- Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing deniedPTAB · Dec 11, 2018 · IPR2017-00864 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–5, 7–9, 11–15, and 18–21 unpatentable because their scope did not require the buffer to store the specified information.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” 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 the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s argument as follows.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“misapprehended any argument. Furthermore, we are unpersuaded that our Decision was in error regarding independent claims 1, 3, 7, 18, and 23 because these claims have a different scope than claims 17, 22, and 24. As Patent Owner correctly noted, our construction of “dedicated USB connection” is “a USB connection that may include some shared physical communication path and includes a buffer for maintaining dedicated address, configuration and response information for the connection.” Dec. 33. Thus, a dedicated USB connection must include a buffer that is capable of storing/maintaining “dedicated address, configuration and response information” regardless of whether such data is actually stored/maintained therein.” slip op. at 3
Claim constructionPatents in suitUS 7,523,243 - Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing deniedPTAB · Dec 11, 2018 · IPR2017-00861 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claim 25 unpatentable because its ACR data limitation did not distinguish its scope and the Board had not misapprehended or overlooked the controller argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” 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 the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s arguments below.” slip op. at 2
- BurdenDecided for patent owner
“party challenging the decision,” 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 the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s arguments below.” slip op. at 2
NonePatents in suitUS 7,627,708 - PTAB · Nov 20, 2018 · CBM2018-00018 · APJ Josiah C Cocks · CBM · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of CBM review of claims 1–17 and 22–24 because the patent did not qualify as a covered business method patent.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“completion of a purchase of a ticket, is a “recitation of a financial operation” sufficient to establish that claims 23 recite a covered business method. See 37 C.F.R. § 42.304(a) (“The petitioner must demonstrate that the patent for which review is sought is a covered business method patent . . . .”). Petitioner simply does not now explain persuasively why the transmission of a secured validating display by a computer system in the course of validating a ticket that had been purchased constitutes activity that is “active[] and contemporaneous[]” with the “management or administration of a financial product or service.” See Req. Reh’g 3–4. In order to be eligible for a CBM review, the challenged patent must “claim[] a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service . . . .” AIA § 18(d)(1). After considering the Petition, we determined that Petitioner did not meets its burden of demonstrating that the patent for which review is sought is a covered business method patent. Although Petitioner may disagree with our determination as to claim 23, disagreement is not, itself, a proper basis for requesting rehearing. Here, Petitioner does not identify persuasively that we misapprehended or overlooked any matter in reaching a determination other than that desired by Petitioner.” slip op. at 5
- BurdenDecided for patent owner
“The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We address below, in the order presented in the Request for Rehearing, the matters Petitioner asserts we overlooked or misapprehended.” slip op. at 3
NonePatents in suitUS 9,239,993 - Power Integrations, Inc. v. Semiconductor Components Industries, LLCAll claims unpatentablePTAB · Nov 7, 2018 · IPR2017-01329 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 16–18 and 21 are unpatentable as obvious over the combination of Yang ’089 and Yang ’824.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In consideration of the above, we recognize a programmable signal can be selected to be constant or variable over time. Therefore, in this Decision, we apply the same construction applied in the Decision to Institute, i.e., we construe “programmable signal” to mean a selectable or potentially variable voltage or current signal. We address whether the combination of the references discloses a correlation between the claimed “programmable signal” and the claimed “input of the LED drive circuit” in our analysis of the combination of Yang ’089 and Yang ’824 that appears later in this Decision.