• Aurobindo Pharma USA, Inc.No claims unpatentable
  PTAB · Dec 28, 2018 · IPR2017-01648 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–25 were not shown unpatentable over Timmins and Cheng because Petitioner did not establish that the combination would have targeted the claimed mean Tmax range.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “In the Patent Owner Response, Patent Owner acknowledged the Board’s characterization of the knowledge of an ordinarily skilled artisan as consistent with the proposals of both parties (PO Resp. 12–13), and neither party further addressed the proper level of ordinary skill in the art or disagreed with our characterization from the Institution Decision. See PO Resp., Reply. Our determination regarding the patentability of the challenged claims does not turn on the differences between the parties’ definitions. We adopt Petitioner’s assessment, but note that our conclusions would be the same under Patent Owner’s assessment. C. Testimony of Dr. Akhlaghi” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We agree with Petitioner that Dr. Akhlaghi’s qualifications and deposition testimony, when read in context, indicate that Dr. Akhlaghi is sufficiently experienced to opine on the knowledge of one of skill in the art at the time of the ’866 patent. As noted in the August 13, 2018 update to our Trial Practice Guide: An expert witness must be qualified as an expert by knowledge, skill, experience, training, or education to testify in the form of an opinion. Fed. R. Evid. 702. There is, however, no requirement of a perfect match between the expert’s experience and the relevant field. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). A person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). See Notice of Update to Office Patent Trial Practice Guide, 83 Fed. Reg. 156, (Aug. 13, 2018) (text of update available at https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr actice_Guide.pdf). In addition, we are well able to consider the value of an expert opinion and afford it appropriate weight. Perreira v. Secretary of the Dept. of HHS, 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”) D. Claim Interpretation” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for patent owner

    “Tmax” In our Institution Decision, we noted that the term “Tmax” appears in each of the challenged claims, and that both parties agreed that Tmax should be construed as stated in the Specification: “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours).” Inst. Dec. 7 (citing Pet. 24; Prelim Resp. 18; Ex. 1001, col. 7, ll. 49–53). We concluded that the proposed definition was consistent with the Specification and defined the claim term with reasonable clarity, deliberateness, and precision, and we adopted the parties’ construction. Neither party addressed the issue of construction of Tmax in further briefing, but the parties disagree about how Dr. Akhlaghi applied the definition in her testimony. See, eg., Pet. Reply 9–10. For purposes of analyzing the patentability of the challenged claims, we continue to interpret the term as “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours),” because that definition is consistent with the Specification, and because the parties themselves agreed to the definition of Tmax. Inst. Dec. 7. E. Overview of the Prior Art slip op. at 11

  • BurdenNot shown unpatentable

    “Based on our review of the record, we determine that Petitioner has not shown sufficiently that combining the teachings of Timmins and Cheng as Petitioner contends would have resulted in a dosage form that provides a mean Tmax of metformin from 5.5 to 7.5 hours after administration.” slip op. at 19

  Patent outcomesUS 6,866,866 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,866,866
• Syrinix, Inc. v. Blacoh Fluid Control, Inc.Rehearing denied
  PTAB · Jul 10, 2018 · IPR2018-00414 · APJ Frederick C Laney · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding it had not misapprehended or overlooked the arguments about the construction of “transient” or abused its discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “(d) Rehearing. A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d) (2018). To be entitled to relief, the party seeking rehearing must demonstrate that the Board abused its discretion. 37 C.F.R. § 42.71(c) (2018); see also PNY Techs., Inc. v. Phison Elecs. Corp., No. IPR2013–00472, slip op. at 2 (PTAB April 24, 2014) (Paper 16) (available at https://go.usa.gov/xQUuS). A decision based on an erroneous interpretation of law, a factual finding that is not supported by substantial evidence, or an unreasonable judgment in weighing relevant factors may” slip op. at 2

  None
  Patents in suitUS 7,219,553
• Controls Southeast, Inc. v. Qmax Industries, LLCRehearing denied
  PTAB · May 30, 2018 · IPR2017-00977 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution of review of claim 3 under § 103 over Malone, Bilbro, and Mizuno in place.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. 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 further note that 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2

