- Respironics, Inc. v. Zoll Medical CorporationSome claims unpatentablePTAB · Sep 17, 2014 · IPR2013-00322 · APJ Scott E Kamholz · IPR · Final written decision
Claim 1 is unpatentable as anticipated by Owen; claims 2, 4, 5, 8, 9, 16, 19, and 20 were not shown unpatentable. The contingent motion to amend was denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“A limitation using the term “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.1 Personalized Media Commc’ns. LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, we first must identify the claimed function, and then we look to the specification to identify the corresponding structure that performs the claimed function. Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). With respect to the second step, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004) (citations and quotation marks omitted).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“cite numerous passages in the ’003 patent, none of these passages serves to define “patient compliance [and use] data” in a manner that justifies disregarding that term. Although the ’003 patent does describe patient compliance data as relating to whether the patient is using the device improperly, or at all (Ex. 1001, 5:49-52), it is used within the context of assessing whether the patient is following (i.e., complying with) instructions. To construe the terms as encompassing any data related to patient use is, therefore, unreasonably broad.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“A limitation using the term “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.1 Personalized Media Commc’ns. LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, we first must identify the claimed function, and then we look to the specification to identify the corresponding structure that performs the claimed function. Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). With respect to the second step, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004) (citations and quotation marks omitted).” slip op. at 6
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“We focus our analysis on the “means for monitoring and storing” limitation in claims 4 and 19. Claim 4 recites: “means for monitoring and storing operations information of the medical device and patient compliance and use data.” Claim 19 recites: “means for monitoring and storing patient medical parameters, device performance data and patient compliance data.” Respironics argues that the structures disclosed in the ’003 patent as performing the “monitoring” and “storing” functions are a medical device and a memory. Pet. 8. Zoll does not contest this structural correspondence. We maintain our determination that these limitations invoke 35 U.S.C. § 112 ¶ 6, and that the structures corresponding to each of these limitations are a medical device and a memory. We have considered the parties’ arguments and evidence concerning” slip op. at 8
Patent outcomesUS 6,681,003 mixedClaim construction§ 102 anticipationPatents in suitUS 6,681,003 - Google, Inc v. Inventor Holdings, LLCAdverse judgmentPTAB · Sep 12, 2014 · CBM2014-00003 · APJ Miriam L Quinn · CBM · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment of unpatentability against claims 1-4, 9-11, 19, 24, 27, 28, 31, 32, and 65 based on Patent Owner’s concession.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“in this proceeding under 37 C.F.R. § 42.73(b). Paper 33, “Req.”. Under section 42.73(b)(3), concession of unpatentability of the contested subject matter is construed as an adverse judgment. In its Request, Patent Owner concedes the unpatentability of and requests adverse judgment regarding claims 14, 911, 19, 24, 27, 28, 31, 32, and 65 of U.S. Patent No. 5,844,272. Req. 2. The conceded unpatentability addresses all the claims subject to this proceeding. Therefore, no other patent claims remain for trial in this covered business method review. Accordingly, it is hereby ORDERED that Patent Owner’s Request for Adverse Judgment under 37 C.F.R. § 42.73(b)(3) is hereby granted; and FURTHER ORDERED that a judgment of unpatentability is entered against claims 14, 911, 19, 24, 27, 28, 31, 32, and 65 of the U.S. Patent No. 5,884,272.” slip op. at 2
NonePatents in suitUS 5,884,272 - Google, Inc v. Inventor Holdings, LLCAdverse judgmentPTAB · Sep 12, 2014 · CBM2014-00002 · APJ Miriam L Quinn · CBM · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment of unpatentability against claims 1, 2, 5, 10, 11, 23, 24, 32, and 33.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“in this proceeding under 37 C.F.R. § 42.73(b). Paper 37, “Req.”. Under section 42.73(b)(3), concession of unpatentability of the contested subject matter is construed as an adverse judgment. In its Request, Patent Owner concedes the unpatentability of and requests adverse judgment regarding claims 1, 2, 5, 10, 11, 23, 24, 32, and 33 of U.S. Patent No. 5,844,270. Req. 2. The conceded unpatentability addresses all the claims subject to this proceeding. Therefore, no other patent claims remain for trial in this covered business method review. Accordingly, it is hereby ORDERED that Patent Owner’s Request for Adverse Judgment under 37 C.F.R. § 42.73(b)(3) is hereby granted; and FURTHER ORDERED that a judgment of unpatentability is entered against claims 1, 2, 5, 10, 11, 23, 24, 32, and 33 of the U.S. Patent No. 5,884,270.” slip op. at 2
