individual memory device that meets the limitations of claim 1. To the extent Petitioner intended to allege that multiple structures in Kawashima together teach these limitations, the Petition does not explain such an allegation clearly, nor does it explain how or why a person of ordinary skill would have combined those different elements—some from different embodiments of Kawashima—to arrive at the recited memory device and its claimed characteristics. See Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (holding that two embodiments in a single reference could be combined to render a claim obvious where an ordinary artisan would have been motivated to combine them).” slip op. at 14

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

    “We decline to adopt Petitioner’s proposed claim construction, at least because Petitioner’s proposed claim construction omits the claimed “memory device” and its relationship to the faster storage limitation. See Prelim. Resp. 13. As noted by Patent Owner, “a claim should be constructed so that each word in the claim has meaning.” Id., citing Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) and In re Wilson, 424 F.2d 1382, 1385 (C.C.P.A.1970). Accordingly, no claim terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,116,908
• Oracle America, Inc. v. Realtime Data LLCInstitution denied
  PTAB · Jul 1, 2016 · IPR2016-00376 · APJ J John Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claim 24 was obvious over Kawashima, Sebastian, and Chu.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 24, Petitioner has not met its burden. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms. Techs., LLC, Case IPR2015-00017, 2015 WL 1777146, at *8 (PTAB Apr. 8, 2015).” slip op. at 16

  • BurdenDecided for patent owner

    “Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 24, Petitioner has not met its burden. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms. Techs., LLC, Case IPR2015-00017, 2015 WL 1777146, at *8 (PTAB Apr. 8, 2015).” slip op. at 16

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

    “the memory device stores data. Prelim. Resp. 37-38. The specification of the ’530 Patent supports this distinction. See, e.g., Ex. 1101, 2:19-42, 9:38- 67. Thus, the identified disclosures of Sebastian do not teach adjustments in consideration of the “bandwidth of the memory device,” as recited in claim 24. Dr. Storer’s testimony that a person of ordinary skill would, nonetheless, understand that system parameters could be adjusted according to other bandwidths, including the bandwidth of the memory device, is conclusory and unpersuasive in light of the available record. See 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.”).” slip op. at 13

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,415,530
• DISH Network L.L.C. / Sirius XM Radio Inc. v. Dragon Intellectual Property, LLCAll claims unpatentable
  PTAB · Jun 15, 2016 · IPR2015-00499 · APJ Stacey G White · IPR · Final written decision

  Claims 1–4, 7–10, 13, and 14 are unpatentable as obvious over Goldwasser and Yifrach, with Vogel additionally applied to claims 2–4 and 13.

  RulingsFinal written decision

  • BurdenUnpatentable

    “preponderance of the evidence that claims 1, 7–10, and 14 would have been obvious, under 35 U.S.C. § 103(a), over the combination of Goldwasser and Yifrach. C. Obviousness of Claims 2–4 and 13 over Goldwasser, Yifrach, and Vogel” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Petitioner’s argument. Reply 7. Petitioner is not arguing that Goldwasser should be modified to include the freeze and playback functionality of Yifrach; instead, Petitioner’s ground is directed to implementing Goldwasser’s user control panel with a two-button user interface as described in Yifrach. Id. at 7–8. As discussed above, we find that one of ordinary skill in the art would have been motivated to implement Goldwasser’s user control panel with buttons and that such a modification would have been within the knowledge of one of ordinary skill in the art. As to the problems addressed by the Goldwasser and Yifrach, Patent Owner asserts that “‘problems’ articulated in the references demonstrate that they are not ‘the same,’ or even similar in a meaningful way.” PO Resp. 34. We disagree with Patent Owner’s assertion. Yifrach’s device is designed to remedy the problem of a listener missing a portion of a previously broadcast program by allowing the listener to playback a portion that may have been missed due to the listener’s inattentiveness. Id. at 34–35 (citing Ex. 1003, 1:9–20, 1:24–28). Goldwasser allows a user to cease watching a program in order to handle an interruption such as a phone call and then resume viewing the program after the completion of the interruption. Id. (citing Ex. 1005, 1:13–18, 1:26–32, 1:43–49). We find that Petitioner’s description of the field of common inquiry (“delayed playback of audio or visual information”) is reasonable in light of the evidence. See Pet. 56; Ex. 1010 ¶ 154. Like the ’444 patent, both cited references are directed to providing individuals with the ability to enjoy a broadcast program despite interruptions that may cause the user to step away from, or provide less than his or her full attention to, the broadcast. The references describe different reasons for the user’s distraction, but the common thread is that the user is not paying full attention to the broadcast and the user seeks a way to record and playback content that the user would have missed due to that distraction. Thus, we find that the cited references are analogous art because they are from the same field of endeavor, and that they are pertinent to the particular problem addressed in the ’444 patent. Based on the full record, we find that Petitioner has provided sufficient evidence of a motivation to combine Goldwasser and Yifrach. Accordingly, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of independent claims 1 and 14 over Goldwasser and Yifrach.” slip op. at 19

