- Henny Penny Corporation v. Frymaster L.L.C.No claims unpatentablePTAB · Dec 21, 2017 · IPR2016-01435 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–3, 5–12, and 17–21, 23 were not proven unpatentable over Kauffman and Iwaguchi, with Howard for claims 18 and 20, because the motivation to combine was insufficiently shown.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art at the time of the invention would have been a “Bachelors of Science degree in Biosystems & Agricultural Engineering (or equivalent) or other Engineering major with a minor in Food Science and Technology and have had one or more years’ experience in the field of research and development of foods.” Pet. 7 (citing Ex. 1011 ¶ 74). Patent Owner does not propose an explicit level of ordinary skill in the art in its Response. Dr. Keener, however, expressly adopts Petitioner’s proposed level of skill in the art. Ex. 2032 ¶ 63. Consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed board ownDecided for petitioner
“means for re-circulating” In the Institution Decision, we preliminarily construed the claim term “means for re-circulating” as a means-plus-function limitation, invoking 35 U.S.C. § 112, ¶ 6. Id. at 17–18. We construed the function as “re-circulating said cooking oil” and identified the corresponding structure as “a pump and structural equivalents thereof.” Id. at 18–19. Neither party contests our construction of the term, and we maintain that construction here for the same reasons. slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We agree with Patent Owner that we need not expressly construe the term “adapter.” We reiterate the following from our Institution Decision: The term “adapter” appears in each claim of the ’691 patent. Neither party contends that the specification or prosecution history contains a lexicographic definition of the term, and neither party asserts that the specification or prosecution history contains a disclaimer of any portion of the plain and ordinary meaning of the term. From our review of the record, the structure and location of the adapter recited in the claims is provided by other claim language describing that (1) the adapter is located external to the fryer, (2) the sensor is disposed in the adapter, (3) the adapter is installed between two portions of the return pipe or drain pipe, and (4) the adapter has two opposite ends wherein one of the two ends is connected to one of the two portions of either the return pipe or the drain pipe and the other end is connected to the other portion of pipe.3 Inst. Dec. 9–10. In light of the above discussion, and because the focus of the parties’ dispute is not on the meaning of the term “adapter,” we decline to expressly construe the term further.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“Differences Between the Prior Art and the Claims; Motivation to Modify We instituted Petitioner’s challenge of these claims, and those that depend therefrom, based on Petitioner’s position that Kauffman disclosed most of the elements of the independent claims with the exception of a sensor capable of measuring an electrical property that is indicative of total polar materials. See, e.g., Inst. Dec. 31. Thus, the theory of obviousness, as discussed above, relies upon substituting Iwaguchi’s sensor for Kauffman’s analyzer. See id. at 31 (“Petitioner provides a second argument that relies upon a modification to Kauffman’s system, in which Iwaguchi’s sensor is employed instead of Kauffman’s analyzer. Because Petitioner provides adequate support for this second position, we address Patent Owner’s arguments based on this proposed combination.”). Petitioner confirmed at the oral argument that its Petition proposed a theory in which Iwaguchi’s sensor is simply swapped for that of Kauffman’s and did not present a more general theory as to modifying Kauffman’s sensor per the teachings of Iwaguchi: JUDGE WEINSCHENK: Did you include both of those alternative theories in your petition or is that something that you’re – you’ve come up with now in the reply? MR. VAIDYA: It’s something that we -- again, in the reply, we wanted to make it very clear that we aren’t going on a 102 basis and we are -- and what -- I think what -- we did have that alternate in the reply, so the alternate -- and I can point to paragraphs if that helps. And so, the idea is again primarily we’re going with the idea of swapping sensors, but that it would be possible to modify the sensor in Kauffman. JUDGE GERSTENBLITH: Because in the petition, it was a swap of the sensors. MR. VAIDYA: That’s right. JUDGE GERSTENBLITH: And that’s what we instituted -- MR. VAIDYA: That’s correct. JUDGE GERSTENBLITH: -- based on. MR. VAIDYA: That’s correct. Tr. 13:21–14:12. We disregard Petitioner’s alternative position as it was an attempt to raise a new theory of unpatentability improperly for the first time in the Reply. See 37 C.F.R. § 42.23(b) (“All arguments for the relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.”).” slip op. at 16
