- Impinj, Inc. v. NXP B.V.Rehearing deniedPTAB · Jul 2, 2021 · IPR2020-01422 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Impinj’s rehearing request, leaving institution denied on all challenged claims because the Petition did not sufficiently explain how MacLellan or Gallagher teaches “specific useful data.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We are not persuaded by Petitioner’s contentions. In sum, Petitioner argues in its Request for Rehearing that “specific useful data” could be comprised of all the “useful data.” Even if we were persuaded that “specific useful data” could be comprised of all the “useful data,” however, Petitioner did not make this argument in its Petition. As discussed in our Institution Decision, Petitioner instead argued that “MacLellan discloses that a specific set of ‘optional data’ is stored on a tag.” Pet. 23 (emphasis added) (cited by Inst. Dec. 12–13). The wording of this argument suggests that the “specific set” is comprised of a portion of all the optional data. Petitioner, however, relied on the same passage describing optional data 603 in MacLellan to support its contentions that MacLellan teaches both the recited “useful data” and the recited “specific useful data.” For instance, with respect to “useful data,” Petitioner asserted that MacLellan “discloses that optional data sent by the tag can be ‘any data stored on the Tag 102 that is always transmitted to the Interrogator 101 together with the Tag ID 602.’” Id. at 18–19 (quoting Ex. 1003, 8:30–32). As to “specific useful data,” Petitioner asserted that “MacLellan discloses that a specific set of ‘optional data’ is stored on a tag,” and cited again to MacLellan’s teaching that “Optional Data 603 . . . contain[s] any data stored on the Tag 102 that is always transmitted to the Interrogator 101.” Id. at 23 (citing Ex. 1003, 8:30–31). In our Institution Decision, we stated that Petitioner did not sufficiently explain how MacLellan teaches specific useful data. Inst. Dec. 12–13. In particular, we noted that Petitioner did not sufficiently explain how optional data 603 on a tag is a “specific set” of the same optional data 603. See id. Because Petitioner’s arguments and evidence focused on MacLellan’s optional data as satisfying both “useful data” and “specific useful data” limitations, it was incumbent upon Petitioner to explain its claim scope position regarding these two terms. Alternatively, it was Petitioner’s burden to explain how MacLellan’s optional data would satisfy both limitations despite the claim utilizing different terms. In other words, if Petitioner considers a “specific set” of optional data to be all the optional data, Petitioner needed to state that position in the Petition and provide sufficient explanation with supporting evidence in light of the ’092 patent’s teachings that distinguish useful data from specific useful data.” slip op. at 8
NonePatents in suitUS 7,257,092 - Clearone, Inc. v. Shure Acquisition Holdings, Inc.Rehearing deniedPTAB · Nov 3, 2020 · IPR2019-00683 · APJ Jon M Jurgovan · IPR · Rehearing
The Board denied ClearOne’s rehearing request, declining to reconsider the patentability of proposed substitute claims 57–67 based on newly raised Levit and Gulbrandsen.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Standard for Reconsideration The party challenging a Board decision has the burden of showing the decision should be modified, and 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 its papers. 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“New evidence is not permitted in a request for rehearing without a showing of good cause. See Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC, IPR2018-00816, Paper 19 (PTAB January 8, 2019) (precedential). In this case, Petitioner appears to attempt to show good cause, though not expressly stating so, through the allegation that Patent Owner violated its duty of disclosure. Req. Reh’g 1–2. In the Order (Paper 95), the Board found Petitioner’s allegation insufficient, and did not permit briefing on a motion for sanctions for violating the duty of disclosure. Because Petitioner presents no other basis for good cause, the Board declines to admit the new evidence of Levit and Gulbrandsen into this proceeding.” slip op. at 6
