- Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics, Inc.Some claims unpatentablePTAB · Dec 21, 2015 · IPR2014-01208 · APJ Phillip J Kauffman · IPR · Final written decision
Claims 2, 3, 5, 7, 11, 12, 18, 19, 21–23, 25, 26, 28, 32–35, 37, 40, and 44–46 are unpatentable; claim 24 was not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“§ 42.64(c). Patent Owner seeks to expunge (vice exclude) the Broggi Declaration (Ex. 1033) because it was not timely served in response to Patent Owner’s first set of objections. See id. at 12; Opp. Reply 1–2.; Ex. 1036, 2; Ex. 2015; 37 C.F.R. § 42.64(b)(2). As the moving party, Patent Owner bears the burden of proof. See 37 C.F.R. § 42.20(c). We address first Exhibit 1033 and then the remaining exhibits in reverse chronological order of their filing. 1. Broggi Declaration (Ex. 1033) As explained above, the Broggi Declaration is not supplemental evidence because the objection to which it was served in response was not proper. Because the Broggi Declaration is not evidence, supplemental evidence, or supplemental information, we expunge it.” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“4. Summary Broggi is a printed article titled “Multi-Resolution Vehicle Detection using Artificial Vision.” The first page makes reference to the 2004 IEEE Intelligent Vehicles Symposium held at the University of Parma in Parma Italy on June 14–17, 2004, and includes a copyright date of 2004 that is consistent with this information. Broggi is not marked with any limitations regarding dissemination. Dr. Frahm, as a person who has chaired an IEEE conference and regularly attended IEEE conferences, states that it is his experience that IEEE papers, such as Broggi, that are presented are made publically available at that conference as is indicated on the face of the paper. Although he did not attend the Symposium, the Senior Director of Publishing Technologies for IEEE, Mr. Grenier, states that IEEE records indicate that Broggi was published and presented as part of the proceedings on the date of the Symposium. The Office Manager of the Internet Archive, Mr. Butler, provides records that indicate that Broggi was posted to a public website no later than October 12, 2004.” slip op. at 34
- Skill levelDecided for patent owner
“Petitioner’s expert, Dr. Frahm, provided testimony regarding the level of skill in the art. See Ex. 1010 ¶¶ 43–48. Although the level of skill in the art is not discussed in the Petition, Dr. Frahm acknowledged that obviousness is viewed from the perspective of a person of ordinary skill in the art, and applied that standard to his evaluations. Id. ¶¶ 28–29. That is, Dr. Frahm’s evaluations of the grounds of unpatentability based on obviousness is based on the perspective of a person of ordinary skill in the art at the time of the claimed invention, and this analysis is cited and explained in the Petition. address the merits of the level of skill in the art provided. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Patent Owner’s assertion fails to address how the level of skill in the art impacted the obviousness analysis.” slip op. at 35
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Patent Owner’s Preliminary Response argued that we should deny the Petition based on 35 U.S.C. § 325(d). See Prelim. Resp. 2, 7–12. We considered this argument and declined to exercise our discretion to deny the Petition. See Dec. 12–15. Patent Owner’s current argument adds nothing to 30 We presume the second citation, which is to “§ 315(d)” is a typographical error and “§ 325(d)” was intended. the Petition on that basis.” slip op. at 36
Patent outcomesUS 7,991,522 mixed§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,991,522 - Arris Group, Inc. v. Cirrex Systems, LLC.All claims unpatentablePTAB · Dec 17, 2015 · IPR2014-01191 · APJ Linda M Gaudette · IPR · Final written decision
Claims 59, 61, 74, 76, 78, and 87 are unpatentable under § 103 over Stone and Takashashi, with Shioda, Ohmi, or Garmon applied to dependent claims.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015). Even under the rule of broadest reasonable interpretation, claim terms generally also are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art would have “[an] education and/or experience in the field of optics” and “in the sub-field of thin-film filters.” Pet. 15 (citing Ex. 1003 ¶ 24). According to Petitioner, such person would have, at a minimum, (1) more than three years of relevant work experience and hold a basic Bachelor’s degree, or (2) less than three years of relevant work experience, but hold a more advanced degree, such as a Masters or a Ph.D. Id. (citing Ex. 1003 ¶ 24). Patent Owner does not comment on Petitioner’s proposed definition of the level of ordinary skill in the art, or offer an alternative