  • Expert testimonyNot reached

    “Regarding Petitioner arguing, with respect to claim 1, that it would have been obvious to one of ordinary skill in the art “to form metal foil 9 of Malone from the rigid metal used for channel member 10 [of Bilbro]” in order to meet the limitation of the heat transfer element physically protecting the tracer tubing (Pet. 24 (citing Ex. 1014 ¶ 160)), we determined that this argument was an alternative to Petitioner’s argument that Malone’s foil 9, unmodified, physically protects heating cable 8, and expressly did not rely on this alternative argument with respect to claim 3. Dec. 23. In addition, we noted that Petitioner’s expert, Dr. Abraham, testified in connection with claim 3 that one of ordinary skill in the art would be motivated to form foil 9 into a rigid structure (see Ex. 1014 ¶¶ 310, 313, 314), but found it unnecessary to rely on this testimony. Dec. 23 n.7. As such, we did not determine that the Petition was ambiguous and did not “piece together support” for Petitioner’s unpatentability theory, as alleged by Patent Owner. See Reh. Req. 5.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Regarding Petitioner arguing, with respect to claim 1, that it would have been obvious to one of ordinary skill in the art “to form metal foil 9 of Malone from the rigid metal used for channel member 10 [of Bilbro]” in order to meet the limitation of the heat transfer element physically protecting the tracer tubing (Pet. 24 (citing Ex. 1014 ¶ 160)), we determined that this argument was an alternative to Petitioner’s argument that Malone’s foil 9, unmodified, physically protects heating cable 8, and expressly did not rely on this alternative argument with respect to claim 3. Dec. 23. In addition, we noted that Petitioner’s expert, Dr. Abraham, testified in connection with claim 3 that one of ordinary skill in the art would be motivated to form foil 9 into a rigid structure (see Ex. 1014 ¶¶ 310, 313, 314), but found it unnecessary to rely on this testimony. Dec. 23 n.7. As such, we did not determine that the Petition was ambiguous and did not “piece together support” for Petitioner’s unpatentability theory, as alleged by Patent Owner. See Reh. Req. 5.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 8,662,156
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 25, 2018 · IPR2017-01690 · APJ Scott C Moore · IPR · Final written decision

  Petitioners failed to prove claims 1–10, 15, 20, and 24 unpatentable because they did not show a reason to refrain from calculating Hsu’s metrics when Franaszek’s type information was absent.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “and “at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” ’179 IPR, Ex. 1002 ¶ 26; ’808 IPR, Ex. 1002 ¶ 26. Patent Owner’s declarant, Dr. Zeger, “does not disagree” with Petitioners’ formulation, and does not offer any alternative formulation. See Ex. 2004 ¶ 20. Based on our review of the ’728 patent, the types of problems and solutions described in the ’728 patent and cited prior art, and the testimony of Petitioners’ declarant, we adopt and apply Dr. Creusere’s formulation regarding the level of ordinary skill in the art. The cited prior art references also reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We find that the level of appropriate skill reflected in these references is consistent with Dr. Creusere’s formulation regarding the level of ordinary skill in the art.” slip op. at 11

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

    “Petitioners requested that we construe the claim term “the data block being included in one or more data blocks,” which is recited in claims 2 and 3. ’179 Pet. 13, ’808 Pet. 11–12. Patent Owner did not request that we provide explicit constructions of any claim terms. On this record, we determine that it is unnecessary to provide an explicit construction of the claim term “the data block being included in one or more data blocks” in order to resolve the issues in dispute. Accordingly, we decline to adopt an express construction of this claim term. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “Petitioners argue that Patent Owner is “presuppos[ing] that a POSA would only see one obvious way to combine prior art teachings.” Reply 5. Petitioners are correct that there may be more than one obvious way to combine prior art teachings. However, it is Petitioners’ burden to show that one particular combination of the references renders obvious all limitations of a given claim. Thus, it is entirely proper for Patent Owner to point out the tension between Petitioners’ stated rationale for combining the teachings of Hsu and Franaszek to arrive at limitations 1d and 24d, and Petitioners’ stated rationale for further modifying this combination to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type information is not present in order to arrive at limitations 1f and 24f. To prevail on Ground 1, Petitioners must demonstrate that a person of ordinary skill in the art would have had sufficient reason to make both modifications. We find Petitioner has not persuasively harmonized the disparate rationales it proffers.” slip op. at 29