NonePatents in suitUS 9,565,493 - Quest USA Corp. v. Popsockets LLCRehearing deniedPTAB · Oct 5, 2020 · IPR2018-00497 · APJ Christa P Zado · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place its final decision that claims 9–11, 16, and 17 are unpatentable as anticipated by Grinfas.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision. 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.” For the reasons discussed below, we deny the Rehearing Request.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We decline to reconsider our construction. In the Final Decision, we declined to use the phrase “pleated folds” in our construction—a phrase that is not used anywhere in the ’031 patent—and instead adopted the terminology actually used in the patent, i.e., hinges, flexural hinges, and flexural membranes. Final Dec. 21–22. We cited portions of the ’031 patent that use the term “accordion,” noting the patent consistently describes an “accordion” as having “flexural hinges or flexural membranes that include hinges that facilitate extending/expanding and collapsing the accordion.” Id. at 20 (citing Ex. 1001, 5:50–53, 5:56–67, 6:7–16). As discussed in the Final Decision, Patent Owner provided insufficient basis to “replace the term actually used in the Specification [to describe accordions] . . . with a term that is not used in the Specification.” Id. at 20–21. Consistent with the use of the term “accordion” in the ’031 patent, we interpreted “accordion” as “a structure that has hinges, such as flexural hinges or flexural membranes, that fold so as to facilitate extending/expanding and collapsing of the accordion.” Id. at 19. We are not persuaded we erred in adopting a construction that uses the phrase “flexural hinges or flexural membranes” rather than one that uses the phrase “pleated folds.” See id. at 19–24 (explaining that the intrinsic evidence supports our adopted construction of “accordion”).” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundDecided for petitioner
“inherently discloses the recited use in the claim limitation “a securing element for attaching the socket to the back of the portable media player or portable media player case.” Req. Reh’g 4 (citing Final Dec. 59–60). Patent Owner suggests that we arrived at this conclusion based on our understanding that “Patent Owner did not dispute that this element is inherently disclosed.” Id. (citing Final Dec. 59–60).1 Contrary to Patent Owner’s suggestion, our finding that Grinfas provides inherent disclosure was not based on whether Patent Owner disputed this issue. Rather, it was based on the evidence and arguments provided by Petitioner. Final Dec. 60– 64. For example, we credited the testimony of Petitioner’s expert, Dr. Glenn E. Vallee, Ph.D., that the securing structures in Grinfas were inherently capable of attaching to the back of a telephone because it was supported by 1 We note that the cited portion of our Final Decision addressed whether certain elements in Grinfas (e.g., adhesive pad 46, fastenable straps 54, and attachment portion 92) are “securing elements”—i.e., whether they are securing or fastening—but it did not address whether Grinfas inherently discloses how such elements are used—i.e., whether they are inherently capable of fastening to the back of a portable media player. That issue is addressed at pages 62–68 of our Final Decision. the record. Final Dec. 63–64 (citing Ex. 1004 ¶ 67; Ex. 1005, 8:3–9, Figs. 4A–B). The Rehearing Request does not acknowledge or address the explanation provided in the Final Decision, much less identify what we might have misapprehended or overlooked in finding Dr. Vallee’s testimony to be credible and supported by the record. Req. Reh’g 4. For the foregoing reasons, Patent Owner has not shown that we misapprehended or overlooked any matter in finding Grinfas discloses a securing element inherently capable of being attached to the back of a portable media player.” slip op. at 9
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We did not provide an express construction of the term “accordion” in the Decision Instituting Inter Partes Review, finding that no terms required express construction at that time. Paper 8, 8 (“Inst. Dec.” or “Institution Decision”). However, we rejected Patent Owner’s preliminary proposal that an “accordion” must be a “structure with pleated folds so as to collapse like the bellows of a musical accordion,” explaining the ’031 patent describes accordions as having flexural hinges that allow the walls of the accordion to fold up generally in parallel to each other, rather than stacking on top of one another. Inst. Dec. 22–26. Citing numerous disclosures in the ’031 patent describing an “accordion” as a structure having flexural hinges, we preliminarily determined “the term ‘accordion’ includes structures that have flexural hinges.’” Id. at 24 (citing Ex. 1001, 1:45–48, 5:50–53, 6:7–31, Fig. 3A, Fig. 3B, Fig. 5). Accordingly, we determined on the preliminary record that the term “accordion” did not preclude the structure in Grinfas, which has flexural hinges that flex and fold. Id. at 24–25. Therefore, our Decision on Institution gave Patent Owner notice and the opportunity to address our interpretation of an “accordion” as including structures that have flexural hinges. Id. at 24. During trial, although Patent Owner maintained its position that “accordion” should be construed as having “pleated folds,” PO Resp. 5, Patent Owner agreed with