definition. See generally, PO Resp. Petitioner relies on the testimony of Dr. Tomlinson, see Pet. 15–20, who testified that he is “an expert in the field of optical assemblies and . . . [has] been an expert in this field since prior to 1965.” Ex. 1003 ¶ 11. Dr. Tomlinson testified that he is “familiar with the knowledge and capabilities of one of ordinary skill in the art” by virtue of his “work as a research assistant, scientist, researcher, supervisor of Ph.D. level researchers and engineers, and project manager.” Id. ¶ 23; see also id. ¶¶ 13–18 (wherein Dr. Tomlinson discusses the specifics of his work). We find Dr. Tomlinson is qualified to give an opinion as to the level of ordinary skill in the art in the field of optics, and adopt Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. Cf. Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (explaining that to testify as an expert under Federal Rule of Evidence (FRE) 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.”).” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We credit Dr. Tomlinson’s testimony that one of ordinary skill in the art: “would not [have] use[d] a beveled end face for applications where reducing reflected power is not necessary because a beveled end face requires additional machining and, as illustrated by Stone’s Figure 6, makes connection to other fibers more problematic” and “would generally use a perpendicular end face as shown in Stone Figure 1 unless a particular application called for a beveled end face” (Ex. 1020 ¶ 23). We also credit Dr. Tomlinson’s testimony that one of ordinary skill in the art would have been motivated by Takashashi’s description of the benefits provided by a higher packing density, e.g., a reduction in the effect of ambient moisture on filter performance, to substitute one known method of thin film deposition – i.e., the “electron-beam deposition” of Stone – for another know method of thin film deposition – i.e. the reactive-ion plasma process of Takashashi – because the substitution would have yielded a favorable and predictable result. Namely, the combination of Stone and Takashashi would have yielded a thin-film filter with a higher packing density which was less susceptible to volumetric distortion of the film due to ambient moisture, as taught by Takashashi. Ex. 1003 ¶ 100.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We have considered Patent Owner’s arguments and evidence, but are not persuaded that one of ordinary skill in the art would have understood that the filter inefficiencies created by ambient moisture could be addressed adequately by merely beveling Stone’s filter/fiber end face, i.e., we are not persuaded that the ordinary artisan would not have been motivated to increase filter packing density in Stone’s optical assembly. As pointed out by Petitioner, Stone discloses that optical fibers having multilayer thin-films deposited directly on their end faces have advantageous properties, regardless of whether the filters are deposited on perpendicular fiber end faces or on beveled fiber end faces. See Reply 10 (citing Ex. 1005, 1:60– 67). We further agree with Petitioner that Stone’s teaching of a preference for using a beveled end face is limited to “certain situations in which power would be reflected back into the waveguide in a problematic way” (id. at 10–11 (quoting Ex. 1005, 3:57–65)). Patent Owner has not argued, however, nor do we find any language in the claims or specification of the ’970 patent that supports a narrow reading of claim 59 as limited to an optical fiber assembly that is capable of use in an application in which reflected light is problematic. We credit Dr. Tomlinson’s testimony that one of ordinary skill in the art: “would not [have] use[d] a beveled end face for applications where reducing reflected power is not necessary because a beveled end face requires additional machining and, as illustrated by Stone’s Figure 6, makes connection to other fibers more problematic” and “would generally use a perpendicular end face as shown in Stone Figure 1 unless a particular application called for a beveled end face” (Ex. 1020 ¶ 23). We also credit Dr. Tomlinson’s testimony that one of ordinary skill in the art would have been motivated by Takashashi’s description of the benefits provided by a higher packing density, e.g., a reduction in the effect of ambient moisture on filter performance, to substitute one known method of thin film deposition – i.e., the “electron-beam deposition” of Stone – for another know method of thin film deposition – i.e. the reactive-ion plasma process of Takashashi – because the substitution would have yielded a favorable and predictable result. Namely, the combination of Stone and Takashashi would have yielded a thin-film filter with a higher packing density which was less susceptible to volumetric distortion of the film due to ambient moisture, as taught by Takashashi.” slip op. at 17
