- Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics Inc.All claims unpatentablePTAB · Dec 22, 2016 · IPR2015-01414 · APJ Justin T Arbes · IPR · Final written decision
Claims 1, 3–12, 14, 15, 17, 19–52, 54–67, 69–79, and 81–86 are unpatentable under § 103(a) over the 17 combinations listed in the order.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The fact that other parts of the claims recite locations of the image capture devices and the overlap zones does not mean that anything more should be read into the “without duplication of objects” clause, which appears clear on its face. Further, the claims do not say anything about parallax or require that the problem of parallax be solved for the synthesized image. Indeed, parallax is not the same as the duplication of objects. See Ex. 1066 ¶ 11 (“Duplication . . . is different from parallax. For example, when each of the cameras have a common center of projection, there will be little or no parallax, but given their overlapping fields of view, the cameras may nonetheless capture the same objects multiple times resulting in duplication.” (citation omitted)). Thus, we are not persuaded that reading in any language pertaining to parallax effects would be appropriate based on the language of the claims.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Neither party explains in detail why their proposed level of ordinary skill in the art should be adopted. After reviewing the evidence, including the cited prior art, however, we are persuaded that Petitioner’s definition is substantially correct. The ’724 patent describes “rearview vision systems which provide the vehicle operator with scenic information in the direction rearward of the vehicle” using “image capture devices, such as CMOS [(complementary metal-oxide semiconductor)] imaging arrays and the like.” Ex. 1001, col. 1, ll. 22–27. “Camera-based rearview vision systems” had been proposed at the time, but had not “obtained commercial acceptance” and suffered from various problems according to the ’724 patent. Id. at col. 1, l. 60–col. 2, l. 55. The ’724 patent further acknowledges that various aspects of the disclosed systems, such as, for example, CMOS and charge-coupled device (CCD) imaging arrays, optical correction systems, various types of image filtering, backlit liquid-crystal displays (LCDs), and systems for measuring the distance of an object behind the vehicle, were known at the time. See, e.g., id. at col. 11, ll. 60–64, col. 12, ll. 33–37, col. 13, ll. 26–41, col. 17, ll. 48–62, col. 20, ll. 42–53, col. 22, ll. 3–19, 44–55. Drs. Wolberg and Wilhelm further testify as to the development and state of the art by the time of the ’724 patent, which we find helpful in assessing what background knowledge would have been available to a person of ordinary skill in the art. See, e.g., Ex. 1020 ¶¶ 27–39; Ex. 1022 ¶¶ 20–27. As a whole, the evidence indicates a higher level of ordinary skill than what Patent Owner proposes, and suggests, for example, that an ordinarily skilled artisan would have had at least some understanding of ways in which images from multiple cameras could be combined. See, e.g., Ex. 1020 ¶¶ 28–38; Ex. 1003, 3, 6; Ex. 1005, 3–6. Accordingly, based on our review of the ’724 patent, the types of problems and solutions described in the ’724 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art would have had a bachelor’s or master’s degree in engineering, computer science, or physics (or equivalent work experience), with some familiarity with how cameras may be used in vehicles and a working understanding of combining image data from multiple cameras and microprocessor-driven controls for displays, actuators, and elementary decision making. We apply this level of ordinary skill in the art for purposes of this Decision.” slip op. at 20
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“Patent Owner’s arguments are not persuasive for three reasons. First, as explained above, to establish an earlier constructive reduction to practice, Patent Owner must show that the ’527 application provides sufficient written description support for the challenged claims. Patent Owner states that “each limitation of [the set of claims listed above] is supported in the ’935 patent disclosure,” but includes no substantive arguments in its Response explaining why. See id. Rather, Patent Owner cites 46 paragraphs of Dr. Etienne-Cummings’s declaration and a “Constructive Reduction to Practice Chart” spanning 43 pages. Id. (citing Ex. 2001; Ex. 2004 ¶¶ 54–99). Any arguments contained in these materials cannot be incorporated by reference into the Response. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”).12 Consequently, we do not consider information presented in the declaration or claim chart but not discussed sufficiently in the Response. Second, even if Dr. Etienne-Cummings’s analysis and the claim chart are considered, they are not sufficient. The claim chart provides only block 12 See also Paper 8, 3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”); Apple, Inc. v. Ameranth, Inc., Case CBM2014-00013, 8 (PTAB Mar. 20, 2015) (Paper 37) (“Arguments that are not developed and presented in the Patent Owner Response, itself, are not entitled to consideration.”), reversed-in-part on other grounds, No. 2015-1703, -- F.3d --, 2016 WL 6958650 (Fed. Cir. Nov. 29, 2016); Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454, 7–10 (PTAB Aug. 29, 2014) (Paper 12) (informative) (noting that “[o]ne purpose of the prohibition against incorporation by reference is to eliminate abuses” of the page limits established for the parties’ substantive papers, and that citing “large portions of another document, without sufficient explanation of those portions, amounts to incorporation by reference”). quotes and figures from the ’935 patent,13 but does not explain in any detail why they provide support for the various limitations of the challenged claims. See Ex. 2001. Likewise, the majority of Dr. Etienne-Cummings’s declaration merely states that “the features of [the respective claim] are disclosed” at the block-quoted portions of the ’935 patent, without explanation. See, e.g., Ex. 2004 ¶¶ 56–61, 64, 65, 67–74, 76–99. Third, we agree with Petitioner that the ’935 patent does not provide sufficient written description support for the independent