- Toyota Motor Corporation v. Cellport Systems, Inc.Institution deniedPTAB · Dec 16, 2015 · IPR2015-01422 · APJ Scott C Moore · IPR · Institution
The Board denied institution on all claims: claims 1–11 lacked a sufficient showing of the claimed network protocol converter structure, and claims 12–21 were denied as a second, delayed petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“network communication means” claim limitation. Claims 2, 6, and 8–11 depend from claim 1 and, thus, incorporate this limitation by way of dependence. A petition for inter partes review “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Because the “first standard network communication means” is a means-plus-function claim limitation, Petitioner is required to show that both the recited function of this claim limitation and the corresponding structure or an equivalent are present in the applied references. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (“[A] challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.”). The Petition does not identify any structure in the applied references that is allegedly identical or equivalent to the corresponding structure of the “first standard network communication means” claim limitation, i.e., network protocol converter 26. Petitioner’s entire argument concerning the “first standard network communication means” of claims 1, 3, 4, 5, and 7, is reproduced below: Cao discloses a “first standard network communications means” (i.e., wireless Proxim radio link with base station) that uses Internet Protocol for “presenting information for transmission over the airlink in a first format that is acceptable to a first standardized network that includes the airlink” (i.e., TCP/IP format). See Ex. 1019 at 6; see also supra Section VIII.A.4. Pet. 40. Though Petitioner alleges that the “wireless Proxim radio link with base station” of Cao performs the recited function of the “first standard network communication means,” Petitioner does not compare the structure of the “wireless Proxim radio link with base station” of Cao to the structure of network protocol converter 26. Cited Section VIII.A.4 of the Petition similarly does not address the structure of the “wireless Proxim radio link with base station” of Cao. See Pet. 18–20. Thus, the Petition does not identify any structure in the applied references that is allegedly identical or equivalent to the corresponding structure of the “first standard network communication means” claim limitation. For the foregoing reasons, the Petition fails to show persuasively that the “first standard network communication means” claim limitation is found in the references that Petitioner relies upon with respect to claims 1–11. Thus, the information presented in the Petition is not sufficient to demonstrate a reasonable likelihood that Petitioner will prevail in demonstrating that claims 1–11 are unpatentable. 3.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“The 4½ month delay between Petitioner’s first and second Petitions is problematic for several reasons. First, the timing of this Petition makes consolidation impractical, and, thus, frustrates the interest of judicial economy. The oral hearing in IPR2015-00633 is set for April 14, 2016. IPR2015-00633, Paper 12. Thus, it would not be practical to institute a second inter partes review and consolidate that proceeding with IPR2015- 00633. See 35 U.S.C. § 315(d). Assuming that Petitioner has shown here a reasonable likelihood that claims 12–21 are unpatentable, two separate trials would be necessary, requiring the parties, as well as the Board, to expend significant additional resources. Second, even if we were to institute a second inter partes review involving claims 12–21, Petitioner might be unable to “maintain” the second inter partes review upon issuance of a final written decision in IPR2015-00633. 35 U.S.C. § 325(e)(1) provides that any final written decision in IPR2015-00633 on the patentability of claims 12–21 would preclude Petitioner from “maintain[ing] a proceeding before the Office . . . on any ground that the petition raised or reasonably could have raised during [the earlier] post-grant review.” Thus, instituting a second inter partes review may result in a significant waste of time and resources for the parties and for Board. See 37 C.F.R. § 42.1(b) (“This part shall be construed to secure a just, speedy, and inexpensive resolution of every proceeding.”). Third, the timing of the second Petition raises the potential for gamesmanship. Petitioner did not file this Petition until one month after Patent Owner filed its Preliminary Response in IPR2015-00633. The timing of the second Petition gave Petitioner the opportunity to preview the arguments set forth in the Patent Owner Preliminary Response in IPR2015- 00633. Petitioner also has not provided an adequate explanation for the 4½ month delay between the filing of this Petition and the filing of its previous Petition. Though Petitioner alleges that it was not aware of Cao “at the time it filed Petition No. 2015-00633” (Pet. 2), Petitioner does not state when and under what circumstances, during the 4½ months that preceded the filing of the current Petition, it became aware of Cao. Cao is a technical paper that was