Patent outcomesUS 8,497,691 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,497,691 - Groupon, Inc. v. International Business Machines Corp.Rehearing deniedPTAB · Dec 7, 2017 · IPR2017-01158 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Groupon’s rehearing request, leaving institution denied on both § 103 grounds because the Petition did not adequately explain how the combinations would provide a federated computing environment.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked,” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- BurdenDecided for patent owner
“we noted that the only claim element that Petitioner mentions as missing in Sunada and Mellmer is a “federated computing environment.” Inst. Dec. 11, 16. We found that Petitioner’s proffered rationale for combining Sunada or Mellmer with the LA Specifications to arrive at the claimed invention was inadequate because Petitioner did not address how modifying Sunada or Mellmer to implement Liberty Alliance’s method of exchanging attributes would provide a federated computing environment (i.e., the missing claim element). Id. at 11, 16.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“new argument that Petitioner presents in order to offer more explanation, which does not address what we overlooked or misapprehended in our Institution Decision. In its Petition, Petitioner proposed combining the references by “us[ing] the methods for transferring attributes described in the LASpecs in the exchanges specifically described in Sunada and Mellmer.” Pet. 21–23. Petitioner explained that such combination “would allow a POSITA to obtain predictable results,” which Petitioner identified explicitly as “the transfer of information described in Sunada and Mellmer” (id. at 23), not as “a compliant implementation of Sunada or Mellmer to operate in a federated computing environment” (Req. Reh’g 7). At this stage, it is too late for Petitioner to add further explanation in a request for rehearing. See 37 C.F.R. § 42.71(d).” slip op. at 9
NonePatents in suitUS 7,631,346 - Los Angeles County Metropolitan Transportation Authority v. Transport Technologies, LLCNo claims unpatentablePTAB · Nov 17, 2017 · IPR2016-01633 · APJ Monica S Ullagaddi · IPR · Final written decision
The Board held claims 1, 3, 5, 6, 8, and 10 not shown unpatentable because Petitioner failed to establish the Draft Ontario Report was prior art.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable
“consider whether the document was distributed, displayed without indicia of confidentiality, able to be found, or available on request to persons interested and ordinarily skilled in the subject matter to which the document relates. See Blue Calypso, LLC v. Groupon, Inc., 815 F. 3d 1331, 1348 (Fed. Cir. 2016) (“To qualify as a printed publication, a reference ‘must have been sufficiently accessible to the public interested in the art.’” quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed.Cir.1989)). We consider the question of whether the Draft Ontario Report is a printed publication anew, based on the complete record, in light of the evidence and arguments adduced at trial.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s Declarant, Mr. Andrews, testifies that a person of ordinary skill in the art relevant to the ’101 patent “would have a Bachelor’s of Science degree in Electrical or Computer Engineering, or the equivalent,” as well as “two years of experience working with automated toll roads, intelligent transportation systems, RFID tracking systems, or a similar field of experience.” Ex. 1008 ¶ 47. Patent Owner does not offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’101 patent. See generally PO Resp. Based on our review of the ’101 patent, the types of problems and solutions described in the ’101 patent and cited prior art, and the testimony of Petitioner’s Declarant, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“E. Discretion Under 35 U.S.C. § 325(d) Patent Owner contends that we should have denied the Petition because Petitioner presented “the same or substantially the same prior art or arguments” in this proceeding as in the earlier ’1077 IPR. PO