- PTAB · Dec 26, 2017 · IPR2017-02201 · APJ Daniel J Galligan · IPR · Order
The Board dismissed the petition and terminated the proceeding as to all parties because the parties had settled their dispute.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“and 37 C.F.R. § 42.72, these sections relate, respectively, to termination of “[a]n inter partes review instituted under this chapter” and to termination of “trial,” which “means a contested case instituted by the Board based upon a petition.” 35 U.S.C. § 317; 37 C.F.R. §§ 42.2, 42.72. This proceeding is in the preliminary stage, and no decision whether to institute a trial has been made. As such, we treat the parties’ request as seeking dismissal of the Petition to thereby terminate the proceeding.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“U.S. Patent No. 6,684,060 B1. Mot. 3–4. The parties represent that “there are no other agreements or understandings, oral or written, between DTS and Avago, including any collateral agreements, made in connection with, or in contemplation of, the termination of the present proceeding.” Mot. 3. Under these circumstances, we determine that it is appropriate to dismiss the Petition (Paper 1) and terminate this proceeding. See 37 C.F.R. §§ 42.71(a), 42.74(a). We also determine that it is appropriate to treat the Agreements as business confidential information to be kept separate from the patent file. See 37 C.F.R. § 42.74(c).” slip op. at 2
NonePatents in suitUS 6,684,060 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.Rehearing deniedPTAB · Dec 4, 2017 · IPR2017-00649 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution on claims 1–30 because Petitioner did not show that the Board overlooked or misapprehended its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The Decision Denying Institution considered Petitioner’s argument regarding combining Bonella’s power reduction technique and Bonella’s power loss algorithm as it was presented in the Petition. Thus, Petitioner has not established the proposition that the Board overlooked or misapprehended some evidence in the record. A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. Thus, we are not persuaded by this argument.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“disclosed the specific feature alleged to be obvious. Req. Reh’g 12. We disagree. The Decision Denying Institution found that Long and Ashmore did not provide motivation for the specific combination advanced by Petitioner, stating “Petitioner does not point to a motivation to adjust the frequency of the memory banks specifically, simply a general motivation to reduce battery power during power loss.” Inst. Dec. 13. Thus, the Decision Denying Institution stated “we are not persuaded Ashmore [or Long] supports that contention that running at the frequency associated with Power Level 4 during a power loss would have been obvious.” Id. 13–14. “[T]o establish obviousness based on a combination of the elements disclosed in the prior art, there must be some motivation, suggestion or teaching of the desirability of making the specific combination that was made by the applicant.” In re Kotzab, 217 F.3d 1365, 1370 (Fed.Cir.2000) (citation omitted)(emphasis added)). “A determination of obviousness cannot be reached where the record lacks ‘explanation as to how or why the references would be combined to produce the claimed invention.’” Hyundai Motor Co. v. Blitzsafe Texas, LLC, Case IPR2016-01476, slip op. at 32 (PTAB Jan. 24, 2017) (Paper 12) (quoting Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016)). The Decision Denying Institution properly followed this precedent in requiring a specific motivation to make the combination alleged by Petitioner to meet the claimed combination.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“CONCLUSION The Request for Rehearing does not demonstrate that we misapprehended or overlooked any matters raised in the Petition declining to institute review of claims 1–30.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,301,833 - Composite Materials Technology, Inc. v. Greatbatch, Ltd.