NonePatents in suitUS 5,884,270 - PTAB · Jun 26, 2014 · IPR2014-00560 · APJ Hyun J Jung · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2014-00560 without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties stated in their joint motion that they have settled their dispute and have reached agreement to terminate this inter partes review. Paper 10, 2. Patent Owner has not yet filed a preliminary response or a waiver under 37 C.F.R. § 42.107. We are persuaded that, under these circumstances, it is appropriate to terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motion to terminate this proceeding is GRANTED and this proceeding is hereby terminated; and” slip op. at 2
NonePatents in suitUS 5,592,555 - PTAB · May 2, 2014 · IPR2014-00229 · APJ Stacey G White · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“The instant proceedings are in the preliminary stage. Patent Owner has filed preliminary responses in each of the instant proceedings.5 The Board, however, has not determined whether trial will be instituted for any of the requests for inter partes review. Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In the motions to terminate, the parties state that they have settled their dispute with respect to the patents involved in the proceedings, and have reached agreement to terminate these proceedings. Paper 9, 1. Furthermore, the joint motion indicates that the parties have agreed to dismiss Petitioner and other real parties-in-interest identified by 2 IPR2014-00229, Paper 9; IPR2014-00230, Paper 10, IPR2014-00231, Paper 9. 3 IPR2014-00229, Ex. 1047; IPR2014-00230, Ex. 1047, IPR2014-00231, Ex. 1047. 4 IPR2014-00229, Paper 10; IPR2014-00230, Paper 11, IPR2014-00231, Paper 10. 5 IPR2014-00229, Paper 7; IPR2014-00230, Paper 8; IPR2014-00231, Paper 7.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ arguments and the early stage of these proceedings, we agree with the parties that terminating the instant proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. The Board is persuaded that, under these circumstances, it is appropriate to enter judgment6 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate these proceedings are granted, and that these proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner;” slip op. at 3
NonePatents in suitUS 6,131,121 - PTAB · May 2, 2014 · IPR2014-00230 · APJ Stacey G White · IPR · Order
The Board granted the joint motions to terminate the proceedings as to all parties and granted the requests to keep the settlement agreement confidential.
RulingsOther- Adverse judgmentAdverse judgmentGranted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ arguments and the early stage of these proceedings, we agree with the parties that terminating the instant proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. The Board is persuaded that, under these circumstances, it is appropriate to enter judgment6 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate these proceedings are granted, and that these proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner;” slip op. at 3
NonePatents in suitUS 6,108,704 - PTAB · May 2, 2014 · IPR2014-00231 · APJ Stacey G White · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties before deciding whether to institute review.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“The instant proceedings are in the preliminary stage. Patent Owner has filed preliminary responses in each of the instant proceedings.5 The Board, however, has not determined whether trial will be instituted for any of the requests for inter partes review.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ arguments and the early stage of these proceedings, we agree with the parties that terminating the instant proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. The Board is persuaded that, under these circumstances, it is appropriate to enter judgment6 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate these proceedings are granted, and that these proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner; FURTHER ORDERED that the parties’ joint requests that the settlement agreement (Ex. 1047) be treated as business confidential information, kept separate from the file of the involved patents, and made available only to Federal 6 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. § 42.2. Government agencies on written request, or to any person on a showing of good cause under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted.” slip op. at 3
NonePatents in suitUS 6,009,469 - PTAB · Apr 16, 2014 · IPR2013-00435 · APJ Bryan F Moore · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2013-00435 without a final written decision after settlement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“proceeding, along with a true copy of their written settlement agreement, made in connection with the termination of the instant proceeding, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Paper 18; Ex. 1010. The parties also filed a joint request to have their settlement agreement treated as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 19. The joint motion to terminate indicates that the settlement agreement requires the parties to terminate this inter partes review and the related district court actions involving U.S. Patent No. 8,449,289. Paper 18 at 2.” slip op. at 2
NonePatents in suitUS 8,449,289 - Kyocera Corporation / Motorola Mobility LLC v. Softview LLCAll claims unpatentablePTAB · Mar 27, 2014 · IPR2013-00004 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 30, 31, 40, 41, 43, 52, 55, 59, 72, and 75 are unpatentable as obvious under § 103 over either of two combinations.
