- Avx Corporation v. Greatbatch LtdAll claims unpatentablePTAB · Dec 30, 2015 · IPR2014-01361 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–43 are unpatentable under § 103; proposed substitute claims 44 and 45 are not shown patentable, and the Second Motion to Amend is denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In our Decision on Institution, we discussed the meaning of the transitional phrase “consisting essentially of,” but otherwise found that no claim terms required express construction. Dec. on Inst. 4. In its Second Motion to Amend, Patent Owner does not dispute our interpretation of “consisting essentially of,” or propose constructions for any additional claim terms. Upon review of Patent Owner’s evidence and arguments, we conclude that no explicit constructions are required in order to resolve the issues pending before the Board.” slip op. at 6
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“establishing that it is entitled to add proposed substitute claims 44 and 45. 37 C.F.R. § 42.20(c). As part of this showing, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. 37 C.F.R. § 42.121. Upon review of the Second Motion to Amend, we are persuaded that the requirements of 37 C.F.R. § 42.121 have been met. For example, Patent Owner seeks to add only two substitute claims, each of which serves to narrow the scope of original claim 18. Mot. 17–18. Patent Owner also identifies exemplary electrolytes disclosed in the originally-filed application that fall within the scope of proposed substitute claims 44 and 45. Id. at 9 (citing Ex. 1010, 33, 35–36 (disclosing an electrolyte containing ethylene glycol, water, isobutyric acid, and ammonium hydroxide (which results in an ammonium salt of the organic acid) with a pH of 4.9, a conductivity of 7.1 mS/cm, and an anode breakdown voltage of 395 volts)). Thus, we focus on whether Patent Owner has met its burden of proof to show that proposed substitute claims 44 and 45 are patentable over the prior art of record.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentable
“Clark, however, discloses successfully substituting acetic acid in an electrolyte solution with “other low molecular weight paraffin acids,” including butyric, propionic, and lactic acids, as well as forming corresponding ammonium salts of these organic acids. Ex. 1003, 2:40–46, 3:46–61. Likewise, GB 466,193 broadly discloses that acetic acid may be replaced in an electrolyte solution with organic acids of the aliphatic series, including butyric acid and isobutyric acid. Ex. 1015, 3:73–79. In its Second Motion to Amend, Patent Owner does not point to any persuasive evidence to support or explain why a person of ordinary skill in the art would not have considered isobutyric acid, as implied in Clark and expressly identified in GB 466,193, to be a suitable substitute for acetic acid in the electrolyte of Shah. Indeed, similar to the disclosures of Clark and GB 466,193, the ’117 patent discloses that “other relatively weak organic acids of the general formula cnH2+nO2 (where n=2 to 7) are acceptable.”9 Thus, we are not persuaded that Shah, Clark, and GB 466,193 fail to teach or suggest every limitation of proposed substitute claim 44.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsObjective indicia no nexusNot shown unpatentable
“1 of Shah is ten times higher than electrolyte 2 of the ’117 patent, and the resulting conductivity (47.5 mS/cm) is 6.7 times higher than that of electrolyte 2 of the ’117 patent (7.1 mS/cm). First Mot. to Amend 9 (Table 3); Ex. 1001, 2:14–16 (confirming that the ammonium salt “provides electrical conductivity” in the electrolyte). Given the disclosure of Evans that anode breakdown voltage decreases with increasing conductivity (conductivity being the inverse of resistivity), Patent Owner does not explain persuasively why the 150 volt difference in anode breakdown voltage between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is “contrary to” the teachings of Evans. First Mot. to Amend 9 (Table 3),11; Ex. 2004, 3 (Figure 4). Nor does Patent Owner explain why a person of ordinary skill in the art could not use the disclosure of Evans to modify the resistivity of the electrolyte of Shah, Clark, and GB 466,193 to obtain an anode breakdown voltage within the 370 to 400 volt range of proposed substitute claim 45. Thus, we are not persuaded that the 150 volt difference between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is nonobvious or surprising. Patent Owner also contends that if acetic acid was equivalent to isobutyric acid, such that it could be replaced interchangeably, “a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 Patent electrolyte, both of which have almost identical pH~4.9.” First Mot. to Amend 11. We note, however, that, as set forth in Table 3 above, electrolyte 1 of Shah has a conductivity that is 6.7 times higher than electrolyte 2 of the ’117 patent, as well as ten times the ammonium constituent, two and a half times the acid constituent, half the ethylene glycol, and five times the phosphoric acid as compared to electrolyte 2 of the ’117 patent. In view of the wide difference in constituents and resulting conductivity levels between the two electrolytes, and in view of the teaching of Evans that anode breakdown voltage depends on the resistivity of the electrolyte, Patent Owner provides insufficient argument or evidence to explain why one of ordinary skill in the art would expect that “[i]f acetic acid were equivalent to isobutyric acid . . . a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 patent electrolyte . . . .” First Mot. to Amend 11. Accordingly, even if arguments made in the First Motion to Amend were considered, we would still not be persuaded that proposed substitute claim 45 is patentable over the prior art. Thus, we are not persuaded that Patent Owner has carried its burden to demonstrate, by a preponderance of the evidence, that proposed substitute claim 45 is patentable over the prior art of record.” slip op. at 16
