- PTAB · Dec 22, 2016 · IPR2015-00554 · APJ Brian P Murphy · IPR · Rehearing
The Board denied Jazz Pharmaceuticals’ rehearing request, leaving intact its determination that claims 1–11 are unpatentable as obvious over the Advisory Committee Art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party who requests rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Expert testimonyDecided for patent owner
“and 9; Ex. 2044, 181:1–23; Ex. 2046 ¶¶ 45–49). Though we did not discuss the expert testimony, we considered it. For example, on the same page of testimony cited by Patent Owner, Dr. Valuck testified that the information sufficient to identify a patient is “whatever the pharmacist believes is required to sufficiently identify the patient in their professional judgment.” Ex. 2044, 98:2–16. Even so, our Decision puts primary emphasis on the claim language and relevant description of the “identifying” element in the specification, not the extrinsic expert testimony relied upon by Patent Owner. See Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1012–13 (Fed. Cir. 2016) (“The legal part of claim construction is the determination of the meaning of the term in the claim in light of the patent’s intrinsic record.”); see also Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005) (en banc) (stating that sources outside the specification should not be “used to contradict claim meaning that is unambiguous in light of the intrinsic evidence.”).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“We made clear that the controlling description of the specification outweighed Patent Owner’s argument and supporting evidence that specific types of information are required to be read into the “identifying” element of the claims. Id. (“Thus, we construe ‘prescription requests [for GHB] containing information identifying patients’ to refer to information identifying a patient, which may include [Patent Owner’s specifically listed information], but is not limited to that information nor requires all of that information.”) (emphasis added). We also cited to all of the expert testimony on which Patent Owner relied for its claim construction, as an indication that we considered the testimony. Id. at 18 (citing Ex. 2044, 97:11–98:5, 99:18–100:10; Ex. 2046 ¶¶ 39–44). We did the same for the “information identifying . . . any and all medical doctors” language, concluding that: The specification does not suggest that failing to include on the prescription one or more pieces of information from the list of a “medical doctor’s name, license number, DEA number, and physician specialty,” as proposed by Patent Owner, means that a prescription fails to contain information regarding “various credentials,” as recited in the claims.” slip op. at 5
Claim constructioncites PhillipsPatents in suitUS 7,668,730 - PTAB · Dec 22, 2016 · IPR2015-00547 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied Jazz Pharmaceuticals’ rehearing request, leaving claims 1–6 unpatentable as obvious over the Advisory Committee Art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“nothing in the specification suggests that excluding one or more pieces of information in the list of a “patient’s name, social security number, date of birth, sex, and complete address information, including city, state and zip code,” as proposed by Patent Owner, means that a prescription fails to contain “information identifying the patient,” as recited in the claims.” slip op. at 5
Claim constructioncites PhillipsPatents in suitUS 7,765,107 - PTAB · Dec 22, 2016 · IPR2015-00551 · APJ Brian P Murphy · IPR · Rehearing
The Board denied Jazz Pharmaceuticals’ rehearing request, leaving claims 1–15 unpatentable for obviousness over the Advisory Committee Art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party who requests rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“PO Resp. 60. We did not find such testimony persuasive, or particularly credible, in view of Korfhage’s express disclosures, Dr. Valuck’s testimony, and Dr. Bergeron’s deposition testimony. Dec. 57–59 (citing Ex. 1007 ¶ 157; Ex. 1037, 276–77; Ex. 1054, 317:13–320:12; Ex. 2047 ¶ 57–59). Patent Owner’s argument is not persuasive given that the ACA drug distribution system was designed to allow a pharmacist to identify and resolve duplicate prescriptions before deciding whether to distribute the drug to a patient (or delete a duplicate caused by data redundancy). Ex. 1003, 184:24–185:7; Ex. 1005, 314 ¶ 6. We also were persuaded by Dr. Valuck’s testimony that it would have been obvious for one of ordinary skill to modify the ACA system “such that the data stored in the central data repository was distributed across multiple databases, as disclosed by Korfhage in order to accommodate cost, efficiency, and the number of prescription requests and associated data.” Ex. 1007 ¶ 157 (cited at Dec. 57–581).” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We also agree with Petitioner that Korfhage does not teach away from the use of distributed databases systems, particularly given the acknowledgement of Dr. Bergeron that Korfhage offered solutions to the problems identified. Id. at 59 (citing Ex. 1037, 276–77; Ex. 1054, 317:13–320:12). We did not overlook or misapprehend Patent Owner’s argument and evidence, rather, we declined to credit them in view of the text of Korfhage, Dr. Valuck’s testimony, and Dr. Bergeron’s deposition testimony. Dec. 56– 59. The pages of Korfhage cited and quoted in our Decision disclose multiple factors “driving information systems to the use of distributed document sets and distributed processing,” and set up “[t]hree major problems” only to discuss “simple solution[s],” a position supported by Dr. Valuck. Dec. 57–59 (citing Ex. 1007 ¶ 157; Ex. 1037 at 276–77). Under cross-examination by Petitioner’s counsel, Dr. Bergeron readily acknowledged that Korfhage’s discussion of data redundancy and matching document evaluation “problems” were paired with disclosed solutions, which undercut his declaration testimony (Ex. 2047 ¶¶ 56–65) relied upon by Patent Owner. Ex. 1054, 317:13–320:12. Our Decision credits Dr. Bergeron’s deposition testimony, which acknowledges the distributed database system solutions disclosed in Korfhage, rather than the speculative new problems hypothesized in his declaration and Patent Owner’s Response.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“nothing in the specification suggests that excluding one or more pieces of information in the list of a “patient’s name, social security number, date of birth, sex, and complete address information, including city, state, and zip code,” as proposed by Patent Owner, means that a prescription fails to contain “information identifying the patient,” as recited in the claims. Dec. 19 (emphasis added). We made clear that the controlling description of the specification outweighed Patent Owner’s argument and supporting evidence that specific types of information are required to be read into the “identifying” element of the claims. Id. (“Thus, we construe ‘prescription requests [for GHB] containing information identifying patients’ to refer to information identifying a patient, which may include [Patent Owner’s specifically listed information], but is not limited to that information nor requires all of that information.”) (emphasis added). We also cited to all of the expert testimony on which Patent Owner relied for its claim construction, as an indication that we considered the testimony. Id. at 18 (citing Ex. 2044, 97:11–98:5, 99:18–100:10; Ex. 2046 ¶¶ 39–44). We did the same for the “information identifying . . . any and all medical doctors” language, concluding that: The specification does not suggest that failing to include on the prescription one or more pieces of information from the list of a “medical doctor’s name, license number, DEA number, and physician specialty,” as proposed by Patent Owner, means that a prescription fails to contain information regarding “various credentials,” as recited in the claims. Id. at 20–21 (citing PO Resp. 33–36; Ex. 1001, 2:22–24, 2:41–42, 4:7–8, 4:8–14, 4:18–20, 4:20–22, 4:7–5:67, 8:4–7, 8:40–44, 10:20–23, Figs. 2A–C, 9; Ex. 2044, 181:1–23; Ex. 2046 ¶¶ 45–49). Though we did not discuss the expert testimony, we considered it. For example, on the same page of testimony cited by Patent Owner, Dr. Valuck testified that the information sufficient to identify a patient is “whatever the pharmacist believes is required to sufficiently identify the patient in their professional judgment.” Ex. 2044, 98:2–16. Even so, our Decision puts primary emphasis on the claim language and relevant description of the “identifying” element in the specification, not the extrinsic expert testimony relied upon by Patent Owner. See Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1012–13 (Fed. Cir. 2016) (“The legal part of claim construction is the determination of the meaning of the term in the claim in light of the patent’s intrinsic record.”); see also Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005) (en banc) (stating that sources outside the specification should not be “used to contradict claim meaning that is unambiguous in light of the intrinsic evidence.”).” slip op. at 8
