• Eis GmbH v. Novoluto GmbHRehearing granted
  PTAB · Sep 25, 2020 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Rehearing

  Granted EIS GMBH’s rehearing request and instituted IPR of claims 1–3, 5, 7, 8, 11, 14, 15, 17–21, and 23–26 on all asserted grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “We conclude from a review of Fang and Taylor that they are not substantially the same art nor is Petitioner making substantially the same argument as was presented the Office during prosecution of the ’061 Patent based on Fang. We find that the way in which Fang and Taylor work appear to be materially different. Fang appears to apply only suction to the skin whereas Taylor, with the sealingly connected suction cup, appears to apply a cyclical vacuum that Dr. Prisco testifies meets the claim limitations requiring generation of a pattern of negative and positive pressures, modulated with respect to a reference pressure. Ex. 1002 ¶¶ 62–64, 75. Thus Taylor appears to teach the claim element Patent Owner argued during prosecution was missing from Fang. Also, in applying factors (b) and (d) of Becton, Dickinson, because of such differences noted above, we find that Taylor is not cumulative of Fang, which was considered and applied by the Office during prosecution of the ’061 Patent. 4. Conclusion Thus, we find that Taylor and Fang are not substantially the same art, nor were substantially the same arguments based on these references presented in the Petition and during prosecution of the ’061 Patent, respectively. As discussed above, because Petitioner primarily relies on Taylor in all four grounds for teaching the modulation of positive and negative pressures with respect to a reference pressure as required by all of the challenged claims, we also find that, overall, the same or substantially the same art was not previously presented to the Office nor were the same or substantially the same arguments previously presented to the Office. Therefore, we do not need to reach the application of the remaining Becton, Dickenson factors relating to whether the Petitioner has demonstrated a material error by the Office. Thus, we decline to exercise our discretion under § 325(d) to deny institution of an inter partes review here.” slip op. at 12

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

    “how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18

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

    “We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,849,061
• Parrot S.A. / Parrot Drones S.A.S. et al. v. Qfo Labs, Inc.Rehearing denied
  PTAB · Aug 11, 2020 · IPR2018-01690 · APJ Hyun J Jung · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 13–17 unpatentable and the motion to amend granted for claims 1–10 but denied for substitute claims 21–23.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified as set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. 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. See also Req. Reh’g. 4 (quoting, in part, 37 C.F.R. § 42.71(d)). With this in mind, we address Patent Owner’s arguments below.” slip op. at 2

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

    “Owner’s Motion to Amend in its Rehearing Request. Compare Mot. 11–12, with Req. Reh’g. 7. We considered these arguments in our Decision, and Patent Owner’s arguments express disagreement with our interpretation of “orientation control scheme” but do not show how an argument was overlooked or misapprehended. See Final Dec. 74, 84–86. Patent Owner supplements its prior arguments with contentions that we construed “position” as a verb, not a noun. See Req. Reh’g. 6. Patent Owner does not identify where these additional contentions were previously presented, as required under 37 C.F.R. § 42.71(d). Thus, Patent Owner has failed to show that we misapprehended or overlooked these arguments. See id. Even if the additional contentions had been previously presented, our Decision considered Patent Owner’s proposed interpretation of “orientation control scheme.” See Final Dec. 85 (“Even under Patent Owner’s proposed interpretation of ‘orientation control scheme’ (Mot. 11–12), Petitioner persuades us that Louvel and Nagamitsu teach the final recitation of proposed substitute claim 21.”). Patent Owner’s arguments do not show how an argument was overlooked or misapprehended. In any event, we remain convinced that “Patent Owner’s proposed interpretations are not the broadest reasonable interpretation in view of the Specification of the ’292 patent because the Specification does not use these terms or describe state vectors.” See Final Dec. 74.” slip op. at 4