Patent outcomesUS 6,687,117 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,687,117 - Servicenow, Inc. v. BMC Software, Inc.Institution deniedPTAB · Dec 18, 2015 · IPR2015-01329 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 4, and 7 obvious over Glasser and Davis.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner. Petitioner’s evidence does not establish that the ACLs in Glasser’s system are stored in a folder or file within a hierarchical namespace. To the contrary, the evidence shows that Glasser stores the ACLs in registry 167, separate from the hierarchically organized arrangement of folders and files that Petitioner identifies as the asserted “objects” defined in the ’586 patent. See Pet. 34 (arguing that the Windows 95 “folders and files [in Glasser and Davis] qualify as ‘objects’”), 35 (“Glasser and Davis confirm that folders and files are self‐contained entities that contain data, and therefore, qualify as ‘objects’ that were added to the namespace.”). Petitioner also acknowledges that “[a] folder object in Glasser can inherit values from the access control list (ACL) of its parent folder” (Pet. 43 (emphasis added)), which is not the same thing as inheriting ACL values from the parent folder. Therefore, Petitioner has not provided sufficient evidence to establish that i) the ACLs are contained in Glasser’s hierarchy of folders and files, which are the recited “objects” identified by Petitioner, and ii) the ACLs are “shar[ed] . . . with a plurality of the one or more computer system[s],” because the ACLs are not dynamically inherited by a child folder (the recited “instance” object) from a parent folder, i.e., “from the prototype” object, as recited in claim 1 of the ’586 patent. For the reasons given above, we are not persuaded by Petitioner that Glasser or Davis discloses the self-contained “objects” defined in the ’586 patent or “sharing the plurality of objects with a plurality of the one or more computer system[s]” by “dynamic[] inherit[ance],” as recited in claim 1. Claims 4 and 7 depend from claim 1. Therefore, for the same reasons, we are not persuaded by Petitioner’s obviousness argument regarding claims 4 and 7. III. CONCLUSION Petitioner has failed to demonstrate a reasonable likelihood of prevailing with respect to at least one of the claims challenged in this Petition, based on the ground asserted and information presented therein. IV. ORDER For the reasons given, it is ORDERED that the Petition is denied.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“according to their broadest reasonable interpretation in light of the patent specification. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279–81 (Fed. Cir. 2015). Under the broadest reasonable interpretation standard, we assign claim terms their ordinary and customary meaning, as understood by one of ordinary skill in the art, in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The ’586 patent provides the following definition of the term “object”: “As used herein, an object is a self‐contained entity that contains data and/or 1 U.S. Patent No. 5,956,715 issued September 21, 1999 to Glasser et al., on an application filed September 23, 1996, which is a continuation of an earlier application filed December 13, 1994. Ex. 1003 (“Glasser”). Petitioner asserts that Glasser qualifies as prior art under 35 U.S.C. §§ 102(a), (e). Pet. 21. 2 Davis, selected excerpts from Fred Davis, THE WINDOWS BIBLE, Peachpit Press (1996). Ex. 1004 (“Davis”). Petitioner asserts that Davis qualifies as prior art under 35 U.S.C. § 102(b). Pet. 22. procedures to manipulate the data. Objects may be stored in a volatile memory and/or a nonvolatile memory.” Ex. 1001, 9:19–22. The ’586 patent uses lexicography to define the term “object” with reasonable clarity, deliberateness, and precision. Petitioner and Patent Owner both agree to the broadest reasonable construction of “object” as it is defined in the ’586 patent. Pet. 14, 16; Prelim. Resp. 8, 10. Therefore, we construe the term “object” as “a self-contained entity that contains data and/or procedures to manipulate the data, which may be stored in a volatile memory and/or a nonvolatile memory.”3” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Petitioner’s evidence does not establish that the ACLs in Glasser’s system are stored in a folder or file within a hierarchical namespace. To the contrary, the evidence shows that Glasser stores the ACLs in registry 167, separate from the hierarchically organized arrangement of folders and files that Petitioner identifies as the asserted “objects” defined in the ’586 patent. See Pet. 34 (arguing that the Windows 95 “folders and files [in Glasser and Davis] qualify as ‘objects’”), 35 (“Glasser and Davis confirm that folders and files are self‐contained entities that contain data, and therefore, qualify as ‘objects’ that were added to the namespace.”). Petitioner also acknowledges that “[a] folder object in Glasser can inherit values from the access control list (ACL) of its parent folder” (Pet. 43 (emphasis added)), which is not the same thing as inheriting ACL values from the parent folder. Therefore, Petitioner has not provided sufficient evidence to establish that i) the ACLs are contained in Glasser’s hierarchy of folders and files, which are the recited “objects” identified by Petitioner, and ii) the ACLs are “shar[ed] . . . with a plurality of the one or more computer system[s],” because the ACLs are not dynamically inherited by a child folder (the recited “instance” object) from a parent folder, i.e., “from the prototype” object, as recited in claim 1 of the ’586 patent. For the reasons given above, we are not persuaded by Petitioner that Glasser or Davis discloses the self-contained “objects” defined in the ’586 patent or “sharing the plurality of objects with a plurality of the one or more computer system[s]” by “dynamic[] inherit[ance],” as recited in claim 1. Claims 4 and 7 depend from claim 1. Therefore, for the same reasons, we are not persuaded by Petitioner’s obviousness argument regarding claims 4 and 7.” slip op. at 13
Claim construction§ 103 obviousnessPatents in suitUS 6,895,586 - Arris Group, Inc. / Tellabs, Inc. et al. v. Cirrex Systems LLCAll claims unpatentablePTAB · Dec 2, 2015 · IPR2014-00815 · APJ Trenton A Ward · IPR · Final written decision
