- One World Technologies, Inc. D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.Institution deniedPTAB · Dec 13, 2017 · IPR2017-01546 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that a majority of the General Plastic factors weighed strongly against institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“or should have known of the Kikuya reference at the time of filing its first two petitions (September 9, 2016). Petitioner does not provide any explanation as to why the reference could not have been found with a reasonably diligent search at the time of the earlier petitions. See General Plastic at 11 (“Petitioner . . . provided no explanation why it could not have found this new prior art earlier— prior to filing the first-filed petitions—through the exercise of reasonable diligence.”), 19 (“the record is devoid of any explanation why Petitioner could not have found the newly asserted prior art in any earlier search(es) through the exercise of reasonable diligence”). Furthermore, what bearing the Federal Circuit’s claim construction (or those of the Board or the District Court) had on whether the Kikuya reference reasonably could have been located earlier is not explained adequately in the Petition. In this regard, we note that Petitioner states that it requested the later patent search on February 23, 2017, which was shortly after receiving our decisions denying institution in Cases IPR2016-01772 and IPR2016-01774 on February 21, 2017. Petitioner makes no mention of how this factored into the decision to request the later patent search. Moreover, Petitioner states that it requested the patent search that yielded the Kikuya reference on February 23, 2017, and the District Court adopted a “broader construction” in an order issued April 7, 2017. Pet. 7. Given this sequence of events, we do not see how the scope of the patent search could have taken into account a “broader” claim construction that did not exist when Petitioner requested the later patent search. We agree with Patent Owner that factor (2) weighs in favor of exercising our discretion to deny the Petition. See Prelim. Resp. 10–14. In view of the foregoing, this factor weighs against institution.” slip op. at 6
Discretionary denialPatents in suitUS 7,224,275 - Mastercard International Incorporated v. William GreciaRehearing deniedPTAB · Dec 4, 2017 · IPR2017-00788 · APJ Jameson Lee · IPR · Rehearing
The Board denied Mastercard’s rehearing request, leaving in place the denial of institution on claims 1–26 because the Petition did not adequately explain how the prior art met the electronic identification reference limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). For reasons discussed below, we decline to modify the Decision to institute trial on any claim. Thus, Petitioner’s Request is denied.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Board concluded that the Petitioner’s evidence showed steps 1–5 and subpart (a) of step 6. (Decision pp. 32– 33). However, the Board determined that Petition did not show that the prior art taught subpart (b) of step 6, specifically “branding metadata of the encrypted digital media by writing . . . (b) the electronic identification reference into the metadata.”” slip op. at 3
- BurdenDecided for patent owner
“Petitioner in the Petition regarding subpart (b) of step 6 of independent claims 1 and 15, including the state of the art at the time of the claimed invention. Rather, as we indicated in the Decision, Petitioner has not adequately explained why that which Petitioner regards as the electronic identification reference written into the metadata, as recited in subpart (b) of step 6, is or comes from the login information supplied by the user, i.e., the user’s email address, that the iTunes® system had requested and received according to the prior steps of claims 1 and 15. Dec. 32–33. That is what claims 1 and 15 require, and sufficient explanation is lacking in the Petition.” slip op. at 3
NonePatents in suitUS 8,402,555 - Keeper Security, Inc. v. Cumberland Systems LLCInstitution deniedPTAB · Nov 20, 2017 · CBM2017-00057 · APJ Kevin W Cherry · CBM · Institution
The Board denied institution on claims 1–19 because Petitioner did not show that the patent qualified as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“We agree with Patent Owner that Petitioner has failed to show adequately that the ’647 patent “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service,” to qualify as a covered business method patent. As we explained above, Secure Axcess requires a challenged patent to “have a claim that contains . . . a financial activity element.” Secure Axcess, 848 F.3d at 1381 (emphasis added). Petitioner fails to point to any element of claims of the ’647 patent that it contends meets the “financial activity element” required by Secure Axcess. Instead, it merely points to statements in the specification regarding potential applications for the claimed cryptographic algorithm. At best, Petitioner argues that the claimed encryption method can be for financial matters, such as securing e-commerce transactions, but this is not sufficient after the Federal Circuit’s guidance in both Unwired Planet and Secure Axcess. See id. Petitioner has simply failed to identify anything in the claims that are financial in nature.” slip op. at 9