RulingsFinal written decision- Prior constructionPrior construction not adoptedOther
“We do not adopt either Petitioner’s or Patent Owner’s proposed constructions. Patent Owner’s construction introduces uncertainty because the claims do not refer to a conventional desktop browser, and the proposed construction does not define a conventional desktop browser. Patent Owner agrees that, using the same HTML code, different browsers produce different displays, see, IPR2013-00007, Ex. 1002, 229-31,8 but during the final hearing, argued that preserving the look and feel of the website as rendered on a desktop browser is sufficient. See, Tr. 51-61. At the oral hearing, Patent Owner argued that “you need to preserve the look and feel so that a person using a web page would understand that that was the same web page as the one that they were using in connection with a desktop computer.” Tr. 60-61. Due to uncertainty regarding the scope of differences that would be permissible on the target device browser, while maintaining the look and feel as rendered by a conventional desktop browser, we determine that Patent Owner’s proposed construction provides no more insight than the current “preserving” claim language. Petitioner’s construction requires that the zoomed version reproduce the layout of the page as initially displayed, but places no requirements on processing performed by the browser’s initial rendering of the web page, and does not recognize a relationship between the web page as displayed and the HTML defining its format.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Claim 30 recites preserving the original layout, function, and design of the at least a portion of the HTML-based content (which defines the original layout, function, and design). Claim 52 recites preserving the original function, layout, and design defined by the HTML-based content in the re-rendering as interpreted by the browser’s rendering engine. In both cases, the preservation of the original layout, function, and design turns on what elements of the HTML are translated to be interpreted by the browser, rather than the how that HTML is viewed on a desktop. Therefore, we construe the “preserving limitation” to mean maintains the features of the web page’s capabilities and appearances in a manner consistent with the translated portion of HTML code defining those capabilities and appearances. Our construction is consistent with the claims and the objectives of the invention, as described in the ’926 Patent specification. Both claims 30 and 52 recite that an original layout, function, and design of a web page is defined by HTML-based content. There is no dispute with the statement in the ’926 Patent that HTML is a standardized language that describes the layout of content on a web page and attributes of the content. Ex. 1001, col. 7, ll. 45-60. Our construction of preserving capabilities and appearances consistent with the translated portion of the HTML is consistent with the limitation in claim 30 that concerns “the at least a portion of the HTML-based content” and the limitation in claim 52 that recites, “as interpreted by the browser.” The Background of the Invention notes that fixed resolution Web pages used for displaying Internet content designed for desktop computers present a technical problem for displaying Internet content on small screens in hand held devices. Id. at col. 2, ll. 14-28. The Summary of the Invention states that the claimed mobile devices employ novel processing of original Web content, including HTML-based content, to generate scalable content, which is then employed to enable the Web content to be rapidly rendered, zoomed, and panned. Id. at col 2, ll. 32-41. The specification is silent on” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The underlying issue is not, as Patent Owner suggests, whether Zaurus and/or Bederson disclose implementing all the features of HTML with zooming on a device with a small screen. The issue is whether, in view of their disclosures, the claims of the ’926 Patent would have been obvious under 35 U.S.C. § 103. Bederson discloses that Pad++ is a primitive browser, but suggests that a zooming version of the Netscape and Mosaic browser could be implemented using the techniques in Pad++. Ex. 1006, 286. Bederson then provides a screen shot of Pad++ displaying Bederson’s home page (an HTML document), Ex. 1006, 287, and a zoomed view focusing on a portion of the document with “hotwords” that provide hyperlinks. Ex. 1006, 289. The hyperlinks change color when scrolled over (one of several possible ways a browser can display hyperlinks in an HTML document) and can be followed to display the target of the link. Id. at 291. This display shows the home page and the linked page side by side. The user can zoom in on the linked page by clicking on it. Id. at 293. Bederson’s implementation of web page zooming appears to be a proof of concept, rather than a mere suggestion. The fact that Bederson did not implement all, or even many, of the known capabilities of HTML does not alter the fact that Pad++ demonstrates the concept, suggests it could be applied to the Netscape and Mosaic browsers, and states that it was being designed for use on devices with small screens, such as PDAs. Thus, we are persuaded that one of ordinary skill would be motivated to combine the teachings of these references.” slip op. at 22