published by a major research university in the United States, and, thus, it is not clear on this record why Petitioner was unable to locate Cao at an earlier date. See Ex. 1019, 1. We further note that Petitioner has not identified any meaningful distinctions between the arguments regarding claims 12–21 in this Petition and the arguments Petitioner set forth in its earlier Petition. For instance, Petitioner does not explain in what ways the grounds asserted against claims 12–21 in this proceeding are superior to the grounds against the same claims and on the basis of which we instituted trial in IPR2015-00633. In view of the foregoing, we exercise our discretion and decline to” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Despite the rebuttable presumption, we do not construe “controller means” as a means-plus-function claim limitation. The presumption is overcome because the claim language does not link the “controller means” to a specific recited function. See York Prod., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996) (“Without a ‘means’ sufficiently connected to a recited function, the presumption in use of the word ‘means’ does not operate.”). In addition, the presumption is overcome when the claim specifies detailed structure sufficient to perform any recited or implicit function, e.g., controlling. See TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008) (“Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.”); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1376 (Fed. Cir. 2003). Each of independent claims 1, 3, 4, 5, and 7 recites that the “controller means” includes the “processing means” and the “first standard network communication means.” As discussed herein, the processing means and the first standard network communication means are means-plus-function claim limitations that are defined in terms of specific structures disclosed in the Specification. Moreover, the recited “controller” is also a structure that is sufficient to perform any recited or implicit function of the “controller means.” The rebuttable presumption also is overcome because the controller means claim limitation is associated with these structures. Thus, in accordance with the ordinary and customary meaning of the claim language, and consistent with the Specification (see Ex. 1001, 2:66–3:29, 6:11–37, 8:1–45), for purposes of this Decision, we construe “controller means” as “a controller.” 3.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)§112(f) appliesDecided for patent owner
“is a means-plus-function limitation is overcome because this limitation lacks an associated function. Prelim. Resp. 13. We agree. The grammatical structure of the claim and, in particular, the fact that the functional language cited by Petitioner appears immediately after the recitation of the “processing means” evidences an intent to associate this functional language with the “processing means” claim limitation. Thus, for purposes of this Decision, we construe “processing means” as a means-plus-function claim limitation having a recited function of “controlling the sending and receiving of said information using said wireless device between said first remote station and the vehicle.” “Structure disclosed in the specification qualifies as ‘corresponding structure’ if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.” Williamson, 792 F.3d at 1352. The Specification of the ’074 Patent indicates that the sending and receiving of vehicle information between the remote station and the vehicle is controlled by processor 90 in conjunction with real time operating system 94. See Ex. 1001, 8:1–23, 13:54–56. Data memory 106 is not linked clearly to the recited function because data memory 106 merely stores information, and does not control the sending and receiving of information. See id. 8:45–58, 9:31–45, 10:58–64, 13:8–10, 23–26. Thus, the structure in the Specification that corresponds to the “processing means” is “processor 90 in conjunction with real time operating system 94.”” slip op. at 11
Claim constructionDiscretionary denialcites GrahamPatents in suitUS 5,732,074 - Sensus USA, Inc. v. Certified Measurement, LLCInstitution deniedPTAB · Dec 11, 2015 · IPR2015-01439 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 43 unpatentable over any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may be instituted only if “the information presented in the [P]etition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the [P]etition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, we are persuaded that Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’453 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’453 patent.