- PTAB · Dec 28, 2016 · IPR2015-01037 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing in both proceedings because Petitioner did not show that Su was publicly accessible by the critical date or that the Board overlooked or misapprehended a petition argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner fails to recognize that our Decision was based on Petitioner’s failure to present sufficient evidence of public accessibility. Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“The sole evidence cited in the Petition is a print-out of a record created in 2008 by Theses Canada. Ex. 1013 (“TH-Su”). As we noted in our Decision Denying Institution, TH-Su includes an active PDF link to Su, identifies Su as resident on two microfiches, indicates the publisher is the Ottawa: National Library of Canada [1999], and includes an abstract. Dec. Denying Inst. 7. TH-Su also includes an AMICUS No. (20672380)1, an international standard book number (ISBN 0612312569), a Canadian Number (992099080) and the following information “Copies: NL Stacks – Mic. TJ- 31256.” Id. at 7-8. However, TH-Su is a document created and modified on July 18, 2008, not in 1999. Id. at 7–8. Petitioner failed to tie 3 We agree with Petitioner’s assertion that it did not concede any of the argument set forth in Patent Owner’s Preliminary Response. Req. Reh’g. 6, fn 4. However, our inquiry during the conference of August 4, 2016 concerned facts and evidence. any of these numerical designations in TH-Su to public accessibility prior to 2008. Thus, Petitioner failed to meet its burden to demonstrate that Su was publically accessible in 1999.” slip op. at 4
§ 102 anticipationPatents in suitUS 8,122,141 - PTAB · Dec 28, 2016 · IPR2015-01033 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing of the institution denials because Petitioner did not show that Su was publicly accessible before the patents’ critical dates.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). 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 reply. Id. For the reasons discussed below, the Request for Rehearing is DENIED.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Petitioner’s failure to present sufficient evidence of public accessibility. Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).” slip op. at 3
§ 102 anticipationPatents in suitUS 8,327,011 - Unified Patents Inc. v. William GreciaRehearing deniedPTAB · Nov 29, 2016 · IPR2016-00789 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Unified Patents’ rehearing request, leaving in place the denial of institution because the petition did not sufficiently show the claimed token correspondence or GUI and API.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. 4 Wieder, U.S. Patent No. 8,001,612 B1, issued Aug. 16, 2011 (Ex. 1007). 5 Wiser, U.S. Patent No. 6,385,596 B1, issued May 7, 2002 (Ex. 1008). 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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“a password or e-mail, not just any password or e-mail automatically satisfies the recited membership verification token. To satisfy the recited membership verification token, the password or e-mail must correspond to the digital media, as recited in each of independent claims 1, 12 and 15. See also Inst. Dec. 7 (construing the claim phrase “the request comprising a membership verification token provided by a first user, corresponding to the encrypted digital media” such that the language “corresponding to the encrypted digital media” modifies the membership verification token). This is supported by the specification of the ’555 patent, which teaches that “an identifier for the digital media is stored in a database with another database of a list of associated tokens for cross-reference identification for verification.” Ex. 1001, 8:52–55 (emphasis added); see also id. at 8:19–21 (“Subsequently, the membership verification token is authenticated at step 604. The authentication is performed in connection with a token database.”).” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“a password or e-mail, not just any password or e-mail automatically satisfies the recited membership verification token. To satisfy the recited membership verification token, the password or e-mail must correspond to the digital media, as recited in each of independent claims 1, 12 and 15. See also Inst. Dec. 7 (construing the claim phrase “the request comprising a membership verification token provided by a first user, corresponding to the encrypted digital media” such that the language “corresponding to the encrypted digital media” modifies the membership verification token). This is supported by the specification of the ’555 patent, which teaches that “an identifier for the digital media is stored in a database with another database of a list of associated tokens for cross-reference identification for verification.” Ex. 1001, 8:52–55 (emphasis added); see also id. at 8:19–21 (“Subsequently, the membership verification token is authenticated at step 604. The authentication is performed in connection with a token database.”).” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“the admitted prior art” For the asserted grounds based on DeMello, Petitioner relied on either DeMello or the admitted prior art as teaching the recited “membership verification token . . . corresponding to the encrypted digital media.” Pet. 17–21, 52. For the asserted grounds based on Pestoni, Petitioner relied on either Pestoni or the admitted prior art as teaching the recited “GUI” and “API.” Id. at 33; see id. at 29 (citing Ex. 1009, Exhibit D). We denied institution of these asserted grounds because we were not persuaded by Petitioner’s arguments regarding the teachings of DeMello or Pestoni, either alone or in combination with the admitted prior art. slip op. at 3
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,402,555 - Unified Patents Inc. v. William GreciaRehearing deniedPTAB · Nov 22, 2016 · IPR2016-00602 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Unified Patents’ rehearing request, finding no abuse of discretion in denying institution on the DeMello- and Pestoni-based grounds challenging claim 1.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision, the Board 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“argument for ‘requesting the query data.’” Req. Reh’g 8 (emphasis omitted). According to Petitioner, “[t]he Petition certainly offers reasons to combine with Wieder for the token database . . . , but [the requesting step] doesn’t require combination because it is obvious from Pestoni alone.” Id. at 9. We disagree with Petitioner’s contention. As we noted in our Institution Decision, an obviousness analysis requires “‘some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Inst. Dec. 14 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Even if the recited requesting step “doesn’t require combination” with another patent or printed publication, Petitioner did not explain sufficiently why one of ordinary skill in the art would have considered modifying Pestoni to arrive at the claimed invention. See id. For instance, Petitioner merely asserted, without further explanation, that “it would be obvious to one of skill in the art to implement Pestoni with a request and corresponding reception.” Pet. 49. Accordingly, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness as to the recited requesting step. See Kahn, 441 F.3d at 988.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,887,308 - TC Heartland LLC v. Kraft Foods Group Brands LLCNo claims unpatentablePTAB · Nov 3, 2016 · IPR2015-01131 · APJ Toni R Scheiner · IPR · Final written decision
Claims 1–29 were not shown unpatentable under § 103 over Lohrman and Ackilli because the petitioner did not explain why a skilled artisan would modify Ackilli’s ranges to reach the claimed pH range.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner asserts constructions for the following claim terms, “having a pH of about 1.9 to about 2.4,” “flavoring,” and “drip index value.” Pet. 21–23. Patent Owner asserts that we need construe no claim term. PO Resp. 19–20. We agree with Patent Owner that no claim term requires 9 express construction for purposes of rendering a final written decision in this trial.” slip op. at 9
- Skill levelSkill level board ownOther
“Ms. Ferruzzi states that one of skill in the art included at least the ability to make the subject matter disclosed in Ackilli. Ex. 1010 ¶¶ 12–13; Pet. 24–25. Ms. Ferruzzi also states that one of skill in the art at the time of the invention also would have the ability “to make predictable use of the compositions and materials described” in Ackilli, and also have the education and experience in food chemistry to have knowledge of the information in Ackilli. Ex. 1010 ¶¶ 12–13; Pet. 25 (adding the ability to make predictable use of the containers described in the art such as Lohrman). Dr. Marvin J. Rudolph, Patent Owner’s declarant, disagrees with Ms. Ferruzzi’s assessment of the level of skill. Ex. 2012 ¶¶ 20–22. Dr. Rudolph asserts that one of skill in the art at the time of the invention would have “at least a Bachelor of Science in Food Science, Chemistry, or Chemical Engineering and at least five years of experience in the design and formulation of consumer beverage products” and “a Bachelor of Science in a packaging science or Mechanical Engineering or at least five years of experience in the design and manufacture of consumer product packaging.” Ex. 2012 ¶ 21. It is not apparent that Ms. Ferruzzi’s and Dr. Rudolph’s definitions relating to flavored beverage liquid concentrates are necessarily disparate. In reviewing the ’557 patent and Ackilli and applying the factors set forth above from Custom Accessories, we find that one of skill in the art who has the education and experience in food chemistry to understand Ackilli and the ’557 patent and can make predictable use of such 16 information, would have at least a Bachelor of Science in Food Science, Chemistry, or Chemical Engineering and at least five years of experience in the design and formulation of consumer beverage products.