Claim 30 is unpatentable as anticipated by Nicholson and Yokoyama and obvious over Shih.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“claim language. Bell Atl. Network Servs., Inc. v. Covad Comm. Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). To overcome this presumption, the patentee must “clearly set forth” and “clearly redefine” a claim term away from its ordinary meaning. Id. The disavowal must be “unmistakable” and “unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2012). This standard is “exacting.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). We do not find that Patent Owner has met this exacting standard, and, in the absence of an express definition for the term “thin-film filter,” we decline to incorporate Patent Owner’s lengthy recitation as the broadest reasonable interpretation of the term “thin-film filter.” In view of the plain and ordinary meaning of the term “thin-film filter” and the disclosure in the ’953 patent Specification, we construe the term “thin-film filter” to mean “a filter comprised of stacked layers for filtering light.”” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Claim 30 further requires “a mask in intimate contact with at least one of said filter surfaces, said mask substantially opaque in at least some spectral region.” For this claim limitation, Petitioner relies upon Nicholson’s disclosure of absorbance layer 12, shown in the annotated Figure 1 above. Pet. 31 (citing Ex. 1005, 3:23–25). Nicholson states that the “absorbance layer 12 [is] formed of highly optical absorbent material such as carbon black.” Ex. 1005, 3:24–25. Petitioner argues that this highly absorbent material, such as carbon black, would be substantially opaque in at least some spectral region. Pet. 31–32 (citing Ex. 1003 ¶ 94). As discussed above, we construe a mask as “a material that blocks the passage of at least selected photons.” We are persuaded that Petitioner sufficiently demonstrates that absorbance layer 12 in Nicholson provides a material that blocks the passage of at least selected photons. In its Response, Patent Owner argues that Nicholson does not anticipate because it fails to teach a thin-film filter with layers having packing factors approaching 100%. PO Resp. 6–7. As we do not adopt Patent Owner’s proposed construction of “thin-film filter” requiring these limitations, Patent Owner’s arguments are moot. In fact, during the oral argument, Patent Owner conceded that, if the Board were to adopt the same construction for “thin-film filter” as set forth in the decision to institute, Nicholson would anticipate claim 30. Tr. 38.5 As discussed above, we maintain the same construction for “thin-film filter” as in the decision to institute. Dec. on Inst. 6. For the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that claim 30 is anticipated by Nicholson.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“To determine whether there was an apparent reason to combine the known elements in the way a patent claims, it will often be necessary to look . . . [at] the background knowledge possessed by a person having ordinary skill in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Petitioner argues that thin-film filters were well known in the art. Pet. 25 (citing Ex. 1003 ¶ 45). As discussed above, we construe “thin-film filter,” to mean “a filter comprised of stacked layers for filtering light.” Shih discloses that antireflection coatings are comprised of “layers of TiO2 and SiO2” and that “[t]he antireflection coatings enhance the transmission of light in the forward direction through the input fiber 20.” Ex. 1004, 4:42– 48. Thus, we are persuaded that Petitioner has presented sufficiently an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (internal quotation marks omitted). For the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that claim 30 would have been obvious in view of Shih. slip op. at 24
Patent outcomesUS 6,404,953 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,404,953 - Avx Corporation / Avx Filters Corporation v. Greatbatch, LtdAll claims unpatentablePTAB · Oct 21, 2015 · IPR2014-00697 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1, 2, 4, 6, 7, 9, 11, 13–20, 23, 25, and 26 are unpatentable as obvious over Stevenson and Hazzard, with claims 6, 7, 18, and 19 also obvious over Colburn.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Mr. Galvagni’s testimony is consistent with Patent Owner’s argument that an electrical design expert would be involved in the design of the electrical connections of the feedthrough capacitor assembly, and with the prior art of record, which discloses various methods of connecting, arranging, and electrically coupling the components of the disclosed feedthrough filter capacitor assemblies. See, e.g., Ex. 1001, 1:6–8, 4:66–5:4, 10:14–28; Ex. 1012, 1:27–33, 4:36–43, Fig. 16. Thus, we conclude that a person of ordinary skill in the art would have a degree in electrical engineering, chemistry, or physics, or a related field, and would have work experience in the electrical or structural design of EMI filter capacitors or assemblies.4 4 Patent Owner asserts a level of ordinary skill in the art that is higher than that asserted by Mr. Galvagni, including “advance knowledge” of electrical filtering concepts. PO Resp. 3. We note that, in general, a lower level of skill in the art favors a determination of nonobviousness, while a higher level of skill favors a finding of obviousness. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. ANALYSIS A. Claim Construction In the Decision to Institute, we determined that resolution of the issues presented in the Petition did not require explicit construction of any claim terms. Dec. on Inst. 8. We did, however, provide guidance as to the scope of the term “feedthrough filter capacitor.” Id. at 8–9. During trial, neither party asserted that the Board’s prior discussion of “feedthrough filter capacitor” was in need of revision or that any claim terms required construction. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (noting that only claim terms that are in controversy need be construed, “and only to the extent necessary to resolve the controversy”).” slip op. at 6
- Expert testimonyPetitioner expert creditedDenied
