• Servicenow, Inc. v. BMC Software, Inc.Institution denied
  PTAB · Dec 18, 2015 · IPR2015-01329 · APJ Brian P Murphy · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 4, and 7 obvious over Glasser and Davis.

  RulingsInstitution decision

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

    “We agree with Patent Owner. Petitioner’s evidence does not establish that the ACLs in Glasser’s system are stored in a folder or file within a hierarchical namespace. To the contrary, the evidence shows that Glasser stores the ACLs in registry 167, separate from the hierarchically organized arrangement of folders and files that Petitioner identifies as the asserted “objects” defined in the ’586 patent. See Pet. 34 (arguing that the Windows 95 “folders and files [in Glasser and Davis] qualify as ‘objects’”), 35 (“Glasser and Davis confirm that folders and files are self‐contained entities that contain data, and therefore, qualify as ‘objects’ that were added to the namespace.”). Petitioner also acknowledges that “[a] folder object in Glasser can inherit values from the access control list (ACL) of its parent folder” (Pet. 43 (emphasis added)), which is not the same thing as inheriting ACL values from the parent folder. Therefore, Petitioner has not provided sufficient evidence to establish that i) the ACLs are contained in Glasser’s hierarchy of folders and files, which are the recited “objects” identified by Petitioner, and ii) the ACLs are “shar[ed] . . . with a plurality of the one or more computer system[s],” because the ACLs are not dynamically inherited by a child folder (the recited “instance” object) from a parent folder, i.e., “from the prototype” object, as recited in claim 1 of the ’586 patent. For the reasons given above, we are not persuaded by Petitioner that Glasser or Davis discloses the self-contained “objects” defined in the ’586 patent or “sharing the plurality of objects with a plurality of the one or more computer system[s]” by “dynamic[] inherit[ance],” as recited in claim 1. Claims 4 and 7 depend from claim 1. Therefore, for the same reasons, we are not persuaded by Petitioner’s obviousness argument regarding claims 4 and 7. III. CONCLUSION Petitioner has failed to demonstrate a reasonable likelihood of prevailing with respect to at least one of the claims challenged in this Petition, based on the ground asserted and information presented therein. IV. ORDER For the reasons given, it is ORDERED that the Petition is denied.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “according to their broadest reasonable interpretation in light of the patent specification. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279–81 (Fed. Cir. 2015). Under the broadest reasonable interpretation standard, we assign claim terms their ordinary and customary meaning, as understood by one of ordinary skill in the art, in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The ’586 patent provides the following definition of the term “object”: “As used herein, an object is a self‐contained entity that contains data and/or 1 U.S. Patent No. 5,956,715 issued September 21, 1999 to Glasser et al., on an application filed September 23, 1996, which is a continuation of an earlier application filed December 13, 1994. Ex. 1003 (“Glasser”). Petitioner asserts that Glasser qualifies as prior art under 35 U.S.C. §§ 102(a), (e). Pet. 21. 2 Davis, selected excerpts from Fred Davis, THE WINDOWS BIBLE, Peachpit Press (1996). Ex. 1004 (“Davis”). Petitioner asserts that Davis qualifies as prior art under 35 U.S.C. § 102(b). Pet. 22. procedures to manipulate the data. Objects may be stored in a volatile memory and/or a nonvolatile memory.” Ex. 1001, 9:19–22. The ’586 patent uses lexicography to define the term “object” with reasonable clarity, deliberateness, and precision. Petitioner and Patent Owner both agree to the broadest reasonable construction of “object” as it is defined in the ’586 patent. Pet. 14, 16; Prelim. Resp. 8, 10. Therefore, we construe the term “object” as “a self-contained entity that contains data and/or procedures to manipulate the data, which may be stored in a volatile memory and/or a nonvolatile memory.”3” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. Petitioner’s evidence does not establish that the ACLs in Glasser’s system are stored in a folder or file within a hierarchical namespace. To the contrary, the evidence shows that Glasser stores the ACLs in registry 167, separate from the hierarchically organized arrangement of folders and files that Petitioner identifies as the asserted “objects” defined in the ’586 patent. See Pet. 34 (arguing that the Windows 95 “folders and files [in Glasser and Davis] qualify as ‘objects’”), 35 (“Glasser and Davis confirm that folders and files are self‐contained entities that contain data, and therefore, qualify as ‘objects’ that were added to the namespace.”). Petitioner also acknowledges that “[a] folder object in Glasser can inherit values from the access control list (ACL) of its parent folder” (Pet. 43 (emphasis added)), which is not the same thing as inheriting ACL values from the parent folder. Therefore, Petitioner has not provided sufficient evidence to establish that i) the ACLs are contained in Glasser’s hierarchy of folders and files, which are the recited “objects” identified by Petitioner, and ii) the ACLs are “shar[ed] . . . with a plurality of the one or more computer system[s],” because the ACLs are not dynamically inherited by a child folder (the recited “instance” object) from a parent folder, i.e., “from the prototype” object, as recited in claim 1 of the ’586 patent. For the reasons given above, we are not persuaded by Petitioner that Glasser or Davis discloses the self-contained “objects” defined in the ’586 patent or “sharing the plurality of objects with a plurality of the one or more computer system[s]” by “dynamic[] inherit[ance],” as recited in claim 1. Claims 4 and 7 depend from claim 1. Therefore, for the same reasons, we are not persuaded by Petitioner’s obviousness argument regarding claims 4 and 7.” slip op. at 13

  Claim construction§ 103 obviousness
  Patents in suitUS 6,895,586
• Arris Group, Inc. / Tellabs, Inc. et al. v. Cirrex Systems LLCAll claims unpatentable
  PTAB · Dec 2, 2015 · IPR2014-00815 · APJ Trenton A Ward · IPR · Final written decision

  Claim 30 is unpatentable as anticipated by Nicholson and Yokoyama and obvious over Shih.