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Notably, Dr. Creusere never opines that a person of ordinary skill in the art would have had reason to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type data was not present, in the manner Petitioners allege would have satisfied claim limitations 1f and 24f. See ’179 IPR, Ex. 1002 ¶¶ 141–146, 191–202; ’808 IPR, Ex. 1002 ¶¶ 141– 146, 191–202. In fact, during his deposition, Dr. Creusere confirmed that he was not offering an opinion that a person of ordinary skill in the art would have refrained from calculating Hsu’s block type and redundancy metrics when Franaszek’s “type” information was not present: Q. And in your declaration, you don't propose that a POSA would only use Hsu when Franaszek already has a data type and not use Hsu when Franaszek doesn't have a data type, right? A. I don't propose that a POSA has to do that. Though I do discuss the advantages that one could achieve if one had a data type, and one were to combine that with Hsu, but I don't say -- I don't say that you can only apply Hsu when you -- when you have a data type. Q. You don't have an opinion that a POSA would have been motivated to use Hsu only when Franaszek has a data type, but would not have been motivated to use Hsu when Franaszek doesn't have a data type, right? A. I don't believe that I expressed an opinion on that in my declaration. Ex. 2003, 130:18–131:12 (emphases added).” slip op. at 26

  Patent outcomesUS 9,054,728 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,054,728
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00808 · APJ Scott C Moore · IPR · Final written decision

  Claims 1–10, 15, 20, and 24 were not shown unpatentable because Petitioners did not establish a reason to forgo Hsu’s analysis when Franaszek lacked type information.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “In contrast, Patent Owner’s declarant, Dr. Zeger, directly addresses the issue in dispute, and testifies that a person of ordinary skill in the art would not have had reason to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type data was not present: While I do not agree that a POSA would be motivated to combine Franaszek with Hsu at all, I do agree with Dr. Creusere that if a POSA were to make such a combination, the POSA would rely on Hsu’s powerful data type recognition and compressibility analysis approach to identify a data type and redundancy metrics for each of Franaszek’s data blocks. I also agree with Dr. Creusere’s testimony that using Hsu in such circumstances would help Franaszek “pick a better compression technique and get more compression.” Id. at 130:12-17. I certainly do not believe that a POSA would want to refrain from using Hsu’s powerful data type recognition and compressibility analysis approach when Franaszek lacks data type information. To the contrary, Hsu describes a system that avoids any content independent compression and that instead uses an entirely content-dependent approach, and its teachings are thus heavily directed toward an approach for always identifying a data block’s data type as well as its three redundancy metrics. Thus a POSA would have to disregard a core aspect of Hsu’s teachings in order not to use Hsu when Franaszek lacks a data type. I agree with Dr. Creusere that a POSA would not take such an approach. It would certainly not be obvious for a POSA to do so. Ex. 2004 ¶ 24. We find Dr. Zeger’s testimony persuasive, especially in view of Dr. Creusere’s deposition testimony that advantages would result from using Hsu’s block type and redundancy metrics, regardless of whether Franaszek’s type data was or was not present.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “and “at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” ’179 IPR, Ex. 1002 ¶ 26; ’808 IPR, Ex. 1002 ¶ 26. Patent Owner’s declarant, Dr. Zeger, “does not disagree” with Petitioners’ formulation, and does not offer any alternative formulation. See Ex. 2004 ¶ 20. Based on our review of the ’728 patent, the types of problems and solutions described in the ’728 patent and cited prior art, and the testimony of Petitioners’ declarant, we adopt and apply Dr. Creusere’s formulation regarding the level of ordinary skill in the art. The cited prior art references also reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We find that the level of appropriate skill reflected in these references is consistent with Dr. Creusere’s formulation regarding the level of ordinary skill in the art.” slip op. at 11

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

    “Petitioners requested that we construe the claim term “the data block being included in one or more data blocks,” which is recited in claims 2 and 3. ’179 Pet. 13, ’808 Pet. 11–12. Patent Owner did not request that we provide explicit constructions of any claim terms. On this record, we determine that it is unnecessary to provide an explicit construction of the claim term “the data block being included in one or more data blocks” in order to resolve the issues in dispute. Accordingly, we decline to adopt an express construction of this claim term. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “Petitioners argue that Patent Owner is “presuppos[ing] that a POSA would only see one obvious way to combine prior art teachings.” Reply 5. Petitioners are correct that there may be more than one obvious way to combine prior art teachings. However, it is Petitioners’ burden to show that one particular combination of the references renders obvious all limitations of a given claim. Thus, it is entirely proper for Patent Owner to point out the tension between Petitioners’ stated rationale for combining the teachings of Hsu and Franaszek to arrive at limitations 1d and 24d, and Petitioners’ stated rationale for further modifying this combination to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type information is not present in order to arrive at limitations 1f and 24f. To prevail on Ground 1, Petitioners must demonstrate that a person of ordinary skill in the art would have had sufficient reason to make both modifications. We find Petitioner has not persuasively harmonized the disparate rationales it proffers.” slip op. at 29