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Where the patent is said to cover a feature or component of a product, the patent owner has the burden of showing that the commercial success derives from the feature, in this case the Internet browser in a handheld device. Tokai Corp., v. Easton Enters., 632 F. 3d 1358, 1369 (Fed. Cir. 2011). Where that feature is found in the product of another, there must be proof that the feature falls within the claims. E.g., Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (infringer’s counsel stated at trial that the patent had been copied); Hughes Tool Co. v. Dresser Indus., Inc., 816 F.2d 1549, 1552 (Fed. Cir. 1987) (patented Oring seal copied by defendant). In order to establish a proper nexus, the patent owner must offer proof that the sales were a direct result of the unique characteristics of the claimed invention – as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter. Microsoft v. Proxyconn, Inc., IPR2012-00026, slip op. at 4 (PTAB Mar. 8, 2013) (Paper 32). We have considered Patent Owner’s Exhibit 2034, which purports to show that the iPhone and Android devices include the features of claim 30. However, Patent Owner has not shown that the sales of the iPhone and Android devices are a result of the claimed invention. Although Patent Owner cites comments lauding the Internet browsing capabilities of the iPhone and Android devices, including a statement made in the Wall Street Journal that the iPhone’s game changing feature is its Safari browser, Ex. 2022, the iPhone’s implementation of the Safari browser was just one of its many features. Patent Owner does not address the numerous other features cited as important to the iPhone device, including its use as a phone, Apple’s representation that the iPhone is “the best iPod [media player] we ever made,” and its e-mail capability. Ex. 2011. Patent Owner also has not established that the subject matter of the ’926 claims, rather than Apple’s extensive distribution network and marketing presence are the reason the iPhone and similar devices have been a success. The same is true of Android based devices. In contrast to the declaration of Dr. Reinman, a computer science expert with knowledge of computer technologies, Petitioner’s expert Dr. Lutz, an expert on marketing and consumer behavior, states that the success of such devices can be attributed to numerous factors, including product, promotion, price, and place, and that the web browser in the iPhone was just one of the several important features contributing to its success. Ex. 1049 ¶¶ 11-12, 41-55. Thus, the objective indicia cited by Patent Owner do not overcome the case of obviousness established by Petitioner by a preponderance of the evidence.” slip op. at 31
Patent outcomesUS 7,831,926 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,831,926 - Kyocera Corporation / Motorola Mobility, Inc v. Softview LLCAll claims unpatentablePTAB · Mar 27, 2014 · IPR2013-00256 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1, 33, 36, 43, 48, 51, 52, 58, 59, 66, 118, 138, 139, 149, 183, 252, 283, and 317 are unpatentable as obvious over the stated combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We do not adopt either Petitioner’s or Patent Owner’s proposed constructions. Patent Owner’s construction introduces uncertainty because the claims do not refer to a conventional desktop browser, and the proposed construction does not define a conventional desktop browser. Patent Owner agrees that, using the same HTML code, different browsers produce different displays, Ex. 1002, p. 229-316, but argues that preserving the look and feel of the web site, as rendered on a desktop browser, is sufficient. See, Tr. 51-61. At the oral hearing, Patent Owner argued that “you need to preserve the look and feel so that a person using the web page would understand that that was the same web page as the one that they were using in connection with a desktop computer.” Id. at 60-61. Due to uncertainty regarding the scope of differences that would be permissible on the target device browser, while maintaining the look and feel as rendered by a conventional desktop browser, we determine that Patent Owner’s proposed construction provides no more insight than the current “preserving” claim language. Petitioner’s construction requires that the zoomed version reproduce the layout of the page as initially displayed, but places no requirements on processing performed by the browser’s initial rendering of the web page, and does not recognize a relationship between the web page as displayed and the HTML defining its format.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“1004, 645. Bederson, however, discloses a browser, referred to as Pad++ that “allows [Web] pages to remain visible at varying scales while they are not specifically being visited, so the viewer may examine many pages at once. In addition, Pad++ allows users to zoom in and out of pages, enabling explicit control of how much context is viewed at any time.” Ex. 1006, 106. Bederson notes that Pad++ was being developed for use on platforms ranging from high-end graphics workstations to PDAs and interactive set-top boxes. Id. at 155. Bederson further discloses that using Pad++, one’s whole desktop could be zoomable and that this feature “seems especially attractive for systems which have small screens, such as handheld computers (i.e., PDAs).” Id. at 341. We are not persuaded by Patent Owner’s assertion that one would not be motivated to port Bederson’s Pad++ browser to Zaurus because of technical difficulties resulting from limited computing capacity and system incompatibilities. PO Resp. 29-34.” slip op. at 18