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

    “Owner asserts that “‘problems’ articulated in the references demonstrate that they are not ‘the same,’ or even similar in a meaningful way.” PO Resp. 34. We disagree with Patent Owner’s assertion. Yifrach’s device is designed to remedy the problem of a listener missing a portion of a previously broadcast program by allowing the listener to playback a portion that may have been missed due to the listener’s inattentiveness. Id. at 34–35 (citing Ex. 1003, 1:9–20, 1:24–28). Goldwasser allows a user to cease watching a program in order to handle an interruption such as a phone call and then resume viewing the program after the completion of the interruption. Id. (citing Ex. 1005, 1:13–18, 1:26–32, 1:43–49). We find that Petitioner’s description of the field of common inquiry (“delayed playback of audio or visual information”) is reasonable in light of the evidence. See Pet. 56; Ex. 1010 ¶ 154. Like the ’444 patent, both cited references are directed to providing individuals with the ability to enjoy a broadcast program despite interruptions that may cause the user to step away from, or provide less than his or her full attention to, the broadcast. The references describe different reasons for the user’s distraction, but the common thread is that the user is not paying full attention to the broadcast and the user seeks a way to record and playback content that the user would have missed due to that distraction. Thus, we find that the cited references are analogous art because they are from the same field of endeavor, and that they are pertinent to the particular problem addressed in the ’444 patent. Based on the full record, we find that Petitioner has provided sufficient evidence of a motivation to combine Goldwasser and Yifrach. Accordingly, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of independent claims 1 and 14 over Goldwasser and Yifrach.” slip op. at 19

  • Expert testimonyPetitioner expert creditedOther

    “Yifrach when these buttons are activated is irrelevant to the Grounds of unpatentability. As to the claimed functionality, Petitioner relies on the control circuit functionality of Goldwasser, not Yifrach.” Reply 3 (citing Pet. 43–47, 56). In other words, Petitioner is relying upon Yifrach to teach the two-button interface and not the actions that occur when those buttons are pushed. Petitioner’s declarant Mr. Wechselberger testifies that “the use of a separate ‘Freeze’ and ‘Playback’ buttons, as disclosed in Yifrach . . . was a well-known user interface design choice to a person of ordinary skill in the art at the time of the alleged invention.” Ex. 1010 ¶ 91. Yifrach is a reference that uses such a two-button interface. Goldwasser included a detailed description of the simultaneous recording and playback found in the limitations of claims 1 and 14. Thus, when the teachings are viewed together, they would have taught the whole of the disputed limitations. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Therefore, our analysis must go further than reviewing what is taught by each isolated reference. Instead, we must focus on what one of ordinary skill in the art would learn from the combination of teachings found in the cited references. Id. Pursuant to such analysis, we find that Yifrach’s playback and freeze keys combined with Goldwasser’s simultaneous recording and playback” slip op. at 15