Resp. 2 (citing 35 U.S.C. § 325(d)). Patent Owner further contends that we abused our discretion by instituting trial in the present proceeding because we did not “explain[] how the invalidity grounds presented in this proceeding are not ‘the same or substantially the same prior art or arguments,’” and as such, our decision was arbitrary and capricious, and violates Patent Owner’s due process rights. Id. at 13–15. Lastly, Patent Owner contends that the Petition is barred by the doctrine of res judicata. Id. at 15. We decline to address these issues insofar as they are moot in light of our conclusion that the Draft Ontario Report is not demonstrated to qualify as prior art and our ultimate conclusion that the challenged claims are not shown to be unpatentable in view of challenges based on the Draft Ontario Report.” slip op. at 21
Patent outcomesUS 6,980,101 not shown unpatentable§ 102 anticipationDiscretionary denialcites GrahamPatents in suitUS 6,980,101 - Los Angeles County Metropolitan Transportation Authority v. Transport Technologies, LLCAll claims unpatentablePTAB · Nov 17, 2017 · IPR2016-01077 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 3, 6, and 8 are unpatentable over Hassett ’183, and claims 5 and 10 are unpatentable over Hassett ’183 and Hassett ’389.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“As we discussed in our Decision to Institute, “a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Even though the preamble provides antecedent basis for the claim term “registrant,” deleting the preamble would not affect the structure of the invention recited in claim 1. The body of claim 1 not only defines a structurally complete vehicle occupancy monitoring system with a transmitter, a sending transponder, and a reading data collector, but the body of the claim substantially overlaps with the recitation of the preamble (compare Ex. 1001, 3:26–28, with id. at 3:29–37). Similarly, the body of claim 6 describes a complete process and also substantially reiterates the preamble; “receiving the claim by a registrant as to number of occupants in a vehicle and reading the signal from the vehicle that identifies the registrant as the vehicle transits the designated section of highway” (compare id. at 4:13–16, with id. at 4:22–25).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The claims recite language broader than that of the disclosures cited by Patent Owner. See Van Geuns, 988 F.2d at 1184. We are not persuaded by Patent Owner’s arguments to construe the term “registrant” to refer to a specific, instead of a generic, program so as to exclude registering one’s vehicle because Patent Owner’s construction impermissibly imports limitations from the specification. See PO Resp. 20; see Van Geuns, 988 F.2d at 1184; see Inst. Dec. 10–11. We further disagree with Patent Owner that the construction of “registrant” should be revised to account for its use in the claims because we agree with Petitioner that the body of claim 1 does not require the registrant to have made the “claim as to the number of occupants in the vehicle” and claim 6 does not impose any further limitations on the registrant itself. See Reply 2. We also decline to consider whether “registrant” could refer alternatively to an entity and a person because it is not necessary to resolve the controversy before us. See id. at 3; see Vivid Techs., 200 F.3d at 803. Because the specification of the ’101 patent does not define explicitly the term “register” or “registrant,” we refer to the ordinary and customary meaning of these terms, as would have been understood by one of ordinary skill in the art in the context of the entire disclosure. See Translogic Tech., Inc., 504 F.3d at 1257. To determine the ordinary and customary meaning of the terms, we refer to its dictionary definition. The dictionary definition for the term “register” is “to enter in or as in a record or list; enroll or record official” and definition for the term “registrant” is “a person who registers.” Webster’s New World College Dictionary 4th Edition, 1999 (Ex. 3001, 4). In our Institution Decision, we concluded that the claim term “registrant” encompasses a person who has registered their vehicle or enrolled in a program. Inst. Dec. 10–11. Registering one’s vehicle constitutes recording officially the ownership of the vehicle, such as with a state department of motor vehicles, consistent with the dictionary definition of register set forth above. Based on the arguments and evidence adduced at trial, we are not persuaded to deviate from our preliminary construction of the claim term “registrant.”” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s Declarant, Mr. Andrews, testifies that a person of ordinary skill in the art relevant to the ’101 patent “would have a Bachelor of Science in Electrical or Computer Engineering or the equivalent, plus two years of experience with automated toll roads, intelligent transportation systems, RFID tracking systems, or similar experience.” Ex. 1008 ¶ 49. Patent Owner does not offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’101 patent and indicates that it “does not disagree with [Petitioner’s] definition.” PO Resp. 9. Based on the arguments and evidence adduced at trial, we see no reason to modify our decision to adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention.” slip op. at 16
- Expert testimonyPetitioner expert creditedDecided for petitioner
“the complete record, and in particular, based on the portions of Hassett ’183 cited by Petitioner and Mr. Andrews’s testimony in the Petition and the arguments and evidence adduced at trial, we agree with Petitioner that one of ordinary skill in the art would have understood that the vehicle operator (i.e., driver) disclosed in Hassett ’183 would, in some cases, be a registered owner of a vehicle, and thus, we are satisfied that Petitioner establishes sufficiently that Hassett ’183 teaches the “registrant” recited in claim 1. See Pet. 7; see Ex. 1008 ¶ 78; see Ex. 2015, 39:3–6; see Reply 21. We further agree with Petitioner that the teachings of the VIN and identifying signal disclosed in Hassett ’183, when considered in light of the background and state of the art, would have been understood by the ordinarily skilled artisan to disclose (implicitly) a licensing authority with which a vehicle is registered and a program administrator for automatic tolling systems, thus mirroring the two types of registration discussed above in Section II.A.3. See Pet. 11–13 (citing Ex. 1008 ¶¶ 32, 34, 77–79); see Ex. 1008 ¶¶ 32–39; see Ex. 2015, 67:7–19. Thus, we are satisfied that Petitioner establishes sufficiently that Hassett ’183 teaches the “program administrator” recited in claim 1. We are also satisfied that Petitioner establishes sufficiently that the disclosure of a VIN and an identifying signal for the vehicle-borne transponder in Hassett ’183 teaches the “code” recited in claim 1. We credit the testimony from Mr. Andrews that the VIN identifies indirectly the registered vehicle owner via the vehicle title and the factual evidence cited in paragraphs 32 through 39 of Mr. Andrews’s Declaration. See Ex. 1008 ¶ 78. We further credit his testimony that the transponder identifying signal (which can encompass the VIN) would be unique at least because it encompasses the VIN, through which a registered owner could be identified. Reply 18 (citing Ex. 2015, 62:20–63:1, 73:16–18, 86:16–20). In view of the above, we are satisfied that Petitioner demonstrates, by a preponderance of the evidence, that Hassett ’183 teaches the “sending transponder” as recited in claim 1.” slip op. at 22
Patent outcomesUS 6,980,101 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,980,101 - Radware, Inc. v. F5 Networks, Inc.Institution deniedPTAB · Oct 23, 2017 · IPR2017-01249 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because Radware, Inc. did not identify Radware, Ltd. as a real party in interest.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“review, “the party against whom a presumption is directed has the burden of producing evidence to rebut the presumption. But this rule does not shift the burden of persuasion, which remains on the party who had it originally.” Fed. R. Evid. 301; see 37 C.F.R 42.62(a). Accordingly, when a patent owner provides sufficient evidence prior to institution that reasonably brings into question the accuracy of a petitioner’s identification of real parties-in-interest, the overall burden remains with the petitioner to establish that it has complied with the statutory requirement to identify all real parties-in-interest. Zerto at 7. The allocation of the burdens of production and persuasion for identification of all real parties in interest appropriately accounts for the fact that a petitioner is far more likely to be in possession of, or have access to, evidence relevant to the issue than is a patent owner. Id.” slip op. at 5
Discretionary denialPatents in suitUS 6,311,278 - Sony Corporation v. Collabo Innovations, Inc.All claims unpatentablePTAB · Oct 3, 2017 · IPR2016-00939 · APJ David C Mckone · IPR · Final written decision