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01441 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Contrary to Petitioner’s arguments, the fact that two references relate to the same general subject matter is not, by itself, sufficient to explain why one of ordinary skill in the art would have sought to modify one reference in view of the other; it demonstrates at most that the two references are in the same field of endeavor. See In re GPAC Inc., 57 F.3d 1573, 1577–78 (Fed. Cir. 1995). Nor is an alleged admission that Fife and Stephenson are prior art to the ’075 patent sufficient to explain why these two references would be combined in a manner necessary to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 389, 418–19 (2007) (“[I]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”). In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”). As Petitioner provides insufficient rationale to explain why one of ordinary skill in the art would have combined the disclosures of Fife and Stephenson in a manner necessary to achieve the claimed invention, it has not demonstrated a reasonable likelihood that the subject matter of claim 1 would have been obvious over those references. And, because challenged claims 2–11 and 13–18 each depend from claim 1, and because the deficiencies in Petitioner’s arguments and evidence regarding claim 1 are not remedied by Petitioner’s arguments and evidence regarding claims 2–11 and 13–18, Petitioner has likewise not demonstrated a reasonable likelihood that the subject matter of those claims would have been obvious over Fife and Stephenson.6” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”).” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,312,075 - Facebook, Inc. v. Sound View Innovations, LLCRehearing deniedPTAB · Oct 19, 2017 · IPR2017-00985 · APJ James B Arpin · IPR · Rehearing
The Board denied rehearing and left institution denied for claims 1–3 because the petition lacked required means-plus-function constructions under the adopted claim-construction standard.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“Under our Rules setting forth the requirements for the content of the petition, “[w]here the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. [§ 112, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis added); see Inst. Dec. 13. Thus, where the challenged claim contains a means-plus-function limitation, the petition must provide a means-plus-function construction for that limitation. Consequently, it was not our task to determine first whether the word “controller” is a nonce word potentially subjecting the claim terms to treatment under 35 U.S.C. § 112, ¶ 6, and only then to receive arguments from Petitioner on their construction. See Reh’g Req. 4 (“Without a predicate finding that § 112, ¶ 6 applies, the Petition’s silence on the identity of a ‘corresponding structure’ had no relevance to the issue of claim construction.” (emphasis added)). Our Rules do not require such a “predicate finding,” and we made no such finding regarding the construction of the “controller” terms. See Inst. Dec. 11 (“For the reasons set forth below, we do not need to construe this claim term or determine its definiteness.”). In the absence of arguments under the appropriate standard from at least Petitioner during the Preliminary Proceeding, we have no basis for construing the “controller” terms. See id. at 13–14 (“The analysis of Petitioner’s arguments regarding claims 1–3 begins and ends with Petitioner’s failure to provide constructions of the claim terms including “controller” under 35 U.S.C. § 112, ¶ 6, and we cannot evaluate Petitioner’s asserted ground with respect to claims 1–3 in the absence of such constructions.”).” slip op. at 6
- BurdenDecided for patent owner
“Under our Rules setting forth the requirements for the content of the petition, “[w]here the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. [§ 112, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis added); see Inst. Dec. 13. Thus, where the challenged claim contains a means-plus-function limitation, the petition must provide a means-plus-function construction for that limitation. Consequently, it was not our task to determine first whether the word “controller” is a nonce word potentially subjecting the claim terms to treatment under 35 U.S.C. § 112, ¶ 6, and only then to receive arguments from Petitioner on their construction. See Reh’g Req. 4 (“Without a predicate finding that § 112, ¶ 6 applies, the Petition’s silence on the identity of a ‘corresponding structure’ had no relevance to the issue of claim construction.” (emphasis added)). Our Rules do not require such a “predicate finding,” and we made no such finding regarding the construction of the “controller” terms. See Inst. Dec. 11 (“For the reasons set forth below, we do not need to construe this claim term or determine its definiteness.”). In the absence of arguments under the appropriate standard from at least Petitioner during the Preliminary Proceeding, we have no basis for construing the “controller” terms. See id. at 13–14 (“The analysis of Petitioner’s arguments regarding claims 1–3 begins and ends with Petitioner’s failure to provide constructions of the claim terms including “controller” under 35 U.S.C. § 