  Patent outcomesUS 9,054,728 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,054,728
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00179 · APJ Scott C Moore · IPR · Final written decision

  Claims 1–10, 15, 20, and 24 were not shown unpatentable because Petitioners did not establish a reason to refrain from calculating Hsu’s metrics when Franaszek’s type information was absent.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “and “at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” ’179 IPR, Ex. 1002 ¶ 26; ’808 IPR, Ex. 1002 ¶ 26. Patent Owner’s declarant, Dr. Zeger, “does not disagree” with Petitioners’ formulation, and does not offer any alternative formulation. See Ex. 2004 ¶ 20. Based on our review of the ’728 patent, the types of problems and solutions described in the ’728 patent and cited prior art, and the testimony of Petitioners’ declarant, we adopt and apply Dr. Creusere’s formulation regarding the level of ordinary skill in the art. The cited prior art references also reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We find that the level of appropriate skill reflected in these references is consistent with Dr. Creusere’s formulation regarding the level of ordinary skill in the art.” slip op. at 11

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

    “Petitioners requested that we construe the claim term “the data block being included in one or more data blocks,” which is recited in claims 2 and 3. ’179 Pet. 13, ’808 Pet. 11–12. Patent Owner did not request that we provide explicit constructions of any claim terms. On this record, we determine that it is unnecessary to provide an explicit construction of the claim term “the data block being included in one or more data blocks” in order to resolve the issues in dispute. Accordingly, we decline to adopt an express construction of this claim term. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Ex. 2004 ¶ 24. We find Dr. Zeger’s testimony persuasive, especially in view of Dr. Creusere’s deposition testimony that advantages would result from using Hsu’s block type and redundancy metrics, regardless of whether Franaszek’s type data was or was not present.” slip op. at 28

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

    “Petitioners argue that Patent Owner is “presuppos[ing] that a POSA would only see one obvious way to combine prior art teachings.” Reply 5. Petitioners are correct that there may be more than one obvious way to combine prior art teachings. However, it is Petitioners’ burden to show that one particular combination of the references renders obvious all limitations of a given claim. Thus, it is entirely proper for Patent Owner to point out the tension between Petitioners’ stated rationale for combining the teachings of Hsu and Franaszek to arrive at limitations 1d and 24d, and Petitioners’ stated rationale for further modifying this combination to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type information is not present in order to arrive at limitations 1f and 24f. To prevail on Ground 1, Petitioners must demonstrate that a person of ordinary skill in the art would have had sufficient reason to make both modifications. We find Petitioner has not persuasively harmonized the disparate rationales it proffers.” slip op. at 29

  Patent outcomesUS 9,054,728 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,054,728
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCAll claims unpatentable
  PTAB · May 25, 2018 · IPR2017-01688 · APJ Jason J Chung · IPR · Final written decision

  Claims 104 and 105 are unpatentable under § 103(a) over Franaszek and Hsu, and over Franaszek, Hsu, and Sebastian, because the combinations render the claims obvious.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “present case for at least the reasons stated supra in § II.C.1., we construe claims 104 and 105 according to the broadest reasonable construction in light of the specification (i.e., using Schulhauser) as explained infra. In Schulhauser, the Board held that in method claim 1, only one of the following conditional limitations needed to be satisfied in the prior art to render the claim anticipated or obvious: (1) “triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria”; and (2) “determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria.” Schulhauser at 6–8. To paraphrase, in Schulhauser, illustrative method claim 1 recited if A, then perform step X; if not A, then perform step Y. Id. In the same manner, claim 104 of the present case recites “performing content dependent data compression with a content dependent data compression encoder if a data type of the data block is identified” (hereinafter, “if A, then perform step X limitation of claim 104”) and “performing data compression with a single data compression encoder, if a data type of the data block is not identified” (hereinafter, “if not A, then perform step Y limitation of claim 104”). Ex. 1001, 2:34–45. Also, claim 105 recites “wherein if one or more encoders are associated to said type, compressing said data block with at least one of said one or more encoders” (hereinafter, “if A, then perform step X limitation of claim 105”) and “otherwise compressing said data block with a default data compression encoder” (hereinafter, “if not A, then perform step Y limitation of claim 105”). Id. at 2:57–60. Therefore, as a matter of law, we determine only one condition needs to be satisfied in the prior art to render the claim anticipated or obvious.” slip op. at 14

