• I-Blason LLC v. Aevoe Corp.Rehearing denied
  PTAB · Jul 25, 2016 · IPR2016-00231 · APJ Sheila F Mcshane · IPR · Rehearing

  The Board denied rehearing and maintained its decision not to institute review of claims 1, 2, 5, 7, and 11–14 because Petitioner did not show the interference-pattern limitation or iVisor’s public availability.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “We, therefore, are not persuaded that we misapprehended or overlooked any matter in making our determination that I-Blason did not establish a reasonable likelihood of prevailing on its challenges as to claims 1, 2, 5, 7, and 11–14 of the ’942 patent. III. CONCLUSION For the foregoing reasons, I-Blason has not shown that we abused our discretion when determining not to institute an inter partes review as to claims 1, 2, 5, 7, and 11–14 of the ’942 patent. IV. ORDER For the foregoing reasons, I-Blason’s Request for Rehearing is denied.” slip op. at 5

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

    “produce visible interference patterns because Murphy forms a single air gap (rather than multiple bubbles).” Req. Reh’g 3–4. This issue was not argued in this manner in the Petition or Ross Declaration. Moreover, even if we were to consider this variation, we still would not be persuaded. The Decision indicated that there was a failure by Dr. Ross to “explain adequately why the interference patterns would not occur in Murphy.” Dec. 12. Even with the variation on the argument raised in this Request, we still find adequate explanation lacking. I-Blason states in a conclusory manner that “[t]o hold that there is a possibility that Murphy produces interference patterns without screen protector contact would contradict a [person of ordinary skill in the art’s] understanding of how interference patterns such as Newton Rings are created,” citing to the background section of the Ross Declaration concerning bubble-free screen protectors. Req. Reh’g 4 (citing Ex. 1018 ¶¶ 19, 20). These references do little to aid in an understanding of how an air gap configuration would not necessarily produce interference patterns.” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “publication (Ex. 1005) is a printed publication within the meaning of 35 U.S.C. § 102. Req. Reh’g 7–8. I-Blason cites a Board decision that found that a web page with a note of “last modified on February 2, 1999” was a printed publication as of that date. Id. at 7 (citing American Megatrends, Inc. v. Kinglite Holdings, Inc., Case IPR2015-01079, slip op. 11 (PTAB October 29, 2015) (Paper 17)). As we explained in the Decision (see Dec. 14), the evaluation as to whether a document is a printed publication is considered on a case-by-case basis. See In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Here, the iVisor document appears to be a type of web page that could be subject to frequent changes and updates. Moreover, other than unsubstantiated testimony from I-Blason’s counsel of record concerning a 2015 version of the document (Ex. 1019 ¶ 3), I-Blason provides no evidence to demonstrate that the version of iVisor filed in this proceeding was made publicly available in 2009. Upon reconsideration, we maintain our initial determination that I-Blason has failed to make a threshold showing that iVisor is a printed publication.” slip op. at 5

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “produce visible interference patterns because Murphy forms a single air gap (rather than multiple bubbles).” Req. Reh’g 3–4. This issue was not argued in this manner in the Petition or Ross Declaration. Moreover, even if we were to consider this variation, we still would not be persuaded. The Decision indicated that there was a failure by Dr. Ross to “explain adequately why the interference patterns would not occur in Murphy.” Dec. 12. Even with the variation on the argument raised in this Request, we still find adequate explanation lacking. I-Blason states in a conclusory manner that “[t]o hold that there is a possibility that Murphy produces interference patterns without screen protector contact would contradict a [person of ordinary skill in the art’s] understanding of how interference patterns such as Newton Rings are created,” citing to the background section of the Ross Declaration concerning bubble-free screen protectors. Req. Reh’g 4 (citing Ex. 1018 ¶¶ 19, 20). These references do little to aid in an understanding of how an air gap configuration would not necessarily produce interference patterns.” slip op. at 3

  § 102 anticipation
  Patents in suitUS 8,044,942
• General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing denied
  PTAB · May 19, 2016 · IPR2015-01966 · APJ Sheila F Mcshane · IPR · Rehearing

