- 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 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.Rehearing deniedPTAB · Dec 4, 2017 · IPR2017-00649 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution on claims 1–30 because Petitioner did not show that the Board overlooked or misapprehended its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The Decision Denying Institution considered Petitioner’s argument regarding combining Bonella’s power reduction technique and Bonella’s power loss algorithm as it was presented in the Petition. Thus, Petitioner has not established the proposition that the Board overlooked or misapprehended some evidence in the record. A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. Thus, we are not persuaded by this argument.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“disclosed the specific feature alleged to be obvious. Req. Reh’g 12. We disagree. The Decision Denying Institution found that Long and Ashmore did not provide motivation for the specific combination advanced by Petitioner, stating “Petitioner does not point to a motivation to adjust the frequency of the memory banks specifically, simply a general motivation to reduce battery power during power loss.” Inst. Dec. 13. Thus, the Decision Denying Institution stated “we are not persuaded Ashmore [or Long] supports that contention that running at the frequency associated with Power Level 4 during a power loss would have been obvious.” Id. 13–14. “[T]o establish obviousness based on a combination of the elements disclosed in the prior art, there must be some motivation, suggestion or teaching of the desirability of making the specific combination that was made by the applicant.” In re Kotzab, 217 F.3d 1365, 1370 (Fed.Cir.2000) (citation omitted)(emphasis added)). “A determination of obviousness cannot be reached where the record lacks ‘explanation as to how or why the references would be combined to produce the claimed invention.’” Hyundai Motor Co. v. Blitzsafe Texas, LLC, Case IPR2016-01476, slip op. at 32 (PTAB Jan. 24, 2017) (Paper 12) (quoting Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016)). The Decision Denying Institution properly followed this precedent in requiring a specific motivation to make the combination alleged by Petitioner to meet the claimed combination.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“CONCLUSION The Request for Rehearing does not demonstrate that we misapprehended or overlooked any matters raised in the Petition declining to institute review of claims 1–30.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,301,833 - Composite Materials Technology, Inc. v. Greatbatch, Ltd.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01441 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Contrary to Petitioner’s arguments, the fact that two references relate to the same general subject matter is not, by itself, sufficient to explain why one of ordinary skill in the art would have sought to modify one reference in view of the other; it demonstrates at most that the two references are in the same field of endeavor. See In re GPAC Inc., 57 F.3d 1573, 1577–78 (Fed. Cir. 1995). Nor is an alleged admission that Fife and Stephenson are prior art to the ’075 patent sufficient to explain why these two references would be combined in a manner necessary to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 389, 418–19 (2007) (“[I]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”). In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”). As Petitioner provides insufficient rationale to explain why one of ordinary skill in the art would have combined the disclosures of Fife and Stephenson in a manner necessary to achieve the claimed invention, it has not demonstrated a reasonable likelihood that the subject matter of claim 1 would have been obvious over those references. And, because challenged claims 2–11 and 13–18 each depend from claim 1, and because the deficiencies in Petitioner’s arguments and evidence regarding claim 1 are not remedied by Petitioner’s arguments and evidence regarding claims 2–11 and 13–18, Petitioner has likewise not demonstrated a reasonable likelihood that the subject matter of those claims would have been obvious over Fife and Stephenson.6” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”).” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,312,075 - 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 - 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 - Mastercard International Incorporated v. William GreciaRehearing deniedPTAB · Oct 19, 2017 · IPR2017-00793 · APJ Michael W Kim · IPR · Rehearing
The Board denied rehearing of its decision denying institution on claim 1, finding that the Petition did not clearly map the claimed authorization object to Muller and the Request showed no overlooked error.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“To the extent Petitioner actually regards the entirety of Muller’s “media access response” as the recited “computer readable authorization object,” and believes a limitation with regard to the “computer readable authorization object” is met if at least a part of the identified object satisfies the limitation, that position has not been clearly articulated. Neither Patent Owner nor the Board has been provided with sufficient notice of that position. We decline to make that assumption.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To the extent Petitioner actually regards the entirety of Muller’s “media access response” as the recited “computer readable authorization object,” and believes a limitation with regard to the “computer readable authorization object” is met if at least a part of the identified object satisfies the limitation, that position has not been clearly articulated. Neither Patent Owner nor the Board has been provided with sufficient notice of that position. We decline to make that assumption.” slip op. at 3
NonePatents in suitUS 8,887,308 - EMC Corporation / EMC International US. Holdings, Inc. et al. v. Clouding Corp.All claims unpatentablePTAB · Oct 17, 2017 · IPR2014-01309 · APJ Rama G Elluru · IPR · Remand
Claims 6, 8, and 14 are unpatentable because Barnett alone, or Barnett combined with Allen ’664, teaches or suggests saving a state of the computer system.