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “We decline to consider Patent Owner’s constitutional challenge because the issue has been addressed by the Federal Circuit in Arthrex, 941 F.3d at 1328 (expressly limiting its holding “to those cases where final written decisions were issued (prior to Arthrex)”). See also Caterpillar Paving Prod. Inc. v. Wirtgen Am., Inc., 957 F.3d 1342, 1342–1343 (May 6, 2020) (“The court in Arthrex considered and rejected that argument, expressly limiting its holding ‘to those cases where final written decisions were issued.’”) (quoting 941 F.3d at 1340). Our Decision was entered February 20, 2020, after the Federal Circuit issued its October 2019 decision in Arthrex (see 941 F.3d at 1320).” slip op. at 10

  Claim construction
  Patents in suitUS 9,904,292
• Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLCRehearing denied
  PTAB · Jul 9, 2020 · IPR2019-01393 · APJ Ryan H Flax · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no misapprehended or overlooked issue and no abuse of discretion in instituting review of all challenged claims on Grounds 1 and 2.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing of a Board decision has the burden to show that the decision should be modified. Pursuant to 37 C.F.R. § 42.71(d), the rehearing request must identify, specifically, 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. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c) (2019). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Here, a new and relevant Board decision in Fintiv was entered subsequent to our Denial Decision and during the course of the Board’s consideration of the Petitioner’s Request for Rehearing; a decision that has been designated precedential and is now controlling. Fintiv, Paper 11. The Board has regularly considered intervening case law in reconsidering a decision on institution. See Shenzhen Zhiyi Tech. Co. Ltd. v. iRobot Corp., IPR2017-02061, Paper 11 (PTAB May 1, 2018) (granting a request rehearing when considering the intervening Supreme Court decision in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018)); Comcast Cable Comm., LLC v. Realtime Adaptive Streaming LLC, IPR2019-00760, Paper 45 (PTAB Jan. 17, 2020) (granting-in-part patent owner’s motion to terminate an instituted inter partes review in view of the intervening precedential decision in GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 (PTAB Aug. 23, 2019) (precedential)). Foundationally, “administrative agencies possess inherent authority to reconsider their decisions, subject to certain limitations, regardless of whether they possess explicit statutory authority to do so.”” slip op. at 5

  Discretionary denial
  Patents in suitUS 8,944,740
• Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLCRehearing granted
  PTAB · Jun 16, 2020 · IPR2019-01393 · APJ Ryan H Flax · IPR · Rehearing

  Granted Sand Revolution II, LLC’s rehearing request and instituted IPR of claims 1, 2, 4, 6–14, and 16–20 on two obviousness grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “As noted in Fintiv, we consider six factors when taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. For the reasons discussed above, the Fintiv factors weigh against invoking our discretion to deny institution. Considering the Fintiv factors as part of a holistic analysis, we are not persuaded that the interests of the efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution of a potentially meritorious Petition. For the reasons discussed above, we modify our initial decision denying institution. On rehearing, after considering the factors outlined in the precedential order in Fintiv, we decline to deny institution under § 314(a). Accordingly, we grant Petitioner’s Request for Rehearing. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 14

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “demonstrating a reasonable likelihood that it would prevail in showing that claims of the ’740 patent are unpatentable. At this preliminary stage of the proceeding and on the record before us, Petitioner’s case is strong on most challenged claims. Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact has favored institution.”). Although we recognize the record can change during trial, as discussed in detail below, Petitioner has made a sufficiently persuasive showing, on the record presently before us, that the prior art references cited in the Petition teach or suggest all limitations of most challenged claims. We determine, on this preliminary record, that Petitioner has set forth a reasonably strong case for the obviousness of most challenged claims. Thus, this factor weighs in favor of not exercising discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 13