  The Board denied rehearing and maintained its decision not to institute review of claims 1, 7–9, and 16 because neither challenge showed a reasonable likelihood of success.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We address the General Plastic’s contentions outlined above, first with respect to the anticipation challenge and, then with respect to the obviousness challenge.” slip op. at 2

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

    “construe[] [the claims at issue] to require that the recited sealing member must be of a one-piece or inseparable construction” or fail to apprehend that General Plastic was asserting that its anticipation challenge was based on a “part-time” analysis. See Req. Reh’g 2–3, 4–5. As explained in the Decision, we considered General Plastic’s assertion under the scenario where power transmitting member and fixed cover of the container are alleged “integrally combined”—that is, the “part-time” circumstances depicted in Figure 6 of Matsuoka—and found that the evidence was insufficient to support that view under the circumstances. See Dec. 15–18. Failure of General Plastic’s challenge does not equate to a requirement that the sealing member has to be of one-piece or inseparable construction, but instead reflects that, based on the evidence and argument presented and developed in the Petition, we did not find a reasonable likelihood that General Plastic would prevail on the anticipation challenge. As the Decision discusses, the Petition contains inconsistent mapping of the prior art onto the claim elements, and, contrary to General Plastic’s view of elements being “integrally combined,” Matsuoka instead discloses that the rotary power transmitting member is a part of copier, and not the toner container, and is detachable from the toner container.1 Id. at 17–18. This evidence is incongruent with a determination that General Plastic would have had a reasonable likelihood of prevailing on its anticipation challenge.” slip op. at 3

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

    “construe[] [the claims at issue] to require that the recited sealing member must be of a one-piece or inseparable construction” or fail to apprehend that General Plastic was asserting that its anticipation challenge was based on a “part-time” analysis. See Req. Reh’g 2–3, 4–5. As explained in the Decision, we considered General Plastic’s assertion under the scenario where power transmitting member and fixed cover of the container are alleged “integrally combined”—that is, the “part-time” circumstances depicted in Figure 6 of Matsuoka—and found that the evidence was insufficient to support that view under the circumstances. See Dec. 15–18. Failure of General Plastic’s challenge does not equate to a requirement that the sealing member has to be of one-piece or inseparable construction, but instead reflects that, based on the evidence and argument presented and developed in the Petition, we did not find a reasonable likelihood that General Plastic would prevail on the anticipation challenge. As the Decision discusses, the Petition contains inconsistent mapping of the prior art onto the claim elements, and, contrary to General Plastic’s view of elements being “integrally combined,” Matsuoka instead discloses that the rotary power transmitting member is a part of copier, and not the toner container, and is detachable from the toner container.1 Id. at 17–18. This evidence is incongruent with a determination that General Plastic would have had a reasonable likelihood of prevailing on its anticipation challenge.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “did not overlook or misapprehend that the engagement claw portion 443 of the rotary power transmitting member can be decoupled from rotary shaft portion 442 and gear 47. Req. Reh’g. 12–14. We also did not overlook or misapprehend Dr. Spingett’s statements concerning the removal of the engagement claw portion 443. Req. Reh’g. 14 (citing Ex. 1007 ¶ 72). The issue as to whether one of ordinary skill in the art would have envisioned the possibility of a disengagement problem between the rotary power transmitting member and fixed cover in the first place underlies the motivation, according to Dr. Springer, for testing the removal of the engagement claw portion. See Ex. 1007 ¶¶ 71, 72. Thus, we determined that the evidence on the possibility of disengagement problem between the rotary power transmitting member and fixed cover was insufficient to support why one of ordinary skill in the art would have modified Matsuoka in the manner alleged in the Petition. See Dec. 20. Even after considering General Plastics new twist on the same arguments in this Request of Rehearing, our view remains the same. We, therefore, are not persuaded that we misapprehended or overlooked any matter in making our determination that General Plastic did not establish a reasonable likelihood of prevailing on its obviousness challenge as to claims 1, 7–9, and 16 of the ’820 patent.” slip op. at 6