Patent outcomesUS 6,222,970 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,222,970 - Toyota Motor Corporation v. Cellport Systems, Inc.Institution deniedPTAB · Dec 16, 2015 · IPR2015-01422 · APJ Scott C Moore · IPR · Institution
The Board denied institution on all claims: claims 1–11 lacked a sufficient showing of the claimed network protocol converter structure, and claims 12–21 were denied as a second, delayed petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“network communication means” claim limitation. Claims 2, 6, and 8–11 depend from claim 1 and, thus, incorporate this limitation by way of dependence. A petition for inter partes review “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Because the “first standard network communication means” is a means-plus-function claim limitation, Petitioner is required to show that both the recited function of this claim limitation and the corresponding structure or an equivalent are present in the applied references. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (“[A] challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.”). The Petition does not identify any structure in the applied references that is allegedly identical or equivalent to the corresponding structure of the “first standard network communication means” claim limitation, i.e., network protocol converter 26. Petitioner’s entire argument concerning the “first standard network communication means” of claims 1, 3, 4, 5, and 7, is reproduced below: Cao discloses a “first standard network communications means” (i.e., wireless Proxim radio link with base station) that uses Internet Protocol for “presenting information for transmission over the airlink in a first format that is acceptable to a first standardized network that includes the airlink” (i.e., TCP/IP format). See Ex. 1019 at 6; see also supra Section VIII.A.4. Pet. 40. Though Petitioner alleges that the “wireless Proxim radio link with base station” of Cao performs the recited function of the “first standard network communication means,” Petitioner does not compare the structure of the “wireless Proxim radio link with base station” of Cao to the structure of network protocol converter 26. Cited Section VIII.A.4 of the Petition similarly does not address the structure of the “wireless Proxim radio link with base station” of Cao. See Pet. 18–20. Thus, the Petition does not identify any structure in the applied references that is allegedly identical or equivalent to the corresponding structure of the “first standard network communication means” claim limitation. For the foregoing reasons, the Petition fails to show persuasively that the “first standard network communication means” claim limitation is found in the references that Petitioner relies upon with respect to claims 1–11. Thus, the information presented in the Petition is not sufficient to demonstrate a reasonable likelihood that Petitioner will prevail in demonstrating that claims 1–11 are unpatentable. 3.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“The 4½ month delay between Petitioner’s first and second Petitions is problematic for several reasons. First, the timing of this Petition makes consolidation impractical, and, thus, frustrates the interest of judicial economy. The oral hearing in IPR2015-00633 is set for April 14, 2016. IPR2015-00633, Paper 12. Thus, it would not be practical to institute a second inter partes review and consolidate that proceeding with IPR2015- 00633. See 35 U.S.C. § 315(d). Assuming that Petitioner has shown here a reasonable likelihood that claims 12–21 are unpatentable, two separate trials would be necessary, requiring the parties, as well as the Board, to expend significant additional resources. Second, even if we were to institute a second inter partes review involving claims 12–21, Petitioner might be unable to “maintain” the second inter partes review upon issuance of a final written decision in IPR2015-00633. 35 U.S.C. § 325(e)(1) provides that any final written decision in IPR2015-00633 on the patentability of claims 12–21 would preclude Petitioner from “maintain[ing] a proceeding before the Office . . . on any ground that the petition raised or reasonably could have raised during [the earlier] post-grant review.” Thus, instituting a second inter partes review may result in a significant waste of time and resources for the parties and for Board. See 37 C.F.R. § 42.1(b) (“This part shall be construed to secure a just, speedy, and inexpensive resolution of every proceeding.”). Third, the timing of the second Petition raises the potential for gamesmanship. Petitioner did not file this Petition until one month after Patent Owner filed