• Samsung Electronics Co., Ltd. v. Promos Technologies, Inc.All claims unpatentable
  PTAB · Nov 28, 2018 · IPR2017-01416 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–3, 14–16, 22, and 28–36 are unpatentable: claim 22 is anticipated by Ito; the other claims are obvious over the stated combinations.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner. Although Patent Owner cites to the testimony of its declarant, Mr. Brahmbhatt, we do not find persuasive his testimony that the “claim element requiring the bias voltage to be ‘arbitrarily close to the ground voltage’ is not met by the Ito design which unintentionally, uncontrollably, and undesirably (per Ito) rises above – VTHP.” The intent, control, and desirability of the detector’s function in Ito is irrelevant to anticipation. See State Contracting & Eng’ g Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068 (Fed. Cir. 2003) (A reference may be directed to an entirely different problem than the one addressed by the inventor and still be anticipatory); Celeritas Technologies Ltd. v. Rockwell Intern. Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (Prior art that teaches away from the claimed invention can anticipate the claims based on what it discloses). Based on the disclosed function of the detector circuit in Ito, we determine that it meets the limitations recited in claim 22.” slip op. at 17

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

    “We agree with Petitioner. We determine that Petitioner, in the Petition, explained that one of ordinary skill in the art would have understood that the trip point would be substantially insensitive to variations in VDD based on the parameters set in Baker. See Pet. 31–32. The Petitioner and Dr. Baker provide a reasoned explanation for why the subject limitation, i.e., a “trip point which is substantially insensitive to power supply variations,” is disclosed and suggested by Baker, and why one would have been motivated to configure the inverter in Park to have a stable trip point, per Baker. Id. Further, we reaffirm our determination that one of ordinary skill in the art would have been motivated to configure Park’s circuit to have its trip point be substantially insensitive to power supply voltage variations, in keeping with Park’s overall objective of “constantly maintaining a back bias voltage with respect to the variation of an external voltage.” Dec. on Inst. 21–22 (citing Pet. 32; Ex. 1007, 3:45–57; Ex. 1002 ¶ 110).” slip op. at 29

  • Skill levelSkill level board ownOther

    “bachelor’s degree in electrical engineering or a similar field, and at least two to three years of experience in integrated circuit design.” Pet. 5–6 (citing Ex. 1002 ¶ 20). Patent Owner does not address the level of ordinary skill in its Patent Owner Response, but its declarant, Mr. Brahmbhatt, indicates that he has adopted and applied Petitioner’s level of ordinary skill in the art for purposes of his testimony. See Ex. 2001 ¶ 23. Based on the current record, we are concerned that Petitioner’s articulation contains no upper bounds, i.e., “at least a bachelor’s degree,” such that the level of ordinary skill proposed by Petitioner is not sufficiently specific. As such, we adopt the definition provided by Petitioner with minor variations: “a person having ordinary skill in the relevant art at the time of invention is a person with a Bachelor’s of Science degree in electrical engineering or a similar field, and two to three years of experience in integrated circuit design.” Additionally, we determine that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 12

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

    “September 24, 2018, i.e., during the pendency of the instituted proceeding” and contends that the challenged claims should be construed under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Pet. 10. We agree and determine that the instant patent expired on that date. Under the Phillips standard, claim terms are given their ordinary and customary meanings, as would be understood by a person of ordinary skill in the art, having taken into consideration the language of the claims, the specification, and the prosecution history of record. In the Decision on Institution, we acknowledged that Petitioner did not propose an express construction for any claim terms. Dec. on Inst. 12 (citing Pet. 11). In its Response, Patent Owner likewise does not propose explicit claim constructions for any claim terms, and its declarant, Mr. Brahmbhatt, indicates that he has assumed “that the claim terms have their ordinary customary meaning and that there are no specific constructions that I am to apply.” See PO Resp.; Ex. 2001 ¶ 24. As such, we determine that no claim terms require express construction and we apply the ordinary and customary meanings for all claim terms, as would have been understood by a person of ordinary skill in the art. slip op. at 12

  Patent outcomesUS 6,172,554 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,172,554
• Samsung Electronics Co., Ltd. v. Promos Technologies, Inc.All claims unpatentable
  PTAB · Oct 22, 2018 · IPR2017-01412 · APJ Jameson Lee · IPR · Final written decision