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,046,820
• I-Blason LLC v. Aevoe Corp.Institution denied
  PTAB · May 18, 2016 · IPR2016-00231 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner failed to show a reasonable likelihood of prevailing on the anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account Aevoe’s Preliminary Response, and for the reasons that follow, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that I-Blason will prevail in challenging claims 1, 7, and 14 as anticipated under 35 U.S.C. §102(b), or claims 1, 2, 5, 7, and 11–14 as unpatentable under 35 U.S.C § 103(a). Pursuant to 35 U.S.C. § 314, we hereby decline to institute an inter partes review of the ’942 patent.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “Blason has demonstrated a reasonable likelihood of prevailing on its anticipation challenge. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). In order to demonstrate that a reference inherently discloses a claim element, I-Blason must show that the reference “‘necessarily functions in accordance with, or includes, the claimed limitations.’” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citing MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999)). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). Murphy does not explicitly disclose the claim limitation of, at least, a membrane that will not produce visible interference patterns. The evidence provided in this record also is insufficient to demonstrate that Murphy inherently discloses this claim limitation. I-Blason’s assertion that “the types of membrane film disclosed in Murphy could be manually actuated without producing interference patterns” (Pet. 22 (emphasis added)), and Dr. Ross’s testimony that “Murphy suggests that interacting with the device will not produce visible interference patterns during use” (Ex. 1008 ¶ 62 (emphasis added)), do not support sufficiently that Murphy’s membrane will necessarily function in a manner that does not produce the visible interference patterns. Dr. Ross fails to explain adequately why the interference patterns would not occur in Murphy. See Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”). The evidence of record instead suggests that with an air gap between the membrane and the touch screen portion of Murphy, and absent any disclosed surface treatment, interference patterns could occur during use. See Ex. 2009, 1:27–33. Put simply, the evidence, as presented by I-Blason, only indicates that, at best, the functionality may be present, and other credible evidence in the record suggests that this feature may not be present. This falls short of demonstrating that Murphy necessarily describes a membrane film having a window that does not producing visible interference patterns, as required for a ground based on anticipation.” slip op. at 11

  • Burden

    “a reference is a printed publication. Suffolk Techs., LLC v. AOLi-Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). On this record, we are not persuaded that I-Blason has made a threshold showing that iVisor is a printed publication within the meaning of § 102 and, therefore, qualifies as prior art to the ’942 patent. The evidence provided to demonstrate that this form of the web content was made publicly available in 2009 is a representation that the document is a “true and correct copy” of a printout of a circa-2015 download. This is insufficient to establish that the version of the iVisor document presented with the Petition (Ex. 1005) is the same version that was made publicly available in 2009. Further, the date a product may have been available on Amazon, or dated product reviews, also are insufficient to establish the content of the website that may have been made available to the public in 2009.” slip op. at 14

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

    “a reference is a printed publication. Suffolk Techs., LLC v. AOLi-Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). On this record, we are not persuaded that I-Blason has made a threshold showing that iVisor is a printed publication within the meaning of § 102 and, therefore, qualifies as prior art to the ’942 patent. The evidence provided to demonstrate that this form of the web content was made publicly available in 2009 is a representation that the document is a “true and correct copy” of a printout of a circa-2015 download. This is insufficient to establish that the version of the iVisor document presented with the Petition (Ex. 1005) is the same version that was made publicly available in 2009. Further, the date a product may have been available on Amazon, or dated product reviews, also are insufficient to establish the content of the website that may have been made available to the public in 2009.” slip op. at 14

  § 102 anticipation
  Patents in suitUS 8,044,942
• General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaInstitution denied
  PTAB · Mar 9, 2016 · IPR2015-01966 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because General Plastic did not show a reasonable likelihood that claims 1, 7–9, and 16 were unpatentable over Matsuoka under §§ 102(b) or 103(a).