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,457,988 - PTAB · Dec 22, 2016 · IPR2015-00545 · APJ Brian P Murphy · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and reaffirmed that claims 19–25 are unpatentable as obvious over the Advisory Committee Art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party who requests rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Expert testimonyPatent owner expert discountedDecided for patent owner
“cite to Dr. Bergeron’s Declaration testimony in support. PO Resp. 26–29 (citing Ex. 2047 ¶¶ 27–30); Req. Reh’g 2–5 (citing Ex. 2047 ¶¶ 27–30). Although we did not cite to Dr. Bergeron’s Declaration testimony in our Decision regarding claims 19–25, we did consider Dr. Bergeron’s Declaration testimony. Dec. 2. Dr. Bergeron’s Declaration testimony simply restates Patent Owner’s Response arguments, including the argument that the ACA discloses “the verification is being done by a human, not a computer processor.” Ex. 2047 ¶ 28. We take this opportunity to make explicit that we are not persuaded by Dr. Bergeron’s cited Declaration testimony (Ex. 2047 ¶¶ 27–30) on the issue of whether the ACA discloses or suggests the “verifying” step in claim 19, for the same reasons given in our Decision and above.” slip op. at 7
NonePatents in suitUS 8,589,182 - PTAB · Dec 22, 2016 · IPR2015-00548 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–16 unpatentable as obvious over the Advisory Committee Art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party who requests rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“nothing in the specification suggests that excluding one or more pieces of information in the list of a “patient’s name, social security number, date of birth, sex, and complete address information, including city, state and zip code,” as proposed by Patent Owner, means that a prescription fails to contain “information identifying the patient,” as recited in the claims.” slip op. at 5
Claim constructioncites PhillipsPatents in suitUS 7,895,059 - PTAB · Dec 22, 2016 · IPR2015-00546 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–8 unpatentable as obvious over the Advisory Committee Art under § 103(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“nothing in the specification suggests that excluding one or more pieces of information in the list of a “patient’s name, social security number, date of birth, sex, and complete address information, including city, state and zip code,” as proposed by Patent Owner, means that a prescription fails to contain “information identifying the patient,” as recited in the claims.” slip op. at 5
- Claim Construction › Extrinsic evidence (dictionaries, experts)Decided for petitioner
“Id. at 20–22 (citing PO Resp. 33–36; Ex. 1001, 2:28–30, 47–48, 4:13–6:4, 8:4–7, 40–44, 9:56–60, Figs. 2A–C, 9; Ex. 2044, 181:1–23; Ex. 2046 ¶¶ 45– 49). Though we did not discuss the expert testimony, we considered it. For example, on the same page of testimony cited by Patent Owner, Dr. Valuck testified that the information sufficient to identify a patient is “whatever the pharmacist believes is required to sufficiently identify the patient in their professional judgment.” Ex. 2044, 98:2–16. Even so, our Decision puts primary emphasis on the claim language and relevant description of the “identifying” element in the specification, not the extrinsic expert testimony relied upon by Patent Owner. See Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1012–13 (Fed. Cir. 2016) (“The legal part of claim construction is the determination of the meaning of the term in the claim in light of the patent’s intrinsic record.”); see also Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005) (en banc) (stating that sources outside the specification should not be “used to contradict claim meaning that is unambiguous in light of the intrinsic evidence”).” slip op. at 6
Claim constructioncites PhillipsPatents in suitUS 7,765,106 - Mylan Pharmaceuticals Inc. v. Astrazeneca ABInstitution deniedPTAB · Dec 14, 2016 · IPR2016-01325 · APJ Robert A Pollock · IPR · Institution
The Board denied institution because Mylan did not show a reasonable likelihood of proving claims 1–20 obvious over McLeskey alone or with Howell 1996.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“is likely to be obvious when it does no more than yield predictable results.” Id. at 416. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. We are, nevertheless, cautioned not to “rely on hindsight reasoning to piece together elements to arrive at the claimed invention.” In re NTP, Inc. 654 F.3d 1279, 1299 (Fed. Cir. 2011) (“Care must be taken to avoid hindsight reconstruction by using the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.” (internal quotations and citations omitted)). Thus, a finding of obviousness, “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Accordingly, a party petitioning the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). D.” slip op. at 19