  Claims 10 and 11 are unpatentable as obvious over Donnelly and Iwamoto; claims 13 and 15 are unpatentable as anticipated by Jefferson.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art at the time of the alleged invention of the ’507 patent “would have had at least a bachelor’s degree in electrical engineering or a similar field, and at least two to three years of experience in integrated circuit design. (Ex. 1002, ¶¶ 18– 19.)” Pet. 5 (footnote omitted). Patent Owner has not expressed what constitutes the level of ordinary skill in the art. We find Petitioner’s proposal vague insofar as it includes the qualifier “at least” to describe the level of education and the amount of working experience. This qualifier results in ranges that are too broad to provide a meaningful indication of what knowledge and skills would have been possessed by one of ordinary skill in the art. We adopt the level of skill in the art proposed by Petitioner, as we credit the testimony of Petitioner’s declarant in that regard (Ex. 1002 ¶ 18), but eliminate the qualifier “at least” to eliminate vagueness. C.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Petitioner asserts that while Donnelly explains the functionality and general operation of its up/down counter, it does not provide any structural detail of the internal components of the counter, that Iwamoto discloses a shift register in a delay locked loop that has the same functionality as the up/down counter of Donnelly in a delay locked loop, and that Iwamoto discloses the structure of the shift register. Pet. 38. These assertions are supported by the testimony of Dr. Baker. Ex. 1002 ¶ 108. We credit Dr. Baker’s testimony and give it substantial weight. Petitioner explains that one of ordinary skill in the art would have looked to Iwamoto for the implementation details regarding a circuit having the functionality of Donnelly’s up/down counter to realize a functional implementation of a delay locked loop incorporating the functionality disclosed in Donnelly. Pet. 38. That assertion also is supported by the testimony of Dr. Baker. Ex. 1002 ¶ 109. Petitioner explains Therefore, just as the state (count value) of the up/down counter 620 in figure 5 of Donnelly selects the tap used to provide the output signal from the delay block 500, the state (location of the HIGH value) of the shift register 4 in figure 17 of Iwamoto selects the tap used to provide the output from the delay line 2. (Ex. 1002, ¶ 117.) Similarly, the phase detector 610 instructs the up/down counter 620 in figure 5 of Donnelly to count up or down based on the phase comparison it performs, while the phase comparator 610 in figure 17 of Iwamoto instructs the shift register 4 to shift UP or DOWN based on its phase comparison. (Id.) The change of state for both references as a result of the up/down indication form the respective phase comparisons by one increment. (Id.) Pet. 42–43. The explanation is supported by the testimony of Dr. Baker. Ex. 1002 ¶ 117. We credit Dr. Baker’s testimony and give it substantial weight.” slip op. at 42

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

    “The words of the claim are clear in not specifying which signal leads or lags, and there is no express disavowal by Patent Owner, either in the Specification or in the prosecution history, as will be explained below. We must not rewrite the claim to add the requirement proposed by Patent Owner. The Specification of the ’507 patent describes, When the second phase detector 30 determines that CKF [feedback clock signal] is more than 180◦ behind CKI [input clock signal], the second phase detector 30 controls switch 28 to be at position (2). The inverted buffered clock signal is thus selected, so that the input clock signal CKI is reversed by 180◦[.] Through the inversion, the phase difference needing to be compensated by the delay line 16' is made less than 180◦ and within the normal operation capabilities of the phase adjusting loop formed by phase detector 12, shift register 14', and delay line 16'. Ex. 1001, 3:7–15.10 The above-quoted description constitutes an affirmative disclosure of one embodiment, and not a disavowal of anything that is different. Elsewhere in the Specification, there also is no clear language of disavowal.” slip op. at 17

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “We disagree that for “according to the determining step” to have any meaning, Patent Owner’s proposed claim construction must be adopted. Rather, we find substantial meaning in “according to the determining step” without adding the non-inverted clock signal and the inverted clock signal as potential sources to the switch as proposed by Patent Owner. A different switch position is selected depending on the outcome of the determining step. We do not find that reading to be without meaning. As for the “inventive concept” and “fundamental purpose” assertions of Patent Owner, they go about the claim interpretation process in a reverse manner, by starting with the patent disclosure first, and then ensuring, are added to the claims under the name of claim interpretation. That is inappropriate. We must respect the language of the claims. It is a “bedrock principle” of patent law that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Innova, 381 F.3d at 1115; see also Vitronics, 90 F.3d at 1582 (“we look to the words of the claims themselves . . . to define the scope of the patented invention”); Markman, 52 F.3d at 980 (“The written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of claims.”). Phillips, 415 F.3d at 1312. “We do not read limitations from the specification into claims; we do not redefine words. Only the patentee can do that.” Thorner, 669 F.3d at 1366–67. The Federal Circuit has explained,” slip op. at 23

  Patent outcomesUS 6,069,507 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,069,507
• Samsung Electronics Co., Ltd. v. Promos Technologies, Inc.All claims unpatentable
  PTAB · Oct 22, 2018 · IPR2017-01413 · APJ Jameson Lee · IPR · Final written decision

  Claims 10, 11, 13, and 15 are unpatentable as anticipated by Kim because Kim discloses each limitation of the challenged claims.

  RulingsFinal written decision

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

    “The words of the claim are clear in not specifying which signal leads or lags, and there is no express disavowal by Patent Owner, either in the Specification or in the prosecution history, as will be explained below. We must not rewrite the claim to add the requirement proposed by Patent Owner.” slip op. at 16

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

    “We disagree that for “according to the determining step” to have any meaning, Patent Owner’s proposed claim construction must be adopted. Rather, we find substantial meaning in “according to the determining step” without adding the non-inverted clock signal and the inverted clock signal as potential sources to the switch as proposed by Patent Owner. A different switch position is selected depending on the outcome of the determining step. We do not find that reading to be without meaning.” slip op. at 22

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Pet. 26–28. The explanation is supported by the testimony of Dr. Baker. Ex. 1002 ¶¶ 72–73. We credit Dr. Baker’s testimony and give it substantial weight. Notwithstanding Patent Owner’s arguments to the contrary, discussed below, we are persuaded by Petitioner’s showings, summarized above, that Kim discloses “maintaining the phase difference between the input clock signal and the feedback clock signal within approximately 180◦.”” slip op. at 34

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “understand the term.” Ex. 2002 ¶ 28. We do not credit that testimony, because Mr. Gervasi does not adequately explain why the plain claim language of “selecting a switch position according to the determining step” should be read restrictively to require a selection between non-inverted and inverted input cock signals. As discussed above, it is claims which define the scope of an invention, not the Specification.” slip op. at 28