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

    “system” would have been readily understandable to the skilled artisan on its face, and the combination of these words into the recited phrase does not introduce any different meaning or ambiguity. The fact that the mobile storage module comprises the “integrated actuating system,” as well as the inclusion of the word “integrated” in this disputed term, each supports that such a system is a part of the module; in other words, it is built into the module as proposed by Petitioner. Because the fact that the actuating system is built into the mobile storage module is evident from the claim language itself, defining the claim term expressly to include this concept is unnecessary, as it would be redundant of the term’s plain meaning as understood by the skilled artisan. Nothing in the intrinsic record, or other evidence submitted by Petitioner, is inconsistent with this conclusion. Furthermore, regarding the proposed self-deployment concept, we also conclude it is unnecessary to add this concept to define the claim term in view of the plain meaning of “integrated actuating system.” Per the plain language of the claim term, the system that actuates the mobile storage module, i.e., moves it between a lowered and raised position, is integrated into the mobile storage module. The mobile storage module’s integrated components move, or actuate, the mobile storage module, per the plain meaning of the claim language. Thus, the system that is expressly recited as being a part of the module (integrated), actuates the module; the module actuates itself. Therefore, adding “self-deploying” to specially define the term “integrated actuating system” is unnecessary. Nothing in the intrinsic record is inconsistent with this conclusion. See Ex. 1002, 83–91 (arguing the characteristic of “self-deploying” invokes the inclusion of “an integrated actuating system,” but not the converse). Because Petitioner’s proposed construction of “integrated actuating system” would add unnecessary and undesirable redundancy to the claims, we determine that it is unnecessary to expressly construe this claim term at this stage of the proceedings.” slip op. at 32

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

    “V. CONCLUSION Petitioner demonstrates a reasonable likelihood of prevailing at trial in demonstrating that claims 1, 2, 4, 6–10, 12–14, and 16–20 of the ’740 patent would have been obvious over the prior art combinations set forth in Grounds 1 and 2. Our decision at this stage derives from our review of the preliminary record before us. This decision does not reflect a final determination on the patentability of the claims. ORDER Accordingly, it is hereby: ORDERED that, Petitioner’s Request for Reconsideration is granted; FURTHER ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review of claims 1, 2, 4, 6–14, and 16–20 of the ’740 patent, in accordance with Grounds 1 and 2 in the Petition, is hereby instituted; and” slip op. at 56

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR
  Patents in suitUS 8,944,740
• Blackberry Corp. v. Facebook, Inc.Rehearing denied
  PTAB · Apr 17, 2020 · IPR2019-01593 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied rehearing and left in place its discretionary denial of the petition, finding no misapprehension or oversight in its assessment of the claim 23 challenges.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Petitioner to show we misapprehended or overlooked the matters it requests” slip op. at 2

  • Other 314aInstitution denied discretionary otherDenied

    “Partes Review. Paper 7 (“Dec.”). We exercised our discretion under 35 U.S.C. § 314(a) and denied the Petition based on our determination that Petitioner has only demonstrated a reasonable likelihood of prevailing as to three claim challenges (out of 17).1 Dec. 39−40. Petitioner filed a Request for Rehearing challenging several aspects of our Decision. Paper 8 (Req. Reh’g). In particular, Petitioner challenges our determination of the scope of “Global Positioning System data” (hereinafter “GPS Data”) a term recited in independent claim 23. Req. Reh’g 3−6. Petitioner further challenges our determination concerning the term “range of acceptable values,” recited in claim 23. Id. at 10−12. Thus, Petitioner argues, based on the correct interpretation of “GPS data” and “range of acceptable values,” we should have instituted trial because it demonstrated a reasonable likelihood of prevailing as to four or five out of eight challenged claims.2 Req. Reh’g 13.” slip op. at 2