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Where the patent is said to cover a feature or component of a product, the patent owner has the burden of showing that the commercial success derives from the feature, in this case the Internet browser in a handheld device. Tokai Corp., v. Easton Enters. Inc, 632 F. 3d 1358, 1369 (Fed. Cir. 2011). Where that feature is found in the product of another there must be proof that the feature falls within the claims. E.g., Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988) (infringer’s counsel stated at trial that the patent had been copied); Hughes Tool Co. v. Dresser Indus., Inc., 816 F.2d 1549, 1552 (Fed. Cir. 1987) (patented O-ring seal copied by defendant). In order to establish a proper nexus, the patent owner must offer proof that the sales were a direct result of the unique characteristics of the claimed invention – as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter. Microsoft v. Proxyconn, Inc,. IPR2012-00026, slip op. at 4 (PTAB Mar. 8, 2013) (Paper32). We have considered Patent Owner’s Exhibits 2034 and Ex. 2035, which purport to show that the iPhone and Android devices include the features of claims 1 and 317. However, Patent Owner has not shown that the sales of the iPhone and Android devices are a result of the claimed invention. Although Patent Owner cites comments lauding the Internet browsing capabilities of the iPhone and Android devices, including a statement made in the Wall Street Journal that the iPhone’s game changing feature is its Safari browser, PO Resp. 54, Ex. 2022, the iPhone’s implementation of the Safari browser was just one of its many features. Patent Owner does not address the numerous other features cited as important to the iPhone device, including its use as a phone, Apple’s representation that the iPhone is “the best iPod [media player] we ever made,” and its e-mail capability. Ex. 2011, 4. Patent Owner also has not established that the subject matter of the ’353 claims, rather than Apple’s extensive distribution network and marketing presence are the reason the iPhone and similar devices have been a success. The same is true of Android based devices. In contrast to the Declaration of Dr. Reinman, a computer science expert with knowledge of computer technologies, Petitioner’s expert Dr. Lutz, an expert on marketing and consumer behavior, states that the success of such devices can be attributed to numerous factors, including product, promotion, price and place and that the web browser in the iPhone was just one of the several important features contributing to its success. Ex. 1049 ¶¶ 11-12, 41-55. Thus, the objective indicia cited by the Patent Owner do not overcome the case of obviousness established by Petitioner by a preponderance of the evidence.” slip op. at 32
- ExcludeMotion to exclude, deniedDenied
“A motion to exclude is neither a substantive sur-reply, nor a proper vehicle for arguing whether a reply or supporting evidence is of appropriate scope. Zynga Inc. v. Personalized Media Commc’ns, LLC, IPR2013-00162, slip op. at 3 (PTAB Aug. 28, 2013) (Paper 16), Berk-Tek LLC v. Belden Tech., Inc., IPR2013-00057, slip op. at 3 (PTAB Oct. 31, 2013) (Paper 39). In this case, the Patent Owner reply raised several substantive issues that were not raised in the Petition. These included the proper construction of the preserving limitation and non-obviousness based on objective criteria of commercial success, both of which we have discussed extensively. A petitioner reply to a patent owner response may address only issues raised in the corresponding opposition. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). Petitioner was entitled to rebut Patent Owner’s arguments concerning the construction of the preserving limitation and the objective criteria of non-obviousness. We agree with Petitioner that Dr. Grimes’ Declaration (Ex. 1030) was drawn to issues raised in Patent Owner Response that Petitioner could not have addressed in the Petition. Petitioner’s Opposition to Motion to Exclude, Paper 42, (Opp. To Motion to Exclude), 3. In addition, the Board provided the parties an opportunity for additional claim construction briefing. Thus, the parties were afforded an additional opportunity to respond to each other concerning the construction of the preserving limitation.” slip op. at 34
Patent outcomesUS 7,461,353 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,461,353
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.