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“motivated to combine the programmable LED driver of Yang ’089 with the current loop disclosed in Yang ’824 to generate the signal that switches the transistor switch. Pet. 40–41. Yang ’089 controls the current on the primary side on the magnetic device and uses that controlled primary side current to drive the LEDs. Ex. 1004, Fig. 3. Yang ’824 also controls the current on the primary side of the magnetic device (i.e., transformer 10), but provides the output current to the LEDs on the secondary side of the magnetic device. Ex. 1003, Fig. 1. Specifically, “[t]he secondary side switching current IS is determined by the primary side switching current IP and the winding turns of the transformer 10.” Id. at 3:28–30. Petitioner argues that the primary side regulator of Yang ’824 provides safety enhancing galvanic isolation and that Yang ’824 states “it is desirable to provide a control circuit for controlling output current of the power converter at the primary side of the power converter.” Id. at 40 (citing Ex. 1003, 1:18–20). Thus, Petitioner asserts that it would have been desirable to make a primary side controller for controlling LEDs with a programmable input by combining the teachings of Yang ’824 and Yang ’089. Id. (citing Bohannon Decl., Ex. 1008 ¶¶ 101, 105). According to Petitioner, using a programmable input such as that disclosed in Yang ’089 to modulate the output current of the switching signal of the controller, as shown in Yang ’824, uses a known technique to modify a known controller and yields predictable results. Id. at 41.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“of the LED by programming delay time T D. PO Resp. 44 (citing Pet. 48– 49). In Yang ’089, there is no clear correlation between the value of VCNT and the input of the LED drive circuit. Although delay T D is a function of the value of VCNT, VCNT in Yang ’089 appears to be a function of the desired LED brightness, independent of an input of the LED drive circuit. Although Petitioner explains that VCNT is programmable and that claim 16 does not recite how the programmable signal is generated, as is the case with all but the embodiment of Figure 2 of the ’764 patent, it remains unclear how VCNT in Yang ’089 is correlated to an input of the LED drive circuit. Pet. Reply 22–24.” slip op. at 21
- ExcludeMotion to exclude, deniedDenied
“Mr. Bohannon’s testimony. There need not be a perfect match between the expert’s qualifications and the patent at issue. See SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). It is not necessary for Mr. Bohannon to demonstrate that he spent the bulk of his career designing power supplies. Indeed, to testify as an expert under FRE 702, a person need not be one of ordinary skill, but may be “‘qualified in the pertinent art.’” See B/E Aerospace, Inc. v. MAG Aerospace Indus. LLC, Case IPR2014-01513 (PTAB March 18, 2016) slip op. at 13–14 (Final Written Decision) (sustaining consideration of testimony of expert witness that lacked hands-on experience with the claimed subject matter). We agree with Petitioner that Mr. Bohannon’s experience over 25 years, including his work on “buck and boost” converters and flyback power supplies provides him sufficient experience and knowledge of the claimed subject matter for his opinion to remain of record. Indeed, although the academic background of Patent Owner’s expert, Dr. Holberg, is extensive, his CV and declaration state only that he has “experience with the technology described in the ’764 Patent” including various electrical components and circuits involved (resistors, transformers, switching circuit). Ex. 2001 ¶ 8. Patent Owner’s expert, Dr. Holberg, states that he has designed high frequency synthesizers for hard-disk read-channel applications and started a company where he designed A/D converters, and other circuits, but does not state explicitly that he designed power supplies. Id. ¶ 11. We further note that neither expert’s testimony has been a significant factor in determining the outcome of this proceeding. Our citations to Mr. Bohannon’s testimony mostly concern Patent Owner’s criticism of Mr. Bohannon’s testimony in the Patent Owner Response. For example, Petitioner points out that Patent Owner’s discussion of the “input circuit” limitation in claim 16, alleging that Mr. Bohannon did not appreciate the difference between a wire and a circuit with buffers and other circuit elements, takes Mr. Bohannon’s testimony out of the context of the combination of the references. Opp. To Mot. To Exclude 4–5. Policy considerations for excluding expert testimony, such as those implemented by the gatekeeping framework established by the Supreme Court in Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993), are less compelling in bench proceedings such as inter partes reviews than in jury trials. See, e.g., Volk v. United States, 57 F. Supp. 2d 888, 896 n.5 (N.D. Cal. 1999); In re Bay Area Material Handling, Inc., No. C 95-1163 VRW, 1995 WL 729300, at *6 (N.D. Cal. Dec. 4, 1995). In the context of this proceeding, we can assess adequately each expert’s testimony and assign it appropriate weight.” slip op. at 34
Patent outcomesUS 9,049,764 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,049,764 - PTAB · Nov 6, 2018 · IPR2017-01328 · APJ Kamran Jivani · IPR · Final written decision