Discretionary denialPatents in suitUS 8,023,647 - Cisco System, Inc. v. Focal IP, LLCRehearing deniedPTAB · Nov 17, 2017 · IPR2016-01261 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Focal IP’s request to reconsider authorization for Petitioners to file a limited supplemental brief on substitute-claim patentability after Aqua Products.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“no intervening change in law.” Prior to the Federal Circuit’s en banc decision in Aqua Products, the Board indicated that “[t]he burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner.” MasterImage, Case IPR2015-00040, slip op. at 2 (clarifying Idle Free sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 4 (PTAB June 11, 2013)) (emphasis added). In Aqua Products, patentee appealed from the final written decision of the Board, which denied patentee’s motion to amend, challenging the Board’s amendment procedures that required patentee to demonstrate that amended claims would be patentable over prior art. A panel decision from the Federal Circuit affirmed the Board’s decision, but the Federal Circuit granted patentee’s request for 3 rehearing en banc and, subsequently, in its en banc decision, vacated and remanded the Board’s decision. The Federal Circuit’s en banc decision clearly stated that “[t]he matter is remanded for the Board to issue a final decision under § 318(a) assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.” Aqua Products, 872 F.3d at 1296 (emphasis added). Accordingly, Patent Owner’s argument that “there is no intervening change of law” is misplaced.” slip op. at 3
- BurdenOther
“holding in Aqua Products. Aqua Products, 872 F.3d at 1296 (instructing the Board to “assess[] the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner”) (emphasis added). We address below each of the Patent Owner’s arguments in turn.” slip op. at 3
NonePatents in suitUS 8,457,113 - Cisco System, Inc. v. Focal IP, LLCRehearing deniedPTAB · Nov 17, 2017 · IPR2016-01260 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place its order authorizing Petitioners to file a 15-page supplemental brief on motion-to-amend patentability after Aqua Products.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id.” slip op. at 2
NonePatents in suitUS 8,457,113 - Cisco System, Inc. / Ymax Corporation et al. v. Focal IP, LLCRehearing deniedPTAB · Nov 17, 2017 · IPR2016-01262 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Focal IP’s request to reconsider authorization for Petitioners to file a limited supplemental brief on patentability of substitute claims after Aqua Products.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id.” slip op. at 2
NonePatents in suitUS 7,764,777 - Cisco System, Inc. v. Focal IP, LLCRehearing deniedPTAB · Nov 17, 2017 · IPR2016-01258 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Focal IP’s request to reconsider authorization for Petitioners to file a limited supplemental brief addressing Aqua Products.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id.” slip op. at 2
- BurdenDecided for petitioner
“Patent Owner’s arguments are misplaced, as they ignore the actual holding in Aqua Products. Aqua Products, 872 F.3d at 1296 (instructing the Board to “assess[] the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner”) (emphasis added). We address below each of the Patent Owner’s arguments in turn.” slip op. at 3
NonePatents in suitUS 7,764,777 - Cisco System, Inc. / Ymax Corporation et al. v. Focal IP, LLCRehearing deniedPTAB · Nov 17, 2017 · IPR2016-01257 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Focal IP’s request to bar Petitioners from filing a limited supplemental brief on the patentability of substitute claims after Aqua Products.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id.” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsOther
“rehearing en banc and, subsequently, in its en banc decision, vacated and remanded the Board’s decision. The Federal Circuit’s en banc decision clearly stated that “[t]he matter is remanded for the Board to issue a final decision under § 318(a) assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.” Aqua Products, 872 F.3d at 1296 (emphasis added). Accordingly, Patent Owner’s argument that “there is no intervening change of law” is misplaced.” slip op. at 4
NonePatents in suitUS 8,457,113 - Hamamatsu Corporation v. President & Fellows Of Harvard CollegeAll claims unpatentablePTAB · Nov 16, 2017 · IPR2016-01143 · APJ Jacqueline T Harlow · IPR · Final written decision