  RulingsFinal written decision

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

    “claim language. Bell Atl. Network Servs., Inc. v. Covad Comm. Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). To overcome this presumption, the patentee must “clearly set forth” and “clearly redefine” a claim term away from its ordinary meaning. Id. The disavowal must be “unmistakable” and “unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2012). This standard is “exacting.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). We do not find that Patent Owner has met this exacting standard, and, in the absence of an express definition for the term “thin-film filter,” we decline to incorporate Patent Owner’s lengthy recitation as the broadest reasonable interpretation of the term “thin-film filter.” In view of the plain and ordinary meaning of the term “thin-film filter” and the disclosure in the ’953 patent Specification, we construe the term “thin-film filter” to mean “a filter comprised of stacked layers for filtering light.”” slip op. at 13

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

    “Claim 30 further requires “a mask in intimate contact with at least one of said filter surfaces, said mask substantially opaque in at least some spectral region.” For this claim limitation, Petitioner relies upon Nicholson’s disclosure of absorbance layer 12, shown in the annotated Figure 1 above. Pet. 31 (citing Ex. 1005, 3:23–25). Nicholson states that the “absorbance layer 12 [is] formed of highly optical absorbent material such as carbon black.” Ex. 1005, 3:24–25. Petitioner argues that this highly absorbent material, such as carbon black, would be substantially opaque in at least some spectral region. Pet. 31–32 (citing Ex. 1003 ¶ 94). As discussed above, we construe a mask as “a material that blocks the passage of at least selected photons.” We are persuaded that Petitioner sufficiently demonstrates that absorbance layer 12 in Nicholson provides a material that blocks the passage of at least selected photons. In its Response, Patent Owner argues that Nicholson does not anticipate because it fails to teach a thin-film filter with layers having packing factors approaching 100%. PO Resp. 6–7. As we do not adopt Patent Owner’s proposed construction of “thin-film filter” requiring these limitations, Patent Owner’s arguments are moot. In fact, during the oral argument, Patent Owner conceded that, if the Board were to adopt the same construction for “thin-film filter” as set forth in the decision to institute, Nicholson would anticipate claim 30. Tr. 38.5 As discussed above, we maintain the same construction for “thin-film filter” as in the decision to institute. Dec. on Inst. 6. For the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that claim 30 is anticipated by Nicholson.” slip op. at 16

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

    “To determine whether there was an apparent reason to combine the known elements in the way a patent claims, it will often be necessary to look . . . [at] the background knowledge possessed by a person having ordinary skill in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Petitioner argues that thin-film filters were well known in the art. Pet. 25 (citing Ex. 1003 ¶ 45). As discussed above, we construe “thin-film filter,” to mean “a filter comprised of stacked layers for filtering light.” Shih discloses that antireflection coatings are comprised of “layers of TiO2 and SiO2” and that “[t]he antireflection coatings enhance the transmission of light in the forward direction through the input fiber 20.” Ex. 1004, 4:42– 48. Thus, we are persuaded that Petitioner has presented sufficiently an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (internal quotation marks omitted). For the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that claim 30 would have been obvious in view of Shih. slip op. at 24

  Patent outcomesUS 6,404,953 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,404,953
• Henkel Corporation v. H.B. Fuller Co.All claims unpatentable
  PTAB · Oct 6, 2015 · IPR2014-00606 · APJ Brian P Murphy · IPR · Final written decision

  Claims 22–25, 27, and 28 are unpatentable: claims 22–25 and 28 are anticipated, and claim 27 is obvious.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Preamble not limitingOther

    “We conclude that the preamble language “[a] hot melt adhesive” is a statement of intended use, not a structural limitation of the claims, because the body of the claims defines a structurally complete composition. Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (a preamble is not limiting “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.”). The parties agree that hot melt adhesives are understood in the art as “‘100[%] solid thermoplastic materials that flow when heated’ and then form a ‘final bond . . . when the temperature has fallen to the ambient one, i.e., that of the material being glued.’” PO Resp. 5 (citing Ex. 1015 ¶ 15); Pet. Reply 4–5 (citing Ex. 1015 ¶ 15). The body of claims 22 and 28 recites a hot melt adhesive that flows when heated and bonds when cooled.” slip op. at 7

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Under Federal Rule of Evidence 702, a witness may be qualified as an expert by “knowledge, skill, experience, training, or education” and may give opinion testimony if the expert’s “specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. We find Dr. Hsu to be qualified as an expert in polymers and adhesives, and we further find his specialized knowledge will help us 7 Dr. Hsu originally was funded by National Starch and Chemical Co., a company that was acquired by Petitioner. Ex. 1039, 16:8–17:13. understand the evidence regarding the claimed hot melt adhesive composition and determine facts in dispute between the parties. We further note that, although Patent Owner urges us to disregard Dr. Hsu’s testimony, Patent Owner repeatedly relies on Dr. Hsu’s testimony when necessary. Pet. Reply 2–3 (citing PO Resp. 5–8, 12, 17–22, 25–26, 32–33, 35–36). Patent Owner cannot have it both ways. Having considered the parties’ arguments and cited evidence, we will assign the appropriate weight to the expert opinion testimony offered by Dr. Hsu.” slip op. at 13