  Patent outcomesUS 6,069,507 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 6,069,507
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentable
  PTAB · Oct 16, 2018 · IPR2017-01049 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1, 3–10, and 12–18 as obvious over Sato and Humpleman; claims 2 and 11 as obvious over those references and Lawler.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedOther

    “of Sato’s Figures 1 and 2 to achieve the same functions described in relation to Figure 17. See Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc., 774 F.3d 968, 978 (Fed. Cir. 2014) (“[O]ne of ordinary skill is also one of ‘ordinary creativity’ that knows how to combine familiar prior art elements to achieve the same functions.”); Boston Sci. Scimed, 554 F.3d at 991 (“Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.”). Accordingly, we agree with Dr. Tjaden that a person of ordinary skill in the art would have looked to Sato’s Figures 1 and 2 for a teaching as to how the system illustrated in Sato’s Figure 17 controls electronic devices, such as a VTR for scheduling program recordings. Ex. 1152 ¶¶ 27, 28.” slip op. at 46

  • Skill levelOther

    “2. Level of Skill in the Art There is evidence in the record before us that enables us to determine” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “III. CONCLUSIONS Comcast has demonstrated by a preponderance of the evidence that (1) claims 1, 3–10, and 12–18 are unpatentable under § 103(a) over the combined teachings of Sato and Humpleman; and (2) claims 2 and 11 are unpatentable under § 103(a) over the combined teachings of Sato, Humpleman, and Lawler. Comcast, however, has not demonstrated by a preponderance of the evidence that (1) claims 1, 3–10, and 12–18 are unpatentable under § 103(a) over the combined teachings of Woo, Mizuno, and Rzeszewski; and (2) claims 2 and 11 are unpatentable under § 103(a) over the combined teachings of Woo, Mizuno, Rzeszewski, and Lawler.” slip op. at 86

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “E. Obviousness Over the Combined Teachings of Woo, Mizuno, Rzeszewski, and Lawler Comcast also contends that claims 2 and 11 of the ’413 Patent are unpatentable under § 103(a) over the combined teachings of Woo, Mizuno, Rzeszewski, and Lawler. Pet. 71–72. This ground relies upon Comcast’s argument that it would have been obvious to one of ordinary skill in the art to automate Woo’s manual call-in scheduling process by using Mizuno’s remote access guide web pages. Id. at 47–48 (citing Ex. 1102 ¶¶ 197–199). Because we determine that Comcast does not provide sufficient reasoning for combining the teachings of Woo and Mizuno, Comcast has not demonstrated a reasonable likelihood that it would prevail on its assertion that the subject matter of dependent claims 2 and 11 would have been obvious over the combined teachings of Woo, Mizuno, Rzeszewski, and Lawler.” slip op. at 85

  Patent outcomesUS 8,578,413 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,578,413
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentable
  PTAB · Oct 16, 2018 · IPR2017-01048 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1, 3–10, and 12–18 as obvious over Humpleman and Killian; claims 2 and 11 as obvious over Humpleman, Killian, and Lawler.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionTerm construed board ownDecided for petitioner

    “functionality of an “interactive television program guide” (i.e., navigable, selectable, and capable of controlling certain functions or settings), neither party directs us to, nor can we find, a disclosure in the specification that specifically identifies what element or elements constitute a “guide.” Given the lack of disclosure in this regard, we decline to limit the “guide” to a single software application. Rather, these disclosures support Comcast’s proposed construction that an “interactive television program guide” is “control software operative at least in part to generate a display of television program listings and allow a user to navigate through the listings, make selections, and control functions of the software.” We further clarify that, based on the plain language of independent claims 1 and 10, they indicate that the claim terms “local interactive television program guide” and “remote access interactive television program guide” are separately identifiable elements. See Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” (alteration in original) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004))). Our determination in this regard is supported by the specification, which includes various embodiments that treat these claim terms as separately identifiable elements capable of communicating with each other. See, e.g., Ex. 1001, 15:20–23 (“In still another suitable approach, the [local interactive television program guide and remote access interactive television program guide] may be different guides that communicate in a manner or manners discussed . . . herein.”), 23:4–7 (“The remote access [interactive television] program guide may . . . send audio, graphical, and text messages to the local interactive [television] program guide for playing or display by user television equipment 22.”). The specification also explains that the “local interactive television program guide” and “remote access interactive television program guide” may be the same guide, in which case they are separately identifiable elements in that each guide is compiled to run on a different platform. See id. at 15:15–18 (“The remote access and local guide may, for example, be the same guide but compiled to run on two different platforms and to communicate in a manner or manners discussed herein.”).” slip op. at 16