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

    “types of information that are GPS data, such as idle time. The portions of the Specification that Petitioner now cites, however, do not show that the GPS data is not, at a minimum, location information. As we stated in our Decision, other types of data may be transmitted from the remote unit to the central location, but the GPS data does refer to location information. Dec. 9. Moreover, Petitioner points out that the Specification discusses vehicle speed, idle time, movement, and actual windshield time as examples of calculated values, arguably from GPS location and time information. Req. Reh’g 3. But the Specification actually refers to these values to determine exceptions to be logged and noted (Ex. 1001, 4:41−49, 4:65−67, 6:1−3), which proves only that the system may use non-GPS data, in combination with GPS data, to determine exceptions. We acknowledge that claim 23’s recitation of GPS data could seem, at first blush, to potentially encompass every comparison that the Specification explains. Claim 23, however, must be interpreted in a manner that accounts for the recited two-part structure. In the first part, the claim recites a first comparison that involves the GPS data; and in the second part, the claim recites the second comparison that does not mention GPS data. Our analysis of the term GPS data in our Decision did not assume that the two comparisons involved the same data, e.g., GPS data. This is where Petitioner disagrees with our assessment, because it urges us to construe GPS data as including values and information recited in the second comparison, i.e., the idle time or recited “stationary time.” Petitioner’s position cannot be correct because the claim does not require that the “stationary time” also be GPS data. Further, the comparison that claim 23 recites with respect to GPS data does not mention exceptions at all, so it does not follow that all the Specification’s descriptions of exceptions encompass GPS data. The second comparison recited in claim 23 (comparing the stationary time to a predetermined stationary time), in contrast, is expressly performed for the purpose of noting an exception. Claim 23 (“if the length of time that the remote unit remains in a stationary position is greater than the predetermined stationary time, the system notes an exception.”). Thus, Petitioner, even in arguing for the first time its claim construction position, has not shown that derived data must also be GPS data according to the plain reading of the claim language. Consequently, having reviewed Petitioner’s arguments, we are not persuaded that GPS data means data that is derived from and representative of GPS coordinates and time stamps, as argued for the first time in the Request for Rehearing.3” slip op. at 4

  • BurdenDecided for patent owner

    “construction issue. Patent Owner explicitly addressed the construction of the term, a fact we acknowledged in our Decision. Dec. 8 (citing Prelim. Resp. 29−30). Petitioner did not address the scope of the term explicitly or implicitly. And it was not apparent from any of the now-cited portions of the Petition that Petitioner contended a scope of the term to include data that is derived from and representative of GPS coordinates and time stamps. Petitioner’s argument attempts to characterize its omission of a contention regarding claim construction as an oversight on our part. The argument is not persuasive as it is Petitioner’s burden to show in the Petition its contentions regarding how the challenged claim is to be construed and how, so construed, the claim is rendered obvious by the asserted references. See 37 C.F.R. § 42.104(b)(3)−(4). Therefore, we could not have either overlooked Petitioner’s position on claim construction, since none was provided, or misapprehended a position of claim scope not made explicit.” slip op. at 3

  Claim constructionDiscretionary denial
  Patents in suitUS 6,356,841
• In-Depth Geophysical, Inc. / In-Depth Compressive Seismic, Inc. v. Conocophillips CompanyRehearing denied
  PTAB · Mar 30, 2020 · IPR2019-00849 · APJ Scott A Daniels · IPR · Rehearing

  The Board denied rehearing and left institution denied for claims 1–6 because Petitioner did not show Li was a printed publication.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “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.” 37 C.F.R. § 42.71(d). For reasons discussed below, we decline to modify the Decision. Thus, Petitioner’s Request is denied.” slip op. at 2

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

    “It is Petitioner’s burden to demonstrate at the institution stage a reasonable likelihood that a reference is a printed publication by a preponderance of the evidence. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner presented no additional evidence supporting its contentions, for example from someone familiar with the publication of Li or the referenced web pages, or even an explanation by Petitioner or a declarant that provided a countervailing argument to the SEG process and procedure for publication outlined by Dr. Aminzadeh in his Declaration. Instead, Petitioner simply points to purported “publication dates,” with no substantive explanation or fact witness corroboration. Req. Reh’g (citing Ex. 1020, Ex. 1021, Ex. 1026, Ex. 1030).” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “It is Petitioner’s burden to demonstrate at the institution stage a reasonable likelihood that a reference is a printed publication by a preponderance of the evidence. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner presented no additional evidence supporting its contentions, for example from someone familiar with the publication of Li or the referenced web pages, or even an explanation by Petitioner or a declarant that provided a countervailing argument to the SEG process and procedure for publication outlined by Dr. Aminzadeh in his Declaration. Instead, Petitioner simply points to purported “publication dates,” with no substantive explanation or fact witness corroboration. Req. Reh’g (citing Ex. 1020, Ex. 1021, Ex. 1026, Ex. 1030). Although documents indicating a publication date of 1 September 2012 may have relevance, absent additional evidence explaining the origin and meaning of that date as to public accessibility, on the record before us, the date alone fails to show a reasonable likelihood that Li was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. This is especially true in the face of Dr. Aminzadeh’s unrebutted testimony as to SEG’s regular practices surrounding the acceptance and dissemination of SEG conference papers. While his testimony may not speak directly to a date of public accessibility for Li itself, it is relevant, uncontroverted, and probative of accessibility to SEG papers in general, given the bare “1 September 2012” date relied on by Petitioner.” slip op. at 10