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“overlap or are encompassed by disclosed ranges in the prior art. See Peterson, 315 F.2d at 1329–30 (“Selecting a narrow range from within a somewhat broader range disclosed in a prior art reference is no less obvious than identifying a range that simply overlaps a disclosed range.”). The overlap itself of the disclosed ranges and the claimed ranges provides sufficient motivation to optimize the ranges because of the “normal desire of scientists or artisans to improve upon what is already generally known.” See Peterson, 315 F.3d at 1330. Here, Ackilli, which addresses optimizing dispersion of its flavoring composition concentrates in water, does not mention pH, much less disclose a pH range for the flavoring compositions. See Ex. 1003, 1:10–13. Also, it is clear that Ackilli did not recognize pH as a result-effective variable for compositions as it did not discuss pH. Only if a variable is known to be result-effective is the optimization of the variable within the grasp of one of ordinary skill in the art. Applied Materials, Inc., 692 F.3d at 1295 (citing Antonie, 559 F.2d at 620); In re Boesch, 617 F.2d 272, 276 (CCPA 1980)). Because the Peterson presumption does not apply here, we need to identify where Petitioner offered some articulated reasoning with some rational underpinning to support a conclusion of obviousness. See KSR, 550 U.S. at 418.” slip op. at 30
- Strike new argumentNew argument disregardedOther
“We rejected this inherency theory in our Decision on Institution. We recognized that Ackilli does not disclose the pH of any of its disclosed concentrations, and Petitioner had not established that the pH of any of Ackilli’s working samples met the requirements of the challenged claims. Dec. Instit. 18–19. Therefore, we agreed with Patent Owner that Ackilli does not expressly or inherently disclose concentrations meeting the pH range of the challenged claims. Id. In the Declaration submitted with Petitioner’s Reply, Mr. Ackilli offers a new theory for how Ackilli teaches the claimed pH range. Mr. Ackilli testifies that the pH of a beverage is driven by the desired taste profile of the finished beverage and relies on alleged commercial embodiments of the Ackilli reference to prove that the beverage concentrates described in Ackilli included beverage concentrates with a pH in the claimed range. Ex. 1202 ¶¶ 55–61. Including such a new theory and new evidence concerning what a reference teaches is inappropriate at the reply stage. See 35 U.S.C. 312(a)(3); 37 C.F.R. § 41.104. Also, the evidence of the pH of alleged embodiments of the Ackilli reference on sale before the critical date, such as the peach and orange-flavored Water Sensations, is beyond the scope of this inter partes 28 proceeding because such evidence is not a patent or printed publication. See 35 U.S.C. § 311(b) (stating the scope of an inter partes review is limited to challenges under §§ 102 or 103 and “only on the basis of prior art consisting of patents or printed publications”); Tr. 32:24–33:14 (asserting that Water Sensations evidence is beyond scope of Petition).” slip op. at 28
Patent outcomesUS 8,603,557 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,603,557 - TC Heartland LLC v. Kraft Foods Group Brands LLCNo claims unpatentablePTAB · Nov 3, 2016 · IPR2015-01128 · APJ Susan L C Mitchell · IPR · Final written decision
Claims 1–22 were not shown unpatentable under § 103 over Ackilli because the petitioner did not explain why a skilled artisan would modify Ackilli’s compositions to reach the claimed pH range.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“improved taste (including a lasting taste impression and desirable body), improved palatability, improved keeping qualities, and stabilized flavor and color may be achieved by modifying the compositions of Ackilli to include higher amounts of citric acid and lower amounts of sodium citrate or potassium citrate buffers that result in compositions falling within the scope of the claim. 23 Ex. 1010 ¶ 24. Ms. Ferruzzi, however, cites only two references in support, references that we found a person of ordinary skill would not look to when seeking to modify Ackilli’s beverage concentration. Dec. Instit. 19; see PO Resp. 36 n.8. Without further support as to what one of skill in the art would have known, we do not credit this testimony.” slip op. at 23
- Strike new argumentNew argument disregardedDecided for patent owner