112, ¶ 6, and we cannot evaluate Petitioner’s asserted ground with respect to claims 1–3 in the absence of such constructions.”). It was Petitioner’s task to determine the necessary claim term constructions to support its request for inter partes review and to present those constructions as part of its Petition. Petitioner failed to do that here with respect to the “controller” terms. Thus, contrary to Petitioner’s assertion, we did not misapply the law governing interpretation of means- plus-function claim limitations; rather, due to the lack of any arguments or evidence from Petitioner, we did not and could not apply it at all. Consequently, we deny Petitioner’s request that we reconsider our Institution Decision and institute inter partes review of claims 1–3 of the ’371 patent.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“It is hard to see where efficiency is achieved by having two tribunals simultaneously consider different claim constructions under the same standard.4 Nevertheless, we cannot find where Petitioner made this argument in its Petition or its Reply, nor does Petitioner identify where it previously raised this argument. See id. at 7–8; see also 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 a reply.”). It goes without saying that we could not have overlooked or misunderstood an argument not made, and it is not an abuse of discretion not to consider such an argument.” slip op. at 11
Claim constructionPatents in suitUS 6,125,371 - PTAB · Oct 6, 2017 · IPR2017-00814 · APJ Daniel J Galligan · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution for claims 4, 9, and 13 because the Petition did not adequately explain how Shigeeda discloses maintaining cache coherency.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); and In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner provides no further explanation of this citation [(Shigeeda, 42:38–47)]—specifically why a cache flush that occurs only upon the write-back cache’s becoming full of dirty data to “reestablish coherency” discloses “maintain[ing] cache coherency.” Petitioner also cites Shigeeda’s Abstract (Pet. 48 n.105) but provides no further explanation of its relevance. Although Shigeeda’s Abstract mentions a cache flush operation, it does not explain how a cache flush discloses an operation “to maintain cache coherency,” as recited in claim 4. Dec. on Inst. 20–21 (first alteration added). This explanation was directed to the requirement of claim 4 to “maintain cache coherency.” Id. at 20. Following this explanation, we stated: “Second, Petitioner does not explain sufficiently how bus bridge 716 ‘operate[s] to maintain cache coherency for the integrated circuit,’ as recited in claim 4.” Id. at 21. This second reason for denying institution as to claim 4 was specific to claim 4’s requirement of a “bridge circuit to operate to maintain cache coherency for the integrated circuit.” See id. at 21–22.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner also cites a ten-page passage from the testimony of its declarant, Dr. Weissman. See Ex. 1003 ¶¶ 112–129 (cited at Pet. 48 n.104). The cited testimony provides a lengthy explanation as to how Shigeeda allegedly discloses cache coherency in two ways. See id.; see also id. ¶ 116 (“Shigeeda solves the problem of cache incoherency, and maintains the coherence of its caches, in two ways.”). This explanation as to Shigeeda, however, is absent from the Petition. A declaration in support of a petition may be proffered as evidence in support of an argument made in the petition. Such a declaration, however, is not a vehicle through which a petitioner may make an argument that should have been made in the petition. To permit otherwise would allow petitioners to exceed the word limits of our Rules (see 37 C.F.R. § 42.24) and force the patent owner to respond to arguments not made in the petition. Dec. on Inst. 22; see also id. at 23–24 (“Because Petitioner’s contentions as to claims 9 and 13 rely on its inadequate explanations as to claim 4 and do not provide further explanation regarding how Shigeeda allegedly discloses maintaining cache coherency, we determine the information presented in the Petition does not show a reasonable likelihood Petitioner would prevail in challenging claims 9 and 13 as anticipated by Shigeeda.”).” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We disagree. Petitioner’s citation to such a lengthy passage in its declarant’s testimony (greater than 10 pages) is not an adequate identification of a “specific portion[] of the evidence,” as required by our Rules. See 37 C.F.R. § 42.104(b)(5) (“The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.”). Indeed, some of the cited testimony appears to be directed to a theory of how Shigeeda allegedly discloses cache coherency that is not argued in the Petition. See Ex. 1003 ¶¶ 116–118. In particular, Dr. Weissman testifies that “Shigeeda solves the problem of cache incoherency, and maintains the coherence of its caches, in two ways.” Ex. 1003 ¶ 116. The first way identified by Dr. Weissman is “by implementing cache 704 as a write-through cache,” and the “second way involves implementing data circuit 720—which, like cache 704, is also a cache memory—as a write-back cache with a specific cache coherence protocol.” Ex. 1003 ¶¶ 116, 119. By contrast, Petitioner identifies only one way in which Shigeeda allegedly discloses cache coherency: “Shigeeda uses an ‘automatic write,’ or a ‘cache flush,’ of the write-back cache block to ‘reestablish coherency’ in its system.” Pet. 48 (citing Ex. 1005, Abstract, 42:38–47). This appears to correspond to the second way identified by Dr. Weissman, who testifies that, “[u]pon the write-back cache being full of modified data, an ‘automatic write’ to main memory—also called a ‘cache flush’—is performed to ‘reestablish coherency.’” Ex. 1003 ¶ 121 (citing Ex. 1005, Abstract, 31:65– 32:20, 42:38–59). Thus, it is unclear what relevance, if any, Dr. Weissman’s testimony regarding the first cache coherency theory has to the arguments in the Petition. Additionally, with respect to Petitioner’s contentions as to how the bus bridge allegedly operates to maintain cache coherency, as explained in the Decision on Institution, “Petitioner cites five columns and two figures from Shigeeda without any further explanation in the Petition specifying the relevance or significance of this cited evidence.” Dec. on Inst. 21. This lack of clarity as to Petitioner’s contentions highlights the problem with naked citations to lengthy portions of the evidence without accompanying explanations.” slip op. at 6
NonePatents in suitUS 6,766,389 - Unified Patents Inc. v. Intellectual Ventures I LLCRehearing deniedPTAB · Oct 4, 2017 · IPR2016-01643 · APJ Kristi L R Sawert · IPR · Rehearing
The Board denied Patent Owner’s rehearing request because Exhibit 1015 was not part of the record and a motion to exclude could address any later filing or reliance.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Patent Owner now presents even more substantive arguments in its Motion for Rehearing, despite Board instructions that the Patent Owner file a motion to exclude the disputed exhibit in its June 30, 2017, email. See Motion 9–15. But the Board discerns no need for a conference call as the issue is moot, because at this point in the proceeding, Exhibit 1015 is simply not part of the record. If and when Petitioner files the disputed exhibit in this proceeding or attempts to rely on any argument or testimony referring to that exhibit, Patent Owner may file a motion to exclude by Due Date 4, as set forth in the Scheduling Order. See Paper 10, 7. As to Patent Owner’s argument that a motion to exclude will not address Petitioner’s alleged procedural violations, Motion at 3–4, we disagree because a motion to exclude is a mechanism in our rules by which such challenges can be made. Thus, Patent Owner’s request for rehearing is denied.” slip op. at 4
- ExcludeOther
“Motion for Rehearing, despite Board instructions that the Patent Owner file a motion to exclude the disputed exhibit in its June 30, 2017, email. See Motion 9–15. But the Board discerns no need for a conference call as the issue is moot, because at this point in the proceeding, Exhibit 1015 is simply not part of the record. If and when Petitioner files the disputed exhibit in this proceeding or attempts to rely on any argument or testimony referring to that exhibit, Patent Owner may file a motion to exclude by Due Date 4, as set forth in the Scheduling Order. See Paper 10, 7. As to Patent Owner’s argument that a motion to exclude will not address Petitioner’s alleged procedural violations, Motion at 3–4, we disagree because a motion to exclude is a mechanism in our rules by which such challenges can be made. Thus, Patent Owner’s request for rehearing is denied.” slip op. at 4