“As discussed above, we are not persuaded that a person of ordinary skill in the art must be an electrical designer of EMI filter capacitors, as asserted by Patent Owner. Moreover, a declarant’s expertise and experience need not match perfectly the experience and education of a person of ordinary skill in the art to provide testimony. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010). The declarant must, instead, have sufficient “knowledge, skill, experience, training, [and] education” of such specialized nature to assist the trier of fact to understand the evidence. Id. (quoting Fed. R. Evid. 702). Mr. Galvagni testifies that he has over 50 years of experience in the field of capacitors, including EMI filter capacitors, and has published numerous technical articles and papers in this field, including on the topics of “low inductance capacitors, actuators, and passive components.” Ex. 1002 ¶ 3. He also testifies that he is named as an inventor on at least 55 U.S. Patents related to capacitors, filters, or similar electronic structures, and has work experience in the design of filter capacitors similar to the ’627 patent, including capacitors with internally connected common ground planes, multiple capacitor access through vertical feeds, and non-circumferential terminations. Ex. 1002 ¶ 5; Ex. 1018 ¶ 8; Ex. 1024 ¶¶ 3, 6, 10. Petitioner contends this work experience in feedthrough filter capacitor construction and design would be helpful in understanding the construction and design of the EMI filter capacitor assemblies claimed in the ’627 patent. Resp. to Mot. to Excl. 3. The claims of the ’627 patent are directed to a feedthrough filter capacitor assembly constructed of various individual components. Ex. 1001, 10:64–11:8. Upon review of Mr. Galvagni’s work experience, including his experience relating to the construction and manufacture of EMI filters, we conclude that an adequate relationship exists between Mr. Galvagni’s education and work experience and the claimed invention. See SEB S.A., 594 F.3d at 1373 (finding no error in admitting testimony where the proffering party established an adequate relationship between the expert’s work experience and the claimed invention). Accordingly, we deny Patent Owner’s Motion to Exclude the testimony of Mr. Galvagni.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“The evidence of record, however, demonstrates that internally grounding a feedthrough capacitor was known in the art, as was the decreased attenuation from such a design. Modifying a known device, using a known method, to achieve a predictable result, is obvious, even if one is willing to accept a known loss in performance others sought to avoid. KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 16
Patent outcomesUS 5,905,627 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 5,905,627 - Ubisoft Entertainment SA v. Princeton Digital Image CorporationAll claims unpatentablePTAB · Oct 16, 2015 · IPR2014-00635 · APJ Benjamin D M Wood · IPR · Final written decision
Claims 1–13, 15–18, and 21–23 are unpatentable based on the grounds decided in the final written decision.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“parenthetical statements of intent” into our construction, because the ’129 patent expressly defined “virtual environment” to include those statements. Dec. on Inst. 8. Petitioner fails to persuaded us to modify that construction; thus, as in the Decision on Institution, we adopt the Specification’s express definition of “virtual environment,” which is “a computer-simulated environment (intended to be immersive) which includes a graphic display (from a user’s first person perspective, in a form intended to be immersive to the user), and optionally also sounds which simulate environmental sounds.” Id. (quoting Ex. 1001, 1:22–33). However, we agree with Petitioner that the term should be construed to encompass the specific embodiments that the ’129 patent describes. As the Federal Circuit has noted, “the specification is always highly relevant to the claim construction analysis,” and, in fact, “is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (internal citation and quotation marks omitted). Here, given that the Specification does not elucidate what it means by “intended to be immersive to the user,” and given that the phrase is subjective, we find the specific embodiments discussed in the Specification to be particularly informative. As part of “the preferred VR program,” Figure 11 depicts a group of simple cylindrical objects that appear to change height in response to the sound of drums. Ex. 1001, 18:16–33. Also in the “preferred VR program embodiment,” words representing the lyrics of a song are displayed as the words are vocalized. Id. at 18:49–53. Further, as Petitioner notes, the Specification teaches that the graphic display generated by a VR system can be either two-dimensional or three-dimensional, and can be displayed on a single flat screen display that need not be stereoscopic. Pet. 4 (citing Ex. 1001, 1:34–35, 8:7–13).7 Given that a claim construction that excludes a preferred embodiment is “rarely, if ever, correct,” Vitronics, 90 F.3d at 1583, it is appropriate to construe “virtual environment” broadly enough to encompass these displays. slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner
“Having reviewed the ’129 patent, we determine that the Specification clearly associates the following structure with the first two recited functions: (1) a source of music and/or a control track, such as a four-track audio tape, video-game cartridge or compact disk (CD); and (2) a processor programmed to generate control signals from the input music and/or control track and send the control signals to the VR processor. For example, in discussing Figure 1, the Specification states: 10 The parties make essentially the same arguments with respect to two other means-plus-function limitations: “means for receiving said music signal in digital or analog form, and processing said music signal to produce control information for modification of objects in the virtual environment” (claim 13); and “means for supplying the music signal to the means for producing the virtual environment” (claim 18). See PO Resp. 15–16, 21–22; Pet. Reply 5–8. The analysis that follows applies equally to these limitations, and we determine that the structure that corresponds to the “supplying” function of claim 12 also corresponds to the functions recited in these limitations. An analog-to-digital conversion circuit within Acoustic Etch unit 3 receives and digitizes a music signal from source 1. The music signal is optionally accompanied by one or more prerecorded control tracks corresponding to the music signal. . . . Analyzer 5[11] within Acoustic Etch unit 3 receives the digitized output of [music source 1 via analog-to-digital converter 4], and generates control signals by processing the music signal (or both the music signal and the control tracks). The control signals output from analyzer 5 are supplied through interface 6 to VR processor 7 for use within processor 7 for controlling generation of the virtual environment.