claims of the ’724 patent (claims 1, 49, 65, and 78), each of which recites that the “synthesized image is displayed by a single display screen of a reconfigurable display device that is viewable by a driver of the equipped vehicle when normally operating the equipped vehicle.” See Reply 13–15. As explained above, we interpret “reconfigurable display” to mean a display in which a portion of the display upon which the driver views the synthesized image is used as a high-information content display to selectively display various types of auxiliary information. See supra Section II.A.4. Patent Owner cites various excerpts from the ’935 patent describing display 20, but these portions do not call the display device “reconfigurable” or disclose that it is used to selectively display information. See, e.g., Ex. 2001, 5–6 (citing Ex. 2002, col. 3, l. 61–col. 4, l. 5, col. 5, ll. 48–50, col. 6, ll. 5–12, 22–39); Ex. 2004 ¶ 56. Indeed, the ’724 patent Specification 13 It is unclear why Patent Owner attempts to map the disclosure of the ’935 patent, rather than the ’527 application, to the challenged claims. The ’935 patent issued on September 23, 1997 (after Yamamoto published), from the ’527 application filed on May 22, 1995 (before Yamamoto published). Patent Owner does not provide a copy of the ’527 application in the record to show that the written description is the same as that of the issued ’935 patent.” slip op. at 26
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (citation omitted). “A reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.’” Id. (citation omitted). We first summarize the evidence presented regarding Wang’s alleged public accessibility. Wang is a publication of the Institute of Electrical and Electronics Engineers (IEEE) and has a copyright notation of “TH0367-3/91/0000/0100$01.00 © 1991 IEEE” on the first page. See Ex. 1009, 1. Petitioner contends that the document was published “on May 27–31, 1991,” citing the testimony of Dr. Wolberg. Pet. 7. Dr. Wolberg testifies that “[a]s a person who regularly reviews scholarly articles, including IEEE publications such as the Wang article, and as someone who regularly attends conferences such as the IEEE conference in which the Wang paper was presented,” he believes that Wang was published in May 1991. Ex. 1020 ¶ 84. Dr. Wolberg also discusses two publications (Exhibits 1040 and 1042) that cite Wang prior to the effective filing date of the ’724 patent (May 22, 1996), “which further indicates to [Dr. Wolberg] that Wang was publicly accessible.” Id.; see Ex. 1040, 12 (cited reference 16); Ex. 1042, 3 (cited reference 4). Finally, he cites the University of Edinburgh website, which “states that the authors of the Wang article began work on CMOS imaging sensors as early as 1986, and began publishing articles reporting the results of their work that led to the incorporation of a CMOS chip in a video camera in 1989.” Ex. 1020 ¶ 84 (citing Ex. 1044). Petitioner presents additional evidence with its Reply that allegedly confirms Wang’s public accessibility prior to May 22, 1996. Reply 11–12. First, Petitioner submits a declaration from Gerard P. Grenier, the Senior Director of Publishing Technologies for the IEEE.17 Ex. 1055. Mr. Grenier states that Wang “was published and presented as part of [the] Euro [A]SIC ’91 [conference] which occurred May 27–31, 1991.” Id. ¶ 9. According to Mr. Grenier, “[t]he Article was published by IEEE as part of the conference proceedings on the date of the conference. Copies of the conference proceedings were made available to attendees of the conference.” Id. ¶ 6. Mr. Grenier also testifies that “IEEE maintains records of the dates on which articles were first made available for public download,” “[t]hese records are maintained as part of the ordinary course of business of the IEEE [and] are updated regularly as articles are published,” and he has “personal knowledge of the records.” Id. ¶ 7. Second, Petitioner submits a copy of Wang, with a “EURO ASIC ’91” cover page and table of contents, “[s]helved” at the Linda Hall Library in Kansas City, Missouri in 1991. Ex. 1046. Third, Petitioner submits a certified copy of Wang from the Library of Congress, with the same cover page and table of contents and a date stamp of June 5, 1992. Ex. 1060. Fourth, Petitioner notes that the U.S. Court of Appeals for the Federal Circuit affirmed a Board decision finding similar claims with a priority date of February 26, 1993, unpatentable based in part on Wang in 17 Petitioner submitted a substantially similar version of the declaration, dated approximately one month earlier, with its Petition, but did not discuss the declaration in the Petition. Compare Ex. 1039, with Ex. 1055. Our analysis applies equally to both versions of the declaration. In re Magna Elecs., Inc., 611 F. App’x 969, 973 (Fed. Cir. 2015) (unpublished) (Ex. 1045). Reply 11. Patent Owner disputes the sufficiency of Petitioner’s evidence of” slip op. at 43
Patent outcomesUS 8,643,724 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,643,724 - Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics Inc.All claims unpatentablePTAB · Dec 22, 2016 · IPR2015-01410 · APJ Justin T Arbes · IPR · Final written decision
Claims 1, 3–12, 14, 15, 17, 19–52, 54–67, 69–79, and 81–86 are unpatentable under § 103(a) over the combinations listed in the Order.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On December 28, 2015, we instituted an inter partes review of claims 1, 3–12, 14, 15, 17, 19–52, 54–67, 69–79, and 81–86 on 17 grounds of unpatentability and consolidated Case IPR2015-01414 with Case IPR2015-01410 (Paper 7, “Dec. on Inst.”). Patent Owner Magna Electronics Inc. filed a Patent Owner Response (Paper 14, “PO Resp.”), and Petitioner filed a Reply (Paper 17, “Reply”). The parties did not request oral argument, and no hearing was held. See Paper 22.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“Patent Owner’s arguments are not persuasive for three reasons. First, as explained above, to establish an earlier constructive reduction to practice, Patent Owner must show that the ’527 application provides sufficient written description support for the challenged claims. Patent Owner states that “each limitation of [the set of claims listed above] is supported in the ’935 patent disclosure,” but includes no substantive arguments in its Response explaining why. See id. Rather, Patent Owner cites 46 paragraphs of Dr. Etienne-Cummings’s declaration and a “Constructive Reduction to Practice Chart” spanning 43 pages. Id. (citing Ex. 2001; Ex. 2004 ¶¶ 54–99). Any arguments contained in these materials cannot be incorporated by reference into the Response. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”).12 Consequently, we do not consider information presented in the declaration or claim chart but not discussed sufficiently in the Response. Second, even if Dr. Etienne-Cummings’s analysis and the claim chart are considered, they are not sufficient. The claim chart provides only block 12 See also Paper 8, 3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”); Apple, Inc. v. Ameranth, Inc., Case CBM2014-00013, 8 (PTAB Mar. 20, 2015) (Paper 37) (“Arguments that are not developed and presented in the Patent Owner Response, itself, are not entitled to consideration.”), reversed-in-part on other grounds, No. 2015-1703, -- F.3d --, 2016 WL 6958650 (Fed. Cir. Nov. 29, 2016); Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454, 7–10 (PTAB Aug. 29, 2014) (Paper 12) (informative) (noting that “[o]ne purpose of the prohibition against incorporation by reference is to eliminate abuses” of the page limits established for the parties’ substantive papers, and that citing “large portions of another document, without sufficient explanation of those portions, amounts to incorporation by reference”). quotes and figures from the ’935 patent,13 but does not explain in any detail why they provide support for the various limitations of the challenged claims. See Ex. 2001. Likewise, the majority of Dr. Etienne-Cummings’s declaration merely states that “the features of [the respective claim] are disclosed” at the block-quoted portions of the ’935 patent, without explanation. See, e.g., Ex. 2004 ¶¶ 56–61, 64, 65, 67–74, 76–99. Third, we agree with Petitioner that the ’935 patent does not provide sufficient written description support for the independent claims of the ’724 patent (claims 1, 49, 65, and 78), each of which recites that the “synthesized image is displayed by a single display screen of a reconfigurable display device that is viewable by a driver of the equipped vehicle when normally operating the equipped vehicle.” See Reply 13–15. As explained above, we interpret “reconfigurable display” to mean a display in which a portion of the display upon which the driver views the synthesized image is used as a high-information content display to selectively display various types of auxiliary information. See supra Section II.A.4. Patent Owner cites various excerpts from the ’935 patent describing display 20, but these portions do not call the display device “reconfigurable” or disclose that it is used to selectively display information. See, e.g., Ex. 2001, 5–6 (citing Ex. 2002, col. 3, l. 61–col. 4, l. 5, col. 5, ll. 48–50, col. 6, ll. 5–12, 22–39); Ex. 2004 ¶ 56. Indeed, the ’724 patent Specification 13 It is unclear why Patent Owner attempts to map the disclosure of the ’935 patent, rather than the ’527 application, to the challenged claims. The ’935 patent issued on September 23, 1997 (after Yamamoto published), from the ’527 application filed on May 22, 1995 (before Yamamoto published). Patent Owner does not provide a copy of the ’527 application in the record to show that the written description is the same as that of the issued ’935 patent.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“parallax or require that the problem of parallax be solved for the synthesized image. See supra Sections II.A.2–3. Rather, we interpret “synthesized image is generated without duplication of objects” to mean the synthesized image is generated with minimal multiple exposure of objects appearing in the overlap zones, and interpret “synthesized image approximates a view as would be seen by a virtual camera at a single location exterior of the equipped vehicle” to mean the synthesized image is a nearly exact representation of what would be seen by a virtual camera at a single location exterior of the vehicle. Id. Thus, the claims allow for a “minimal” level of multiple exposure and only require a “nearly exact” representation of what the virtual camera would see. We are not persuaded that any parallax effects that might remain when the pattern recognition techniques of Mitsubishi are used in Yamamoto’s system, as Petitioner asserts, would cause more than “minimal” multiple exposure or prevent the resulting image from being a “nearly exact” representation. See Ex. 1020 ¶ 110; Ex. 1066 ¶ 25. Moreover, even if the resulting image in the combined system would suffer from some parallax effects, we do not see how that contradicts Petitioner’s asserted reason for why a person of ordinary skill in the art would have modified Yamamoto’s system, or why parallax concerns would have outweighed the advantage of improved image processing, such that an ordinarily skilled artisan would have abandoned the three camera arrangement of Yamamoto. See Reply 15–17; Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). In that respect, we find Dr. Wolberg’s analysis of how and why a person of ordinary skill in the art would have combined the references’ teachings compelling. See Ex. 1020 ¶¶ 101–15; Ex. 1066 ¶¶ 22–37.” slip op. at 32
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“public accessibility. PO Resp. 17–21. Based on all of the evidence of record,18 however, we are persuaded that Wang was disseminated or otherwise made available prior to May 22, 1996, to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence could have located it. Most probative are the Library of Congress certification and Linda Hall Library documentation, which show that Wang was catalogued and readily available through these libraries. See Exs. 1046, 1060. Mr. Grenier further testifies that copies of the article were made available to attendees of the EURO ASIC ’91 conference, which was an IEEE academic conference pertaining to ASICs. See Ex. 1039; Ex. 1055; Ex. 1060, 2–13 (stating that the conference “includes reports on ASIC design experiences, advances in design methods and tools, and on the evolution of ASIC technology,” and is “the definitive place . . . for the academic community to exchange ideas”; listing