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “The relevant section of Humpleman is reproduced below: This patent application claims priority from provisional patent application Ser. No. 60/050,762, filed on Jun. 25, 1997, entitled Home Network, Browser Based, Command and Control and provisional patent application Ser. No. 60/059,499, filed on Sep. 22, 1997, entitled Improved Home Network, Browser Based, Command and Control, which are incorporated herein by reference. Ex. 1006, 1:7–13 (emphasis added). From this cited disclosure, we find the patentee in Humpleman incorporated the entireties of both provisional applications by reference. If the intent was to incorporate only one provisional or just part of one provisional, then we would agree that sufficient particularity has not been supplied. However, a reasonable interpretation of such an incorporation by reference clause is that all of the referenced provisional disclosures are incorporated. Similarly, there is no need to stipulate where particular material to be incorporated is found when that particular material is all.” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the knowledge level of a person of ordinary skill in the art. Relying on the testimony of its declarant, Dr. Tjaden, Comcast asserts that a person of ordinary skill in the art as of July 17, 1998, which is the earliest priority date on the face of the ’413 Patent, would be an individual who possesses the following: a bachelor’s degree in computer science, electrical engineering, computer engineering, or a similar discipline, and two years of experience with interactive program guides, set-top boxes, mobile computer devices, and techniques for delivering content or program guides over communication networks, such as a cable system, a local-area network, and the Internet. Pet. 12–13 (quoting Ex. 1002 ¶ 28). Alternatively, once again relying on the testimony of Dr. Tjaden, Comcast asserts that a person of ordinary skill in the art “could have had equivalent experience in industry or research, such as designing, developing, evaluating, testing, or implementing the aforementioned technologies.” Id. at 13 (quoting Ex. 1002 ¶ 28). Conversely, Rovi’s declarant, Dr. Shamos, does not offer an assessment of the level of skill in the art as of July 1998, nor does he explicitly state his intent to adopt Dr. Tjaden’s assessment. See generally Ex. 2011. Given Dr. Shamos’s lack of testimony on this matter, we adopt Dr. Tjaden’s assessment because it is consistent with the ’413 Patent and the asserted prior art, and apply it to our obviousness evaluation below.” slip op. at 25

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

    “The Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry is whether Comcast has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. When describing examples of what may constitute a sufficient rationale to combine, the Supreme Court elaborated that, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. Based on the record developed during trial, we agree with Comcast that one of ordinary skill in the art would have had a sufficient reason to implement Killian’s enhancements in Humpleman’s system. When, as here, a technique has been used to improve one device (i.e., Killian’s interactive features), and one of ordinary skill in the art would have recognized that it would improve similar devices in the same way (i.e., applying Killian’s interactive features to Humpleman’s system, thereby allowing viewers to more intelligently select, schedule, and record their viewing opportunities), using the technique is obvious unless its actual application is beyond the skill level of an ordinary skilled artisan. See Pet. 23–25; Ex. 1002 ¶¶ 102– 106. The record includes credible evidence explaining why applying Killian’s features to Blake’s system would not have been uniquely challenging or otherwise beyond the skill level of an ordinary skilled artisan. Comcast declarant, Dr. Tjaden, provides the necessary motivation for doing so—namely, “allowing viewers to more intelligently select, schedule, and record their viewing opportunities.” Ex. 1002 ¶ 106.” slip op. at 43

  Patent outcomesUS 8,578,413 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,578,413
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentable
  PTAB · Oct 16, 2018 · IPR2017-01050 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1, 3–10, and 12–18 are unpatentable as obvious over Blake and Killian; claims 2 and 11 are unpatentable as obvious over Blake, Killian, and Lawler.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “Beginning with the intrinsic record, neither party argues, nor could we find, an explicit definition for the claim term “interactive television program guide” in the specification of the ’413 Patent. The specification, however, is replete with descriptions of conventional, local, or remote interactive television program guides. For instance, the specification discloses that conventional interactive television program guides display “various groups of television program [guide] listings . . . in predefined or user-defined categories,” and “allow the user to navigate through [the] television program listings” and make a selection “using a remote control.” Ex. 1201, 1:28–33. For a conventional interactive television program guide, the user must physically be located in the same room as the set-top box on which the interactive television program guide is implemented to select programs for recording or to perform other guide functions. Id. at 1:34–42. In the context of discussing the implementation of a remote access interactive television program guide, the specification discloses that such a guide works in conjunction with a remote device to “provide users with the opportunity to remotely access features of the interactive television program guide on the interactive television program guide equipment and to remotely set program guide settings.” Id. at 2:64–3:4. The specification goes on to disclose that “[a]ny suitable interactive television program guide function or setting may be accessed,” including, but not limited to, “remotely select[ing] programming for recordings” and “remotely set[ting] and navigat[ing] through favorites (e.g., favorite channels, program categories, services, etc.).” Id. at 3:5–15. Although the aforementioned disclosures provide guidance as to the functionality of an “interactive television program guide” (i.e., navigable, selectable, and capable of controlling certain functions or settings), neither party directs us to, nor can we find, a disclosure in the specification that specifically identifies what element or elements constitute a “guide.” Given the lack of disclosure in this regard, we decline to limit the “guide” to a single software application. Rather, these disclosures support Comcast’s proposed construction that an “interactive television program guide” is “control software operative at least in part to generate a display of television program listings and allow a user to navigate through the listings, make selections, and control functions of the software.”” slip op. at 13