- Skill levelSkill level board ownDecided for patent owner
“Person of Ordinary Skill in the Art. The parties’ propose similar, albeit non-identical, definitions of one of ordinary skill in the art, both of which are consistent with the high level of ordinary skill demonstrated by the prior art asserted in the Petition. See Pet. 14–15; Prelim. Resp. 11–12. Discerning no present conflict between the parties’ proposals, we rely on the level of ordinary skill in the art of developing and treating hormone dependent diseases of the breast as demonstrated by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). B.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“patentable weight, the term “therapeutically significant” should be construed to mean “any blood plasma fulvestrant concentration greater than or equal to at least 2.5 ngml-1 that is achieved for at least 4 weeks after injection.” Pet. 17–18. Patent Owner does not argue that Petitioner’s proposed interpretation is unreasonable, but contends that the meaning of the term is clear from the Specification and context of the claim phrase itself. See Prelim. Resp. 16 (citing Ex. 2003 ¶ 68; Ex. 1001, 9:24–27 (expressly defining “therapeutically significant” fulvestrant blood plasma levels as “at least 2.5 ngml-1, ideally at least 3 ngml-1, at least 8.5 ngml-1, and up to 12 12 Our reasoning extends to the wherein clauses of dependent claims 2 and 10, also challenged by Petitioner at page 16, footnote 9, of the Petition. ngml-1 of fulvestrant [] achieved in the patient.”). We agree with Patent Owner. No express construction of this term is required.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“and 9, “wherein the method achieves a therapeutically significant blood plasma fulvestrant concentration of at least 2.5 ngml-1 for at least four weeks,” is merely a statement of intended result entitled to no patentable weight. Pet. 16–17. For the reasons set forth at pages 12–16 of Patent Owner’s Preliminary Response, we do not find Petitioner’s argument persuasive.12 For example, rather than merely stating the result of intramuscularly administering the recited formulation, as Petitioner argues, the wherein clause dictates both the administration duration and dose of the formulation, i.e., an amount sufficient to provide a therapeutically significant blood plasma fulvestrant concentration of at least 2.5 ngml-1 for at least four weeks. See Prelim. Resp. 15 (relying on Exhibits 2002 ¶ 37–39, Ex. 2001 ¶¶ 33–37, and citations therein). That these parameters are further limited in claims 2, 10 (“the therapeutically significant blood plasma fulvestrant concentration is at least 8.5 ngml-1”) further indicates that the wherein clauses provide defining characteristics. See Prelim. Resp. 15 (citing Ex. 2003 ¶ 60).” slip op. at 16
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,329,680 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCNo claims unpatentablePTAB · Dec 7, 2016 · IPR2015-01367 · APJ Matthew R Clements · IPR · Final written decision
Claims 1–3, 6–9, and 12–14 were not shown unpatentable because Reed and Mahany did not teach interleaving S-blocks to form packet blocks, and Webb did not cure that deficiency.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The ’831 patent equates “encoding” with interleaving several times. The ’831 patent discloses, for example, that “[p]ackets are encoded into packet blocks by first interleaving the packets together in a register. The interleaved packet block is then transmitted to the receiver. Because the packets are interleaved, a single burst error is dispersed over multiple packets.” Ex. 1001, 2:34–35 (emphasis added). In the detailed description of transmitter 20, an outgoing message is “transferred to a register 96/98,” which “interleaves a message into a large packet block size.” Id. at 4:10–13 (emphasis added). Figure 9 of the ’831 patent, which “is a schematic diagram of a transmitter register used for encoding packets into a variable sized packet block” (id. at 3:18–20) (emphasis added), discloses the use of interleaving as the block coding technique (id. at 6:24–25 (“FIG. 9 shows a diagram for a block coding technique (interleaving) according to the invention . . . .”)). See also id. at Figs. 10, 11, 6:49–65. Also, the ’831 patent describes the point of novelty as “varying the number of bytes in each packet interleaved together according to receiver speed.” Id. at 6:66–7:2 (emphasis added); see also id. at 7:5–30. We, therefore, agree that the proper construction of “encoding packets into packet blocks” is “forming blocks by interleaving packets together.”1” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“’831 patent as performing the recited function to be the CPU performing one of the algorithms identified by Petitioner. Inst. Dec. 8–9. Patent Owner argues that the function is “performed by ‘memory/CPU,’ and not just the CPU alone.” PO Resp. 16–17 (citing Ex. 1001, Figs. 16–18, 8:16–31). The ’831 patent discloses that “[a] memory and CPU 108 determines the appropriate packet block size for the current car travel speed from signal 70.” Ex. 1001, 7:67–8:2 (emphasis added). “The packet block size is determined by reading prestored packet block size values in memory 108.” Id. at 8:3–4 (emphasis added). According to the ’831 patent, “the travel speed received from signal 70 is used as an address to read the memory location containing the appropriate packet block size value.” Id. at 8:5–8 (emphasis added). “The message from receiver/register 102 and the packet block size value determined in memory/CPU 108 are both input to a register 106.” Id. at 8:10–12 (emphasis added). We are persuaded, therefore, that the structure disclosed in the ’831 patent as performing the recited function is not only the CPU, but also the memory, performing one of the algorithms identified by Petitioner.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“subsequent to institution, that “encoding packets into packet blocks” means “forming blocks by interleaving packets together,” a construction which we have adopted. Accordingly, we revisit whether the combination of Reed and Mahany teaches “encoding packets into packet blocks,” as recited in independent claim 1, and “an encoder for combining and varying the number of packets transmitted in each of the packet blocks,” as recited in independent claim 9.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Nevertheless, even assuming that Reed uses “blocks of data” to include S-blocks, we find that Reed’s teaching of “interleaving two or more blocks of data within each packet of data” (Ex. 1006, 2:63–68) is ambiguous and should not be read so broadly when Reed is considered as a whole. Petitioner would like us to interpret the sentence to mean interleaving the data from a first block of data (i.e., S-block) in a packet with data from a second block of data (i.e., S-block) in the packet—i.e., “interleaving two or more blocks of data [with each other] within each packet of data.” However, an equally plausible interpretation is that it means “interleaving [the data within each of] two or more blocks of data within each packet of data.” In other words, interleaving the data within a packet’s first block of data (i.e., R-blocks interleaved in a first S-block) and, separately, interleaving the data within the packet’s second block of data (i.e., R-blocks interleaved in the second S-block). In the latter interpretation, no data from the first block of data (i.e., S-block) are interleaved with data from the second block of data (i.e., S-block). We find that only this latter interpretation is supported by Reed’s disclosure. For example, in Figure 4, Reed discloses interleaving the data within S-blocks in a packet of data, but not interleaving the data between S-blocks. Ex. 1006, 3:20–22, Fig. 4. Reed further discloses employing an “interleaving scheme . . . over each S-block (690 bits), FIG. 4.” Id. at 4:39–41 (emphasis added). Reed similarly claims “concatenating two or more blocks of data and interleaving the bits of the data in each block.” Id., claim 6 (emphasis added). We find no similar support for Petitioner’s interpretation of Reed. Given the lack of support for Petitioner’s interpretation in the rest of the disclosure in Reed, we are not persuaded that a person of ordinary skill in the art, reading this ambiguous sentence in the Summary of Invention of Reed, would have understood it to be teaching interleaving one of Reed’s S-blocks with another of Reed’s S-blocks.” slip op. at 17