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

    “We agree with Petitioner that if one of ordinary skill in polymer science and engineering were to consider the four corners of the Eastotac Brochure, the H-142R hydrocarbon tackifying resin in Table 1 is directly related to the exemplary hot melt adhesive compositions in Table 3 by the teachings of the reference. Pet. Reply 8–10. The hydrocarbon tackifying resins of Table 1 are listed on pages 4 and 5 of the Eastotac Brochure. Ex. 1002, 4–5. At the top of page 4 just above Table 1, under the heading “Applications,” the Eastotac Brochure states “[t]hese resins are especially suited for low-molecular-weight polyethylene-based hot melt adhesives where elevated temperature resistance and high cohesive strength are required.” Ex. 1002, 4 (emphasis added); Pet. Reply 8. The next page following Table 1 (page 6) discloses exemplary hot melt adhesive compositions in Table 3, each one of which includes an “Eastotac resin” and thermoplastic base polymer in specified composition ranges by weight that overlap with the composition ranges recited in claim 22 of the ’404 patent. Although Patent Owner counts ten different applications for the Eastotac resins of Table 1, the Eastotac Brochure provides specified composition ranges for use of the Eastotac resins in only one application – hot melt adhesives. Ex. 1002. As recently reiterated by the Federal Circuit, “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)). Patent Owner avoids addressing the teachings contained in the text of the Eastotac Brochure and narrowly focuses its discussion only on the express disclosures contained in Tables 1 and 3. PO Resp. 24–26 (citing Ex. 1039, 104:17–20, 106:2–11, 115:2–5). Dr. Hsu testified that, although Table 1 does not list a specific application for the Eastotac resins and Table 3 lists “Eastotac resin” rather than a specific Eastotac resin from Table 1, a fair reading of the Eastotac Brochure indicates “all the ones [resins] in Table 1 can be used in this [Table 3] composition,” including H-142R. Pet. Reply 9–10 (citing Ex. 1015 ¶¶ 41–42; Ex. 1039, 116:12–17, 116:21–117:3, 118:15–21, 121:7–18). Dr. Hsu further testified that one of ordinary skill would have been “motivated” to use the H-142R resin, listed in Table 1, in the hot melt adhesive compositions of Table 3 when a high peel value and high heat resistance were desired, “because Eastotac® H-142 has the highest Tg of the Eastotac® resins in the Eastotac Brochure.” Ex. 1015 ¶ 54. We find Dr. Hsu’s unrebutted testimony to be persuasive. As in the Kennametal case, we find that one of ordinary skill in the art of polymer science and engineering immediately would have envisaged the use of the H-142R hydrocarbon tackifying resin in combination with either APP or EVA thermoplastic base polymer in the exemplary hot melt adhesive compositions in Table 3 of the Eastotac Brochure. See id. at 1382–83.” slip op. at 15

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

    “Patent Owner does not provide any evidence that contradicts Dr. Hsu’s testimony. PO Resp. 40–41. We also are not persuaded by Patent Owner’s argument challenging the sufficiency of Petitioner’s evidence in support of a motivation to combine the asserted references. Rule 41 of the Uniform Freight Classification Committee provides good reason for one of skill in the art to make the asserted modification to the compositions disclosed in the Eastotac Brochure or Exxon Reference. The compositions contain hydrocarbon tackifying resins, and the Eastotac Brochure expressly states that the resins listed therein are “especially suited” for hot melt adhesives where “elevated temperature resistance and high cohesive strength are required.” Ex. 1002, 4. The ’404 patent, moreover, acknowledges the known use of higher Tg tackifying resins to increase heat resistance, and the rail freight packaging requirement for maintaining a hot melt adhesive bond up to 74º C. provides a known application and commercial rationale for using a high peel value adhesive, as recited in claim 27. We also find Dr. Hsu’s opinion articulates a specific, persuasive reason, based on the evidence of record, to explain why a person of ordinary skill in the art would have used a high Tg tackifying resin to achieve a hot melt peel value > 70 ºC., with a reasonable expectation of success. For the reasons stated above, we determine that one of ordinary skill in the art would have been motivated by the teachings of Litz to modify the adhesive compositions disclosed in either the Eastotac Brochure or the Exxon Reference to obtain a composition having a peel value of greater than about 70º C., with a reasonable expectation of success. Therefore, we conclude Petitioner has satisfied its burden of proving by a preponderance of the evidence that either the Eastotac Brochure or the Exxon Reference in combination with Litz would have rendered claim 27 of the ’404 patent obvious to a person of ordinary skill in the art under 35 U.S.C. § 103.” slip op. at 24

  Patent outcomesUS 6,833,404 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,833,404
• Stats LLC v. Hockeyline, Inc.All claims unpatentable
  PTAB · Sep 15, 2015 · IPR2014-00510 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1, 2, 8, 10–12, and 30 were held unpatentable as anticipated by Hameen-Anttila and STATS Football, and obvious over STATS Football combined with Reilly.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “1. Means-plus-function Claiming Independent claim 1 of the ’107 patent includes a series of means-plus- function limitations. 35 U.S.C. § 112 ¶ 6.5 A means-plus-function limitation “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Id. The claim limitations in the ’107 patent are drafted using the accepted “means for” construct followed by a specified function, without further recitation of structure to achieve the recited function. Triton Tech of Texas, LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014); see Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). “In exchange for using this form of claiming, the patent specification must disclose with sufficient particularity the corresponding structure for performing the claimed function and clearly link that structure to the function.” Triton Tech, 753 F.3d at 1378 (citation omitted). We construe the following claim limitations for purposes of this decision, in accordance with the principles stated above. 2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6