  Patent outcomesUS 5,930,444 unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 5,930,444
• Avx Corporation v. Wilson Greatbatch Ltd.All claims unpatentable
  PTAB · May 2, 2016 · IPR2015-00101 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–14, 25–32, 35, 36, 47, and 48 are unpatentable: claims 1–4 and 25–27 as anticipated by Burger, claims 5–9 by Hildegard, and the remaining claims as obvious over Evans I and Hildegard; amendment denied.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “As the moving party, it is Patent Owner’s burden to prove that its proposed claims are patentable over the prior art. To meet that burden with respect to Evans I and Hildegard, Patent Owner must prove that the boric acid in Electrolyte B would materially affect the basic and novel properties of Patent Owner’s invention, such that it would be excluded from the electrolytes of proposed claims 49–51. In that regard Patent Owner asserts, without citation to Hildegard or any other evidence, that Hildegard “clearly assert[s]” that boric acid would have a material effect. Reply 8 (quoting Prelim. Resp. 17). We are not persuaded by this attorney argument.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “c. Evans I In View Of Hildegard The Petition asserts, and we determine, that it would have been obvious to modify the capacitor of Evans I to substitute its electrolyte with Hildegard’s Electrolyte B as a mere substitution of a prior art element according to its established function. Pet. 43 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007); Ex. 1011 ¶¶ 26–27). Indeed, Patent Owner conceded that this was an obvious modification. PO Resp. 1.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Petitioner offers declaration testimony from Jan Petrzilek, Ph.D., that some of the acetic acid in Electrolyte B would react with the ammonia to form ammonium acetate. Ex. 1011 ¶ 19. Dr. Petrzilek, implying that some of the phosphoric acid also would react with the ammonia, testifies that not all of either the acetic acid or phosphoric acid would react with the ammonia, and, thus, some amount of those acids remain in Electrolyte B. Ex. 1011 ¶ 19. Dr. Petrzilek explains that this is because the molar amount of ammonia is lower than the molar amounts of those acids. Id. Thus, Dr. Petrzilek concludes that the final mixture of Electrolyte B necessarily includes ammonium acetate, acetic acid, and phosphoric acid. Id. We find Dr. Petrzilek’s testimony to be credible and persuasive. The final mixture of Electrolyte B contains water “up to about 85%” and ethylene glycol “up to about 95%,” which meets element (c)(i) of each of proposed claims 49–51. Ex. 1004, 2:50–52. After the ammonia and acetic acid react, the resulting ammonium acetate would have to constitute less than about 50% of the electrolyte by weight, which meets element (c)(ii) of each of proposed claims 49–51. Ex. 1011 ¶ 19. After the ammonia reacts with both acids, some amount of each acid would remain, and such remaining amounts would be less than the maximum limits recited in element (c)(iii) of each of proposed claims 49–51. Ex. 1011 ¶ 19; Pet. 26– 27.” slip op. at 10