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We agree with Petitioner to the extent that Dr. Aminzadeh did not attest to personal knowledge of the Li paper. Dr. Aminzadeh however provided a credible explanation of the process for authoring and presenting papers at the SEG (Society of Exploration Geophysicists) conference. Dr. Aminzadeh is a member and co-author of SEG papers, as well as a former President of SEG. Ex. 2007 ¶ 3. In our Decision, we explained that [w]e give weight to Dr. Aminzadeh’s testimony because it articulates a reasonable and unrebutted explanation for the September 2012 date listed by Researchgate exhibit. Dr. Aminzadeh’s testimony also persuasively explains how and why the dissemination and first public availability of Li would have most likely not occurred prior to the SEG 2012 Annual Meeting from November 4-9, 2012. Dec. 12. We also stated in our Decision that dissemination “of Li would have most likely not occurred prior to the SEG 2012 Annual Meeting” (id.) because, for one reason, Dr. Aminzadeh’s unrebutted testimony is that “[a]uthors submit papers to the SEG several months before the SEG conference. The papers are kept confidential by the SEG at that time.” Ex. 2007 ¶ 4. Although Dr. Aminzadeh does not testify specifically to knowledge of the Li reference, Petitioner has not explained persuasively why this indicates that Dr. Aminzadeh’s testimony as to the SEG confidentiality practices and paper dissemination, as set forth in his Declaration, is inaccurate or misleading.” slip op. at 5

  § 102 anticipation
  Patents in suitUS 9,632,193
• Blackberry Corp. v. Facebook, Inc.Institution denied
  PTAB · Mar 5, 2020 · IPR2019-01596 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1 and 3-6 were anticipated by Peinado or obvious over Peinado and McKelvey.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner did not demonstrate a reasonable likelihood of prevailing with respect to at least one challenged claim. We, therefore, do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “of invention of the ’432 patent “would have had a Bachelors of Science degree in computer or electrical engineering, or equivalent, and 2–3 years of relevant experience working with computer security technology.” Pet. 89. Patent Owner states that “[a] person of ordinary skill in the art . . . would have had approximately the level of education and experience identif[ied] by Petitioner, or a similar level of education and/or experience, with somewhat more education substituting for somewhat less work experience and vice versa.” Prelim. Resp. 4 (citing Storer Decl. ¶ 16). Given the lack of dispute, and for purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art, as it is consistent with the level of skill in 5 the art reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 5