  RulingsInstitution decision

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

    “We have authority under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account Canon’s Preliminary Response, and for the reasons that follow, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that General Plastic will prevail in challenging claims 1, 8, 9, and 16 as anticipated under 35 U.S.C. § 102(b), or claims 1, 7–9, and 16 as unpatentable under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we hereby decline to authorize an inter partes review of the ’820 patent.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “For the first proposed construction, we agree with General Plastic that claim language that suggests or makes optional, but does not require, steps to be performed does not limit a claim to a particular structure. However, functional apparatus claim recitations are afforded weight in that the corresponding structures must possess the capability of performing the recited function. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Here, the claim term requires that the “sealing portion” must have the structure that is “configured to seal” in the manner claimed. Therefore, we determine that the “relative movement” limitation as recited in claims 1 and 16 cannot be disregarded because it is directed to the required configuration of the apparatus structure.” slip op. at 10

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

    “On this record, General Plastic has not presented sufficient evidence to support a finding that Matsuoka anticipates claims 1 and 16. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Under the ordinary meaning of claim 1’s term, “unsealed by relative movement of the sealing member and the container body away from one another,” the claim requires a structure such that the “sealing member” and the “container body” would be capable of moving the components away from each other during unsealing. Here, using General Plastic’s stated correlation of elements, with Matsuoka’s fixed cover 32 and rotary power transmitting member 44 considered the “sealing member,” and the container main body 31 with opening considered the “container body,” Matsuoka’s teachings support, at most, that a portion of the “sealing member” that is a portion of fixed cover 32 remains stationary in relation to the container body when it becomes unsealed. However, the other mapped portion of the “sealing member,” rotary power transmitting member 44 and a portion of the fixed cover 32, moves towards the container body when becoming unsealed. Therefore, there is no evidence provided that Matsuoka discloses a structure capable of meeting the limitation that the sealing member and container body move away from each other when becoming unsealed. Additionally, in an anticipation rejection, “it is not enough that the prior art reference . . . includes multiple, distinct teachings that [an ordinary] artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id. at 1371. Here, independent claims 1 and 16 are directed to a “toner supply container,” which General Plastic correlates to cartridge 30 in portions of its claim chart, and then in other portions of the chart it also inconsistently indicates that the toner supply container includes other elements— more specifically, power rotary power transmitting member 44 as part of the “toner supply container.” Pet. 35–40, 41–46. Inconsistencies aside, General Plastic bases the inclusion of the power transmitting member on the view that it and fixed cover 32 of the container are “integrally combined.” Pet. 28. This is supported by conclusory statements only from Dr. Springett. Ex. 1007 ¶¶ 51, 52. Matsuoka discloses that its rotary power transmitting member 44 is a component or part of the replenishment apparatus portion of the copier. See e.g., Ex. 1006, Fig. 3 and 6. The Petition lacks sufficient evidence to support that one of ordinary skill in the art would have viewed a component of the copier to be a part of the sealing member of the toner supply container, particularly in light of Matsuoka’s disclosures that its containers are used for replenishment purposes and they are detachable from the power rotary power transmitting member of the copier. See, e.g., Ex. 1006, 7:54–56, 8:34–38. Accordingly, on this record, General Plastic has not established a reasonable likelihood of prevailing in showing that claims 1, 8, 9, and 16 of the ’820 patent are anticipated by Matsuoka.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Our view is that General Plastic has not provided sufficient evidence to support that one of ordinary skill in the art would have been motivated to modify Matsuoka in the manner alleged in the Petition. There are no teachings or suggestions in Matsuoka that cartridge 30 should be withdrawn from copier with rotary power transmitting member 44 attached because, in fact, the reference teaches otherwise—i.e., that the cartridge 30 with its fixed cover 32 should be detached from the rotary power transmitting member 44. Dr. Springett fails to provide any evidence to explain why an ordinary person of skill in the art would envision a scenario that the detachment as taught would not occur, or even that the scenario would be viewed as probable or even relatively possible. See Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”). Additionally, no support has been provided for the view that it is a mere design choice to remove the cartridge and the rotary power transmitting member as one piece. That is, there is little, if any, explanation as to why one of ordinary skill would have made that specific design choice. As such, the statements are conclusory and fail to provide any articulated reasoning sufficient that would support a conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Accordingly, on this record, General Plastic has not established a reasonable likelihood of prevailing in showing that claims 1, 7–9, and 16 would have been obvious over Matsuoka.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,046,820
• Fka Distributing Co., LLC v. Dok Solution, LLCInstitution denied
  PTAB · Feb 12, 2016 · IPR2015-01730 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because FKA did not show a reasonable likelihood that claims 1, 2, 4, 6, 7, 9, 11, 12, and 17 were unpatentable as obvious.