its Preliminary Response in IPR2015-00633. The timing of the second Petition gave Petitioner the opportunity to preview the arguments set forth in the Patent Owner Preliminary Response in IPR2015- 00633. Petitioner also has not provided an adequate explanation for the 4½ month delay between the filing of this Petition and the filing of its previous Petition. Though Petitioner alleges that it was not aware of Cao “at the time it filed Petition No. 2015-00633” (Pet. 2), Petitioner does not state when and under what circumstances, during the 4½ months that preceded the filing of the current Petition, it became aware of Cao. Cao is a technical paper that was published by a major research university in the United States, and, thus, it is not clear on this record why Petitioner was unable to locate Cao at an earlier date. See Ex. 1019, 1. We further note that Petitioner has not identified any meaningful distinctions between the arguments regarding claims 12–21 in this Petition and the arguments Petitioner set forth in its earlier Petition. For instance, Petitioner does not explain in what ways the grounds asserted against claims 12–21 in this proceeding are superior to the grounds against the same claims and on the basis of which we instituted trial in IPR2015-00633. In view of the foregoing, we exercise our discretion and decline to” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Despite the rebuttable presumption, we do not construe “controller means” as a means-plus-function claim limitation. The presumption is overcome because the claim language does not link the “controller means” to a specific recited function. See York Prod., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996) (“Without a ‘means’ sufficiently connected to a recited function, the presumption in use of the word ‘means’ does not operate.”). In addition, the presumption is overcome when the claim specifies detailed structure sufficient to perform any recited or implicit function, e.g., controlling. See TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008) (“Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.”); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1376 (Fed. Cir. 2003). Each of independent claims 1, 3, 4, 5, and 7 recites that the “controller means” includes the “processing means” and the “first standard network communication means.” As discussed herein, the processing means and the first standard network communication means are means-plus-function claim limitations that are defined in terms of specific structures disclosed in the Specification. Moreover, the recited “controller” is also a structure that is sufficient to perform any recited or implicit function of the “controller means.” The rebuttable presumption also is overcome because the controller means claim limitation is associated with these structures. Thus, in accordance with the ordinary and customary meaning of the claim language, and consistent with the Specification (see Ex. 1001, 2:66–3:29, 6:11–37, 8:1–45), for purposes of this Decision, we construe “controller means” as “a controller.” 3.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)§112(f) appliesDecided for patent owner
“is a means-plus-function limitation is overcome because this limitation lacks an associated function. Prelim. Resp. 13. We agree. The grammatical structure of the claim and, in particular, the fact that the functional language cited by Petitioner appears immediately after the recitation of the “processing means” evidences an intent to associate this functional language with the “processing means” claim limitation. Thus, for purposes of this Decision, we construe “processing means” as a means-plus-function claim limitation having a recited function of “controlling the sending and receiving of said information using said wireless device between said first remote station and the vehicle.” “Structure disclosed in the specification qualifies as ‘corresponding structure’ if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.” Williamson, 792 F.3d at 1352. The Specification of the ’074 Patent indicates that the sending and receiving of vehicle information between the remote station and the vehicle is controlled by processor 90 in conjunction with real time operating system 94. See Ex. 1001, 8:1–23, 13:54–56. Data memory 106 is not linked clearly to the recited function because data memory 106 merely stores information, and does not control the sending and receiving of information. See id. 8:45–58, 9:31–45, 10:58–64, 13:8–10, 23–26. Thus, the structure in the Specification that corresponds to the “processing means” is “processor 90 in conjunction with real time operating system 94.”” slip op. at 11