our preliminary determination that the term “accordion” may include structures with flexural hinges, id. at 19–20. However, Patent Owner argued that not all structures with flexural hinges are “accordions,” because there were well-known non-accordion structures that have flexural hinges. Id. at 20. In accordance with Patent Owner’s argument that not all structures having flexural hinges are “accordions,” in the Final Decision we clarified that the flexural hinges fold “so as to facilitate extending/expanding and collapsing of the accordion.” Final Dec. 20, 22–23. This clarification did not violate the APA or due process because it did not alter any requirements in the claims, which recite that the accordion is capable of extending (i.e., extending/expanding) and retracting (i.e., collapsing). See Ex. 1001, 7:65–8:3 (claim 9). Moreover, the outcome of the Final Decision would have been the same regardless of the clarification that not all structures with flexural hinges are an “accordion.” The clarifying language in our construction in the Final Decision clarifies that structures not present in Grinfas would not meet our construction of “accordion.” Accordingly, had we not included the clarification, the outcome of our Final Decision would have been the same.” slip op. at 11
Claim construction§ 102 anticipationPatents in suitUS 8,560,031 - Donner Technology, LLC v. Pro Stage Gear, LLCRehearing deniedPTAB · Dec 9, 2019 · IPR2018-00707 · APJ John A Hudalla · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving claims 5, 7, 8, 18, 20, and 21 not shown unpatentable on the challenged obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. See 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction of the phrase ‘above the surface,’ then the Board’s construction cannot be reasonably discerned.” Req. Reh’g 8. If that were the case, Petitioner contends we “must articulate and explain [our] construction for the purposes of judicial review.” Id. at 9. Yet Petitioner failed to explain in the Petition how the cited references teach the “above the surface” limitations of claims 5 and 18 under any construction of these limitations, including the one implied in footnote 8 of the Petition. See Pet. 55 n.8, 69 n.10. Petitioner did not specify any dispute regarding the meaning of the term “the surface” and neither did Patent Owner. See, e.g., id. at 8–9 (no terms proposed by Petitioner for construction), 55 (Petitioner’s analysis for claim 18 referring to earlier analysis relative to the “effect mounting surface”); Paper 26, 34–41, 43 (no arguments in Patent Owner’s Response based on an interpretation of “the surface”); Paper 34, 16–17 (Petitioner in its Reply referring to arguments in the Petition for “above the surface”). As such, we did not expressly construe “above the surface.” See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). In addition, Petitioner purports to construe “above the surface” for the first time. See Req. Reh’g 2, 7 (stating that the plain and ordinary meaning of “above the surface” is “above the ground” or “above the area to provide spacing for cables to run underneath the frame”). Petitioner could have, but did not, put forth such constructions in its Petition. See 37 C.F.R. ordinary meaning of “above the surface” in the Request for Rehearing (see Req. Reh’g 7), Petitioner’s arguments come too late. And Petitioner never previously attempted to associate the recited “surface” with “the ground” or “the area to provide spacing for cables to run underneath the frame.” Contrary to Petitioner’s new constructions, and as explained above, Petitioner previously associated the recited “surface” with “the effect mounting surface.” See Pet. 55 n.8 (“the ’023 Patent provides no support for the frame in Claim 15 being supported above the effect mounting surface in Claim 18” (bold emphasis added)), 69 n.10 (referring to footnote 8).” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“of the “above the surface” limitation was framed by its statement in the Petition that claims 5 and 18 are invalid “under 35 U.S.C. § 112, second paragraph, because the ’023 Patent provides no support for the frame . . . being supported above the effect mounting surface.” Pet. 55 n.8 (italics in original; bolding emphasis added), 69 n.10 (referring to footnote 8); see also Final Dec. 51 n.12 (quoting same). Thus, Petitioner associated the “surface” in the recitation “above the surface” with the “effect mounting surface” recited in base claims 2 and 15. Despite this association, Petitioner’s obviousness analysis made no attempt to show that Arseneault’s higher backwall (i.e., the “frame base,” see Pet. 51–53, 55–56) supports SCC-700’s cross members A–D (i.e., the “frame,” see id. at 50) above the units board of SCC-700 (i.e., the “effects mounting surface,” see Pet. 46–47).1 Rather, Petitioner addressed only the “frame base supporting the frame” and “allowing the cable to pass beneath the frame” limitations of claims 5 and 18. See Pet. 54–55, 69–70. Thus, we determined that Petitioner’s analysis “d[id] not establish that Arseneault teaches ‘a frame base supporting the 1 As we acknowledged, Petitioner’s analysis for claim 18 builds upon its anticipation analysis for claim 15 and its analysis for the recited “frame” in claim 1. See Final Dec. 51–52.