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner contends that Petitioner’s identification of the real parties-in-interest is incomplete, and that the Petition should be denied as failing to comply with 35 U.S.C. § 312(a)(2). Prelim. Resp. 30–31. Patent Owner asserts that in a related litigation involving the ’453 patent, Petitioner identified an insurance company as covering some of the costs of defending the action against Patent Owner. See Ex. 2001. Patent Owner argues: A hallmark of indemnity or insurance agreements that are available to satisfy part or all of a judgment or to reimburse payments of same is an ability for the insurer or indemnitor to control over [sic] aspects of the litigation, including the defense and maintenance of an inter partes review which seek[s] to invalidate the subject patent. Prelim. Resp. 30. Patent Owner’s argument is generic and fails to identify any specific evidence that any parties other than those identified by Petitioner actually is exercising control over or could exercise control over this proceeding.1 Accordingly, we decline to deny the Petition on this basis. D. The References Petitioner relies on the following references: U.S. Patent No. 4,077,005, issued Feb. 28, 1978 (Ex. 1005, “Bishop”); U.S. Patent No. 5,199,068, issued Mar. 30, 1993 (Ex. 1006, “Cox”); U.S. Patent No. 5,689,442, issued Nov. 18, 1997 (Ex. 1007,” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Petitioner does not propose a construction for “augmented measurement” aside from stating that it “is described in the individual claims of the patent.” Pet. 17. Nevertheless, Petitioner’s argument suggests that generating an “augmented measurement” requires effecting some combination of the elements recited in the claim—the first signal, the second signal, and the third signal. See Pet. 27 (asserting that Cox disclosing “combining” the previously recited elements of the claim in arguing that Cox teaches “generating an augmented measurement”). Thus, both Petitioner and Patent Owner recognize that generating an augmented measurement requires combining specified elements of the claim. We agree. The parties’ recognition that an augmented measurement requires combining specified elements of the claim is consistent with the specification of the ’453 patent. The ’453 patent explains that an “augmented measurement comprising the cleartext time plus the physical measurement” is created by adding a physical measurement of any physical parameter or event to a time. Ex. 1001, 7:66–8:2.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s argument is not persuasive because Petitioner fails to show that Bishop’s position P signal is formed from two separate signals based at least in part on two physical measurements. Petitioner’s cited portions of Bishop fail to disclose how position P is generated aside from stating that “position P of the ship is determined to an accuracy of + 2 nm . . . by the ship’s navigation equipment 48.” Ex. 1005, 2:63–66. Petitioner, however, has not identified where, if at all, Bishop discloses how the navigation equipment generates the position of the ship. Petitioner’s citations to Bishop’s column 3 refer to Bishop’s disclosure of generating a combined message, which Bishop designates as IS + P + T1, and then enciphers. See, e.g., id. at 3:7–23. Additionally, Petitioner’s reliance on paragraph 40 of the Nielson Declaration fares no better. Dr. Nielson’s testimony includes the same statements as the Petition without providing additional explanation or evidentiary support for us to conclude that Bishop expressly or inherently discloses that its position P signal is formed from two separate signals based at least in part on two physical measurements. See 37 C.F.R. § 42.65(a). Accordingly, on this record, we are not persuaded that Petitioner has established a reasonable likelihood of prevailing on the assertion that Bishop discloses each and every element of claim 43 of the ’453 patent.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,289,453 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsInstitution deniedPTAB · Dec 2, 2015 · IPR2015-01231 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“only if “the information presented in the [P]etition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the [P]etition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, we are persuaded that Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’884 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’884 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“the setting step of claim 1. Petitioner, however, has not persuaded us, on this record, that Hashimoto likely discloses the claimed adjusting step. First, the citations and parentheticals in Petitioner’s claim charts do not, on their face, teach or suggest this step. Second, even though Petitioner points to Hashimoto’s disclosure of combining photoelectric charge accumulation time changes with gain control, Petitioner does not explain how Hashimoto actually combines these two features. Hashimoto’s discussion of gain control, in the context of Figure 10, suggests that gain is controlled via offsets, specifically offset A or offset B. See, e.g., Ex. 1004, 11:15–20 6 In addition, Petitioner cites to paragraph 74 of the Neikirk Declaration (Pet. 31), which cites to the same portion of Hashimoto but does not provide additional explanation as to how this disclosure teachings the “adjusting” step of claim 1. Ex. 1003 ¶ 74 (citing Ex. 1004, 4:64–5:8; Ex. 1003, footnotes 1–5, 7). (“Accordingly, when the shutter speed is changed from 1/100, the gain is corrected or controlled with the offset, thus obtaining proper brightness control. The offset A is used when the shutter speed is changed from 1/100 to 1/50, and the offset B is used when the shutter speed is changed from 1/100 