  RulingsInstitution decision

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

    “We have authority under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account DOK’s Preliminary Response, and for the reasons that follow, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that FKA will prevail in challenging claims 1, 2, 4, 6, 7, 9, 11, 12, and 17 as unpatentable under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we hereby decline to authorize an inter partes review of the ’667 patent.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “On this record, we are persuaded that there is sufficient evidence to establish Strauser as prior art to the ’667 patent. However, we find DOK’s argument regarding Strauser’s failure to teach that the audio system includes a power port to be persuasive. In Strauser, there is a clear distinction between the modes of use of the digital music player with an “audio system” and a “computer.” All of the relied-upon disclosures from Strauser are limited to a computer providing power to the digital music player, with no teaching or suggestion that its audio system could provide power to the digital music player. FKA’s conclusory statement that it would have been obvious to use a power port on an audio system of Strauser presumes that there is a power port on the audio system in the first place, and there is no disclosure in Strauser teaching or suggesting that this is the case. FKA also does not provide any evidence that a person of ordinary skill would have found that making this modification would have been obvious. Accordingly, on this record, Petitioner has not established a reasonable likelihood of prevailing in showing that claims 1, 2, 6, 9, 11, 12, and 17 would have been obvious over Strauser.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable

    “FKA takes liberties with its interpretations of JP ’125 and how a person of ordinary skill would view that art which, in some respects, we do not discern as being taught or suggested in JP ’125. For instance, we concur with DOK’s argument that FKA’s view that it would have been obvious to a person of ordinary skill in the art that electronic devices commonly define a width that is greater than the thickness is inconsistent with JP ’125 itself because the reference depicts a mobile phone that appears to have an equal width and thickness. FKA also provides no rationale to explain why one of ordinary skill in the art would have been motivated to modify the teachings of JP ’125 in the manner that it advocates. We also find that FKA fails to identify a disclosure in JP ’125 of ledges forming “decreasingly sized sub-openings towards a bottom of the cavity,” because in light of FKA’s view of the location of the ledges in JP ’125, there is no credible evidence presented that the “ledges” at the bottom of the cavity are smaller than the “ledges” above. The claims also require that a support wall extend “from an upper rear surface of the base.” However, FKA asserts that JP ’125 discloses two support walls, and appears to interchange their use—however, the claim requires that the support wall be a single element. Accordingly, for at least these reasons, FKA has not established a reasonable likelihood of prevailing in showing that claims 1, 2, 4, 6, 7, 9, 11, 12, and 17 would have been obvious over JP ’125, either alone, or in combination with the view of one of skill in the art.” slip op. at 17