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

    “2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “c. Claim 1 – “customized by the user to reflect desired data” We are further persuaded that Hameen-Anttila discloses hierarchical menu- based screen displays that may be “customized by the user to reflect desired data,” in accordance with our claim construction. We agree with Petitioner, that the setup menu in Hameen-Anttila (Fig. 4a) allows a user to select desired display menus (e.g., for golf) that will cause other menus not to be displayed (e.g., for hockey, bowling, and baseball) during a user’s input of golf-specific data in real time. Pet. Reply 7–8 (citing Ex. 1002, 5:21–24; Ex. 1014 (Dahbura Dec.) ¶¶ 20–21). As Dr. Dahbura notes, Patent Owner’s expert, Dr. Locke, agrees that choosing not to display a menu screen is a form of user customization. Ex. 1014 ¶ 21 (citing Ex. 1017, 72:19–73:3). We further agree with Petitioner that Patent Owner’s proffered distinction between Hameen-Anttila’s “mere usage” of hierarchical menu-based screen displays and “customizing” such displays is illusory and not consistent with the description of user customization in the ’107 patent. Pet. Reply 8 (citing Ex. 1014 ¶ 22). The individual drop-down arrows in Figure 4b further suggest the ability of a user to change the menu-based screen displays to permit the user to input desired data for the illustrated golf game. Therefore, we determine Hameen- Anttila discloses an action by the user to configure the hierarchical menu-based screen displays to permit desired data to be gathered for one or more sports games. d. Claim 1 – “transferring statistical information based on such inputted data” Patent Owner’s argument asserting Hameen-Anttila does not disclose the transfer of “statistical information based on such inputted data” also is off the mark. As noted above, Hameen-Anttila discloses that sports game event data is input into an electronic scorekeeping device and transmitted via a communications network to a server while the sports game is ongoing. Ex. 1002, 2:40-51, 2:57– 3:13. We are not persuaded by Patent Owner’s argument that the transfer of statistical information “based on” inputted data requires some form of calculation that necessarily excludes inputted data as part of the transferred “statistical information.” PO Resp. 17–19. Patent Owner does not offer a claim construction or request construction of quoted claim phrase at issue, even though Patent Owner’s argument presumes a specific definition of the phrase without explaining why it is consistent with the broadest reasonable interpretation standard. Pet. Reply 2. The language in claim 1 of the ’107 patent recites “a processor,” but it does not recite a calculation function performed by the processor on inputted data. Pet. Reply 11. The claim language also does not exclude inputted data from “statistical information” or limit “statistical information based on such inputted data” only to statistics calculated from the inputted data. Id. The preamble of claim 1, recites “gathering, processing and distributing statistical information.” Ex. 1001, 8:11–12 (emphasis added); see also PO Resp. 19 (citing Ex. 1001, 1:56–60 (“The present invention advantageously provides an electronic scorekeeping device for gathering, calculating and distributing statistical information.”)). Gathering statistical information, when read in light of the ’107 patent specification, refers to inputting sports game event data into the scorekeeping device for transmission to a central database as part of the statistical information transfer. Pet. Reply 11 (citing Ex. 1001, Abstract (“This [inputted] data is transferred in real-time in a system according to the invention via a communications means to a central database.”); Ex. 1014 ¶¶ 25–28). The ’107 patent does not define “statistical information” or “statistical information based on such inputted data.” The ’107 patent also does not exclude inputted data from the description of statistical information. Pet. Reply 12 (citing Ex. 1014 ¶ 27). To the contrary, and consistent with the understanding in the art, the ’107 patent uses the words “data,” “statistics,” “statistical data,” and “statistical information” interchangeably and with significant areas of overlap. Id.; see also id. at 4 (citing Ex. 2002 ¶ 30 (“The terms ‘statistics,’ ‘data,’ and ‘statistical information,’ are widely used in computer systems, but they are often used in very general ways with broad meanings in which their meanings have significant areas of overlap.”)). We further credit Dr. Dahbura’s testimony, that a person of ordinary skill in” slip op. at 18

  Patent outcomesUS 6,725,107 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,725,107
• Hulu, LLC v. Intertainer, Inc.All claims unpatentable
  PTAB · Jun 12, 2015 · CBM2014-00052 · APJ Jennifer M Meyer · CBM · Final written decision

  Claims 1–3, 5, 8, 10, 11, and 13–15 are unpatentable: claims 1–3, 5, 8, 10, 11, 13, and 14 as anticipated by Chen, and claim 15 as obvious over Chen and Hartanto.

  RulingsFinal written decision

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

    “in view of the Specification of the ’246 patent, requires the link program be limited to a single program. The claim language itself does not indicate a single program is required. Further, we see no language in the Specification, and Patent Owner has not pointed us to any such language, that indicates clearly or persuades us that the claims should be limited as such. The only” slip op. at 7

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

    “We are persuaded also that Chen’s disclosure of pausing the video and displaying the linked page on the computer, in response to clicking a hot-link, discloses the claimed “creating a link program adapted to both: (a) interrupt streaming of the video at the remote storage medium . . . and (b) access ancillary content . . . .” Pet. 16–17 (citing Ex. 1003, 4:5–10, 4:21–25, 4:28–40, 7:30–33; Ex. 1008 ¶ 16); see also Ex. 1003, 2:11–17 (“The [HyperVideo Authoring] tool allows one to prepare video clips with the hot-link information and then to link them with other types of media.”); id. at 5:55–6:26 (discussing “[c]reation of hot video content”). As discussed above, Patent Owner admitted, during prosecution of the ’884 application, “the fact that [a] computer performs the disclosed functions when a user interacts with an interface link necessarily requires that there is a link program.” Ex. 1002, 60, 83 (emphases added). We are persuaded additionally that Chen’s disclosure of encoding the embedded hyperlinks in the video (e.g., inserting the hot-link information into frames in the video), and identifying incoming data as a “hot” video such that a hot video decoder may display the “hot” video, including the video, audio, and hot-link information, corresponds to the claimed steps of “associating the link program with the video” and “providing the link program over the network.” Pet. 17–19 (citing Ex. 1003, 4:4–10, 5:56–6:39, 6:48–7:2; Ex. 1008 ¶ 18). We are persuaded further that Chen’s disclosure of transmitting a signal to the URL, from which the video is being streamed, to request delivery of a linked html file (containing instructions to display text or multimedia content), in response to a user clicking on a hot-link, corresponds to the claimed step of “receiving an indication of an interaction with the link program.” Pet. 19 (citing Ex. 1003, 4:20–25; Ex. 1008 ¶ 19). We are persuaded also that Chen’s disclosure of having the URL, from which the video is being streamed, pause the video, in response to a user clicking on a hot-link, while the text or multimedia content is being displayed, corresponds to the claimed step of “interrupting, at the first site, the streaming of the video in response to receiving the indication of the interaction with the link program.” Pet. 19 (citing Ex. 1003, 4:28–34; Ex. 1008 ¶ 16). We are persuaded additionally that Chen’s disclosure of allowing the user to resume the video corresponds to the claimed step of “continuing the streaming of the video over the network from the point in time when the streaming of the video was interrupted.” Pet. 19 (citing Ex. 1003, 4:38–40; Ex. 1008 ¶ 20).” slip op. at 12