  Patent outcomesUS 6,219,222 unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 6,219,222
• Cisco Systems, Inc. / Quantum Corporation et al. v. Crossroads Systems, Inc.All claims unpatentable
  PTAB · Mar 17, 2016 · IPR2014-01463 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–53 are unpatentable: claims 1–14, 16–33, 35–50, and 53 as obvious over CRD-5500 Manual and HP Journal; claims 15, 34, 51, and 52 over those references plus Fibre Channel Standard.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “The construction proposed by Patent Owner is overly narrow. Although Patent Owner emphasizes that the map must identify specific host devices, it does not explain persuasively why the claim language should be construed to exclude doing so via intermediate identifiers. See PO Resp. 5– 10. Patent Owner does not identify any disclosure in the ’041 patent’s specification that clearly disavows mapping to a device indirectly, or mapping to a device via an intermediate identifier that could identify a different host if the system were configured differently. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (holding that “words of manifest exclusion or explicit disclaimers in the specification are necessary to disavow claim scope” (internal quotations omitted)). Patent Owner’s discussion of Figure 3, for example, is insufficient to compel a narrow construction of the term because Patent Owner analyzes only a preferred embodiment of the invention. See PO Resp. 8–10; see, e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (holding that limitations should not be imported from preferred embodiments into the claims absent a clear disclaimer of claim scope in the specification).” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Patent No. 6,425,035 B2 (“the ’35 patent”) and U.S. Patent No. 7,051,147 (“the ’147 patent”). The ’041 patent, the ’035 patent, and the ’147 patent are related to one another because each is a continuation of one or more patent applications that are continuations of application No. 09/001,799, filed on December 31, 1997, now U.S. Patent No. 5,941,972. We note that a district court in a related case construed the claim terms “map” and “mapping” in the ’035 patent as follows: To create a path from a device on one side of the storage router to a device on the other side of the router. A “map” contains a representation of devices on each side of the storage router, so that when a device on one side of the storage router wants to communicate with a device on the other side of the storage router, the storage router can connect the devices. Ex. 1010, 12. In IPR2014-01226 and IPR2014-01544 we concluded that the district court’s construction reproduced above is the broadest reasonable interpretation of certain claim limitations in the ’035 patent and the ’147 patent similar to the “map” limitations in the ’041 patent. Cisco Sys., Inc. v. Crossroads Sys., Inc., Case IPR2014-01266, slip op. at 10 (PTAB Jan. 29, 2016) (Paper 51); Cisco Sys., Inc. v. Crossroads Sys., Inc., Case IPR2014- 01544, slip op. at 8–9 (PTAB Jan. 29, 2016) (Paper 50). After considering the evidence of record, we determine the above claim construction from the district court also corresponds to the broadest reasonable interpretation of the “map” limitations of claims 1, 20, and 37 of the ’041 patent and adopt it for purposes of this Decision.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “detailed analysis of why a person of ordinary skill in the art would have been motivated to combine the CRD Manual and the HP Journal6 in the manner asserted by Petitioners. Pet. 17–21 (citing Ex. 1003 ¶¶ 48–57). Specifically, Petitioners contend: (1) the CRD Manual explains that the disclosed CRD- 5500 controller has a modular design capable of accepting various I/O modules; (2) the HP Journal describes the benefits of FC technology over SCSI technology; (3) the HP Journal discloses the replacement of SCSI with FC, including the use of SCSI commands with FC frames. Id. For example, the HP Journal discusses various advantages of FC over SCSI as a transport medium technology, including advantages in bandwidth and addressability, and explains how some FC controllers are compatible with SCSI devices. Id.; see, e.g., Ex. 1006, 94–95, 99–101. Patent Owner does not dispute in its 6 These portions of the HP Journal relied on by Petitioners share a common author (Meryem Primmer), and similar subject matter (FC technology and its implementation), as well as the same apparent publication date in the same issue of the journal. Patent Owner did not dispute that one of ordinary skill would have combined the teachings of the different articles in the HP Journal. Based on the full record after trial, we agree and consider the articles collectively, as the parties have done throughout the proceeding. Patent Owner Response that a person of ordinary skill7 would have had reason to combine the teachings of these references. Based on the full record after trial, Petitioners have articulated a sufficient reason to combine the CRD Manual and the HP Journal with rational underpinnings supported by the evidence. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 15

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “Establishing long-felt need requires objective evidence that an art- recognized problem existed in the art for a long period of time without solution.” Ex parte Jellá, 90 USPQ2d 1009, 1019 (BPAI 2008) (precedential). We have reviewed the cited testimony (Ex. 2029, 103:18–24, 104:15– 105:1, 136:6–14), and find it insufficient to establish a long-felt need. The testimony is directed to whether the term “storage router” was used in the art in the late 1990s. See, e.g., id. at 104:24–105:1. It does not address what the needs or problems of the art were at that time. Thus, we do not find that the testimony supports sufficiently Patent Owner’s contention of long-felt need. slip op. at 33

  Patent outcomesUS 7,934,041 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,934,041
• Cisco Systems, Inc. / Quantum Corporation et al. v. Crossroads Systems, Inc.All claims unpatentable
  PTAB · Mar 17, 2016 · IPR2015-00854 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–53 are unpatentable as obvious: claims 1–14, 16–33, 35–50, and 53 over CRD-5500 Manual and HP Journal; claims 15, 34, 51, and 52 with Fibre Channel Standard.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownTerm construed petitioner constructionDecided for petitioner