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

    “Beginning with the intrinsic record, neither party argues, nor could we find, an explicit definition for the claim term “interactive television program guide” in the specification of the ’413 Patent. The specification, however, is replete with descriptions of conventional, local, or remote interactive television program guides. For instance, the specification discloses that conventional interactive television program guides display “various groups of television program [guide] listings . . . in predefined or user-defined categories,” and “allow the user to navigate through [the] television program listings” and make a selection “using a remote control.” Ex. 1201, 1:28–33. For a conventional interactive television program guide, the user must physically be located in the same room as the set-top box on which the interactive television program guide is implemented to select programs for recording or to perform other guide functions. Id. at 1:34–42. In the context of discussing the implementation of a remote access interactive television program guide, the specification discloses that such a guide works in conjunction with a remote device to “provide users with the opportunity to remotely access features of the interactive television program guide on the interactive television program guide equipment and to remotely set program guide settings.” Id. at 2:64–3:4. The specification goes on to disclose that “[a]ny suitable interactive television program guide function or setting may be accessed,” including, but not limited to, “remotely select[ing] programming for recordings” and “remotely set[ting] and navigat[ing] through favorites (e.g., favorite channels, program categories, services, etc.).” Id. at 3:5–15. Although the aforementioned disclosures provide guidance as to the functionality of an “interactive television program guide” (i.e., navigable, selectable, and capable of controlling certain functions or settings), neither party directs us to, nor can we find, a disclosure in the specification that specifically identifies what element or elements constitute a “guide.” Given the lack of disclosure in this regard, we decline to limit the “guide” to a single software application. Rather, these disclosures support Comcast’s proposed construction that an “interactive television program guide” is “control software operative at least in part to generate a display of television program listings and allow a user to navigate through the listings, make selections, and control functions of the software.”” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Skill in the Art There is evidence in the record before us that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of its declarant, Dr. Tjaden, Comcast asserts that a person of ordinary skill in the art as of July 17, 1998, which is the earliest priority date on the face of the ’413 Patent, would be an individual who possesses the following: a bachelor’s degree in computer science, electrical engineering, computer engineering, or a similar discipline, and two years of experience with interactive program guides, set-top boxes, mobile computer devices, and techniques for delivering content or program guides over communication networks, such as a cable system, a local-area network, and the Internet. Pet. 14–15 (quoting Ex. 1202 ¶ 28). Alternatively, once again relying on the testimony of Dr. Tjaden, Comcast asserts that a person of ordinary skill in the art “could have had equivalent experience in industry or research, such as designing, developing, evaluating, testing, or implementing [these] technologies.” Id. at 15 (quoting Ex. 1202 ¶ 28). Conversely, Rovi’s declarant, Dr. Shamos, does not offer an assessment of the level of skill in the art as of July 1998, nor does he explicitly state his intent to adopt Dr. Tjaden’s assessment. See generally Ex. 2211. Given Dr. Shamos’s silence on this matter, we adopt Dr. Tjaden’s assessment because it is consistent with the ’413 Patent and the asserted prior art, and apply it to our obviousness evaluation below.” slip op. at 20

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “c. Summary In summary, Comcast has demonstrated by a preponderance of the evidence that the subject matter of independent claims 1 and 10 would have been obvious over the combined teachings of Blake and Killian. 6. Claims 3–9 and 12–18 In its Patent Owner Response, Rovi does not address separately whether the combined teachings of Blake and Killian account for the limitations of dependent claims 3–9 and 12–18. See generally PO Resp. 20– 41. We have reviewed Comcast’s explanations and supporting evidence as to how this proffered combination teaches these limitations, as well as its explanations as to how one ordinary skill in the art would have combined the relevant teachings of Blake with those of Killian, and we agree with and adopt Comcast’s analysis. See Pet. 50–59. Comcast, therefore, has demonstrated by a preponderance of the evidence that the subject matter of dependent claims 3–9 and 12–18 would have been obvious over the combined teachings of Blake and Killian.” slip op. at 64

  Patent outcomesUS 8,578,413 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,578,413
• Uber Technologies, Inc. v. X One, Inc.No claims unpatentable
  PTAB · Oct 12, 2018 · IPR2017-01264 · APJ Stacey G White · IPR · Final written decision

  Claims 1, 4–11, 13, 22–25, 27, 28, 31–37, 39–42, and 45 were not shown unpatentable because the asserted obviousness grounds failed to establish the required link to application startup.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “We have reviewed Dr. Bartone’s testimony, and we find his references to the front end and signal receiving elements were intended to denote that a person of ordinary skill’s understanding should include an understanding of the elements’ use at a system level in mobile wireless communications and navigation systems, but the ordinarily skilled artisan need not “have detailed understandings of every single aspect and every single system.” See Ex. 2007, 48:17–19, see also id. at 46:15–49:6. Under Dr. Bartone’s testimony, a person of ordinary skill in the art would not be required to have an understanding of, for instance, the details of the design of user applications or antenna except as required for an understanding of how these elements work within the mobile wireless communications and navigation systems. See id. Additionally, under our review of Petitioner’s proposed qualifications, we decline to adopt the qualifier “at least,” because the use of this qualifier introduces vagueness. Accordingly, on this record, we adopt the qualifications that a person of ordinary skill would have a fouryear degree in electrical engineering, computer science, or a related field of study, or equivalent experience, and two years of experience in or with mobile wireless communications and navigation systems, and this would include an understanding of how system elements work within mobile wireless communications and navigation systems. II. CLAIM CONSTRUCTION A. Introduction” slip op. at 9