The Board canceled claims 14 and 15 and denied entry of substitute claims 16 and 17 because their feedback-signal limitation introduced unsupported new matter.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“must determine whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. A motion to amend “may not enlarge the scope of the claims of the patent or introduce new matter.” 35 U.S.C. § 316(d)(3). Further, our rules provide that “[a] motion to amend may be denied where . . . [t]he amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.” 37 C.F.R. § 41.121(a)(2)(ii). In the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), the lead plurality opinion explains that “the patent owner must satisfy the Board that the statutory criteria in § 316(d)(1)(a)–(b) and § 316(d)(3) are met and that any reasonable procedural obligations imposed by the Director are satisfied.” Id. at 1305– 06; see also id. at 1341 (“There is no disagreement that the patent owner bears a burden of production in accordance [with] 35 U.S.C. § 316(d).” (Reyna, J., writing for a majority)). We, therefore, must determine whether Patent Owner has made a showing sufficient to establish that its Motion to Amend complies with Section 316(d)(3).” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
“V. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Petitioner’s Exhibits 1015 and 1017, which are declarations of Mr. Bohannon, “on the basis that Mr. Bohannon is not qualified to testify as an expert with respect to the technology in this [proceeding].” Paper 29, 2. We dismiss as moot Patent Owner’s motion because we did not rely on Exhibits 1015 and 1017 in our determination above that Patent Owner did not show adequate support for proposed substitute claims 16 and 17. See supra Section III.B.” slip op. at 15
NonePatents in suitUS 6,845,019 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · Nov 6, 2018 · IPR2017-01149 · APJ Karl D Easthom · IPR · Final written decision
Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and the respective additional reference in each trial.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 126
Patent outcomesUS 6,418,556 unpatentableNonecites PhillipsPatents in suitUS 6,418,556 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · Nov 6, 2018 · IPR2017-01150 · APJ Karl D Easthom · IPR · Final written decision
Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and Moro, Reiter, or Remillard.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“III. CONCLUSION For the foregoing reasons, Petitioner has shown, by a preponderance of the evidence, that the subject matter of claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 would have been obvious over the combination of Young ’801, Young ’121, Strubbe, and either Moro (48Pet.), Reiter (49Pet.), or Remillard (50Pet.).” slip op. at 126
- ExcludeMotion to exclude, deniedDenied
“12. Motion to Exclude Patent Owner moves to exclude paragraphs 8, 24, 27–30, 32 and 38 of” slip op. at 123
Patent outcomesUS 6,418,556 unpatentable§ 103 obviousnesscites PhillipsPatents in suitUS 6,418,556 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · Nov 6, 2018 · IPR2017-01148 · APJ Karl D Easthom · IPR · Final written decision
Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over the stated combinations in each of the three trials.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“of the evidence, that the subject matter of claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 would have been obvious over the combination of Young ’801, Young ’121, Strubbe, and either Moro (48Pet.), Reiter (49Pet.), or Remillard (50Pet.). IV. ORDER ORDERED that 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 of U.S. Patent No. 6,418,556 B1 are unpatentable as a result of each trial as a separate matter, IPR2017-01148, IPR2017-01149, and IPR2017-01150;” slip op. at 126
- ExcludeMotion to exclude, deniedDenied
“observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 126
Patent outcomesUS 6,418,556 unpatentable§ 103 obviousnesscites PhillipsPatents in suitUS 6,418,556 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · Nov 6, 2018 · IPR2017-01151 · APJ Karl D Easthom · IPR · Final written decision
Claims 23 and 25–27 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and any one of Moro, Reiter, or Remillard.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“would not have interpreted Young ’801’s system as restricted to a single page limited to time slots ranging from 11:00 am to 12:30 pm as depicted in Figure 6 of Young ’801. See Ex. 1720 ¶ 24 (describing Dr. Bovik’s restricted view of Young ’801 as unreasonable). This restricted reading of Young ’801 unreasonably constrains the use of the guide to 1.5 hours, something the Petitions do not do, contrary to Patent Owner’s arguments that the Reply shifts to new theories. See Rep. Opp. Mot. Exc. 2–5. To elaborate and address Patent Owner’s arguments and Dr. Bovik’s testimony, Mr. Wechselberger responds with a citation documenting well-known cursor navigation aspects of the same concept involved in spreadsheets (Ex. 1722) and elaborates about minimal program guide layout or format changes that go hand-in-hand with the Petitions’ assertions of guide size