Claim constructionDiscretionary denialcites GrahamPatents in suitUS 5,732,074 - NVIDIA Corp. v. Samsung Electronics Co., Ltd.Institution deniedPTAB · Dec 9, 2015 · IPR2015-01316 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show that VESA P&D and VESA Flat Panel were publicly accessible printed publications, so claims 6–10 could not rely on them.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of any of claims 6–10 of the ’724 patent. Accordingly, we do not institute an inter partes review of any claim.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“We find Patent Owner’s arguments persuasive. Petitioner does not explain adequately whether or how the VESA documents were made “sufficiently accessible to the public interested in the art.” Lister, 583 F.3d at 1311. Instead, Petitioner merely asserts that “VESA is a well-known standards setting organization that promulgates standards relating to video in electronics.” Pet. 14 (citing Ex. 1003 ¶ 58); id. at 22 (citing Ex. 1003 ¶ 75). As such, we determine that Petitioner has not made a sufficient showing that the VESA documents are printed publications under § 102(b). See Lister, 583 F.3d at 1317 (burden is on the proponent to show the purported reference was publicly available). Therefore, based on the record before us, we conclude Petitioner has not made a sufficient showing that either VESA P&D or VESA Flat Panel may be relied upon as prior art with respect to claims 6–10 of the ’724 patent.” slip op. at 6
§ 102 anticipationcites PhillipsPatents in suitUS 6,804,724 - Corning Optical Communications RF, LLC v. PPC Broadband, Inc.Rehearing deniedPTAB · Dec 9, 2015 · IPR2014-00736 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied Corning’s rehearing request, leaving intact dismissal of the petitions because Corning Inc. and Corning Optical Communications LLC were unnamed real parties in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“proof on Petitioner.” Req. Reh’g. 9–10. As noted in our Decision, we placed the ultimate burden of proof, i.e., burden of persuasion, on Patent Owner, not Petitioner. Dec. 13–14 (stating that if “a patent owner raises the RPI issue after institution and after filing a response to the petition, and in the form of a motion . . . , the burden of proof is on the patent owner as the proponent of the motion”). As explained recently by the Federal Circuit, the “burden of persuasion ‘is the ultimate burden assigned to a party who must prove something to a specified degree of certainty,’ such as by a preponderance of the evidence.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). Notwithstanding Patent Owner’s burden of persuasion, however, once it came forward with sufficient evidence indicating that Petitioner should have identified Corning Inc. and Corning NC as RPIs (as cited and discussed in Patent Owner’s Motion), a “shifting burden” came into play, i.e., a “burden of production” on Petitioner. Id. at 1379. To address that burden of production, Petitioner had an opportunity to “produc[e] additional evidence and present[] persuasive argument based on new evidence or evidence already of record” in its Opposition to Patent Owner’s Motion to Dismiss. Id. (citations omitted). It was in this capacity, only after determining that Patent Owner had made a sufficient showing regarding RPI, that we stated that Petitioner did not point “to credible evidence indicating that if interests of Corning Inc. and Petitioner ever diverged, Mr. Hulme and Mr. Vynalek, who are employees of Corning Inc. (Ex. 2100, 12– 14), would act in a matter contrary to Corning Inc.’s interests.” Dec. 22; Req. Reh’g. 9. Thereafter, based on all evidence before us, we concluded that Patent Owner had established by a preponderance of the evidence that Corning NC and Corning Inc. should have been named as RPIs in these proceedings. Dec. 13–14, 16, 25. Thus, Petitioner does not persuade us that we impermissibly placed the burden of persuasion on Petitioner.” slip op. at 5
Discretionary denialPatents in suitUS 6,676,446 - Corning Optical Communications RF, LLC v. PPC Broadband, Inc.Rehearing deniedPTAB · Dec 9, 2015 · IPR2014-00440 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied Corning’s rehearing request, leaving in place dismissal of the petitions, termination of the reviews, and vacatur of the institution decisions for failure to identify all RPIs.