Claims 10–22 are unpatentable: claims 10–12, 15, 17–19, and 22 as obvious over Guidash; claims 10 and 16 over Sakurai; and claims 10, 13, 14, 17, 20, and 21 over Tanaka.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“We agree with Petitioner. The challenged claims recite an “active region” without a recitation of an isolation region or an insulation region. Thus, the plain language of the claims does not require an insulation region serving as a border for an active region. As to the specification, it merely describes a device isolation region, specifically not shown, as an example region surrounding an active region of the preferred embodiment, but does not indicate that an isolation region is a part of an active region or necessarily accompanies an isolation region. Ex. 1001, 8:56–58. We are not persuaded that the ’493 patent’s one reference to “insulation” redefines active region or narrows the term “isolation” used elsewhere in the specification. We maintain our conclusion (Dec. 11) that reading an insulation region as part of the claimed active region (or necessarily accompanying an active region) based on the disclosure in the specification would be importing an extraneous limitation into the claims improperly. See E.I. du Pont de Nemours, 849 F.2d at 1433.” slip op. at 12
- Expert testimonyPatent owner expert discountedDecided for petitioner
“As noted above, Patent Owner also relies on the testimony of Dr. Afromowitz to provide technical reasons why an active region must have a border, such as an insulation region, across which charge cannot flow. Patent Owner contends that “[i]n order to serve its function in the imaging device, the active region must be insulated/isolated from other regions of the chip.” PO Resp. 30 (citing Ex. 2003 ¶ 35). Patent Owner again ties this to an insulation region, arguing that, “[i]n the context of MOS image sensor devices, this means that a dielectric, or non-conducting material or barrier is used to prevent the flow of an electric current under the influence of an electric field or a voltage difference.” Id. (citing Ex. 2003 ¶ 34). In his testimony, Dr. Afromowitz relies on the American Heritage Dictionary to conclude that “isolation” implies being apart or separate, that “insulate” means to prevent the passage of electricity, and, therefore, “an active region as envisioned by the inventor is a region that, by its intrinsic nature, is maximally isolated from other regions and in addition prevents, to the greatest possible degree, electric current from entering or leaving contiguous regions of the substrate.” Ex. 2003 ¶ 34 (citing Ex. 2012). Dr. Afromowitz does not explain how the dictionary definitions he relies upon support his conclusion with respect to the term “active region.” We find that the dictionary definitions do not adequately support Dr. Afromowitz’s testimony, that his conclusions do not logically follow from this evidence, and, therefore, that his testimony is not credible on this point. Again relying on Dr. Afromowitz, and additionally on treatises, Patent Owner argues that it was known in the art that “the active region is usually physically defined by the isolation material surrounding it.” PO Resp. 30– 32 (citing Ex. 2003 ¶ 36; Ex. 2009; Ming Bo Lin, Introduction to VLSI Systems: A Logic, Circuit, and System Perspective, 203–04 (2012) (not introduced as an exhibit)). According to Dr. Afromowitz, a person of ordinary skill in the art understands that this term of art applies to specifically bounded regions of the device across whose boundary charges cannot flow. The boundary is physically exhibited, at least, as an area where charge is confined. If the construction permits charge flow across the boundary, then an essential feature of the active region is missing, and the construction would be in contradiction to the purpose of the active region. Ex. 2003 ¶ 36. Dr. Afromowitz does not cite to or explain the bases for this testimony. We find this testimony to be conclusory and unpersuasive and, accordingly, give it little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Ordinary Skill Petitioner does not state in the Petition its contention as to the level of ordinary skill in the art. Rather, Petitioner states that it is discussed in the Guidash Declaration. Pet. 11. Mr. Guidash testifies that a skilled artisan would have had “a Bachelor’s degree in electrical engineering, physics, or material science and approximately 3–5 years of industrial experience or equivalent research or teaching experience, or a Master’s degree in the same fields and 1–3 years of industrial experience or equivalent research or teaching experience in the field of semiconductor image sensor design and fabrication.” Ex. 1002 ¶ 45. Patent Owner argues that Petitioner did not reproduce Mr. Guidash’s opinion in the Petition. PO Resp. 58–59. Nevertheless, Patent Owner does not provide a statement of the level of skill in the art and, when asked at the oral hearing, confirmed that it does not dispute Mr. Guidash’s opinion. Tr. 36:18–37:10. In any case, Mr. Guidash’s opinion as to the state of the art is consistent with the level of skill indicated by the prior art of record in this proceeding—namely the Guidash patent, Sakurai, and Tanaka. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“In sum, we find that the Guidash patent, in light of the knowledge of a skilled artisan as explained by Mr. Guidash, teaches each limitation of claim 10. We have considered Patent Owner’s argument that the Guidash patent does not teach active regions, but find that argument unpersuasive for the reasons given above. Patent Owner does not contest that the Guidash patent teaches the other limitations of claim 10.” slip op. at 26
Patent outcomesUS 7,944,493 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,944,493 - Sony Corporation v. Collabo Innovations, Inc.All claims unpatentablePTAB · Oct 3, 2017 · IPR2016-00938 · APJ David C Mckone · IPR · Final written decision
Claims 1–3 and 6–9 are unpatentable as obvious over the Guidash patent because aligning the contact holes would have been a predictable modification that improved fill factor and sensor performance.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Petitioner. The challenged claims recite an “active region” without a recitation of an isolation region or an insulation region. Thus, the plain language of the claims does not require an insulation region serving as a border for an active region. As to the specification, it merely describes a device isolation region, specifically not shown, as an example region surrounding an active region of the preferred embodiment, but does not indicate that an isolation region is a part of an active region or necessarily accompanies an isolation region. Ex. 1001, 8:56–58. We are not persuaded that the ’493 patent’s one reference to “insulation” redefines active region or narrows the term “isolation” used elsewhere in the specification. We maintain our conclusion (Dec. 11) that reading an insulation region as part of the claimed active region (or necessarily accompanying an active region) based on the disclosure in the specification would be importing an extraneous limitation into the claims improperly. See E.I. du Pont de Nemours, 849 F.2d at 1433.” slip op. at 13
- Skill levelSkill level board ownDecided for petitioner
“1. Level of Ordinary Skill Petitioner does not state in the Petition its contention as to the level of ordinary skill in the art. Rather, Petitioner states that it is discussed in the Guidash Declaration. Pet. 11. Mr. Guidash testifies that a skilled artisan 3 The record does not include arguments or evidence regarding objective indicia of nonobviousness. would have had “a Bachelor’s degree in electrical engineering, physics, or material science and approximately 3–5 years of industrial experience or equivalent research or teaching experience, or a Master’s degree in the same fields and 1–3 years of industrial experience or equivalent research or teaching experience in the field of semiconductor image sensor design and fabrication.” Ex. 1002 ¶ 45. Patent Owner argues that Petitioner did not reproduce Mr. Guidash’s opinion in the Petition. PO Resp. 62. Nevertheless, Patent Owner does not provide a statement of the level of skill in the art and, when asked at the oral hearing, confirmed that it does not dispute Mr. Guidash’s opinion. Tr. 36:18–37:10. In any case, Mr. Guidash’s opinion as to the state of the art is consistent with the level of skill indicated by the prior art of record in this proceeding—namely the Guidash patent, Suzuki, Sakurai, and Hashimoto (Ex. 1013, EP 0954032A2). See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Guidash patent— increasing the fill factor and improving sensor performance by increasing the sensitivity and saturation signal of the sensor—have a rational underpinning. We have considered the competing expert testimony regarding whether it would have been possible to move the fourth contact hole of Figure 4 of the Guidash patent and whether, if done, it would have had disadvantages contrary to the teaching of the Guidash patent. Although, for the reasons given above, we do not find that the art is a “black art” to an artist with the requisite