    “The construction proposed by Patent Owner is overly narrow. Although Patent Owner emphasizes that the map must identify specific host devices, it does not explain persuasively why the claim language should be construed to exclude doing so via intermediate identifiers. See PO Resp. 5– 10. Patent Owner does not identify any disclosure in the ’041 patent’s specification that clearly disavows mapping to a device indirectly, or mapping to a device via an intermediate identifier that could identify a different host if the system were configured differently. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (holding that “words of manifest exclusion or explicit disclaimers in the specification are necessary to disavow claim scope” (internal quotations omitted)). Patent Owner’s discussion of Figure 3, for example, is insufficient to compel a narrow construction of the term because Patent Owner analyzes only a preferred embodiment of the invention. See PO Resp. 8–10; see, e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (holding that limitations should not be imported from preferred embodiments into the claims absent a clear disclaimer of claim scope in the specification).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “detailed analysis of why a person of ordinary skill in the art would have been motivated to combine the CRD Manual and the HP Journal6 in the manner asserted by Petitioners. Pet. 17–21 (citing Ex. 1003 ¶¶ 48–57). Specifically, Petitioners contend: (1) the CRD Manual explains that the disclosed CRD- 5500 controller has a modular design capable of accepting various I/O modules; (2) the HP Journal describes the benefits of FC technology over SCSI technology; (3) the HP Journal discloses the replacement of SCSI with FC, including the use of SCSI commands with FC frames. Id. For example, the HP Journal discusses various advantages of FC over SCSI as a transport medium technology, including advantages in bandwidth and addressability, and explains how some FC controllers are compatible with SCSI devices. Id.; see, e.g., Ex. 1006, 94–95, 99–101. Patent Owner does not dispute in its 6 These portions of the HP Journal relied on by Petitioners share a common author (Meryem Primmer), and similar subject matter (FC technology and its implementation), as well as the same apparent publication date in the same issue of the journal. Patent Owner did not dispute that one of ordinary skill would have combined the teachings of the different articles in the HP Journal. Based on the full record after trial, we agree and consider the articles collectively, as the parties have done throughout the proceeding. Patent Owner Response that a person of ordinary skill7 would have had reason to combine the teachings of these references. Based on the full record after trial, Petitioners have articulated a sufficient reason to combine the CRD Manual and the HP Journal with rational underpinnings supported by the evidence. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 15

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “Establishing long-felt need requires objective evidence that an art- recognized problem existed in the art for a long period of time without solution.” Ex parte Jellá, 90 USPQ2d 1009, 1019 (BPAI 2008) (precedential). We have reviewed the cited testimony (Ex. 2029, 103:18–24, 104:15– 105:1, 136:6–14), and find it insufficient to establish a long-felt need. The testimony is directed to whether the term “storage router” was used in the art in the late 1990s. See, e.g., id. at 104:24–105:1. It does not address what the needs or problems of the art were at that time. Thus, we do not find that the testimony supports sufficiently Patent Owner’s contention of long-felt need. The article cited by Patent Owner (Ex. 2038), which suggests that a problem might have existed in file system performance generally, also does not establish that there was long-felt need for the claimed invention. Patent Owner presented no evidence as to how long this problem had been recognized, the extent of the problem, whether it remained unresolved at the time of the invention, or whether the invention resolved this need. See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332–33 (Fed. Cir. 2009). As such, we find that Patent Owner has not shown adequately that there was any long-felt need for the claimed invention. slip op. at 33

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusDecided for petitioner

    “Evidence of commercial success “is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). As a threshold matter, a sufficient nexus between Patent Owner’s commercial product and the features of its claimed invention has not been established. The evidence does not show sufficiently that the items listed in Exhibit 2044 embody the claimed invention, or that sales of the listed products resulted from novel, non-obvious features of the claimed invention rather than other features. See Ormco Corp., 463 F.3d at 1312–13 (evidence did not show that commercial success was due to claimed and novel features). Even if Patent Owner had established a nexus between its marketed technology and the invention claimed in the patent, its commercial success argument would not be persuasive. Patent Owner’s declarant’s statements that certain products include “mapping” or “access controls” (Ex. 2043 ¶¶ 5– 6) are insufficient to show commercial success of the claimed invention. An important component of the commercial success inquiry is determining market share associated with the alleged success, relative to all competing products. In re Applied Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012). Even sales volume, if provided without market share information, is only weak evidence, if any, of commercial success. Id. at 1299. Here, the fact that Patent Owner sold a certain number of these devices and that they made up a certain share of its own sales is insufficient to establish commercial success without some context about the larger market. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).” slip op. at 34

  Patent outcomesUS 7,934,041 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,934,041
• Unified Patents Inc. v. Dragon Intellectual Property, LLCAll claims unpatentable
  PTAB · Feb 5, 2016 · IPR2014-01252 · APJ Stacey G White · IPR · Final written decision