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

    “under 35 U.S.C. § 103 as obvious based on Chen and Hartanto. Pet. 28–30. Claim 15 recites that the network includes a wireless network. Ex. 1001, 10:43–44. Petitioner contends that use of wireless networks as a mechanism for the transmission of videos was well known in the art prior to the filing date of the ’246 patent, and provides declaration evidence that one of skill in the art would have understood the network for data transfer could be a wireless network. Pet. 28–29; Ex. 1008 ¶ 24. Petitioner cites Hartanto as an example of disclosure of wireless networks used with video transmission. Id. Petitioner further contends that the combination of using a wireless network connection as the network in Chen would have yielded a predictable result. Pet. 29–30; Ex. 1008 ¶ 24. We determine that Petitioner’s analysis and evidence is persuasive. Patent Owner does not argue specifically the patentability of claim 15 based on any limitations other than those discussed above with respect to independent claim 1. See PO Resp. 33. After reviewing the entire record, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that claim 15 of the ’246 patent would have been obvious to a person of ordinary skill in the art7 over Chen and Hartanto.” slip op. at 18

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We note, as a general matter, that although the claims in the ’592 reexamination may be similar, they are not identical to the claims of the ’246 patent. Further, Patent Owner has not filed a Motion to Exclude Dr. Bove’s testimony. In any case, the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. See Gnosis S.p.A. v. S. Alabama Med. Sci. Found., Case IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64); see also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received.”). In rendering our decision, we have assigned weight to the evidence as appropriate in view of the entire record before us.” slip op. at 17

  Patent outcomesUS 8,479,246 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,479,246
• Apple Inc. v. THX Ltd.Some claims unpatentable
  PTAB · Jun 9, 2015 · IPR2014-00235 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Tomonori and Sadaie; claim 3 was not shown unpatentable over Tomonori, Virva, and Sadaie.

  RulingsFinal written decision

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

    “In sum, the ’483 patent describes and claims a sound reflecting surface that redirects sound waves output from the speaker towards the elongate output slot, whereas sound damping material absorbs standing waves inside the sound duct. The ’483 patent goes to great lengths to distinguish a sound reflecting surface from a sound damping surface. Furthermore, given that “sound damping material” is different from a “sound reflecting surface” and both are recited as separate claim limitations, it follows that a sound reflecting surface is not made of sound damping material. For the reasons given above, we construe “sound reflecting surface,” in the context of claim 1 and in light of the ’483 patent specification, as “a surface that redirects sound waves output from a speaker, not made of sound damping material.”” slip op. at 12

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

    “2. Other Terms Petitioner proposes to construe additional claim terms. Pet. 11–14. We determine that no express construction of these additional terms is necessary for purposes of this decision.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “suppress standing waves inside a duct. Pet. 44 (citing Ex. 1002 ¶ 112). Dr. Vipperman identifies the reason for Sadaie’s use of side wall sound damping as enabling “the sharpness of a fundamental wave resonance of a standing wave determined by the length of the sound path . . . to be suppressed because a substantial length of the sound path cannot be primarily determined.” Ex. 1002 ¶ 112 (citing Ex. 1003, 14). We agree with Petitioner’s reasoning, therefore, that “[e]xtending the damping material of Tomonori along the sidewalls of the duct,” as taught by Sadaie, would have been one of a limited number of known solutions further minimizing the presence of spurious resonances and standing waves inside the duct. Id. at 45 (citing Ex. 1002 ¶ 113). The quoted statements of Petitioner and Dr. Vipperman with respect to Tomonori and Sadaie are consistent with the principles set forth in KSR.10 Petitioner and Dr. Vipperman provide an analysis of why one of ordinary skill in the art of speaker design would have been motivated by Sadaie’s disclosure of side wall sound damping to modify Tomonori’s narrow sound duct, such that sound damping material forms the sides of the sound duct but not the bottom (sound reflecting) surface. In particular, Dr. Vipperman’s Declaration provides a sufficient analysis to support the obvious modification of Tomonori’s narrow profile speaker, by a speaker designer of ordinary skill, such that “sound damping material form[s] sides of the sound duct” to help suppress the presence of spurious resonances and standing waves inside the duct. Ex. 1002 ¶¶ 112, 113.” slip op. at 28

  Patent outcomesUS 7,433,483 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,433,483
• Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.Institution denied
  PTAB · May 4, 2015 · IPR2015-00084 · APJ Brian P Murphy · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 6–14 obvious over the asserted combinations.