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“3 We also considered Petitioner’s argument from its Reply that an ordinarily skilled artisan “could have easily made a rigid connection between the cross members and end-members using the same fasteners that are disclosed in Carter.” Final Dec. 72 (citing Paper 34, 24; Ex. 1051 ¶ 26). We were not persuaded by this rationale because Petitioner did not provide a reason why an ordinarily skilled artisan would have made such a connection. See id. at 75. Petitioner does not contest this determination in its Request for Rehearing.” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 6,459,023 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01893 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, maintaining its claim construction and its finding that Kloba and Multer render claims 1–30 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[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 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As explained above, the Final Written Decision concluded that the ordinary meaning of the claim language is broad enough to encompass the sending of communications, based upon the results of processing consumer usage information, containing management instructions. FWD 25. Patent Owner does not explain persuasively why that conclusion was incorrect. We maintain that conclusion here. In claim 1, for example, it is reasonable to read the phrase “based upon the results of having processed at least some of the received consumer usage information” as modifying either “configured to send communications” or “management instructions that cause the stored data content files of one or more assets to be automatically modified.” Id. at 24. Patent Owner does not explain persuasively why such language could only modify management instructions.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 51–55. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 52–54 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 33–34; Reply 8–9). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 8,577,359 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01892 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no error in its claim construction and concluding that Kloba and Multer render claims 1–30 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[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 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language (claim 1, for example) is that “managing” is “based upon the results of having processed at least some of the received consumer usage information” and that the managing is, in turn, accomplished “by sending communications containing management instructions that cause the stored data content files of one or more assets to be automatically modified.” It is the managing, and thus the sending of communications containing management instructions, that is based on the results of having processed consumer usage information, not the management instructions themselves. To the extent Patent Owner still argues that the management instructions themselves must be based on the results of having processed consumer usage information in order to accomplish the recited management, that is not recited in the claims. Rather, the only limitation placed on the “management instructions” by the plain language of the claims is that they “cause the stored data content files of one or more assets to be automatically modified.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Ex. 1015, 20:11–21. We found that this teaches communicating management instructions “based upon the results of processing at least some of the received consumer usage information,” as recited in claim 1. FWD 53 (“The server communicates its single set of instructions to the client as a result of processing all of the information it receives in the single-up transmission from the client. This includes deltas, requests for new channels, and changes to preferences.”); see also Ex. 1015, 8:7–19. This finding applies equally under Patent Owner’s new proposed construction, namely, “the server’s determination to communicate the claimed management instruction(s) in particular as part of a transmission sent to at least one consumer device asset is what needs to be ‘based upon the results of processing at least some of the received consumer usage information.’” PO CC Br. 4 (emphasis omitted). Specifically, the decision to communicate synchronization information (including deltas and new channels) from the server to the client is based, in part, on the server’s synchronization of the client’s channel information (including deltas and new channels) with the providers of the channels, which involves processing the requests for new channels and changes to preferences. Ex. 1015, 8:7–19, 20:1–21. Thus, Kloba and Multer (US 6,671,757 B1, Ex. 1016) render claims 1 and 20 obvious even under Patent Owner’s new proposed construction.” slip op. at 16