numerous papers to be 18 We are persuaded that all of Petitioner’s evidence should be considered, including the evidence introduced with the Reply, under 37 C.F.R. § 42.23(b). Further, during a conference call with the parties on May 26, 2016, Patent Owner sought authorization to file a motion to “strike” Petitioner’s new evidence and portions of Petitioner’s Reply. See Paper 20. We determined that a motion to strike was not appropriate at that time, but stated that “[s]hould either party request a hearing in this proceeding, . . . the parties may address the propriety of the exhibits and Petitioner’s Reply during oral argument. If the parties choose not to request a hearing, Patent Owner may request another conference call and we will determine whether additional briefing or any other action may be appropriate at that time.” Id. at 3; Ex. 1071, 20:14–22:18. Patent Owner did not request oral argument, and did not request another conference call to address the issue. presented relating to, for example, digital signal processing ASICs, chip architecture, and graphic application and image processing ASICs). Given the level of ordinary skill in the art of the ’724 patent set forth above, see supra Section II.B, we are persuaded that the EURO ASIC ’91 conference is the type of conference that ordinarily skilled artisans would have been interested in and likely attended. The dates and documentation for the conference also are consistent with the other submitted evidence, including the copyright notation of Wang itself, which states in part “© 1991 IEEE.” See Ex. 1009, 1. Finally, as Petitioner correctly points out, the first article cited by Dr. Wolberg shows that Wang in fact was accessed by some other individuals working in the field of image sensors. See Reply 12; Ex. 1040. Based on the record presented, we are persuaded that Wang is a prior art printed publication under 35 U.S.C. § 102(b).” slip op. at 45
Patent outcomesUS 8,643,724 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,643,724 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCNo claims unpatentablePTAB · Dec 7, 2016 · IPR2015-01367 · APJ Matthew R Clements · IPR · Final written decision
Claims 1–3, 6–9, and 12–14 were not shown unpatentable because Reed and Mahany did not teach interleaving S-blocks to form packet blocks, and Webb did not cure that deficiency.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The ’831 patent equates “encoding” with interleaving several times. The ’831 patent discloses, for example, that “[p]ackets are encoded into packet blocks by first interleaving the packets together in a register. The interleaved packet block is then transmitted to the receiver. Because the packets are interleaved, a single burst error is dispersed over multiple packets.” Ex. 1001, 2:34–35 (emphasis added). In the detailed description of transmitter 20, an outgoing message is “transferred to a register 96/98,” which “interleaves a message into a large packet block size.” Id. at 4:10–13 (emphasis added). Figure 9 of the ’831 patent, which “is a schematic diagram of a transmitter register used for encoding packets into a variable sized packet block” (id. at 3:18–20) (emphasis added), discloses the use of interleaving as the block coding technique (id. at 6:24–25 (“FIG. 9 shows a diagram for a block coding technique (interleaving) according to the invention . . . .”)). See also id. at Figs. 10, 11, 6:49–65. Also, the ’831 patent describes the point of novelty as “varying the number of bytes in each packet interleaved together according to receiver speed.” Id. at 6:66–7:2 (emphasis added); see also id. at 7:5–30. We, therefore, agree that the proper construction of “encoding packets into packet blocks” is “forming blocks by interleaving packets together.”1” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“’831 patent as performing the recited function to be the CPU performing one of the algorithms identified by Petitioner. Inst. Dec. 8–9. Patent Owner argues that the function is “performed by ‘memory/CPU,’ and not just the CPU alone.” PO Resp. 16–17 (citing Ex. 1001, Figs. 16–18, 8:16–31). The ’831 patent discloses that “[a] memory and CPU 108 determines the appropriate packet block size for the current car travel speed from signal 70.” Ex. 1001, 7:67–8:2 (emphasis added). “The packet block size is determined by reading prestored packet block size values in memory 108.” Id. at 8:3–4 (emphasis added). According to the ’831 patent, “the travel speed received from signal 70 is used as an address to read the memory location containing the appropriate packet block size value.” Id. at 8:5–8 (emphasis added). “The message from receiver/register 102 and the packet block size value determined in memory/CPU 108 are both input to a register 106.” Id. at 8:10–12 (emphasis added). We are persuaded, therefore, that the structure disclosed in the ’831 patent as performing the recited function is not only the CPU, but also the memory, performing one of the algorithms identified by Petitioner.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“subsequent to institution, that “encoding packets into packet blocks” means “forming blocks by interleaving packets together,” a construction which we have adopted. Accordingly, we revisit whether the combination of Reed and Mahany teaches “encoding packets into packet blocks,” as recited in independent claim 1, and “an encoder for combining and varying the number of packets transmitted in each of the packet blocks,” as recited in independent claim 9.