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Notwithstanding Patent Owner’s burden of persuasion, however, once it came forward with sufficient evidence indicating that Petitioner should have identified Corning Inc. and Corning NC as RPIs (as cited and discussed in Patent Owner’s Motion), a “shifting burden” came into play, i.e., a “burden of production” on Petitioner. Id. at 1379. To address that burden of production, Petitioner had an opportunity to “produc[e] additional evidence and present[] persuasive argument based on new evidence or evidence already of record” in its Opposition to Patent Owner’s Motion to Dismiss. Id. (citations omitted). It was in this capacity, only after determining that Patent Owner had made a sufficient showing regarding RPI, that we stated that Petitioner did not point “to credible evidence indicating that if interests of Corning Inc. and Petitioner ever diverged, Mr. Hulme and Mr. Vynalek, who are employees of Corning Inc. (Ex. 2100, 12– 14), would act in a matter contrary to Corning Inc.’s interests.” Dec. 22; Req. Reh’g. 9. Thereafter, based on all evidence before us, we concluded that Patent Owner had established by a preponderance of the evidence that Corning NC and Corning Inc. should have been named as RPIs in these proceedings. Dec. 13–14, 16, 25. Thus, Petitioner does not persuade us that we impermissibly placed the burden of persuasion on Petitioner.” slip op. at 5
- PTAB / AIA Trials › Motions to amend / substitute claimsDenied
“sufficient “good cause” exists to waive our rules to allow correction of the RPIs identified in the Petitions without a loss of original filing dates. Dec. 24–25 (citing Reflectix, Inc. v. Promethean Insulation Tech. LLC, Case IPR2015-00039, slip op. at 13–18 (PTAB April 24, 2015) (Paper 18)). Petitioner’s incorrect determination of RPIs in its Petition, as argued in its Opposition to Patent Owner’s Motion to Dismiss and its Request now, “did not arise out of some mistake of fact.” Reflectix, Case IPR2015-00039, slip. op at 14 (Paper 18). Rather, Petitioner asserted that it “designated itself as the only RPI in good faith at the time the Petitions were filed, based on the guidance in the [Trial Practice Guide] before the Board’s RPI decisions cited in the Decision even existed.” Req. Reh’g. 12, 14–15. In other words, Petitioner “misunderstood the law as it applies to the RPI determination.” Reflectix, Case IPR2015-00039, slip. op at 14 (Paper 18). We agree with our colleagues in Reflectix that the Trial Practice Guide provides notable guidance, “as it devotes over a page of the Federal Register to discussing RPI and privity, and cites to precedent including the Supreme Court decision in Taylor v. Sturgell.” Id. at 14–15 (citing 77 Fed. Reg. at 48,759 (citing 553 U.S. 880 (2008)). Furthermore, a number of relevant Board decisions concerning RPI had issued by March 2, 2015, when we authorized Patent Owner to file its Motion for Additional Discovery regarding whether Corning Inc. and Corning NC should have been listed as RPIs. Paper 31. Petitioner did not request authorization to correct its Petitions thereafter, but instead suggested the possibility of correction in its Opposition to Patent Owner’s Motion to Dismiss. Opp. 1, 22, 23, 25. Our determination that Petitioner’s Motion to Dismiss was timely did not undercut the significance of Petitioner’s actions here. Req. Reh’g. 14–15. We are not persuaded, given the facts of this case, that Petitioner’s failure to name all RPIs in its Petitions, and its failure to request authorization to correct its Petitions regarding RPIs during trial, constitute a type of “error” that warrants permitting correction at this stage, without altering filing dates of the Petitions, even assuming no evidence of bad faith by Petitioner exists. Req. Reh’g. 15, 14. In addition, regardless of whether Petitioner “erred” when preparing its Petitions, Petitioner continued to maintain strongly its position regarding RPIs, even after it had access to all facts and evidence before us when we issued our Decision, thereby indicating that its position was not an “error” on Petitioner’s part, but rather a strategic position. As stated in 35 U.S.C. § 312(a)(2) (emphasis added), a petition for inter partes review “may be considered only if— . . . the petition identifies all real parties in interest.” In view of Petitioner’s actions here, we are not persuaded that we abused our discretion in determining the appropriate remedy here was to grant Patent Owner’s Motions to Dismiss, terminate the instant proceedings, and vacate our Decisions on Institution.” slip op. at 12
Discretionary denialPatents in suitUS 8,597,041 - NVIDIA Corp. v. Samsung Electronics Co., Ltd.Institution deniedPTAB · Dec 9, 2015 · IPR2015-01315 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show that Lai qualified as prior art, defeating both asserted grounds for claims 1, 3, and 26–29.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Lai issued from U.S. Patent Application No. 10/236,794, which was filed on September 6, 2002 and claims the benefit of U.S. Provisional Application No. 60/328,284, filed on October 9, 2001 (Ex. 1004, “the Lai Provisional”). Ex. 1003, [21], [22], [60], 1:8–12. Because Lai’s filing date postdates the effective filing date of the ’602 patent, Lai must be entitled to the benefit of the Lai Provisional filing date to qualify as prior art under 35 U.S.C. § 102(e). Lai is entitled to the benefit of the Lai Provisional filing date if the disclosure of the Lai Provisional supports the claimed subject matter of Lai in accordance with 35 U.S.C. § 112, ¶ 1.1 See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”).” slip op. at 5