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“There is no dispute that Tsumura’s teaching of storing music data, including “stored pitch data” and other vocal data relating to the vocal features of the music, corresponds to claim 10’s step of “prerecording a control track having audio and/or control information corresponding to an audio signal;” stored music data constitute the control track, and the vocal data, including the pitch and strength data, constitute the claimed control information that corresponds to an audio signal. Further, we agree with Petitioner that Tsumura teaches operating the computer system in accordance with this control track, in that, among other things, the computer system will display messages to a user that depend on a comparison of the stored data and the user’s vocal performance. We have considered Patent Owner’s contrary evidence and arguments, but do not find them persuasive. Neither Patent Owner nor Dr. Kesan explains why generating and displaying messages to a user based on the comparison of stored music data and the user’s actual voice does not constitute ”operating the computer system in response to said prerecorded control track,” as recited in claim 10. Given Dr. Kesan’s failure to support his position with any analysis, we accord that position little weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (affirming the Board’s determination to give little weight to an expert’s “broad conclusory statements”).” slip op. at 23
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We have considered Patent Owner’s contrary evidence and arguments, but do not find them persuasive. Neither Patent Owner nor Dr. Kesan explains why generating and displaying messages to a user based on the comparison of stored music data and the user’s actual voice does not constitute ”operating the computer system in response to said prerecorded control track,” as recited in claim 10. Given Dr. Kesan’s failure to support his position with any analysis, we accord that position little weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (affirming the Board’s determination to give little weight to an expert’s “broad conclusory statements”).” slip op. at 23
Patent outcomesUS 5,513,129 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 5,513,129 - PTAB · Oct 8, 2015 · IPR2015-01025 · APJ Justin Busch · IPR · Institution
The Board denied institution because Bruwer did not teach the claimed touch-sensor-triggered find-in-the-dark indication, and Petitioner gave no persuasive reason to modify it.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“evidence of record, and we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing that claims 1, 3, and 20 are unpatentable as obvious in view of Bruwer. Although Patent Owner does not specifically contest Petitioner’s assertions that Bruwer’s disclosures render the subject matter of the challenged claims obvious we find Petitioner has not met its burden of establishing that the subject matter of the challenged claims would have been obvious in view of Bruwer.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Figure 11 and its accompanying description, however, describe a circuit that activates the FITD indication either “when switch 1111 is closed by the user” or “[w]hen microchip 1113 pulls the line 1114 to high.” Ex. 1004, 13:29–30. Thus, contrary to Petitioner’s assertion, the portion of Bruwer cited by Petitioner and Dr. Horenstein does not disclose that the microchip activates the FITD indication in response to input from switch 1111, as required by claim 1. Although Petitioner provides a rationale as to why it would have been obvious to activate the FITD indication when the load is inactive, Petitioner provides no persuasive analysis or rationale for modifying Bruwer’s disclosed circuit to teach that the “microchip, in response to at least a signal from the touch sensor, is configured for activating a visible find-in-the-dark indication, when the load is not activated,” as recited in claim 1.” slip op. at 6
§ 103 obviousnessPatents in suitUS 7,265,494 - Henkel Corporation v. H.B. Fuller Co.All claims unpatentablePTAB · Oct 6, 2015 · IPR2014-00606 · APJ Brian P Murphy · IPR · Final written decision
Claims 22–25, 27, and 28 are unpatentable: claims 22–25 and 28 are anticipated, and claim 27 is obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Preamble not limitingOther
“We conclude that the preamble language “[a] hot melt adhesive” is a statement of intended use, not a structural limitation of the claims, because the body of the claims defines a structurally complete composition. Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (a preamble is not limiting “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.”). The parties agree that hot melt adhesives are understood in the art as “‘100[%] solid thermoplastic materials that flow when heated’ and then form a ‘final bond . . . when the temperature has fallen to the ambient one, i.e., that of the material being glued.’” PO Resp. 5 (citing Ex. 1015 ¶ 15); Pet. Reply 4–5 (citing Ex. 1015 ¶ 15). The body of claims 22 and 28 recites a hot melt adhesive that flows when heated and bonds when cooled.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Under Federal Rule of Evidence 702, a witness may be qualified as an expert by “knowledge, skill, experience, training, or education” and may give opinion testimony if the expert’s “specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. We find Dr. Hsu to be qualified as an expert in polymers and adhesives, and we further find his specialized knowledge will help us 7 Dr. Hsu originally was funded by National Starch and Chemical Co., a company that was acquired by Petitioner. Ex. 1039, 16:8–17:13. understand the evidence regarding the claimed hot melt adhesive composition and determine facts in dispute between the parties. We further note that, although Patent Owner urges us to disregard Dr. Hsu’s testimony, Patent Owner repeatedly relies on Dr. Hsu’s testimony when necessary. Pet. Reply 2–3 (citing PO Resp. 5–8, 12, 17–22, 25–26, 32–33, 35–36). Patent Owner cannot have it both ways. Having considered the parties’ arguments and cited evidence, we will assign the appropriate weight to the expert opinion testimony offered by Dr. Hsu.