experience, it is complex enough where it is appropriate for us to give expert testimony careful consideration. Centricut, LLC v. The Esab Group, Inc., 390 F.3d 1361, 1369–70 (Fed. Cir. 2004) (internal citation omitted) (“Expert testimony may be similarly important in patent cases involving complex technology such as this one. Where the field or art is complex, we have repeatedly approved the use of expert testimony to establish infringement. We have also noted that ‘typically’ expert testimony will be necessary in cases involving complex technology.”). In general, as explained in Section II.B.1 above, we find that Mr. Guidash, due to his extensive experience in the relevant art, is in a much better position to testify as to the effects of modifying the layout of Figure 4 than is Dr. Afromowitz who has a relative lack of experience in the subject matter area of this proceeding. As to the testimony specific to this issue, Mr. Guidash has provided an example (Ex. 1005, Mead & Conway) to show that fabricators did allow gate channels to be made directly over the transistor channel. Dr. Afromowitz’s testimony, on the other hand, is based on a misreading of the Guidash patent and also admits to a lack of specific knowledge as to where lenses focus light onto photodiodes in the systems at issue in this proceeding. We credit the testimony of Mr. Guidash and give it substantial weight. In contrast, we do not credit Dr. Afromowitz’s testimony and give it little weight. In sum, we find that a skilled artisan would have found it obvious to modify the system shown in Figure 4 of the Guidash patent to move the fourth contact hole into alignment with the second and third contact holes. The skilled artisan would have done so, in the context of a fabricator that allowed such placement, in order to increase the fill factor and improve sensor performance by increasing the sensitivity and saturation signal of the sensor. As explained in Section II.B.1 above, we find that a skilled artisan would have been familiar with various design rules used by different fabrication facilities, would have known how to make changes to a layout, and would have been able to predict the outcome of these changes. See Ex. 1002 ¶ 47. We find that a skilled artisan would have known how to move the fourth contact hole into alignment with the second and third contact holes, would have been able to predict the outcome of doing so, and would have had a reasonable expectation of success. So modified, we find that the Guidash patent teaches “the second, third and fourth contact holes are aligned substantially in a straight line,” as recited in claim 1.” slip op. at 39
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“claims 1–3 and 6–9 except for the alignment of the contact holes recited in claims 1 and 8. Petitioner has introduced persuasive evidence that a skilled artisan would have had reasons to modify the design shown in Figure 4 of the Guidash patent to align the contact holes in the manner recited in claims 1 and 8. We have weighed the respective backgrounds and experiences of the parties’ expert witness and find that Petitioner’s expert witness, Mr. Guidash, is more qualified to opine on the subject matter than Patent Owner’s expert witness, Dr. Afromowitz. We also have analyzed the testimony of the respective experts and find that Mr. Guidash’s testimony is more consistent with the other evidence in the record. Accordingly, we find Mr. Guidash’s testimony more credible, as discussed in detail above. Patent Owner does not argue or introduce evidence of objective indicia of nonobviousness. In sum, upon consideration of all the evidence, we conclude that Petitioner has proved by a preponderance of the evidence that claims 1–3 and 6–9 would have been obvious over the Guidash patent. III. CONCLUSION Petitioner has demonstrated, by a preponderance of the evidence, that claims 1–3 and 6–9 are unpatentable over the Guidash patent. IV. ORDER For the reasons given, it is: ORDERED, based on a preponderance of the evidence, that claims 1– 3 and 6–9 are unpatentable; and” slip op. at 41
Patent outcomesUS 7,944,493 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,944,493 - PTAB · Sep 20, 2017 · IPR2015-01611 · APJ Stacey G White · IPR · Rehearing
Denied Volkswagen’s rehearing request; the Board maintained that Kniffin did not show the “responsive to” limitation for claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 138, 139, and 143.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“rehearing. 37 C.F.R. § 42.71(d). The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