  Claims 1, 2, 7, 8, 10, 13, and 14 are unpatentable as obvious over Ulmer and Goldwasser.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Ulmer and Goldwasser. Pet. 35–51. We have reviewed Petitioner’s detailed explanation identifying where each limitation allegedly would have been taught by Ulmer and Goldwasser, along with the testimony of Petitioner’s declarant, Dr. Hemani. See id.; Ex. 1013; Reply 12–24. We also have reviewed Patent Owner’s assertions and evidence as to why Petitioner’s explanations and evidence are deficient. PO Resp. 17–49; Ex. 2022 (Declaration of Adam Goldberg). On this record, we are persuaded that Petitioner has shown by a preponderance of the evidence that Ulmer and Goldwasser teach each limitation of claims 1 and 2.” slip op. at 10

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

    “Petitioner proffers constructions for a number of claim terms. Pet. 18–24. No claim terms require express construction for purposes of this Decision. B. Obviousness of Claims 1, 2, 7, 8, 10, 13, and 14 over Ulmer and Goldwasser” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “there was no motivation to combine Ulmer and Goldwasser. PO Resp. 42– 47. At the Oral Hearing, however, Patent Owner withdrew this argument. Tr. 32:4–11. Regardless, we find that Petitioner has provided sufficient evidence of a motivation to combine. Petitioner explains that a person of ordinary skill in the art would be motivated to combine Goldwasser’s disclosure with Ulmer’s because both references “address the same problem: providing simultaneous recording and playback as a mechanism to allow a viewer to skip commercials.” Pet. 25. Petitioner elaborates that due to extensive overlap between the systems of Ulmer and Goldwasser, a person of ordinary skill in the art would have been led to use various design details from Goldwasser’s teachings in a combination of Ulmer’s and Goldwasser’s systems. Id. at 25–26 We find that Petitioner’s assertions and evidence provide rational underpinning for a conclusion that it would have been obvious to combine the teachings of Ulmer and Goldwasser. And we are persuaded Petitioner’s assertions and evidence show sufficiently that the resulting system would include each of the limitations of independent claim 1 and dependent claim 2. Claim 2 depends from claim 1 and recites that the claimed apparatus “further compris[es] a remote control unit, and wherein said keyboard is housed in said remote control unit.” Petitioner notes that Ulmer explicitly discloses that its system includes a remote control unit. Id. at 28, 37, 51. We agree with Petitioner’s analysis of the recited art’s disclosures as applied to claim 2. Accordingly, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of independent claim 1 and dependent claim 2 over Ulmer and Goldwasser.” slip op. at 17

  • Obviousness (§103) › KSR rationalesDecided for petitioner

    “In addition, we also find persuasive Petitioner’s argument that it would have been an obvious design choice to use play and record buttons on a remote control to control Ulmer’s device. See Pet. 14 (citing Ex. 1013 ¶ 38). Petitioner has provided evidence that such remote controls were well known at the time of the application for the ’444 patent. See Reply 15 (citing Ex. 1013 ¶¶ 25, 27–28; Ex. 1004); Tr. 10–11 (citing Ex. 1013 ¶ 28; Ex. 1004, 2; Ex. 1008, 2:29–34). Based on this evidence, we are persuaded it would have been within the knowledge and abilities of one of ordinary skill in the art to control Ulmer’s device with a remote control that includes play and record buttons.” slip op. at 16

  Patent outcomesUS 5,930,444 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,930,444
• Gordon * Howard Associates, Inc. v. Lunareye, Inc.All claims unpatentable
  PTAB · Feb 2, 2016 · IPR2014-01213 · APJ J John Lee · IPR · Final written decision

  Claims 1–24 are unpatentable under § 103 based on the instituted combinations of Mohan, Oncore, Roach, and Lewis.