reduction. See Ex. 1720 ¶ 24; Opp. Mot. Exc. 9–11 (discussing Ex. 1720 ¶¶ 36–37, 129– 131, 136–137, 158), 11 (noting Dr. Bovik stated in his deposition “a user would have been ‘confined to the visible screen’”) (citing Ex. 1721, 56:16– 23, 108:25–109:8, 116:17–117:2; Ex. 2706 ¶¶ 51–52). In summary, the Petition cites to portions of Young ’801 that describe the page mode and generally advance the theory of moving a cursor across, upward, and to the right to obtain consecutively displayed and successive portions of schedule information, citing portions that describe new pages and cursor jumps. Petitioner did not create a new theory about how the page guide operates but responded to Patent Owner’s arguments. Patent Owner chose not to avail itself of the opportunity to depose Dr. Wechselberger about his second declaration and thereafter file observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 92
- Skill levelSkill level petitioner adoptedDecided for petitioner
“materially similar description of a person of ordinary skill in the art. See PO Resp. 14–15 (citing Ex. 2706 ¶¶ 1–19). During the Oral Hearing, Patent Owner indicated any differences between Petitioner’s and Patent Owner’s descriptions do not create a dispositive issue. See Tr. 66:11–18. On this record, Petitioner’s description comports with the level of ordinary skill implied by the prior art references discussed further below. Accordingly, we adopt it.” slip op. at 38
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“8. Young ’801, Young ’121, Strubbe, and Moro Petitioner persuasively shows that claims 23 and 25–27 the” slip op. at 47
Patent outcomesUS 6,418,556 unpatentable§ 103 obviousnessPatents in suitUS 6,418,556 - PTAB · Oct 17, 2018 · IPR2018-00651 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied rehearing and denied institution because Petitioner did not show a reasonable likelihood of prevailing on challenged claims 23–25, 33, 35, 36, 39, 40, 42, and 44.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A. Standard of Review When rehearing a decision on petition, the Board will review the decision 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 Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Statute, however, provides that: [t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. 35 U.S.C. § 314(a) (emphasis added). Here, we have determined that the information presented in the Petition fails to show a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 23–25, 33, 35, 36, 39, 40, 42, and 44. Pursuant to § 314(a), we may not institute an inter partes review in this proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“in light of the disclosure at column 6, lines 32–37 of the ’296 Patent, but still determine that Petitioner’s proposed construction is unreasonably broad. Petitioner’s reliance on the disclosure at column 6, lines 32–37 is misplaced. When reviewed in a wider context, the ’296 Patent’s disclosure is consistent with our construction adopted in the Decision. Starting at column 5, line 58, the ’296 Patent describes a process or procedure “[f]or a given position of breast 102, such as a positon that is the same or similar to the CC position for a conventional mammogram.” The process or procedure includes moving the x-ray source, relative to the immobilized breast, to different angular positons, including conventional mammogram imaging positions and tomosyntheseis imaging positions. See Ex. 1003, 5:58–21. The ’296 Patent then states: Thus, two types of images can be produced in accordance with the currently preferred embodiment while breast 102 is immobilized in the same position. One type is the same or is at least similar to a conventional mammogram, which can be read and interpreted in the manner familiar to health professionals. The other type is tomosynthetic images reconstructed from the image data and displayed either separately or as an adjunct to the display of the image that is the same or similar to a conventional mammogram. The process described above for one position of breast 102 can be repeated for another position. For example one process can be for a breast position in a manner that is the same or similar to positioning the breast for a conventional CC view, the breast can then be released, the support 204 and C-arm 200 rotated to other angular positions and the breast repositioned in a manner that is the same and similar to the position for an MLO view, and the procedure repeated. Ex. 1001, 6:21–37 (emphases added). Consistent with our statement in the Decision that “[t]he ’296 patent does not describe decompressing the breast between imaging positions” (Dec. 9), but describes decompressing the breast between processes or procedures, in other words between exams. Id. at 6:32–37. As can be seen from the discussion above, the ’296 Patent discloses moving the source to conventional mammogram imaging positions and tomosynthesis imaging positions while the breast remains immobilized during one process, procedure, or exam. Id. at 5:58–6:37.” slip op. at 5
Claim constructionPatents in suitUS 7,831,296
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.