  • PTAB / AIA Trials › Motions to amend / substitute claimsOther

    “Schulhauser was only raised by Petitioner after the time to bring a motion to amend had passed. PO Br. 2–3. To the extent that Patent Owner is suggesting that it was deprived of the opportunity to file a motion to amend, we disagree because Patent Owner should have been aware of Schulhauser since at least the filing of Petitioner’s Reply (i.e., December 5, 2017). Yet, Patent Owner’s additional briefing filed on March 5, 2018 was the first and only time Patent Owner made reference to a motion to amend. PO Br. 2–3. Although the time to file a motion to amend, under the Scheduling Order, had passed when Petitioner filed its Reply, Patent Owner was free to seek leave to file a late motion to amend. However, Patent Owner did not contact the Board on this issue.11 We, therefore, find that it is appropriate to apply Schulhauser in the context of this proceeding for at least the reasons explained supra.12” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s Declarant Dr. Kenneth A. Zeger, Ph.D., does not disagree with Petitioner’s statements regarding the level of ordinary skill in the art. Ex. 2005 ¶ 20. Based on our review of the ’506 patent, the types of problems and solutions described in the ’506 patent and cited prior art, and the testimony of Dr. Creusere and Dr. Zeger, we adopt and apply Dr. Creusere’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable

    “always perform the if A, then perform step X limitation of claim 104. In addition, Dr. Zeger’s opinion that the Franaszek and Hsu combination fails applies only to the if not A, then perform step Y limitation of claim 104. Dr. Zeger’s opinion that the combination fails was given in the context of his opinion that both the if A, then perform step X limitation of claim 104 and the if not A, then perform step Y limitation of claim 104, must be taught in order to demonstrate unpatentability. It is noted that claim 104 is a method claim being analyzed under Schulhauser16; therefore, it is sufficient for Petitioner to show that the combination of Franaszek and Hsu teaches either the if A, then perform step X limitation of claim 104 or the if not A, then perform step Y limitation of claim 104. We find Dr. Zeger’s testimony regarding the absence of a rationale to combine to be unpersuasive because it was based on the assumption that both alternate steps of claim 104 must be met. We, therefore, also find that Dr. Zeger’s testimony does not counter persuasively Petitioner’s showing that a PHOSITA would have had reason to combine Franaszek and Hsu in a manner that would have taught the if A, then perform step X limitation of claim 104. Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient” slip op. at 37

  Patent outcomesUS 7,161,506 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 7,161,506
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCAll claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00806 · APJ Jason J Chung · IPR · Final written decision

  Claims 104 and 105 are unpatentable as obvious over Franaszek and Hsu, and over Franaszek, Hsu, and Sebastian.

  RulingsFinal written decision

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

    “present case for at least the reasons stated supra in § II.C.1., we construe claims 104 and 105 according to the broadest reasonable construction in light of the specification (i.e., using Schulhauser) as explained infra. In Schulhauser, the Board held that in method claim 1, only one of the following conditional limitations needed to be satisfied in the prior art to render the claim anticipated or obvious: (1) “triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria”; and (2) “determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria.” Schulhauser at 6–8. To paraphrase, in Schulhauser, illustrative method claim 1 recited if A, then perform step X; if not A, then perform step Y. Id. In the same manner, claim 104 of the present case recites “performing content dependent data compression with a content dependent data compression encoder if a data type of the data block is identified” (hereinafter, “if A, then perform step X limitation of claim 104”) and “performing data compression with a single data compression encoder, if a data type of the data block is not identified” (hereinafter, “if not A, then perform step Y limitation of claim 104”). Ex. 1001, 2:34–45. Also, claim 105 recites “wherein if one or more encoders are associated to said type, compressing said data block with at least one of said one or more encoders” (hereinafter, “if A, then perform step X limitation of claim 105”) and “otherwise compressing said data block with a default data compression encoder” (hereinafter, “if not A, then perform step Y limitation of claim 105”). Id. at 2:57–60. Therefore, as a matter of law, we determine only one condition needs to be satisfied in the prior art to render the claim anticipated or obvious.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation and citation omitted). In that regard, Petitioner’s declarant, Dr. Creusere, testifies that a person with ordinary skill in the art at the time of the invention” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “using Hsu’s approach will always identify a result for a block’s data type (id.); we agree with Dr. Creusere’s testimonial admission. In particular, in response to Patent Owner’s question of whether Hsu’s approach always identifies a given data block, Dr. Creusere answered: As far as the – as the data type information as output by Hsu’s new file routine, that, that’s – that will – that should in my, in my opinion, as a person of ordinary skill in the art, my best estimate is that will always output something. It will always give you something. Id. (quoting Ex. 2003, 21:13–22:6).” slip op. at 34