Claim construction§ 103 obviousnessPatents in suitUS 8,577,358 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01891 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, maintaining that claims 1–30 are unpatentable as obvious over Kloba and Multer under the adopted claim construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[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 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language is that “based upon the results of processing at least some of the received consumer usage information” modifies “communicate.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 43–48. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 44–46 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 32–33; Reply 6–7). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 8,504,007 - Hid Global Corp. v. Morphotrust USA, LLCAll claims unpatentablePTAB · Mar 14, 2019 · IPR2017-01941 · APJ Christa P Zado · IPR · Final written decision
Claims 1–3 and 5–12 are unpatentable under the asserted obviousness grounds; the contingent motion to amend is denied, and substitute claims 13–15 and 17–24 are unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“reasonable construction standard, and interprets all terms of the challenged claims “in accordance with their plain and ordinary meaning.” Pet. 7.11 Patent Owner proposes we construe the terms “tactile feature,” “tactile effect,” and “felt by touch,” to mean “feature/effect that can be easily perceived by touch by most human beings with ordinary sensory/tactile capabilities.” PO Resp. 9–10. However, no dispute arises regarding the interpretation of these terms. Accordingly, we determine that we need not construe these terms.” slip op. at 15
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art Petitioner, citing the testimony of its declarant, Dr. Tentzeris, asserts” slip op. at 15
- Expert testimonyPetitioner expert creditedOther
“3. Weight of Dr. Tentzeris’s Testimony Patent Owner contends “Dr. Tentzeris’s testimony is not credible and provides no assistance to the Board’s obviousness analysis.” PO Resp. 59. According to Patent Owner, “[d]uring his deposition, Dr. Tentzeris demonstrated a complete lack of understanding of the technology.” Id. Patent Owner urges, therefore, that “Dr. Tentzeris’s sworn testimony is not credible or entitled to any weight.” Id. at 65. First, Patent Owner alleges that Dr. Tentzeris’s experience with lasers does not relate to the field of invention. Id. at 59. Petitioner persuasively responds that Patent Owner ignores the portions of Dr. Tentzeris’ deposition where he explained both his education relating to the field of invention (e.g., Ex. 2006, 19:1–20:18) and practical experience in actually experimenting within the field (id. 20:19–27:12). Reply 26. Second, Patent Owner contends Dr. Tentzeris “refused to admit that the figures in Maurer are cartoons or imprecise renderings drawn by an artist.” Id. at 59. But, Patent Owner’s citations reveal that Dr. Tentzeris acknowledged that the “dimensions could be different, could be larger or smaller but the fundamental teachings [about elevated features and discoloration] . . . leads to formation of structures similar Fig. 2.” See id. (quoting Ex. 2006, 161:24–162:24). Patent Owner’s similar arguments about other figures that Patent Owner characterizes as “cartoons” fail to show a lack of credibility. The figures need not be dimensioned perfectly or represent “photographs or scanning electron microscope cross-sections” to lend insight, as discussed above. See id. at 60. Third, Patent Owner contends Dr. Tentzeris “brush[ed] aside”” slip op. at 108