to a higher speed.”). In Hashimoto’s discussion of gain control, however, Petitioner does not identify, and we are unable to discern, a teaching of “adjusting the overall system gain by adjusting the integration time while maintaining the integration time at an integral multiple of the period of the periodic intensity.”7” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“depend from claim 14. Petitioner relies upon the same teachings of Hashimoto, discussed above with respect to claims 1 and 14, in Petitioner’s challenges to (1) claims 1–6 and 14 as obvious over Hashimoto and Kinugawa; (2) claims 14 and 17–19 as obvious over Hashimoto and the knowledge of a person of ordinary skill in the art; (3) claims 17–19 as obvious over Hashimoto, Nishiyama, and the knowledge of a person of ordinary skill in the art; (4) claims 17–19 as obvious over Hashimoto, Nishiyama, Kinugawa, and the knowledge of a person of ordinary skill in the art; and (5) claims 17–19 as obvious over Hashimoto and the knowledge of a person of ordinary skill in the art. See, e.g., Pet. 31 (referring to Petitioner’s discussion of claim 1), 38 (referring to Petitioner’s discussion of claim 14). Petitioner does not assert that Kinugawa, Nishiyama, or the knowledge of one of ordinary skill in the art9 remedies the deficiencies discussed above with respect to claims 1 and 14, or that the “adjusting” step of claim 1 and the “gain control block” of claim 14 would have been obvious in light of any of these additional references or teachings. Accordingly, for the reasons discussed above with respect to Hashimoto and claims 1 and 14, Petitioner has not established, on the record before us, a reasonable likelihood of prevailing on the assertions that as of 9 For the purposes of this Decision, we need not decide whether Petitioner’s reliance upon the knowledge of a person of ordinary skill in the art violates 35 U.S.C. § 311(b), which limits the grounds under which a petitioner may request cancellation of claims in an inter partes review to “a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications” (emphasis added). the effective filing date of the claimed invention: (1) claims 1–6 and 14 would have been obvious over Hashimoto and Kinugawa; (2) claims 14 and 17–19 would have been obvious over Hashimoto and the knowledge of a person of ordinary skill in the art; (3) claims 17–19 would have been obvious over Hashimoto, Nishiyama, and the knowledge of a person of ordinary skill in the art; (4) claims 17–19 would have been obvious over Hashimoto, Nishiyama, Kinugawa, and the knowledge of a person of ordinary skill in the art; and (5) claims 17–19 would have been obvious over Hashimoto and the knowledge of a person of ordinary skill in the art.” slip op. at 17
§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,271,884 - Square, Inc. v. Think Computer CorporationAll claims unpatentablePTAB · Nov 27, 2015 · CBM2014-00159 · APJ Michael W Kim · CBM · Final written decision
Claims 1–7, 9–11, 13–17, and 20–22 are unpatentable under § 103; the motion to amend claims 23–43 is denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Beginning with the claim terms themselves, the word “selectively” is used. We discern that the ordinary and customary usage of this word denotes expressly that a particular account need not function simultaneously as both a merchant account and a purchaser account; a user is permitted expressly to select which account mode is desired at the appropriate point in time. The following disclosure in the Specification is consistent with this understanding: An entity (e.g., a person, business, or other legally recognized entity) preferably creates an account within the payment system. The accounts of the payment system are preferably designed so that an account may selectively function as either a merchant or a purchaser during any particular transaction. In other words, within the scope of all transactions, accounts of the payment system can function as bi-directional transaction accounts. Ex. 1001, 3:15–22. Indeed, here, the Specification discloses expressly that being able to select which account mode is desired is the same as “bi-directional transaction accounts.”” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“more properly considered a claim construction. PO Resp. 9. And indeed, when considered in conjunction with Petitioner’s proposed construction, the two constructions are similar. As noted by both Patent Owner and Petitioner, the Specification only mentions “line item data,” or similar wording, as follows: Additionally, as one of the main benefits of having merchant product catalogs integrated into the payment system, line item transaction data can be communicated. The line item data is additionally stored as part of the transaction record of the accounts. This itemized information can be very useful, such as in one application where tax forms are automatically completed by aggregating each category of line item transaction data as appropriate. Ex. 1001, 8:6–13. From the aforementioned portion of the Specification, we determine that the key to a proper construction of “line item data” is that it is information that is itemized and capable of categorization. In other words, “line item data” is an