  RulingsFinal written decision

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

    “accompanying description requiring that GPS Receiver 48 and Controller 36 be physically distinct components. Even if there was such a requirement, however, “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). LunarEye’s reliance on other figures and descriptions of embodiments in the specification is unpersuasive for the same reason. See PO Resp. 20–21 & n.48; see also Ex. 2031 ¶¶ 14–15 (LunarEye’s proffered expert relying on descriptions of embodiments for opinion that data selecting device is external to GPS receiver). Merely describing a narrower embodiment does not constitute the clear disclaimer required to apply the limitation at issue to the claim. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). In addition, LunarEye also contends the claim language itself indicates the recited GPS receiver (or location-signal generating device) and data selector are physically distinct components. PO Resp. 22. LunarEye asserts claims 1 and 2 recite that the GPS receiver produces “GPS data” first, and that the data selector operates on that output of the GPS receiver to produce “selected GPS data.” Id. at 22–23. According to LunarEye, this claim language requires that the GPS receiver and data selector be “distinct,” i.e., physically separate. See id. at 20–22. The claim language, however, does not support LunarEye’s position. Although claims 1 and 2 recite the GPS receiver and data selector separately and recite distinct functions for each, nothing in those claims indicates these structures must be physically separated or precludes one being housed physically within the other, particularly under their broadest reasonable interpretation. LunarEye does not present any compelling evidence indicating otherwise.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “to combine Mohan, Oncore, and Roach. Pet. 12–16. For example, GH argues that both Mohan and Oncore are directed to GPS receiver technology, and that combining them would have involved a simple substitution that would achieve predictable results. Id. at 12. GH also contends that one of ordinary skill in the art would have been motivated by Oncore’s discussion of the advantages of its GPS receiver technology, and that applying that technology in combination with Mohan would have amounted to nothing more than the use of a prior art element for its established function to obtain its stated benefits. Id. at 12–13 (citing Ex. 1007, 1.1). Likewise, GH asserts that combining Roach with Mohan would have involved a simple substitution with predictable results, which would have amounted to the use of Roach’s prior art cellular communications system for its established function to achieve its known benefits. Id. at 13–15 (citing Ex. 1008, 9:6– 30). In addition to the prior art references, GH also relies on the Declaration of Dr. Janky, whose testimony supports GH’s contentions. Ex. 1010 ¶¶ 96– 102. We have considered Dr. Janky’s testimony, including his underlying analysis and reasoning, and find it credible. Based on all of the evidence presented, including Dr. Janky’s testimony, GH has articulated sufficient reasoning with rational underpinning to support the conclusion that one of ordinary skill would have had reason to combine the teachings of Mohan, Oncore, and Roach in the manner advanced by GH. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “are unpersuasive. LunarEye argues that the asserted prior art references teach away from the combinations advanced by GH. PO Resp. 45–57. Specifically, LunarEye contends Mohan states that a device constructed according to its teachings should conform to certain size constraints to achieve adequate miniaturization. Id. at 48–52. The GPS device described in Oncore14 are too large and are, thus, incompatible with Mohan, according to LunarEye. Id. This argument is unpersuasive, however, because none of the claims of the ’035 patent require miniaturization, nor do they include any limitations restricting the size of the claimed apparatus or any recited component device. LunarEye does not identify any portion of Mohan that criticizes, discredits, or otherwise discourages combining Mohan and Oncore in the manner advanced by GH. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Merely describing the benefits of a miniaturized GPS device does not teach away from non-miniaturized devices. See id.; In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994). Moreover, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” Keller, 642 14 LunarEye does not argue that the GPS device of Lewis, or the communications devices of Roach, are incompatible with Mohan’s purported size restrictions. F.2d at 425. Thus, whether the Oncore GPS receiver is too large to be incorporated physically into the Mohan GPS device is inapposite, because the challenged claims do not recite any limitations on size.” slip op. at 27

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “MOTION TO SEAL GH moves to seal Exhibit 1028. Mot. Seal. 2. As this is the Final Written Decision, we consider GH’s Motion to Seal as a motion to expunge Exhibit 1028 from the record pursuant to 37 C.F.R. § 42.56. Exhibit 1028 was not relied on for this Decision. Consequently, GH’s motion is granted, and Exhibit 1028 will be expunged. ORDER Accordingly, it is: ORDERED that claims 1–24 of U.S. Patent No. 6,484,035 B2 are held unpatentable under 35 U.S.C. § 103; and FURTHER ORDERED that Exhibit 1028 is expunged from the record.” slip op. at 29

  Patent outcomesUS 6,484,035 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,484,035

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.