NonePatents in suitUS 6,775,745 - Mobile Tech, Inc. v. Invue Security Products Inc.All claims unpatentablePTAB · Sep 28, 2017 · IPR2016-00892 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–27 are unpatentable: claims 1, 5–20, 22–25, and 27 as obvious over Rothbaum and Denison; claims 2–4, 21, and 26 as obvious over Rothbaum, Denison, and Ott.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We begin with the plain language of the claims. The term “matching” is used as a gerund (i.e., a verb acting as a noun) in claims 1 and 25 and ordinarily means “[t]he action of match.” Ex. 1020, 4, 6. Thus, the use of “upon a matching” suggests some action of a match, as opposed to, for example, “upon a match,” which might be read to require simply the existence of a match. This supports Petitioner’s view that the arming or disarming must be as a result of a “determination of a match” (a particular type of action).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We do not agree that the recital of various “forms of data communication” (Ex. 1001, 3:4–19) in the ’762 patent broadened the meanings of the term “communicate” and the phrase “configured to communicate” themselves. Rather, the “forms” of communication in the cited portion of the ’762 patent merely represent examples of the media or means by which the communication occurs in various preferred embodiments. Ex. 1001, 3:4–19 (listing at least seven examples). Thus, Petitioner does not persuade us that we need to construe the terms “communicate” and “configured to communicate” expressly to encompass both wireless and wired communications.” slip op. at 15
- Skill levelSkill level board ownOther
“Neither party explains in detail why its proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. Although there are slight differences between the proposed levels of ordinary skill in the art, the parties’ declarants agree that an ordinarily skilled artisan would have had a four-year technical degree or the equivalent and some amount of professional experience. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we determine that the skill level of a person of ordinary skill in the art would have been that of a person having a four year technical degree or equivalent experience with a minimum of two years of professional technical experience in the field of theft prevention devices or related security devices. We apply this level of ordinary skill in the art in our obviousness analysis.” slip op. at 17
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“i. Analogousness of Rothbaum and Denison As an initial matter, to be considered for obviousness, a reference must be analogous art. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.”). A prior art reference qualifies as analogous art (1) if it is from the same field of endeavor as the claimed invention, regardless of the problem addressed, or (2) if the reference is not within the field of the inventor’s endeavor, it is nonetheless reasonably pertinent to the particular problem with which the inventor is involved. Id.” slip op. at 27
Patent outcomesUS 8,884,762 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,884,762 - PTAB · Sep 8, 2017 · IPR2015-01869 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–8, 10–12, 14–18, 20–23, 25, and 27–29 unpatentable over Shuen and RFC1234, and claim 19 unpatentable over Bellovin.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successDecided for petitioner
“mapping for the network address translation” under the Board’s construction of that phrase, i.e., “a property associated with the mapping in which the mapping expires after it has not been used in the translation of a packet for a period of time associated with the mapping,” the Petition cites the following language from Shuen:” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Disclaimer not foundDecided for petitioner
“from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000) (citations omitted). “To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.” Id. (citations omitted). Whether and to what extent material has been incorporated by reference into a host document is a question of law. Id.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for petitioner
“Id. at 3 (emphasis omitted). Notably, Patent Owner did not raise this argument (i.e., that Shuen’s “time to live” does not satisfy the recited “time out . . .” under the Board’s construction) in its Patent Owner Response. Patent Owner asserts, however, it “noted this deficiency of Petitioner’s proofs in the January 18, 2017 hearing” and “[t]his deficiency of Shuen was first raised in Patent Owner’s Preliminary Response.” Req. Reh’g. 4. However, our rules do not allow Patent Owner to incorporate arguments by reference from its Preliminary Response (see 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference form one document into another document”)), and our Scheduling Order provides that any arguments and evidence not contained in the Patent Owner Response will be “deemed waived” (Paper 9, 3). Petitioner asserted at the oral hearing that the argument was new and, as such, Petitioner did not have a reasonable ability to respond to the argument. Tr. 43:8–14. We determine Patent Owner has waived its argument that Shuen does not disclose the “has not been used” portion of our construction of the phrase “time out of the mapping for the network address translation.”” slip op. at 3