itemized part of a larger whole, more specifically, but not limited to, product catalogs, purchase lists, and transactions records, i.e., at a most granular level, individual products involved in a purchase or sale, as advocated by Petitioner. This focus on itemization and categorization of products is supported by other portions of the Specification cited by the parties, for example, column 2, lines 15–17, which recites that “[t]he integration of the payment system and product catalog functions to enable recording and tracking transactions with itemized detail” (emphases added). See also Ex. 1001, 5:51–55 (“the method may additionally store purchase list information as a transaction record for the merchant account and/or the purchaser account, which functions to form an itemized purchase history” (emphasis added)); 4:4–6 (“[t]he product catalog preferably includes a listing of product descriptions and prices for each product contained within the product catalog” (emphases added)); 4:6–13 (“[a]dditional information may be included for a product such as categories for tax purposes and other purposes, product-related IDs for each distributor of the product (e.g., Stock-Keeping Unit or ‘SKU’), images or media files related to the product, inventory related information (the number of items on hand, on order, etc. at each warehouse location), or any other suitable product-related data” (emphases added)); 4:13–16 (“[t]he product catalog may be a database accessed by outside applications, but may additionally or alternatively include a hosted web-based store through which products can be added to a shopping cart (i.e., a purchase list)” (emphases added)). Accordingly, we construe “line item data” as “itemized information from a larger group of information, related to individual products involved in a purchase or sale, that is capable of categorization,” where non-limiting examples of “line item data” may include one or more of “quantity, description, type, cost, product identifier (e.g., stock keeping unit), tax, duty, shipping or other fees.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“valid reason for combining Bemmel and Dalzell, because Dr. Sadeh- Koniecpol’s opinions of industry custom are unsupported. We are unpersuaded that Dr. Sadeh-Koniecpol’s opinions are unsupported, and especially unpersuaded that Dr. Sadeh-Koniecpol has not provided adequate support regarding the reasons for combining Bemmel and Dalzell. Dr. Sadeh-Koniecpol includes explicit citations to references, in particular Bemmel and Dalzell, for supporting his conclusions, and we determine that any purported “leaps of logic” taken by Dr. Sadeh-Koniecpol are reasonable given the underlying support. For example, Dr. Sadeh-Koniecpol opines that “one of ordinary skill in the art would have been motivated to combine the mobile payment system of Bemmel with the electronic marketplace of Dalzell.” Ex. 1002 ¶ 136. Of course, this paragraph considered in isolation would be an unsupported opinion. Dr. Sadeh-Koniecpol, however, then goes on to support this opinion with explicit citations to Bemmel and Dalzell. Ex. 1002 ¶¶ 137, 139, 140. Dr. Sadeh-Koniecpol then reaches conclusions that we determine flow logically from those citations. Ex. 1002 ¶¶ 138, 141, 142.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Patent Owner asserts additionally that the Board should exercise its discretion under 35 U.S.C. § 325(d) and deny the Petition, because similar art was already before the Examiner during prosecution. We note that 35 U.S.C. § 325(d) is normally exercised in a Decision on Institution. Moreover, we have already conducted a full trial in this proceeding subsequent to a Decision on Institution. Furthermore, 35 U.S.C. § 325(d) is discretionary, and insofar as Patent Owner is requesting any vacating of the Decision on Institution, we decline to do so for the reasons set forth above.” slip op. at 28
Patent outcomesUS 8,396,808 unpatentableClaim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,396,808 - Unified Patents Inc. v. Olivistar, LLCInstitution deniedPTAB · Nov 20, 2015 · IPR2015-01216 · APJ Scott C Moore · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on anticipation by Monroe or obviousness over Mangasarian and Walker for any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“1–8, 11–14, 16–23, 29–32, 37, 47, and 48 (Paper 2; “Pet.”) of U.S. Patent No. 7,606,843 B2 (Ex. 1001; “the ’843 Patent”). Patent Owner filed a Preliminary Response (Paper 12; “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” On this record and for the reasons discussed below, we do not institute an inter parties of any claim of the ’843 Patent. The Petition is denied.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner
“We agree with Patent Owner’s position that Petitioner’s constructions are overbroad. The challenged claims all relate to the archival of monitoring device data either by an archive server (i.e., a computer), or according to according to computer-executable instructions. See Ex. 1001, 13:10–33, 14:61–15:17, 15:20–47, 16:35–61. In the context of computers and computer systems, the term “archival” ordinarily and customarily refers to long-term, persistent storage of computer data.2 In contrast, the term “buffer” ordinarily and customarily refers to memory that temporarily holds information, for example, to account for differences in data flow rates between computer components.3 Similarly, random access memory (“RAM”) is non-persistent memory that temporarily stores data while that” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“characterized by one or more archival attributes.” Ex. 1001, 13:15–17, 14:65–67. Claims 1 and 29 also require “determining whether the archival profile is associated with one or more archival attributes of the incoming monitoring data,” and if so, “processing the incoming monitoring device data . . . into a compressed format” and “selectively storing the incoming monitoring device data . . . on a storage medium.” Id. at 13:20–29, 15:3–12. Claims 1 and 29 further require that the “archival attribute from which the archival profile selectively stores incoming monitoring device data is one selected from the group of file type, monitoring device identifier, and monitoring device type that collected the incoming monitoring device data.” Id. at 13:29–33, 15:13–17. Thus, the “one or more archival attributes” recited in the “determining” step of claims 1 and 29 must be “selected from the group of file type, monitoring device identifier, and monitoring device type that collected the incoming monitoring device data.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We are not persuaded that Petitioner has “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). For example, Petitioner does not provide a persuasive explanation of why a skilled artisan would have found it obvious to modify the system and method of Mangasarian to include unique data channel identifiers of the type described in Walker. Petitioner’s argument that “both references are directed to monitoring data on a network and storing such monitoring data for later analysis” (Pet. 44, citation omitted) does not explain why it would have been obvious to make the specific modification that Petitioner proposes. The fact that two references both describe monitoring data on a network and storing such data does not, without more, demonstrate that specific combinations of teachings from these references would have been obvious. Petitioner also has not provided a persuasive explanation of why a skilled artisan would have found it obvious to use unique data channel identifiers of the type described in Walker as an archival attribute that determines whether the data of Mangasarian is selectively stored. Petitioner’s assertion that a “person of ordinary skill in the art would recognize that Walker describes an additional attribute of the monitoring data . . . and would have found it obvious to combine such teachings with the teachings of Mangasarian to selectively collect and archive data based on this specific attribute of the data” (Pet. 44, citation omitted) is conclusory in nature, and is not supported by persuasive evidence or argument.8 For the foregoing reasons, Petitioner has not shown a reasonable likelihood that it would prevail on its obviousness challenge to claims 1 and 29. Dependent Claims 2, 3, 8, 12–14, 16, 17, 21, 22, 29, and 30” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,606,843 - Unified Patents Inc. v. Olivistar, LLCInstitution deniedPTAB · Nov 20, 2015 · IPR2015-01217 · APJ Scott C Moore · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on its Monroe anticipation or Mangasarian-Walker obviousness challenges to claims 1, 3, 4, 8–12, and 17–20.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of claims 1, 3, 4, 8–12, and 17–20 of U.S. Patent No. 8,239,347 B2 (Ex. 1001; “the ’347 Patent”). Patent Owner filed a Preliminary Response (Paper 12; “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” On this record and for the reasons discussed below, we do not institute an inter parties of any claim of the ’347 Patent. The Petition is denied.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner’s position that Petitioner’s constructions are overbroad. The challenged claims all relate to a system employs “archival attributes” and “archival profiles” to determine whether to store data in a “data repository,” or a method of “selectively archiving” data that employs “archival attributes” and “archival profiles.” Ex. 1001, 13:11–33, 14:28–46. In the context of computers and computer systems, the term “archival” refers to long-term, persistent storage of computer data.2 In contrast, the term “buffer” ordinarily and customarily refers to memory that temporarily holds information, for example, to account for differences in data flow rates between computer components.3 Similarly, random access memory (“RAM”) is non-persistent memory that temporarily stores data while that data is being processed.4 Thus, the plain and ordinary meaning of 2 See Ex. 3001 (definition from Academic Press Dictionary of Science and Technology, defining “archival storage” as “[s]torage media, such as off-line magnetic tapes or disks, used for long-term storage of data seldom accessed, such as transaction history or backup copies of working programs”); Ex. 3002 (definition from Webster’s New World Computer Dictionary, defining “archive” as “an infrequently used but comprehensive collection of data”). 