  RulingsInstitution decision

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

    “For the reasons given above, we are not persuaded by a preponderance of the evidence that Petitioner has shown a reasonable likelihood of prevailing in its challenge that claims 6, 7, 9–11, and 14 of the ’153 patent would have been obvious to a person of ordinary skill in the art at the time of the invention over JPAP 216 and JPAP 237.” slip op. at 17

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

    “The claim language requires the translating stage to be configured to move the gripper laterally (horizontally) after the overhead transport vehicle has positioned the translating stage and gripper “adjacent to” the storage bin. The gripper moves laterally such that it can “directly access” the material unit in the adjacent storage bin. The claimed system, taken as a whole, is not defined in such a way as to prevent the gripper from having rotational or angular movement, as argued by Patent Owner, as long as the gripper moves laterally to grip the stored material unit.” slip op. at 7

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

    “We further agree with Patent Owner that Petitioner has not provided persuasive evidence of a reason why a person skilled in the art of AMHS would have been motivated to combine JPAP 216 and JPAP 237 in the manner asserted by Petitioner, with a reasonable expectation of success. Prelim. Resp. 21–26. Petitioner generally describes how the two references could be combined to meet the claim limitations, but Petitioner does not explain why a person of ordinary skill in the art would have combined JPAP 216 and JPAP 237 “‘in the way the claimed invention does.’” Id. at 22 (citing ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012)). In particular, we are not persuaded that Petitioner has explained why a person of skill in the art would want to add an overhead hoist to the AMHS of JPAP 216. The AMHS of JPAP 216 utilizes the vertical motion of the storage carousel to move the pods, and there is no indication in JPAP 216, JPAP 237, or Petitioner’s analysis of why an overhead hoist would be necessary or beneficial to the functioning of an AMHS of the type disclosed in JPAP 216. Id. at 27–28. Although Petitioner consistently paraphrases the tests for obviousness set forth by the Supreme Court in KSR, we agree with Patent Owner that such paraphrasing cannot substitute for factual analysis and application of the particular facts and evidence of this case according to the analytical framework set out in KSR. Id. at 22. For example, Petitioner argues that modifying the system disclosed in JPAP 216 to use the extendable arm and hoist disclosed in JPAP 237 “would have been merely an arrangement of old elements with each performing the same function it had been known to perform, yielding no more than one would expect from such an arrangement, and this conclusion is supported by logic, judgment, and common sense.” Pet. 23 (citing Ex. 1028 ¶ 61). Although the quoted statement is consistent with KSR, neither Petitioner nor Dr. Sturges provides the important analysis of explaining why, based on the particular facts and evidence of the present case, one of ordinary skill would have made the suggested modification or why the logic, judgment, and common sense of such a person would have led to the asserted combination with a reasonable expectation of success. A review of the cited testimony from paragraphs 60 and 61 of Dr. Sturges’s Declaration reveals similarly conclusory testimony, unsupported by a specific engineering and technical analysis of how the asserted combination would have worked and why it would have been an obvious combination to one of skill in the art. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (Quoted with approval in KSR, 550 U.S. at 418). Perhaps the most relevant evidence relied upon by Petitioner is found in one sentence from paragraph 62 of Dr. Sturges’s Declaration. “[T]he motivation to modify is self-evident from the problem that needed to be resolved – moving article 40 from port 28 to station 56.” Pet. 24 (citing Ex. 1028 ¶ 62). Dr. Sturges, however, does not explain why such a problem existed – JPAP 216 does not indicate such a problem – or precisely how and why it would have been resolved by a person of skill in the art in the manner claimed in the ’153 patent. The quoted sentence, by itself, is far from sufficient to satisfy Petitioner’s burden of persuasion on the question of obviousness. We find that “[t]he expert failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims.” ActiveVideo Networks, 694 F.3d at 1327.” slip op. at 15

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “vehicle that can move articles vertically to a processing station as stated by Petitioner. Prelim. Resp. 18–19. We agree with Patent Owner. In JPAP 216 Figure 1, vertical movement of the storage shelves is performed by the vertical carousel stocker. Id. at 19–20 (citing Ex. 1007, Fig. 3); Ex. 1007, ¶ 10, Fig. 1. Vertical movement of the ceiling vehicle is not necessary, or in any way indicated, to move the pods vertically from port 28 to work station 56 as argued by Petitioner. Id. at 19–20 (citing Ex. 1007, Fig. 3); Ex. 1007 ¶¶ 13, 15, 17–19. Petitioner’s reliance on paragraph 58 of Dr. Sturges’s Declaration (Pet. 22) is not persuasive, because it makes the conclusory statement that a person skilled in the art would have recognized that transfer device 38 “must have the capability to move . . . vertically to effect transfer of the article 40 to both port 28 and station 56,” without explaining why. Ex. 1028 ¶ 58. The quoted statement, moreover, appears to be at odds with the drawings and description of JPAP 216, as explained by Patent Owner. Prelim. Resp. 19–20. In the absence of any engineering and design analysis of the AMHS disclosed in JPAP 216 to support the quoted statement, we give it no weight.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,771,153
• Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.Institution denied
  PTAB · May 4, 2015 · IPR2015-00087 · APJ Brian P Murphy · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood of proving claims 6–14 obvious over the asserted combinations.

  RulingsInstitution decision

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

    “III. CONCLUSION Petitioner has failed to demonstrate a reasonable likelihood of prevailing with respect to at least one of the claims challenged in this Petition, based on the grounds asserted and information presented therein. IV. ORDER For the reasons given, it is ORDERED that the Petition is denied.” slip op. at 18

  • BurdenDenied

    “For the reasons given above, we are not persuaded by a preponderance of the evidence that Petitioner has shown a reasonable likelihood of prevailing in its challenge that claims 6, 7, 9–11, and 14 of the ’153 patent would have been obvious to a person of ordinary skill in the art at the time of the invention over JPAP 216 and JPAP 237.” slip op. at 17

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

    “persuasive evidence of a reason why a person skilled in the art of AMHS would have been motivated to combine JPAP 216 and JPAP 237 in the manner asserted by Petitioner, with a reasonable expectation of success. Prelim. Resp. 21–26. Petitioner generally describes how the two references could be combined to meet the claim limitations, but Petitioner does not explain why a person of ordinary skill in the art would have combined JPAP 216 and JPAP 237 “‘in the way the claimed invention does.’” Id. at 22 (citing ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012)). In particular, we are not persuaded that Petitioner has explained why a person of skill in the art would want to add an overhead hoist to the AMHS of JPAP 216. The AMHS of JPAP 216 utilizes the vertical motion of the storage carousel to move the pods, and there is no indication in JPAP 216, JPAP 237, or Petitioner’s analysis of why an overhead hoist would be necessary or beneficial to the functioning of an AMHS of the type disclosed in JPAP 216. Id. at 27–28. Although Petitioner consistently paraphrases the tests for obviousness set forth by the Supreme Court in KSR, we agree with Patent Owner that such paraphrasing cannot substitute for factual analysis and application of the particular facts and evidence of this case according to the analytical framework set out in KSR. Id. at 22.” slip op. at 15