Claims 1, 2, 4–6, and 11 are unpatentable as anticipated by Uematsu; claim 3 is unpatentable as obvious over Uematsu.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“’446 patent would have had “at least a bachelor’s degree in material science, physics, or electrical engineering, and at least one year of work experience in semiconductor processing.” Pet. 7–8 (citing Ex. 1007 ¶ 15). Patent Owner does not dispute Petitioner’s proposal, or otherwise address the level of skill in the art at the time of invention of the ’446 patent in its Response. See generally, PO Resp. In addition, in its Preliminary Response, Patent Owner applies the level of skill in the art set forth in the Petition. Prelim. Resp. 6; Ex. 2001 ¶¶ 11–12. We agree with Petitioner that an artisan of ordinary skill at the time of invention of the ’446 patent would have had at least a bachelor’s degree in material science, physics, or electrical engineering, and at least one year of work experience in semiconductor processing, with the understanding that the level of skill is also reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In addition, we have reviewed the credentials of Dr. Souri (Ex. 1007), and we consider him to be qualified to provide his opinion on the level of skill and the knowledge of a person of ordinary skill in the art at the time of the invention.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“On the record before us, we conclude that the term “undulating topography” should be afforded its plain and ordinary meaning, which encompasses a wavy surface, and permits, but does not require, the non-uniformity or irregularity of the individual features, within that topography. As an initial matter, we observe that Patent Owner’s contention that “undulating topography” requires non-uniformity and/or irregularity of the claimed submicron-sized features, is improper, as it was impermissibly raised for the first time during oral hearing. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No new evidence or arguments may be presented at the oral argument.”). Accordingly, we need not address this contention. Nevertheless, for the reasons set forth below, we determine that even had Patent Owner timely raised this argument, the broadest reasonable interpretation of “undulating topography” does not require that the claimed submicron-sized features be non-uniform or irregular.” slip op. at 10
- Prior constructionPrior construction not adoptedDecided for petitioner
“We also consider the district court’s construction of “undulating topography” as “arrangement of features of varying heights and widths” (Paper 23,2 22) in determining the broadest reasonable interpretation of that term.3 We observe, however, that we are “not generally bound by a prior” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We are not persuaded by Patent Owner’s arguments. As explained above, we conclude that the broadest reasonable interpretation of “undulating topography” encompasses a wavy surface, and permits, but does not require, non-uniformity or irregularity of the claimed submicron-sized 32 features. Furthermore, for the reasons set forth above, we find that Uematsu’s disclosure of a transition layer including “pyramids 11 having a regular width and largeness” formed on a silicon substrate (Ex. 1005, [0019]) satisfies the “undulating topography” requirement of claim 1. In particular, we find that the depiction of Uematsu’s pyramids in Figure 8 establishes that Uematsu teaches a wavy surface. Id. at Fig. 8. We also find, in accord with Dr. Souri’s testimony, that Working Example 1 of Uematsu “describes an undulating topography composed of pyramids that are ‘formed on a silicon substrate 3 having a front surface with a (100) plane.’” Ex. 1007 ¶ 39 (quoting Ex. 1005, [0019]).” slip op. at 32
Patent outcomesUS 7,884,446 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,884,446 - PTAB · Nov 7, 2017 · DER2016-00003 · APJ Jameson Lee · DER · Institution
The Board denied institution because the petition lacked substantial evidence of derivation for any challenged claim, including sufficient proof of conception, communication, and the required claim comparisons.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The threshold showing for institution of a derivation proceeding is whether the petition demonstrates substantial evidence that, if unrebutted, would support the assertion of derivation.4 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c). A petitioner must show that the respondent, without authorization, filed an application claiming a derived invention. 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(b)(2). The party asserting derivation must establish prior conception of an invention and communication of that conception to an inventor of the other party. Cooper v. Goldfarb, 154 F.3d 1321, 1332 (Fed. Cir. 1998); Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993); Hedgewick v. Akers, 497 F.2d 905, 908 (CCPA 1974). The showing of communication must be corroborated. 37 C.F.R. § 42.405(c). Assuming that corroborated conception and communication both are established, a petitioner would be able to regard as a derived invention those” slip op. at 3