3 See Ex. 3003 (definition from Webster’s New World Computer Dictionary, defining “buffer” as “a unit of memory given the task of holding information temporarily, especially while waiting for slower components to catch up”); Ex. 3004 (definition from Academic Press Dictionary of Science and Technology, defining “buffer” as “[a]n intermediate storage area used to compensate for differences in rates of data flow when information is being transmitted from one computer device to another”). 4 See, e.g., Ex. 3005 (definition from Webster’s New World Computer Dictionary, defining “random access memory” as “[t]he computer’s primary working memory . . . . In RAM, the CPU can write and read data. Most programs set aside a portion of RAM as a temporary workspace for data so that one can modify (rewrite) as needed until the data is ready for printing or storage on secondary storage media, such as a hard or floppy disk. RAM does not retain its contents when the power to the computer is switched off.”). “archival” does not encompass the storage of data in buffer memory or RAM. This interpretation of “archival” is consistent with the Specification. In particular, the Specification indicates that “archival” data is data that “needs to be maintained for a number of possible uses,” and does not include data that “can be generated, processed, and discarded after its intended purpose.” Id. at 1:20–23. The Specification also provides several examples of “archival” storage, all of which are types of long-term, persistent storage. See id. at 1:26–36 (indicating that archived data may be stored in “storage devices, such as magnetic media and optical media that are directly attached to a computing device generating the data to be archived,” “special-purpose file management server-computing devices [that] function as a storage destination for a number of computing devices,” and “multiple file management servers functioning[] as a storage location for a number of networked computing devices.”). Independent claims 1 and 17 both require selectively storing monitoring device data “if the archival profile is associated with one or more archival attributes.” Ex. 1001, 13:26–33; 14:39–46. For the reasons set forth above, based on the current record, and for purposes of this Decision, we are persuaded that the claim term “archival attribute” does not encompass an attribute relating to the storage of data in buffer memory or RAM, and that the claim term “archival profile” does not encompass a profile relating to the storage of data in buffer memory or RAM. No further construction of these claim terms is necessary at this time. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“processor.” Ex. 1001, 13:16. The fourth element of claim 1 recites that “the monitoring device data processor determines whether the archival profile is associated with one or more archival attributes of the monitoring device data.” Id. at 13:22–24. The final element of claim 1 recites that “the monitoring device data processor . . . selectively stores the monitoring device data in the compressed format on the at least one data repository.” Ex. 1001, 13:11–33. In order to demonstrate anticipation, Petitioner must demonstrate that Monroe discloses “not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, 545 F.3d at 1371. Thus, Petitioner cannot demonstrate anticipation by picking and choosing different “monitoring device data processors” when discussing different elements of claim 1. Instead, Petitioner must identify a “monitoring device data processor” that performs all of the steps recited above. Petitioner fails to do so.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As discussed above, however, we construe “archival attributes” and “archival profiles” to not include attributes and profiles that relate to the storage of data in buffer memory. The Petition also does not provide any persuasive evidence or argument that one of ordinary skill would consider storage of information in packet buffer 208 of Mangasarian to be “archival” storage. Thus, viewing Mangasarian through the lens of Petitioner’s First Perspective, we are not persuaded that the reference teaches an “archival attribute” or “archival profile.” In the Second Perspective, Petitioner alleges that remote probe 107 is a “monitoring device,” and that the processor of protocol analyzer/host 111 connected to the host network interface is a “monitoring device data processor.” Id. at 27. Petitioner also alleges that the network data packets of Mangasarian correspond to the “monitoring device data” of the claims (see id. at 33), that the class code information for data packets corresponds to the “archival attributes” of the claims (id. at 34), and that the filter, classification, and upload routines of Mangasarian correspond to the “archival profiles” of the claims (id.). Petitioner alleges that host 111 (i.e., the monitoring device data processor) uses the class code information (i.e., archival attributes) and upload routines (i.e., the archival profile) to “enable intelligent selection of portions of packet buffer to be downloaded” to host 111. 