- Strike new argumentNew argument disregardedOther
“In a conference call with the parties, the panel authorized Petitioner to submit a five-page, non-argumentative claim chart showing how the claims of a reference patent asserted by Petitioner are supported by a provisional application. Paper 9, 3. The panel also authorized Patent Owner to file a five-page response to Petitioner’s claim chart. Id. at 4. Petitioner filed a claim chart. Paper 8. Paper 8 included two pages of text in addition to the five-page claim chart. Because these two additional pages are not in compliance with our Order (see Paper 9), we have considered the claim chart only and none of the arguments presented in the additional two pages. Patent Owner subsequently filed a response to Petitioner’s claim chart. Paper 10.” slip op. at 2
§ 102 anticipationcites PhillipsPatents in suitUS 6,819,602 - Corning Optical Communications RF, LLC v. PPC Broadband, Inc.Rehearing deniedPTAB · Dec 9, 2015 · IPR2014-00441 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied rehearing, leaving intact dismissal of the petitions, termination of the proceedings, and vacatur of institution decisions for failure to identify all real parties in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Notwithstanding Patent Owner’s burden of persuasion, however, once it came forward with sufficient evidence indicating that Petitioner should have identified Corning Inc. and Corning NC as RPIs (as cited and discussed in Patent Owner’s Motion), a “shifting burden” came into play, i.e., a “burden of production” on Petitioner. Id. at 1379. To address that burden of production, Petitioner had an opportunity to “produc[e] additional evidence and present[] persuasive argument based on new evidence or evidence already of record” in its Opposition to Patent Owner’s Motion to Dismiss. Id. (citations omitted). It was in this capacity, only after determining that Patent Owner had made a sufficient showing regarding RPI, that we stated that Petitioner did not point “to credible evidence indicating that if interests of Corning Inc. and Petitioner ever diverged, Mr. Hulme and Mr. Vynalek, who are employees of Corning Inc. (Ex. 2100, 12– 14), would act in a matter contrary to Corning Inc.’s interests.” Dec. 22; Req. Reh’g. 9. Thereafter, based on all evidence before us, we concluded that Patent Owner had established by a preponderance of the evidence that Corning NC and Corning Inc. should have been named as RPIs in these proceedings. Dec. 13–14, 16, 25. Thus, Petitioner does not persuade us that we impermissibly placed the burden of persuasion on Petitioner.” slip op. at 5
Discretionary denialPatents in suitUS 8,562,366 - PTAB · Dec 7, 2015 · IPR2015-00624 · APJ Charles J Boudreau · IPR · Adverse judgment
The Board entered adverse judgment against the patent owner and canceled claims 27, 28, 38, and 39.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. See 37 C.F.R. § 42.73(b). Here, in view of Patent Owner’s explicit request for adverse judgment, entry of judgment adverse to Patent Owner and cancellation of claims 27, 28, 38, and 39 of the ’872 patent are appropriate. Further, because “[a] judgment . . . disposes of all issues that were, or by motion reasonably could have been, raised and decided,” 37 C.F. R. § 42.73(a), we dismiss Patent Owner’s co-pending Request to Terminate Proceeding as moot.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“Patent Owner and cancellation of claims 27, 28, 38, and 39 of the ’872 patent are appropriate. Further, because “[a] judgment . . . disposes of all issues that were, or by motion reasonably could have been, raised and decided,” 37 C.F. R. § 42.73(a), we dismiss Patent Owner’s co-pending Request to Terminate Proceeding as moot. ORDER Accordingly, it is ORDERED that Patent Owner’s Request for Adverse Judgment is” slip op. at 3
NonePatents in suitUS 7,456,872 - Vmware, Inc. v. Clouding Corp.All claims unpatentablePTAB · Dec 3, 2015 · IPR2014-01292 · APJ David C Mckone · IPR · Final written decision