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Nevertheless, even assuming that Reed uses “blocks of data” to include S-blocks, we find that Reed’s teaching of “interleaving two or more blocks of data within each packet of data” (Ex. 1006, 2:63–68) is ambiguous and should not be read so broadly when Reed is considered as a whole. Petitioner would like us to interpret the sentence to mean interleaving the data from a first block of data (i.e., S-block) in a packet with data from a second block of data (i.e., S-block) in the packet—i.e., “interleaving two or more blocks of data [with each other] within each packet of data.” However, an equally plausible interpretation is that it means “interleaving [the data within each of] two or more blocks of data within each packet of data.” In other words, interleaving the data within a packet’s first block of data (i.e., R-blocks interleaved in a first S-block) and, separately, interleaving the data within the packet’s second block of data (i.e., R-blocks interleaved in the second S-block). In the latter interpretation, no data from the first block of data (i.e., S-block) are interleaved with data from the second block of data (i.e., S-block). We find that only this latter interpretation is supported by Reed’s disclosure. For example, in Figure 4, Reed discloses interleaving the data within S-blocks in a packet of data, but not interleaving the data between S-blocks. Ex. 1006, 3:20–22, Fig. 4. Reed further discloses employing an “interleaving scheme . . . over each S-block (690 bits), FIG. 4.” Id. at 4:39–41 (emphasis added). Reed similarly claims “concatenating two or more blocks of data and interleaving the bits of the data in each block.” Id., claim 6 (emphasis added). We find no similar support for Petitioner’s interpretation of Reed. Given the lack of support for Petitioner’s interpretation in the rest of the disclosure in Reed, we are not persuaded that a person of ordinary skill in the art, reading this ambiguous sentence in the Summary of Invention of Reed, would have understood it to be teaching interleaving one of Reed’s S-blocks with another of Reed’s S-blocks.” slip op. at 17
Patent outcomesUS 5,602,831 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 5,602,831 - Microsoft Corp. v. Windy City Innovations LLCInstitution deniedPTAB · Nov 29, 2016 · IPR2016-01138 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 18–49, 54–57, and 59–63 would have been obvious over Brown and Tang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“alternatives” to allow members in “at least one group . . . [to] send communications and receive communications . . . wherein at least some of the communications are received in real time via the Internet network.” See, e.g., Ex. 1001, 23:59–67 (emphases added). Here, “wherein at least some of the communications are received in real time” refers to the communications sent and received by members of “at least one group.” Claim 1 is clear that both client software alternatives must “allow at least some of the participator computers to form at least one group in which members can send communications and receive communications.” Thus, the communications in a group pursuant to each of the client software alternatives must include real-time communications.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“alternatives” to allow members in “at least one group . . . [to] send communications and receive communications . . . wherein at least some of the communications are received in real time via the Internet network.” See, e.g., Ex. 1001, 23:59–67 (emphases added). Here, “wherein at least some of the communications are received in real time” refers to the communications sent and received by members of “at least one group.” Claim 1 is clear that both client software alternatives must “allow at least some of the participator computers to form at least one group in which members can send communications and receive communications.” Thus, the communications in a group pursuant to each of the client software alternatives must include real-time communications.” slip op. at 9
§ 103 obviousnessPatents in suitUS 8,473,552 - Microsoft Corporation v. Keith A. RaniereRehearing deniedPTAB · Nov 10, 2016 · IPR2016-00663 · APJ John A Hudalla · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving in place the denial of institution on the Delaney anticipation ground for claims 1, 5, 7, 9, 12, and 21.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). 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. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)
“3 As Patent Owner points out (Prelim. Resp. 4–7), Technology Licensing discussed the relative burdens in the case where a patent claims priority by virtue of a continuation-in-part application that added new matter. As the Federal Circuit has explained, “when neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008). The Federal Circuit has distinguished this from instances, such as detailed in Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570 (Fed. Cir. 1985), in which the Office has made a priority determination. See PowerOasis, 522 F.3d at 1304. The Ralston court placed the burden of proving insufficient disclosure in the parent application on the patent challenger. See Ralston, 772 F.2d at 1573–74. Because the ’752 patent claims priority to Delaney and earlier applications through an unbroken chain of continuations, it is arguable that the framework of Ralston, rather than that of Technology Licensing, should apply here. Nevertheless, Microsoft has failed to show a reasonable likelihood of success on this ground even under the framework of Technology Licensing.” slip op. at 6
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“expect Raniere to be in unique possession of rebuttal evidence, as the case might be if it sought to present evidence of prior invention. See, e.g., Dynamic Drinkware, 800 F.3d at 1380. The 1995 ancestor application itself, already part of the record, is the best evidence of whether an earlier application provides support, under 35 U.S.C. § 120, for the challenged claims. See Ex. 1002. Microsoft does not contest that the common specification, included in both Delaney and the ’752 patent, describes examples within the scope of each of the challenged claims. Nor could Microsoft reasonably maintain such a position in light of its position that Delaney anticipates those same claims. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (stating that to anticipate, a reference must “show all of the limitations of the claims arranged or combined in the same way as recited in the claims”). It was not necessary for Raniere to re-establish this. Rather, the issue raised in the Petition (and addressed in the Decision on Institution) was whether those examples were sufficient to describe claims that Microsoft argued had been broadened beyond what those examples support. Raniere presented arguments, with reference to the evidence already of record, disputing this point. See Prelim. Resp. 8–20. At that point, the burden shifted back to Microsoft to persuade us that the ’752 patent is not entitled the benefit of an earlier priority date. See Tech. Licensing Corp., 545 F.3d at 1328. As explained below, Microsoft failed to meet that burden.” slip op. at 7