Patent outcomesUS 5,602,831 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 5,602,831 - Hamilton Beach Brands, Inc. v. F’Real Foods, LLCInstitution deniedPTAB · Nov 30, 2016 · IPR2016-01105 · APJ Brian P Murphy · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood of proving claims 1 and 6–11 anticipated by Neilson or claims 1 and 5–11 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“October 6, 2014—the date the 2014 Complaint alleging infringement of the ’658 patent was served on Petitioner. Prelim. Resp. 5, 11. It is undisputed, however, that Patent Owner did not own the ’658 patent at the time the 2014 Complaint was filed and served. Pet. 4; Prelim. Resp. 7; Ex. 1030 ¶¶ 5–7. Title to the ’658 patent was transferred to Patent Owner by an assignment executed January 25, 2016. Pet. 4; Prelim. Resp. 9; Ex. 1030 ¶ 7, Ex. C (patent assignment). Accordingly, Patent Owner lacked standing to sue for infringement of the ’658 patent at the time the 2014 Complaint was filed and served. Paradise Creations, Inc. v. UV Sales, Inc., 315 F.3d 1304, 1309 (Fed. Cir. 2003) (“[I]n order to assert standing for patent infringement, the plaintiff must demonstrate that it held enforceable title to the patent at the inception of the lawsuit.”). The patent counts of the 2014 Complaint were jurisdictionally defective, and the defect could not be cured after the filing date of the complaint, e.g., by a subsequent assignment or by joining the patent title holder to the lawsuit. Alps S., LLC v. Ohio Willow Wood Co., 787 F.3d 1379, 1385 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 897 (2016) (“The party asserting patent infringement is ‘required to have legal title to the patents on the day it filed the complaint and that requirement can not be met retroactively.’”) (quoting Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359, 1366 (Fed. Cir. 2010)). The Delaware district court was required to—and actually did— dismiss the patent infringement counts of the 2014 Complaint for lack of Article III standing. Ex. 1031 n.1 (Delaware district court order granting motion for voluntary dismissal: “the court lacks jurisdiction to make a judgment on the merits”); see also, Abraxis, 625 F.3d at 1367 (“[T]he action must be dismissed because [plaintiff] lacked standing on the day it filed the action.”); Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198, 1203 (Fed. Cir. 2005) (“[I]f the original plaintiff lacked Article III initial standing, the suit must be dismissed, and the jurisdictional defect cannot be cured by the addition of a party with standing, . . . nor by the subsequent purchase of an interest in the patent in suit.”) (citing Paradise, 315 F.3d at 1309). Thus, the allegation of infringement of the ’658 patent in the 2014 Complaint was not a proper federal pleading and did not trigger the one-year time period under 35 U.S.C. § 315(b). Petitioner was not served with a complaint properly alleging infringement of the ’658 patent until January 2016. The instant petition was filed in May 2016. Accordingly, the Petition is not time-barred under § 315(b).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unpatentable under 35 U.S.C. § 102(b) and claims 1 and 5–11 as unpatentable under § 103. Pet. 9. Based on the arguments and evidence presented in the Petition and Preliminary Response, we determine Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Therefore, institution of an inter partes review is denied.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“of the specification of the patent in which they appear. 37 C.F.R. § 100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner and Patent Owner offer competing constructions for several claim terms. Pet. 18–20; Prelim. Resp. 26–35. We determine that only the following claim terms require express construction for purposes of this Decision. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (citation omitted).” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“position.” During a mixing operation, the ’658 patent describes how the cup holder is reciprocated to move axially upward so the mixing element is in a position within the liquid-filled cup, i.e. the recited “first position,” then reciprocated downward so the mixing element is moved upward to the recited “second position” closer to the opening at the top of the cup, “to allow the blade to pass through the full contents of the cup more than one time.” Ex. 1001, 3:58–64. When the mixing element is moved upward within the cup to the second position, the weight of the splash shield must be sufficient to keep the liquid-filled cup in the cup holder. Id. at 4:3–10 (“heavy enough to create sufficient downward force on the cup to overcome any upward force created by the mixing blade being moved upwardly in the cup”). The force generated by upward movement of the mixing element is not