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Patent Owner’s argument is that to implement Maurer’s relief structure without information printed directly beneath it would have “strip[ped] [Maurer] of its core teachings,” namely that of providing blackening of the core, which Patent Owner asserts was “the fundamental purpose of the invention.” PO Resp. 55. Patent Owner’s argument is unavailing because, even as Patent Owner acknowledges, this asserted fundamental purpose of Maurer may be implemented separately from Maurer’s relief structure, and Maurer’s relief-type structure is ancillary to the object of inscribing data on the core of the card. Id. Maurer states “[t]he object of the invention is to provide an identification card and a process for the production of the same which makes it possible to inscribe individual features, in particular personal data, in the interior card after lamination of the card blank.” Ex. 1005, 4:3– 7. Maurer explains “[t]his object is accomplished in accordance with the invention in that the information is provided on the core of the identification card through the transparent cover sheet which has already been laminated onto the card by means of a controlled laser beam. Id. at 4:10–14. Accordingly, even without concurrently marking the coversheet while inscribing data on the card core, Maurer satisfies the stated object of the invention, namely to inscribe information on the core layer. Moreover, Patent Owner cites nothing in Maurer or Bernecker would prevent a card from having both Maurer’s inscribed feature in one portion of the card, and Maurer and Bernecker’s combined security feature in another portion of the card. As Petitioner points out, the Board has recognized, In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) “does not preclude any modification of a reference that might diminish some advantages while leading to others.” Shimano Inc. v. Globeride, Inc., IPR2015-00273, Paper 40 at 12 (P.T.A.B. Jun. 16, 2016); see also Captionacall, LLC v. Ultratec, Inc., IPR2015- 00637, Paper 98 at 56 (P.T.A.B. Sept. 7, 2016) (“Patent Owner’s argument, taken to its logical conclusion, would classify virtually every modification to a stated intent of a prior art device as a case for inoperability”). Nor does obviousness require physical combinability. E.g., Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016); In re Mouttett, 686 F.3d 1322, 1332 (Fed. Cir. 2012).” slip op. at 101
Patent outcomesUS 8,083,152 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,083,152 - Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Some claims unpatentablePTAB · Jun 28, 2018 · IPR2017-00444 · APJ James A Tartal · IPR · Final written decision
Claims 10, 11, 14, 15, 17–19, 23, 25–28, 31, 33–35, 37, 39, and 40 are unpatentable as obvious; claims 1, 2, 6, 8, and 9 were not shown obvious.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“seeks. See 37 C.F.R. 42.20(c) (“The moving party has the burden of proof to establish that it is entitled to the requested relief.”). First, a motion to exclude deals with the admissibility of evidence under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.62 (applying the Federal Rules of Evidence to inter partes reviews), 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758 (August 14, 2012) (“Admissibility of evidence is generally governed by the Federal Rules of Evidence.”). As stated in the Office Patent Trial Practice Guide, the parties may submit motions to exclude regarding evidence “believed to be inadmissible.” Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,758. Further, a motion to exclude “must explain why the evidence is not admissible (e.g., relevance or hearsay).” Id. at 48,767. Patent Owner has made no showing that the Supplemental Declaration or Petitioner’s Reply are inadmissible. We further agree with prior panels of the Board, which have determined under similar circumstances that a “motion to exclude evidence filed for the purpose of striking or excluding an opponent’s brief and/or evidence that a party believes goes beyond what is permitted under 37 CFR § 42.23 is improper.” Palo Alto Networks, Inc. v. Finjan Inc., Case IPR2015-01979, Paper 62, 66 (PTAB Mar. 15, 2017) (stating that an “allegation that evidence does not comply with 37 CFR § 42.23 is not a sufficient reason under the Federal Rules of Evidence for making an objection and requesting exclusion of such evidence”); see also Blackberry Corp. v. Zipit Wireless, Inc., Case IPR2014-01508, Paper 49, 40 (PTAB Mar. 29, 2016) (“a motion to exclude is not a proper vehicle for a party to raise the issue of arguments exceeding the permissible scope of a reply”).” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Second, if “linear” motion were required, Petitioner has persuasively explained that the dies taught in Yasumi move in the same manner as the dies claimed in the ’560 patent. Ex. 1105 ¶¶ 95–104, 127–129, 136; Ex. 1127 ¶¶ 50–53. We credit the testimony of Mr. Sheehan over Dr. Solar on this point because we find Mr. Sheehan’s testimony to be most consistent with the teachings of Yasumi. Indeed, Patent Owner does not dispute that Yasumi teaches “a rotatable actuation device coupled to the dies,” as claimed, or that rotation of the actuation device causes the aperture to increase or decrease in size. See generally PO Resp. Patent Owner offers no plausible theory in rebuttal, much less any evidence, to suggest that the aperture of Yasumi formed by the inward facing straight sides of the dies increases and decreases with the rotation of the actuation device, but that the faces do not “move inward and reduce the size of the aperture or outward so as to increase the size of the aperture,” as claimed. To the extent Patent Owner is merely arguing that Petitioner has not made the necessary showing, we find such argument in this case unpersuasive as Petitioner has shown by a preponderance of the evidence that Yasumi teaches every limitation of claim 10. See, e.g., Pet. 66 (citing Ex. 1103, 8:42–54).” slip op. at 34