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

    “using the same standard used in federal district court, including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner proposes that the term “dedicated security processor” means “a processor dedicated to providing security functions.” Pet. 910. Patent Owner states that in the copending litigation, the parties have agreed to this construction, and, therefore, Patent Owner does not dispute the proposed construction. Prelim. Resp. 45. For purposes of this decision, we adopt the construction of “dedicated security processor” proposed by Petitioner, as stated above, and agreed to by Patent Owner in the co-pending litigation. The remainder of the claim we interpret in accord with the claim’s ordinary meaning to one skilled in the art at the time of invention, in light of the teachings of the specification and the prosecution history, and do not find it necessary to provide any express claim constructions. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “correctly notes, Peinado’s DRM system and the rendering application are both implemented on a computing device with a single processor. Prelim. Resp. 13. As stated above in the summary of Peinado, security processor 64 runs DRM system 32p in the portable device to authenticate the digital content downloaded from another computer. Ex. 1004, 37:6266. The same DRM system 32p renders the digital content on the portable device. Id. at 36:5362. The claim requires that the “dedicated security processor” validate the file and user access. The claim also requires that the “dedicated security processor” provide the file to “an other processor” that continues processing the file after the user has been validated. There is no “providing” step in Peinado’s security processor 64 embodiment. The same processor performs both the validating and the processing of the file after validation. Petitioner also points to the disclosure of the decrypted content being provided to the rendering application. See Pet. 19. But that “providing” is (1) not shown occur in the embodiment of security processor 64 and (2) not shown to involve “an other processor.” Pointing to another application receiving the content in a completely different embodiment in Peinado is not sufficient to show that Peinado discloses the limitation. Accordingly, we find that the Petition does not show adequately that Peinado anticipates claim 1 of the ’432 patent.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,228,432
• Eis GmbH v. Novoluto GmbHInstitution denied
  PTAB · Feb 10, 2020 · IPR2019-01444 · APJ John E Schneider · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–6 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 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 . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon considering the Petition and the Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we deny the Petition and decline to institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art would have had “a bachelor’s degree in mechanical engineering, biomechanical engineering, or the equivalent, and three or more years of experience in fluid mechanics and pump-based medical devices.” Pet. 4; Ex. 1002 ¶¶ 18–22. Petitioner also contends that “practical experience could qualify one not art], while a higher level of education could offset lesser experience.” Pet. 4; Ex. 1002 ¶¶ 18–22. Patent Owner contends that a person of ordinary skill in the art would have had “a bachelor’s degree or equivalent practical experience in mechanical engineering, biomechanical engineering, biomedical engineering, sexual health or human sexuality, or the equivalent, and three or more years of experience in research, development, or design of devices that interact with the human female body (and specifically the vulva).” Prelim. Resp. 1–2. Patent Owner also contends “[e]xperience in fluid mechanics and pump-based medical devices, though helpful, is not necessary. More practical experience could offset less education and vice versa.” Id. at 2. We have considered the contentions of the parties, and for purposes of this decision, we apply Petitioner’s definition of a person of ordinary skill in the art. Although the invention generally relates to a device for stimulating female erogenous zones, as seen from the discussion below, the design and operation of the device largely relate to issues of mechanical engineering and fluid flow. Thus, we conclude that experience in developing devices that interact with the female body is not needed to define a person of ordinary skill in the art.” slip op. at 6

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

    “51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b); effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, at this stage in the proceeding, we need only construe the claims to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Both the Petitioner and Patent Owner contend that no claim construction is needed at this stage of the proceeding. Pet. 4; Prelim. Resp. 7. As both parties appear to agree as to the meaning of “reference pressure” that is at the heart of the controversy here, we need not expressly construe the claim term here. See Ex. 1002, ¶ 28; Ex. 2001 ¶ 34.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Guan’s bag would result in a negative pressure is based on unsupported assumptions as to how the device of Guan works. For example, Dr. Pisco opines that the rubber mouth described in Guan forms a largely air-tight seal. See Ex. 1002 ¶ 92. Dr. Prisco based this opinion on Guan’s teaching that the rubber mouth comes into contact with the body. Id. As Patent Owner’s declarant, Dr. Jansen, points out, merely bringing the mouth into contact with a body does not teach or imply that an air-tight seal is formed. Ex. 2001 ¶ 109. Other than the reference to the mouth contacting a body, nothing in Guan teaches or suggests an air-tight seal. See Ex. 1004, 3. Similarly, Dr. Prisco opines in detail as to how the device in Guan operates based on a supposition that appears to be guided by the disclosure in the ’851 patent. Ex. 1002 ¶¶ 89–92; see Ex. 2001 ¶¶ 97–108. Guan, however, only describes the different elements present in the disclosed device and provides no explicit discussion as to how those elements operate. opinions that the elements operate in the manner he describes. See Ex. 1002 ¶¶ 89–92. Based on the foregoing, we afford Dr. Prisco’s opinions little weight. Perreira v. Secretary of the Dept. of HHS, 33 F.3d 1375, 1377 (Fed. Cir. 1994). (“An expert opinion is no better than the soundness of the reasons supporting it.”).” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,763,851

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.