§ 102 anticipationPatents in suitUS 7,215,752 - Microsoft Corporation v. Keith A. RaniereRehearing deniedPTAB · Nov 10, 2016 · IPR2016-00669 · APJ John A Hudalla · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving in place its refusal to institute on the Delaney anticipation ground for claims 1, 4, 5, and 7.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). 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. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“Microsoft’s burden-shifting arguments. Rather, Microsoft confuses the burden of production with the burden of persuasion. Microsoft has asserted that Delaney discloses each limitation of the challenged claims and that Delaney predates those claims. Microsoft has the burden of persuasion, based on all of the evidence, on both of these assertions. See Dynamic Drinkware, 800 F.3d at 1378. In some instances, evidence in the possession of a patent owner might be necessary to rebut a petitioner’s evidence and, in those cases, the patent owner has a burden to produce such evidence. See, e.g., id. at 1380 (stating the burden of production was properly shifted to a patent owner to establish the reduction to practice date of the challenged patent claims). Although Raniere has not introduced additional evidence into the record, Raniere has made an adequate showing, as described below, such that the burden returns to Microsoft to persuade us that the ’041 patent is not entitled to earlier priority.” slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“expect Raniere to be in unique possession of rebuttal evidence, as the case might be if it sought to present evidence of prior invention. See, e.g., Dynamic Drinkware, 800 F.3d at 1380. The 1995 ancestor application itself, already part of the record, is the best evidence of whether an earlier application provides support, under 35 U.S.C. § 120, for the challenged claims. See Ex. 1002. Microsoft does not contest that the common specification, included in both Delaney and the ’041 patent, describes examples within the scope of each of the challenged claims. Nor could Microsoft reasonably maintain such a position in light of its position that Delaney anticipates those same claims. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (stating that to anticipate, a reference must “show all of the limitations of the claims arranged or combined in the same way as recited in the claims”). It was not necessary for Raniere to re-establish this. Rather, the issue raised in the Petition (and addressed in the Decision on Institution) was whether those examples were sufficient to describe claims that Microsoft argued had been broadened beyond what those examples support. Raniere presented arguments, with reference to the evidence already of record, disputing this point. See Prelim. Resp. 7–17. At that point, the burden shifted back to Microsoft to persuade us that the ’041 patent is not entitled the benefit of an earlier priority date. See Tech. Licensing Corp., 545 F.3d at 1328. As explained below, Microsoft failed to meet that burden.” slip op. at 7
§ 102 anticipationPatents in suitUS 7,844,041 - Praxair Distribution, Inc. v. Ino Therapeutics, LLCNo claims unpatentablePTAB · Sep 15, 2016 · IPR2015-00891 · APJ Scott A Daniels · IPR · Final written decision
Praxair failed to prove claims 1–16 unpatentable under the three §103 grounds because it did not establish a sufficient reason to combine the prior art.
RulingsFinal written decision- BurdenFwd all claims patentableNot shown unpatentable
“sensed in-line gas concentration being used to perform verification of gas supply and gas delivery to a subject or patient into a device receiving gas concentration information from Peters’s handle and memory on the gas supply cylinder in order to verify and control gas delivery to a patient smacks of hindsight reasoning. After considering the evidence and arguments of both parties, we conclude that Praxair has failed to carry its burden of demonstrating, by a preponderance of the evidence, that independent claim 1 is unpatentable. Because Praxair’s obviousness analysis for dependent apparatus claims 2–11, as well as the dependent method claims 12–16, asserted in each of the grounds in this proceeding relies on the deficient asserted combination including Bathe and Peters, we similarly are not persuaded that Praxair has sustained its burden of demonstrating, by a preponderance of the evidence that claims 2–16 are unpatentable.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“argument and testimony that Peters’s valve could work on Bathe’s cylinder does not explain why or how a person of skill in the art would combine Bathe and Peters, only that they could. PO Resp. 43–44. That Bathe could be modified by simply placing Peters’s valve on the cylinder to control gas flow from the cylinder, does not, alone, satisfy the requirements for combining the prior art. See InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (Experts “testimony primarily consisted of conclusory references to her belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so.”). Petitioner’s challenge lacks an adequate motivation, not only to incorporate the smart valve of Peters into Bathe, but also to: (1) repurpose the incorporated valve by using (a) its “memory to store gas data comprising one or more of gas identification, gas expiration date and gas concentration” and (b) its processor and transmitter “to send and receive wireless optical line-of-sight signals to communicate the gas data to the control module that controls gas delivery to a subject” and (2) modify the Bathe system, such that its CPU would receive the wirelessly transmitted gas concentration data, even though the CPU already receives (and uses) flow and operator input data to provide a desired NO concentration. See Ex. 1005, 6:5–20.” slip op. at 21
- Expert testimonyPetitioner expert discountedOther