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “combine to be unpersuasive because it was based on the assumption that both alternate steps of claim 104 must be met. We, therefore, also find that Dr. Zeger’s testimony does not counter persuasively Petitioner’s showing that a PHOSITA would have had reason to combine Franaszek and Hsu in a manner that would have taught the if A, then perform step X limitation of claim 104. Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient” slip op. at 37

  Patent outcomesUS 7,161,506 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 7,161,506
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCAll claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00176 · APJ Jason J Chung · IPR · Final written decision

  Claims 104 and 105 are unpatentable as obvious under § 103(a) over Franaszek and Hsu, and over Franaszek, Hsu, and Sebastian.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “present case for at least the reasons stated supra in § II.C.1., we construe claims 104 and 105 according to the broadest reasonable construction in light of the specification (i.e., using Schulhauser) as explained infra. In Schulhauser, the Board held that in method claim 1, only one of the following conditional limitations needed to be satisfied in the prior art to render the claim anticipated or obvious: (1) “triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria”; and (2) “determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria.” Schulhauser at 6–8. To paraphrase, in Schulhauser, illustrative method claim 1 recited if A, then perform step X; if not A, then perform step Y. Id. In the same manner, claim 104 of the present case recites “performing content dependent data compression with a content dependent data compression encoder if a data type of the data block is identified” (hereinafter, “if A, then perform step X limitation of claim 104”) and “performing data compression with a single data compression encoder, if a data type of the data block is not identified” (hereinafter, “if not A, then perform step Y limitation of claim 104”). Ex. 1001, 2:34–45. Also, claim 105 recites “wherein if one or more encoders are associated to said type, compressing said data block with at least one of said one or more encoders” (hereinafter, “if A, then perform step X limitation of claim 105”) and “otherwise compressing said data block with a default data compression encoder” (hereinafter, “if not A, then perform step Y limitation of claim 105”). Id. at 2:57–60. Therefore, as a matter of law, we determine only one condition needs to be satisfied in the prior art to render the claim anticipated or obvious.” slip op. at 14

  • Strike new argumentNew argument consideredDecided for patent owner

    “As an initial matter, as discussed further below, we follow Schulhauser because it is precedential. Moreover, we find that each of the cases cited by Patent Owner is factually distinguishable from Schulhauser. The Board’s Standard Operating Procedures (“SOP”) require it to follow its precedential decisions. PTAB SOP No. 2, Rev. 9, 3 (Sept. 22, 2014) (“A precedential opinion is binding authority in subsequent matters involving similar facts or issues.”). Because this issue concerns claim construction, we conclude the best course of action under these specific circumstances is to follow our Tribunal’s SOP and our precedent in Schulhauser. To address APA concerns, due process concerns, the sufficiency of notice and potential prejudice, we allowed the parties the additional opportunity to brief the issue.10 Additional Briefing 1–2. In summary, Schulhauser is our precedent and it should apply given its potential applicability to the claim construction for the claims at issue.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “We find Dr. Zeger’s testimony regarding the absence of a rationale to combine to be unpersuasive because it was based on the assumption that both alternate steps of claim 104 must be met. We, therefore, also find that Dr. Zeger’s testimony does not counter persuasively Petitioner’s showing that a PHOSITA would have had reason to combine Franaszek and Hsu in a manner that would have taught the if A, then perform step X limitation of claim 104. Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient” slip op. at 37