“recognize in Ackilli should have been in the Petition.” Tr. 34:23–25. We agree; Petitioner’s assertion of and reliance on Mr. Ackilli’s testimony to establish what one or ordinary skill in the art would have gleaned from Ackilli should have been in the Petition. See 35 U.S.C. § 312(a)(3) (stating that the petition must identify in writing and with particularity the evidence that supports the grounds for the challenge to each claim including affidavits or declarations of supporting evidence and opinions that petitioner relies upon). The fact that an argument may be responsive to Patent Owner’s arguments set forth in its Response does not relieve the Petitioner of its initial burden to identify “with particularity” the “evidence that supports the grounds for the challenge to each claim.” Maxlinear, Inc. v. Cresta Tech. Corp., Case IPR2015-00594, slip op. at 29 (PTAB Aug. 15, 2016) (quoting Intelligent Bio-Systems, 821 F.3d 1359, 1367–68 (Fed. Cir. 2016)); see also 37 C.F.R. § 42.104 (describing required content of the Petition).” slip op. at 19
- ExcludeMotion to exclude, deniedDenied
“As Patent Owner notes, we are “well positioned to determine and assign appropriate weight to evidence presented” to us. We agree that the arguments presented in Petitioner’s Motion to Exclude go to the weight that we give the evidence, and therefore, are an improper basis for excluding evidence. For this reason, we dismiss Petitioner’s Motion to Exclude.” slip op. at 25
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Dr. Marvin J. Rudolph, Patent Owner’s declarant, disagrees with Ms. Ferruzzi’s assessment of the level of skill. Ex. 2012 ¶¶ 20–22. Dr. Rudolph asserts that one of skill in the art at the time of the invention would have “at least a Bachelor of Science in Food Science, Chemistry, or Chemical Engineering and at least five years of experience in the design and formulation of consumer beverage products.” Ex. 2012 ¶ 21. It is not apparent that Ms. Ferruzzi’s and Dr. Rudolph’s definitions are necessarily disparate. In reviewing the ’299 patent and Ackilli and applying the factors set forth above from Custom Accessories, we find that one of skill in the art who has the education and experience in food chemistry to understand Ackilli and the ’299 patent and can make predictable use of such information, would have at least a Bachelor of Science in Food Science, Chemistry, or Chemical Engineering and at least five years of experience in the design and formulation of consumer beverage products.” slip op. at 10
Patent outcomesUS 8,293,299 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,293,299 - American Megatrends, Inc. / Micro-Star International Co., Ltd et al. v. Kinglite Holdings Inc.All claims unpatentablePTAB · Oct 27, 2016 · IPR2015-01079 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–45 are unpatentable: claims 1–40 and 44 as obvious over either PC Tools and Gerace or LogoMania, and claims 41–43 and 45 as obvious over either specified combination.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- ScopeMotion to amend, deniedDenied
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteDecided for petitioner
“We first note that proposed claim 46 recites a “profile,” a term that is broader than a “user profile” and is not specifically defined. In addition, the meaning of the language in proposed claim 46 “wherein the computer system [that displays the image] characterizes the profile under the operating system environment” is unclear. Although the operating system may be a Windows OS, as Patent Owner argues, Patent Owner does not cite to a description concerning what it means for the computer system, i.e., the system that displays the image, to “characterize[s] the profile” or what steps the computer takes to characterize the profile. Id. at 8–9. Instead, Patent Owner argues that a service center provides additional content based on the user system and profile. Id. at 9. That language, however, is not recited in proposed claim 46. We deny the Motion to Amend on this basis as well.” slip op. at 24
- ExcludeMotion to exclude, deniedDenied
“It was not Petitioner’s responsibility to monitor whether Patent Owner moved for Mr. Summerfield’s pro hac vice admission. However, we also are troubled by Petitioner’s failure to seek a conference with the Board at the time of the deposition. Although Petitioner argues it could not have moved to quash the deposition because the notice was signed by lead counsel, Christopher Frerking (Reply to Opp. To Mot to Exclude 4), it appears that Petitioner’s counsel was aware that Mr. Summerfield would conduct the cross examination at least several days, and possibly several weeks, before the deposition took place. Hr’g Tr. 47, 49. Petitioner does not allege any prejudice as a result of Mr. Summerfield conducting the cross examination or argue that Mr. Summerfield behaved improperly during the deposition. Mot. To Exclude 4. Instead, Petitioner contends we should exclude the evidence as a matter of policy to demonstrate that our rules concerning pro hac vice admission must be taken seriously and to discourage others from acting in a similar manner, particularly in the case of deposition testimony and arguments that become part of the trial record. Id. at 4–6.8 Petitioner contends that allowing the deposition to take place did not cure its objection to the deposition. Reply to Opp. To Mot. To Exclude. 