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “vehicle that can move articles vertically to a processing station as stated by Petitioner. Prelim. Resp. 18–19. We agree with Patent Owner. In JPAP 216 Figure 1, vertical movement of the storage shelves is performed by the vertical carousel stocker. Id. at 19–20 (citing Ex. 1007, Fig. 3); Ex. 1007, ¶ 10, Fig. 1. Vertical movement of the ceiling vehicle is not necessary, or in any way indicated, to move the pods vertically from port 28 to work station 56 as argued by Petitioner. Id. at 19–20 (citing Ex. 1007, Fig. 3); Ex. 1007 ¶¶ 13, 15, 17–19. Petitioner’s reliance on paragraph 58 of Dr. Sturges’s Declaration (Pet. 22) is not persuasive, because it makes the conclusory statement that a person skilled in the art would have recognized that transfer device 38 “must have the capability to move . . . vertically to effect transfer of the article 40 to both port 28 and station 56,” without explaining why. Ex. 1028 ¶ 58. The quoted statement, moreover, appears to be at odds with the drawings and description of JPAP 216, as explained by Patent Owner. Prelim. Resp. 19–20. In the absence of any engineering and design analysis of the AMHS disclosed in JPAP 216 to support the quoted statement, we give it no weight.” slip op. at 13

  § 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,165,927
• Sony Computer Entertainment America LLC v. Game Controller Technology LLCAll claims unpatentable
  PTAB · Apr 14, 2015 · IPR2013-00634 · APJ Jennifer M Meyer · IPR · Final written decision

  Claims 1–11 are unpatentable: claims 1, 3, 4, 6, 7, 10, and 11 as anticipated by Hashimoto or obvious over Wang and Hashimoto; claims 2 and 9 over Hashimoto and Marks ’859; claims 5 and …

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “patent,7 as a “user manipulated electronic device which serves to communicate with a computer.” Inst. Dec. 6 (quoting Ex. 1001, 5:54–56). Patent Owner argues that “communication” requires “electronic communication.” PO Resp. 15–20; Tr. 39:22–40:10. In this regard, Patent Owner argues that a “controlling object” must be more than a light on a stick, and “must include both a light and a ‘user interface.’” PO Resp. 15, 17. Patent Owner argues that the examples of a controlling object given in the Specification “uniformly refer to devices that include or incorporate a light and also have some additional electronics for communication with a computer.” Id. at 18 (citing Ex. 1001, 2:64–3:6 (remote control provided with a light), 3:6–10 (cell phone), 5:54–62 (“remote controls, mice, wands, steering wheels, joysticks, electronic pens, game pads, wearable devices, etc.”)). We must, however, be careful not to import limitations from the Specification into the claims. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (cautioning against reading limitations into a claim from preferred embodiments described in the specification). If Patent Owner intended such features to be a part of the claim, these features should have been claimed expressly therein.” slip op. at 6

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

    “Although we agree with Patent Owner’s assertion that a prior art reference must include enabling disclosure in order to anticipate a claim (PO Resp. 7 (citing In re Hoeksema, 399 F.2d 269 (CCPA 1968)); see also Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991) (“a reference must enable someone to practice the invention in order to anticipate under § 102(b)”)), as noted by Petitioner, “a prior art reference need not enable its full disclosure; it only needs to enable the portions of its disclosure alleged to anticipate the claimed invention” (Reply 4 (quoting In re Antor Media Corp., 689 F.3d 1282, 1290–91 (Fed. Cir. 2012))). We further agree with Petitioner that Patent Owner’s “conclusion that Hashimoto itself could not be implemented does not inform the question of whether a PHOSITA could have combined the description of Hashimoto with his [or her] own knowledge to make the [claimed] invention.” Reply 4–5 (citing Antor, 689 F.3d at 1290–91; In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985)) (emphases added). Patent Owner’s enablement arguments appear to be premised primarily on the specific arrows (or lack thereof) included in the functional block diagram of Figure 2 of Hashimoto. See, e.g., Tr. 36:3–15, 47:23–48:9. In this regard, we agree with Petitioner that a “PHOSITA would recognize that the figures in Hashimoto are functional block diagrams, and that many illustrated blocks are logical components (i.e., software) that would not necessarily correspond to specific physical components.” Reply 7 (citing Ex. 1025 ¶¶ 3–17). Patent Owner’s arguments regarding Hashimoto’s lack of enablement are not persuasive.” slip op. at 13

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Reasons to Combine Patent Owner argues that Hashimoto and Marks ’859 are not combinable to arrive at the claimed invention. PO Resp. 25–26, 34–41. Specifically, Patent Owner argues that Marks ’859 “teaches an improved type of frame-by-frame tracking system of the sort that Hashimoto rejects.” Id. at 26. Patent Owner, thus, argues that because Marks ’859 “embraces and seeks to improve a methodology decisively rejected by Hashimoto, the combination of these two reference is inappropriate.” Id. Patent Owner argues that Hashimoto and Marks ’859 are not analogous art. Id. at 35–36 (citing Ex. 1031 (“EXHIBIT D”) ¶¶ 41–42). We, however, agree with Petitioner that both Hashimoto and Marks ’859, as well as the ’885 patent, relate to “tracking the position of specific objects . . . using color data extracted for each pixel in the image of the background environment,” and, thus, the references are analogous art. Pet. 25.” slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “In Hashimoto, the selected color is based on an observation of the background of the scene and is a least represented color therein. Ex. 1003 ¶ 53. As previously discussed, Marks ’859 solves a problem of changing conditions in the scene by re-sampling the scene periodically in order to allow for adjustments for improved object tracking. Ex. 1004, 8:32–58, 9:45–10:51, 11:8–24, 11:35–50. Petitioner asserts that one of skill in the art would have recognized that the Hashimoto system could be improved “by simply configuring the system to perform the already disclosed background color spectrum analysis and LED color update process when environmental lighting/color conditions change as taught by Marks ‘859.” Pet. 27–28. Petitioner has set forth sufficient articulated reasoning with rational underpinning to support the combination of the prior art teachings identified above. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We are not persuaded by Patent Owner’s arguments to the contrary.” slip op. at 23