RulingsRemand decision- RemandOther
“On May 1, 2017, the Federal Circuit issued a decision, vacating and remanding our Final Decision. EMC, 686 F. Appx. 858. The Federal Circuit determined we erred, and in particular determined that Petitioner properly argued, and Patent Owner did not dispute, that the combination of Barnett and Allen ’664 teaches the condition “when a likely solution [to a problem in the computer system] cannot be determined.” Id. at 860–62. 1 U.S. Patent 5,664,093 (Ex. 1005). 2 U.S. Patent 5,581,664 (Ex. 1006). The Federal Circuit further determined that Patent Owner admitted that there would have been motivation to combine Barnett and Allen ’664. Id. at 863. Of relevance to this decision, the Federal Circuit determined that Patent Owner’s only argument to the Board in support of nonobviousness was that Petitioner’s proposed combination of Barnett and Allen ’664 would not yield a solution that involves “saving a state of a computer system,” as the second half of claim 6, step 5 requires. Id. Because there is no claim of secondary considerations, the Federal Circuit remanded for us to answer only one question: “whether Barnett and Allen, considered in combination, would [have] suggest[ed] to a person of ordinary skill in the art ‘saving a state of the computer system.’” Id. The mandate issued on June 7, 2017.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The Federal Circuit further determined that Patent Owner admitted that there would have been motivation to combine Barnett and Allen ’664. Id. at 863. Of relevance to this decision, the Federal Circuit determined that Patent Owner’s only argument to the Board in support of nonobviousness was that Petitioner’s proposed combination of Barnett and Allen ’664 would not yield a solution that involves “saving a state of a computer system,” as the second half of claim 6, step 5 requires. Id. Because there is no claim of secondary considerations, the Federal Circuit remanded for us to answer only one question: “whether Barnett and Allen, considered in combination, would [have] suggest[ed] to a person of ordinary skill in the art ‘saving a state of the computer system.’” Id. The mandate issued on June 7, 2017.” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“determine that Petitioner has shown by a preponderance of the evidence that the combination of Allen ’664 teaches and Barnett teaches the limitation at issue. Patent Owner’s argument is not persuasive because it is based improperly on what Allen ’664 teaches individually, and not on the teachings of the combined references. As the Federal Circuit has explained, “[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 . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). In the combined system of Barnett and Allen ’664 proposed by Petitioner, a case template would be created, “when there is a fault in the computer system, to search for a case whose symptoms (i.e., the state of the computer system) match the fault.” Pet. Reply 12 (citing Ex.1024 ¶¶ 22–23, 25; Ex. 1006, 8:31–40). As Petitioner reasons, Allen ’664 teaches “saving of the case template of a problem,” and thus, the case template would comprise facts about the state of the faulty computer system. Id. at 12–13 (citation omitted) (emphasis added); see id. at 13 (Petitioner argues that a skilled artisan would understand that “the case retrieval step in the standard case-based reasoning cycle entails comparing a digital model of the presenting situation with the digital model of each of a collection of cases, and determining if there is a match.”). Petitioner avers, “[t]o match a problem to the cases in the case base [in the combined Barnett and Allen ’664 system], the case template may be constructed for the problem with attribute-value pairs which correspond to notable parameters of the problem.” Pet. Reply 13 (citing Ex. 1006, 5:2–6). Allen ’664 discloses that “[e]ach case 105 may comprise a set of attributes 301, each of which has a value 302. Attributes 301 and values 302 are typically manipulated as an attribute-value pair 303.” Ex. 1006, 4:32–36. Dr. Sacerdoti states that a skilled artisan “would understand that the attributes whose values describe a case template are the same attributes that describe a case that is stored in the case database.” Ex. 1024 ¶ 27. Allen ’664 further discloses that “[t]o match a problem 311 to the cases 105 in the case base 104, a case template 312 may be constructed for the problem 311 with attribute-value pairs 303[,] which correspond to notable parameters of the problem 311.” Ex. 1006, 5:2–6. Thus, we agree with Petitioner that when applying the teachings of Allen ’664 to Barnett, which teaches a fault management for any computer system, the case template includes the “information about the state of the faulty computer system.” See id. at 12; Ex. 1024 ¶¶ 22–26. Furthermore, Allen ’664 teaches saving the “case template” of a problem, as a “new case,” for