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

    “We find that, in light of the specification and the plain meaning of the term, launching is not equivalent to running an application. See Ex. 2004 ¶ 37 (Mr. Sturza’s testimony citing dictionaries in support of his statement that “[o]ne of ordinary skill in the art would have understood that the ordinary meaning of ‘launching’ is during a program’s start up procedures”). The specification does not use these terms interchangeably; instead, launching refers to the initiation or startup of an application. See e.g., id at Fig 32 (first step in the flow chart is launching the application on a handset); 26:51–59 (describing Figure 32 as depicting the process by which a user can initiate joining a talk group); see also id at Figs 34–40 (depicting launching as the initial step). Thus, the claims require the recited activities to be “responsive to” or “in association with” the startup of the application. Patent Owner’s counsel asserts that the claims require some connectivity between launching the application and displaying the map. Tr. 26:21–27:4. Specifically, “there needs to be a connection either in time or by operation” between the launching of the application and the invocation of the recited method. Id. at 27:5–7. As noted above, the district court found that “‘[r]esponsive to launching’ simply places a temporal relationship on launching and the other claimed functions: they happen in response to launching. ‘In association with an application launched’ is broader, and just requires some relationship between launching and the claimed functions.” Ex. 2006, 39. We agree, but in the interest of providing more specificity, we clarify that the required temporal relationship with the claimed activities is one that requires the claimed functions to occur during or near the time of startup of the application. We provide this clarification because we have determined that the temporal relationship must be anchored to the startup of the application or else the term “launch” loses its meaning. The required relationship is not shown by simply pointing out that the application was started at some point in time prior to the occurrence of the recited activities. Finding otherwise would render meaningless the distinction between launching and running an application because the specification and plain meaning of the term indicate that launching is the startup of the application and running indicates the continued operation of that application. We are charged with giving the claim terms their broadest reasonable interpretation in light of the specification and that charge includes respecting the patentee’s specific word choice and giving that choice the appropriate meaning and emphasis. Therefore, we find that the plain meaning of “responsive to launching” requires that there be a temporal relationship between the startup of the recited application and the occurrence of the other recited activities and “associated with launch” is a broader term that requires a relationship between the startup of application and the recited activities. III. ANALYSIS A. Analysis of Asserted Ground of Obviousness Based on Konishi” slip op. at 14

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

    “This evidence, however, falls short of what is required under our construction of “responsive to launching.” See supra § II.B. Petitioner has established that an application is running on the mobile device and, thus, the application was launched at some point in time prior to the recited mapping activities. Petitioner, however, fails to provide sufficient evidence that one of ordinary skill in the art would have found it obvious to invoke the method responsive to the startup of the application. As described above, it is not enough to show that the application was launched, but rather there must be a showing as to the temporal relationship between the launch of the application and the recited method. This limitation is not met by merely showing that the application was launched at some point in time because we must give proper weight to a patentee’s choice to link the invocation of the method to the launch of the application and not to the running of the application. Thus, the evidence presented in this matter indicates that Konishi teaches that an application is launched, but the evidence fails to provide the necessary connection between Konishi’s application startup and method invocation.” slip op. at 21

  • ExcludeMotion to exclude, deniedMixed

    “any alleged deficiencies were remedied when Petitioner filed Exhibits 1029, 1030, and 1032, which are declarations of the translators for translated documents, Exhibits 1009, 1012, and 1015.11 Additionally, the declarations in Exhibits 1029, 1030, and 1032 contain statements that willful false statements are punishable by fine and imprisonment. See e.g., Ex. 1029. Accordingly, we deny Patent Owner’s motion to exclude the translations of 11 We granted Petitioner’s motion to file the supplemental declarations, in part, because the information in the supplemental declarations “constitutes additional support that allegedly confirms the accuracy of translations of prior art” and the filing could “obviate the need for filing additional authenticating documents in the future.” See Paper 20, 5. prior art references, Makoto, Konishi, and Mitsuoka (Exs. 1009, 1012, and 1015), their untranslated versions (Exs. 1008, 1011, and 1014), and associated declarations in support of the translations (Exs. 1010, 1013, and 1016). B. Exhibits 1005–1007, 1020, and 1022” slip op. at 37

  Patent outcomesUS 8,798,647 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,798,647
• Huawei Technologies Co., Ltd. v. Samsung Electronics Co., Ltd.Rehearing denied
  PTAB · Oct 11, 2018 · IPR2017-01979 · APJ Kamran Jivani · IPR · Rehearing

  The Board denied Huawei’s rehearing request, finding no abuse of discretion in denying institution on grounds 4–6 because the Petition did not adequately explain how to harmonize the references’ conflicting teachings.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). The 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 in a motion, an opposition, or a reply.” Id. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. We deny the Request for Rehearing for the reasons that follow. slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Id. Figure 1 of R1-071000 identifies the scope of its contribution as limited to transmission of control information together with data information. Id. Thus, R1-071000, on its face, is directed to the opposite scenario of R1- 072122, which is directed to transmitting control information without data. Id.; see also Dec. 14–15 citing (Ex. 1008, 1 (Title: “Data non-associated control signal transmission with UL data.”)). Even if we were to accept arguendo Petitioner’s first argument that R1-071000 invites skilled artisans to expand and apply the data mapping scheme of R1-072122, such an invitation does not remedy Petitioner’s failure to explain sufficiently how one with ordinary skill in the art would have modified the system of R1- 072122 to transmit control signals with data, contrary to the express teachings of that reference. See Reh’g Req. 4; Pet. 85–86. For instance, Petitioner does not address how one would reconcile the two references’ diametrically opposed teachings regarding placement of the ACK/NAK. As we stated: Finally, although the cited portions of R1-071000 teach placing data in the symbols directly adjacent to the symbol containing the reference signal, R1-071000 depicts placing the ACK/NAK in the symbols farthest from the symbol containing the reference signal––directly opposite to the cited teachings of R1-072122 describing placing the ACK/NAK in the symbols directly adjacent to the reference signal. Ex. 1008, Figs. 4, 5. Here too, Petitioner and Dr. Akl do not address how or why an ordinarily skilled artisan would have harmonized the disparate teachings of these two references. Dec. 15 (bold emphasis added; italics original). Absent sufficient evidence and explanation, Petitioner’s argument amounts to impermissible hindsight reconstruction of the challenged claims. See, e.g., In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (cautioning against the use of hindsight).” slip op. at 5