  Patent outcomesUS 8,094,885 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,094,885
• Baxter Healthcare Corp. / Apatech, Inc. et al. v. Millenium Biologix, LLCAll claims unpatentable
  PTAB · Mar 18, 2015 · IPR2013-00590 · APJ Michelle R Osinski · IPR · Final written decision

  Claims 1, 2, 4, 9, 11, 16–18, 20, 25, 26, 36, 38, 43, and 44 are unpatentable under § 103(a) over the stated combinations of prior art.

  RulingsFinal written decision

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

    “biomaterial compound at the same pace as that found in the natural bone remodeling process. “A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” Minton v. Nat'l Ass'n of Sec. Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003). “However, when the ‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005). Determining whether to give a “whereby” or “wherein” clause patentable weight, if any, is done on a case-by-case basis. Id.; Minton, 336 F.3d at 1381; see also In re Griffin v. Bertina, 285 F.3d 1029, 1033–34 (Fed. Cir. 2002) (holding that the Board did not err by giving limited effect to the “wherein” clauses in an interference count because the wherein clauses “giv[e] meaning and purpose to the manipulative steps” rather than “merely stat[ing] the inherent result of performing the manipulative steps”). We maintain our determination that the “wherein” clauses in this case are “to be given no patentable weight beyond requiring that the recited biomaterial compound be capable of producing the recited intended results when implanted at the specified site.” Dec. 8–9. Patent Owner is attempting to read in structural limitations of the biomaterial compound, such as microporosity and macroporosity, which Patent Owner chose not to recite in claims 1 and 2 of the ’992 patent. Compare Claims 1 and 2 of the ’992 patent, with claims 9 and 18 of the ’992 patent, and claims 1 and 6 of the ’251 patent (referring to “macroporous structure” or “microporous structure”). It is improper to import such structural limitations into a wherein clause that does nothing more than recite an intended result of a positively recited process step. A “macroporous structure,” moreover, is not” slip op. at 10

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

    “establish that the progressive removal and replacement of the biomaterial compound necessarily occurs at the same pace as natural bone remodeling. Petitioner’s evidence is sufficient to support the finding that Ruys ’93a’s implanted biomaterial compound would be capable of promoting the progressive removal and replacement of the implanted biomaterial compound primarily through osteoclast and osteoblast activity because of the right chemistry (see Pet. 41–43). Patent Owner’s observations (PO Obs. 1–5) do not change our findings or conclusions. Patent Owner also argues that Ruys ’93a teaches away from the porosity which is required for the biomaterial compound to be capable of progressive removal and replacement in a time frame consistent with natural bone remodeling. PO Resp. 33 (citing Ex. 2026 ¶¶ 94–97), 47–49 (citing Ex. 1003 ¶ 368; Ex. 2026 ¶¶ 64–65). More specifically, Patent Owner argues that Ruys ’93a disparages the properties of porous HA as having low compressive strength, and desires a means for enhancing the bioactivity of HA other than porosity control. Id. at 48 (citing Ex. 1011, 3; Ex. 1014, 5, Ex. 2026 ¶¶ 77–78). Patent Owner argues that “one of skill in the art reading Ruys would have been discouraged from taking the SiCaP of Ruys and adding the structural features that the ’992 inventors determined were required to make the biomaterial capable of bioresorption and rebuilding according to the process of natural bone.” PO Resp. 49 (citing Ex. 2026 ¶¶ 66, 79). Petitioner’s position, however, is not based on modification of the biomaterial compound of Ruys ’93a to render it capable of progressive removal and replacement of the biomaterial compound. Rather, Petitioner’s position is based on Ruys ’93a inherently being capable of such progressive removal and replacement, due to its silicon-substituted CaP chemistry. Accordingly, the focus of Ruys ’93a on silicon doping rather than porosity control to improve bioactivity is immaterial to the obviousness determination in this case.” slip op. at 17

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Patent Owner does not explain how a nexus exists between the asserted long-felt need for a synthetic bone graft material to replace autologous bone and the features of claims 1 and 2. In particular, Patent Owner does not identify to what it attributes the effectiveness of Skelite and/or Actifuse and whether that feature is (i) found in the claims and (ii) a novel element not in the prior art. To the extent that the effectiveness may be attributed to the substitution of silicon, for example, this feature was already present in the prior art as evidenced by Ruys ’93a. To the extent that the effectiveness may be attributed to a macroporous structure, for example, this feature is not claimed in independent claims 1 and 2. Consequently, we are not persuaded by Patent Owner’s contentions in relation to long-felt but unmet need.” slip op. at 21

  • ExcludeNot reached

    “We dismiss Petitioner’s motion as moot, because we do not rely on the objected-to timeline in our final Decision and because, even without excluding Patent Owner’s additional evidence, we have determined that Petitioner has demonstrated, by a preponderance of the evidence, that claims 1, 2, 4, 9, 11, 16– 18, 20, 25, 26, 38, 38, 43, and 44 of the ’992 patent are unpatentable.” slip op. at 39

  Patent outcomesUS 6,585,992 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,585,992

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.