- BurdenDenied
“B. The Alleged Invention – Conception and Communication First, Petitioner has not sufficiently specifically identified the features of an invention that he allegedly conceived. The closest the Petitioner comes to doing that are these two statements in the Petition: (1) “Petitioner Sindoni conceived of a major advance in the pickup truck equipment field”; and (2) “[T]his invention, which in brief is a ramp system for a pickup truck, was communicated to Respondent by Sindoni before Respondent filed the ’123 application.” Pet. 3, 16. We do not understand the position of Petitioner to be that Mr. Sindoni conceived of the very first ramp system for a pickup truck. An Information Disclosure Statement submitted by Petitioner during prosecution of the ’548 Application identifies three prior art references disclosing a ramp system for a pickup truck, i.e., U.S. Patent Nos. 3,976,209; 4,624,619; and 7,445,268. Ex. 3002. Also, Petitioner’s ’548 Application generally refers to preexisting ramps for pickup trucks and characterizes them as unsatisfactory. Ex. 1002 ¶ 5. Yet, neither the Petition nor the Declaration of Mr. Sindoni sets forth any particular feature of the “ramp system for a pickup truck” that Petitioner allegedly conceived, much less the entirety of what Petitioner has conceived. This deficiency alone dooms the Petition, because we do not know what was conceived by Petitioner. Second, Petitioner has not sufficiently identified the features of any invention that he allegedly communicated to Respondent. The closest the Petitioner comes to doing that are these two statements in the Petition: (1) “[T]his invention, which in brief is a ramp system for a pickup truck, was communicated to Respondent by Sindoni before Respondent filed the ’123 application”; and “Petitioner disclosed the invention to Respondent to this end, and Respondent acknowledged receipt of the disclosure.” Pet. 3, 16. The Petition does not, however, point to corroborating evidence of communication or evidence of how Respondent has acknowledged receipt of Petitioner’s conceived “invention” at any time. The Declaration of Mr. Sindoni, the Petitioner, is no better. Mr. Sindoni testifies: “Details of the invention were communicated to FCA US LLC by me more than a year before FCA US LLC filed the Chrysler application and more than two years before the Sindoni application was filed.” Ex. 1003 ¶ 7 (emphasis added). However, Mr. Sindoni in his Declaration nowhere identifies or explains the referenced “[d]etails of the invention.” Submitted by Petitioner as Exhibit 1006 is a document that appears to be signed by Mr. Sindoni and a representative of an entity named “U.S. Patent Commission,” that pertains to disclosure by Mr. Sindoni of an invention to U.S. Patent Commission at some time. But that document has not been addressed in the declaration testimony of Mr. Sindoni. Nor is there a declaration from Angela Stevens, the individual who signed on behalf of U.S. Patent Commission, addressing the document. Thus, it has not been authenticated. Also, although the Petition generally refers to Exhibit 1006 as “Petitioner’s Invention Disclosure,” (Pet. 9–14), we do not know specifically what subject matter the Petitioner possibly had conceived because the Petitioner makes no averment in that regard. Furthermore, the content of Exhibit 1006 has not been explained either in the Petition or in the Declaration of Mr. Sindoni. Pages 4 and 5 of Exhibit 1006 appear to contain technical illustrations but are substantially illegible. On May 3, 2017, we issued an Order (Paper 7) stating: “[I]f Petitioner can provide a more legible copy of the last two pages of Exhibit 1006, then another full copy of Exhibit 1006, including the more legible last two pages, shall be filed within two weeks of the date of this communication.” Paper 7, 3. Petitioner filed no replacement copy of Exhibit 1006. We note also that the signature of Angela Stevens, on behalf of U.S. Patent Commission, on page 1 of Exhibit 1006, is undated, and Petitioner submitted no declaration of Angela Stevens to substantiate and explain her signature, e.g., when she received the document. In any event, Petitioner makes no explanation as to the relationship, if any, between U.S. Patent Commission and Respondent. We decline to assume that they are the same entity. Thus, we will not assume communication with U.S. Patent Commission is the same as communication with Respondent. For the foregoing reasons, the Petition is fatally deficient with regard to the” slip op. at 5
NonePatents in suitUS 9,067,525
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.