which it cannot find a solution. Specifically, Allen ’664 teaches that: [T]he inference engine 111 may determine that there is no case 105 which is a good match for the case template 312. The inference engine 111 may create a new case 105 which partly or fully copies the case template 312 and may ask the user 119 (by means of the user interface 118) what the prescribed action 309 for the case 105 should be. The inference engine 111 may add the new case 105 to the case base 104 and proceed to another problem 311 with an augmented case base 104. Ex. 1006, 8:22–30. Thus, we further agree that in the combined Barnett and Allen ’664 system, when Allen ’664’s case template is saved as a “new case,” the “state of the computer system” would also be saved. See Pet. Reply 13–14. Accordingly, we further find that the combination of Barnett and Allen ’664 teaches or suggests “saving a state of the computer system.”” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Ex. 1005, 6:66–7:6. According to Dr. Sacerdoti, “it would be clear to a person of ordinary skill in the art that in order for the programmer or user to understand how and when [] additional rules should be added, a state of the computer system should be saved when the AI engine fails to determine a likely solution, so that the programmer or user can later determine the context in which the failure took place.” Ex. 1007 ¶ 75. Dr. Sacerdoti further states that “[because] actions such as this are implemented via rules in a rule-based system, it would be natural and obvious to a skilled artisan to add a rule to the rule base that states that when a likely solution cannot be found, such a state of the computer system should be saved.” Id. With regard to saving a state of the computer system, Dr. Sacerdoti, also opines as follows: It is known in the art that an effective means of enabling the debugging and improvement of virtually any software program is to save the state of the computer system at the point when a failure occurs. If an embodiment of the Barnett patent were not to have such a capability, it would be obvious to a skilled artisan to include this capability when implementing the invention disclosed in Barnett. Id. ¶ 74. We are persuaded by Dr. Sacerdoti’s testimony and determine that Petitioner has demonstrated that it was known that an effective means of enabling the debugging and improvement of almost any software program was to save the state of the computer system when a fault (i.e., failure) occurred, and a skilled artisan would have applied this teaching to Barnett’s fault management system. Accordingly, we find that Barnett alone teaches or suggests “saving a state of the computer system.”” slip op. at 9
Patent outcomesUS 5,944,839 unpatentable§ 103 obviousnessPatents in suitUS 5,944,839 - Apple Inc. v. Core Wireless Licensing S.A.R.L.Rehearing deniedPTAB · Sep 13, 2017 · IPR2015-01899 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claim 4 unpatentable as obvious over Schnarel, Aberg, and Smith.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision of the Board may file a request for rehearing. 37 C.F.R. § 42.71(d). The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he 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.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Smith’s use of indicators within the message center 6100 itself offers no teaching that would influence or motivate a POSITA to modify an application summary, rather than the application itself.” PO Resp. 37. This argument suffers from two flaws. First, there is no requirement that the references contain the motivation to combine or modify. See KSR, 550 U.S. at 420 (holding “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed”); see also Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1294 (Fed. Cir. 2006) (stating that the motivation to combine does not have to be explicitly stated in the prior art, and can be supported by testimony of an expert witness regarding knowledge of a person of skill in the art at the time of invention). Second, there is no requirement for bodily incorporation of Smith’s features into Schnarel and Aberg. See Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . .”). Instead, the question is “whether ‘a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[.]’” Id. (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). Thus, Patent Owner’s conclusory argument that Smith alone fails to provide a motivation is not persuasive. slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