Claims 1–24 are unpatentable as obvious over Gold and Chefalas; the contingent motion to amend with substitute claim 25 is denied.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“§ 42.73(d)(3), which states that “[a] patent applicant or owner is precluded from taking action inconsistent with the adverse judgment.” Opp. to Mot. to Amend 1–2. Rule 42.73(a) discusses the effect of a judgment on a proceeding, but does not address future proceedings beyond that expressly set forth in Rule 42.73(d). Thus, we look to Rule 42.73(d) to determine whether estoppel applies. To that end, the Patent Office has explained in its discussion accompanying the Final Rule, that Rule 42.73(d)(3) applies estoppel against a party whose claim has been cancelled and not merely held unpatentable: Section 42.73(d)(3) applies estoppel against a party whose claim was cancelled . . . . The rule is consistent with 35 U.S.C. 316(a)(4), as amended, and 326(a)(4), which require that the Office prescribe regulations establishing and governing the reviews and the relationship of such reviews to other proceedings under title 35. Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions, Discussion of Specific Rules, 77 Fed. Reg. 48,612, 48,625 (Aug. 14, 2012) (emphasis added); see also 77 Fed. Reg. at 48,614 (Differences Between the Final Rule and the Proposed Rule) (emphasis added): Further, the final rule tailors the provisions to provide that a patent applicant or patent owner whose claim is canceled is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (1) A claim that is not patentably distinct from the finally refused or cancelled claim[.] Under 35 U.S.C. § 318(b), a claim is not cancelled until all appeal rights have terminated. Accordingly, even assuming that Patent Owner’s Motion to Amend is inconsistent with our ruling in the Rackspace IPR, Rule 42.73 is inapplicable in this proceeding. Nevertheless, as explained below, our ruling in this proceeding is consistent with that in the Rackspace IPR.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“The parties do no dispute these constructions in the PO Response or Reply. On the complete record, we maintain these constructions.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We are not persuaded by Patent Owner. The plain language of claim 25 does not preclude reading prior to or during a relevancy determination. Rather, it recites that a determination of relevancy be made prior to reading. In other words, a system that reads a file to determine relevancy and subsequently reads that file to copy it would meet the literal language of claim 25. The claim does not require that there be no reading of the file prior to determining its relevance, a limitation easily specifiable by Patent Owner, if desired, but not included in the proposed amendment. At the hearing, Patent Owner clarified that it is arguing that the claim language means “without reading the first storage object, determining whether the first storage object contains relevant data,” Tr. 53:3–7, or “prior to any reading of the first storage object,” id. at 55:1–4. Patent Owner bases this reading on the description in the Specification: JUDGE LEE: How about my hypothetical, you read and then you determine relevance and you read again, so when you look at the three in that order it meets the language, prior to reading, which is prior to the second read you determine the relevance? MR. FAHMI: With respect, Your Honor, I don’t think that that scenario would be consistent with the specification because during that first reading you would have copied the storage object. That’s how copy on read works. And so by doing that you just defeat the entire purpose of the scheme. Id. at 55:5–15. We are not persuaded by Patent Owner’s argument. For the reasons given in Section II.C.2 above, the Specification does not preclude reading prior to or during a relevancy determination. Thus, construing “prior to reading the first storage object, determining whether the first storage object contains relevant data,” in accordance with its plain meaning, to allow for a read prior to or during a relevancy determination (as long as the relevant file also is read subsequently) is not inconsistent with the Specification.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Skill in the Art In determining the level of ordinary skill in the art at the time of the invention, various factors may be considered, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Petitioner contends that a person of ordinary skill in the art would have had a Bachelor’s Degree in Computer Engineering, Computer Science, or comparable degree and two years of experience in file system management. Pet. 8 (citing Ex. 1005 ¶ 28). Patent Owner does not dispute Petitioner’s statement or propose an alternative. We find that Petitioner’s statement of the level of ordinary skill is consistent with Dr. Reynold’s testimony and the technology described in the ’089 patent and the cited prior art. Accordingly, we adopt Petitioner’s statement of the level of ordinary skill.” slip op. at 20
Patent outcomesUS 7,032,089 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,032,089
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.