“read [Bathe] and been motivated to apply subsequent improvements to component parts of that system, such as the improved valve of [Peters].” Ex. 1002 at ¶ 112 (citing Ex. 1005, 6:11–15). Dr. Stone does not, however, point to any persuasive evidence or disclosure in Bathe, or provide sufficient explanation or reasoning to support this statement. See id. In particular, Dr. Stone does not describe what the “improvements” would have been or provide sufficient rationale as to why Bathe, which already has a connection between a supply cylinder and a gas delivery device and teaches verification of gas concentration from the cylinder by sensor 65 in the delivery system, would be improved by Peters’s manually actuated valve handle and included memory to meet the limitations of the independent claims. See Ex. 1005, 6:11–15. We find Dr. Stone’s testimony deficient as to showing any suggestion in Bathe or otherwise that would have motivated one of skill in the art to add Peters’s valve and memory to Bathe. We are also not persuaded that a person of skill in the art would have” slip op. at 23
- ExcludeMotion to exclude, deniedDenied
“D. INO’s Motion to Exclude Patent Owner seeks to exclude the testimony of Dr. Robert Stone (Exs. 1002, 2020). Because we do not rely on Dr. Stone’s testimony in a manner adverse to INO, the motion to exclude is dismissed as moot.” slip op. at 28
Patent outcomesUS 8,573,210 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,573,210 - Praxair Distribution, Inc. v. Ino Therapeutics, LLCNo claims unpatentablePTAB · Sep 15, 2016 · IPR2015-00889 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–7 were not shown unpatentable as obvious over the asserted combinations because Praxair did not establish a sufficient reason to combine the references.
RulingsFinal written decision- ExcludeOther
“D. INO’s Motion to Exclude Patent Owner seeks to exclude the testimony of Dr. Robert Stone (Exs. 1002, 2020). Because we do not rely on Dr. Stone’s testimony in a manner adverse to INO, the motion to exclude is dismissed as moot.” slip op. at 25
- Skill levelOther
“B. The Level of Ordinary Skill in the Art Praxair asserts that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, computer engineering, or the equivalent, and would have had at least two years’ experience in biomedical engineering designing medical gas delivery or monitoring systems.” Pet. 9–10 (citing Ex. 1002 ¶¶ 17–18). INO does not expressly dispute the general level of skill in the art proffered by Praxair but adds through its declarant, Mr. Warren P. Heim, that one of skill in the art would “know Food and Drug Administration (FDA) Current Good Manufacturing Practices.” Ex. 2021 ¶ 107.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“presented by both parties and the prior art itself, we find that Praxair has not shown a sufficient reason for a person of ordinary skill in the art to have made the proposed combination of Bathe, Peters, FR ’804, and the IR Standard. PO Resp. 36–53. INO points out, correctly, that Praxair has not shown that a person of ordinary skill in the art would have been motivated to combine Peters’s smart valve, having a memory for compiling data for billing and invoicing functions, with Bathe. Id. Moreover, we are not persuaded that Praxair’s inability to provide sufficient motivation for combining Peters and Bathe is remedied by the introduction of FR ’804, particularly given that Bathe already included an in-line sensing unit to sense and verify the gas concentration from the cylinder as required by FDA guidance. Id. at 47.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“time of litigation. KSR, 550 U.S. at 421 (“[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). “Good ideas may well appear ‘obvious’ after they have been disclosed.” Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953, 956 (Fed. Cir. 1997). In the instant case, Praxair’s attempt to transform Bathe from having a sensed in-line gas concentration being used to perform verification of gas supply and gas delivery to a subject or patient into a device receiving gas concentration data from Peters’s handle and memory on the gas supply cylinder in order to verify and control gas delivery to a patient smacks of hindsight reasoning. After considering the evidence and arguments of both parties, we conclude that Praxair has failed to carry its burden of” slip op. at 24
Patent outcomesUS 8,573,209 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,573,209 - Google, Inc. v. Personal Audio LLCSome claims unpatentablePTAB · Sep 9, 2016 · IPR2015-00846 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1–4, 9, and 13 are unpatentable as obvious over Chase and Loeb; claims 5–8, 14–17, 28, and 29 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to Rule 42.100(b)). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification, and absent any special definition, we give claim terms their ordinary and customary meaning. See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.” (internal quotation marks omitted)). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In our Institution Decision, we preliminarily interpreted the “processor for . . .” elements of claims 1 and 4 Dec. 7–8. After our Institution Decision, neither party identified any issues relating to our preliminary interpretation of the “processor for . . .,” and we discern no other reason to modify our interpretation. Accordingly, we maintain our interpretation of the “processor for . . .” for the purposes of this Final Written Decision. Our interpretation is consistent with the findings of the District Court in the Apple Litigation, which interpreted the “processor for . . .” elements as recited in claims 1, 4, 5, 6, and 14 under 35 U.S.C. § 112, ¶ 6. Because the parties raise issues regarding the scope of terms introduced in claims 5, 6, and 14, we also adopt the District Court’s interpretation of those terms and the reasoning supporting those interpretations. The claim interpretations upon which we rely in resolving disputed issues are summarized in the table below.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“In our Institution Decision, we preliminarily interpreted the “processor for . . .” elements of claims 1 and 4 Dec. 7–8. After our Institution Decision, neither party identified any issues relating to our preliminary interpretation of the “processor for . . .,” and we discern no other reason to modify our interpretation. Accordingly, we maintain our interpretation of the “processor for . . .” for the purposes of this Final Written Decision. Our interpretation is consistent with the findings of the District Court in the Apple Litigation, which interpreted the “processor for . . .” elements as recited in claims 1, 4, 5, 6, and 14 under 35 U.S.C. § 112, ¶ 6. Because the parties raise issues regarding the scope of terms introduced in claims 5, 6, and 14, we also adopt the District Court’s interpretation of those terms and the reasoning supporting those interpretations. The claim interpretations upon which we rely in resolving disputed issues are summarized in the table below.