1–2. Dr. Kaliski’s deposition took place on January 8, 2016. Petitioner could have opposed Mr. Summerfield’s pro hac vice admission until January 16, 2016. However, notwithstanding Mr. Summerfield’s conduct, to which Petitioner objected, Petitioner did not oppose Mr. Summerfield’s pro hac vice admission. Had Petitioner opposed Mr. Summerfield’s admission on the basis that he conducted the deposition without proper authorization, the issue could have been addressed earlier in the proceeding and another deposition scheduled, if it was determined that Mr. Summerfield would not be admitted and the deposition transcript would not be entered. Instead, Petitioner elected to delay the matter until the last possible date for filing a Motion to Exclude. Thus, even if Petitioner’s objection was not cured when Petitioner permitted the deposition to proceed without contacting the Board, Petitioner’s subsequent failure to oppose Patent Owner’s Motion for Admission pro hac vice implies at least some degree of consent. The parties conduct in this case does not warrant excluding Dr. Kaliski’s deposition transcript from evidence. We do not condone Patent Owner’s unreasonable delay in seeking pro hac vice admission of Mr. Summerfield, and under other circumstances our ruling might be different. However, in this case, the absence of prejudice and Petitioner’s failure to” slip op. at 27
Patent outcomesUS 6,373,498 unpatentable§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 6,373,498 - Flotek Industries, Inc. / Turbeco, Inc. et al. v. National Oilwell DHT, L.P.All claims unpatentablePTAB · Oct 26, 2016 · IPR2015-01239 · APJ James J Mayberry · IPR · Final written decision
Claims 1, 4, and 8 are unpatentable as obvious over Bielstein and Nelson; claim 7 is unpatentable as anticipated by Sims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a. Level of Ordinary Skill in the Art Flotek contends that the level of ordinary skill associated with the ’317 patent “is a person who has, through formal education or extensive practical experience, a Bachelor’s Degree in Mechanical Engineering or a similar degree, or 2–3 years of experience in designing, using or making downhole tools having various applications.” Pet. 3 (referencing the Declaration of Dr. Smith, Ex. 1002 ¶¶ 9–11). NOV does not dispute this definition of the level of ordinary skill associated with the ’317 patent. See PO Resp. (failing to discuss the level of ordinary skill in the art); Ex. 2004 (providing the Declaration of Dr. Akin, which fails to define the level of ordinary skill for the ’317 patent).4” slip op. at 19
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“requirements of 35 U.S.C. § 112, paragraph 6,3 and provides a construction consistent with our rules. See Pet. 4; 37 C.F.R. § 42.104(b)(3). We construe means-plus-function limitations by determining what the claimed function is and identifying the structure disclosed in the specification that corresponds to the means for performing that function. See Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1360 (Fed. Cir. 2000); see also In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (“[P]aragraph six applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.”). Flotek identifies the function for this claim element as “rotating the first [valve] member.” See Pet. 4. Flotek contends that the structures disclosed in the ’317 patent corresponding to this function are “turbines, rotary drill motors, positive displacement motors, or Moineau motors.” Id. NOV did not dispute Flotek’s construction of this term, including the identified structures, in its Preliminary Response and, as we determined that Flotek’s construction is reasonable, we adopted it in our Decision to Institute. See Dec. on Inst. 11. Neither party offers, expressly or implicitly, an alternative construction for this term and, based on the record developed during trial, we discern no reason to alter the meaning we previously determined, including identified structures. See PO Resp. 8 (“This response” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We construe means-plus-function limitations by determining what the claimed function is and identifying the structure disclosed in the specification that corresponds to the means for performing that function. See Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1360 (Fed. Cir. 2000); see also In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (“[P]aragraph six applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.”). Flotek identifies the function for this claim element as “rotating the first [valve] member.” See Pet. 4. Flotek contends that the structures disclosed in the ’317 patent corresponding to this function are “turbines, rotary drill motors, positive displacement motors, or Moineau motors.” Id. NOV did not dispute Flotek’s construction of this term, including the identified structures, in its Preliminary Response and, as we determined that Flotek’s construction is reasonable, we adopted it in our Decision to Institute. See Dec. on Inst. 11. Neither party