NonePatents in suitUS 6,549,130 - Apple Inc. v. Core Wireless Licensing S.A.R.L.Rehearing deniedPTAB · Sep 13, 2017 · IPR2015-01899 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claim 4 unpatentable as obvious over Schnarel, Aberg, and Smith.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision of the Board may file a request for rehearing. 37 C.F.R. § 42.71(d). The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Smith’s use of indicators within the message center 6100 itself offers no teaching that would influence or motivate a POSITA to modify an application summary, rather than the application itself.” PO Resp. 37. This argument suffers from two flaws. First, there is no requirement that the references contain the motivation to combine or modify. See KSR, 550 U.S. at 420 (holding “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed”); see also Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1294 (Fed. Cir. 2006) (stating that the motivation to combine does not have to be explicitly stated in the prior art, and can be supported by testimony of an expert witness regarding knowledge of a person of skill in the art at the time of invention). Second, there is no requirement for bodily incorporation of Smith’s features into Schnarel and Aberg. See Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . .”). Instead, the question is “whether ‘a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[.]’” Id. (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). Thus, Patent Owner’s conclusory argument that Smith alone fails to provide a motivation is not persuasive. slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
§ 103 obviousnesscites KSRPatents in suitUS 8,713,476 - Apple Inc. v. Core Wireless Licensing S.A.R.L.Rehearing deniedPTAB · Sep 13, 2017 · IPR2015-01898 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claim 6 unpatentable as obvious over the stated combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“rehearing. 37 C.F.R. § 42.71(d). The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“vicinity.” Req. Reh’g 3. We disagree that the specification, even in this passage, equates the two. Instead, we understand the full passage as listing several elements of environment—whether the telephone is Bluetooth enabled, whether there is Bluetooth application which was an associated summary window, and the location of the device. Ex. 1001, 4:47–52. In any case, the specification is clear that this is only an example. The specification teaches broadly that the application snapshot may vary with “the environment in which the mobile telephone finds itself,” and then provides an “example.” Thus, the specification is clear that the sentence beginning with “for example” is not intended to limit the term “environment.” See Ancora Tech., Inc. v. Apple, Inc., 744 F.3d 732, 735 (Fed. Cir. 2014) (holding non-limiting examples insufficient to narrow a term’s plain and ordinary meaning); see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373 (Fed. Cir. 2014) (noting “e.g.” in the specification does not limit a term). Thus, we disagree that this passage is inconsistent with our construction or limits the term “environment” in the way Patent Owner now proposes. slip op. at 4
- BurdenDecided for petitioner
“Yurkovic and Nason each taught the limitations of claim 6 because we “overlooked that claim 6 requires the ‘stored data types’ of a summary window vary, and not simply the data for a given type to vary.” Req. Reh’g 10–11. Patent Owner never identifies, however, where it argued that Yurkovic and Nason only disclose information varying, not type of information varying, which is fatal to its Request. See 37 C.F.R. § 42.71(d). This failure is especially egregious with respect to the grounds based on Nason and Nason and Yurkovic. Patent Owner never separately argued that Nason failed to teach the limitations of claim 6. See PO Resp. 43–44. Moreover, Patent Owner also never separately argued that the combination of Nason and Yurkovic failed to account for the limitations of claim 6. With respect to Nason and Nason and Yurkovic, there is nothing that we could have misapprehended or overlooked with respect to our findings regarding the obviousness of claim 6 for these grounds. Thus, these new arguments regarding Nason and Nason and Yurkovic with respect to claim 6 were waived. See Paper 8, 3 (Scheduling Order) (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”).” slip op. at 9
Claim constructioncites PhillipsPatents in suitUS 8,434,020
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.