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“As stated by the Federal Circuit, “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). “Rather, the test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.” Id. Petitioner does not seek to combine the devices of Chase and Loeb physically. Rather, Petitioner argues that Loeb describes an example of a conventional interface used for controlling a device that plays music and contends that features of that interface would have been recognized as advantageous for Chase’s affiliate terminal. We are persuaded that a skilled artisan would have sought out examples of admittedly conventional interfaces to improve the functionality of Chase’s affiliate terminal. See KSR, 550 U.S. at 417 (“[I]f 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.”).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We are not persuaded that Chase teaches away from discontinuing a currently playing song to advance to a next segment. According to Chase, “[t]he jock box is a physical representation of a DAC cart located in a studio. It provides 8 pushbuttons each with an LED and a small LCD display. Conceptually the jock box is a CD player with an automated changer.” Ex. 1007 ¶ 219. As explained above, and shown in Chase’s Figure 4, DAC 52 is a component separate from remote control terminal 54. The jock box is a “physical representation of a DAC cart.” Id. We read this to be a typographical error and view the jock box as a physical representation of a DAC card, e.g., DAC card 52. If “cart” is not a typographical error, it could refer to a “cart machine,” id. ¶ 36, which also is a component separate from remote control terminal 54 (Figure 4 shows line 56 communicating with a cart, not shown). In either case, Chase’s description of a jock box does not refer to the behavior of remote control terminal 54, which is described elsewhere as follows: The DJ may also request, through the remote control terminal, that the DAC 52 start play of the next segment queued in the DAC 52, stop play of the current segment, fast forward/rewind through the current segment or to a next/previous segment. The DJ may use up/down arrows on the remote control terminal to scroll through a play list displayed to the DJ and select, out of turn, a segment from the play list. Id. ¶ 186. This description is consistent with a device that can discontinue play of a current segment and skip to the next. Thus, Chase does not teach away from a player with that behavior.” slip op. at 24
Patent outcomesUS 7,509,178 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,509,178 - Fitbit, Inc. v. Bodymedia, Inc.Institution deniedPTAB · Sep 8, 2016 · IPR2016-00707 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution because Fitbit did not show a reasonable likelihood that claims 1–29 would have been obvious over Mault 470 and Mault 089, which were not shown to be prior art.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner asserts that the broadest reasonable construction of “contextual data of the individual” as recited in the claim limitation 1(b)(i) is “data relating to an individual’s activity state environment, surrounding, or location.” Pet. 17. Petitioner asserts that this construction was applied in the related ITC proceeding. Id. (citing Ex. 1015, 17–22, 33). Patent Owner does not contest this proposed construction. For purposes of this Decision, we adopt Petitioner’s proposed construction for “contextual data of the individual.”” slip op. at 6
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“of the claimed subject matter without explaining what the parent application conveys to those skilled in the art. See Pet. 9–10 (discussing whether June 2000 applications contain “equivalent description” of claim 1 limitations); Ex. 1003 ¶ 32 (addressing whether “equivalent description” exits in the parent applications). Contrary to Petitioner’s application of the “equivalent description,” the test for sufficiency of support in a parent application is not “the presence or absence of literal support in the [parent application] for the claim language,” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983), but instead is whether the disclosure of the application relied upon reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, Vas-Cath Inc., 935 F.2d at 1563–64; see Yorkey v. Diab, 605 F.3d 1297, 1303 (Fed. Cir. 2010) (quoting In re Kaslow, 707 F.2d at 1375). In the present case, Petitioner relies on conclusory statements that [t]he June 2000 applications do not contain an equivalent description of a processing unit configured to provide feedback for an individual’s weight-loss goal by performing each of the steps recited in subparts b.(i)–(v) of claim 1 in sufficient detail such that one of skill in the art can clearly conclude the applicant invented the claimed invention.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Based on the foregoing, we find that Petitioner has not shown that Mault 470 and Mault 089 are prior art, and, thus, there is not a reasonable likelihood that Petitioner would prevail in showing that claims 1–29 would have been obvious under 35 U.S.C. § 103 over Mault 470 and Mault 089.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)
“Mault 470 and Mault 089 are prior art, and, thus, there is not a reasonable likelihood that Petitioner would prevail in showing that claims 1–29 would have been obvious under 35 U.S.C. § 103 over Mault 470 and Mault 089. III. CONCLUSION For the foregoing reasons, we determine that the Petition fails to establish a reasonable likelihood of prevailing on the asserted ground that claims 1–29 would have been unpatentable as obvious under 35 U.S.C. § 103 over Mault 470 and Mault 089.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 8,398,546
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.