§ 103 obviousnesscites KSRPatents in suitUS 8,713,476 - Apple Inc. v. Core Wireless Licensing S.A.R.L.Rehearing deniedPTAB · Sep 13, 2017 · IPR2015-01898 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claim 6 unpatentable as obvious over the stated combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“rehearing. 37 C.F.R. § 42.71(d). The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he 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.” Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“vicinity.” Req. Reh’g 3. We disagree that the specification, even in this passage, equates the two. Instead, we understand the full passage as listing several elements of environment—whether the telephone is Bluetooth enabled, whether there is Bluetooth application which was an associated summary window, and the location of the device. Ex. 1001, 4:47–52. In any case, the specification is clear that this is only an example. The specification teaches broadly that the application snapshot may vary with “the environment in which the mobile telephone finds itself,” and then provides an “example.” Thus, the specification is clear that the sentence beginning with “for example” is not intended to limit the term “environment.” See Ancora Tech., Inc. v. Apple, Inc., 744 F.3d 732, 735 (Fed. Cir. 2014) (holding non-limiting examples insufficient to narrow a term’s plain and ordinary meaning); see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373 (Fed. Cir. 2014) (noting “e.g.” in the specification does not limit a term). Thus, we disagree that this passage is inconsistent with our construction or limits the term “environment” in the way Patent Owner now proposes. slip op. at 4
- BurdenDecided for petitioner
“Yurkovic and Nason each taught the limitations of claim 6 because we “overlooked that claim 6 requires the ‘stored data types’ of a summary window vary, and not simply the data for a given type to vary.” Req. Reh’g 10–11. Patent Owner never identifies, however, where it argued that Yurkovic and Nason only disclose information varying, not type of information varying, which is fatal to its Request. See 37 C.F.R. § 42.71(d). This failure is especially egregious with respect to the grounds based on Nason and Nason and Yurkovic. Patent Owner never separately argued that Nason failed to teach the limitations of claim 6. See PO Resp. 43–44. Moreover, Patent Owner also never separately argued that the combination of Nason and Yurkovic failed to account for the limitations of claim 6. With respect to Nason and Nason and Yurkovic, there is nothing that we could have misapprehended or overlooked with respect to our findings regarding the obviousness of claim 6 for these grounds. Thus, these new arguments regarding Nason and Nason and Yurkovic with respect to claim 6 were waived. See Paper 8, 3 (Scheduling Order) (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”).” slip op. at 9
Claim constructioncites PhillipsPatents in suitUS 8,434,020 - PTAB · Sep 8, 2017 · IPR2015-01869 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–8, 10–12, 14–18, 20–23, 25, and 27–29 unpatentable over Shuen and RFC1234, and claim 19 unpatentable over Bellovin.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successDecided for petitioner
“mapping for the network address translation” under the Board’s construction of that phrase, i.e., “a property associated with the mapping in which the mapping expires after it has not been used in the translation of a packet for a period of time associated with the mapping,” the Petition cites the following language from Shuen:” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Disclaimer not foundDecided for petitioner
“from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000) (citations omitted). “To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.” Id. (citations omitted). Whether and to what extent material has been incorporated by reference into a host document is a question of law. Id.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for petitioner
“Id. at 3 (emphasis omitted). Notably, Patent Owner did not raise this argument (i.e., that Shuen’s “time to live” does not satisfy the recited “time out . . .” under the Board’s construction) in its Patent Owner Response. Patent Owner asserts, however, it “noted this deficiency of Petitioner’s proofs in the January 18, 2017 hearing” and “[t]his deficiency of Shuen was first raised in Patent Owner’s Preliminary Response.” Req. Reh’g. 4. However, our rules do not allow Patent Owner to incorporate arguments by reference from its Preliminary Response (see 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference form one document into another document”)), and our Scheduling Order provides that any arguments and evidence not contained in the Patent Owner Response will be “deemed waived” (Paper 9, 3). Petitioner asserted at the oral hearing that the argument was new and, as such, Petitioner did not have a reasonable ability to respond to the argument. Tr. 43:8–14. We determine Patent Owner has waived its argument that Shuen does not disclose the “has not been used” portion of our construction of the phrase “time out of the mapping for the network address translation.”” slip op. at 3
Claim construction§ 103 obviousnessPatents in suitUS 8,544,079
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.