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that if one of ordinary skill in polymer science and engineering were to consider the four corners of the Eastotac Brochure, the H-142R hydrocarbon tackifying resin in Table 1 is directly related to the exemplary hot melt adhesive compositions in Table 3 by the teachings of the reference. Pet. Reply 8–10. The hydrocarbon tackifying resins of Table 1 are listed on pages 4 and 5 of the Eastotac Brochure. Ex. 1002, 4–5. At the top of page 4 just above Table 1, under the heading “Applications,” the Eastotac Brochure states “[t]hese resins are especially suited for low-molecular-weight polyethylene-based hot melt adhesives where elevated temperature resistance and high cohesive strength are required.” Ex. 1002, 4 (emphasis added); Pet. Reply 8. The next page following Table 1 (page 6) discloses exemplary hot melt adhesive compositions in Table 3, each one of which includes an “Eastotac resin” and thermoplastic base polymer in specified composition ranges by weight that overlap with the composition ranges recited in claim 22 of the ’404 patent. Although Patent Owner counts ten different applications for the Eastotac resins of Table 1, the Eastotac Brochure provides specified composition ranges for use of the Eastotac resins in only one application – hot melt adhesives. Ex. 1002. As recently reiterated by the Federal Circuit, “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)). Patent Owner avoids addressing the teachings contained in the text of the Eastotac Brochure and narrowly focuses its discussion only on the express disclosures contained in Tables 1 and 3. PO Resp. 24–26 (citing Ex. 1039, 104:17–20, 106:2–11, 115:2–5). Dr. Hsu testified that, although Table 1 does not list a specific application for the Eastotac resins and Table 3 lists “Eastotac resin” rather than a specific Eastotac resin from Table 1, a fair reading of the Eastotac Brochure indicates “all the ones [resins] in Table 1 can be used in this [Table 3] composition,” including H-142R. Pet. Reply 9–10 (citing Ex. 1015 ¶¶ 41–42; Ex. 1039, 116:12–17, 116:21–117:3, 118:15–21, 121:7–18). Dr. Hsu further testified that one of ordinary skill would have been “motivated” to use the H-142R resin, listed in Table 1, in the hot melt adhesive compositions of Table 3 when a high peel value and high heat resistance were desired, “because Eastotac® H-142 has the highest Tg of the Eastotac® resins in the Eastotac Brochure.” Ex. 1015 ¶ 54. We find Dr. Hsu’s unrebutted testimony to be persuasive. As in the Kennametal case, we find that one of ordinary skill in the art of polymer science and engineering immediately would have envisaged the use of the H-142R hydrocarbon tackifying resin in combination with either APP or EVA thermoplastic base polymer in the exemplary hot melt adhesive compositions in Table 3 of the Eastotac Brochure. See id. at 1382–83.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Patent Owner does not provide any evidence that contradicts Dr. Hsu’s testimony. PO Resp. 40–41. We also are not persuaded by Patent Owner’s argument challenging the sufficiency of Petitioner’s evidence in support of a motivation to combine the asserted references. Rule 41 of the Uniform Freight Classification Committee provides good reason for one of skill in the art to make the asserted modification to the compositions disclosed in the Eastotac Brochure or Exxon Reference. The compositions contain hydrocarbon tackifying resins, and the Eastotac Brochure expressly states that the resins listed therein are “especially suited” for hot melt adhesives where “elevated temperature resistance and high cohesive strength are required.” Ex. 1002, 4. The ’404 patent, moreover, acknowledges the known use of higher Tg tackifying resins to increase heat resistance, and the rail freight packaging requirement for maintaining a hot melt adhesive bond up to 74º C. provides a known application and commercial rationale for using a high peel value adhesive, as recited in claim 27. We also find Dr. Hsu’s opinion articulates a specific, persuasive reason, based on the evidence of record, to explain why a person of ordinary skill in the art would have used a high Tg tackifying resin to achieve a hot melt peel value > 70 ºC., with a reasonable expectation of success. For the reasons stated above, we determine that one of ordinary skill in the art would have been motivated by the teachings of Litz to modify the adhesive compositions disclosed in either the Eastotac Brochure or the Exxon Reference to obtain a composition having a peel value of greater than about 70º C., with a reasonable expectation of success. Therefore, we conclude Petitioner has satisfied its burden of proving by a preponderance of the evidence that either the Eastotac Brochure or the Exxon Reference in combination with Litz would have rendered claim 27 of the ’404 patent obvious to a person of ordinary skill in the art under 35 U.S.C. § 103.” slip op. at 24
Patent outcomesUS 6,833,404 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,833,404 - Stats LLC v. Hockeyline, Inc.All claims unpatentablePTAB · Sep 15, 2015 · IPR2014-00510 · APJ Brian P Murphy · IPR · Final written decision
Claims 1, 2, 8, 10–12, and 30 were held unpatentable as anticipated by Hameen-Anttila and STATS Football, and obvious over STATS Football combined with Reilly.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Means-plus-function Claiming Independent claim 1 of the ’107 patent includes a series of means-plus- function limitations. 35 U.S.C. § 112 ¶ 6.5 A means-plus-function limitation “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Id. The claim limitations in the ’107 patent are drafted using the accepted “means for” construct followed by a specified function, without further recitation of structure to achieve the recited function. Triton Tech of Texas, LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014); see Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). “In exchange for using this form of claiming, the patent specification must disclose with sufficient particularity the corresponding structure for performing the claimed function and clearly link that structure to the function.” Triton Tech, 753 F.3d at 1378 (citation omitted). We construe the following claim limitations for purposes of this decision, in accordance with the principles stated above. 