Claim construction§ 103 obviousnessPatents in suitUS 8,544,079 - Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Aug 28, 2017 · IPR2016-00593 · APJ Garth D Baer · IPR · Final written decision
The Board held that claims 12–15, 21–23, 25–27, 33–38, 44, and 45 were not shown unpatentable because Pictometry was not established as a publicly accessible printed publication.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Version 2.7 (“EFS 2.7 User Guide,” “Pictometry,” or “User Guide”) and, as the name suggests, is a user guide for the Pictometry software product. See Ex. 1004, xiii. Patent Owner argues that Petitioner does not demonstrate that Pictometry is prior art. PO Resp. 5–10. In our Final Written Decision in IPR2016-00594, we considered substantively the same arguments and evidence Patent Owner and Petitioner raise in this case. See IPR2016-00594 FWD 17–29; compare IPR2016-00594 Paper 31, 13–20 with PO Resp. 6– 13; and compare IPR2016-00594 Paper 33, 3–9 with Reply 4–11. In IPR2016-00594, we found Pictometry’s limited dissemination to some governmental entities subject to licensing restrictions was not sufficient to show public dissemination or public accessibility. IPR2016-00594 FWD 17–29. We adopt that same finding here. For the reasons explained in IPR2016-00594, we find that Petitioner has not established by a preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. §§ 102(b) and 311(b).” slip op. at 6
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“substantively the same as the arguments made in IPR2016-00594. In IPR2016-00594, we denied Patent Owner’s motion to exclude Exhibit 1004 (Pictometry), Exhibit 1011 (a Merriam-Webster Dictionary Definition “database” copied from a web page), Exhibit 2010 (Cohasset Town Report 2008), 2011 (LARIAC1 Pictometry Training), Exhibit 2012 (LAR-IAC2 Product Guide), Exhibit 2020 (“GIS: Pictometry: Oblique Imagery training), Exhibit 2021 (“Pictometry License Guidelines”), and Exhibit 2022 (“Pictometry – April 19, 2007”). IPR2016-00594 FWD 5–17. We granted Patent Owner’s motion to exclude Exhibit 2013 (article titled “Los Angeles County Extends its License Agreement with Pictometry for New Oblique Aerial Photos”), Exhibit 2014 (“Pictometry Administrative Training”), Exhibit 2015 (“Information about TXWILM Administrative Training”), Exhibit 2016 (“Pictometry Administrative Training”), Exhibit 2019 (“GIS Working Group Meeting Minutes”), Exhibit 2023 (“Welcome to Your End User Training”), Exhibit 2024 (“Electronic Field Study Getting Started Guide”), Exhibit 2025 (“Pictometry Announces Technical Advancements for GIS Professionals1”), and Exhibit 2026 (“Pictometry Announces Technical Advancements for GIS Professionals2”). Id. We adopt the same findings and conclusions here. For the reasons explained in IPR2016-00594, we deny the motion to exclude Exhibits 1004, 1011, 2010, 2011, 2020, 2021, and 2022, but grant the motion to exclude Exhibits 2013, 2014, 2015, 2016, 2019, 2023, 2024, 2025, and 2026. See id.” slip op. at 5
Patent outcomesUS 8,823,732 not shown unpatentable§ 102 anticipationPatents in suitUS 8,823,732 - Apple Inc. v. Immersion CorporationInstitution deniedPTAB · Aug 25, 2017 · IPR2017-00887 · APJ Bryan F Moore · IPR · Institution
The Board denied institution for claims 1–15 under § 314(a), finding the second petition an inadequately explained follow-on challenge filed after Petitioner saw the earlier response and decision.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“because (1) it would be inequitable to Patent Owner to allow Petitioner’s second challenge to the same claims when Petitioner had the opportunity to see Patent Owner’s preliminary response and the Board’s Decision Denying Institution in Case IPR2016-01371, and (2) Petitioner was aware or should have been aware of the primary prior art references asserted in the Second Petition before the filing of its First Petition in Case IPR2016-01371. Prelim. Resp. 4–5, 21–26 (citing Synaptics Inc. v. Amkor Tech., Inc., Case IPR2017-00085, slip op. at 10 (PTAB Apr. 18, 2017) (Paper 12). We are persuaded that the specific circumstances of this case invoke a concern, under 35 U.S.C. § 314(a), over the potential inequity of Petitioner filing multiple attacks, with the benefit of having seen Patent Owner’s contentions and the Board’s decision regarding a prior challenge by the same Petitioner to the same patent.” slip op. at 5
Discretionary denialPatents in suitUS 8,619,051
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.