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Rehearing. Reh’g Req. 4–6. 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 in a motion, an opposition, or a reply.” Id. § 42.71(d). Petitioner identifies a single page of its Petition as “the place where [that argument] was previously addressed.” Reh’g Req. 4–6 (citing Pet. 86). The cited page of the Petition, recites only a single sentence and string citation related to this argument: “Further, a number of 3GPP contributions, including both R1- 071000 and R1-072122, expressly disclose and teach that it is advantageous to limit the number of different transmission formats due to complexity of UE design.” Pet. 86 (citing Ex. 1008, 2, 5; Ex. 1006, 2; Ex. 1009, 5; Ex. 1003 ¶ 225). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d); see also, e.g., Captioncall, Inc. v. Ultratec, Inc., IPR2014-00780, Paper No. 40 (PTAB May 19, 2016) (discussing that a rehearing request is “not intended as a vehicle simply to disagree with [the] outcome or to provide new arguments”). Contrary to Petitioner’s assertions on rehearing, the cited portion of the Petition does not provide sufficient explanation for the following statements made in the Request for Rehearing: that “R1-072122 also expressly teaches that a single mapping scheme for control information is preferred”; that “R1-070998, another contemporaneous 3GPP contribution, provides a similar statement”; or that “skilled artisans would have been motivated to apply the same control mapping scheme regardless of the presence of data.” Compare Reh’g Req. 4–6 with Pet. 86. Indeed, the cited page of the Petition does not discuss R1-070777or R1-070998. See Pet. 86. Because Petitioner’s second argument was not presented in its Petition, we do not consider it on rehearing. 37 C.F.R. § 42.71(d). To the extent Petitioner contends its declarant Dr. Akl presented the extensive argument that Petitioner now puts forth in its Request for Rehearing, our rules particularly require identification of “the place where [that argument] was previously addressed in a motion, an opposition, or a reply.” Id. (emphasis added); see also 37 C.F.R. § 42.6(3) (prohibiting incorporation of arguments by reference).” slip op. at 6

  § 103 obviousness
  Patents in suitUS 8,761,130
• Comcast Cable Communications, LLC v. Promptu Systems Corp.Institution denied
  PTAB · Oct 10, 2018 · CBM2018-00033 · APJ Karl D Easthom · CBM · Institution

  The Board denied institution of CBM review of claims 14–52, exercising discretion because Comcast advanced a conflicting claim construction in concurrent proceedings.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied

    “Petitioner argues the Board should not exercise its discretion to deny this CBM Petition based on the ’344 and ’345 Petitions, because “the grounds for unpatentability identified in this petition are different than the grounds for unpatentability identified in the IPR petitions—indeed, the grounds for unpatentability raised here are not permitted in an IPR proceeding,” and Patent Owner had “not yet filed a preliminary response to the pending IPR petitions challenging the ’196 Patent.” Pet. 4, n.1 (citing General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 16 (PTAB Sept. 6, 2017) (identifying relevant factors)). Nevertheless, as Patent Owner argues, General Plastic cites a non-exhaustive list of factors. See Prelim. Resp. 5–6. Petitioner fails to explain why it filed this CBM 2 “Congress enacted § 112, ¶ 6, in response to Halliburton,” 329 U.S. at 1. Warner–Jenkinson Co. Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 27 (1997). Petition (filed April 2, 2018) about three and a half months after it filed the ’344 and ’345 Petitions (both filed Dec. 19, 2017) with competing claim construction arguments that impact central aspects of both trials. Petitioner’s implied argument that Congress only authorized certain grounds for inter partes reviews and limited other grounds to CBM reviews (e.g., § 112, ¶ 2), fails to explain sufficiently why the Board should entertain Petitioner’s new claim construction that potentially would impact central and major aspects of the concurrent ’344 and ’345 IPRs instituted based on a prior contradictory claim construction advanced by Petitioner.” slip op. at 10

  • Other 314aInstitution denied discretionary otherDenied

    “A potential consequence of instituting the instant CBM based on Petitioner’s arguments related to the scope issue raised by Patent Owner involves at least raising the related issue of whether to terminate the ’344 and ’345 IPRs. See BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013- 00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). Petitioner does not propose terminating the ’344 and ’345 IPRs in the event that we decide to institute the instant CBM proceeding. Without terminating the ’344 IPR and ’345 IPR, instituting the instant CBM proceeding based on Petitioner’s means plus function arguments would result in different Board panels proceeding under two contradictory claim constructions on a central issue––i.e., for the same claim term of the same patent, involving all of the challenged claims in the CBM and a slight majority of the collectively challenged claims in the ’344 and ’345 IPRs. The Board’s reviewing court disfavors conflicting “reasoning on a point . . . central to [the Board’s] analysis” absent an adequate explanation for the conflict. See Emerson Electric Co. v. Sipco, LLC, No. 2017-1866, 2018 WL 4145081, slip op. at *3 (Aug. 29, 2018 Fed. Cir.) (“Because the Board did not adequately explain its reasoning on a point that was central to its analysis and its conclusion on that point was contrary to another Board opinion on nearly identical facts, we vacate the Board’s determination as to the appealed claims and remand for further proceedings.”) (nonprecedential); Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1322 (Fed. Cir. 2017) (“[W]here a panel simultaneously issues opinions on the same technical issue between the same parties on the same record, and reaches opposite results without explanation, we think the best course is to vacate and remand these findings for further consideration.”). As noted above, Petitioner does not present an adequate explanation for the contradictory claim constructions. Whether a recitation constitutes a means-plus-function element does not depend on whether the claim is construed in an inter partes review or a covered business method patent review.” slip op. at 8