  § 103 obviousness
  Patents in suitUS 8,432,667
• Fka Distributing Co., LLC v. Dok Solution, LLCInstitution denied
  PTAB · Feb 12, 2016 · IPR2015-01745 · APJ Jennifer S Bisk · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 5, 7, 8, 11–13, 17, 19, and 20 were obvious over either asserted ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and Preliminary Response, we determine that Petitioner has not established a reasonable likelihood of prevailing in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “supporting multiple digital music players” found in the preamble of claims 1 and 12. “[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.” Catalina Marketing Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal quotation marks and citation omitted). A preamble, however, “limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” For example, “dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.” Id. (internal quotation marks and citation omitted). For purposes of this decision, we are persuaded that, although it is part of the preamble, the term “sequentially supporting multiple digital music players” limits the scope of the challenged claims. The body of claim 1 refers several times to “the multiple digital music players.” Thus, on this record, we are persuaded that this language “indicates a reliance on both the preamble and claim body to define the claimed invention” and is not merely a statement of intended purpose or intended use. Catalina Marketing, 289 F.3d at 808 (citing Bell Comm’s Research, Inc. v. Vitalink Comm’s Corp., 55 F.3d 615, 620 (Fed. Cir. 1995)). Moreover, we are persuaded that this term means that the claimed cradle is designed to support any one of the multiple digital music players, one at a time in succession, in any particular order.” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “3. Ledges of Decreasing Size Limitation We are not persuaded that Petitioner has shown sufficiently that JP ’125 discloses the recited ledges of decreasing size limitation. As discussed above, Petitioner asserts that JP ’125 discloses an upper ledge by showing the horizontal portion of slit 11 separating the wider top front surface opening area (shown in Figure 2 by W) from the narrower area from lower area to the bottom and discloses a lower ledge by showing an edge abutting slit 11 in the bottom of holder 6. Pet. 19–20. Petitioner also states that “[o]ne can step from the upper ledge to the lower ledge” and “one may step from the lower ledge out through the bottom of the cradle.” Id. at 20. Petitioner, however, never explains how JP ’125’s lower ledge is “of decreasing size” from the upper ledge. Id. at 19–22. This requirement must be satisfied no matter which construction of the ledges of decreasing size limitation we adopt (the district court’s construction requires “steps or ledges of decreasing size toward the bottom . . .” and Petitioner’s proposed construction requires “steps or ledges of decreasing size toward the bottom . . .”). Thus, we are not persuaded that Petitioner has shown sufficiently that JP ’125 discloses the recited ledges of decreasing size limitation.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “suggestion or motivation to modify the teachings of JP ’125 as proposed. In appropriate circumstances, a single prior art reference can render a claim obvious as long as there is a showing of a suggestion or motivation to modify the teachings of that reference. SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000). “This suggestion or motivation may be derived from the prior art reference itself, from the knowledge of one of ordinary skill in the art, or from the nature of the problem to be solved.” Id. (internal citations omitted). Here, Petitioner’s stated suggestion or motivation for “sequentially supporting multiple digital music players” is a combination of the knowledge a person of ordinary skill in the art would have of the dimensions of common mobile phones and the “benefit described in JP ’125 of positioning the wider device upright in the holder to eliminate ‘data communication failure’ by securing the device in an upright position.” Pet. 22. It does not follow logically, however, either from the knowledge of common phone dimensions, or the desire to position a phone upright, that a person of ordinary skill would understand the holder in JP ’125 to sequentially support multiple digital music players.5 Petitioner does not point to any disclosure in JP ’125 showing its holder being used in the manner shown in the right-most version of modified Figure 1, above, such that the phone is placed sideways into the holder. In fact, Petitioner acknowledges that JP ’125 shows supporting one device at a time. Id. at 14. 5 Although claim 7 does not recite “sequentially supporting multiple digital music players,” this analysis applies equally to claim 7 because claim 7 recites the same concept using different language. Specifically, claim 7 recites “a digital music player cradle for supporting any one digital music player of the multiple digital music players” and includes steps of inserting a first digital music player into the cavity, removing that player, and then inserting a second digital music player into the cavity. Ex. 1001, 6:45–7:11. And Petitioner notes that the holder of JP ’125 includes both front and rear surfaces, with the front being the side containing slit 11. Id. at 17–18. On the other hand, Petitioner does not point to persuasive evidence, either within JP ’125 or elsewhere, supporting its assertion that a person of ordinary skill would have found it obvious that a single implementation of JP ’125 could support multiple sizes of phone by placing the phone in the holder sideways, such that the side of the phone faces the front of the holder when inserted.” slip op. at 13

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,742,293

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