offers, expressly or implicitly, an alternative construction for this term and, based on the record developed during trial, we discern no reason to alter the meaning we previously determined, including identified structures. See PO Resp. 8 (“This response” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In our Decision instituting trial, we determined that the ordinary and customary meaning of the term “axial flow opening” under a broadest reasonable interpretation is “an aperture or open width that permits flow in the axial direction.” Dec. on Inst. 13–14 (referencing Ex. 3001). Neither party offers, expressly or implicitly, an alternative construction for this term and, based on the record developed during trial, we discern no reason to alter the above construction.” slip op. at 11
Patent outcomesUS 6,508,317 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,508,317 - Duodecad It Services Luxembourg S.à.R.L. / Friendfinder Networks Inc. et al. v. Wag Acquisition, LLCSome claims unpatentablePTAB · Oct 20, 2016 · IPR2015-01036 · APJ Glenn J Perry · IPR · Final written decision
Claims 1, 3, 4, 6, 8, 10, 11, 13, 15, 17, 18, and 20 are unpatentable as obvious; claims 7, 14, and 21 were not shown unpatentable because the references lack per-user server tracking.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“A given reference is publicly accessible upon a satisfactory showing that such document has been [1] disseminated, or [2] otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194–95 (Fed. Cir. 2008. Even though Chen issued prior to the USPTO PAIR system, Chen FH was and remains easily requisitioned by any interested person from the USPTO by making the appropriate request and paying the appropriate fee.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundMixed
“We are not persuaded by Patent Owner’s argument that initially operating Chen in rush mode would cause unstable operation. The only evidence Patent Owner has presented is the declaration testimony of Dr. Mayer-Patel, which was weakened as a result of cross-examination. For example, Dr. Mayer-Patel admitted that simply setting the water marks to different values would avoid the potential hysteresis instability. See Ex. 1016, pp. 64−66. Further, both Chen and Chen FH disclose that transmission starts in rush mode. Chen states: “transmission occurs in rush mode when the amount of data falls below the lower water mark, i.e., there is not enough data in the client agent packet buffer (33).” Ex. 1004, 6:43–45. Chen FH states at page 86 in the “open file” line: “read data from disk and rush them to CA” (emphasis added). We credit Dr. Polish’s testimony that “Chen and the Chen File History teach that the mode that is used at the start of transmission is the rush mode.” Ex. 1003 ¶ 58. Dr. Mayer-Patel was cross-examined regarding “thrashing.” When asked about setting gamma levels to achieve a stable system, Dr. Mayer- Patel answered that he would set the gammas to different levels for transitioning from rush to normal modes than for transitioning from normal to rush modes. Ex. 1016, 66:9–18; see Ex. 1005, 86–87 (discussing gamma values); Reply 14 n.2 (discussing hysteresis). Based on the testimony of Dr. Mayer-Patel and the evidence cited by Petitioner (Reply 14–15), we conclude that one of ordinary skill would have known how to set gamma levels defining mode transitions to provide the appropriate amount of hysteresis to prevent thrashing, e.g., in the manner that a thermostat hysteresis is set to avoid too rapid a cycling of a furnace. We find that if Chen were operated initially in “rush” mode, it would” slip op. at 29
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“We are not persuaded by Patent Owner’s argument that initially operating Chen in rush mode would cause unstable operation. The only evidence Patent Owner has presented is the declaration testimony of Dr. Mayer-Patel, which was weakened as a result of cross-examination. For example, Dr. Mayer-Patel admitted that simply setting the water marks to different values would avoid the potential hysteresis instability. See Ex. 1016, pp. 64−66. Further, both Chen and Chen FH disclose that transmission starts in rush mode. Chen states: “transmission occurs in rush mode when the amount of data falls below the lower water mark, i.e., there is not enough data in the client agent packet buffer (33).” Ex. 1004, 6:43–45. Chen FH states at page 86 in the “open file” line: “read data from disk and rush them to CA” (emphasis added). We credit Dr. Polish’s testimony that “Chen and the Chen File History teach that the mode that is used at the start of transmission is the rush mode.” Ex. 1003 ¶ 58. Dr. Mayer-Patel was cross-examined regarding “thrashing.” When asked about setting gamma levels to achieve a stable system, Dr. Mayer- Patel answered that he would set the gammas to different levels for transitioning from rush to normal modes than for transitioning from normal to rush modes. Ex. 1016, 66:9–18; see Ex. 1005, 86–87 (discussing gamma values); Reply 14 n.2 (discussing hysteresis). Based on the testimony of Dr. Mayer-Patel and the evidence cited by Petitioner (Reply 14–15), we conclude that one of ordinary skill would have known how to set gamma levels defining mode transitions to provide the appropriate amount of hysteresis to prevent thrashing, e.g., in the manner that a thermostat hysteresis is set to avoid too rapid a cycling of a furnace.” slip op. at 29