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

    “Accordingly, based on the particular circumstances involved as discussed above, we decline to decide whether to adopt Petitioner’s means plus function claim construction position asserted here. On one hand, if we decided to adopt it and institute a CBM review on that basis, concurrent trials would proceed on diametrically opposed claim construction positions––unless the panel in the ’344 and ’345 IPRs decided to terminate those trials based on our adoption of the diametrically opposed claim construction asserted here. At the least, even without a termination the ’344 and ’345 IPRs, the diametrically opposed positions would infiltrate the three proceedings and raise collateral issues, undermining the Board’s resources and effort “to secure the just, speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b). On the other hand, if we decide Petitioner’s showing here lacks sufficient support on the merits for purposes of a CBM review, a decision denying institution may serve to advise the parties on this limited record that Petitioner’s means plus function claim construction position in the ’344 and ’345 IPRs appears to be correct even though no final decision has been reached there yet.” slip op. at 11

  • BurdenNot reached

    “As presented, Petitioner advances the second and third theories of unpatentability as contingent upon not adopting its central argument that “program steps” represents a means plus function term. Because we do not decide the issue of whether “program steps” constitutes a means plus function term, we decline Petitioner’s invitation to investigate further its second and third contingent theories. In addition, given the prominence of the means plus function claim construction issue raised by the parties, in the event we were to decide to institute the instant CBM proceeding, the means plus function issue likely would dominate the CBM trial and may impact the ’344 IPR and ’345 IPR, as discussed above.” slip op. at 10

  Discretionary denial
  Patents in suitUS 7,047,196
• Adobe Systems Incorporated v. William GreciaRehearing denied
  PTAB · Sep 7, 2018 · IPR2018-00418 · APJ Michelle N Wormmeester · IPR · Rehearing

  The Board denied Adobe’s rehearing request, leaving institution denied on all three § 103 grounds because Petitioner did not show Venkataramu was a publicly accessible printed publication.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “We are not persuaded that the textbook including a citation to Venkataramu was a research aid that is sufficient, without further explanation, to establish the public accessibility of Venkataramu prior to the earliest possible effective filing date for the ’555 patent, namely, March 21, 2010. Although a research aid may establish the public accessibility of a potentially invalidating reference, the research aid itself must have been publicly accessible in order to do so. See Blue Calypso, 815 F.3d at 1350 (agreeing with the Board, where it “acknowledged that the published article was publicly accessible and that it related to the same research presented in [the potentially invalidating reference]” but “nevertheless found the article insufficient because it did not include any citation to [the potentially invalidating reference]”). Here, Petitioner has not adequately shown that the textbook including a citation to Venkataramu was publicly accessible before March 21, 2010.” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “accessibility, we note that the Federal Circuit in Blue Calypso, which was decided after these Board decisions, explains that “[j]ust as indexing plays a significant role in evaluating whether a reference in a library is publicly accessible, . . . indexing, ‘[w]hether . . . through search engines or otherwise,’ is also an important question for determining if a reference stored on a given webpage in cyberspace is publicly accessible.” 815 F.3d at 1349 (internal citations omitted). The Federal Circuit further explains that the “absence of evidence demonstrating that the website at which the article was located was indexed and thereby findable by an internet search engine” can be overcome, however, by a showing that an ordinarily skilled artisan “would have been independently aware of the [website] as a prominent forum for discussing [the pertinent] technologies.” Id.” slip op. at 8

  • BurdenDecided for patent owner

    “We are not persuaded that the textbook including a citation to Venkataramu was a research aid that is sufficient, without further explanation, to establish the public accessibility of Venkataramu prior to the earliest possible effective filing date for the ’555 patent, namely, March 21, 2010. Although a research aid may establish the public accessibility of a potentially invalidating reference, the research aid itself must have been publicly accessible in order to do so. See Blue Calypso, 815 F.3d at 1350 (agreeing with the Board, where it “acknowledged that the published article was publicly accessible and that it related to the same research presented in [the potentially invalidating reference]” but “nevertheless found the article insufficient because it did not include any citation to [the potentially invalidating reference]”). Here, Petitioner has not adequately shown that the textbook including a citation to Venkataramu was publicly accessible before March 21, 2010.” slip op. at 12

  • Strike new argumentNew argument disregardedOther

    “1016, 2). Relying on FanDuel, Inc. v. CG Tech. Dev., LLC, Case IPR2017- 00902, slip op. at 15 (PTAB Oct. 18, 2017) (Paper 14), Petitioner contends that such evidence is “separate evidence of the public dissemination and availability of [the textbook].” Req. Reh’g 6. This is a new argument, which does not address what we overlooked or misapprehended in our Institution Decision. Petitioner does not indicate where in the Petition or Ms. Manek’s Declaration this argument was raised. In any event, we are not persuaded by Petitioner’s new argument. The panel in FanDuel explained that “[t]he statutory phrase ‘printed publication’ has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was ‘published.’” FanDuel, slip op. at 14 (emphasis added). Here, evidence that the textbook was published in the United States and that unauthorized copying of the textbook was prohibited does not establish when the textbook became publicly accessible.” slip op. at 14

  § 102 anticipation
  Patents in suitUS 8,402,555

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.