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient 16 Supra § II.C. 17 We considered Patent Owner’s objections (Tr. 30:1–34:4, 63:17–23) and dismiss them as moot because we did not rely on Petitioner’s theory that Franaszek does not have a data type, then if you were to use Hsu in that showings that both grounds would have taught the remaining limitations of claim 104 (Pet. 14–36) and Patent Owner does not dispute these assertions (Paper 20, § B.1.b.) (“[A]ny arguments for patentability not raised in the response will be deemed waived.”). e. Conclusion In conclusion, and having performed the factual inquiries required by Graham, for the reasons given above and based on our review of the arguments and evidence of record, Petitioner has shown by a preponderance of the evidence that the combination of: (1) Franaszek and Hsu; and (2) Franaszek, Hsu, and Sebastian render obvious the subject matter of claim 104 of the ’506 patent.18” slip op. at 37

  Patent outcomesUS 7,161,506 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 7,161,506
• Flexitallic Investments, Inc. v. Eriks N.V.Rehearing denied
  PTAB · Mar 28, 2018 · IPR2017-01968 · APJ Scott C Moore · IPR · Rehearing

  The Board denied Flexitallic’s rehearing request and left in place the denial of institution because the petition did not adequately show that the Bond References taught or suggested all limitations of claims 1–5.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “B. The Decision Denying Institution In the Decision, we found that Petitioner had failed to make an adequate showing that the Bond References disclose, teach, or suggest all limitations of challenged claims 1–5. Regarding claims 1, 4, and 5, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest, “an intermediate stress gas/liquid sealing zone between the core inner surface and the flange inner surface” of the type required by claims 1, 4, and 5. Dec. 17. With respect to claims 2 and 3, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest the step of “selecting a deformable pillow material and a deformable pillow thickness such [that] upon compression of the gasket . . . the gasket intermediate portion exhibits a stress level sufficient to preclude gas and liquid flowing through the pipe from passing radially outward beyond the gasket intermediate portion,” as required by claims 2 and 3.” slip op. at 3

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

    “adequate showing that the Bond References disclose, teach, or suggest all limitations of challenged claims 1–5. Regarding claims 1, 4, and 5, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest, “an intermediate stress gas/liquid sealing zone between the core inner surface and the flange inner surface” of the type required by claims 1, 4, and 5. Dec. 17. With respect to claims 2 and 3, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest the step of “selecting a deformable pillow material and a deformable pillow thickness such [that] upon compression of the gasket . . . the gasket intermediate portion exhibits a stress level sufficient to preclude gas and liquid flowing through the pipe from passing radially outward beyond the gasket intermediate portion,” as required by claims 2 and 3.” slip op. at 3

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “First and foremost, Petitioner does not provide any citation to the Petition or Dr. Green’s Declaration to demonstrate that it previously argued that limitation 1.3 requires a “flange” that “extends radially inward along the entire circumferential inner surface of the core.” See Reh. Req. 5. We could not have misapprehended or overlooked an argument that Petitioner failed to make. 37 C.F.R. 42.71(d). We also note that claim limitation 1.3 does not recite a flange that extends “along the entire circumferential surface of the core” (see Ex. 1001, 8:60–62), and that the claim construction portion of the Petition did not argue that limitation 1.3 should be construed to require a flange that extends radially inward “along the entire circumferential surface of the core” (see Pet. 14–20). In addition, Petitioner fails to identify any testimony from Dr. Green that the Bond References teach or suggest a flange that extends radially inward “along the entire circumferential inner surface of the core” of the type Petitioner now seemingly concedes is necessary for those references to teach or suggest an “intermediate zone.” See Reh. Req. 5. Though Dr. Green testifies regarding a single-projection embodiment in which the projection “extend[s] radially inward from the core inner surface,” Dr. Green never testifies that the single projection of this embodiment extends radially inward “along the entire circumferential inner surface of the core.” See Ex. 1012 ¶¶ 97–99. Our Decision did not overlook or misapprehend Dr. Green’s testimony. To the contrary, we considered and analyzed Dr. Green’s testimony, and determined that Dr. Green’s opinions were not adequately supported by the evidence of record. See Dec. 16–17 (analyzing the portions of the Bond References cited by Dr. Green, and rejecting Dr. Green’s assertion that these portions of the Bond References disclose, teach or suggest a flange that extends radially inward “along the entire circumferential inner surface of the core.”) Petitioner’s argument that we improperly disregarded Dr. Green’s testimony thus has no merit.” slip op. at 5

  § 103 obviousness
  Patents in suitUS 9,388,924

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.