- Obviousness (§103) › KSR rationalesUnpatentableUnpatentable
“We find that ISO-11172 would have been well known to those of ordinary skill. It was at the time of the ’839 patent already published and utilized. ISO-11172 demonstrates that it was known to encode frames at constant and variable bit rates. We are not persuaded that Chen’s focus on variable bit rates teaches away from the use of either constant or variable bit rates. The fact that a standard, published before Chen, describes the use of both in detail suggests that it was well known to those of ordinary skill in the art. We therefore conclude that Petitioner has established by a preponderance of evidence of record that Chen describes the constant bit rate feature of claims 3, 10 and 17. We find that Petitioner has produced sufficient evidence to establish that claims 3, 10, and 17 are unpatentable over Chen, Chen FH, and ISO-11172. See Pet. 38–39 (citing Ex. 1003 ¶¶ 68–70).” slip op. at 35
Patent outcomesUS 8,364,839 mixed§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,364,839 - Unified Patents Inc. v. William GreciaRehearing deniedPTAB · Oct 13, 2016 · IPR2016-00600 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving institution denied on the DeMello-based anticipation and obviousness grounds because the petition did not sufficiently show the claimed verification token or reason to modify DeMello.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision, the Board 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 3 Wiser, U.S. Patent No. 6,385,596 B1, issued May 7, 2002 (Ex. 1008). 4 Cooper, U.S. Publ’n No. US 2009/0037388 A1, published Feb. 5, 2009 (Ex. 1009). Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the asserted grounds based on DeMello, Petitioner relied on either DeMello or the admitted prior art as teaching the recited “verification token . . . corresponding to the digital content.” Pet. 17–21, 52. We denied institution of these asserted grounds because we were not persuaded by Petitioner’s arguments regarding the teachings of DeMello, either alone or in combination with the admitted prior art.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“noted in our Institution Decision, an obviousness analysis requires “‘some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Inst. Dec. 12. With respect to claim elements [C], [D], and [G], Petitioner did not explain sufficiently why one of ordinary skill in the art would have considered modifying DeMello to arrive at the claimed invention. See id. at 13; see also Req. Reh’g 8 (“A claim can be rejected as obvious over a single reference by identifying a teaching, suggestion, or motivation (TSM) to modify the single reference to fall within the scope of the claim.”). For example, with respect to claim element [D], Petitioner merely asserts that “DeMello describes a browser, which clearly implies or suggests a GUI.” Req. Reh’g 8; see also id. at 12 (“one of skill in the art, analyzing the ‘browser’ in DeMello, would understand that these browsers obviously have a GUI”); Pet. 23 (“it is obvious that the browser of the reader mentioned in DeMello includes a GUI, since browsers provide a GUI”). We are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness over DeMello alone as to claim element [D]. Similarly, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness over DeMello alone as to claim elements [C] and [G]. See Req. Reh’g 10–11; Pet. 20–21, 26–28.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“DeMello, Petitioner contends that we “overlooked the Petition’s argument that the claims are obvious in view of DeMello alone, without any of the additional, admitted prior art.” Req. Reh’g 7 (emphasis omitted). According to Petitioner, “the admitted prior art was added, as background information,” and the Petition showed that claim elements [C], [D], and [G] are obvious over DeMello alone. Id. at 8, 10, 12. This is a new argument, which does not address what was overlooked or misapprehended in our Decision, and is not appropriate in a request for rehearing. See 37 C.F.R. § 42.71(d). For instance, the heading at page 15 of the Petition reads “Ground 1: Claims 1–20 are unpatentable as obvious over DeMello (EX1006) in view of the admitted prior art” (emphasis omitted). None of the other headings in the Petition alleges that any of the claims are unpatentable as obvious over DeMello alone. Nor has Petitioner directed us to any portion of the Petition presenting such argument.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,533,860
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.