2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“c. Claim 1 – “customized by the user to reflect desired data” We are further persuaded that Hameen-Anttila discloses hierarchical menu- based screen displays that may be “customized by the user to reflect desired data,” in accordance with our claim construction. We agree with Petitioner, that the setup menu in Hameen-Anttila (Fig. 4a) allows a user to select desired display menus (e.g., for golf) that will cause other menus not to be displayed (e.g., for hockey, bowling, and baseball) during a user’s input of golf-specific data in real time. Pet. Reply 7–8 (citing Ex. 1002, 5:21–24; Ex. 1014 (Dahbura Dec.) ¶¶ 20–21). As Dr. Dahbura notes, Patent Owner’s expert, Dr. Locke, agrees that choosing not to display a menu screen is a form of user customization. Ex. 1014 ¶ 21 (citing Ex. 1017, 72:19–73:3). We further agree with Petitioner that Patent Owner’s proffered distinction between Hameen-Anttila’s “mere usage” of hierarchical menu-based screen displays and “customizing” such displays is illusory and not consistent with the description of user customization in the ’107 patent. Pet. Reply 8 (citing Ex. 1014 ¶ 22). The individual drop-down arrows in Figure 4b further suggest the ability of a user to change the menu-based screen displays to permit the user to input desired data for the illustrated golf game. Therefore, we determine Hameen- Anttila discloses an action by the user to configure the hierarchical menu-based screen displays to permit desired data to be gathered for one or more sports games. d. Claim 1 – “transferring statistical information based on such inputted data” Patent Owner’s argument asserting Hameen-Anttila does not disclose the transfer of “statistical information based on such inputted data” also is off the mark. As noted above, Hameen-Anttila discloses that sports game event data is input into an electronic scorekeeping device and transmitted via a communications network to a server while the sports game is ongoing. Ex. 1002, 2:40-51, 2:57– 3:13. We are not persuaded by Patent Owner’s argument that the transfer of statistical information “based on” inputted data requires some form of calculation that necessarily excludes inputted data as part of the transferred “statistical information.” PO Resp. 17–19. Patent Owner does not offer a claim construction or request construction of quoted claim phrase at issue, even though Patent Owner’s argument presumes a specific definition of the phrase without explaining why it is consistent with the broadest reasonable interpretation standard. Pet. Reply 2. The language in claim 1 of the ’107 patent recites “a processor,” but it does not recite a calculation function performed by the processor on inputted data. Pet. Reply 11. The claim language also does not exclude inputted data from “statistical information” or limit “statistical information based on such inputted data” only to statistics calculated from the inputted data. Id. The preamble of claim 1, recites “gathering, processing and distributing statistical information.” Ex. 1001, 8:11–12 (emphasis added); see also PO Resp. 19 (citing Ex. 1001, 1:56–60 (“The present invention advantageously provides an electronic scorekeeping device for gathering, calculating and distributing statistical information.”)). Gathering statistical information, when read in light of the ’107 patent specification, refers to inputting sports game event data into the scorekeeping device for transmission to a central database as part of the statistical information transfer. Pet. Reply 11 (citing Ex. 1001, Abstract (“This [inputted] data is transferred in real-time in a system according to the invention via a communications means to a central database.”); Ex. 1014 ¶¶ 25–28). The ’107 patent does not define “statistical information” or “statistical information based on such inputted data.” The ’107 patent also does not exclude inputted data from the description of statistical information. Pet. Reply 12 (citing Ex. 1014 ¶ 27). To the contrary, and consistent with the understanding in the art, the ’107 patent uses the words “data,” “statistics,” “statistical data,” and “statistical information” interchangeably and with significant areas of overlap. Id.; see also id. at 4 (citing Ex. 2002 ¶ 30 (“The terms ‘statistics,’ ‘data,’ and ‘statistical information,’ are widely used in computer systems, but they are often used in very general ways with broad meanings in which their meanings have significant areas of overlap.”)). We further credit Dr. Dahbura’s testimony, that a person of ordinary skill in” slip op. at 18
Patent outcomesUS 6,725,107 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,725,107 - Sony Corporation / Samsung Electronics Co., Ltd. et al. v. Surpass Tech Innovation LLCInstitution deniedPTAB · Aug 26, 2015 · IPR2015-00862 · APJ Sally C Medley · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–3 unpatentable; the asserted combinations did not disclose applying data impulses via the scan line as claimed.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“A patent claim may be corrected through claim construction “only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). But “courts may not redraft claims, whether to make them operable or to sustain their validity.” Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004). The burden is on Petitioner to show that a claim contains the kind of error that is considered a drafting error. 37 C.F.R. § 42.20(c).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner has not shown how any of the relied upon references discloses applying data impulses via the scan line as claimed, nor has Petitioner shown that a person having ordinary skill in the art at the time of the invention would have known of the claimed feature. Petitioner’s reliance on Nitta’s disclosure, for example, of a source driver that conveys a plurality of data impulses to the pixels of an LCD panel via corresponding data lines (Pet. 26, 52) for both proposed grounds of unpatentability is misplaced, as that is not what is claimed. For these reasons, the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing that claims 1 and 2 are obvious over Suzuki, Nitta, and Lee, or claims 1 and 3 are obvious over Jinda, Nitta, and Lee. III. CONCLUSION For the foregoing reasons, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging claims 1–3 of the ’843 patent. IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We find that the underlying supporting evidence upon which Mr. Credelle relies is insufficient to support the assertion that a person of ordinary skill in the art at the time of the invention would have understood the recitation of “scan line” in original claim 1 to be a typographical error, and that what was meant instead was “data line.” See 37 CFR §§ 42.1(d), 42.65(a). Merely directing attention to a conventional LCD arrangement that shows data voltages applied to data lines, as opposed to scan lines, is insufficient to explain why a person of ordinary skill in the art would have understood the claimed invention also to convey necessarily this arrangement. Here, for instance, we would want to know whether the claim 1 phrase is unable to be construed in any other way than as the proposed corrected way. In other words, Petitioner’s evidence of showing a conventional LCD arrangement does not appear to us to be particularly relevant in informing us of whether LCD arrangements must necessarily be configured in such a manner or they will not function to drive an LCD display, for example. Even Petitioner’s declarant opines that the “conventional” arrangement seen in the O’Mara Textbook is “typical,” (Ex. 1015 ¶ 35), leading us to believe that other, albeit nonconventional arrangements, were possible though not necessarily “typical” at the time of the invention for driving LCD pixels.” slip op. at 6