35 (citing Ex. 1004, 6:3–5; Jawadi Decl. ¶¶ 78–79, 95, and Ex. B cl. 1(b))). Petitioner also asserts that the processor of host 111 “includes sufficient memory and mass storage to store and manipulate the portions of packet buffer 208 that are downloaded for analysis.” Pet. 35 (citing Ex. 1004, 6:15–26, 4:61–65; Jawadi Decl. ¶¶ 75, 78, 81, 95, and Ex. B cl. 1(b) & 1(e)). But Mangasarian makes clear that the filter, classification, and upload routines are software that executes on remote probe 108. See Ex. 1004, 5:5, 5:16–33, 5:66–6:13, Fig. 2. Petitioner has not pointed to any description in Mangasarian of filter, classification, and upload routines that control how or where host 111 stores data. See Pet. 40. Petitioner merely alleges that the “upload routines” of Mangasarian cause network data packets to be uploaded to host 111. The uploading of data to host 111 may cause data to be stored in the “working memory (e.g., random access memory or ‘RAM’)” of the host. See Ex. 1004 at 2:17–19, 6:23–31. Petitioner, however, does not allege that this uploading would cause data to be stored in the separate “mass storage” of host 111. Thus, viewing Mangasarian through the lens of Petitioner’s Second Perspective, we are not persuaded that the reference teaches an “archival attribute” or “archival profile.” For the foregoing reasons, Petitioner has not shown a reasonable” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 8,239,347 - PNC Bank, Na / Suntrust Bank v. Parus Holdings, Inc.Institution deniedPTAB · Nov 9, 2015 · CBM2015-00150 · APJ Bart A Gerstenblith · CBM · Institution
The Board denied institution for claims 1–18 because Petitioner did not show that the patent was eligible for covered business method review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“for the creation of a transitional program for reviewing covered business method patents. “The Director may institute a transitional proceeding only for a patent that is a covered business method patent.” Pub. L. No. 112-29, § 18(a)(1)(E), 125 Stat. 284, 330 (Sept. 16, 2011). A “covered business method patent” is a patent that “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” Id. § 18(d)(1), 125 Stat. at 331; accord 37 C.F.R. § 42.301(a) (providing the same definition of “covered business method patent”). “The petitioner must demonstrate that the patent for which review is sought is a covered business method patent.” 37 C.F.R. § 42.304(a).” slip op. at 9
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“discussed above, a teleconference was held with the parties on November 5, 2015. Petitioner and Patent Owner jointly request authorization to file a motion for termination under 35 U.S.C. § 327, the statute governing termination of instituted post-grant reviews due to settlement, but confirmed during the call that no written settlement agreement currently exists. The parties request that the proceedings terminate without estoppel, such that Petitioner can re-file the petitions upon completion of Federal Circuit review of the District Court’s ineligibility determination, if necessary. Patent Owner limits its agreement to Petitioner re-filing the same petitions. Effectively, the parties request that we stay these proceedings pending Federal Circuit review of the District Court’s decision. We deny the parties’ request. As explained below, the ’120 patent is not eligible for covered business method patent review. Deferring entering such a decision is inconsistent with our policy objective of “secur[ing] the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1. We do not reach, and, thus, express no opinion on, eligibility of the claims of the ’120 patent under 35 U.S.C. § 101.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. CLAIM CONSTRUCTION Although Petitioner presents constructions for several claim terms, no terms require express construction for purposes of this Decision.” slip op. at 9
Claim constructionDiscretionary denialPatents in suitUS 8,843,120 - PNC Bank, Na / Suntrust Bank v. Parus Holdings, Inc.Institution deniedPTAB · Nov 9, 2015 · CBM2015-00110 · APJ Bart A Gerstenblith · CBM · Institution
The Board denied both petitions and did not institute CBM review of claims 1–18 because Petitioner did not show the patent was eligible for CBM review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On this record, Petitioner has not introduced persuasive evidence to show that at least one claim of the ’120 patent claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. Accordingly, Petitioner has not met its burden of demonstrating that the ’120 patent is eligible for covered business method patent review.” slip op. at 19
Discretionary denialPatents in suitUS 8,843,120 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00948 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s adverse-judgment motion, entered judgment against Patent Owner, and cancelled claims 2, 22, 23, and 25.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and it did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3
NonePatents in suitUS 6,370,371 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00947 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s motion for adverse judgment and cancelled claims 1, 23, 25, 161, 193, and 202.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3
NonePatents in suitUS 6,061,551
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.