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We agree with Petitioner that the preamble recitation of “[a] stent crimper comprising” is not limiting as to any of the challenged claims. The preamble language merely provides a name to the claimed invention that describes a use for the invention, whereas the body of each claim describes a structurally complete invention. See Catalina Mktg., 289 F.3d at 809. Because “the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states . . . the purpose or intended use of the invention, . . . the preamble is of no significance to claim construction.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999), citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989); Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). Moreover, contrary to Patent Owner’s arguments, the ’560 patent makes clear that the claimed invention is not intended to be limited to a stent crimper. As Petitioner notes, “the specification provides broad disclosure of multiple alternative applications for the invention,” including manipulating other medical devices and as a balloon mold. Pet. Reply. 7–8 (citing Ex. 1101, 2:48–55, 3:14–22, 3:36–37, 8:65–9:62, Figs. 12, 13); Ex. 1101, 2:48–55, 3:16–21, 3:36–37, 8:65–9:62, Figs. 12, 13.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“To the extent Petitioner’s proposal divorces the recited “engaged” from the “operation” of the apparatus, we agree the meaning would be too broad. However, we discern little substantive difference in the arguments made by both parties with regard to what “operatively engaged” encompasses, even if they dispute the full scope of the meaning of the term. There is no reasonable dispute that an element is “operatively engaged” if it is engaged, directly or indirectly, in the operation of the device. See, e.g., Tr. 24:13–25:12; see also Ex. 1126, 60:18–25 (Dr. Solar equating operative engagement to “whether it’s fixed or connected in some manner that explains how that part works”). No further express construction is necessary.” slip op. at 19
Patent outcomesUS 6,915,560 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,915,560 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Apr 13, 2018 · IPR2017-01895 · APJ Stacy B Margolies · IPR · Rehearing
The Board denied M2M Solutions LLC’s rehearing request, leaving institution of review of claims 1–30 in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). 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.” Id. Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“either the parties’ claim construction disputes or a purported need to explicitly construe “consumer usage information” and “operational status information.” As Patent Owner acknowledges (id. at 13), in the Institution Decision, we stated that “Patent Owner also does not show persuasively on the current record why the phrase ‘consumer usage information’ is limited to information about the use of the particular consumer device asset that sends the information to the remote computer server platform.” Inst. Dec. 18. We also stated that “Petitioner shows sufficiently for institution purposes that Saylor discloses that use of a motion sensor is communicated from a control panel to the central security server.” Id. (citing Paper 2 (“Petition” or “Pet.”), 31–32; Ex. 1010, 5:22–38, 15:43–53). We thus addressed the scope of the claim term necessary for determining whether to institute. We determined that on the preliminary record Petitioner made a sufficient showing of unpatentability and that Patent Owner’s distinction over the prior art—based on a narrow reading of the phrase “consumer usage information”—was not persuasive on the preliminary record. Patent Owner proposed that the phrase means “information identifying the manner in which a consumer has used a consumer device asset.” Prelim. Resp. 14–15. Claims 1 and 20 of the ’358 patent, however, do not recite that the consumer usage information is information identifying the use of the claimed consumer device asset(s). Patent Owner did not show on the preliminary record how the ’358 patent limits the scope of the phrase such that a consumer’s (such as a homeowner’s) use of a motion sensor as disclosed in Saylor does not fall within the claim.” slip op. at 5
Claim constructionPatents in suitUS 8,577,358
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.