further described in the ’658 patent, although the ’658 patent provides a preferred embodiment where a splash shield weighing 5 pounds (dependent claim 5) provides sufficient downward force to perform the recited function. Id. at 4:20–23. Petitioner argues that “sufficient mass” in claim 1 should be construed in accordance with the interpretation allegedly offered by Patent Owner in the dismissed patent action: “the splash shield applies sufficient weight to the top of the cup to retain the cup in the cupholder during mixing.” Pet. 19 (no citation). Petitioner further argues that “the mass of the splash shield” limitation in claim 6 should be construed in accordance with the construction allegedly offered by Patent Owner in the dismissed patent action: “the splash shield applies sufficient weight to the top of the cup to prevent separation of the cup from the cupholder during mixing.” Id. (no citation). Patent Owner responds with a slightly different interpretation of a splash shield having a “sufficient mass”: “heavy enough to retain the vessel within the holder during relative movement of the mixing element and vessel.” Prelim. Resp. 31 (citing Ex. 1001, 4:3–24; Ex. 2025 (definition of “sufficient”)). Both parties appear to agree that the ’658 patent describes the “sufficient mass” of the splash shield in functional terms as enough weight to retain the vessel or cup within the holder during mixing. Ex. 1001, 3:65– 4:23. Based on the description provided in the ’658 patent, the claim language at issue in claim 1 – “the splash shield having sufficient mass to retain the vessel within the holder during relative movement of the mixing element and vessel from the first position to the second position when liquid is present in the vessel” – is entitled to its plain and ordinary meaning: “the splash shield is heavy enough to create sufficient downward force on the vessel so as to retain the vessel within the holder when the mixing element moves upwardly in the vessel from the first position to the second position when liquid is present.” See Ex. 1001, 4:3–10 (“heavy enough to create sufficient downward force on the cup to overcome any upward force created by the mixing blade being moved upwardly in the cup”). The claim language in claim 6 “the mass of the splash shield preventing separation of the holder and the vessel during translation” is similarly construed to mean “the splash shield is heavy enough to create sufficient downward force on the vessel so as to prevent separation of the holder and the vessel during translation of the mixing element or holder.”” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,520,658 - Microsoft Corp. v. Windy City Innovations LLCInstitution deniedPTAB · Nov 29, 2016 · IPR2016-01138 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 18–49, 54–57, and 59–63 would have been obvious over Brown and Tang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“alternatives” to allow members in “at least one group . . . [to] send communications and receive communications . . . wherein at least some of the communications are received in real time via the Internet network.” See, e.g., Ex. 1001, 23:59–67 (emphases added). Here, “wherein at least some of the communications are received in real time” refers to the communications sent and received by members of “at least one group.” Claim 1 is clear that both client software alternatives must “allow at least some of the participator computers to form at least one group in which members can send communications and receive communications.” Thus, the communications in a group pursuant to each of the client software alternatives must include real-time communications.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“alternatives” to allow members in “at least one group . . . [to] send communications and receive communications . . . wherein at least some of the communications are received in real time via the Internet network.” See, e.g., Ex. 1001, 23:59–67 (emphases added). Here, “wherein at least some of the communications are received in real time” refers to the communications sent and received by members of “at least one group.” Claim 1 is clear that both client software alternatives must “allow at least some of the participator computers to form at least one group in which members can send communications and receive communications.” Thus, the communications in a group pursuant to each of the client software alternatives must include real-time communications.” slip op. at 9
§ 103 obviousnessPatents in suitUS 8,473,552
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.