Claim constructionPatents in suitUS 7,202,843 - Hulu, LLC v. Intertainer, Inc.All claims unpatentablePTAB · Jun 12, 2015 · CBM2014-00052 · APJ Jennifer M Meyer · CBM · Final written decision
Claims 1–3, 5, 8, 10, 11, and 13–15 are unpatentable: claims 1–3, 5, 8, 10, 11, 13, and 14 as anticipated by Chen, and claim 15 as obvious over Chen and Hartanto.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“in view of the Specification of the ’246 patent, requires the link program be limited to a single program. The claim language itself does not indicate a single program is required. Further, we see no language in the Specification, and Patent Owner has not pointed us to any such language, that indicates clearly or persuades us that the claims should be limited as such. The only” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We are persuaded also that Chen’s disclosure of pausing the video and displaying the linked page on the computer, in response to clicking a hot-link, discloses the claimed “creating a link program adapted to both: (a) interrupt streaming of the video at the remote storage medium . . . and (b) access ancillary content . . . .” Pet. 16–17 (citing Ex. 1003, 4:5–10, 4:21–25, 4:28–40, 7:30–33; Ex. 1008 ¶ 16); see also Ex. 1003, 2:11–17 (“The [HyperVideo Authoring] tool allows one to prepare video clips with the hot-link information and then to link them with other types of media.”); id. at 5:55–6:26 (discussing “[c]reation of hot video content”). As discussed above, Patent Owner admitted, during prosecution of the ’884 application, “the fact that [a] computer performs the disclosed functions when a user interacts with an interface link necessarily requires that there is a link program.” Ex. 1002, 60, 83 (emphases added). We are persuaded additionally that Chen’s disclosure of encoding the embedded hyperlinks in the video (e.g., inserting the hot-link information into frames in the video), and identifying incoming data as a “hot” video such that a hot video decoder may display the “hot” video, including the video, audio, and hot-link information, corresponds to the claimed steps of “associating the link program with the video” and “providing the link program over the network.” Pet. 17–19 (citing Ex. 1003, 4:4–10, 5:56–6:39, 6:48–7:2; Ex. 1008 ¶ 18). We are persuaded further that Chen’s disclosure of transmitting a signal to the URL, from which the video is being streamed, to request delivery of a linked html file (containing instructions to display text or multimedia content), in response to a user clicking on a hot-link, corresponds to the claimed step of “receiving an indication of an interaction with the link program.” Pet. 19 (citing Ex. 1003, 4:20–25; Ex. 1008 ¶ 19). We are persuaded also that Chen’s disclosure of having the URL, from which the video is being streamed, pause the video, in response to a user clicking on a hot-link, while the text or multimedia content is being displayed, corresponds to the claimed step of “interrupting, at the first site, the streaming of the video in response to receiving the indication of the interaction with the link program.” Pet. 19 (citing Ex. 1003, 4:28–34; Ex. 1008 ¶ 16). We are persuaded additionally that Chen’s disclosure of allowing the user to resume the video corresponds to the claimed step of “continuing the streaming of the video over the network from the point in time when the streaming of the video was interrupted.” Pet. 19 (citing Ex. 1003, 4:38–40; Ex. 1008 ¶ 20).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“under 35 U.S.C. § 103 as obvious based on Chen and Hartanto. Pet. 28–30. Claim 15 recites that the network includes a wireless network. Ex. 1001, 10:43–44. Petitioner contends that use of wireless networks as a mechanism for the transmission of videos was well known in the art prior to the filing date of the ’246 patent, and provides declaration evidence that one of skill in the art would have understood the network for data transfer could be a wireless network. Pet. 28–29; Ex. 1008 ¶ 24. Petitioner cites Hartanto as an example of disclosure of wireless networks used with video transmission. Id. Petitioner further contends that the combination of using a wireless network connection as the network in Chen would have yielded a predictable result. Pet. 29–30; Ex. 1008 ¶ 24. We determine that Petitioner’s analysis and evidence is persuasive. Patent Owner does not argue specifically the patentability of claim 15 based on any limitations other than those discussed above with respect to independent claim 1. See PO Resp. 33. After reviewing the entire record, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that claim 15 of the ’246 patent would have been obvious to a person of ordinary skill in the art7 over Chen and Hartanto.” slip op. at 18
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We note, as a general matter, that although the claims in the ’592 reexamination may be similar, they are not identical to the claims of the ’246 patent. Further, Patent Owner has not filed a Motion to Exclude Dr. Bove’s testimony. In any case, the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. See Gnosis S.p.A. v. S. Alabama Med. Sci. Found., Case IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64); see also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received.”). In rendering our decision, we have assigned weight to the evidence as appropriate in view of the entire record before us.” slip op. at 17
Patent outcomesUS 8,479,246 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,479,246
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.